Movies and TV shows - copyrights and unofficial merchandise

Advice for those new to the concepts of copyright
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AndyJ
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Post by AndyJ » Wed Mar 06, 2013 8:30 pm

To Phil and others,
The forum's software is not allowing me to post what I want to say here at present. More specifically it won't let me edit something I had written and every time I try it rejects it as spam, on the basis I have just tried to post the same thing. This is an ongoing problem that CopyrightAid and I have been unable to resolve. If necessary I may need to wait until later tonight or tomorrow.
Andy
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Post by typonaut » Wed Mar 06, 2013 10:45 pm

AndyJ wrote:To Phil and others,
The forum's software is not allowing me to post what I want to say here at present. More specifically it won't let me edit something I had written and every time I try it rejects it as spam, on the basis I have just tried to post the same thing. This is an ongoing problem that CopyrightAid and I have been unable to resolve. If necessary I may need to wait until later tonight or tomorrow.
Andy
I find you need to edit a bit, and it's then ok, but I did get the anti-spam thing a day or so ago.

If you are editing, probably best to log out, log back in, then go fresh to the edit.
Any comment on this forum is just banter, it is not legal advice.

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Post by typonaut » Wed Mar 06, 2013 10:49 pm

retrocausality wrote:People at work are really starting to hate me. :lol: I need to find an avenue of attack that increases our portfolio instead of reducing it soon or I'll get lynched by our designers.
Original ideas, that don't trade on someone else's designs/goodwill?

BTW, part of my point about Temple Island Collections (the red bus case) is, as Andy surmises later in that thread, that this is a developing area of IP, and if you are going to end up in court, the chances are that you are going to end up in front of one of the judges pushing along the development.
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Post by AndyJ » Wed Mar 06, 2013 11:02 pm

Hi Phil,
First of apologies for a number of typos (not typonoughts) in my last piece which I will go back a correct shortly. A combination of re-jigging my earlier intended response and too much haste, together with a spell-checker that doesn't read my mind!
You asked about 'punishments'. Strictly speaking if an infringement is treated as a civil matter there are no punishments, merely 'remedies'. Perhaps the distinction is moot when damages and costs can amount to far more than fine for a criminal conviction. The criminal provisions in the Act are reserved for infringement on a fairly large scale and would generally require the CPS to agree that a prosecution was in the public interest. Trading Standards would be most likely to pursue a typical criminal IP case, although both the Police and HMRC do also bring prosecutions, depending on the area in which the alleged infringement is taking place, so for instance importation of counterfeit DVDs would be more likely to be handled by HMRC, whereas someone selling fake DVDs in a pub might well be dealt with by the police. Organisations such as the Federation Against Copyright Theft (FACT) tend to work closely with Trading Standards. If your company is in the unfortunate position of facing a criminal investigation, then probably the first you will know about it is when Trading Standards or the Police turn up with a warrant to search your company's premises. Matters will then proceed at a bureaucratic pace with interviews under caution and ultimately a summons to appear in a magistrates court. It is the directors or owners of the company who are most likely to face the music in a criminal action. Fines and prison sentences of up to 10 years are available, but only for the most egregious cases.
But if a film company wants to pursue a civil action (much more likely because they then control the procedure to a greater degree) then the first you are likely know about it is the arrival of a 'Cease and Desist' letter. This is very much what it suggests: if you comply and stop producing the goods complained of that may well end the matter. However where some of the big studios are concerned a c&d doesn't have sufficient deterrent effect on others, so they are much more likely to be going for litigation, leading either to a hefty out of court settlement or a victory in court. Before they can do this the court's rules of procedure require that their legal team issue you a 'letter before action'. This can in fact be a c&d letter with added bits which comply with the court's directions on such matters. If they fail to get it right at this stage it is possible the court (the High Court) could decline to accept the Particulars of Claim (a special form the court issues on which the complainant itemises his case against your company) until the letter before action has been issued satisfactorily. (Have a look at this case in which the aforementioned HHJ Birss lays into a bunch of ne'er-do-wells who might be referred to as copyright trolls, for their sloppy drafting of letters of claim sent to the alleged infringers. As this was an interesting case it is worth reading about the follow-up hearing a couple of months later.
Anyway back to the main issue. What happens next is largely at the discretion of the complainant, especially if they have deep pockets and are out to make an example of your company. Clearly if you look to settle they will press for as much as they think they can extract from the company. The key here is not to make it easier for the company to go into voluntary liquidation or otherwise cease trading, as there would then be no assets for the complainant to go after, beyond any limited liability of the directors. But if settling is not an option (at least at this stage) then the litigation will proceed to court. The first stage here will be a decision by the judge in charge of the lists how to deal with the case. As I mentioned all copyright cases must heard in the High Court, but the High Court runs its own special version of a county court (currently known as the Patents County Court, but this is due to change shortly when the Crime and Courts Bill becomes law). The PCC handles smaller cases in a more streamlined manner with a cap on the total amount of costs and damages which can be awarded. If the list judge decides to case is too complex or that the amounts involved are too great the case will be heard in the Patents Court of High Court which sits within the Royal Courts of Justice in London (this in contrast to the PCC which can sit in a number of regional courts which have a High Court Registry)
Following listing the court will hold a case management conference to examine issues such as how long the case may last (based on what evidence each side wishes to submit and whether all witnesses will have attend in person to face cross-examination or if their written statements will suffice). The CMC is also the first opportunity to get directions from the court over issues such discovery. A direction is basically an order issued by the court for one or both parties to do something. Discovery means the release of documents requested by one party from the other which they think will assist their case. The court will not sanction 'fishing expeditions' as part of discovery.
There may need to be further CMCs. A new procedure which has been particularly evident in the PCC but now applies in all civil cases, is costs management. This involves the court keeping a close check on the costs which are being run up by both sides. This is too complicated to go into here, but suffice to say that it helps a party decide when to go for settlement rather than continue proceedings in court, irrespective of the merits of their case.
So finally if the court finds against your company, it will hear argument from the complainant's counsel about what remedy is sought. In fact these details will already be known because they should be in the Particulars of Claim, and form part of the listing and CMC process, such that a claim for a trivial amount would be struck out early on, on the grounds of de minimis and a waste of the court's time. There are four basic remedies: an injunction to prevent further infringement in the future; damages or an account of profits; an order for delivery up of all remaining infringing copies, and an order for their destruction if that is appropriate.
An interim injunction can be issued before the full case is heard if the court accepts that the complainant faces continuing financial or other detriment from the alleged copying while the case continues. In practice it is rare for interim injunctions to be granted because any financial damage resulting from sales etc during the court case can be added to the damages/account of profits awarded after judgment. Damages will be a figure assessed by the complainant of what he considers he has lost through the infringement. Typically this could be based on the amount he would earned from licences had they been issued to the defendant. There can sometimes be a element of punitive damages if the infringement has been flagrant or the complainant can show other losses, say to the reputation of his goods or company name. An account of profits is an alternative to damages, and consists of assessing the profits made by the defendants through their infringement. Delivery up means seizure and forfeiture of any remaining infringing copies. Destruction may not always be ordered. For instance some counterfeit clothing has in the past been seized but issued in bond to a charity which undertakes to remove the labels etc and transfer the goods to an overseas territory where the genuine clothing is not sold, as aid to poorer families. Thus some genuine good can come out of an otherwise soul-destroying experience.
I was going finish by saying that is just a brief over-view, but it is far from brief, I fear. Nevertheless I have left out a lot of details. If you company does receive any form of communication from a studio or film production company it is probably a wise move to get legal advice at that early stage, because an incorrect decision at that point could cost the company far more money later on, than the cost of the advice. However I would suggest using firm of solicitors with IP experience as they will understand the system somewhat better than a firm which normally deals with family law or criminal cases.
Last edited by AndyJ on Thu Mar 07, 2013 8:07 am, edited 1 time in total.
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Post by AndyJ » Wed Mar 06, 2013 11:15 pm

Having successfully got that bit up, I'm not going to try editing it as I had intended. Instead here are a couple of references to the CDPA which expand on my comments.
Firstly Sections 96 - 100 deal with remedies available in civil actions: Civil Remedies.
And should your company have the misfortune to be involved in a criminal prosecution here are some more details contained in sections 107 - 110 Offences.
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Post by retrocausality » Thu Mar 07, 2013 10:43 am

Hi AndyJ, I'm just reading through that MediaCAT case.... I'm up to point 23, with wide eyes and a sense of incredulity and morbid curiosity... like watching a train wreck unfolding before my eyes. Fascinating case! :shock: :D

Thanks again for all this info, I'm very very grateful.

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Post by retrocausality » Fri Mar 08, 2013 9:19 am

Sorry I couldn't reply yesterday, my IP address was blocked for spam for some reason. All cleared up now.

I read that whole Media CAT case including the follow up. Crazy stuff!

If they had actually received money from almost 10,000 people, surely they should be made to pay that all back too, possibly even with damages on top for misleading the public into giving them the money?

Seems like they got off lightly, to me.

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Post by AndyJ » Fri Mar 08, 2013 12:34 pm

Hi again Phil,
The Media CAT case was interesting because it effectively signalled the end (as far as the courts are concerned) to that particular business model of so-called 'speculative invoicing'.
There was one further hearing, in April 2011, but that was mainly to sort out costs. The reason the court did not interfere with any earlier monies which Media CAT might have made by this method was firstly it wasn't the issue before the court and secondly because there was no evidence as to how much money might have been raised in the way. In the event the firm of solicitors behind Media CAT - ACS:Law - was wound up and the owner of the firm, Andrew Crossley, was suspended for 2 years by the Law Society's Solicitor's Regulation Authority and ordered to pay £76,326.55 in costs. His firm was also fined £1000 by the Information Commissioner's Office for breaching data protection. It was widely felt that the fine should have been higher, but since the firm had folded, it was probably unrealistic to make the fine bigger. Both Which? and Consumer Focus were instrumental pursuing ACS:Law so no doubt they looked closely into the whether there was any point in taking up the cases of those who had paid up when sent letters of claim. Ultimately, of course, whether the recipients did or didn't pay up was their decision, presumably linked to whether they considered themselves, in fact, guilty of the allegations of infringement.
Consumer Focus returned to the fray this time last year as an intervener in a case called Golden Eye International Ltd v Telefonica UK Ltd [2012] EWHC 723 when the practices of Media CAT and ACS:Law where brought up again (see paragraph 35 of the judgment onwards).

By the way, CopyrightAid has now tweaked the settings for the Forum which, it is hoped, will remove the severity of the spam filtering for 'established' forum members.
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Post by retrocausality » Fri Mar 08, 2013 12:55 pm

You say he was suspended for 2 years by the Law Society's Solicitor's Regulation Authority? Does this completely prevent him from practicing law at all for those 2 years?

Is there a particular qualification or license required to appear in court as a solicitor? Would I, for example, (with only a degree in Music Technology to my name) be allowed to represent our tshirt company if we should ever end up at the wrong end (or even the right end - we have actually found one of our original designs plagiarised by a rival company) of an IP case?

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Post by AndyJ » Fri Mar 08, 2013 5:54 pm

Hi Phil,
Yes, a solicitor (or for that matter a barrister) who is suspended or struck off by his or her professional body may not then carry on what are referred to as 'reserved legal activities'. These include for instance conducting litigation, the right of audience in a court, acting as a notary, conducting probate activities etc. Someone who acted in this way without being qualified would commit a criminal offence under the Legal Services Act 2007. That's not to say they couldn't continue to work within the legal world in some capacity or another.
The other question you asked was about the right of audience. You of course have the absolute right to defend yourself in any court, either criminal or civil, but in the higher courts you would not be permitted to represent your firm, or indeed a friend. You can appear on behalf of someone in a small claims court and in front of a wide range of Tribunals, with the permission of the court or tribunal. This is for the good and obvious reason that someone facing justice in the higher courts (and thus facing greater consequences) deserves to get the very best advocacy on their behalf. The other distinction is that a person authorised to carry out reserved legal activities, and specifically advocacy, is an officer of the court, and thus has a duty to act in the interests of justice, and not just the narrower interests of their client.
The nearest an unqualified person might get to advise and support someone who was not otherwise represented in court would be to act as what is called a 'Mckenzie Friend'. McKenzie Friends are not normally able to address the court, but they can provide advice, moral support and secretarial support to their 'client' with the court's permission. You may remember that when Heather Mills McCartney was divorcing Sir Paul McCartney she sacked her legal team and conducted her own case, with a McKenzie Friend to support her.
As a rule of thumb all barristers have the right of audience in any court or tribunal, solicitors have a right of audience in the lower courts and most tribunals, and in the higher courts if they obtain the necessary qualification. But they are not the only ones. In the move to widen out the practice of the law generally of which the Legal Services Act 2007 was a major part, there have been a number of changes to the rules about who may claim a right of audience. This includes suitably qualified individuals from amongst Patent Attorneys, Trade Mark Attorneys, Officers of HMRC, Legal Executives and several other categories.
As this is straying quite some way from the purpose of this forum, I won't go into too much detail. Instead take a look at this Wikipedia article which unfortunately is fairly out of date, but gives you the gist of how the right of audience works.

Afternote. I should have mentioned that the above description applies to England and Wales; Scotland and Northern Ireland have separate legal systems, with different terminology for certain activities and personalities, and although the details may vary in those jurisdictions, they are broadly similar in principle.
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Post by retrocausality » Mon Mar 11, 2013 9:57 am

AndyJ wrote:but in the higher courts you would not be permitted to represent your firm
Hi Andy, thanks again for the info. I won't dwell on this topic if it's not what the forum's for, I was just interested in the qualifications one would need in order to represent in an IP case.

When reading that MediaCAT case, I saw the legal bills for just a few days in court and associated prep work, and was wondering if money could be saved if we ever found ourselves in such a situation by representing ourselves.

I had been considering doing a distance-learning Postgraduate Diploma in Copyright Law to get a better understanding of copyright matters.

But if I'm reading that Wikipedia article correctly (and a few more Wiki pages down the chain), it's saying that even if I did, I still wouldn't be able to represent our company in the courts without doing a 2nd postgraduate diploma, a "GDL"? (Except small claims courts - but does this include the soon-to-arrive-in-late-2013 small claims IP courts?)?

...and then I'd have to do a BPTC on top and do well enough to be called to the bar (I'm not even sure what this means) if I wanted to represent the firm in higher courts?

Anyway, like I said, I was just interested in finding out what qualifications I would need to be able to represent if the company ever were to find itself in court for an IP case.

I'll get back to strictly copyright discussions if that stuff is pushing past the "way-off-topic" of this forum.

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Post by AndyJ » Mon Mar 11, 2013 11:26 am

Phil,
I applaud your loyalty to your company, but I'm not sure becoming a barrister is actually the solution!
Regrettably you can't just specialise in IP law until you are actually in practice. If you really were interested in getting into the legal services, I would suggest a better route is to become a legal executive. The Chartered Institutue of Legal Executives (CILEX) run distance learning modules which are relatively reasonably priced, which would allow you to qualify, eventually, to represent clients in court. Legal execs tend to specialise in particular areas of law and can in time transfer to either become a solicitor or a barrister, and theoretically, become a judge.
You mentioned the small claims track of the Patents County Court. This is already up and running (since last October) and like the other small claims courts, laymen can represent themselves and others. The only problem is that if a complainant is after a settlement which exceeds the current £5000 upper limit for claims, then the small claims court won't be able to hear the case.
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Post by retrocausality » Wed Mar 13, 2013 3:37 pm

OK, I think I've just about got over the bad news about not being able to represent my company should the worst ever happen. :lol:

I'll get back to the copyright stuff, as I've got a few more questions if you don't mind. :)

I just had my boss on the phone, saying he's been talking to a motorsports photographer / artist who takes photographs of cars and bikes at motorsports events such as Formula 1 Grand Prix races, and then makes paintings out of them which he sells online.

My boss was wanting to know if we'd be OK putting either his photographs or his artwork on T-shirts for us to sell online.

My answer was that the guy must surely have licenses to make and sell his artwork if he's doing it legitimately (otherwise he'd surely be infringing trademarks / passing off by selling it), but that his license might not necessarily cover him for T-shirts.

I said that if he were writing a news report about the race, then an accompanying photo would fall into the "Fair dealing"/"Fair use" category of defense in UK/US law, but if he then made the photo into a tshirt then it would be profiting on the trademark of whichever company's car/bike were the focus of the photo.

Was I correct in this judgement?



Secondly, am I right in thinking there's currently no British law equivalent of the US's state-based "image rights"/"publicity rights"/"privacy rights" laws that prevent use of celebrities' name and image, meaning that companies in Britain can, as long as they take the photo themselves, make tshirts with photos of celebrities on, provided that they don't also contain trademarks of that celebrity?

(e.g. Halliwell v Panini spice girls "Fab Five" unofficial sticker album case)

In Halliwell v. Panini SpA, 4
" the singing group "Spice Girls" applied for an injunction, under the claim of passing off, to prevent Panini from distributing an unauthorized sticker collection, called "The Fab Five," which featured their images.44 The group contended that the public would be misled into believing that it was an authorized collection, because the collection did not contain a disclaimer.45 The court made it quite clear that the plaintiffs were unlikely to succeed at trial.4 The judge reasoned that the absence of the word "unofficial" on the defendant's product would not mislead the public.47 The court then questioned whether a designation of "official" on a product is of any relevance to a purchaser."

http://digitalcommons.lmu.edu/cgi/viewc ... ontext=elr

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Post by AndyJ » Wed Mar 13, 2013 6:24 pm

Phil,
Sorry not to have time to answer this is depth tonight, but take a look at this case which has some of the features you raise:
Irvine v Talksport
This was appealed here and here.
Since UK law doesn't especially protect an individual's personality or image rights, the main weapon celebs have recourse to is the tort of passing off.
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Post by typonaut » Thu Mar 14, 2013 1:02 am

retrocausality wrote: I just had my boss on the phone, saying he's been talking to a motorsports photographer / artist who takes photographs of cars and bikes at motorsports events such as Formula 1 Grand Prix races, and then makes paintings out of them which he sells online.
This is a trade mark or passing off issue, rather than copyright. I think that the copyright defence is probably that any element pictured is incidental to the composition, rather than being there deliberately (rather than your proposal that the defence would be that it is "news" - if that's what you are proposing).

The key issue is whether anyone could claim that the public might be confused as to the origins of the paintings, due to the use of trademarks on the cars themselves. In the instance of the original paintings I think it is unlikely that there would be any confusion.

When one starts reproducing the same paintings on t-shirts/posters/etc the perception may change.

There is a case of a toy maker including the Opel logo on the model of a car, Adam Opel v Autec, which finds that faithful reproduction of a scale model, including the logo of the manufacturer, is not a trade mark infringement.

I think you would have to consider when, or under what circumstances, you could create confusion as to origin in the minds of the public.

Clearly the trade mark holder may use similar images to promote their own marks/products, but that isn't quite the same issue (unless you are copying their designs).
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