1709 Blog: for all the copyright community

Friday, 30 November 2012

PRS For Music Launches new Code of Conduct

PRS for Music, the not for profit organisation that represents 95,000 songwriters, composers and music publishers in the UK, has launched a revised Code of Conduct for its members and over 350,000 existing customers. 

The code follows the British Copyright Council Principles of Good Governance for Collective Management Organisations and also takes into account the recently published Intellectual Property Office Minimum Standards for UK Collecting Societies (October 2012). It outlines how PRS for Music will seek to achieve best practice by "responding to the needs of members and licensees alike and conduct its licensing business fairly and transparently". Detailed in the code are commitments to: 

- Provide information about the general governance, licensing and membership activities of PRS for Music 
- Set standards of conduct that members and licensees can expect from the society 
- Set standards for transparency
- Outline the complaints procedure for members and customers 
-  Provide an independent ombudsman for complaint resolution 

The PRS say that the introduction of the Code follows a consultation period with members, customers groups, trade associations and other stakeholders. 

The PRS for Music Code of Conduct can be viewed at http://www.prsformusic.com/codeofconduct

Thursday, 29 November 2012

O'Dwyer escapes the wrath of the USA

Richard O'Dwyer, the 24 year old UK student who created TVShack, which offered consumers the chance to stream and download hundreds of copyrighted films and TV programmes without the permission of copyright owners, has escaped extradition to the USA. O'Dwyer has seemingly done a plea bargain - whereby he will attend the USA and visit a court - and pay over a limited amount of compensation, avoiding both extradition and a criminal trial for the infringements. O'Dwer was a student at Sheffield Hallam University and made an alleged £147,000 ($230,000) running his original incarnation of TVShack, and after that was closed down, a second similar service, before that was finally shut down in 2010. The site did not host content, but linked to infringing sites. 

After UK Home Secretary Teresa May blocked the extradition of hacker Gary McKinnon to the USA on human rights grounds, and said she was introducing more stringent tests before extradition requests for trials outside the UK could take place, O'Dwyer remained one of the last extradition cases to be heard. It seems his legal team sought a compromise with US prosecutors although just as talks were reaching a crucial point, New York was struck by Hurricane Sandy, delaying any agreement which was eventually announced in the High Court yesterday. More on the history of Mr Dwyer's trials and tribulations here and here .

And a more opinionated view at http://www.guardian.co.uk/uk/2012/nov/28/richard-odwyer-films-struggle-liberty

Should copyright protect fashion?

Around a month before new US Congress starts, this blogger is wondering whether all the fuss over the Innovative Design Protection Act (IDPA) back in September was a bit of a storm in a teacup. Will the IDPA be approved this year? Although it has been approved by a Senate Committee it still needs approval of the full Senate and House of Representatives. Govtrackus' prognosis is: "Just 21% of all Senate bills reported favorably by committee in 2009–2010 were enacted." With a lame duck session before new Congress starts that approval is looking less and less likely.

The IDPA is "a bill to amend title 17, United States Code, to extend protection to fashion design, and for other purposes." The question under debate is: does fashion need and/or deserve protection?
A question which could be debated forever. On the one hand why should fashion designers be treated any differently to creators of other original artistic works? On the other, it is clear that the fashion industry benefits from knock-offs. The faster the churn of designs from luxury to high street, the faster designers need to produce new looks to fill the vacuum at the top.

Designers currently rely on a mix of trade mark and design rights to assert their rights: just this month a shoe designer, Charles Philip, filed a claim in the Central District of California in Los Angeles against The Gap. Philip argued that The Gap essentially copied his Fall/Winter 2012 loafer collection and stole his striped shoe lining, which he claims is his signature style. Unable to sue for copyright infringement, he claimed trademark infringement, trade dress infringement, unfair competition, dilution, right of publicity, and other claims. Should Philip have copyright over his shoes? Or does he not need copyright given the other raft of rights on which he can rely? 
For more on copyright in fabrics see here
As I have commented on this blog before, if English judges apply recent CJEU cases harmonising the concept of a work so that all works that are their "author's own intellectual creation" are protected, fashion designers will find it much easier to protect their works using copyright in the UK. Works that do not currently easily fall into one of the 8 works protected by the CDPA, such as shoes, perfume, make up, garments, hats etc, could be protected by copyright.

I would be interested in hearing readers' opinions: is the life-cycle of a design too short for the fashion industry to care? Or does that logic only apply to garments? Should the UK fashion industry be lobbying for application of the CJEU decisions in order to expand copyright protection? And how might this affect other industries?

Svensson and the "clickable link": does anyone know?

On Monday Iona posted this item on the forthcoming reference of some click-through copyright questions in Case C-466/12 Nils Svensson, Sten Sjögren, Madelaine Sahlman, Pia Gadd v Retriever Sverige AB. To jog readers' memories, the following questions have been referred:
1. If anyone other than the holder of copyright in a certain work supplies a clickable link to the work on his website, does that constitute communication to the public within the meaning of Article 3(1) of Directive 2001/29 ...?

2. Is the assessment under question 1 affected if the work to which the link refers is on a website on the Internet which can be accessed by anyone without restrictions or if access is restricted in some way?

3. When making the assessment under question 1, should any distinction be drawn between a case where the work, after the user has clicked on the link, is shown on another website and one where the work, after the user has clicked on the link, is shown in such a way as to give the impression that it is appearing on the same website?
I've just been asked if I know which is the "clickable link" in the underlying Swedish litigation to which the questions refer -- but I don't. Can any reader advise?

Tuesday, 27 November 2012

Communication without implication: when should a doctor sue?

Earlier this month, in Wilkinson v London Strategic Health Authority [2012] EWPCC 48, a decision of the Patents County Court for England and Wales, Judge Birss QC had to rule on a dispute over the ownership of copyright in training materials which were used for teaching communication skills to doctors, nurses and other staff in the field of cancer.

London, made easy ...
Dr Susan Wilkinson developed an approach to communication skills training --"the Wilkinson Variant" (WV) [note: there are three such approaches, the other two being the Maguire Variant and the Fallowfield Variant. The Wilkinson Variant is aimed at nurses, Fallowfield at doctors and Maguire at any generic healthcare professional]. Subsequently, in the summer of August 2007, Dr W signed an agreement with the London Strategic Health Authority (SHA) for a project to produce a 'connected programme', this being a unified national approach to advanced communication skills training for doctors, nurses and other staff ('ACST'). By Clause 6.6 of this agreement:
"All intellectual property rights associated with any intellectual property arising from the performance of the Services and the documents and other work prepared by the Consultant pursuant to this Agreement shall belong to SHA". 
Eventually a bundle of materials was produced which included some text that had been derived from the WV. According to Dr W, she and no-one else owned the copyright in various training materials relating to her original works: the SHA had infringed her copyright by using that material. Two SHA documents were in issue: the 'ACST Facilitators Manual' and a 'learner pack' (the SHA works).

The issues for consideration were as follows: (i) did Dr W own the copyright in her WV materials? (ii) To what extent were the SHA works derived from them? (iii) Could the 2007 agreement be interpreted as assigning Dr W's existing copyright in her already-created works to SHA? (iv) did the SHA have the benefit of an implied licence to use those works?  Dr W maintained that any licence granted to the SHA in respect of the project was limited to the purposes of the project which had been made known to her in advance, on the basis that the SHA could exploit the works within the National Health Service -- but no wider than that.

Judge Birss QC held that the copyright did indeed belong to Dr W, but that the SHA had not infringed it.  In his view:

* the copyright in the documentation of the WV belonged to Dr W at the time when the 2007 agreement was signed -- and the SHA works in question included significant extracts from those works with the consequence that the reproduction of those works would infringe her copyright  -- unless there had been a transfer of that copyright or a licence.

* On the facts, it was clear that Clause 6.6 did not operate as an assignment of any of Dr W's pre-existing copyright in the WV to the SHA. The effect of that clause was prospective, not retrospective.

* Nor could an assignment of her copyright be implied.  The implication of such a contractual term should only be made where it was necessary, and even then only to the extent that it was necessary to give effect to the intention of the parties to the contract, but not more than that, and a minimalist approach was therefore called for.

* In the circumstances, the SHA did have the benefit of an implied licence to use the WV in relation to work done under the 2007 agreement. This was because Clause 6.6 showed that it was the intention of both of the parties that the benefit of the copyright in work created under that agreement would be enjoyed by the SHA --  and no limit was placed on the SHA's enjoyment of that copyright.

* There was no clause which provided that Dr W was to have any right of control or veto what the SHA did with the project.

Last Friday there was a sequel to this, in Wilkinson v London Strategic Health Authority [2012] EWPCC 55. Both parties came before the court to argue the question of costs because, unsurprisingly, they could not agree who had won.  Dr W thought she was the victor because the court had acknowledged her ownership of the copyright, while the SHA felt they had won, having been exonerated in the copyright infringement action. The matter was complicated by the fact that the litigation commenced before the High Court and that it could have been concluded more swiftly if Dr W had cooperated with a without-prejudice attempt by the SHA's lawyers to clarify some of the issues in question in the hope of keeping costs down.

In the end, Judge Birss QC did not actually say "a plague on both your houses", but an element of that school of thought was reflected in the judge's conclusion when he said:
"... the order I will make is that the defendant must pay 27.5% of the claimant's costs of these proceedings and the claimant must pay 35% of the defendant's costs ... ".
This blogger does rather feel that this case could have been avoided entirely, or its effects greatly minimised, if the parties had directed their communication skills more appropriately in the direction of each other at an earlier stage.

Disney victorious in copycat battle


Disney has won it’s battle with UK independent production company Brightspark Productions after claiming it was misleading consumers with a series of budget family DVDs which appear to be copycat versions of Disney's own popular animated films. The action came as the Brighton-based firm, launched ‘Braver’, which Disney said was similar to it's blockbuster ‘Brave’ in more than just it’s title. Other titles from Brightspark included ‘Tangled Up’ (Disney have ‘Tangled’) ‘Tappy Feet’ (errr, something like ‘Happy Feet’?), Little Cars, a cartoon with animated cars for younger viewers (rather like ‘Cars’ perhaps?)  and ‘The Frog Princess’ (Disney have 'The Princess and The Frog’). With Braver, Disney had complained that the graphics and artwork, including a red-haired princess in a green dress on the cover of the 45-minute "cartoon fairytale" closely resembled its own packaging. 'Braver' was in fact a repackaged version of a DVD released in 2005, called 'A Fairy Tale Christmas'. The title credits of the film marketed as 'Tangled Up' revealed the film's original title to be 'Britannica's Fairy Tales from Around the World'.

Back in September this year Disney sent Brightspark a cease-and-desist letter demanding that Brightspark Productions withdraw the DVDs from the market, or face legal action saying "People place great trust in the quality and creativity of Disney, and when it appears that another company is causing confusion among Disney consumers we will act to protect ourselves and the consumer. Disney believes Brightspark has demonstrated a pattern of misleading consumers with numerous releases that confuse and undermine the trust those consumers have in Disney."

Brightspark replied with the following statement. "All we've tried to do is give parents something their children will hopefully find entertaining. We came up with our title around 18 months ago and if we thought consumers would mistake our film for Brave, we would have renamed it." At the time the Company  said they were trying to find a "mutually acceptable" solution to Disney's complaint.

OK, I may be stretching it a bit to include this item on the 1709 Copyright Blog, and despite some searches, it was impossible to find any real detail of what the actual action was based on. Anything our readers can provide by way of background would be much appreciated. But news broke yesterday that Brightspark has been ordered to destroy all copycat DVDs which had been on sale at supermarket chains including Tesco and Sainsbury, and online with Amazon, usually retailing at less than £3 and the company admitted it's titles were "cheap and cheerful". Brightspark say that they have already stopped production and have told distributor Sony to destroy remaining stocks. They must pay £5,000 towards Disney’s costs.

UPDATE: I am reliably informed that Arnold & Porter acted for Disney and the claims in the High Court were for copyright, trade mark infringement and passing off, all of which were addressed in Arnold J's final order. My thanks. 

More on the Guardian here and the Evening Standard here 

Monday, 26 November 2012

CJEU to consider copyright implications of linking and framing

There has been much discussion about whether a website operator infringes copyright in a work by providing a link to another website containing that work, or framing through to that work. It is not clear whether linking and framing constitute a) a communication to the public and/or b) the making of an unauthorised copy.

This is an issue which has been discussed before on this blog in relation to decisions by the US, Canadian, French and Dutch courts. The UK government has considered whether new legislation is required to clarify the law on this point but decided to wait for the Supreme Court's decision in NLA v Meltwater.
Today the IPO has reported that a Swedish court, the Svea hovrätt, has made a request for a preliminary ruling from the CJEU regarding the infringement of exclusive rights to make copyright protected work publicly available by a third party subscription search engine. The case is Nils Svensson, Sten Sjögren, Madelaine Sahlman, Pia Gadd v Retreiver Sverige AB (Case C-466/12).
 
The following questions have been referred:
 
1. If anyone other than the holder of copyright in a certain work supplies a clickable link to the work on his website, does that constitute communication to the public within the meaning of Article 3(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society?

2. Is the assessment under question 1 affected if the work to which the link refers is on a website on the Internet which can be accessed by anyone without restrictions or if access is restricted in some way?

3. When making the assessment under question 1, should any distinction be drawn between a case where the work, after the user has clicked on the link, is shown on another website and one where the work, after the user has clicked on the link, is shown in such a way as to give the impression that it is appearing on the same website?

4. Is it possible for a Member State to give wider protection to authors' exclusive right by enabling "communication to the public" to cover a greater range of acts than provided for in Article 3(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society?

In short, the CJEU is being asked:

1. Does linking constitute communication to the public?

2. Does it matter if the website being linked to imposes restrictions on access on its users? (It is not clear from the questions what these restrictions on access are in this case, however they are likely to be the website's T&Cs or paywalls requiring subscription.)

3. Should there be a legal distinction between linking and framing?
 
4. Can a Member State expand the meaning of "communication to the public" to cover more than is set out at Article 3(1) of the InfoSoc Directive?
 
Given the volume of litigation on these issues and the intrinsic nature of links to the internet, these are clearly questions to which responses are needed. The UK IPO is inviting comments by 3 December 2012.

Parasitical Press Pounded by Paris 'ppeals Court



                                                                      Jean-Marc Morandini
                                                                     credit:  Nicolas Genin
                                                                 Not as pleased as he looks



On November 9th, the Paris Court of Appeals (see here) handed down an interesting ruling in the area of online press.

Well known French journalist Jean-Marc Morandini runs (via a company called The Web Family) a blog devoted to all things media.  In the view of many well established publishers (such as the plaintiff in this case, Le Point), this blog has a tendency to copy more or less wholesale articles and dispatches appearing elsewhere.

Taking issue with this practice, Le Point brought suit against Mr. Morandini and his corporate alter ego on grounds of copyright infingement and unfair competition (as well as trademark infringement).

The trial court held that the articles at issue were indeed protected by copyright but that the defendants could rely on the "press review" exception to avoid liability. 

The appellate court took a decidely different view of the matter.  On the issue of copyright infringement, the Court stated that the articles at issue did not rise to the requisite threshold of originality:

"It emerges from a review of the dispatches and articles published or disseminated by [Le Point] and submitted to the Court's review that while the treatment of their content reveals real know-how, these articles and dispatches do not evince true creative effort and cannot be considered as bearing the stamp of their authors' personality."

With regard to the claim based on unfair competition, the Court sided completley with the plaintiff.  It stated:

"It is not sufficient to start a dispatch by indicating "according to Le Point..." to engage in the quasi-systematic pillage of information from this press organization relating to the media, which is necessarily the fruit of considerable human and financial investment.

By enabling this facility on its site, The Web Family saves itself the expense of such investment and enjoys a real advantage inasmuch as it benefits from numerous advertsing banners and revenue which it is reasonable to say is thanks, in part, to the information gleaned from Le Point and its site www.lepoint.fr."

We see here all the hallmarks of a successful action in parasitical behaviour (or free-riding) under French law, viz. proof of investment on the part of the plaintiff in order to produce something that gives it a competitive advantage and the taking thereof by the defendant without expending any of its own efforts or money.

The defendant The Web Company was ordered to pay the plaintiff €50,000 by way of damages.  Mr. Morandini, in his personal capacity, was held not to be liable for the unlawful activity, which was attributed solely to his company, The Web Family.

On an unrelated note, readers may be interested to know that HADOPI has just published a synthesis of the various contributions to its consultation on copyright exceptions: see  here.


Saturday, 24 November 2012

French minister of culture speaks of Google, Amazon and Loi Hadopi

Aurélie Filippetti
Earlier this week Italian newspaper Corriere della Sera featured an interview with French minister of culture Aurélie Filippetti
As her surname clearly suggests, Mme Filippetti is of Italian descent. This week she was in Umbria to attend some celebrations in honour of her grandfather Tommaso, who left Italy after WWI to work as a miner, first in Luxembourg and then in France. 
Corriere secured an interview with Mme Filippetti prior to her arrival in Italy. On that occasion, the Minister had the chance to clarify France's position as regards topics which are of sure interest to Google, Amazon, copyright enthusiasts and users of copyright-protected materials alike. 
As was reported by The 1709 Blog last month, France is thinking of following Germany and adopt a piece of legislation which would require news aggregation sites such as Google News to pay royalties on the newspapers' snippets and headlines that they display. As readers will remembers, Google is not particularly happy about this, and has indeed threatened to exclude French media sites from search results if France goes ahead with plans to make search engines pay for content. While the overall situation is heating up in Europe, in Brazil 154 members of the Brazilian National Association of Newspapers have already opted out from Google News. 
En garde Googlé!
Filippetti highlighted that culture is one of the most important resources to European economies and it would be foolish not to develop and sustain it. Hence, if by the end of this year French, Italian and German publishers do not achieve an agreement with Google, in January 2013 France will adopt a law which would require Google to pay royalties on the contents displayed on its News service. The underlying idea is that those who profit from the distribution of contents must also contribute economically to their creation. If this is true for TV networks, the same should apply also to providers, websites and digital platforms, said the Minister.
Not the kind of dumping
Amazon is interested in 
Filippetti also spoke of how internet giants like Amazon are threatening traditional publishers, eg Gallimard. She claimed that, although it is likely that Amazon will soon have a super-dominant position in Europe, the Commission does not seem to care. This is because this seems more interested in contrasting certain behaviours of small publishers who are just trying to cope with Amazon's threatening presence, rather than enquiring on Luxembourg-based giant whose business model is based on distance sales and unacceptable fiscal strategies involving price distribution dumping.
Mme Filippetti also spent a few words on controversial Loi Hadopi (on which see here, here, here, here ...), and said that the fight against piracy is best served not by laws like Hadopi, but by the development of fully licensed services such as Spotify and Deezer, although the royalties currently paid by these services are too low and should be increased.
Following this interview, there seems to be a lot to think about, as those addressed by Mme Filippetti are all topics which are currently at the centre of attention a bit everywhere in Europe ... What do readers think?

Hooper's vision unfolds

Former BBC legal chief James Lancaster will chair the new Copyright Licensing Steering Group, set up as a result of Richard Hooper's investigation 'Copyright works - streamlining copyright in the digital age' which proposed the creation of a Digital Copyright Exchange to  facilitate the licensing of copyrights on a 'one stop shop' basis with a registry of copyright data and copyright owners and potentially licensing mechanisms.  The Copyright Hub would also be responsible for providing education on copyright, the need for which (for both consumers and content owners!) was recently highlighted by Iona on this Blog. The DCE would also be responsible for solutions to the issues surrounding orphan works.  Hooper's co-author, Ros Lynch, will oversee the CLSG on secondment from the Department of Business Innovation and Skills, at an industry funded office hosted by publisher Pearson. Hooper will chair a sub-committee called the 'Copyright Hub Launch Group' looking at how the digital licensing exchange will work. 


PRS for Music boss Robert Ashcroft reacted positively to the announcement saying “We join with others across the industry in welcoming the announcement today that James Lancaster, former Head of Rights And Business Affairs at the BBC, will chair the Copyright Licensing Steering Group and that Ros Lynch will be leading an office to spearhead the work to deliver Richard Hooper’s Copyright Works recommendations”. The music collection society boss  added “We will continue, with our partners in the industry, to meet the challenges he identified, providing a better licensing environment for all. As previously stated, we believe that the Copyright Hub recommended by Hooper could place Britain at the very centre of the global, online market for the creative industries. Coupled with industry efforts for a Global Repertoire Database, it will prove to be a critical building block in what must inevitably be an international project”.

Copyright works can be downloaded here 

Friday, 23 November 2012

Copyright enforcement gone mad: Winnie-the-Pooh laptop seized

© Airis Sophia
Having reported on the German authorities' take on a teenager's infringement of copyright last week, this blogger thought it appropriate to follow up with the Finnish police's actions further to attempted copyright infringement by a nine-year-old.

This is a strange story, which one assumes the Finnish authorities wish had never happened. A nine-year-old girl couldn't afford to buy the latest song from her favourite pop star, Chisu. Or, being nine years old, perhaps she didn't have a credit card with which to pay to download it? In any event, she looked Chisu up on Google, which lead her to The Pirate Bay website, where she attempted to download the song. The download failed and the next day the girl went with her father to buy the song.
However, the Finnish Copyright Information and Anti-Piracy Centre or the Tekijänoikeuden tiedotus- ja valvontakeskus ry (the TTVK) had detected the attempted download and contacted the girl's father asking him to pay €600 and to sign a non-disclosure agreement in order to avoid prosecution. He did not pay.

This week, at 8am in the morning, the police knocked at the family's door, with a search warrant, and proceeded to seize the girl's laptop from which the attempted download had been made. It is probably one of the first Winnie-the-Pooh laptops to be seized for attempted illegal activity.
The girls's father told TorrentFreak:

"We have not done anything wrong with my daughter. If adults do not always know how to use a computer and the web, how can you assume that children or the elderly - or a 9-year-old girl - knows what they are doing at any given time online?
This is the pinnacle of absurdity. I can see artists are in a position, but this requires education and information, not resource-consuming lawsuits."

Electronic Frontier Finland, an association founded to protect citizens' electronic rights, said:  
"It is not in anyone's interest that, in the name of the copyright, little girls are being harassed. This shows poor judgment, and consideration from TTVK and from the police".
This blogger tends to agree with the girl's father that "education and information" are likely to be more effective than brute force. There is no excuse for seizing a nine-year-old's laptop for one attempted illegal download. Surely the Finnish police must have more pressing matter to deal with?

That said, this story demonstrates the importance of placing adequate controls on family computers. Although the German Federal Court found last week that parents were not responsible for their childen's infringing acts, another court could find otherwise, and innocence is no defence to (actual) copyright infringement.

Bulgaria heads for Beijing

The 1709 Blog doesn't often get a chance to pick up a scoop, but here's some hot news from Bulgaria, courtesy of this blogger's friend, the excellent Ventsi Stoilov, all the way from Sofia.  He writes:

The Council of Ministers of the Republic of Bulgaria decided on Wednesday 21 November 2012  upon accession to the WIPO Beijing Treaty on Audiovisual Performances.
The official ratification of the Treaty is forthcoming.  More information can be found here (in Bulgarian)".
Thanks, Ventsi!

Thursday, 22 November 2012

When noodles bake and cookies crumble: copying and coincidence Down Under

Blessed as it is with excellent writers, the 1709 Blog is also privileged to receive many fine contributions from its friends and readers.  This week we have already been treated to articles from Fidel Porcuna (here) and Antonella Barbieri and Federica De Santis (here). Now it's the turn of an Australian IP enthusiast, Julian Gyngell (Kepdowrie Chambers), who writes as follows:
That’s the way the cookie crumbles (and other denials of copying)

The recent and public dispute (so far limited to social media) between Australia’s well-known Women’s Weekly magazine and rival Donna Hay Magazine has caused me to think about certain considerations that might be relevant when selecting one’s defence to an allegation of copyright infringement.  
The Weekly v Donna Hay tiff arises out of the photos that were published on their respective cover pages. The Weekly published its photo some 11 months after Donna Hay’s but that didn’t stop Donna’s editor from posting to her Facebook page her view that: “It bakes my noodle to see my team try so hard to come up with new inspired ideas for the magazine only to have them ripped off in the market a bare 11 months later.’’
The battle heated up when the Weekly spokesman allegedly replied: “That’s the way the cookie crumbles.  They’re biscuits. There’s only so many ways you can photograph them.’’

Leaving aside the specifics of this particular dispute, the nature of a “there’s only so many ways you can do such-and-such” defence is, in essence, a denial of copying (i.e. the alleged infringer is saying that the similarities are coincidental and, furthermore, given the subject matter, the coincidence is not surprising).  The alternative (and misconceived) basis of the “only so many ways” defence is that it is not even a denial of copying because the defendant believes wrongly that it is entitled to copy because of the limited options.  The latter basis of the defence is fundamentally flawed but even the former has its limitations that I will come to shortly.

That a defendant has not copied the original (the similarities being coincidental and even to be expected) is obviously a damn good defence to copyright infringement, but must be recognised for its potential weakness.  A defendant that relies on the defence of denial will come unstuck if the judge does not believe the bald assertion; perhaps the defendant’s witness(es) performed badly in the witness box; perhaps the plaintiff’s barrister did a particularly good job in cross-examination; perhaps the denial just didn’t ring true having regard to the similarities of the works and the absence of evidence of an alternative source of inspiration or some other credible explanation of independent creativity; perhaps the judge accepted the allegation of unconscious copying.

For whatever reason, if the denial (in the face of substantive similarities) doesn’t get over the 50/50 balance of probabilities then, in my experience, it’s not going to take much to tick off the substantial reproduction test and hence a finding of infringement (perhaps if only because if the judge doesn’t believe the denial and finds that copying took place then there is a very real risk that his/her Honour will also conclude that the copying involved a substantial reproduction – thus leading to the scenario that the substantial similarities (even coincidental similarities) of the works may strongly influence the finding as to copying (in the sense that the denial defence is not made out) and the similarities will also govern (in part) the issue of the substantiality of the reproduction.

This scenario, of course, is only a specific example of the truism applicable to all matters litigious of having an end-to-end story, not a mere denial, that must sound logical. It must start “in the beginning” and the actors must all live “happily ever after”.

So, if it’s going to be a denial of copying based on the “it’s a coincidence, there’s only so many ways you can do such-and-such” argument, then face-facts – you’ve just admitted (as the Weekly’s spokesman has done) that the works have substantive similarities.  As a lawyer, one therefore needs to test to destruction your client’s story about how the work in question was in fact created – what were in fact the inspirations and/or sources for the work – what were the creative juices that were flowing at the time?  If the client’s story is plausible, comprehensive and attests to independent creativity (and it will do so if it’s true) then crack on and that’s your cast iron defence.

But the initial discussion with the client has to commence with “full and frank” disclosure – ie. “tell me now and tell it straight” because, once you’ve pleaded the “it’s a coincidence” denial, then it really doesn’t wash to say (in the alternative) that, even if we did copy, the changes that we made (i.e. the bits that we didn’t copy and the bits that we added or adapted) give us the get out of jail card that we need. Indeed, it has been observed (in the High Court of Australia, S.W. Hart & Co. Pty. Ltd. v Edwards Hot Water Systems (1985) 159 CLR 466 per Wilson J) that: “such dissimilarities as are apparent may be seen as no more than a deliberate attempt to obscure what has actually taken place, namely, the appropriation of another person's labour.”

Arguably it is simply nonsensical to plead a denial of copying and yet try to hold up one’s sleeve an alternative defence based on making sufficient changes to dodge the infringement bullet – surely one can’t credibly aver making conscious alterations or changes after denying copying at the outset?

Of course, if the plaintiff’s work was part of the client’s creative juices then that is not the fatal end of the matter.  But if that is the case then the defence should make that concession and focus on the “it’s not a substantial reproduction” argument, including going to town on the significance of the alterations and changes, as well as identifying other sources of inspiration and creativity (assuming that to be the case).

The point, therefore, for the Weekly and its lawyers to consider (should Donna go litigious) is whether its spokesman’s defence that “it’s a coincidence, there’s only so many ways you can photograph [biscuits],” will ring true, ie. is this defence supported by a credible explanation of the history and context in which its cover page photo was independently conceived, arranged, staged and photographed.  If that explanation is looking “thin” then the Weekly might consider it to be tactically advantageous to concede the extent (perhaps just a very limited extent) of the copying while leaving it open for it to focus legitimately on the substantial differences between the two photos (that are apparent at least to this author – however, I note that a Sydney newspaper is running a poll on the thoughts of its readers and 42% (of almost 8,000 respondents) have voted “yes” to the question: Do you think the Women's Weekly cover was a copy of Donna Hay Magazine?  34% say it may be a coincidence, and only 24% say that they don’t see a resemblance).

Wednesday, 21 November 2012

Hardware providers sue Dutch government over private copying levy hike

Further to recent changes to private copying compensation in Spain, change may also be afoot in the Netherlands.

What do you mean we've moved on?
The private levy system in the Netherlands has been frozen since 2008 meaning that whilst blank audio and video tapes, MiniDiscs and blank DVDs and CDs are subject to levies, smartphones and MP3 players are not. To bring the system up to date, the Dutch government announced in October that new, increased, private copying levies would apply to all hardware from January 2013.
The new levies are set out below. They increase from €0.03 for CDs and DVDs to €5.00 for tablets over 8 Gb, PCs and laptops.
Understandably, this sudden propulsion of private copying levies into the modern world has caused some tension: last week three of the big hardware providers (Dell, Hewlett-Packard and Imation) along with other big players in the industry sent a letter to the State Secretary for Security and Justice, Fred Teeven, saying that the levies would "cause trade barriers and serious disincentives to operating logistics hubs and distribution centers in the Netherlands". Further they said that the levies were likely to conflict with the Information Society Directive which, they say, requires that fair compensation be based on assessment of the harm caused by private copying.
Last Wednesday, Hewlett-Packard, Acer, Dell and Imation, went further and filed a claim against the Dutch government at the District Court of the Hague claiming damages caused by the new, higher, private copying levies.

It is not clear to this blogger how a claim for damages can be filed when as yet no damages have been incurred, however the big four say that in 2013 alone they will suffer damages of  "tens of millions" of Euros. Damages aside the main gripe seems to be that the new levies were based on an estimate that the entertainment industry has lost €40 million due to private copying. The hardware providers say that the estimate is "excessive and unfounded" and that it includes losses due to illegal downloads which should not be recovered by way of private copying levies. As we reported here, the question of how the private copying exception applies to illegal content has been referred by the Dutch courts to the CJEU. Further the hardware providers argue that it is not right that the new levies should apply to all devices, including devices for professional use that are not used for private copying.
Private copying levies are always a touchy subject and such sudden increases were never going to be popular. Is the solution to make private copying illegal, as it is in the UK, and so abolish the levies? Or to implement one European-wide levy so that at least particular markets within the EU are not disadvantaged?

And will the Dutch move on to think about imposing levies on the cloud?

Tuesday, 20 November 2012

Copyright in design in Italy:a post-Flos review

The 1709 Blog thanks its Italian friends Antonella Barbieri and Federica De Santis (Portolano Cavallo Studio Legale) for letting us have the following contribution:
"Copyright in design in Italy: the approach of the Courts and Law after Flos v Semeraro

You may have read some discussion on this blog regarding the effect of the CJEU's ruling in January 2011 in Case C-168/09 Flos v Semeraro on the protection of industrial designs in EU Member States.

Issues have arisen since Article 17 of Directive 98/71 on the legal protection of designs, while requiring Member States to comply with the principle of ‘cumulation’ of protection of registered designs with copyright protection, also left Member States free to determine the extent to which, and the conditions under which, copyright protection is conferred, including the level of originality required.

Before 2001, Italian law afforded copyright protection only to those industrial design works whose artistic value could be appreciated separately from the industrial nature of the product to which it pertained.Legislative Decree no. 95/2001, implementing Directive 98/71, then amended the Italian Copyright Law (Law no. 633/1941) by removing the requirement for ‘separability,’ granting copyright protection to works of industrial design having “inherent creative and artistic value” (Article 2(10), Italian Copyright Law.) and providing that design registration may be combined with copyright protection. Accordingly, thanks to the ‘cumulation’ regime set forth by Directive 98/71 as implemented, designs works can be protected in Italy as:
  • registered designs and models under the Itallian Intellectual Property Code (Legislative Decree no. 30/2005: the 'IPC'), from 5 to 25 years; or as
  • copyright-protected works, as far as they have ‘inherent creative and artistic value,’ for a period of 70-years after the author’s death.
Moreover, a 10-year transitional regime was established by Legislative Decree no. 95/2001 during which copyright protection granted to industrial designs could not be invoked against third parties that had started in good faith to manufacture or sell, before the date in which the law entered into force (19 April 2001), industrial designs and works that belonged to the public domain either because their design rights had expired or because they were not eligible for copyright protection.

That provision was subsequently restated in Article 239 of the IPC.  Against this backdrop, in 2007, the Italian Government amended Article 239, excluding copyright protection for any design which fell into the public domain before 2001.  The 10-year grace period disappeared and copyright protection for designs that had fallen into the public domain before 2001 was then excluded tout court.

Since the facts briefly summarised above, the interpretation of Article 239 has been highly controversial as to whether industrial designs which were created before 2001 benefit from full copyright protection.

In the meantime, the Italian Courts issued significant decisions which granted copyright protection to design works against their slavish reproduction by third parties.  Recent Italian judicial decisions on the matter have been greatly welcomed by the Italian design industry, as they provide greater protection to what is considered a vital industry for the national economy, marking a new perspective in the Italian industrial design case-law.

Flos v Semeraro 

In November 2006, the company Flos, a manufacturer of designer lighting, brought proceedings against furniture producer and retailer Semeraro before the Court of Milan. Flos argued that Semeraro had infringed its copyright on the “Arco” lamp (illustrated, right), a masterpiece of post-war Italian design created by the Castiglioni brothers in the 1960s, by importing from China and marketing in Italy a lamp called “Fluida” with aesthetically similar features of the Flos “Arco” lamp. The “Arco” lamp was not a registered design.

Semeraro denied infringement and argued that, among other things, the “Arco” lamp was not eligible for copyright protection in that it lacked “inherent artistic value” under the Copyright Law.

In interim proceedings, the Court of Milan ruled that Semeraro infringed Flos’s design rights, ordered the seizure of the imported lamps and prevented Semeraro from continuing to market them.  According to the Court of Milan, the “Arco” lamp was eligible for copyright protection as an industrial design under the Italian Copyright Law. 

In April 2009 the Court of Milan made a reference to the CJEU for a preliminary ruling in connection with the compatibility of the Italian provisions on protection of industrial designs with Directive 98/71. In January 2011 the CJEU ruled that national laws (in this case, the IPC) cannot refuse copyright protection to designs which, even if entered into the public domain, were eligible for that protection. The CJEU also clarified that Article 17 of the Directive concerned only registered designs, (i.e., designs which had been registered and then had fallen into the public domain), in that it providds for the principle of ‘cumulation’ of protection of registered designs with copyright protection. Accordingly, designs which, before the date of entry into force of the national law transposing the Directive into the legal system of a Member State, were in the public domain because they had not been registered did not fall within the scope of Article 17.

Incidentally, the CJEU observed that copyright protection for unregistered design works may arise under the Information Society Directive 2001/29 if the conditions for that Directive’s application (focusing on the concept of “creativity,” to be defined by the national implementing laws) are met.

Very recently, on 12 September 2012, the Court of Milan endorsed the interpretation of the CJEU and ruled that Semeraro’s sale of the “Fluida” lamp, which copied the Flos “Arco” lamp, amounted to a copyright infringement. Semeraro was ordered to stop selling the “Fluida” lamp. Moreover the Court ordered the destruction of any copies of that product that remained in the market, and ordered Semeraro to pay €60,000 damages, a fine of €1,000 for each infringing product imported or marketed after the decision, and for the publication of the decision in a major Italian newspaper. 

The Court of Milan also stressed that, based on the CJEU ruling, industrial design works could be protected as copyrighted works regardless of whether they have been previously registered as industrial designs.  In this respect, the Court of Milan fixed important principles to ascertain whether an industrial design work bears “artistic value” and is therefore eligible to copyright protection, e.g, one should look at the widespread appreciation of the design work in the cultural and institutional sector (e.g. critics, cultural institutions, museums, etc.), irrespective of the fact that it is of daily use.  The relevant assessment should be objective, rather than subjective

Further, the Court gave relevance to the fact that the “Arco” lamp represents the trends of post-war Italian industrial design and has been included in the collection of the New York Museum of Arts and Design for over ten years. Similar arguments had been used by the Court of Milan when, with two injunctions of 26 April and 7 July 2011, it granted copyright protection to an unregistered design item, the "LC/4" chair by Le Corbusier, produced by the Italian company Cassina (reproduced, left), against High Tech S.r.l., another Italian company selling pieces of furniture identical to those designed by Le Corbusier. In that occasion, the Court of Milan emphasised that non-registered design works also are eligible for copyright protection as long as the conditions for copyright protection are met, i.e., if such works have inherent creative and artistic value.

In another very recent decision of 13 September 2012, the Court of Milan granted copyright protection to the well-known design work “Panton Chair” by Verner Panton (illustrated, right), produced by Vitra Patente A.G., against its slavish imitation by High Tech S.r.l.  According to the Court, the exposure of this work in famous exhibitions and museums was considered evidence of its artistic value, making this item eligible to copyright protection.

Further amendments to IPC

After the CJEU decision in Flos v Semeraro, Article 239 of the IPC was further revised:

·                    in 2010, to provide full copyright protection for designs that met the substantial requirements of such protection;

·                    in 2011, to provide expressly that the protection granted to designs works under the Copyright Law applied also to those industrial works that, before 19 April 2001 (the date on which the law implementing Directive 98/71 entered into force), were in, or had become part of, the public domain, and, finally,

·                    in 2012, by Law no. 14/2012, which extended the transitional period granted on 19 April 2001 from five to thirteen years, with such extension of this transition period appearing to be in conflict with the CJEU decision in Flos v Semeraro."
This is a summary of a longer article which you can access here.