Minister publishes draft Copyright legislation

Posted on January 26, 2012 by Davinia Brennan

Minister Sherlock has, today, published the draft European Union (Copyright and Related Rights) Regulations 2012, which are expected to be signed imminently. Minister Sherlock has strenuously denied claims that the proposed legislation mirrors the Stop Online Piracy Act (SOPA) in the United States, stating that such claims “are not based on fact”.

The draft Regulations are, in fact, brief and to the point. They amend the Copyright and Related Rights Act 2000 (the 2000) Act), by explicitly providing for the right of a copyright owner to apply to the High Court for an injunction against an intermediary whose services are used by a third party to infringe their copyright or related right. 

This right is already available in all other Member States of the EU, as two EU directives (the Copyright Directive 2001/29/EC and the Enforcement Directive 2000/31/EC) specifically require that copyright holders are in a position to apply for such injunctions.

The Department of Jobs, Enterprise and Innovation considered that such injunctions were also available in Ireland under Section 40(4) of the 2000 Act, and the inherent power of the courts to grant injunctions, which are equitable and discretionary remedies. However the case of EMI Records (Ireland) Limited and others v UPC Communications Limited [2010] IEHC 377 threw confusion on the matter, when Mr Justice Charleton found that the Court did not have authority under the 2000 Act to order an injunction against ISP, UPC, requiring it to block certain peer to peer sharing websites on its network, and that Ireland had not fully implemented the relevant Directives. Therefore, as Minister Sherlock stated, these Regulations have been published “for the avoidance of doubt” and “to restate the position that was considered to exist prior to this judgment”.

The Regulations strike a fair balance between the protection of copyright owners and the protection of the fundamental rights of individuals, by providing that the court, where appropriate, should give directions requiring any person likely to be affected by the injunction application to be notified of same.

The Government has treaded carefully in drafting the new Regulations, and has taken appropriate account of the recent ruling of the European Court of Justice (the CJEU), in Scarlet Extended SA v SABAM, Case c-70/10. In that case the CJEU held that EU law precludes an injunction being made against an ISP requiring it to install a filtering system that would prevent the illegal downloading of files. Accordingly, the draft Regulations do not go so far as to allow the court to require an ISP to carry out general monitoring of the information it transmits on its network.

In conclusion, the Government has succeeded in drafting Regulations which clarify the law, and strike a fair balance between the rights of copyright owners, internet service providers, and individual users of the internet.

Please click here to access the draft European Union (Copyright and Related Rights) Regulations 2012.
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CJEU confirms IP addresses are "Personal Data"

Posted on January 13, 2012 by Davinia Brennan

As we reported recently, the CJEU held in Scarlet Extended SA (“Scarlet”) v Societe belge des auteurs, compositeurs et editeurs (“SABAM”), Case C-70/10 that an order requiring a Belgian internet service provider to filter certain peer to peer files is not permissible under EU law. The CJEU found that any national measures to protect copyright must “strike a fair balance between the protection of copyright and the protection of the fundamental rights of individuals who are affected by such measures”.


This case is also noteworthy for its landmark decision that internet protocol addresses constitute “protected personal data”.  The CJEU held that the injunction sought, requiring installation of the contested filtering system, “would involve a systematic analysis of all content and the collection and identification of users’ IP addresses from which unlawful content on the network is sent. Those addresses are protected personal data because they allow those users to be precisely identified.”
 

This decision is particularly interesting as Charlton J., in EMI Records (Ireland) Limited v Eircom Limited [2010[] IEHC 108, held that an IP address was not “personal data” under the Data Protection Act 1988-2003, in circumstances where it was collected by a record company and provided to Eircom, in order for Eircom to deal with the owner of the IP address in accordance with the ‘three strikes’ scheme.  Charlton J. concluded that as the name and address of the owner of the IP address was unlikely to come into the possession of the record company, since it was a matter for Eircom to deal the relevant person, the IP address in and of itself did not constitute “personal data” in the hands of the record company. 

Different positions have been adopted by the Member States on this issue, despite the Article 29 Working Party issuing an Opinion (Opinion 4/2007 on the concept of Personal Data) which states that it considers IP addresses as constituting “personal data”.   The Working Party stated this was “especially in those cases where the processing of IP addresses is carried out with the purpose of identifying the users of the computer (for instance, by copyright holders in order to prosecute computer users for violation of intellectual property rights).”

The CJEU’s clarification that IP addresses are “personal data” should ensure a more consistent interpretation is adopted across the EU in the future.  Interestingly, the European Commission’s draft EU Data Protection Regulation, which has been leaked ahead of scheduled publication on Data Protection Day, 28 January 2012, also indicates that IP addresses constitute “personal data”.
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"Counterfeit Goods" - Just Passing Through

Posted on December 16, 2011 by Steven Duggan

Council Regulation 1383/2003 (the Regulation) permits customs authorities to take certain actions where goods entering the European Union (the EU) from non-member states are suspected of infringing intellectual property rights recognised in the EU. This includes suspending release of, or detaining the goods. Under the Regulation, such goods include, amongst others, counterfeit goods (goods infringing a trade mark right), pirated goods (goods infringing copyright or related right or design rights) and goods which infringe a patent under the law of the member state whose customs authorities are seeking to take action.

The Court of Justice of the European Union (the CJEU) has recently ruled that goods which are imitations of goods protected by a trade mark right, copies of goods protected by copyright or a design under EU or Member State law and which have originated from a non-member state cannot be classified as “counterfeit goods” or “pirated goods” under the Regulation merely on the basis that they have been temporarily imported into the EU while en route to another non-member state. Such goods will be classified as “counterfeit goods” or pirated goods” only where it is proven that they are intended to be put on sale in the EU.

This decision appears to be restricted to goods infringing trade marks, copyright, or design rights but it is unclear whether it will apply where goods infringe patent rights which, although included in the definition of “goods infringing an intellectual property right” under the Regulation, were not discussed by the CJEU which referred only to “counterfeit goods” and “pirated goods”.

Interestingly, the Irish Patents Act 1992 (the Patents Act) provides, at section 40(c), that patent holders have the right to prevent the importation of products the subject-matter of their patent. There is no guidance in the Patents Act as regards what constitutes importing, but the wording of the relevant section suggests that goods which would infringe a patent granted under the Patents Act, which are merely passing through Ireland could still constitute infringing goods, even where they are only temporarily passing through Ireland en route to another member state.

This decision was delivered by the CJEU in the joined cases of Philips Electronics v Lucheng Meijing and others (C-446/09) and Nokia Corporation v Her Majesty’s Revenue and Customs (C-495/09), the full text of which can be found here.
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Intellectual Property Rights Protection, China

Posted on December 13, 2011 by Pu Yang

The modern Intellectual Property Rights (IPR) law system was born out of China’s need to develop its market economy in the early 1980s. Within the past three decades China has built up a relatively comprehensive and advanced Intellectual Property Laws and enforcement procedures.

General Legal Frame

To date, China has introduced and enacted legislation in the following areas:

1. Trade Marks: PRC Trademark Law (implemented as of 1 March 1983, last amendment in 2001);

2. Patents: PRC Patent Law (implemented as of 1 April 1985, last amendment in 2008);

3. Copyright: PRC copyright Law (implemented as of 1 June 1991, last amendment in 2010)

4. Software: Regulations on the Protection of Computer Software (implemented as of 1991);

5. Unfair Competition: Anti-unfair Competition Law (implemented as of 1993);

6. Customs: Intellectual Property Customs Protection Regulations (implemented as of 1995);

7. Integrated Circuits: Regulations on Protection of Integrated Circuit Layout Design (implemented as of 1995);

8. Plant Varieties: Regulations of Protection of New Plant Varieties (implemented as of 1997); and

9. IP Offences: Introducing Crimes of Infringing upon Intellectual Property Rights into PRC Criminal Law (implemented as of 1997).

Enforcement

The Judiciary in China increasingly plays a leading role in the enforcement of IPRs. In 2010, the number of new civil IPR cases filed at first instance reached 42,931. This was an increase of 40% on the previous year. Concluded civil IPR cases in 2010 reached 41,718. The total damages claimed in those cases exceeded USD 1.3 billion. With respect to criminal IPR cases, the number of new first instance cases in 2010 was 3,992 and the number of such cases concluded in the same period was 3,942.

Registration of IPRs

The State Intellectual Property Office (‘SIPO’) takes charge of all the patent application acceptance and examination matters. In 2010, 1.2 million new patent applications were filed with SIPO, which was an increase of 27.9% in comparison with the previous year. Among those patents filed, there were 293,000 locally filed patent applications and 12,337 PCT applications.

The Trade Marks Office, accepted 1.07 million trademark registration applications in 2010 and concluded 1.5 million applications. The examination period for trademark registration has been cut back from 36 months to only one year in 2010. In recent years China has ranked first in the world for trade mark application levels, and for trade mark registrations.

There is also a procedure available in China for the registration of copyright (similar to the American procedure). In 2010, the number of registered copyrights reached 370,000. Furthermore, there was 81,966 software copyright registrations last year (an increase of 15.5% in comparison with the previous year).

China has experienced rapid development in the past two or three years and this can be expected to continue. It is my belief that along with China's development and improvement of its IPR law system, a more healthy and friendly legal environment is (and continues to) evolve to safeguard a rapid and smooth economic development. 
 
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Social Media Contracts

Posted on December 6, 2011 by Kristof Panis

A recent decision (Ardis Health LLC et al. v. Nankivell)of the U.S. District Court for the Southern District of New York dated 19 October 2011, provides a good insight into the best practices for parties contracting in the social media space.

 

“Social media” refers to any online medium that includes community features such as user-generated content, the ability to form groups and the ability to recommend, comment on, and share the content of others. Examples include Facebook and Twitter.

The plaintiffs in the proceedings were three companies that market online herbal and beauty products. The three plaintiffs are wholly owned and collaboratively operated by Jordan Finger. The defendant was hired by one of the plaintiffs, CYC, as a “Video and Social Media Producer”. The defendant signed a Work Product Agreement that provides that work created and developed by the defendant “shall be the sole and exclusive property of CYC, in whatever stage of development or completion”, and that it ”will be prepared as ‘work-for-hire’ within the meaning of the Copyright Act”. The agreement also provided that the defendant return all confidential information to the plaintiffs upon request, and that “actual or threatened breach of the agreement will cause irreparable injury and damage”.

 The U.S. District Court for the Southern District of New York judged that the plaintiffs own the rights to the Access Information, as the plaintiffs provided the Court with sufficient evidence to support this claim.

However according to the U.S. District Court the plaintiffs were not entitled to the return of the laptop computer at this time, nor were they entitled to prohibit the defendant from displaying Whatsinurs’ content on her website, as the plaintiffs presented little evidence in support of their claim.

Ardis Health LLC et al. v. Nankivell is therefore a further warning to businesses with an online presence. Such businesses must develop strategies to protect their social media presence and content. If content is developed and managed by an independent contractor, ownership of the content should be established by contract. However, even when a contractual relationship exists, enforcement is not always straightforward. As there is no similar “work for hire” concept under Irish law, the position here may be even murkier in circumstances where parties do not set out their rights clearly under contract.

 Jordan Finger and the defendant developed a social media website for cosmetic products (“Whatsinurs”). The plaintiffs drafted an additional agreement, “for the organisation and governance of Whatsinurs” but the parties never signed this agreement.

These arrangements were later terminated and the plaintiffs requested that the defendant return the laptop and the passwords used to access the websites (“Access Information”). The defendant refused this, and began displaying content from the Whatsinurs website on her own personal website.
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Music Body Asks BT to Block User Access to Pirate Bay Site

Posted on November 9, 2011 by Ciara Cullen

The British Phonographic Industry (BPI) has requested BT to use its own software to block users from accessing “Pirate Bay”, a website which provides access to illegal downloads of music, film and game files. While it does not store content, Pirate Bay facilitates access to sites which breach copyright via an index of links. 

BT has stated that, while it is considering its response, it will require a Court order to put measures in place to block access. As you may recall from a blog post earlier this year, the UK High Court previously ordered BT to block access to the site “Newzbin2”, which similarly provided access to illegal download sites via links collated on its site.

It remains to be seen whether BT can maintain its current approach which requires complainants to proceed with the costly process of obtaining a High Court Order, before it will block access.

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Newzbin2: Mandatory Web Blocking for All ISPs?

Posted on August 17, 2011 by John Cahir

The recent UK High Court decision given in the Twentieth Century Fox v BT case could have significant implications for Irish Internet Service Providers (ISPs). In this case, Mr Justice Arnold ordered BT to block access to the Newzbin2 website, a website that provides users with links to unlawful material. It is considered by many to be a landmark decision as it is the first time that an ISP has been subjected to this mandatory blocking.

What made this case particularly interesting is that BT had already implemented a blocking system, called Cleanfeed, to block access to child abuse images. In this case, Mr Justice Arnold ordered that BT use that same technology to block access to Newzbin2.

Mr Justice Arnold ruled that in his judgment “it follows that BT has actual knowledge of other persons using its services to infringe copyright: it follows that the users and operators of Newzbin2 infringe copyright on a large scale, and in particular infringe the copyrights of the Studios in large numbers of their films and television programmes.” This decision sets a clear precedent for copyright owners and ISPs alike with respect to the availability of “website blocking” injunctions.

In Ireland, the Irish Department of Enterprise, Trade and Employment recently announced its proposal to amend the Copyright and Related Rights Act 2000. The proposed amendment is sought in response to Mr Justice Charleton’s judgment in the EMI v UPC case. The draft European Communities (Copyright and Related Rights ) Regulations 2011 provide that owners of copyright may apply for an injunction against ISPs in order to prevent third parties from using its services to infringe copyright. If adopted, this new provision will potentially open the door to “website blocking” injunctions in Ireland.

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Challenge to Controller's Decision to Adjust Royalty Payments

Posted on July 27, 2011 by John Cahir

Commercial Court proceedings have been instituted challenging the recent decision of the Controller of Patents, Designs and Trademarks to introduce new tariff rates in respect of royalties to be paid for playing music in retail stores. The decision by the Controller, due to come into effect from 1 January 2012 next, purports to adjust the structure of the tariff applicable to retail premises.

Phonographic Performance (Ireland) Ltd (“PPI”), which acts as the centralised administrator of record company rights in Ireland, is claiming that the decision by the Controller would lead to a significant reduction in the amount of royalties being received from music played in retail stores across Ireland and that the Controller was acting outside its powers in making such a ruling.

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