Tuesday, 31 October 2017

Internet and Digital Media Law returns to London

The internet has been posing a number of challenges, including with regard to exploitation and use of copyright content, and enforcement of relevant rights.

The 1709 Blog friends at Informa wish to let readers know that the popular conference Internet and Digital Media Law will be returning to London also this year, and will be held on 5 December 2017. 

The agenda, among other things, includes a discussion of latest developments in the protection of copyright over the internet, Internet of Things, Artificial Intelligence, as well as relevant internet law jurisprudence.

The speaking faculty will be composed of experts from a variety of backgrounds and jurisdictions, also including 1709 Blog contributor John Enser (CMS).

1709 Blog readers will be able to claim a 20% discount when registering here. It will be sufficient to use the VIP code FKW827561709E.

Friday, 27 October 2017

THE COPYKAT - Goodbye to October and to Judge Richard Posner!

Judge Posner
Apologies for the lengthier format of this CopyKat. It has been somewhat of a copyright heavy few weeks. As such we have a lot to cover! All of the CopyKats here were surprised to hear of the shock retirement of Judge Richard Posner from the Seventh Circuit Court of Appeals. Judge Posner co-penned influential articles on copyright law, authored dozens of opinions on copyright issues and, even in cases not involving copyright, frequently employed copyright analogies (far more often than his famous cat analogies). As such we thought you may enjoy this article that sets out 10 of his most influential copyright decisions.

Slow and Steady Fails to Win the Race for the Turtles

Members of 1960s rock band The Turtles have lost a major legal battle in their quest to collect copyright royalties from their old hit songs.

The Florida Supreme Court held today (PDF) that the state doesn't recognize any copyrights in pre-1972 music recordings, despite the band's arguments to the contrary. All seven justices concurred in the ruling. Flo & Eddie, a company that represents two members of The Turtles, had claimed that even though there is no federal copyright in sound recordings for pre-1972 songs, they are entitled to payments because their songs are protected by state copyrights and common law. The band members sued Sirius XM in 2013, and lawsuits against streaming services like Pandora followed. The major record labels also got involved, essentially copying The Turtles' strategy, by suing Sirius as well as Pandora.

The RIAA lawsuit against Sirius was settled for $210 million, and the labels' case against Pandora was settled for $90 million. The Turtles settled a lawsuit against Sirius just before trial last year.

However, following those settlements, copyright owners were dealt a setback. Last year, New York's highest court voted 6-2 that there's no right to control public performances under the state's common law. New York state copyright is strictly about copying. Today's ruling out of Florida is in many ways similar to that New York ruling.

ALAI has learned that EU Member States have put a number of questions to the Legal Service of the Council regarding Article 13 and Recital 38 of the Commission Proposal for a Directive on copyright in the Digital Single Market1.

ALAI herewith offers some assistance on the basis of its previous reflections and Resolution adopted on 18 February 2017 (hereinafter “ALAI Resolution”, see: http://www.alai.org/en/assets/files/resolutions/170218-value-gap-en.pdf ).

The National Music Publishers Association, the Digital Media Association. and various songwriter and record label groups are negotiating legislation that they hope will solve the mechanical licensing problems that have plagued digital music services, while hopefully achieving higher rates for music publishers and songwriters.

It's a proposed law that will create a mechanism and a new entity that will issue and oversee a blanket mechanical license for digital music services and record labels.

That news came out of the monthly meeting of the Assn. of Independent Music Publishers, where NMPA president and CEO David Israelite was the guest speaker. He was scheduled to lay out the parameters of the legislation once again on Thursday in Nashville and on Monday in Los Angeles at those cities AIMP meetings, too.

While music publishers can hope for 'pie in the sky' legislation that would abolish the consent decrees and the compulsory license, Israelite says such a bill would never pass, considering it would be opposed by corporate giants like Google, Facebook, the MIC Coalition and the National Assn. of Broadcasters.

Author Dan Brown (right) is certainly not a stranger to copyright claims and lawsuits over his bestseller The Da Vinci Code. Not long after publishing the book in 2003 to wide acclaim, several legal actions took place against Brown and his publisher, as well as some action initiated by the publisher to stave off claims of copyright infringement and plagiarism.

One such case that we did not cover here was brought by Jack Dunn of Massachusetts, who authored a book called The Vatican Boys, and sued Brown in Massachusetts for copyright infringement over the usual claims: there were claimed similarities in characters, plots, and factual assertions (including some that are erroneous in both). In 2007, Judge Michael Ponsor threw out the case, claiming that all the evidence Dunn's legal team provided amounted to thematic and structural similarities, which are not copyrightable.

For the proceeding decade, Dunn simply went away. That is until he found another law firm willing to file another copyright suit against Brown, but this time in the UK. We'll see if this suit gets filed. Given Brown's track record for defeating these sorts of attempts, I know on which party I'd be putting my money.

Compare and Contrast – The EU and US positions on Online Copyright Controls

There has been a marked increase in the amount of discourse relating to the control of copyright material online. Many proponents argue for greater regulation of online intermediaries that readily supply content to the masses. Detractors argue for the freedom of the internet to be maintain using often cited free speech arguments. In my view this is an issue that is not going go away. In an ever increasing ideas based society, copyright (along with the other associated IP rights) are only going to become more valuable. It is therefore paramount that we follow the discussion so that we can all take part when the time comes. I have selected a few of the recent articles that highlight the conversations going on in the Eu and in the US.

Tech sector opposes proposed landmark web-block injunction in the USPerhaps unsurprisingly, the Computer And Communications Industry Association has hit out against a web-block injunction being proposed in an American copyright infringement case between the American Chemical Society and a website called Sci-Hub, which makes academic papers available without a licence.

Cloudflare CEO faces two-hour deposition over his company’s piracy policies - The US record industry again laid into Cloudflare earlier this month in its annual submission to the American government on piracy matters around the world. And now the internet firm’s CEO Matthew Prince is set to be questioned about his company’s policies regarding its copyright infringing customers.

Digital Rights Groups Demand Deletion of Unlawful Filtering Mandate From Proposed EU Copyright Law - The European Parliament's Civil Liberties (LIBE) Committee is due to vote on its opinion on the Digital Single Market proposals this Thursday, 19 October. Although it's not the final vote on these measures, it could be the most decisive one, since a recommendation for deletion of Article 11 and Article 13 at the LIBE committee would be influential in convincing the lead committee (the Legal Affairs or JURI Committee) to follow suit.

Abandon Proactive Copyright Filters, Huge Coalition Tells EU Heavyweights - Dozens of influential civil rights groups have called on EU decision-makers to abandon proposals for compulsory proactive copyright filters. Their open letter, addressed to European Commission President Jean-Claude Juncker and colleagues, warns that monitoring citizens' Internet traffic would restrict fundamental rights while running counter to the Electronic Commerce Directive.

And Finally…. some interesting copyright disputes in the news

This busy CopyKat by Matthew Lingard (Walker Morris LLP)

Tuesday, 24 October 2017

Does a French copyright smell anything?

The FIAC, the international fair of contemporary art, just ended in Paris. Its visitors were able to visit a glass cube, the OSNI, placed on top of the Pavilion of the Palais de Tokyo. OSNI stands for Objet Sentant Non Identifié, ‘Unidentified Scented Object’ and was created by Mathilde Laurent, a perfumer for Cartier, along with Munich climate engineers Transsolar.

Visitors entering the cube were able to go up a staircase through a cloud of the Cartier L’Envol (The Flight) perfume. The cloud is clearly seen to viewers outside OSNI. The fact that the perfume can be seen is as important as it can be smelled.

This installation led French magazine Télérama to ask the question: can perfume be a work of art? Modernist called it “[a] true olfactory and immersive artistic work that presents a completely new way of using smell as a medium of creation.

Wallpaper quotes Mathilde Laurent as saying “I’m not an artist…but…I feel that to create a piece like this is our duty as a house because it’s important that we sustain olfactory art like all others.”

Could OSNI be a work of art? Is there such thing as olfactory art?

Perfume is not protected by French copyright.

Even though article L.112-1 of the Intellectual Property Code clearly provides that its provisions “ protect the rights of authors on all works of the mind, regardless of genre, form of expression, merit or destination,” perfumes are not protected by French copyright, the droit d’auteur. The Cour de Cassation, France’s highest civil court, ruled in 2008 that “the fragrance of a perfume, which proceeds from the simple implementation of a know-how, does not constitute the creation of a form of expression that can benefit from the protection of copyright”. Therefore, L’Envol is not protected by copyright.

However, OSNI is way more than a perfume. It is an art installation, with which visitors are interacting.

Does France protect performance art?

OSNI’s visitors were able to go up and down the staircase inside the cube, and were seen from outside. Were they part of the performance? Were their reactions to the scented air part of the performance?

France recognizes that an artistic performance may be protected, not by copyright law, however, but by the right in one’s image. Reproductions of an artistic performance, such as photographs taken of it, are, however, protected by the droit d’auteur. In that case the performance artist and the photographer are co-authors, Paris Court of Appeals, 4th Chamber B, December 3, 2004.

Is the perfume an element of the protected work, the cube?

If perfume can not be protected as a scent, could it be protected as a work of art? The perfume is clearly seen here, and can be smelled only if one is inside OSNI. Viewers from outside cannot smell it, but they can see the way the cloud of perfume moves inside the cube.

The cube can be considered a sculpture, and, as such, protected by the droit d’auteur. The scent is part of it and thus protected as an element of the sculpture, but still does not gain individual protection. However, one could imagine that if Cartier were to sell OSNI to an art collector, who would then replace the scent with the one of his favorite aftershave, this would be copyright and droit moral infringement, and would conjure the issue of whether perfume is protected by the droit d’auteur out of the (crystal) bottle.    

Monday, 23 October 2017

Another German decision warns against broad application of GS Media presumption for for-profit link providers

By  Eleonora Rosati 

           Visual map on linking after GS Media, available here
A few days ago this blog reported on a recent decision of the Regional Court of Hamburg that, similarly to another German judgment – this being the also recent ruling of the Federal Court of Justice (BGH) [here] – questioned or, at least, proposed a restrictive meaning and application of the recent decisions of the Court of Justice of the European Union (CJEU) on the right of communication to the public and linking to protected content under Article 3(1) of the InfoSoc Directive.

It appears, in particular, that it is the CJEU construction of prima facie liability for unauthorized linking as found in GS Media [Katposts here] – notably the presumption of knowledge applied to link providers with a profit-making intention (see my table on the right hand side) – to face resistance.

Thanks to a couple of German Katfriends, I have been made aware that there is a third recent decision that also shows an approach to linking and the GS Media presumption which is possibly different from the one envisaged by the CJEU.

It is once again a judgment (310 O 117/17) [also commented here] of the Regional Court of Hamburg, once again involving pug dog Loulou.

The new Hamburg decision

In a nutshell, in this case the Hamburg court held that there is no act of communication to the public within §§ 15(2) UrhG and 19a UrhG if a person who links to protected content without the relevant rightholder’s permission is unaware that such content is unlawful. 

In particular, even if the link provider has a profit-making intention, there should be no presumption that he had awareness that the content linked to was unlawful if he operates in a context in which it would be unreasonable to expect that checks are performed to ensure that the content linked to is (and remains) lawful.

In the case at issue, the defendant’s linking activities were performed algorithmically and, similarly to the other Hamburg decision, also in this instance the infringing content linked to was available on Amazon.de.

The defendant had no actual awareness that the content linked to was unlawful, nor was its unlawful nature recognizable. A relevant aspect was also the fact that, to be able to offer products for sale on Amazon, merchants have to agree to the platform’s terms of use, including declaring that they own the copyright to the images displayed.

Scaling down GS Media

According to the court [para 67], the GS Media presumption of knowledge cannot be considered as indistinctly applicable: instead, it should be only relevant in situations in which the link provider/defendant can be expected to carry out the necessary checks to determine the status – lawful or unlawful – of the content linked to.

Paragraph 68 of the decision contains a direct scaling down of the CJEU approach in GS Media

The German court acknowledged that [at para 51] the CJEU seemingly mandated a generally applicable presumption for links posted out of profit. However, a conclusion of this kind would contradict what is stated at paragraph 34 of GS Media itself, ie that the assessment of whether a link provider can be liable under Article 3(1) of the InfoSoc Directive must be individualized and take account of several complementary criteria that “may, in different situations, be present to widely varying degrees”.

telephone case
According to the court, in the case at issue it would be “unreasonable” and “economically unjustifiable” to expect that the defendant carries out such checks in relation to each and every content (automatically) linked to, including content hosted on a platform like Amazon.

The defendant’s business model – including the fact that the content is not ‘incorporated’ to look as the defendant’s own content - is such that no specific searches for unlawfulness can be expected. Holding otherwise would not only be unreasonable, but also amount to an undue compression of the fundamental freedom to conduct a business, pursuant to Article 16 of the EU Charter of Fundamental Rights.


This is the third decision in a short timeframe that proposes a 'minimalist' reading of the GS Media presumption for for-profit link providers. 

In these cases the German courts, instead of holding the presumption rebutted in the specific instance considered (as it appears - or rather appeared? - to be the approach in GS Media), held against its applicability tout court, on grounds of reasonableness and by placing significant emphasis on the fundamental rights dimension. 

From the reading of these judgments, the fear that the relationship between copyright protection and freedom to conduct a business might be too unbalanced in favour of the former is acutely felt. This - together with considerations relating to the proper construction of the right of communication to the public, including the requirement of an individualized assessment - arguably supported the resulting outcome. 

Can TV formats be protected by copyright?

By Eleonora Rosati
The allegedly infringing TV gameshow
Can TV formats be protected by copyright? 

While this question has received an answer in the affirmative in a number of jurisdictions around the world [this blog recently reported on the latest judgment of the Italian Supreme Court to confirm eligibility for protection of this subject-matter under Italian law], under UK law things have been uncertain for a long time.

One of the reasons for such uncertainty is the outcome of the Opportunity Knocks case (Green v Broadcasting Corporation of New Zealand), in which a claim to the copyright in the format for a game show failed. However, it is important to recall that one of the principal reasons why the action was dismissed is that no scripts were available at trial and in any case they contained little more than general ideas and concepts.

Leading UK copyright commentaries like Copinger and Skone James have indeed highlighted how (§3.93) "[t]here is no reason in principle ... why a format should not be protectable as a dramatic work [under section 1(1)(a) and section 3 of the Copyright, Designs and Patents Act 1988 (CDPA)] if it contains a sufficient record of how the show is to be presented."

Last week a response in the sense of eligibility for copyright protection of TV formats under UK law also came from the High Court of England and Wales.

In Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd & Anor [2017] EWHC 2600 (Ch), the court held that a TV format can be potentially protected by copyright, although in the specific case the action failed.


The action was brought by Banner Universal Motion Pictures (BUMP, a UK company), in its capacity as assignee of the rights to the Minute Winner format developed in 2003 by a Danish citizen, against - amongst others - a Swedish TV production company (Friday TV). 

The claimant submitted that, further to a 2005 meeting in Stockholm at which confidential information was disclosed, including the disclosure of catch-phrase “You have a minute to win it” [at the time when the action was brought in the UK Swedish court had already ruled that no confidential information had been disclosed; the High Court of England and Wales declared that the cause of action estoppel operated], Friday TV misused such information to develop a gameshow format: Minute to Win ItThis show first aired in the US in 2010 and was subsequently broadcast in the UK in 2011. Rights to Minute to Win It were sold in over 70 countries around the world.

Kat format
The Minute Winner format

The format of the claimant is described in the Minute Winner Document presented bto the court as follows:

Mini-format Game show
Daily or weekly show.
Or short one minute between main programs.
Morning, Evening or Afternoon program.
One minute, or 30 minutes with several                                                                               winnings."

Minute Winner is further described as “a television program in which people are given one minute to win something. WHERE? The program takes place in a studio (and in location: street, shopping mall or unexpected at people's homes). The program is cheaper to produce on location, as it only requires a cameraman, soundman, a host and a stopwatch PRIZES [examples are provided in the rest of the format document]The prizes are sponsored by firms/companies in exchange with advertisements during the program."

The Minute Winner Document further adds that "The combination of luck and pure coincidence is a factor that would make people wish that one day they could be stopped on the street and be given a chance to win something on television."

As to showing times, the Document clarifies that "The program can be shown daily (optional) as a one-minute fill in, before or after a main program. Minute Winner can also be shown either as a morning program, afternoon program or evening access prime time program."

The Document also contains the following disclaimer:

"Concept created by Derek Banner/Bump Productions. Copyright 2003, all rights reserved. This format is protected under the international copyright law and intellectual property protection. It shall not be transmitted, exploited, copied produced, used, disclosed or distributed, in part or in its entirety, without permission from its owner."

BUMP submitted that copyright subsists in the Minute Winner Document as an original dramatic work under the CDPA. It did not submit that it was also a literary work, because such categories under UK law are mutually exclusive.


As regards originality, Snowden J recalled that – further to SAS v WPL [of course informed by relevant case law of the Court of Justice of the European Union which arguably mandates something more than the just “sufficient skill, labour or effort” traditionally indicated by UK courts since University of London Press], what is required is “that the work must be an expression of the author's own intellectual creation … This does not, however, mean that every constituent aspect of a work must be original. The work must be taken as a whole, and can include parts that are neither novel nor ingenious.”

Notion of dramatic work

The court then recalled that, although the expression ‘dramatic work’ is not defined in the statute, it must be given its ordinary meaning. This, in Norowzian v Arks Ltd (No 2) was said to be that of “a work of action, with or without words or music, which is capable of being performed before an audience."

According to Snowden J, while the unauthorized re-enactment of a recorded episode of a TV game show or quiz show would likely amount to copyright infringement, what was at stake in this case was NOT the single episodes of Minute Winner, since the show was never produced.

Dramatic Kat
The question was rather “whether what is usually referred to as the "format" of a television game show or quiz show is separately capable of being protected by the law of copyright.” 

The judge noted that his is a question that has been considered in comparatively few cases.

A format as a protectable dramatic work

Snowden J held that:

“it is at least arguable, as a matter of concept, that the format of a television game show or quiz show can be the subject of copyright protection as a dramatic work. This is so, even though it is inherent in the concept of a genuine game or quiz that the playing and outcome of the game, and the questions posed and answers given in the quiz, are not known or prescribed in advance; and hence that the show will contain elements of spontaneity and events that change from episode to episode.” [para 43]

Requirements for protection

What is required for a format to be protected is explained at para 44 of the decision:

“copyright protection will not subsist unless, as a minimum, (i) there are a number of clearly identified features which, taken together, distinguish the show in question from others of a similar type; and (ii) that those distinguishing features are connected with each other in a coherent framework which can be repeatedly applied so as to enable the show to be reproduced in recognisable form.”

The format at issue

Having affirmed the potential eligibility for copyright protection of TV formats, Snowden J however excluded that Minute Winner could be protected. In fact,

“tested against any of those requirements [indicated above], there is no realistic prospect of BUMP persuading a court that the contents of the Minute Winner Document qualified for copyright protection. In my view, those contents are both very unclear and lacking in specifics, and even taken together they did not identify or prescribe anything resembling a coherent framework or structure which could be relied upon to reproduce a distinctive game show in recognisable form. The features were, in truth, commonplace and indistinguishable from the features of many other game shows.” [para 46]

Breach of confidence and passing off

The court also dismissed the claims for breach of confidence (for the reason indicated above) and passing off, the latter on grounds that the claimant did not possess the necessary goodwill [including actual customers in the UK, as per the Supreme Court decision in Starbucks] to succeed in its claim.


This decision sheds light on an area of UK copyright that has remained uncertain for a long time, also due to the rigid and closed system of categories envisaged by the CDPA.

However, as the outcome of the case confirms, wannabe holders of copyright in TV formats must pay substantial attention when drafting relevant documents, and provide as many details and information as possible. Another crucial aspect when it comes to potentially commercially valuable works like TV formats is to draft and rely on robust non-disclosure agreements, also to offset the fact that relevant documents should be sufficiently detailed.

Posted By Eleonora Rosati to The IPKat  AND see UK High Court rules that TV Show Formats can be Copyright Protected by William Fry  here https://www.lexology.com/library/detail.aspx?g=b3d2a0b5-ec74-493f-855e-7f9a2a6e7f9e

Friday, 20 October 2017

The Almost-Halloween Copycat!

Let’s start with an event!

“Crisis in Copyright Policy: How the digital monopolies have cornered culture and what it means for all of us”

With Jonathan Taplin, University of Southern California and author of Move Fast and Break Things, and Chaired by Professor Sir Robin Jacob

It’s on Monday, 27 November 2017, from 18:00 to 19:30, and it’s followed by a reception!

The place to be: UCL Cruciform Building, Gower Street, London WC1E 6BT

You can book your place here!

A Learned society is answering questions!

ALAI (Association Littéraire et Artistique Internationale, International Literary and Artistic Association) learned recently that EU Member States have been asking questions to the Legal Service of the Council regarding Article 13 and Recital 38 of the Commission Proposal for a Directive on copyright in the Digital Single Market.

 ALAI is answering four questions about this text. You can find their further reflections here!

The family of Albert Namatjira recover his copyrights after 30 years of battle!

It was an injustice, and it has been resolved more than 30 years after the beginning of the battle by the family of Albert Namatjira! In Australia, it was the longest copyright battle of the country!

The outstanding artist's has been denied any rights or revenue from the work of the Aboriginal painter for more than 30 years. The painter is recognised as Australia’s greatest indigenous painter, and the first to work in the western tradition.

One of Albert Namatjira’s extraordinary paintings

Small facts: one of its paintings was gifted to the Queen for her 21st birthday in 1947, and he was the first indigenous artist to receive international acclaim.

Before he died, he sold part of the copyright to his friend John Brackenreg of Legend Press in 1957. Two years later, he died and gave the rest of his copyright to his wife Robina and his family. Thing is: its full copyright was sold to Legend Press for $8500 by the administration of his will was handed to the Northern Territory public trustee! And if it wasn’t enough, Legend Press put restrictions on the use of Namatjira’s paintings and images and the royalties to his family dried up!

Eight years ago, the family began the battle to recover Namatjira copyrights, and they even met the Queen!

Thanks to the good will of Dick Smith, a multimillionaire, who shared its connection with the family, which was able to rich one of the current owners of Legend Press. Surprise: after a 15 minutes’ chat, Mr Philip Brackenreg gave back the right to the Namatjira Legacy Trust for $1!

A horrific tale - but happy ending to this story!

Missing data: Spinrilla is trying to have copyright case dismissed!

Do you know Spinrilla? It’s an app where you can access thousands of free hip-hop mixtapes in your pocket. Doesn’t it sound cool?

Problem: the application allows people to upload and listen to unofficial mixtapes, which leads tooooo… yes, you got it, copyright infringement!

Thing is: they are infringing copyrights according to the US record industry! A lawsuit is filed against the hip-hop mixtape application by the US record industry, and things are going sour: Spinrilla has requested that the copyright infringement be dismissed on the basis that the major record company failed to hand over crucial data relating to the allegedly infringing tracks at the heart of the case. For Spinrilla, by not providing this data, the label hindered its ability to mount a defence, leaving the company “severely prejudiced”.

According to Spinrilla: “It is without exaggeration to say that by hiding the RIAA spreadsheets and that underlying data, defendants have been severely prejudiced. The complaint should be dismissed with prejudice and, if it is, plaintiffs can only blame themselves”

It seems a somewhat ambitious bid to have the record industry’s copyright case thrown out of court. But we’ll nevertheless await with interest to see how the judge overseeing the case responds.

This CopyKat from Lolita Huber-Froment