1709 Blog: for all the copyright community

Tuesday, 22 July 2014

My Little Pony gets 3D printed

3D printing is a bit of a buzzword at the moment and its not the first time that this blogger has written about protection of IP rights in the 3D printer world. Rightsholders need to be thinking about how best to exploit 3D printing rather than how to avoid it, and one company that has done just that is Hasbro. 

Rather than targeting creators of fan art to stop them customising the popular My Little Pony range (because, really trying to stop your fans from enjoying your product is not a great business proposition), Hasbro is going to partner with 3D printing company Shapeways to sell fan art.

Five artists will design My Little Pony figurines which can be printed to order. John Frascott, chief marketing officer at Hasbro, describes the process as "mass customisation" - the figurines don't make sense for mass manufacture but enough people will buy them that Hasbro can justify allowing the artists to create and sell them.

It's not clear whether the artists will be employed by Hasbro or whether they are merely granted permission to create fan art (likely the former, for Hasbro to retain control of any copyright created) but it is clear that this is a clear demonstration that we will see more and more customised goods in future, meaning more and more 3D printing.

What has this got to do with copyright?

Well ignoring any trade mark rights which Hasbro may have in My Little Pony, it is likely that the main IP rights subsisting in the figurines are copyright and/or design rights. This raises a few important questions, namely:

1. Are figurines artistic works for copyright purposes (the Storm Trooper helmets were not)?

2. If not, could they be works containing the author's own intellectual creation and so subject to copyright protection in the rest of Europe? (Or in the UK if the concept of a work is found to be harmonised…)

3. If copyright does subsist, will the proposed private copying exception allow people who have access to the design files to make copies for private use at home?

4. Will the files appear on P2P file-sharing sites, and if so how long before we see an application for a blocking injunction against counterfeit My Little Pony files?

Answers on the back of a postcard please!

Now Thailand, Vietnam and the UAE avail themselves of Berne Appendix

Last week this blog recorded the renewal by Yemen of its declaration relating to the renewal of its facility to take advantage of Articles II and III of the Appendix to the Berne Convention's Paris Act of 1971. A week later, from Berne Notification No.264, we learn from WIPO that Thailand has declared that it is renewing its decision to avail itself of Article II for a further decade. That's not all: Vietnam has renewed its Article II and Article III rights according to Berne Notification No.265, as have the United Arab Emirates -- apparently one of the world's richer jurisdictions -- under Berne Notification No.266.

Monday, 21 July 2014

Tuscan mayor orders destruction of cannabis-made art installation

Is there anything more reinvigourating than flying back to one's own native hometown to catch up with family and friends and realise - once again - that copyright is all around us? 

This is what happened to me last weekend when, arrived in my native Tuscany or - to be more specific - the town of Arezzo [also hometown to Piero della Francesca, Petrarch, Vasari, and popular contemporary musicians, to name just a few], I asked my non-copyright parents the usual question: "Any news from Arezzo?". 

Having started with their usual list of major and minor occurrences, they also casually mentioned that a few days ago something happened in the context of major contemporary art public initiative Icastica

Icastica outdoors
Now on its second edition, Icastica is a cultural festival that includes indoors and outdoors exhibitions and art installations, as well as performances, recitals, and lectures. 

A few days ago, not only did some representatives of an animal protection league protest against a black sheep by Damien Hirst and urge actress Anna Falchi not to visit the offensive display, but the mayor ordered the destruction of an art installation named Promenade.

Back in May it was announced that artists Valentino Carrai, Luca Mauceri and Carlo Trucchi would have started working together with art critic Danilo Sensi on an art installation that would consist of a labyrinth made of cannabis sativa

The idea was to re-discover old traditions - notably that a couple of centuries ago cannabis sativa was grown in Tuscany also for use in clothing and paper - and convey the message that any material may become art. The labyrinth would have been ready by mid-July, when plants would have reached a height of 2 meters and could be thus given an artistic shape.

The 3 artists who tried to realise Promenade
(disclaimer: background *not* cannabis)
Sadly none of the above will happen, as the mayor of Arezzo ordered the destruction of Promenade, on fear that - despite previous authorisation and the results of chemical analyses - the plants might be dangerous for the health of visitors. 

The mayor stated: "It was not possible to exclude the toxicity of those plants, even if chemical analyses excluded it; however, lacking absolute certainty, I could not allow them to grow in our town."

As soon as I heard this piece of news, of course I thought: but what about the moral rights of the artists?

Promenade before ...
Among other things, Article 20 of the Italian Copyright Act (Legge 633/1941) states that independently from the economic rights, and also after these have been waived, the author has the right to object to any deformation, mutilation or any other modification of or any act that is meant to damage his/her work, and which may prejudice his/her honour or reputation.

It is not difficult to imagine that destruction of their work of art would likely infringe the three artists' right of integrity, especially if it is true (as the lab analyses suggested) that the installation would not be dangerous for the health of visitors.

However, subsequent Article 22 states that the author who has known about and accepted the modifications to his/her work cannot prevent their execution or seek removal. 

Is this what happened with regard to Promenade?

From the report of local newspaper La Nazione, the response would appear in the negative. Art critic Danilo Sensi stated: "I was requested a certificate that would attest the non-toxicity of the seeds used, which I asked Assocanapa to produce ... Without waiting [for the certificate], the work has been demolished. It's all very depressing, but this story is not over."

... and after its destruction
What does this mean, that the artists are planning to sue Arezzo municipality for copyright infringement, notably infringement of their right of integrity?

Stay tuned for further updates from Tuscany - Copyright Chapter. 

Meanwhile, another pressing question arises: what has happened to all that cannabis? Has it been destroyed or not? If not, who has it?

Content + ISPs - the banns are read

[Note to non-native English speakers and those of other faiths - the reading of the banns is a process which one must go through to become lawfully married in the Church of England and various other Christian denominations - it is not the actual marriage, but a public declaration that it is intended to happen.]

At the end of last week, the UK content industry and ISPs announced their long-expected coming together in what was sometimes referred to as VCAP, but is now officially entitled Creative Content UK.

The very long press release sets out the two major strands to the initiative, first a major education campaign - to which the Government is providing a contribution (dowry?) of £3.5 million, launching in September 2015 - with the subscriber alert programme,  jointly funded by content and ISPs following on from that - although the date on which that particular element will be implemented is not specified.

In detail, we are told 

"London – 19th July 2014: Representatives from the UK's creative industries and major Internet Service Providers (ISPs) have come together with the support of government to launch Creative Content UK, a ground-breaking new partnership that will boost consumer awareness of the wide array of legitimate online content services and help reduce online copyright infringement.

Creative Content UK will comprise two key components. The first, which will launch before Spring 2015, will be a major multi-media education awareness campaign, led by content creators and part-funded by government, that aims to create wider appreciation of the value and benefits of entertainment content and copyright. 

The second component is a subscriber alerts programme that will be co-managed and co-funded by ISPs and content creators and due to begin at a later date.  Participating ISPs will alert and advise subscribers when their accounts are believed to have been used to infringe copyright. Account holders will receive an alert from their ISP, advising them unlawful filesharing may have taken place on their connection and offering advice on where to find legitimate sources of entertainment content.
Speaking today Business Secretary Vince Cable and Culture Secretary Sajid Javid announced the Government's support for this initiative and pledged £3.5 million in funding for the education awareness component of the campaign. 

Vince Cable, Business Secretary said: “The creative industries in the UK are one of our brilliant global success stories. We have unrivalled creativity - from record breaking musicians to box office films - that excite and inspire people all over the world. Yet too often that content is open to abuse by some who don’t play by the rules. That is why we are working with industry to ensure that intellectual property rights are understood and respected. Education is at the heart of this drive so people understand that piracy isn’t a victimless crime - but actually causes business to fail, harms the industry and costs jobs.”

Sajid Javid, Culture Secretary, said: “The Creative Sector is a key driver of the UK economy contributing £8m to the UK economy every hour and underpinning over 1.5m jobs.  Copyright is the foundation on which the Creative industries stand and we must ensure it remains strong and continues to support the growth of the sector. The alert programme shows industry working together to develop solutions which support the long-term health of the UK's creative industries.  It will play a central role in raising awareness of copyright and pointing people toward legal ways to access content and I welcome this effort.”

The initiative has cross party support.  Harriet Harman, Deputy Leader of the Labour Party and Shadow Culture Secretary said: “I strongly welcome the partnership between the creative sector and ISPs to work together on the Creative Content UK initiative.  We need to ensure that talented UK creators and digital innovators see a continued financial return from online services for their ideas and efforts.  I hope this initiative will encourage greater uptake of digital services and more responsible use of the Internet to safeguard jobs in the UK and reinforce our position as leaders in world class creativity.”
Creative Content UK founding partners include the Motion Picture Association (MPA), the BPI (British Recorded Music Industry), and the four main internet service providers: BT, Sky Broadband, TalkTalk and Virgin Media, with the prospect of other ISPs joining at a later stage.  It also has the backing and support of a broad range of organisations from across the creative community including the BBC, Equity, the Film Distributors’ Association, ITV, the Independent Film & Television Alliance (IFTA), the Musicians’ Union, Pact the Premier League, the Publishers Association and UK Music.

The campaign will aim to inform and encourage consumers - ranging from the next generation of digital users to 'silver-surfers' – about the huge range of entertainment content that is available from legal and licensed sources; giving them greater confidence when buying and using content online and providing additional guidance about internet safety.

Creative Content UK will operate within the wider context of successful programmes aimed at combating copyright infringement such as the blocking of illegal sites and working with advertisers and payment processors to cut off revenues to such sites.  Full details of the initiative, including its branding and the scope of the education awareness campaign activity will be announced in due course."

Do read the press release in full if you wish to learn what the six participating CEOs (BPI, MPA, BT, Sky, Virgin, Talk Talk) and the 13 supporting industry CEOs think about the initiative - but like all forthcoming weddings, everyone is very excited about it - let's just hope that the marriage is a long and fruitful one!

Thursday, 17 July 2014

The CopyKat - tantalising titbits of global copyright news

Holmes and Watson
A federal judge has refused to stay a Seventh Circuit decision affirming that most of the Sherlock Holmes stories have lapsed into the public domain as the estate of Arthur Conan Doyle appeals to the U.S. Supreme Court. An attorney for the Estate told Law360 the denial on Wednesday by U.S. Circuit Judge Richard A. Posner was “no surprise,” adding that “the real question” is whether the Supreme Court will grant the Estate’s motion. Last month the Seventh Circuit upheld a lower-court decision that the elements included in the 50 Sherlock Holmes stories published before Jan. 1, 1923, are in the public domain in the United States. It rejected the Doyle estate’s rather novel argument that the great detective is a “complex” character who was effectively incomplete until the author’s final story was published in this country, leaving the entire body of work protected by copyright.  Sherlock Holmes and the mystery of copyright HERE.

Rupert Murdoch's News Corporation Australia has used an inquiry by the nation's Senate into a proposed Australia/South Korea free trade agreement to suggest internet service providers become copyright enforcers. In it's submission to the inquiry, News Corp backs proposals in the treaty to criminalise 'net piracy, and the implementation of legal “incentives” for ISPs to “cooperate with copyright owners in deterring the unauthorised storage and transmission of copyrighted materials”. The move comes against the backdrop of the 2012 decision by Australia's High Court which confirmed that internet service providers are not liable for authorising copyright infringement by making their services available to people who do infringe copyright.  New Corp's view is that current legislation, the submission says, does not “provide rights holders with means to protect rights online”.

An update on SoundCloud: The online music sharing service is seemingly close to a deal with the largest record labels Universal Music Group, Sony Music Entertainment, and Warner Music Group. Bloomberg says the major labels will agree to licences so SoundCloud can continue play their songs - and avoid potential legal disputes.  It seems SoundCloud is offering the three major labels equity in the company, in exchange for both licensing deals and guarantees not to sue over any past copyright violations when the service shifts to a monetised model. According to Bloomberg, Universal, Sony and Warner are being offered between 3% and 5% of SoundCloud, along with a cut of future revenues.

The Pirate Bay is asking it's users to support the two original founders currently in custody - Gottfrid Svartholm and Peter Sunde with a banner on the website saying “Show your support by sending them some encouraging mail! Gottfrid is only allowed to receive letters while Peter gladly receives books, letters and vegan candy.” Sunde is now serving the sentence he received from the original trial in the District Court of Stockholm, Sweden on April 17, 2009. where the court sentenced the founders to one year in prison (which was reduced in appeal). He is being held in a high security prison in Västervik, although he recently requested a transfer to a lower safety class unit. Svartholm already serviced his TPB sentence, but he has been accused in Denmark of hacking into the mainframe computers of IT company CSC. His new trial starts in two months and he faces up to five years in prison. More on TorrentFreak

The U.S. Copyright Office is asking the public to comment on what the Supreme Court’s ruling on streaming TV service Aereo means for the future of copyright law. The office “is interested in commenters’ views regarding the Supreme Court’s opinion in Aereo and how that opinion may affect the scope of the rights of making available and communication to the public in the United States.” Specifically, the office asked how last month’s 6-3 decision affects “unauthorized filesharing,” the right to make content available and other aspects of copyright law. More here.
TechDirt has an interesting take on copyright reforms in the US in an article entitled "Copyright Lawyers Prime The Pump For The Return Of SOPA" which has  a fairly critical response to the American Bar Association's White Paper - which itself can be found here: A Call For Action For Online Piracy And Counterfeiting Legislation.  The House Judiciary Committee is in the process of reviewing various aspects of copyright law for reform - and is currently looking at "Moral Rights, Termination Rights, Resale Royalty, and Copyright Term" covering four very distinct areas of law and policy. Rep. Jerrold Nadler (N.Y.), the subcommittee’s top Democrat, pledged to use the session to advance his bill to grant royalties to visual artists when their work is resold by an auctioneer, collector or other third party. And with moral rights, Rick Carnes, head of the Songwriters Guild of America and penner of songs for musicians including Garth Brooks and Alabama, said that a creator’s right to control the use of their creation is “widely embraced by the American public.” More from the EFF here. And whilst we are on reforms in the US of A - there is a guest blog on Billboard entitled "Our Best Bet for Screwing Up Copyright Reform? More Government Intervention" - it's from David Israelite,  the President and CEO of the National Music Publishers’ Association (NMPA),  the trade association representing American music publishers and their songwriting partners so its hardly unbiased - but worth a read particularly if you are interested in new models of licensing and the role of collection societies in the future. 

The Recording Industry Association of America is taking another public bashing after ReelRadio, a site that streams an archive of often decades-old historical radio shows, was forced to take down much of its library after the RIAA complained that the site was operating outside the terms of its license. In existence since 1996, ReelRadio "still looks and feels like a site from the past" and content includes decades-old ‘aircheck’ demo recordings which were often used to showcase radio announcers before being placed in the archives - but these often contain music controlled by the RIAA's members. It does seem to be acknowledged by Reel that what the RIAA wants is to apply (strictly) the terms of it's licence to use recorded music and Reel President Richard Irwin explained“The RIAA has determined that our service fails to meet the requirements for ‘archived programs’, which must be at least five hours in duration and may not be made available for more than two weeks. The service must also display the Title, Artist and Album of each featured song, but only while the recording is being performed” and  “The RIAA insists that we obtain permission from the copyright owners of these old radio broadcasts. Many broadcasters understand the difficulty of this requirement, since nearly all radio stations have changed ownership, format, and call letters, many times over,” Irwin also explained, adding “Nevertheless, we are expected to provide the RIAA with an explanation of how we have permission from radio stations that no longer exist and copyright owners who have no interest in historic recordings of their property.”

With the Global Repertoire Database stalled,  the world's biggest music publisher Sony/ATV/EMI has announced that its entire songs catalogue can now be viewed and downloaded on its website by music services and other interested parties.  The second biggest global publisher, Universal Music Publishing, has also announced that it will put its database online, although this will begin with its US repertoire before making its global data available.

The author of the massively popular 'Jersey Boys' franchise which charts the rise of Frankie Valli & The Four Seasons and has been made into a book, a Broadway play and now a major motion picture,  is facing an ongoing  legal challenge which began in the federal court in the Beaumont Division of the Eastern District of Texas. Donna Corbello, the widow of Beaumont attorney Rex Woodard filed a suit in late 2007 against Thomas  (Tommy) Gaetano DeVito, one of the original members of the Four Seasons. She claims DeVito wrote a book in 1991 that was identical to one written by Woodard - and that the book became the basis for the “Jersey Boys” musical. The case was transferred to Nevada federal court in July 2008, because  DeVito lives in Las Vegas. The case has been winding its way through the court and there is now a trial date for Feb. 17, 2015, in Las Vegas with Judge Robert C. Jones presiding. 

As the Southeast Texas Record reports, Woodard was a Beaumont attorney and a freelance music writer. He had been a big fan of the Four Seasons and wrote an article on the early days of the band, then decided he wanted to write a book about them. Woodard began interviewing band members and uncovered many new facts, including alleged criminal activities by some band members - and on this basis Woodward seemingly agreed terms on how a book would be written with DeVito - with DeVito getting “top billing” and Woodard’s name also appearing on the published work - and that Woodard would share in the royalties. DeVito has denied that he showed Woodard’s manuscript to anyone, and claimed he had only “told stories to the writers and director.” In a 2012 ruling, Judge Jones found that the agreement made DeVito and Woodard 50 percent joint owners of the work, although DeVito argued that he is the sole author because he had final creative control. The case is now only against DeVito - the court having agreed that the licence to other third parties (for the screenplay and musical) pre-dated the copyright claim and so was valid

Wednesday, 16 July 2014

Yemen renews Berne Appendix declaration

This blogger today received Berne Notification No. 263, a media release relating to a declaration by the Republic of Yemen Relating to Articles II and III of the Appendix to the Paris Act (1971). His first thought was that this must be the first time that Yemen has been mentioned in the 1709 Blog (but it isn't: see here).  His second thought was that it was a very long time since he has spotted any activity relating to Articles II and III of Berne's 1971 Appendix.  The text of the media release is as follows:
The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to refer to the deposit by the Government of the Republic of Yemen, on April 14, 2008, of a declaration that the Republic of Yemen avails itself of the faculties provided for in Articles II and III of the Appendix to the Berne Convention for the Protection of Literary and Artistic Works of September 9, 1886, as revised at Paris on July 24, 1971 (“Paris Act (1971)”).

The Director General of WIPO has the honor to notify that the Government of the Republic of Yemen deposited, on July 7, 2014, a notification renewing the said declaration for a period of ten years with effect from October 10, 2014, in accordance with Article I, paragraph 2(a) of the Appendix to the Paris Act.
The 1971 Appendix, mirrored by provisions to similar effect in the Universal Copyright Convention (Articles Vter and Vquater), provides for developing countries to avail themselves of certain leniences in the field of copyright. Article II limits the right of translation, Article III the right of reproduction.

Orphan works in the UK: a caring home at last?

Fun is guaranteed when you know
everything about 'diligent search' ...
Issues surrounding orphan works are not only important, but also make a great topic of conversation for summer gatherings. If you are running short of insights into this fascinating copyright-related topic, don't worry because 1709 Blog friend Tom Ohta of Bristows LLP (@tom_ohta) is coming to your rescue. 

Here's what Tom writes:

Orphan Works: here we come!

As readers may recall, earlier this year, the UK government launched a technical consultation [hereon the draft secondary legislation to introduce a licensing scheme for orphan works in the UK [on which this blogger wrote a longer (and critical) piece here] and to transpose the Orphan Works Directive into English law.

The UK government has now considered the responses to its technical consultation and taken these into account in the amended text of two regulations which have now been laid before Parliament: the Copyright and Rights in Performances (Licensing of Orphan Works) Regulations 2014 (which introduces the orphan work licensing scheme) and the Copyright and Rights in Performances (Certain Permitted Uses of Orphan Works) Regulations 2014 (which transposes the Orphan Works Directive into English law). The amendments made to the text following the consultation are primarily ones of refinement.

... Just look at Tom's smile!
Previously, orphan works have been the subject of somewhat sensationalist (and misleading) commentary with buzz words such as the ‘Instagram Act’ which was ‘abolishing copyright’ [here]. A good starting point for those seeking to get up to speed with orphan works is the UK IPO’s (37-page) response to the technical consultation which summarises the comments received and sets out its current position. In particular, there are helpful flow-charts of how the licensing scheme is intended to work and the process under the Orphan Works Directive (at pages 4 and 5).

However… for those looking for the headline points, these are summarised below for your perusal, followed by some thoughts on possible issues that may arise in the future.

Authorising body

·    The UK IPO will be the authorising body responsible for granting orphan licences.

Diligent search

·    A ‘reasonable search’ of the ‘relevant sources’ must be conducted. The regulation requires applicants to search the register maintained by the UK IPO and the databases maintained by OHIM.

·    Where the UK IPO and OHIM searches fail to reveal the owner of the work, applicants must then check the sources listed in Part 2 of Schedule ZA1 to the CDPA: these are set out in the Certain Permitted Uses of Orphan Works Regulations, and different sources (including collecting societies) are listed depending on the type of work in question, eg audiovisual, visual works, newspapers etc.

·    It is likely that the Copyright Hub will play an important role in the functioning of the licensing scheme by having, for example, inter-linked databases to reduce the cost of diligent searches. However, it is currently still at a test phase.

With your diligent search
having a 7-year validity,
you may even think of
spending this time abroad
·    A diligent search will be valid for 7 years. 

Applying for an orphan licence

·    Applicants must provide information in the orphan licence application form (which has not yet been released) showing that a diligent search has been conducted, and specifying how it intends to use the orphan work.

·    It remains to be seen what level of detail the IPO will require to satisfy the diligent search requirements. It is worth noting the detailed sector-specific guidelines on due diligence criteria for orphan works which are set out in a Joint Report published in May 2008 as part of the European Digital Libraries Initiative.

It is unclear to what extent the IPO will have regard to these Joint Report guidelines when considering applications under the Licensing of Orphan Works regulation. In particular, the Joint Report guidelines suggest that as part of a diligent search, the applicant should take steps to publicise the orphan work, for instance, in trade publications, social networks, and in the press. This is likely to increase time and cost, and it is questionable whether it would be proportionate to require applicants to take such steps under the UK regime.  

Licence terms

·    An orphan work licence permits the licensee to carry out acts that would otherwise infringe copyright or performers’ rights for up to 7 years. However, there is a statutory prohibition against the grant of exclusive licences and sub-licensing is not permitted.

·    The licence may be granted subject to conditions, and the IPO has the discretion to vary the licence terms during its term.

·    Whether a licence can be transferred is not addressed in the regulation. However, the IPO has indicated that transferability of licences will be dealt with in the licence terms, and the normal position is that they will not be freely transferable, although each case will be considered on its facts.

Grounds of refusal

·    The IPO may refuse to grant a licence where it considers that the proposed adaptation or use of the work is ‘not appropriate having regard to the circumstances of the case, including whether the proposed adaptation constitutes derogatory treatment of the work’.

·    It also has a wide discretion to refuse to grant a licence on ‘any other reasonable ground’.

Licence fees

·    The IPO is entitled to charge a ‘reasonable licence fee’ for the licence term, bearing in mind factors such as the licence fees charged for a ‘similar use’ of a ‘similar relevant work’ which has not been orphaned. The IPO has been working closely with sector-specific groups (as listed in the response) to ascertain potential licence fees.

·    A reasonable additional amount can be added to the licence fee to cover the IPO’s costs.

·    The IPO must hold all orphan licence fees in a ring-fenced account, and must retain these for at least 8 years from the date on which the licence was granted.

·    After 8 years, if no rights holder comes forward to claim ownership, the IPO can deduct its reasonable costs from the retained fee, and apply any surplus ‘to fund social, cultural and educational activities’.

IPO expects revenant rightholders
be in better shape than the one above
·    If a rights holder comes forward within 8 years from the date of the licence grant and satisfies the proof of ownership requirements of the orphan work (regarding which we currently have little information), the IPO must pay the rights holder the licence fee paid by the orphan licensee within 2 months.

·    If the rights holder comes forward after the 8 year period, the IPO has the discretion to remunerate the rights holder as it considers reasonable in all the circumstances.


·    A rights holder has a right of appeal to the First-Tier Tribunal (presumably, to the General Regulatory Chamber) where it considers that the IPO has acted improperly or failed to comply with its obligations under the regulation. The procedural rules currently applicable to the General Regulatory Chamber can be found here.

·    An orphan licensee can appeal to the Copyright Tribunal (whose rules of procedure can be found here) if the IPO refuses to grant a licence. An appeal can also be lodged by the orphan licensee in respect of any conditions imposed by the IPO in connection with a granted licence, or in respect of the licence fee amount.

What’s next?

The regulations will now be laid before Parliament for approval, and are due to come into force on 29 October 2014 [this is also the deadline for transposing the Directive into the laws of Member States]. In the meantime, the UK IPO is no doubt being kept busy developing the IT system and further fleshing out the processes underlying the orphan works licensing scheme.

It is anticipated that a number of issues are likely to raise issues for stakeholders, including the following:

·    Striking the right balance when considering whether the diligent search requirements have been met: the IPO will need to tread carefully to ensure that it adopts a consistent approach which does not impose overly onerous obligations on orphan licensees but also adequately protects the interests of rights holders, whilst considering the interests of those responding to diligent search requests.

·    Obligations on organisations responding to diligent search requests: the IPO acknowledges the collecting societies’ views that where an organisation receives a diligent search request, it is up to that organisation whether or not they respond, and if so, whether they can charge for providing that service. Given that the regulation does not impose any positive obligations on organisations to respond to diligent search requests, how will an organisation’s refusal to respond to a request (for instance, because it is particularly onerous) or a licensee’s refusal to pay an organisation’s requested administration fee (for instance, because it considers that it is unreasonably high) be taken into account when the IPO evaluates whether a ‘reasonable search’ has been carried out?

·    Global access to digitised orphan works: the scope of the orphan licence extends to digitising orphan works and making them available online. However, the statutory scope of the licence is restricted to use within the UK. Thus, where orphaned content is made available online, it raises questions as to how to address concerns about unlawful use of orphan content in other jurisdictions.

Whilst there are technical measures, such as geo-blocking, that could be deployed, where a site contains both orphan and non-orphan content, this can be an overly blunt tool. In the future however, it is feasible that reciprocal agreements are entered into with other countries to enable UK-issued orphan licences to be valid in those territories and vice versa [this is indeed something that this blogger heard IPO officers saying at a recent conference].

·    Dealing with ‘works within works’: how far does a diligent search need to go in respect of a work which contains multiple works within it – for instance, or a book which contains photos or drawings?

·    Moral rights: the law in this area is still evolving (for instance, in relation to moral rights and parody) and it will be interesting to see how the IPO will deal with moral rights issues when reviewing orphan licence applications.

It is likely to take some time before we are able to see how effectively the orphan licensing scheme will work in practice, and there will undoubtedly be further issues that arise as the orphan work licensing scheme develops. Watch this space.

Tuesday, 15 July 2014

Court cautious to imply exclusive copyright licence into business contract

Orvec International Ltd v Linfoots Ltd [2014] EWHC 1970 (IPEC) is an 18 June 2014 ruling of Judge Hacon in the Intellectual Property Enterprise Court, England and Wales. Orvec traded in textile products which it sold to airlines; Linfoots was an advertising agency which provided advertising and marketing services to Orvec between 2002 and 2011 which included the making of photographs of products which Orvec then offered to the airlines.

Both parties agreed that Linfoots retained ownership of copyright in its photographs, if for no other reason than that there was an express term to that effect in Linfoots' standard terms and conditions, which governed their relationship, which ended in 2011.

The products shown in Linfoots' photographs were sometimes made by Orvec but in many instances were supplied to it by Intex, a business based in Hong Kong. In 2012, after the business relationship between Orvec and Intex ended, Intex started to compete with Orvec in the supply of textile products to airlines. Then, in September 2012, Intex asked Linfoots to create and supply photographs for use in its advertising. Linfoots supplied images showing the sort of products which Intex offered to airlines, some or all of which appeared on Intex's website -- among which were images to which Orvec took exception.

According to Orvec, the images on Intex's website included photographs created for Orvec and that they had been supplied by Linfoots in breach of the latter's contract with Orvec in that their agreement contained an implied term giving it a perpetual and exclusive licence under the copyright in the photographs, an implied term which Linfoots had breached. Secondly, said Orvec, the appearance of those images on Intex's website gave rise to passing off, the means to which were supplied by Linfoots.

Judge Hacon dismissed both limbs of Orvec's action.

* As to breach of contract, an implied term setting out the licence granted by Linfoots to Orvec was likely to be simple in form: the more complex the putative term, the less likely it was that the reasonable person would take it to be an implied part of the contract.

* The reality was that the only term implied into this contract was that Liinfoots granted Orvec just a non-exclusive licence under the copyright in the photographs. This licence was probably perpetual, and the hypothetical reasonable person, considering Linfoots' standard terms and conditions, would not take anything more to have been implied: there was no reason to infer that the parties must have agreed that Orvec should have the right to prevent Linfoots from copying those photographs or dealing in such copies, even where Orvec's trade mark was omitted from the copy, since many of the products shown in the photographs were generic in nature.

* If more than a non-exclusive perpetual licence was to be implied, at most it would be was exclusive only where Orvec's trade mark appeared in the photograph. This however would require consideration by the hypothetical reasonable person of a term with a more complex formulation, which meant that the term was less likely to have been implied. In any event, it had not been established that any photographs showing Orvec's trade mark were supplied by Linfoots to Intex.

The judge's approach here seems entirely appropriate. This blogger has long felt that "there must be an implied term" is the last resort of a claimant who doesn't have any stronger basis for making his case, and this is an argument which appears to fail in the vast majority of IP cases where it is pressed.