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Legal FAQs :: Laurence Kaye
Legal FAQs :: Laurence Kaye
These are a sample of some questions we are regularly asked. Some are quite
detailed, others more general. You can find the answers by clicking on the links
below or via the FAQ index.
Health Warning:-
These FAQs are not intended to be exhaustive and do not constitute or
substitute legal advice, which should be sought on a case by case basis.
Please treat the answers as general information, not legal gospel.
Please remember that the law is constantly changing, so the answers are subject
to change in the light of new legislation or case law.
These FAQs are based on English law.
The Code is available from the 'Guidance & other publications' page of the
Information Commissioner's website at www.dataprotection.gov.uk.
7. Has UK copyright law changed?
Yes. As from 31 October 2003, UK copyright law is updated as a result of the
EU Copyright Directive. Perhaps "tweaking copyright law for the digital age" is
the best way of putting it. The following summary was written by Hugh Jones,
Copyright Counsel, UK Publishers Association, International Association of STM
Publishers.
• New exclusive right over communication to the public – copyright owners
are given a new exclusive right of communication to the public (including
access) via electronic transmission.
• New exception for temporary copying – Internet Service Providers and
telecommunication companies are given a new exemption from copyright
infringement for transient/incidental acts of reproduction which are integral
and essential to the technological process and not themselves of any
economic significance.
• Tighter Fair Dealing exceptions – Research (in Research and Private Study)
must specifically be for a non –commercial purpose, and Fair Dealing
continues to limit private study, and Criticism, Review and News Reporting.
• New "non-commercial" criteria for education and library copying – this
applies now to copying for Instruction and Examination, for Reprographic
copying by educational establishments, and for much library copying not
expressly covered before. Publishers are already talking to librarians about
suitable guidelines.
• Protection for Technical Protection Measures – circumvention of TPMs
remains a copyright infringement, and also a criminal offence for those
who import or manufacture infringing equipment. Exclusive licensees are
given an equal right to take action. Where TPMs prevent lawful access, eg
for Research and Private Study, a notice of complaint may be given where
there is no voluntary measure or agreement already in place. It is hoped,
however, that industry will find a way of arranging such lawful access.
• Protection for Digital Rights Management information - knowingly removing
or altering DRM information without authority may, likewise, be both a civil
infringent or a criminal offence.
• Specific Right of Injunction against Service Providers – The High court is
specifically given the right to grant injunctions against Internet service
Providers, where the ISP has actual knowledge of infringing material on the
relevant site (particularly if the ISP has been given a Notice as envisaged
by the E- Commerce Regulations). It is hoped that a voluntary industry
Code of Practice will add to this soon with a self-regulatory scheme capable
of dealing expeditiously with the majority of infringements outside the
court system.
Conclusion
The Statutory Instrument seems broadly to follow the lines set out in the
Government’s Consultation Paper, and reflects the Government’s expressed
desire to implement the Directive "narrowly". No new exceptions have been
created, except the compulsory exception for temporary copying listed above
(which every member state must now have), and the wording of many existing
exceptions has been tightened up in accordance with "non-commercial"
criteria. A new exception for Visually Impaired People was enacted last year
and is likely to be brought into force at the same time as the S.I.
Although the above summary is a brief initial survey only, the S.I seems on the
whole to be an admirably copyright-friendly piece of legislation, like the
Directive itself, and should do much to bring the UK into line with other
leading copyright nations in the EU and beyond, in the internet age.
8. What are moral rights?
The 'Moral Rights' provisions of The Copyright, Designs & Patents Act 1988
("CDPA 88") were introduced in compliance with the U. K.'S obligations under
the Berne Convention -see Article 6 bis of that Convention. References to
section numbers below are to the relevant sections in the CDPA 88.
There are four moral rights in CDPA 88:
(i) the right of paternity i.e. the right to be identified as the author or, in
the case of a film, as director);
(ii) the right of integrity(i.e. "the right to object to derogatory treatment" of
a work e. g. a translation which "amounts to distortion or mutilation of
the work or is otherwise prejudicial to the honour or reputation of the
author or director;
(iii) the right to prevent 'false attribution' of a work;
(iv) the right to privacy in respect of certain films and photographs.
The right to paternity must be asserted in writing (Section 78).
There are numerous exceptions to both the right of paternity and the right of
integrity. The right of paternity does not apply to employee-created works, nor
where the 'fair dealing' provisions apply nor to works written for publication in
a newspaper, magazine etc.
The right of integrity has similar (but not identical) exceptions -see sections
79 &81 respectively.
It is important to appreciate that 'moral rights' are independent of the author's
economic rights in a copyright work. Thus, in principle, they continue to apply
to the author even after he or she has assigned or licensed the work and apply
even if the author (e. g. as employee) never was the owner of the copyright.
We say "in principle" because the CDPA 88 (unlike the copyright legislation of
most other member states) provides that moral rights do not apply if the
'work' was created by an employee.
The origin of moral rights lies in the continental approach to copyright which
places paramount importance on the rights of the author. Moral rights are
designed to preserve the reputation of the author by preventing acts which
might undermine or even destroy that reputation e. g. making major and
damaging changes to a book when it is converted into a film script.
The rights of paternity, integrity and right of privacy last for the term of
copyright in the work in question. The false attribution right lasts for 20 years
after the person's death.
Moral rights are not assignable but are transmissible. Also, all moral rights can
be waived.
The European Commission may well decide to consider whether the disparities
between member states’ laws on moral rights create actual or potential
barriers to the free movement of goods or services within the Community to a
sufficient extent to warrant a harmonising directive.
9. What is "intellectual property?"
It's just an umbrella (and not very user-friendly!) term to describe a collection
of legal rights. that can only be enforced through legal action – you can't
physically re-possess your copyrights or trade marks. (You can, however, get a
court order to seize illegal copies that bear your copyright or brand if you are
successful in a legal action for intellectual property infringement).
These rights include copyright and similar rights, trade marks, goodwill,
business secrets and know-how, patents and contract rights. In e-business,
customer data is a key asset. This data can be protected through the database
right.
Your intellectual property rights will come into play when you suddenly
discover that someone is using the same, or a very similar, trade mark or logo
to your own; or your confidential business plans or data get into the hands of a
competitor; or counterfeit copies of your branded goods appear on the market.
At that point, enforcing your intellectual property rights becomes the guardian
of your company’s value.
Also, at the time of a float or trade sale, you may find that the investor asks
for an 'IP' audit and valuation to be carried out.
It's precisely at times like these that you want to be sure that your intellectual
property is fully protected.
10.Contracts – why bother?
Faced with innumerable drafts of a contract and pressing deadlines, it can be
tempting to go ahead without getting it finally agreed and signed off.
That's exactly what happened in the recent case between Co-Operative v ICL.
After protracted negotiations, ICL started work on a major IT contract for the
Co-Op before contracts were signed. Towards the end of the project, Co-Op
made complaints of significant bugs and delay and terminated the project.
The Court decided that although there were drafts of the contract, there was
no contract between the parties. No contract meant there could be no claim
against ICL for breach of contract!
So the message is loud and clear – if you want to be able to have remedies
against the supplier if things go wrong, make sure a contract's in place before
things start!
11.What are the top 10 rules for doing business online?
1. Make sure that your content is really yours. If material on your site
has been created by freelancers or a third party design company you will
not own the copyright unless you have secured an assignment of rights
from them. The mere fact that some work has been commissioned and
paid for by you does not give you ownership of the copyright. It is
important therefore to enter into an agreement with any freelancers or
web designers clarifying ownership of the rights in the material that they
prepare.
2. And if your content is somebody else's... If you are using any
copyright material on your site which has been taken from a third party
source, it is important to obtain a clearly drafted licence from the copyright
owner. Such a licence should state the extent of the rights being granted,
whether they are exclusive and how long they will last for.
3. Watch out for distance selling regulations. UK regulations relating to
contracts completed at a distance (which includes consumer transactions
completed over the Internet) means that you must give your customers
certain information about who you are and your products or services
before entering into a contract of sale. With some exceptions, the
regulations will also give consumers a right to return online purchases
within 7 working days and receive a full refund.
4. Create some customer terms. All transactional sites should contain
clear user terms and conditions which comply with any relevant consumer
legislation. The terms and conditions must be brought to each customer’s
attention before they enter into agreements with you to purchase products
(this may impact on site design so it shouldn’t be left until the last minute).
Well-drafted terms and conditions will not only set out the customers'
rights and obligations but will also protect your rights in the site, limit your
liability to the customer and clarify which country's law will apply in the
event of a dispute.
5. ...and a privacy policy. The Data Protection Act 1998 and Regulations
made under it affect all web site owners who are collecting information on
users, whether by customer forms or use of cookies. Most importantly,
customers must be informed of the uses which will be made of any
personal information collected on a site. The best way to do this is through
a clear privacy policy accessible on the site. This will help ensure that your
future use of customer data collected from the site is not illegal.
6. Register your domain names as a trade mark. Unlike domain names,
the owner of a registered trade mark is given a statutory monopoly to use
that mark in relation to certain goods and/or services. This means easier
enforcement of your rights and serves as a notice to any other businesses
thinking of using your name. It is also advisable to check that any name
which you wish to use is not already a trade mark registered to somebody
else.
7. Ensure your access to usage data. When entering into co-branding and
partnership agreements, make sure that both parties are clear regarding
what customer usage data will be collected and which party will own that
data and/or have rights to use it. Otherwise, you may be missing out on a
valuable potential benefit under the deal.
8. ISP Support. Before signing up with an ISP, ensure that the contract
provides for proportionate and acceptable upgrade costs. Some ISP
agreements deal with upgrades as a form of early termination and others
allow the ISP to contractually force an upgrade if bandwidth exceeds a
certain level. These types of obligations should be avoided. Also, look
carefully at your ISP service level commitments. Speak to other users to
hear about their experiences – positive or negative.
9. Remember, offline = online (but beware of the e-specifics). In
general, the laws which apply to your business in the offline world will
apply equally in the online world. However, the nature of the global
delivery medium does of course raise some specific legal issues. In
particular, keep an eye out for the wealth of new legislation this year – for
example the EU E-commerce and Electronic Signatures Directives and the
Electronic Communications Bill in the UK.
10.And it’s more than just the Web. Finally, remember in all your
contracts that you should consider the implications of other delivery media
such as mobile (GPRS, 3G, 4G and beyond) and interactive television (even
if you’re not yet exploiting those media) to ensure that the rights that you
have negotiated relate equally to any future plans you may have.
12.Contracts, contracts, contracts – 10 key deal points
Every contract is unique. A good contract reflects the respective risks and
rewards of the participants who enter into it and caters in way that meets their
respective interests.
You may find it useful to use our checklists. Click here. If nothing else, every
contract needs to deal with the following:
1. Parties. It’s not always obvious who they should be. For example, with a
group of companies it’s important to get the right contracting party. It may
be appropriate to have the parent company contract with an express
reference to its subsidiaries having enforceable rights through the
Contracts (Rights of Third Parties) Act.
2. Term. There are lots of permutations and it’s important to pick the right
one e.g. fixed period; initial period which can be renewed or which
automatically “rolls over” for further periods unless terminated; for an
indefinite period subject to notice of termination.
3. Termination and effect. This is where you have to think about the
divorce at the same time as getting married! But this can often prove to be
one of the most important contract clauses. For example, if software is
involved, does the contract deal with access to source code? Or in the case
of contracts involving other types of intellectual property, does the
contract spell out which rights can be used and by who etc.
4. Sole / exclusive / non-exclusive. If the contract grants rights (e.g. an
appointment of an agent or distributor or a licence to use intellectual
property), it is important to make it clear the basis on which they are
granted. "Sole" means that the party granting the rights can continue to
use those rights but will not permit anyone else to do so. "Exclusive"
means that the party granting the rights cannot itself use those rights nor
can it permit anyone else to do so. The grant of exclusive rights can often
raise competition law questions. "Non-exclusive" means just that – the
party granting the rights can use them and can also permit others to do so.
5. The ££. Need we say more? But there are lots of details: the basis of
calculation; currency; payment terms; payment method; right to audit in
the case of royalties, commissions and other sales-based payments; gross
or not; ex or inc. VAT – the list goes on.
6. Territory. What is the territorial scope. In the case of a contract for the
sale of goods or services via the Internet, there are still ways, contractual
and technical, to limit the geographical scope of the contract.
7. Scope of rights. Make sure the contract is clear about the rights (and
obligations) that each party has under the contract. For example, in the
case of a sales agency contract, does the agent have power to conclude
sales or just to negotiate them?
8. Warranties & indemnities. We’re into "legal boilerplate" country here.
However, iIf you are entering into the contract in reliance on certain key
assumptions (e.g. as regards ownership of an asset, the right to grant
certain rights etc), it is vital that that are mirrored in the contract as
warranties or indemnities. The distinction between a "warranty" (e.g. "I
own the copyright in...") and an indemnity (e.g. "I indemnify you against
third party claims for copyright infringement..") is that breach of a
warranty gives rise to a claim for damages based on losses actually
suffered as a result of the breach. A claim under an indemnity on a "£ for
£" basis.
9. Exclusions & Limitations. The flipside of giving warranties is the desire
on the person giving them to try and exclude their liability for certain
things and to limit it in other areas. This is really about risk apportionment
and is a key part of the contract negotiations. For more detailed
commentary on exclusion and limitation clauses, click here.
10.Governing law & jurisdiction. "Governing law" is the law which applies
to the contract. So if it is English law, it is the rules of English contract law
that are applied to determine the meaning and effect of the contract.
"Jurisdiction" means the courts or other forum (e.g. arbitration) which has
jurisdiction to determine any dispute arising under the contract. The key
message is: make sure the contract contains an express choice of
governing law and jurisdiction.
Please feel free to copy or make available these FAQs without modification in print
or electronic form for non-commercial purposes. If you do so, please include this
disclaimer and copyright wording with attribution. If you want to re-publish or
make the whole or part of these FAQs available in a commercial service or
publication, please contact the author at laurie@laurencekaye.com.