The new EU Trademark Regulation has introduced several changes affecting the EU trademark practice. One of these changes refers to the length of the period for submitting an opposition (e.g. based on an earlier confusingly similar mark) against an EU designation of an International Registration filed through the Madrid System for protection of International trademarks. Due to this change, the trademark registration process will become faster. 
The opposition period change
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The period (3 months) to oppose an EU designation in International Registrations (IRs), prior to the Reform, commenced six months after the day of IR's publication. This has been amended to be 1 month after the date of the publication. The opposition period itself remains unchanged (3 months). This means that the total period from publication to the registration of the international mark in Europe (if no oppositions are filed) has been drastically shortened (5 months shorter than before the reform).

Professional representation

If, by the relevant deadline, an opposition is filed against the EU designation, and the International trademark applicant is not based in an EU Member States, then the EUIPO will request the applicant to appoint an EU Trademark attorney, being a lawyer admitted to practice in Trademark matters in a country member of the European Union (for ex. Spain), pursuant to Articles 92(2) and 93(1) EUTMR, otherwise the protection of the International EU designation will be totally or partially refused. For additional information on this matter, feel free to contact us.

Riccardo Ciullo
Judyta Kasperkiewicz     

​MUSIC LAW IN GENERAL 

Music law is a particular field of entertainment law that involves (among others), issues such as music publishing, the management of band’s business, contracts and copyright law. The knowledge of the regulations related to intellectual property rights in the music industry  is crucial for musicians, songwriters, performers, composers, music producers, business managers, concert promoters, music publishers etc.

It is common knowledge that the musicians are extremely exposed to the danger of exploitation by the publishers of the music. In every country, musicians can become a member of specific unions and associations to protect their rights and to gain additional support for their contribution to the entertainment industry. 

Musicians’ Intellectual property rights are subjects of various international and national regulations, in particular:

1.    The Berne Convention for the Protection of Literary and Artistic Works (1886);
2.    The International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (1961);
3.    The WIPO Copyright Treaty (1996);
4.    TRIPS The Agreement on Trade-Related Aspects of Intellectual Property Rights Agreement, Annex 1C (1994)

In the European Union, relevant acts are: 

1.    Directive 2006/115/EC of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property; 
2.    Directive 93/83/EEC of 27 September 1993 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission;
3.    Directive 2001/29/EC of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the information society;
4.    Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights.

Most of the countries around the world incorporated the mentioned international regulations to their legal systems and they recommend effective tools to protect musician’s works. 


INTELLECTUAL PROPERTY RIGHTS IN MUSIC INDUSTRY:  THE GLOBAL MUSIC REPORT 2016 AND THE EUIPO STUDY 2016

Organizations which care of the protection of IP rights in the music industry, such as the Federation of the Phonographic Industry (IFPI) or the European Observatory on Infringements of Intellectual Property Rights (the Observatory, the EUIPO), published a few reports showing issues related to the effectiveness of the protection of IP rights in music industry. 

The first of the mentioned documents, the IFPI Global Music Report 2016 (April)[1],  outlines that:
“global music revenues increase 3.2% as digital revenues overtake physical for the first time. Digital sales contribute 45% of industry revenues; overtake physical’s 39% share. Streaming revenues up 45.2%, helping to drive 3.2% global growth. Music consumption is exploding globally, but the “value gap”[2]  is the biggest brake on sustainable revenue growth for artists and recorded labels. The global music market achieved a key milestone in 2015 when digital became the primary revenue stream for recorded music, overtaking sales of physical formats for the first time. Digital revenues now account for 45% of total revenues, compared to 39% for physical sales” .

The recent study of The European Observatory on Infringements of Intellectual Property Rights (May 2016)[3] shows the enormous scale of the economic impact of counterfeiting and piracy. The study shows that the problems can occur through physical or digital channels (for instance, through the purchase of fake CD’s or downloading of illegal content). 

According to the main findings of said study, “the recorded music industry lost approximately EURO 170 million of sales revenue in the EU as a consequence of the consumption of recorded music from illegal sources. This total corresponds to 5.2% of the sector’s revenues from physical and digital sales. These lost sales are estimated to result in direct employment losses of 829 jobs” .

Additionally, the study points out that “if the knock-on effects on other industries and on government revenue are added, when both direct and indirect effects are considered, infringement of IPR in this sector causes approximately €336 million of lost sales to the EU economy, which in turn leads to employment losses of 2,155 jobs and a loss of €63 million in government revenue”.    

The studies are important contributions to the awareness of the problem of  effective protection in the music industry. 

COPYRIGHTS IN MUSIC

Copyright is a form of legal protection given to many kinds of intellectual creations such as musical compositions or songs, lyrics, records (CD, singles, cassette, etc.) poems, books, films, TV shows or computer software.
In music industry, copyrights can protect both:
1.    songs (which usually consists of a melody and may include lyrics),
2.    recordings (CD, mp3, cassette, and any other recording).
Song is automatically considered as a copyrighted work. There are only two requirements to get such protection: originality and sufficient tangible form. The owner of the copyright has the exclusive right to:
1) Reproduce the work;
2) Distribute copies of the work;.
3) Perform works publicly;
4) Make derivative works (making a remix of a previous song or a parody lyric set to a well-known song).
6) Display the work,  it occurs rarely i.e. displaying the song’s lyrics and musical notation on a karaoke machine.

No one can use any musician’s work without the permission or authorization (usually it is given as a license) issued by the owner of the copyright.

Musicians can register their songs in the relevant collecting society organizations in order to be paid for their song played publicly. The paid fees are called “royalties”. 
Institutions which generally pay royalties to copyright owners for playing their songs are televisions, radios, restaurants, clubs or shops etc. 

TRADEMARK IN MUSIC

A trademark is a word, name, symbol or device, or a combination of them, used by a business in commerce to identify its goods and services and to distinguish them from goods or services of others businesses. 

A music band, a singer, a Disc Jockey, etcetera, may consider protecting its name or a title of a song as a trademark . 

In the music industry, a band may obtain a service mark on its name to be used in connection with its live performances (entertainment services) and may also obtain trademarks on its name in connection with the sale of merchandising products such as t-shirts, posters, etc.

In the running of a music business, musicians should take the role of an entrepreneur, by  thinking in the medium/long term period.

Before registering the trademark, a trademark specialist as an IP Lawyer should research if the chosen band name is available in the specific country of interest. 

The registration of the trademark can be national, international or regional (for example, only in Spain, for the European Union (EUIPO) or through the World Intellectual Property Organization –  WIPO). After successful registration of the trademark, it is recommended to check if the trademark is used or applied for by others, for example, a competitor in the market (e.g. another band). This can be done by activating a trademark watch service through an IP specialist, checking all new trademark applications filed in selected countries of protection. Once ordered the watch service, the owner of the trade mark receive periodical full reports of identical or similar trademarks filed by third parties. On the basis of such information, the owner can then take appropriate actions to prevent the others from using their valuable IP rights. 

DESIGN IN MUSIC

A design is the external appearance of a product, including its shape, configuration, texture, combinations of color, having an aesthetic value. The design can be protected nationally, regionally or through and international application with the World Intellectual Property Organization (WIPO). 

In the European Union, designs can be registered and unregistered: protection for a registered community design lasts up to 25 years and is subject to the payment of application and renewal fees every 5 years. The unregistered European design lasts for 3 years after it has been available to the public (e.g. through its publication or commercial launching). Registered European designs generally offer more reliable protection than unregistered designs.
 
In the music business, design protection may be useful to provide the owner with exclusive rights on (among others devices):
-    album covers,
-    album leaflets,
-    promotional materials,
-    artist’s representative symbols.

We invite you to follow our blog and our next articles in the music law series.

Authors:
Riccardo Ciullo
​Judyta Kasperkiewicz

[1] http://www.ifpi.org/news/IFPI-GLOBAL-MUSIC-REPORT-2016
[2] “Value gap” is a gap caused because of circumventing the normal rules that apply to music licensing; it’s using by some major digital services.  
[3]https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/observatory/resources/research-and-studies/ip_infringement/study7/Music_industry_en.pdf

On June 1st, 2016, the Diario Oficial de la Federación DOF in Mexico, published a decree that modifies and feautures additions to the Mexican Industrial Property Law. One of these additions refers to the new “Trademark Opposition Process”.

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​Once filed at the Instituto Mexicano de la Propiedad Industrial (IMPI) the trademark will be processed to check if it can be registered; if no objection is raised, during the next 10 days after the filing date, the trademark is published.

The decree states that, anyone who believes that the trademark should not be registered, may oppose the trademark application by submitting all the evidence and arguments that are deemed to be relevant, along with the payment of an opposition fee. 

A duly signed PoA is required to act on behalf of foreign opponents.

The opposition can be filed within one month after the trademark has been published in the Gazette.

Once the opposition is filed, there is no further comunication with the trademark office  (IMPI), that means the person or corporation that filed the opposition will not be informed about the outcome of the trademark application.  

Keep in mind that, the opposition does not stop the trademark registration process.

After the first publication in the Gazette, a second publication takes place, one month after the first, with a list of trademark applications that have been opposed..If the applicants wish to be informed of the further fate of the trademark application, they will be able to access the relevant information on Marcanet www.impi.gob.mx

The opposition process will take place since September 1st. 2016. In our opinion, the amount of oppositions is going to be huge and we are looking forward to see how this procedure develops in time. So far, there is no established fee yet, but the trademark office expects to have it established on July 2016.

It is very important to note that you can minimise the risk of opposition by performing a trademark availability search for potential identical or similar trademarks before you apply for a trademark.

For those who already own one or several trademarks, we strongly recommend to make regular searches for mexican trademark applications and look on the internet for information from the marketplace. Trademark attorneys usually offer monitoring services by conducting searches and providing advice. 

For more info on this topic, feel free to contact us

Author: Rocío Robles Ruiz

Crowdfunding is the financing of a project or a venture by a group of individuals instead of professional parties (like, for instance, banks, venture capitalists or business angels), without any intermediary (e.g. banks): entrepreneurs “tap the crowd” by raising money directly from individuals. The typical mode of communication in the context of a crowdfunding campaign is through the Internet [1].
 
Crowdfundfing is a social phenomenon which is now becoming more and more important for future entrepreneurs and potential investors. According to Forbes (2014), some of the most successful crowdfunding platforms are AngelList, fitfunder, Indiegogo, Kickstarter or Razoo. It is essential for participants in such platforms to be aware of all risks and opportunities related to crowdfunding. 

As to the risks, it is important to keep in mind, among others, those related to the Intellectual Property rights. 

In particular, if the new entrepreneur launches a crowdfunding campaign without  first securing its IP rights (e.g. trademark, patents, copyright, trade secrets, etc.), it may conduct to the failure of the whole project. Thus, entrepreneurs should be always aware of the necessity to protect the IP rights at the basis of their idea before publishing the project on the CF platform to collect the funds. 

Generally, when the new entrepreneur is preparing the business plan, the strategies and the other documents, and prior to the launching of the campaign, she/he should carefully consider to: 
-    sign Confidentiality/NDA agreements with persons involved in the project
-    examine whether the project is affecting IP rights already owned by someone else 
-    protect the relevant IP rights (e.g. filing the trademark, design, patent, etc.)

It is of course essential to make the project interesting and attractive for potential investors; however, one should carefully decide what information and materials will be available on the crowdfunding platform. 

Patents: Crowdfunding projects are very often innovative and based on ideas that may be protected by patents or similar rights, such as utility models. . A key issue in patenting the invention is that it must be  new, which means, not yet made available to the general public before the filing. 

The disclosure of such invention in the public platform without first proceedings with the patent filing might cause loosing the opportunity to get a strong patent protection on the idea.  

Industrial designs: The new entrepreneur may add great value to its new product by registering it as an industrial design, which is the external appearance (excluding the technical aspects) of the product. Designs, as patents, in order to deserve protection, must be new at the time of the filing. Thus, it is important to apply for design protection before displaying the product on the crowdfunding platform.  

Trademarks: Obviously, the registration of a distinctive name for the new product is necessary in order to acquire a market share and for the entrepreneur to be recognized as the original commercial source of that specific product in the market. It is wise to apply for registration of the name as soon as possible, in order to avoid that a competitor applies for an identical or similar name before you and then request an amount of money to authorize the use of the name in commerce (icluding the CF platform itself!) 

In sum, future entrepreneurs considering to use crowdfunding platforms to collect money for their innovative projects, should not think only about raising funds but, first of all, strong preliminary IP protection.  Without taking the correct steps, when the time comes, it may be too late. 

Proper preparation of an IP strategy, with prediction of future risks is one of the most important elements of success. The knowledge about available legal tools to protect and then enforce IP rights is substantial. 

If you are considering to set up your own business using a crowdfunding platform to collect money and then commercialize your new product or service, you better off contact an IP specialist first, to help you in taking the correct legal steps before letting the public know about your innovative idea. 

For more detailed information on this issue, feel free to contact us here

1. Definition created by A. Schwienbacher, B. Larralde, Crowdfunding of small enterpreneurial ventures, Handbook of entrepreneurial finance, Oxford University Press, 2010.

Authors: 
Riccardo Ciullo
Judyta Kasperkiewicz