The COPYKAT - winds of change

In keeping with the wet and windy weather here in the UK, today's CopyKat considers "stormy" and controversial copyright reform on both sides of the Atlantic, a lightning bolt victory for movie studios to the tune of $25 million in damages, and a picture of a thundercloud.

But first, in case you missed it, our very own Eleanora Rosati has been quoted by CNN for an article entitled Europe just approved new copyright rules that could change the internet. The article provides a brief overview of the more controversial aspects of the new Copyright Directive, and is certainly worth a read. Staying on the topic of the European Copyright Directive...

Axel Voss and the new Copyright Directive: deceived or indifferent?

By now, many CopyKat readers will be aware that the recently approved Copyright Directive includes several controversial provisions, including the so-called “link tax” at Article 11 and the “upload filter” at Article 13. But an interview published by Breakit suggests that even members of the European Parliament’s Committee on Legal Affairs (JURI) may not have even actually known what they voted “yes” to.

meme featuring Axel Voss via reddit

Emanuel Karlsten is a Swedish journalist who recently interviewed the EU's Copyright rapporteur Axel Voss. As explained by the EU Parliament fact page, the rapporteur is an instrumental person in the legislative process. Prior to becoming an MEP Voss was a lawyer himself, and has been a key figure in drafting the new Copyright Directive. As rapporteur, he has been crucial in carrying the Copyright Directive through to a successful vote earlier this month.

Karlsten put it to Voss that, as per the Directive, "not even an individual can film a game of soccer or a horse riding competition". Voss replied that “the part about sports events had slipped through without anyone noticing” which "was kind of a mistake, I think, by JURI. Someone amended this, nobody has been aware of this. I didn't know that this was in the proposal so far, so I have to deal with it now."

In his defence, Voss explained “because of the time pressure” and focus on more publicized aspects of the law such as Articles 11 and 13 mentioned above, the measure mentioned by Karlsten may have been “insufficiently scrutinized.” When interviewed by Quartz about his conversation with Voss, Karlsten stated that “Voss’s surprise about the sport filming provision is indicative of a much larger problem. It exceeded my worst fears about the competence of the MEPs handling of this directive.”

American copyright modernization reforms unanimously pass Senate

Senator Hatch, for whom the MMA is now named

Attempts to update copyright law in the United States inch ever closer to being enacted into law. With midterm elections just weeks away, there was some doubt for a moment that the Music Modernization Act would even pass during this current Congress. However, the Senate majority leader Mitch McConnell (Republican, from Kentucky) brought it to a vote on 18 September, where it passed unanimously.

American public broadcaster NPR astutely noted that “in an age where political and artistic consensus is increasingly found only in cultural warrens populated by the like-minded, the bipartisan support of the bill is perhaps a small beacon of unity.”

Now that it has passed the upper house of the American legislature, the bill has been renamed the Orrin G. Hatch Music Modernization Act, after Sen. Orrin Hatch (Republican, from Utah). Hatch is retiring from government and, in addition to being a strong advocate for the act, also happens to own a platinum record (as an aside, you can see Hatch - and several other politicians - on the Dallas Observer’s page entitled The Most Entertaining Musical Performances by Politicians).

As for next steps, the MMA must now go to the lower house for approval. Once the language is reconciled with the version approved by the House of Representatives, the bill will advance to the President for signature into law.

In the CopyKat’s opinion, one of the best press releases about this entire process comes from Mitch Glazier, the president of the Recording Industry Association of America (RIAA): “As legendary band the Grateful Dead once said in an iconic pre-1972 song, ‘what a long strange trip it’s been.’ It’s been an epic odyssey, and we’re thrilled to almost be at our destination.”

But if we’ve learned anything from the Copyright Directive reforms in Europe, it’s certainly that “the devil is in the details” when it comes to legislation such as this.

TickBox sent packing as film studios and Netflix win $25 million lawsuit

The Alliance for Creativity in Entertainment (ACE), an industry coalition of global entertainment companies and film studios, together with Netflix and Amazon, has secured a major legal victory against Tickbox, a type of so-called “Kodi Box” streaming device. As a result of the judgement and permanent injunction, which were handed down in Los Angeles, California on September 11th, Tickbox will pay $25m (£19m) in damages. Additionally, Tickbox will no longer provide software that allows users to access pirated content, and agrees to disable any such software within 24 hours.

In its coverage of the matter, Variety noted that in initial advertising, Tickbox promised customers that they could get “virtually the channels you get from your local cable company … without you having to worry about paying rental fees or monthly subscriptions.” Tickbox devices retailed for about $150 (£115).

The advertisement originally launched by TickBox

In October of last year, ACE originally filed a lawsuit alleging that TickBox was promoting their streaming device as “a tool for mass infringement of copyrighted motion pictures and television shows”. By this point, TickBox had changed the advertising wording, and in its defence to the lawsuit attempted to feign innocence by “claiming that the device manufacturer could hardly be held accountable for what their customers chose to download” (nocable.org). Essentially, Tickbox’s fundamental argument was that it is merely a hardware company, and therefore no more responsible for copyright infringement than any other computer manufacturer.

Judge Fitzgerald disagreed with TickBox’s reasoning, explaining that “There is sufficient evidence that the Device can be and is used to access infringing content, and there is sufficient evidence of TickBox’s fault — primarily in the form of its advertisements and customer-support efforts. TickBox may be held responsible for the instances of infringement that would not have otherwise occurred in the absence of the Device.”

This successful action against TickBox is the first brought on by ACE that targeted a streaming device. Other similar “Kodi-Box” lawsuits remain pending, and the outcomes are likely to be similar now that this one against TickBox is on the books.

Worth noting is that one of Tickbox’s competitors, Dragon Box, was also sued earlier this year by Netflix, Amazon, and others for copyright infringement. Dragon Box then released the following statement: Instead of closing our doors and shutting down all boxes and riding off into the sunset we decided that it was in the best interest of you the customers and the company to change our business model and adapt to change and continue to try and bring you the best legal content we can and add in as many services we can to make Dragon Box the box that beats any competitors out there.

Legal storm for Netflix over Stranger Things

Although Netflix may have secured a victory against TickBox in the story mentioned above, that’s not to say that Netflix itself is free from blame when it comes to alleged copyright infringement.

Netflix has received widespread acclaim for its retro science fiction series, Stranger Things. As noted by GeekWire, “creepy storm clouds looming over the fictional town of Hawkins, Indiana are a regular occurrence” on the show, but one particular cloud is alleged to look a bit too similar to a supercell captured by Montana-based professional photographer Sean Heavey. In his lawsuit filed in Montana last week, Heavey argues that Netflix took The Mothership photograph and used it without permission in Stranger Things.

Heavey's image

In 2010, Heavey took a photograph of a thunderstorm that he called "The Mothership." The image appeared in publications and online all over the world, including in an Apple advertisement, Random House, Time, USA Today, National Geographic, The Daily Mail, National Public Radio, and The Nature Conservancy. Unfortunately, it’s also been the subject of continuous copyright battles.

He asserts that this was by no means a simple cloud photo: instead, “Sean captured The Mothership using great technical skill and careful timing, as well as significant time and energy.” The lawsuit explains that Heavey tracked and followed the storm for many hours, beginning as it crossed the Montana/Canada border, and later “used his technical expertise to digitally combine separate panoramic photographs. The Mothership was the end result of “numerous sequences of experimentation with various framing, exposure, shutter speed, and movement options.”

Concept art for Stranger Things

In an earlier letter to Heavey, one of Netflix’s attorneys, Jarin Jackson stated that "The only similarity that exists between the Artwork and Mr. Heavey’s photograph, The Mothership, is the use of similar cloud formations. Copyright law, however, does not protect objects as they appear in nature."

Finally, an update! Cadillac's hopes to avoid trial are "smashed" 

Back in February, the CopyKat wrote about SMASH 137, a graffiti artist who sued General Motors for featuring his work in a Cadillac advert without his consent. With thanks to the entertainment law team over at the Hollywood Reporter, Esq, we now know that the matter is likely heading to trial, as General Motors failed to convince the judge to award a summary judgment.

We also now have some new interesting case law in terms of whether or not graffiti on buildings forms “part” of a building’s architecture. This is an important question from a copyright perspective, as it can influence whether or not graffiti can be considered “background scenery” in commercial advertisements, and used without a licence from the artist.

Swiss-based contemporary artist Adrian Falkner, known by his art world pseudonym “SMASH 137,” has had his work displayed around the world in various museums and galleries. In 2014, SMASH 137 participated in an art project called the “Z Garage” in Detroit, Michigan. Two years later, General Motors (GM) developed and launched an international media campaign to promote its new Cadillac XT5. In several still-image advertisements, Cadillac featured SMASH 137’s Z Garage mural as the centrepiece artistic element. In his lawsuit filed in January 2018 in California, SMASH 137 sought damages because his mural was used in the advertisements without his knowledge or consent.

As mentioned above, the car manufacturer’s attempt to dismiss the lawsuit has been defeated. In the decision, which was handed down on 17 September, judge Stephen Wilson noted that the mural was inseparable from the parking garage. From a copyright perspective, this matters because while copyright law protects architectural works, copyright law permits pictorial representations of architectural works. Pursuant to US Copyright law, the pictorial work in question must be "part of" an architectural work in order for the relevant copyright exemption to apply.

According to the judgement, there is “no indication that the mural was designed to appear as ‘part of’ the building or to serve a functional purpose that was related to the building. Instead, there is undisputed evidence that SMASH 137 was afforded complete creative freedom with respect to the mural, and that the design of the mural was inspired by SMASH 137’s prior work.”

Disagreeing with GM’s claim that there was somehow an architectural connection between the mural and the parking garage (you can’t blame the lawyers for trying!) Judge Wilson stated that he "cannot hold as a matter of law that the mural is part of an architectural work" and accordingly, cannot grant the automaker's motion that it is permitted to photograph the mural. Speaking to the Detroit Free Press, Falkner’s attorney Jeff Gluck said the judgement was “a massive victory for artists’ rights.”

Fortunately for GM however, Judge WIlson did agree with their point that copyright precludes an award of punitive damages. If the case proceeds to trial and SMASH 137 prevails, he is only entitled to recover statutory damages, which are capped at $150,000 (£115,000) for willful infringement, or actual damages.

The CopyKat - VOTE UPDATE

The European Parliament Will Vote on September 12^th on the Future of the Copyright Directive

Later this week (Wednesday, September 12) the European Parliament will vote on the future of the proposed legislation of the Copyright in the Digital Single Market which aims to redress the imbalance between the creators and online platforms, requiring them to obtain licences for the works that they make available. In particular, Article 11 aims to protect the content of the newspapers from the ‘snippets’, where short extracts of the publications are used by tech companies. Whereas, Article 13 puts greater responsibility on websites and online platforms by requiring them to implement "effective and proportionate measures" to "prevent the availability of specific [unlicensed] works identified by rightsholders", act "expeditiously" to remove them, and take steps to prevent their reappearance.  The new provisions which have proven to be highly controversial, in effect will change the existing liability framework for the intermediaries and will remove the E-Commerce Directive exemptions.

Ahead of the vote both creators and technology industries have increased their lobbying and coverage either to voice their support for the current version of the proposal or to encourage Members of the European Parliament (MEP) to reject the text. Among supporters who back up, the changes are over 165 leading screenwriters and directors who signed the petition calling the European Parliament to adopt the latest version of Directive on Copyright in the Digital Single Market. In their view, the new law would introduce “an unwaivable right to proportionate remuneration for authors, collected directly from the on-demand platforms by the collective management organisations representing (…) the authors”. The reform of safe harbour has been also supported by the music industry, which believes that user-upload platforms have exploited the safe harbour provisions “in order to launch on-demand content platform without paying market rate royalties to content owners”.

The music industry has also been critical of the campaign launched before the previous vote in the European Parliament, accusing the tech sector of ‘astroturfing’, a term used to describe initiatives that arise from lobbying that are presented as if they are coming from individuals. The tech sector has been particularly active in articulating their dissatisfaction with the current version of the proposal as it challenges the current ‘safe harbour’ protections enjoyed by online platforms in the EU and leaves them with a possibility of being legally accountable for all copyright-infringing material appearing on their platforms. YouTube’s Chief Business Officer, Robert Kyncl, has said that “the ability for creators and artists to find fans and build a business online is now ‘at risk’”. He continued that the outcome of the new law would not only “stifle creative freedom” but it could also have “severe, negative consequences for the fans [and] communities” by undermining the creative economy. The requirement to implement strict upload filters would also result in increased spending on compliance expenditures. The tech industry believes that although the proposal mainly targets Big Tech, such as Google and Facebook which will be able to cover these costs, smaller internet companies will not be able to afford them. The recent amendment has seen narrowing of the category of service providers required to comply with Article 13, however, concerns still remain.

Apart from the tech sector, the proposal has also raised concern among advocates of privacy and free speech, since the provisions “pose a real threat to the fundamental right to free speech online”. Mike Morel from Open Rights Group in his blogpost wrote that “the proposals within Article 13 would change the way that the Internet works, from free and creative sharing to one where anything can be removed without warning, by computers. This is far too high a price to pay for copyright enforcement”.

With an intensive lobbying campaign from both sides, the outcome of the vote and the future of the EU’s approach towards copyright enforcement is hard to predict. The Commission has encouraged the Parliament to find a compromise since if the proposal would be rejected the whole package for the Digital Single Market may not be concluded before the elections to the European Parliament next May.

UPDATE: MEPs voted to pass Article 13 of the European Copyright Directive. The EU Copyright Directive will now go to trilogue with the European Union Council, Commission and Parliament to negotiate a final text for passage into law. UPDATE: Amended versions of Articles 11 and 13 were approved in the European Parliament. The final vote was 438 in favour and 226 against.  And the Directive still faces a final vote in January 2019. After that it will need to be implemented by individual EU member states, who could very well vary significantly in how they choose to interpret the Directive’s text. However, Robert Ashcroft, Chief Executive of PRS for Music, said: "The European Parliament today took a bold step forward to ensure a functioning and sustainable digital single market for creative content. "  Julia Reda of the Pirate Party described the outcome as “catastrophic.”   More on this here
https://www.theguardian.com/law/2018/sep/12/eu-copyright-law-may-force-tech-giants-to-pay-billions-to-publishers-facebook-google

US and Mexico Agree to Changes in Copyright Protection in the New Trade Deal

As we have covered previously in CopyKat, earlier this year the US, Mexico and Canada were trying to negotiate new terms of the NAFTA Agreement during several negotiation rounds. Now it appears that things will move ahead without Canada, which has not been happy with the several of the US proposals since the US and Mexico have confirmed that they had reached agreement on key elements of a new trade deal.

One of the issues on which the parties have agreed is an agreement to enforce against piracy and counterfeiting, and implementation of criminal measures against camcording in movie theaters, as well as cable and signal piracy. As written by the US Trade Representative, the parties also decided to “extend the minimum copyright term to 75 years for works like song performances and ensure that works such as digital music, movies, and books can be protected through current technologies such as technological protection measures and rights management information”. The statement, however, has caused confusion. Some entities understood that by this agreement the US Government has extended the current US term, which is author’s life + 70 years. TorrentFreak reports that “the USTR initially told reporters that it was indeed the plan to extend the copyright term to life plus 75 years, but according to Techdirt, this was later changed to a 75-year floor”. Therefore, 75 years is a minimum which includes the author’s life.

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The parties have also negotiated the ‘safe harbour’ exemptions, which according to the content industry groups should be tightened, whereas in the view of internet law experts, the US safe harbour provisions should also be implemented in Mexico and Canada. The announcement of the US Trade Representative states that the safe harbour provisions are included and that the rightsholders will also be protected at the same time. However, no details were released yet. In response to the announcement, music industry players, including RIAA, BMI and ASCAP have issued a joint statement, in which they shared their concern “by the efforts of some to use the agreement to lock in flawed interpretations of pre-internet ‘safe harbors’ perpetuating the theft of American music, creating safe havens preventing successful enforcement efforts within our trading partner nations”.

Rod Stewart was Sued for the Use of the Photo of Him During His Performance

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Can an artist be sued for using a photo of him during his own concert? The answer is yes. Sir Rod Stewart has been sued by Julia McLellan for breach of copyright in the photo of him with his former girlfriend. The photo, taken in 1960s, was shown as a background on the screen during the BBC2's Live in Hyde Park: A Festival in a Day concert. Although the photo was taken by Christopher Southwood, Mrs McLellan claims she acquired the copyright in 2004. BBC reports that she has asserted that Mr Southwood gave Sir Rod a copy of the photograph as a keepsake but said: "That's very different from using it commercially." In response Sir Rod Stewart’s team has argued that the court should reject the claim calling it as ‘absurd’ and claiming that the level of damages of £9,999.99 is unreasonable “for a totally innocent, brief and incidental use by Sir Rod of a personal snapshot as part of another, more substantial, artistic work”. When the matter was sent to trial District Judge Stephen Hodges urged both parties to mediate as the case had "tears written all over it". However, as Mrs McLellan claims despite efforts to ask Sir Rod Stewart for a fee, such requests were repeatedly refused.

The Ninth Circuit Dismissed Copyright Infringement Claim Against IP Address Owner

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On the other side of the Atlantic, the U.S. Court of Appeals for the Ninth Circuit has upheld the decision to dismiss the case against the owner of the IP address for the copyright infringement. The case was brought by Cobbler Nevada who filed a suit against a John Doe defendant and identified an IP address. The IP address was owned by Mr Gonzales however it was accessible to residents and visitors of an adult care home operated by him. In its first claim, Cobbler Nevada has accused Mr Gonzales as a sole defendant for copyright infringement based on the fact that the IP address was used for infringing activities of downloading and distributing the movie and he has not responded to over 400 notices. The District Court in Oregon has dismissed the claim and held that there were no facts which would connect Mr Gonzales to the infringing activity and neither his failure to stops infringement would constitute active encouragement which is required for contributory infringement. While hearing the appeal, the Ninth Court found that the District Court has rightly decided to dismiss the case since the plaintiff has not shown that the defendant violated the plaintiff’s exclusive rights under the Copyright Act himself. On the element of contributory infringement, citing previous case law the Court held that such a claim requires intentional inducing or encouragement of direct infringement. Additionally, in its argument according to the Court, Cobbler Nevada would “effectively create an affirmative duty for private internet subscribers to actively monitor their internet service for infringement”. Imposition of such duty would put any individual who purchases internet service at high risk when he “shares access with a family member or roommate, or (…) is not technologically savvy enough to secure the connection to block access by a frugal neighbor.”

Disney Wins an Injunction to Stop the Sale of Movie Download Codes

Disney has seen a success in its claim against the Redbox. A Federal Judge in California has granted a motion for a preliminary injunction that would require the operator of DVD rental kiosks to stop selling digital codes that consumers can redeem at online outlets to access copies of Black Panther and other movies. With an increasing number of customers using online streaming, as reported by Hollywood Reporter, Redbox in order to attract them disassembled Disney’s ‘Combo packs’ that included Blu-Ray, DVD and a digital code, offering consumers access to download the code at a lower price. The packaging has clearly stated that "Codes are not for sale or transfer”. In the first case related to Frozen and Star Wars, Judge Pergerson analysed the restrictive nature of the licence and the issue of first sale doctrine. The Judge having observed a problematic nature of such restriction ruled that it "implicates and conflicts with public policy enshrined in the Copyright Act, and constitutes copyright misuse”.

Following the decision Disney has changed the language of it terms changing the language that the redemption of the digital code requires prior acceptance of terms and conditions and that “the digital code contained in this package may not be sold separately”. The current wording constitutes now a ‘clickwrap’ agreement with required an affirmation from the buyer. In the view of Redbox, post-purchase restrictions are unenforceable.  Additionally, it has argued that it can only be liable for contributory infringement “if it had subjective intent to be a contributory infringer”. The Judge has disagreed with Redbox and held that “it is undisputed that Redbox has actual knowledge of the redemption sites’ clickwrap terms, which do appear to create a restrictive license”. Furthermore, Redbox did not obtain any ownership right to digital content when it purchased the combo packs. With the changes made by Disney, Judge Pergerson disagreed with Redbox’s defence of copyright misuse since now “downloaders no longer need affirm that they possess the physical discs, to which first sale rights would apply”. Redbox has interpreted that the injunction only applies to certain titles which contain the new terms, such as Black Panther and still asserts the right to sell the codes to the titles where the language has not been amended yet.

Icy Refusal to Copyright Frigidaire’s Logo

 The Review Board of the United States Copyright Office (the Board) did not warm up to Electrolux’s arguments that its “Frigidaire Stylized Logo” should be protected by copyright. On August 29, it affirmed the denial of registration.

A logo can be protected as a trademark and can also be protected by copyright, if it is original enough. Several corporate logos are protected by copyright and by trademark.

The Frigidaire logo consists of the word Frigidaire in blue capital letters. Only the “A” differs from the usual way to write the letter A, as it is drawn as a triangle filled with a smaller red triangle. Hardly the stuff Turner Prize dreams are made of.

But copyright laws are not snobbish and protect masterpieces and more humble works alike, as long as they are original enough.  

Is the word Frigidaire itself protected by copyright?

Frigidaire is a made-up word. The correct word to designate an electric ice box is a refrigerator. I may sound a little pompous writing this phrase, but it is because I am scolding my 15-year old self [make this my 20-year old self] who was stupefied discovering this fact. Of course, being French, I grew up calling the family refrigerator “Le Frigo.” But enough about moi.

Who remembers the copywriter who invented such a famous name. Anybody? We should, as Frigidaire quickly became part of the lexicon. I found a scientific 1932 article using it. Google Ngram’s viewer informs us that the word appeared in 1920, peaked in 1940, and then dropped steadily in use in English, in use in English fiction, in French, and Spanish, while the word was at its most popular in Italian in the Sixties.

It is a great word, an original word, more original that a logo using a triangle instead of the letter “A.” But my brain must have frozen, as I just remembered that a word cannot be protected by copyright, and I have thus let go the suggestion that the word Frigidaire should be protected by copyright..

Let’s talk a bit about trademark.

Frigidaire is a great word. It could even be some person’s favorite word. Poets and songwriters have used it.

When Nat King Cole sang “I have stopped my heart like an icy Frigidaire, for I need to care for no one, that's why I'm thru with love…” he (exquisitely) did what every trademark attorney dreads the most, he used a trademark as a generic term.

[Trivia question: which other famous song from the American song book used the then-trademark “cellophane” generically, as a compliment to a paramour to boot? Answer is here].

Frigidaire is such a great name for a refrigerator that it quickly got used for a refrigerator, instead of the generic name, thus becoming a generic trademark. It is now used indifferently, Frigidaire or refrigerator.  

“Frigidaire” was registered as a word trademark in 1920 by registrant Frigidaire Corporation of Michigan. This trademark is now dead, by genericide.

As Frigidaire can no longer be protected as a word mark, it can only be protected as a design mark. Indeed, the word Frigidaire in stylized letters in still protected by trademark, in several versions, also here.

Frigidaire, written FRIGIDΔIRE, was registered as a trademark last year. The mark “consists of "FRIGIDAIRE" with triangle "A". This logo can be a trademark, since what matters is that the logo can serve as an indicator of the origins of the goods. Trademark laws do not care about originality.

But copyright laws do, and this FRIGIDΔIRE logo is not original enough, according to the Board, to be protected by copyright.

The FrigidΔire logo is not original enough to be protected by copyright.

The Board reminded applicant that it does not make aesthetic judgments when assessing whether a work can be protected or not, citing the classic 1903 Bleistein case. But it is lack of originality which froze the application, not aesthetics.

The Board used many of the same arguments they used to deny copyright protection to Log Cabin Blank With Screw Eyes and Cafe Door. To resume the argument, Feist requires only a modicum of originality but the work must “embody some creative authorship.” The author can use material and forms which are not protected by copyright, but must do it in such a way that the selection and coordination of these elements “trigger[s] copyright.” As in the Log Cabin case, the board cited § 906 of the Compendium and the Atari case to assert that the combination of simple shapes is protected only if “combined in a distinctive manner indicating some ingenuity.” The Board found that the stylized “A” is a mere “trivial variation on a letter” and is thus not copyrightable, as it does not “possess more than a de minimis quantum of creativity”, quoting Feist.

Electrolux, which now owns the Frigidaire brand, has registered the logo at stake as a trademark, and also wanted to register it as a copyright. This is good practice, as intellectual property is valuable and it makes sense to protect it every way one can.

It argued that “the stylized letter “A” represent[ed] a design choice that was made to reflect the attributes of Electrolux home appliance products, including having an eye on the future and being innovative, grounded, and stylish.”

However, logos cannot be protected by copyright if they are not original enough, and the FrigidΔire case should serve as a warning to companies creating a logo: make sure it is original enough to be also protected by copyright.