Hot News – Issue 2

Happy New Year and welcome to the January 1997 Hot News update.

Every month we highlight topical issues – some of these we will cover in special features in the future. Please contact those named below if you would like more detailed information on any of this month’s ‘Hot News’ items.

The registration of domain names which incorporate well-known companies’ names in order to extract payment from those companies when they want to use their own name in their website address has been outlawed by the High Court.

A group of individuals registered over 50 such domain names, including the name ‘harrods.com’. Mr Justice Lightman held that this constituted a clear infringement of Harrods’ registered trade mark. It also amounted to passing off. He granted an injunction and ordered the individuals to transfer the domain name to Harrods.

This decision will be welcomed by brand owners. It demonstrates that existing legal principles apply equally to the Internet as they do to other media and can be used to combat undesirable activity on it.

The outcome of the WIPO Conference (the World Intellectual Property Organisation Diplomatic Conference, Geneva, December 1996) was both good news and bad news for rights owners.

The good news was that the conference adopted two Treaties – the WIPO Copyright Treaty and the WIPO Performers and Phonograms Treaty. However, the third Treaty on Intellectual Property in respect of databases was shelved. This was mainly on the basis that, as the European Union’s own Database Directive was not yet implemented by Member States, it was premature for this to be dealt with at the WIPO level.

WIPO administers the principal international copyright treaties, including the Berne Convention. These lay down minimum copyright provisions at an international level. The new WIPO Copyright Treaty contains a number of important provisions for rights owners in the digital age. There is a new communication to the public right for literary and artistic works (including databases). This will cover ‘on demand’ delivery. There are also important articles covering the protection of rights management information and copyright enforcement.

However, the Conference deleted from the draft a new article which would have explicitly stated that the making of temporary or transient copies (eg on a server on the Internet) is covered by the reproduction right and therefore needs the permission of rights owners. The removal of this article resulted from lobbying pressure from representatives of telecommunications companies and service providers who were worried about copyright liability. So the copyright ‘status quo’ has not changed in this context.

As a result, rights owners will argue that temporary copying is already covered by the Berne Convention even thought it is not explicitly stated. Others will no doubt take a contrary view!

The stage is set at the European level for draft legislation to be published later this year which will harmonise the scope of the reproduction right at European level.

First ASA ruling on Internet advertisement: The Advertising Standards Authority has for the first time upheld a complaint against an Internet advertisement. An advertisement for a cable telephone service by Cable Communications Association was said to be misleading because it implied that CCA ran fibre-optic cables into each subscriber’s house. The ASA understood that, in fact, fibre-optic cables ran to local junction boxes from which copper cables went into subscriber’s homes. CCA was asked to change the claim.

Restored copyright in the US: As a result of the GATT Talks, the Uruguay Round Agreement Act of 8th December 1994 restores to copyright in the United States certain foreign works that were in the public domain in the US. The criteria that have to be satisfied are as follows:

  • it is an original work;
  • it is not in the public domain in its source country;
  • it is in the public domain in the US;
  • it has at least one author or rights holder who was a national or a domiciliary of an eligible country (ie either a member of the World Trade Organisation or an adherent to the Berne Convention); and
  • it was not published in the US during the 30 day period following its publication in an eligible country.

The term of copyright protection is the remainder of the term of copyright that the work would otherwise have enjoyed in the US had it never entered the public domain. The duration for works published before 1 January 1978, and for pre-1972 sound recordings, is 75 years from the date of first publication. For works published after 1 January 1978 it is 75 years from the date of first publication or 100 years from creation, whichever is shorter, for anonymous works, pseudonumous works, and ‘works for hire’. For all other works by a single author the copyright term is the life of the author plus 50 years.

Special forms are required to register restored copyright in a work and these can be obtained by calling the US Copyright Office Hotline on 202 707 9100, or may be downloaded off the Internet from the Copyright Office Home Page at http://lcweb.loc.gov/copyright. A notice of intent to enforce must be filed by 31 December 1997 and the filing fee is US$30.

Copyright Infringement: Copyright owners who are aware that their copyright is being infringed should take care not to consent to or encourage the infringement. In the recent case of Film Investors Overseas Services – v – Home Video Channel 1996, the Judge re- asserted the principle that a party may not ‘be permitted to deny that which… he has allowed or encouraged another to assume to his detriment’.

In that case films were licensed for broadcast via satellite for the UK only. Since the satellite’s footprint extended over much of Europe, the licensee’s sale of decoder cards in Europe enabled the films to be viewed in breach of the licence. The Judge found the licensor to have been aware of this and decided that his failure to act appropriately must deny him any remedy in respect of the infringement.

MILIA, the multi-media trade fair, takes place in Cannes from 9th to 12th February 1997.

Bulletins are for general guidance only. Legal advice should be sought before taking action in relation to specific matters. Where reference is made to Court decisions facts referred to are those reported as found by the Court. Please note that past bulletins included in the Archive have not been updated by any subsequent changes in statute or case law.