Kelsey Farish

Entertainment Industry, intellectual property

Fair Play to use FIFA trade marks on social media?

June 17, 2018June 18, 2018by kelsey farishLeave a Comment

This weekend, together with millions of others around the world, I watched Iceland make its World Cup debut against Argentina. Iceland, the smallest nation to ever qualify for the World Cup, is a special country for me, not least because my husband and were married there! Especially as my home country failed to qualify for this year’s tournament (sigh) it comes as no surprise that I’m supporting the Iceland’s national football team, or Íslenska karlalandsliðið í knattspyrnu.

I recently came across an article which said fans should beware of using World Cup logos in social media profile pictures. The article explained that although “many fans will be using social media to show their support by uploading images of their country’s flags and the World Cup logo as their profile pictures, by uploading the World Cup logo in your pictures you could be infringing intellectual property rights owned by the Fédération Internationale de Football Association (FIFA).”

So, what’s the deal? Does my newly updated Facebook photo, which features FIFA’s official emblem, unlawfully infringe upon FIFA’s trade mark? The answer is below…

Intellectual Property is football’s star player.
The World Cup is the largest single sporting event on Earth, with nearly half the world’s population tuning in. The tournament, which runs from June 14 to July 15 is being hosted in Russia for the first time, at an official cost of 683 billion rubles or £8.4 billion (Reuters).

As reported on its finances page, around 95% of FIFA’s revenues come from the sale of television broadcasting, marketing, and licensing rights related to the FIFA World Cup. In exchange for funding, FIFA grants exclusive rights to use its official marks to certain companies, which this year include addidas, Coca Cola, Gazprom, Budweiser, and Visa (rights holders).

In its 30-plus pages of official guidance on brand protection, FIFA claims that if anyone could use the official marks for free, the power of the marks would dilute and there would be no reason for companies to pay for sponsorship. Without lucrative corporate partnerships FIFA would lack the revenue required to organise the World Cup.

From the 2014 World Cup in Brazil, FIFA hauled in $4.8 billion in revenue, which turned a $2.6 billion profit for the association (which is then re-invested into development projects). Broadcast revenue topped $2.43 billion, while sponsorship fees brought in $1.6 billion and ticket sales earned $527 million. In other words, it’s not ticket sales that pay the bills: it’s intellectual property.

To date, FIFA’s intellectual property portfolio contains 14,000 trade mark registrations, about 300 registered designs, and 150 copyright registrations covering 157 jurisdictions overall (Official marks). Official marks include the flag, logo, hymn, and motto of FIFA, mascots, emblems, posters, and identification symbols.

Screenshot 2018-06-17 at 11.40.15 AM — the official emblem and the official mascot, which is a Eurasian wolf named Zabivaka. According to the FIFA website, Zabivaka – which means “goal scorer” in Russian – “radiates fun, charm and confidence.”

The words “FIFA”, “2018 FIFA World Cup”, “World Cup Russia”, “FIFA World Cup”, “Football World Cup”, and “Soccer World Cup” are also protected, as are “Russia 2018” and “Moscow 2018.” Simply writing “Russia 2018” on a t-shirt could land you in trouble, as doing so may lead consumers to establish an unlawful association with FIFA’s tournament.

Trade marks as broad as these are generally not enforceable. One wonders if these trade marks would have been approved in the first place, were it not for the massive size and power of FIFA. However, it’s also important to note that, without the co-operation of local officials, FIFA lacks both adequate legitimacy and capability to effectively police and protect their official marks.

Russian law.
Domestic law provides FIFA with the additional teeth needed to enforce its intellectual property rights. In March of 2013, Russia passed the Federal Law No 108-FZ On preparation for and the staging of the 2018 FIFA World Cup (“World Cup Law”). There are provisions aimed at protecting FIFA’s commercial rights, including a specific procedure for the registration of FIFA’s trademarks. Under Article 19, pre-existing Russian trademarks that are identical or similar to FIFA’s are prohibited for use until 2019.

Compliance is supervised by the Russian Federal Service for Surveillance of Consumer Rights Protection and Human Wellbeing (Rospotrebnadzor) and the Federal Service for Supervision of Communications, Information Technology and Mass Media (Roskomnadzor).

Screenshot 2018-06-17 at 12.25.51 PM.png — FIFA poster in front of the Kremlin, Moscow

On November 2017, Rospotrebnadzor adopted an agenda to prepare for the World Cup, including the key priority of supervising the use of FIFA’s official marks. In March, the Roskomnadzor announced that it had placed 858 websites selling counterfeit products on the so-called “Russian Internet Blacklist“, the Unified Register of Prohibited Information.

Additionally, the Federal Antimonopoly Service (FAS) can also hold parties accountable for illegal use of official marks. By way of example, Bavaria Brewing House Group Ltd and Agrofirma FAT Ltd raffled tickets for the World Cup final on their website and on social media. They also used FIFA trade marks in their promotional campaign and to mark their “Bavaria” beer. As neither Bavaria Brewing House nor Agrofirma FAT were licensed rights holders, the FAS issued an injunction against the companies to stop the violations.

What this means for fans.
FIFA engages in active surveillance and brand protection, which includes court proceedings to halt an infringing situation and seek financial compensation for any damages suffered.

It’s important to note that sports bars, restaurants, clothing brands and other companies are welcome to use generic football or country related images, provided they do not include any of FIFA’s official marks. The key here is avoiding reference to the World Cup that could suggest your company has an official relationship with FIFA.

But should individuals be worried about changing their profile pics on Facebook, if those photos include official marks? Not really. This is because sharing official content belonging to FIFA by fans without any commercial benefit is expressly permitted. This includes sharing on Facebook, Twitter, or even here on KelseyFarish.com, as blogs without commercial content are likewise exempted. Provided that you don’t attempt to make money by unlawfully using FIFA’s official marks, go on and enjoy the beautiful game!

data protection

Now you’re just somebody that I used to know

June 8, 2018by kelsey farishLeave a Comment

The GDPR has been in force for less than two weeks, but Europeans have already started to contact companies left, right and centre to exercise their newly enshrined statutory “right to be forgotten.”

However, this right is not absolute, and only applies in certain circumstances. Let’s look at the balancing act between a data subject’s right to have their data erased on the one hand, and an organisation’s need to maintain data for legitimate purposes, on the other.

Organisations (data controllers and processors) are obliged to only collect and use personal data in a lawful manner, as set out in Article 6. There are several types of “lawful processing,” including in instances where an individual grants his or her explicit and informed consent. But lawful processing also covers the use of data for a controller’s legitimate interests, the performance of a contract, or legal obligations, such as fraud prevention. For more on lawful processing, check out my earlier post – Lights, camera, data protection?

With this in mind, it’s important to note that only in certain scenarios does an individual have the right to be forgotten. Under Article 17(1), their data must be either:

no longer necessary for the original purpose
processed based on consent, which is now withdrawn
processed based on the organisation’s legitimate interests, which the individual objects to;
processed for direct marketing purposes, which the individual objects to;
processed unlawfully (in contravention of Article 6);
or
erased to comply with a legal obligation.

But before an organisation hits “delete” it must see if any purposes for retention apply. In pre-GDPR days gone by, data subjects had to prove they had the right for their data to be erased. The burden now lies with the controller to prove that they have a legal basis for retaining the data. If so, the organisation has a lawful reason to refuse the erasure request. In fact, deleting data when an exemption does apply could be a breach of the law!

The purposes for retention under Article 17(3) are:

the right of freedom of expression and information;
complying with a legal obligation, or for performing a task in the public interest;
for reasons of public health;
for archiving in the public interest, including scientific or statistical research; or
for the establishment, exercise or defence of legal claims.

Additionally, “manifestly unfounded” or “excessive” requests may be refused outright.

From what I’ve seen in practice over the last few days, most erasure requests are made because an individual no longer wants to receive marketing emails. Fair enough: in shifting responsibility onto corporate controllers, the right to be forgotten strengthens individual control. It also signifies public disapproval of entities which process – and, in some instances abuse – enormous quantities of personal information without the explicit consent or knowledge of the individuals concerned.

For those of us interested in the societal and human rights implications (I’m telling you – data protection isn’t just for the techies amongst us!) it’s worthwhile to consider how journalism fits into the picture.

As Oxford’s International Data Privacy Law summarises rather eloquently: The nebulous boundaries and susceptibility to misuse of the right to be forgotten make it a blunt instrument for data protection with the potential to inhibit free speech and information flow on the Internet.

As early as 2012, Reporters Without Borders (formally, Reporters Sans Frontières) criticized the right to be forgotten – then in early draft stages – as a generalised right that individuals can invoke when digital content no longer suits their needs. This runs the risk of trumping the public interest in the information’s availability. RSF also contends that the demand for complete erasure of online content, or the “right to oblivion”, could place impossible obligations on content editors and hosting companies.

EU Commissioner Viviane Reding responded to the criticism from RSF by explaining that the [GDPR] provides for very broad exemptions to ensure that freedom of expression can be fully taken into account.

Note – this post covers the statutory Right to Erasure under Article 17 of the GDPR. Although related, it is distinguished from the recent high-profile cases against Google, in which the English Supreme Court held that a defendant convicted of a crime was entitled to the right to be forgotten, and therefore delisted from Google search results. A more serious offence, with fewer mitigating circumstances, did not attract the same right.

photo © Cassidy Kelley

intellectual property

Ricciardo’s ritual returns at Monaco Grand Prix

May 28, 2018July 18, 2018by kelsey farishLeave a Comment

Australian Formula One driver Daniel Ricciardo has an interesting celebratory ritual: he drinks champagne from his sweaty racing shoe. Keen to capitalise on the popularity of the stunt, Formula One has recently trademarked the name of this quirky act, known as a “shoey.”

Drinking champagne from a lady’s slipper was once a symbol of decadence in the early 1900s. According to drinks and culture website VinePair, sipping booze from shoes is said to be of Russian origin, dating back to the late 19th century. At the Bolshoi Ballet in Moscow, fans may have drunk vodka from their favourite ballerinas’ satin slippers!

The shoey celebration has found itself popular once again, at least in Australia. Dean and Shaun Harrington of the The Mad Hueys surfing brand are said to have reintroduced this strange practice – and the name “shoey” – back in 2002. As The Mad Hueys gained in popularity, more celebs in the shoey.

However, the shoey only really hit the global stage after Red Bull racing champ Daniel Ricciardo adopted the tradition to celebrate his racing victories. During a press conference in 2016, Ricciardo admitted that it “basically comes from a few Aussies called the Mad Hueys. I just thought I’d keep the Australian tradition going!” Cognizant as ever of the branding and merchandising potential behind their biggest stars, Formula One Licensing B.V. has now trademarked shoey.

When asked at the Spanish Grand Prix about F1 trademarking his so-called trademark, Ricciardo said, “I don’t know what that means. Can I still do it or are they going to fine me every time?”

Image result for ricciardo monaco — Daniel Ricciardo (Australia, racing for Red Bull) does a “shoey” on the podium, while Lewis Hamilton (UK, racing for Mercedes) who came in third, looks on.

Hopefully by now, his team will have explained that the trademark protection only extends to the use of the word on certain products. F1 won’t be able to stop Daniel, or anyone else for that matter, from celebrating in this way.

Now registered in 25 countries, the shoey trademark is protected in the United States, Germany, Italy, France and the United Kingdom (you can see the UK’s Intellectual Property Office record here).

It’s important to note that trademarks are categorised according to the products or services to which they relate. When making an application for trademark protection, the applicant must choose from one of the classifications under the Nice Agreement (1957). Registering a trademark in one particular class cannot prevent someone from registering the same trademark in a different class.

F1’s shoey registration is for use on items in Class 21, which covers household goods such as glasses, bottles, mugs, sculptures and figurines. Accordingly, we might see shoe-shaped beer steins with shoey written on them for sale at the F1 shop. In addition – or perhaps alternatively – trademarking shoey could be a defensive move by F1, to keep someone else out of the market.

F1 previously attempted to register shoey in Class 25, which would have protected the use of shoey on clothing, hats, and some types of shoes. However, this was cancelled due to an earlier registration by the Harringtons. This is why the Mad Hueys are able to use shoey on their line of clothing, but wouldn’t be able to use it on glasses or mugs without stepping on F1’s toes (or tyres, I suppose).

Screenshot 2018-05-28 at 10.35.25 AM.png — Trademark battle: The Mad Hueys website explains: “Passed down from our ancestors, the Shoey ritual runs deep within The Hueys family. The Shoey is ours and its here to stay! This limited edition collection asserts our position as the true kings of the Shoey!”

data protection, employment law, Entertainment Industry

Lights, camera, data protection.

May 15, 2018July 11, 2018by kelsey farish1 Comment

Cannes: movie stars, auteurs, glamour, the French Riviera, and… data privacy?

Before the cameras start rolling, a film production company will need to agree service contracts for cast and crew. In honour of the Cannes Film Festival happening this week, let’s consider how data protection issues need to be addressed for an actor’s contract.

A standard Actor’s agreement will cover payment, travel and residence allowances, box office bonuses, and of course, intellectual property. But if the production company intends to process a significant amount of personal data about the Actor – such as dates and locations of filming, and details of travel arrangements and accommodation – the agreement should also contain a data protection clause. Remember that “processing” is widely defined, and covers any activity involving personal data, including storing, sharing, or reading.

Related image — The Cannes 2018 poster, featuring an image from Jean-Luc Godard’s 1965 film “Pierrot le Fou.”

“The Actor agrees and hereby give her consent to the holding and processing of personal data relating to the Actor in any form, whether obtained or held in writing, electronically or otherwise, by the Producer.”

The above clause may be acceptable under the UK Data Protection Act 1998, but is problematic under the incoming General Data Protection Regulation (GDPR).

Consent. As worded above, the Actor is providing the Producer with blanket consent to process her personal data. Under the GDPR, consent means “freely given, specific, informed and unambiguous indication of the data subject’s wishes by which he or she, by a statement or by a clear affirmative action, signifies agreement to the processing of personal data relating to him or her” (Art. 4(11)).

Given that this is a contract between a prospective employee and her boss, there is an imbalance of power between the parties. Accordingly, the Actor’s consent statement is unlikely to be considered “freely given” as is required under the GDPR. Furthermore, personal data processing should neither be disguised nor bundled with the provision of a contract (Art 7(4)).

Even in other contexts, it would be unwise to rely on the Actor’s consent for processing, as this can cause difficulties if consent is withdrawn at a later date. It is therefore advisable to rely on another lawful basis.

Another lawful basis? “Lawful basis” is just another way of saying “reason to do something.” Consent is just one of the six lawful bases permitted (Art. 6 GDPR). As the conditions for consent are very strict and unlikely to be met in this scenario, the Producers should consider their other options:

Contract: Processing is necessary for a contract with the person. Employment contracts are certainly applicable in this instance: for example, the Producers must process the Actor’s bank details to pay her.
Legal obligation: Processing is necessary for the Producers to comply with the law. This could include their tax obligations for HMRC, or complying with money laundering regulations.
Legitimate interests: The Producers must process the data for their legitimate interests. This could include business purposes such as sending out publicity emails with the Actor’s name and contact details, posting her image on social media, and so on. This is the most flexible basis to rely upon, but requires the Producers to demonstrate (inter alia) that their objectives are not unreasonable, and do not harm the Actor’s human rights (Recital 47).
The other lawful bases of protecting vital interests and carrying out a public task are not applicable in our scenario, but worth noting for completeness.

To be GDPR compliant, the clause could be amended to something like:

The Producers will collect and process the Actor‘s personal data in accordance with the Privacy Notice annexed to this Agreement. The Actor will sign and date the Privacy Notice and return it to the Executive Producer within 10 days of signing this Agreement.

The purpose of the Policy Notice is to provide the ActorActor with the information she is entitled to receive as a data subject (Articles 13 and 14). The Privacy Notice, likely to take the form of a letter, will explain how the Producer obtains, uses, and retains the Actor’s personal data. It will also set out the relevant lawful bases for each type of processing, and explain how the Actor can exercise her rights (Articles 15 through 22 inclusive).

Of course, the work doesn’t end once the agreement is signed. The Producers will need to make sure anyone who handles personal data within their organisation understands the new requirements under the GDPR. Having clear policies is only part of the story: those policies will need to be followed.

It’s a common misconception that the GDPR is just about IT security and marketing emails filling up your inbox. In reality, the legislation will provide enhanced rights for data subjects, and it’s important to remember that employees are data subjects too.

Media

Is posting rap lyrics on Instagram a #HateCrime?

April 22, 2018April 22, 2018by kelsey farishLeave a Comment

A teenager who posted rap lyrics on Instagram has been convicted of “sending a grossly offensive message over a communications network,” which was uplifted to a hate crime. She has received a community order (probation) and must pay costs of £500 ($700 USD) together with a £85 victim surcharge.

Chelsea Russell, a 19 year-old woman from Liverpool, England posted the lyrics from American rapper Snap Dogg’s song, “I’m Trippin” (NSFW) onto her Instagram account profile, or “bio.” The lyrics in question were ‘kill a snitch n—-a and rob a rich n—-a.’

Russell claimed she posted the lyrics as a “tribute” following the death of a 13-year-old in a road traffic accident. A screen shot of her profile was sent anonymously to Merseyside Police’s Hate Crime Unit, and Russell was brought in for questioning. She attempted to claim that her Instagram was not public as only Instagram members could access it, but the Crown proved in court that anyone could see Russell’s bio.

Russell’s defence lawyer, Carole Clark, claimed that the meaning of the ‘n’ word has changed over time, and has been popularised by hugely successful and mainstream artists including Jay-Z, Eminem and Kanye West. In particular, “Jay-Z used these words in front of thousands of people at the Glastonbury festival.” Clark also pointed out that the spelling of the word ended in an “-a,” rather than the arguably more pejorative “-er.” Nevertheless, District Judge Jack McGarva found Russell guilty and added, “there is no place in civil society for language like that.”

Under section 127 of the Communications Act 2003, it is an offence to send a message that is grossly offensive by means of a public electronic communications network. Section 145 of the Criminal Justice Act 2003 provides for an increased sentence for aggravation related to race.

Under the Crown Prosecution Service’s guidelines on prosecuting cases involving communications sent via social media, before heading to trial, there must be sufficient evidence that the communication in question is more than:

Offensive, shocking or disturbing; or
Satire, parody, iconoclastic or rude; or
The expression of unpopular or unfashionable opinion, banter or humour, even if distasteful to some or painful to those subjected to it.

“Freedom of expression is applicable not only to ideas that are favourably received or regarded as inoffensive or as a matter of indifference, but also to those that offend, shock or disturb the State, or any sector of the population.”

—European Court of Human Rights decision in Handyside v United Kingdom (1976)

It may be tempting to see this verdict as an overreach by Crown Prosecution Services, or “political correctness” gone mad. However, the lyrics Russell chose to share don’t simply drop the N-bomb. These lyrics may be understood as encouraging killing and robbing of a particular type of person — ie, black men.

The distinction between “offensive” and “grossly offensive” is an important one and not easily made. Context and circumstances are highly relevant. The legal test for “grossly offensive” was stated by the House of Lords in Director of Public Prosecutions v Collins [2006] UKHL 40 to be whether the message would cause gross offence to those to whom it relates – in that case ethnic minorities – who may, but need not be the recipients.

Accordingly, there is a high threshold at the evidential stage. The Crown must also consider an author’s rights of expression enshrined in the European Convention of Human Rights. Extreme racist speech is outside the protection of Article 10 because of its potential to undermine public order and the rights of the targeted minority (Kuhnen v Germany 56 RR 205).

Article 10 – Freedom of expression

1. Everyone has the right to freedom of expression. This right shall include freedom to hold opinions and to receive and impart information and ideas without interference by public authority and regardless of frontiers.

2. The exercise of these freedoms, since it carries with it duties and responsibilities, may be subject to such formalities, conditions, restrictions or penalties as are prescribed by law and are necessary in a democratic society, in the interests of national security, territorial integrity or public safety, for the prevention of disorder or crime, for the protection of health or morals, for the protection of the reputation or rights of others, for preventing the disclosure of information received in confidence, or for maintaining the authority and impartiality of the judiciary.

Russell’s case brings to mind the similar legal battle of Paul Chambers. Frustrated that his travel plans had been disrupted by bad weather, in 2010 he tweeted about blowing up an airport and was subsequently arrested. His conviction attracted public outroar and became a cause célèbre for freedom of speech activists before being overturned on appeal (Chambers v Director of Public Prosecutions [2012] EWHC 2157).

However, there are considerable differences of fact between Russell’s Instagram bio and Chambers’s tweet. Chambers’s tweet mentioned the weather delay — the all important context — and his “threat” lacked menace, because it did not create fear or apprehension in those who read it. Russell may have been quoting a song lyric, but isolated from any other information, her words could reasonably be (mis)interpreted as a genuine threat.

Unfortunately, only limited information is available on Russell’s case, so it is not possible to fully analyse how the Crown determined that it was indeed in the public interest to pursue prosecution. I would assume however that there were some extenuating circumstances. Perhaps Russell had a history of offensive behaviour, or maybe the prosecution proved that the lyrics were intended to cause malicious upset to a grieving family?

While the legal principles and their application may be uncertain in situations such as these, this case underscores the need for a cautious approach to social media. At times, even though I recognise intellectually that my Twitter and Instagram feeds are “public,” the fact that I share personal insights and photos makes the platform seem perhaps more intimate and secure than it really is. Social media is like any other “community,” for which certain rules of decorum do apply.

intellectual property

American Copyright law to get 21st century remix

April 18, 2018April 18, 2018by kelsey farish1 Comment

In my previous post, I wrote about the European Union’s sweeping new Directive on Copyright in the Digital Single Market, which is currently in draft stages. But copyright legislation is getting an update on the other side of the pond, too.

Since 1909 — before recordings of music even existed — Section 115 of the Copyright Act has regulated the licencing of musical works. Many songwriters and music publishers have trouble collecting royalties for the use of their songs played via digital streaming services. Amongst other things, the proposed Music Modernisation Act will modernise how compensation for mechanical licenses, which include digital streaming, is determined.

Last week, The United States House Judiciary Committee voted unanimously (32-0) to approve House Bill 4706, “to provide clarity and modernize the licensing system for musical works under section 115 and to ensure fairness in the establishment of certain rates and fees.” More commonly known as the Music Modernization Act (“MMA”), the bill now heads for consideration by the full House of Representatives. The MMA has received wide bipartisan support from Democrats and Republicans alike, and appears to be “on the fast track” for approval.

Importantly, the MMA will create an American agency or “mechanical licensing collective” that would house all music publishers under one roof. It is expected that the agency will have a database of ownership information, which will increase transparency and help identify music creators who are owed royalties.

Once established, the digital streaming services will pay the mechanical licensing collective, which in turn tracks and collects royalties on behalf of the artists. As explained by Committee Chairman Bob Goodlatte (a Republican from Virginia), the MMA “boosts payments for copyright owners and artists by shifting the reasonable costs of a new mechanical licensing collective onto digital music services, who themselves benefit from reduced litigation costs as a result of other provisions in the bill.”

Speaking to ABC news, John Simson noted that Americans “…have a 1909 statue trying to govern 2018 technology, and it doesn’t work.” Mr Simson is a professor at the American University and founding member of Sound Exchange, a non-profit organisation set up to collect and distribute performance royalties.

Intellectual Property Subcommittee Vice Chairman Doug Collins (a Republican from Georgia) noted that “the current music licensing landscape undervalues music creators and under-serves music consumers. Outdated copyright laws have produced unnecessary liabilities and inefficiencies within the music licensing system, and stakeholders across the music industry have called for reform. This bill moves the music industry towards a freer and a fairer market, enabling it to leverage the present and future benefits of the digital age.”

The first section of the bill concerns how modern digital music services operate, and will create a “blanket licensing system” to quickly license and pay for musical work copyrights. A key aim includes discouraging lawsuits in favour of simply ensuring that artists and copyright owners are paid in the first place without such litigation (see “No lawsuits over unpaid royalties after 1 January 2018?” below).
The second section, “Compensating Legacy Artists for their Songs, Service, and Important Contributions to Society (CLASSICS) Act” will focus on public performance rights for pre-1972 recordings. In particular, musicians with pre-1972 recordings will receive royalty payments when their tracks are played on the radio, online, or on television.
The third section, “Allocation for Music Producers (AMP) Act,” will ensure that record producers, sound engineers, and other creative professionals also receive compensation for their work.

No lawsuits over unpaid royalties after 1 January 2018?
Of course, the MMA is not without its detractors who are quick to point out several key issues. Firstly, the bill sets out a broad limitation of liability clause which essentially shuts down any potential lawsuits filed after January 1st 2018. That’s not a typo – Section 2(10)(A), the MMA really does apply a retrospective restriction on legal action.

Without the possibility of litigation, songwriters (and other copyright holders) who have unpaid royalties have one sole and exclusive remedy: they must go through the process set out in the legislation, governed by the dispute resolution committee of the mechanical licensing collective.

And while the mechanical licensing collective created by the MMA will have a board of directors, that board will be comprised of ten music publishers (record labels) together with only four songwriters! Furthermore, as currently written, the MMA provides no grievance process for excluded writers and those who receive unjust treatment. Is this likely to hit the right note with independent artists and smaller record labels?

Featured image – Francis Barraud, His Master’s Voice.

intellectual property

No more Safe Harbours for EU-ser Uploaded Content?

April 16, 2018July 25, 2018by kelsey farish1 Comment

The European Union is considering a sweeping new Directive on Copyright in the Digital Single Market, currently in draft stages. Industry groups are keen to ensure their opinions are taken into consideration, especially in instances where consumers share content which belongs to artists, authors, record labels, and television channels.

Digital platforms and internet service providers which host User Uploaded Content (UUC) argue that they are not responsible for any copyright infringing material uploaded by their users. However, trade bodies representing various industries believe the incoming Copyright in the Digital Single Market Directive doesn’t go far enough to reform this safe harbour principle.

The E-commerce Directive states that EU Member States shall ensure that internet service providers are not liable for copyright infringements carried out by its customers, on condition that: (a) the ISP does not have actual knowledge of illegal activity or information; and (b) the provider “acts expeditiously to remove or to disable access” to the illegal content, once they become aware of it (see Article 14).

This article provides ISPs with a “safe harbour” from copyright liability (also known as the “mere conduit” provision). Generally speaking, a safe harbour* is simply a protection available within a regulation that specifies that certain actions do not to violate a given rule, in particular circumstances.

1709 - EU Safe Harbour — In the United States, this principle operates under the “notice-and-take-down system”

About 18 months ago, the European Commission announced its plans to introduce a new Directive on Copyright in the Digital Single Market. As the explanatory memorandum sets out, “the evolution of digital technologies has changed the way works and other protected subjectmatter are created, produced, distributed and exploited. In the digital environment, cross-border uses have also intensified and new opportunities for consumers to access copyright-protected content have materialised. Even though the objectives and principles laid down by the EU copyright framework remain sound, there is a need to adapt it to these new realities.”

Amongst other things, the propsed Directive seeks to rebalance the position of the copyright owner against that of the internet service provider. Last week, various trade groups representing Europe’s creators and creative content producers published an open Letter to the European Council.

The authors suggest that, far from ensuring legal certainty, the Directive as currently drafted “could be detrimental to our sectors,” which include journalism, film and TV, music, and sport. While the authors support the objectives of the proposed legislation, the Letter critiques the latest draft of the directive, and expresses significant concerns about the safe harbour reforms.

In particular, the problems seem to arise with sections addressing the “use of protected content” by ISPs and other platforms which “store and give access to large amounts of works and other subject-matter uploaded by their users”. Put simply, the copyright industries want the safe harbour reformed, so that it no longer applies to user-upload sites (Complete Music Update).

This draws into question how online platforms hosting UUC should monitor user behaviour and filter their contributions. Currently, the platforms review material after it has been published and reported or “flagged” as copyright infringement. This may, as has been discussed with Facebook’s proposed use of artificial intelligence in copyright and hate speech monitoring, “inevitably require an automated system of monitoring that could not distinguish copyright infringement from legal uses such as parody” (The Guardian).

The authors of the Letter voice complaints in respect of the draft forms of Article 2, Article 13(1) and Article 13(4):

Article 2 defines which services fall under liability, mentioned further at Article 13. The latest draft could leave most UUC platforms outside the scope, despite the fact they continue to provide access to copyright protected works and other subject-matter. For example, music playing in the background of a makeup tutorial on YouTube.
The problem with Article 13(1) as currently written is that it risks narrowing the scope of the right and contravening CJEU jurisprudence. The Letter’s authors argue that “any new EU law should secure that this right is broad,” and “contain no additional criteria which could change via future CJEU rulings.”
As for Article 13(4) and its relevant recitals, the authors suggest the language is tantamount to a new safe harbour, which would both “seriously undermine fundamental principles of European copyright,” and pose “unwarranted liability privilege risks breaching the EU’s obligations under international copyright treaties.”

The Letter closes with the authors’ promise to “remain at the Council’s disposal to find solutions to these points.” For more on the proposed Directive, be sure to check out the IPKat’s numerous posts on the subject.

*This “Safe Harbour” in copyright law is not to be confused with the Safe Harbor Data Privacy exemptions between the US and the EU, which have since been declared invalid. On that subject, I might write on the new Privacy Sheild… at some point…