Simcocks has prepared this briefing in response to the substantial updating of Manx IP law that has recently taken place or is in progress.
Many of the changes were introduced in 2013 by regulations issued under the European Communities (Isle of Man) Act 1973, consisting of the European Union (Intellectual Property) Order 2013, the Copyright Amendment Order 2013, the Performers' Protection (Amendment) Regulations 2013, the Design Right (Amendment) Regulations 2013, the Database Right (Amendment) Regulations 2013 and (in relation to registered trade marks, patents and registered designs) UK Orders in Council (the Trade Marks (Isle of Man) Order 2013, the Patents (Isle of Man) Order 2013 and the Registered Designs (Isle of Man) Order 2013.
These regulations have resulted in the amendment of the Island's Copyright Act 1991, Copyright (Amendment) Act 1999, Performers' Protection Act 1996 and Design Rights Act 1991 as well as the updating of the application to the Island of UK legislation which in turn incorporates developments of EU law.
In addition, the Copyright Etc (Amendment) Act 2014 received royal assent on June 17 2014. When brought into effect by an Appointed Day Order, it will introduce changes recommended by the Department of Economic Development which could not be implemented under the 1973 Act and will make more straight forward the adoption of further developments of UK and EU intellectual property law which it may be desirable to apply in the Isle of Man.
Some recommendations have not been accepted. Of particular interest to internet service providers, the obligations imposed by the Digital Economy Act 2010 on ISPs in the UK to co-operate with copyright owners in respect of online infringements and to limit access to subscribers who persistently infringe have not at this stage been adopted in the Isle of Man. For the time being at least, Manx ISPs continue to enjoy the general protection given by the Electronic Transactions Act 2000 under which Manx ISPs are not liable for third party electronic communications handled on their systems provided they have no reason to suspect an infringement and on becoming aware takes reasonable steps to prevent it. However, ISPs should note that among the recommendations which have been accepted and implemented (by the application to the Island of EU Directive 2001/29 by the European Union (Intellectual Property) Order 2013) is an express right (as in UK and EU) for injunctions to be issued against an ISP in the Isle of Man who has actual knowledge of another person using their service to infringe a copyright or related right.
Also rejected was a proposal to introduce an artist's resale right (applicable in EU, and in the UK by the Artist's Resale Right Regulations 2006 under which the artist is entitled to a royalty on each sale of the work (other than the first transfer of ownership) during the copyright term to a maximum of 4 per cent of the sale price (but not exceeding €12,500)).
As regards the changes which have been made and the proposals which have been accepted subject to primary legislation taking effect, their number is considerable, and the purpose of this note is to outline only those which may be of general interest, as follows:
- The duration of copyright has been extended in various fields. In particular the general duration of copyright in literary, dramatic, musical and artistic works has been extended from 50 to 70 years from the end of the year in which the author dies, but (unlike the position in UK) not so as to revive copyrights which have expired. The extension of the duration of copyright and performers' rights and the introduction of other changes, in line with UK and EU law, in sound recordings, films and broadcasts, is also a reflection of the importance of the Island's film and music industries.
- The rights of copyright owners and performers have been extended to include (in addition to broadcasts and cable programme services) communication to the public by electronic transmission – a "making available right" – which, as in UK and EU, is particularly relevant for podcasts. A new offence of infringing a performer's making available right has also been introduced with a maximum penalty of two years' custody and/or fine on conviction on information.
- Manx law was amended in 1993 so as to permit, in line with UK and EU law, the use of a computer program to make backups or to decompile it. Those engaged in software activities, which are particularly strong in the Isle of Man, should note that, in addition, and as in the EU and UK, it is now lawful to observe, study or test the functioning of a program, in the course of its lawful use, in order to determine its underlying ideas and principles. Other changes applicable to electronic devices include the extension of copy protection rules to computer programs and the provision of new protection for rights holders to prevent the unauthorised removal or alteration of electronic rights-management information.
- The importance of IP rights has been acknowledged by the acceptance of recommendations to substantially increase the criminal penalties for dealing in infringing copies and unauthorised decoders from two years to 10 years custody, to enable the police to obtain search warrants and to make provision for the forfeiture of infringing copies and unauthorised decoders, together with similar recommendations regarding performers' rights. A recommendation to increase the maximum fine on summary conviction from £5,000 to £50,000 was also accepted. These changes will take effect on the coming into force of the Copyright Etc (Amendment) Act 2014.
- A change has been made with regard to the calculation of damages for infringement of copyright, performers' rights, design rights, database rights, community trade marks, patents and registered designs making it clear that, in line with developments in UK and EU law, the award of damages should take into account any "negative economic consequences" of the infringement; these include lost profits of the injured party, any unfair profits of the infringer and, in appropriate cases, elements other than economic factors, such as moral prejudice caused to the rights holder. As previously, the flagrancy of the breach is also a factor to be taken into account. It remains to be seen how far this change will be treated as extending or merely restating the remedies available to rights holders under existing law.
- The recommendation to introduce a 25 year publication right for works which are out of copyright but have not been previously published has been accepted. It is likely to be useful to museums and similar bodies, as it has been in UK following its introduction there in 1996. Its introduction in the Island will take effect on the coming into force of the Copyright Etc (Amendment) Act 2014.
- The Copyright Act, as originally enacted, provided quite a wide exception from copyright protection to permit fair dealing with the work in question for the purpose of research. This right was limited in UK in 2003 to dealing with the work for non-commercial purposes and Manx law has now been similarly amended. This is a change which is likely to be of interest to UK copyright collective societies, and commercial organisations in the Island which have hitherto relied on this exception to permit the copying of material for research purposes should consider reviewing their practices.
- The right of copyright owners to restrict the rental and lending of their works, which previously applied only to films and sound recordings, now extends to literary, dramatic, musical and artistic works. However, the impact for libraries in the Isle of Man is likely to be limited since (unlike the position in UK) there is no locally applicable public right scheme in the Isle of Man.
- The rights of performers have been strengthened by the grant of a new "reproduction right" to control the making (otherwise than for private and domestic use) of copies of recordings of performances, a new "distribution right" to control the issue to the public of copies of recordings of performances and a new "rental right" and "lending right" to a recommendation to confer on performers "moral rights" (principally to be identified as the performer and to object to derogatory treatment, for instance by a poor quality recording) similar to those enjoyed by authors was also accepted, and will be implemented on the coming into force of the Copyright Etc (Amendment) Act 2014.
- It has been recognised for some time that the protection of designs in the Isle of Man falls short of that in UK. As in UK (but not elsewhere in EU) the Design Rights Act 1991 protects an original design for an article for 15 years (or 10 years from first sale or hire). However, neither the registered or unregistered community design rights have yet been recognised: the unregistered community design right entitles the owner to control the use of a design for three years from first marketing and in the case of a registered community design, the registered owner can control the use of the design for five years from filing, renewable for periods of five years to a maximum of 25 years. A draft Community Design Order 2014 was published by the Isle of Man Government on March 19 2014 to apply the EU Regulation to the Island, and is due to take effect shortly, and it will be supplemented by Community Design Regulations based on those currently applicable in UK.
- Changes have been made to adopt changes relating to trade marks (including community trade marks) and in relation to patents and registered designs to ensure that patent, registered design and trade mark protection operates in the Island in the same way as in UK. In view of the importance of the Island's biomed sector, it should be noted that the changes involving patents include (in line with the EU and UK) an extension of the exemption from infringement of trials of generic medicinal and veterinary products for the purpose of obtaining a market authorisation, the compulsory licensing of pharmaceuticals for export to third world countries and the extension by six months of the period for which supplementary protection certificates may be granted for products for paediatric use. In relation to designs, as noted above, a Community Design Order is due to take place shortly to give protection in the Island for registered and unregistered community designs.
As noted above, this article is intended only to indicate some of changes in the course of the Island's programme for the modernisation of its intellectual property laws. It is not exhaustive and, in any event, the programme is still ongoing.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.