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Copyright and designs

Posted on 15 February 2018

Copyright and designs

Protection of TV formats as copyright works

Format right disputes rarely end up in court but the decision in Banner v Endemol has provided some useful clarification that TV formats may be protected by copyright as dramatic works, if particular criteria are met.

The decision highlights the level of detail required to demonstrate the features of the show which distinguish it from similar shows, and how those distinguishing features connect with each other in a coherent framework to enable the show to be reproduced in recognisable form.

In this case, the idea of playing games against the clock for one minute was not sufficiently set out in a specific and coherent framework, and the show in question contained features much like other game shows, and so copyright protection was not available.

Crackdown on ‘fully-loaded’ media players

As an advertising message, “Want to watch free films, series, sport without having to pay? Who doesn’t?!” was clearly too good to be true. In the UK, sales of media players incorporating pre-installed add-ons linking to websites giving access to unauthorised content have attracted the attention of criminal prosecution authorities in recent months. In Stichting Brein v Wullems, the CJEU decided that the sale of such ‘fully-loaded’ devices amounts to a communication to the public and therefore is likely to infringe copyright. Further, users who unlawfully stream copyright content will be unable to rely upon the temporary reproduction defence.

Rights owners in the creative industries welcomed the decision, which demonstrates the CJEU is prepared to adopt an extremely broad interpretation of the ‘communication to the public’ right – an interpretation that the European Commission had argued would alter and jeopardise the fair balance between the rights and interests of all parties involved.


The Pirate Bay and 'communication to the public'

The CJEU also adopted a broad and flexible interpretation of 'communication to the public' in Stichting Brein v Ziggo, a case concerning the infamous file-sharing website The Pirate Bay. Despite the copyright works in question not being hosted by The Pirate Bay itself (they were shared by its users), the CJEU decided that, by making available and managing an online sharing platform, it was intervening with full knowledge of the consequences of its conduct, to provide access to copyright protected works.

It was evident that the operators of The Pirate Bay took an active role in operating the site, beyond the mere provision of facilities to enable or make a communication, by indexing and categorising protected content, providing a search engine facility and by actively managing the content available. Other key findings were that the operators could not be unaware that their site was providing access to protected content, and that the site plainly existed for the purpose of obtaining a profit.

Court grants first 'live' blocking order against streaming servers

The Football Association Premier League (FAPL) won a landmark ruling in its ongoing battle to tackle illegal streaming of Premier League fixtures. The Court’s order obliges the six largest retail ISPs to block access to servers which allow delivery of infringing Premier League content to UK consumers. Previously, blocking orders had only been obtained against websites that allow users to watch infringing content, the most prominent in the sports arena being FirstRow Sports in 2013. 

In practice, the success of such orders can be limited, as sites that stream content have tended to shut down, and then reappear under a different guise. Further, consumers have increasingly switched to accessing illegally streamed content via set top devices like Amazon Fire sticks or Kodi boxes as well as mobile device apps, which would not be caught by a traditional website blocking order.

The Court’s order seeks to root out the problem before streams can spread to websites, add-ons and apps, thereby breaking the chain leading to infringement – as one streaming server could feed multiple client browsers.

In December 2017, the court granted a further order against streaming servers delivering infringing live streams of UEFA Champions and Europa League matches.


Planning permission – check for copyright in architects' drawings

A High Court case (Signature Realty v Fortis Developments) was a timely reminder for property developers to ensure they have the right to use architects' drawings relating to their developments. This is especially important if they did not commission drawings which form the basis of a planning permission they intend to rely upon.  The case may also cause problems for residential purchasers buying a house with the benefit of, say, planning permission for an extension. 

In 2013, Signature Realty retained an architect to prepare drawings to obtain planning permission for a development site in Sheffield. The permission stipulated that the development should "be carried out in complete accordance with" the architect's drawings. The site was subsequently acquired by Fortis, who proceeded to develop the site in accordance with the permission. When Signature discovered what had happened, it sued Fortis for breach of copyright as the drawings had been used without permission.

The court decided that Fortis had infringed Signature's copyright in the drawings in a number of ways including using them for marketing, tendering and estimating purposes, and constructing the development in accordance with the drawings. Whilst the court declined to grant an injunction, Signature was as a result entitled to claim damages or an account of profits.


Show’s over for cable-retransmission?

The decision of the CJEU in ITV v TVCatchup finally brought to an end a long-running complex dispute relating to the TVCatchup service, which has seen its fair share of twists and turns and cliff hangers. The decision went beyond a finding that TVCatchup cannot stream public service broadcasting channels like ITV1 via the internet without paying copyright fees: the CJEU concluded that the UK’s ‘cable re-transmission’ defence more generally was incompatible with EU copyright law. 

However, the section 73 defence was already on borrowed time, as it has now been repealed by the Digital Economy Act. Of broader interest is the potential impact of the repeal of the cable retransmission defence on the complex commercial arrangements in the broadcasting industry.

Multiple drinks can Community design registration held invalid

IP protection for food and drinks packaging is a significant asset and prevents others from copying valuable designs. Coca-Cola has a registered EU trade mark for its distinctive bottle shape, and Red Bull has a Community Registered design for its can design. However, registering the shape of packaging as a trade mark is not straightforward:  Voss’ EU trade mark for the shape of its water bottle was cancelled on the grounds that it was not distinctive.

Whilst obtaining design protection for packaging is less complex, a General Court decision this year  affirmed the importance of getting the representation of your design registration right. The Court upheld a decision that a Community registered design featuring three sizes of drinks can, registered by Ball Beverage Packaging, was invalid on the basis that it did not have individual character over earlier similar drinks can designs on the market. Applicants should consider carefully how to depict their designs when filing their application and may need to file multiple registrations, and different views.


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