Wednesday, 22 March 2017

R.I.P. Conceptual Separability Test


The US Supreme Court held on March 22, 2017 that a feature incorporated into the design of a useful article is eligible for copyright protection “if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.” The case is Star Athletica LLC v .Varsity Brands. Justice Thomas wrote the opinion of the Supreme Court.
Conceptual Separability is Much Safer
Readers of this blog may remember that this case is about whether cheerleading uniforms can be protected by copyright. Both parties are creating and selling cheerleading uniforms. Varsity Brands has registered some 200 copyrights for two-dimensional designs appearing on the surface of their uniforms and other garments. It sued Star Athletica for copyright infringement, claiming that its competitor had copied five of its designs protected by copyright. The Western District Court of Tennessee granted summary judgment to Star Athletica, reasoning the designs could not be protectable by copyright, as they could not be separated from the utilitarian function of the uniforms (see here for more). On appeal, the Sixth Circuit Court of Appeals reversed, finding Varsity's designs to be copyrightable graphic works. The Supreme Court affirmed.

Useful articles cannot be protected by copyright, but a pictorial, graphic, or sculptural work incorporated in the useful article can be protected if it is separable from the useful article. However, such design must be capable of being “identified separately from, and [must be] capable of existing independently of the utilitarian aspects of the article,” 17 U.S.C. § 101. The design can be physically separable or “conceptually separable” from its utilitarian aspect. Physical separability occurs if the feature seeking copyright protection can “be physically separated from the article by ordinary means while leaving the utilitarian aspects of the article completely intact,” Compendium §924.2(B). This is easily understandable, but conceptual separability, which applies if physical separability by ordinary means is not possible, is the stuff [bad] dreams [of IP attorneys] are made of. Or, at least, it was, as today’s opinion signs its demise.

The first part of the new test requires that the design seeking copyright protection must be able to be perceived as a two or three-dimensional work of art separate from the useful article. This was the case here. Justice Breyer dissented from the majority, reasoning that the designs on the cheerleading uniforms are not separable because if one would remove them from the uniforms and place them on another medium of expression, such as a canvas, it would create “pictures of cheerleader uniforms.” But Justice Thomas wrote that this does not prevent these deigns to be protected by copyright, because

“[j]ust as two-dimensional fine art corresponds to the shape of the canvas on which it is painted, two-dimensional applied art correlates to the contours of the article on which it is applied.  A fresco painted on a wall, ceiling panel, or dome would not lose copyright protection, for example, simply because it was designed to track the dimensions of the surface on which it was painted” (p. 11).

The second part of the new test requires that the design must be able to exist apart from the utilitarian aspect of the article, as its own pictorial, graphic, or sculptural work. If it can’t, then it is one of the useful article utilitarian aspects. Thus, the design cannot be itself a useful article (p. 7).

This interpretation is consistent with Mazer v. Stein, a 1954 Supreme Court case studied by all U.S. copyright students. Justice Thomas noted that two of its holdings are relevant in our case (p. 9).  The Court held in 1954 a work of art which serves a useful purpose can be protected by copyright. In the case of Mazer v. Stein, it as was statue which served as a lamp base. The Court also held in 1954 that a work of art is copyrightable even if it was first created as a useful article. Justice Thomas specified that, in our case, the Court interpreted the Copyright Act in a way which is consistent with Mazer v. Stein as today’s opinion “would afford copyright protection to the statuette in Mazer regardless of whether it was first created as a standalone sculptural work or as the base of the lamp.

R.I.P. conceptual separability test. Justice Thomas explains it is no longer needed, as “[c]onceptual separability applies if the feature physically could not be removed from the useful article…. Because separability does not require the underlying useful article to remain, the physical-conceptual distinction is unnecessary” (p.15).

Justice Thomas clarified the scope of the opinion as such:

To be clear, the only feature of the cheerleading uniform eligible for a copyright in this case is the two-dimensional work of art fixed in the tangible medium of the uniform fabric. Even if respondents ultimately succeed in establishing a valid copyright in the surface decorations at issue here, respondents have no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions to the ones on which the decorations in this case appear” (p. 12).

But what is a particular uniform feature stripes and chevrons, not because they are applied on the uniform, but because the uniform is cut in such a way and using such contrasting colors that particular designs are appearing?

Justice Ginsburg concurred, but she took the view that “[c]onsideration of [the separability] test is unwarranted because the designs at issue are not designs of useful articles. Instead, the designs are themselves copyrightable pictorial or graphic works reproduced on useful articles… [and may thus] gain copyright protection as such” (p. 23 and p. 24).

Should we cheer? Time will tell.

Interested in EU copyright and wish to discuss it in Florence? Here's the event for you

Copyright + Florence =
As previously reported on The IPKat, there is an event that is taking place next month and will be of interest to 1709 Blog readers. 

Entitled 'European copyright - quo vadis?', this 2-day conference [that I have helped organising] has three irresistible features: 

  1. It is about EU copyright;
  2. It is going to be held in Florence;
  3. It is going to be held in Florence in late April (28 and 29 April).
More specifically, the conference will be held at the European University Institute and will discuss the recently proposed press publishers' right (Article 11 of the Proposal for a Directive on copyright in the Digital Single Market) and the so called 'value gap' proposal (Article 13 of the same directive).

The event will provide a forum for discussion and exchange of opinions between policy makers and academics, as well as representatives of business and non-governmental sectors. It will consist of keynote addresses, panel presentations, and roundtable discussions alike.

Confirmed keynote speakers include - amongst others - MEP Therese Comodini-Cachia, European Parliament rapporteur on the EU Commission's copyright proposal, and Giuseppe Abbamonte, the Director of the Media and Data Directorate at DG for Communications, Networks, Content and Technology within the European Commission.

The draft programme is available here.

Attendance to the event is free, but registration is required. Just click on this link for more information and to register!

Tuesday, 21 March 2017

Wish to discuss GS Media and linking?

Well, who could possibly reply 'no' to such a question?!?

If you are in London in the evening of Tuesday, 28 March, then you may want to attend the new event organised by TIPLO (The Intellectual Property Lawyers Organisation), to which I have also been kindly invited to speak.

Entitled 'Linking after GS Media: clear (and happy) at last?', this meeting consists of a convivial dinner in the beautiful premises of Middle Temple (The Princes' Room to be more precise), followed by a discussion of the issues addressed (and raised) by everybody's favourite court, ie the Court of Justice of the European Union (CJEU), in its seminal decision in GS Media, C-160/15.

In that case the CJEU tackled the issue of linking to unlicensed copyright content, and determined what the relevant legal treatment should be.

Yet, the ruling raises several questions:
  • How did the CJEU reach that decision?
  • Where are we after GS Media: is the relevant legal framework on linking any clearer now?
  • Profit-making intention: what is it all about?
  • Who is likely to be most at risk in the post-GS Media world?
Click on this (GS Media-approved) link for further information and to register your place.

Friday, 17 March 2017

THE COPYKAT

Hello to Robo Lawyer - created to make hyperlinking easy - and the website describes Robo as follows: "​I am Robo Lawyer programmed to help reduce legal risks related to publishing hyperlinks on the Internet. I am currently programmed to help you if you are from European Union. I know the EU law and the rulings of the Court of Justice of the EU, especially the ruling in the famous GS Media case." Robo lives as a chatbot in Messenger, so you need a Facebook account if you fancy a chat. The creator is Tomasz Zaleski (Eversheds Sutherland Poland). 

Songwriter? Lyricist? Need some help with copyright? Going for a Song tells the story of Tina and Ben, a music composer and a lyricist who create an original song and discuss how to market it. This new tool helps musicians learn how UK copyright law regulates different aspects of the journey of a song, from its creation to its distribution.


A motion to dismiss has been filed by attorneys representing Cher in the copyright infringement case filed against her by graphic designer Moshik Nadav concerning the artwork and in particular the graphics on the cover of Cher's Closer To The Truth release. The 2013 album was Cher’s 25th studio release. Nadav’s suit, in the Southern District of New York, names Cher, Warner Bros. Records, a design company and the albums’ art and design director as defendants and seeks $5 million in damages. According to Nadav's complaint, two logos that appear on Cher's album infringe on the copyrights to his Paris and Paris Pro logos, which he claims were created using his typography, featuring “artistic elements, such as swashes having various thicknesses, end drops and unique lettering.” Section 202.1 of the US Copyright Act, which gives examples of works not copyrightable, including “mere variations of typographic ornamentation, lettering or coloring" but here Nadav says Cher's work is substantially similar to his own logos - and he has obtained copyright registrations for those - but this looks like an uphill battle. More here.


Alleged KickassTorrents owner Artem Vaulin's defence team have said he will appeal last week's extradition ruling. Lead counsel Ira Rothken stresses that the refusal of the Polish court to grant bail and the unprecedented allegations violate the human rights of his client. The team is confident that they can book a positive outcome on all fronts. Last week a Polish court ruled that Vaulin could be extradited to the United States.

California’s Supreme Court is set to decide if the state’s copyright law protects the performing right as part of the sound recording copyright - an important question as federal copyright law only protects sound recordings released post 1972. It was in California where the Turtles secured their big win, with a court there ruling that there was a general performing right for sound recordings, a landmark ruling that forced both Sirius and Pandora to agree settlements with the wider record industry, especially once a New York court indicated there was likely a performing right under that state’s copyright law as well - but that new York decision has now been overturned on appeal.  Now the Nine Circuit Court Of Appeal has asked the California's Supreme Court to rule on the matter once and for all. Requesting the opinion the Ninth Circuit said this “is warranted if there is no controlling precedent and the California Supreme Court’s decision could determine the outcome of a matter pending in our court” and “This appeal not only meets both criteria, but also presents an issue of significant public importance”. The Californian court does not have to accept the question.


One of the more incredible allegations about Prenda Law, the copyright-trolling operation that sued people for downloading movies online, was that the lawyers behind it might have created and uploaded some of the porn in question simply as a way to catch more offenders. Now ArtsTechnica tells us this may well be true, and despite repeated denials by the Preda lawyers, in a new update it seems they were indeed making movies:  "Steele pled guilty in Minnesota to federal charges of "conspiracy to commit mail and wire fraud" and to money laundering. And guess what? In 2011, Team Prenda had in fact become porn producers (They continued to have other "real" clients at that time as well.)" and "On at least three separate occasions in Chicago, Miami, and Las Vegas, Steele and [Paul] Hansmeier... contracted with adult film actresses and produced multiple short pornographic films" 


Torrentfreak also updates us on trolls, saying "A copyright troll that terrorized service providers over alleged copyright infringement is set to forfeit the very assets that made its entire campaign possible. After losing an aggressive lawsuit against Giganews, Perfect 10's multi-million dollar bill will now be satisfied by the Usenet provider liquidating the adult publisher's intellectual property".  Perfect 10 was originally an adult entertainment magazine that also operated a subscription website featuring images of women. In November 2014, the U.S. District Court for the Central District of California found that Giganews was not liable for the infringing activities of its users. Perfect 10 was ordered to pay Giganews $5.6m in attorney’s fees and costs and this was upheld on appeal.  

Sports Photographer: Don’t Mess with My Copyright


Photographer Rogelio Albert Pena was at the right place at the right time on May 16, 2016, when baseball player Rougned Odor, playing for the Texas Rangers team, punched Jose Batista, of the Toronto Blue Jays, during a game. Mr. Pena was able to capture the moment when Jose Batista was hit in the face so roughly by Rougned Odor that he lost his sunglasses and his batting helmet. Baseball is a non-contact sport, but the benches occasionally clear for an on-field brawl.
Plaintiff discovered that Defendant, a Dallas celebrity sports and gift store, is selling framed copies of the photograph, with a “Rougned Odor: Don’t Mess With Texas II” caption below the picture. These framed photos do not identify Plaintiff as the author of the work. Plaintiff has not licensed his work to Defendant and had not authorized such a derivative work to be produced and sold.

On March 13, 2013, Mr. Pena filed a copyright infringement suit in the Southern District of New York against Celebrities Unlimited, claiming that it is selling copies of the photograph without authorization, and without displaying the name of the author. The case number is 17-cv-1853.

Plaintiff is claiming that by producing, publicly displaying, and selling these framed photos, Defendant infringes on his copyright and is seeking up to $150,000 per work in statutory damages. Plaintiff further alleges that, by removing and altering the copyright management information which identified Plaintiff as the author of the photograph, Defendant violated Section 1202(b) of the Copyright Act, 17 U.S.C. § 1202, which prohibits to “intentionally remove or alter any copyright management information.” Plaintiff published the photograph online, and was credited as its author.

What could Defendant argue in defense? The defense of fair use is likely to fail, unless Defendant can prove that the work is not protected by copyright. The use of the photograph is commercial (fourth factor) and Defendant used the entire work protected by copyright (third factor). The nature of the original work, the second factor, is debatable: is the work a photograph which Plaintiff snapped just at the right time, or is it an original composition?

The composition of the photograph resembles the one of a baroque painting: the two players are seen each on a different side of the work, not at its center. The arm of the player in blue enters the space of the player in red, in a diagonal, and the arm of the player in red enters the space of the player in blue, in diagonal. The leg of the player in blue enters the space of the player in red, in a diagonal, and the leg of the player in red enters the space of the player in blue, in diagonal. Both players sport beards. One player is in red, the other one in blue. The player in red is the one punching the player in blue. The red uniform has blue elements. The blue uniform has red elements, including in the helmet seen flying away. The sunglasses have reddish lenses.

Is this photograph “the product of plaintiff's intellectual invention, of which plaintiff is the author,” as is the photograph of Oscar Wilde that, in 1884, the Supreme Court found worthy of copyright protection in Burrow-Giles Lithographic Co. v. Sarony? In this case, the Supreme Court detailed the choices made by the photographer, such as “selecting and arranging the costume, draperies, and other various accessories in said photograph, arranging the subject so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired expression, and from such disposition, arrangement, or representation, made entirely by plaintiff, he produced the picture in suit." Plaintiff in our case did not select the player’s uniform, their stance, their expression, or the other accessories.

The photography at stake here is registered with the Copyright Office, and this registration is prima facie evidence that it is protected by copyright, However, 17 U.S.C. § 410 (c) states that, “[t]he evidentiary weight to be accorded the certificate of a registration made thereafter shall be within the discretion of the court.” In others words, the court may decide that a work registered with the Copyright Office for less than five years is indeed protected by copyright. Defendant may thus use as a defense a claim that the work is not protected by copyright. Plaintiff would then have to prove that the work is indeed the product of his intellectual invention… Did he alter it after taking it? Did he emphasizes the colors or the shadows of the works, crop it to emphasize the dramatic moment?

If the court would find that the work is not protected by copyright, it would grant Defendant’s motion to dismiss (yet to be filed). Game over. If it would find the work to be indeed protected by copyright, then Defendant’s last chance would be to prove that its use of the photograph was so transformative that it is fair use, under Section 107’s first factor. As explained by the Supreme Court in Campbell v. Acuff-Rose Music, Inc., a work is transformative if it alters the original work by adding "new expression, meaning, or message.” A satire or a parody is transformative: is the comment added under the picture enough to make it a satire, of say, Texas?

Defendant, though, has a few innings ahead. He should not hire a rookie lawyer if he does not want to strike out.

Lawyers, artists to speak on seminal verdict of 'Blurred Lines' case

Screenshot from "Blurred Lines" music video featuring Robin Thicke, T.I. and Pharell Williams

On March 23, Silicon Flatirons will host a conference, Blurred v. Bright: The Changing Analysis of Copyright Infringement in Music, bringing together some of the nation’s brightest artists, lawyers, policymakers and academics to discuss the rapidly changing analysis of copyright infringement in music.
The "Blurred Lines" case, in which Marvin Gaye’s estate secured a multi-million dollar judgment against songwriters and recording artists Pharrell Williams and Robin Thicke for copyright infringement stemming from similar sounding songs, has dominated recent industry headlines.
If you go
Who: Open to the public
What: Blurred v. Bright: The Changing Analysis of Copyright Infringement in Music
When: Thursday, March 23, 1 to 5 p.m.
Where: Wolf Law Building, Wittemyer Courtroom
But what determines permissible inspiration in music versus unlawful copyright?
For some commentators, the "Blurred Lines" case is a win for artists whose work is routinely “borrowed” from without compensation or attribution. But in an era in which new music often evokes earlier works, the holding is alternately viewed as a potential threat to artistic creation, to the ultimate detriment of the public.
Whatever the take, this seminal verdict marks a significant development in the application of copyright’s substantial similarity doctrine to music.
The conference will feature Richard Busch, attorney to Gaye's estate, as well as musicians Aloe Blacc and DJ Spooky and music and legal scholars from CU and other universities. 
Online registration closes March 22, but walk-ins are welcome. Fore more information and to register, visit the Silicon Flatirons website.
This event will also be live streamed on the Colorado Law website.

Wednesday, 15 March 2017

French Government Adopts Long-Awaited Decree Compensating ISPs for HADOPI-relatedTasks


Last Thursday (March 9, 2017) the French government finally adopted the long-awaited decree setting out the method of calculation for compensating ISPs for their participation in the so-called graduated response system (overseen by HADOPI).

Decree 2017-313 adds a Section R. 331-37-1 to the Intellectual Property Code that sets out the excess costs with respect to which the ISP may claim compensation, namely those specifically identified as relating to:

a) the design and deployment of information systems or, where applicable, their adaptation, necessary for the processing of subscriber identification requests;

b) the functioning and maintenance of information systems necessary for the processing of subscriber identification requests; and

c) personnel related to the processing of subscriber identification requests.

Where identification requests processed during a given year by an ISP exceed a threshold justifying automating the processing, the costs referred to in a) and b) are to be compensated by an annual lump-sum.  Those related to c) are to be compensated for each request according to rates based on the nature of the request. Where identification requests processed during a given year by an ISP are less than the threshold, the costs referred to in b) and c) are to be compensated for each request according to rates based on the nature of the request.

A subsequent ministerial order will set the threshold, the annual lump-sum compensation and the rates. 

Text of decree (in French)  here

Tuesday, 14 March 2017

First live blocking order granted in the UK

this update from Eleonora Rosati on the IPKat

Can an injunction be sought against an access provider that would require this to block access not to a website [as per the standard scenario] but rather streaming servers giving unauthorised access to copyright content? Can such an injunction consist of a 'live' blocking, ie a block limited to when the relevant content is being streamed? 

An application of this kind was recently and successfully made - for the first time as far as the UK is concerned - by the Football Association Premier League (FAPL, supported by other rightholders) against 6 main retail internet service providers (ISPs).

In yesterday's decision in FAPL v BT [2017] EWHC 480 Ch Arnold J concluded that the High Court has jurisdiction to make an order of the kind sought by FAPL.

The law

Arnold J noted at the outset how the law on copyright blocking injunctions under s97A of the Copyright, Designs and Patents Act (CDPA) [by which the UK transposed Article 8(3) of the InfoSoc Directive into its own law] "is now fairly well established" [the first blocking injunction was granted in Newzbin 2 - here - in 2011], and was recently reviewed by the Court of Appeal of England and Wales in Cartier, ie in the context of trade mark blocking injunctions under s37(1) of the Senior Courts Act 1981 [here and here].

The application: what has changed

As explained by the learned judge [para 10], through its application for a blocking order FAPL sought to combat the growing problem of live Premier League footage being streamed without authorisation on the internet. 

Since the decision in FAPL v Sky in 2013, things have gotten worse for a rightholder like FAPL.

First, consumers are increasingly turning to set-top boxes, media players and mobile device apps to access infringing streams, rather than web browsers running on computers. The direct consequence of this is that "traditional blocking orders (targeting websites) will not be able to prevent the growing majority of infringements, because these devices do not rely upon access to a specific website in order to enable consumers to access infringing material. Instead, such devices can connect directly to streaming servers via their IP addresses." [para 11].

Secondly, access to and use of the devices mentioned above does not present many challenges [para 12].

Thirdly, there is a significant availability of high-quality infringing streams of footage of each Premier League match [para 13].

Fourthly, evidence suggests that a "significantly higher proportion of UK consumers believes that it is lawful to access unauthorised streams using such devices and software than believes that it is lawful to access unauthorised content via file-sharing websites." [para 14]

A stream and a Kat
Fifthly, the streaming servers [these being crucial to making the content accessible to the viewers] used to make available infringing streams to the public have increasingly been moved to offshore hosting providers who do not cooperate with rightholders' requests to take down infringing content either at all or in a timely manner [the latter being essential for a rightholder like FAPL; para 15]

According to Arnold J, as a result of these factors, evidence supports the view that football fans are turning to streaming devices instead of paid subscription services [para 16].

The order sought: identification of streaming servers

In light of the above, FAPL sought an order that would order 6 ISPs to block access to a number of streaming servers identified in different ways and according to a 2-stage process. 

While one identification criterion remains confidential, Arnold J held the view that other criteria should be described for public interest reasons [para 21].

These are that FAPL (and its appointed contractor) [para 21]:
  • must reasonably believe that the server has the sole or predominant purpose of enabling or facilitating access to infringing streams of Premier League match footage; or
  • must not know or have reason to believe that the server is being used for any other substantial purpose.

The order sought: what is new

In addition, the order sought by FAPL was different from previous ones for a number of reasons.

First, it is "a "live" blocking order which only has effect at the times when live Premier League match footage is being broadcast". [para 24]

Secondly, the order provides for the list of target servers to be "re-set" each match week during the Premier League season. [para 25]

Thirdly, the order sought would be only for a short period: 18 March 2017 - 22 May 2017 [that is when 2016/17 Premier League season ends].

Fourthly, in addition to the safeguards which have become standard in section 97A orders, the order would require a notice to be sent to each hosting provider each week when one of its IP addresses is subject to blocking. [para 27]

Profit made
The decision: communication to the public by streaming servers (and first UK application of GS Media)

While reviewing the (classic) jurisdictional requirements under s97A CDPA, Arnold J also tackled the issues of whether the operators of the target servers would make acts of communication to the public within s20 CDPA

He concluded in the affirmative for a number of interesting reasons, including that the operators "intervene deliberately, and in full knowledge of the consequences of their actions, to give access to the Works in circumstances where the users would not in principle be able to enjoy the Works without that intervention" [para 34, referring to the decision of the Court of Justice of the European Union (CJEU) in GS Media].

As far as I know, this is the first UK application of GS Media. Of particular interest is paragraph 37, in which Arnold J touched upon the issue of 'profit-making intention':

"Generally speaking, the operators of the Target Servers are not merely linking to freely available sources of Premier League footage. Even if in some cases they do, the evidence indicates that they do so for profit, frequently in the form of advertising revenue, and thus are presumed to have the requisite knowledge for the communication to be to a new public". 

Conclusion

This is an important order that demonstrates how technological advancement prompts a re-consideration of traditional approaches, including whether intermediary injunctions should be only aimed at blocking access to infringing websites [the answer appears to be no, and this order may pave the way to even more creative enforcement strategies in the future].

Arnold J's decision shows how the law - including the one on blocking orders - is subject to evolution. This is so also to permit that the 'high level of protection' that the InfoSoc Directive [from which s97A CDPA derives] intends to provide is actually guaranteed.

As far as the GS Media 'profit-making intention' is concerned, to some extent the view of Arnold J appears somewhat narrower (but practically not dissimilar) than that of other courts, eg the District Court of Attunda in Sweden [herehere, and herethat have applied GS Media so far. Further applications of GS Media by UK courts are however keenly awaited.

Posted By Eleonora Rosati to The IPKat on 3/14/2017 06:03:00 pm