Tuesday, 18 June 2019

THE COPYKAT

STORING INFRINGING GOODS IN WAREHOUSES, CRIMINALLY ACTIONABLE- RULES SWEDISH SC

The Supreme Court of Sweden has reportedly, post a CJEU referral, confirmed in a recent case that storage of infringing goods with a view to selling the same may pave the way for both kinds of liabilities- civil as well as criminal. This case has been reported in detail by IPKat. The CJEU had, having established that storing counterfeit goods falls within the scope of Article 4(1) of the InfoSoc Directive, left it for the Swedish courts to determine the question of criminal liability. Due to this clarification, the Swedish SC held the scope of Section 2 and 53 of the Copyright Act to include storage of goods, for commercial purposes within the scope of the distribution right. Hence, an intention to distribute has been held to be sufficient to establish Criminal Liability. More can be read upon this herehere and here.

STAIRWAY TO HEAVEN COPYRIGHT CASE TO BE REHEARD BY THE APPEALS COURT!!

Very interestingly, it has been reported by The Rolling Stones magazine that Led Zeppelin’s Stairway to Heaven will be reheard by an 11-judge panel in the 9th US Circuit Court of Appeals. The question raised all importantly in this dispute is whether the rock and roll band plagiarized its opening riff from Spirit’s 1968 song called “Taurus”. Last year, a decision was given by the US court of appeals, wherein the case was remanded for a new re-trial due to erroneous instructions given to the jury – which had decided in favor of the defendant. Due to sufficient proof of “substantial access” to Spirit’s work, it was held that jury instruction on the inverse-ratio rule was inappropriate. For a detailed analysis of this, one can read this informative post on Spicy IP. Holding a lack of substantial similarity, the jury had in 2016, ruled that there was no Copyright infringement. This re-trial will bring a number of important issues, regarding Copyright Infringement in musical works in light. The legality and viability of the inverse ratio rule is hopeful to be discussed at length in this trial.

PEPE THE FROG COPYRIGHT DISPUTE SETTLED!!

As covered in the last edition of the CopyKat, the Pepe the frog Copyright infringement suit has been doing the rounds for a while. However, Infowars has agreed to settle this dispute by paying $15,000 to the creator of the cartoon. The creator of Pepe the Frog – Matt Furie, had sued Infowars over alleged similarity and use of this character. The lawyer for InfoWars has reportedly stated that they were sued for millions initially, but they have agreed to settle the matter upon payment of an honest licensing fee which has been determined to be $15000. More can be read upon this on the reporting website Channel 3000.

TEXAS APPEALS COURT HOLDS THAT COPYRIGHT INFRINGEMENT IS NOT “PROPERTY TAKING”

As the government is immune from copyright infringement claims in the United States, Jim Olive a photographer, intending to claim compensation for the use of his photograph, argued in the Texas district court that infringing his copyright amounted to taking away his property which is actionable. Olive had sued The University of Houston, for the alleged taking, under the US constitution. The claim was concerned with a photograph clicked by Olive from a helicopter in 2005. Such use by the University was discovered 3 years later by Olive who was seeking just compensation for the unlawful taking. The question of enforcement of Copyright against government enterprises is an issue, wherein the legal authority is divided and scant. The federal district court, however, had held in a patent infringement suit that such infringement does not amount to property taking. No constitutional right has been established to be violated in this case – was held by the court. Not only does this gives the state complete immunity against Copyright infringement claims, it creates a bizarre situation wherein the State can infringe any person’s work without a claim for compensation being available. It will be interesting to see how the further Appeals court takes on this decision. More on this can be read here. The ruling can be found here.

COPYRIGHT DISPUTE OVER ABORIGINAL FLAG

As reported by the World IP review, the exclusive rights holder for the flag had issued a cease and desist notice to aboriginal-owned businesses using the flag sign and design on their products for commercial purposes. The flag in question has been designed by artist Harold Thomas, to recognize and protest for land rights and as a symbol of the race of the Australian aboriginals. A copyright was granted for the same in 1997. Normally, a flag representing a community is held to be in the public domain, however, an exclusive right has been granted herein. There is a worldwide discussion on who is to be given the ownership of the flag and the community members are actively involving themselves in this discussion. change.org petition started by Spark Health, whose brand Clothing the Gap raises money for Aboriginal health, states: “This is not a question of who owns the copyright of the Flag. This is a question of control.” It will be interesting to see how the government and the court take this matter ahead.

This CopyKat by Akshat Agrawal

Friday, 7 June 2019

The Poetic and Secret Lists of French Fashion Photographer Guy Bourdin


One of the articles in the March issue of French Vogue explained that the late French fashion photographer Guy Bourdin kept a secret list of all the titles he had imagined for a particular photograph. As he had a prolific career, he must have made quite a bit of these lists. But he wanted to keep them secret, and he never shared them with anybody, and did not publish them. 

While it may seem farfetched to give a title to a fashion photography, Guy Bourdin’s works are beautiful and intriguing, and knowing their secret titles would certainly have been interesting. You can see some of his photographs here and here. Guy Bourdin died in 1991, but he is still an influential fashion figure today.

Journalist Arthur Dreyfus wrote for Vogue Paris that he had bought a chair from the famous Studio 54 in New York at an auction. He found under the cushion a list of titles written in pencil by Guy Bourdin, all the secret titles for a particular photograph published in Vogue in April 1985, which shows a woman lying on a dance club floor, grabbing the ankle of a woman wearing glittery silver stilettos. 
 
Guy Bourdin (c) The Guy Bourdin Estate
The article reveals the 23 titles Guy Bourdin had imagined for this particular photograph. He was a French citizen, lived in France, and thus his works are still protected by the French droit d’auteur. How could the droit d’auteur view this publication? 

Le Titre

First, can titles be protected? Article L. 112-4 of the French Intellectual Property Code specifically protects the title of a work protected by copyright, if it is original enough. 

The particular photograph is original enough to be protected by copyright. Therefore, its title can be protected if original enough. In our case, we do have a list of titles (more about thatlater). Some of them, such as “Le pouvoir de l’argent” (the power of money), may not be original enough by themselves, but others certainly are, such as “La Belle en boîte dormant [trop bouffon]”, (the Beauty sleeping in a club, [too funny] with a pun on Bois, wood, and boîte, club).

La Liste

In our case, the list had 23 titles, all published in the Vogue article. This is a compilation of elements. We saw that some titles are protected by copyright, but others are not. However, the list can be entirely protected by the droit d’auteur as a “compilation” (same word in English and in French). The compilation has to be original enough, which is the case here. So the entire list is also protected.

Le Droit Moral

Guy Bourdin had not published the list in his lifetime. The article explains that he actually refused to make the lists of titles he invented for his photographs public, and that he kept them secret. It is only by accident that Arthur Dreyfus was able to acquire one of them, and he had the knowledge to understand the significance of the discovery. 

Since the list is protected by the droit d’auteur, its author also benefits from the protection of droit moral. One of the rights provided to authors by the French droit moral is the right of first publication. Only the author has the right to decide to publish his work, article L. 121-2 of the French Intellectual Property Code.

Droit moral is “permanent, inalienable, and imprescriptible,” article L. 121-1 of the French Intellectual Property Code. It can be bequeathed, and heirs may thus exercise this right as long as they know they have it (somebody still owns the moral right in Molière’s plays, but nobody knows who is it [could it be YOU?]).

In one somewhat recent case, Victor Hugo’s heirs had unsuccessfully tried to prevent the publication of a sequel to Les Misérables, but the Cour de cassation, the French Civil Supreme Court, held that freedom of expression, as protected by Article 10 of the European Convention on Human Rights, must prevail over moral rights. 

In our case, the Estate of Guy Bourdin may have authorized the publication of the list. It is certainly a decision which benefits the public, as the list reads like a poem, and makes us wonder if the other lists, lost forever, were as beautiful.

Sunday, 2 June 2019

THE COPYKAT

1.     “PEPE THE FROG” TO GO TO TRIAL

A Californian federal judge has, on a complaint filed by Matt Furie, proceeded to direct the case of Copyright infringement of “Pepe the Frog”, allegedly against Alex Jones, owner of InfoWars, to go for trial. The complete order can be found here. The core issue involved was regarding the poster released by InfoWars wherein Pepe the Frog has been depicted with President Trump, Milo Yiannopoulos and Alex Jones himself, showing a certain element of a political right- based comment. There were various issues which were dealt by the judge, while giving the summary judgment.

Firstly, the question of access was ruled upon wherein the judge denied the defendant’s claim that the plaintiff had access to a previous work called El Sapo Pepe, which basically was a similar expression as that of Pepe the Frog, hence raising a claim against originality as per the Feist threshold. The court looked into the jurisprudence surrounding access and relying on the case of N.Coast Indus v. Jason Maxwell, went on to decipher that “the defendant must show that the plaintiff had access to the prior work and that the work is substantially similar to that of the prior work.” A mere inference cannot be drawn upon concluding a finding of access from the statement that the plaintiff was interested in “Cartoon Characters” and hence must have come across El Sapo Pepe which is an Argentine cartoon character. Further, citing Nimmer on Copyright, the court went on to clarify that mere presence on the internet is not conclusive to prove access. Hence defendant’s claim of lack of originality based on access was denied in the summary judgment.

Secondly, a claim of invalid registration made by the defendants was categorically denied by the judge, stating that the burden to eliminate the presumption of validity of copyright was not adequately discharged. No adequate evidence was produced showing that the plaintiff intentionally provided wrong information to the Copyright office, or if certain information was provided to the Copyright office, such registration would have been denied.

Thirdly, the question of abandonment and relinquishment of copyright due to certain public statements made by the Plaintiff was under contention. Here, the judge, without resolving the issue, concluded that contrary statements were made by each parties and it should be upon the jury at trial to determine questions of fact like whether an average audience would perceive a statement like “Pepe the frog is let free by me” to be sarcastic or not. Hence this issue remains unresolved for the Jury. Further only one instance, wherein categorically a statement of relinquishment of Copyright was made in clear speech, was acknowledged by the court wherein abandonment was ruled upon in summary judgment, however the court refused to travel that path here.

Fourthly, on the question of an implied license to use the work, the court resumed excavating the jurisprudence surrounding implied licenses and went on to conclude that for an implied license to be present, the elements of contract law an offer and acceptance need to be fulfilled. Here public statements as those made by the plaintiff was ruled not to imply an offer up for grabs and hence this claim was dismissed.

Fifth, on the question of “De-Minimis” use, the court left open the question of whether the average audience would recognize appropriation, to be determined by the jury at trial as contrary evidence and claims were presented by the parties.

Similarly, as a sixth issue, the question of fair use was brought in which again was directed by the judge to be decided by the jury as the evidence produced could not yield any direct conclusive answer on this claim due to the question of credibility.

One important issue which arises herein is the protection of political speech as a first amendment right over Copyright rights, and under the fair use doctrine. As reported by The Hollywood Reporter, the court touched upon this and said:

Stepping back from the factors, the argument at the hearing by counsel for Defendants was, essentially, that controversial defendants should not have their defence of fair use decided by the jury; i.e., there must be some sort of First Amendment overlay on copyright law to protect political speech. By analogy, counsel was arguing for the creation for copyright law of something like New York Times Co. v. Sullivan for the law of defamation. That simply is not the law as this Court understands it.”

Herein, it seems important to discuss the case of Keep Thomson v. Citizen for Gallen Com., wherein the Federal District court of New Hampshire, clearly went on to rule that the exclusive right of the copyright holder must be weighed in sufficiently against the public interest of dissemination of information affecting universal concern. Here, a 15 second sample of song used in a political advertisement campaign by the plaintiff was used again for the purpose of a political message to be conveyed by the defendant wherein the plaintiff candidate was criticized. This was held to come under the ambit of transformative use due to free speech implications of restraining the dissemination of such essential political comments. Hence, the court went on to find a clear case of fair use.  

In line with this rationale, it would be interesting to see how the jury proceeds on the question of Fair Use when brought at trial.

2.     POLAND COMPLAINS AGAINST ADOPTION OF EU COPYRIGHT DIRECTIVE AMENDMENTS ON THE GROUND OF “PREVENTIVE CENSORSHIP”

As has been reported by multiple media houses like Reuters, Silicon UK and The Verge, Poland has brought in an action in the CJEU, against the implementation of the Copyright Reforms in the EU specifically with relation to Article 13 and 17 of the Directive on the ground of it being a “disproportionate measure that fuels censorship and threatens Freedom of Expression”, quoting Prime Minister Matesz Morawiecki. The deputy Foreign Minister Konrad Szymanski has also reportedly stated that such a system may result in adopting regulations analogous to “preventive censorship” which is forbidden in the Polish Constitution and other EU based treaty, hence raising the question of harmony of legislation.

In earlier posts, we have discussed the wide-ranging implications of these provisions, and this take of censorship is another interesting wat to look at the debate. The major features of the amendments which are debated and controversial are its implications on tech companies like Google who will have to pay news publishers a certain amount of fee to link their content on its platform. Also, social media platforms like YouTube and Facebook will have to bring in filters to avoid circulation of Copyright infringing materials of any sort, without any capability of determination of fair use by themselves. The directive has officially been approved by the EU Council and is due to go into force by 7th June 2019, wherein member states have been given a mandate of 2 years to harmonize the provisions with domestic laws. The question of content scanning is still being debated as to how the technology is efficiently going to avoid censorship and content which comes under the ambit of fair use- and hence is non-infringing.

On the other hand:

3.     CANADA COMES UP WITH A NEW DIGITAL COPYRIGHT REGIME

Post the Copyright Modernization Act 2012, certain digital accommodations were included in the Canadian Copyright regime wherein a review every 5 years was proposed. After a long and thorough process of evidence gathering and review, a report which makes 22 artist friendly recommendations has been submitted by the House Heritage Committee, as reported by the Financial Post. In an upheaval for performers rights, section 2 of the Copyright Statute providing for the definition of sound recordings, has been proposed to be amended to uphold public performance rights in these and the remunerations thereof for use in televisions and films. Further, very importantly as a part of an education- based reform and to evolve the availability of Canadian resources and perspectives elsewhere and attract publishers, the report has recommended keeping fair dealing out as an exception when a work is used commercially in an educational institution. Further a pro-active governmental role in spreading copyright and remuneration awareness along with a specific focus on curbing piracy, has been advocated for by the report, making it significant. These recommendations have been well received by the Canadian record industry and have also focused on reducing the ambit of fair dealing without obtaining a license, hence strengthening the Copyright regime in Canada. Further, a review of the safe harbor provisions, in accordance with EU updates and also a recommendation to implement the extension of Copyright term from 50 years to 70 years found its relevant place in the report. Even though this seems to be more of a result of lobbying on part of the creators and artists in the business, this is a highly imperative measure which has timely been undertaken to ensure that artists receive a fair remuneration for their works and a sustainable living, incentivizing more creative content.

4.     PIRATES OF THE CARRIBEAN AND THE TEST OF SUBSTANTIAL SIMILARITY

The United States District Court for the Central District of California went on to rule that Walt Disney’s “Pirates of the Caribbean” had not lifted copyrighted elements from the screenplay of the same name. The court held that expression-based elements of the screenplay were not copied but rather the central theme to the concept of “Cursed Pirates” was the only purported similarity, which has been ruled to be an idea and a basic plot premise deeming it a non-copyrightable idea. Further, a dark mood involving pirate battles and sea monsters is central to any pirate drama and copyrighting the same would be granting excessive monopoly on generic plot-based elements. The Idea-Expression dichotomy was reinstated by the court. Applying the extrinsic test of similarity to adjudicate whether there was a case of infringement, the court took into account the jurisprudential principle that the extrinsic test compares “articulable similarities between the plot, themes, dialogue, mood, setting, sequence of characters etc. and does not compare the basic plot ideas but the actual concrete elements making the narrative flow and relationships between major characters,” citing the case of Funky Films. The court also noted that Familiar stick scenes and themes that are staples of literature are not original enough to be protected and scenes-a-faire elements that flow necessarily or naturally from a basic plot premise cannot sustain the test of originality for being protectable and to bring in an action of infringement.

Firstly, a contention to apply the inverse ratio rule, wherein a lower degree of substantial similarity is required to be proven if higher access is proved, was rejected by the court as non-applicable to cases involving unlawful appropriation and applicable only where copying has been alleged.

Secondly, the court rejected similarity on grounds of insufficient articulable similarities between protectable elements. It firstly ruled that the facts that inclusion of pirates who are skull faced or skeletal is not a copyrightable element. Thereon, use of treasure maps, ghost pirates, undead, dark fog, ghosts and sea monsters, were ruled as unprotectable elements due to them being familiar stock elements. Further, the court went into a closer inspection of the storylines i.e. the sequence of events and narrative flows to come to a conclusion that these movies and the screenplay portrayed very different stories. Even upon analyzing characters, the court held that features like cockiness, bravery and drunkenness along with facial hair are generic and not protectable characteristic elements. Along these, a claim of substantial similarity of characters was rejected under the extrinsic test. Similarly, the Theme, Dialogue, Mood and Setting was also held to be unprotectable and hence not fulfilling the extrinsic test of substantial similarity.

Accordingly, a claim of infringement was rejected. The entire ruling can be found here.

As reported by Bloomberg, the court proceeded with the ruling appreciating the fact that the plaintiffs had at most demonstrated random similarities which scattered throughout the plaintiff’s works and were not substantial enough for a claim of infringement to subsist.

5.     COPYRIGHT INFRINGEMENT SUIT AGAINST JAY-Z OVER A SAMPLE USED 20 YEARS AGO

A multi-million dollar law suit has been brought against JAY- Z and Timbaland by soul musician Ernie Hines. The songs in contention are the 1998 song by Jay Z called- “Paper Chase” and the 1970 song of Hines called “Help Me”. Hines who is an 81-year-old, has defended the delay in filing the suit on realistic grounds of him being old and hence having a lack of interest in rap music reducing the chances of him having been aware of the existence of such a song. No clearance for the sample taken was sought by either the artists or the record labels. Further it is alleged that the infringement was “willful” as the credits for “Paper Chase” clearly mention the sample from “Help me” Hence, a claim of at least $2 Million has been brought in before the US District Court in New York. This has been reported by Billboard. It is imperative here to discuss the Grand Upright Music v. Warner Bros. case, wherein the court categorically stated that there is no concept of implied license involved in sampling music and quoted the Seventh Commandment from the Old Testament stating “Thou shalt not steal”. To the court, sampling a copyrighted work without permission simply equated theft, and because the Defendant, as in the case here, had admitted to using the sample, he had committed an infringing act. Further, due to the concept of digital sampling coming in, a finding of Fragmented Literal similarity will be contended upon before the court against the De-Minimis test, wherein even a small degree of copying which may be insubstantial quantitatively but qualitatively important has been on occasions held to be substantial.

6.     JUSTIN BIEBER’S INSTAGRAM PHOTO BEING LITIGATED IN AN INFRINGEMENT CLAIM

As reported by Fashion Law, CBS is at the receiving end of another law suit wherein; a photographer Robert Barbara has reportedly alleged that the media giant infringed his copyright in Justin Bieber’s picture by displaying it in its list of Most Liked Instagram pictures without obtaining a license to do the same and for such dissemination. Allegedly consent is imperative and has not been obtained in the instant case. An interesting aspect involved in this case however is that a screenshot of the Instagram Post was not taken rather, the link was embedded in the article. This till date, has not been held to be infringement. However, in the recent case of Goldman v Breitbart News Network, it was held by US District Judge for the Southern District of New York, that:

“When the defendants caused the embedded Tweets to appear on their websites, their actions violated plaintiff’s exclusive display right; the fact that the image was hosted on a server owned and operated by an unrelated third party (Twitter) does not shield them from this result.”

This decision can go on to have a strong chilling effect on the use of the internet, and is the only precedent which gives such a ruling which goes against the established landmark precedent on Intermediary Liability given in the case of Perfect 10 v. Amazon wherein it was held that provision of the image constitutes dissemination and not mere embedding as the image is not stored or made a copy of. It is a transient period which comes under the defense of Fair Use. 

Just for the sake of thought, can a corollary be drawn between the Goldman judgment and the EU Copyright Directive amendments under debate?

7.     NASA MEDIA LIBRARY FREE!!!

In a huge development, NASA has made their entire collection of Images, Sounds and Video Games, publicly available on the internet-based platform. A collection of 140,000 photos and other resources like sound samples and videos has been made available for online viewing as well as download here. A huge step by the Space technology giant towards promoting the Open Access movement.

8.     MORAL RIGHTS IN A WORK OF ARCHITECTURE- NEW TAKE BY THE DELHI HIGH COURT

The major question in this suit was whether an architect, as a legal author of a building have a right to object to the modification or destruction of the work by the owner of the building.  This claim to moral rights was categorically rejected by the Delhi High Court ignoring the ruling in the landmark Amarnath Sehgal Case as irrelevant. It is a significant ruling with respect to the scope of Moral Rights in India and gives in a problematic overarching conclusion with respect to destruction of work, not being a considerable element for upholding moral rights. The case involved the Hall of Nations Building, which was widely hailed as the icon of modern Indian Architecture. This was demolished by the Indian Trade Promotion Organization to build another Convention cum Exhibition center.

The court categorically rejected the plaintiff’s claim that his rights under Section 57 of the Indian Copyright Act were abrogated. The major and convincing ground for this ruling was the argument that land rights are human right equivalents and as a constitutional right, always triumph over statutory rights like Moral rights under Section 57. The right of the defendant to freely deal with his own property cannot b curbed. As far as the conclusion is concerned, it is completely sound, however the problematic part can be found under Para. 24 and 25 of the judgment. The court herein has significantly narrowed down the scope of Moral Rights and gone on to contrast with the rationale given in the Amarnath Sehgal case. By restricting the meaning of distortion and mutilation to making the work look, appear distorted which harms the reputation of the author, the court has completely ignored the realist implications of complete destruction and removal of artistic work as well. The court states:

“…failure to display a work is not infringement of rights conferred by Section 57, in recognition/acceptance of, that what cannot be viewed, seen, heard or felt, cannot be imperfect and cannot affect the honour or reputation of the author. There is a difference between work itself and one of the embodiments of the work. While distorting or mutilation or modification of one of the embodiments of the work renders the work imperfect, prejudicing the honour or reputation of the author, destruction of the work in its entirety i.e. making it disappear, cannot be, prejudicial to the honour or reputation of the author. No imperfections can be found in what cannot be seen, heard or felt. In the case of a performance, there can be derogatory treatment thereof only if it is played in public or communicated to the public. However, if there is no performance at all, there can be no derogation thereof.”

The issue with such an overarching ruling is the narrowing down of the concept of moral rights. It has been ignored by the court that destruction and complete removal is the extreme form of mutilation and it definitely prejudices his honor and reputation by reducing his “Corpus of Work” i.e. work profile by and for which he is known, as the work does not exist anymore. The physical destruction or loss of intellectual property has a far-reaching social consequence as the knowledge associated with it has also been lost. Hence reduction of corpus definitely reduces the integrity and is prejudicial to the interest and honor and reputation of the author.  Restricting the concept of honor and reputation merely to libel by statements like “I like or dislike only a structure which I see. What I don’t see I don’t judge.”, ignores the fact that the creation of the architecture or work of art at a particular point of time is a fact in history and is known to people. Further, if it is removed, it will definitely be a forefront of discussion as to why it was removed leading to presumptions which are definitely prejudicial to such honor and reputation of the artist. Hence, the best way of reading this judgment will be to restrict its applicability to works of architecture fixed on a land owned by someone else and the vacation done specifically by such landowner, in application of his land rights. This ruling cannot be applied universally for all works of art, as good law.

This CopyKat by Akshat Agrawal


Friday, 17 May 2019


PIRATE STREAMING IN NEW ZEALAND OF THE 2019 RUGBY WORLD CUP?

(Common Law v. EU Law?)

For the first time there will be no live television broadcasts of Rugby World Cup games in New Zealand this year.  Telecommunications provider, Spark, has acquired the rights to ‘show’ the games (hosted in Japan) and they will be live streamed on its Spark Sport service.  Putting aside the problems of those who still do not and will not have adequate broadband connections by September, there will undoubtedly be many who will seek out pirate streams to avoid Spark’s subscriptions.  Because rugby is New Zealand’s most popular sport, streaming copyright issues are likely to multiply from current levels.

As in other countries New Zealand satellite broadcasters who have acquired licences to show content have been encountering a form of piracy by the parallel delivery of this content streamed over the internet from other jurisdictions free of charge.  Various technologies have been used, although Kodi programmed set top boxes are popular for viewing on a television screen.  There has been litigation. 

Current Case Law

In 2010 there was Munhwa Broadcasting Corporation v Young International which concerned Korean broadcasts being digitised and streamed online to NZ viewers to watch on their screens. The defendant argued that the transient copying that occurred in the buffers of the set top box and then by each picture frame momentarily appearing on a viewer’s screen were within the section 43A exception for transient reproduction.  Section 43A is equivalent to the Directive Article 5.1/UK section 28A exception for transient copying.  Potter J rejected this defence on the basis that these incidents of copying were not authorised by the rights owner. 

Then in 2018 two courts held in separate suits brought by Sky Network TV that (i) the sale of set top boxes with ‘add-ons’ providing access to pirated streams constitutes an infringing communication, (ii) the transient storage in the set top box memory of internet packets making up each video frame was copying, and (iii) the transient display of each frame on the viewer’s screen was also copying.  In each case Sky referred to the streaming of cricket matches live for which it had the sole rights to communicate within NZ.  The streams were generated from reception of a broadcast from Sky UK.  In one case, a District Court did not consider the section 43A exception to infringement for transient copying, while in the other case the High Court which did, rejected this defence on the basis that only the owner of copyright in the original broadcast could authorise the streaming in NZ and without such authorisation the use made by viewers could not be ‘a lawful use’

In the High Court decision it was accepted that the streaming of a live cricket match was a communication of a copyright work.  Since live sport cannot constitute a copyright work then it must have been the broadcast which was at issue.  That of course was not Sky NZ’s broadcast and the evidence did not show how and by whom Sky UK received its feed.

Comments on Current Case Law   

It is suggested the reasoning in all three decisions is at the least questionable, despite the fact that the primary cause of action in the two 2018 actions was breach of the Fair Trading Act based on allegations that the defendants in the advertising of their set top boxes had suggested purchasers would not be infringing copyright.  One issue of concern arises because CJEU statutory interpretation under the InfoSoc Directive seems to have been used rather than classic common law interpretation.  Further, the WIPO Copyright Treaty which gave rise to the right to communicate was totally forgotten about.  The ‘internet provisions’ in the NZ Copyright Act derive from the WCT, including the Article 8 right to communicate to the public’.  But, the NZ courts, like the CJEU, ignored or misinterpreted the Agreed Statement on Article 8, namely: ‘It is understood that the mere provision of physical facilities for enabling or making a communication does not itself amount to communication within the meaning of the Treaty …’. 

As to case law precedents, the CJEU decision in Strichting Brein v Jack Frederick Wullems was used in the two 2018 judgments to interpret breaches of the exclusive right to communicate a work to the public to include the sale of ‘tweaked’ set top boxes.  But for the s.43A defence the most applicable and persuasive authority for NZ, the UK Supreme Court judgment in Public Relations Consultants Association v The Newspaper Licensing Agency [2013] UKSC 18, (the Meltwater case) was not considered.

Statutory interpretation issues

Following the common law rules of interpretation, the right to communicate would have been given its literal meaning as there is no ambiguity in the way it is expressed in the restricted acts listed in s.16 of the NZ Act.  It would not be broadened beyond its literal meaning which is to transmit information.  It would not encompass the sale of individual pieces of apparatus for receiving or processing the information.  Under the old broadcast right, common law courts, including NZ, did not interpret that right to include the distribution of radio or television receivers.  In addition, the exception provided by way of the Agreed Statement on Article 8 would be given the same weight as the Article 8 right itself.  It should not be devalued on the argument used by the CJEU that the EU Directive was for the benefit of copyright owners.  The aim of the WCT was to bring copyright into the internet age in a balanced manner.      

In the section 43A transient reproduction exception, limbs (b)(i) and (ii) offer alternative defence components, and if either one is satisfied then section 43A provides a defence to transient copying.  But the Munhwa and Sky judgments seemed to conflate limbs b(i) and b(ii) and concluded that if viewers were receiving a communication which might infringe copyright, then the viewers’ transient reproduction could not be a ‘lawful use’ of the communicated work.  However, as was pointed out by Lord Sumption in the Meltwater case, ‘The use of material is not unlawful by reason only of the fact that it lacks authorisation of the copyright owner.’  ‘Lawful use extends to use which is “not restricted by the applicable legislation”’.  And copyright legislation does not make private viewing of content on a screen an infringing act any more than it makes reading a book an infringing act even if the book is a reprint made by an unlicensed third party.

The defence provided in s.43A for transient reproduction is not even necessary for the actual display of sport on a domestic television screen.  Copyright is not infringed by the private display of content on a screen. It never has been since the days of home film projectors being used to show bought or hired movies.  To suggest otherwise, as the courts did, is in direct conflict with the statutory limitation of the s.16(1)(e) exclusive right ‘to show the work’ to showings which are made in public.

Conclusion

In the litigation that will predictably arise as the Rugby World Cup draws closer it is to be hoped New Zealand’s copyright law will not be misconstrued to ensure licensees can obtain a remedy.  Until the legislation is changed to reflect a more comprehensive understanding of the digital technology used to supply content, instead of trying to use concepts more appropriate to content stored on physical media, licensees will be best served by seeking blocking orders against ISPs to block access to the IP addresses of pirate streamers.  NZ courts have plenty of persuasive precedents to follow in the form of Arnold J’s blocking orders in the UK.

As it happens, NZ has recently started a major (and no doubt lengthy) review of its Copyright Act and it is tempting to advocate introducing the US patent concept of ‘contributory infringement’ to render liable those who supply especially configured hardware to assist pirates.  And the cumbersome concept of infringing copyright by ‘authorising’ needs to be supplemented or totally replaced!