Category: Intellectual Property

Department of Jobs, Enterprise & Innovation (brief) consultation on filesharing injunctions

[Updated 23/06/11] In the (literally) last days of the previous Government, a rumour shot around that the then Minister for Enterprise, Trade and Innovation was about to sign a statutory instrument into law which would address the gap in the law criticised by Mr. Justice Chartleton in the EMI & ors v. UPC case.

A firm denial was issued by the Minister but I’m not sure anyone really believed that a draft SI wasn’t floating around somewhere. Anyway, the newly-titled Department of Jobs, Enterprise & Innovation has put a draft SI out to consultation. The relevant SI text is below.

Deadline for submissions is 1 July 2011: less than 2 weeks from today. That’s pretty swift consultation by any standard. Apparently the Department received a number of requests for an extension to the consultation period, so the new deadline for submissions is Friday 29 July 2011.

New section 40(5A) of the Copyright & Related Rights Acts:

(5A)(a) without prejudice to subsections (3) and (4), the owner of the copyright in the work concerned may apply to the High Court for an injunction against a person who provides facilities referred to in subsection (3) where those facilities are being used by one or more third parties to infringe the copyright in that work.

(b) In considering an application for an injunction under this subsection, the court shall have due regard to the rights of any third party likely to be affected and the court shall make such directions (including, where appropriate, a direction requiring a third party to be put on notice of the application) as the court may deem necessary or appropriate in all the circumstances.

New section 205(9A) of the Copyright & Related Rights Acts:

(9A)(a) without prejudice to subsections (7) and (8), the rightsowner may apply to the High Court for an injunction against a person who provides facilities referred to in subsection (7) where those facilities are used by one or more third parties to infringe any of the rights referred to in Parts III and IV.

(b) In considering an application for an injunction under this subsection, the court shall have due regard to the rights of any third party likely to be affected and the court shall make such directions (including, where appropriate, a direction requiring a third party to be put on notice of the application) as the court may deem necessary or appropriate in all the circumstances.

Thanks to Ronan Lupton for bringing the consultation to my attention.

Battle of the bakers

It’s rare enough for an intellectual property dispute to make it to court in Ireland, so the new proceedings taken by McCambridge against Brennans over allegedly similar packaging are of interest.

US National Archives
Nothing says tradition like copyright infringement litigation

The case is at an early stage and has so far followed the usual procedure of admission to the Commercial Court, which has general jurisdiction to hear and fast-track IP cases. I’m glad to see I’m not the only one who wondered whether the similarities were actionable.

Has the Irish Government introduced #3strikes legislation? (Update: No)

[Updates at end] It appears that the Irish Government has implemented or is about to implement a significant change to the Copyright & Related Rights Acts 2000 to 2007 by statutory instrument on the eve of an election.

Silicon Republic reports:

In its final days, the Government is believed to be rushing through a statutory instrument that will amend the existing Copyright Act and which will give judges the power to grant injunctions against ISPs in relation to copyright infringement cases.

The demands for the change came about as a result of Mr. Justice Charleton’s decision in EMI v. UPC last year, when he ruled that Irish law did not allow him to grant such injunction “even though that relief is merited on the facts.”

The decision led to frantic lobbying on the part of record companies and a media campaign on this issue, including dramatic statements from Paul McGuinness that the issue “has got to do with the future of civilisation”.

With the range of other problems facing the Government the issue did not get much priority. The election manifestos of Fine Gael and the Green Party suggest that they are conscious of the issue with FG appearing to support the industry and the Greens appearing to support the consumer.

If accurate, there are many problems with this amendment and TJ McIntyre outlines them in his comments to Silicon Republic. However, whether or not the contents of the amendment to the Acts are agreed with, it is shocking that the Government is proposing to introduce such a contentious change by way of statutory instrument with hours to go before an election.

A statutory instrument is defined as “an order, regulation, rule, scheme or bye-law made in exercise of a power conferred by statute”. Section 7 of the Acts appears to provide reasonably wide scope for the introduction of regulations but it is likely be a topic for debate as to whether the reported change fits within or exceeds that provision.

Ironically, Charleton J. stated in his judgment:

Legislative intervention is required, if the Oireachtas see fit, to protect constitutional rights to copyright and foster the national resource of creativity. (my emphasis)

Updates (24 February 2011)

  • Acting Minister for Enterprise, Trade & Innovation Mary Hanafin has said that there “is no truth in the rumour” that an amendment to the Copyright & Related Rights Acts will be passed before the election. The press Minister expects the next Government to consult on the issue before such an amendment is made.
  • However, an story from the original source of the rumour earlier today said that the Department “neither confirmed nor denied that a statutory instrument was being pushed through, but said “it may be necessary” to introduce measures to clarify Ireland’s position under the Copyright Directive in relation to injunctions, thanks to the recent court case involving UPC and the music industry.”
  • Simon Coveney, a front-bench member of Fine Gael, tweeted about the issue earlier. Fine Gael is highly likely to introduce the amendment following the election but not, one hopes, by way of statutory instrument.


Do you own your wedding album?

You might think this a silly question. Of course you own your cherished wedding or civil partnership ceremony photographs. But how far does that ownership extend? Do you have the right to make copies of them and, perhaps more importantly, control their use? The short answer, for most couples, is: no.

Section 23 of the Copyright and Related Rights Acts 2000 to 2007 sets the default position: the author of a work shall be the owner of copyright in that work. In the case of photographs, section 21(h) provides that the author means the photographer. Accordingly, if your photographer provides you with an  album and nothing more is said or agreed, it is likely that you have merely purchased the services of the photographer in attending the ceremony along with the physical photo album.

Center for Jewish History, NYC
I suspect this couple was not given a CD of their wedding photos.

These days, photographers usually offer additional goods or services. For example, many provide a CD with digital copies of some or all of the photos. Some charge extra for such a CD. This is usually done with the expectation that the customer is entitled to make unlimited copies of these photos, but the agreement is often not explicit on this point. Indeed, many customers will not have a written contract in place with their photographer. If the customer is provided with a set of terms and conditions, perhaps on the invoice, this will probably form that contract.

If a photographer provides a CD of digital photos with the right to make copies, this might not permit further dealing with the photos, such as the right to upload them to or Facebook, for example, or to apply effects so that the photo could be printed on canvas in the style of a painting.

An important consequence of the photographer retaining copyright in the photos is that (s)he benefits from the rights of the copyright owner set out in Part II Chapter 4 of the Acts, specifically the right of the photographer to make his/her own use of the photos. I have come across a number of incidents where a recently married couple was surprised to find photos of their wedding displayed on the photographer’s website, magazine ads or even at wedding fairs (in one such case, the bride had not yet seen her own wedding photos when she saw them displayed at a wedding fair).

At this point first ownership of copyright in photos clashes with the Data Protection Acts 1988 and 2003. A photograph of individuals is personal data for the purposes of the Acts and generally should not be displayed publicly by another person without the consent of the people depicted in the photo. A photographer’s terms and conditions might include such consent, but any such consent can only be given by the customers (the couple) and cannot apply to guests. [See also the comments below concerning the right to privacy contained in section 114 of the Copyright and Related Rights Acts.]

Section 22A of the Data Protection Acts provides a limited exemption in the case of journalistic or artistic use of personal data but it is hard to see how a photographer could establish that publication of private photos was a matter of public interest (except perhaps in the case of celebrities, an area which itself is fraught with legal claims).

It is possible to agree with the photographer that copyright in all photos shall be assigned (ie. transferred) to the customer. Any such agreement must be in writing. However, most photographers will either be unwilling to agree to assignment or will charge an additional fee (which might be substantial).

As with anything, it is advisable to discuss with a photographer what exactly is being provided. The photographer should be asked if they retain copyright or assign it, and if they retain it reach explicit agreement on:

  1. what is the customer permitted to do with the photos provided; and
  2. that the photographer will agree not to use the photos in any public way.

Koger v. HWM: significant Irish software case on competing with former employer

This week’s big intellectual property news might have been IRMA v. UPC, but last week saw another major judgment in Irish IP law: on Friday 8 October 2010, Mr. Justice Feeney gave judgment in Koger Inc. & Koger (Dublin) Limited v. O’Donnell, Woolman, Gross & HWM Financial Solutions Limited. The outcome has been described as “a victory for the right of IT employees in Ireland to regard their know how and experience as their own intellectual property.”

The case concerned former employees and contractors of the plaintiffs who set up in competition with them. This can be a fraught area, though of course there is nothing, of itself, wrong or unlawful about competing with a former employer or customer. The most common legal issues that arise in relation to such scenarios involve allegations that (1) the new competitor has breached contractual terms restricting them from such competition, and/or (2) the new competitor has breached the intellectual property rights of the former employer. Koger v. HWM involved such allegations, but it is also of wider relevance to the law on discovery.

All parties to the proceedings are involved in the  transfer agency software market and their customers are major financial services fund managers. The plaintiffs are linked companies marketing one of the leading products in that market. The three individual defendants formerly worked for the plaintiffs, either as employees or contractors, and subsequently set up the fourth defendant company to compete with the plaintiffs.

At the outset of the proceedings, the main case advanced by the plaintiffs was that the defendants developed their ManTra product to compete with the plaintiffs’ NTAS product as a result of a breach of confidence and an infringement of the plaintiffs’ copyright, particularly in their source code and design materials. This suggests a literal copying claim, ie: the defendants must have literally copied some or all of the plaintiffs’ source code and design materials. However, over the course of the proceedings it appears that the plaintiffs were forced to abandon this element of their claim, with their core expert giving evidence that he had never believed literal copying to have taken place.

This was a particularly interesting aspect of the case as, a few months before it went to trial, Mr. Justice Kelly gave judgment on a discovery motion brought by the plaintiffs. Kelly J’s judgment is of interest itself, as it deals with the extent to which a court can limit access to documentation discovered during court proceedings. For the purposes of seeking discovery, the plaintiffs’ experts “expressed the view that the defendants must have relied upon the plaintiffs proprietary source code and database structure information in order to develop the ManTra product” and they provided reports stating that they had discovered instances of literal copying. This allegedly copied code later transpired to have been licensed from third parties and was proprietary to neither side. Indeed, up to the time of the trial one of the plaintiffs’ experts contended that the defendants’ product contained source code from the plaintiffs’ product [Feeney J, para. 22]. However:

As the plaintiffs’ case was presented to the Court it became apparent that the plaintiffs no longer sought to rely on a claim based upon literal copying notwithstanding having claimed that such copying was substantial. [Feeney J, para. 24]

While the case started out, therefore, as being primarily concerned with literal copying of software source code it developed into a claim that the defendants had improperly benefited from their former association with the plaintiffs when setting up in competition. The allegations made by the plaintiff included that the defendants had conspired to set up in competition before they had terminated their involvement with the plaintiffs, that they had set about destroying the plaintiffs’ business and that they conspired to poach the plaintiffs’ staff.

Feeney J. noted that the credibility of witnesses was central to these matters. He found that the defendants’ witnesses were “truthful and reliable … coherent, accurate and credible.”

The evidence of [the defendants’] witnesses stands in sharp contrast with the evidence of [the plaintiffs’ two primary witnesses]. Both those witnesses demonstrated a willingness to provide misleading and unreliable evidence. They were evasive and unreliable in their evidence. Where there is a conflict [in evidence …] the Court favours the accounts given by and on behalf of the defendants. [Feeney J, para.18]

Feeney J also commented:

The manner in which the plaintiffs have prosecuted their claims demonstrates a willingness to alter and vary such claims without explanation. They have proceeded to drop a significant element of their claim, in abandoning the claim based upon E*TAS, without any explanation. Similarly, they have been prepared to persist with claims, such as the claim of literal copying in a material respect notwithstanding that their experts either did not believe that there was such literal copying or had not made the effort or been requested to ascertain and confirm that the common source code identified in the two products emanated from common third party sources. It was not until the very end of the plaintiffs’ case that there was an acknowledgement that the plaintiffs were not pursuing a claim for literal copying. A more troubling matter arose in evidence when it became apparent that the plaintiffs were prepared to plead and swear directly contradictory accounts in respect of the same set of facts in different jurisdictions. This was indicative of an approach whereby the plaintiffs were prepared to use a set of facts in such a manner as to manipulate them for present advantage without regard to the real truth. [Feeney J, para 28]

With regard to discovery, Feeney J characterised the litigation strategy of the plaintiffs as being “to make extensive and general assertions against the defendants and seek to have those parties disprove such matters.” This extended to seeking “further discovery when the discovery which has been obtained does not establish the claim already made”.

In effect, the overall approach to litigation demonstrated by Koger is that in relation to former employees the onus is on them to prove that they have done nothing wrong and that Koger can and will sue those parties to see whether or not discovery might produce the documentation necessary to prove Koger’s case and if the original discovery does not achieve that end, then further and additional discovery will be sought. [Feeney J, para. 31]

In light of the above, it is easy to predict the outcome of the case: all of the plaintiffs’ claims were dismissed. The judgment is long but worth skimming through, given the colourful nature of the proceedings (including Feeney J’s description of the plaintiffs’ manner of running their business and allegations that a death threat was made against one of the defendants’ witnesses when he was an employee of the first plaintiff).

The judgment helps define what is acceptable when a departing employees decide to compete with their former employers. For example, it confirms that embryonic discussions about a potential new business may be acceptable while still employed by another person.

A core argument advanced by the plaintiffs was that it was not credible for the defendants to develop their product so quickly without resort to improper methods. Feeney J found that the individual defendants succeeded in developing their ManTra product quickly as a result of their own significant skill and expertise. While some of that may have been gained while working for the plaintiffs, the defendants did not infringe the plaintiffs’ rights by employing such skill and expertise. An employer can protect their intellectual property rights, but that does not extend to the skill and expertise an employee or contractor might develop while working for that employer.

Strike One?

This week’s big intellectual property news was the judgment of Mr. Justice Charleton in EMI & ors v. UPC. The case was the latest plank in the record industry‘s campaign to force the introduction of a graduated response to online copyright infringement.

Charleton J’s judgment is long and there is a lot to get through.  I haven’t had the opportunity to read the judgement fully but a few highlights already stand out:

  • Evidence was adduced by the plaintiffs to justify claims that many thousands of tracks are illegally downloaded. Justin Mason looks at some of those claims and finds that, by the same logic, an album he invented on the spot has been downloaded 24,752 times. This evidence, which appears to be highly flawed, has already been represented as fact in the Seanad.
  • In 2009 Charleton J granted an order requiring eircom to block access to The Pirate Bay. As noted by TJ McIntyre at the time, the judgment was of limited value as it was not opposed by eircom and was delivered ex tempore. Simon McGarr points out that Charleton J now finds he was incorrect in granting that order. According to his latest judgment:

I regret that my previous judgement in the matter was wrong. The legislative basis enabling me to act in that way does not exist in Irish law as it exists in other European jurisdictions.

  • If eircom had contested that order, Charleton J may have been in a position to reach the decision now indicated in the UPC judgement. It’s an important point, as he also gave judgment clearing data protection concerns raised by the Data Protection Commissioner in relation to the graduated response settlement. That case was similarly unopposed and the Commissioner did not appear due to cost concerns.
  • Charleton J has repeatedly characterised online copyright infringement as theft and anyone engaged in downloading files in breach of copyright to be in the criminal sphere. Eoin O Dell draws attention to interesting posts on the question of whether or not copyright infringement is theft.

Why people care about The Record Industry v. The Customer

Cory Doctorow makes some good points on the use and abuse of copyright law, in response to some pretty churlish criticism recently directed his way. I particularly liked this:

… I don’t care if you want to attempt to stop people from copying your work over the internet, or if you plan on building a business around this idea. I mean, it sounds daft to me, but I’ve been surprised before.

But here’s what I do care about. I care if your plan involves using “digital rights management” technologies that prohibit people from opening up and improving their own property; if your plan requires that online services censor their user submissions; if your plan involves disconnecting whole families from the internet because they are accused of infringement; if your plan involves bulk surveillance of the internet to catch infringers, if your plan requires extraordinarily complex legislation to be shoved through parliament without democratic debate; if your plan prohibits me from keeping online videos of my personal life private because you won’t be able to catch infringers if you can’t spy on every video.

Via Adrian Weckler.

Use of registered trade marks in secondary branding

My case note on the Irish Supreme Court decision in Danone v. Glanbia has been published in the Journal of Intellectual Property Law & Practice. I summarise the significance of the decision as follows:

The use of trade marks as non-primary branding is increasingly a feature of consumer product marketing and it will be of reassurance to companies engaged in such marketing to note Macken J’s observation that she does ‘not consider there is anything in law which prevents an ingredient from being part and parcel of the marketing or promotion of the product of which it is an essential component’.

Lesser known crimes: do you own that copyright?

The second in my irregular series of lesser known crimes, like the first, relates to unlawfully claiming ownership of an intellectual property right.

Section 141 of the Copyright and Related Rights Act 2000 provides:

A person who, for financial gain, makes a claim to enjoy a right under this Part [ie. copyright] which is, and which he or she knows or has reason to believe is, false, shall be guilty of an offence and shall be liable on conviction on indictment to a fine not exceeding £100,000, or to imprisonment for a term not exceeding 5 years, or both.

The penalties are far more serious that those applicable to the trade mark offence. It was introduced to the legislation as an amendment proposed by the then Labour Senator Brendan Ryan, who proposed a maximum penalty of £10 million. He saw it as a necessary counterbalance to the “draconian powers” afforded to copyright owners in the legislation.

[T]here is nothing to suggest that a person who, maliciously and for monetary gain, abuses those powers would pay a penalty other than through the civil courts – even that is patchy and requires clarification … if such a scale of unprecedented powers is to be granted, there must be a balanced penalty for abuse of those powers.

Section 141 is the type of offence companies like YouTube are talking about when they say in their copyright notice:

Be aware that there may be adverse legal consequences in your country if you make a false or bad faith allegation of copyright infringement by using this process. Don’t make false claims!

However, the process they refer to is their own notice-and-takedown procedure and the adverse legal consequences under section 141 require that the claim is made for financial gain. I expect that section 141 was envisaged as addressing false claims for damages. While I’m not aware of any prosecutions under section 141,  it is conceivable that someone could gain from having someone’s videos removed from YouTube (eg. if the complainant ran a paid site featuring the same video under licence).

Lesser known crimes: is that trade mark really registered?

Do you use the ® symbol and, if so, do you know what it means? If you don’t, you might be committing an offence.

I have written before about the different legal structures under which a business may be run. The only reference to trade mark law in that post was to point out that a registered business name is not, of itself, a trade mark.

The Trade Marks Act 1996 defines a trade mark as “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.” This is an example of legalese.

The Patents Office, which handles the registration of marks, offers a more helpful definition:

A trade mark is the means by which a business identifies its goods or services and distinguishes them from the goods and services supplied by other businesses.

You might identify your business using a company or registered business name and therefore use it as a trade mark. However, it is not a registered trade mark. A registered trade mark provides a monopoly on the use of trade mark: it stops others from using it. Of course, there are limitations to that monopoly and not all marks can be registered. See here for a good FAQ on registered trade marks.

Whatever about the detail of trade mark law, the ™ and ® symbols are familiar to us all. But what do they mean?

  • Using the symbol indicates that you are using a name or logo as a trade mark. It does not offer specific protection. However, you might take an action for passing off (which is like suing on the basis of an unregistered trade mark) and will obviously require evidence of using the mark as a trade mark. Use accompanied by the ™ sign may assist.
  • Using the ® symbol indicates that the name or logo is registered as a trade mark.

The difference is not merely technical. Section 94 of the Trade Marks Act 1996 provides that it is an offence to falsely represent that a mark is registered. The fine was originally a maximum of £1,000 with a further fine of up to £100 per day for a continuing offence.

The recent Fines Act 2010, which has been signed into law by the President but has not yet been commenced by the Minister for Justice and Law Reform, will increase these fines. If my reading of the Act is correct, a section 94 offence will become a Class C offence and therefore carry a maximum fine of €2,500, with the daily fine for continuing offences becoming a Class E offence with a fine of up to €500 per day.