INTELLECTUAL PROPERTY, MEDIA AND IT NEWSLETTER 2nd Quarter 2015 I Highlight 2 II Legislation 2 III Case Law 4 IV Resolutions, Recommendations and Opinions 6 NEWSLETTER I INTELLECTUAL PROPERTY, MEDIA AND IT WWW.CUATRECASAS.COM NEWSLETTER I INTELLECTUAL PROPERTY, MEDIA AND IT 2/8 INTELLECTUAL PROPERTY, MEDIA AND IT NEWSLETTER I HIGLIGHT New private copying law came into force last July 6, 2015 Although the President of the Republic returned the Decree Number 320/XII of the Assembly of the Republic, the “second amendment to Law Number 62/98, of September 1, that regulates the provisions of article 82 of the Code of Copyright and Related Rights, on equitable compensation concerning private copying”, on March 31, 2015, to the Assembly of the Republic, without promulgation, the same came into force last July 6, 2015. One of the issues that has been broadly discussed relates with the decision about who is going to pay, after all, the amounts of the levies foreseen in the table included in the Attachment I to the Law number 49/2015, of June 5, that modifies Law number 62/98, of September, 1. Some people consider that the importers and the sellers will be paying such costs but most part defends that the relevant amounts will be reflected in the prices to be paid by the clients/final consumers. The amount at stake intents to benefit the authors, artists or performers, editors and producers for copying and recording of works, in order to compensate them for any patrimonial damages suffered by private copying. In the case of devices and analogical and digital media that enable copying and storage of works, the amount set forth in the attachment I is included in the price of the first sale or of making available in the Portuguese territory (i.e., when the first transaction in Portugal occurs) and before the VAT is applied. The levies amounts are applicable, for example, to copy machines, printers, scanners, audio and video recorders, CD, DVD and Blue-ray recorders, CD, DVD, USB Memories, memory cards, disk drives, among several other media and storage devices, and the amounts may vary depending on the storage capacity, being the maximum cap € 20. II LEGISLATION Decree-law No. 45/2015. D.R. (Portuguese official gazette) No. 69/2015, Series I of 09-04-2015 It defines the forms of protection of the name, image and activities developed by the sports federations, as well as the respective administrative offense liability. WWW.CUATRECASAS.COM NEWSLETTER I INTELLECTUAL PROPERTY, MEDIA AND IT 3/8 Portaria (Ordinance) No. 105/2015. D.R. (Portuguese official gazette) No. 71/2015, Series I of 13-04-2015 It proceeds to the first amendment to the Portaria (Ordinance) n.º 272/2013, of August 20, that sets forth the requirements and the proceedings for the registration, at Direção Nacional da Polícia de Segurança Pública (PSP), of the entities that perform the study and conception, installation, maintenance or technical assistance of security material and equipment or of alarm centers. Portaria (Ordinance) No. 106/2015. D.R. (Portuguese official gazette) No. 71/2015, Series I of 13-04-2015 It proceeds to the first amendment to the Portaria (Ordinance) n.º 273/2013, of August 20, that foresees the specific conditions for the provision of private security services, the professional card model, and the proceedings for its issuance, as well as the technical requirements of the equipments, functioning and model of communication of the alarms. Law No. 26/2015. D.R. (Portuguese official gazette) No. 72/2015, Series I of 14-04-2015 It regulates the copyright and related rights’ collective management societies, including regarding its establishment in the Portuguese territory and the free provision of services of the entities previously established in another Member State of the European Union or of the European Economic Area and revokes the Law No. 83/2001, of August, 3. Law No. 32/2015. D.R. (Portuguese official gazette) No. 80/2015, Series I of 24-04-2015 It implements the Directive 2012/28/EU of the European Parliament and of the Council, of 25 October 2012 on certain permitted uses of orphan works and proceeds to the tenth amendment to the Copyright and Related Rights Code, approved by the Decree-Law No. 63/85, of March 14. Decree Law No. 64/2015. D.R. (Portuguese official gazette) No. 83/2015, Series I of 29-04-2015 It proceeds to the sixth amendment to the Decree-Law number 422/89, of December, 2, that reforms the Gambling Act. Decree Law No. 66/2015. D.R. (Portuguese official gazette) No. 83/2015, Series I of 29-04-2015 It approves the regulation regarding Gaming Online and it modifies the Advertising Act, approved by the Decree-Law No. 330/90, of October 23, the current General Stamp Duty Table, and the Decree-Law No. 129/2012, of June, 22. WWW.CUATRECASAS.COM NEWSLETTER I INTELLECTUAL PROPERTY, MEDIA AND IT 4/8 Implementing Regulation (EU) No 2015/806 of the Commission, of 22-05-2015. OJEU L 128/13, of 23-5-2015 Laying down specifications relating to the form of the «EU» trust mark for qualified trust services. Law No 49/2015. D.R. (Portuguese official gazette) No. 109/2015, Series I of 05-06-2015 It proceeds to the second amendment to Law No 62/98, of September, 1, that regulates the provisions of article 82 of the Code of Copyright and Related Rights, on equitable compensation concerning private copying. Deliberation No 1140/2015. D.R. (Portuguese official gazette) No. 117/2015, Series II of 18-06-2015 It proceeds to the update of the Industrial Property Fees Table. Rectification statement No 556-A/2015. D.R. (Portuguese official gazette) No. 123/2015, Series II of 26-06-2015 Rectification of the Industrial Property Fees Table. III CASE LAW Judgment of the Court (Fourth Chamber) of 5 March 2015. OJEU C 138/2 of 27- 04-2015 Case C-463/12 (Reference for a preliminary ruling - Copyright and related rights - Directive 2001/29/EC - Articles 5(2)(b) and 6 - Reproduction right - Exception - Copying for private use - Reproductions made with the aid of mobile telephone memory cards - Fair compensation - Levy on reproduction media - Equal treatment - Reimbursement of the levy - Minimal prejudice) The implementation of technological measures under Article 6 of Directive 2001/29 for devices used to reproduce protected works, such as DVDs, CDs, MP3 players and computers, can have no effect on the requirement to pay fair compensation in accordance with the exception to the reproduction right in respect of reproductions made for private use by means of such devices. However, the implementation of such measures may have an effect on the actual level of such compensation. Directive 2001/29 precludes national legislation which provides for fair compensation, in accordance with the exception to the reproduction right, in respect of reproductions made using unlawful sources, namely from protected works which are made available to the public without the right holder’s consent. WWW.CUATRECASAS.COM NEWSLETTER I INTELLECTUAL PROPERTY, MEDIA AND IT 5/8 Directive 2001/29 does not preclude national legislation which provides for fair compensation, in accordance with the exception to the reproduction right, in respect of reproductions of protected works made by a natural person by or with the aid of a device which belongs to a third party. Judgment of the Court (Fourth Chamber) of 26 February 2015. OJEU C 138/19, of 27-4-2015 Case C-41/14 (Reference for a preliminary ruling - Directive 2001/84/EC - Article 1 - Intellectual property - Sale at auction of original works of art - Resale right for the benefit of the author of an original work of art - Person liable for the resale royalty - Buyer or seller - Derogation by agreement) Article 1(4) of Directive 2001/84/EC of the European Parliament and of the Council of 27 September 2001 on the resale right for the benefit of the author of an original work of art must be interpreted as not precluding the person by whom the resale royalty is payable, designated as such by national law, whether that is the seller or an art market professional involved in the transaction, from agreeing with any other person, including the buyer, that that other person will definitively bear, in whole or in part, the cost of the royalty, provided that a contractual arrangement of that kind does not affect the obligations and liability which the person by whom the royalty is payable has towards the author. Judgment of the General Court (Second Chamber), of 21-04-2015. Case T-359/12 (Louis Vuitton Malletier vs. Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM)) (Community trade mark — Invalidity proceedings — Community figurative mark representing a brown and beige chequerboard pattern — Absolute ground for refusal — No distinctive character — No distinctive character acquired through use — Article 7(1)(b) and Article 7(3) of Regulation (EC) No 207/2009 — Article 52(1) and (2) of Regulation No 207/2009) The applicant has not filed any document containing information as to: the market share held by the contested mark; the intensity and amount of the investments made by the company to promote the mark; the proportion of the relevant class of persons who, because of the contested mark, identified the product as originating from a particular undertaking; and, has not submitted any statement from chambers of commerce and industry or other professional associations. The document referring to the turnover achieved on the sale of goods bearing the contested mark, which originated from the applicant itself, cannot, given its origin, therefore, in itself, constitute sufficient proof of that mark’s acquisition of distinctive character through use. The figures that are set out in that document are, therefore, indicative only and need to be corroborated by other evidence. Thus, in the absence of any other evidence to substantiate the information contained in that document, in particular other accounting documents certified by a firm qualified to certify those WWW.CUATRECASAS.COM NEWSLETTER I INTELLECTUAL PROPERTY, MEDIA AND IT 6/8 accounts, which could corroborate the figures set out in it, it must be held that that document, examined in the light of all the other evidence submitted by the applicant in the administrative procedure, cannot prove that the contested mark has acquired distinctive character through use. As regards the extracts from catalogues and brochures, the advertisements and photographs of personalities wearing a product bearing the contested mark, and, likewise, the photographs of the goods showing the chequerboard pattern of the contested mark, which have been added to the case-file, that material is insufficient, even if it is examined in the light of all the other evidence submitted by the applicant, to demonstrate that a significant part of the relevant public will identify the goods concerned as originating from the applicant because of the contested mark. It was, therefore, for the applicant to prove the acquisition of distinctive character through use in the part of the European Union in which the contested mark was devoid of any distinctive character ab initio, which is, in the present case, the whole of the European Union. Judgment of the Court (Ninth Chamber) of 26 March 2015. OJEU C 171/2, of 26- 5-2015 Case C-279/13 (Reference for a preliminary ruling - Approximation of laws - Copyright and related rights - Directive 2001/29/EC - Information society - Harmonization of certain aspects of copyright and related rights - Article 3(2) - Direct broadcast of a sporting fixture on an internet site) Article 3(2) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the information society must be interpreted as not precluding national legislation extending the exclusive right of the broadcasting organizations referred to in Article 3(2)(d) as regards acts of communication to the public which broadcasts of sporting fixtures made live on internet, such as those at issue in the main proceedings, may constitute, provided that such an extension does not undermine the protection of copyright. IV RESOLUTIONS, RECOMMENDATIONS, OPINIONS AND OTHER Council of Ministers Resolution No 22/2015. D.R. (Portuguese official gazette) No. 74/2015, Series I of 16-04-2015 It proceeds to the first amendment to the Council of Ministers Resolution No 112/2012, of December, 31, that approved the Portugal Digital Agenda. WWW.CUATRECASAS.COM NEWSLETTER I INTELLECTUAL PROPERTY, MEDIA AND IT 7/8 Interim agreement between the Commission, the European Parliament and the Council on the reform of the Community trade mark system, of 21-04-2014 After about 2 years of negotiations, the Commission, the European Parliament and the Council reached a provisional agreement on the reform of the European system of trademarks. The agreement is subject to confirmation by the Permanent Representatives Committee of the Council. The bases of this reform are: the significant reduction of the applicable rates, which could rise to 37%, in particular for businesses that intend to protect the respective trademarks in the European Union beyond the initial period of 10 years; the implementation by national institutes of effective and rapid administrative procedures for the revocation or declaration of invalidity of trademarks; enhanced means for the fight against counterfeiting in particular of goods in transit in the European Union; and adaptation of the designation and classification of goods and services to apply the recent EU case-law, in accordance with the international classification established by the Nice Agreement. Recommendation of the Committee of Ministers of the Council of Europe, on the processing of personal data in the workplace, of 1-04-2015 According to this recommendation, the employer should not question or ask an employee or job applicant, access to shared information with other people, in particular via social networks. The recommendation of the Council of Europe reinforces the guarantees with regard to emails referring, among others, that the content, sending and receiving electronic private communications at work should not be monitored in any circumstances and that the email must be disabled before the employee terminates his/her professional relationship with the employer. WWW.CUATRECASAS.COM NEWSLETTER I INTELLECTUAL PROPERTY, MEDIA AND IT 8/8 CONTACT CUATRECASAS, GONÇALVES PEREIRA & ASSOCIADOS, RL Sociedade de Advogados de Responsabilidade Limitada LISBOA Praça Marquês de Pombal, 2 (e 1-8º) I 1250-160 Lisboa I Portugal Tel. 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