The High Court has now granted that order. Virgin Media, Sky, Everything Everywhere, O2 and TalkTalk have been ordered by the High Court to put measures in place that prevent their respective users accessing The Pirate Bay. ISPs have criticised the move as a part-solution only to the increasing problem of copyright infringement.

1)    The amendment of the distance selling rules in the BCAP Code

BCAP has announced that the distance selling rules in the BCAP Code are to be restricted to business-to-consumer advertisements. This change means that the distance selling rules in the BCAP Code fit in with the Consumer Protection (Distance Selling) Regulations 2000 and with the CAP Code (which restricts non-broadcast advertising). The change came into effect on 23 March.

2)    Consultation on amending the comparative advertising and VAT rules in the BCAP Code

BCAP is proposing to remove the provisions of the BCAP Code that require comparative price claims to relate to identical or substantially similar products. This will allow advertisers more flexibility in comparative claims so that comparisons can be made between non-identical products that have the same function.

BCAP is also proposing to amend the rules relating to the inclusion of VAT in headline prices. The proposed amendment will mean that quoted prices should include mandatory taxes, duties, fees and charges that apply to most buyers, but that a VAT-exclusive price can be given if the price is addressed to an audience with no VAT liability or who can recover VAT. Those VAT-exclusive claims should, however, be accompanied by a clear statement of the rate of VAT payable.

The consultation is open until 4 May 2012.

The cost of providing a relaxing time for guests has just become more stressful for hotels!

The High Court’s ruling is a direct application of the ruling of the European Court of Justice, ruling that:

-       national legislation that restricts the sale or use of foreign decoder cards is in breach of Article 56 of the Treaty on the Functioning of the European Union and it infringes the freedom to provide services; and

-       exclusive licence agreements that restrict the supply of decoder cards to TV viewers who want to watch those broadcasts outside of the Member State for which the licence is granted are in breach of Article 101 of the Treaty, which prohibits agreements that have as their object or effect the distortion of trade between Member States.

Together with the recent ruling of the High Court in the case of the FA Premier League v QC Leisure, which dealt specifically with copyright issues, it certainly gives the FA Premier League food for thought as to how it will license rights to show matches in future, rather than on the exclusive territorial basis that the High Court has ruled is incompatible with European Union law.

In the event, they both lost out. The Patents County Court ruled that, since (on the facts) there was no oral or written agreement between them, they were both joint copyright owners. Wimmer was effectively the producer and Slater the director. Under the Copyright Designs and Patents Act, they were both entitled to copyright in the footage, and so owned that jointly. Since each had used the footage without the other’s consent, they were both infringing copyright.

The case was reported here: http://www.bailii.org/ew/cases/EWPCC/2012/7.html.

Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP, comments: “This case turned on the question of who owned copyright and what had been agreed between the parties. The court ruled that nothing had been agreed and so both parties owned the copyright jointly, which left a messy situation, particularly as the parties had fallen out. This shows the need to have a clear written agreement at the outset to document who owns copyright.”

A number of record companies, represented by the BPI and PPL (Phonographic Performance Ltd) applied to the High Court for an order for ISPs to block, or at least impede, access to The Pirate Bay. As with the Newzbin2 case, the application came under section 97A of the Copyright, Designs and Patents Act 1988 (CDPA) which provides that an injunction may be obtained against an ISP that has “actual knowledge” of another person using their service to infringe copyright. The parties had agreed to a trial of two preliminary issues – whether (i) the operators and (ii) the users of the website infringed the copyright of the BPI and PPL members.

The High Court ruled that both the operators and users of The Pirate Bay had infringed copyright under the European Union’s Copyright Directive and the CDPA. The High Court will now go on to consider whether to grant the order against the ISPs to block The Pirate Bay in the same way that Newzbin2 has been blocked, but the outcome seems to be beyond doubt – the High Court stated that the copyright infringement in this case was the same, if not greater, than that involved in Newzbin2.

The ruling in the Newzbin2 case was considered to be a landmark in the fight against copyright infringement, and copyright owners were celebrating a victory. This was particularly following the slow progress in making the blocking provisions of the controversial Digital Economy Act 2010 active. The High Court seems to have upheld the decision in Newzbin2, or at least has got half way there – this will be a huge encouragement to copyright owners to continue in their pursuit of the protection of their copyright by using section 97A of the CDPA.

The ECJ had ruled that the transmission of PL copyrighted works by television in pubs was a communication to the public under article 3(1) of the Copyright Directive, and the High Court ruled that that article was effectively transposed into English law by section 20 of the Copyright, Designs and Patents Act 1988 (CDPA). The Copyright Directive requires member states to provide authors with the exclusive right to authorise or prohibit any communication of their works to the public by wire or wireless means, including the making available of their works to the public in such a way that members of the public may access them from a place and at a time individually chosen by them. Article 3(1) states that a communication to the public of a copyright work is an act restricted by the copyright in a literary, dramatic, musical or artistic work, a sound recording or film, and includes transmission by electronic means. Therefore, the publicans were technically breaching section 20 CPDA when they screened PL games through a decoder card.

However, the High Court ruled that section 72(1)(c) CPDA sets out a defence – that the showing or playing in public of a broadcast, to an audience who have not paid for it, does not infringe any copyright in the broadcast or any film included in it. The High Court ruled that it was clearly the intention of section 72 CPDA to allow films included in broadcasts to be seen and heard in pubs without the consent of the copyright owners, and that any infringement was limited to the PL anthem and graphics.

The High Court also ruled that obligations in exclusive licence agreements to prevent the supply of decoder cards outside the licensed territory breached article 101(1) of the Treaty of the Functioning of the European Union as they restricted competition, so were void to the extent that they restricted the Greek licensee in question from supplying the cards for use in the UK.

As with the decision of the ECJ, both sides can find reasons to be happy with the High Court’s ruling. The PL has some aspects of copyright that it can enforce, but the publicans have received the High Court’s support that the PL’s actions were anti-competitive. It remains to be seen how publicans can deal with the copyright infringement of the PL anthem and graphics – the anthem can simply be turned off and the publicans have made undertakings to do so; however, the graphics may prove to be more difficult to deal with.

Richard O’Dwyer closed the website in 2010 after he was visited by the police and US officials. However, US authorities alleged that the website contributed towards “criminal activity” in the US despite O’Dwyer never having been to the US, and despite the fact that no action is being taken against him in the UK. They also claimed that the website generated $230,000 in advertising revenue before it was shut down. O’Dwyer should be extradited to face charges of “authorising copyright infringement” as providing the links to the pirated content is a serious offence in the US and would justify extradition under the UK-US extradition agreement.

O’Dywer’s lawyers had argued that the website was merely a search engine for content, and that he should only face charges in the UK. He could face up to ten years in a US jail if found guilty of copyright infringement.

MM issued proceedings for infringement of copyright, alleging that the BBC had used his original artistic work in the “Bounce Bunch”, which he had provided to the BBC, in producing “Kerwhizz”, and that the characters were so similar that they could only have been created by the BBC by copying his own characters. MM showed that there were extensive similarities and that the BBC had prior access to his work (which had been available online even before he submitted it to the BBC), such that the Patents County Court passed the burden of proof on to the BBC to show that the characters in “Kerwhizz” did not come about through copying.

The Patents County Court ruled that there had not been any copyright infringement, on the grounds that the BBC’s evidence clearly showed that the “Kerwhizz” creations did not come about through copying the “Bounce Bunch” characters. There was no causal connection between the two. Rather, the Patents County Court found that the BBC witnesses had shown on the evidence that they had already provided the Kerwhizz characters prior to the communication from MM. In any event, “Bounce Bunch” designs were simple, generic and not particularly memorable, such that, even if a BBC designer saw the designs, subconscious copying of those designs was extremely unlikely.

The Court agreed with Hodgson’s claim. Although a lot in the script was independent of Hodgson’s book, there was striking similarities, such as the football chant used at the beginning and about 50% of the dramatic events were similar. Taken as a whole, the similarities were too close to be explained in any other way, and as a matter of quality and not just quantity too much of the book had been copied, directly or indirectly. The Court ruled that there had been infringement.

1. the meaning of a “communication to the public” for the purposes of the Copyright Designs and Patents Act 1988 (the “Act”); and
2. the meaning of “reproduction in part” (whether individual frames amounted to a substantial part of the copyright work and whether the display of a broadcast on screen amounted to reproduction) for the purposes of the Act.

The High Court has now ruled that the first question should be amended for reference to the ECJ, as to whether the right to authorise or prohibit broadcasts extends to broadcasters of free-to-air programmes online to users who could lawfully receive those broadcasts on their televisions.

The High Court has also stated that the second question above has been answered by the ruling of the ECJ in the case of the FA Premier League v QC Leisure & Karen Murphy, which stated that copyright owners do have the “exclusive right to authorise or prohibit direct or indirect” reproduction of their content in the form of “transient fragments of the works within the memory of a satellite decoder and on a television screen, provided that those fragments contain elements which are the expression of the authors’ own intellectual creation, and the unit composed of the fragments reproduced simultaneously must be examined in order to determine whether it contains such elements”.

BT’s initial response has been that it would need to be ordered by a court before taking action, in the same way that a court order was needed before Newzbin2 was blocked. Those downloading copyright content illegally may not be paying for the service they receive, but it is certainly costing the ISPs and industry bodies huge amounts in legal fees to try to prevent it.

BT estimated that the cost of implementing the court order was approximately £5,000, so it is unlikely that it would be worth the ISPs putting up a legal fight against any forthcoming court order. Indeed, the ISPs seem to have indicated that they would comply with any court order they receive. However, there is some doubt as to whether they have agreed to the width of the MPA’s requests for their consent to a court order. The move will only add fuel to the fire stoked up by critics of website blocking – the speed with which the pressure to block Newzbin2 has spread to other ISPs may also spread to other websites (such as The Pirate Bay) and lead to more argument, perhaps in court.

Responses are requested by 2 December 2011, and it is hoped that the code will allow broadcasters to self-assess whether advertising behaviour is discriminatory and, even if it is, whether it is justified.

The consultation document can be found here.

In the interview, Holden promoted certain information about the law firm group “QualitySolicitors”, and a presenter of the programme was considered to have endorsed the promotion. Ofcom ruled that “undue prominence” had been given to QualitySolciitors during the interview and ITV had not given sufficient information to viewers as to why the brand was being promoted in an interview with an actress.

The ruling noted that ITV was providing refresher training to its production team to prevent a repeat of the breach.

The initial ruling was given in favour of the film studios (whose copyright material had been copied) under section 97A of the Copyright, Designs and Patents Act 1988 (the Act), which provides that an injunction may be granted against an Internet service provider (ISP) that has “actual knowledge” of the use of its service to infringe copyright. The case will be of interest to ISPs and rights-holders, particularly since this is believed to be the first time that an order under section 97A has been made against an ISP.

BT has been ordered to use its Cleanfeed filtering system, which is currently used to block access to websites featuring images of child abuse, to block the website. Controversially, BT was also told to pay for the cost of implementing the court order. The judge said that since BT made money out of its users, it was right that it should foot the bill as part of the cost of doing business, and in any event the costs were proportionate. It left open the possibility of whether the costs would always be paid for by the ISP but in this case it would make sense.

BT and the film studios agreed that as software had been developed and was likely to be circulated by copyright infringers that could circumvent BT’s Cleanfeed system, BT’s blocking measures may have limited effect. However, the High Court judge said that the court order would still be justified if it meant that access to Newzbin 2 was prevented for only a minority of users.

This is the first time an order has been granted against an ISP under section 97A of the Act, but it is also interesting to note that the judge stated that he thought it unlikely that, following the implementation of the block, a BT user would be able to bring a claim against BT for breach of their Internet service contract with the ISP. However, that might be little consolation for BT, which merely thanked the High Court for providing ‘clarity’ on the issue.

No doubt, BT would have felt a bit aggrieved that the Court had refused to accept its argument that the order should be set aside or varied if the film studios did not apply within a reasonable time for the same injunction against other UK ISPs. The Court said that there was nothing in the law that made the injunction conditional on this action being taken. It was for the studios to decide on which remedies they would pursue and against whom.

BT would also no doubt have been unhappy at the refusal of the judge to give it permission to shut down Cleanfeed temporarily if it needed to. The judge said that it would only do that if the studios consented or BT obtained a court order.

So, all in all, a great result for the creative industries, but not a particularly good day in court for innocent ISPs.

The ISPs have now been granted permission to appeal by the Court of Appeal. It seemed that the Digital Economy Act was safe following the Court of Appeal’s initial decision to refuse permission to appeal, but this long-running saga now seems to have some more time left to run.

The ECJ has ruled that:

-       national legislation that restricts the sale or use of foreign decoder cards is in breach of Article 56 of the Treaty on the Functioning of the European Union (“Treaty”) and it infringes the freedom to provide services; and

-       exclusive licence agreements that restrict the supply of decoder cards to TV viewers who want to watch those broadcasts outside of the Member State for which the licence is granted are in breach of Article 101 of the Treaty, which prohibits agreements that have as their object or effect the distortion of trade between Member States.

The ECJ ruled that a breach of Article 56 cannot be justified either by the intention to protect the intellectual property rights in the broadcasts or in an attempt to encourage more people to actually attend the football matches being broadcast.

The ECJ also considered Article 3(1) of the Copyright Directive, which allows copyright owners to restrict any “communication to the public” of their works. The ECJ ruled that the transmission in a pub of broadcasts containing copyright protected works – in this case the opening video sequence of Premier League matches that contains the Premier League anthem – is a “communication to the public” under the Copyright Directive, and the consent of the copyright owner is required for such a communication.

The ECJ’s ruling is largely in line with the opinion of Juliane Kokott, one of the eight Advocates General to the ECJ whose opinions, whilst not binding, are usually followed in the ECJ’s ruling. It remains to be seen how the High Court applies the ECJ’s ruling to the facts of the case of Karen Murphy and other similar cases before it. It would seem that pubs cannot be prevented from obtaining foreign decoders to show Premier League matches shown by foreign broadcasters.

However, the part of the ruling relating to the Premier League’s anthem and opening video sequence may take the edge off the ruling for rights holders. It would seem that, if the Premier League can continue to include certain copyrighted content in the broadcasts, such as its anthem and opening sequence, commercial institutions such as pubs will not be able to show broadcasts from foreign broadcasters without the consent of the Premier League. However, this seems unlikely to impact on an individual’s rights under the ruling, who may be able to show such copyrighted material in their own homes as it would not then be a “communication to the public”.

Others have argued that the Premier League will find it hard to protect this copyright and enforce its rights against commercial venues if the High court agrees with this interpretation. Still, we may yet see increased amounts of copyrighted content in each Premier League broadcast which would further prevent commercial venues showing the broadcasts, and attempts by commercial venues to split the copyrighted content from the match itself, which the ECJ confirmed is not the copyright of the Premier League as it cannot be considered the Premier League’s own “intellectual creation”.

The ECJ’s ruling seems to have implications on how the Premier League, and possibly other rights holders in relation to films and music, sell their rights within the European Union. The ruling may result in a single EU-wide market for rights as the Premier League tries to mitigate the effect of the ruling; this would avoid the domestic price being undercut from overseas. This may impact on domestic broadcasters, such as Sky, who would then need to buy the rights on an EU-wide basis rather than domestically. But at least it would protect the value of their investment.

It is commonly accepted in the entertainment industry that the formats for television programmes can be licensed for lots of money, although the exact legal status has never been finally determined. The format for Strictly Come Dancing has been licensed to 35 countries and has been described as the most successful reality television format.

The UK has supported the increase in protection, despite saying in the Gowers Review and Hargreaves Report that the case for the extension had not been made out.  The increase will benefit musicians from the late 1950s and 1960s such as Sir Cliff Richard, who have lobbied for the increase for several years.

The Directive must be brought into law within two years.  More information is available in the European Commission’s statement on this issue here: http://europa.eu/rapid/pressReleasesAction.do?reference=MEMO/11/595&format=HTML&aged=0&language=EN&guiLanguage=en.

Accordingly, the ASA ruled that the adverts were misleading and British Gas had breached the BCAP Code for television and radio adverts and the CAP Code for non-broadcast adverts.  The self-regulatory body added that text in the adverts explaining that same-day service was limited during weekend, on public holidays and during exceptional peak demand was not properly qualified. The advertising Codes are not legally enforceable, but it is best practice to comply with them as failure to do so could result in bad publicity and an inability to obtain future advertising space.

The recommendations of the Hargreaves Report that have been accepted are:

-          to create a digital market place where copyright licences can be traded (a “Digital Copyright Exchange”);

-          to allow an exception from copyright infringement for limited private copying, such as copying from a legally purchased CD onto a computer or portable device;

-          to allow an exception from copyright infringement for parodies of other people’s work without first having to obtain the owner’s consent;

-          to allow an exception from copyright infringement for search and analysis techniques known as ‘text and data mining’, which is currently illegal despite its benefits to medical and other science and for which advanced technology exists;

-          to establish licensing and clearance procedures for orphan works (copyright works for which the owner is not known); and

-          to review the role of the Intellectual Property Office.

At the same time, the Government has announced:

-          a new enforcement programme to protect intellectual property rights, which will be further investigated before any specific legislative measures are taken;

-          a notification system to inform Internet users of copyright issues and how to avoid illegal and pirated content; and

-          a five year international strategy to improve the efficiency and effectiveness of the international intellectual property system.

The Government has accepted the Hargreaves Report almost in its entirety, which is a refreshing response for an industry that for so long seems to have been desperate for reform. The reforms to copyright are intended to ensure that the law reflects reality, and for a consumer wanting to move music they have legally bought in the form of a CD onto their iPod, this is a huge step. However, it is the package as a whole which impresses – a Digital Copyright Exchange, a licensing system for orphan works, and reviews of enforcement and international strategies – whilst giving the Government a lot to be getting on with, suggests that intellectual property law in the UK is getting the facelift that many have been demanding for a long time.

ITV Broadcasting, together with Channel 4 Television and other broadcasters, issued proceedings against TVC for infringement of copyright. The case came to trial with the broadcasters arguing that the copyright in the broadcasts and films was infringed by (i) TVC communicating them to the public, and (ii) TVC making transient copies of the broadcasts and films in its own servers and on the screens of its users.

TVC based its defence on the following arguments:

(a)                 section 20 (1)(c) of the Copyright Designs and Patents Act 1988 (CDPA) states that communicating a copyright work to the public by broadcast constitutes infringement of copyright, but this section went beyond the powers of the Secretary of State granted to it under section 2(2) of the European Communities Act 1972 (which grants powers for the implementation of European law in the UK) and the scope of the Copyright Directive, making section 20 (1)(c) “ultra vires” and therefore invalid;

(b)                 even if section 20 (1)(c) was validly enacted, TVC was not communicating the broadcasts and films within the meaning of that section and thus not infringing copyright;

(c)                 any copies of the broadcasts and films made on TVC’s servers were not copies of substantial parts, and therefore copyright was not infringed;

(d)                 TVC had a defence under section 28A of the CDPA in that it was making temporary incidental copies as an integral part of a technological process to allow it to transmit the work between third parties, and that, in doing so, the transmission had no independent economic significance to TVC; and

(e)                 TVC had a defence under section 73 of the CDPA in that it was streaming regional channels only in the area for which those channels were made for reception and the re-transmission was re-transmitted through the Internet by cable from its servers.

The Ruling

The High Court ruled as follows:

(a)                 section 20 (1)(c) of the CDPA was not “ultra vires” – the powers of the Secretary of State under section 2(2) of the European Communities Act 1972 were not to be interpreted narrowly and allowed for legislation to be enacted by the UK Government which was not specifically required for the implementation of an EU Directive such as the Copyright Directive. Rather, section 20 (1)(c) was closely related to the Copyright Directive’s subject matter and was thus validly enacted;

(b)                 TVC was, in the view of the High Court, communicating films and broadcasts to the public, but this issue was referred to the European Court of Justice (ECJ) for a preliminary ruling. This was because case law reviewed by the High Court did not deal with the specific issue considered in this case – whether or not there was a communication to the public when an intermediary entity, acting for its own profit, intervened in full knowledge of the consequence of its actions and in order to expand its own audience to its transmissions and adverts, and communicated broadcast signals to the public who could access that signal using their own television or computer at home;

(c)                 TVC was not, in the view of the High Court, reproducing a substantial part of the films or broadcasts in its servers or on a user’s screen, but this issue was also referred to the ECJ. This was because the meaning of ‘reproduction in part’ (whether individual frames amounted to a substantial part of the copyright work and whether the display of a broadcast on screen amounted to reproduction) had already been referred to the ECJ in another case – Football Association Premier League v QC Leisure – and the ECJ’s decision in that case was outstanding;

(d)                 TVC did not need the protection of section 28A of the CDPA if the High Court’s view in (iii) above was correct, as no defence would be needed if there was no reproduction of broadcasts; however, the High Court noted that this issue depended on the ECJ’s decision in the Football Association Premier League v QC Leisure case; and

(e)                 the High Court ruled that the defence under section 73 of the CDPA did apply to the channels streamed by TVC but only where (a) there was actually a cable involved in the re-transmission at the user’s end i.e. the streaming to a computer was covered by the defence, but not streaming to a mobile phone, and (b) the re-transmission was within the intended regional area for service of that channel.

Comment

Copyright seems to be a major issue in the courts at the moment, and the decision of the ECJ in relation to those issues referred, both in this case and the Football Association Premier League v QC Leisure case will have a huge impact on the streaming of broadcasts on the Internet. The High Court’s view seemed to be that the streaming for commercial purposes was an infringement of broadcast copyright, but it remains to be seen whether the ECJ’s decision differs fro the High Court’s initial view.

Andrew Ainsworth (AA) was hired in 1976 by Lucasfilm (L) to make ‘Stormtrooper’ helmets and armour for the film ‘Star Wars’ which was released in 1977 (later renamed ‘Star Wars: A New Hope’). In 2004, AA set up a website and sold helmets and armour produced using the same mould as had been used in 1976, some of which were sold and delivered to customers in the USA. L issued proceedings against AA in California for infringement of copyright and trade marks, and the US District Court in California ruled against AA to the tune of $10 million. However, since AA had no assets in the USA against which the judgement could be enforced and since the UK usually does not enforce US court judgements, the US proceedings were not taken any further.

Instead, proceedings were issued in England. AA admitted that he had used drawings provided to him in 1976 by L, and that he had used those drawings in producing the helmet and armour. Although AA admitted that L had had unregistered design rights in the helmets and armour which would have prohibited him from manufacturing identical objects (and such rights are totally different to copyright), he contended that these were the only rights L had had which AA could have otherwise infringed (as these unregistered design rights only last for 10-15 years from their creation and so had expired at the time he started recreating the helmets and armour). However, he said that to the extent the drawings and objects attracted protection under the Copyright, Designs and Patents Act 1988 (CDPA), they were not artistic works (and it should be noted that a sculpture is an Artistic work so he was arguing the objects were not sculptures, which would attract protection). He also argued that he was not infringing CDPA by making helmets and armour to the designs because, if for some reason the judges were to find that the original objects were sculptures (contrary to what he was arguing) then he was entitled to a defence under sections 51 and 52 of the CDPA which permits manufacture of an article to a design, without infringing copyright.

In the initial ruling, the High Court ruled that the defence under sections 51 and 52 of the CDPA did apply. Accordingly, there was no copyright infringement. The High Court also ruled that, whilst the US judgment could not be enforced in the English courts, the US copyright had been infringed and the claim was justicable in the English courts.

The Court of Appeal upheld the ruling of the High Court by saying that the helmet and armour were not artistic works under the CDPA. However, the Court of Appeal rejected the High Court’s reasoning in relation to the justicability of a claim in the English courts – a claim for infringement of US copyright should not be justicable in the English courts. As a result, L appealed to the Supreme Court on two issues:

1)       whether the helmets and amour were sculptures (which would attract copyright protection) and then whether the defences under sections 51 and 52 of the CDPA applied; and

2)       whether the English courts could consider a claim against a person domiciled in England for copyright infringement alleged to have happened, and was subject to a law, outside the EU.

Supreme Court Ruling

1) Copyright

The law relevant to the copyright infringement claim, as referred to above, is provided by the CDPA. Under section 1 of the CDPA, copyright exists in original artistic works. Under section 4 of the CDPA, artistic works can include graphic works or sculptures, which are defined as a cast or model made for the purposes of sculpture. Section 16 of the CDPA defines copyright infringement as being a person who copies all or part of a work, whether directly or indirectly, without the copyright owner’s permission.

The Supreme Court ruled that the helmet was not a sculpture. Rather, it was considered to be ‘a mixture of costume and prop’ for the effect of the film it was used in. The film itself was the work of art, rather than the helmet, which merely contributed to the success of the film. The Supreme Court referred to the helmet as ‘utilitarian’ in that it was merely an element of the production process of the film. Therefore the rulings of both the High Court and the Court of Appeal were upheld.

As such, the Supreme Court did not need to consider sections 51 and 52 of the CDPA and whether AA could rely on them as defences to the copyright infringement – the helmet was not an artistic work that was subject to copyright in the first place, and as such AA had not infringed any copyright under the CDPA for which he required a defence.

2) Justicability in England

The relevant law considered by the Supreme Court, in order to decide whether alleged copyright infringement abroad under the provisions of a foreign law was justicable in the English courts, was somewhat more complicated, in that the Supreme Court had to consider both the Brussels Regulation, an EU regulation on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, and case law.

Under article 22(4) of the Brussels Regulation 2000, an exception is provided to the general rule that a defendant should be sued in the court where the defendant is domiciled. That exception is that, where proceedings relate to the registration or infringement of intellectual property rights, exclusive jurisdiction is given to the member state in which registration has taken place, been applied for or should have taken place. This exception takes effect irrespective of the domicile of the defendant.

The case law considered by the Supreme Court was extensive, and below is a brief summary only of the issues from the cases considered:

-          the Moçambique rule, resulting from a case in 1893, relates to the trespass of property, and states that the English courts will not exercise jurisdiction in relation to matters which were ‘local’ in their nature, compared to proceedings which were ‘transitory or personal’. Therefore the English courts would not accept jurisdiction on a claim over property outside of English territory unless it could be proved that the matter was a ‘transitory or personal’ rather than a ‘local’ issue;

-          the rule in Philips v Eyre 1870, which states that an act done abroad can only be the subject of proceedings in England if the act, if done in England, would have been a tort;

-          Tyburn Productions v Conan Doyle 1991, in which an infringement of US copyright was struck out by applying the Moçambique rule and the rule in Philips v Eyre;

-          Coin Controls v Suzo International 1999, which applied the Moçambique rule and the rule in Philips v Eyre as well as article 22 of the Brussels Regulation; and

-          Red Sea Insurance v Bouygues 1995, a Privy Council ruling which was applied by the Court of Appeal in Pearce v Ove 2000 in relation to hearing a claim for infringement of Dutch copyright, which stated that the rule in Philips v Eyre should be displaced if a country had a specific relationship to a particular act and the parties.

The Supreme Court ruled that the claim for infringement of US copyright was a claim over which the English courts could accept jurisdiction if there was a basis for that jurisdiction in relation to the defendant. The Supreme Court ruled that the Moçambique rule and the rule in Philips v Eyre were no longer relevant, having been pushed to the side by Red Sea Insurance v Bouygues 1995 and actually being abolished by the Private International Law (Miscellaneous Provisions) Act 1995. As such, there was nothing to prevent the English courts accepting jurisdiction over infringement of intellectual property rights abroad – L’s claim against AA for copyright infringement in the USA under US law could be heard in the English courts.

The Supreme Court also considered intellectual property policies relating to this issue, and referred to the fact that article 22(4) of the Brussels Regulation, which assigned exclusive jurisdiction to courts of the country where intellectual property rights originated (which would have prevented the English courts from accepting jurisdiction in this case) would apply to copyright only in rare cases. The Supreme Court made clear that article 22(4) does not apply to intellectual property outside the EU, but emphasised that it shows that there is a distinction between claims which involve registration or validity of intellectual property rights and those which do not, reiterating that this claim was for copyright infringement and not validity or registration issues.

The Supreme Court also considered Rome (II), the EU regulation on non-contractual obligations, which, whilst not applicable in this case as it came into force in 2009, shows that European policy is not against the litigation of foreign intellectual property rights. Rather, the Supreme Court stated that Rome (II) “… plainly envisages that actions may be brought in [EU members states] for infringement of foreign intellectual property rights, including copyright”.

As such, The Supreme Court ruled that the decision in Tyburn Productions v Conan Doyle was mistaken, and that the English courts could accept jurisdiction for the claim by L for breach of copyright by AA in the USA.

Comment

The importance of this ruling should not be underestimated. Many view this as a victory for Mr Ainsworth because he cannot be sued for his sales in the UK (because the original helmets and armour are not sculptures) and because he will not be sued in the UK for his sales in the US – even though he now could be sued (and the only reason Lucasfilm will not sue him is because his sales in the US were so low, he’s not worth suing)! But that is the narrow view of this case.

The wider significant issue ruled on by the Supreme Court is jurisdiction, and this is what affects everyone else in the future. The fact that a claim for foreign copyright infringement against a person domiciled in England falls within the jurisdiction of the English courts has wide-ranging implications.

• Creation of a Digital Copyright Exchange. This would be a centralised digital copyright works marketplace where licences to copyright content could be readily bought and sold, akin to a copyright shop. This would extend what currently happens with through music collections agencies such as PRS. The aim is to have this implemented by the end of 2012. In addition, the UK should support the European Commission’s proposals to establish a framework for cross-border licensing.
• Introduction of legislation to permit use of orphan works – copyright works where the rights owner has not been ascertained. The European Commission has also come up with similar plans recently.
• Allowing wider exceptions for lawful copying, such as to include format shifting between a laptop and mp3 player, which is still unlawful. This may also include copyright exceptions for non-commercial research, such as digital copying of medical journals for computerised analysis in research. Parody and library archiving would also be exceptions to copyright. The exceptions would be enshrined in law and non-excludable by contracting out by agreement between the parties. There is no place in the report for anything as extensive as the “fair use” exception along the lines that US law has, as that would not be compatible with European Union law.
• Increasing the Intellectual Property Office’s ability to give legally binding opinions on changes to intellectual property law in response to economic or technological changes.
• A careful look at the enforcement of intellectual property rights. The Government should look not just to enforcement but also education, growing legitimate markets and modernising copyright law. Other countries’ experiences should be considered when the Digital Economy Act starts to become operational in 2012.
• Try to remove patent thickets that stifle innovation. Thickets arise where there are overlapping patent claims by multiple applicants, resulting in delays and extra costs in innovation. This should involve cutting backlogs in patent applications. There should also be a disincentive – perhaps through cost of additional fees for patent renewals – to discourage patents that do not add much value. Computer-related patent rules also need to be clearer and stricter to avoid patents being granted for non-technical inventions or business methods.
• Investigate whether the system of protection for designs should be made clearer. The Intellectual Property Office should conduct an assessment based on evidence within the next 12 months to consider the relationship between design rights and innovation.

It now remains to be seen what the Government will do in terms of implementation of the recommendations within the report. There have been other intellectual property reviews previously – most notably the Gowers Review – which were not then followed-up significantly.

The High Court has seen a similar case appear before it recently, where the landlord of a pub, Mr Turner, was showing Premier League matches that were received from ART, a broadcaster in the Middle East and Africa. The Magistrates’ Court had convicted him and fined him £500 under the Copyright, Designs and Patents Act 1988, and the Crown Court upheld this conviction after he had appealed it.

However, Mr Turner appealed the conviction to the High Court, arguing that the Crown Court should have considered European Union law and had not done so. The High Court agreed with Mr Turner, ruling that the Crown Court had misunderstood the ruling in the case of Karen Murphy, the landlady referred to above currently in front of the ECJ.

The High Court ruled that the appeal should be allowed outright, rather than just postponing the decision until the decision in Karen Murphy’s case has been given by the ECJ; however, the High Court made clear that they were allowing the appeal outright due to the fact that Mr Turner had now acquired an undoubtedly legitimate licence to show Premier League football in his pub, and the fact that the initial prosecution had taken place four years ago. It is unclear what the High Court’s ruling would have been if Mr Turner had been continuing his alleged illegal activity at the time of the hearing.

We eagerly await the final score from the ECJ in the Murphy case.

Ainsworth produced the “stormtrooper” helmets and armour for the first Star Wars film “A New Hope” in 1977. He was sued in 2004 for over £10 million after he started to sell replica helmets, with Lucasfilm arguing that the helmets could not be reproduced due to the intellectual property in the helmets belonging to Lucasfilm.

The road to the Supreme Court started a long time ago in a country far (far) away. The case began in a court in the USA, with Lucasfilm claiming an infringement of copyright and trade mark for Ainsworth’s sales in the US, totalling £30,000. The U.S. District Court for the Central District of California ruled in favour of Lucasfilm, and Ainsworth was told to pay Lucasfilm more than US$20 million for the infringement, despite the low value of Ainsworth’s total sales. Lucasfilm was forced to enforce the judgment in the UK as Ainsworth had no assets in the US.

Lucasfilm argued that the judgment should be enforced due to Ainsworth’s market presence in the US – even though he was not there, the helmets were advertised there and he was clearly targeting the US market through his website. In addition, Lucasfilm argued that the helmets were sculptures, meaning that the copyright protection for the helmets would last for 70 years from the date of design – this would mean Ainsworth had clearly infringed the copyright.

Lucasfilm failed to convince the High Court, which ruled that Lucasfilm’s argument about Ainsworth’s “presence” in the USA did not stand up to scrutiny, and the court was not willing to set a new precedent for future cases. The High Court also ruled that the helmets were not sculptures, meaning they were subject to a shorter period of copyright protection of 15 years from the date that they were first marketed bythe operation of statutory defences. By the High Court’s ruling, Ainsworth was in the clear. The Court of Appeal then upheld the High Court ruling.

Now Lucasfilm has convinced the Supreme Court to hear the case, and it will review the two main points in the decisions of the High Court and the Court of Appeal – whether Ainsworth can be sued in the UK for actions in the US that infringed the copyright of Lucasfilm under US law whilst he was in the UK, and whether the helmets should be considered sculptures to allow for the longer 70 year protection period under copyright.

Given the decisions of the High Court and the Court of Appeal, it seems that Lucasfilm will need more than a ‘Jedi Mind Trick’ to convince the Supreme Court of its arguments, but a rejection of Lucasfilm’s case may impact the US film industry’s use of UK suppliers when times are hard enough.

A European Union (EU) Directive allows each EU Member State to designate certain sporting and cultural events for free-to-air broadcast on television for the purposes of national interest. In the UK, this Directive was enacted by the Broadcasting Act 1996.

FIFA and UEFA challenged that law on the basis that it restricted their ability to sell rights to show the tournaments at the most favourable prices, and that it was an infringement of their intellectual property rights and a distortion of competition in the sports broadcast market. They accepted that, in the UK, the matches involving England, Scotland, Wales and Northern Ireland, along with the finals and semi-finals, should continue to be shown on free-to-air television, but they argued that they should have the ability to sell the rights to show other matches to subscription-only television.

The EGC rejected the challenge, and ruled that all of the matches that take place at such tournaments are ‘events of national importance’, making the free-to-air nature of the entire tournament compatible with EU law.

The EGC is the European court where first instance rulings are made, and appeals are made to the European Court of Justice. FIFA and UEFA have two months to appeal.

A ruling in favour of FIFA and UEFA could also affect the broadcast of events such as the Olympic Games and Wimbledon on free-to-air television.

The case on which she was commenting is currently before the ECJ, and concerns a pub landlady in England who used a decoder card from Greece to show the matches live. The decoder card is much cheaper than paying the commercial fees charged by domestic broadcasters to show the matches live.

Kokott opined that to prevent such use of decoder cards would partition the EU market into several distinct internal markets, impairing freedom to provide services. The agreements under which licensors prohibited licensees in other countries from enabling the games to be watched from the UK were anti-competitive contrary to Article 101 of the Treaty on the Functioning of the European Union. There was also no copyright infringement. Whilst the decoder cards may offer a cheaper way of showing the football, they were still legitimate as the relevant licence fee charges to use the television rights had been paid, albeit in a roundabout way.

Whilst the Advocates General offer only non-binding advice to the ECJ, this advice is followed in many cases. If the ECJ does rule in accordance with Kokott’s advice, it would be a watershed moment for Sky and other similar broadcasters. This ruling could even apply beyond just the Premier League matches they show, and may also include film and television rights. Subscribers would look elsewhere for a cheaper provision of the services that are provided by those broadcasters. This may lead to rights owners licensing the whole EU market in one go rather than by country, or refusing to supply certain territories unless they pay a different price.

It is possible that there may be less money offered for the rights to show the Premier League due to the lack of domestic exclusivity available, with drops in payment filtering through to the football clubs. If there is less money swirling around the Premier League, will some of the rich foreign owners of Premier League clubs be quite as interested? What would happen to the value of the clubs and their ability to meet their huge debts? We have recently seen Premier League clubs flex their financial muscle in purchasing players in the January transfer window. If the Advocate General’s advice is put into practice by the ECJ, extravagant spending by football clubs may become a thing of the past and their very survival may be called into question.

The ASA ruling related to an advert for the perfume which showed a woman in a series of poses that led to complaints that the advert simulated drug use. The ASA ruled that, whilst it had no objection to the name of the perfume including the word ‘opium’, and despite being satisfied that the intention of the advert was not to simulate drug use, it did appear to simulate drug use and should not be shown again.

The Advertising Standards Authority agreed with the advertiser that the advert did not say that the scheme was independent – it was the garages that were being described as independent. However, since garages in the scheme had to pay a monthly fee, the website operator had a commercial interest and garages who did not want to pay were excluded. The ad should have disclosed that information; otherwise, viewers may have assumed that the scheme had full independence. Since it had failed to do that, the ad was misleading. The ASA therefore ordered that the ad should not be broadcast again without being changed.

The employment tribunal upheld her claim that the BBC’s decision to drop her in favour of younger presenters was age discrimination, though it rejected a claim for sex discrimination.

Ms O’Reilly, who is 53 years old, was one of four female presenters in their 40s or 50s who were dropped from the television programme Countryfile when it moved from Sunday mornings to a prime-time Sunday evening slot. They were replaced by much younger presenters, although the long-standing host of the show John Craven, who is 69, was retained (hence Ms O’Reilly’s sex discrimination claim.) The tribunal heard that whilst working on the show Ms O’Reilly had been warned to be “careful with those wrinkles when high definition comes in”, and had been asked whether it was “time for Botox.” Ms O’Reilly also argued that after she left Countryfile, offers of work on the other BBC programmes she had worked on in the past immediately dried up.

The BBC had justified its decision to replace the older presenters with younger ones on the grounds that they would be more popular with prime-time viewers. However, this “complacent” explanation was rejected by the tribunal, which ruled that there was no evidence that selecting younger presenters was necessary to appeal to a prime-time audience.

The tribunal also upheld Ms O’Reilly’s claim for victimisation, agreeing that her manager at the BBC had victimised her by ensuring that she was dropped from the other BBC programmes she presented, and for not allowing her to continue writing for Countryfile Magazine after he suspected her of being responsible for negative press reports.

The amount of compensation to be awarded to Ms O’Reilly will be decided at another hearing in the next few weeks.

The tribunal’s ruling has made it clear that broadcasters are justified in their attempts to widen the appeal of their television programmes (and in this case, by attracting a younger audience). However, it is not justifiable to give preference to younger presenters over more senior presenters (even if the eldest presenter – in this case John Craven – is retained.) 

In the light of this decision, which is not to be appealed according to the press reports, employers need to be mindful of the ways in which they treat older employees/workers, particularly having regard to the abolition of the default retirement age which comes into effect between April and October this year. Employers will have regard to the fact that age discrimination awards are not capped by any statutory ceiling.

The law is not automatically unfair, but the High Court may decide that it is when it undertakes the judicial review.

In this case, SGAE (a Spanish collecting rights society) sued Padawan for unpaid copyright levies on some of the materials sold by Padawan. Padawan argued that applying the levy to all sales was incompatible with EU law. After the Spanish courts referred the matter to the European Court of Justice to decide, the ECJ agreed. The ECJ has ruled that private copying levies may only be charged when the goods are sold to individuals and not to businesses. That is because the assumption cannot be made that businesses will use the material for unauthorised copying.

UK law does not currently allow unauthorised copying at all, even for private use. It has often been argued that the position in the UK should change and fall into line with many other European countries. In that case, the impact of this decision will take on added importance for the entertainment industry.

The High Court agreed with the BBC that the duty of confidentiality would have remained on an on-going basis, and this applied not just to Ben Collins’ service company in contract law but also  to Mr Collins in equity. However, it was too late to keep the cat in the bag. Mr Collins’ identity as The Stig had been widely reported in a number of places, so the information was now deemed to have been in the public domain. The Court said the purpose of an interim injunction to protect confidentiality was not merely to punish a defendant for his previous unlawful action but it was to maintain the status quo and protect damage before it was too late. The BBC may, of course, still maintain a right to claim for financial losses arising out of any breach of confidentiality.

If the BBC had been a bit quicker off the mark, there may have been a different result, but it seems that the makers of Top Gear were just not quick enough here. Maybe The Stig himself may have done better if he had been on the BBC’s side in this case?

Things have now got a lot worse for the firm. Due to its notoriety, it became the target of a denial of service attack to bring its website down. As the firm was getting its website back up again, a large amount of person data – some of it sensitive personal data – was accessible through its public-facing site. The data then appeared on The Pirate Bay file-sharing site. The data involved over 10,000 people’s names, addresses, Internet addresses, credit card details and what they had been accused of accessing, including adult entertainment material. It also contained correspondence involving or relating to the accused people, including how much compensation had been paid.

The situation has drawn in Internet service providers such as BT and Sky, as much of the data had been supplied by them to ACS:Law. However, those ISPs claim that they had merely been supplying the data to the law firm in order to comply with their own legal obligations and the data that they had supplied was encrypted and secure.

The Information Commissioner is sharpening his tools as he looks for a high profile case to show off his new powers as a deterrent to others. Data controllers must take adequate steps to keep data secure. A serious breach of the Data Protection Act can now lead to fines of up to £500,000. Although no investigation has been undertaken yet, the Commissioner certainly sees that serious questions need to be answered, such as how secure the information was and how private information could have been accessed through the publicly facing website. The Commissioner will also be looking carefully at any encryption used, firewalls and staff training. The Commissioner said he could issue fines of up to £500,000 and although he would not put the firm out of business a company hit with a half a million fine would suffer real reputational damage. Ouch!

Any case that involves a discussion of format rights is particularly interesting. The legal cases that have reached the courts have been few and far between, despite there being millions of pounds involved in exploiting and exporting formats for television shows and there being plenty of allegations of copying. The leading UK case from 20 years ago suggests that format rights may not be protectable as a form of intellectual property right, but many people sign up to lucrative licence fee deals to be able to use programme formats.

This latest case suggests that there may be some legal basis for that business practice. Copyright protects the expression of an idea (such as the text) rather than the underlying idea itself. However, the judge in this case suggested that if the ideas and concepts had been copied, then the case may have been decided differently. The judge said that he accepted that it was not necessary for the actual text to be copied in order for a claim for copyright infringement to be made out. He took this position from the fact that there were cases in which copyright in a novel or play could be infringed by copying the plot even if the language used was different.

It will be interesting to see what a UK court decides if and when a format rights case is decided on in a full court trial.

The High Court had real difficulty. It said that that it was impossible to forecast what the box office takings would have been for a film, especially one that had yet to be finished. It was also impossible to test the claimant’s projections of the likely losses. Projecting the numbers of CDs and DVDs, let alone associated sales such as ringtones and radio income, were just a matter of pure guesswork. However, that should not stop Experience Hendrix from being able to claim any losses, as that would have hit the wrong note entirely. The Court therefore had to find some way of quantifying the losses.

Despite all the speculation over figures, two pieces of evidence enabled the High Court to come up with a figure of lost sales of US$5.8m for the 12 month period following 2010. One piece of evidence was a distribution agreement entered into with a company in 2010 and another was from a rival offer made to the claimant for the DVD and soundtrack rights. The High Court just did the best it could based on those two pieces of evidence. Additional damages would not be awarded as a punishment for flagrant infringement, as The Times had made a genuine attempt to have an appropriate licence.

It is doubtful whether this case or its results would be music to anyone’s ears – whether the fighting parties, judge or even the deceased music star.

The ASA acknowledged that ASDA applied the 100 day guarantee to the goods whether they were faulty or not and therefore this did go beyond the consumer’s rights at law for non-faulty goods, but this had not been made clear from the advert. Accordingly, ASDA had breached the Broadcasting Code of Practice and was ordered not to repeat the ad in that form.

But some comedians find this no laughing matter when their livelihoods depend on the uniqueness of their scripts. This is not the first time comedians have threatened legal action against others for copyright infringement.

And one of the biggest comedians to suffer was the winner of the funniest joke award at the Edinburgh Festival Fringe in 2009, Dan Antopolski. His joke was so funny that it ended up posted all over the Internet. He was not given attribution for the gag. If he would have tried to use it again, people might have thought he was ripping someone else off or copying someone else’s material! In any event, it would not have been funny because it had become so notorious that it would not have been funny the second time. Then the only joke would have been on him!