Want to help OUP? Join the IP Panel

JIPLP publisher Oxford University Press is setting up a panel of intellectual property practitioners and professionals to help with some market research activities. OUP's looking to receive feedback on

* new IP publications,

* topical changes in the market for which practitioners would like to see legal resources,

* upcoming conferences which IP practitioners are attending,

* comments concerning effective/ineffective pieces of marketing they have received, as well as

* thoughts on other general intellectual property issues.

Panellists are being signed up for one year and will receive in return £300 of OUP books (paid in two installments).

If you think this might be of interest, contact Christopher Wogan for more information.

‘Three Strikes’ settlement between EMI and Eircom approved by Irish court

Author: Tara Train

EMI Records & Others v Eircom Ltd [2010] IEHC 108, High Court of Ireland (Charleton J), 16 April 2010

Citation: Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpq096

Internet access is threatened as Ireland's graduated response settlement is confirmed by a court to be compatible with data protection legislation.

Legal context and facts

In April Mr Justice Charleton, sitting in the Irish High Court, considered whether a graduated response, commonly referred to as a ‘three strikes’ arrangement, was compatible with data protection legislation. The case arose due to concerns raised by the Data Protection Commissioner regarding the settlement reached between music industry giants EMI, Sony, Universal, and Warner, and Ireland's leading internet service provider Eircom.

Under the terms of the agreement, specialist technology companies will be hired by the record labels to detect computers engaging in copyright infringement and illegal file sharing. This information will then be passed on to Eircom, which will identify the subscriber based on data held on its IP address and notify them of the infringement in their next bill. If there is a second instance of copyright infringement, Eircom is obliged to write a formal letter warning the subscriber that his or her internet service will be terminated, should illegal downloading continue. On the third occasion, the general internet service of the subscriber will be disconnected.

The Data Protection Commissioner raised three issues, regarding which the settlement was potentially objectionable as being contrary to data protection legislation.

The first question raised was whether IP addresses, in the hands of EMI and taking account of the purpose for which they are collected, constitutes ‘personal data’ for the purposes of the Data Protection Acts.

Charleton J began by stating that, in order to constitute personal data under the Act, the information must allow someone to identify a living individual, using the data alone, in conjunction with other information in the possession of the data controller, or information likely to come into its possession. In the case at hand, the purpose of identifying IP addresses is to stop persistent illegal downloading without resorting to individual court actions by cutting off access to the tools facilitating the downloading. EMI has no interest in personally identifying the individuals who are infringing because it is unnecessary to do so to achieve its goals under the terms of the settlement. Therefore, the judge reasoned, it was not likely that EMI would use the IP addresses to identify individual names and addresses.

The second question was as follows: assuming that it is permissible under the legislation for Eircom to process the personal data of subscribers, is the termination of internet subscription unreasonably prejudicial to the fundamental rights and freedoms or legitimate interests of the data subject?

When determining whether internet disconnection is an affront to the fundamental rights and freedoms of the data subject, Charleton J stated that the proportionality of the inference must be based on the circumstances. He opined that, given the constitutional and human right to exploit one's creative works, Eircom was acting responsibly and upholding the rights of copyright owners by implementing the sanctions in accordance with the protocol of the settlement. Since a corporate policy which promotes lawfulness in this manner will not be considered disproportionate, the termination of internet access because of three copyright infringements is not unwarranted.

The third question raised by the Data Protection Commissions was whether it was valid for EMI and Eircom to implement the third stage envisaged under the settlement; namely, the termination of an internet user's subscription in circumstances where (a) in doing so they would be engaged in the processing of personal data for purposes relating to the commission of a criminal offence and (b) the termination of an internet user's subscription by Eircom would be predicated on the internet user in question having committed copyright infringement, but without any such offence having been investigated by an authorized body or fault being determined by a court during a fair and impartial trial.

Charleton J based his answer on that fact that neither EMI nor Eircom have any interest in initiating criminal proceedings against the internet subscribers. The settlement is based upon civil law principles because only civil copyright infringement is being redressed by the graduated response system. As such, liability is established by external evidence, as opposed to proof of intent or recklessness necessary in a criminal trial. No investigation using sensitive personal data would be required because no one is being accused of an offence which would need to be proven before an authorized body or during a fair and impartial trial.

The graduated response, ‘three-strike’ settlement between EMI and Eircom was deemed to be lawful.

Analysis

Beyond the parties to the settlement, two groups of stakeholders were concerned with this judgment: owners of copyright material and internet users. Charleton J began his judgment by stating the purpose of the settlement, which was ‘to diminish the theft of copyright material over the internet’. The justness and nobility of this goal in the eyes of the judge overshadowed any legitimate interest the general internet subscriber might have. Charleton J acknowledged that internet disconnection is a serious sanction, and there is an argument that for Eircom to effect such disconnection would be an imposition on human freedom. This, however, was brushed aside immediately as the judge noted that ‘There is no freedom to break the law’.

Little attention was paid to the interest of those who might have their internet connection terminated, perhaps because neither the Data Protection Commissioner nor any consumer advocacy groups opposed to a graduated response agreement made representations on behalf of internet users. No mention was made of the 2009 European Parliament recommendations contained in the Security and Fundamental Freedoms on the Internet Report, which was written in the wake of similar ‘three strike’ agreements taking place in France. The Report emphasized the importance of the internet in terms of promoting democratic initiatives and political debate, as well as ensuring freedom of expression and the dissemination of knowledge. Tellingly, it stated that ‘e-illiteracy will be the new illiteracy of the 21st Century; ensuring that all citizens have access to the internet is therefore equivalent to ensuring that all citizens have access to schooling and such access should not be putatively denied by governments or private companies’. The prevalence of copyright infringement occurring over the internet did not move the vast majority of MEPs to endorse internet disconnection as a proportionate measure. Similarly, the Constitutional Council of France rejected Loi HADOPI until it was revised to ensure that only a judge would have the power to disconnect an individual's internet. Charleton J focused on copyright being a fundamental right for the recording artists but, unlike the European Parliament and French Constitutional Council, placed little stock on the human rights depending on one's access to the internet.

Practical significance

The consequences of this settlement are difficult to predict. While other ISP have indicated their unwillingness to conform to similar agreements, Charleton J has commented on the injustice of Eircom bearing the burden alone, and has stated that the issue of whether Ireland's other ISPs will be obliged to administer the settlement will be before the Commercial Court.

As technology, almost inevitably, continues to evolve at a pace faster than the law can regulate, avid copyright infringers will find alternative means of maintaining their free intake of music. Technical wizardry capable of disguising activity over the internet is already in existence, and if the EMI/Eircom settlement becomes the industry norm, these techniques will become increasingly widespread. Unfortunately, those most likely to suffer will be infrequent infringers.

In the digital age, there is a need for progressive judicial perspectives which give adequate consideration to the increasing importance of the internet. The plight of copyright owners, although real, cannot continue to eclipse the rights of internet users as it has in this judgment.

American spellings -- or English?

A respected contributor to JIPLP, having received his proofs and being a little puzzled by some of the changes made to his submitted text, has written to me today to ask:

“Just as a matter of interest, may I enquire about the reasons for amending words such as characterised to characterized and emphasise to emphasize?”

Naturally, being aware of the leading role played by Oxford University Press in the maintenance of the highest standards of written English, he had taken great care to make sure that, in his spelling of verbs, the English "-ise" form was deployed rather than the American "-ize". Why then had his spellings been changed?

I asked this very question of the same publisher in 2003, when the same words – and others – were changed in the same manner. The response I received was that "-ize", rather than "-ise" was the Oxford University Press house style. When I objected that OUP was an English publisher but that this was an American style, I was curtly informed that it had been the OUP house style before the United States existed and that the publisher saw no reason to change it.

Bananabay or Eis.de — the ‘overlooked' German AdWord referral

This summary is not available. Please click here to view the post.

Manuscript Central: the pleasure and the pain ...

Manuscript Central is the grand name given to the online system which manages the submission, peer-reviewing, amendment and processing for publication of all articles, Current Intelligence features, reviews and other JIPLP content. The system has been developed by ScholarOne and belongs to fellow publishers Thomson Reuters, from whom JIPLP's publisher Oxford University Press has a licence.

Its advantages are as follows:

* a clear state-of-play record is kept in respect of all materials offered for publication;

* this record is conveniently accessible by authors, reviewers, editors and members of the production team on a 24/7 basis and irrespective of their time zone or geographical location;

* no editorial material can become "lost in the system" since it can be tracked wherever it is and the system generates automatic reminders where content stays in the same place for too long.

There are also some downsides. Thus

* the initial uploading of an article requires the person submitting it to register as a user of Manuscript Central, and can be a little fiddly -- with the system occasionally "rejecting" material offered to it by not enabling it to be uploaded;

* some of the letters and messages generated by the system read as if they have been drafted by machine, and lack the friendly, personal touch (though non-automatically generated correspondence such as letters of acceptance or requests for rewrites can be personalised).

We'd love to hear from users of the system, so we can measure our perceptions against their own experiences. Does Manuscript Central work well? Does it inject a little excitement into authors' or peer reviewers' lives? Do other publishers who use the same system, or indeed other OUP titles, run the system in a better manner than JIPLP does? Do let us know by emailing me here.

In the pipeline: another Google Copyright Story

One of JIPLP's contributors, Jaime Espantaleón (see "Does private copying need an update in the UK?", Journal of Intellectual Property Law Practice, February 2008; 3: 115 - 124, abstract here), is writing another article for the journal. This little teaser gives a flavour of his thoughts on Google Book, the subject of his next article:

Another Google Copyright Story

"I very much like to pick up chestnuts, old rags and specially papers. It is pleasant to me to pick them up, to close my hand on them; … In summer or the beginning of autumn, you can find remnants of sun-baked newspapers in gardens, dry and fragile as dead leaves, so yellow you might think they had been washed with picric acid. In winter, some pages are pounded to pulp; crushed, stained, they return to the earth. Others quite new when covered with ice, all white, all throbbing, are like swans about to fly, but the earth has already caught them from below. They twist and tear themselves from the mud, only to be finally flattened out a little further on. It is good to pick up all that” (Jean Paul Sartre).

This excerpt is from Nausea, translated by Lloyd Alexander, and it can be read freely online via google.books.com.

Sartre died in 1980. Under European copyright laws, which are harmonized by the EU term directive, the book is still in copyright, since this monopoly control right which is given to authors runs for up to 70 years after death.

Those laws grant inter alia Sartre’s successors an exclusive right to authorize or deny the reproduction of Nausea and the right to make the passage quoted available on the internet (i.e. to display it online on someone’s computer).

The scope of the reproduction right in Europe includes even copying 11 words of a book if “the elements thus reproduced are the expression of the intellectual creation of their author,” as the European Court of Justice ruled in 2009 in the Infopaq case.

So why may we access a considerable portion of the pages of Nausea on the internet for free?

(A short dialogue opens between a fat lawyer in jeans and an old, hunch-backed judge with a wig)

Lawyer: Has Arlette Elkaïm-Sartre, Sartre’s child, struck a deal with Google?

Judge: Not likely.

Lawyer: Perhaps the publisher?

Judge: Gallimard would not be able to authorize such use, even if it wanted, since Sartre died before the promulgation of the right of making available online and French laws require the legal assignment to designate specifically the rights assigned to an editor.

The reason we may read Sartre’s diary of anxieties and that I can retype some of it is that Google may have believed it was within its copyright prerogatives. The problem is that it is not.

International copyright laws generally limit the monopoly rights of authors to allow the public to access and learn from the produce of the intellect, but limitations are circumscribed to non-commercial cases, such as educational and research copying, library preservation, citation. Yet Google earns revenue from advertising around its search book site.

The Mountain View company knows its boundaries, as evidenced by an amended class-action settlement agreement it reached in 2009 with US writers and publishers, which condones the digitization of more than 10 million copyright books, in-print and out.

Approval of Google's scheme is still under review by US judge of the Southern District of New York, Denny Chin.

The agreement provides Google with a prospective right to keep copying the same matter and make it available, in whole or in part, to US internet users, whether they pay for it or not. Users will also be able to print books, download them or order paper editions.

In exchange, authors get a cut of 70% of all sales proceeds in the US minus a 10% commission charged by Google and eventual taxes, in addition to a $45 million settlement in compensation for damages.

Books that no longer have copyright are in the public domain and are not covered because nobody can assert any intellectual property rights to them.

In the US the copyright duration varies depending on whether the book was published before or after 1923 and between that date and 1978.

If the oeuvre was published before 1923, such as T.S. Eliot’s poem “The Waste Land” it is public property. In Europe, the same poem is still subject to copyright.

If, on the contrary, it was published between 1923 and 1978, and registered with the Copyright Office, it could be subject to renewals which may extend protection to a total of 95 years from publication. Publications after 1978 enjoy the same term protection as in Europe.

The bulk of the material that Google will offer is composed out-of-print books, i.e. those that publishers have not found profitable to re-edit.

Many groups of authors and publishers around the globe have criticized this agreement. They seem to prefer culture to be hidden rather than duplicated.

In Europe the proposed settlement has stirred emotions and provoked the ire of French, German, Italian, Spanish and other European authors and publishers, as well as the governments of France and Germany.

The reason is that the settlement includes books first published in the US, books registered in the US before 2009 and those published in the UK, Canada and Australia.

Since registration with the US Copyright Office is currently required for the enforcement of copyrights, and that it was a prerequisite for enjoying copyright at all before the US adhered to the Berne Convention for the Protection of Literary and Artistic Works in 1988, virtually all the English language books in the world are covered by it.

The arrangement is particularly interesting because, first, it creates a new entity, a Registry, financed by Google with $34.5 million, which will manage royalties from Google sales in a similar fashion to the US Copyright Office’s allocation of remuneration from the administration of compulsory licences for cable and satellite retransmission of television and radio broadcasts.

Secondly, it binds non-US authors, unless they opt out, who did not directly negotiate with Google and the parents of orphan works -- book writers who are missing.

The means used in obliging non-represented parties is that of the US procedural rules on class actions, which allow the effects of settlement agreements to apply to “class members”, persons representing closely interrelated interests which constitute a class.

This mechanism is in my view permissible under international copyright law. In fact, in the Nordic countries, this way of tying non-represented rights-holders has been in place for decades through legal provisions in the Copyright Acts regarding extended collective licences.

Such licence provisions allow collecting societies representing a considerable number of rights-holders in the same kind of work categories to conclude collective agreements covering specific copyright exploitations with commercial users and extend their effects to equivalent non-represented rights-holders.

The UK Parliament failed to pass this type of licence into law for orphan works in the Digital Economy Act 2010 because both Houses of Parliament could not agree to it.

The Google class action settlement is indeed an extended collective licence where the legal provision that supports it is found in the Federal Rules of Civil Procedure pursuant to Title 28 of the United States Code.

European countries are now rushing to keep up with the digitization pace set by Google. The European Commission has established a Digital Agenda division, emphasizing “the urgent need to allow for similar projects [to Google books] to develop in Europe”, and is preparing copyright legislation to handle specific digital issues arising from the internet.

But European libraries do not have the Google patent invented by Francois Marie Lefebvre and Marin Saric in 2004 which creates 3D imagery of books using stereoscopic cameras, without which the scanning process is more expensive and strenuous.

Some projects in place are Europeana, the European digital library, and a private-public partnership named Arrow.

The webpage of Europeana crashed on its first launch date and European states are reluctant to share their cultural heritage with it. Arrow, the sister of the Registry, is a cooperative effort by dozens of collecting societies in Europe, representing the reprographic rights of writers and publishers, which attempts to interconnect databases containing information in more than 20 languages on authors and their books.

At a national level a success story is told by the Norwegian national library, which has formed an alliance with literary and non-fiction authors to display online full copies of in-copyright national and foreign books from the 1990s, in accordance with an extended collective licence model.

It is uncertain whether Google will ever reach a comparable collective understanding in Europe for its search book enterprise.

European online users’ ability to preview Nausea’s excerpts is a public gift, though illicit. This is the case in the US, too, until Judge Chin decides to end the suspense.

In the meantime I can flap my eyelids in fatigue, looking at a glimmering screen full of printed letters. It is good to read all that ...".

Jaime is a lawyer, specialized in Copyright and ICT Law, who takes an interest in audiovisual works.

The JIPLP archive and permissions for re-use

One feature of the Journal of Intellectual Property Law & Practice (JIPLP) that has not previously been described on this weblog is its online archive. You can browse the contents of all issues past, present and indeed future (i.e. from November 2005 to August 2010) by clicking here.

Accessing articles, Current Intelligence notes and other published items via JIPLP's archive, anyone who is registered with the Copyright Clearance Center's Rightslink service will be able to enjoy the convenience of its draw-down menu, which enables the user to obtain online permission for fifteen different forms of commercial or non-commercial use, or to stipulate the (non-listed) any use which he or she would like to make of the JIPLP work, receiving in return a quote on how much it might cost.

If you have used this system in order to gain permission to use JIPLP-published materials, and have any comment as to how it might be modified or improved, do please let me know, by emailing me here. Your opinions and experiences are really helpful since they enable us to provide the quality of service which our readers require, at a realistic price.

Current Intelligence

A quick reminder (for those who have forgotten) or explanation (for those who never knew): the short notes published in JIPLP are not called case notes but "Current Intelligence". This is partly a hint to authors that they should be current, and not merely of historical interest (we are reluctant to receive submissions covering cases decided more than three months earlier unless there are good reasons for doing so -- for example uncertainty as to whether the decision is a final one or whether it is going to be appealed, or where the delay is caused by translation issues or by the unavailability of a reliable transcript from which to work). They should also be intelligent, in the sense that the reader will come away from them with a sense of having gained a deeper understanding of or familiarity with the subject.

The Contributor Guidelines add:

"Contributors should keep their Current Intelligence articles, analysing recent key cases, legislation and topical matters, to between 500 and 1,500 words [please!] (but in exceptional cases a greater word length may be agreed with the Editor). Footnotes should not be used: references should be given only for the citation of cases, legislation and literature [but not the page and paragraph numbers of every quote: it can make the text unreadable], which should appear in brackets as part of the main text.

All Current Intelligence pieces should be written to the following template of headings:
* Title (descriptive) [and succinct: thus 'Record damages for patent licence breach' is preferable to 'Appellate court, reversing decision of trial judge, awards record amount of damages in bionic widget patent licence case']
* Name/citation of relevant case/legislation/material [court and country too, please ...]
* Single sentence summary [We are lenient about this when a court establishes two quite separate points or a new statute addresses different legislative issues]
* Legal context [Be specific: sometimes it's not immediately apparent, for example, whether an action is brought for trade mark infringement or passing off/unfair competition, or both]
* Facts [Contributors generally get the facts right. But please be sure to omit those facts that are irrelevant to the note]
* Analysis [This is the author's cadenza, a chance to shine and to demonstate genuine insight or creativity]
* Practical Significance [Please do not use the words "It remains to be seen ..." in this segment]".

Bearing all this in mind, if you would like to submit a Current Intelligence contribution, please contact Sarah Harris. She can let you know if anyone else has already submitted, or proposes to submit, a piece on the same case, statute or significant development. Please be assured that JIPLP solicits and welcomes Current Intelligence contributions concerning all areas of intellectual property and from all jurisdictions.

Articles in search of an author

The sidebar of the jiplp blog contains a permanent, non-exclusive list of topics on which the journal welcomes the submission articles. There are many other topics on which articles are welcomed. Here is a selection of them:

* A review of how Chinese companies fare as litigants in Community trade mark and Community design disputes before the Office for Harmonisation in the Internal Market (OHIM) [TAKEN];

* Creation and enforcement of rights in digitised versions of public domain artwork [TAKEN];

* Affordable strategies for monitoring and enforcing rights against the transit of counterfeit goods [TAKEN];

* Approaches towards the post-contractual plugging of gaps in hastily-negotiated IP licences [TAKEN];

* A private practitioner's guide to the perils of dealing with in-house IP lawyers [TAKEN];

* Key points to consider when licensing the exploitation of celebrity name and image rights [TAKEN];

* A comparison of the treatment of look-alikes, smell-alikes and sound-alikes [TAKEN];

* Language issues in everyday patent practice [TAKEN];

* Crisis management for branded goods facing product recalls [TAKEN];

* IP "super-regimes" of the Olympics and Fifa -- should these models be developed or dismantled? [TAKEN]

If you would like to tackle one of these subjects yourself or together with a colleague, either as it stands or with some variation, please email me here and let me know. And here, in the event that you've decided to write on these or indeed other topics, is some guidance for authors of articles submitted to JIPLP.

IP services and professional standards

The August 2010 issue of JIPLP is now available online (you can take a look at its contents here). The Editorial runs as follows:

"IP Services and Professional Standards

How do you know if a firm of patent or trade mark attorneys, or any given member of those professions, is any good? Clients need an answer to this question, but they are not always sure who can tell them. Terms such as ‘leading firm’, ‘leading edge’, ‘respected practice’, ‘first-class service’, ‘exceptional value for money’, and ‘we address the individual needs of each client’ are more or less par for the course and, while truth in advertising is a value to which we all subscribe, through legislative provisions and case law, such terms are generally regarded as marketing puffs rather than as precise and literal descriptions.

So if clients need more information, to whom should they turn? Many firms quote polls or awards in which they have been identified as Best Firm in some category or other, but anecdotal evidence derived from discussions with the firms in question suggests that they generally treat them with mild amusement rather than as precious accolades, probably since the statistical reality is that, in any year, Top Dog status is generally likely to be bestowed on one's competitors. Ideally, a business in need of good IP representation should be able to ask its competitors how satisfactory they have found their own professional service suppliers—but for obvious reasons, this does not normally happen.

There are some objective and freely available data from which a potential client can get some idea of a prospective firm's activities, but even those are not very helpful. Lists showing which firms file the most trade marks or patents, for example, show the extent of involvement of those firms in filing work and may also reflect the degree of commercial activity of their clients, but they do not indicate if that work is done well and within an acceptable range of budgetary commitment on the part of the client. Likewise, data showing which firms are most frequently in court might suggest expertise in IP litigation or its opposite—a failure to negotiate or delivery settlement of disputes without the need to institute proceedings.

The client is not alone with these difficulties. IP practitioners must identify functional excellence and value for money in fellow practitioners in other jurisdictions, when representing their clients' transnational or global interests. Judging by the number of requests I receive for recommendations, even skilled and responsible practitioners prefer to back their own impressions with corroborative opinions of others (perhaps these requests themselves reflect a commendable caution and prudence on the part of those who make them).

The British Standards Institute (BSI), for one, would have IP service providers sign up to a set of clearly stated professional and ethical standards which would entitle them to display the BSI's logo and thus hold out to the public, more persuasively than a thousand self-proclaimed hyperboles, that they maintain the level of professional performance required by the BSI number in question. BSI standards exist for common consumer products (which visitor to Britain has not encountered BS 1254 for plastic toilet seats?) as well as countless industrial and now professional service. Why then has the proposed standard for IP services not met with enthusiastic applause?

While the IP professions may not at present be able to point to a specific standard which speaks to their clients and gives them confidence, they already have something else. Whatever their terminology, patent and trade mark attorneys, solicitors, barristers, and others are not only highly trained and highly skilled but highly regulated. The requirements of professional regulation are in many jurisdictions so onerous that one might reasonably ask whether, in addition to a current practising certificate, any further assurance is needed. Given the vigorous competition in the current climate, which tends to boost aspirations towards professional excellence while depressing fees, it might be felt that the client needs no further assurance at all".