THE COPYCAT - takedowns, takeaways and turnarounds

Is Aereo on the way back? Eight months after losing its legal battle with television networks, the failed watch-TV-on-the-Internet startup held an auction for its assets - and interestingly its trademarks and customer list, which went to TiVo for the bargain price of $2 Million.  What could TiVo do with these assets?  Well on Forbes Bill Rosenblatt suggests this: "Here’s an intriguing possibility: TiVo could be looking into offering an Aereo-like service but one that’s licensed by TV networks".

German-based Total Wipes Music Group hit the news recently after issuing a number of mistaken (and in hindsight rather ill judged attempts) to remove entirely legal content published by the likes Walmart, Ikea, Fair Trade USA and Dunkin Donuts using the DMCA takedown procedure - to seemingly protect content it manages. The company apologised on its Facebook page on 23rd February saying: "Due to technical servers problems on the first February week our script sent hundreds DMCA to hundreds domains not related at all any copyrights of our contents. It was our fault, no doubts about it. The DMCA is a serious issue and it must be carefully managed. We contacted most of these domains but it was too late, the DMCA had already been sent. Google rejected most of these wrong DMCA but we totally understand the damage of it for small and medium companies that have to remove and manage them manually. It was a bug just on that week. However, our Antipiracy system has been taken down a week ago in order to add more improvements and avoid any future sending of wrong DMCA. Our apologies again for all sites involved and thanks to all persons that reported us the issue. However, it seems a glitch happened again, this time in the form of a attempt to protect an album called "Cigarettes" on the Mona label - which ended up targeting  an article on how use PGP on the Mac - published by none other than the EFF - which was a duly removed by Google. But TorrentFreak has an interesting take on this - and apart from amending legislation to allow for habitual abusers of the DMCA and other notice systems to be banned - shouldn't those who issue mistaken takedown notices be subject to damages - and criminal charges? With the headline "Monopoly Fraudsters Need To Go To Jail With Heavy Damages, Torrent Freak opines: "It’s a complete mystery why this isn’t a criminal behavior. The fact that it isn’t is why it continues and harms innovation, creativity, free speech, and the Internet. The Swedish Pirate Party had a very clear policy on crimes like this: if you lied about holding an exclusive right to something, the same penalty that would have applied to an infringer of that exclusive right would instead apply to you. This is only fair, after all: you are infringing on the distribution of a creative work by dishonest means. For repeat offenders, or organizations that committed this crime on a commercial basis or commercial gain, like that idiot record label in the TorrentFreak story – they would be declared criminal organizations and have all their assets seized. The individuals doing so for commercial gain would go to jail for a couple of years". The Total Wipes website currently says this" The Public Area of this website is undergoing upgrading works. We apologise for any inconvenience caused. Thank you for your patience.

MegaUpload founder Kim Dotcom has returned to court in new Zealand in an attempt secure more of the monies seized when his former company was shutdown by US authorities in 2012. Prosecutors in America, and the US music and movie industries have argued that, if their civil litigation against MegaUpload is successful, that money will be needed to pay damages to copyright owners. Dotcom had been granted around $15,000 a month from funds seized in New Zealand to cover living costs, Dotcom now says he is "broke and destitute", and needs to increase his monthly allowance to $152,000, plus extra monies to cover legal fees of up to $3 million. His New Zealand legal team quit last year because over unpaid fees and the court is bound to ensure the Mega founder's new legal reps can be paid as he continues to fight efforts by the US to extradite him to face charges of criminal copyright infringement there.

In the U.S. a picture by Robin Morris which was previously exhibited at the Trunbull Library has been removed amidst claims that bogus worries about copyright were being used to censor the work by those who objected to the painting on religious grounds - not least because the painting contains a reppresentation of Mother Teresa alongside several famous women in history, including Margaret Sanger - the birth control activist, sex educator and founder of Planned Parenthood. The Library said they were not insured against claims of copyright infringement, and explained the take down saying "In recent weeks, independent organizations have alleged potential copyright infringement with the use of Mother Teresa’s image in one of the pieces of artwork”. The Gallery also said it was concerned it lacked covef for any potential liability should the paintings be damaged, stolen or destroyed. The Town's first Selectman Tim Herbst said “After learning that the Trumbull Library Board did not have the proper written indemnification for the display of privately-owned artwork in the town’s library, and also being alerted to allegations of copyright infringement and unlawful use of Mother Teresa’s image, upon the advice of legal counsel, I can see no other respectful and responsible alternative than to temporarily suspend the display until the proper agreements and legal assurances are in place,” adding. “I want to make it clear that this action is in no way a judgment on the content of the art but is being undertaken solely to protect the town from legal liability based upon a preliminary opinion from the town attorney.” The owner of the pictures, Richard Resnick, recently has sent the Library and the Town an email, stating the Town would not be responsible for any legal action or damage to the paintings. More here.

A U.S. dentist who used a privacy agreement to assert a copyright claim over a peeved patient's review of his practice to try and censor critiism online has lost a court case. The patient, who claimed he had been over charged and that the dentist had "screwed up submitting his claims to his insurer", has now been awarded $4,766.00 after a default judgement by a U.S. District Court in the Southern District of New York. The Judge said that no copyrght claim could be made as the review was fair use, and held that the prohibition against negative criticism, along with the use of copyright claims to prevent the review from being seen constituted  "breaches of fiduciary duty and violations of dental ethics and are subject to the equitable defenses of unclean hands, and, as to such assignment and assertion, constitute copyright misuse.” More here and the judgment here.

Rappers Wu-Tang Clan have set up a website to run the auction for their album, 'Once Upon A Time In Shaolin' whioch has been released with a single pressing of the 31 track, 128 minute record - the person places the highest bid will buy the lone CD and the box that contains it. And according to the record's producer Cilvaringz, after a 88 year holdback - the owner of the physical CD will be assigned the copyright in the recording as well and could choose to release the album. Cilvaringz told Forbes: "After 88 years the copyright, which includes public and commercial rights, automatically transfers to the owner of the work. [But] it will still be his or her choice at that [point] to release it or not release it". This week 200 people attended the sole public airing on the album at in a heated dome outside New York's MoMA PS1. Guests and journalists were forced to put their cell phones in plastic bags at the front desk to avoid the 13-minute album excerpt from leaking.  According to Wu-Tang leader the RZA, bids have reached $5 million.

IP, gender ... and copyright term

"WIPO Seminar Discusses Intellectual Property And Gender" is the title of a recent post on Intellectual Property Watch which relates to an event this blogger would quite like to have attended. Professor Dan Burk (University of California, Irvine) was the man of the moment, reviewing the most recent empirical research on gender issues in intellectual property law as well as potential ways forward to help ensure equitable systems of promoting innovation and creativity.

Most of the data concerned patents, but the title of the seminar suggested something else to this blogger: if copyright term is based on life expectancy, and the life expectancy of women outstrips that of men by around five years, might not there be a good case for leaving the period of post-mortem copyright protection of works authored by men at 70 years and reducing that for works authored by women to life plus 65 years so that a work might be expected to reach the public haven at the same time without regard to the gender of its author?

There again, problems would arise. For example, would a work co-authored by a man and a woman be affected where the woman outlived the man? And what would be the status of works authored by creators who had undergone gender reassignment, both before and after the reassignment?  Maybe leaving the same period of post-mortem protection for male and female-authored works isn't such a bad thing after all ...

Assignment, rights in a recording and in an underlying work: a need for explanation

Peter Lawton, of London-based Cacophony Ltd write to ask for a bit of guidance. He says:

"I am a music publisher and have been trying to explain the difference between the copyright in the recording and the copyright in the underlying composition to a Polish company. They claim the law is different in Poland and when an artist signs a record contract they automatically assign the composition as well. They use the phrases "economic rights" and "derivative rights" (note: not defined and meaningless to me in this specific regard) to substantiate their claim.

I've been digging around to find something specific but reasonably intelligible to someone who's English is less than perfect (but an awful lot better than my Polish) which explains in either English or Polish -- with English translation so I can check it -- that the two rights are not the same and that EU legislation distinguishes between the two. I thought it would be easy to find but it seems not.

If anyone feels in the mood to give me bonus I also need to explain that covering a song does not mean the copyright in the composition is automatically acquired by the performer as well.

Responses, anyone?

Shukran Allah: when it pays to get there first

B4U Network (Europe) Ltd v Performing Right Society Ltd is a decision last week from the Court of Appeal (Civil Division) for England and Wales. You can find it at [2013] EWCA Civ 1236. This was an appeal by B4U against the decision  of Mr Justice Vos at [2012] EWHC 3010 (Ch) to grant summary judgment in favour of the PRS in its copyright infringement claim which was noted on the 1709 Blog here.

In 2004 the PRS, being a society formed to protect the copyright in musical works, had entered into a written agreement with two composers of songs for Bollywood films, Salim and Suleiman Merchant. By this agreement, copyright that the Merchants "may acquire or own" while remaining members of the society was assigned to it. In 2008 the Merchants were commissioned by Indian producers Dharma Productions to compose the music and lyrics for the film Kurbaan. Under that agreement, the rights in relation to musical works composed for the film vested in the film's producer and included all present and future works arising out of the contract and covered all territories of the world.

B4U admitted that it had broadcast a song, Shukran Allah, from Kurbaan on its UK music channel; the PRS inevitably proceeded against it for infringement on the basis that copyright had vested in it by virtue of its agreement with the Merchants.  Vos J granted summary judgment on the basis that B4U had no prospect of successfully defending the claim in relation to the song.  B4U was not particularly happy at this sudden outcome, maintaining that the copyright in the song was nothing to do with the PRS at all.  Said B4U, at the very moment that Kurbaan was composed, ownership of the copyright was instantly transferred to Dharma by virtue of the Copyright, Designs and Patents Act 1988 s.91(1) -- the bit that deals with assignment of future copyrights.  Since copyright in the song was never owned by the Merchants, argued B4U, it fell outside the scope of those works that were assigned to the PRS by the 2004 agreement.

The Court of Appeal (Lords Justices Moses, Kitchin and Underhill) dismissed B4U's appeal. How so?

 When the Merchants entered into their arrangement with the PRS in 2004 and their subsequent commissioning agreement with Dharma in 2008, the song had not yet been composed. Both agreements -- as the parties accepted -- accordingly took effect as equitable assignments of a future copyright.

If the song came within the scope of the equitable assignment to the PRS under the 2004 agreement, under the rules of priority that assignment, being the first in time, took priority over the purported assignment under the 2008 agreement with Dharma.

What rights were assigned to the PRS? The answer was future rights, namely those which the Merchants "may" own. That category of future rights which the Merchants assigned was not weighed down by any requirement that, once the work was created, the rights must be owned by them, since the 2004 agreement did no more than refer to rights capable of being owned by them -- and, at the time the agreement with the PRS was struck, it was beyond argument that the Merchants' rights in music they were yet to compose might be owned by them.

On a historical note, in every Copyright Act since 1911, the author had always in general been the first owner of the copyright, which would make it unnecessary to be concerned as to whether the Merchants ever became owners of the copyright. However, the court was prepared to accept that the effect of s.91(1) was to vest both legal and equitable title to the rights in the song, on its creation, in the first assignee in time. On that basis, those rights now vested in the PRS since they were rights which, as at the date of assignment, the Merchants might have owned.

Kurbaan here
Shukran Allah here

Can you pre-empt an assignment of future copyright?

Performing Right Ltd v B4U Network (Europe) Ltd is a Chancery Division decision dating back to 22 October, but this blogger has only just got round to dealing with it.  The judge, Mr Justice Vos, is now one of the regular IP judges in England and Wales.  The analysis below is based on a note published on subscription-only service Lawtel; the decision is an extempore one which is not available on BAILII.

The PRS had entered into contracts with two song composers under which, inter alia, copyright which the composers "may acquire or own" while remaining a member was assigned to the PRS. After entering that agreement, the composers entered into a commissioning agreement with Indian producers to compose the music and lyrics for a film. It was accepted by all that the commissioning agreement was a contract for the song writers' services as composers. Under that agreement, the rights in relation to musical works composed for the film (i) vested in the film's producer, (ii) included all present and future works arising out of the contract for services and (iii) covered all territories of the world.

The composers subsequently notified the PRS of the composition of a song which had, as B4U conceded, been broadcast on its United Kingdom music channel. The PRS claimed that, as copyright had vested in it under the Copyright, Designs and Patents Act 1988 (CDPA) s.91(1) by virtue of a future assignment, B4U's broadcast infringed its copyright because B4U did not hold a valid licence from it.

In proceedings before Vos J in which the PRS sought summary judgment, the court had to construe the assignment clause in the PRS agreements and to determine whether there was a material difference between an assignment of future rights and a present assignment of copyright in all future musical works. Said the PRS, this was a distinction without a difference: the relevant words in the PRS agreement dealt with the present assignment of future or prospective copyright. No, said B4U: the distinction was one of significance.  In this case, the argument went, the assignment to the PRS was subject to a condition precedent, this being the acquisition of ownership -- which could not take place until after the song rights had been assigned to the film's producer -- and that the copyright in the song therefore passed to the film's producer under the commissioning agreement without ever vesting in the PRS at all.

If you have had to read this paragraph several times to satisfy yourself either (i) that you have understood it or (ii) that this argument is unintelligible nonsense, don't worry, you are not alone ...

Vos J must have taken a deep breath before deciding that this was something he could decide. After all, as he observed, if the court was satisfied that it had all of the evidence necessary for the proper determination of a point of law, and that the parties had had an adequate opportunity to address it in argument, the court should jolly well grasp the nettle and decide it.  But how?

The court's task was to construe the two assignments: the agreements with the PRS agreements and the commissioning agreement. In doing so, it could be said that, unless the later-in-time commissioning agreement had already whisked away the copyright from under the noses of the PRS, the PRS agreements, being the first assignments in time, would prevail.

In reality, Vos J found, the commissioning agreement did not whisk away any copyright in the song. The relevant words in the PRS agreements were not a condition precedent but a present valid assignment of future rights and, as the PRS maintained the defence was based on a difference without a difference. Taking a look at the CDPA's s.11 (which dealt with ownership of authors' works) and s.91 (which dealt with assignment), he affirmed that there was an effective assignment to the PRS of future copyright where it vested in the two composers under s.11, where the first in precedence was the first in time. This result was not commercially absurd, as had been suggested, but rather was the outcome that was to be expected. The PRS agreements were contracts to allow the PRS to collect royalties for music in the UK as first owners of copyright; they did not contain a condition precedent.

Since there was no real prospect that B4U could defend that part of the infringement claim, judgment was given for PRS.

Communication without implication: when should a doctor sue?

Earlier this month, in Wilkinson v London Strategic Health Authority [2012] EWPCC 48, a decision of the Patents County Court for England and Wales, Judge Birss QC had to rule on a dispute over the ownership of copyright in training materials which were used for teaching communication skills to doctors, nurses and other staff in the field of cancer.

London, made easy ...

Dr Susan Wilkinson developed an approach to communication skills training --"the Wilkinson Variant" (WV) [note: there are three such approaches, the other two being the Maguire Variant and the Fallowfield Variant. The Wilkinson Variant is aimed at nurses, Fallowfield at doctors and Maguire at any generic healthcare professional]. Subsequently, in the summer of August 2007, Dr W signed an agreement with the London Strategic Health Authority (SHA) for a project to produce a 'connected programme', this being a unified national approach to advanced communication skills training for doctors, nurses and other staff ('ACST'). By Clause 6.6 of this agreement:

"All intellectual property rights associated with any intellectual property arising from the performance of the Services and the documents and other work prepared by the Consultant pursuant to this Agreement shall belong to SHA". 

Eventually a bundle of materials was produced which included some text that had been derived from the WV. According to Dr W, she and no-one else owned the copyright in various training materials relating to her original works: the SHA had infringed her copyright by using that material. Two SHA documents were in issue: the 'ACST Facilitators Manual' and a 'learner pack' (the SHA works).

The issues for consideration were as follows: (i) did Dr W own the copyright in her WV materials? (ii) To what extent were the SHA works derived from them? (iii) Could the 2007 agreement be interpreted as assigning Dr W's existing copyright in her already-created works to SHA? (iv) did the SHA have the benefit of an implied licence to use those works?  Dr W maintained that any licence granted to the SHA in respect of the project was limited to the purposes of the project which had been made known to her in advance, on the basis that the SHA could exploit the works within the National Health Service -- but no wider than that.

Judge Birss QC held that the copyright did indeed belong to Dr W, but that the SHA had not infringed it.  In his view:

* the copyright in the documentation of the WV belonged to Dr W at the time when the 2007 agreement was signed -- and the SHA works in question included significant extracts from those works with the consequence that the reproduction of those works would infringe her copyright  -- unless there had been a transfer of that copyright or a licence.

* On the facts, it was clear that Clause 6.6 did not operate as an assignment of any of Dr W's pre-existing copyright in the WV to the SHA. The effect of that clause was prospective, not retrospective.

* Nor could an assignment of her copyright be implied.  The implication of such a contractual term should only be made where it was necessary, and even then only to the extent that it was necessary to give effect to the intention of the parties to the contract, but not more than that, and a minimalist approach was therefore called for.

* In the circumstances, the SHA did have the benefit of an implied licence to use the WV in relation to work done under the 2007 agreement. This was because Clause 6.6 showed that it was the intention of both of the parties that the benefit of the copyright in work created under that agreement would be enjoyed by the SHA --  and no limit was placed on the SHA's enjoyment of that copyright.

* There was no clause which provided that Dr W was to have any right of control or veto what the SHA did with the project.

Last Friday there was a sequel to this, in Wilkinson v London Strategic Health Authority [2012] EWPCC 55. Both parties came before the court to argue the question of costs because, unsurprisingly, they could not agree who had won.  Dr W thought she was the victor because the court had acknowledged her ownership of the copyright, while the SHA felt they had won, having been exonerated in the copyright infringement action. The matter was complicated by the fact that the litigation commenced before the High Court and that it could have been concluded more swiftly if Dr W had cooperated with a without-prejudice attempt by the SHA's lawyers to clarify some of the issues in question in the hope of keeping costs down.

In the end, Judge Birss QC did not actually say "a plague on both your houses", but an element of that school of thought was reflected in the judge's conclusion when he said:

"... the order I will make is that the defendant must pay 27.5% of the claimant's costs of these proceedings and the claimant must pay 35% of the defendant's costs ... ".

This blogger does rather feel that this case could have been avoided entirely, or its effects greatly minimised, if the parties had directed their communication skills more appropriately in the direction of each other at an earlier stage.

Assignment of copyright: "done… thanks!"

A quick post on assignment of copyright further to the decision in MVP Entertainment, Inc.,

v Mark Frost which was handed down in the Court of Appeal of California last week.

In this case Frost wrote a book called "The Match: The Daythe Game of Golf Changed Forever". Copyright in the book was assigned to Good Comma Ink, of which Frost was the sole owner, however a company called MVP was interested in acquiring rights in the book to make it into a film.

© kulicki

In late 2008 and early 2009, the parties' lawyers corresponded about MVP's potential purchase of copyright in the book and on 30 April 2009 MVP's lawyer sent Frost's lawyer an email proposing certain terms and saying: "Let me know if this is okay and we'll send paperwork . . . .". Frost's lawyer, Mr Wertheimer replied saying: "done . . . thanks! Werth." On the face of it this seems an ambiguous email, however the parties proceeded: in May MVP's laywer sent Wertheimer an agreement which he wanted to have signed by 17 or 18 August, however no formal agreement was signed.

At some point in the summer of 2009, Frost met with the president of MVP and shortly afterwards told him he did not want MVP to make his book into a film. This caused MVP to sue Frost for breach of contract, promissory estoppel, declaratory relief, and negligent misrepresentation. MVP's overarching claim was that the parties entered a contract or promised MVP they would enter into a contract to allow MVP to make a film of Frost's book. Essentially they were arguing that Wertheimer's email saying "done . . . thanks! Werth" was signed by Wertheimer and created a binding contract. This may seem a far reaching claim, so readers will not be surprised by the court's decision.

Wertheimer's response to the claim was that his email "was intended to simply note that the parties were in accord on the broad economic terms of a deal" and that by signing off as "Werth" he had not intended to sign a contract or to bind himself or Frost to anything. Frost added that although Wertheimer negotiated deals on his behalf, he never signed contracts for him and that in this instance Frost had not given Wertheimer the authority to assign copyright in his book.

In the US, as in the UK, assignment of copyright must be done in writing and must be signed (s.204(a) of the US Copyright Act and s.90(3) CDPA 1988).

At first instance the trial court granted summary judgment concluding that a transfer of ownership was invalid unless signed by the owner or the owner's duly authorized agent. The court further concluded that even if express authority were not required, Frost had done nothing to suggest that Wertheimer had authority to transfer the property.

MVP appealed this decision saying that Wertheimer had actual or ostensible authority to enter into the alleged contract. The Court of Appeal held that it was undisputed that Wertheimer did not have actual authority to transfer the copyright in the book, and it was actual rather than ostensible authority that was required under the US Copyright Act. Because MVP failed to raise a triable issue of fact showing that Wertheimer was Frost's duly authorized agent, its remaining arguments could not defeat summary judgment.

This is a simple case which serves to remind us that although assignment of copyright is very straightforward in the US and the UK, it pays to get it right: assignment needs to be signed by or on behalf of the owner of the copyright and it needs to be done in writing. Also additional requirements may apply in other jurisdictions and there may also be more fundamental differences to consider. In Germany, for example, copyright cannot be assigned but can be bequeathed, and in France future copyright cannot be assigned.

Limited term assignments: a reader writes ...

One of this blog's readers has posed the following question and would welcome responses (posted below as comments, please!):

"In an assignment of copyright for a limited period (where ownership is assigned for a period of, say, two years and thereafter the ownership will revert back to the assignor), is it possible, or reasonable, to insert a clause into the assignment agreement that the assignment (which is essentially a sale of the copyright) is personal to the assignee and shall not be directly or indirectly transferred, disposed of, encumbered or shared with any party, other than on the express terms of the assignment agreement? Can the new owner of the copyright, albeit only for a limited two year period, be restricted in this manner?"

When commenting, please indicate -- if it's not immediately apparent -- the jurisdiction from which you hail.

How small an area can a copyright assignment cover?

I've been asked a question and I don't offhand know the answer so I thought I'd share it with readers of this weblog:

"Is there any legal basis for the proposition, expressed by some commentators, that copyright may not be assigned in respect of a geographical area or territory that is smaller than a single country?"

If you can give me any leads, whether in terms of case law or statute, in any jurisdiction, I'll be delighted to receive them. Please post your thoughts below (this is preferred, since it shares the information with other blog readers) or email them to me here.