Nov. 2011

– p a g e 1 –

MARKETING and the FUTURE ofINTELLECTUAL PROPERTY RIGHTS

in EU

INTELLECTUAL PROPERTY RIGHTS (IPR)- The Future of Protection of IPR in the EU

The protection of intellectual property rights is a very important topic for marketing, advertising and the media and its regulation is partially discussed very controversially.

Clear independent European rules that provide the largest freedom for creative work as well as fair compensation for intellectual performances are necessary.At the moment, intellectual property rights are mainly protected by national regulations and not by European-wide regula-tions.

The harmonisation in the internal market is mostly important to support the development of European-wide creative in-novations and European performances.In the EU, aspects of IPR are set out in a wide package of different laws and numerous regulations. Currently, the Com-mission and the Parliament are discussing and adapting essential parts of these regulations.

This IAA-EU-Insight provides concrete information on the regulation for IPR in the EU and which adaptations and chang-es are to be expected in the future.

Erich H BuxbaumVice President and Area Director Europe

NOV. 2011

Nov. 2011

– p a g e 2 –

In the face of the rising counterfeiting and piracy, intellectual property rights (IPRs), such as patents, trademarks, designs, copyrights or geographical indications, have recently been subject to numerous, sometimes highly controversial debates in Europe. Protection and enforcement of intellectual prop-erty are crucial for the EU’s ability to compete in the global economy as well as for the creative industries. Copyright and related rights provide stimulation for the creation of and in-vestment in new works and other protected matter (music, films, print media, software, performances, broadcasts, etc.) and their exploitation, thereby contributing to improved com-petitiveness, employment and innovation. Intellectual prop-erty rights are becoming increasingly important for Europe-an inventors, creators and businesses. These rights enable them to prevent unauthorised exploitation of their creations and distinctive signs, or to allow such exploitation in return for compensation.

There is no single law that covers all aspects of industrial property rights in Europe. Instead there is a varied package of laws and numerous regulations. At the moment, intellec-tual property rights are chiefly protected by national rather than EU laws. Defending them in each individual EU country can be complicated and costly and regional legal barriers and uncertainty about regulation in general may increase transac-tion costs and cause market failures. At international level, intellectual property rights are also governed by international conventions under the World Trade Organization (WTO) and the World Intellectual Property Organization (WIPO).

Especially in the light of new technologies, the existing Eu-ropean framework for intellectual property rights has led to many problems that hinder the free movement of goods and services and the EU’s IP enforcement frame-work has not been adapted to the requirements of the new digital environment.

This is why the European Commission wants to modernise and harmonise existing European IPR related rules especially in the digital single market. Therefore, the European Commis-sion launched a wide-ranging Strategy on IPR in May 2011.

This IPR Strategy foresees several key policy actions such as creating a comprehensive framework for copy-right in the digital single market, modernizing and updat-ing the European trademark system or a comprehensive framework for audiovisual works and user-generated content in the digital environment. It also discusses geo-graphical indications (GIs), digital libraries and the en-forcement of IPR at EU external borders.

This insight offers an introduction on what intelligent prop-erty rights are at national and international level and how to apply them. Furthermore, it offers an overview on the current situation and problems at European level relating to IPR is-sues. The future of European IPR in the digital age builds another part of the Insight. Furthermore, you will find explana-tions on what trademarks are and how the European patent system works. Then we proceed to explain the IPR Strategy proposed by the European Commission in May 2011. In this section you will find detailed information on the key policy ac-tions of the IPR strategy that are important for the media and advertising industry.

Intro

Useful Links:IPR Helpline: http://www.ipr-helpdesk.org/frontpageQuery form to submit questions related to IPR in EU funded research programmes

Institutions registering IPR:

Your Europe – Protecting intellectual property: http://ec.europa.eu/youreurope/business/competing-through-innovation/protecting-intellectual-property/index_en.htm

You can find EU level institutions on the page. For National institutions, click on the relevant linked flag.

Innovaccess: http://www.innovaccess.eu/5108.htmlClick on the country. You can access contact information for the office and, by clicking links on the top of the page, infor-mation on procedures to register various IP rights.

European Patent Office: http://www.epo.org/topics/ip-webguide/IPofficesmembers.htmlLink to national offices of all 36 Members of the European Patent Organisation.

Intellectual ProPerty

rights

Nov. 2011

– p a g e 3 –

Intro _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ 2 Insight, Part 1: Advertising Self-Regulation in Europe -

A Short Overview _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ 2

Insight, Part 2: Self-Regulation in EU focused on Online-

Advertising - New Developments _ _ _ _ _ _ _ _ _ _ _ _ _ 2

Short Overview on Advertising Self-Regulation _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ 4 Advertising Self-Regulation Charter _ _ _ _ _ _ _ _ _ _ _ _ _ 4

Definition of Self-Regulation _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ 5

How an Advertising Self-Regulatory System Works _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ 5 Basic idea of self-regulation _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ 5

Structure of self-regulatory systems _ _ _ _ _ _ _ _ _ _ _ _ _ 5

Best Practice Self-Regulation Model _ _ _ _ _ _ _ _ _ _ _ _ 6

Basis of the Code _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ 6

Code Making _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ 6

Interpretation of the Code _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ 6

Complaint Handling _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ 7

Blue Book _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ 7

Copy Advice _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ 8

Self-regulation on specific advertising issues _ _ 9 • Alcohol Advertising _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ 9

• Advertising to Children _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _10

• Food Advertising _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _11

• Car advertising _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _11

• Gambling _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _11

ICC-Code _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ 11 • Key Messages of the Consolidated ICC Code _ _ _ _ _ _ _13

Self Regulation & Online Advertising _ _ _ _ _ _ 14

Online marketing measures that are under fire _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ 14 Online Behavioural Advertising (OBA) _ _ _ _ _ _ _ _ _ _ _ _14

Hidden Internet Advertising _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _14

Targeted Advertising _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _15

Advertising Techniques involving Social Networks _ _ _ _ _15

Advertising based on Consumer Tracking _ _ _ _ _ _ _ _ _15

ICC Self-regulatory Initiatives on Digital Marketing _ _ _ _ _15

Online Behavioural Advertising (OBA) _ _ _ _ _ _ _ _ _ _ _ _15

Online Advertising Self-Regulation _ _ _ _ _ _ 15Online Behavioural Advertising : The OBA Framework _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _16

The Best-Practice Recommendations

on Online Behavioural Advertising _ _ _ _ _ _ _ _ _ _ _ _17

The ICON _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _18

Complaints Handling _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ 19/20

Consumer Control _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _19

Sanctions in the BPR _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _21

New e-Privacy Directive, Cookies & Behavioural Advertising _ _ _ _ _ _ _ _ _ _ _ 22 What are Cookies? _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _23

The Background: e-Privacy Directive _ _ _ _ _ _ _ _ _ _ _ _24

Consequences for the Advertising Industry _ _ _ _ _ _ _ _ _24

Contents of this InsightIntellectual

ProPertyrights

Nov. 2011

– p a g e 4 –

Intellectual property rights (IPR) have been around for cen-turies and often, without our even realising, they affect our daily lives: they protect the technology we use (cars, mobile phones, trains), the food we eat and the music we listen to or the films we watch. IPR comprise industrial property rights, such as patents, trademarks, designs and geographical indi-cations, copyright and rights related to copyright.

Patent protection, for example, is essential for the develop-ment of new groundbreaking drugs or medical equipment. Ever more sophisticated technical devices, such as smart phones or tablet computers, third and future generations of mobile telephony, consumer electronics, more environmen-tally-friendly cars or high-speed trains, rely on thousands of patents.As another example of IPR, the protection of brand equity stimulates investment in the quality of products and servic-es by helping the customer identify the relevant producer of goods or services, particularly in sectors that rely heavily on brands and customers’ brand loyalty. These sectors comprise those for food products, household goods, pharmaceuticals, fashion, sporting ware, cosmetics, consumer electronics, or services offered by the telecommunications, travel, leisure and sports industries as well as the advertising industry.In the agricultural-food sector, the geographical indications and plant variety rights ensure protection of quality prod-ucts and access to authentic products throughout the single market Copyright stimulates the creation of creative content, such as software, books, newspapers and periodicals, scien-tific publications, music, films, photography, visual arts, video games or software.

Intellectual property is the capital that feeds future economy life. Better use of IP portfolios by means of licensing and com-mercial exploitation is central to successful business models and is at the heart of the efforts of the European institutions. The right to intellectual property is recognised as a fundamen-tal right in the Charter of Fundamental Rights (Article 17(2)).

What are Intellectual Property Rights?Intellectual property rights (IPR) cover all forms of commer-cial activities and artistic creations. IPR provide their owners with the means to decide, for a specific and limited time, how their inventions and creations are to be used, reproduced and commercialised. IPR rewards innovation and creativity and promotes the spreading of goods and services. For many industries and sectors, well-managed intellectual property rights are a core element of their business strategy and a key factor for their European and global competitiveness.Intellectual property rights are still chiefly protected by national rather than EU laws.

Companies can protect their intellectual property through:• Industrial Property Rights - patents, utility models, de-signs, trademarks, plant variety rights, topography of integrat-ed circuits and geographical indications - which have to be registered in each individual EU country.Further information: http://ec.europa.eu/internal_market/indprop/index_en.htm

Trademark and design rights may be registered at nation-al or Community level. Community rights are registered by the Office for Harmonisation in the Internal Market (OHIM), based in Alicante (Spain). These rights are exclusive and valid throughout the EU.Further information:National applications in EU countries: http://www.innovaccess.eu/home.htmlOffice for Harmonization in the Internal Market: http://oami.europa.eu/ows/rw/pages/index.en.do

• Copyright - or authors’ rights - covering original literary and artistic works, music, television broadcasting, software, data-bases, advertising creations and multimedia - granted au-tomatically, with no need for formal registration; Copyright also includes related or neighbouring rights such as those of performers, producers of films and sound record-ings, and broadcasters.Further information: http://ec.europa.eu/internal_market/copyright/index_en.htm

• Commercial Strategies - such as trade secrets, know-how, confidentiality agreements or rapid production.Further information: http://www.wipo.int/sme/en/ip_business/trade_secrets/trade_se-crets.htm

The Galaxy of IP Rights

About Intellectual Property Rights (IPR)

Intellectual ProPerty

rights

Nov. 2011

– p a g e 5 –

IPR - Current Situation & Rules in EU

IPR and Creative Industries:

Current Situation and Problems in Europe

1.4 million European SMEs (small and medium-seized en-terprises) operate in the creative industries. IP-based indus-tries represent above average potential for growth and job creation. According to the European Competitiveness Re-port 2010, creative industries account for 3% of employment (2008) and are among the most dynamic sectors in the EU. The number of employees in the creative industries in the EU-27 was 6.7 million in 2008. For the creative industries, IPR is a really important issue in their every-day work. European Competitiveness Report 2010: http://bookshop.europa.eu/en/european-competitiveness-report-2010-pbNBAK10001/

In the last few years, technological change and, in particular, the growing importance of online activities, have completely changed the world in which IPR operate. So far, the EU’s IP enforcement framework has not been adapted to the require-ments of the new digital environment. At the moment, the IPR landscape in the EU is fragmented; licensing transactions are impaired by high costs, complexity and legal uncertainty for creators, users and consumers. This is also one reason why e-commerce has not realised its full potential in the EU. Innovative SMEs struggle to benefit from IPR and develop IPR-based strategies. The circulation of cultural goods and services remains below its potential. The present situation is also responsible for the fact that over the last decade, the counterfeiting and piracy phenomenon has risen to very dangerous dimensions and has become one of the most devastating problems facing world business.The existing framework for intellectual property rights (Direc-tive on Copyright in the Information Society (2001), The Enforcement Directive (2004), The EU legal framework on Trademarks and Designs) has been proven to be not good enough because IPR have only been partially harmonised at the European level. In EU Member States, there are still some IPR-related provisions that hinder the free movement of goods and services, especially in the light of new technology, the con-tinuing rise of the Internet and innovative business models. Despite the borderless (cross-border) nature of the Internet, Europe still remains a patchwork of national online markets. There are cases where Europeans are simply unable to buy copyright-protected works or services electronically across a single digital market.Another example is the current European patent system: once a patent is granted, there is still a need for validation at the Member State level, which is very expensive and complex

EU-wide existing rules on intellectual property rights:

Rules on IPR at the European level

There are three key legislations at European level for intel-lectual property rights.

1. Copyright Directive (2001)

The Copyright Directive (“Directive on the harmonisation of certain aspects of copyright and related rights in the informa-tion society Information Society Directive”) deals with three main areas: reproduction rights, the right of communication and distribution rights.

• Reproduction rights

According to the Copyright Directive, Member States are to provide only the following persons with the exclusive right to authorise or prohibit direct or indirect, temporary or perma-nent reproduction by any means and in any form, in whole or in part:• authors (on the original and copies of their works);• performers (of reproductions of their performances);• phonogram producers (of their phonograms);• producers of the first reproduction of films (in respect of the

original and copies of their films);• broadcasting organisations (of reproductions of their broad-

casts, whether those broadcasts are transmitted by wire or over the air, including by cable or satellite).

Intellectual ProPerty

rights

and a substantial hindrance to innovation in Europe.This is the reason why the existing mix of European and na-tional rules needs to be modernised. Therefore, the European Commission has adopted an IPR Strategy in May 2011, avail-able here: http://ec.europa.eu/internal_market/copyright/docs/ipr_strategy/COM_2011_287_en.pdf

Nov. 2011

– p a g e 6 –

• Right of communication

According to the Copyright Directive, Member States are to provide that only the following persons/ authors have the ex-clusive right to authorise or prohibit any communication to the public of copies of their works, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individu-ally chosen by them:• performers regarding the reproductions of their performan-

ces;• phonogram producers regarding phonograms;• producers of the first reproduction of films, in respect to the

original and copies of their films;• broadcasting organisations, of reproductions of their broad-

casts - regardless of the method of transmission.

• Distribution rights

The Copyright Directive says that only authors have the ex-clusive right of distribution to the public of their works or cop-ies thereof. This distribution right is not valid where the first sale or first other transfer of ownership in the European Com-munity of a copy is made by the rights holder or with his/her consent.

The Copyright Directive does not cover the following areas:the legal protection of computer programs; rental and lend-ing rights and certain rights related to copyright in the field of intellectual property; copyright and related rights applicable to broadcasting of programmes by satellite and cable retrans-mission; the term of protection of copyright and certain re-lated rights; the legal protection of databases.

As the Copyright Directive leaves it up to the Member States to determine the international standards that are applicable to copyright and related rights, every single EU Member State has it own definition of copyright rules. This has led to much confusion and uncertainty. At the moment, the EU is undertaking efforts to harmonise this mix of existing rights to create a common European copyright system.

More Information: http://europa.eu/rapid/pressReleasesAction.do?reference=IP/01/528&format=HTML&aged=1&language=EN&guiLanguage=en

Directive on Copyright in the Information Society (2001): h t t p : / / e u r - l e x . e u r o p a . e u / L e x U r i S e r v / L e x U r i S e r v.do?uri=CELEX:32001L0029:EN:NOT

IPR - Current Situation & Rules in EU

Intellectual ProPerty

rights

2. The Enforcement Directive (2004)

This Directive is an essential piece of legislation in the fight against counterfeiting and piracy. It requires all EU Member States to apply effective, dissuasive and proportionate rem-edies and penalties against those engaged in counterfeiting and piracy and so creates a level playing field for rights hold-ers in the EU. It means that all Member States will have a sim-ilar set of measures, procedures and remedies available for rights holders to defend their intellectual property rights (be they copyright or related rights, trademarks, patents, designs, etc.) if they are infringed upon. It only covers civil measures.The Enforcement Directive (2004): http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:32004L0048R%2801%29:EN:NOTMore Information – Frequently Asked Questions: http://europa.eu/rapid/pressReleasesAction.do?reference=MEMO/03/20&format=HTML&aged=1&language=EN&guiLanguage=en

3. EU legal framework on Trademarks and Designs

National trademark registration in the EU Member States has been harmonised for almost 20 years and a Community trademark was established 15 years ago. In 2001, a single Community system for the protection of industrial designs (trademarks and design) was set up: The Office for Harmoni-sation (OHIM) in Alicante, Spain. The OHIM is the European Union agency responsible for granting and registering trade marks and designs that are valid in all 27 countries of the EU.Homepage of OHIM: http://oami.europa.eu/ows/rw/pages/index.en.do

Nov. 2011

– p a g e 7 –

IPR – International Rules

EU-wide rules on Intellectual Property Rights:Rules on IPR at the International LevelInternational key agreements on IPR are:Paris ConventionThe “Paris Convention for the Protection of Industrial Prop-erty” dates back to 1883 and is one of the oldest intellectual property treaties in the world. The Convention requires its sig-natories to recognise applications for trademarks, designs or patents from other signatory countries in the same way as it recognises applications from its own nationals.Furthermore, the Paris Convention stipulates that once the applicant indeed becomes the owner of a patent, design or trademark, the owner will have the same protection and the same remedies against an infringement as a national own-er. The Convention is administered by the World Intellectual Property Organisation (WIPO), a specialised agency of the UN. The Convention currently has 173 signatory countries, including all EU Member States, China and the United States.Further information: http://www.wipo.int/treaties/en/ip/paris/trt-docs_wo020.html

Berne ConventionThe “Berne Convention for the protection of Literary and Ar-tistic Works” from 1886 is an international agreement that governs the internationalisation of copyright. The Berne Convention requires its signatories to automati-cally recognise the copyright of works of authors from other signatory countries in the same way as it recognises the cop-yright of its own nationals.In addition, the Convention requires the signatories to pro-vide strong minimum standards for copyright law, including the duration of protection. The general rule is that protection must be granted until the expiration of the 50th year after the author’s death. The Convention is also administered by the WIPO and currently has 164 signatory countries, including all EU Member States, China and the United States.Further information: http://www.wipo.int/treaties/en/ip/berne/

TRIPS AgreementThe 1994 “Agreement on Trade Related Aspects of Intellectu-al Property Rights” (TRIPS) introduced for the first time intel-lectual property law, including the provisions of the Paris and the Berne Conventions, into the international trading system. It is administered by the World Trade Organisation (WTO) and sets down minimum protection standards for a number

of intellectual property rights, such as copyright, geographical indications, patents and trademarks. The TRIPS Agreement also lays down certain general prin-ciples applicable to all IPR enforcement procedures and contains provisions on civil and administrative procedures, remedies and provisional measures. It also contains special requirements related to border measures and criminal proce-dures, which specify, in a certain amount of detail, the pro-cedures and remedies that must be available so that rights holders can effectively enforce their rights. The agreement also makes disputes between signatories regarding the re-spect of the TRIPS obligations subject to the WTO’s (World Trade Organisation) dispute settlement procedures. All of the 153 WTO members are members of the TRIPS Agreement and this includes all EU Member States, the United States and China.http://www.wto.org/english/tratop_e/trips_e/t_agm0_e.htm

WIPO Copyright TreatyIn the light of the rise of information technology, this Treaty from 1996 provides additional protection for copyright as it covers on-demand, interactive communication through the Internet. It forms a special agreement under the 1886 Berne Convention and ensures that computer programmes are pro-tected as literary works as well as the arrangement and selec-tion of databases. The WIPO Copyright Treaty also enables authors to have control over the rental and distribution of their works, prohib-its the circumvention of technological measures for the pro-tection of works and the unauthorized modification of rights management information contained in works. It entered into force in 2002. There are 89 signatory countries, including all EU Member States, China and the United States.Further information: http://www.wipo.int/treaties/en/ip/wct/trt-docs_wo033.html

In the light of these international agreements, the EU will con-tinue to work in international fora such as the WIPO and the WTO to see that IPR standards re respected by third coun-tries. Furthermore, the EU is currently negotiating IPR provi-sions in its bilateral trade agreements and works closely at a technical level with its trading partners on IPR issues. Developing and emerging countries are particularly vulner-able to activities infringing IPR and are sometimes used by complex criminal networks as manufacturing and distribution bases. The EU conducts “political dialogues” on IP issues with the authorities of certain third countries (usually involving European industry), and/or runs technical co-operation pro-grammes intended to help enhance IPR.

Intellectual ProPerty

rights

Nov. 2011

– p a g e 8 –

Europe’s new Strategy for the Future of IPR in the Digital Age

The IPR Strategy- A Single Market for Intellectual Property Rights

To review the legal framework in which IPR operate, the Eu-ropean Commission proposed a wide-ranging strategy – ‘A Single Market for Intellectual Property Rights’ (IPR Strate-gy) in May 2011. The IPR Strategy covers all forms of IP protection, such as patents, designs, trademarks and copyright as well as possible rights enforcement prac-tices or proposals. The IPR Strategy is complementary to and an essential element of the Europe 2020 Strategy, the Single Market Act and the Digital Agenda for Europe.

Its objective is to enable inventors, creators, users and con-sumers to adapt to the new circumstances and to enhance new business opportunities. The new rules will strike the right balance between promoting creation and innovation, in part by ensuring reward and investment for creators and, on the other hand, promoting the widest possible access to goods and services protected by IPR. Getting this bal-ance right will make a real difference to businesses (from the individual artist working alone to the big pharmaceutical companies) by encouraging investment in innovation. This will benefit EU growth and competitiveness, which is deliv-ered through the single market. Consumers will benefit from wider and easier access to information and cultural content, for example online music. The IPR Strategy is an overall strategy and deals with many issues to ensure IPR are covered comprehensively - from the patent a business needs to protect an invention to tack-ling the misuse of such inventions which will strengthen ac-tion on counterfeiting and piracy. One of its main intentions is to create a comprehensive framework for copyright in the digital single market.It also deals with proposals for modernizing and updating the European trademark system and with problems result-ing from breaches of trade secrets. Furthermore, the strat-egy also discusses geographical indications (GIs), digital libraries and the enforcement of IPR at EU external borders. Other relevant issues are audiovisual works and user-gen-erated content in the digital environment.IPR Strategy:http://ec.europa.eu/internal_market/copyright/docs/ipr_strat-egy/COM_2011_287_en.pdf

The IPR Strategy sets out a series of short- and long-term key policy actions in various areas that are important for media and the advertising industry which include the following topics:

> Creation of a Comprehensive Framework for > Copyright in the Digital Single Market

The Internet is borderless, but online markets in the EU are still fragmented by multiple barriers. Europe is still a patch-work of national online markets and there are cases when Europeans are unable to buy copyright protected works or services electronically across a digital single market.Authors and other creators expect a fair return for the use of their work, be it books, newspaper articles, sound recordings, performances, films or photographs. This is also true for pub-lishers and producers who provide investments to produce and disseminate creative works. The European Commission is of the opinion that the potential exists to increase authors’ and creators’ returns if a proper copyright environment facili-tates the licensing and the dissemination of works in a digital single market.

Next Steps

Therefore, in this area, the European Commission aims to- reform copyright in the internal market (in the

form of ”enabling legislation”)- create a European framework for online copy-

right licensing (with introducing modern licensing technology)

- introduce pan-European licensing and- introduce multi-territorial licensing- create a European Copyright Code: starting in

2012, the European Commission will hold discus-sions with stakeholders and report back if a Eu-ropean Copyright Code should be developed and introduced.

This, says the EU Commission, could encompass a comprehensive codification of the present body of EU copyright directives in order to harmonise and con-solidate the entitlements provided by copyright and related rights at the EU level. This will also allow an examination of whether the exceptions and limi-tations to copyright, as granted by the Copyright Directive (2001), would need to be updated.

Europe’s new Strategy for the Future of IPR in the Digital Age

Intellectual ProPerty

rights

Nov. 2011

– p a g e 9 –

> Review of the > IPR Enforcement Directive (2004)

The European Commission published a report on the applica-tion of the IPR Enforcement Directive in December 2010. This report confirmed the need to strengthen the existing legisla-tive framework for enforcement and to supplement this with voluntary arrangements (a self-regulatory approach) between stakeholders.Furthermore, a public hearing held on the Enforcement Direc-tive in June 2011 shows that the challenge lays in integrating IPR enforcement into the digital environment.

Further information: http://ec.europa.eu/internal_market/iprenforcement/docs/confer-ence20110607/hearing-report_en.pdf

Report on the application of the IPR Enforcement Directive (2010): http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=COM:2010:0779:FIN:EN:HTML

Next Steps

In Spring 2012 the European Commission intends to review the IPR Enforcement Directive (2004) aimed at creating a framework allowing, in particular, more effective combating of IPR infringements via the Internet at their source.Any changes to the IPR Enforcement Directive shall be directed toward fostering cooperation of inter-mediaries, such as internet service providers, while being compatible with the goals of broad-band poli- cies and without prejudicing t h e interests of end consumers.

At the same time, the EU

Europe’s new Strategy for the Future of IPR in the Digital Age

Intellectual ProPerty

rights

What is theIPR Enforcement Directive?

The “Directive on the enforcement of intellectual property rights such as copyright and related rights, trademarks, de-signs or patents” (IPR Enforcement Directive in short) was adopted in April 2004.The Directive requires all European Member States to ap-ply effective, scaring and proportionate remedies and pen-alties against those engaged in counterfeiting and piracy and so creates a level playing field for rights holders in the EU. It means that all Member States will have a similar set of measures, procedures and remedies available for rights holders to defend their intellectual property rights (be they copyright or related rights, trademarks, patents, designs, etc) if they are infringed upon.

More information on the “IPR Enforcement Directive” (2004): http://europa.eu/rapid/pressReleasesAction.do?reference=IP/04/540&format=HTML&aged=1&language=EN&guiLanguage=en“Directive on the enforcement of intellectual property rights” (2004): http://eur-lex.europa.eu/LexUriServ/LexUriS-erv.do?uri=CELEX:32004L0048R%2801%29:EN:NOT

Creative and Media Business Alliance ...... responses to the European Commission’s application report on the Directive on Enforcement of Intellectual Property Rights

The Creative and Media Business Alliance (CMBA) is an informal grouping of Europe’s top media and creative businesses and their associations. The CMBA was launched in 2004 to speak with one voice and call upon the EU to fully acknowledge the importance of our sector in efforts to foster innovation, growth and employment. The creativity we finance, produce and market is the soul of the Knowledge Society. http://www.cmba-alliance.eu/about.htm

Find here the opinion of the European Assoziations of Media and Advertis-ing represented by CMBA regarding the Draft of the EU IPR Enforcement

Directive: http://www.eaca.be/_upload/documents/papers/CMBA%20response%20to%20the%20Enforcement%20Report_12%20April%202011%20Final.pdf

Commission will continue its efforts (on the basis of the “Memorandum of Understanding” signed be-tween stakeholders in 2011) to explore to what ex-tent, in particular, the sale of counterfeit goods over the Internet can be reduced through volun-tary measures, involving the stakeholders most concerned by this phenomenon (right holders, in-ternet platforms and consumers).

Memorandum of Understanding on the sale of Coun-terfeit Goods over the Internet (May 2011): http://ec.europa.eu/internal_market/iprenforcement/docs/memorandum_04052011_en.pdf

Nov. 2011

– p a g e 1 0 –

> Audiovisual Works

In general, the economic rights to an audiovisual work are transferred from the contributors (authors, performers) to the producer in exchange for an upfront payment, by law or by contract.

Furthermore, national rules on transfers and assignments of rights diverge, as do those on legal succession. The scope of the transfer of rights also differs in Member States.For example, the French law on audiovisual productions is based on the assumption that all economic rights to a film have been transferred to the producer, while in Austria or Italy, the producer is the original owner of all cinematographic ex-ploitation rights. In the UK, the principal director is presumed to be the film’s original author and the rights are transferred to the producer under the “works for hire” doctrine, which pre-supposes that the director is employed by the producer. Other Member States such as Belgium, Denmark, Finland, Greece, Portugal, Sweden or the Netherlands also provide for pre-sumptions of various scopes.This patchwork of different approaches across the EU is con-sidered by some to pose a challenge to the licensing of audio-visual works within the European Union, making it complex and time consuming.

The Single Market Act has already emphasised that in the Internet age, collective management must be able to evolve toward European models that facilitate licences covering several territories. In addition, and as set out in the Digital Agenda for Europe, the EU Commission will report by 2012 on the need for additional measures, beyond the facilitation of collective rights management, allowing EU citizens, online content services providers and rights holders to benefit from the full potential of the digital single market, including meas-ures to promote cross-border and pan-European licences.

Single Market Act (April 2011): http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=COM:2011:0206:FIN:EN:HTML

To address these issues, the European Commission has launched a “Green Paper on the online distribution of audio-visual works” and started a consultation on online distribution of audiovisual works in June 2011 to get the conditions right for smooth, easy and technologically neutral solutions for cross-border and pan-European licensing in the audiovisual sector.

The Green Paper and the consultation are intended to contrib-ute to the development of a digital single market by launching a debate specifically on the opportunities and challenges of the online distribution of audiovisual works.

Next Steps

All interested parties are invited to comment on the ideas raised in this Green Paper, including by re-sponding to the specific questions listed.The consultaion closed on November 18, 2011.The consultation is available at:http://ec.europa.eu/internal_market/consultations/2011/audiovisual_en.htm

The Commission intends to launch a report in 2012 on the outcome of the consultation.

Press release on this issue: http://europa.eu/rapid/pressReleasesAction.do?reference=IP/11/868&format=HTML&aged=0&language=EN&guiLanguage=en

FAQs on the issue: http://europa.eu/rapid/pressRe-leasesAction.do?reference=MEMO/11/502&format=HTML&aged=0&language=EN&guiLanguage=en

Green Paper on the online distribution of audiovis-ual works (2011): http://ec.europa.eu/internal_market/consultations/docs/2011/audiovisual/green_paper_COM2011_427_en.pdf

Europe’s new Strategy for the Future of IPR in the Digital Age

Intellectual ProPerty

rights

Nov. 2011

– p a g e 1 1 –

Music Copyright:

Term of protection for performers and sound recordings extended to 70 years

The “Directive on the term of protection of copyright and certain related rights” amends the Directive of the same name of 2006 and was adopted on September 12, 2011. It extends the term of protection for performers and sound recordings to 70 years. The aim of this directive is to bring performers’ protection more in line with that already given to authors – 70 years after their death.

The directive also contains accompanying measures which aim specifically to help performers. The “use it or lose it” clauses that will now have to be included in the contracts linking performers to their record companies will allow per-formers to get their rights back if the record producer does not market the sound recording during the extended period. In this way, the performer will be able to either find another record producer willing to sell his/her music or do it himself/herself, something that is easily possible via the Internet. If neither the performer nor the producer wishes to market the recording, the recording would no longer be protected. In this way, the term extension would avoid “locking up” those recordings that are not commercially interesting. Finally, record companies will have to set up a fund into which they will have to pay 20% of their revenues earned during the extended period. The money from this fund will be destined to help session musicians.“Directive on the term of protection of copyright and certain related rights” (2011): http://ec.europa.eu/internal_market/copyright/docs/term/2011_directive_en.pdf

Positions:

The European Consumers’ Organisation (BEUC), com-mented: “EU consumers will have to wait 20 years more than previously for recordings to enter the public domain. This decision serves a select few famous older artists and will prompt more and higher licence fees for buyers. It fur-ther fossilises European copyright law.”

“The extension ignores the needs of creative artists and buyers on the modern online music market. Artists of course need fair protection and remuneration, but lengthening cop-yright terms simply stunts innovation. This will serve to line the pockets of Europe’s major record companies and pro-ducers, but not the average performer, who constitute 80% of the sector,” BEUC added.

EU Commissioner for Internal Market and Servic-es, Michel Barnier, on the adoption of the copyright extension for performers: “(The) decision to increase the term of protection for musicians’ copyright from 50 to 70 years will make a real difference for performers. With increasing life expectancy, the previous 50-year protection term was clearly insufficient. Despite the fact that their music and songs are still popular, today many per-formers are left without income when they are old-er. The increase to a 70-year term means perform-ers can still receive remuneration when their music is played once they have retired. (The) agreement gives performers the recognition and reward they justly deserve for their creative contributions to so-ciety and stimulates creation for future generations of music fans”.

Background

The former “Directive on the term of protection of copyright and certain related rights” dates back to 2006 and harmo-nises the terms of protection of copyright and neighbouring rights. The 2006 Directive establishes a total harmonisation of the period of protection for each type of work and each related right in the Member States – e.g. 70 years after the death of the author for works and 50 years after the event setting the time running for neighbouring rights. Further-more, it deals with other issues, such as the protection of previously unpublished works, of critical and scientific publi-cations and of photographic works.

“Directive on the term of protection of copyright and certain related rights” (2006): http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:32006L0116:EN:NOT

Further information and Frequently Asked questions:http://ec.europa.eu/internal_market/copyright/term-protection/term-protection_en.htm

Intellectual ProPerty

rights

LATEST INFO

Nov. 2011

– p a g e 1 2 –

> User-Generated Content

In light of the fast development of social networking and social media sites, which are dependent upon the creation and up-load of online content by end-users (blogs, podcasts, posts, wikis, mash-ups, file and video sharing), specific attention will be given to possible approaches to deal with so-called user-created or user-generated content (UGC). This issue had been raised in the Commission’s “Green Paper on Copyright in the Knowledge Economy” (2008) and the following Com-munication of the same name (2009). The conclusion was that further study on the subject was and still is necessary. The European Commission advocates responsible use while ensuring that users enjoy the full benefits of new interactive online services.

There is a growing realisation that solutions are needed to make it easier and affordable for end-users to use third-party copyright protected content in their own works. Users who integrate copyright-protected materials in their own creations that are uploaded on the Internet must have the possibility of using a simple and efficient permissions system. This is particularly pertinent in the case of “amateur” users whose UGC is created for non-commercial purposes and yet who face infringement proceedings if they upload material without the rights holders’ consent. More information on the „Green Paper on Copyright in the Knowledge Economy” (2008): http://europa.eu/legislation_summaries/information_society/data_protection/mi0008_en.htm

More information on the „Communication on Copyright in the Knowledge Economy” (2009): http://europa.eu/legislation_summaries/information_society/data_protection/mi0045_en.htm

Next Steps

The EU Commission will explore the issue further in the second half of 2012, including via contacts with all interested parties, notably in the context of the above mentioned dialogue with stakeholders, in order to strike a balance between the rights of con-tent creators and the need to take account of new forms of expression.

Europe’s new Strategy for the Future of IPR in the Digital Age

Intellectual ProPerty

rights

> Geographical Indications (GIs)

GIs secure a link between a product’s quality and its geo-graphical origin. However, there is currently no such system available at the EU level for the protection of non-agricultural products (such as Carrara marble or Solingen knives). This leads to an varying playing field in the Single Market, which allows for niche marketing, brand development and reputa-tion-based marketing.

Next Steps

The European Commission will carry out an in-depth analysis of the existing legal framework in the Member States as well as the potential eco-nomic impact of protection for non-agricultural GIs in the second half 2012.Depending on the outcome of an impact assessment, these could eventually be followed up by legislative proposals.

Nov. 2011

– p a g e 1 3 –

What is a Trademark?

Legally speaking, a trademark is a sign that serves to distin-guish the goods and services of one organisation from those of another.Trademarks are words, logos, devices or other distinctive fea-tures that can be represented graphically. They can consist of, for example, the shape of goods, their packaging, sounds and smells.

Functions of a Trademark

A trademark has three esential functions:• it identifies the origin of

goods and services• it guarantees consistent

quality by showing an or-ganisation’s commitment to its users and consumers

• it is a form of communication, a basis for publicity and ad-vertising.

A trademark can become one of the most important assets of a company.

Trademark registration is one of the strongest ways to de-fend a brand; a way to ensure that no one else uses it. If you do not register your trademark, others may do so and acquire your rights to distinguish their goods and services.Trademarks influence con-sumer decisions every day. A strong trademark creates an identity, builds trust, distin-guishes you from the competi-tion, and makes communica-tion between seller and buyer simpler. Because so much

money and time is often invest-ed in a trademark, it is worth paying something to protect it from misuse. More informa-tion on trademarks: http://oami.europa.eu/ows/rw/pages/CTM/trademark.en.do

What is the Community Trademark (CTM) of the Eu-ropean Union?

A CTM is a trademark that is valid across the European Union, and is registered with OHIM (Office for Harmonisa-tion in the Internal Market) in accordance with the provisions of the CTM Regulations.

Scope and Validity

A CTM is valid in the European Union as a whole. It is not pos-sible to limit the geographic scope of protection to certain Member States.A CTM is valid for 10 years and can be renewed indefinitely for periods of ten years.

Level of Protection

A CTM confers on its proprie-tor an exclusive right to use the trade mark and to prevent third parties to use, without consent, the same or a similar mark for identical or similar goods and/or services as those protected by the CTM. More information on CTM at the homepage of OHIM: http://oami.europa.eu/ows/rw/pages/CTM/communityTrade-Mark/communityTradeMark.en.do

Europe’s new Strategy for the Future of IPR in the Digital Age

Intellectual ProPerty

rights

> Modernisation of the > Trademark System in Europe

While trademark registration in the EU has been har-monised in Member States for almost 20 years and the Community Trademark (CTM) was established 15 years ago, there is an increasing demand for more streamlined, effective and consistent registration sys-tems.

Next Steps

The European Commission intends to present proposals in the last quarter of 2011 to mod-ernise the trademark system both at the EU and national levels and adapt it to the Internet era.Particular focus will be on- simplifying and speeding up the registra-

tion procedure (taking into account the re-quirements of the electronic age)

- increasing legal certainty, such as by re-defining what may constitute a trademark

- clarifying the scope of trademark rights (such as regards goods in various situations throughout the EU customs territory)

- providing a framework for increased co-operation between the Office for Harmoni-sation in the Internal Market (OHIM) at Ali-cante and national trademark offices

- making the Directive more coherent with the Regulation, in particular, by further har-monising the legal grounds of refusal for reg-istration at European level,

- harmonising the grounds for refusal and for coexistence under both the Directive and the Regulation to rules on geographical indications.

These are the two applicable rules on the trademark-system in the EU that are currently under review:Directive relating to trademarks (2008): http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2008:299:0025:0033:EN:PDF

Regulation on the Community trademark (2009): http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2009:078:0001:0042:EN:PDF

Nov. 2011

– p a g e 1 4 –

> Reinforce the Fight against IPR Violations> Counterfeiting and Piracy

Products and services based on IPR can be difficult and ex-pensive to create but cheap to replicate and reproduce. Or-ganised and large-scale infringement of IPR has become a global phenomenon and is causing worldwide concern. The European Commission is set to intensify its efforts in fighting counterfeiting and piracy.

Next Steps

Firstly, the European Commission tabled a regulation in May 2011 to reinforce the “European Observatory on Counterfeiting and Piracy”, which it launched in 2009, by entrusting its tasks to the European “Office for Harmonisation in the Internal Market” (OHIM). This will allow the Observatory to benefit from OHIM’s in-tellectual property expertise and strong record of de-livery in trademarks and designs. The regulation now passes to the European Parliament and the Council for consideration.

The OHIM in Alicante, Spain, is the European Un-ion agency responsible for granting and registering trademarks and designs that are valid in all 27 coun-tries of the EU.Homepage of OHIM: http://oami.europa.eu/ows/rw/pages/index.en.do

Regulation to reinforce the “European Observatory on Counterfeiting and Piracy” (May 2011): http://ec.europa.eu/internal_market/iprenforcement/docs/observatory/com_2011_288_en.pdf

Secondly, in Spring 2012, the European Commis-sion will propose to revise the “Directive on the enforcement of intellectual property rights” (IPR Enforcement Directive). The Directive provides for civil law measures allowing rights holders to enforce their intellectual property rights, but should be adapt-ed, in particular to meet the specific challenges of the digital environment. For more detail on the IPR Enforcement Directive please see the chapter “IPR Enforcement Directive”.

Europe’s new Strategy for the Future of IPR in the Digital Age

Intellectual ProPerty

rights

European Observatory on Counterfeiting and Piracy

The “European Observatory on Counterfeiting and Piracy” is coordinated by the European Commission and brings together representatives from Member States adminis-trations, private industry and consumer organisations to improve efforts to combat a rising problem that threatens consumer health and safety, business, jobs and national and local economies. The Observatory is a pan-European platform that will col-lect key data related to counterfeiting and piracy; it will also identify and share best practices, and help to raise public awareness.More information on the website of the European Observa-tory on Counterfeiting and Piracy: http://ec.europa.eu/inter-nal_market/iprenforcement/index_en.htm

Nov. 2011

– p a g e 1 5 –

What is a Patent?

A patent protects new inventions. It can cover how things work, what they do, what they are made of, and how they are made. It gives the owner the right to prevent others from making, using or selling the invention without permission.

An inventor - an individual or a company or an institution - can apply for a patent. To qualify as new, it is important that the in-vention is not already in use or in the public domain before the date on which the patent application is filed. Patents encourage companies to make the necessary invest-ment for innovation. There would be little incentive otherwise for individuals and companies to devote the necessary resourc-es to research and development.

Exclusive Rights of a PatentIn general, the exclusive rights of a patent owner to exploit the invention commercially last for a maximum of 20 years, subject to the payment of regular renewal fees. Anyone else wishing to use the invention while it is still patented must request authorisation from the patent holder and may have to pay a licence fee. In return for this exclusive right, the details of how the invention works are published. In this way, the scientific or technical know-how that made the invention possible is made public, allowing others to fur-ther their own research. As a general rule, the patent renewal fees increase over time. This means that only the most commercially viable patents are maintained for the full period. At the end of the 20 years, the patent lapses.

How do you Currently Apply for a Patent in Europe?Today, inventions can be protected in Europe either by national

patents or European patents granted centrally by the European Patent Office (EPO). Member States have their own patent offices that deal with appli-cations for national patents. The protection conferred by a national patent is limited to the territory of the State concerned. If the applicant chooses to apply for a European patent, the ap-plication will be dealt with by the EPO, based in Munich. The EPO provides a single procedure for granting patents in Europe. It is an intergovernmental organisation comprising 38 members (27 EU Member States + 11 other European countries). It was established in 1973 following the signature of the European Patent Convention (EPC). On the basis of one single patent application processed in one of the three official languages of the EPO (English, French and German), inventors and businesses can obtain a European patent.

If the EPO grants a European patent, the full text of the patent, known as the specification, is published in the official language of the EPO chosen by the applicant as the language of the proceed-ings. At this stage, the applicant must also provide a translation of the part of the patent that defines the scope of protection - the claims – into the other two official EPO languages.

However, this is not enough for the European patent to take effect in most Contracting States to the EPC. The patent proprietor must choose the countries in which he/she wishes to have protection and validate the European patent in these states. A number of dif-ferent validation requirements may apply. For example, the patent proprietor may have to pay a fee to the national patent office, com-ply with various formal requirements and provide a translation of the patent to the official language of the State.

The European Patent Convention (EPC): http://www.epo.org/law-practice/legal-texts/epc.htmlWebsite of the European Patent Office (EPO): http://www.epo.org/

Europe’s new Strategy for the Future of IPR in the Digital Age

Intellectual ProPerty

rights

> Reform of the > Patent System in Europe

The current European patent system is complex, fragmented and costly: to get a European patent that is valid in only 13 Member States can cost up to ten times more than a US pat-ent. (To date, if a small and medium-sized enterprise (SME) wants to obtain or maintain patent protection for all 27 EU Member States for 20 years, the company would, over this period, need to spend an estimated EUR 200,000. A large part of these costs consists of translation costs and costs re-sulting from necessary transactions with national offices.)The European Commission already launched proposals in April 2011 for a unitary patent protection under enhanced cooperation. For further information please see the press release “Commission proposes unitary patent protection to boost research and innovation“, April 2011: http://europa.eu/rapid/pressReleasesAction.do?reference=IP/11/470&format=HTML&aged=0&language=EN&guiLanguage=en

Next Steps

In the meanwhile, work continues on proposals for - A unitary patent protection There should be a unitary patent protection system

so inventors need to register only one patent cover-ing most EU countries to reduce costs and admin-istrative burdens.

- A unitary European patents court system There should be a unitary European patents court

system to reduce proceedings costs and to resolve patent disputes, whilst increasing legal certainty for users.

- Development of machine translation systems The development of a machine translation sys-

tem should help reduce high translation costs and make patent protection affordable for companies of all sizes.

Further Information on the website ”Patents”: http://ec.europa.eu/internal_market/indprop/patent/index_en.htm

Nov. 2011

– p a g e 1 6 –

> Trade Secrets

Trade secrets are valuable immaterial property holdings of a company such as a technology, a business or marketing strategy, a data compilation (for example, a customer list) or a recipe. The legal regimes in the European Member States and the level of protection granted throughout the EU differ signifi-cantly.A number of Member States have specific civil law provisions on trade secrets: Bulgaria, Czech Republic, Denmark, Es-tonia, Germany, Italy, Lithuania, Poland, Portugal, Slovakia, Slovenia, Spain, and Sweden. Some of these additionally provide for criminal sanctions.But a significant number of Member States do not have any specific provisions of civil law on trade secrets: Belgium, Cy-prus, United Kingdom, Ireland, Finland, Luxembourg, Malta, the Netherlands, Romania, and France (although the French IP Code regulates some aspects of it).

Trade secrets can nevertheless be protected, at least in part, by other means, such as a general clause of prohibition of unfair competition, tort law, contract law, labour law and crimi-nal law.The significant differences in national laws on the nature and scope of trade secrets protection, as well as the avail-able means of redress and respective remedies, certainly result in different levels of protection with the consequence that, depending on their location, some companies are better equipped than others to face the challenge of an information based economy. In recent years, trade secrets have become increasingly vulnerable to espionage attacks from the out-side, in particular due to enhanced data exchange and use of the Internet, and they are also more and more threatened from the inside of the company.However, there are also situations where trade secrets, under reference to critical information, are withheld, thereby hinder-ing innovation and technical developments by competitors.

Considering the complexity of this issue and its various impli-cations, the European Commission will pursue its reflection and gather comprehensive evidence before taking a position on a possible way forward.

> Counterfeits (so-called ‘Parasitic Copies’)

Another area of interest is the protection against so-called ‘parasitic copies’.

Parasitic copies or ‘look-alikes’ are designed to resemble ex-isting products of well established brands while maintaining certain differences that prevent them from qualifying as coun-terfeits. They may confuse consumers who either do not pay much attention while shopping or who do not know the brand well enough to recognise the differences.This phenomenon is also dealt with by Member States using different concepts and providing different levels of protection. Thus, while some Member States have specific provisions on parasitic copying under unfair competition law (Austria, Germany, Czech Republic, Spain), in some others parasitic copying is dealt with under a catch-all or general clause of prohibition of unfair competition (Belgium, Denmark, Finland). Other Member States’ laws do not contain any provisions on unfair competition applicable to parasitic copying and such matters are dealt with by the Civil Code, either in specific provisions (Italy), or by the provisions generally applicable to tort (France, The Netherlands). Finally, in the United Kingdom there is no law on unfair competition, and there are no spe-cific provisions on parasitic copying: rather the tort of passing off must be used. For this reason, the effectiveness of the protection varies considerably.

Next Stepson Trade Secrets ans Counterfeits

Taking these facts into account, the European Com-mission will submit a report at the end of 2012. This report will investigate the economic impact of the current fragmentation of the legal framework in-cluding the protection of trade secrets and other prac-tices of “competing at the edge of the law” (such as parasitic copies). This work will include a comprehen-sive external study and a stakeholder consultation to examine the actual economic and societal impact of these practices. It will also assess the economic ben-efits that would result from an EU-wide approach in these areas.

Europe’s new Strategy for the Future of IPR in the Digital Age

Intellectual ProPerty

rights

Nov. 2011

– p a g e 1 7 –

> IPR Enforcement by > Customs

Customs supervise all trade crossing EU external borders: they carry out controls for many purposes and have an es-sential role in fighting the trade in IPR infringing goods.The figures published by the European Commission on na-tional customs activities show that the number of registered cases of goods suspected of infringing on IPR rose from 26,704 in 2005 to 43,572 in 2009, an increase of more than 60 % in five years.http://ec.europa.eu/taxation_customs/customs/customs_con-trols/counterfeit_piracy/statistics/

Next Steps

As part of the IPR strategy, the European Commis-sion will also propose a new customs regulation, to further reinforce the legal framework for cus-toms actions. The proposal also aims to tackle the trade in small consignments of counterfeit goods sent by post as the overwhelming majority of these goods results from Internet sales.

Europe’s new Strategy for the Future of IPR in the Digital Age

Intellectual ProPerty

rights

> Digital Libraries

The creation of European digital libraries that preserve and distribute Europe’s rich cultural and intellectual heritage is key to the development of the knowledge economy. To facilitate this, the European Commission is also tabling a legislative proposal that will enable the digitisation and online availability of so-called “orphan works” (works like books and newspaper or magazine articles that are still protected by copyright but where the rights holders are not known or can-not be located to obtain copyright permissions).More information on orphan works: http://europa.eu/rapid/pressReleasesAction.do?reference=MEMO/11/333&format=HTML&aged=0&language=EN&guiLanguage=en

Next Steps

Currently, the EU Commission looks forward to concluding a “Memorandum of Understanding” amongst libraries, publishers, authors and col-lecting societies to facilitate licensing solutions to digitise and make available out-of-commerce books.

Nov. 2011

– p a g e 1 8 –

Timeline for adopting the IPR Strategy measures

The IPR Strategy outlines the policies that the European Commission intends to take until 2014. Certain legislative initiatives will only come to fruition after agreement is reached between the European Council and the European Parliament.

Review of Copyright Directive (2001): 2012.

Creation of a Comprehensive Framework for Copyright in the Digital Single Market: 2012 and beyond.

Modernization of the trademark system in Europe: European Commission intends to present proposals in the last quarter of 2011.

Review the IPR Enforcement Directive (2004): Spring 2012.

Proposals to modernise the trademark system: last quarter of 2011.

Reinforce the fight against IPR Violations: regulation in May 2011.

Reform of the patent system in Europe: proposals in April 2011 for a unitary patent protection under enhanced cooperation with stakeholders and interested parties.

Audiovisual works: Based on the outcome of the 2011 consultation, the Commission foresees launching a report in 2012.

User-Generated Content: Commission will explore the issue further in the second half of 2012, dialogue with stakeholders.

Trade Secrets: The European Commission will pursue its reflection and gather comprehensive evidence before taking a position on a pos-sible way forward.

Counterfeits: The European Commission will submit a report at the end of 2012.

Geographical Indications (GIs):In-depth analysis of the existing legal framework in the Member States as well as the potential economic impact of protection for non-agricultural GIs in the second half of 2012.

Digital libraries: The EU Commission looks forward to concluding a “Memorandum of Understanding” amongst libraries, publishers, authors and collecting societies, no specific date available.

IPR enforcement by customs: The European Commission will propose a new customs regulation, no specific date available.

Europe’s new Strategy for the Future of IPR in the Digital Age

Intellectual ProPerty

rights