Setback for SPEDIDAM in France

We know best

On September 11th last, SPEDIDAM, the French collecting rights body for (lead) performers (beneficiaries of a so-called neighbouring right) suffered an important setback.  Having noticed that Fnac (the French retailer) was offering various sound recordings for paid downloading, SPEDIDAM brought legal proceedings arguing that such a use required the prior authorization of the performers (under Section L.212-3 of the Intellectual Property Code) notwithstanding the fact that authorization had already been given for the fixation and marketing of phyisical media (vinyl, CDs).

SPEDIDAM was arguing that the applicable statutory provisions relating to perfomers' rights were to be interpreted as requiring separate authorizations for the marketing of physical media and on-demand downloads.

The Cour de cassation (Supreme Court) affirmed the appellate ruling in favour of Fnac.  The Court noted that while pursuant to Section L.212-3 of the IPC the performer must authorize public communication of his performance, the Court of Appeal had found that, according to the information on the signed attendance sheets, the performers had authorized the exploitation of the recording of their performances as "sound recordings published for commercial purposes". 

The Supreme Court held that the Court of Appeal had correctly held that the legal characterization as sound recording (phonogramme) was independent of the existence of a tangible medium such that the relevant authorizations given by the performers covered the making available to the public by means of downloading for pay.

In other words, a "sound recording" (or "phonogramme" in French legal parlance) is not dependent on there being a tangible medium.  In authorizing the creation and publication of a sound recording based on their performances, the performers were in effect authorizing both offline and online commercial use.

The ruling also contains some interesting discussion on SPEDIDAM's standing (or lack thereof) to bring such proceedings.

The decision can be found here in French.

It's time for CJEU fun again

Awww ... Two new copyright cases
to think (and dream) about

1709 Blog readers who also follow The IPKat will be already aware that there are two new exciting copyright references for a preliminary ruling awaiting a decision of the Court of Justice of the European Union (CJEU). 

The first reference is from Austria and concerns jurisdiction in online infringement cases. Case C-441/13 PEZ EJDUK is in fact all about interpretation of Article 5(3) of the Brussels I Regulation and what "where the place where the harmful event occurred or may occur" may possibly mean in the context of websites which host allegedly infringing materials (a photograph in this case). 

The question awaiting an answer is the following: 

'Is Article 5(3) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters [the Brussels I regulation] to be interpreted as meaning that, in a dispute concerning an infringement of rights related to copyright which is alleged to have been committed in that a photograph was kept accessible on a website, the website being operated under the top-level domain of a Member State other than that in which the proprietor of the right is domiciled [Or. 2], there is jurisdiction only

- in the Member State in which the alleged infringer is established; and
- in the Member State(s) to which the website, according to its content, is directed?' [also known as 'intention to target', on which see - among other things - the recent Opinion of Advocate General Jääskinen in Case C-170/12 Pinckney (here, here, here)] 

As recalled by helpful and learned copyright resource Cyberleagle by 1709 Blog friend and Bird&Bird partner Graham Smith, this is just the latest in a series of recent references concerning internet jurisdiction. 

************************************

The second reference is Case C-419/13 ART & ALLPOSTERS INTERNATIONAL. This is a Dutch case concerning (alleged) transformative uses of copyright-protected works, seeking clarification about exhaustion of the right of distribution. 

Allposters used the works of rightholders represented by Dutch collecting society Pictoright by altering and reproducing them on canvas. Allposters argues that the works were significantly altered and disseminated to the public in a different form; therefore Allposters did not infringe the copyright of the rightholders (for an accurate synopsis see EU Law Radar ).

The Dutch Supreme Court has referred the following question to the CJEU:

'Does Article 4 [concerning the distribution right] of Directive 2001/29/EC (the Copyright Directive) govern the answer to the question, whether the distribution right of a copyright-protected work which has been sold and delivered within the EEA with the consent of the rightholder where the reproduction has been subsequently altered in respect of its form and is again brought into circulation?'

Judge Chin Appears to Bolster Google’s Fair Use Claim

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In the latest chapter of the Google Books saga, Judge Denny Chin has given Google some cause for optimism.

As regular readers of the 1709 Blog will remember, the Authors Guild sued Google in 2005 over its plan to digitize more than 20 million books. The Authors Guild maintains this infringes copyright in many works, but Google counters that the reproduction of copyrighted material is fair use. Google claims that their digitization provides great benefit to the public and researchers, that there is no evidence of market harm to copyright owners, and that their use is transformative as it only allows consumers to access “snippet” views of copyrighted material. In July 2012, after a controversial settlement plan failed, the parties filed cross motions for summary judgment. On Monday, the US District Court in New York heard the oral arguments.

It took Judge Denny Chin only 40 minutes to hear the arguments, and during this time he appeared to favor Google’s fair use claim. Chin repeated the many public benefits that Google Books provides, noting that even his law clerks use it to perform citation checks. He also acknowledged amicus briefs from libraries and humanities professors that support the benefit the project has for researchers. Given these arguments, he posed a question to Author Guild attorney, Ned Rosenthal: “aren’t these transformative uses, and don’t they benefit society?” When Rosenthal argued that the project may lead to lower compensation for authors, Chin noted examples where people had bought works after finding information about them through Google Books. When Rosenthal argued that this was a matter for Congress, Chin quipped: “[d]oes anything get done in Congress these days?” He later followed this by asking Rosenthal: “[w]hat are you suggesting? That I don’t decide…and wait for Congress?”

The case now appears, after eight long years, to be heading towards resolution.  

CLSG issues report detailing implementation of the Hooper report

Following last year's report by Richard Hooper and Ros Lynch entitled Copyright works. Streamlining copyright licensing for the digital age (on which see 1709 Blog post here), creative industries established a Copyright Licensing Steering Group (CLSG), to oversee the implementation of the main recommendations included therein, and ensure continued cross-border collaboration focused on further streamlining of copyright licensing.

Today the CLSG, published a report detailing the successes over the past 12 months in implementing recommendations to streamline copyright licensing. These include:

• The launch of a pilot phase of the Copyright Hub last July (on which see 1709 Blog post here);
• The publication of a Voluntary Code of Practice for creating and retaining metadata in images;
• The development of a range of initiatives to streamline the licensing landscape for educational establishments;
• The planned introduction of two new joint music licences from PPL and PRS for Music;
• New digital music licensing initiatives for start-ups and app developers;
• Progress on the adoption and inter-operability of common data standards.

James Lancaster, former Head of Rights and Business Affairs at the BBC and current Chair of the CLSG said: “This report demonstrates the real progress that has been made in implementing the recommendations of the Hooper/Lynch report. The work over the past year has demonstrated clearly the power of all parts of the creative industries working collaboratively together with the support of Government to come up with pragmatic and workable solutions to the challenges of copyright licensing.”

Viscount Younger of Leckie, Minister for Intellectual Property, added: “The work of the Copyright Licensing Steering Group in making licensing work better - both through the creation of a Copyright Hub and by simplifying existing licensing approaches - is excellent."

Maureen Duffy, author and member of the CLSG, concluded by saying: "Once, the church and state commissioned artists to produce books, paintings and music. Then came printing, beginning the democratisation of the markets for their work, then film and radio, and now we have the digital world. But how are the creators to be paid? The [Copyright] Hub seeks to solve this by a simplified facility for licensing, putting consumers in touch with the works they want, and providing an income for the creators. Our report shows how the industries have come together to solve the problems of making piracy redundant, and assuring the future of UK creators, their music, art and literature, and their massive contribution, both cultural and economic."

Will the pain in Spain fall mainly on those with blame?

According to Reuters, Spain has now passed legislation that will make it a criminal offence to run a website that provides links to sources of unlicensed content, and anyone convicted of running such an operation could face up to six years in jail in "aggravated cases". The law only targets those sites that are run for profit (but that includes those making "direct or indirect profit") and the Spanish government has said that carrying advertising would be sufficient to bring a website into the system. The new legislation introduced as part of a wider reform of the country's penal code.

The new law enables rights owners in Spain to target websites and operators who facilitate copyright infringement - as well as those who actually distribute copyright material without licence. That said, the new law recognises the legitimate functions of both search engines and P2P networks, and both are seemingly specifically excluded from the new rules. Users of link-sharing sites would also be excluded from the new provisions. Confirming the new rules, Spain's Justice Minister Alberto Ruiz-Gallardon told reporters: "This is a real balance between protecting copyright and new technologies": Reuters suggest that the move is to keep Spain away from the top of the USA's naughty list (the USTR's Special 301 list) with one Spanish minister, the country's Education and Culture Minister Jose Ignacio Wert, more or less admitting this back in April when acknowledging that the new laws were a move to avoid trade sanctions saying "this reform should satisfy those who are worried about Spain's insufficient level of protection for intellectual property".

In March 2013 The Spanish Council of Ministers approved  the draft reform of the Intellectual Property Law, also known as Lassalle law, designed to "punish more harshly some breaches of intellectual property rights" and preventing payment processors and advertisers dealing with infringing websites. Back in January 2012, seemingly after the US had threatened Spain it would be added to the priority Special 301 list, Spain introduced the so-called Sinde Law designed to offer greater protections for rights holders, which included a provision to close infringing sites. Since that law came into force, it has been criticised as ineffective and cumbersome, and Spanish internet traffic has been switching away from websites providing links to copyrighted material, which were targeted by the law, towards peer-to-peer or content-sharing services.

The new legislation is expected to come into effect by the spring of 2014.

More on TechDirt

The CopyKat - a squealling pig and a horrified mouse head up this animal house

Pandora has won one of it's legal battles with the music industry, with a US court ruling in a summary judgement that American music publishers cannot withdraw from the streaming firm's existing deal with collecting society ASCAP and force the company to do direct deals. The ruling means that the big publishers will have to continue to licence Pandora via ASCAP until 2015, even though the digital firm had actually agreed direct deals with some of them while this litigation was going through the motions.

Oink, UK-based invite-only file-sharing community launched in 2004 and shut down in 2007 following a joint investigation by British and Dutch police, working in collaboration with UK and global record label trade bodies the BPI and IFPI, is returning as an apparently legal service at oink.cd and oink.me.uk.Users are asked to sign up to a mailing list "for updates and an invitation in due time" and are reminded to "never forget 23 Oct 2007", the date of the original site's shutdown. The shutdown resulted in four successful prosecutions of prolific users of the service for infringement, although founder Andy Ellis escaped conviction for conspiracy to defraud.

A Delhi court has dismissed a complaint against Bollywood filmmaker Madhur Bandarkar for allegedly stealing the plot and idea of his movie "Fashion" from a book without giving credit to its author.  Additional Chief Metropolitan Magistrate Lokesh Kumar Sharma dismissed the case against Bhandarkar, producer Ronnie Screwvala and writer Ajay Mongia after the complainant, actress turned author Seema Seth, repeatedly failed to appear before it to pursue her case. "Several opportunities have been given to her since last year" and having failed to submit her own script, the Judge found that she was "not interested in pursuing her case." 

In South Africa, commentators are musing that stricter rules on the use of exclusive news content may come into effect following a recent charge of plagiarism by  Moneyweb against Fin24, which is accused of rewriting seven Moneyweb stories, without fully acknowledging the source or indeed having permission: commentators also point to the fact that Moneyweb has its own unique financial comparisons,  tables or models which “similar to exclusive stories, are protected  under copyright law and can’t be copied without permission.”

The EFF have highlighted a new push by the content industries in the USA to establish extra-legal "voluntary agreements" with search engines, similar to the "Copyright Alert" surveillance machine already in place with some ISPs. The EFF point to both a Congressional hearing and a glossy new paper published yesterday by the Motion Picture Association of America (MPAA), which the EFF says both underscore a major push by the copyright lobby - saying "These sorts of agreements represent a troubling move towards enforcement regimes that have the speech-squashing capabilities of actual law, but not the corresponding due process or accountability". More here. 


A federal judge in New York has said that there is a 'triable issue' at the heart of the the claim brought by the major record labels against user-generated video website Vimeo, owned by Barry Diller's IAC, over claims that Vimeo  had knowledge or awareness of copyrighted music in some of the videos being shared. Vimeo, which is now one of the top 130 most trafficked websites, responded by asserting that it was free of liability thanks to the safe harboir provisions of the Digital Millennium Copyright Act. The claim centres on whether the company took enough preventative actions to avoid liability.  Judge Ronnie Abrams denied safe harbour defence for 55 of the 199 videos detailed in the suit, in particular the now very popular 'lip synch' videos. Reportedly, these 55 presented situations where Vimeo employee either knowingly uploaded videos that used copyrighted music themselves, or had documented interactions with users that did (comments, likes, etc.) and still failed to take the video down. In the 56-page ruling Judge Abrams called the site’s alleged knowledge of these incidents a “triable issue.”  Noting that the site had 12.3 million registered users uploading 43,000 new videos each day”n the judge also agreed that there were no triable issue in regards to pre-1972 music and granted the website summary judgment on that. matter, although reportedly said that as the DCMA does NOT apply to pre-1972 recordings, leaving Vimeo with an interesting challenge there.

Talking of UGC and safe harbour, This blogger had a recent and unexpected experience with You Tube when I discovered that there was a limit on the number of Copyright Infringement Notices that can be submitted to YouTube within a (unknown) time period - effectively limiting the number of legitimate takedowns a content owner can issue against illegitimate and infringing content on the Google owned platform: Now it's not often I do work like this and maybe I missed something, but this had to be done - and all that happened was a page popped up saying "Submission frequency limit exceeded  Please come back later to submit your next copyright complaint.". No when, not why - in fact no other information at all - just that. It seemed to be working again 30 minutes later BUT ......... if YouTube has self imposed arbitrary limits - does that mean it doesn't have an effective takedown system for legitimate claims - and if so - what does this mean for DCMA safe harbour protection?

Photo by Wally Gobetz (wallyg @ Flickr)

Patrick has already noted that the US sculptor Frank Gaylord has won his claim against the US Postal Service a for copyright infringement and has been awarded damages and interest of nearly $685,000. To remind you, the case involved the printing of stamps with an image of the soldiers sculpted for the Korean War Veterans Memorial in Washington, D.C. We also know that the Postal Service "respectfully disagrees" with the U.S. Court of Federal Claims' damages decision and that, together with the Department of Justice, it is considering whether to appeal. Having won at first instance when the Federal Court ruled in the Postal Service's favour, saying it's use of a photograph taken of the memorial during winter by a retired Marine fell under the doctrine of "fair use", the appellate court reversed this, directing the Court of Federal Claims to  "determine the proper amount of damages due Plaintiff Frank Gaylord" . Well how did they do this? Well the the Court of Federal Claims used a 10 percent "running royalty" to determine the fair market value of Gaylord's copyright, calculating that the Postal Service collected an estimated $5.4 million for stamps purchased by collectors, entitling Gaylord to $540,000. The balance of Gaylord's award came from royalties on merchandise sales and pre-judgment interest.

The Sunday Times featured an interesting article asking why The Walt Disney Company, never one to normally shy away from using its formidable array of legal weapons against anything that taints the Disney brand,  is ignoring a new black and white horror film, shot without permission on small digital cameras and mobile phones at Walt Disney World in Florida and Disneyland in California. Posters for Escape From Tomorrow feature Mickey Mouse's hand dripping with blood - 'brazenly provoking Disney's legal pitbulls'. The reason seems to be that The Mouse House is wary of giving the film any more publicity - which opens with the credit 'the following motion picture has NOT been approved for all audiences by the Walt Disney Company - despite potential copyright and trade mark infringements, and the lack of permission to film. 

You can see the trailer here.

The dispute over royalty payments between the BBC and Eos, the agency representing some Welsh language music composers and publishers, is going to the Copyright Tribunal. At an interim hearing in April, the Tribunal ordered the BBC to continue paying Eos £120,000 a year to access its members' repertoire of music. his sum was agreed by both parties in February. Eos wants the Tribunal to increase that amount to £1.5m a year - the BBC are suggesting an annual figure of £100,000. Eos was formed when its members became unhappy with royalty payments from PRS for Music, the UK's principal royalties collection agency.
Lauren LoPrete 

And more on songwriters ..... and royalties: According to research carried out by Victoria University of Wellington PhD student Sharma Taylor, despite the popularity of reggae music around the world, the economic return to Jamaica is very low, with most music rights being owned by foreign companies: Taylor’s research shows that many of the 57 singer/songwriters she interviewed didn’t fully appreciate the copyright they own. An interesting piece of research - more here.


And finally ..... it seems blogger Lauren LoPrete's two month old blog, This Charming Charlie,is under threat from Universal Music Publishing Group. The blog uses lyrics from the iconic British band The Smiths (published by UMPG) to re-word classic Charlie Brown cartoons. It seems no complaint has been raised by the Peanuts legal team and TechDirt reports that LoPrete has been offered legal support and now will fight on - you can see her legal team's response to UMPG on the blog - arguing fair use, transformative use, and pointing out that the use of the brief excerpts does no damage to UMPG's commercial position.

US Post Office to Pay $685,000 in Damages

Gaylord's sculpture entitled The Column

The US Post Office has been ordered to pay a historic $685,000 to Frank Gaylord after it issued a stamp that infringed copyright in Gaylord’s war memorial statues.  

In 1990 Vermont-based sculptor, Frank Gaylord, was selected to create a memorial to veterans of the Korean War. The resulting monument is made up of 19 life size, stainless steel, statues of Korean War soldiers, and is situated in Washington D.C’s West Potomac Park.

The US Post Office stamp

In 2002 the US Post Office issued a stamp to commemorate the 50th anniversary of the Korean War. The stamp features a photograph of Gaylord’s statues in winter, surrounded by snow. The Post Office offered Gaylord no compensation, causing Gaylord to file a copyright suit in 2008.

 

The Federal Court of Claims initially held the re-use was a non-infringing, fair use. In particular, the court believed the Post Office’s use was transformative and unlikely to harm Gaylord’s market. The finding of fair use was reversed in 2010.

Frank Gaylord. Photo: Glenn Russell

The Federal Circuit Court of Appeals believed the use was not transformative as both works served the same purpose i.e. the commemoration of veterans. The decision was remanded to the Federal Court of Claims to determine the appropriate damage level.

On Friday, the court awarded the 88 year old Gaylord nearly $685,000. Previously the highest compensation the Post Office has paid an artist was $5000. The Post Office says it “respectfully disagrees” with the decision and is considering whether to appeal. For Westlaw users the judgement is number 5290438.

The Expiring Detective's Last Case?

Back in March, Jeremy posted a blog alerting us to the lawsuit  brought by Leslie Klinger, a Los Angeles attorney, against the Estate of Sir Arthur Conan Doyle -- the creator and author of a series of fictional works featuring the legendary investigator and crime-solver Sherlock Holmes, the London-based "consulting detective"who lived at 221B Baker Street and whose abilities border on the fantastic; Holmes is famous for his astute logical reasoning, his ability to adopt almost any disguise, and his use of forensic science skills to solve difficult cases - along with his trusted sidekick, Dr Watson.

Jeremy Brett as Holmes in 1985

According to the Complaint, filed in a federal court in Illinois (the location of the Estate’s US licensing agent), Mr Klinger is the author of numerous books and articles relating to the “Canon of Sherlock Holmes, a phrase that refers to the four (4) novels and fifty-six (56) stories by Sir Arthur Conan Doyle featuring the fictional character of Sherlock Holmes and other related characters and story elements”.  

Wiki tells us that the books and stories were actually written in two distinct phases: Conan Doyle wrote the first set of stories over the course of a decade. Wanting to devote more time to his historical novels, he killed off Holmes in "The Final Problem", which appeared in print in 1893 but is set in 1891. After resisting public pressure for eight years, the author wrote The Hound of the Baskervilles, which appeared in 1901, implicitly setting it before Holmes's "death". In 1903, Conan Doyle then wrote "The Adventure of the Empty House", set in 1894, in which Holmes reappears and explains to a shocked Watson that he had only faked his death in "The Final Problem" to fool his enemies. "The Adventure of the Empty House" marks the beginning of the second set of stories, which Conan Doyle continued to write until 1927.

Mr Klinger’s complaint centres on the position taken by  the Conan Doyle Estate which, despite the fact that all but ten of Conan-Doyle's works should have entered the public domain in the US, argues that all elements of the Canon of Sherlock Holmes remain protected by copyright because, “Holmes is a unified literary character that wasn’t completely developed until the author laid down his pen.”  In other words, the character of Sherlock Holmes and all related copyright elements remain protected until 2023, drawn from the date upon which the final story published by Sir Conan Doyle enters the public domain.   Mr Klinger’s view, and the view of other, sympathetic authors who have created new stories based on elements from the public domain works of Sir Conan Doyle, is that licensing fees demanded by the Estate are not necessary,  and Klinger sought a declaratory judgment that only new, original elements first published in the stories that remain under copyright protection are still protectable and that copyright no longer protects any elements that had already been published in earlier Sherlock Holmes works, so all such elements must now be in the public domain. 

Basil Rathbone as Holmes with
Nigel Bruce as Dr Watson in 1939

TechDirt now reports that the Conan Doyle Estate has now (finally) filed its response to the motion for summary judgment, adding as comment that this is "an astounding study of ignorance concerning copyright law and the public domain" and that "While it admits that there are only ten short stories (from that one remaining book) that are under copyright, it still argues that those ten stories lock up pretty much everything else. First, it argues that the characters of Sherlock Holmes and Dr. Watson continued to grow as personalities in those last ten stories, and that the stories were non-linear (i.e., some took place earlier in their fictional lives), it more or less encompasses everything, even those public domain works" 

That  said, the new filing goes some way in explaining the Estate's position:

"The facts are that Sir Arthur continued creating the characters in the copyrighted Ten Stories, adding significant aspects of each character’s background, creating new history about the dynamics of their own relationship, changing Holmes’s outlook on the world, and giving him new skills. And Sir Arthur did this in a non-linear way. Each of the Ten Stories is set at various points earlier in the two men’s lives—and even late stories create new aspects of the men’s youthful character. In other words, at any given point in their fictional lives, the characters depend on copyrighted character development."

and specifically

"If the creation of the characters was complete in works published in the United States before 1923, the characters are in the public domain. If, however, the characters as works of authorship were only completed in copyrighted stories published in 1923 or after, the characters are works of authorship protected by United States copyright law."

explaining 

"Sir Arthur Conan Doyle created a single complex character complete in sixty stories" and the filing suggests that the public domain clock only begins at the point where the "creation of the characters was complete."

Sherlock Holmes Baffled - the 1900 film

So now the US courts must decide - can the character outlive, at least in terms of copyright, the earlier body of work? The Estate thinks so - but TechDirt begs to differ, saying "thus, it's insane and nonsensical that all Sherlock Holmes works haven't bee in the public domain since 1983. However, hopefully this case will show that nearly all of Holmes and Watson are, in fact, in the public domain". 

As far as US case law on copyright, the Estate may have some problems as there is the 1989 decision of the US Appeals Court for the Second Circuit blocking the way: in Silverman v. CBS the court ruled that the original radio scripts and the characters in "Amos 'n' Andy" were in the public domain, even though some later television shows owned by CBS were not, saying "The fundamental copyright principle applicable to this case is that a copyright affords protection only for original works of authorship and, consequently, copyrights in derivative works secure protection only for the incremental additions of originality contributed by the authors of the derivative works" saying

"With respect to the "Amos 'n' Andy" characters, which are at the heart of this litigation, we have no doubt that they were sufficiently delineated in the pre-1948 radio scripts to have been placed in the public domain when the scripts entered the public domain.  . . .  What Silverman may not use, however, is any further delineation of the characters contained in the post-1948 radio scripts and the television scripts and programs, if it is ultimately determined that these last items remain protected by valid copyrights."

The 2011 Movie: A Game of Shadows

But it's clearly an important issue for the Estate: The Universal Sherlock Holmes (1995) by Ronald B. DeWaal lists over 25,000 Holmes-related productions and products, and it has been estimated that Sherlock Holmes is the most prolific screen character in the history of cinema; the earlies short film was made in 1900, and most recently both Benedict Cumberbatch and Robert Downey Jr have played the great detective, with Martin Freeman and Jude Law as their respective Dr Watsons, the last movie being the 2011 released Sherlock Holmes: A Game of Shadows, some 111 years later than the first.

Jeremy posed this question in his March blog "Can copyright of all works in a series legitimately be extended until the natural expiration of the copyright term for the final work in the series? and his comment to that question is still apt: "The answer to this question could have a broad impact on the status of copyrights held by authors who create series of works over many years."

Image rights and, to an extent, Trade Marks and passing off have been used to protect both real and fictional characters (including Paul Hogan's Crocodile Dundee and the Teenage Mutant Ninja Turtles) - and this system, whilst having limitations - seems to work: Should copyright function in the same way? And if the answer to that is 'yes' - and clearly copyright can protect original characters - how and when should a 'copyright' in a character subsist? On that character's first outing - or at the end of a long and detailed journey?

My thanks to Nick Greenfield and Melanie Leggett at Egmont UK for alerting me to this update - clearly better copyright sleuths than me!

More from Miri Frankel on the IPKat here 

Silverman vs CBS Inc., 870 F.2d 40 (1989)
Teenage Mutant Ninja Turtles: Mirage Studios v Counter-Feat Clothing Company Limited [1991] FSR 145
Crocdile Dundee: Hogan and Another v Koala Dundee Pty Limited and others (1988) 20 FCR 314
Any similarity of my title to The Dying Detective is somewhat intentional 

AG Sharpston on technological protection measures (and the relationship between various EU copyright directives)

Venue: The Court of Justice of the European Union
Dress code: court gowns
BYOB
RSVP

This morning Advocate General Sharpston issued her handy 79-paragraph Opinion in Case C-355/12 Nintendo v PC Box, following a request for a preliminary reference from the Tribunale di Milano (Milan Court of First Instance). 

This is an important case that has inhabited the minds and hearts of many copyright lawyers for quite a long time, and concerns the exciting topic known as technological protection measures.

Background

The Nintendo group produces videogames and consoles. PC Box markets 'mod chips' and 'game copiers' via its website. These enable videogames other than those manufactured by Nintendo or its licensees to be played on Nintendo consoles (DS and Wii). 

Nintendo brought proceedings against PC Box before the Tribunale di Milano, seeking to prevent the commercialisation of PC Box devices that circumvent the technological measures adopted by Nintendo in order to ensure that unauthorised copies of Nintendo or Nintendo-licensed games may not be used with its consoles.

AG Eleanor Sharpston

PC Box questioned whether videogames are to be regarded as computer programs or intellectual work. In either event, it submitted that it marketed original Nintendo consoles with a software pack comprising applications specifically created by independent producers for use on such consoles in conjunction with mod chips or game copiers designed to disable the blocking mechanism built into the console. PC Box also submitted that Nintendo’s true purpose was (i) to prevent the use of independent software unconnected with the illegal video game copies sector and (ii) to compartmentalise markets by rendering games purchased in one geographical zone incompatible with consoles purchased in another. It therefore challenged Nintendo’s application of technological measures not only to its video games but also to hardware, which it considered to be contrary to Article 6(3) of Directive 2001/29.

The Tribunale di Milano held that videogames are not just computer programs but are complex multimedia works expressing conceptually autonomous narrative and graphic creations. Such games must therefore be regarded as intellectual works protected by copyright. It noted that, although the technological measures put in place by Nintendo contributed to the prevention of unauthorised copying of games, they also restricted interoperability and consumer choice. It decided to revert to the Court of Justice of the European Union (CJEU), seeking clarification as to (using the words of AG Sharpston) "two questions, though perhaps not quite as clearly as might have been desired."

‘(1)    Must Article 6 of Directive 2001/29/EC be interpreted, including in the light of recital 48 in the preamble thereto, as meaning that the protection of technological protection measures attaching to copyright protected works or other subject matter may also extend to a system, produced and marketed by the same undertaking, in which a device is installed in the hardware which is capable of recognising on a separate housing mechanism containing the protected works (video games produced by the same undertaking as well as by third parties, proprietors of the protected works) a recognition code, in the absence of which the works in question cannot be visualised or used in conjunction with that system, the equipment in question thus incorporating a system which precludes interoperability with complementary equipment or products other than those of the undertaking which produces the system itself?

(2)   If it should be necessary to consider whether or not the use of a product or component to circumvent a technological protection measure predominates over other commercially significant purposes or uses, may Article 6 of Directive 2001/29/EC be interpreted, including in the light of recital 48 in the preamble thereto, as meaning that the national court must apply criteria which give prominence to the particular intended use attributed by the rightholder to the product in which the protected content is inserted or, in the alternative or in addition, criteria of a quantitative nature relating to the extent of the uses under comparison, or criteria of a qualitative nature, that is, relating to the nature and importance of the uses themselves?’ 

Preliminary observations

Among other things, the AG observed that 

·  The technological measures put in place by Nintendo sought to prevent or restrict unauthorised acts in respect not only of Nintendo’s own copyright material (its own games) but also of copyright material belonging to licensed independent producers;

·   Since Nintendo games are not just computer programs, the regulation of technological protection measures is that provided by Directive 2001/29, not the Directive 2009/24 (the Software Directive). In any case, "[w]here complex intellectual works comprising both computer programs and other material are concerned – and where the two cannot be separated ... the greater, and not the lesser, protection should be accorded. If that were not so, rightholders would not receive in respect of that other material the degree of protection to which they are entitled under Directive 2001/29."

·   In any case, it did not appear that the acts made possible by the use of PC Box’s devices, and with which the main proceedings are concerned, fell within any of the exceptions set out in Articles 5 and 6 of Directive 2009/24, although that again is a matter pertaining to the national court’s assessments of fact and there is also a reference on similar issues currently pending before the CJEU.

In light of the foregoing, the AG decided to address the questions by reference to Directive 2001/29 alone.

Not necessarily technological,
but clearly effective as a
protection measure

Milan's questions rephrased

As rephrased by the AG, the questions posed by the national court concern:

·   First, whether Nintendo’s technological measures qualify for protection because they are designed to prevent or restrict acts not authorised by the rightholder, even if they also restrict interoperability; then, if so, 

·   Secondly and separately, whether that protection must be provided against the supply of PC Box’s devices because they allow or facilitate the performance of such unauthorised acts. I consider, however, that the two issues cannot be entirely separated, and that factors mentioned in relation to one may be relevant to the solution of the other.

The response

According to the AG, the CJEU should answer the questions raised by the Italian court to the following effect:

·  ‘technological measures’ within the meaning of Article 6 of Directive 2001/29 may include measures incorporated not only in protected works themselves but also in devices designed to allow access to those works.

·   When determining whether measures of that kind qualify for protection pursuant to Article 6 of Directive 2001/29 where they have the effect of preventing or restricting not only acts which require the rightholder’s authorisation pursuant to that directive but also acts which do not require such authorisation, a national court must verify whether the application of the measures complies with the principle of proportionality and, in particular, must consider whether, in the current state of technology, the former effect could be achieved without producing the latter effect or while producing it to a lesser extent.

·  When determining whether protection must be provided against any supply of devices, products, components or services pursuant to Article 6(2) of Directive 2001/29, it is not necessary to consider the particular intended use attributed by the rightholder to a device designed to allow access to protected works. By contrast, the extent to which the devices, products, components or services against which protection is sought are or can be used for legitimate purposes other than allowing acts which require the rightholder’s authorisation is a relevant consideration.

Software or InfoSoc Directive?

A word on the relationship between the Software and InfoSoc directives

Beyond the boundaries of this specific case, the Opinion is well worth reading also because it contains a short assessment (para 34) on the relationship between Directive 2009/24 and Directive 2001/29. According to the AG:

"Directive 2009/24 concerns only computer programs, whereas Directive 2001/29 concerns copyright and related rights in intellectual works in general. The latter leaves intact and in no way affects existing EU provisions relating to, inter alia, the legal protection of computer programs. The Court has thus stated that Directive 2009/24 constitutes a lex specialis in relation to the provisions of Directive 2001/29. In my view, that statement must be read as meaning that the provisions of Directive 2009/24 take precedence over those of Directive 2001/29, but only where the protected material falls entirely within the scope of the former."

This clarification may be particularly timely and relevant, especially in the context of heated debates and uncertainties arisen in Europe following last year's ruling in Case C-128/11 UsedSoft v Oracle and concerning whether exhaustion applies to (digital) subject-matter other than software (see Katposts here and here) …

Never mind the moral squalor .... its the CopyKat

AT&T has started sending letters to some of its customers, threatening to disconnect them because they've been accused ("without trial or a chance to rebut the evidence") of copyright infringement. AT&T is doing this voluntarily as part of the controversial Copyright Alert System, whose overseeing body is The Center for Copyright Information. You can see the letter here.

Former US presidential hopeful, 'hockey mum' and former Governor of Alaska Sarah Palin is facing a copyright claim: the North Jersey Media Group have filed a law suit against Palin and her political action committee (PAC), alleging copyright infringement over the use of an iconic photograph of a flag at Ground Zero taken by one of their newspaper photographers on the politician's website and Facebook pages. In the photo, three fireman raise an American flag over the debris of the World Trade Center towers - and appeared on Palin's PAC’s website and Facebook page under the words “We Will Never Forget” though  it seems the image is no longer on either site

Mike Weatherley MP

In the UK, Mike Weatherley, the MP for Hove, and organiser of the annual 'Rock The House' talent competition, has been appointed as the Prime Minister's Adviser on Intellectual Property, with a particular focus on "enforcement issues relating to the creative industries".  Mike comes from a strong professional background in Intellectual Property for both music and film. Before his election to Parliament in 2010, Mike was the Vice President (Europe) for the Motion Picture Licensing Company and previously worked for music industry giant Pete Waterman. And this blogger can confirm from personal experience that Mike is a big music fan - cares about the creative industries - is a very approachable MP - actually knows something about IP - and is happy to help when he thinks he can make a difference.

It seems that Liberation Music has belatedly realized it chose the wrong adversary in Lawrence Lessig for a copyright dispute. Citing the need to protect a copyrighted song, the company had sought to block the work of Harvard law professor Lessig, after he posted a lecture that included amateur videos using the song  “Lisztomania,” by the band Phoenix on YouTube, to demonstrate how individuals can create new content by blending homemade videos with popular music.  

After a YouTube take down, reinstatement and now the claim being withdrawn, one wonders why this was ever even started: I have to say "Fair use" springs to mind - as does "Egg on faces" at the record label. And what of the recording artist - the now very successful French band Phoenix comprising of Thomas Mars, Deck d'Arcy, Christian Mazzalai and Laurent Brancowitz? It would be interesting to get their take on what their record label have been up to, not least as despite Liberation dropping it's claim, Lessig, aided by the Electronic Freedom Foundation, still plans to fight the takedown in US District Court in Boston, where Liberation Music had filed the complaint.

Philip Pullman

His Dark Materials author Philip Pullman has said that illegal downloading is a kind of "moral squalor" and copyright theft is much as reaching in to someone's pocket and stealing their wallet is theft, saying that authors and musicians work in poverty and obscurity for years to bring their work to the level "that gives delight to their audiences, and as soon as they achieve that, the possibility of making a living from it is taken away from them". In an article in the Index on Censorship he says that it is outrageous that anyone can steal an artist's work and get away with it" and adds "The principle is simple, and unaltered by technology, science, or magic: if we want to enjoy the work that someone does, we should pay for it"
Pullman is president of the Society of Authors and in the article Cathy Casserly, chief executive of Creative Commons, responds on the place of copyright in the digital age.

The US film industry has welcomed a paper published by the Phoenix Center for Advanced Legal & Economic Public Policy Studies which questions earlier research that claimed that the shutdown of MegaUpload had had a detrimental effect on smaller independent film releases.
That research, from the University Of Munich and the Copenhagen Business School claimed that while the closure of MegaUpload had contributed to a slight increase in revenues for blockbuster movies, mid-sized films had probably lost out, because file-transfer sites enabled peer-to-peer promotion of films that couldn't afford massive advertising campaigns, and that could result in more tickets sold at the cinema. Now Dr George Ford of the Phoenix Center has suggested that the Munich and Copenhagen academics reached that conclusion because of "a poorly-designed statistical model" and a misunderstanding of the economics of the film industry. The study, therefore, Ford reckons, "adds nothing constructive to the debate - save a little excitement". Motion Picture Association of America comment here.

And finally, music creators and performers - and others - might find this article by  Kristelia Garcia of interest - How Private Copyright Deals Are Cutting Artists Out...: Ms Garcia is a Visiting Fellow at Yale Law School, and a Visiting Associate Professor at George Washington Law School, and is also a former executive at both MySpace Music and Universal Music Group: the article reflects on the recent flurry of direct deals between record labels and/or music publishers with broadcasters in the USA - and the potential problems being faced by both the music collection societies - and composers, writers, performers and recording artists when labels and publishers 'deal direct'.