WHITHER INTELLECTUAL PROPERTY LAW IN
JERSEY?
Nick
Marshall
Until very recently, intellectual
property has played little part in the business life of Jersey. This article gives
an overview of the main types of intellectual property and looks at how the law
has developed in Jersey, and in comparison with certain other offshore
jurisdictions. It also seeks to explore trends in this area of law, which is
inextricably linked to developments in the use of technology, and how Jersey
might look to develop its laws to meet these developments and to differentiate
itself as a jurisdiction.
1. Introduction
1 The purpose of this article is to
consider the question: “Whither intellectual property law in Jersey?”
Put another way, with there having been some developments in recent years in
intellectual property law in Jersey, the question might be “How is
intellectual property law to develop further in Jersey?”
2 Jersey has for
many years had businesses which manage international intellectual property
portfolios or host intellectual property structures but Jersey’s
attraction has been held back by its own lack of substantive intellectual
property laws. Laws in Jersey can have one or more of several purposes: to
attract business in some way to the Island,[1]
to fulfil international responsibilities,[2]
which may be voluntary or mandatory, in respect of its indigenous activities,
or for the greater good of Jersey’s citizens.[3]
Arguably, it is in the area of intellectual property that all these purposes
can be satisfied.
3 So, what is meant by intellectual
property?
“Intellectual
property is the system of legal rights which governs the world of products of
the mind: ideas and expressions of human creativity . . . [and it] is
about the control and use of [such] ideas and products of human creativity in
all its manifestations, ranging from technical inventions in every field of
science and technology through to the ingenuity of traders in improving their
position in any market and the works of artists and performers in all fields of
the arts.”[4]
4 There is a variety of intellectual
property rights, most of which are designed to confer monopoly rights to
varying extents and for differing periods of time. They also require different
types of formality. A common feature, however, is that intellectual property
rights are recognised worldwide and are the subject of a significant degree of
international harmonisation.
5 It is not my intention to explore in great
detail each different kind of intellectual property right but shall consider
the following principal four categories of right as they apply in and to
Jersey: (i) copyright and design rights, (ii) registered trade marks, (iii) registered
designs, and (iv) patents.
6 These are the rights which figure most
prominently within Jersey’s legislative regime. Unregistered trade marks
(and the law of passing off), confidential information, plant varieties and
Internet domain names are other examples of intellectual property.
7 Of the four categories, copyright is
probably the most widely known form of intellectual property right. It is worth
noting that in the 2010 draft of the Intellectual Property (Unregistered
Rights) (Jersey) Law 2012 (“IPURL”), which is now the source of law
in Jersey dealing with copyright, it was
commented—
“If Jersey wishes to be an attractive place for
the creative industries to locate and do business, then the current law must be
updated. The fact that much of the sector increasingly operates in the digital
and online world means that the location of these industries can be very fluid.
In the knowledge economy sustained by the Internet, creative content can be
created in one territory, distributed from another and consumed anywhere, so creative
businesses, and those licensed to disseminate creative content, increasingly
operate in a global marketplace. A particular business may therefore relocate
to a different jurisdiction if the legislative framework there is supportive.
The intellectual property rights covered by this draft Law are, of course, not
the only laws relevant to where a company in the creative industries’
sector might locate, but rights fit for the digital age must be a cornerstone
of what is needed to safeguard Jersey’s competitive position.”
8 The draft of the Intellectual Property
(Registered Rights) (Miscellaneous Provisions) (Jersey) Law 2015 (“Registered
Rights Law”) stated as follows—
“Registered
IP rights can be crucial to other areas that are innovative too. Many goods and
services are still made available to the public in the physical world and trade
marks can be just as important to these as they are to goods and services sold
online. A registered design right can be sought for the shape or visual appeal
of any product or part of a product. This includes both 3-dimensional and
2-dimensional products, whether they are industrially produced or handcraft
items . . . Patents can apply to both products and processes that
involve an inventive step. Businesses offering services to those who wish to
acquire or already own IP rights are also affected by the nature of the law
about registered IP rights. Ensuring the laws in Jersey about registered IP
rights are modern and compliant with international conventions is therefore the
priority now.”
9 These excerpts articulate the States’
public intention of seeking to improve the legislative framework for
intellectual property rights in Jersey which some might suggest has been long
overdue. In considering where Jersey now sits in terms of the four categories,
the following will be considered:
(a)
the current position in Jersey in respect of the four categories;
(b)
the approach and legislative framework of Jersey in comparison with Guernsey
and the Cayman Islands; and
(c)
current issues and what next for Jersey in relation to the evolution of its
intellectual property laws.
2.
Jersey—where are we now?
10 Until recently, intellectual property
law has played little part in the Island’s legal history. This can most
likely be attributed to the nature of Jersey’s economy which, until the
latter part of the twentieth century, centred on farming and agriculture, and
tourism. Since then, we have seen the rapid growth of Jersey as an offshore
finance centre with lawyers, accountants and fiduciary and corporate services
businesses now providing the greatest focus of Jersey’s economy. It is
perhaps not surprising then, that there has been a dearth of cases before the
Royal Court concerning intellectual property.
11 It was not until 1995 that there was a
reported decision on an aspect of intellectual property law in Jersey. This was
the case of Oliver v ABN-AMRO Bank NV[5]
and concerned copyright. It concerned, in particular, the potential
infringement of copyright in a computer program. The judgment relates to two preliminary issues, the relevant one for
these purposes being whether Jersey had laws which conferred protection by way
of copyright in a computer program. In Jersey at that time, the UK Copyright
Act 1911 had been applied by virtue of the Loi (1913) au sujet des droits d’auteur.
In the UK, the 1911 Act had been repealed and replaced by the Copyright Act
1956. That Act was not extended to Jersey but subordinate legislation provided
that the 1911 Act could continue to be part of the law of any country to which
the 1911 Act had been extended. Given the time, the 1911 Act did not
contemplate computer programs. Nevertheless, Hamon, Deputy Bailiff held that
the 1911 Act, as extended to Jersey, afforded statutory protection to the author
of a computer program against its unauthorised production, reproduction or
recording. His reasoning for this was that a computer program was an “original
literary work” within the meaning of the 1911 Act.
12 Copyright
was next considered in 2002 in the case of Comprop
Ltd v Moran.[6] In
1967, a Mr Perry was commissioned to make a map of Jersey for a one-off fee and
it was published in 1969. The commissioner of the work subsequently sold the
copyright in the map to a third party who in turn sold it to the owner of Perry’s
Ltd in 1992. Mr Moran was recruited to update Mr Perry’s map. Prior to
this he had made his own map of the Island. Under the terms of his contract of
employment, Mr Moran sold and assigned the copyright in maps which he had
already produced to Perry’s Ltd. It later published Perry’s Island Map, an updated version of Mr Perry’s
map. Mr Moran left Perry’s Ltd in June 1996 and began to market maps of
his own. On inspecting these maps, the second plaintiff concluded that either
Mr Perry’s map or Perry’s
Island Map had been copied as, although the maps differed in appearance, a
substantial number of mistakes which appeared in its maps had been duplicated
by the defendant. Comprop Ltd, which bought Perry’s Ltd in January 1997,
brought the action against the defendant alleging copyright infringement.
13 The
Royal Court held that when considering whether copyright had been infringed, as
defined by the 1911 Act, the correct approach was to identify those elements
which had been copied from the original work, and to consider whether those
elements formed a substantial part of the new work on a qualitative, not a
quantitative basis. On the evidence, the court found that Mr Moran infringed
the copyright in Mr Perry’s map by copying a substantial part of it. However,
copyright may only be transferred by a formal assignment; Comprop Ltd held only
an equitable title to the copyright in Mr Perry’s map by virtue of the
previous arrangements concerning the acquisition of the copyright and Perry’s
Ltd. It was not, therefore, entitled to final judgment until it obtained the
legal title.
14 The most
recent occasion on which copyright has been considered by the Royal Court is in
the case of Nautech Services Ltd v CSS
Ltd[7] in
2014. Nautech is a maritime recruitment business, providing specialist staff to
the offshore oil and gas industries. In April 2013, two employees left Nautech
and joined CSS, which they had set up with the aid of others, in order to
compete with Nautech. A third employee, a Mr Inns, also started to work for CSS
in May 2013 following his dismissal from Nautech. Prior to leaving Nautech the
three employees had copied large quantities of data from Outlook inboxes on
Nautech’s workstations. Further, Mr Inns copied over 600 work contacts
from his Blackberry mobile phone to a personal Gmail account and then onto a
new phone. He also copied the Gmail copy for the benefit of CSS. In April 2013,
Nautech obtained an interim injunction against the three former employees and
subsequently issued proceedings in May 2014 for contempt of the order, as
Nautech had evidence that the injunction was being breached. As well as
concluding that Nautech’s database of contacts was confidential
information, the court also considered whether the use by Mr Inns of this
confidential information infringed Nautech’s copyright.
15 Jersey
enacted the IPURL as a replacement for the UK Copyright Act 1911 after the Comprop case. The IPURL is based
substantially on the UK’s Copyright, Designs and Patents Act 1988, which
was a successor to its Copyright Act 1956. Like the 1988 Act, the IPURL
provides that copyright subsists in an original literary work including a
table, a compilation and a database. A database is a collection of independent
works, data or other material which is arranged in a systematic or methodical
way and is individually accessible by electronic or other means. To satisfy the
test of originality in a database, one must show that the selection and
arrangement of the contents of the database is the author’s own intellectual
creation. The Royal Court found that the selection and filing of emails by Mr
Inns from existing and potential contractors of Nautech, and indeed their
deletion if appropriate, constituted the requisite degree of intellectual
creativity to create a literary work which was protected by copyright. The
IPURL provides that work done by an employee in the course of his employment
vests in his employer. Accordingly, the copying and use of client contact
information from this database was an infringement of Nautech’s
copyright.
16 In respect of the registered types of intellectual property, Jersey does not
operate its own territorial primary register. In other words, it is not
possible to register this type of right in Jersey without it having already
been registered in the UK. In the UK, registered designs are primarily dealt
with by the Registered Designs Act 1949; patents by the Patents Act 1977 and
trade marks by the Trade Marks Act 1994. The Registered Designs (Jersey) Law
1957 provides that the owner of a UK registration may apply to the Judicial
Greffier for the registered design to be entered in the register of designs in
Jersey so enabling the protection afforded by the UK registration to be
extended to Jersey. There is no examination of the UK right. The Patents
(Jersey) Law 1957 and the Trade Marks (Jersey) Law 2000 provide a similar
process for the mirror registration of a UK patent and a UK registered trade
mark respectively. The three registers also provide for the recording of
assignments and other transmissions of such rights. As regards these registered
rights, there are no published cases of the Royal Court.
17 The
European Union Intellectual Property Office (prior to 23 March 2016 known as
the Office for Harmonisation in the
Internal Market (Trade Marks and Designs)) was established by the
European Union pursuant to Council Regulation (EC) No 40/94 of 20 December 1993
on the Community trade mark (“Trade Mark Regulation”) and deals with the registration and
maintenance of European Union Trade Marks (known as Community Trade Marks prior
to 23 March 2016) and registered Community Designs. Article 12 of the 2000 Law
extends various provisions of the Trade Mark Regulation to Jersey so that the
owner of a Community Trade Mark (“CTM”)[8]
can enforce it directly in Jersey. Like the Trade Mark Regulation, Council Regulation (EC) No 6/2002 of 12
December 2001 on Community designs introduced a unified system of
registered industrial design right, called the Community Design, throughout the
EU, however this regulation has not been extended to Jersey in a similar
manner.
18 Article
13 of the 2000 Law provides that—
“the proprietor or licensee of a protected
international trade mark shall have the same rights and remedies under this Law
regarding use of that trade mark, in relation to the goods and services in
respect of which it confers protection, as if the proprietor or licensee was a
registered proprietor or registered licensee, as the case may be, but, save as
aforesaid, no person shall be entitled to any rights or remedies in respect of
any protected international trade mark.”
For the purposes of
this article a “protected international trade mark” is essentially
a mark registered under what is termed the Madrid Protocol and accepted in the
UK. The Protocol Relating to the Madrid Agreement Concerning the International
Registration of Marks established an international primary registration system
for trade marks. Registration through the Madrid System does not create an “international”
registration, as in the case of a CTM. An application under the Madrid Protocol
must be linked to a “base” application or registration for the
trade mark already on file in the applicant’s home trade mark office
which, for the purposes of the 2000 Law, is the UK.
19 It will
be seen that intellectual property rights are, or have the potential to be,
international in nature. As was highlighted in the draft IPURL—
“There are a number of international conventions
and treaties in the intellectual property area, as well as obligations in the
agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)
[TRIPS Agreement], which is part of the agreement on the World Trade
Organisation (WTO). If Jersey were to desire membership of the WTO, then
complying with TRIPS would be essential, and this would not be possible without
modernisation of copyright law and putting in place some of the other provisions
in this draft Law.”
20 This
published, but perhaps not widely articulated, aspiration concerning membership
of the WTO also appears in the draft Registered Rights Law—
“Ensuring that the laws making provision about
IP in Jersey are modern and consistent with international standards is
therefore an important policy objective for encouraging businesses of many
types to locate and invest in the Island. Membership of the World Trade
Organisation (WTO) also requires IP laws to specified standards to be in place
and so Jersey must meet these if it desires the wider benefits of WTO
membership.”
21 While
the IPURL is compliant with the requirements of the various international
treaties and conventions relating to unregistered intellectual property rights,
as well as the copyright and related rights provision in the TRIPS Agreement,
to date Jersey has only become a signatory to the Berne Convention[9]
which was effective on 1 January 2014. The draft Registered Rights Law stated
that there was a priority in ensuring that the laws in Jersey about registered
intellectual property were modern and compliant with international conventions.
The draft law goes on—
“UK laws comply with the main international
conventions and treaties relevant to these types of IP and so in many respects
the Jersey laws permitting IP to be re-registered in Jersey will also be
consistent with these obligations. But Jersey does not belong to the relevant
international conventions and treaties, in particular the most recent version
of the Paris Convention for the Protection of Industrial Property [Paris
Convention]. There are a few detailed points in the Jersey laws that would
preclude compliance with that Convention. This draft Law therefore brings
forward amendments to remove these problems, and so should in due course enable
the Island to seek extension of the UK’s membership of that Convention to
the Island.”
22 The
technical details of the changes to the three Jersey laws are not relevant
here, suffice it to say they are aimed at enabling compliance with the Paris
Convention and also the TRIPS Agreement. What is perhaps more interesting is
that the Registered Rights Law provides a mechanism to enable Jersey’s
intellectual property laws to be more easily updated in the future. There are
powers to make regulations in respect of each type of registered right. As the
draft law stated, this power will mean it will be possible in future to make
provision in relation to any of the following—
(a) registration, by first
registration or otherwise, and the exercise and enforcement of any title or
interest in rights, but so long as the provision is believed by the States to
be consistent with any international convention which applies to Jersey;
(b) giving effect to any
international convention which applies, or is to apply, to Jersey;
(c) implementing any
obligation the UK has under EU Treaties, whether or not that obligation applies
to Jersey;
(d) giving effect to any
provision that applies in the UK.
23 The
IPURL contains provision for the making of regulations to cover the
implementation of international treaties and conventions.
24 How Jersey’s
legal powers might be used to enhance its intellectual property law offering
are considered below.
3.
The approach of Jersey in comparison with Guernsey and the Cayman Islands
25 Island
economies such as Jersey, Guernsey and the Cayman Islands have, in the 21st
century, realised that for various reasons it is beneficial to have modern
intellectual property laws, at least covering the four categories. It is
suggested that the main impetus for this has been to seek alternatives to the
traditional offerings of these financial centres, in a world becoming
increasingly dominated by the need to adhere to international regulation eg FATCA and CRS, and the costs
associated with this. The desire to be attractive to innovators has prompted
island economies to look to areas such as financial technology (“FinTech”)
and medical technology (“MedTech”) and in doing so it has proved
necessary to have in place modern intellectual property laws.
26 It has
been reported in the past that, whilst businesses involved in intellectual
property and e-commerce will locate their businesses in a jurisdiction for a
variety of reasons—the tax and financial environment, communications,
workforce demographics to name but a few—the legal environment is often a
key factor. Whether a jurisdiction has a mature and comprehensive intellectual
property law structure—both for business and citizens—can be of
great relevance.
27 As has
been seen, the four categories are the subject of a large degree of
standardisation by virtue of a variety of international treaties. Nevertheless,
differences do exist between countries. Not unsurprisingly, the likes of the
Crown Dependencies and Overseas Territories have looked to the UK for a model
for their intellectual property laws. The benefits of this are manifold:
(a) Notwithstanding their own
legal systems, which in the case of Jersey and Guernsey originate from Norman
France of the 11th century, there is a familiarity with the laws of the UK and
the highest court of appeal is the Judicial Committee of Privy Council.
(b) The common laws of
England and Wales and of Scotland often provide persuasive authority for
offshore jurisdictions.
(c) By looking to the UK,
rather than devoting time and resources to reviewing established ground, there
is a ready-made source of laws which is compliant with international standards.
(d) Existing local
legislation has been influenced by UK laws eg
the Supply of Goods and Services (Jersey) Law 2009.
(e) Many laws are modelled on
UK Acts of Parliament which provide a common framework and ease of updates.
28 Some years before Jersey implemented the
IPURL, Guernsey had implemented a suite of ordinances following the
Intellectual Property (Enabling Provisions) (Bailiwick of Guernsey) Law 2004
which, in the case of unregistered rights, was also modelled largely on the
provisions of the 1988 Act. These ordinances included:
(a)
the Copyright (Bailwick of Guernsey) Ordinance 2005;
(b)
the Unregistered Design Rights (Bailiwick of Guernsey) Ordinance 2005;
(c)
the Performers’ Rights (Bailiwick of Guernsey) Ordinance 2005,
a number of which have since been amended.
29 Whilst Jersey and Guernsey have enacted
their own laws dealing with unregistered rights, the copyright sections of the
1988 Act (with some modifications) were extended in 2015 to the Cayman Islands
by UK statutory instrument.[10]
Arguably, the benefit of this approach is that, unless it touches upon a
modified provision, any change to the 1988 Act will automatically extend to the
Cayman Islands, whereas Jersey and Guernsey would need to take steps to
implement any change which it is desired to include within their own
unregistered laws. Conversely, they have the freedom whether or not to adopt
any change which might be made to the 1988 Act.
30 The principal difference between Jersey
and Guernsey is in relation to registered rights. As discussed above, Jersey
has adopted a secondary register in respect of trade marks, registered designs
and patents. Under the Trade Marks (Bailiwick of Guernsey) Ordinance 2006,
Guernsey has its own primary registry for trade marks. A trade mark that has
never been registered in another jurisdiction (or has been registered in a
jurisdiction that is not formally recognised by the Guernsey Intellectual
Property Office) is (and must be) treated as an actual trade mark application. More
akin to Jersey is the provision that a trade mark that has previously been
registered in another recognised jurisdiction can be applied for in Guernsey,
claiming support from the earlier registration. Broadly speaking, a “supported”
registration can be applied for when the trade mark has first been registered
as a UK mark, a CTM or a mark under the Madrid System. Interestingly, Jersey
provides for automatic recognition of CTMs whereas Guernsey does not.
31 Guernsey adopts a similar approach to
Jersey in respect of registered designs and patents in that each can only be
registered in Guernsey where there is an existing registration in certain
designated overseas jurisdictions, although Jersey restricts the ability to
have a “mirror” registration to where there is only an existing UK
registration.
32 Previously, for the Cayman Islands, the
Patents and Trade Marks Law 2011 governed the recording of patents and trade
marks. The Cayman Islands registry, like Jersey and Guernsey, served to extend
patent and trade mark rights that had been registered in other jurisdictions,
rather than being a registry of original registration. The new Trade Marks Law
2016 came into force on 1 August 2017 and has created a new stand-alone trade mark registry system in the Cayman
Islands that is no longer dependent on UK or EU registrations. The Design
Rights Registration Law 2016 and the Patents and Trade Marks (Amendment) Law 2016
also came into force on 1 August 2017. The first of these laws provides owners
of original UK-registered designs and registered Community designs with the opportunity
to extend their rights to the Cayman Islands. The second removes all references
to trade marks in the 2011 Law but maintains the regime for patents. The law
also introduces anti-trolling provisions to prevent certain abuses of the
patent registration system.
33 Significantly, in the Cayman Islands
only registered agents in the jurisdiction may conduct business with the Cayman
Islands Intellectual Property Office. Similarly, save for local residents,
applications for patents and registered designs extensions may only be made by
registered agents in Guernsey. In June 2015, Guernsey embarked on a general
consultation with stakeholders and users of its intellectual property regime
about specific areas of potential development.[11] The responses were published
in October of that year.[12]
One of the areas considered in the Consultation Paper concerned the
establishment of a register of agents for all registered intellectual property
in Guernsey. Responses were supportive of this idea and that there be a register
of agents which would be limited to locally qualified persons, which might
include Guernsey advocates, local patent attorneys and corporate service
providers. Jersey is the only jurisdiction of the three to give automatic
recognition to CTMs and it is to be noted that in the responses to the Guernsey
Consultation Paper[13]
there was no support for having a similar position in Guernsey so as not to
detract from the opportunity for first and supporting registrations.
34 By the Image Rights (Bailiwick of
Guernsey) Ordinance 2012, Guernsey has sought to differentiate itself by
creating a registrable personality or image right. Those working in the sports
and entertainment world will be familiar with the concept of image rights and
their exploitation (being common in such jurisdictions as the US, Spain and
Germany). Image rights refer to an individual’s proprietary right (among
other things) to their individual name, physical characteristics, personal
likeness or personal marks (such as their signature). However, under English
law there is no identifiable intellectual property right in an “image
right” per se (although certain characteristics are capable of protection in
others ways eg as a registered trade
mark).[14]
Nevertheless, often in keeping with overseas practice, over the last 20 years
it has become common, particularly for footballers, to assign or license an
asset commonly referred to collectively as one of “image rights” to
an image rights company. A high profile player’s remuneration
package may include his basic wage under his playing (employment) contract and
a separate image rights payment for commercial revenue, payable under a
separate agreement with the image rights company. HM Revenue & Customs has
often sought to scrutinise the image rights arrangements concluded between
players and clubs, especially with overseas structures, claiming that these are
simply “disguised remuneration” which should be subject to tax and
National Insurance Contributions.
35 Whilst the benefit of this law remains
to be established (bearing in mind that, like any registered right, its
protection is territorial in nature), it may prove to be useful in arguing that
image rights do exist, and so they
are capable of recognition, registration, assignment/licence, and management
and exploitation by third parties.
36 A final point, worthy of comparison, is
the prominence given to intellectual property in the three jurisdictions. For
10 years, Guernsey has had its Intellectual Property Office which has a website[15]
providing general advice and assistance on the four categories as well as how
to make applications for the various types of registrable right. The
improvements to intellectual property protection in the Cayman Islands are seen
as going hand-in-hand with the development of its Cayman Enterprise City,[16]
a special economic zone which can include internet and technology, media and
marketing, and biotechnology businesses, all of which are heavily dependent on
intellectual property, and the emphasis is shown on the website of the Cayman
Islands Intellectual Property Office. At the States level, Jersey does not
promote its intellectual property regime other than stating that certain
registrations are conducted through the office of the Judicial Greffe.[17]
37 Given the limitation on resources in
island economies, it does make sense for the intellectual property law
environment of what is perhaps the closest major jurisdiction in terms of
culture, history and legal framework, namely the UK, to be looked to when
seeking to put in place a suitable legal architecture for intellectual
property. That said, such economies need to consider what aspects are most
pertinent to absorb into their own regimes and, as examined below, there are
areas that can be considered, or looked at afresh, which depart from the law of
the UK.
Current issues and what next for Jersey
38 Having
established the intellectual property regime in Jersey for the four categories
it can be seen that Jersey’s laws have been greatly influenced by those
in the UK, especially as regards copyright. The general absence of a modern
copyright law resulted in the enactment of the IPURL which is based almost
exclusively on the 1988 Act. It is important to bear in mind that the structure
of the UK’s intellectual property laws has arisen in large part due to
its membership of the European Union.
39 Since
the 1988 Act was originally enacted, regulations have been made to enable a
variety of EU Directives to be implemented which have resulted in amendments to
the 1988 Act. For example, the UK Copyright and Related Rights Regulations 2003[18]
transpose Directive 2001/29/EC[19] of
the European Parliament, often known as the Information Society or InfoSoc
Directive, into UK law and amended certain provisions of the 1988 Act. The UK
Trade Marks Act 1994 gave effect to the Trade Mark Directive[20]
(Directive 89/104/EEC) although this means of implementation is rare and
Directives are normally implemented through secondary legislation.
40 EU law
and initiatives on intellectual property have developed at a pace and a
question for Jersey is whether it should adopt more of these EU instigated
laws.
41 In his
2011 report “Digital Opportunity—A Review of Intellectual Property”
(“the Hargreaves Report”)[21]
Professor Ian Hargreaves stated—
“Intellectual Property Rights . . . support
growth by promoting innovation through the offer of a temporary monopoly to
creators and inventors. But such rights can also stifle growth where
transaction costs are high or rights are fragmented in a way that makes them
hard to access. Poorly designed IP rules can help established players in a
market obstruct new players by impeding their access to technology and content.
A carefully designed and dynamic IP system can, by contrast, complement the
spur which competition gives to innovation by enabling follow on-innovation.”
Accordingly, any
system of intellectual property has to balance the interests of intellectual
property holders against those of innovators. The Hargreaves Report made a
number of recommendations in respect of copyright against a background of the
increasing prevalence of activities being conducted within a digital
environment, one of which is copyright exceptions.
Copyright
exceptions
42 Whilst
copyright creates a monopoly right, international laws permit certain copyright
exceptions. The Hargreaves Report comments—
“Copyright exceptions are designed to allow uses
of content that offer benefits deemed either more important than those
delivered by the core aims of copyright and/or benefits that do not
significantly detract from those aims. The copyright exceptions for educational
purposes and for research are intended to promote knowledge, skills and
innovation in the economy, without unduly undermining the incentive for educational
and academic publishers to create the works that students, teachers and
researchers need.”[22]
43 The
Berne Convention limits the range of exceptions by a three step test. This
requires that exceptions are confined to certain special cases which do not
conflict with a normal exploitation of the work and do not unreasonably
prejudice the legitimate interests of the rights holder. The US has the concept
of “fair use” which is a defence within the US copyright framework.
The InfoSoc Directive contains a list of categories which operate as copyright
exceptions and leaves individual member states to implement these exceptions as
they see fit.
44 A
recommendation of the Hargreaves Report was that, as permitted by the InfoSoc
Directive, the UK should introduce an exception for private copying or format
shifting. With format shifting, content is illegally copied onto a digital
device or medium from the original legal format. By way of example, although
carried out by millions of people, it is currently illegal in the UK and Jersey
for an individual to transfer a lawfully purchased CD onto their computer and
then download it to their portable music device. The response of the UK
government was to introduce in October 2014 the Copyright and Rights in
Performances (Personal Copies for Private Use) Regulations 2014 which amended
the 1988 Act to allow individuals to make copies of copyright works they had
bought in the manner described above but did not allow personal copies to be shared
with others.
45 The good
news was short lived. A judicial review was brought by the British Academy of Songwriters, Composers
and Authors of the form of the exception introduced.[23] Under art 5(2)(b)
of the InfoSoc Directive, member states may provide for an exception to
copyright infringement for private, non-commercial use “on condition that
right holders receive fair compensation”. Unlike other EU jurisdictions,
there was no accompanying levy structure to compensate rights holders. It was
argued by the UK government that the justification for introducing the
exception without a compensation scheme was that any private copying was
already factored into the initial price of the work (so-called “pricing
in”) and therefore there is no harm to rights holders. Right holders had
also been given a right to use “restrictive measures” (such as
digital rights management) to prevent the copying of their works for private
use. Nevertheless, whilst the court decided most of the substantive issues in
favour of the Secretary of State, it did conclude that the Secretary of State’s
conclusion that no (or minimal) harm would be caused to right holders was not
justified based on the evidence and therefore the decision to introduce the
exception was unlawful.
46 Unlike many other European jurisdictions, the illegality
of format shifting remains in the UK and, generally, in Jersey (art 49 of IPURL
allows a visually-impaired person to copy a copyright work to enable it to become
accessible to him/her). Article 44 of IPURL, however, permits the States to
make regulations to amend the provisions of IPURL dealing with the acts which
may be done in relation to copyright works, notwithstanding the subsistence of
copyright. Jersey has both the framework and opportunity to remedy this
situation.
47 Hargreaves was also a proponent of an exception to permit
parody suggesting that—
“the most important issues in that area concern
freedom of expression and in that respect sit outside this review’s terms
of reference. Here too, however, there is an economic link. Video parody is
today becoming part and parcel of the interactions of private citizens, often
via social networking sites, and encourages literacy in multimedia expression
in ways that are increasingly essential to the skills base of the economy.”
48 In response, the UK government brought in the Copyright
and Rights in Performances (Quotation and Parody) Regulations 2014[24]
on 1 October 2014, modifying the 1988 Act to provide that “fair dealing
with a work for the purposes of caricature, parody or pastiche does not
infringe copyright in the work”. These regulations do not offer any
definition for “parody, caricature and pastiche” which may be
relevant for the increasingly popular pastime of the “viral”
circulation of works known as “mash-ups”. The availability of
copyright works in easily editable formats over the internet has given rise to
this type of “work” which combines existing musical works or films.
A question, therefore, is whether the concept of “parody” can
include such viral works whose humour is derived not from any comment on the
original work, but from some ironic, surrealist or, simply, idiotic intent.
49 The IPURL does not cater for the parody exception and in
a world of social media where such expression can be commonplace this should be
rectified so as to bring Jersey in line with the UK and other jurisdictions.
50 On 14 September 2016, the European Commission published
its communication unveiling a proposed Directive on Copyright in the Digital
Single Market. Under the proposed Directive, member states will be required to
provide three new mandatory exceptions to allow limited use of copyright
material without permission of the right holder. This contrasts with the current
regime under the InfoSoc Directive where most exceptions were optional and
fell to member states to choose whether and how to implement them. One of the
three mandatory exceptions will be text and data mining carried out by research
organisations for the purposes of scientific research. Text or data mining is
an increasingly important area. The Hargreaves Report commented that—
“Research scientists, including medical
researchers, are today being hampered from using computerised search and
analysis techniques on data and text because copyright law can forbid or
restrict such usage. As data farming becomes routine in systems across the
economy, from the management of transport to the administration of public
services, copyright issues become ever more important as potential obstacles.
In these circumstances, copyright in its current form represents a barrier to
innovation and economic opportunity.”[25]
51 Generally, data or text mining is the process of finding
correlations or patterns among dozens of fields in large relational databases.
The term is a misnomer actually, as the goal is the extraction of patterns and
knowledge from large amounts of data, not the extraction (mining) of data
itself.
52 In June 2014 the Copyright and Rights in Performances (Research,
Education, Libraries and Archives) Regulations 2014[26] came into force in the UK. They provide that copyright holders can require researchers to
pay to access their content but cannot then restrict text or data mining for
non-commercial purposes thereafter. However, researchers that use the text or
data they have mined for anything other than a non-commercial purpose will be
said to have infringed copyright, unless the activity has the consent of rights
holders. In addition, the sale of the text or data mined by researchers is
prohibited.
53 None of the current UK, EU and Jersey laws permits this
type of research unless it is non-commercial and the mining of databases is
often excluded by the contract for accessing the relevant database. Not being a
member of the EU, Jersey has an opportunity to look at copyright exception
alternatives, one of which could be the concept of “fair use”. In November 2013, the Australian Law Reform
Commission (ALRC) published its final report on “Copyright and the Digital Economy”.[27] The
ALRC recommended the introduction of a fair use exception into Australian
copyright law. It stated—
“. . . fair use differs from most
current exceptions to copyright in Australia in that it is a broad standard
that incorporates principles, rather than detailed prescriptive rules. Law that
incorporates principles or standards is generally more flexible and adaptive
than prescriptive rules. Fair use can therefore be applied to new technologies
and new uses, without having to wait for consideration by the legislature.
Fair use is also an appropriate tool to assess whether
other transformative uses should be permitted without a licence, such as data
mining and text mining, caching, indexing and other technical functions
. . .”
54 The main exceptions to copyright infringement in
Australia come under the general heading “fair dealing”. In order
to be a fair dealing under Australian law, a use must fall within a range of
specific purposes akin to the copyright exceptions present in the 1988 Act and
the IPURL. For example, under s 41A of the Australian Copyright Act 1968
(added by the Copyright Amendment Act 2006)—
“A fair dealing with a literary, dramatic,
musical or artistic work, or with an adaptation of a literary, dramatic or
musical work, does not constitute an infringement of the copyright in the work
if it is for the purpose of parody or satire.”
55 Fair dealing is not the same as fair use. The ALRC
recommended that the fair use exception contain three elements:
(a) an express
statement that a fair use of another’s copyright material does not
infringe copyright;
(b) a
non-exhaustive list of four fairness factors to be considered in determining
whether use of that copyright material is fair; and
(c) a
non-exhaustive list of illustrative uses or purposes.
56 In its report, the ALRC highlighted that stakeholders had
indicated that there was a need for proper evidence before any law reform was
introduced. However, the ALRC stated that, given the available economic
evidence was incomplete and contested, and the unlikelihood that reliable
empirical evidence would become available in the near future, law reform should
proceed, based on a “hypothesis-driven approach”. To date, the ALRC’s
recommendation of a general fair use exception remains to be taken further.
57 Looking to the US, its copyright law is governed by the
Copyright Act of 1976 and is set out in Title 17 of the US Code. It states that—
“Notwithstanding the provisions of sections 106
and 106A, the fair use of a copyrighted work, including such use by
reproduction in copies or phonorecords or by any other means specified by that
section, for purposes such as criticism, comment, news reporting, teaching
(including multiple copies for classroom use), scholarship, or research, is not
an infringement of copyright. In determining whether the use made of a work in
any particular case is a fair use the factors to be considered shall include:
(1) the
purpose and character of the use, including whether such use is of a commercial
nature or is for nonprofit educational purposes;
(2) the
nature of the copyrighted work;
(3) the
amount and substantiality of the portion used in relation to the copyrighted work
as a whole; and
(4) the
effect of the use upon the potential market for or value of the copyrighted
work.
The fact that a work is unpublished shall not itself
bar a finding of fair use if such finding is made upon consideration of all the
above factors.”
58 In 2015 the Association of Research Libraries (a
non-profit organisation of 124 research libraries in the US and Canada)
released a briefing[28]
which refers to the fact that text and data mining has been upheld as fair use.
As content mining is transformative, that is, it does not supplant the original
work, it is viewed as being lawful under fair use. For example, as part of the
Google Books settlement in 2013[29]
Google’s digitisation project of in-copyright books was ruled lawful, in
part because of the transformative uses that the digitisation project displayed—one
being text and data mining. US Circuit Judge Denny Chin commented—
“Google Books is also transformative in the
sense that it has transformed book text into data for purposes of substantive
research, including data mining and text mining in new areas, thereby opening
up new fields of research. Words in books are being used in a way they have not
been used before. Google Books has created something new in the use of book.”
59 Copyright exceptions remains an area which can usefully
be looked at for Jersey given that it is even falling behind those exceptions
permitted by the InfoSoc Directive, and arguably unhampered by it, and could
allow Jersey to be only the third country after Japan and the UK specifically
to allow data mining.
3D printing and artistic designs
60 One of the major concerns with the advent of 3D
technology is how to protect intellectual property. This new printing
technology is often described as a “disruptive technology” as it
challenges the intellectual property framework. It has implications both for
consumers (can I lawfully reproduce an object in 3D?) and business (can I
enable consumers lawfully to reproduce an object in 3D?).
61 In order to copy an object, two things are needed: an
electronic schematic of the object and a 3D printer. 3D printing might infringe
various types of intellectual property right at different stages of the
process, unregistered design right and copyright being the most common. Both
the 1988 Act and the IPURL provide for unregistered design right (which
generally has a 10 or 15 year duration depending on when the article was
designed or first marketed). This covers the 3D shape and configuration of an
object. One can differentiate between 3D computer-aided design (CAD) files (the
term “design document” is used in the respective laws of the UK and
Jersey) and 3D replicas themselves. The creation of a 3D CAD file might be
considered infringing design rights, as might the creation of the 3D article
itself, as well as any dissemination or offering to the public. Unregistered
design right is not without its pitfalls, however, as not every
three-dimensional object will necessarily qualify for that protection; the
right does not cover surface decoration and there are complicated criteria to
satisfy.
62 Copying a CAD file infringes literary copyright but does
making a work from a CAD file infringe copyright? Both the 1988 Act and the
IPURL provide that if a design file is what is termed a design document,
printing an article from a design file does not infringe copyright in the
design file unless the article itself constitutes an artistic work. A “design
document” is any record of a design, whether in the form of a drawing, a
written description, a photograph, data stored in a computer or otherwise. Therefore,
there seems to be a limitation to resorting to copyright infringement where the
3D article is not an artistic work. This lacuna is something which could be
looked at by Jersey.
63 Since 1 October 2014 and the UK Intellectual Property Act
2014 (“the 2014 Act”) coming into force there has been a difference
between the UK position and that of Jersey in terms of the commissioning of
designs. Following the introduction of unregistered design right in 1989 in the
UK, the treatment of commissioned designs has been different from the way
commissioned works in related fields, such as copyright, have been treated. In
the IPURL, and until recently in the UK, designs have been owned by the
commissioning party unless an agreement provided otherwise. Since the 2014 Act,
in the UK, this has changed so that in the case of registered design,
unregistered design right and copyright, the first owner of the work will be
the designer unless a contract provides otherwise. Also, the definition of “design”
in the 1988 Act has been amended by the 2014 Act and is now defined as “the
design of the shape or configuration (whether internal or external) of the
whole or part of an article”. The definition used to incorporate “any
aspect of the shape or configuration”. This has now been removed making
it less likely an action would be brought against someone if their design
appeared to have copied a trivial part of someone else’s design or “a
part of a part”. The IPURL retains the former UK definition and in both
cases it remains an infringement to copy part of an unregistered design.
64 In July 2016, s 52
of the 1988 Act was repealed (to align UK law with a decision of the European
Court of Justice (“ECJ”)). This section limited the term of
copyright protection for artistic works which have been exploited by an
industrial process (that is, more than 50 articles being produced) to 25 years
(the maximum period available for registered designs). This is significantly
less than the duration for other artistic works, which is the artist’s
life plus 70 years. Article 80 of the IPURL is in identical terms to s 52.
Removing the 25 year limitation may give owners of some designs the opportunity
to pursue copyists where previously there were no rights they could rely on.
65 For the purposes of copyright and the 1988
Act and the IPURL, representing a two-dimensional artistic work in three
dimensions is a reproduction for the purposes of copyright infringement, as is
representing a three-dimensional artistic work in two dimensions. The repeal
also affects two dimensional images of protected products. This could affect
such businesses as book publishers where they show images of iconic products.
Depending on the product protected, it may be that these organisations will now
need a licence. A similar repeal of art 80 could help certain creators in
Jersey of artistic works.
Trade marks
66 Turning to another of the four categories, the EU
announced a trade mark reform and harmonisation package on 21 April 2015. The
reform package proposed to recast current EU law to harmonise further the
national laws of member states, streamline procedures, facilitate co-operation
between member states, support anti-counterfeiting and to reflect better the
modern business environment. The amended (Community Trade Mark) Regulation 2015/2424 came
into force on 23 March 2016 and implemented certain changes. Member states also
have until 14 January 2019 to transpose the provisions of the (Trademarks)
Directive 2015/2436.
67 As was seen in the previous section, Jersey does not have
its own primary trade mark registration; it is not possible to register a trade
mark in Jersey without it having already been registered in the UK, although
CTMs may be directly enforced in Jersey. In contrast to the Jersey position,
Guernsey has adopted a different approach. It has not yet sought to join the
international treaties (although it is now a signatory to the Berne Convention
and is stated to be actively progressing the extension of international
agreements to the Bailiwick) but has established a primary registry (as seen
above).
68 In view of what Guernsey has shown, and what the Cayman
Islands are to implement, it would be worthwhile to establish empirically whether there is a case
for a primary registry for trade marks. Anecdotally, there are feelings in some
quarters in Jersey that in the absence of a primary registry, international
structures and organisations designed to protect major brands would not
consider Jersey as a business location and that this continues to show that
Jersey is not as serious about intellectual property as it might be. Further,
it is thought that having a primary registry would make Jersey attractive as a
first filing location so as to attract global brand management, and in the long
term provide a revenue stream for the States and for local intellectual
property management businesses.
69 The States should consider a formal
consultation/investigation since it cannot have gone unnoticed that Guernsey has
had an aircraft registry, e-gaming (via Alderney) and modern intellectual
property laws long before Jersey, as well as a thriving captive insurance
industry, and in the past, an international pensions market. Further, review is
required as to what registrations of trade marks, registered designs and
patents ought to be entitled to secondary registration in Jersey outwith a UK
registration, and, in the case of trade marks, which is a CTM.
Confidential information and trade secrets
70 One of the “external” justifications for a
modern intellectual property law infrastructure is to be attractive to those
involved in FinTech and MedTech. The Monetary Authority of Singapore announced
in 2015 a S$225 million initiative aimed at driving FinTech innovation. In
July 2015 the States of Guernsey in collaboration with PwC published its
strategic vision for FinTech in Guernsey.[30]
This report is stated “to guide the future of FinTech . . . sector
in Guernsey and to ensure that Guernsey is well positioned to take advantage of
the opportunities in this sector” and as part of it sets out its
intellectual property credentials.
71 According to a report by
Accenture,[31]
investment in FinTech tripled in 2014, exceeding US$12 bn worldwide. FinTech essentially refers
to technological innovation in the financial services context. FinTech includes
both innovation which improves the current processes (eg more secure
payment systems or improved fraud detection tools), and innovation which
challenges the fundamental business models of existing financial services
institutions (eg Bitcoin wallets). FinTech covers such areas as payments
(eg payment systems, P2P currency exchanges), digital currencies,
lending (eg P2P (peer-to-peer) financing, crowdfunding), personal
finance and wealth management, to institutional tools (eg data
analytics).
72 The most common forms of protection for FinTech innovations are by
copyright, patent and as trade secrets and one is usually dealing with
software. Copyright protection only
protects the expression of ideas, but not ideas themselves, and it only
protects such expression from substantial copying. An advantage of trade secret protection is that it is potentially
indefinite, however, protection is lost once the trade secret becomes public
information. Also, like copyright, trade secrets cannot protect against
independent creation so that there is no right to stop a rival from doing the
same thing if they developed it themselves. Patents protect different aspects
of software to copyright. While copyright protects only the form of expression
found in the software, patents can protect the underlying ideas and functions.
Patents can therefore protect FinTech inventions more meaningfully, as
well-drafted patent applications can potentially cover rivals’ activities
even if their codes are written differently, as long as they perform the same
functions. Patent protection
lasts for 20 years from the filing date. This is a relatively short time
compared with that for copyright and trade secrets but is not likely to be a
problem given the fast-moving nature of the FinTech industry.
73 In the IPURL
(like the 1988 Act), copyright protection lasts for 70 years from the death of
the author, or for 50 years if computer-generated, from the end of the year in
which the work was made. There are, however, some limits to copyright
protection, when considering the area of confidential information and trade
secrets. Certain protection was seen in the Nautech case, including if
the information can satisfy the criteria for being a database. The efficacy of
common (customary) laws on the protection of confidential information can vary
depending on the circumstances.
74 In December
2015 a provisional agreement was reached between representatives of the
European Parliament and EU Council on the EU Trade Secrets Directive.[32]
The Directive was formally adopted on 26 May 2016, with member states having a two-year
window in which to implement its provisions. Under the agreed text, there is a
common definition of a “trade secret” and extensive remedies for
breach. Member states will be able to adopt “more far-reaching protection”
of trade secrets if they wish to do so (ie the Directive only seeks to
impose a minimum standard).
75 In July 2016, the
Confidential Information Disclosure Law 2016 came into force in the Cayman
Islands replacing the Confidential Relationships (Preservation) Law 2015. The introduction of the new law means that a breach of duty of confidentiality
is no longer a criminal offence in Cayman. However, a person whose
confidentiality is breached can sue the person who divulged the confidential
information.
76 Given the
importance of confidential information to businesses, especially those involved
in technological innovation, might this be a subject for legislation which
Jersey could similarly implement?
The future
77 The
intellectual property landscape in the UK comprises—
(a) laws created by UK
statute to implement EU harmonising Directives in relation to UK trade marks,
database rights and registered designs;
(b) laws which are directly
applicable via Regulations providing for EU-wide rights, eg CTMs;
(c) laws where, although
there has not been complete harmonisation, there are Directives that partly
harmonise them, eg copyright law in
the UK which is still governed primarily by the 1988 Act but with influences
from various Directives; and
(d) laws which are in the UK
statute book or in common law which have no EU element such as passing off,
confidential information (both common law based) and current patent law
(Patents Act 1977) which incorporates the requirements of the European Patent
Convention into UK patent law.
78 Following
the vote for Brexit, the nature of the UK’s intellectual property
environment will change when it leaves the EU. It will lose the laws which are
Regulation-only (although they could be the subject of domestic legislation)
but will still have the laws that have been implemented by Directive, although
these will no longer be subject to references to ECJ for interpretation of the
Directive upon which they were based. Any CTM, Community Design Right and
Community Registered Design will continue to apply in all the other member
states but a separate UK registered design or UK trade mark registration will
be needed to cover the UK (which will have to be enforced separately). In
relation to the CTM, this could be converted into multiple national rights if
registered via an international registration under the Madrid System. The loss
of the Community Design Right could be mitigated by the existence of the UK
unregistered design right. Whilst leaving the EU will not change the UK’s
status as a signatory to the European Patent Convention (which is not an EU
instrument), nor access to the European Patent Office for UK companies wishing
to apply for European Patents in any of the currently possible countries, it
could potentially prevent the UK from being part of the new Unitary Patent and Unified Patent Court
system (although in November 2016 the UK indicated it would ratify the Unified
Patent Court Agreement).
79 Like Jersey, the UK will not be able to participate in EU
initiatives and will have to consider what developments it might wish to
explore independently of the EU. So, given the type of initiatives which are
being brought forward by the EU in an ever-changing technological world, what
might the priorities be for Jersey and its intellectual property laws? On a
practical level, unlike Guernsey, and
now the Cayman Islands, Jersey makes little effort to promulgate its
intellectual property laws via such channels as a government or
quasi-government website despite the strides that have been made in terms of
unregistered rights. To be attractive to innovators, Jersey’s own
government needs to provide a portal for it to promote its intellectual
property credentials.
80 Looking more broadly, Sir Richard Arnold, QC, the High Court judge who
is very involved in cases relating to intellectual property, in the 2014 Herchel
Smith Intellectual Property Lecture held by Queen Mary University of London[33]
advocated seven reasons why a new UK Copyright Act was needed. Of these he
commented in respect of his first (at 124)—
“. . . it is 26 years since the 1988
Act was passed . . . During that period, technological change
relevant to copyright has accelerated and has become more transformative. We
have had the advent of the world wide web, the whole online world including
Internet television and social media, smart phones, tablet computers, and now
3D printing. Furthermore, these technological changes have led to massive
changes to the business models for exploiting copyright works. Although much
amended, the 1988 Act remains rooted in the analogue world.”
81 Such a comment holds true for the IPURL given its
parentage. Similarly (at 126)—
“. . . the Act as it presently stands
is considerably longer than the Act as originally enacted, considerably more
complicated, cannot be understood in isolation from the EU Directives and the
implementing regulations and lacks coherence. As a result, the law is
inaccessible to creators, exploiters and users of copyright works
. . . ”
82 Should Jersey, therefore, be giving greater thought to
how its intellectual property laws can operate in a technologically evolving
world?
83 In May 2015 the European Commission published its draft
Digital Single Market strategy[34].
It identified a number of areas where work is needed to create this single
market, including cross-border e-commerce rules, removing geo-blocking, and a
copyright framework to afford better access to digital content. Jersey will
need to be alive to international change on its doorstep. Not all will be
appropriate to Jersey. In order to ensure that it does not revert to its previous
status as an intellectual property backwater, however, it needs to be able to
respond quickly to changes in the technological environment internationally. Whilst
the current “hygienic” approach of the adherence to international
treaties is welcome (especially following Brexit and the aspiration of WTO
membership), the adoption of some changes and ideas promulgated by the EU could
be to the benefit of Jersey business and consumers.
84 It is in the area of unregistered rights where there is
the most scope for development, and where changes in technology impact most. As
highlighted above, the Copyright and Rights in Performances (Personal Copies
for Private Use) Regulations 2014 fell foul of the need to provide fair
compensation and in November 2015, the ECJ in the Hewlett-Packard Belgium v Reprobel
case[35]
eviscerated the system of fair compensation provided for by the Belgian law on
copyright for not conforming with the InfoSoc Directive. Jersey is not
constrained by the InfoSoc Directive and could use its current powers to ensure
that the illegality of format shifting for private use is remedied. As Sir
Richard Arnold, QC highlighted (see above) we live in a digital era and now
have the likes of “downloading”, “streaming”, “hyperlinking
and framing” and “file sharing”, all of which present a
challenge to the law of copyright. To what extent are Jersey’s laws are
able to deal with such issues.
85 The primary infringement of copyright is unauthorised
copying. Both the IPURL and the 1988 Act provide that copying in relation to
any description of work includes the making of copies which are transient or
are incidental to some other use of the work.[36] Can
this apply to the provision of hyperlinks?[37] In the
last few years there have been a number of cases both in the UK and before the
ECJ dealing with extent to which the use of hyperlinks can result in copyright
infringement. These include—
(a) Newspaper
Licensing Agency Ltd v Meltwater Holding BV—a headline can
amount to an original literary work in its own right provided that it is the
author’s intellectual creation and using headlines as links can
constitute an infringement of the reproduction right if that title is deemed to
be the author’s own intellectual creation.
(b) Public
Relations Consultants Assn Ltd v Newspaper Licensing Agency Ltd—on-screen and
cached copies made when browsing the internet are temporary copies for the
purpose of art 5(1) of the InfoSoc Directive (the equivalent of the
temporary copying exception in the 1988 Act and the IPURL) and could therefore
be made without the authorisation of website publishers.
(c) As well as the primary infringement of
copying, s 20 of the 1988 Act provides that copyright is infringed where
there is the unlawful communication of a copyright work to the public, and this
includes “the making available to the public of the work by electronic
transmission in such a way that members of the public may access it from a
place and at a time individually chosen by them”. Somewhat circuitously,
the IPURL provides for the same.[40]
In Dramatico Entertainment Ltd v British Sky Broadcasting Ltd, Sir Richard Arnold
considered whether the users of The Pirate Bay website had infringed copyright
in various record companies’ sound recordings. The Pirate Bay website was
the world’s largest BitTorrent tracker. BitTorrent is a P2P file-sharing
protocol that is used to distribute large amounts of data. Arnold, J held that
the users who had accounts with the defendant ISPs had infringed the claimants’
right of communication to the public under s 20 of the 1988 Act. He
considered that the users communicated the recordings by electronic
transmission in such a way that members of the public could access the
recordings from a place and at a time individually chosen by them under s 20(2)(b).
(d) In February
2014 in Svensson v Retriever Sverige AB,[42] the
ECJ held that providing on a website clickable links to works freely available
on another website is not a communication to the public of copyright works under
art 3(1) of the InfoSoc Directive. This was because the provision of the
link would not lead to the works being communicated to a new public, the works
having already been made available to all internet users.
(e)
More recently in GS Media v Sanoma
Media[43]
the ECJ concluded that where the underlying material was posted to the internet without the
copyright owner’s consent, hyperlinks to such material can be a
communication to the public and so may amount to copyright infringement. It
held that in order to assess whether this was such a communication, it must
first be determined whether the links are provided other than for financial
gain by someone who did not know, and could not reasonably have known, that the
linked-to publication was unauthorised. If this is the case, the link will not
be a communication to the public. If the link was provided by someone acting
for financial gain, then knowledge of illegality will be presumed. The link will
then constitute a communication to the public unless the presumption of
knowledge can be rebutted.
86 A more recent example of the impact of technology can be
seen in the March 2016 judgment of the High Court of England and Wales where
the court held that the
use of a mobile phone app offering the ability to upload and view clips
featuring highlights of cricket matches infringed copyright in the television
broadcast and films contained within that broadcast. It is notable for the
finding that an eight-second clip can amount to a substantial part of a
broadcast and did not constitute fair dealing for the purposes of reporting current
events.[44]
87 Whilst the IPURL generally covers the same ground as the
1988 Act, in both cases and in this very limited review, the limitations of
current laws can be seen when it comes to new technologies.
Concluding remarks
88 In March 2016, the draft of the
Intellectual Property (Plant Varieties) (Jersey) Law 2016 was published and it
is worth noting that the States observed that—
“Although having modern IP laws consistent with international
standards is therefore an important policy objective by itself, especially in
order to encourage businesses of many types to locate and invest in the Island,
the two earlier Laws are also important if Jersey wishes to have the UK’s
membership of the World Trade Organisation (“WTO”) extended to the
Island.”
In the draft law it was also conceded that
there would be little recourse to this law.
89 Therefore, whilst the current
laudable but “hygienic” approach of the adherence to international
treaties is welcome, I would not agree that the current system of laws is
really sufficient to encourage business to locate and invest in the Island. I would argue that already Jersey’s unregistered
rights law is failing to keep pace both with technology and developments
internationally. Further, its registered rights laws, despite recent amendment,
require substantive review if Jersey is to maximise their potential when
compared with other island jurisdictions. I would suggest that this is critical
if Jersey’s expressed desire to be taken seriously in the world of
innovation,[45]
particularly in the area of FinTech, is to be realised and to attract this type
of business to the Island.
Nick Marshall, Advocate and Senior
Associate at the Jersey law firm Collas Crill, based on his dissertation for
the Institute of Law’s LLM and updated as at 31 December 2017.