Thursday, 9 February 2017

Going for Gold': 3D Scanning, 3D Printing and Mass Customisation and the Future of Intellectual Property Law

Another free seminar from the City University Law School - but you do need to register. 

13.00  Wednesday 1st March 2017

College Building
City, University of London
St John Street

United Kingdom

The growth of 3D technologies impacts on intellectual property law, leading to a number of implications including copyright, design and licensing issues amongst others. Such challenges question the enforcement, object and purpose of IP laws whilst exploring the opportunities presented through this technology.

Building on the Commissioned Research carried out for the UK Intellectual Property Office (UKIPO) (2013-2015), the paper will first set out the findings, conclusions and recommendations from this project before moving on to a consideration of the AHRC-funded project titled 'Going for Gold: A Legal and Empirical Case Study into 3D Scanning, 3D Printing and Mass Customisation of Ancient and Modern Jewellery' . 

In presenting the two funded projects and its findings, the paper will outline the IP issues arising from this emerging technology, whilst questioning the impact of 3D scanning and 3D printing on the future of IP law.

The Speaker is Professor Dinusha Mendis (Professor of Intellectual Property Law and Co-Director of the Centre for Intellectual Property Policy and Management (CIPPM)). 

Sign  up here,-3d-printing-and-mass-customisation-and-the-future-of-intellectual-property-law

Image: 3D-printed propeller for model airplane

Online Platforms and Intermediaries in Copyright Law

23-24 March 2017

Ludwig Maximilian University Munich
Geschwister-Scholl-Platz 1
80539 München

Intermediaries play an essential role in internet communication. They allow us to access the net, to exchange information and to enjoy entertainment. But at the same time their services are used by infringers. This raises the issue of liability, particularly in copyright law. The EU law framework dates back to the late 1990s, when modern types of intermediaries were still unknown. The line between liability for primary infringement and the liability of intermediaries is difficult to draw. Injunctions against intermediaries whose services are used by infringers must be available, but EU law leaves the conditions of such relief to the Member States. Arts 12-15 of the E-Commerce Directive provide safe havens, which are, however, of limited and uncertain scope. In this normative vacuum, the CJEU has become the engine of harmonisation, creating rules and principles of liability step by step and by trial and error. The Commission has proposed new, but very cautious regulation concerning copyright in the Digital Single Market.

Against this background, this conference will focus on the economic, EU law, constitutional and competition law framework, take stock of the present law, compare different national approaches in the EU, the US and Asia and consider potential ways forward.

Speakers include Joost Poort (Institute for Information Law, University of Amsterdam), Andreas Paulus (Federal Constitutional Court), Maciej Szpunar (Court of Justice of the European Union), Sir Richard Arnold (High Court of England and Wales), Maria Martin-Prat (EU Commission), Matthias Schmid German Ministry of
 Justice and Consumer Protection, Jonathan Griffiths Queen Mary, University
 of London and Peter Yu Texas A&M University School of Law

Wednesday, 8 February 2017

AG Szpunar advises CJEU to rule that The Pirate Bay makes acts of communication to the public

This post, first published on the IPKat, is from Eleonora Rosati

Is there a communication to the public within the meaning of Article 3(1) of the InfoSoc Directive by the operator of a website [The Pirate Bay, TPB], if no protected works are available on that website, but a system exist by means of which metadata on protected works which is present on the users’ computers is indexed and categorised for users, so that the users can trace and upload and download the protected works on the basis thereof?

This is the principal question that the Dutch Supreme Court (Hoge Raad der Nederlanden) referred to the Court of Justice of the European Union (CJEU) in Stichting Brein, C-610/15.

As readers will promptly recall, this is just the last in a(n impressive, quantity-wise) series of references for a preliminary ruling seeking clarification on the interpretation of the right of communication to the public within Article 3(1) of the InfoSoc Directive, the most immediate precedents being GS Media [Kat-coverage here] and the (pending) Filmspeler case [on which see the Opinion of Advocate General (AG) Campos Sánchez-Bordona here].


There is not much to say here. Dutch anti-piracy organisation Stichting Brein applied for an injunction (to be granted under the Dutch equivalent of Article 8(3) of the InfoSoc Directive) against access providers Ziggo and XS4ALL to block access by recipients of their services to the internet addresses of the website of TPB.

That application, upheld at first instance, was dismissed on appeal, essentially on the grounds, first, that it is the recipients of the services of the defendants in the main proceedings, and not TPB, which are the originators of the copyright infringements and, secondly, that the blocking sought would not be proportionate to the aim pursued, namely the effective protection of copyrights. 

Stichting Brein appealed on a point of law against the latter decision before the referring court.

AG Maciej Szpunar
Today's Opinion

AG Szpunar has just issued his Opinion, advising the CJEU to answer the question of the Dutch Supreme Court in the AFFIRMATIVE. 

More specifically, "the fact that the operator of a website makes it possible, by indexing them and providing a search engine, to find files containing works protected by copyright which are offered for sharing on a peer-to-peer network, constitutes a communication to the public within the meaning of Article 3(1) of [the InfoSoc Directive], if that operator is aware of the fact that a work is made available on the network without the consent of the copyright holders and does not take action in order to make access to that work impossible." [para 54]

The Opinion is EXTREMELY interesting, for a number of reasons.

EU, not national solutions = a matter of primary liability

It is sufficient to note that the AG rejected at the outset the view of the European Commission and UK that any solution to the possible liability of a site like The Pirate Bay should be found under national law [translated (possibly): under secondary liability, an area unharmonised at the EU level].

According to the AG this would lead [and has led] to very diverging approaches and ultimately undermine the objective of the EU legislature to harmonise the substantial scope of the rights enjoyed by authors and rightholders within the single market [para 3].

The TPB case is different from GS Media's

Logically linked with the point above, the AG also noted that the problems raised in this case are different from those addressed in Svensson and GS Media.

According to the AG, in fact, while those cases concerned the secondary communication of works already accessible on the internet by a person providing the online content himself, the present case concerns original communication, made on a peer-to-peer (P2P) network. As such, the CJEU reasoning in those cases cannot be directly applied to the case at hand [para 4].

The "unavoidable" role of TPB

Following a review of the technical functioning of P2P networks, the AG said that what is relevant in order to answer the question posed by the Dutch Supreme Court is the consideration of the role played by websites such as TPB in file-sharing on P2P networks: "[t]hat role is crucial" [para 26].

More specifically, the use of any P2P network "depends on the possibility of finding peers available to share the desired file. The information, whether it is technically in the form of torrent files, ‘magnet links’ or some other form, is found on websites such as TPB. Those sites provide not only a search engine but also, as in the case of TPB, indexes of the works contained in those files, classified in various categories, for example, ‘100 best’ or ‘the latest’. So it is not even necessary to look for a particular work, it is sufficient to choose from those on offer, as in the catalogue of a library (or rather an audio or video collection, since it is mainly music and films). Those sites also often provide additional information, inter alia on the estimated download time and the number of active ‘seeders’ and ‘leechers’ for a particular file. Although, as the defendants in the main proceedings contend, it is therefore theoretically possible to find files offered for sharing on a peer-to-peer network without using a site like TPB, in practice, the search for such files generally leads to such a site or a site aggregating data from several peer-to-peer networks. The role of websites such as TPB is therefore practically unavoidable in the operation of those networks, in any event for the average internet user." [paras 26-27]

Communication to the public

Having exhausted these preliminary remarks, the AG turned to Article 3(1) of the InfoSoc Directive and what makes an act of communication to the public. 

As usual [just think of VOBMc Fadden, or Hotel Edelweiss], he provided an analysis of the history and rationale of the relevant provision considered and recalled [as per consistent CJEU case law, at least since SGAE] that to have an act of communication to the public it is necessary to have: (1) an act of communication, and (2) the presence of a public [para 36].

How Kats communicate
(1) An act of communication: no transmission is required

Considering the first condition, ie an act of communication, the AG recalled that the CJEU has emphasised "the essential role of the player originating the communication and the deliberate nature of its intervention. That player makes an act of communication when it intervenes, in full knowledge of the consequences of its action, to give its customers access to a protected work, and does so in particular where without that intervention its customers would not, in principle, be able to enjoy the broadcast work" [para 37, recalling GS Media, para 35].

The AG then tackled the thorny issue of whether transmission is actually required [readers will remember that the European Copyright Society stated that this is necessary to have an act of communication]

While it is true that "in the case of making available, the actual transmission of the work takes place only potentially and on the initiative of the recipient", the AG [correctly] stated "the ability of the copyright holder to prevent the communication arises at the actual time of making available, irrespective of whether and when transmission actually takes place." [para 38]

(2) The presence of the public: the 'new public'

Turning to the second criterion, ie the presence of the public, this involves two requirements: (a) an indeterminate but fairly large number of potential recipients [para 39]; and (b) a 'new public' [para 40] which only comes into consideration when the technical means used is different from that used for the initial communication [para 42].

Communication to the public on P2P networks

According to the AG, "[t]here is no question ... that the making available to the public of copyright-protected works takes place where those works are shared on a peer-to-peer network." [para 44]

The question is, however, who is to be regarded as making the relevant act of communication: is the P2P network users or, rather, the operator of an indexing site such as TPB?

According to the AG, while users deliberately make the works in their possession available to other users of the network [para 49], "those works would not be accessible and the operation of the network would not be possible, or would at any rate be much more complex and its use less efficient, without sites such as TPB, which enable works to be found and accessed. The operators of those sites therefore arrange the system which enables users to access works that are made available by other users. Their role may therefore be regarded as necessary." [para 50]

The operator of a site that merely indexes the content that is present on the P2P network has, in principle, no influence over the appearance of a given work on that network (it is only an intermediary which enables users to share the content on a P2P basis). As long as he is unaware that the work has been made available illegally or if, once it has been made aware of the illegality, it acts in good faith to rectify the matter, it has no liability for the users' communications. 

"However, from the moment that operator has [actual, eg by means of a notification from the relevant rightholder: para 52] knowledge of the fact that making available took place in breach of copyright and does not take action to render access to the work in question impossible, its conduct may be regarded as being intended to allow, expressly, the continuation of the illegal making available of that work and, hence, as an intentional action." [para 51]

No presumption of knowledge
Rejecting the idea of a presumption of knowledge

The AG rejected that in a case like this it would be appropriate to have a presumption of knowledge like the one adopted in GS Media [para 52] because such a presumption would amount to imposing on operators of indexing sites of P2P networks, which normally operate for profit, a general obligation to monitor the indexed content [contrary to Article 15 of the Ecommerce Directive].

The TPB operators: joint liability

Accordingly, in a situation like TPC, the intervention of their operators "meets the conditions of being necessary and deliberate, laid down in the case-law of the Court" and those operators should therefore "also be considered, simultaneously and jointly with the users of the network, as originating the making available to the public of works that are shared on the network without the consent of the copyright holders, if they are aware of that illegality and do not take action to make access to such works impossible."

The second question

The AG also considered the second question [to be answered only if the CJEU answers the one on communication to the public in the negative], ie whether Article 8(3) of the InfoSoc Directive must be interpreted as offering scope for obtaining an injunction against an ISP ordering it to block access for its users to an indexing site of a peer-to-peer network by means of which copyright infringements have been committed, even if the operator of that site does not itself communicate to the public the works made available on that network.

Applicability of Article 8(3) injunctions to sites such as TPB

The AG noted that the only peculiarity of a blocking injunction [ie a measure that the CJEU considered compatible with EU law, although in a different context, in Telekabel] in case like the one at hand would be that blocking of access to the TPB site would affect not only users who commit copyright infringements but also the TPB site, which would not be able to offer its services to users connected to the internet through the intermediary of the defendants in the main proceedings [para 61].

The AG noted that the circumstances envisaged in Article 8(3) presuppose the existence of a link between the subject of the injunction and the copyright infringement. A measure blocking a website implies that it has been established that the operator of that site has been held liable for copyright infringement using the services of the intermediary to which the injunction is addressed. 

Blocking order
Having distinguished between situations of primary and secondary liability and considered the need to balance different fundamental rights, the AG considered that depriving internet users of access to information, by blocking the TPB site, would be proportionate to the significance and seriousness of the copyright infringements committed on that site [big, yet unsurprising, win for copyright owners].

Overall, Article 8(3) should be interpreted as permitting an injunction to be obtained against an intermediary ordering it to block access for its users to an indexing site of a P2P network, if the operator of that site can, under national law, be held liable for copyright infringements committed by users of that network, provided that measure is proportionate to the significance and seriousness of the copyright infringements committed, which is a matter for the national court to determine [para 84].


This is yet another thoughtful and good opinion of AG Szpunar. 

His construction of the right of communication to the public appears appropriate not only in light of pre-existing CJEU case law [and also the InfoSoc objective to provide a high level of protection], but also ... despite it. His conclusion that the presumption of knowledge adopted in GS Media should not find application in a case like the one of operators of indexing sites is in fact sensible [that the GS Media presumption of knowledge is problematic is apparent from the early national applications of this CJEU judgment in Sweden - herehere, and here -, Germany - here and here - and the Czech Republic - here].

Equally sensible [a reality check] is the consideration that in situations like TPB the intervention of its operators in facilitating the exchange of copyright works is deliberate and, indeed, essential

Big kudos to AG Szpunar. Let's now see if the CJEU agrees with him. Stay tuned!

Posted By Eleonora Rosati to The IPKat on 2/08/2017 12:43:00 pm

Sunday, 5 February 2017

U.S. Copyright Office Seeks Public Comments on Moral Rights

The United States Copyright Office announced it is undertaking “a public study to assess the current state of U.S. law recognizing and protecting moral rights for authors, specifically the rights of attribution and integrity.” The Copyright Office had organized a symposium, ‘‘Authors, Attribution, and Integrity: Examining Moral Rights in the United States,’’ which took place on April 18, 2016.

It now “will review existing law on the moral rights of attribution and integrity, including provisions found in title 17 of the U.S. Code as well as other federal and state laws, and whether any additional protection is advisable in this area.”

It is seeking “public comments addressing how existing law, including provisions found in title 17 of the U.S. Code as well as other federal and state laws, affords authors with effective protection of their rights, equivalent to those of moral rights of attribution and integrity“ on several questions listed below.
General Questions Regarding Availability of Moral Rights in the United States

1. Please comment on the means by which the United States protects the moral rights of authors, specifically the rights of integrity and attribution. Should additional moral rights protection be considered? If so, what specific changes should be considered by Congress? Title 17

2. How effective has section 106A (VARA) been in promoting and protecting the moral rights of authors of visual works? What, if any, legislative solutions to improve VARA might be advisable?

3. How have section 1202’s provisions on copyright management information been used to support authors’ moral rights? Should Congress consider updates to section 1202 to strengthen moral rights protections? If so, in what ways?

4. Would stronger protections for either the right of attribution or the right of integrity implicate the First Amendment? If so, how should they be reconciled?

5. If a more explicit provision on moral rights were to be added to the Copyright Act, what exceptions or limitations should be considered? What limitations on remedies should be considered?

Other Federal and State Laws

6. How has the Dastar decision affected moral rights protections in the United States? Should Congress consider legislation to address the impact of the Dastar decision on moral rights protection? If so, how?

7. What impact has contract law and collective bargaining had on an author’s ability to enforce his or her moral rights? How does the issue of waiver of moral rights affect transactions and other commercial, as well as non- commercial, dealings?

Insights From Other Countries’ Implementation of Moral Rights Obligations

8. How have foreign countries protected the moral rights of authors, including the rights of attribution and integrity? How well would such an approach to protecting moral rights work in the U.S. context?

Technological Developments

9. How does, or could, technology be used to address, facilitate, or resolve challenges and problems faced by authors who want to protect the attribution and integrity of their works?

Other Issues

10. Are there any voluntary initiatives that could be developed and taken by interested parties in the private sector to improve authors’ means to secure and enforce their rights of attribution and integrity? If so, how could the government facilitate these initiatives?

11. Please identify any pertinent issues not referenced above that the Copyright Office should consider in conducting its study.

What are Moral Rights?

The two main moral rights provide the author of a work protected by copyright the right of attribution, that is, the right to be credited as the author of the work, and the right of integrity, that is, the right of preventing the work from being altered or distorted.

Moral rights stem from French law (le droit moral) and Article L. 121-1 of the French Intellectual Property Code still provides an author the right to respect for her name, her quality and her work. This moral right is attached to the person of the author, meaning that French law considers it a personality, a droit de la personnalité, just like the right to privacy or even one’s honor. Under French law, this right is “perpetual, inalienable and imprescriptible” and is “transferable upon death to the author's heirs. Exercise can be given to a third party by virtue of testamentary dispositions.”

Does the U.S. have Moral Rights?

This question is not easily answered. The U.S. finally joined the Berne Convention in 1989. Article 6bis(1) of Berne states that:

‘‘Independently of the author’s economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation.”

The U.S. did not enact a comprehensive moral right law when joining the Berne Convention, but instead took the position that a combination of its laws were enough to comply with its obligations under the Convention. Amongst such law is, curiously, the Trademark Act, which Section 43(a) provides a civil action in case of false designation of origin.

However, the Supreme Court held in 2003, in Dastar Corp. v. Twentieth Century Fox Film Corporation, that origin, in Section 43(a), “refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods.” The Court concluded that therefore Section 43(a) cannot be used to require attribution of uncopyrighted materials.

The 1990 Visual Artists Rights Act (VARA), section 106A of the Copyright Act, which took effect in 1991, provides “certain authors” a right to attribution and to integrity. However, while copyright protects any work fixed in a tangible medium as long as it has a modicum of originality (the itsy bitsy doctrine), only authors of works of visual art have this right.

Such works are narrowly defined by Section 101 of the Copyright Act as “a painting, drawing, print or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author, or, in the case of a sculpture, in multiple cast, carved, or fabricated sculptures of 200 or fewer that are consecutively numbered by the author and bear the signature or other identifying mark of the author; or… a still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, or in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author.”

Section 1202 of the Copyright Act forbids providing false copyright management information in order to enable, facilitate, or conceal infringement, and forbids further to remove or alter copyright management information. Artists have been using this section to claim moral rights (see here).

Comments must be received by March 9, 2017.

Image is courtesy of Flickr user mrdanielweir under a CC BY-NC 2.0 license, which includes the moral right of attribution. Moral rights may be provided by contract and included in a license, such as this CC license.

Friday, 3 February 2017

Florida appellate court to hear Turtles' appeal

The Florida Supreme Court will hear arguments beginning on April 6th in the copyright-infringement lawsuit filed by founding members of the 1960s rock group the Turtles against SiriusXM satellite radio.

Flo & Eddie Inc., the California-based company whose principals are Turtles vocalists Mark Volman and Howard Kaylan, filed the lawsuit in 2013 alleging copyright infringement involving music made prior to 1972. Flo & Eddie have won suits against SiriusXM in California and New York (the later subsequently over turned) but a federal district court judge in Florida sided in 2015 with the satellite broadcaster, finding nothing in Florida statutes or common law dealt with copyrights of recordings made before 1972 (and the federal Copyright Act).

Judge Darrin Gayle said that "Florida is different"  (from New York and California) saying "There is no specific Florida legislation covering sound recording property rights, nor is there a bevy of case law interpreting common law copyright related to the arts." Declining to fill the void in the state's legislation the Judge said "If this Court adopts Flo & Eddie’s position, it would be creating a new property right in Florida as opposed to interpreting the law"  adding that it's the job of the Florida state legislature to address the issue, and that a decison to plug the gap would bring up a host of other issues such as resolving who sets and administers licensing rates, who owns sound recordings for dead artists and what exceptions there might be to a public performance right.

The case went to the 11th U.S. Circuit Court of Appeals, which asked the Florida Supreme Court to take up the issues involving state law. 

In December 2016, a majority in New York's highest court ruled that Sirius XM did not have to get permission, or pay compensation, to the owners of pre-1972 music recordings in order to play their tracks in the case brought by the owners of The Turtle's 1967 hit "Happy Together."  The Court of Appeals determined that New York common law does not recognise a "public performance right" in their decision in Flo & Eddie v. Sirius XM Radio. The Court of Appeals' ruling comes in response to a certified question from the U.S. Court of Appeals for the Second Circuit, which inquired in April whether New York's common law provides copyright protections for recordings not covered by federal law. Southern District Judge Colleen McMahon had denied Sirius' motion for summary judgment in 2014, finding that New York common law did provide a public-right performance 

That ruling came ust weeks after a settlement between the Turtles members and SiriusXM in a related lawsuit in California. U.S. District Judge Phillip Gutierrez ruled against SiriusXM in 2014, holding that California state law, as it is written, gives the master recording owner exclusive performance rights.

Wednesday, 1 February 2017

Should Press Publishers be Given an Exclusive Neighbouring Right?

This blog post was written by Tibbie McIntyre.

The Proposal for a Directive of the European Parliament and of the Council on copyright in the Digital Single Market was published on 14 September 2016, as part of a wider reform package on the Digital Single Market. Among the most controversial aspects of the proposal can be found in Articles 11 and 12 of the proposed Directive, which relate to the creation of a new right for publishers. As 1709 blog readers probably already know, this proposal has generated a great deal of debate amongst stakeholders, more information on which can be found here, here and here.

Of considerable significance to the debate is the response given by the Centre for Intellectual Property & Information Law (“CIPIL”), a group of thirty seven academics headed up by Professor Lionel Bently. Also of great importance to the debate is the opinion released by the European Copyright Society, which covers not only the press publishers’ right but also a range of issues emanating from the EU Copyright Reform Package.

Article 11(1) of the proposed Directive states:

“Member States shall [note that this right is compulsory for Member States to provide] provide publishers of press publications with the rights provided for in Article 2 and Article 3(2) of Directive 2001/29/EC for the digital use of their press publications.”

*N.B. -Article 2 of Directive 2001/29/EC (“the InfoSoc Directive”) is the reproduction right and Article 3(2) is the making available right.

Article 12 of the proposed Directive states:

“Member States may [note that his right is optional for Member States to provide] provide that where an author has transferred or licensed a right to a publisher, such a transfer or a licence constitutes a sufficient legal basis for the publisher to claim a share of the compensation for the uses of the work made under an exception or limitation to the transferred or licensed right.”

These rights have been incorporated into the proposed Directive due to the loss of income by the publishing industry. Recitals 31 – 36 provide the contextual basis and supposed justification for Articles 11 and 12, with recital 31 stating that:

“A free and pluralist press is essential to ensure quality journalism and citizens' access to information. It provides a fundamental contribution to public debate and the proper functioning of a democratic society. In the transition from print to digital, publishers of press publications are facing problems in licensing the online use of their publications and recouping their investments. In the absence of recognition of publishers of press publications as rightholders, licensing and enforcement in the digital environment is often complex and inefficient.”

The proposed exclusive right under Article 11 is supposed to improve the bargaining position of press publishers in their dealings with data aggregators (Google, Facebook, et al.), as press publishers are supposed to be able to generate income under this new right, which encompasses the reproduction right and the making available right. The position at the moment is that the data aggregators maintain dominance over news publishers – news publishers need their content to be indexed and shared by data aggregators in order for it to reach its audience.

Professor Raquel Xalabarder eloquently argues that the premises on which the proposal is based are false;

1.      The data aggregators are involved in acts of copyright exploitation.

2.      The press publisher right will not affect authors’ rights of works incorporated in press publications.

1. The data aggregators are involved in acts of copyright exploitation.

What do data aggregators such a Facebook and Google do?

Generally, they (i) create links to press publishers’ sites, as well as (ii) temporarily provide small snippets of content.

-          Does creating links to press publishers’ sites infringe the reproduction right or the making available right, and if so, do one of the exceptions apply?

o   Svensson and its progeny suggest that linking to news sites that are openly accessible does not infringe the communication to the public right, found under Article 3(1) of the InfoSoc Directive (and Article 3(1) is absent from the new right!). The uncertainty relating to this issue is heightened by Recital 33 to the proposed Directive, which refers to the right of communication to the public. The differences between the ‘making available’ right and the ‘communication to the public right’ are explored in the C More decision, and the IPKat here.

-          Does temporarily providing small snippets of content infringe the reproduction right or the making available right, and if so, do one of the exceptions apply?

o   Prima facie, temporarily providing small snippets would infringe the reproduction right. However, Article 11(3) of the proposed Directive states that Articles 5 to 8 of the InfoSoc Directive apply to the press publishers’ right. These snippets potentially fall under Article 5(1) of the InfoSoc Directive, the exception of temporary acts of reproduction which are transient or incidental. These temporary snippets, are therefore potentially not covered under the new press publishers’ right.

2. The press publishers’ right will not affect authors’ rights of works incorporated in press publications.

Given that press publishers almost always own the copyright in the published content anyway (through employment, assignation, or in jurisdictions where assignation is impossible, exclusive licensing is used), the impact of this new right is unclear.

Additionally, Professor Xalabarder argues that where layering of rights occurs, the division of wealth generated from the content must be divided amongst a greater number of parties, and as a consequence authors generate less income from their work.

 A similar press publishers’ right has previously been introduced in Germany, with unfavourable results. Press publishers in Germany attempted to make Google pay, utilising their new right. Google simply refused to comply. It stated that any press publisher that did not consent to their content being used free of charge would receive reduced exposure on index results. Naturally, faced with reduced web-traffic  which would jeopardise revenue generation, press publishers relented.

In Spain, a press publisher right was introduced which automatically made Google pay, without the press publishers having to pursue payment under an exclusive right. Google’s response was simply to close down Google News in Spain. Further consequences were felt, with online Spanish news sites garnering less traffic after Google News had shut down.

The cogent opinion released by CIPIL states that “If the real problems facing press publishers relate to licensing and enforcement, the best answer is surely to focus on licensing and enforcement rather than to create new rights.” Also, that “Multiple rights are associated with clogging and opportunistic behaviour.”  

Realising policy objectives is a complex and difficult goal, with almost endless variables to consider, with drafting of new laws posing a particularly challenging task. The debate playing out across the globe presents many challenges, and it will be interesting to review further iterations of this proposed right in the coming months, as well as the response from EU institutions.

Tuesday, 31 January 2017

International comity ... or triple error?

Professor Blomqvist
The 1709 Blog has just received the following commentary by Professor Jørgen Blomqvist (University of Copenhagen) on a draft piece of EU legislation that requires no introduction – the proposed Directive on copyright in the Digital Single Market – and, more specifically, its provisions on out-of-commerce works.

Here’s the thoughtful analysis by Professor Blomqvist:

“The proposed European Directive on copyright in the Digital Single Market provides in its Article 7(5) that the provisions on use of out-of-commerce works by cultural heritage institutions “shall not apply to the works or other subject-matter of third country nationals except where points (a) and (b) of paragraph 4 apply”. The two said items set up points of attachment to identify the representative collective management organization from which licenses should be sought for the use, referred to in paragraph (1), ie the digitization, distribution, communication to the public or making available of out-of-commerce works or other subject matter permanently in the collection of a cultural heritage institution. Such use is proposed to be covered by an extended collective license (ECL) system. The points of attachment are, respectively, the country of first publication or first broadcast and the country of headquarters or habitual residence for producers.

It is rather unclear what is meant by saying that those items ‘apply’. The statement in item (26) of the Preamble, however, give reason to assume that it is supposed to mean that the ECL will only apply in cases where the work or other protected subject matter “belongs to” the European Union and does not enjoy protection under the otherwise applicable international treaties, such as Berne, Rome, TRIPS, WCT or WPPT.

Item (26) of the draft Directive Preamble further clarifies that this narrowing down of the scope of application of the ECL is motivated by “international comity”. In reality, it entails a decrease of the protection of works and other protected subject matter of EU origin. They will be subject to a licence scheme that does not apply to works and other such subject matter from third countries. This raises three interesting questions: is it necessary; is it correctly done; and it is permitted at all?

Is it necessary?

The first question may be discussed at length, and I shall not go into details. I would just mention that in my view the proposed provisions appear to be drafted in a reasonably precise and narrow way. They deal with out-of-commerce works and other protected subject matter and should normally not collide with any ongoing normal exploitation. Possible future exploitation of hitherto unexploited works, etc may be safeguarded by the rightsowners by prohibiting the use under the provisions in Article 7(1)(c). Finally, an ECL is probably the gentlest possible way of establishing a limitation or exception to copyright and related rights: the protected subject matter will only be used without permission under conditions, which a significant part of other rightsowners, or their appropriately appointed representatives, have considered acceptable. Accordingly, in my view, the proposed ECL it is not obviously incompatible with the three-step-test of TRIPS Article 13, WCT Article 10 and WPPT Article 16, and it is not obvious why it has been considered necessary to limit the international scope of application.

Is it correctly done?

Be that as it may, the way in which international comity has been safeguarded raises questions, too. According to Article 7(4) and (5) of the draft Directive, as paraphrased in paragraph 26 of its Preamble, the ECL mechanisms “should not apply to works or other subject-matter that are first published or, in the absence of publication, first broadcast in a third country or, in the case of cinematographic or audiovisual works, to works the producer of which has his headquarters or habitual residence in a third country. Those mechanisms should also not apply to works or other subject-matter of third country nationals except when they are first published or, in the absence of publication, first broadcast in the territory of a Member State or, in the case of cinematographic or audiovisual works, to works of which the producer’s headquarters or habitual residence is in a Member State.”

International rules governing which works, performances, phonograms and broadcasts are protected tend to be complicated, and this attempt to regulate them all in a joint provision seems to add analytical complexity, rather than simplify things.

Let us first recall the multilateral “interface” to which these rules should fit: under Article 5(1) of the Berne Convention, the obligations to grant national treatment and minimum rights under the convention applies “in countries of the Union other than the country of origin”. Congruently, under paragraph (3) of that Article “[p]rotection in the country of origin is governed by domestic law” (and thus not subject to the requirements of the Convention). The concept of ‘country of origin’ is defined in paragraph (4). The country of origin is the country of first publication and, if the work is simultaneously published in several countries, the country granting the shortest term of protection. For unpublished works, the country of origin is the country in which the author is a national, or, where the film producer has his headquarters or habitual residence, or, where a work of architecture is erected or another artistic work is incorporated in a building or other structure. In accordance with Articles 1(4) and 3 of the WCT, these provisions also apply in relation to that Treaty and they also apply under TRIPS according to its Articles 1(3) and 9(1).

The Rome Convention may also come into play in this context. While the minimum rights under that Convention are more limited than those under the Berne Convention, it still grants a general right of reproduction for producers of phonograms (Article 10) and, for performers, a right of reproduction of unauthorized fixations as well as reproduction for other purposes than those for which fixation was permitted or otherwise lawfully made (Article 7(1)(c)). The ECL provision deals, inter alia, with the reproduction for purposes of making recorded performances available to the public, and thus it is at least to some extent covered by the rights of the Convention. As regards broadcasting organizations, they are, more or less like the performers, granted rights of reproduction of unauthorized fixations and of reproduction of lawful, but unauthorized, fixations for purposes different from those for which the fixation was permitted (Article 13(c)).

Furthermore, the making available of recordings and recorded performances is covered by exclusive rights for both performers and producers of phonograms which are covered by Articles 10 and 14 of the WPPT. In addition, general rights of reproduction are granted for both performers (Article 7) and producers of phonograms (Article 11). In terms of beneficiaries of protection, WPPT refers to national of other Contracting Parties (Article 3(1)), but defines those by reference to the criteria established under the Rome Convention (Article 3(2)). A similar model is used in Article 1(3) of the TRIPS Agreement, which grants rights of reproduction for performers and producers of phonograms in Article 14(1) and (2) and, albeit optionally, for broadcasters in Article 14(3).

The Rome Convention does not operate with a concept of ‘country of origin’ and therefore does not contain points of attachment corresponding to Article 5(4) of the Berne Convention. Instead, we need to look for such criteria regulating the obligation to grant the minimum rights under the Rome Convention. In this respect, the points of attachment in Article 2(1) are clearly not relevant. They indicate the criteria that apply when identifying which level of protection under national law that is to be granted for foreign performances, phonograms and broadcasts in the cases where the Convention requires national treatment. Additional points of attachment are contained in Articles 4 through 6 which, for performers, producers and broadcasting organizations, respectively, establish in which cases national treatment is to be granted.  Since the Convention contains no criteria establishing the same as regards the minimum rights, it would seem that the criteria for national treatment should be applied mutatis mutandis also in relation to those rights. Actually, the limitation to national treatment seems to be a drafting slip, not least in view of the General Report of the Conference (Records of the Rome Conference, page 41ff) which discusses those criteria in relation to the protection under the Convention in general and not only in relation to the rules on national treatment. Otherwise, there would be no criteria for the application of the minimum rights at all, or the criteria would differ from those applicable to the national treatment, and such results would be highly unlikely.

The rules under Articles 4 through 8 of the Rome Convention are rather complex, but looking away from details that are less relevant in this context we may state that:

performances are protected if they took place in a Convention country or if they have been recorded on a protected phonogram or simultaneously broadcast in a protected broadcast (Article 4);
phonograms are protected if the producer is a national of a Convention country; if it was first fixed in a Convention country; or if it was first or simultaneously published in such a country (Article 5); and
broadcasts are protected if the broadcaster’s headquarters are situated in a Convention country; or the broadcast was transmitted from a transmitter situated in a Convention country (Article 6).
(For further details on the points of attachment, see my
Primer on International Copyright and Related Rights, page 31ff.)

Overall, these points of attachment under Berne and Rome seem much more sophisticated and detailed that the corresponding provisions in Article 7(5) of the draft Directive. Paraphrasing Article 7(5), the draft Directive does not apply to works or other subject-matter of third country nationals, unless such non-audiovisual works  or phonograms were first published or, if unpublished, first broadcast in a Member State, or unless such audiovisual works are produced by producers having headquarters or habitual residence in a Member State. Even without analyzing all modalities in details, we can see that if the intention is that the Directive should match the points of attachment of the international Conventions and Treaties, as is suggested by the reference to ‘international comity’, it errs to both sides.

It is too generous in that it would exempt from the ECL, for example, an unpublished phonogram featuring a performer who is a third-country national and which is produced by a third-country headquartered and domiciled producer, provided the recording took place in a Union country. Under Rome and the WPPT, the Union country would not be obliged to grant minimum rights for such a recording.

It is too restrictive in that it makes subject to the ECL a recording made in a third country by a Union national performer and a third-country producer, first published in a third country. Likewise, it would subject to the ECL an unpublished architectural work, erected in a country of the Union, and created by a non-union author. In both these cases, the recording or work enjoys protection under the international Conventions and Treaties and they should have been exempted as covered by minimum rights under international instruments.

Apart from that, the provision is also puzzling in that, like the preceding parts of Article 7, it addresses the protection of works and other subject matter, but it fails to address any safeguarding of the rights of third-country broadcasters.

Would it be permitted at all?

Let us now for sake of the argument assume that the level of protection under the proposed ECL would be below the conventional minimum rights. Then the situation would be that, with effect for the nationals of Member States and for others encompassed by the points of attachment linking to those states, an international arrangement had been made between the Member States of the EU regarding their protection, not only in their home country (country of origin), but also in other countries of the EU. This agreement would establish across the Union a minimum level of protection below the level of the Berne and Rome Conventions.

Such ‘special agreements’ are dealt with in Berne Article 20 and Rome Article 22. According to those provisions, countries of the Union/Contracting States may enter into special agreements among themselves, but only in so far as such agreements grant to authors or other beneficiaries more extensive rights than those granted under the Conventions, or otherwise contain no provisions contrary to the Conventions. (For more discussion of those Articles, see Primer on International Copyright and Related Rights, page 20f.)

The proposed Article 7(5) of the draft Directive would mean that, for example, a third country national first publishing his work or phonogram in a Member State would suffer substandard protection not only in that particular state, but also in all other EU Member States. That is clearly forbidden by Berne Article 20 and Rome Article 22, because the EU as such is not, and under the convention acts in force cannot become, party to those Conventions.

Here, of course, one may discuss whether the EU in relation to the WCT, the WPPT and the TRIPS Agreement could be considered a single country, because the EU is admitted as party to those agreements in its own right, but that would not remedy the problems under the Berne and Rome Conventions.

It seems that a similar problem exists in relation to Article 1(2) of the Orphan Works Directive as well. Obviously, it may not be a problem at all, if the limitations and exceptions in question are compatible with the three-step-test, but what then is the purpose of exempting third-country works and other subject matter?”