Media & Entertainment Legal Digest: September - October 2019

Broadcasting Regulation

Ofcom rules that studio branding in live feed of cricket coverage was unduly prominent

A TV channel called Hum Masala serving the Pakistani community in the UK and Europe fell foul of the Ofcom Code when it broadcast coverage - via a live feed produced by a third party – of the Pakistan Super League cricket. The studio from which the coverage was presented and analysed included very prominent use of logos for nine products and services, which Ofcom found to have breached Rule 9.5 of its Code against undue prominence. Ofcom distinguished between branding that was present at the sporting venue itself, which may be more acceptable (being entirely outside the broadcaster’s control), and branding “exclusively intended for viewers of the programme” such as in the studio in this case. It was no defence for the UK-based broadcaster to say that the branding in the studio was out of its control because it was part of the third party’s live feed: Ofcom said that such circumstances “do not absolve an Ofcom licensee of its responsibilities to ensure that the content it transmits complies with the Code.” - Read more here (see page 13 of Ofcom Bulletin 387)

Ofcom rules that LBC radio interview failed to signal the existence of a commercial arrangement

A segment of the Shelagh Fogerty weekday afternoon show on LBC radio was devoted to an interview with a BUPA “Clinical Director for Mental Health” about how BUPA was tackling mental health issues, both within its own workforce and also for its insurance clients. A listener complained to Ofcom that the interview sounded prepared and came across as “an advert for BUPA”, and it transpired that there was indeed a commercial arrangement in place between LBC and BUPA for the broadcast of the interview (as part of a series of such paid-for features on newsworthy topics, entitled “Brand A View”). Rule 10.1 of the Ofcom Code permits such commercial arrangements in respect of broadcast radio content provided that the arrangement is appropriately signalled so as to be transparent to listeners. LBC admitted that in this case “due to human error… credits were not included in the documentation provided to the presenter and were therefore not read out on air.” Ofcom therefore concluded that LBC had failed to use appropriate signalling to bring the commercial arrangement to the attention of the listeners, and so were in breach of Rule 10.1. - Read more here (see page 45 of Ofcom Bulletin 388)

Implications of the latest Brexit developments for broadcasters

With the Government’s Withdrawal Bill now “in limbo” while a General Election campaign gets under way, we do at least know that the EU has granted a further extension to the Article 50 deadline for the UK to leave, which has now been pushed back to 31st January 2020. As we approach that date the possibility of a “no deal” Brexit remains, which would bring the challenges of doing without the invaluable “country-of-origin” principles that EU rules offer, simplifying regulatory and copyright compliance for broadcasters. But equally there is the likelihood of further efforts to get the newly elected Parliament to agree a deal (whether the one negotiated by Mr Johnson, or perhaps the new one that Mr Corbyn says that he will try to negotiate with the EU).

As time ticks on, it becomes increasingly likely that the UK will have to implement the revisions recently made at EU level to the Audio-visual Media Services Directive. Member States are obliged to implement these revisions by 19th September 2020, at which point the UK may either be still fully in the EU (if the Article 50 date gets further pushed back), or still treated as such during the “implementation period” of any Withdrawal Agreement (the current Agreement envisages this lasting until at least 31st December 2020). Notable revisions required by the Directive include Video-on-Demand service providers being regulated in the same way as linear broadcasters, the extension of the Directive to cover Video Sharing Platforms, and potential changes to the rules on scheduling of TV ads. - Read more here and here

Copyright and Publishing

Court of Appeal orders retrial in dispute over potential joint-authorship of screenplay

The Court of Appeal has overturned a 2017 ruling of the IP & Enterprise Court that Nicholas Martin was sole author of the screenplay for the film Florence Foster Jenkins (starring Meryl Streep), ordering a retrial of the claims by Julia Kogan – a professional opera singer and former partner of Mr Martin – that she made a substantial contribution to the screenplay and should be treated as joint author for copyright purposes. Although a decision on the copyright in this particular screenplay must await the retrial, the Court of Appeal ruling clarified a number of the factors that must be taken into account whenever assessing whether a contribution to the writing process should result in joint authorship and thus joint ownership of copyright.

These factors include the following: there must be a joint undertaking to create the work, including a “common design” as to its general outline; mere editorial corrections or feedback would not be sufficient; it doesn’t necessarily matter who wielded the pen or keyboard – an authorial contribution can include specific plot and characterisation suggestions that are then fleshed out by a co-author; each co-author must have contributed a minimum element representing their own intellectual creativity; but this is not a major quantitative threshold – the respective ownership shares of joint authors can reflect the size/value of their respective contributions rather than having to be equal. For joint copyright to arise the contributions of the co-authors must be combined into a jointly-produced work: where two co-authors each contribute clearly distinct elements of the work then they will each separately own copyright in their own contribution. - Read more here

EU Advocate General suggests that e-books cannot be resold freely like physical books

There has been a long-standing question-mark over whether digital downloads such as e-books can be freely resold in the same way that second-hand physical books can be. Traditionally, lawyers have put this question in terms of whether the distribution right that comes with copyright has been “exhausted” after the e-book has been first put on the market. The EU Court of Justice has already ruled that for some kinds of software, the distribution right can indeed be exhausted, allowing resale to take place.

But an Advocate General at the EU Court has recently handed down an Opinion which argues that software was a special case (it is governed by its own Directive which has different provisions), and that other copyright-protected digital downloads such as e-books cannot be resold freely in the same way as second-hand physical books.

The Advocate General says that in fact it is wrong to speak of e-books as being “distributed”. Instead, their sale by means of downloading is a “communication to the public” in copyright terms, and that is not a right that can be “exhausted”. The consequence of this would be that someone who purchases and downloads an e-book (and the same argument would apply to downloaded music) is not free to sell the e-book on in the same way that they could a physical book. The EU Court of Justice is still to make its ruling in this case, and will not necessarily follow the Opinion of the Advocate General, so we must still wait to see how this long-standing issue will be resolved. - read more here

IP Enforcement

London retailer convicted both of selling illegal streaming devices and of copyright offence

In a private prosecution brought by the Premier League, assisted by the Federation against Copyright Theft, a London retailer was found guilty of fraud and also of two copyright offences having been caught selling illegal streaming devices that gave unlawful access to subscription channels (including Premier League content) via pirate websites such as beoutQ. It was apparently the first case in which it had been successfully argued that in selling such set top boxes the retailer was also committing the offence of “communicating infringing copies of copyright works to the public”.  - Read more here

EU Court of Justice rules on hosting platform obligations to take down material identical or equivalent to material previously declared unlawful

Although the facts of this case related to defamatory material, the Court’s ruling is in principle equally applicable to IP-infringing material. An Austrian Green Party member was seeking an order against Facebook to take down material from its site that was harmful to her reputation, but Facebook had argued that the order sought would amount to general “monitoring” of content of a type not permitted by the E-Commerce Directive. The EU Court of Justice has ruled that a hosting platform can be ordered: a) to remove or block access to content identical to that which has previously been declared unlawful; and b) to remove or block access to content equivalent to the content previously declared unlawful, providing that the content is “essentially unchanged”, with any differences in wording not requiring individual assessment. The Court also confirmed that such orders can be worldwide in scope. The ruling is seen as important in confirming the potential for such orders to cover equivalent material as well as purely identical material in the context of injunctions against IP infringers. - Read more here

Sports Merchandising and Endorsements

Commercial Court rules in dispute over “matching rights” in Liverpool FC sponsorship and football shirts contract

It is not uncommon for sponsorship/merchandising agreements between football clubs and replica kit manufacturers to include clauses relating to so-called “matching rights”, which are designed to allow the incumbent kit provider under the agreement to match any offer that the club might receive from a third party, and thus to retain the contract. Regular readers of this Digest may recall that we discussed a similar dispute relating to Rangers FC and its licensee in our November-December 2018 edition.

The current dispute was between Liverpool FC and its sponsor and football shirt licensee New Balance Athletics, and resulted from Liverpool having received an attractive offer from Nike to take over the shirt manufacturing and distribution. New Balance tried to make use of the “matching rights” clause in its agreement with Liverpool FC, putting forward an offer by which it claimed to match the Nike terms and thus hoped to keep the business. Liverpool rejected the offer as “contrived and unconsidered”, and argued that it had not been put forward in good faith. The dispute ended up in court, where the judge ultimately sided with the football club. Although it did not think that New Balance had been dishonest or reckless in its purported matching offer, on detailed analysis he felt that they had not (and probably could not) match certain aspects of the Nike offer such as being able to call upon high-profile celebrities to help with marketing. - Read more here

Advertising Standards Authority upholds complaints regarding apparent endorsement by Sir Mo Farah

In an advertising campaign (on the sides of London buses) for its vaping products, Diamond Mist Eliquids combined the eyes and eyebrows of a bald-headed man, with text reading “Mo’s Mad for Menthol.” The advertiser argued in its defence that the model used had a lighter skin tone than Sir Mo, and that it was part of a series of ads each beginning with a different name. But the ASA agreed with complainants that Diamond Mist had misleadingly implied that the athlete Sir Mo Farah had endorsed their product (something that Sir Mo himself took to twitter to deny). Even if, on closer inspection, the image used did not look quite like the athlete, in the fleeting glimpse of the ad that one was likely to get as a bus passed in the street, its combination with the use of the name “Mo” in the text was likely to give consumers a misleading impression. - Read more here and here (includes picture of the ad)