Prize Promotions – Winner announcement requirement will not be enforced by ASA pending outcome of its GDPR consultation

By Claire Sng and Ella Castle

The UK’s Advertising Standards Authority (ASA) has announced it will not enforce the CAP Code rule requiring promoters to publish or make available the name and county of major prize winners, pending the completion of work arising out of its GDPR Consultation (expected to be completed in the autumn). The Consultation, which closed in June 2018, is aimed at ensuring the CAP Code meets the standards set out in the General Data Protection Regulation (GDPR), which came into force on 25 May 2018.


Rule 8.28.5 of the CAP Code, as currently drafted, requires promoters to publish the names, counties and (if applicable) winning entries of major prize winners or to provide these details upon request (except where prohibited by law). The rationale for this Rule is to facilitate transparency such that entrants feel the promotion has been run equitably and they have been dealt with fairly as required by Rule 8.2. It also requires promoters to obtain entrants’ consent to this publicity at the point of entry. In practice, the rule means that agreement to publication of this personal information will be a condition of entry into the promotion.

Until the entry into force of the GDPR, the ASA took the view that obtaining consent as an entry requirement was compatible with UK data protection law (Data Protection Act 1998). However, the GDPR now requires a higher standard of consent. For example, consent must be freely given by a clear and affirmative act, by a written or oral statement and it must be possible to withdraw this consent. Consent to publication of personal information may not be regarded as freely given (and therefore effective under GDPR) where there is a contractual requirement to provide such consent in order to enter a promotion.


CAP initiated its Consultation on the collection and use of data for marketing in May 2018. The purpose was to ensure the rules are aligned with the standards introduced by the GDPR. The Consultation particularly relates to CAP Code Section 10 (database practice i.e. use of data for direct marketing) and Appendix 3 (Online behavioural advertising). As with Rule 8.28.5, CAP announced it would not administer (ie would not enforce) these parts of the CAP Code from 25 May 2018 until the introduction of its new rules following the Consultation.

What does this mean for promoters?

The Consultation closed on 19 June 2018 and the work to implement the changes needed is expected to be completed during Autumn 2018. During this time, notwithstanding Rule 8.28.5, promoters do not need to announce details of prize winners or make them available on request because this rule is not being enforced. (Instead, the ASA has said that if they receive complaints during this time, they will notify promoters and check that they are aware of the need to comply with the GDPR.)

When drafting terms and conditions for entry into a prize promotion, promoters can now omit winner announcement details and the requirement for entrants to agree to such publicity. As an alternative, promoters may prefer to seek winners’ consent to any publicity (which may extend beyond the use of just name and county) only after they have won. This approach is likely to be a more appropriate approach from a data protection point of view.

It appears likely that, following the Consultation, CAP will permanently remove the requirement for winner announcements, as it is difficult to see how this could be retained in a way that complies with GDPR. Clarity on this issue should be provided in the autumn.

This is just one example of the various new challenges now posed to organisers of prize promotions as a result of GDPR coming into force, meaning that care must be taken and GDPR considered in relation to each use of personal data, particularly where that use goes beyond what is strictly required to administer the promotion (eg for publicity, direct marketing purposes).

For further information, please contact John Wilks (Partner, London), Claire Sng (Senior Associate, London) or Ella Castle (Associate, London).

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Getting The Deal Through – Gaming: Gambling regulation in Germany

Dr. Michael Stulz-Herrnstadt and Christoph Engelmann published the chapter on gambling regulation in Germany in the first edition of Gaming in the Getting The Deal Through series.

This chapter provides an overview of the laws and regulations that apply to gaming companies in Germany. Topics include: licensed and unlicensed gambling, licensing requirements for land-based and remote gambling, advertising restrictions and current developments affecting gaming operators.

You may download the complete chapter here.

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Domain names and WHOIS information in a post-GDPR world (gTLDs update)

By Claire Sng and John Wilks


With the General Data Protection Regulation (GDPR) having taken effect across the EU on 25 May 2018, this has meant a big change to the availability of WHOIS data (ie data recording – among other things – the persons who own domain names). See an earlier DLA Piper article published last month on this topic here.


Temporary arrangements are now in place so that the WHOIS system is still (in a much restricted form) available. This is as a result of the Temporary Specification for gTLD Registration Data (“Temporary Specification”) which came into effect on 25 May 2018 and applies to operators of gTLD registries and ICANN-accredited Registrars such as the likes of GoDaddy. However, as can be seen from the information below, the critical information for those bringing domain name disputes, namely registrant contact information, is no longer publicly available and as things stand currently there is no uniform way of obtaining access to it.


In addition, last week:


  1. WIPO published a Q&A to help clarify the impact of the GDPR on the Uniform Domain Name Resolution Policy (UDRP- the dispute resolution policy for gTLD domain names such as .com domain names) (see here).
  2. ICANN has published a model for access to full WHOIS data (see here), with requests for input on the proposal.


Set out below is a short summary of questions and answers to help explain these latest developments. Read the rest of this entry »

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UK: Supreme Court decision on costs in relation to blocking injunctions

By Ruth Hoy and Lesley-Ann Ainsworth

The Supreme Court has recently handed down its judgment in Cartier International AG and others v BT and another, allowing an appeal made by ISPs in relation to costs.


The judgment relates to the Court of Appeal decision we previously reported here where the Court dismissed the appeal brought by the main UK internet access ISPs against an order obtained by Cartier. The order forced the ISPs to block access to certain websites used to sell counterfeit goods. The Court of Appeal decision upheld that of the High Court and confirmed the broadened application of website blocking orders, which had previously only been based on copyright infringement, under S97A of the UK’s Copyright, Designs and Patents Act 1988 (“CDPA”). The Court of Appeal in its decision concluded that the costs of enforcing the orders should be borne by the ISPs rather than the rights holders.

Who should bear the costs of implementing the blocking orders?

The ISPs appealed to the UK Supreme Court on the question of costs and won. Implementation costs of blocking orders vary according to a number of factors and five broad heads of costs were discussed:

    (i) costs of acquiring and upgrading the hardware and software required to block target sites;

    (ii) costs of managing the blocking system, includes customer services and network management;

    (iii) marginal costs of the initial implementation of the order, which involves processing the application and configuring the ISP’s blocking systems;

    (iv) updating costs which include costs of updating the block, over the lifetime of the orders, in response to notifications from the rights-holders; and

    (v) costs and liabilities that may be incurred if blocking malfunctions through no fault of the ISP, for example in respect of malicious attacks provoked by the blocking or over-blocking.

The ISPs accepted that certain costs of implementation, namely under heads (i) and (ii), would be incurred in any event and therefore they did not complain about having to bear those costs. However, they disputed that they should also bear the costs under heads (iii), (iv) and (v).

The question at issue was therefore whether the rights-holders should have been required to indemnify the ISPs for implementation costs under heads (iii), (iv) and (v) above.


The judgment firstly considered Domestic law and occasions whereby innocent parties are asked to assist a claimant but would be entitled to its costs of that assistance, notably seen in jurisprudence relating to Norwich Pharmacal orders. The Court then considered the three relevant EU directives: the Parliament and Council Directives 2000/31/EC (“the E-Commerce Directive”), 2001/29/EC (“the Information Society Directive”) and 2004/48/EC (“the Enforcement Directive”). The conclusion drawn was that the Directives do not address the incidence of compliance costs in the relevant circumstances, and therefore it must be a matter of National law.

In turning to English law principles, the judgment considered and subsequently placed great weight on the legal innocence of the intermediary, remarking that ISPs would not incur liability for trade-mark infringement under English law, serving as a “mere conduit”. Lord Sumption concluded that without legal responsibility for the infringement, there would be no legal basis to require such innocent party to ‘remedy the injustice’ and therefore in these circumstances, bear the burden of costs of enforcing the blocking orders.

It follows that the decision given by Lord Sumption was in favour of the ISPs and that the rights-holders should indemnify the ISPs in respect of their costs of implementing the blocking orders.
Read the rest of this entry »

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Amendments to the Audiovisual Media Services Directive agreed.


The European Parliament, Council and Commission recently announced that they have reached preliminary political agreement on the principal revisions to the Audiovisual Media Services Directive (“AVMSD“). The negotiations will officially end in June this year when the remaining technical details of the proposal will be finalised.

The AVMSD defines the audiovisual media services regulatory framework within the EU and the proposals aim to address societal shifts in this sector including the increase of Europeans, especially younger generations, watching video content online or on-demand.

Minimum 30% quota for subscription video on-demand services

A key objective of the directive has been the promotion of European works and this is reflected in the new proposal. This rule imposes an obligation on subscription video on-demand service providers to ensure that at least 30% of works on their platform will be European. This 30% quota is likely to apply to all relevant service providers who offer their services within EU member states, including the likes of Netflix.

The minimum 30% quota corresponds to the European Council recommendation seen last year and calls from certain member states, including Greece, Spain and France, who proposed that the level be raised from the 20% quota initially proposed by the EU Commission. The proposal aligns with the EU aim to protect European content from the raft of Hollywood and US shows available.

Proposed changes

Along with the promotion of European works and the introduction of the 30% quota other key amendments include:

• Reinforcing the independence of audiovisual regulators;
• Revised “Country of Origin” principle;
• Strengthened protection of minors against harmful content (TV or VOD);
• Extension of certain European audiovisual rules to video-sharing platforms;
• Increasing flexibility in television advertising rules; and
• Alignment of rules prohibiting hate speech.

We will as ever keep you up to date with developments in this area.

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IAAF publishes new Eligibility Regulations for Female Classification

The IAAF has published new “Eligibility Regulations for Female Classification” (the “Regulations“), which can be found here. The Regulations set out a number of criteria that athletes with “differences of sex development” must meet in order to be eligible to compete in the female category of track events between 400m and a mile (the “Restricted Events“) in an international competition (or to set a world record in such an event). The Regulations define “differences of sex development” (“DSD“) as “a congenital condition that causes atypical development of their chromosomal, gonadal, and/or anatomic sex”.


The Background

The Regulations replace the previous Regulations Governing Eligibility of Females with Hyperandrogenism to Compete in Women’s Competition, which were challenged before the Court of Arbitration for Sport (“CAS“) by Indian 100m sprinter Dutee Chand in 2015 after she was prevented from attending the Glasgow 2014 Commonwealth Games on the basis of her increased testosterone levels. The CAS panel determined that the IAAF had not provided sufficient scientific evidence about the relationship between enhanced testosterone levels and improved athletic performance in hyperandrogenic athletes. In the absence of such evidence, the Panel was unable to conclude that such athletes enjoyed such a significant performance advantage that it was necessary to exclude them from competing in the female category, and ordered that the Hyperandrodgenism Regulations be suspended for two years, during which the IAAF could collate and submit further evidence in support. The CAS panel’s decision is available here.

The IAAF submitted further material to CAS on 27 September 2017, which included expert reports, legal submissions and a draft of the new Regulations. CAS held that the material submitted was sufficient to comply with the panel’s directive, but made no ruling on the sufficiency of the further evidence at that time. As the new Regulations replace the Hyperadrogenism Regulations, this terminates the CAS proceedings, and so no opinion on the sufficiency of the evidence will be forthcoming from CAS. However, the IAAF maintains that their latest evidence shows a performance advantage in female athletes with DSD over the Restricted Events. See the CAS media release here.


The Conditions

Under the new Regulations, which come into force on 1 November 2018, Relevant Athletes (i.e. those who, as a result of their DSD, produce significantly higher levels of testosterone than the average female) must:

(i) be recognised at law (for example under their birth certificate or passport) as female or intersex (or equivalent);

(ii) reduce their testosterone levels to below the specified level for a continuous period of six months before they can compete (e.g. through hormonal contraceptives); and

(iii) maintain their testosterone levels below such level for so long as they wish to remain eligible to compete (whether in or out of competition).

Relevant Athletes who do not meet the above conditions (or who fail or refuse to submit to testing in relation to them) remain eligible to compete: (i) in the female category (a) in international competitions in events other than the restricted events; or (b) in the restricted events outside of international competitions; (ii) in male or intersex classifications for all events including the restricted events.

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Bundesliga clubs confirmed 50+1 rule – but liberalisation plans for Investors are not off the table

For decades investors have been interested in German football. However, on 22 March 2018 the German Football League (“DFL”) voted in favour of generally retaining the 50+1 Rule. This rule, which is unique throughout Europe, was established in 1998 and in short means that investors cannot take over clubs as the clubs shall hold a majority of their own voting rights. German clubs are generally controlled by associations made-up of fee paying members, rather than investors. The 50+1 Rule ensures that the association members – and, by extension, the fans – retain overall control and investors cannot potentially push through measures prioritising profit or personal interests over the wishes of the association. The majority of the 36 clubs in Bundesliga and 2. Bundesliga have now generally voted to retain this principle, however plans for liberalisation are not off the table.

At the DFL meeting, 18 of 34 attending clubs somewhat surprising voted in favour to declare its support for a “process to improve legal certainty and further reflection on changing framework conditions while generally retaining the 50+1 Rule“. There were also nine abstentions and four clubs voted against the request of the second-league club. Three other clubs present and entitled to vote did not participate in the vote at all. On the one hand, this result shows that the maintenance and concrete design of the 50+1 Rule is not only the subject of highly controversial discussions in the fan scene and the public, but also that the clubs themselves have different views on opening up to investors. The Rule has long been much more than a sober paragraph, it is an emotional and sometimes overused symbol in the debate about the future of the football business and the question “who owns football?”. On the other hand, the clubs are well aware that the controversial regulation has preserved the identity and independence of German football to date, but that it is nevertheless ultimately based on a fragile (European) legal construct. In addition, many clubs have recognised that German football cannot permanently close itself off from investors if they want to keep pace with the current financial and sporting developments in Europe. The current resolution therefore also reflects this initial situation. Although the majority of clubs are in favour of continuing to apply the rule, it has also been made clear that the medium and long-term structure is open and will be discussed intensively in the future. In this respect, the decision can certainly be regarded as a progress. A permanent perpetuation of the current status has therefore not taken place.

The now solidified position of the clubs initially results in a strengthening of the 50+1 Rule but it also creates a remarkable loophole. It is still to be considered how the DFL will deal with the concrete application and procedures of the 50+1 Rule in the future. Plans for liberalisation therefore are not off the table. Quite the contrary, it seems to be clear that material changes will be discussed but 50+1 in some way will remain the framework. This is particularly relevant because there are powerful voices within the DFL warning against the legal weakness of the rule and potential threatening court procedures in the future. Even after the 22nd March ruling, there is no legal certainty. If a club decides to take legal action, 50+1 would suddenly be in the balance again.

For current and potential investors in German football it is crucial to follow DFL´s next steps and the process of reform. Furthermore, there are already broad opportunities to invest in German football under the current legal framework and stakeholders that have already invested will be in pole position when the new 50+1 Rules allow broader involvement in clubs’ decisions and futures. However, the current development and discussions have shown that any changes in 50+1 and a broader investment of private investors in German football needs to be considered alongside fans and club members’ sensitivities, as they have unmistakably made clear their continued significant influence. There will be no fruitful partnership without having fans and club members on board. Therefore, not only economic interests have to be considered but also political and social acceptance in German football society. For successful investments in German football a broad market knowledge is crucial.

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Global Media Sector Trends 2018

DLA Piper’s new Global Media Sector Trends 2018 report explores how new commercial opportunities are being created by disruption, specifically in relation to the rise of over-the-top (OTT) content, virtual / augmented reality (VR/AR) and the internet-of-things (IOT).

Read the rest of this entry »

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Filing of a literary work in court proceedings constitutes a breach of the Swedish Copyright Act

The Swedish Patent and Market Court of Appeal have ruled that the act of electronically submitting a short novel to the court as evidence in a court case constitutes an unlawful reproduction of the work and in breach with the Swedish Copyright Act. However, the filing of the work was not considered as a communication to the public or that the work was otherwise distributed to the public.

A parent had submitted a private novel/letter written by her former partner in a custody dispute. The father who was the author of the novel/letter, and lost the custody case, then sued his former partner arguing that her submitting the novel/letter to the court was an unlawful communication to the public as well as an unlawful reproduction of his work.

Although infringing, the Swedish Patent and Market Court of Appeal found the reproduction being so insignificant that no remuneration was awarded the author.

The case might raise the question if an attorney can become jointly liable with his/her client for copyright infringement when filing a copyright protected work in a court proceeding.

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SCOTUS invites Solicitor General’s position on copyright registration pre-suit requirement

By Tamar Duvdevani and Matthew Ganas (with contributions from Michael Varrige)

The Copyright Act (the “Act”) permits copyright holders to bring civil infringement actions in federal district courts to enforce the exclusive rights provided under the Act, namely, the rights to reproduce, distribute, display, publicly perform, and create derivatives of an original work of authorship.  However, an infringement action cannot be brought for a “United States work” until preregistration or registration of the copyright “has been made in accordance with [the Act].”  17 U.S.C. § 411.  Due to differing interpretations of this provision, United States courts are currently split over whether a plaintiff in a copyright action is required to have an issued copyright registration before suing for infringement of a domestic work, or if all that is necessary in order to commence a federal litigation is the filing with the United States Copyright Office of a copyright application.

In particular, U.S. Circuit Courts of Appeal disagree on when a copyright registration “has been made” in order to the satisfy the Act’s pre-suit registration requirement.  The Fifth and Ninth Circuits interpret the Act to require only that an application be on file with the Copyright Office prior to commencement of litigation (“the application approach”).  The Tenth and Eleventh Circuits, in contrast, maintain that a copyright must first be registered (“the registration approach”).  The Seventh Circuit has expressed conflicting views on the applicable approach, and the First, Second, Third, Fourth, Sixth and Eighth Circuits have yet to directly address this issue.  Whether this provision requires a completed registration or merely an application before filing suit is directly at issue in Fourth Estate Public Benefit Corp. v. LLC (“Fourth Estate”), a case currently making its way up through the federal appeals process, most recently by a cert. petition that was filed with the U.S. Supreme Court.

The practical distinction between the differing approaches is the timing of the filing of a federal copyright action.  Unlike the submission of a copyright application which can be done quickly, registration requires the Copyright Office to examine an application and certify that the applied-for work qualifies for protection, a process that generally takes several months.  Thus, Fourth Estate raises statutory and procedural issues potentially critical to U.S. copyright holders seeking to enforce their exclusive rights expeditiously, in any available forum.

The Fourth Estate case involves copyright infringement claims for “United States works,” thereby triggering the Act’s registration requirement.[1]  Plaintiff Fourth Estate Public Benefit (FEPB) sued defendant, asserting infringement of copyrights in articles posted on defendant’s website after its license from FEPB allegedly lapsed.  Although FEPB had filed applications for registration for the allegedly infringed works with the U.S. Copyright Office, it did not receive certificates of registration before filing suit.  The Florida district court thus dismissed the action, reasoning that FEPB failed to comply with the Act’s registration requirement.  In May 2017, the Eleventh Circuit Court of Appeals affirmed the dismissal, holding that merely filing an application is insufficient to satisfy the Act’s registration requirement.

In October 2017, FEPB petitioned the U.S. Supreme Court for review of the Eleventh Circuit’s decision.  FEPB asks the Court resolve the current circuit split in favor of the more lenient, and plaintiff-friendly, application approach.  In response, advocates for the stricter registration approach, relying on the Act’s statutory text and contending that this approach better serves the Act’s underlying policy goal of encouraging registration.

Most recently, on January 8, 2018, the Supreme Court invited the U.S. Solicitor General (SG) to file a brief expressing the U.S. government’s views on this issue.  The SG was not given any deadline to file its brief, and thus there is currently no definitive timeline for when the Supreme Court may decide FEPB’s petition.  However, the Court’s request for the SG’s view is an indication of serious interest in the petition.  If the SG recommends granting FEPB’s petition, then there is a strong chance that the Court may weigh in to resolve the current discrepancy among the lower courts.

Should the Supreme Court grant cert., this is a case all content owners should be watching.  A holding in favor of the registration approach could create greater incentives for copyright owners to promptly register their works in order to guarantee that any subsequent litigation is filed within the Act’s three year statute of limitations.  Such a holding would also have the added effect of increasing the opportunity for plaintiffs to seek statutory damages, which are generally only available if a copyright registration is filed prior to an infringing act.  Alternately, a holding in favor of the application approach will eliminate a defense previously available in district courts around the country, and allow serial copyright litigants to relentlessly commence federal actions without waiting to see if the Copyright Office issues a registration in connection with the applied-for work.

[1] The Act’s pre-suit registration requirement only applies to “United States works.”  Generally, works first published outside of the U.S. are exempt, so that owners of non-U.S. works can sue for domestic acts of infringement without ever applying for copyright registration.  This exemption arises from the United States’ ratification and enactment of the Berne Convention, an international agreement that encourages uniform processes for the enforcement of copyrights in any party member jurisdiction.  To protect against infringing activities abroad, copyright holders from Berne Convention member states need not adhere to administrative formalities, like registration, specific to the jurisdiction where an infringement action is brought.  That being said, U.S. copyright registration can provide certain benefits for non-U.S. copyright owners in the litigation context.  Registered copyrights enjoy a presumption of validity, for example, and copyright registration is still required to recover statutory damages and attorney’s fees, when available, for successful infringement suits.

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