HomeInsightsNeed to Know – 2014.11.10

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General

OHIM launches Orphan Works Database.

Intellectual Property Office publishes first annual report on its activities and contribution to innovation and growth.

Technology

Government publishes guidance on Technological Protection Measures complaints process.

Government consults on plans to eliminate “partial not-spots” in mobile phone coverage.

Ofcom publishes preliminary consultation on passive remedies as part of its Business Connectivity Market Review.

Ofcom consults on plans for future release of new spectrum to meet growing demand for mobile broadband services.

Data Protection

Information Commissioner’s Office warns organisations to make sure websites are protected against one of the most common forms of online attack known as “SQL injection”.

Broadcasting

Government consults on renewing analogue commercial radio licences.

Ofcom publishes reports relating to quality of live TV subtitles and access services provided by broadcasters in the UK.

Prize Draws, Promotions and Competitions

ASA finds fantasy football ad promoting “prize draw for a date with a Page 3 girl” sexist, offensive and socially irresponsible.

CAP consults on proposed changes to sales promotion rules.

Publishing

Government consults on reducing duration of copyright in certain unpublished works.

Film & TV

Tax relief increased for films with core expenditure exceeding £20 million.

Advertising

CAP and BCAP consult on proposals to remove distance selling rules from UK Advertising Codes.

Court of Appeal sends ruling that Marks & Spencer had infringed INTERFLORA trade marks by purchasing “interflora” as keyword on Google AdWords back to High Court for retrial.

Ofcom renews co-regulatory arrangements for broadcast advertising until 2024.

General

OHIM launches Orphan Works Database.

The European Directive on Orphan Works (2012/28/EU), which entered into force at the end of 2012, sets out common rules for the digitisation and online display of orphan works that have been first published in the EU. 

Under the Directive, public institutions may use works that have been identified as “orphan”, after a diligent search as to their authorship has been carried out.  The Directive also stipulates that all orphan works must be included in a EU-wide database the creation of which was entrusted to OHIM.  OHIM has now finished building the Orphan Works Database, a single publicly accessible online platform.

The aim is to collect information about orphan works currently held in public libraries, museums, archives, film and audio heritage institutions and public service broadcasting organisations all over Europe.  These organisations must first conduct a diligent search on the authors of the works.  If the search is fruitless they must record the work in the database.

Once identified as “orphan” in one country, a work will be recognised as orphan across the EU.  This means that any cultural organisation having these works in its archives may digitise them and make them available within the EU.  Authors who recognise any of their works in the database may request a change of status and reclaim their full rights in the work in question.  For further information and to access the database, click here.

Intellectual Property Office publishes first annual report on its activities and contribution to innovation and growth.

The report, “Supporting Innovation and Growth: a report on the work of the IPO 2013/14”, highlights the links between the use of IP in companies and their potential to grow and increase revenue, as well as setting out key developments of IP policy.  It is the IPO’s first report of this kind and the IPO says it will now publish a similar one every year. 

The IPO says that, during the year, important changes were made to the copyright framework to give users additional freedoms to use copyright works that will deliver £100s of millions of benefits over the next decade.  Alongside this, innovative approaches to raise awareness of the value of copyright reached more than 14 million people.

The report highlights the growing demand for high quality IP rights, with more than 23,000 patent applications and almost 49,000 trade mark applications being received by the IPO in the last year.  It also shows all that has been done to protect and nurture the ideas needed to fuel the country’s economic growth and make sure that the money invested into intellectual property continues to produce results. 

The report includes details on the IPO’s work to:

  • better understand the links between IP and growth in the economy;
  • modernise the copyright framework;
  • adapt its granting functions to be more efficient, to deal with increased demand and ensure continued high quality;
  • promote awareness of, and respect for, IP;
  • support businesses in using, and getting value from, IP; and
  • create an appropriate enforcement environment to allow right holders to protect their IP.

To access the report, click here.

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Technology

Government publishes guidance on Technological Protection Measures complaints process.

Technological Protection Measures (TPMs) (also known as copy protection measures or DRM) are often used to protect copyright works, for example, through encryption on DVDs.  TPMs can have an important role in enabling copyright owners to offer content to consumers in different ways, as well as protecting against unlawful copying.  EU and UK law protects the right of copyright owners to use TPMs to protect their works, and circumvention of such technology is illegal.

However, use of TPMs can also potentially prevent activities that are permitted by copyright exceptions.  The law therefore provides for a complaints process that aims to ensure that a TPM does not unreasonably prevent people from benefiting from an exception. 

The Government guidance essentially sets out what a copyright user can do where a TPM prevents the user from benefitting from a copyright exception.  It gives information on when and how someone may make a complaint, other steps that he/she should consider and some of the factors that may influence the outcome of a complaint.  To access the guidance, click here.

Government consults on plans to eliminate “partial not-spots” in mobile phone coverage.

The so called “partial not-spots” have coverage from some but not all of the four mobile networks (EE, O2, Three and Vodafone).  Therefore, depending on the network, consumers may have no coverage in certain areas.

The Government says that talks have been held with the mobile companies in recent months in an attempt to find a voluntary solution to achieve full coverage and this work by the industry is expected to continue.  However, should a voluntary solution not be found, the Government is prepared to legislate and has launched a consultation on various legislative proposals it could adopt.  The proposals include:

  • national roaming: phones would roam onto another network’s signal when theirs was not available, similar to what happens when travelling abroad;
  • infrastructure sharing: mobile networks would be able to put transmitters on each other’s masts;
  • reforming virtual networks: some companies currently agree access to a single network and then sell mobile packages to consumers.  This could be extended so that virtual networks were available to mobiles on all four networks; and
  • coverage obligation: oblige the networks to cover a certain percentage of the UK but leave it open for them to decide how best to achieve this outcome.

The consultation closes at midnight on 26 November 2014.  To access the consultation documentation, click here.

Ofcom publishes preliminary consultation on passive remedies as part of its Business Connectivity Market Review.

Ofcom’s Business Connectivity Market Review (BCMR) examines the market for wholesale leased lines, i.e. high speed data links that support UK businesses, mobile and broadband providers.

The consultation discusses “passive remedies”, a form of regulation not currently imposed on BT’s provision of leased lines.  Regulations of this form would require BT to let its competitors use its physical infrastructure to provide their own leased line services.

Ofcom is seeking stakeholders’ views on the framework for assessing the role of passive remedies in the BCMR, as well as potential costs, benefits and design considerations.  The consultation closes on 5 January 2015.  For further information and to access the consultation documentation, click here.

Ofcom consults on plans for future release of new spectrum to meet growing demand for mobile broadband services.

Potential bidders are being invited to comment on proposals for Ofcom’s auction of spectrum in the 2.3 GHz and 3.4 GHz bands, which is expected to take place in late 2015 or early 2016.

While no specific uses for this spectrum have been prescribed, Ofcom says it is likely to interest the mobile industry since the 2.3 GHz and 3.4 GHz spectrum bands are frequencies which could be suitable for providing very high data capacity.

Many existing mobile handsets from major manufacturers, including the Apple iPhone 5 and 6, HTC Desire and Samsung Galaxy, are already compatible with the 2.3 GHz spectrum in other markets.  Further, the 3.4 GHz band is currently being used for 4G wireless broadband in six countries including the UK, Canada and Spain.

The consultation closes on 23 January 2015.  To read Ofcom’s press release and to access the consultation documentation, click here.

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Data Protection

Information Commissioner’s Office warns organisations to make sure websites are protected against one of the most common forms of online attack known as “SQL injection”.

The warning comes after a hotel booking website was fined £7,500 following a serious data breach where a vulnerability on the company’s site allowed attackers to access the full payment card details of 3,814 customers.

The data was accessed after the attacker exploited a flaw on a page of the booking website to access the company’s customer database.  Although customers’ payment details had been encrypted, the means to decrypt the information was stored with the data.  This allowed the attackers to access the customers’ full card details, including the three-digit security code needed to authorise payments.

Simon Rice, ICO Group Manager for Technology, said: “It may come as a surprise to many in the IT security industry that this type of attack is still allowed to occur.  SQL injection attacks are preventable but organisations need to spend the necessary time and effort to make sure their website isn’t vulnerable. … Organisations must act now to avoid one of the oldest hackers’ tricks in the book.  If you don’t have the expertise in-house, then find someone who does, otherwise you may be the next organisation on the end of an ICO fine and the reputational damage that results from a serious data breach”.

To read the ICO’s press release in full and for links to further information on SQL injection attacks and how to prevent them, click here.

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Broadcasting

Government consults on renewing analogue commercial radio licences.

Analogue commercial radio licences, which were renewed under the Digital Economy Act 2010, will begin to expire from late 2017.  Ofcom does not have the power to renew these licences for a further period beyond the expiry date.  

The Government has therefore published a consultation asking for views on whether it should allow these licences to be renewed for a further period and, if so, what the length of this period should be. 

The consultation closes on 1 December 2014.  To access the consultation documentation, click here.

Ofcom publishes reports relating to quality of live TV subtitles and access services provided by broadcasters in the UK.

Addressing concerns from viewers, last year Ofcom asked broadcasters to start reporting on the quality of live subtitles so as to identify areas for improvement. 

Ofcom’s report measures samples of the accuracy, speed and latency (the delay between speech and the corresponding subtitle appearing) of live TV subtitles.  It shows that broadcasters are beginning to make improvements in some areas of subtitling.  For example, broadcasters are making greater use of block subtitles, which are easier and quicker for viewers to read than scrolling subtitles.  However, the report finds that some subtitling issues, such as latency, remain a problem.

Ofcom has also published its first report of 2014 on the provision of access services by UK broadcasters.  The report, for January to June 2014, shows that most broadcasters are making good progress towards meeting or exceeding their obligations for subtitling, signing and audio description.  For further information and to access the reports, click here.

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Prize Draws, Promotions and Competitions

ASA finds fantasy football ad promoting “prize draw for a date with a Page 3 girl” sexist, offensive and socially irresponsible.

An email sent to subscribers to the Sun’s Dream Team fantasy football competition stated: “You’re signed up to Dream Team and for that we promise to love, adore and cherish you … You can take your Dream Team experience to the next level by becoming a Chairman and creating a Mini League. Not only do you get to hammer your mates every week, but if you recruit 10 players or more to your league you will get: Entered into a prize draw for a date with a Page 3 girl – we might even let you pick which one, so feel free to start your research now … Don’t listen to your girlfriend when she says size doesn’t matter. The bigger your Mini League is, the more prizes you can get your mitts on”.

Following 1036 complaints, the ASA found that, although individuals were able to sign up to and play Dream Team for free, because pay-to-play options were available it was still a gambling product for which the ad was an indirect promotion.  The ASA said that in the context of the ad, to offer a date with a woman as a reward for success in the game was demeaning to women and objectified those offered as prizes.   The ASA also highlighted the wording that further enhanced the impression that the women were simply objects to be selected at the whim and enjoyment of the winner and had no choice in the matter themselves. 

Because the notion of offering a date with a woman as a prize was likely to be offensive to a number of recipients, the ASA concluded that it was sexist, offensive and socially irresponsible and breached CAP Code rules 1.3 (Responsible advertising), 4.1 (Harm and offence), 8.7 (Sales promotions), and 16.1 (Gambling).  To read ASA Adjudication on News UK & Ireland Ltd (5 November 2014), click here.

CAP consults on proposed changes to sales promotion rules.

CAP intends to amend some of the rules in Section 8 of the CAP Code, which relates to the regulation of sales promotions, to ensure that they remain consistent with Unfair Commercial Practices Directive (2005/29/EC) and Consumer Protection from Unfair Trading Regulations (CPRs), which implement the Directive into UK law.  CAP has sought legal advice and is now proposing that some rules should be modified to reflect legal interpretations that clarify the application of the legislation.

The key change will be to rule 8.9 which requires promoters to make a reasonable estimate of the likely response to the promotion and to ensure that they are capable of meeting that estimated response.  The proposed amendment requires promoters to make a reasonable estimate of the likely response to the promotion and then show either that they will meet that response or clearly communicate to consumers that demand might exceed availability.  CAP considers a promotion that is sufficiently clear as to the availability of the relevant promotional item to enable the consumer to make an informed transactional decision is likely to be permitted by the CPRs and hence may not be prohibited even if it offers a limited number of promotional items.

CAP says that promoters could comply with the amended rule by, for example, including practical information such as “5000 available, likely to run out quickly”, “vouchers available for first 500 customers” or “visit our promotional stand before 9am to avoid disappointment”.  To access the CAP sales promotion rules consultation click here.

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Publishing

Government consults on reducing duration of copyright in certain unpublished works.

The Government has launched a consultation seeking views on using the power in s 170(2) of the Copyright, Designs and Patents Act 1988, which enables it to reduce the duration of copyright in certain unpublished works that currently remain protected by copyright until the year 2039, regardless of the age of the work.  This “2039 rule” exists as a result of transitional provisions in Schedule 1 CDPA.

The consultation invites views and seeks evidence on the potential impact of the Government’s proposals.  In addition to the questions posed in the consultation document, evidence is sought regarding:

  • the estimated number of works subject to the 2039 rule;
  • the proportion of such works for which the rule inhibits publication;
  • the potential number of works which would be published if the rule were removed;
  • the scale of administrative burdens currently shouldered by cultural institutions in relation to 2039 works;
  • the benefits to institutions of the removal of the 2039 rule; and
  • quantifiable costs to copyright owners.

The consultation closes at midnight on 12 December 2014.  To access the consultation documentation, click here.

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Film & TV

Tax relief increased for films with core expenditure exceeding £20 million.

Thanks to the Finance Act 2014, Section 32 (Film Tax Relief) (Appointed Day) Order 2014, which was made on 29 October 2014, films whose core expenditure exceeds £20 million will be entitled to an extra 20% film tax relief from 1 April 2014.

The tax relief will therefore be available for surrenderable losses at a rate of 25% up to the first £20 million of each production’s UK core production expenditure (to a maximum of 80% of UK core production expenditure) and an additional 20% thereafter (to a maximum of 80% of the UK core production expenditure), for all film productions where the principal photography was not completed before 1 April 2014.  Previously, the rate of 25% only applied to limited budget films, i.e. those with UK core production expenditure up to £20 million. 

The minimum UK spending requirement will also change from 25% to 10% for film productions where the principal photography was not completed before 1 April 2014.  Click here for the legislation.

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Advertising

CAP and BCAP consult on proposals to remove distance selling rules from UK Advertising Codes.

On 13 June 2014, the Consumer Contracts (Information, Cancellation and Additional Charges) Regulations 2013 came into force, replacing the Consumer Protection (Distance Selling) Regulations 2000 and implementing most provisions of the Consumer Rights Directive (2011/83/EU), which is a maximum harmonisation measure.  CAP and BCAP are therefore consulting on proposals aimed at ensuring the compatibility of the advertising rules with the new Regulations.  The proposals relate to pre-contractual information requirements and post-contractual matters.

CAP and BCAP consider it is proportionate to remove rules that do not mandate the content of advertising.  The new Regulations require certain information to be provided by traders to consumers before a consumer is bound by a distance contract.  CAP and BCAP consider that they could only require advertisers to include this information in their advertising where the advertising constituted the first and last stage of communication from the marketer before a distance contract is concluded.  To require it in all ads would exceed the requirements of the new Regulations.  As some ads and almost all broadcast ads do not constitute the first and last stage of communication, such that consumers have to use a website or a telephone line to place orders, and since the Regulations allow for pre-contractual information to be given at this later stage, CAP and BCAP propose removing from their Codes the distance selling rules which relate to pre-contractual information.

CAP and BCAP also propose removing from the Codes rules relating to post-contractual matters on the basis that these do not generally relate to advertising but rather to the trader’s behaviour after a contract has been concluded.  Their view is that post-contractual matters are sufficiently regulated by other authorities and under legislation.  To access the consultations click here.

Court of Appeal sends ruling that Marks & Spencer had infringed INTERFLORA trade marks by purchasing “interflora” as keyword on Google AdWords back to High Court for retrial.

The well-known flower delivery network, Interflora, claimed that M&S infringed its Community and UK trade marks, consisting of the word INTERFLORA and registered for flowers, florist and related services in various classes, by buying various “interflora” keywords on Google’s AdWords service.  Both parties operate websites from which flowers can be ordered for delivery. 

M&S’s actions meant that when internet users searched for any of the “interflora” keywords purchased by M&S, advertisements such as the following would be displayed in the Google search results:

M&S Flowers Online; Beautiful Fresh Flowers & Plants; Order by 5pm for Next Day Delivery; www.marksandspencer.com/flowers.”

Following a reference to the Court of Justice of the European Union, the High Court concluded that M&S had indeed infringed the INTERFLORA trade marks under Article 5(1)(a) of the Trade Marks Directive (89/104/EEC) and Article 9(1)(a) of the Community Trade Marks Regulation (207/2099/EC).  Mr Justice Arnold found that M&S’s actions adversely affected the origin function of the INTERFLORA trade marks. 

M&S appealed the decision and the Court of Appeal found that, although Arnold J had not erred in his findings regarding the “average consumer” and holding that infringement had occurred on the basis that a “significant number” of average consumers believed that the advertised services of M&S were connected to Interflora, he had been incorrect to adopt a reversed burden of proof test and incorrect to adopt a doctrine of initial interest confusion. 

Arnold J had found that the onus lay on M&S to show that the use of the sign was sufficiently clear that there was no real risk of confusion on the part of the average consumer as to the origin of the advertised services.  The Court of Appeal disagreed, finding that the onus lay on Interflora, as the trade mark owner, to establish that the advertisement complained of did not enable normally informed and reasonably attentive internet users to ascertain whether the services originated from the trade mark owner or an undertaking economically connected to it or, on the contrary, from a third party.

As for initial interest confusion, which is essentially a US doctrine, the Court of Appeal found that it was “not helpful” to import such a doctrine into EU trade mark law as it had the potential “positively to mislead”.  This was because the CJEU has already stated in clear and unambiguous terms the test that must be applied under EU law to determine whether a sign has an adverse effect on the origin function of a trade mark.  Essentially, it has to be shown that an advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the services referred to originates from the trade mark owner or an undertaking economically connected to it, or whether it originates from a third party.  This test, which has been developed with great care, the Court of Appeal said, reflects the importance of trade marks in developing a system of undistorted competition whilst recognising that their purpose is not to protect their proprietors from fair competition.  In the Court of Appeal’s view, the doctrine of initial interest confusion is an “unnecessary and potentially misleading gloss on the tests the Court has articulated” and “it should perform no part of the analysis of our national courts in claims such as this one.

Accordingly, the Court of Appeal held that the matter should go back to the High Court for a retrial.  (Interflora Inc v Marks and Spencer plc [2014] EWCA Civ 1403 (5 November 2014) – to read the judgment in full, click here).

Ofcom renews co-regulatory arrangements for broadcast advertising until 2024.

Ofcom’s duties include a requirement to set broadcasting standards in advertising and prevent the inclusion of advertising in licensed services that may be misleading, harmful or offensive.

Although Ofcom remains ultimately responsible for the implementation and enforcement of standards in broadcast advertising, it has, since 2004, contracted out certain functions relating to the regulation of broadcast advertising content to the Broadcast Committee of Advertising Practice, which is responsible for the setting and reviewing of broadcast advertising standards as set out in the BCAP Code, and the Advertising Standards Authority (Broadcast), which is responsible for the handling and resolution of complaints under the BCAP Code.

Earlier in the summer, Ofcom invited comments from interested parties on its proposal to renew its co-regulatory relationships for a further ten years, as the existing arrangements were to expire at the end of October.  Ofcom has now published a document summarising its assessment of the responses it received and explaining its decision to renew the co-regulatory arrangements for broadcast advertising until 2024.  To read Ofcom’s statement in full, click here.

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