Major Differences In UK, U.S. Copyright Laws

The key UK copyright statute is the Copyright, Designs and Patents Act 1988 (CDPA), the UK equivalent to the U.S. Copyright Act of 1976, though UK copyright law is now ultimately framed at the European Union (EU) level. The CDPA has been amended several times since its enactment, in part in response to domestic legislation but also in order to implement various EU Directives designed to harmonize particular aspects of copyright law throughout the EU. Directives are the most common way in which the EU produces law. Rather than being directly effective, they set out certain end results that must be achieved by EU Member States. National authorities have to adapt their laws to meet these goals, but are free to decide how to do so.

Recent amendments to the CDPA have resulted from the implementation of Directive 2001/29/EC on the harmonization of certain aspects of copyright, Directive 96/9/EC on the legal protection of databases and Directive 93/98/EEC, which harmonized the term of copyright protection.

Stormtrooper Helmets

Even though the U.S. and UK regimes have common foundations, the subtle differences between them can be crucial. This was starkly illustrated in recent years by the failure of George Lucas, the creator of Star Wars, in his multi-million pounds UK lawsuit against Andrew Ainsworth, the British designer of the “Stormtrooper” helmets featured in the iconic Star Wars films.

In 2006, the U.S. District Court for the Central District of California issued a default judgment for $20 million in a copyright and trademark suit, finding in part that by selling replica helmets, Ainsworth infringed Lucas's copyright in the helmets. Fortunately for Ainsworth, this judgment was in practical terms unenforceable, as he had no U.S. assets, so Lucas brought a claim in the English courts for copyright infringement.

The U.S. federal court had decided that props were “works,” specifically sculptures, capable of copyright protection. However, the UK Supreme Court held that although the Star Wars films themselves were obviously copyright “works,” the “Stormtrooper” helmet was not a sculpture, merely a utilitarian “element in the process of production of the film” that did not benefit from copyright protection, so Ainsworth was not liable for damages. Moreover, he could continue to sell his replica helmets. Lucasfilm Ltd. v. Ainsworth, [2011] UKSC 39.

Ownership and Terminations

As regards first ownership of copyright, the UK and U.S. positions are broadly the same: the author of a work will be the first owner of any copyright in it. Under both jurisdictions, authors are entitled to assign or license their work as they see fit, though the exception that gives employers the copyright when an employee creates a work in the course of employment, applies in the United Kingdom by virtue of s.11(2) CDPA, as it does in the United States. However, while U.S. authors have a right (that may not be restricted by contract) to terminate such assignments or licenses after 35 years, no such “second bite of the apple” exists under UK law. In the United Kingdom, a valid assignment of copyright is final.

Copyright Registration

In the United States, registration is required for full copyright protection; for example, to recover statutory damages and legal fees when bringing an infringement action. There is no such registration process required by the UK system. Some companies in the United Kingdom do offer unofficial copyright registers, though the benefit of such registers is open to question and they have no formal legal effect.

Duration

United Kingdom duration of copyright tends to be 70 years from the end of the calendar year in which the last surviving author of a work dies. The general U.S. rule is similar (though not the same) in that for most works copyright endures for the author's life plus an additional 70 years after death. However, beneath this prima facie similarity lie distinct contrasts.

Currently, the duration of copyright in UK sound recordings is 50 years, either from the end of the calendar year in which the work was created, or from the end of the calendar year in which the work was first released, if it was released within that time. After this period, the recordings enter the public domain (as some recordings already have). However, in September 2011, the EU approved a directive to increase the duration of copyright in sound recordings to 70 years from year of creation/release. The UK government must implement this into law by Nov. 1, 2013.

Differences in Infringement Exceptions

The CDPA contains a substantial list of exceptions to copyright infringement, though the majority of these apply in only very limited circumstances. A key point to be aware of is that there is no equivalent to the U.S. fair use doctrine. The nearest the United Kingdom comes to this affirmative defense are the “fair dealing” exceptions (s.29 and s.30 CDPA) for “research” “private study,” “criticism” and “news reporting.” These are the most commonly relied upon defenses to copyright infringement under English law. The major difference between them and U.S. fair use is that U.S. fair use is a general test that the courts have interpreted through case law to meet changes in the needs of copyright holders and users, not least due to technological advancement. United Kingdom fair dealing, however, comprises a closed list into which the use must fall.

This rigid approach means that new kinds of copying made possible by, for example, advances in digital technology, are automatically unlawful. Creating new exceptions requires changes to primary legislation, and as a result UK copyright law has become increasingly outdated, sometimes to the point of absurdity. Although this is due to change later this year (see below), under current UK copyright law, everyday consumer activities ' such as format-shifting and backup of music, films and e-books ' are illegal (though not for backing up data/software). Thus, it is a common mistake to assume that UK fair dealing rules are equivalent to U.S. fair use rules. They are not: one is narrow and inflexible; the other is broad and adaptable.

Two exceptions to copyright infringement in the United States developed under the fair use doctrine, but currently lacking in the United Kingdom are worth further examination: format-shifting and parody.

It is a fact that for years, millions of UK consumers have been breaking copyright law on a daily basis, simply by moving music or videos from one device to another. While in these circumstances a laissez-faire approach from the UK authorities might be hoped for, this is not always the case, as was illustrated by the UK Advertising Standards Authority (ASA) decision to take administrative action against the UK proprietor of the Brennan J7 music player in 2011.

The Brennan J7 is a device that contains a hard disk onto which consumers can transfer music from their CDs ' functionally no different than numerous other digital music players. The ASA ruled that advertisements for the Brennan J7 had to include a warning that use of the product entailed copyright infringement. Needless to say, after including this warning, the proprietor was both met by a wave of queries from concerned customers and forced to spend resources to reassure customers that record companies wouldn't sue them. It is an absurd situation given the fact that U.S. companies like Apple and Microsoft have been selling format-shifting products in the United Kingdom for years.

Another infringement exception the United Kingdom currently lacks is one for parody and pastiche, in contrast to U.S. law where parodies fall within the broad fair-use exception. A notable recent example of the difference between the UK and U.S. regimes was “Newport State of Mind,” a music video parody of “Empire State of Mind” by Jay-Z and Alicia Keys, which went viral when it was posted on YouTube in 2010. With no infringement exception to protect the video, when YouTube received a takedown notice from the “Empire State of Mind” copyright holders (i.e., a request to remove the video backed up by the threat of copyright infringement proceedings under the CDPA), it had little choice but to comply. But the video ' no doubt because it is extremely popular ' has remained viewable online. Still, the United States is currently far more ready to welcome this genre of entertainment than is the United Kingdom.

New Developments in UK Copyright Law

In November 2010, the UK government ' concerned that UK intellectual property law might be stifling innovation rather than encouraging it ' commissioned a comprehensive review of UK copyright and IP laws from Ian Hargreaves, a well-known academic and journalist, to investigate and, if necessary, make recommendations for changes aimed at achieving stronger rates of innovation and increased economic growth.

In December 2012, the UK government published its response to the Hargreaves Report, implementing changes to copyright law that will take effect beginning October 2013. In “Modernising Copyright: A Modern, Robust and Flexible Framework,” the government stated that nine new copyright defenses will be introduced, with the aim of incentivizing content creators and removing barriers to growth. These changes are largely in line with the recommendations made in the Hargreaves Review.

The fair dealing defense will be extended to cover “parody” and a separate defense of “private copying” ' in essence format shifting ' will allow consumers to copy from one device to another as well as to copy material to and from online cloud storage, provided such copies are not shared with others. Other new exceptions include quotation (with fair acknowledgement), data analytics for non-commercial research or data mining (i.e., large-scale copying of information from machine-read material), and the expansion of fair dealing to also include copying of sound recordings, films and broadcasts for non-commercial research and private study.

UK/U.S. Trademark Law Differences

This article has thus far focused on copyright law, but those involved in the creative industries may also be interested in differences between the UK and U.S. registered rights regimes, predominantly registered trademark law. Once again the two regimes share common principles, in this case registration conferring on the proprietor the statutory right to the exclusive use of the mark (as laid down by the Nice Agreement, of which both the United Kingdom and United States are signatories) in connection with the goods or services for which it is registered.

The key difference between the two systems is that it is easier to obtain and maintain a trademark in the United Kingdom. Although a bona fide intention to use a mark is a condition for obtaining registration with respect to the specified goods and services, the UK and European Community Trade Mark (CTM) registries do not apply this requirement in practice. Therefore, applications for all the goods and services within a goods and services class heading are not uncommon. Moreover, while under both the UK and U.S. systems a registration may be cancelled for non-use after five years, there is no requirement to affirm or evidence such use in the United Kingdom (unless the registration is attacked by a third party).

Just as federal and state registries co-exist in the United States, similarly in the United Kingdom there are two applicable registries. Registration of a UK national trademark ' applicable to the United Kingdom only ' can be made at the UK Intellectual Property Office, which operates a national registry (which with limited jurisdiction is comparable to the state registries). Registration of a CTM enables a single registration to cover all 27 member states of the European Union ' comparable to a U.S. federal registration. CTMs are a highly cost-effective way of obtaining trademark protection throughout Europe.

Ben Goodger is a partner in Edwards Wildman Palmer's London office. A widely recognized leader in the Intellectual Property field for more than 20 years, he has been advising companies on the strategic management, commercialization and protection of their valuable intellectual property. Goodger is a founder member and Fellow of the International IP Strategists Association (INTIPSA). Jonny McDonald is an associate in the Intellectual Property Department at Edwards Wildman Palmer in London. McDonald's practice focuses on media, IT, telecommunications and data protection/privacy. He has experience in advising on the commercial and regulatory issues concerning a wide variety of TMT-related agreements, as well as the intellectual property aspects of corporate transactions.

This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.

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Both the United Kingdom ' especially London ' and the United States are centers of vibrant creative industries. The copyright regimes of both countries share the same foundations: both are common law jurisdictions as well as signatories to the Berne Convention for the Protection of Literary and Artistic Works, which requires its signatories to maintain certain minimum legal standards of copyright protection.

The key UK copyright statute is the Copyright, Designs and Patents Act 1988 (CDPA), the UK equivalent to the U.S. Copyright Act of 1976, though UK copyright law is now ultimately framed at the European Union (EU) level. The CDPA has been amended several times since its enactment, in part in response to domestic legislation but also in order to implement various EU Directives designed to harmonize particular aspects of copyright law throughout the EU. Directives are the most common way in which the EU produces law. Rather than being directly effective, they set out certain end results that must be achieved by EU Member States. National authorities have to adapt their laws to meet these goals, but are free to decide how to do so.

Recent amendments to the CDPA have resulted from the implementation of Directive 2001/29/EC on the harmonization of certain aspects of copyright, Directive 96/9/EC on the legal protection of databases and Directive 93/98/EEC, which harmonized the term of copyright protection.

Stormtrooper Helmets

Even though the U.S. and UK regimes have common foundations, the subtle differences between them can be crucial. This was starkly illustrated in recent years by the failure of George Lucas, the creator of Star Wars, in his multi-million pounds UK lawsuit against Andrew Ainsworth, the British designer of the “Stormtrooper” helmets featured in the iconic Star Wars films.

In 2006, the U.S. District Court for the Central District of California issued a default judgment for $20 million in a copyright and trademark suit, finding in part that by selling replica helmets, Ainsworth infringed Lucas's copyright in the helmets. Fortunately for Ainsworth, this judgment was in practical terms unenforceable, as he had no U.S. assets, so Lucas brought a claim in the English courts for copyright infringement.

The U.S. federal court had decided that props were “works,” specifically sculptures, capable of copyright protection. However, the UK Supreme Court held that although the Star Wars films themselves were obviously copyright “works,” the “Stormtrooper” helmet was not a sculpture, merely a utilitarian “element in the process of production of the film” that did not benefit from copyright protection, so Ainsworth was not liable for damages. Moreover, he could continue to sell his replica helmets. Lucasfilm Ltd. v. Ainsworth, [2011] UKSC 39.

Ownership and Terminations

As regards first ownership of copyright, the UK and U.S. positions are broadly the same: the author of a work will be the first owner of any copyright in it. Under both jurisdictions, authors are entitled to assign or license their work as they see fit, though the exception that gives employers the copyright when an employee creates a work in the course of employment, applies in the United Kingdom by virtue of s.11(2) CDPA, as it does in the United States. However, while U.S. authors have a right (that may not be restricted by contract) to terminate such assignments or licenses after 35 years, no such “second bite of the apple” exists under UK law. In the United Kingdom, a valid assignment of copyright is final.

Copyright Registration

In the United States, registration is required for full copyright protection; for example, to recover statutory damages and legal fees when bringing an infringement action. There is no such registration process required by the UK system. Some companies in the United Kingdom do offer unofficial copyright registers, though the benefit of such registers is open to question and they have no formal legal effect.

Duration

United Kingdom duration of copyright tends to be 70 years from the end of the calendar year in which the last surviving author of a work dies. The general U.S. rule is similar (though not the same) in that for most works copyright endures for the author's life plus an additional 70 years after death. However, beneath this prima facie similarity lie distinct contrasts.

Currently, the duration of copyright in UK sound recordings is 50 years, either from the end of the calendar year in which the work was created, or from the end of the calendar year in which the work was first released, if it was released within that time. After this period, the recordings enter the public domain (as some recordings already have). However, in September 2011, the EU approved a directive to increase the duration of copyright in sound recordings to 70 years from year of creation/release. The UK government must implement this into law by Nov. 1, 2013.

Differences in Infringement Exceptions

The CDPA contains a substantial list of exceptions to copyright infringement, though the majority of these apply in only very limited circumstances. A key point to be aware of is that there is no equivalent to the U.S. fair use doctrine. The nearest the United Kingdom comes to this affirmative defense are the “fair dealing” exceptions (s.29 and s.30 CDPA) for “research” “private study,” “criticism” and “news reporting.” These are the most commonly relied upon defenses to copyright infringement under English law. The major difference between them and U.S. fair use is that U.S. fair use is a general test that the courts have interpreted through case law to meet changes in the needs of copyright holders and users, not least due to technological advancement. United Kingdom fair dealing, however, comprises a closed list into which the use must fall.

This rigid approach means that new kinds of copying made possible by, for example, advances in digital technology, are automatically unlawful. Creating new exceptions requires changes to primary legislation, and as a result UK copyright law has become increasingly outdated, sometimes to the point of absurdity. Although this is due to change later this year (see below), under current UK copyright law, everyday consumer activities ' such as format-shifting and backup of music, films and e-books ' are illegal (though not for backing up data/software). Thus, it is a common mistake to assume that UK fair dealing rules are equivalent to U.S. fair use rules. They are not: one is narrow and inflexible; the other is broad and adaptable.

Two exceptions to copyright infringement in the United States developed under the fair use doctrine, but currently lacking in the United Kingdom are worth further examination: format-shifting and parody.

It is a fact that for years, millions of UK consumers have been breaking copyright law on a daily basis, simply by moving music or videos from one device to another. While in these circumstances a laissez-faire approach from the UK authorities might be hoped for, this is not always the case, as was illustrated by the UK Advertising Standards Authority (ASA) decision to take administrative action against the UK proprietor of the Brennan J7 music player in 2011.

The Brennan J7 is a device that contains a hard disk onto which consumers can transfer music from their CDs ' functionally no different than numerous other digital music players. The ASA ruled that advertisements for the Brennan J7 had to include a warning that use of the product entailed copyright infringement. Needless to say, after including this warning, the proprietor was both met by a wave of queries from concerned customers and forced to spend resources to reassure customers that record companies wouldn't sue them. It is an absurd situation given the fact that U.S. companies like Apple and Microsoft have been selling format-shifting products in the United Kingdom for years.

Another infringement exception the United Kingdom currently lacks is one for parody and pastiche, in contrast to U.S. law where parodies fall within the broad fair-use exception. A notable recent example of the difference between the UK and U.S. regimes was “Newport State of Mind,” a music video parody of “Empire State of Mind” by Jay-Z and Alicia Keys, which went viral when it was posted on YouTube in 2010. With no infringement exception to protect the video, when YouTube received a takedown notice from the “Empire State of Mind” copyright holders (i.e., a request to remove the video backed up by the threat of copyright infringement proceedings under the CDPA), it had little choice but to comply. But the video ' no doubt because it is extremely popular ' has remained viewable online. Still, the United States is currently far more ready to welcome this genre of entertainment than is the United Kingdom.

New Developments in UK Copyright Law

In November 2010, the UK government ' concerned that UK intellectual property law might be stifling innovation rather than encouraging it ' commissioned a comprehensive review of UK copyright and IP laws from Ian Hargreaves, a well-known academic and journalist, to investigate and, if necessary, make recommendations for changes aimed at achieving stronger rates of innovation and increased economic growth.

In December 2012, the UK government published its response to the Hargreaves Report, implementing changes to copyright law that will take effect beginning October 2013. In “Modernising Copyright: A Modern, Robust and Flexible Framework,” the government stated that nine new copyright defenses will be introduced, with the aim of incentivizing content creators and removing barriers to growth. These changes are largely in line with the recommendations made in the Hargreaves Review.

The fair dealing defense will be extended to cover “parody” and a separate defense of “private copying” ' in essence format shifting ' will allow consumers to copy from one device to another as well as to copy material to and from online cloud storage, provided such copies are not shared with others. Other new exceptions include quotation (with fair acknowledgement), data analytics for non-commercial research or data mining (i.e., large-scale copying of information from machine-read material), and the expansion of fair dealing to also include copying of sound recordings, films and broadcasts for non-commercial research and private study.

UK/U.S. Trademark Law Differences

This article has thus far focused on copyright law, but those involved in the creative industries may also be interested in differences between the UK and U.S. registered rights regimes, predominantly registered trademark law. Once again the two regimes share common principles, in this case registration conferring on the proprietor the statutory right to the exclusive use of the mark (as laid down by the Nice Agreement, of which both the United Kingdom and United States are signatories) in connection with the goods or services for which it is registered.

The key difference between the two systems is that it is easier to obtain and maintain a trademark in the United Kingdom. Although a bona fide intention to use a mark is a condition for obtaining registration with respect to the specified goods and services, the UK and European Community Trade Mark (CTM) registries do not apply this requirement in practice. Therefore, applications for all the goods and services within a goods and services class heading are not uncommon. Moreover, while under both the UK and U.S. systems a registration may be cancelled for non-use after five years, there is no requirement to affirm or evidence such use in the United Kingdom (unless the registration is attacked by a third party).

Just as federal and state registries co-exist in the United States, similarly in the United Kingdom there are two applicable registries. Registration of a UK national trademark ' applicable to the United Kingdom only ' can be made at the UK Intellectual Property Office, which operates a national registry (which with limited jurisdiction is comparable to the state registries). Registration of a CTM enables a single registration to cover all 27 member states of the European Union ' comparable to a U.S. federal registration. CTMs are a highly cost-effective way of obtaining trademark protection throughout Europe.

Ben Goodger is a partner in Edwards Wildman Palmer's London office. A widely recognized leader in the Intellectual Property field for more than 20 years, he has been advising companies on the strategic management, commercialization and protection of their valuable intellectual property. Goodger is a founder member and Fellow of the International IP Strategists Association (INTIPSA). Jonny McDonald is an associate in the Intellectual Property Department at Edwards Wildman Palmer in London. McDonald's practice focuses on media, IT, telecommunications and data protection/privacy. He has experience in advising on the commercial and regulatory issues concerning a wide variety of TMT-related agreements, as well as the intellectual property aspects of corporate transactions.