This article was included in the winter 2011/12 issue of snIPpets - the intellectual property newsletter.
Extension to copyright term of sound recordings
On 31 October 2011 Council Directive 2011/77/EU (amending 2006/116/EC) extending the copyright term of sound recordings came into force. The new legislation (which has been coined the 'Cliff Richard law') extends the term of copyright for performers and sound recordings from 50 to 70 years. The Directive also addresses other related rights and includes a provision for record companies to pay 20% of the revenues they earn in the extended period into a fund for session musicians who received one-off payments for their performances. Member States have until November 2013 to implement the new legislation into national law and the European Commission must submit a review of its impact in the digital market within 5 years of the new legislation coming into force.
Some have criticised the new provisions on the basis that there has been insufficient evidence to back the extension and that it favours well known artists and large record companies but not lesser known musicians who do not recoup much in royalties. However, The UK government has ultimately backed it and is supported by lobbyists in the music industry and high-profile musicians who were strongly against exploitation of their works during their lifetime.
Digital Economy Act 2010 (DEA) update
Even though the DEA (which aims to regulate digital media and to set out a framework to clamp down on online piracy) is in force, many of its provisions have proved highly controversial and have not been fully implemented. Among some of the controversial provisions awaiting final implementation are those which impose various 'initial obligations' on internet service providers (ISPs) to notify their subscribers (by warning letters) if their IP addresses have been reported by copyright owners as being associated with infringing material and to provide copyright owners with a list of infringing subscribers. To date, the final 'initial obligations code' (which will set out how the 'initial obligations' operate) has not been published by Ofcom but they are aiming to publish the code some time in 2012.
The delay in publishing the 'initial obligations code' may have something to do with the appeal by BT and Talk Talk of the outcome of judicial review proceedings in relation to some of controversial provisions of the DEA (see Digital Economy Act faces further scrutiny). The appeal hearing is scheduled for 16 January 2012. Once judgment has been handed down in the appeal, it may become clearer if and when some of the controversial provisions will be implemented.
Patents County Court (PCC) update
New £500,000 limit on the value of copyright and trade mark claims in the Patents County Court
On 1 October 2011, the Patents County Court (Financial Limits) No 2 Order 2011 came into force which introduces a new limit of £500,000 on the value of intellectual property claims other than patents and designs (ie copyright and trade mark claims) in the PCC. This follows the first Patents County Court (Financial Limits) Order 2011 which came into force on 14 June 2011 which limited the value of patents and design claims to £500,000. The new limit on the value of IP claims in the PCC aims to create a more accessible, streamlined and less-costly court process for small businesses wishing to protect and enforce their IP rights. Previously, businesses with claims worth less than £500,000 risked unlimited financial exposure in either the PCC or the High Court.
New small claims service
Following recommendations made in the Hargreaves Review, the government has confirmed that a new small claims court will be introduced in the PCC for all IP claims to help small and medium sized businesses protecting and enforcing their IP rights. The new process will limit fixed costs and allow damages of up to £5000 per case. The government aims to have the new system in place by the end of 2012. The Hargreaves review indicated that about 17% of small and medium-sized businesses had given up on pursuing IP claims due to high court costs so it is hoped this will give such companies a greater incentive to pursue small claims and protect their rights.
Change of name
In the government's response to the Hargreaves review in August 2011, it committed to consider changing the name of the Patents County Court to the Intellectual Property County Court by autumn 2011 to better reflect the range of IP cases that the PCC handles. The Government subsequently issued a press release in autumn 2011 to announce that it requires further evidence to establish the case for change and is continuing to look into low cost ways of implementing any change.
UK Intellectual Property Office update
New free online patent inspection service
The UK-IPO has launched a new online patent inspection service called Ipsum which will remove unnecessary costs for business requesting patent documents. Previously, businesses had to pay £5 per document requested which may have ended up out of date by the time it was delivered. Ipsum means that anyone – lawyers, patent attorneys, business, universities, consumers etc – can click on a button to retrieve the patent documents requested which Ipsum updates in real time. This service is aimed to help businesses track the progress of patents and to help patent examiners around the world understand why a patent was or was not granted. The government hopes that the Ipsum system will make the patent system more transparent and help to ease the global backlog of patent applications.
Government copyright Consultation Paper
On 14 December 2011, the UK-IPO set out details of the changes it proposes to make to copyright law in order to implement the recommendations made in the Hargreaves review. If implemented, the IP industry will see a fairly radical overhaul of UK copyright law to bring it in line with digital age.
Proposals in the Consultation Paper include: establish licensing and clearance procedures for orphan works, introducing voluntary extended collective licensing schemes to enable more efficient mass clearance of rights, the introduction of new exceptions to copyright to permit limited private copying, the digitisation of works for library archiving and parody, extending the non-commercial research exception to allow text and data mining and exploring possible amendment and extension of other existing copyright exceptions. The consultation is aimed at individuals and organisations, including small and medium sized business, which may be impacted by the proposed changes to UK copyright laws. They have until 21 March 2012 to respond.
ADR at the OHIM to offer a real alternative?
In October 2011, the OHIM launched a mediation service as an alternative to appeal proceedings before the Boards of Appeal in adversarial cases concerning trade marks and designs.
Mediation talks will normally be held in Alicante and the service itself is offered free of charge. However, to benefit from the new service, an appeal must already have been filed (with payment of the normal appeal fee of €800) and a Statement of Grounds submitted in good time. Only at this point will the responsible Board of Appeal suspend the proceedings, pending the mediation outcome. If mediation fails, the appeal proceedings resume as normal. The appeal fee will not be refunded regardless of whether mediation is successful or not.
A one-off fee of €750 will also be charged in the event that the parties wish to hold the mediation talks in the OHIM's liaison Office in Brussels in order to cover the mediator's expenses with the parties sharing the cost (which will not be refundable in the event mediation fails).
The discussions during mediation remain confidential between the parties and mediator and the content of the negotiations will not become part of the appeal file. A mediation meeting is not the same as an oral hearing - the mediator is there to assist the parties reach a mutually satisfactory settlement, not to settle the matter themself.
There are no current plans to make the mediation service available at an earlier stage e.g. during the extended cooling off period in trade mark opposition proceedings as it is an initiative of the Boards of Appeal, who presumably hope that it will help streamline the current appeal process (the Boards of Appeal currently have 2539 Appeals pending with 763 "ready for decision").
However, the need to file and substantiate the appeal as a pre-requisite to mediation may deter some given the non-refundable and not inconsiderable costs involved. Commentators have also quite rightly pointed out that good lawyers are in the habit of mediating to secure a commercial solution on behalf of their clients and that a third party mediator is an unnecessary addition if both parties act reasonably in negotiations. The need to file an appeal is often an admission that the parties have been unable to reach an agreement and it is interesting to note that just 2 appeals were withdrawn prior to a decision being issued in 2010. Whether parties will become more amenable to settlement under the influence of the Spanish sunshine remains to be seen.
The end of IPR2
An OHIM delegation attended the Closing Event of the EU-China Project on the Protection of Intellectual Property Rights (IPR2) in Brussels on 13 September. It followed the presentation of results to stakeholders in China at the corresponding Closing Event in Beijing on 15 July as the Project completed its four-year implementation period. Hopefully, the results of this collaborative effort will give European practitioners the necessary resources to better understand IP law and practice in China.
European Commission 2012 Work Programme
On 16 November 2011, the European Commission published its IP work programme for 2012 and accompanying annex. This included various initiatives and proposals scheduled for consideration or adoption in 2012 to revamp the EU legal framework in IP. Among its proposals are: the creation of a European framework for collective management of copyright; online distribution of audiovisual works; considering the creation of European Copyright Code; working to adopt regulations for a unitary patent, and unitary patent litigation system; modernising the Community Trade Marks Regulation (207/2009/EC) and Trade Marks Directive (2008/95/EC) e.g. simplifying and speeding up the registration process, redefining what may constitute a trade mark; issuing a legislative instrument on collective rights management in relation to the online distribution of music; updating the Directive on enforcement of IPR’s (2004/48/EC) to better address the needs of rights-holders in a digital environment; and revising the EU framework for data retention.
There are no concrete dates relating to the proposals although the Commission has indicated that it aims to adopt regulations for the EU unitary patent 'as soon as possible' and aims to reveal how it will update European trade mark law in February 2012.