THE COPYKAT

US Copyright Law Applies to the Content Created Overseas

Can the US copyright law apply to the content which although created overseas is made available to the US viewers in violation of the rights of the US rightholders? That was the question the U.S. Court of Appeals for the D.C. Circuit Has recently faced in the dispute between Spanski Enterprises v. Telewizja Polska.

The case which is in them making for over two decades concerns Poland’s public national broadcaster, Telewizja Polska (TVP), granting an exclusive right to Spanski Enterprise (SEI), a Canadian company, to distribute TVP’s content in North and South America for the period of 25 years. It was agreed between the parties that TVP will use geo-blocking technology for its streamed content on the VOD platform, in order to protect SEI’s exclusive licence to share the content on the US soil. Nevertheless, SEI has discovered that the programmes still could be streamed in one of their US offices in New York as the geo-location technology was allegedly disabled. At the first instance, the US District Court for the District of Columbia held in December 2016 that SEI’s exclusive right of public performance has been violated and awarded damages of $3.06 million against TVP. 

TVP in its appeal claimed that “[a]cts committed abroad, even if they would be actionable if performed in the U.S., cannot form the basis for a U.S. copyright infringement suit” and that the US Copyright Law does not apply extraterritorially. Contrary, the US Government in its amicus brief has submitted that “a copyright owner’s exclusive right to control the public performance of the work in the United States is infringed just as clearly when the transmission comprising the unauthorized performance originates overseas”.  In its view the liability should be imposed on TVP despite the performances being initiated abroad, as the events occurred in the US and the unauthorised performances were addressed towards the American public.  

The case is important from the perspective of the US Government as it “implicates the ability of the Department of Justice to prosecute large-scale criminal piracy of copyrighted works by entities located abroad that stream copyrighted works over the Internet to viewers in the United States”. TVP has also raised a second argument saying that “the company may be held liable for direct copyright infringement only if its conduct was ‘volitional’”. Given that TVP has owned the copyright in its content which has been lawfully uploaded to its VOD platform, according to them there was no such conduct. 

The Court of Appeals in its judgment has rejected TVP’s appeal confirming that the automated services, where the user selects the content to view (here VOD platform) are not protected from liability in such cases. According to Circuit Judge Tatel “Congress had good reason to allow domestic copyright holders to enforce their rights against foreign broadcasters who direct infringing performances” into the US territory. Furthermore, with the ease of internet transmission across the world, lack of protection of copyright holders would enable widespread infringement “rendering copyright in works capable of online transmission largely nugatory”.

Football and Music Right Holders were the Most Frequent Claimants in the High Court in 2017

The new research published by RPC shows that music and football right holders bring the most cases to the London's High Court. The rise in the number of claims is a result of rightholders aiming to fight illegal streaming on the internet. The most frequent Claimant in 2017 was PPL (Phonographic Performance Limited), which has brought 88 cases to the High Court. The second most active claimant was Football Association bringing the total amount of 36 cases. Among the top 10 claimants filing the copyright cases are also Sky and BT with 12 and 11 cases respectively. As noted by Paul Joseph, Partner and Editor of RPC’s Copyright Guide “[p]rotecting copyright continues to be a top priority for those holding the rights to music and football.” Given that “the value of football broadcast rights has ballooned over the last two decades, so has the importance to rights holders of protecting their intellectual property.” Football rightholders are now more encouraged to go to the Court following a successful claim in Football Association Premier League Ltd v British Telecommunications plc [2017] EWHC 480, where Arnold J has granted an order to requiring six major internet service providers (ISPs) to block access to streaming servers giving unauthorised access to copyright footage. [as previously reported on IPKat]

With the Internet changing the traditional business model in music industry, it also became important for the rightsholders to pursue “any possible source of revenue from businesses using their material”. Therefore, it is more common for music rightsholders to litigate, in order to maximise their revenues from the copyrighted materials. By filing a number of claims to the High Court, football and music industry companies must hope that their actions will deter potential infringers.  

Belgian Rightholder and ISPs Cooperate in Blocking Websites Infringing Copyright

The process of a group of rightholders applying to the Court for orders requiring Internet Service Providers (ISPs) to block access to the websites infringing copyright has also been widespread in other parts of Europe. Knowing that the process requires both parties to spend a lot of money and with the knowledge that injunctions requiring ISPs to block websites infringing content are now more likely to be granted in the European courts, recently rightholders and ISPs decided to take collaborative approach. Belgian Entertainment Association (BEA) and ISPs Proximus, Telenet and VOO in order to avoid complex and costly legal proceedings have decided to jointly present a list of 33 websites and 450 domain names to a judge, together with claims that “they facilitate the illegal downloading of copyrighted material”. With the possibility given in the European legislation to the national judges to order injunctions requiring ISPs to block access the Commercial Court of Brussels will now assess the list of sites and domains “to determine whether they’re acting illegally”. As explained by Benoît Michaux, lawyer for the Belgian Entertainment Association, this “joint request is a little unusual, things are changing, there is a certain maturation of minds, we realize, from all sides, that we must tackle the problem of piracy by blocking measures. There is a common vision on what to do and how to handle piracy”. As reported by L’Echo with potential concerns of ISPs of possible breach of E-Commerce Directive, ISPs are not willing to take any action against websites without any order from the Court. The Court is expected to render its judgment within a month.

They want you, they want you, 

They want you as a new recruit

US Navy Sued for Copyright Infringement

Bitmanagement, German software company, has brought a claim against US Government in connection with the US Navy installing its software on hundreds of devices without obtaining the necessary licence and therefore infringing their copyright: As reported by Torrentfreak, in 2011 and 2012 the US Navy initially bought licences of 3D virtual reality application for the use on 38 devices. However, as it was soon discovered the application was installed on 100,000 devices without any additional compensation.

Following its Federal Claims Court complaint, Bitmanagement  found out that the number of computes on which software has been installed amounted to at least 429,604. Therefore, after both parties have conducted discovery, Germany software company has requested for partial summary judgment against the US Government for copyright infringement. As stated by the company in their motion “it became clear that the Navy had no intention to pay Bitmanagement for the software it had copied without authorization, as it declined to execute any license on a scale commensurate with what it took”. In response, the US Government claimed that it bought concurrent-use licences that allowed them to install the software across the Navy network and that the authorisation was implied. Both arguments were however rejected by Bitmanagement. The damages according to the software company can amount up to $600 million.

Miley Cyrus Sued for $300 million for Copyright Infringement in her ‘We Can’t Stop’ Song

A Jamaican songwriter Michel May (performing as Flourgon) has brought a $300 million claim against Miley Cyrus for infringement, alleging that her 2013 song ‘We Can’t Stop’ [listen here] too closely resembles a song that he released in 1988 and was a No 1 in Jamaica ‘We Run Things’ [listen here].  According to May about 50 percent of Cyrus’ song comes from his ‘We Run Things’ hit. He claims that Cyrus and RCA Record have misappropriated his material by using the phrase “We run things. Things no run we,” which she sings as “We run things. Things don’t run we.”. Additionally, in his view Cyrus’ hit “owes the basis of its chart-topping popularity to and its highly-lucrative success to plaintiff May’s protected, unique, creative and original content.” Apart from seeking damages, ‘Flourgon’ in his complaint filed with the U.S. District Court in Manhattan also requested the Court to a halt to further sales and performances of 'We Can’t Stop’. In the wake of the Blurred Lines decision, and the more recent Taylor Swift decision over the alleged copying in the lyrics of 'Shake It Off', this could be one to watch. 

This CopyKat by Mateusz Rachubka 

The 'Catch Up' COPYKAT

After a week in Groningen in Holland at the EuroSonic music conference and festival. it's time for a quick catch up before our two new interns, Mateusz Rachubka and Kelsey Farish take over. And since you were asking - the buzzwords at ESNS 2018 were 'bots' and 'blockchain' ! As for the word of copyright, and still mostly in the world of music - here goes!

There has been a LOT of chat about the fact that even with the 1998 twenty year extension to the copyright term in the USA, copyrights will (again) begin to enter the public domain with works from 1923 in the public domain next year, and Mickey Mouse cartoons entering the public domain starting in 2024, with Steamboat Willie. Will Disney lead another charge to extend the the term - AGAIN? Ars Technica's Timothy B Lee has polled lobbyists for the record and movie industries and so far there seems to be no will to push for any legislative pushes this year, and EFF's Daniel Nazer suggests that the studios know that there would be a big pushback now - "the days of copyright being a wonky, obscure issue that fronts the families of dead artists as human shields for policies that let big companies lock up more and more of our shared culture are over."

Still in the US, the music industry has (mostly) come together to support a raft of new legislation. First of all there is the CLASSICS Act, which is aimed at rectifying the much discussed pre-1972 quirk in American copyright law that excludes the earlier sound recordings from the performance right and therefor royalties from airplay (litigation by the Turtles, pictured left, has kept us busy on this blog).  US music trade bodies, lobbying groups and collecting societies representing record labels, music publishers, artists, songwriters, record producers and artist managers have also  backed the AMP Act, which would introduce a new right for record producers and sound engineers, and reform to the way satellite radio royalties are calculated, and provide a general performing right  for sound recording copyright to rectify another odd position in US copyrights law where AM/FM radio stations do not royalties (at all) to artists and labels for the airplay of sound recordings (they do play for the use of the 'song'). And the music industry is (mostly) behind the recently unveiled Music Modernization Act, which would cover the anomalies in America’s mechanical rights that (as CMU says) "has resulted in songwriters going unpaid and streaming services getting sued, including that mega-bucks $1.6 billion lawsuit filed by Wixen last month."  More here. 

Facebook has signed another multi-year licensing deal with a major music company -Sony/ATV Music Publishing.The news comes just two weeks after Universal Music Group announced that it had signed an agreement with the social media giant, which draws more than 2 billion users every month to its platform. Sony ATV’s multi-territory, multi-year deal covers a catalogue of more than 3 million songs, including those by Taylor Swift, Ed Sheeran, Drake, The Chainsmokers, Sam Smith, Sia and Kanye West. On top of this, Facebook them announced it had signed three more significant music licensing agreements,  this time with SESAC’s HFA/Rumblefish platform, Kobalt Music Publishing and Irving Azoff’s Global Music Rights. SESAC says that its new Facebook agreement, a standardised deal in which indie publishers can choose to opt in, will provide ‘streamline music licensing and administration for the independent publishing market’.

Lana Del Rey by Bea Gibson

Are Radiohead suing Lana Del Rey over an alleged copy of their iconic song 'Creep'? Lana Del Rey recently tweeted: “it’s true about the lawsuit. Although I know my song wasn’t inspired by ‘Creep’, Radiohead feel it was and want 100% of the publishing. I offered up to 40 over the last few months but they will only accept 100. Their lawyers have been relentless, so we will deal with it in court”.” Whilst many took this to mean a lawsuit had been filed by Radiohead’s lawyers, that isn’t quite the full picture. The spokes person for Warner/ Chappell states that: “As Radiohead’s music publisher, it’s true that we’ve been in discussions since August of last year with Lana Del Rey’s representatives. It’s clear that the verses of ‘Get Free’ use musical elements found in the verses of ‘Creep’ and we’ve requested that this be acknowledged in favour of all writers of ‘Creep’. To set the record straight, no lawsuit has been issued and Radiohead have not said they ‘will only accept 100%’ of the publishing of ‘Get Free'”.

Four of Britain’s biggest karaoke firms "face ruin" after being sued for infringing copyright in the US. It seems that "they must cough up hundreds of millions in damages after failing to pay royalties on versions of hits by acts including The Beatles and Oasis." £527 million in damages to be precise. UK firms SBI Global, Mr Entertainer, Zoom Entertainments and Music Factory re-create hits without the vocals and sell them on. But while they paid royalties on sales in the UK and Europe they did not have permission to sell in the US, a US court has ruled. More here. 

Fox and the Premier League have joined telcos Singtel and StarHub in a private case against two Android set-top box sellers in Singapore for allegedly ‘wilfully infringing’ copyright. The actions against Singapore distributor Synnex Trading and retailer An-Nahl, along with their respective directors Jia Xiaofeng and Abdul Nagib Abdul Aziz, have been brought under Section 136 (3A) of the Copyright Act. In a joint statement, Starhub, SingTel, Fox Networks Group and the FAPL said the broadcasting industry would continue to take "concerted and decisive action" against content piracy through public education as well as via legal channels to uphold intellectual property rights saying “The alarming proliferation of piracy and illicit streaming devices that are used to view copyright-protected content hurts both consumers and producers. Piracy makes it untenable for producers to keep on creating content for the public's enjoyment and Singapore cannot effectively encourage innovation when intellectual property rights are constantly trampled on”.

The CopyKat - Part Deux

It's not often we report on the Pagan community, but the Wild Hunt tells us of concerns about Pagans violating copyright protections of Pagan books which have "resurfaced in a big way, with thousands of volumes being uploaded by the owner of one popular Facebook group". Authors and publisher’s agents who knew that no such permission had been granted have tried to get the files removed, and after several days those attempts appear to have been successful, to the disappointment of some group members. More here.

Rogers Communications wants the Supreme Court of Canada to reconsider a copyright ruling on pirated content that internet policy experts say could raise prices for law-abiding consumer. The Financial Post reports that the Toronto-based communications giant has filed for leave to appeal a Federal Court decision that stipulated internet service providers must turn over subscribers’ identities for free if copyright holders suspect them of copyright infringement. the Federal Court ruled internet providers could not recoup their costs because the fee could potentially make it too expensive for copyright holders to go after illegal downloaders. Instead, it suggested internet providers pass the costs along to all consumers – even those that do not infringe.

The Premier League in the United Kingdom is very very big business, with a large of the revenues provided by the commercial deal for match TV rights struck with Sky TV and BT.  and the FAPL will go to great lengths to protect those rights. With the start of the new Premier League season, the fight against illegal IPTV streams has stepped up, with ISPs being told to block streams of copyright content in real time - and this seems to have worked, with substantial disruption for viewers hoping to catch matches using these Kodi or web-based streams over the first weekend of the new season. TorrentFreak reports that several streams went dark within minutes of matches starting, leaving providers of the illegal streams to scramble to find new domains to host their content. With the recent closures of piracy-facilitating Kodi add-ons, it's looking like the days of being able to easily stream 'free' premium sports content might be coming to a close, although there are always people willing to use VPNs to evade the blocking abilities of the UK's ISPs. UPDATE - the Mirror says that 3 million watched the much hyped Mayweather / McGregor fight on at least 239 illegal streams. 
 
US President Donald Trump has instructed his trade envoy to examine China’s policies and practices concerning US intellectual property, a promise he made during the 2016 election campaign. The presidential memorandum signed tat the White House directs US Trade Representative Robert Lighthizer to “examine China’s policies, practices and actions” when it comes to transfer of US technology and “theft of American intellectual property” and use “all options” to protect US interests with Trump saying “We’re taking firm steps to make sure we protect the intellectual property of American companies and very importantly, of American workers” and “The theft of intellectual property by foreign countries costs our nation millions of jobs and billions and billions of dollars each and every year.”

The dispute between the major record companies and mixtape sharing app Spinrilla continues, with the former’s request for access to the latter’s source code high on the defendant’s current list of specific gripes. Interesting - the defs say this "The source code is the crown jewel of any software-based business, including Spinrilla. Even worse, plaintiffs want an ‘executable’ version of Spinrilla’s source code, which would literally enable them to replicate Spinrilla’s entire website. Any plaintiff could, in hours, delete all references to ‘Spinrilla’, add its own brand and launch Spinrilla’s exact website”.  More on CMU here. 

Songwriter groups in the USA and elsewhere have hit out at the Recording Industry Association Of America (RIAA) over its submission to an official review of the moral rights of creators in the US. The songwriter organisations, including BASCA in the UK, say that the major record companies in the US are pursuing an anti-songwriter agenda on this point, while concurrently relying on vocal support from the songwriting community when it comes to lobbying for safe harbour reform. Both the Motion Pictures Association of America (MPAA) and the RIAA are against the introduction of statutory moral rights for artists. They believe that the current system works well and they fear that it’s impractical and expensive to credit all creators for their contributions. Stark hypocrisy from the record labels in the US? Or too big a task to manage? BASCA say "even though the US signed up to the Berne Convention in 1989 it chooses NOT to recognise moral rights, saying they are confusing.  There really isn’t anything confusing about crediting the original creator of a song folks!!  So understandably the writer organisations in the US get very excised, rightly so, about this ongoing scenario.  The US Copyright Office this year conducted another study into the issue with some very strong statements from creators and submissions by writer organisations in support of the US finally recognising moral rights.  However the RIAA in its wisdom decided to continue to reject this position .... Thus writers from across the US, Canada, the UK and Europe – organisations representing many tens of thousands of songwriters and composers of all genres – have come together in an unprecedented alliance to explain to the RIAA why this is wrong and damaging to the very people whose works the music industry is built on."

News from Scotland

A Glasgow bar has become the first in Scotland to be hit with a court penalty for showing English Premiership football matches via the unauthorised use of foreign broadcasts. The Football Association Premier League (FAPL) have issued a release saying that the Merchants Quay bar in Paisley Road faces having to pay the FAPL up to £6,000 for copyright infringement in damages and costs awarded in the Court of Session - although the final amount has yet to be determined. The FAPL says the judgement follows an 18-month long crackdown in Scotland against bars using foreign feeds to show matches from the top flight of English football. The Premier League says it has sent 31 'letters before action' to pubs in Scotland. It says that in the majority of cases the pubs  simply agreed to cease showing the matches. In five  cases the FAPL took legal action against pubs and interim interdicts were awarded, preventing unauthorised broadcasts until a court hearing.

The FAPL have pledged further strong action as it undertakes a programme to prevent 'the undermining of its deal with Sky Sports and BT Sport for coverage of Premier League matches'. Readers of this Blog will remember the case involving Portsmouth landlady Karen Murphy which established that individuals living in the UK are allowed to use digiboxes which provide authorised services from other EU member states to watch Premier League football in the UK However this case did not extent such a right to commercial premises.

A Premier League spokesman said: "The courts granted the judgment following failure by the defendants to engage in the case, despite several attempts to contact the publican."

And also from Scotland - and the Scottish Law Society - who have said that proposed EU legislation allowing holiday makers travelling in Europe to access online content, such as digital film and TV services is 'too timid'. Whilst the Society has welcomed the European Commission’s proposed legislation, which would allow EU residents travelling within the EU to access digital content services which they have paid for in their home country, they have called for the legislation on cross-border portability of digital content services to be extended to cover digital subscriptions purchased by EU residents anywhere in the EU.

Jim McLean, convener of the Law Society’s Intellectual Property committee, said: “We’re delighted that the European Commission is looking at ways to improve online content services for consumers and welcome the proposed regulation which will allow EU residents to access digital services such as Netflix, Sky and Amazon Prime, when travelling within the EU on holiday or business. But he added: “However we believe the proposed legislation is too timid and should also cover online content services purchased or obtained by a subscriber within the EU, even if that is outside of their home country" and “This would align with the Commission’s strategy to allow for wider online access to works by users across the EU and would be more straightforward for both the consumers and the providers.”

http://www.heraldscotland.com/news/14278737.Glasgow_pub__quot_first_in_Scotland_quot__to_receive_penalty_for_Premier_League_copyright_breach/

Joined cases C-403/08 Football Association Premier League Ltd and Others v QC Leisure and Others and C-429/08 Karen Murphy v Media Protection Services Ltd 

More on the Karen Murphy case here. 

http://www.lawscot.org.uk/news/2016/02/eu-proposals-for-tv,-music-and-sport-subscriptions-too-timid-says-law-society/

The CopyKat - Bently blocked in bizarre bite sized ball battle

Research from the Motion Picture Association Of America (MPAA) claims that web-blocking in the UK is proving a substantial deterrent to online piracy - even where proxy sites enable users to access blocked services. An internal MPAA report , seen by Torrentfreak, shows that that visits to infringing sites UK sites that had been blocked declined by more than 90% in total during the measurement period or by 74.5% when proxy sites are included. The research is referenced in a report being prepared for the Australian government which is currently considering new anti-piracy measures, including web-blocking. Though Torrentfreak wonders if the fact the MPAA is conducting research of this kind suggests that it is planning on pushing for web-blocking in the US once again.

And UK Culture Secretary Sajid Javid has warned internet search engine companies legislation could be introduced if they do not make "real progress" in clamping down on links to pirate websites. He told the Annual General Meeting of the record label's trade association the BPI that he and Business Secretary Vince Cable had written to leading firms such as Google requesting they work with record firms in finding a way to stop giving easy access to sites which violate copyright saying  " No industry - and no Government - can let this level of infringement continue on such a massive, industrial scale" noting that without enforceable copyright there would be “no A&R, no recording studios, no producers, no session musicians, no publicity, no artwork. None of the vital ingredients that take the music created made by talented artists and turn it into something the whole world can enjoy. It’s what our past success was built on, and it’s what our future success depends on” adding "Copyright infringement is theft, pure and simple".

"The next generation of wars over knowledge, culture, drawings, information, and data is just around the corner, and it’s going to get much uglier with more stakes involved on all sides. We have gotten people elected to parliaments (and stayed there) on the conflict just as it stands now. As this divide deepens, and nothing suggests it won’t, then people will start to pay more attention. And maybe, just maybe, that will be the beginning of the end of these immoral and deeply unjust monopolies known as copyrights and patents." An interesting article. 

The UK's Copyright Licensing Agency and the China's Written Works Copyright Society have signed an agreement which will, for the first time, place numerous Chinese written works in the British market, including books, articles in newspapers and magazines and academic papers. Yan Xiaohong, deputy chief of the Chinese National Copyright Administration, said the agreement marks a milestone in copyright protection for Chinese works in overseas markets saying "It will encourage more Chinese writers and publishers to produce more high-quality copyright works appealing to foreigners, and guarantee their economic benefits" adding "Also, it will serve as a trailblazer for more agreements of its kind to be signed with copyright collective management agencies in other countries and regions of the world. Eventually, this kind of cooperation will boost Chinese cultural exports." The CWWCS is the only valid organization approved by the National Copyright Administration to collectively manage and operate copyright in China. Richard Mollet, chair of the UK Publisher's Association and the UK Alliance for Intellectual Property, and UK Minister for Intellectual Property Baroness Lucy Neville-Rolfe also attended the signing ceremony.

And finally ..... and with echoes of Lawrence Lessig's tussle with Liberation Music over the use of a clip of a Phoenix track in a presentation on cultural and technological innovation - comes news that Professor Lionel Bently has similarly had a video temoved from YouTube - because the English Football Association Premier League claimed that it infringed their copyrights. TechDirt reports that the clip was used by Professor Bently at the Institute for Information Law (IViR) July Information Influx event, which included a panel discussion on "Who Owns the World Cup?" discussing the very question of copyright and sports clips.

It is reported (though this Kat can't confirm) that Professor Bently was arguing in favour of better copyright protection for sporting events - an area where the FAPL have struggled in their battle to prevent unauthorised broadcasts with courts finding that only certain elements of live match transmisisons protectable (logos, anthems and clips from past matches). In the Lessig case, Liberation Music reached a settlement with Lessig. The settlement included an admission that Lessig had the right to use a track by the band Phoenix, and Liberation admitted Lessig's use of the song was protected by fair use - and Liberation agreed to adopt new policies around issuing takedown notices. I wonder if, in the different regime of fair dealing, and with the newly revised S30A "quotation" exception not yet in place in the UK (due 1st October 2014 I believe), the Premier League will take the same approach in the UK - or maybe just apply some common sense? Whatever the FAPL do or don't do, the phrase that most springs to my mind (and others it must be said) is 'own goal'.  

There is more on this story on the Kluwer Copyright Blog  "Premier League claims copyright on football matches shown in copyright debat"  by Thomas Margoni, Institute for Information Law (IViR)

Pub landlord faces £65,000 costs after Premier League action

1-0 to the Premier League?

A pub landlord must pay £65,000 in legal costs for infringing the Premier League's copyright by showing football matches using a foreign satellite card which had been authorised only for private use. The Premier League (FAPL) took Anthony Luxton to court after various matches were shown at the Rhyddings pub in Brynmill,  Swansea, between September and December 2012, in what seems to be the first of the threatened actions we noted last week - and comes hot on the heels of the FAPL's call for amendment to the Section 72(1) defence under the CDPA.

Firstly - apologies - this update is taken from news reports - but it seems the League's QC, Helen Davies, told the High Court that the pub landlord infringed  the League's copyright by showing live matches using a satellite card from a Danish broadcaster, during which the Premier League's distinctive (and copyrighted) logo was depicted. The decoder card was only authorised for use in a private home, said Ms Davies, "and not for use in commercial premises such as the pub" and the use in the public bar was effectively "communication without consent", arguing for summary judgment against Mr Luxton on the grounds that his defence had no realistic prospect of success.


Mr Luxton's team argued that it was an "illicit attempt" to stop foreign decoder cards being used. He also said that the League's claim foundered under European Union competition laws - but this was rejected. Mr Luxton's solicitor Paul Dixon said after the case: "We will be looking very closely at the possibility of an appeal." Ms Davies had claimed Mr Luxton's "Euro-defence" was "nothing more than a contrived attempt to avoid the obvious consequences of his conduct".

Following a three-hour hearing, Mrs Justice Rose granted the League's application saying "There is no defence to this claim and summary judgment must be entered" and made a "declaration of infringement". She also issued an injunction barring further unlawful screenings.

She ordered Mr Luxton to pay £65,000 in legal costs, pending final assessment of sum he owes, with estimates putting the final sum as anything up to £125,000 - with one report saying the Judge exclaimed ""Goodness me" on hearing the League's costs bill.

http://www.bbc.co.uk/news/uk-wales-south-west-wales-25968200 and some earlier wise words on what might happen after the MPS v Murphy case on the Ashurst website here. 

Newsflash - Murphy's law to be tested again

Will Swansea pubs face a penalty?

It seems like the Premier League is launching at least 100 new actions against publicans who use foreign decoder cards to show live Premier League football matches in their pubs. BBC Wales reported that pubs in Cardiff and Swansea, suspected of showing Premier League football matches illegally using foreign satellites, face prosecution after the Premier League's private investigation firm visited nearly 200 pubs in south Wales in the last four months and the BBC say the first action for copyright infringement will be against The Rhyddings Hotel in Brynmill, Swansea, shortly. The pubs have subscriptions with foreign channels and show 15:00 GMT Saturday Premier League kick-offs live to their customers. 

Dan Johnson, the Premier League's director of communications, told the BBC: "BT Sport and Sky Sports invest huge amounts of money in the Premier League and that then is in turn invested by the clubs in new stadia, developing players, acquiring players, the whole range of things that make Premier League football so popular" adding "So anything that damages the ability of broadcasters to invest in that has the potential to damage the ability of the clubs to invest in that" and "With the advent of Cardiff and Swansea being in the Premier League clearly the interest in Premier League football has gone through the roof in south Wales.".

Previous efforts to bring pubs to court resulted in a partial victory for Portsmouth pub landlady Karen Murphy who used a subscription to the Greek Nova service to show live Premiership games. Ms Murphy was convicted at Portsmouth Magistrates Court of "dishonestly" receiving a programme "with intent to avoid payment of any charge applicable to the reception of the programme". The conviction under section 297(1) of the Copyright, Design and Patents Act 1988 was upheld by Portsmouth Crown Court. The Court of Justice of the European Union held that national laws that prohibit the import, sale or use of foreign decoder cards were contrary to the freedom to provide services and cannot be justified either in light of the objective of protecting intellectual property rights or by the objective of encouraging the public to attend football stadiums - and also that football matches did not fall under the protection of an author's own "intellectual creation" as works. So Ms Murphy herself could use the Greek service and her criminal conviction was overturned by the High Court.

But neither CJEU nor the High Court directly resolved the wider issue of copyright infringement in those elements of the matches that could be protected by the Premier League - logos and graphics, the the league's anthem and pre-recorded and edited short films from earlier matches used in live broadcasts - and the CJEU noted that when these were shown in public - and the transmission in a pub of the broadcasts containing those protected works, such as the opening video sequence or the Premier League anthem, constitutes a ‘communication to the public’ within the meaning of the copyright directive - the the authorisation of the author of the works is necessary, because when a pub transmits those works to the customers present on the premises the works are transmitted to an additional public which was not considered by the authors when they authorised the broadcasting of their works.

http://www.bbc.co.uk/news/uk-wales-25849670 

More on Murphy v MPS here and  joined cases C-403/08 Football Association Premier League Ltd and Others v QC Leisure and Others and C-429/08 Karen Murphy v Media Protection Services Ltd 

North of the border - a Scottish perspective here

Copyright lasts a long time -- but are contracts forever?

From our friend across the border, Gill Grassie (Brodies LLP, Edinburgh), comes news of an extremely recent Scottish decision on an attempt to enforce an undertaking not to infringe copyright even beyond the point at which the copyright could have been enforced.  The case in question is Scottish Professional Football League Ltd v Lisini Pub Management Co Ltd [2013] CSIH 97, a decision of the Extra Division of the Inner House, Court of Session. This is what Gill says:

"Can a contractual undertaking not to infringe copyright continue forever -- even if the legal basis for it has disappeared?

The definitive answer given by the Scottish Court of Session appeal court (Inner House) to this question last Friday was a resounding ‘No’. This case was part of the fall-out of the FAPL case -- Football Association Premier League Ltd and others v QC Leisure and others (no 2) and the ruling of the Court of Justice of the European Union (CJEU), for which, click here.  In that case, as readers will know, the CJEU decided that clauses prohibiting the use of foreign decoders and smart cards were void as a restriction on competition under European law - the free competition provisions of European law prevailed over the UK's Copyright, Designs and Patents Act 1988.

In the Scottish version of this case the defenders, as the owners of three pubs on the west coast of Scotland, had screened live Scottish Premier League football matches in a pub using a decoder device to access the signal broadcast by a Polish company (Polsat). This was at the time an infringement of copyright under section 298 of the 1988 Act because Polsat was not licensed to broadcast within the UK. When the defenders effectively ignored the pursuer's requests to cease such activity, they raised an action for copyright infringement and applied for an interim interdict (injunction) in the local Sheriff Court. In response, the defenders offered an undertaking effectively to stop use of the decoders and smart cards to screen matches at its premises, in return for which the proceedings were dismissed. Despite this undertaking the defenders screened yet another live match via the Polsat signal in response to which the pursuers applied for interim interdict again -- but this time to the Court of Session.  And this time an order was granted.

Meantime the FAPL action in England and Wales had been referred to the CJEU, so the pursuers’ action was stayed to await the outcome of that. On 4 October 2011 the Grand Chamber of the CJEU issued its decision in FAPL to the effect that contracts which prevented use of foreign decoders and smart cards were void as a restriction on competition and that EU law in this respect took precedence over the 1988 Act. The defenders applied to have the interim interdict cancelled/recalled, to which the pursuers consented. The defenders also counterclaimed for damages for wrongful interim interdict. The pursuers amended their case to delete the copyright claim and relied instead on the defenders' undertaking as a basis to seek a continuing and perpetual interdict. One of the key questions therefore to be decided was whether the contractual undertaking was still enforceable. 

At first instance the court decided that the undertaking ceased to have effect as from the date of the recall of the interim interdict which was later than the CJEU's decision.  On appeal there were some quite ingenious arguments run by the pursuers about the meaning and scope of the undertaking. For example it was argued that the undertaking contained no limit in time, had not been withdrawn and contained nothing to suggest it envisaged that it would fall if the unlawfulness that it sought to address were to change. Nor was it envisaged at the time or known by the parties that the interim interdict would be recalled or that FAPL would be referred to the CJEU. The enforceability of an undertaking should not depend upon the recall of an interim interdict which was not foreseen by the parties since, if it did, so this would amount to the court making the parties’ bargain as opposed to just applying it and its terms. The CJEU decision declared the law ‘as it had always been’ i.e. was retrospective. Accordingly if the defenders were correct the result would be that the undertaking had never taken effect at all which was contrary to the parties' contention.

The defenders were able to counter these points and relied on BCCI v Ali [2001] UKHL 8 on construction of a commercial contract which made it clear that a court should be most reluctant to infer that a party intended to give up rights and claims of which it was unaware and could not have been aware. Thus the opposite point to that of the pursuers was being made to the effect that there was no need for the undertaking to have specific wording in it to deal with a situation which was unforeseen. The undertaking had been given not to do something which both sides had assumed was illegal at the time. Once that changed, it was logical that the undertaking should fall.

The appeal court agreed with the defenders and essentially upheld the first instance decision, but considered that the date upon which the undertaking ceased to have effect was as from the date of the CJEU decision on 4 October 2011 and not when the interim interdict was recalled on 12 July 2012. In interpreting the undertaking the appeal court took account of the circumstances in which it had been given, ie in the context of an application for interim interdict to prevent the defenders from carrying out what were at the time illegal acts. The logic was therefore that, if those acts ceased to be illegal, the undertaking ceased to be effective or enforceable.

On a subsidiary point the appeal court also decided that there were enough details in the pleadings on whether there had been breach of Article 101 of the Treaty on the Functioning of the European Union to allow the case to proceed. The case will therefore continue with the defender’s counterclaim for damages for wrongful interim interdict.

This seems to have been the only sensible outcome here as to hold a party to an undertaking when its whole legal basis has been undermined could not be correct. Here such an outcome would have allowed a back door route to continuing to enforce a contract term which was an illegal restriction on competition under EU law and of legislation which was no longer applicable. The fact though that the matter was argued at all demonstrates that it is worth taking care to ensure that such undertakings given in the context of court proceedings are drafted carefully taking all possible developments in mind".

Murphy’s law of licensing?

I have been thinking about the practical ramifications of ECJ’s decision in MPS v Murphy and FAPL v QC Leisure (see previous posts) and the impact of the over arching principle that EU competition law should ‘trump’ copyright. I am not sure the decision should have come as that much of a surprise – all Member States are part of a ‘common market’ and the principle of the free movement of people, labour, capital, goods and services is at the heart of that. The ‘Television Without Frontiers' Directive provides for this in the audio visual sphere, and, with certain riders, looks for the free movement of television programmes within the internal market. For those nor familiar with the background to this case I have put some very brief reference materials at the foot of this blog.

So where do rights owners and broadcasters go from here?

- In the long term it may be prudent to treat the EU as ‘one’ territory. It would seem odd to licence audio and audio visual rights for ‘Utah’ or ‘Salt Lake City’ in the USA or for just ‘Essex’ or ‘Colchester’ in the UK – but not impossible. But if Europe is one market with one currency (as it almost is at the moment) then the concept of inter-EU territorial licensing on a country by country may fade.

- That doesn’t mean that Coditel is necessarily bad law. But it is bad law in certain circumstances and might well be decided differently now.

- If a licensor licences say a film for a German TV station then that Licensor have to accept that if anyone in Europe wishes to access that service – whether its free to air or by paying a relevant subscription fee, the they can so do from anywhere within the EU, if it is technically possible – and that will be legal.

- Licensors cannot use contractual terms to restrict inter-EU access, whether such terms restrict access to services or to physical goods such as decoders. With decoders it seems that a system of exclusive licences is contrary to Article 101(1) of the Treaty of Functioning of the the European Union if the licence agreements prohibit the supply of decoder cards to television viewers who wish to watch the broadcasts within the EU but outside the Member State for which the licence is granted. These agreements are restrictive agreements contrary to 101(1).

- There can only be ‘one’ price structure for Europe from a pay TV provider. So if say a customer in Spain wishes to watch Sky TV then they can – provided they pay the relevant subscription fee – and that fee must be the same for all EU consumers.

- Territorial partitioning and in particular artificial price differences between the partitioned national markets are irreconcilable with the fundamental aim of the Treaty, which is completion of the internal market.

- The ECJ said that “The licence agreements must not prohibit the broadcasters from effecting any cross-border provision of services that relates to the sporting events concerned, because such an agreement would enable each broadcaster to be granted absolute territorial exclusivity in the area covered by its licence, would therefore eliminate all competition between broadcasters in the field of those services and would thus partition the national markets in accordance with national borders.” But this doesn’t matter if there is only one broadcaster by satellite – more on that later!

- If a EU customer wishes to watch a Greek service, whatever it contains and wherever they are in the EU, then they can provided again they pay the relevant subscription fee. The decoder is not illicit! A service cannot discriminate on price across Europe – competing services of course can offer different prices – even for the same content.

- As an aside, in my opinion some of the earlier judgments were just plain wrong on whether the Nova signal containing English Premiership football was from the United Kingdom or Greece. It was a Greek service and a Greek programme – not only as a fact as it was uploaded from Greece, but it was a licensed service – licensed by the FAPL, in effect legally licensed by the Claimants themselves.

- And talking of asides, don’t get too waylaid by whether or not there is a ‘copyright’ in a football match. This is all about competition law and the common market. That said, whatever we think about the definition of protected works in the UK, and even if Infopaq means that its all to do with an author’s intellectual creation now, live sport cannot be a ‘work’ or qualify for copyright protection as a work. That is the law now and even accepting that football can be like ballet, I doubt if even Infopaq can be stretched to cover live sport. That said, at one recent seminar on Murphy a very amusing quip came from the audience that surely a ‘fixed’ cricket match must have a script (hehe!). And even if logos and national anthems can be protected by copyright law, does it matter? Not really, no.

- Copyright MIGHT protect the FAPL though - for the protected elements of any programme: I am not convinced Karen Murphy is safe to show the NOVA feed in public as the ECJ said that this is communicating the public and a pub screening would be an unlawful, profit-making communication to the public of copyright works it would not have been taken into account or considered by the authors of the protected works. She can own the decoder and buy the NOVA service for her private use. But enough of copyright, We need to look at the bigger picture!

- I am not sure Sky have been damaged at all, except perhaps in the short term. In fact they may be quite happy! Sky have the potential to do rather well out of this judgment in the long term. Firstly they can insist that all those expats Brits in Spain and Portugal PAY for their decoders and PAY for the Sky service – and they might well end up as the sole European FAPL licensee – for more on that see below.

- So what should the FAPL do? Well in the short term they may well have to re-negotiate their existing licences with Sky and other broadcasters across Europe as these agreements have been ruled anti-competitive if they have the effect of partitioning the internal market: Clauses contained in those agreements which relate to territorial exclusivity cannot now be enforced or relied upon.

- Exclusive broadcast licences based on a language (German, Greek, English) remain a possibility as does the possibility of limiting a broadcast licence to non-commercial (eg private home) use only. Whether the latter is practical remains to be seen.

- But laws meant to regulate a market often end up fitting the ‘law of unintended consequences’ model. Whilst some commentators see the decision as a win for the consumer, resulting in more competition which usually results in more choice and cheaper prices for consumers, I am not so sure.

- As the UK is by far the most important economic driver, surely the FAPL should / could licence JUST Sky – who can then offer the (same priced) service to consumers across Europe – setting whatever price they feel consumers can bear as a pan-European monopoly. The ECJ accepted that “European Union competition law does not, in principle, preclude a right holder from granting to a sole licensee the exclusive right to broadcast protected subject-matter by satellite, during a specified period, from a single Member State of broadcast or from a number of Member States of broadcast”. And I’m not sure who else could compete with Sky who have very deep pockets for English football rights! But I have no idea what EU regulators might think of this!!

- A single license would also allow the FAPL to control the broadcast of live fooball matches in England - a stated core concern as the FAPL need to protect the revenues from the paying audience for live football matches. And they need a new system and it may be one where nobody in Europe gets to see live matches from the Premiership!

- It won’t stop at TV! Neelie Kroes, previously the EU Competition Commissioner and now the Commissioner for the Digital Agenda said this about music and entertainment: “Too many barriers still block the free flow of online services and entertainment across national borders. The Digital Agenda will update EU Single Market rules for the digital era. The aims are to boost the music download business, establish a single area for online payments, and further protect EU consumers in cyberspace. She told the Guardian “"If I can buy a music CD online from a company in the Netherlands and have it posted to me here in Belgium, why can't I buy a digital download from the same company? If I can watch my local team's football matches using online pay-per-view in one member state, why not in 27? This situation does not make much sense to the man on the street. To be honest, it is not a situation that makes much sense to me. And we need to fix it".

- Unless a valid justification for partitioning the single market can be found, new business models will have to be adopted in Europe and many existing licensing arrangements may simply be held invalid as they be contrary to European competition law. I suspect this applies in particular to the pan-European satellite broadcasts and the internet. Is there any future in pan-European internet geo-filtering now? I suspect the answer is 'no'.

- The full effect of the case will become clear when the High Court gives its judgment applying the ECJ's ruling to the facts of the case.

- Of course Greece may have the final word if the EU doesn't sort out the current debt crisis ...... !!!


Tuesday 25 October 2011

BLACA & the BCC have a joint meeting on Tuesday 25th October looking at the communication to the public right in the light of the ECJ decision. This will be a panel discussion led by Professor Paul Torremans with Ted Shapiro (Senior Vice President, General Counsel Motion Picture Association, Brussels) and Jenine Hulsmann (Partner, Clifford Chance) contributing as panellists: VENUE: Reed Smith, The Broadgate Tower 20 Primrose Street EC2A 2RS: 17.45 signing in - 18.00-20.00 pm panel discussion. If you wish to attend you MUST register in advance by emailing emma.rumens@blplaw.com or by telephone on: 020 3400 4983.



Karen Murphy v Media Protection Services Ltd / Football Association Premier League Ltd v QC Leisure and others Joined Cases C-403/08 and 429/08 http://www.bailii.org/eu/cases/EUECJ/2011/C42908.html

Directive 89/552/EEC - "Television Without Frontiers"
The Directive aims are to ensure the free movement of broadcasting services within the internal market and at the same time to preserve certain public interest objectives, such as cultural diversity, the right of reply, consumer protection and the protection of minors. It is also intended to promote the distribution and production of European audiovisual programmes, for example by ensuring that they are given a majority position in television channels' programme schedules. The Directive establishes the principle that Member States must ensure freedom of reception and that they may not restrict retransmission on their territory of television programmes from other Member States. They may, however, suspend retransmission of television programmes which infringe the Directive's provisions on the protection of minors.

C-5/08 Infopaq International A/S v Danske Dagblades Forening [2009] ECDR 16
The Court emphasised that the author’s right to authorise or prohibit reproduction applies to a "work", i.e. the author’s own intellectual creation - "the expression of the intellectual creation of their author"

Coditel SA and others v Ciné-Vog Films SA (No 1) [1980] ECR 881 62/79 and Coditel SA and others v Ciné-Vog Films SA (No 2) 262/81 [1982] ECR 3381
This case established that exclusive national licences of broadcasting or cable rights in films were not of themselves inimical to EU rules on free movement and anti-competitive agreements with the ECJ saying “The provisions of the Treaty relating to the freedom to provide services do not preclude an assignee of the performing rights in a cinematographic film in a Member state from relying upon his right to prohibit the exhibition of the film in that State without his authority, by means of a cable diffusion if the film so exhibited is picked up and transmitted after being broadcast in another Member State by a third party with the consent of the original copyright owner”