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Royal Decree-Law No. 24/2021, a legislation to open up opportunities for digital content

On 2 November the Spanish Government approved Royal Decree-Law No. 24/2021, transposing, among others, Directive 2019/790 on copyright in the Digital Single Market (CDSM Directive).

The purpose behind this legislation is to open up opportunities for digital content to compete in a digital single market.

The following, among others, are some of the most notable changes:

  • The exception or limitation for illustration for teaching and scientific research has been expanded. In this regard, Article 68 recognizes that the requisite authorization from right holders shall not be necessary for use of their works for teaching purposes through digital means, provided that such use is made by the teaching staff of a formal educational establishment, by the staff of universities and research bodies, in a secure electronic environment (for example, a virtual classroom) and accompanied by an indication of the source, including the author’s name, where possible. Moreover, these acts shall be deemed to occur in the territory of Spain, even if the recipients are not in Spain.
  • Another of the most important changes is the obligation on the part of online content-sharing service providers to adopt appropriate measures to ensure protection for works. They shall be liable for unauthorized acts of communication to the public, unless they show:
  • that they have made best efforts to obtain an authorization and ensure the unavailability of the works.
  • that they have acted expeditiously, upon receipt of notice from the right holders, to remove the works or other subject matter, and prevent future uploads.
  • The right to fair and proportionate remuneration is recognized for authors and performers in relation to agreements for exploitation of their works, to redress the imbalances that exist. To this end, an obligation of transparency is established for the parties to whom authorizations have been granted or exploitation rights have been transferred, who must provide up to date information once a year on the exploitation of the work and the revenue generated and the remuneration due.
 

 

Other important amendments of the Intellectual Property Act introduced by the Royal Decree-Law include:

  • With regard to cases where, following conclusion of an agreement for transfer of rights, the remuneration initially agreed is disproportionately low compared to the total revenue derived from the work, an amendment is introduced to Article 47 of the Intellectual Property Act in relation to unfair remuneration, whereby the agreement may be revised.
  • A right of revocation is introduced in Article 48bis, whereby the author is granted the right to revoke the authorization or transfer of rights, or terminate the exclusivity of the contract, if the work is not being exploited.
  • The new wording of Article 58, which stipulates that by means of a publishing agreement, in which the author transfers the right of reproduction and distribution to the publisher, the publisher acquires the right to a share of the fair compensation provided for in Article 25.
  • The amendment of Article 32.2, eliminating the so-called “Canon AEDE” (mandatory and non-waivable collective management levy). This levy affected content search engines and aggregators, which had to pay the levy in favour of Spanish newspaper publishers. The new provision does not establish any formal arrangement regarding management of this right and right holders may negotiate authorizations individually or through a collective rights management organization.
  • Finally, through the inclusion of a new Article 129bis, press publishers and news agencies are afforded an exclusive right of reproduction and making available to the public with respect to the online use of their press publications by information society service providers.

Authors: Mabel Klimt, Javier Fernández-Lasquetty, Claudia Fernández y Clara Collado

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Draft bill amending the Legal Deposit Act (Act no. 23/2011)

In a country such as Spain, which has been characterised by a mix of cultures throughout its history, it is vitally important, with a view to fostering interest in culture, research and information, to have an institution whose purpose is to preserve the bibliographical, audiovisual and digital heritage of the country’s culture at each moment of history.

The institution in question is legal deposit, which enables the General State Administration and the Autonomous Communities to fulfil their duty to compile and preserve copies of publications of all kinds reproduced on any kind of media and intended for distribution or communication to the public, rental or sale by any means.

libros, estantería, mujer, sofá, salón

 

In a world of daily technological advances, it is very important to adapt to those advances as quickly as possible and not be left behind. Therefore, the Council of Ministers recently gave its approval to moving ahead with the draft bill amending the Legal Deposit Act (Act No. 23/2011 [in Spanish]).

This decision was based primarily on the need to adapt the legislation in response to the changes that have taken place in the publishing sector in recent years. The new bill will thus make it possible to play a more effective role in the conservation of the country’s publications and will optimise the management of conservation centres, improving and perfecting the compilation of publications which, in line with current technology, will imply a gradual implementation of digital media in the area of publishing.

However, this new bill will also entail a series of important changes for the Spanish audiovisual sector. Specifically, it will recognise the Filmoteca Española (Spanish Film Archive) as a conservation centre and greater importance will be given, implicitly, to producers.

However, it will not only deal with the legal deposit of “motion picture films” but it will also include the concept of “other audiovisual works” which will refer to those audiovisual works that are not intended to be shown solely in cinemas. Said concept will refer to audiovisual works that are communicated to the public through other media.

For now, the draft bill has been submitted for public consultation. Therefore, we will have to wait to see the new regulation that will apply to legal deposit in Spain.

Author: Claudia Pérez Moneu

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Changes to the system for protection of industrial designs in China

edificio, guirnaldas, china

Designs in China (where they are called “design patents”) are protected under the Patent Law of the People’s Republic of China. This legal text entered into force in 1985 and was reformed in 1992, 2000 and 2008.

On 1 June 2021 a fourth reform will enter into force, with important amendments regarding designs. Indeed, it was necessary to update some aspects of industrial design protection in China in order to, among other purposes, bring them into line with the industrial design protection systems of the world’s main IP Offices. It will thus facilitate protection for foreign designs in China, as well as enhancing protection for the designs of Chinese applicants in other countries and at other IP Offices.

farolillos, china, luces

 

This reform should also be regarded as part of China’s preparations to join the Hague System for protection of international designs, given that following the accession of the EUIPO, South Korea, USA and Japan, China is the only one of the countries of the IP5 (which includes the world’s five largest IP Offices) that is not yet a member.

It is also important not to overlook the global importance of China in terms of the number of design applications filed. Over the past few years, the CNIPA has been the Patent Office that has received by far the largest number of design applications. For example, in both 2018 and 2019 there were more than 700,000 design applications in China, which accounted for more than 50% of all design applications worldwide.

The main changes that will affect designs in China can be summarised as follows:

1. Extension of the legal lifetime of designs to 15 years

Article 42(1) of the Patent Law extends the legal lifetime from 10 to 15 years, always calculated from the filing date of the design application in China.

This extension of the term of protection of designs in China is due to the Hague Agreement, which requires that the period of protection granted by contracting States for national designs must be a minimum of 15 years.

2. Possibility of design protection for parts of a product

Article 2(4) of the Patent Law has been amended to include in the definition of “design” the possibility that it refers to “the whole or part” of a product.

This amendment allows the scope of protection of designs to be expanded to include partial designs or designs of a part of a product.

This new provision will, for example, enable more secure protection for the design of a part of a product, without the need to protect the design of the whole product. Currently it is necessary to depict the whole product with solid lines. However, after the reform it will be possible to show with solid lines only the part that is to be protected and with broken lines those parts of the product for which protection is not sought.

Moreover, this new possibility of protection for partial designs or for designs of a part of a product is expected to encourage the filing of new design applications, thereby enhancing protection against possible infringers. Indeed, following the reform it will only be necessary that the protected part (for example, the sole of a shoe or the handle of a tool) has been copied, and not the whole product, in order to be able to take action against possible infringements.

This provision will help to bring practice in China into line with that of the other IP5 countries, given that in all of those countries it is currently possible to protect parts of a product.

3. Possibility of claiming domestic priority for designs

Article 29(2) of the Patent Law introduces the possibility of claiming the domestic priority of an earlier design application in China, within a term of 6 months, in order to permit the filing of an improved subsequent design application.

Under the current system, if an applicant files a design application in China and the design undergoes improvements or modifications, it is necessary to file a new design application. If the improved design differs in relatively minor aspects, the new application for the design would be vulnerable due to the existence of the first application.

With the introduction of the possibility of claiming the domestic priority of designs in China, such adverse situations are avoided, given that once the design is created, the applicant can file an initial design application to obtain an earlier filing date and then improve the design in the 6 months following the filing of the initial application, claiming the priority of the same.

In summary, the reform of the system for protection of industrial designs in China is an important step forward that will help to encourage innovation and improve legal certainty in the field of design. Other potential changes, such as extending the possibility of multiple design applications, or establishing a substantive examination or searches for earlier designs during prosecution, have not been included. Perhaps we will see these changes in a future reform.

Author: Pedro Saturio

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Forthcoming publication of the EU’s Digital Services Act

Inminente publicación de la "DIGITAL SERVICES ACT" de la UE

Online platforms (such as search engines, social media and e-commerce platforms) play an increasingly important role in our everyday lives. However, the current EU rules on digital services have to a large extent remained unaltered since the adoption of the Directive on electronic commerce in the year 2000, with great discrepancies in the way this Directive has been implemented across the EU.

Forthcoming publication of the EU’s Digital Services Act  

The Commission announced the revision of the internal market rules for digital services in its 2019 communication “Shaping Europe’s digital future”. Two public consultations were carried out, which had the following structure and ended on 8 September 2020:

  1. Assessment of the Directive on electronic commerce and clarification of the liability regime for digital services; and
  2. Possible introduction of an ex ante regulatory instrument for controlling the practices of large online platforms with significant network effects acting as gate-keepers.

The European added value assessment of the Digital Services Act was presented in October 2020, with the approval of the European Parliament resolution of 20 October 2020 on the Digital Services Act and fundamental rights issues posed.

The forthcoming next step will be the publication of the Digital Services Act, on 9 December 2020. Special attention must be paid to its final text, in particular with regard to the possible creation of national authorities competent to deal with illegal content. What does seem clear is that freedom of expression may not be asserted to sell counterfeit goods online.

 

Author: Juan José Caselles

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Reform of EU Directives on Copyright

After extensive debate, the Council of the European Union recently approved Directive (EU) 2019/790 on copyright and related rights in the Digital Single Market and Directive (EU) 2019/789 laying down rules on the exercise of copyright and related rights applicable to online transmissions of broadcasting organisations and retransmissions of television and radio programmes.

These directives include amendments to the existing legislation, adapting the rules on copyright to today’s world, taking into account technological advances. The main objective of these reforms is to adapt the necessary legislation to guarantee fair remuneration for rightholders.

The new directives address present-day means of accessing works, such as real-time music broadcasting services, video-on-demand platforms, news aggregators and user-uploaded content platforms.

Directive (EU) 2019/789 of 17 April 2019

Technological advances have led to the creation of new forms of dissemination of works. Broadcasting organisations and operators of retransmission services offer multiple programmes and platforms comprising a large number of works and other protected subject matter.

This directive has sought to preserve the interests of rightholders and providers of online or broadcasting services, with a view to facilitating the clearance of rights for national and cross-border provision of ancillary online services.

Moreover, it specifies the application of the country of origin principle and the requirements that must be met by operators of retransmission services to provide certainty to rightholders and provide them with a fair remuneration.

Thus, when those organisations set the amount of the payment to be made, they must inform the interested parties (through management organisations) of all aspects of the ancillary online service, that is, the features of the online service, the availability of the programmes provided, the audience, and the language versions available.

Where more than one collective management organisation manages the rights affected in the Member State in question, determining which management organisation has the right to grant or refuse authorisation will be up to the Member State. Said collective management organisations must maintain proper records of membership, licences and the use of works, in order to comply with the transparency obligations established in the Directive.

Directive (EU) 2019/790 of 17 April 2019

Directive (EU) 2019/790 is intended to further harmonise the laws of the Member States on copyright and related rights in an effort to ensure that competition in the digital single market is not distorted. It also aims to establish general principles for future-proof legislation, providing the system with legal certainty but without restricting technological development.

In relation to areas such as research, innovation, education and conservation of cultural heritage, the Directive is innovative in its application of exceptions and limitations with the aim of achieving a fair balance between the rights and interests of authors and rightholders, on the one hand, and of users on the other. The exceptions and limitations, as restrictive criteria with respect to copyright, can be applied only in certain special cases, precluding application by analogy.

In keeping with previous Community legislation, the Directive addresses the need for Member States to have a rigorous and well-functioning collective management system, with regard to good governance, transparency and reporting, to ensure the regular and diligent distribution and payment of amounts due to individual rightholders. Management organisations must likewise be governed by the principle of equal treatment and facilitate the exclusion of works for rightholders.

In this case, the Directive includes measures to facilitate the collective licensing of rights. Consequently, the Member States must provide for licensing mechanisms of this kind which permit collective management organisations to conclude licences, on a voluntary basis. Such mechanisms could include extended collective licensing, legal mandates and presumptions of representation.

Conclusions

In conclusion, both directives have included mechanisms for legislation to gradually adapt to advances in technology, which has seen a drastic transformation in recent years.

We will closely follow the transposition of these directives into Spanish legislation, which, according to Community regulations, must be carried out by 7 June 2021.

Authors: Harumi Wakida y Mabel Klimt
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