BLACA 9th January 2014
Latest UK and EU Copyright Developments
Maria Frabboni
Uma Suthersanen
Hugh Jones
Florian Koempel
Overview

Background

UK: Changes to exceptions – Modernising Copyright

UK: Orphan works (Orphan Works Directive and Enterprise and
Regulatory Reform Act 2013)

UK: Other relevant initiatives – repeal of Section 52 CDPA

EU: Review of EU copyright rules
Overview

Background

UK: Changes to exceptions – Modernising Copyright

UK: Orphan works (Orphan Works Directive and Enterprise and
Regulatory Reform Act 2013)

UK: Other relevant initiatives – repeal of Section 52 CDPA

EU: Review of EU copyright rules
Background - Changes to exceptions

May 2011: Review and recommendations of intellectual property
by Professor Hargreaves

December 2012: UK Government policy document: Modernising
Copyright

Summer 2013: draft wording of exceptions for Technical Review

Feb 2014?: laying of draft amended wording plus new IAs for
adoption by secondary legislation (affirmative procedure); all
exceptions or only selected ones?

April 2014?: Commencement
New Exception for Parody
Current proposal (as of 11th December):

New Section 30B CDPA: exception for any fair dealing with
the work for the purposes of caricature, parody or pastiche

Art 5 (3k) Information Society Directive
Practical concerns:



Definition of fair dealing and parody, caricature and pastiche
Relation with moral rights
Policy?
New Exception for Private copying
Current proposal:

New Section 28B CDPA: exception for uses of a copy of a
copyright work by an individual lawfully acquired by him to
make a further copy of that work with the additional
conditions that:
o
copy for that individual’s private use for ends that are
o
o

neither directly nor indirectly commercial;
original copy held by the individual on a permanent
basis; and
[not made circumventing effective technological
measures]
Art 5 (2b) Information Society Directive
Practical concerns:


Scope
Lack of fair remuneration
Exceptions for Research, Libraries and Archives
Current proposal:




Amend Section 29 to cover all types of copyright work for
the purposes of non-commercial research and private study
(fair dealing).
Replace Sections 37 to 40 with a new section 37 covering
the copying from published works by librarians for noncommercial research and private study;
Replace Sections 41 to 43 with a new Section 41 covering
the supply of copies to other libraries:
New Section 43A cover the making available of works
through dedicated terminals
This is based on Art 5 (2c) and (3n) Information Society Directive
Exceptions for Research, Libraries and Archives II
Practical concerns

Distinguishing non-commercial research and private study
from non-commercial use for the educational purposes of an
educational establishment.

Distinguishing uses under s 29 as amended from licensed
uses linked to application of s 35 and s 36 provisions for
educational use.

How do you research a film or a sound recording without
watching the film or listening to the sound recording in the
same way as viewers or listeners who are not undertaking
research or private study?
Amendments to Exceptions for Education Section 32
New “Fair Dealing” provision in Section 32 “for the purpose of
instruction”.

How does instruction relate to “education”.

Art 5 (3a) Information Society Directive permits an exception
only to the reproduction and communication to the public right
concerning “use for the sole purpose of illustration for
teaching”.

Change wording to apply permitted act for the sole purpose of
illustration for teaching during the course of instruction.

Make it clear that the provisions do not apply to use by
educational establishments when uses are covered by Sections
35 or 36 or licensing schemes operating under these provisions.
Amendments to Exceptions for Education Section 35
Section 35 – Recording and subsequent use of recordings of
broadcasts and material included in them for non commercial
educational use by Educational Establishments

Changes will extend the scope of the permitted acts under the
Section 35 whilst retaining a licensing option for rights owners.

The current arrangements for certifying licensing schemes
operating under the provisions will be removed but licensing will
apply “if licences are available authorising the copying in
question and the person making the copies knew or ought to
have been aware of the fact.

ERA licensing – use not just “copying” – off premises access for
distance learners.
Amendments to Exceptions for Education Section 36
Small Extract Copying by Institutions






Educational establishments may make copies.
And provide to staff and students.
Can be either physical copies or, now, electronic copies.
Further copies can also be made (e.g. storage rights?).
Amount copied increasing from 1% per quarter to 5% per
annum.
Crucially licence override retained.
New Exception for Quotation
Current proposal:

Amend current fair dealing exception for criticism and
review, reframing it as a quotation exception for purposes
such as, but not limited to, criticism and review.



Quotation is in accordance with fair practice; and
Extent of the quotation is required by the specific
purpose for which it is required
Art 5 (3d) Information Society Directive.
Practical concerns:


Definition of fair dealing
Detailed application, e.g. what constitutes a quote of a
photograph or an illustration.
Amendments to exceptions for people with disabilities
Current proposal:
 Extend existing exceptions for visually impaired people to
include all types of disability that prevent someone from
accessing a copyright work


Art.5 (3b) Information Society Directive
WIPO Marrakesh Treaty 2013
Comments:




“people with a disability”; and UK Equality Act 2010.
Lawful possession and “directly related” disabilities
Copies not commercially available
CLA licences vs contract override
Exception for Data Analysis for Non-commercial Research
Current proposal
 New exception on data analysis for non-commercial research
for a person who already has a right to access a copyright work
(whether under a licence or otherwise) to copy the work as part
of a technological process.

Art 5 (3a) Information Society Directive.
Comments:





Art. 5 (3a) – “scientific” research only?
Section 29A conditions:
non-commercial and “sufficient acknowledgment”
“Lawful access” vs subscribed content
Access conditions vs contract override?
Publishers license already? PLS and CCC schemes
Unenforceability of contractual override

Can UK make contract terms “unenforceable” under EU law?

Information Society Directive Recital 45 and Art 9;
exceptions “where not subject to purchase or licensing
terms”; Human Rights Convention/Act – Art.10

Effect on current licences. Enforceability of TPMs under Art.6
and Section 296A; managing access for data mining?

Too many/varied licences? Model and Consortium licences.

Risk of uncertainty and foreign contracts. “Unreasonable”
test, or Irish “irrelevant” alternative?
Overview

Background

UK: Changes to exceptions – Modernising Copyright

UK: Orphan works (Orphan Works Directive and Enterprise and
Regulatory Reform Act 2013)

UK: Other relevant initiatives – repeal of Section 52 CDPA

EU: Review of EU copyright rules
The OW Directive (2012/28/EU) – General principles
General principles:
•
What types of works does directive apply to?
•
What is definition of orphan work?
•
What are conditions to be fulfilled?
•
Who are the beneficiaries of this directive?
•
What are the limitations – ie what is the permitted
use of orphan works?
•
What are the boundaries of these limitations?
The OW Directive – Types of works (Art. 1 (2) – (4))
-
Print medium : “books, journals, newspapers,
magazines or other writings”
-
Films and sound recordings: “cinematographic or
audiovisual works and phonograms”, including those
produced by public-service broadcasting organisations up
to 31 December 2002 and contained in their archives
-
Publication nexus : “must be first published/broadcast in
a Member State”
-
Copyright status: works “which are protected by
copyright or related rights”
The OW Directive – Definition of an orphan work (Art. 2)
 A work or a phonogram = orphan work if
• none of the rightholders in that work or
phonogram is identified or,
• even if one or more of them is identified, none
is located despite a diligent search for the
rightholders having been carried out and
recorded
The OW Directive – Conditions to be fulfilled by user
(Art. 3)

Organisations “shall ensure that a diligent search is carried out
in good faith” in respect of each work or other protected subjectmatter by consulting the appropriate sources for the category of
works …”
 What is diligent search?
See Annex which gives list of sources to be checked
 Where?
 In the MS of first publication / broadcast
 MS of producer of cinematographic/audio-visual work
 Sometimes, in MS where the organisation that made the work or
phonogram publicly accessible with the consent of the rightholder
(ie potentially non-EU works held in EU collections/archives)
 The role of OHIM
 Mutual recognition
The OW Directive – Beneficiaries (Art. 1(1))
Limitations and exceptions within this directive is only
available

for certain uses

made by “publicly accessible libraries, educational
establishments and museums, as well as by archives, film
or audio heritage institutions and public-service
broadcasting organisations”

established in the Member States

“in order to achieve aims related to their public-interest
missions”
The OW Directive – Permitted uses (Art. 6)

MS to provide an exception or limitation to the right of
reproduction and the right of making available to the
public (Arts. 2/3 of Infosoc Directive)

Beneficiaries can do the following:
• Make it available to public
• Reproduce it for the purposes of digitisation, making
available, indexing, cataloguing, preservation or
restoration.
The OW Directive – Boundaries to the limitation (Art. 6)

The beneficiary organisations must use the work “in order
to achieve aims related to their public-interest missions,
in particular the preservation of, the restoration of, and the
provision of cultural and educational access to, works and
phonograms contained in their collection”

They can make money of such uses – but only for “the
exclusive purpose of covering their costs of digitising
orphan works and making them available to the public.”
The OW Directive – Compensation (Art. 6(5))

However, if the rightsholder turns up, and the orphan work
status to the work ends, there must be “fair
compensation” for the use that has been made

MS are free to determine the level of the compensation
and how payment is organised.
The Enterprise and Regulatory Reform (ERR) Act 2013
The new s. 116A and 116B of the CDPA 1988
 Orphan works licensing scheme
 Wider scope in terms of types of works, permitted uses and
beneficiaries
 Commercial and non-commercial exploitation
 Measure limited to national boundaries
 (Voluntary) Extended Collective Licensing
 collecting society which already represent a significant number
of rights holders in relation to the works and uses covered by
the proposed scheme
 Opt-out rationale
 Possible overlaps between ECL and orphan works
Why this is a current issue?
On a practical note, are the proposed schemes helpful?

See a current mass digitisation project: “Spare Rib: the new
women's magazine 1972-1993 - An introduction to the project and
our request for copyright permission”
(http://bl.sites.hubspot.com/spare-rib-introduction)
BBC 4 coverage http://www.bbc.co.uk/programmes/b03nsrj0
Overview

Background

UK: Changes to exceptions – Modernising Copyright

UK: Orphan works (Orphan Works Directive and Enterprise and
Regulatory Reform Act 2013)

UK: Other relevant initiatives – repeal of Section 52 CDPA etc

EU: Review of EU copyright rules
Copyright environment for works of applied
art/artistic works/designs ex ante Design
Directive
Cumulative protection - France (l’unite de
l’art)
Partial cumulative protection - Germany
(higher individuality test) / UK (difficult
categories/scope of protection severely
limited ie ss. 51 and 52)
Non-cumulative protection - Italy
(separability/scindibilita criterion)
• Effect of s. 52, CDPA:
• “artistic works” - exploited by an industrial process and
marketed in the UK or elsewhere
• scope of protection curtailed
• copying for purposes of making articles allowed - 25 years
from marketing
• Copyright (Industrial Process and Excluded Articles) (No. 2)
Order 1989 - industrial process = if an article is one of more
than fifty articles
• Rationale:
• Articles
in commerce should claim design protection
• Copyright denied to artistic works which are commercially
exploited
•Why?
• S. 74, Enterprise and Regulatory Reform Act 2013
• S.52, CDPA repealed
• Impact Assessment: HMG admits that no consultation; but a company which
makes “furniture design classics” claimed that it suffered EUR 250 mill per year
due to copies, with significant loss in UK
• Increased profits to designers will be invested in innovation and contribute to
economic growth
• Also to bring in line with EU law
• EU law
•EU Design Directive and Regulation
•CJEU decisions
Directive 98/71/EC of the European Parliament and of the
Council of 13 October 1998 on the legal protection of designs
Article 17
A design protected by a design right registered in or in respect of a Member
State in accordance with this Directive shall also be eligible for protection
under the law of copyright of that State as from the date on which the design
was created or fixed in any form. The extent to which, and the conditions
under which, such a protection is conferred, including the level of originality
required, shall be determined by each Member State.
Recital (8)
Whereas, in the absence of harmonisation of copyright law, it is important to
establish the principle of cumulation of protection under specific registered
design protection law and under copyright law, whilst leaving Member States
free to establish the extent of copyright protection and the conditions under
which such protection is conferred
Post-Directive CJEU jurisprudence
Flos SpA v Semeraro Casa e Famiglia SpA, Case C-168/09, 27 January 2011.
Can national law (Italian) preclude copyright protection or render it unenforceable for a certain
period for designs which entered the public domain before Directive enters into force? In relation
to a transitional provision.
Held: Article 17 of Directive 98/71/EC prohibits laws which exclude designs from copyright
protection, merely because they are protected by a design right, and which entered the public
domain before the Directive came into force - “although they meet all the requirements to be
eligible for copyright protection.”
Held: Article 17 also precludes laws which exclude designs from copyright protection for a
substantial period of 10 years of completely, although the designs “meet all the requirements to be
eligible for copyright protection”, just because the designs entered the public domain before the
date of entry of Directive.
Followed in Cassina SpA v Alivar Srl and Galliani Host Arredamenti Srl, Case C-198/10, 9th
September 2011
•
Flos Arco Floor Lamp by Achille Castiglioni
Designer: Achille Castiglioni
Manufacturer: Flos
Price: $2,950.00
Reproduction Arco Floor Lamp Castiglioni - Arch Lamp
Item# 10001
Regular Price : $1,650.00
Our Price : $499.00
Le Corbusier
decision
(Cassina v High Tech
S.r.l.),
Court of Milan
July 7, 2011
Court of Milan granted copyright
protection to Le Corbusier furniture
items, holding that design works are
eligible for copyright protection even
if they have never been registered
under design law as long as the
conditions for copyright protection
are met, i.e., if said works have
inherent creative and artistic value.
Flos / Arco decision
Court of Milan,
September 20,
2012
Court of Milan looked at the following factors in order to ascertain whether an industrial
design work bears “artistic value” and is therefore eligible to copyright protection:
a) any assessment in this respect must be carried out in an objective way by looking at the
widespread appreciation of the design work in the cultural and institutional sector (e.g.
critics, cultural institutions, museums, etc.), irrespective of the fact that it is of daily use;
b) Flos provided sufficient proof of the consensus reached among cultural and institutional
fields on the “Arco” lamp’s ability to represent the trends of the post-war Italian industrial
design.
c) Court gave relevance to the fact that the “Arco” lamp has been included in the collection
of the New York Museum of Arts and Design for over ten years.
Panton Chair decision
(Vitra Patente v High Tech
Srl)
Court of Milan,
September 13, 2012
Court of Milan granted copyright protection to
the “Panton Chair” by Verner Panton, produced
by Vitra Patente A.G., against the slavish
imitation of the same by High Tech S.r.l. The
exhibition of the chair in exhibitions and
museums was evidence of its artistic value.
BGH, 24 November 2013, I ZR 143/12
Birthday Train; unreported as yet
• In November 2013, the German Supreme Court, in a landmark decision
concerning children’s toys, overturned its own jurisprudence to hold that
the level of creativity required for works of applied art will be no higher
than than required for works of fine art.
• This volte-face was primarily due, held the court, to the change in EU
design legislation.
• This is unconvincing as the changes to EU and national laws were
implemented in 2001 and 2004 respectively.
• Instead, it is submitted that the real reason for the change in German
jurisprudence, which follows the changes made within UK copyright law in
2013 as well, was the EU’s line of reasoning in the Arco decision. The full
impact of the German Supreme Court’s decision has yet to take effect, but
it is to be presumed that Germany will reverse its policy of discrimination
and adopt the full cumulative protection approach.
German Supreme Court press release available here: http://juris.bundesgerichtshof.de/cgibin/rechtsprechung/document.py?Gericht=bgh&Art=en&Datum=Aktuell&Sort=12288&nr=65848&linked=pm&Blank
Impact on UK/EU? - Economic
issues
Replica manufacturers - competition? pricing? Derivatives not
possible?
Impact assessment found that replicas are sold at between 8 and
35% of the cost charged by original producer
Eg Eames chair £5065; v replica £699
The effect of repeal is that many consumers will not be able to obtain
a product with the appearance they want.
Is this a reason to curtail protection? Or is this a reason why the
status quo should not be changed (although the original decision to
limit protection was wrong?)
Impact on UK/Italy - Legal issues
Aesthetic criteria re-introduced?
Note wording of Article 17 - “The extent to which, and the
conditions under which, such a protection is conferred,
including the level of originality required, shall be determined
by each Member State”
Is l’unite de l’art only way forward?
Cross refer to OHIM jurisprudence on “functionality”
Overview

Background

UK: Changes to exceptions – Modernising Copyright

UK: Orphan works (Orphan Works Directive and Enterprise and
Regulatory Reform Act 2013)

UK: Other relevant initiatives – repeal of Section 52 CDPA etc

EU: Review of EU copyright rules
EU Background

History
•
•
•
•
Communication on content in Digital Single Market, 2012
Green Paper on the online distribution of AV works 2011
Green Paper on copyright in the knowledge economy 2010
Consultation on Content Online 2009

Future
•
•
•
•

Commission initiative April/ May 2014
Questionnaire Dec 2013 (deadline 5th Feb 2014)
L4E Nov 2013
Studies on implementation of Info Soc Directive
CJEU cases interpreting Info Soc Directive
Licenses for Europe
 Pledges on industry initiatives, stakeholder
commitments and roadmaps for further actions,
including:
•
•
•
•
•
•
•
Cross-border portability of subscription services
Improved availability of e-books across borders and across
devices
Easier licensing for music
Enabling the identification of your work and rights online
More heritage films online
Freeing up TV footage archives through digitisation
Improving identification and discoverability of audio-visual
content online
Consultation on the review of the EU copyright rules
80 Questions in the following areas
• Rights and the functioning of the Single Market
• Limitations and exceptions in the Single Market
• Private copying and reprography
• Fair remuneration of authors and performers
• Respect for rights – enforcement
• A single EU Copyright Title
• Other issues
UMA, Maria, Hugh do you want to discuss specific issues?
Perhaps an open question to the panel and the audience – what are
the areas of copyright which could be amended and why?
BLACA 9th January 2014
Latest UK and EU Copyright Developments
Thanks