Monday, 11 November 2019


USPTO brings in the all-important question of whether AI can create or infringe Copyrighted “Works”

Artificial Intelligence is a well discussed and debated topic in the realms of Copyright - since the advent of the concept of “Computer-generated works”, but with the recent advancement in the role of AI in curation of art-based copyrightable works, this debate has gained even more importance and is now the  subject of a number of major academic conferences and seminars, with the question surrounding the most appropriate path to be taken by lawmakers and courts.

The US Patent and Trademark Office has now launched a public consultation in this matter and The USPTO has issued a request for comments on IP protection of AI based innovation, on or before 16th December. The notice reads: “Artificial Intelligence (AI) technologies are increasingly becoming important across a diverse spectrum of technologies and businesses. AI poses unique challenges in the sphere of intellectual property law. At a January 31, 2019 conference on ‘‘Artificial Intelligence: Intellectual Property Policy Considerations,’’ USPTO explored a number of those challenges. On August 27, 2019, the USPTO published a request for comment regarding AI’s impacts on patent law and policy. As a continuation of this work, the USPTO is also considering the impact of AI on other intellectual property rights.” 

In lieu of the same, 13 specific question have been posed by the USPTO including concerns around a work produced by an AI, without the involvement of a natural person contribution expression, constituting a protectable work of authorship or not, kind of involvement of human which would be regarded as authorial, state of existing law in lieu of evolving AI technology, AI getting authorship as a separate legal entity or not etc. The whole list of questions posed can be found herein. Even in the UK, while evaluating a claim to inventorship, and identifying an inventor, the UK government has herein gone on to specify that “An AI inventor is not acceptable as this does not identify a “person” which is required by law.” Further, and importantly, as reported by the IPKAT, even in China, the Beijing internet Court in its decision in th case of Feilin v. Baidu has gone on to hold that for it to be a copyrightable “work”, it must be created by a natural person, which is a fundamental tenet of Copyright law. The court even held that neither the software developer nor the user and not even the software could be the Author of the work. The court further pointed towards the establishment of a sui generis right system (although indirectly) to protect the investment in the generation of the production. This is a core academic debate, and will be interesting to see how it takes shape in other jurisdictions.

Musicians urge for a similar regime to the EU Copyright Directive in the United States, to protect them against digital exploitation

CISAC recently saluted the EU Copyright system for its reform and fight against digital upload based services and has urged other jurisdictions including the United States to follow its example. With the digital market taking over the means of “communication” of content, the CISAC has urged for fairer norms, in light of a higher contribution of the digital market to these authorial royalties and revenues. The income from digital sources has substantially increased and is EUR 653 million more in 2018 than in 2014. Of course the International Confederation of Societies of Authors and Composers has at its core the aim to protect the rights and promote the interests of creators worldwide and is a known advocate for strong legal protection of copyright and authors' rights.  The EU Copyright Directive offers a stronger negotiating position for authors and composers against these distributing agencies and tech giants which display content and further holds them completely responsible for the content uploaded on their platform, in order to rapidly curb piracy. As reported by CISAC newsroom, Jean-Michel Jarre, CISAC President, said: “Digital is our future and revenues to creators are rising fast, but there is a dark side to digital, and it is caused by a fundamental flaw in the legal environment that continues to devalue creators and their works. That is why the European Copyright Directive is so momentous for creators everywhere. The Directive has sent an amazing, positive signal around the world, building a fairer balance between creators and the tech platforms.” A few highlights of this report as well as the full report released by CISAC can be accessed here. But a number of major tech companies, including Google, Facebook and Twitter are concerned about harmful copyright legislation being created around the world. 

Meanwhile TechDirt reports that tech industry groups are warning that these developments, including the EU Copyright Directive, will harm the interests of US companies, while conflicting with various free trade agreement. The Computer & Communications Industry Association (CCIA) and Internet Association have registered their unhappiness in submissions to the US Trade Representative in response to a call for opinions on foreign trade barriers. According to the CCIA, whose members include Amazon, Facebook, Google, Netflix, Pandora and Samsung, the EU’s directive “poses an immediate threat to Internet services and the obligations set out in the final text depart significantly from global norms”.

Important question of Jurisdiction in Copyright Infringement cases, resolved by the US Court of Appeals for the 6th Circuit

In a lawsuit involving a lack of proximity or territorial nexus of the infringing action to the venue wherein the suit was instituted, the court in the US dismissed a claim of Copyright infringement, This is the case of Parker v. Winwood (6th Circuit Sept. 17, 2019). The main question is this case was around the taking of a bass line from the plaintiff’s song “(Aint that) A lot of love” in their song “Gimme Some Lovin’” Due to Mervyn Winwood’s residence in the UK and his conduct of the subject matter of the suit (and the alleged infringement) taking place in the UK, the sixth circuit relying on the Supreme Court decision in Walden v Fiore where the forum of the act was given prominence, held that there is no personal jurisdiction to bring in the suit at Tennessee. Further, due to lack of evidence showing distribution of the infringing work in Tennessee, the steam of commerce argument was also rejected.  In the dissenting opinion however, justice Donald stated that “Plaintiffs could not properly assert personal jurisdiction over Mervyn because Plaintiffs did not set forth evidence or affidavits establishing jurisdiction . . . is incorrect, as Plaintiffs have submitted evidence supporting the district court’s ability to exercise personal jurisdiction over Mervyn.” Further, an evidence related to a nationwide distribution agreement was also accounted for, in support of personal jurisdiction, however the majority rejected the same. This judgment seems fallacious in relying on Walden v Fiore as this judgment doesn’t cover situations where the defendant has minimum contacts with the United States and any of the states within itself.  Read more here. The judgment can be accessed here.

Nigeria declares no tolerance policy on issues surrounding acts of Piracy

The West African Country has emphasized, via its Copyright Commission, a will to stamp out Piracy in totality. In a declaration by Vincent Oyefeso, the commision’s director of public affairs, as reported by Music in Africa. the Director said:

"The NCC is not just a compliance agency, it has the power to arrest and prosecute anybody caught pirating other people’s intellectual properties.” and “Copyright owners could institute civil suit against copyright offenders, apart from the criminal suit the commission normally institutes against such offenders.”

Further, there has also been a call to update Nigerian Copyright laws to come in line with the digital era. And to combat piracy, the commission has adopted surveillance, inspections, raids, investigations and diligent prosecutions of alleged and suspected offenders and infringers. This is all the more keeping in mind the agenda to bolster economic growth through the creative industries.

Even in South Africa, there have been concerns around the amendments surrounding authors and performers rights and the impact of the bill on rights of creators. There has been a formulation of a tribunal to address these issues concerning the same. The general consensus as reported by Music in Africa, is that the amendment bill supports users and multinational streaming company by providing them free content and going against the economic concerns of the rightful authors and composers including performers.  There is no punitive clause which provides for a remedy against infringing use. Read more here.

Claim against the Constitutionality of the Copyright Remedy Clarification Act, 1990 (United States), being heard in the Supreme Court

The case of Allen v. Cooper where the US Supreme Court is looking at a modern-day dispute involving the pirate Blackbeard's ship that went down off North Carolina's coast more than 300 years ago discusses the question of whether a limitation on state sovereign immunity in copyright claims via a statute (CRTA,1990) is constitutional. This case highlights the statute which abrogates sovereign immunity in claims of copyright infringement. The Supreme Court, in a similar claim to unconstitutionality concerning Sovereign Immunity being abrogated in Patent and Trademark cases, has already held it to be unconstitutional (Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank)which is generally used as a precedent by the lower courts even in Copyright Cases (concerning CRTA) to hold sovereign immunity applicable. 

The SC has peculiarly started hearing these claims with respect to this particular act since November 5, 2019, as reported by the Disruptive Competition Project. The core issue is whether there can be a distinction drawn from the treatment of this act with respect to the other ones which have already been held to be unconstitutional. In the Florida case, the core reasoning against such immunity being removed was that there needs to be a pattern of cases showing infringement by the State or constitutional violations, which weren’t established. The focus of the plaintiff in this case is on distinguishing the factual scenario and establishing that infringement by states is a growing problem which has also been identified in the study by the Copyright office and in the amicus brief filed by Ralph Oman, ex registrar of Copyrights, in favour of the plaintiff, .North Carolina-based Nautilus Productions who had for nearly two decades documented the ship's salvage. In the process, the company copyrighted photos and videos - which were then published by the state.  Nautilus sued in federal court, but the federal appeals court in Richmond, Virginia, ruled North Carolina could not be sued despite using the materials without permission. 

The plaintiff has also relied upon the dissenting opinions of Justice Ginsburg and Breyer and has firstly argued to overturn the Florida Prepaid case, but later in a second argument has also gone on to establish as to how the Florida prepaid case is not a valid precedent for the CRTA. States generally are protected from lawsuits in federal courts, and the justices in 1999 ruled out federal court cases against states over patent infringements. Patent and copyright protections come from the same constitutional provision that outlines Congress' powers.

As reported by Disruptive Competition ProjectJustices Alito and Kagan questioned the adequacy of the evidence of widespread copyright infringement when Congress adopted the CRCA. Florida Prepaid found the eight instances of patent infringement considered by Congress to be insufficient. Here, the Copyright Office study had identified sixteen instances of copyright infringement by state entities. So are sixteen infringements by 50 states enough to constitute a widespread pattern of constitutional harm, while eight are not?  Read more on this case here. 

"All that would be very persuasive if we didn't have the patent decision" Justice Ruth Bader Ginsburg said during the legal arguments.  Ginsburg dissented in the patent case.

This CopyKat from Akshat Agrawal 

Tuesday, 29 October 2019


The U.S. House of Representatives HAS voted 410-6 in favor of the Copyright Alternative in Small-Claims Enforcement Act of 2019, or CASE Act.  Seeking to address the high cost of copyright litigation, if passed into law, the CASE Act would create a voluntary 'small claims court'  within the U.S. Copyright Office, called the Copyright Claims Board.  Lawsuits filed under the CASE Act would allow recovery up to $30,000, with a cap of $15,000 for statutory damages per work infringed. Whilst widely supported by content creators and copyright owners,  the CASE Act is not without criticism: the American Civil Liberties Union, argues the CASE Act lacks procedural safeguards and could be abused by “copyright trolls” or by those seeking to silence free speech on the internet - and expose millions of Americans to liability who unknowingly violate copyright law for actions seemingly as petty as sharing photos online.  “There is no gun that is being held to anyone’s head, because the small claims court like tribunal is voluntary in nature,” Rep Hakeem Jeffries, the bill's sponsor, told The Verge. “Any argument made to the contrary, represents a deliberate attempt to misrepresent what’s at stake as part of the effort to do away with the content copyright laws that have been part of the fabric of our democracy since the founding of the Republic and in fact the Constitution.” adding “The internet doesn’t change the Constitution,” The CASE Act now heads to the Senate for a full vote.  

The CoStar Group has settled copyright infringement against rival Xceligent with the commercial real estate data conglomerate being paid  $10.75 million by its competitor’s insurers, although according to court filings that’s a fraction of the $450 million CoStar initially sought. CoStar and Xceligent's court-appointed bankruptcy trustee filed a proposed judgment in Delaware Bankruptcy Court, finding Xceligent liable for $500M in damages for stealing tens of thousands of images from CoStar's databases. Xceligent, which filed for Chapter 7 bankruptcy liquidation in December 2017, doesn't have the assets to fulfill the entire $500M ruling. BisNow says that the parties reached a settlement through which Xceligent's insurers will pay CoStar $10.75M. The bankruptcy settlement and judgment in the copyright infringement case are both subject to court approval.

The settlement of a case between photographer Robert Barbera and CBS over the 'use' of Barbera's photo of Justin Beiber  has left open the question of whether the unauthorised embedding of a social media posts that contain copyright-protected photos amounts to copyright infringement - leaving some of the issues in the Goldman v. Breitbart lawsuit unanswered: That case concerned embedded tweets that featured a photo of football star Tom Brady - but the case was voluntarily dismissed in May.   In a highly-contested decision in early 2018, Judge Katherine Forrest of the U.S. District Court for the Southern District of New York determined that a handful of media companies, including Vox, Time, Yahoo, and Breitbart, among others, had infringed a copyright-protected image that Eric Goldman took of Tom Brady by embedding third-party tweets that contained the image into articles on their websites.  Finding for Goldman, Judge Forrest’s February decision was a stark contrast to the general agreement among U.S. courts that when a party embeds a photo into an article, and thus, does not actually create a copy of the image or store it on its server, there is no new “display” of the photo for copyright purposes, and as a result, no copyright infringement - although case such as Perfect 10, Inc. v., Inc in 2007 are themselves not without critics who disagreed with the appellate court ruling that embedding does not require that an image be copied or stored, and thus, does not run afoul of copyright law. More on The Fashion Law website here.  Robert Barbera's Image from complaint. 

Those Turtles and the issue of pre-1972 copyrights in sound recordings in the USA keep going on and on - with the Ninth Circuit appeals court now asking the lower court in California to consider what the Music Modernization Act (MMA) means for any ongoing disputes involving unpaid digital royalties on pre-1972 recordings. CMU Daily reports that the MMA reformed US copyright law in a number of ways and "Perhaps the biggest reforms related to the way the mechanical rights in songs are licensed Stateside. In theory those reforms were meant to bring to an end the long line of lawsuits being pursued against the on-demand streaming services over unpaid mechanical royalties .... Another part of the MMA related to the use of recordings - rather than songs - by online and satellite radio services, including personalised radio platforms like Pandora. Under US-wide federal copyright law AM/FM radio stations aren't obliged to pay any royalties to artists and labels for the recordings they play, but satellite and online stations are. However, recordings released before 1972 are protected by state-level rather than federal copyright law, so digital services argued that that royalty obligation didn't apply to pre-1972 tracks." Probably one of the best known cases on the matter was litigation pursued in the Californian courts against both Sirius and Pandora by Flo & Eddie, former members of 1960s band The Turtles and whilst a settlement was reached in California, and new law removes any debate over the ongoing royalty obligations of services like Pandora moving forward, the question remained over what royalties should have been paid in the past. Now the Ninth Circuit has said that the question of assessing whether Pandora still faces liabilities for past non-payment of royalties in the context of the MMA is matter for the district court that first considered the original lawsuit. The appeals court said in a ruling last week: "Whether the MMA applies to and pre-empts Flo & Eddie's claims, as Flo & Eddie note, cannot be answered on the record before us. The resolution of this issue depends on various unanswered factual questions".

Global record industry trade groups IFPI and WIN have announced a new initiative designed to simplify the way record labels and music distributors provide key data about the sound recordings they own and represent - and the UK record industry's collection society, PPL, will lead on the initiative. With each country in what is now a global market having its own collecting society, with  their own database(s), this presents a number of logistical challenges for the recorded music industry (and indeed the music publishing sector too) not least as new platfors and new technologies develop. The new Repertoire Data Exchange project, or RDx, aims to make it easier for record labels and other owners of the copyright in sound recordings to log their tracks with all the relevant society databases, ensuring databases are updated promptly and efficiently. IFPI and WIN explained: "Record companies have historically used a variety of data delivery processes to supply content to individual [societies] around the world, presenting challenges in the supply of recording data. RDx will offer recording right holders of all sizes, from all countries, a single registration point to supply their repertoire data in a standardised format that can be quickly and easily accessed by all [societies], leading to improvements in data quality" and IFPI boss Frances Moore said: "Record companies continue to invest in and enhance the accuracy and management of music data in many different areas of the industry. RDx is a key example of an initiative that will benefit all parties involved. It will improve operational efficiencies and lower costs for right holders whilst allowing [societies] to retrieve authoritative repertoire data from a single point - enabling more accurate and timely distribution of revenues".

Taylor Swift by George Chin
Taylor Swift’s 2014 hit “Shake It Off” and th controversy over the phrases “playas gonna play” and “haters gonna hate”  s once again at the centre of a legal battle as a three-judge panel from the Ninth Circuit Court of Appeals reinstated the 2017 a previously dismissed copyright lawsuit from songwriters Sean Hall and Nathan Butler, who allege the single lifts lyrics from their 2001 composition “Playas Gon’ Play.”. Hall and Butler say Swift's famous lyric "Cos the players gonna play, play, play, play, play/And the haters gonna hate, hate, hate, hate, hate" was a copy of the line "The playas gon play/Them haters gonna hate" from their 2001 track. In February 2018. Judge Michael Fitzgerald in the District Court concluded “By 2001, American popular culture was heavily steeped in the concepts of players, haters, and player haters … The concept of actors acting in accordance with their essential nature is not at all creative; it is banal.” But a 1903 ruling from Supreme Court Justice Oliver Wendell Holmes might give some hope to Hall and Butler:  “It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits” Holmes wrote . “At the one extreme, some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke.” In their ruling the appellate court said “originality, as we have long recognized, is normally a question of fact … Justice Holmes’ century-old warning about judges appointing themselves the sole arbiter of originality remains valid. By concluding that: ‘for such short phrases to be protected under the Copyright Act, they must be more creative than the lyrics at issues here,’ the District Court constituted itself as the final judge of the worth of an expressive work. Because the absence of originality is not established either on the face of the complaint or through the judicially noticed matters, we reverse the District Court’s dismissal” and the case goes back to the District Court 

Friday, 25 October 2019

[Guest post] When creative collaboration goes wrong

The 1709 Blog is happy to host the following contribution by Hugo Cox (Hamlins), concerning the recent joint authorship decision of the Court of Appeal of England and Wales in Kogan v Martin [see also IPKat here].

Here's what Hugo writes:

When creative collaboration goes wrong

One of the most distinctively European contributions of European law to UK copyright law has been its test for originality (being one of the requirements for copyright protection). Previously UK courts had looked for the prosaic inputs of labour, skill or judgment. Now they ask whether the work is the author’s ‘intellectual creation’, looking to see if it reflects the author’s personality, expressing free and creative choices – there must be a certain … je ne sais quoi, you might say.

There is some doubt as to whether this new test has made much difference in deciding which works do or do not acquire copyright protection. However, in the law of joint authorship, a change seems unmistakable. In the past, English courts have required a contributor to input significant skill and labour to earn the title and rights of a joint author. So, for example, an attractive 16-bar saxophone solo did not meet the threshold. Now the Court of Appeal has affirmed the ‘relatively undemanding’ requirement is, once again, to contribute elements which express the contributor’s own intellectual creation. We know from the CJEU’s Infopaq judgment that this can be achieved in just eleven words.

Kogan v Martin

This conclusion of the Court of Appeal was arrived at in its judgment of 9 October in Kogan v Martin, a case concerning the screenplay for Florence Foster Jenkins, a film which starred Meryl Streep and Hugh Grant. The question was whether it had been written solely by Nicholas Martin, as had been decided in the Intellectual Property Enterprise Court in 2017, or whether Julia Kogan was joint author. The Court of Appeal was not content with the reasoning of the lower court and ordered a retrial.

It seemed Martin had held the pen and Kogan had contributed only to the first drafts. However, the Court emphasized a joint author can be someone who only offers suggestions to the writer  – she does not necessarily have to put pen to paper or have the last word on what goes into the script. Contributions to plot ideas or inventing characters are on an equal footing with contributions to the execution of a work. And if a work has been created through a series of drafts, inputs into the earlier drafts count.

Complex relationships, complex law

The Court set exacting standards for the assessment of the complex evidence of creative collaboration. The fact witnesses’ recollections may be imperfect does not absolve the judge of his duty to take those recollections into account alongside any documentary evidence and to come to a conclusion about the nature of the interaction between the parties and their contributions. Were Julia Kogan’s contributions akin to those of a researcher, or was there a joint creative process? The assessment is highly fact-specific and difficult, but must be undertaken.

Though it seems the quantitative threshold for joint authorship has been lowered, the overall assessment of the evidence has become ever more complex, subtle and exacting. And the legal concepts are slippery. Joint authors must be engaging in a ‘common design’ – according to the Court of Appeal this is not something Ezra Pound was doing when he made extensive revisions to Eliot’s The Waste Land. The Court explained, perhaps less than helpfully: ‘he was acting as a friend and critic and not a collaborator in a common design’. And appealing though the European ‘intellectual creation’ test is, can you necessarily spot someone’s personality in their output and when exactly are choices free and creative?

We live in a time when creative collaboration is widespread – from pop bands to sitcom writers’ rooms to the interactive world of the internet. It’s a complex picture, and one which the law should try to avoid complicating further.