The CopyKat - new ways to deal with those pesky pirates

The ever marvellous Out-law reports that in the United Kingdom parliamentary under-secretary of state for culture, media and sport Ed Vaizey has said in a statement in the House of Commons that the 'voluntary copyright alert programme’ (VCAP) could be operational later this year. Vaizey said that "significant technical obstacles" had held the government back from implementing new legislation, under the Digital Economy Act (DEA), which would, if established, see the creation of a new framework for enforcing copyright involving ISPs and rights holders. Whilst the government has not given up on implementing the new regime through new regulations, Vaizey said he welcomed the proposed VCAP plans saying ""It has been difficult to implement the details of the Digital Economy Act," Vaizey said, adding "The government have not resiled from it, but there are significant technical obstacles, including the fact that we were being sued by BT and TalkTalk for at least two years from the time when it was passed."


In a bid to protect authors, composers and performers of local artists a special Police team has been set up in Fiji to conduct investigations specifically looking at the issue of copyright infringements. Acting Commissioner of Police Ravi Narayan says local artists have been losing out to pirates which is why a team has been tasked to deal with local cases to bring those who are continuously breaching the Copyright Act to justice saying "We now have a team that have undergone training and have the capacity to deal with cases of copyright infringements and we will work closely with the Fiji Performing Right Association to protect local artists from losing their hard earned money”.

Research firm NPD Group has thrown the spotlight on the rising trend of smartphone-based music piracy, suggesting that it's on the humble mobile device that record companies and music publishers are facing their next big piracy challenge, as an increasing number of apps appearing on the scene that enable users to tap into free and usually unlicensed sources of music content. the most popular of these Android apps, Music Maniac, has been downloaded more than 10 million times — and affords free access to all 10 of the top songs listed on the current Billboard’s Hot 100 list. The Recording Industry Association of America said it has sent notices to Google requesting the app’s removal, claiming it enables song piracy. Google has thus far refused.

And the Department of Justice and the FBI have successfully concluded a case against two targeted high-profile Android app pirates: Nicholas Anthony Narbone and and Thomas Allen Dye, both formerly of the well-known piracy site Appbucket.net, were charged with one count of copyright infringement, and both entered guilty pleas. Dye will be sentenced on June 12th, Narbone on July 8th; the maximum possible sentence is five years in prison, but androidpolice.com say that both will probably receive a reduced sentence for their pleas. One alleged co-conspirator, Thomas Pace, has entered a not guilty pleas as has Kody Jon Peterson of Florida, who was allegedly associated with the SnappzMarket piracy site.

Michael Robertson, the former chief executive of defunct online music storage firm MP3tunes has been ordered to pay an estimated $41 million  after being found liable for infringing copyrights owned by record companies and music publishers once part of EMI Group Ltd (now Sony ATV). The verdict included $7.5 million in punitive damages, although it should be noted that the figures came from the claimant's lawyers. 

Merpel recently mentioned Finnish on the IPKat - and as luck or perhaps bad luck) would have it - it seems that Finland is now facing an invasion of "copyright trolls". TorrentFreak reports "Citizens of Finland are now being subjecting to pay-up-or-else letters, but the decision to target this Scandinavian country isn’t the most obvious one, thanks to less favorable laws than those in the US". Letters that have recently gone out to some Finnish Internet subscribers (translated example below, from a DNA customer)  accuse them of downloading porn using BitTorrent and include an offer to settle for ‘only 600 euros’ (about US$825). A "vague reference" to the police is also included,  "ratcheting up the pressure to comply" says TorrentFreak.

BoingBoing tells us that in Florida, District Court Judge Ursula Ungaro has dismissed a suit "brought by notorious porno-copyright trolls Malibu Media on the grounds that an IP address does not affirmatively identify a person, and so they cannot sue someone solely on the basis of implicating an IP address in an infringement." 

Back in the UK, the Bookseller reports that CILIP (The Chartered Institute of Library Professionals), the Wellcome Trust and the British Library, are among 50 organisations to sign an open letter urging business secretary Vince Cable to implement key reforms to copyright legislation, which they says they fear “could now be subject to delay”. The letter said the proposed new UK copyright exceptions were essential to allowing “today’s technology start-ups to compete with their European and US rivals” but that it seemed “highly likely that the government’s own deadline for the introduction” of legislation on copyright exceptions would be missed." Well yes, they admitted that themselves! And the lovely Eleonora (or e-LAWnora as we must now refer to our friend) updated us on  where Parliament is with all of this yesterday - The Regulations are set to come into force on 1 June, having been approved by a vote in both Houses of Parliament after Easter.

Website blocking in copyright injunctions: a further perspective

Readers may remember Pekka Savola (@PekkaSavola, Legal Counsel at CSC-Scientific Computing Ltd and a researcher at University of Helsinki, Finland), for it was Pekka who authored a guest post on this weblog last month, "Hyperlinks, making available and the 'new public' -- or just a dead end?" (here).  Well, we're pleased to offer our readers another guest post by Pekka, this time on yesterday's ruling in Case C-314/12 UPC Telekabel Wien (noted briefly here on the 1709 Blog, and discussed in greater depth on the IPKat by Eleonora, here). This is what Pekka has to say:

Website blocking in copyright injunctions: a further perspective

Copyright and related right-holders have sought court orders to block access to websites facilitating copyright infringement. The targets of these orders have typically been major internet connectivity providers (ISPs) at the user end. The most prominent example has been The Pirate Bay, which has been blocked in six EU/EEA states (Italy, Denmark, UK, Finland, Ireland, and Belgium); in some others blocking requests have been rejected or are being prepared.

In its 27 March 2014 judgment in UPC Telekabel Wien (C-314/12) the CJEU held, in essence, that blocking by the user end ISP is possible (ie. a contractual relationship to the infringing website is not needed) and that the court does not need to specify the exact technical means the ISP must use to implement blocking. The former was expected, whereas the latter was in some ways somewhat surprising.

Unconditional right to request blocking by any intermediary?

No contractual relationship to the website or evidence of an ISP's customers actually using the infringing website was deemed necessary. The latter implies the unnecessary nature of some countries' (e.g. UK) national provisions on proving infringement and notifying the ISP.

The former was expected. However, it is unfortunate that the CJEU did not address the point raised by the Advocate General that “subsidiarity” might have implications on proportionality of orders. The AG had suggested that the right-holder should primarily target the website or the website's ISP. This issue has also come up in various national proceedings.

Recital 59 of Directive 2001/29 states that in many cases the intermediary is best placed to stop or prevent infringement. This implies that it is not always best placed, and some degree of subsidiarity may be called for. Some national courts have however noted that this is not required by Article 8(3). Clarification on this would also have been beneficial.

Complications of generic blocking orders

The Advocate General had suggested that a blocking order which does not specify the means is not acceptable. It would undermine legal certainty for the ISP and it would be impossible to evaluate the proportionality of such order, given that the properties of different techniques vary significantly. He had however accepted that a specific blocking order may be proportionate. This was reasonable.

The CJEU held that a generic blocking order was compatible with EU law. It did not specifically rule out specific blocking orders if national courts wanted to issue such, though it did point out that the ISP should be able to choose the means. The court seemed to partially miss the point that ISP's typically want specific conditions to be stated. This ruling will likely increase the tendency of the courts to issue orders similar to what was previously done in the UK. There the ISP was given discretion how to implement the order, but for the benefit of doubt, the court explicitly stated an implementation that at least would fulfill the obligation.

The CJEU needed to soften its position with several constraints. Two of them are both important and somewhat surprising.

1.      Legal certainty requires that the ISP must be able to get a court decision on whether the measures are sufficient once the implementation measures are known and before penalties are decided. The implication is that the ISP can change the measures if the court were to find them wanting. Effectively this seems to undermine the purpose of generic order and transform it to a court-sanctioned specific order. This also has an interesting temporal and res judicata implication. If an approved measure turns out to be ineffective, the ISP would not need to change it except through a new court order. Courts may thus be wary of the terms of acceptance.

2.      Because a generic order could violate the fundamental rights of the ISP's users, national procedural rules must provide a possibility for internet users to assert their rights before the court once the implementing measures are known. This seems to provide locus standi for users, which is unheard of in many jurisdictions. Any affected user could therefore address the court with a complaint that the specific blocking method chosen affects his/her fundamental rights.

On the other hand, it was not quite clear how effective means the ISP would be obliged to use. The CJEU required “sufficiently effective” and “preventing access.. or making it sufficiently difficult to achieve and of seriously discouraging internet users who are using the [blocked] services”. The court also pointed earlier to “measures which may represent significant cost for [ISP]”. These might imply that the ISP might need to do a great deal. This would likely be disproportionate. Further, the prohibition of generic monitoring of Article 15(1) of the E-Commerce Directive (2000/31) implies that the ISP should not be placed in a duty to monitor and block sites on its own (e.g. so-called torrent proxies or alternative domain names). No guidance was provided to assess proportionality, however.

So where does this leave us?

The CJEU did not address the Advocate General's point on whether the proportionality of blocking would be affected by whether the right-holder had first attempted to target the infringing website or website's connectivity provider. That is, is there an unconditional right to sue any connectivity provider at all, or should there be some evidence that the ISP is indeed “best placed” to stop or prevent this specific infringement? 

The CJEU accepted a general blocking order that leaves the technical measures to be determined by the ISP. However, with the constraint imposed by legal certainty this essentially becomes a court-sanctioned specific order. An ISP could first do a minimal implementation and if its effectiveness is contested, augment it as required by the court and in consequence obtain court approval on compliance. It also seems that this court-approved measure cannot be forcibly changed later on without a new court order. One way to read this is that generic orders are possible only if rather heavy requirements are fulfilled by the national execution phase; few countries do.

Another interesting feature relates to requirement to ensure that users' rights are respected. Apparently users of the affected ISP gain locus standi before the court to argue that the blocking order interferes with their fundamental right to lawfully access information. This is unheard of in many jurisdictions.  In many jurisdictions, e.g. the UK, the court has entrusted itself to verifying that the terms of blocking agreed between right holders and ISPs are proportionate also from the users' perspective. In some cases this has been more of a lip service than rigorous testing. It is interesting to see how this will develop. The fear of legal expenses might in some jurisdictions inhibit complaints.

Finally, the degree how far the ISPs are obliged to go in implementing a blocking injunction was left open. This might be a challenge given that many measures are perforce somewhat ineffective and the most extensive ones too expensive or intrusive such as with Scarlet Extended (C-70/10). It is unfortunate how this was left unspecified. This is also likely to produce CJEU referrals in the future.

All in all it would seem that it would have been more straightforward to adopt the Advocate General's suggestion that generic orders are not acceptable, and that proportionality of specific orders needs to be evaluated in a case-by-case basis. With the introduced constraints and extension in the direction of putative effectiveness the result seems to increase uncertainty. The courts could possibly avoid these new constraints just by issuing specific orders. The reaction remains to be seen.

Launching e-LAWnora

Our fellow 1709 Blog team member and IPKat copyright expert in residence Eleonora is far too modest to blow her own trumpet, but this weblog is committed to bringing you the news and views from around the world of copyright -- and this time Eleonora is making some news of her own. While the owners, users, conveyors and consumers of copyright material are tossed hither and thither by the waves of uncertainty and the threats and opportunities which they bring, Eleonora has bravely decided to set sail and to steer her craft through the choppy seas of change by launching her own copyright consultancy firm, ingeniously named e-LAWnora.

Besides the catchy name and matching website, e-LAWnora provides a variety of services, including bespoke analysis of copyright issues and their implications, tailored research on topical questions of copyright law and policy, and training and expert briefing opportunities for all those who want to know more about this exciting area of intellectual property.

Speaking of training and expert briefing opportunities, one such efvent is already on offer: it's the ‘Post-Fordham Copyright Catch-Up’, which Eleonora is running in Central London on 6 May 2014. There are still places available so, if you wish to register, just click here.

Here come some new Exceptions

As Eleonora reported earlier over on the IPKat,
the Government has finally issued an extensive pile of paperwork dealing with its implementation of the new Exceptions recommended by the Hargreaves report.

There are to be five separate exceptions, dealing with:

• what used to be called private copying and what we must now learn to call Personal Copying for Private Use;
• Quotation and Parody;
• Public Administration;
• Research, Education, Libraries and Archives; and
• Disabilities.

While the process that has led to these drafts has been long and convoluted, at least (from a purely legal perspective) the drafting has been much improved since the initial attempts were put out for consultation in July of last year.

To take personal copying as an example, the new Regulations have made clear that the personal copying right does not extend to copies that have been made pursuant to other exceptions, such as time shifting; they have also made clear that the exception only applies to (purchased or gifted) copies that can be kept forever and does not apply to streams or to rented or other temporary copies - including time limited downloads.   The right is backdated so that a copy made before implementation which would have been permitted if it was made post-implementation becomes lawful.

However, other controversial measures remain in place - the much-debated "contractual over-ride" and the Secretary of State's powers to intervene to protect user rights where technological measures (such as DRM) are being used to prevent permitted personal copying.  The latter power is now at least modelled on the existing powers to intervene - so the delightfully numbered section 296ZEA is, at least in form, very similar to the existing section 296ZE which applies where technological measures prevent other permitted acts.  There is also a recognition that the Secretary of State needs to take account of what rights-holders are offering voluntarily in terms of copiability of DRM protected works.

Finally - there is still no provision of fair compensation for private copying - which appears to be a requirement of the Directive.

Alongside the draft laws, the IPO has issued an Explanatory Memorandum, an explanation of the outcome of last Summer's consultation, new Impact Assessments - and a set of guidelines designed to explain the new laws to a range of different interest groups.   All of this is available here.  Once the 1709ers have had a chance to read the other exceptions, further coverage may follow.

The Regulations are set to come into force on 1 June, having been approved by a vote in both Houses of Parliament after Easter.

Blocking orders: fine so long as they're reasonable says CJEU

The Court of Justice of the European Union gave judgment this morning in Case C-314/12 UPC Telekabel Wien GmbH v Constantin Film Verleih GmbH and Wega Filmproduktionsgesellschaft mbH, a reference for a preliminary ruling from the Oberster Gerichtshof (the Austrian Supreme Court).  Fellow blogger Eleonora has already written an in-depth breaking news item on this ruling for the IPKat, here; for readers who just want an outline, here's the Curia's own media release:

An internet service provider may be ordered to block its customers’ access to a copyright-infringing website

Such an injunction and its enforcement must, however, ensure a fair balance between the fundamental rights concerned

Constantin Film Verleih, a German company which holds, inter alia, the rights to the films ‘Vicky the Viking’ [originally ‘Wickie und die starken Männer’ ...] and ‘Pandorum’, and Wega Filmproduktionsgesellschaft, an Austrian company which holds the rights to the film ‘The White Ribbon’ [... and ‘Das weiße Band’], became aware that their films could be viewed or even downloaded from the website ‘kino.to’ without their consent. At the request of those two companies, the Austrian courts prohibited UPC Telekabel Wien, an internet service provider (‘ISP’) established in Austria, from providing its customers with access to that site. UPC Telekabel considers that such an injunction cannot be addressed to it, because, at the material time, it did not have any business relationship with the operators of kino.to and it was never established that its own customers acted unlawfully. UPC Telekabel also claims that the various blocking measures which may be introduced could, in any event, be technically circumvented. Finally, some of those measures are excessively costly.

... [T]he Oberster Gerichtshof ... asked the Court of Justice to interpret the EU Copyright Directive [Directive 2001/29 on the harmonisation of certain aspects of copyright and related rights in the information society -- the InfoSoc Directive] and the fundamental rights recognised by EU law. The directive provides for the possibility for rightholders to apply for an injunction against intermediaries whose services are used by a third party to infringe their rights [a footnote to the media release records that, as regards that possibility, the Court has already held that (i) EU law precludes the imposition of an injunction by a national court which requires an internet service provider to install a filtering system with a view to preventing the illegal downloading of files which applies indiscriminately to all its customers, as a preventive measure, exclusively at its expense, and for an unlimited period, citing Case C-70/10 Scarlett Extended and that (ii) that the owner of an online social network cannot be obliged to install a general filtering system, covering all its users, in order to prevent the unlawful use of musical and audio-visual work, citing Case C-360/10 SABAM). UPC Telekabel submits that it cannot be considered to be an intermediary in that sense.

In today’s judgment, the Court replies ... that a person who makes protected subject-matter available to the public on a website without the agreement of the rightholder is using the services of the business which provides internet access to persons accessing that subject-matter. Thus, an ISP, such as ... which allows its customers to access protected subject-matter made available to the public on the internet by a third party is an intermediary whose services are used to infringe a copyright.

The Court notes ... that the directive, which seeks to guarantee a high level of protection of rightholders, does not require a specific relationship between the person infringing copyright and the intermediary against whom an injunction may be issued. Nor is it necessary to prove that the customers of the ISP actually access the protected subject-matter made accessible on the third party’s website, because the directive requires that the measures which the Member States must take in order to conform to that directive are aimed not only at bringing infringements of copyright and of related rights to an end, but also at preventing them.

The Oberster Gerichtshof also seeks to know whether the fundamental rights recognised at EU level preclude a national court from prohibiting an ISP, by means of an injunction, from allowing its customers access to a website which places protected subject-matter online without the agreement of the rightholders, when that injunction does not specify the measures which the ISP must take and when that ISP can avoid incurring coercive penalties for breach of the injunction by showing that it has taken all reasonable measures.

In this connection, the Court notes that, within the framework of such an injunction, copyrights and related rights (which are intellectual property) primarily enter into conflict with the freedom to conduct a business, which economic agents (such as internet service providers) enjoy, and with the freedom of information of internet users. Where several fundamental rights are at issue, Member States must ensure that they rely on an interpretation of EU law and their national law which allows a fair balance to be struck between those fundamental rights.

With regard, more specifically, to the ISP’s freedom to conduct a business, the Court considers that that injunction does not seem to infringe the very substance of that right, given that, first, it leaves its addressee to determine the specific measures to be taken in order to achieve the result sought, with the result that he can choose to put in place measures which are best adapted to the resources and abilities available to him and which are compatible with the other obligations and challenges which he will encounter in the exercise of his activity, and that, secondly, it allows him to avoid liability by proving that he has taken all reasonable measures [so there's plenty of flexibility: the injunction simply identifies the end to be achieved, leaving it up to its addressee to decide what steps are reasonable to achieve that end]. 

The Court therefore holds that the fundamental rights concerned do not preclude such an injunction, on two conditions: (i) that the measures taken by the ISP do not unnecessarily deprive users of the possibility of lawfully accessing the information available [in order to respect the freedom of information of internet users] and (ii) that those measures have the effect of preventing unauthorised access to the protected subject-matter or, at least, of making it difficult to achieve and of seriously discouraging users from accessing the subject-matter that has been made available to them in breach of the intellectual property right  [in order to respect the intellectual property rights of rights owners]. The Court states that internet users and also, indeed, the ISP must be able to assert their rights before the court. It is a matter for the national authorities and courts to check whether those conditions are satisfied.

Taking a look at the judgment, this blogger notices that the word 'proportionality' is used just once, in the context of implementing the measures transposing the InfoSoc Directive, where

"[46] ... the authorities and courts of the Member States must not only interpret their national law in a manner consistent with that directive but also ensure that they do not rely on an interpretation of it which would be in conflict with those fundamental rights or with the other general principles of EU law, such as the principle of proportionality ..."

while 'reasonable' gets six mentions and is the requisite description of the measures which the injunction's addressee must take. As a common lawyer he feels more at home with the R-word, but he has often mused on the points at which the reasonable and the proportional overlap and the points on which they depart.

Raine falls, but PPL must wait for relief

Phonographic Performance Ltd v Simon Noel Raine, a Chancery Division (England and Wales) ruling of Stephen Smith QC, sitting as a Deputy Judge on 5 March, deals with a procedural issue that has cropped up frequently in recent patent and trade mark trials, but less so in those involving copyright: when to stay infringement proceedings.

In short, Raine was the sole shareholder and director of several companies that operated nightclubs in England. There was a history of licensing disputes between Raine and Phonographic Performance Ltd (PPL). In early 2013, Raine's companies operated at least five clubs in relation to whose activities licensing fees were payable to PPL. After Raine fell into arrears in the payment to PPL of instalments under a fee agreement, PPL said that, since the instalments were not paid, the relevant licences were thereby terminated.

A number of Raine's companies fell into financial difficulties and entered into administration and the licence fees remained unpaid. Nothing daunted, the enterprising Raine then set up a batch of new companies which then made three applications for licences for the public use of sound. PPL was plainly not thrilled at this potential new source of customers: in one of those applications the company name had been misstated and contained other factual errors, including in relation to the days of operation of one of the clubs and underdeclarations of usage. This strengthened PPL's resolve to refuse the applications. So far as that body was concerned, the false declarations made in Raine's applications meant that any licence previously held was terminated, and no licence would be granted until fees due from Raine's companies that had entered into administration were paid. To back this up, PPL sought the cessation of all music performances at the relevant venues until an agreement was reached and, just to make sure there was going to be an outcome, PPL sued Raine for copyright infringement, seeking injunctive and financial relief.

At this point Raine, and rather late in the proceedings, sought a stay of the copyright infringement proceedings to allow for applications to resolve Raine's licensing issues under the Copyright, Designs and Patents Act 1988 section 121 before the Copyright Tribunal. If a stay were refused, PPL planned to press for summary judgment and an enquiry as to damages. The application for a stay was opposed on the basis that, apart from the fact that the applications for licences had been made in a slipshod and misleading way and the stay was applied for late, although the infringement proceedings had been brought against Raine personally the applications to the tribunal had been in his companies' names and there would be a duplication in costs in bringing the tribunal applications.

Stephen Smith QC granted Raine's application for a stay.  In his view

* Although the application for a stay had been made late, it had been "foreshadowed" and, though Raine had not been obliged to make it earlier and the timing of the application might have costs consequences, PPL did not suffer any real prejudice in result of the lateness and the stay ought not be refused on that basis.

* The court had real concerns in relation to the extent of further possible delay of the determination of issues before the Tribunal which could have a number of consequences: it could be that licence fees or damages for infringement would not be paid until the resolution of the tribunal proceedings; there was also a chance that Raine's companies becoming insolvent.  However, these issues could be addressed through the imposition of appropriate terms and the provision of security.

* Raine had undertaken to be personally bound by the companies' applications, and any costs implications could be dealt with through ordering security. Accordingly, it was appropriate to order that the proceedings, pending the outcome of the tribunal proceedings, be stayed.

* PPL's interests still needed to be protected. Raine would be made to give an undertaking to prosecute the tribunal proceedings with all reasonable expedition, to take all steps in his power to ensure that the companies take all required steps and be bound by the Tribunal's decision, and to pay into court a sum as security for PPL's infringement claims.

This blogger knows how unwise it can be to prejudge a situation, particularly when he doesn't have direct access to the facts -- but from the track record of the defendant licence applicant as reported in the Lawtel note from which this blog post is taken it seems appropriate to speculate as to how well he will cope with his undertakings, given the mess he has apparently made of things so far.

Historical facts and copying - a Holocaust book prompts a new claim

A copyright dispute in Canada over a book which allegedly  copies a film about the Holocaust, titled No. 4 Street of Our Lady has focussed attention on the thorny issue of basing a work on 'historical facts' - particularly when in this case those facts are found only in one other work. The film is a documentary by Judy Matlz about Francziska Halamajowa, a Catholic Polish woman who saved the lives of fifteen of her Jewish neighbours during the Second World War. Maltz’s grandparents, father, two aunts and an uncle were saved by Halamajowa, who fed and housed her Jewish neighbours during the war. Posing as a Nazi Sympathiser, she kept them safe for almost two years in her tiny house in Sokal (now in the Ukraine). Even when German troops were stationed on her property she persevered and she resorted to hiding the families (and a German army deserter) in a hayloft above her pigsty and in a hole dug under her kitchen floor. 

So what's happened? Well, in 2013 another author named Jenny Witterick wrote a book called My Mother’s Secret – a historical novel about a women and a daughter who saved a number of Jewish people during the Holocaust by hiding them in their cellar and in a pigsty. The novel was self-published and then successfully publicised by Witterick, before the novel was picked up by Penguin books and published under their Penguin imprint - and the rights to the book were sold on to several European publishers. It is advertised as a novel "Based on a True Holocaust Story". 

A lawsuit filed in the Federal court in Canada alleges that the book takes the characters and the plot from No. 4 Street of Our Lady and infringes the copyright: The suit alleges there are 30 instances where the narration in Witterick’s book matches exactly or mimics the narration found in Maltz’s film. Witterick herself has admitted that she saw Matlz's  film at a Holocaust education event and used the documentary as inspiration for writing her novel, saying: “I took facts that were true and developed the characters. My understanding is you can’t copyright facts” adding “I don’t think there is a law against being inspired by something.” The Drum says that it's clear that Witterick has taken the the main theme of the documentary and indeed has used Halamajowa’s name - but there again she has added a romantic narrative to the story - and has, in the authors own eyes, turned real events into a work of fiction. Is this infringement?

In the United Kingdom the first case that springs to mind is the unsuccessful  action brought by two of the authors of a book of 'historical conjecture' called The Holy Blood and the Holy Grail against Dan Brown and Random House who wrote and published the widely popular The Da Vinci Code. In Baigent v Random House Mr Brown admitted that he had referred to HBHG in the course of research for his book but denied copyright infringement. The Claimants alleged that the Defendant had copied the “Central Theme” of HBHG. At first instance Mr Justice Peter Smith found that that six chapters of DVC were largely derived from HBHG but rejected the claim of copying – the Claimants had not created a Central Theme as alleged and therefore no such theme could have been copied. The appeal was dismissed and the Court of Appeal held that  that the trial judge had been correct to consider whether the Central Theme was the central theme of HBHG (as opposed to one of several), and was entitled to come to the finding of fact which he did. Mummery LJ held 

"Original expression includes not only the language in which the work is composed but also the original selection, arrangement and compilation of the raw research material. It does not, however, extend to clothing information, facts, ideas, theories and themes with exclusive property rights, so as to enable the Claimants to monopolise historical research or knowledge and prevent the legitimate use of historical and biographical material, theories propounded, general arguments deployed, or general hypotheses suggested (whether they are sound or not) or general themes written about.”

However the court noted that "this does not mean authors can do as they please with their sources". The Court of Appeal endorsed the decision of Ravenscoft v Herbert and New English Library Ltd [1980] RPC 193, where there was a finding of copyright infringement by the author of a novel who took a substantial part of a historical work, The Spear of Destiny. In that case, there was “wholesale pillaging” of historical characters, incidents and the interpretation of historical events. Although the Court of Appeal did not specifically suggest a lower level of protection for historical works, that is the natural result: architecture, characters and themes are inherently harder to pin down in historical rather than fictional works.

In the U.S., in the case of Miller v. Universal City Studios, Inc., the appeals court reversed a jury verdict and remanded the case for retrial because it found reversible error in the trial judges’ instructions to the jury. The case concerned a film made about the kidnapping of Barbara Mackle - and whether a made for TV film could infringe on an earlier book by Gene Miller, a Miami Herald reporter,  who had initially agreed to collaborate with Universal, who eventually made the film. At trial Miller testified to the number of similarities between his book, “83 Hours Till Dawn,” and the Universal’s version, “The Longest Night”. Miller pointed out these similarities were only in his book and not in any of the available public records and even mistakes in his book had been copied into the film. At the close of the trial, the defence requested that the judge include in his jury instructions that “factual matters such as news events, the facts themselves are not copyrightable, but the form of expression of the facts and their arrangement and selection are copyrightable.” The plaintiff argued, over the objections of the defence, that the jury instructions should also include mention that the writer’s research is also copyrightable. The appellate court found that the judge’s instructions, which included the statement that the labor of research by an author is protected by copyright, had been given in error and were in part in error. The defence motion argued that a writer’s research is not copyrightable. The appeals court agreed, and overturned the jury’s verdict and remanded the case back to the district court for a new trial.

However, on Toksvig v. Bruce Publishing the plaintiff, the author of The Life of Hans Christian Andersen argued that her book had been copied.The trial judge made detailed findings of fact and awarded judgment to plaintiff against defendants Bruce Publishing Company and Margaret Ann Hubbard, and enjoined defendants from publishing the infringing book, 'Flight of the Swan,' as long as it contained the language which infringed upon plaintiff's copyrighted book. The research by the plaintiff in connection with her book took three years and was done exclusively from Danish sources including the original works and letters of Andersen and conversations with persons having knowledge of matters and incidents pertaining to the life of Andersen. At trial Judge Duffy  found infringement as to certain general concepts of Andersen and his life and friends as set forth for the first time in plaintiff's book. In its opinion, the court emphasized that plaintiff was the first to translate the Danish sources and that translations are generally copyrightable and noted the copying of 24 specific passages of plaintiff's book (emphasis added). 

Perhaps the best summary is found in A.A. Hoehling v. Universal City Studios, Inc where the appellate court said:

"A grant of copyright in a published work secures for its author a limited monopoly over the expression it contains. The copyright provides a financial incentive to those who would add to the corpus of existing knowledge by creating original works. Nevertheless, the protection afforded the copyright holder has never extended to history, be it documented fact or explanatory hypothesis. The rationale for this doctrine is that the cause of knowledge is best served when history is the common property of all, and each generation remains free to draw upon the discoveries and insights of the past. Accordingly, the scope of copyright in historical accounts is narrow indeed, embracing no more than the author's original expression of particular facts and theories already in the public domain. As the case before us illustrates, absent wholesale usurpation of another's expression, claims of copyright infringement where works of history are at issue are rarely successful.

Of course Canada is a different jurisdiction from the UK and the USA. The recent case of The Adventures of Robinson Curiosity  might give us some clues: That case centred on Claude Robinson's creation, in the early 1980s, of preliminary sketches and scripts for a prospective TV series for children that he called Robinson Curiosité; In 1995, Cinar and co-producers France Animation and Ravensburger introduced a new TV series, Robinson Sucroé, with characters strikingly similar to Robinson’s concept. The Canadian Supreme court suggested that the court must determine in infringement claim cases was the use of a substantial part: to determine whether a substantial part has been copied, one must conduct a qualitative and holistic assessment of the similarities between the works taking into account the relevant resemblances and differences and considered the cumulative effect of the copied features and assessed whether those features amounted to a substantial part of Robinson's expression in his original work; the case suggests that "Copyright owners should now look beyond mere literal copying of their work and consider that, though ideas themselves are not afforded protection by the Canadian Copyright Act, intangible aspects of their work may be protected and expert testimony may assist in identifying latent infringement.".

Baigent and Leigh v The Random House Group Ltd (CA)  [2007] EWCA Civ 247 

Miller v. Universal City Studios, Inc.  650 F.2d, 1372 (1981)


Toksvig v. Bruce Publishing Co 181 F.2d 664 (7th Cir. 1950)

A.A. Hoehling v. Universal City Studios, Inc, 618 F.2d 972 (2d Cir. 1980) 

The 'Howard Hughes' case is also of interest: Rosemont Enterprises, Inc., v. Random House, Inc. y John Keats 366 F.2d 303 (1966)

The 'Cohens and the Kellys' case: Nichols v. Universal Pictures Corporation et al. Circuit Court of Appeals, Second Circuit November 10, 1930 45 F.2d 119; 7 USPQ 84

Judge Learned Hand noted that protection of literature can not be limited to the exact text, or else an infringer could get away with copying by making trivial changes. The question then is whether the part taken was 'substantial'. However, it is impossible to set a firm boundary demarcating the line between work and ideas, he said, stating "Nobody has ever been able to fix that boundary, and nobody ever can" and "her copyright did not cover everything that might be drawn from her play; its content went to some extent into the public domain." In this case, there was no infringement, as the ideas that are copied are really universal concepts and stock characters.

Robinson v Films Cinar Inc, 2013 SCC 73

My thanks to earlier comments and information from both Pablo Palazzi and Michael Cooley on a related post.

Nevada judge puts a little bit of magic into copyright

Teller's trick

Just under a year ago we blogged about magic tricks and copyright, and noted then that Raymond Teller (the ever silent Teller of Penn & Teller fame) had filed a law suit in 2012 in Nevada against a Dutch (or is he Belgian?) magician, Gerard Bakardy (who seems also to be a certain 'Gerard Dogge') who Teller claimed had stolen his four decades old "Shadows" trick - in which he cuts the shadow of a rose, causing petals to fall off of the real rose that is casting the shadow.  Eleonora posted an earlier blog on the same case back in 2012.

Mr Bakardy posted a video of his own version of the illusion, called "The Rose & Her Shadow" on YouTube, which was then taken down (after it seems Teller issued a DMCA takedown notice) and was selling the secret to the illusion in the form of a kit for $3,050 to anyone who wanted to learn about Teller's illusion. Mr Teller based his claim for infringement of his dramatic copyright on a registration of his illusion at the US Copyright Office, made back in 1983 but the matter of copyright in magic tricks is not certain at all and the court had to decide whether (a) copyright subsists in Shadows as a dramatic work as per §102(a) of the US Copyright Act and, if so, (b) whether The Rose & Her Shadow is tantamount to an infringement of copyright in Teller's work.

Teller performs his trick

Well, despite an initial vanishing act all of his own, Dogge/Bakardy has now lost the case after it seems a federal judge was none to impressed with the series of defences he ran. Initial run-ins with the court included:

- Dogge/Bakardy reportedly filing an excerpt of pornography and asking it to be filed under seal.

- asking for a jury made up entirely of magicians. 

- pleading that “[m]agicians are like clowns, they only serve to entertain. Obviously stealing from each other is out of the question, and this has not happened here.”

Billboard reports on the four pronged defence that Dogge/Bakardy eventually ran with:

- His first defence was that a magic trick was not copyrightable.

- Secondly the any copyright that might have existed had been "abandoned" as many others were attempting the same trick (and Teller didn’t sue them!) 

- Thirdly, that as Teller’s partner, Penn Jillette, proclaimed that no one would ever be able to solve the trick, this was an invitation for Dogge to prove him wrong. 

- And that Dogge was able to copy the work as Teller had not stated that the trick was a copyrighted work. 

Now  U.S. District Judge James Mahan in the Nevada District Court has ruled that what is protectable under copyright law is pantomimes, the art of conveying emotions, actions and feelings by gestures saying "federal law directly holds 'dramatic works' as well as 'pantomimes' are subject to copyright protection, granting owners exclusive public performance rights. The mere fact that a dramatic work or pantomime includes a magic trick, or even that a particular illusion is its central feature does not render it devoid of copyright protection" and Judge Mahan dismissed all of the Bakardy/Dogge defences. Teller's presentation of the trick is undoubtedly theatrical, and this decision has overcome the  decision of the Ninth Circuit Court of Appeals (and Bakardy/Dogge's only real chance of mounting a defence) in Rice v Fox Broadcasting: This was a copyright infringement case brought unsuccessfully by the owner of copyright in The Mystery Magician (a home video which explains how various tricks are completed) against Fox, which aired its own series of 'how-tricks-are-done' TV specials. The Ninth Circuit, confirming the judgment of the District Court, held that what had been taken by the defendant was either foreclosed by the limiting doctrines of merger and scènes à faire, or too abstract to constitute copyright infringement. Not so here - and the case is now likely goes to trial on the question of what damages are to be awarded to Teller.

In Europe,  this blogger wonders if the approach taken in Infopaq would now allow a magic trick to fall under copyright protection: if you have an opinion - don't forget to vote in our side bar poll: is it arguable that closed systems of subject-matter categorisation may no longer be compliant with EU law - or do categories of copyright protection still limit protection and the subsistence of copyright in 2014?

More on the background to this case here http://www.techdirt.com/blog/?tag=gerard+bakardy and a very weird YouTube site here https://www.youtube.com/watch?v=C9h7VWQUe-Y (Published on 8 May 2012 with Bakardy saying "Hereby I like to apologize to all magicians and fans of Teller, apologies to have upset you. This was never my intention. I will soon upload the complete, real and true story") and there is a new 'Bakardy Rose' video here. 

Digitisation, public domain and informational monopolies: an event

Sunshine + seaside + digitisation + copyright
= the dream life

On 10 April 2014 Bournemouth will host an intriguing copyright event on "Digitization, Public Domain and Informational Monopolies". 

Organised by 1709 Blog friends Maurizio Borghi and Dinusha Mendis, this one-day "symposium will address the intersection of digitization, public domain and digital monopolies from a legal and economic perspective. Case studies, approaches and methodologies will be discussed, with the view of providing an up-to-date understanding of the policy implications of digitization."

This blogger is particularly pleased to see that speakers will include witty and charmant Cédric Manara (Google) and other copyright experts.

She has also been told that Bournemouth is famously known as the Miami of England [oh well...]. Being in search of a suntan, she will therefore travel to this fair coastal town for this and a fun copyright day. See you there!

Further details and registration here. 
Miami weather forecast (and temperature) here.
Bournemouth weather forecast (and temperature) here.

The CopyKat - opening Pandora's Box - and other remarkable tales

The UK government has admitted that it is unlikely that changes to copyright law will be introduced on 1st April as it had intended. The Business, Innovation and Skills (BIS) minister David Willetts confirmed during a debate in the House of Commons that there was likely to be a delay in the delivery of the copyright reforms. As the technical review of the changes (which would introduce a new right to copy copyrighted material for private use; a new exception to conduct data analysis for non-commercial research; a new qualified right to quote copyright-protected content for purposes extending beyond criticism, review or news reporting, and a new limited right to use copyrighted material in a work of parody) has only just been announced, the April 1st deadline seems unlikely with Willlets saying "I think that things are reaching the stage where, arithmetically ... it will be hard to have the commencement date as 1 April".

US streaming service Pandora has secured a victory on one of the fronts of its ongoing royalty war with the American music industry last week, when a rate court judge considering the streaming service's licence from song rights collecting society ASCAP set a royalty rate of 1.85% of annual revenue, which basically keeps things as they are. That said - no one seems happy - Pandora are unhappy as the rate hasn't changed and they wanted a reduction - and songwriters and publishers are peeved - they argue that a significant uplift was called for to re-balance songwriters interests compared to the far larger share of the pie gathered in by record labels and recording artists. Pandora has subsequently announced that it would be increasing the price of its ad-free premium service; From May, new Pandora One customers will pay $4.99 per month, though existing subscribers will continue to pay $3.99 (for the time being).

The Recording Industry Association Of America has told the US House Of Representatives Intellectual Property Subcommittee (who are reviewing the of the Digital Millennium Copyright Act) that the  DMCA is not fit for purpose. The RIAA's chief Cary Sherman told the committee: "[Google should] ensure that when links to content are taken down, the same content on the same site is not continuously re-indexed when repopulated by the pirate site, rendering the takedown process useless". He went on: "Regardless of what Google takes down today, its search engine will spider the same pirate sites tomorrow and index anew all the illegal content on the pirate sites. All those links to infringing music files that were automatically repopulated by each pirate site after today's takedown will be re-indexed and appear in search results tomorrow. Everyday we have to send new notices to take down the very same links to illegal content we took down the day before. It's like 'Groundhog Day' for takedowns". In response and giving her company's side of the argument, Google's Katherine Oyama said "The best way to battle piracy is with better, more convenient, legitimate alternatives to piracy, as services ranging from Netflix to Spotify to iTunes have demonstrated. The right combination of price, convenience, and inventory will do far more to reduce piracy than enforcement can".

Irish internet service provider Eircom, which voluntarily instigated a three-strikes anti-piracy system (as part of a legal settlement with Ireland's record industry), has admitted that it is yet to disconnect a customer for illegal file-sharing.

Back  in March 2007 Viacom commenced copyright infringement proceedings against YouTube in a New York federal court after Viacom and its affiliates, including Paramount Pictures, discovered that its copyright-protected content (episodes, movies and substantial segments thereof) were uploaded onto YouTube without Viacom’s permission by YouTube users. Viacom was not holding any punches either, claiming approximately $1 billion in damages for the infringement ..... now seven years later the IP Kat takes up the story - but frst the background in case you have forgotten! In the District Court Judge Stanton’s gave summary judgment and held that YouTube had insufficient notice of particular, specific infringements for them to have "actual knowledge" or "aware[ness] of factors or circumstances" which would disqualify them for the safe harbour protection. Without item-specific knowledge of infringing activity, a service provider could not be found to have "the right and ability to control" infringing activity under section 512(c)(1)(B). Further, the District Court held that the replication, transmittal and display of videos on YouTube was done "by reason of the storage at the direction of a user" under section 512(c)(1). The net effect was that YouTube benefited from the USA's safe harbor provisions. On appeal, the Court agreed with Judge Stanton’s interpretation of the knowledge requirement stating that under Section 512(c)(1)(A) knowledge alone will not disqualify a service provider from the safe harbour protection. What will disqualify a service provider is if they have the knowledge or awareness but does not act expeditiously to remove or disable access to the material. Removing access to the material, of course, requires specific knowledge of the infringing material. That said, the appellate court vacated the order granting summary judgment because it held that a reasonable jury could find that YouTube did have acknowledge knowledge or awareness of specific infringing activity on the website.  The case reverted to the lower court, and then a further appeal was lodged  ....... and now the parties have settled saying In their joint statement;  "This settlement reflects the growing collaborative dialogue between our two companies on important opportunities, and we look forward to working more closely together". More on the IP Kat here http://ipkitten.blogspot.co.uk/2014/03/the-seven-year-itch-viacom-v-youtube.html and on the WSJ here.

In a related post, Variety.com has revealed that YouTube has created an invitation-only program giving about 200 individuals and groups special status in identifying material suspected of violating its community guidelines — but it’s aimed at removing content such as hate speech and pornography, not copyright-protected videos. The so-called “super flagger” program came to light last week, in a Financial Times article that said the U.K. government’s anti-terrorism unit has the ability to alert YouTube to multiple videos suspected of containing “extremist material.”

Left - the Cariou original: right - Prince's transformation

The 'transformative' artist Richard Prince has reached a settlement with Patrick Cariou, a photographer who accused Mr. Prince of violating his copyrights by using Mr. Cariou’s pictures of Rastafarians as the basis for a series of paintings that sold for millions of dollars. Last year, the United States Court of Appeals for the Second Circuit decided largely in favour of Mr. Prince, who initially was found by a federal court in 2011 to have illegally used the photographs.  The appeals court ruled that of the 30 works by Mr. Prince in question, 25 were permissible under the fair use exception. The terms of the settlement are confidential but it seems none of the paintings will be destroyed. 

The original MP3.com creator Michael Robertson has lost the action brought against him by EMI who sued the new company and Robertson himself in 2007, claiming that the MP3tunes.com operation infringed its copyrights. The former chief executive was found liable for infringing copyrights for sound recordings, compositions and cover art owned by record companies and music publishers once part of EMI Group Ltd. A federal jury in Manhattan found Michael Robertson, the former MP3tunes chief executive, and the defunct San Diego-based company liable on various claims that they infringed on copyrights associated with artists including The Beatles, Coldplay and David Bowie - both for direct involvement in distributing unlicensed files and for being "wilfully blind" to other copyright infringement on his site. The court now needs to decide what damages Robertson should pay to EMI.

And finally, don’t expect US copyright law to change this year — but it might change next year, according to Representative Jerrold Nadler, speaking at the Association of American Publishers meeting in New York said “I expect a number of hearings and not much else,” said Nadler, a Democrat from New York. “I don’t think we’re going to do major legislation this year — maybe next year.” Nadler is a member of the Congressional Subcommittee on Courts, Intellectual Property and the Internet.

The Collective Rights Management Directive is now Directive 2014/26/EU

As announced earlier today on the IPKat, the new EU directive "on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online uses in the internal market" [here and here] was published today in the Official Journal of the European Union as Directive 2014/26/EU of the European Parliament and of the Council of 26 February 2014 on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market.

The directive - whose full text can be accessed here - will enter into force on the 20th day following its publication, and Member States will have time until 10 April 2016 to transpose it into their national laws.