Although the two final images are clearly the product of different photographs, the PCC held that on a qualitative assessment Image 2 reproduced a substantial part of Image 1 and therefore infringed.

Given that the two images are taken from a very different perspective this decision seems to grant very wide copyright protection to the claimant. Here the defendant has infringed by reproducing an image of a classic London icon from a location which the judgment acknowledges is popular with photographers, and has applied a well-known editing technique to isolate the red colour of the bus.

Although there are similarities, this decision pushes the very limits of what is protectable in a photographic image.

Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.

Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com

The DCE is proposed as a solution to the problem of the collapsing value of creative content – which can be electronically replicated and shared – by creating a cheap and efficient online copyright licensing system. The Government hopes that this will harness the growth potential of creative industries and make the UK a leader in digital copyright services.

However, there was a note of uncertainty from Baroness Wilcox, the intellectual property minister, who indicated that it was still to be determined if the DCE was a “workable proposition.” Updating copyright law for the digital age will be complicated and, whatever the government’s decision, Hargreaves’ proposed completion date of the end of 2012 looks increasingly ambitious.

Dave Drew
0115 976 6226
ddrew@brownejacobson.com

HTC will by 19 April 2012 remove from all their devices the infringing feature, which enables the user to convert embedded data (such as a phone number) into a hyperlink.

The ITC embarked on their initial investigation in April 2010 after Apple complained that HTC infringed ten patents, which could have led to a ban of all HTC devices in the US market. Apple later dropped six patents and an ITC judge ruled that HTC had infringed two of the remaining four patents. This overdue final ITC decision, which follows a request for a review of their previous ruling from both companies, has been welcomed by the Taiwanese mobile phone-maker.

This result will be of interest to those following the patent disputes that Apple are embroiled in relating to Android technology, most notably with South Korean rival Samsung.

Laura Mackenzie
0121 237 3959
lmackenzie@brownejacobson.com

It follows an order by a Belgian court that an ISP (Scarlet) must implement a filtering system to block their user’s ability to send and receive files containing musical works using file-sharing software without the copyright-holders permission.

The ruling does not prevent the blocking of specific illegal file-sharing sites by ISPs as in BT and Newzbin’s case; however the ECJ ruled the filter system ordered in this case, in which the ISP was expected to install the system at its own expense and use it for an unlimited period to indiscriminately monitor all customer’s electronic communications, was contrary to EU law and fundamental rights, including the E-Commerce Directive.

This ruling will be welcomed by both ISPs and campaigners for internet freedom, particularly those following the relationship between the E-Commerce Directive and the Digital Economy Act.

Laura Mackenzie
0121 237 3959
lmackenzie@brownejacobson.com

Facebook has clearly recognised that the way technologically literate consumers access media content has changed forever. Illegal file-sharing has increased exponentially since the days of Napster and is now a global phenomenon which is virtually impossible to police. Facebook’s collaboration with innovative media streaming sites will surely be a huge step in the right direction for the online entertainment industry.

The rapid decline in sale of CDs has left the music producers with a profound problem. How do they protect the copyright of their creative endeavours and make a profit? Spotify seems to think the answer is to align their service with the habits of consumers and with more than 750 million active users, there is no online habit more engrained than Facebook.

Dave Drew
0115 976 6226
ddrew@brownejacobson.com

The Government revealed its goal to “have measures in place by the end of this Parliament” and will prepare more detailed proposals for consultation. The report’s recommendations include:

• the creation of a digital copyright exchange which would assist the buying and selling of digital copyright licences and add up to £2.2 billion to the UK economy by 2020
• allowing copying of data for private purposes or where it does not damage the underlying aims of copyright, which would enable private users to copy media from one format to another (e.g. copying iTunes tracks onto a CD)
• adapting the patent and design frameworks to enable IP law to keep up to date with technology and business practices.

The Government’s response demonstrates a commitment to assist UK businesses in using intellectual property but it remains to be seen how, and whether, such assistance will be given.

Alex Kynoch
0115 976 6528
akynoch@brownejacobson.com

The first issue addressed by the Supreme Court was to confirm that the Stormtrooper helmet was not a “sculpture” and therefore not an “artistic work”. Under English law, the helmets were therefore protected by design right (which has a shorter term of protection) and not by copyright.

The second issue was whether US copyright could be enforced in the English courts. Overturning the Court of Appeal’s finding on this issue, the Supreme Court held that it could. In a world of prolific cross-border trade and e-commerce this has to be the right decision, giving rights holders increased protection against international piracy.

Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.

Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com

TVCatchup provides a quasi-live service, relaying free-to-air TV channels to UK members. ITV (etc) claimed that this infringed their copyright by “communicating to the public”, by electronic transmission, their films and broadcasts. TVCatchup argued that the relevant legislation had been amended improperly and was therefore invalid.

The judge provisionally found that the transmissions were “communicating to the public”, although he thought that they only reproduced a substantial part of ITV’s films, not of their broadcasts; also, for some reproductions TVCatchup may have a defence of “incidental” copying. However, he felt these issues needed clarification from the ECJ.

A final judgment may be years away allowing TVCatchup in the meantime to continue profiting from its services and must surely be a bitter pill to swallow for the broadcasters.

Laura Phillips
0115 976 6182
lphillips@brownejacobson.com

Temple Island (TI) owns the copyright in a photograph of a bus near Westminster and is suing New English Teas (NET) for using a similar photograph.

In court, TI applied to amend their claim to refer to another photograph which they said was even more similar to NET’s photograph, claiming it could have been ‘clandestinely’ or ‘subconsciously’ copied .

The court applied the cost-benefit test from the Civil Procedure Rules governing the Patents County Court. This says that material will only be admitted if the court is satisfied that the value of material in resolving issues justifies the cost of dealing with it.

The judge said that allowing the amendment would introduce a jungle of issues into an otherwise straightforward matter and would not help the Claimant’s case – so the amendment was refused.

Litigants will be pleased to see active case management which narrows issues and save costs.

Posted by Giles Parsons, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Giles Parsons
0121 237 4557
gparsons@brownejacobson.com

Given that the website was created and hosted in the UK it seems strange that ICE is so keen for Mr Dwyer to be charged in the US. The findings of HHJ Ticehurst in the TV-Links case back in February 2010 may have provided Mr O’Dwyer with a defence in the UK, whereas charges in the US legal system may be much more difficult to defend, particularly given the lack of state legal aid.

Given the furore over the UK’s extradition rules resulting from the US’ attempts to extradite hacker Gary McKinnon it will be interesting to see the approach taken by the UK courts in this case, which appears to relate to considerably less serious allegations.

Alex Kynoch
0115 976 6528
akynoch@brownejacobson.com

Miffy, a small white female rabbit, was created in 1955 by Dick Bruna. Cathy, also a small white female rabbit, was created by Sanrio in 1976.

In 2010 Mercis Media BV (Mr Bruna’s copyright management firm) brought trademark and copyright infringement proceedings against Sanrio. Why it took Mr Bruna 34 years to bring proceedings is unclear…

Sanrio was ordered to stop production, sale and marketing of Cathy character goods in the Netherlands, Belgium and Luxembourg and to pay €25,000 per day if it did not comply, up to a maximum of €2m.

Sanrio appealed and filed a counter claim seeking the Miffy trade mark be removed from the register.

The matter has now been resolved, with Sanrio agreeing to no longer use the Cathy character. Both parties have also agreed to donate €150,000 jointly to the victims of the Japan earthquake. A very commendable settlement indeed.

Oliver Laing
0115 908 4854
olaing@brownejacobson.com

Some key suggestions include:

• establishing a digital copyright exchange, enabling automated licensing

• allowing licensing of ‘orphan’ works (with no identifiable author)

• incorporating into UK law a number of copyright ‘exceptions’ including for, private copying/‘formatshifting’ (e.g. from CD to mp3 player), parody and non-commercial research for all copyright works

• protecting exceptions from being overridden in contracts

• introducing a small claims track in the Patents County Court

In reality, many of the ‘exceptions’ proposed simply reflect what the public expects in the internet age, by removing the confusion caused by rights which it is impossible or impractical to enforce. However, rights holders will be pleased to note that calls for a broader ‘fair use’ defence were rejected.

Laura Phillips
0115 976 6182
lphillips@brownejacobson.com

It is accepted by both parties that the two-dimensional drawings are copyright works. Whether the three-dimensional helmets are protected by copyright depends on whether LucasFilm can convince the Supreme Court that they should be interpreted as “sculptures” under the Copyright and Patents Act 1988.

Whether the helmet is found to be a sculpture is of critical importance to LucasFilm. If it is then it may receive the full term of protection for an artistic work – 70 years from the death of the author.

LucasFilm has failed in both the High Court and the Court of Appeal. Will it be third time lucky? The odds are stacked against them.

The saga continues…

Oliver Laing
0115 908 4854
olaing@brownejacobson.com

A) Own it; B) Be licensing it (from a third party); or C) Be infringing (a third party’s rights)

A case in the Patents County Court last month however has looked at the question – “if you are using copyright material under licence, but fail to pay the ongoing licence fee – are you therefore infringing the owner’s rights?” The answer was no – it is not necessarily an infringement. Even though you are in breach of the licence, so may be in breach of contract, it does not necessarily follow that you are infringing copyright, or that the licensor has a right to terminate the licence.

From a pure contract law perspective, this isn’t that surprising but is a reminder that if you don’t put express wording in a contract, the courts will not imply it for you (so it is worth getting the wording in at the start).

When and how contracts can be terminated for breach is an issue we’ll be covering at the next in house lawyers forums on 16th, 29th and 31st March. Please sign up here if you’d be interested in attending.

Posted by Richard Nicholas, who specialises in commercial, IT and outsourcing agreements, complex projects for private and public sector clients, collaboration, distribution & agency contracts, e-commerce and consumer law.

Richard Nicholas
0121 237 3992
rnicholas@brownejacobson.com

The allegations have apparently been made by playwright Gregory Murphy, author of the play “The Countess”, which deals with the same subject matter. Thompson has now sought a declaration in a New York federal court that the script does not infringe Murphy’s copyright.

The story is a useful reminder that, both in the UK and the US, copyright does not protect ideas, but rather the expression of ideas. That does not necessarily mean copyright infringement must be textual (see Ravenscroft v Herbert where the substantial copying of incident, plot and characterisation was held to constitute infringement). However, copyright does not protect a general idea, or perhaps even a detailed ‘theme’ (see Baigent and Leigh v The Random House Group Ltd, a case relating to Dan Brown’s The Da Vinci Code).

Certainly, Murphy will need to show much more than the copying of a general storyline to make out a claim for copyright infringement.

Posted by Nick McDonald, who specialises in intellectual property law including copyright, patents, trade marks, passing off, design disputes, breach of confidence, database rights and IT.

Nick McDonald
0115 976 6198
nmcdonald@brownejacobson.com

ACS: Law has been condemned in the press over its so-called ‘speculative invoicing’ – issuing thousands of letters to internet users who it suspects of illegal file sharing demanding cash settlements.

Judge Birss QC will rule later this week on whether ACS: Law and MediaCat can discontinue the cases without being joined by the actual copyright owners and, whether MediaCat should be banned from sending any more payment demands until its claims have been clarified. The Judge will also consider allegations of abuse of process made by the defendants’ Counsel.

The intense media and public backlash and the scrutiny under which both the claimant and the law firm representing it have been placed, will no doubt cause right holders and legal advisers alike to reflect on how they handle illegal filesharing in the future.

Posted by Sara McNeill, who specialises in non-contentious intellectual property matters, including licensing, franchise, collaboration and development arrangements and IP audits and strategy; experienced in drafting and advising on commercial agreements.

Sara McNeill
0121 237 3930
smcneill@brownejacobson.com

In the case of Football Dataco Limited and others v Sportradar, the claimants ran a site which exploited certain data relating to English and Scottish football matches. Sportradar ran a similar site hosted on webservers in Germany and Austria. Dataco argued that when the British public viewed Sportradar’s site, this infringed Dataco’s UK copyright and database rights. The High Court disagreed.

Whilst this decision does clarify the law on this point, it does not particularly assist in aiding the prevention of online infringement. In fact it may influence some operators to host infringing data on servers in selectively sourced countries…thereby making the protection of intellectual property rights in relation to the internet even more difficult than it already is.

Holly Mitchell
0115 908 4886
hmitchell@brownejacobson.com

Posted by Peter Ellis, who specialises in commercial litigation or dispute resolution; intellectual property disputes e.g. trade marks, copyright, designs issues; breach of contract and claims through interruptions to trade.

Peter Ellis
0115 976 6269
pellis@brownejacobson.com

Rowling and Bloomsbury claimed that Jacobs’ claim should be dismissed summarily, as (a) Rowling had not read Willy the Wizard, and (b) the plot and themes she had allegedly copied were too abstract to be protected by copyright.

The allegations of copying were complex, and the defendants had not disclosed Rowling’s drafts or of her agent’s diaries. Similarly, the judge strongly inclined to the view that no copyright subsisted in the plot and themes, but on neither point was the case clear enough to be suitable for summary judgment.

The matter may roll on to court – but with three firms of solicitors and six barristers involved, the loser could face a very large bill, and hopefully common sense will allow the matter to settle.

Posted by Giles Parsons, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Giles Parsons
0121 237 4557
gparsons@brownejacobson.com

This week, ACS suffered an attack on its website, designed to make the site unavailable. During efforts to bring it back online, various documents became publicly accessible, including unencrypted users’ details…with a range of consequences for ACS (and BT).

One issue here is whether ‘Norwich Pharmacal Orders’, typically used to compel ISPs to disclose information, are too freely granted. Amongst other criteria, the applicant has to show that the data requested is relevant to a possible claim, and disclosure is in the interests of justice. The chances of refusal may have been higher if the ISPs had defended ACS’ application, for evidential and confidentiality reasons, rather than taking the usual ‘don’t agree but don’t oppose’ stance!

Laura Phillips
0115 976 6182
lphillips@brownejacobson.com

Posted by Sara McNeill
0121 237 3930
smcneill@brownejacobson.com

For the first time copyright owners will be able to receive a list of infringers for the purpose of bringing legal proceedings and apply to find out the names of those who are alleged to have infringed.  ISPs may also be required to limit or even block internet use.

The Act (and code) will inevitably make an ISP’s life more complicated, since, as well as blacklisting its own customers, there is a risk they become drawn into the inevitable claim, counterclaim and appeal between copyright owner and alleged infringer.

Posted by Richard Nicholas
0121 237 3992
rnicholas@brownejacobson.com

Here’s another one:  Having developed the above programme, move the rights in it from you to your company and then seek to move it back again using the courts and the law of copyright infringement. 

The first idea might seem a decent one.  The second idea is a truly terrible and expensive one and one that developers should avoid at all costs as this case shows.

A freelance developer developed his game concept (called either Tracktrix, or later Train Trax) before he joined Circle Studios as a games developer.  Without telling others in the company that he had developed this concept himself he passed on this concept and encouraged Circle Studios to exploit it. 

Sadly this did not lead to commercial success and Circle Studios went into administration.  Afterwards the developer sought to take back the concept and to do this he claimed, amongst other things – copyright infringement, alleging that Circle Studios had copied the game from him as a freelance developer.  After all he should know…he (as an employee of Circle) had copied it! 

Unsurprisingly perhaps the games developer was unsuccessful.  As the developer had not disclosed where the idea came from, there was no reason for the employer to believe that the concept was not created in the course of his employment.   Any infringement was caused by the developer.  The copyright claim failed, as did a related breach of confidence claim, with the judge lamenting that the action reached the court in the first place.  

The lesson – be clear where ideas come from as an employee and if you developed something yourself that you later want to use in your employment, discuss assignment or a licence with your employer.  If it’s too late to do this, avoid litigation if you can, as taking that track without advice is likely to mean losing your claim, as well as your marbles.

Posted by Richard Nicholas
0121 237 3992
rnicholas@brownejacobson.com

The Digital Economy Bill will do various things, amongst which will be a change to the law on online copyright infringement – creating duties on Offcom to require ISPs to take action against identified file sharers, and giving Offcom and/or ISPs the power to disconnect persistent file sharers.

Musicians and music lovers alike should welcome this legislation. The detail of how persistent filesharers will, in reality, be banned from the internet remains unclear, as does the extent to which it will prevent unauthorised exchange of copyright materials long-term. History shows that digital pirates are generally one step ahead of those attempting to stop them.

Importantly, however, it strikes a further blow against those who believe it is acceptable to copy, distribute and use copyright materials – such as music or video games – without seeking the permission of the author, or indeed paying the author. The rise in file sharing has brought the music industry to its knees, affecting not only large record labels but also struggling independent musicians. Legislation will not solve this problem, but it will allow us to begin to tackle it.

Only by supporting our creative industry can we ensure it continues to create.

Posted by Nick McDonald
0115 976 6198
nmcdonald@brownejacobson.com