Archive for the ‘Commercial’ Category

New Media Law moves!

On Monday 8th December, New Media Law moved from Little Portland Street in Noho, to Hanover Square in Mayfair.

The full address of our new office is:

24 Hanover Square

London, W1S 1JD

All other contact details remain as they were previously.

We look forward to welcoming you to our new office very soon!

The Intellectual Property Act 2014 and design rights

In the UK design law is primarily governed by the Copyright, Designs and Patents Act 1988 (CDPA) and the Registered Designs Act 1949 (RDA).

On 1 October 2014 the Intellectual Property Act 2014 came into force which makes, amongst other, two small but significant changes to design law.

Ownership of commissioned works retained by creator

Under previous law, both unregistered and registered UK design law stated that where a design was created in pursuance of a commission agreement/arrangement, the person commissioning the design is the first owner of any design right. The 2014 Act changes this to a position where the owner of the design- registered or unregistered- will now be the designer unless otherwise contractually agreed by both parties.

The effect will be an increase in commissioning agreements that clearly outline the rights of each party. Outlining such rights will avoid any uncertainty as to who owns the design rights concerned. The position under an employment contract with regards to the ownership of registered designs created by an employee remains unchanged. In this case the employer will continue to own the rights attached to the design created in the course of employment.

Unauthorised Copying

Under previous law, there were no criminal sanctions for infringement of registered designs. This has now changed through section 13 IPA 2014, which has the effect of creating criminal sanctions for infringement of registered design rights of imprisonment for a term not exceeding ten years or to a fine or to both. This applies to the jurisdictions of England, Wales and Scotland. An important proviso is that the person must know or have reason to believe that the design is a registered design upon committing the offence.

This has the effect of protecting rights owners further especially in matters that involve counterfeit products and designs. It is important to remember that this provision only applies to registered designs. 

Whether this will prove to be a sufficient deterrent is yet to be confirmed by future case law and the impact it will have.


Paida Dube, Intern, New Media Law LLP



UK Music Industry announces record growth

The UK music industry announced record year on year growth in 2013 of 9%.

This is a phenomenal success, when one considers that the UK economy as a whole grew by 1.9%.

Perhaps the corner has in fact been turned….


See the UK Music report in full here:

MIPCOM attendance



We are delighted to announce that the following of our lawyers will be attending MIPCOM this year, from Sunday (11th) to Wednesday (15th) October.


Ian Penman – Partner   ( )   ( +44 7765 244 111 )

Paul Hosford – Partner  ( )   ( +44 7765 244 222 )

Michael Hekimian – Counsel  ( )   (+44 7979 345 181 )


For further information, please contact:

+ 44 20 7291 1670

Screen and cache copies are not an infringement of copyright

A recent Court of Justice of the European Union decision confirms that browsing websites does not infringe copyright:

Newspaper Licencing Agency Ltd and others v Public Relations Consultants Association Ltd [2014]

Article 5 of Parliament and Council Directive 2001/29/EC of 22 May 2001 established that website copies on an end-user’s computer screen and in the Internet ‘cache’ of the computer’s hard disk could be made without the copyright holders’ authorisation while the end-user is browsing the internet. The copies in question were held to be “temporary”, “transient or incidental” in nature and an “integral and essential part of a technological process”.

The Public Relations Consultants Association (“PRCA”) use a third party called Meltwater to monitor reports on press articles published online.  The reports are compiled using key words inputted by the PRCA.  Meltwater wanted their customers’ acts of reproduction to be exempted from the Article 2 reproduction right.

The Newspaper Licensing Agency collectively licences newspaper content and wanted Meltwater and its customers to obtain authorisation from copyright holders for providing and receiving the media monitoring service.

The PRCA appealed to the Supreme Court in the UK, who referred certain questions to the Court Of Justice of the European Union in Brussels (the “CJEU”). The CJEU interpreted Article 5(1) as well as Article 5(5) of the Directive to decide whether the conditions were satisfied.

Following the precedent set in Football Association Premier League Ltd v QC Leisure (which established that the conditions of Article 5(1) and Article 5(5) need to be satisfied), the CJEU held that this was a special case since the on-screen and cached copies were only for viewing websites. These copies were held not to conflict with a normal exploitation of the works and did not unreasonably prejudice the legitimate interests of the properly safeguarded rights holders.

Bankole Kasumu, Intern, New Media Law LLP

Ian Penman spoke at rAsia conference in Moscow, 25-28 June 2014

Ian Penman, one of the founding partners of New Media Law, spoke (for the 2nd time, having attended the conference in 2013) at the rAsia conference in Moscow in June.

For further details of the conference, please see:

Ian presented on the background and function of New Media Law at 12.30pm at the “TELL Academy” on Thursday 26th

He also spoke on the subject of “LEGAL ASPECTS OF THE NEW DIGITAL ENVIRONMENT” in the Main Hall of rAsia at 3.15pm  on Thursday 26th.

The presentation focussed on legal developments across Europe and the USA, notably the drive to “encrypted” content and storage, following on from the closure of sites such as KAZAA ( and LimeWire (  and the impact of the “Kim Dotcom” litigation.

He also spoke on Friday 27th:


in a panel chaired by Ralph Simon in Hall A of rAsia at 10.15am

The panel focussed on what the new technological developments mean for the content and media industries.

And again on:


in a panel chaired by Shaukat Shamim, of YouPlus, in Hall A of rAsia at 17.00

The panel focussed on what the move to wireless means for content owners and advertisers.

For further details, please contact:

or, Ian himself, at:


On 6 June 2014, the Chinese government took a major step forward in the protection of IP.

As someone who is married to a card-carrying member of the Chinese Communist Party (the daughter of the Chairman of Dong Feng Motor Co, Liuzhou, no less), I take a special interest in these affairs.

As Chairman Mao famously said: “A journey of a thousand miles begins with a single step…”.

China has voted to establish specialised courts for intellectual property rights.  The decision was endorsed at the third meeting of the Central Reform Leading Group on Comprehensively Deepening Reforms, a top-level decision-making and coordinating body established by the 3rd Plenum of the 18th Central Committee of the Chinese Communist Party in November 2013.

The introduction of a court which specialises in Intellectual Property is as a crucial step forward for the protection of IP rights in China.  It continues a process of started in 1993 when the first IP tribunal was set up within Beijing’s First Intermediate People’s Court.

A great leap forward – without doubt.


Ian Penman


New Media Law LLP

For more details, please contact:

Or our Marketing Manager, Esther McHale at:

NEW MEDIA LAW signs Joint Venture agreement with PLEIMO.COM

Ian Penman, partner of New Media Law says:

“We are delighted to be officially on board with such an amazing new company as  Pleimo is the most exciting development in the world of musicians for many years, bringing a brand new revenue stream to the creative people that need it most”.

Pleimo is a new digital music service, originating from Brazil, and created by the inventor and entrepreneur, Dauton Janota.

It provides an immediate income to musicians whose fans decide to use its music streaming service, and nominate their favourite act.  Pleimo pays a monthly amount to each act, from the streaming subscription income.

Pleimo also offers a-la-carte downloads (per iTunes); ticketing services (per Ticketmaster); merchandising services and music publishing services to its artist clients.

Ian Penman from New Media Law has been appointed an executive director of Pleimo Corp (in the USA), as well as Pleimo Limited and Pleimo Music Limited (in the UK).

Rick Riccobono from New Media Law has been appointed to Pleimo Corp’s Advisory Board.


For further information, please contact: Esther McHale, Marketing Manager, New Media Law:  Tel: +44 207 291 1670

New Media Law and Pleimo

Photo: Left to Right: Christian Ulf-Hansen, Artist & Writer Relations, Pleimo; Gustavo Vaz, VGRI (Brazil); Richard Homer, Solicitor, New Media Law; Ian Penman, Partner, New Media Law/Director Pleimo; Rick Riccobono, Consultant, International Digital Rights Licensing, New Media Law/Advisory Board Member, Pleimo; Dauton Janota, CEO, Pleimo.

Getty makes its photos free!

In a radical move, Getty Images has allowed some 35,000,000 of its photographs, including images as varied as Adolph Hitler or Al Capone, to Marilyn Monroe or Marion Morrison (aka John Wayne), to be used royalty free without the Getty watermark.  The condition is that the user “embeds” a credit/link at the bottom of the image, which links to Getty.  Of course, that will also give Getty access to data (as to the photograph’s use) which it may be able to monetize.

Nevertheless, a brave step, which is akin to what groundbreaking “free music” services such as (originally), then, and now did for access to music.

For further details on licensing of copyright images, please contact:

Ian Penman, Paul Pattinson, Daniel Eilon, Michael Hekimian or Richard Homer at New Media Law

Tel: 020 7291 1670

Should Ofcom have the power to block or approve media and news deals?

A 4 February 2014 report published by the House of Lords communications committee has urged for changes to the regulation of media ownership.  It finds that the UK communications regulator, Ofcom, should take a more prominent and leading role in deciding whether media transactions or concentration should be approved. 

Merger control in media transactions be a complex area given the relationship between merger control review by the UK competition authorities on competition grounds and the potential for political/ public interest intervention on newspaper and/ or media public interest grounds.  Currently, the UK Government is able to intervene in a newspaper or a broadcasting/ media merger where the Secretary of State believes that a merger may raise a relevant public interest consideration and the transaction constitutes a relevant merger situation under the standard UK merger control rules.  There are specific public interest considerations for newspaper cases and also broadcasting and cross-media cases. 

When the UK sought to develop its laws in relation to public interest scrutiny of media mergers the relevant Government minister said in 2003 that:  “[media] plurality is important for a healthy and informed democratic society.  The underlying principle is that it would be dangerous for any person to control too much of the media because of his or her ability to influence opinions and set the political agenda” (Hansard, Lord McIntosh of Haringey (Parliamentary Under Secretary, DCMS) 2 July 2003). 

In relation to broadcasting and cross-media mergers, the principal media plurality considerations are set out in section 58(2C) of the UK Enterprise Act 2002 and include: “the need, in relation to every different audience in the United Kingdom or in a particular area or locality of the United Kingdom, for there to be a sufficient plurality of persons with control of the media enterprises serving that audience.” 

UK communications regulator Ofcom conducted a significant research study and extensive stakeholder consultation on plurality matters between November 2011 and June 2012.  In October 2011 Ofcom stated that: “We have defined plurality as a) ensuring there is a diversity of viewpoints available and consumed across and within media enterprises and b) preventing any one media owner or voice having too much influence over public opinion and the political agenda.” 

The committee now recommends that Ofcom should undertake periodic reviews of media plurality every four to five years to examine the sufficiency of plurality at the relevant time.  This power to examine and ultimately require divestments in tightly defined circumstances would arise independently of any structural change in the market such as a merger or acquisition. 

As a further change from the current rules, the committee recommends that Ofcom rather the Secretary of State should have final decision making power over whether specific media transactions should be approved, based on a balancing of the effect on competition and plurality. 

The committee’s report comes following an extensive public consultation.  Media plurality issues have come under scrutiny recently.  In the decade since the current regime was put into operation, only three cases have raised plurality “issues” such as to warrant a further inquiry.  Critically, there has been no final UK determination in a case involving only plurality issues.   

In BSkyB/ ITV, BSkyB had acquired material influence over ITV, an important UK broadcast news provider.  The Competition Commission concluded that sufficient media plurality remained for each major audience in the UK, both for a TV audience and a cross-media audience (taking into account the readership of News International’s newspapers).  BSkyB was required to divest its shareholding in ITV to below 7.5 per cent, for reasons connected with competition and not media plurality. 

The second case involved News Corporation’s proposed acquisition of the shares in BSkyB that it did not already own.  This was a highly unusual case which is unlikely to have many if any counterparts. The case did not reach a final decision by the Secretary of State so provides no definitive support for the efficacy or otherwise of plurality controls.  Quite the contrary, the case contributed to a full review of whether the existing media plurality test in the UK is workable in practice. 

A third case involved Global Radio’s acquisition of the entire issued share capital of GMG Radio Holdings Limited, the third largest UK commercial radio operator and operator of several radio stations across the UK.  On 3 August 2012 the Secretary of State issued a public interest intervention notice.  The intervention notice was issued on the basis that the media plurality public interest test might be relevant to consideration of the merger.  Despite the issue of the intervention notice, the Secretary of State announced that, on the advice of Ofcom, she would not refer the acquisition to the Competition Commission on media plurality public interest grounds.  The case was nevertheless referred but only on competition grounds.  The Competition Commission published its final report on 21 May 2013.  Global was required to partially divest some of the acquired or its own stations in each of the overlap areas to address the substantial lessening of competition found by the Competition Commission. 

Against this background, it appears that giving greater powers to Ofcom is intended to serve as a check on political interference that most ‘mainstream’ (i.e. non-media) media are insulated from. However, whether the Government will relinquish determinative power to Ofcom in the review of often high profile media transactions remains to be seen.   

The proposal to allow Ofcom to intervene even outside a specific transaction is highly controversial, albeit there would be a higher bar to intervention in such cases. 

The recommendations also propose to maintain a clear distinction between competition and plurality. Pluralism is designed to capture issues other than those that are covered by competition inquiries into market concentration.  The analysis has to encompass also the capacity of an entity to unacceptably influence public debate quite separately from any competition issues.   

Whether the recommendations will be implemented at all or in their proposed form is a matter of debate.  The recommendations also sit rather uncomfortably with the mandate of the new Competition and Markets Authority which will replace the Office of Fair Trading and the Competition Commission from April 2014. Its remit will be to have tighter reins on the sector regulators rather than giving them a wider berth. 

This post was prepared in consultation with Suzanne Rab, independent barrister specialising in competition and regulation at a leading chambers in Lincoln’s Inn.  Suzanne provided evidence to the House of Lords Select Committee review of media plurality.

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