Thursday 28 July 2011

Royalties, broadcasts and underlying works: an Indian epic

From Amit Jamsandekar comes news of an epic Indian copyright ruling, all the way from the Bombay High Court, Music Broadcast Private Limited v Indian Performing Right Society Limited, before S. J. Vadzifdar J. Let Amit explain:
"After a very long time we have witnessed a trial of an Intellectual Property dispute in the Bombay High Court. Most of the reported judgments on Intellectual Property disputes in India are decisions on interim application for injunction. Therefore there was a general direction by the Supreme Court to all Courts to finish the trial within six months instead of deciding an interim application. In practice this decision of the Supreme Court is not followed because it is practically not possible to finish a trial within a period of six months.

The radio broadcasters and the Indian Performing Rights Society (IPRS) are in a fight over the issue of payment of royalty to IPRS when the ‘sound recording’ is ‘communicated to the public’ in many proceedings before various courts in India. The members of the IPRS are the authors of literary and musical works. The IPRS has always claimed that they are entitled to claim royalty in respect of their ‘work’ which is embodied in the sound recording when such sound recording is communicated to the public through broadcast on radio. IPRS claims that, in the absence of a licence from IPRS, such communication of sound recordings amounts to infringement of copyright of the members of the IPRS in the underlying works embodied in the sound recording, i.e. the literary and musical works. The radio broadcasters have valid licences to broadcast the sound recordings from Phonographic Performance Limited (PPL). The sound recordings owners are the members of the PPL.
The claim of the IPRS has always been that, even after a valid licence from PPL, the radio broadcasters are also required to take a licence from IPRS because, when the sound recording is communicated to the public, the underlying works embodied in the sound recording are communicated to the public.

This issue came up before the Bombay High Court in a civil suit filed by Music Broadcast Private Limited against the IPRS seeking relief, inter alia, by a declaration that IPRS is not entitled to claim and that the Plaintiff is not liable to pay any royalty to the IPRS when the sound recording is communicated to the public. The Plaintiff sought other relief which included an order of permanent injunction restraining IPRS from interfering with the broadcast of the sound recordings. The other relief in respect of the disputes of licence fees already paid and their refund, sought by the Plaintiff, were not within the jurisdiction of a civil court and the Copyright Board constituted in the Copyright Act, 1957 has an exclusive jurisdiction. Therefore, the Court dismissed the claim of the Plaintiff in respect of the disputes of licence fees already paid and refund thereof as sought by the Plaintiff and other consequential relief.

The crucial issue which is adjudicated and answered by the Court is that IPRS is not entitled to any royalty in respect of the literary or musical work embodied in the sound recording when the ‘sound recording’ is communicated to the public. Justice Vazifdar has analyzed the provisions of the Copyright Act 1957 and accepted the submissions made by Dr Tulzapurkar, Senior Counsel on behalf of the Plaintiff that:

  • The Act recognises only three classes of work viz. (a), literary, dramatic, musical or artistic work; (b) cinematograph films and (c) sound recordings. Each class is independent of the other. Each class of work gives a bundle of right to the owner thereof, which are independent of the other works. The rights therein can be exploited by the owner of the work in each class without the interference by the owners of the works in other class.
  • No class of work is inferior to the work in another class.
  • In sound recordings and cinematograph films, the literary and musical work gets incorporated into it, whereupon independent copyright works, viz.sound recordings and cinematograph films, come into existence and, therefore, rights under Section 14 in respect of each sound recording and cinematograph film come into existence which can be exploited by the owner of the sound recording or cinematograph film without interference from the owner of copyright in the underlying works.
  • The owner of a sound recording has, inter alia, the exclusive right of communicating the sound recording to the public. Though the exercise of such right has the effect of communicating the underlying work, viz. musical or literary work, to the public such communication of underlying works being a part of the sound recording does not amount to infringement of the copyright of communicating to the public, the underlying works. The owner of a sound recording has an exclusive right to communicate the sound recording in any form and such communication in exercise of right under Section 14(1)(e)(iii) cannot amount to infringement of any underlying work in such sound recording.
  • The owners of underlying works incorporated in a sound recording do not have the right of communicating the same to the public as a part of the sound recording.
  • The owner of a copyright in the underlying works retains the bundle of copyrights in them otherwise than as a part of the sound recording.
  • The right of public performance of an underlying work is different from the right to communicate the sound recording in which the musical or literary work is incorporated.
  • The Defendant, therefore, can claim licence fee only in respect of public performance of musical or literary work of its members or in respect of communication of such works otherwise that as a part of other copyright viz. Sound recording or cinematograph film. In other words, the Defendant cannot claim licence fees in respect of public broadcast or communicate to the public, musical or literary works as a part of the sound recording.

The Judge did not accept the last submission of the Plaintiff that, upon the owner of a copyright in musical and literary work permitting the making of a sound recording, his right to make or permit to be made another sound recording containing such work comes to an end.

This judgment is certainly going to change the scenario of music industry in India".
Thanks so much for this, Amit.  Readers can access the 108-page judgment here.

NewzBin2: some reflections

So much has already been written and posted on today's judgment of Mr Justice Arnold in Twentieth Century Fox Film Corp & Ors v British Telecommunications Plc [2011] EWHC 1981 (Ch) ("NewzBin 2") that it is difficult to think immediately of a fresh slant for coverage on this blog.  In short, for those who may have missed it, NewzBin's rather crude attempt to keep its Usenet internet indexing website going has been smitten by an order that internet service provider BT block users from accessing NewzBin's website.  The order actually sought runs like this:
""1. The Respondent [i.e. BT] shall adopt the following technology directed to the website known as Newzbin or Newzbin2 currently accessible at and its domains and sub domains. The technology to be adopted is:
(i) IP address blocking in respect of each and every IP address from which the said website operates or is available and which is notified in writing to the Respondent by the Applicants or their agents.
(ii) DPI based blocking utilising at least summary analysis in respect of each and every URL available at the said website and its domains and sub domains and which is notified in writing to the Respondent by the Applicants or their agents.
2. For the avoidance of doubt paragraph 1(i) and (ii) is complied with if the Respondent uses the system known as Cleanfeed and does not require the Respondent to adopt DPI based blocking utilising detailed analysis.
3. Liberty to the parties to apply on notice in the event of any material change of circumstances (including, for the avoidance of doubt, in respect of the costs, consequences for the parties, and effectiveness of the implementation of the above measures as time progresses)".
A fairly lengthy account of NewzBins 1 and 2 appears on the IPKat here. and the BBC's report is here.

Rights-owners are predictably jubilant at their victory in what is very plainly stated to be a test case (though, curiously and perhaps for subtle strategic reasons, other ISPs which were invited to intervene in these proceedings declined to do so).  A lot of work has gone into preparing the ground for this action. Given the state of the law and the nature of the damage inflicted, the victory was deserved.  In contrast, those who are not rights are owners are equally predictably critical. While no-one appears to have a good word for NewzBin itself, there are wider issues afoot.

Among the more interesting comments is that of Andrew Orlowski, writing for The Register here:
"It's fascinating to hear arguments such as BT's contention that it is not an internet service provider, or that Newzbin2 members were passive recipients, and just happened to have anime and pirate movies pop onto their PCs ... or that after notification from a copyright-holder, an ISP could claim that it hadn't been notified. These are surreal arguments [Andrew's right, and this blogger wishes that this sort of thing would stop. It wastes the court's time, distracts us all from the core issues and does little to enhance the public's image of the legal profession].

The voluntary plan at meetings chaired by Culture Minister Ed Vaizey – one floated by publishers, music and movie industries and the Premier League – permits speedy judicial review of site-blocking on a site-by-site basis. BT was the strongest opponent in those talks – perhaps hoping for a favourable decision from Arnold.

That hasn't been forthcoming.[It surely wasn't likely to be forthcoming either, in the light of the ruling in NewzBin 1 and given that Arnold J is not known to be a fantasy judge]

Site-blocking not only runs contrary to the classic liberal spirit of English law – I have seen no exemption mooted for journalists or researchers – but it also has another consequence. It makes rights-holders look like they're keener on legislation than on creating new markets for content. Despite a smashing victory, they should be careful what they wish for ['creating new markets for content', like 'creating new business models', is becoming an increasingly hopeless cry as it becomes ever more apparent that there are no realistic and sustainable business models without enforceable copyright -- with the possible exception of micropayment schemes -- and no realistically enforceable copyright in the face of technological advance]".
Readers' comments and reflections are welcomed.

Wednesday 27 July 2011

Meltwater: Never mind Infopaq, Court of Appeal preserves old British 'original literary work' test

"Clear, careful and
comprehensive": Mrs
Justice Proudman upheld
on appeal
Today's ruling of the Court of Appeal for England and Wales in The Newspaper Licensing Agency Ltd & Others v Meltwater Holding BV & Others [2011] EWCA Civ 890 has upheld the ruling of Mrs Justice Proudman (noted on this blog by Hugo here) that end-users of media monitoring service Meltwater required end-user licences to access and use search results consisting of the headline of each article which mentions the search term (which hyperlinks to the article), the opening words of that article and an 11-word extract showing the context in which the search term appears.

A longer description of the factual background appears on the IPKat this morning, here. This post focuses on what the Court of Appeal said about the Court of Justice of the European Union ruling in Case C-5/08 Infopaq, which has caused a good deal of consternation in copyright circles of late. The question before the Court of Appeal at this juncture was whether a headline could be protected by copyright as an original literary work. Said the Court:
"19. The starting point [is] s.1(1)(a) CDPA. To satisfy that subsection the headline must be "a work" and both "original" and "literary". A headline is plainly literary as it consists of words. The word "original" does not connote novelty but that it originated with the author. This test was clearly established in the domestic law of England by the decision of Peterson J in University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 approved by the House of Lords in Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273. 
20. The decision of the European Court of Justice in C-5/08 Infopaq International A/S v Danske Dagblades Forening [2009] ECDR 16 related to questions of infringement but in paragraphs 33 to 37 the Court considered the conditions necessary to attract copyright protection. The Court said: 
"33 Article 2(a) of Directive 2001/29 [the Information Society Directive] provides that authors have the exclusive right to authorise or prohibit reproduction, in whole or in part, of their works. It follows that protection of the author's right to authorise or prohibit reproduction is intended to cover 'work'. 
34 It is, moreover, apparent from the general scheme of the Berne Convention, in particular Article 2(5) and (8), that the protection of certain subject-matters as artistic or literary works presupposes that they are intellectual creations. 
35 Similarly, under Articles 1(3) of Directive 91/250, 3(1) of Directive 96/9 and 6 of Directive 2006/116, works such as computer programs, databases or photographs are protected by copyright only if they are original in the sense that they are their author's own intellectual creation. 
36 In establishing a harmonised legal framework for copyright, Directive 2001/29 is based on the same principle, as evidenced by recitals 4, 9 to 11 and 20 in the preamble thereto. 
37 In those circumstances, copyright within the meaning of Article 2(a) of Directive 2001/29 is liable to apply only in relation to a subject-matter which is original in the sense that it is its author's own intellectual creation."
Although the Court refers to an 'intellectual creation' it does so in the context of paragraph 35 which clearly relates such creation to the question of origin not novelty or merit. Accordingly, I do not understand the decision of the European Court of Justice in Infopaq to have qualified the long standing test established by the authorities referred to in paragraph 19 above".
Good news for those who have been uncomfortable with Infopaq. Bad news for those who don't like the idea of headlines being potentially protectable as copyright works.

Q: when is a helmet not a sculpture? A: when it's not an elephant either

British judges' ability to know
one when they see it is of little
assistance to them when faced
with a charging litigant ...
The United Kingdom Supreme Court gave its ruling this morning in the "Star Wars helmet" copyright infringement case of Lucasfilm Limited and others (Appellants) v Ainsworth and another (Respondents) [2011] UKSC 39.  The decision, which has already attracted substantial media attention (see eg the BBC here), affirms that the Star Wars Stormtrooper helmet is not a "sculpture" under the Copyright, Designs and Patents Act 1988 but that Lucasfilms may bring proceedings in the United Kingdom to sue for infringement of US copyright in the United States. According to the Supreme Court's Press Summary:
The appeal raises two distinct legal issues:
(1) The definition of “sculpture” in the Copyright, Designs and Patents Act 1988, and, in particular, the correct approach to three-dimensional objects that have both an artistic purpose and a utilitarian function;
(2) Whether an English court may exercise jurisdiction in a claim against persons domiciled in England for infringement of copyright committed outside the European Union in breach of the copyright law of that country?
This appeal is concerned with intellectual property rights in various artefacts made for use in the first Star Wars film, “Star Wars Episode IV – A New Hope”. The most important was the Imperial Stormtrooper helmet. It has been treated as decisive for the outcome of the case. ... The film’s story-line and characters were conceived by George Lucas. Between 1974 and 1976 his concept of the Imperial Stormtroopers as threatening characters in “fascist white armoured suits” was given visual expression in drawings and paintings by an artist, Mr Ralph McQuarrie, and eventually three-dimensional form by Mr Andrew Ainsworth. He produced several prototype vacuum-moulded helmets. Once Mr Lucas had approved the final version, Mr Ainsworth made 50 helmets for use in the film. 
The Appellants (here referred to collectively as Lucasfilm) own copyrights in the artistic works created for the Star Wars films. They have built up a successful licensing business, including licensing models of Imperial Stormtroopers. In 2004 Mr Ainsworth used his original tools to make versions of the Imperial Stormstrooper helmet and armour for sale to the public. ... He sold between $8,000 and $30,000 of the goods in the United States. Lucasfilm obtained judgment against him in the United States. It also commenced proceedings in the English High Court, including claims for infringement of English copyright and claims under US copyright law. 
By the time of the Supreme Court hearing, Lucasfilm claimed only that the helmets qualified for
copyright protection under English law as “sculptures” and not as “works of artistic craftsmanship” [realistically, "works of artistic craftsmanship" was never a runner given the body of existing case law on the subject, including Hensher v Restawile [1976] AC 64 and Merlet v Mothercare [1986] RPC 115]. 
In terms of section 4 of the Copyright Designs and Patents Act 1988, copyright subsists in ... original “artistic works”, which includes a “sculpture”, irrespective of artistic quality. Whether a helmet was a “sculpture” is significant for two reasons. If it is, any copying of the helmets which Mr Ainsworth had originally produced would infringe Lucasfilm’s copyright. It is also relevant for the defences which are available. To produce a helmet by working from a drawing of it infringes copyright in the drawing. However, it is not an infringement of any copyright in a design document which records a design for anything other than an artistic work to make an article to the design or to copy an article made to the design: section 51 1988 Act. If the helmet did not qualify as sculpture, and was therefore not an artistic work, Mr Ainsworth had a defence to an English copyright action based on infringement of Mr McQuarrie’s graphics.

The High Court dismissed the claims for infringement of English copyright: the helmet was not a
work of sculpture and therefore Mr Ainsworth had a defence under section 51. It held, however, that the United States’ copyright claims were justiciable and that US copyright had been infringed. The Court of Appeal allowed Mr Ainsworth’s appeal. It agreed that the helmet was not a work of sculpture but held that the US copyright claims were not justiciable. Lucasfilm appealed to the Supreme Court.


The Supreme Court unanimously allows the appeal. It holds that the helmets were not sculptures but that the US copyright claims were justiciable in English proceedings. Lord Walker and Lord Collins [both of whom have some IP experience before their elevation to the Supreme Court] give a joint opinion, with which the other members of the Court agree. 
Sculpture issue 

The court reviews the legislative history of the current statutory provisions and previous authorities as to the meaning of “sculpture”: [14] – [35]. In the High Court, the judge had formulated various “guidelines” as to the meaning of sculpture. For example, some regard must be had to the normal use of the word “sculpture”. The concept can apply to things going beyond what one would normally expect to be art, but it is inappropriate to stray too far from what would normally be regarded as sculpture. Not every three dimensional representation of a concept qualifies: [36] – [37]. Lucasfilm contended that the helmet was sculpture as it had no practical function at all. Its purpose was wholly artistic, to make a visual impression on the filmgoer. That was not, however, how the trial judge and the Court of Appeal had viewed matters. Mann J found the helmets to be a mixture of costume and prop and that their primary function was utilitarian, namely to express an idea as part of character portrayal in the film. He held that this lacked the necessary quality of artistic creation required of a sculpture. This type of judgmental conclusion was one with which appellate courts should be slow to interfere, as Lord Hoffmann observed in Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1
WLR 2416: [40] – [45] [The court in that case seemed more concerned with the Court of Appeal's increasing tendency to substitute its own findings of fact and impression for those of the trial judge -- but the question still remains as to whether the trial judge should need to form an opinion as to whether the primary function of something which may or may not be a sculpture is utilitarian]. The judge did not err in law or reach an obviously untenable conclusion: [46]. 

It would not accord with the normal use of language to apply the term “sculpture” to, for example, a 20th century military helmet used in the making of a film, however great its contribution to the artistic effect of the finished film. The argument for applying the term to an Imperial Stormtrooper helmet was stronger, because of the imagination that went into the concept of the Stormtroopers. But it remained the Star Wars film itself that was the work of art. The helmet was utilitarian in the sense that it was an element in the process of production of the film: [44]. The Court noted that the law did not apply an “elephant test” [ie it might be difficult to define but you know one when you see one], but instead a multi-factoral approach: [47]. 
Justiciability of foreign copyright claim 

The Court of Appeal had held that the common law rule in British South Africa Co v Companhia de Moçambique [1893] AC 602 that an English court had no jurisdiction to entertain an action for the determination of title to, or the right of possession of, foreign land, or the recovery of damages for trespass to such land, was an example of a general principle which applied to claims for infringement of foreign intellectual property rights. The Supreme Court concludes that, provided there is a basis for in personam jurisdiction over the defendant, an English court does have jurisdiction to try a claim for infringement of copyright of the kind involved in the present action: [105]".

Monday 25 July 2011

Copyright and creatives: Leigh Harrison's Open Letter

I have recently been in correspondence with singer-songwriter Leigh Harrison, who is the author of the very powerful statement contained in her Open Letter, which this blog reproduces in full (with Leigh's permission, in case anyone was about to ask). I think it is particularly interesting because it summarises and reflects a lot of the anger and frustration felt by creators and rights-owners and also because it sheds some light on the contrast between the two views commonly held of copyright. Is copyright a tool in the hands of avaricious and vindictive corporations, intent upon crushing freedom of expression and spoiling the cultural development of society -- or is it a fragile reed, clutched by creators and performers in a desperate search for some means of retaining control and possible income once they do the one thing they aspire to do, and share their thoughts and feelings with others?
"An Open Letter: 
This letter is one of the most difficult letters I have ever written, but I can no longer remain silent in the battle between those who wish to earn an honest living, and those who would seek to destroy the livelihood of all artists. Currently, use of the internet has made many powerful in ways they can copy information and music indiscriminately, but the artists are powerless to earn a living when the bedrock of their living -- copyright -- is eroded. But -- as Paolo Freier said, "In the battle between the powerful and the powerless, to not take sides is to side with the powerful."

I am a songwriter and musician. I have one CD available, but the second one has been delayed for several years by numerous factors, financial difficulties, among them. In the several years since my first CD was released, I have seen the growing problem of record piracy, which has continued, and has, perhaps, even grown, while computers and the internet make copying more possible. After reading hundreds of online articles and reading numerous comments from people on both sides of the argument (those who want to earn money for their music -- or books, or films, etc., versus those who think the internet exists for them to have anything and everything for free) I have decided that it is high time for someone to take a stronger stand in support of the arts and the artists, like myself, who only wish to earn a living from our work.

After all, if someone believes my work -- which is my music -- is something one feels they should be allowed to copy for free, why shouldn't I, likewise, believe I have the right to go into their home and steal their books, or their jewelry, or other possessions? Or into their garage and steal their car? Or into their store, and steal their electronics, their food, their products? However, I am not about to steal their possessions; therefore I want the same safety for mine. Obviously, if everyone in society has the right to protection of their possessions, so, too, do all creative people, whose possession is their intellectual property, which the government is supposed to protect via securing our copyright.

As a result -- and although I have spent several years writing, recording, and mixing my CD, at considerable expense -- I have decided that without the support of the government making a more stringent defense of our copyright laws, I will not release my CD. There are some precedents for my action. In the 1940s, the music industry went on strike (Frank Sinatra was a strong advocate, working with the Musician's Union) to ensure that radio and other recorded performances made monies for musicians. In her brilliant books, Ayn Rand talks about the fact that the creator deserves the right to ultimately control his or her work, especially in her novels Atlas Shrugged and The Fountainhead. Recent arguments on the subject in the ASCAP blog by Dean Kay (The Daily Brief) have pointed out that while some computer groups believe that everything should be free, groups of artists are already beginning to join the fight against theft of their livelihood. Refusing to release my CD is the way I have chosen to respond in this war between the forces of art and the pirates.

I stand with all artists. In my decision to not offer my CD in the marketplace, despite the years of effort it has taken to create, I validate my belief that if we cannot make a fair living from our work because of piracy, we should not allow the piracy to take place, and we must fight piracy's contemptible affront to our art and our livelihood. My way of doing this is to keep my CD unreleased until I am convinced that the country I live in, and the government whose job is to protect me, will do so by rigorously protecting my copyright. I am not yet convinced of that.

This is, of course, a very personal decision. However, if I am an army of one, I still believe that I am doing the right thing. And, I call upon all artists to make a similar statement to the world of thieves and pirates, by withholding their work until they can be assured of fair recompense for their intellectual property. Please understand that I am not asking creative people to stop creating -- that would be an impossibility for those of us who live by our minds and hearts, which are constantly swirling with the visions of the worlds we first urge into reality through our vision, and then, which we establish in music, words, or images. I am, however, suggesting that to withhold the work from the marketplace until we are assured of a fair return for our work -- via stronger copyright enforcement -- may be an option. It is certainly the option I have chosen at this time, despite my incredible pride in my second CD, and my gratefulness to the wonderful, talented musicians who worked on it with me, and who are probably going to be as disappointed as I am that it will not be for sale at this time.

I realize that not all artists may agree with my decision. For those who recently released a CD/book/film, it is too late to keep it from the hordes of pirates. For those who are preparing a CD -- or book, or film -- it is something to consider. Those who feel that this action is more than they can do are certainly free to release any material they wish. But, if enough artists, musicians, writers, filmmakers (and others whose intellectual property has been bootlegged and continues to be stolen by the thoughtlessness of anyone who thinks they can steal with impunity) -- if enough artists join with me, then maybe a way can be found to stop the thievery. After all, if the internet can be used to trace the progress of the tiniest bits and bytes of financial data, there ought to be a way to use it to trace the pirating of art. It is time to make the government and the internet work to protect artists, rather than shield those who devalue our work via theft.

If you do not agree with my beliefs, you are free to do so. But -- if you support the rights of artists to have their copyright protected -- please forward this letter to all the other artists and musicians you know.

Leigh Harrison". 
Readers' comments are warmly welcome.

Sunday 24 July 2011

Logos and textbooks

Who needs a trade mark when copyright will do? Two recent judgments may be of interest to those for whom the copyright of simple, perhaps unregistered, trade marks could be advantageous.

In March, Vivienne Westwood successfully sued an online clothing seller for passing off, trade-mark infringement and copyright infringement (Vivienne Westwood v Anthony Knight [2011] EWPCC 008). Westwood claimed copyright in five logos. The logos may be distinctive but nevertheless teeter on the edge of copyright protection.

Birss J held that the fancy script plus orb logo was protected by copyright even though its components were not. The orb was not protected (its term having expired under s. 52 CDPA) nor was ‘Vivienne Westwood’ in fancy script. So it must be the juxtaposition of the orb with the type that constitutes the intellectual creation necessary to attract copyright.

Birss J held that an ‘AR’ logo attracted copyright. It was not that Westwood had designed a typeface and that was being infringed. The copyright was in the ‘logo’ or ‘design’. The stylization here is particularly minimal and commonplace – simply squashing two letters together.

Not much more complex is the EDGE logo, the subject of Future Publishing v Edge Interactive Media, [2011] EWHC 1489 (Ch), in which Mrs Justice Proudman held:

‘Dr Langdell submitted that the claimant can have no copyright in its EDGE logo because it is not original over the Franklin Gothic typeface. I do not accept this submission. The stretching of the font was combined with the distinctive slash and projection on the middle bar of the “E”. What is required for artistic originality is the expenditure of more than negligible or trivial effort or relevant skill in the creation of the work: see Copinger and Skone James on Copyright 16th Ed at 3-130 and Ladbroke v. William Hill [1964] 1 WLR 273 at 287. The claimant’s logo is original within this test.’
Last year Proudman J, in NLA v Meltwater, chewed over the impact of the ECJ’s Infopaq judgment on the test for originality, but has now reverted to textbook. Infopaq says that copyright ‘is liable to apply only in relation to a subject-matter which is original in the sense that it is its author’s own intellectual creation’. The 2011 edition of Copinger argues that EU copyright law is unlikely to alter the UK’s approach to originality. But are effort and intellectual creation one and the same thing?

Copinger is unquestionably a very useful book, often cited by judges. But how heavily should textbooks be relied on? In a sense, the doctrine of precedent started out as the doctrine of textbook. It has been argued that it was only when digests of the common law, such as Fitzherbert’s, were published that the doctrine of precedent took shape. In Tudor times, a digest may have been the only source of information about case law. Today we turn to textbooks because there is too much information. That makes them useful starting points, then.

Friday 22 July 2011

Where Philosophers and Pirates Meet

On Wednesday, in "Folk hero and/or cyberthief? The case of Aaron Swartz", a guest piece which was hosted on this weblog, New York attorney and copyright commentator Christopher F. Meatto explained the significance of the move by one of the world's most high-profile internet activists to liberate a large quantity of material held by one of the world's major depositories of academic journals. Little did we imagine that, just two short days later, we would be hosting a sequel, with a successful raid which reportedly targeted the Philosophical Transactions of the Royal Society, which stretch back to 1665. Grateful thanks are due to Christopher for keeping us up-to-date as this theme continues to evolve:
"Civil Disobedience in Academia – Part 2 
The attack on JSTOR’s paywalled academic research library continues with a publicly declared upload of 32 Gigs of JSTOR documents to The Pirate Bay by Greg Maxwell.

(One Twitter user writes “@mulka mulka: RT @joguldi: seriously RT @mathpunk: Greg Maxwell is hardcore.” Another: @n4lle “Wenn das alles so stimmt, dann ist der Greg Maxwell der coolste Typ, von dem ich seit Jahren gehört habe!”)

Maxwell’s upload was made in support of the efforts of internet activist Aaron Swartz, whose United States criminal indictment for mass JSTOR downloads I reported on here on the 1709 Blog earlier this week.

On the facts as reported, Maxwell presents a scenario where JSTOR attorneys (or United States Justice attorneys) may be forced to utilize intellectual property law to enforce expired copyrights of mostly deceased authors on behalf of an alleged non-profit organization (sure, there are ample salaries for its executives).

Swartz most likely erred when he obtained his download materials through a questionable cat and mouse spy vs. spy battle with the M.I.T. network thorugh a series of shifting identities. Maxwell, I assume, made no such mistake.

JSTOR, like many of the music rights holders of the past 10 years, has failed to realize that it still could maintain its business by charging reasonable prices and offering true curation for which its subscribers would gladly pay. If JSTOR just wants to be a paid version of Google, it will fail, Justice Department notwithstanding".

Life after death on Mars: a reader asks ...

One of our readers (let's call him Dave, since that's his name) has just written in with this question:
"I'm interested in writing a book set in the John Carter of Mars universe, created by Edgar Rice Burroughs. The first four books of the Mars series were published in the US prior to 1922, so I believe I'm in the clear from a copyright perspective to put the book up for sale in the U.S. Burroughs died in 1950, so the the remainder of his the books in the series aren't in the public domain globally until 2020 at the earliest.

The sticky wicket is, the Burroughs estate has been rather aggressive in protecting the John Carter 'brand' (as well as Tarzan), by coming at it from a trade mark tack [coincidentally, the Burroughs' Community trade mark application for JOHN CARTER was published only last week].

I'm wondering how likely I would be to get a cease and desist, or worse, if I wrote a book which only referenced the characters and events depicted in the Mars books 1-4. Is there a precedent for this, with estates or companies trade marking the property in such a way that no new works can be created. Or, since the titles I would be referencing are in the public domain here in the states - am I pretty safe if I keep any sales within our borders?"
Readers will instantly spot that this is a trade mark issue, to the extent that the use of characters whose names and possibly likenesses are protected as trade marks may -- or may not -- be a trade mark use if used in the title or narrative of a book. There is also that old favourite question about whether there is such a thing as copyright in a fictional character per se or in the manner in which that character is depicted.  Readers' comments are welcomed, as ever.

There's an entertaining and fairly polemical article which touches on some of these issues by Paul Reeskamp: "Dr No in trade mark country: a Dutch point of view", Journal of Intellectual Property Law & Practice (2010) 5 (1): 29-38 (abstract here). I expect that there's plenty more out there, but Paul's piece sticks in my mind since I had to edit it for publication ...

Thursday 21 July 2011

A Motion for Fair Use

imageThe courthouse for the United States District Court, Eastern District of Wisconsin* is majestic, beautiful, dignified. The 100-year old structure’s granite tower draws eyes upward, past elegantly arched windows and into the clear blue sky.  Marble and ornately carved wood add an air of grandness to the sedate black-robed men and women who spend their days in the building’s courtrooms and chambers.  Sunlight pours into the entrance-way atrium from a glass sky-light high above.  It’s a peaceful place, where footsteps echo down from long open balconies and sophisticated women in well-pressed skirts dart in and out of doors.

But this month, one Federal Judge in Wisconsin had to deal with something far less dignified than his magnificent surroundings.  As Judge Stadtmueller’s opening line explained, “Federal lawsuits seldom touch on such riveting subjects and regard so many colorful parties as the present matter.”  The present matter: a copyright dispute over a song called “What What (In the Butt).”

This is one case where no summary could be as entertaining as the actual judicial opinion, and so it will give the basic copyright issues. You can read the full Brownmark Films, LLC v. Comedy Partners decision for yourself.

Dry Background

Brownmark Films made a ridiculous music video that was a smash hit on YouTube.  South Park (Comedy Partners) featured its own 58-second version of the song, performed by a character named Butters Stotch.  Brownmark brought an action for violation of the US Copyright Act (Section 101) against Comedy Partners.  Comedy Partners filed a motion to dismiss on the grounds that Brownmark’s suit failed to state a claim on which relief could be granted.  (A 12b(6) motion for the Fed Civ Pro junkies out there.)

Defenses Raised

Comedy Partners made 2 arguments in its defense: 1) Brownmark lacked standing to bring a federal copyright suit, 2) the use on South Park was permissible under the doctrine of fair use.

Standing – registration and transfer

In order for a US copyright holder to sue for infringement in a federal court, the work involved must be registered with the US Copyright Office.  And, the person bringing the suit has to have exclusive rights to the work.  The song at issue here was registered and two of the joint authors properly transferred their rights to Brownmark such that he had exclusive rights.  In discussing this issue, the court recognized a circuit split between the 9th and 7th Circuits on whether joint copyright owners can grant an exclusive license.  The court sided with the 7th Circuit, saying joint owners can grant exclusive licenses.  This is probably a good thing since the Eastern District of Wisconsin is in the 7th Circuit.  The court goes on to comment further on a wider rejection of the 9th Circuit’s perspective, noting that it “has been widely lampooned in several respected treatises.”

Fair Use – Parody

Factor 1: purpose and character of the use – “to lampoon the recent craze in our society of watching video clips on the internet that are — to be kind — of rather low artistic sophistication and quality.  The work is transformed by replacing the original performers with a South Park character, and commentary is made on the value of viral videos.  [Tell that to Justin Bieber.]  In favor of Comedy Partners.

Factor 2: nature of the work – “the "nature" of the copyright in question does not help this court assess whether South Park's parody is a fair use.”  Factor ducked.  In favor of, neither side?

Factor 3:amount and substantiality of the portion of the work used – “the use of the copyrighted work in the South Park episode was relatively insubstantial.”  Only a small amount of the song’s lyrics were used.  In favor of Comedy Partners.

Factor 4:effect of the use on the work’s potential market – “there is little risk that derivative work in question would somehow usurp the market demand for the original.”  In favor of Comedy Partners.

The result: dismissal of the suit, with prejudice.

Strange Procedures?

There are some very interesting nuggets hiding in this apparently standard fair use analysis.  The court notes that normally, to bring in materials from outside of the complaint, i.e. the two video clips at issue here, the court needs a motion for summary judgment rather than a motion to dismiss.  The difference is that in summary judgment, the court is making a decision to a valid legal dispute with the facts given in the pleadings.  In a motion to dismiss, the court is deciding whether or not there is a valid legal dispute to judge. 

When necessary, a motion to dismiss can be transformed into a motion for summary judgment.  But here, the court points out an exception, “where the material in question is expressly referenced in the complaint and is central to the plaintiff's claim,” and continues to make a decision on whether or not there is a valid legal dispute here.

The Court acknowledges another problem to proceeding with a fair use analysis on a motion to dismiss.  Fair use is generally regarded as an affirmative defense to infringement.  Don’t you need a valid dispute, a valid claim, before there can be a defense to it?  Normally, yes.  But here again, the court finds an exception.  If the plaintiffs prove the defense in their own pleadings, then the court can proceed under the motion to dismiss.  And that’s what the court found here.

The court says that this practice is common place.  If that is so, why keep viewing fair use as an affirmative defense instead of as not infringement?  Seems like it would require less legal gymnastics.

Picture credit:Milwaukee Federal Building cc-by compujeremy available at The photo was cropped for the blog.

* More information about the Milwaukee Federal Building here.  The author spent a splendid 6 weeks exploring the building as an intern.
For our European friends, don’t forget the old quip, “America, where 100 years is a long time and 100 miles is a short distance.”

Wednesday 20 July 2011

Folk hero and/or cyberthief? The case of Aaron Swartz

The 1709 Blog has been made aware of criminal proceedings which are being brought against Aaron Swartz following a dramatic gesture that was pretty much guaranteed to draw a response.  Since this event is governed by United States law, this blogger was hesitant to offer an uninformed opinion. The 1709 Blog is therefore pleased to host this guest piece from Christopher F. Meatto (New York attorney and HarvardLaw74 blogger), which reads thus:
"Swartz, Civil Disobedience, and Harvard Ethics

[The July 14, 2011 United States criminal indictment of activist Aaron Swartz, inventor of RSS, for downloading mass quantities of academic journals, can be accessed here].

The relevant American newspapers have two different takes on the Swartz indictment.

Boston: “Aaron Swartz, a Cambridge web entrepreneur and political activist who has lobbied for the free flow of information on the Internet, was charged in federal court with hacking into a subscription-based archive system at MIT and stealing more than 4 million articles, including scientific and academic journals.

New York Times: “A respected Harvard researcher who also is an Internet folk hero has been arrested in Boston on charges related to computer hacking, which are based on allegations that he downloaded articles that he was entitled to get free.”

I suggest we view this indictment of a Harvard ethics fellow in the following context: “Civil disobedience is the active, professed refusal to obey certain laws, demands, and commands of a government, or of an occupying international power. Civil disobedience is commonly, though not always, defined as being nonviolent resistance. It is one form of civil resistance. In one view (in India, known as ahimsa or satyagraha) it could be said that it is compassion in the form of respectful disagreement.”

JSTOR, the academic archiving service from which the documents were downloaded, has published an ambivalent, at best, account of its position on this case:
“It is important to note that we support and encourage the legitimate use of large sets of content from JSTOR for research purposes. We regularly provide scholars with access to content for this purpose. Our Data for Research site ( was established expressly to support text mining and other projects, and our Advanced Technologies Group is an eager collaborator with researchers in the academic community….Even as we work to increase access, usage, and the impact of scholarship, we must also be responsible stewards of this content. We monitor usage to guard against unauthorized use of the material in JSTOR, which is how we became aware of this particular incident.”
The JSTOR statement also implies that it has already settled with Swartz with respect to the nature of his use of the downloaded content.

I respectfully suggest that the solution here is for JSTOR to publish its complilation of 1,000 academic journals on a non-exclusive basis under a Creative Commons Licence.

I applaud Aaron Swartz for his efforts".
Thanks, Christopher, for this take on what clearly has the makings of a cause celebre -- but what do our readers think?

Harry Potter and the Idea/Expression Dichotomy

Amid the kerfuffle over the News of the World phone-hacking scandal, shaving foam humble pie, and wife Wendi's bodyguard skills, I almost failed to notice the latest (and hopefully last) instalment in the Willy the Wizard v Harry Potter plagiarism saga.

For those who would like to refresh their memories of the history of the case, see previous posts on the 1709 Blog here, here and here, and on the IPKat here. In short, Adrian Jacobs authored a book entitled "The Adventures of Willy the Wizard" and had it published in 1987. In 2004, his estate accused JK Rowling of having copied substantial parts of the book and using them in the first five books of her "Harry Potter" series. The claims referred especially to the fourth book, "Harry Potter and the Goblet of Fire".

Acccording to reports in, among others, the Guardian (here) and the BBC (here), the case was struck out, rather boringly, because the estate of Adrian Jacobs failed to pay the security for costs ordered by Mr Justice Kitchin and confirmed by the Court of Appeal.

If you are disappointed and keen on some idea/expression dichotomy exercise, you may still get it, and on three different levels at that:

- Level 1 ("I really don't have much time"): read the article in the Telegraph (here)

- Level 2 ("Willy the Wizard? I'm intrigued"): go to the "Willy the Wizard" homepage and have a look at the extracts from the book (here)

- Level 3 ("I only read contributions by the judiciary, thank you very much"): peruse Mr Justice Kitchin's account of similarities in Allen v Bloomsbury Publishing Plc & Anor [2010] EWHC 2560 (Ch), paras 20-47 (here). And bear in mind his statement at para 85:
"[C]opyright does protect the content of a literary work, including the selection, arrangement and development of ideas, facts, incidents and the like. In assessing the crucial question as to whether a substantial part has been taken, the court must have regard to all the facts of the case including the nature and extent of the copying; the quality and importance of what has been taken; the degree of originality of what has been taken or whether it is commonplace; and whether a substantial part of the skill and labour contributed by the author in creating the original has been appropriated."

Tuesday 19 July 2011

Jewel cases! Get your empty jewel cases here!

Over one thousand burned DVDs, a small shop in Orlando, Florida, and the county Economic Crimes Unit, a combination that has “uh-oh” written all over it.

The shop owner tried to claim that what he was doing was legal because he wasn’t selling the DVDs.  He was giving the DVDs away for free, for promotional use only, with the purchase of a $5 empty jewel case.

The newspaper reporting the results of the search warrant execution states that Mr. DVD-seller is facing felony charges under state law. However, the Florida statute that appears to be most applicable, 540.11, doesn’t seem to quite address the facts at issue here. The first two subsections making it unlawful to copy and sell DVDs only applies to sound recordings fixed prior to February 15th, 1972.  The next two provisions make it illegal to copy “performances.” There’s no definition of “performance” in the statute, so it’s unclear whether movies would fall under this provision.

If movies do count as performances, then Mr. DVD-seller is in trouble. Section (2)(a)3. makes it illegal to copy articles embodying performances with the intent to use those articles to cause the sale of other articles. Hmm… now why would someone pay $5 for an empty jewel case when a pack of 10 retails for nearly half that price on

A Florida case involving infringing CDs, rather than DVDs, suggests section (3)(a)1. might be applicable here.  In that case, it was clear that the CDs themselves were for sale.  If the court doesn’t allow the “I’m only selling the jewel cases” line to fly, then this provision could possibly be applicable.  The real tricky thing here is that half of the provisions talk about sound recordings and half talk about performances. Neither term is defined and neither obviously covers movies.

But don’t worry.  Even if Mr. DVD-seller manages to slip through the cracks of Florida’s state laws, he’s still in deep trouble under Section 506 of the US Copyright Act.

The Orlando police were alerted about Mr. DVD-seller by the MPAA.  Maybe he shouldn’t have set up his shop in a town owned by Disney.

Photo credit:Jewel case in the snow cc-by-nc eleda 1.

Monday 18 July 2011

When negotiations don't end in a done deal

Looking for the news? Try a taxi driver
Ebden v News International Ltd is an unreported decision of the Chancery Division, England and Wales, which has not been uploaded on to BAILII but which comes to me via a LexisNexis update. It's a decision of Mr Justice Norris and it deals with it covers not only copyright per se but also confidentiality and publishing contracts in an action brought by Ebden against the very-much-in-the-News International.

Ebden made a video recording of a fight at a night club, witnessed by three taxi drivers, in which a premiership football player was involved. He approached News International, which offered him £2,000 for the story if the video could be used.  Ebden said he wanted £20,000 and transferred the video to News International. The video turned out to be of poor quality and didn't show the fight clearly. However, News International agreed to pay the £20,000 if the quality of the video could be improved -- payment being dependent on its publication. At this point Ebden now sought £150,000 -- which News International refused to pay -- but the company did advise Ebden not to talk to other newspapers. Following two further meetings between a News International reporter and Ebden, a contract was drafted which did not specify a price but reiterated that payment depended on publication of the video. No agreement was reached regarding payment of £150,000.

In the event, News International did publish the story, based on information provided by the taxi drivers, and told Ebden that it had used neither his information nor his video. Coincidentally, another newspaper published a story about the same footballer, this time being involved in a different fight: this feature resulted in the newspaper facing a libel claim. News International passed the video and Ebden's contact details to the other newspaper, which contacted him with a view to his assisting it as a witness; News International offered him £5,000 to assist.  At this point Ebden, probably feeling somewhat miffed at ending up as a witness instead of having a large amount of money in his pocket, rejected News International's offer and asked for payment of the £150,000 which, he maintained, News International owed him. No, said News International, so off they went to court -- Ebden as a litigant in person.

Mr Justice Norris dismissed Ebden's claim for the cash. In the first place, there was no contract in which News International agreed to pay Ebden £150,000 for publication of his story. The parties had been negotiating over use of the video but did not contemplate any legal relationship arising out of the right to run the story as such.  Payment was to be made for use of the video only (i) if its quality could be improved and (ii) it was actually used.  However, the video itself was never published.

Ebden did not own the story. While the video was unique to Ebden, the story itself was shared by a number of other people.

News International had not infringed copyright.  While it had made copies of the video, it had done so for the purpose of judicial proceedings under the Copyright Designs and Patents Act 1988, s.45.

Nor had there been any breach of confidence. While it was agreed that Ebden was not to be identified as the source in any publication and his contact details were not to be revealed, a reporter who circulated that information within his employer's sphere of activity was not in breach of that term. Likewise, supplying Ebden's contact details to the other newspaper's solicitors did not amount to a breach of confidence since they too would be bound to keep that information confidential.

From the summary of facts, this sounds like an action which the litigant in person had little prospect of winning and which he might have been well advised not to commence.

Friday 15 July 2011

Unwarranted threats to sue for copyright infringement

Owners of registered intellectual property rights in the United Kingdom can call in aid many weapons that can be fired against the actual, putative or potential infringer -- interim and permanent injunctive relief, damages, an account of profits, delivery up and declarations. The defendant in turn can seek a declaration of invalidity or the cancellation/revocation of the registered right and may in an appropriate situation bring an action for unwarranted threats to bring infringement proceedings against him.

In the case of copyright the defendant's position appears more vulnerable. Damages which he may be required to pay explicitly include additional ('exemplary' or 'punitive' damages) -- though the effect of the EU's IP Enforcement Directive 2004/48 may be that such damages should be available in respect of all IP rights -- and there is no opportunity to challenge the validity of a registration. He also faces the risk that the copyright owner will opt for self-help relief where the statutory conditions are satisfied and simply seize goods believed to infringe and then walk off with them. More worryingly, in light of recent heavy-handed attempts to discourage or punish file-sharing and unlawful downloading, is the fact that there is no unwarranted threats action which an innocent but threatened party can bring.

Does any reader know quite why an action for unwarranted threats has not been made available in the case of a threat to bring copyright infringement proceedings? It can't be because the right in question is an unregistered right, because an action for unwarranted threats exists in respect of UK unregistered designs right under section 253 of the Copyright, Designs and Patents Act 1988, and a comparable provision exists for unregistered Community design right.

Wednesday 13 July 2011

"Do we come to bury copyright -- or to praise it?" Debate report

The 1709 Blog is grateful to Emma Beverland and Sam Bardon (Freshfields Bruckhaus Deringer) for preparing this report:

The Copyright Debate organised by the 1709 Blog in conjunction with the IPKat, “Do we come to bury copyright – or to praise it?” took place on Tuesday 12 July 2011at the lovely offices of Freshfields Bruckhaus Deringer at 65 Fleet Street, London before an audience of over 200 people.

Setting the scene

The debate aimed to consider two opposing views of copyright: “a vital tool for protecting authors, composers and artists, and for encouraging investment in the recording and transmission of their works to the public” or “ an outdated, cumbersome barrier to the spread of information and to the stifling of the very culture which it purports to promote”.

Mr Justice Arnold, in the Chair, briefly introduced each of the speakers – those who wished to praise copyright: Emily Goodhand (Copyright and Compliance Officer at the University of Reading, she writes the copyright4education weblog and tweets as @copyrightgirl) and Richard Mollet (Chief Executive of The Publishers Association and previously Director of Public Affairs for the BPI), and those who wished to bury it: David Allen Green (head of media at Preiskel & Co LLP, a City TMT firm, legal correspondent for the New Statesman and writer of the “Jack of Kent” blog); and Crosbie Fitch (an R&D software engineer and researcher who tweets and writes the Cultural Liberty weblog).

An initial poll of the audience suggested that a handful were in favour of praising copyright, a handful wanted to bury it, whilst the majority sat somewhere in the middle.

The debate

Emily began the debate with suitably Shakespearean oration, giving her “friends and countrymen” the option to either kill copyright or allow it to live, with no middle ground. In Emily’s view, something that is dead cannot be reformed and so those who would propose to bury copyright must also show that there is a better system to replace it.

Emily discussed the reasons copyright exists and the purpose it serves: it is fundamentally a proprietary right in the work which is the expression of an idea. She argued that those who see copyright as a denial of something they want to do can be compared to those who break speed limits – just because they can do it, does that mean they should? Just because people can drive at 90 miles per hour, does that mean traffic laws should be abolished?

In Emily’s view Copyright gives creators the power to decide what to do with their works – if creators want to put their works into the public domain, they can. Copyright also gives creators recourse to justice if somebody misuses their works. In a world without copyright, creators’ choices are limited as they lose the right to protect their work. She submitted that disregarding the right to own and protect would not liberate creators, but rather would usher in a new dark age. Emily also acknowledged that copyright acts as an economic incentive; most people want something more than satisfaction in return for creating a work.

Emily then considered the fine line between replicating a work and being inspired by it. In her view, defences in the law of copyright allow people to be inspired by works, without protecting verbatim copies. Emily accepted that the defences could, and would, benefit from being updated, but when faced with a choice, she advocated reform of copyright and its solid principles, rather than burying it.

Speaking against the copyright status quo, David hit zenith of Roman imagery when he likened copyright to the gladiator chasing the scrawny slave around the Colosseum in the Life of Brian – out of shape, struggling to do its job. Rather confusingly, David then explained that he did not actually want to bury copyright, but that he had never been over impressed by it in his career as a “bog standard” media lawyer and journalist. David looked at copyright from a practical point of view and considered “worlds without copyright”. From a foray into fashion law, David saw two different attitudes to protecting intellectual property: on one hand, brand was to be protected at all costs, while, on the other there was complete disregard for other creators taking “inspiration” from the designs of clothes (the 6-month-fashion-cycle making enforcement actions pointless). David then pointed to the copy-and-paste world of blogging, where very little copyright protection exists, and yet creativity flourishes. However, David did point out that when one of his blog entries was recently copied verbatim, he (potentially jokingly) asked to whom at the offending publication he could sent his licence agreement.

David further argued that it is unnecessary for copyright to protect an assignee (up to) 70 years after the creator’s death; David was unconvinced that creators and assignees should have the same rights under copyright. David also stated that the current state of copyright law defences and remedies was unsatisfactory – lack of a parody defence and remedies other than a licence fee being available were particular concerns.

David also raised general points about how copyright is treated – should it be seen as a tort, and if so, can we abandon all reference to criminality? He also wondered how much further than moral rights copyright extends, and why the legislation limits the scope of the term “works”.

David concluded that, while he did not want to bury copyright, he did not care very much for it and could not see creativity being limited by diminishing the protection copyright currently affords.

Moving again to the pro-copyright side, Richard began by emphasising that copyright is vital for the economy and cultural society, it’s importance to the “real” world. He caveated his praise by admitting that copyright was not perfect. However he asserted that even if the problems associated with copyright could not be solved, its benefits outweigh its weaknesses.

Richard argued that copyright is the means by which creators are supported, protected and rewarded and the mechanism by which creating becomes economically beneficial to the community. Publishing houses and record labels give economic, creative and distribution support to creators, and it is copyright protection which incentivises these invest to do so. They can engage in trade, confident that they have a right to the works they deal with.

Richard then considered alternative systems. He felt that patronage left the patron rather than the creator calling the tune, and questioned how a creator would meet a potential patron – this could lead to a drop in the different areas of society which contribute creative works. He dismissed micropayments and “contingency markets” systems, suggesting that copyright already included such the features of these alternatives. Richard considered it difficult to think of a system other than copyright which would provide such incentivisation to invest in creativity; providing a Winston Churchill quote, he noted: “copyright may be the worst means to drive the economy…except for all the others”.

As for the people who advocate that creativity and the economy should not be related; Richard dismissed this view as an indulgent state of fancy not in line with the current, parlous state of the economy. He emphasised that copyright has a proven track record of incentivising investors and that the creative economy currently contributes around 7% of the UK’s GDP, and the UK has the biggest exporting publishers in the world. According to Richard, unless we are able to replace copyright and replicate its benefits, we should not support its burial.

Crosbie then took up the anti-copyright cudgel, opening by stating that he was not proposing to bury copyright either, but rather to explain why it was coming to an end. He began by considering the history of copyright. He stated that before copyright there were natural rights; that these rights precede law and are superior to it. Crosbie explained that it is nature, not law, that creates rights. In his view law’s purpose is to protect these rights – rights to life, privacy, truth and liberty. By contrast, Crosbie characterised copyright not as a right but a privilege granted to the minority. He recounted the history of the 1709 Statute of Anne which created copyright for the benefit of the Crown and the Stationers Company in order to recreate the effect of a monopoly and to eliminate the sedition that had arisen in the free press. He asserted that privileges are unconstitutional, unethical and would be viewed by Thomas Paine as “the rights of all, held in the hands of a few”.

Crosbie felt that in the 18th century the relatively few press could be policed and controlled, but that in the 21st century this control has broken down – in the modern world we are all publishers, so copyright can no longer work. In his view, people have been indoctrinated into believing that copyright is a right, but that in fact each of us has the right to copy – law has attempted to annul that right, but it has never left us. Crosbie pointed to recent draconian punishments – fines of over one million dollars and prison sentences for sharing relatively few files – as evidence of publishing houses and record labels resorting to scare tactics to maintain the deception.

Crosbie continued that copyright is a historical accident from a les judicious time which should be rectified. His alternative would be for artists to exchange their works directly for money from fans in an open market – for example if 1,000 fans collectively agree to pay money to an author in exchange for that author agreeing to write a new book. He also asserted that without copyright moral rights remain, to prevent out and out plagiarism, for example . He concluded that copyright is a dead parrot that the market can and will continue without.

Questions from the floor

Mr Justice Arnold then allowed questions from the floor. There were a wide range of questions, the highlights were as follows:

A question on extensions to the length of copyright protection – in particular focusing on the recent USA/ Australia treaty. Are these increases just to further monopolistic interests? Richard answered that it was only right for creators to receive their just rewards, and to be able to provide for their families through their work. Now that people are living longer, the protection copyright affords should be extended as well

One member of the audience questioned why the length of protection afforded to copyright was so long when compared to, for example, protection provided by a patent over pharmaceutical products. Richard answered this by asserting that, despite Crosbie’s views, copyright is a fundamental property right and if we compare copyright protection to that afforded to real property, it is actually an incredibly short period of protection. Given the value of pharmaceutical products to society as a whole, they should be more widely available for exploitation at an earlier point. As Richard put it “songs may change lives, but drugs save them”.

Another member of the audience asked how much copyright has been undermined and damaged by the internet. Emily admitted that she was unsure how to either assess or quantify such damage and flagged this as an area which she considered would benefit from independent research. Once again, she pointed out that certain aspects of the defences to copyright infringement do not hold water with the current times, and were in need of serious examination.

One member of the audience was curious as to why copyright had to be buried in order for a new system to emerge: we have the potential for competition between providing complete protection, and allowing complete freedom, and creators should be allowed to choose the system they prefer to express their creativity.

Mr Justice Arnold also put forward his view that worldwide collective licensing (as per Virgin Media/Spotify) would potentially solve may of the problems.

To bury or to praise copyright?

A final poll of the audience revealed that there were still a handful in favour of the burial of copyright, but that the “praise” group had persuaded a larger smattering of the fence-sitters to their cause.

The majority of the audience were also in favour of a new copyright act being drafted.

A New Day Rising!

Following on from last nights fun packed 1709 debate at Freshfields (report to follow on this site soon!), and if you are up for more, then BLACA are hosting their next meeting tommorrow evening (Thursday 14th July) at the offices of Berwin Leighton Pasiner with the title of "New Day Rising" and which promises an explanation of the "practical impact of recent announcements in the field of copyright. A most distinguished panel is tackling the issues and features Jackie Alway (Universal Music Publishing), Trevor Cook (Bird & Bird), Henry Ward (8 New Square) and Florian Koempel (UK Music) - plus as we say in the music biz - special guest TBC!

Its at 6.15 at the offices of Berwin Leighton Paisner at St Magnus House (Rooms MM41 and MM42), 3 Lower Thames Street, London EC3R 6HE,

More information at

Monkey See, Monkey Do, Monkey get Copyright, too?

By now it’s all over the twittersphere, the blogosphere and every other made-up sphere on this green and blue sphere.  The monkey that stole a photographer’s camera and got her pictures published in the Daily Mail

Copyright experts and dilettantes alike are going ape trying to analyze who owns the copyright in these images.  Why?  Because the Daily Mail put a copyright notice on two of the pictures in its article.  Most of the analyses I’ve seen are Americans trying to sort it out under American law, which is typical, but not necessary the best approach here.  You see, the monkey is Indonesian.  The work was made in Indonesia.  The photographer who’s camera was taken and the  agency claiming copyright ownership of the photos are British.

The main questions being discussed: Does the monkey get the copyright?  If not, does anyone?

Monkey stole the camera from the camera man

Under Indonesian copyright law an author is “a person or some persons.”  Miss Monkey is ruled out right there I’m afraid.  But what about under British copyright law?  Since it’s a British company claiming copyright, any suit is likely to be brought in the UK.  Indonesia is a member of Berne and TRIPs, so the photos should be treated the same as UK works under UK copyright law.  Unfortunately for the monkey, The UK copyright law also defines author as “the person.”  Sorry monkey, it’s not you.

If not, then who?

It appears the monkey, by virtue of not being a “person,” cannot be the author of the photos.  (…unless there’s a statute somewhere that makes monkeys a person the way corporations are made a person.)  So who gets the copyright? 

The photographer / Carters News

If the photographer did own the copyright, it appears that he transferred his rights to Caters News Agency Ltd based on the copyright notices on the newspaper photos.

There is a clause in Article 7 of the Indonesian copyright law that specifies if a work is designed by one person and worked out by another, then the one who designed the work gets the copyright.  If the photographer had set up the shot and the monkey had just taken the photo, the photographer would likely have the copyright.  But the photographer didn’t design anything here.  He just left his camera.  The monkey did all the designing in the photos, so this article shouldn’t apply.


Perhaps more useful here is Article 9, “If a legal entity announces that a work has originated from it without mentioning a person as the author, then the legal entity shall be deemed to be the author, unless proven otherwise.”  The monkey took the photos in an Indonesian national park.  The Indonesian government presumably owns that park and is a legal entity.  It would seem that if the Indonesian government claimed it was the copyright owner, then it would be.  Except for that “unless proven otherwise bit.”  But this leads us to another question, does the park own the monkey? 

If not having an author as defined under the copyright law is the same as having an unknown author, then Indonesia owns the copyright under Article 10A of the Indonesian copyright law.

No one

The main claim I’ve seen in the US discussions of who should own the copyright is that no one should; the photos should be in the public domain.  And it appears, under UK copyright law, they’re right.  - Now, this is the part where, knowing that there are a great deal of very knowledgeable UK copyright practitioners who read this blog and that the author is not one of them, the author asks for forgiveness and clarification should she get anything wrong.  -

Under Section 153, the work only qualifies for copyright protection if it meets requirements in several different areas including the area of author.  Section 154 outlines the requirements the author must meet in order for the work to receive copyright protection. 

  • Option one, a British citizen.  Pretty sure the Indonesian monkey is not a British citizen.
  • Option two, an individual domiciled or resident in the UK.  Monkey lives in Indonesia.
  • Option three, an individual domiciled or resident in another country to which the relevant provisions of this Part extend.  This seems to include any countries to which the UK must extend national treatment with respect to copyright.  Since Indonesia is a member of Berne and TRIPS, Indonesia would be one of these countries.  It might seem like we need to know if the monkey is an individual, or if it can be domiciled or resident.  But, that doesn’t matter because the first part of Section 154 says “if the author was at the material time a qualifying person.” (emphasis added)

So it appears under UK law, the photos are in the public domain.  Under Indonesian law, the matter is less clear.

Barrels of Fun

Perhaps more fun than the real story are all the different extra facts you can add to make even more puzzlingly-fun scenarios.  What if the monkey belongs to a zoo?  Or a person who taught him to take pictures?  What if the park or zoo where the monkey lives posts a sign that says the copyright of any photographs taken by animals inside the park or zoo belong to the park or zoo?  What if it is not a monkey but one of the gorillas that can speak sign language or otherwise communicate to subjects in a photo how to move?

Personally, I like the position one of my colleagues took: Forget the copyright issue.  The monkey should sue for rights of publicity.

Friday 8 July 2011

US content industry and ISPs to inform and alert

After months of discussions, a large number of the major U.S. Internet service providers (ISPs) have signed up to an agreement to take action against users who violate copyright. AT&T, Cablevision Systems, Comcast, Time Warner and Verizon have agreed to participate in the scheme along with a number of content providers from the film, TV and music industry including the MPAA (The Motion Picture Association of America whose members include Disney, Sony, Paramount, Warner Bros and Twentieth Century Fox), the Recording Industry Association of America (representing the major labels including Universal, EMI North America, Warners and Sony) , the IFTA (representing independent producers & distributors of film & television programming) and A2IM which represents independent record labels.

The voluntary “Memorandum of Understanding” is based on a system of Copyright Alerts, “a state-of-the-art system similar to credit card fraud alerts – that will educate and notify Internet subscribers when their Internet service accounts possibly are being misused for online content theft. This voluntary landmark collaboration will educate subscribers about content theft on their Internet accounts benefits consumers and copyright holders alike.”

The approach is intended to overcome one of the major arguments against disconnecting accounts that are being used for piracy, which is that often the person who pays the bill is unaware that illegal activity is occurring. In other cases, the accused infringer is unaware of the applicable copyright laws, or may be unaware that downloading copyrighted content from illicit sources is illegal and violates ISP’s terms of service. The Copyright Alert System is based on a consumer’s “right to know” when his or her Internet account may have been used improperly to download copyrighted content. The RIAA’s press release says that the new system addresses these problems with a series of early email alerts (up to six) notifying the subscriber that his or her account may have been misused to access illegal for online. It will also put in place a system of “mitigation measures” intended to stop online content theft on those accounts that appear persistently to fail to respond to repeated Copyright Alerts. The system will also provide subscribers the opportunity for an independent review to determine whether a consumer’s online activity in question is lawful or if their account was identified in error (there will be a small charge of $35 for this).

However, termination of a subscriber’s account is not part of this agreement. ISPs will not provide their subscribers' names to rights’ holders under this agreement although the new system of graduated Copyright Alerts means that consumers will have more advance warning and educational opportunities before extreme penalties are implemented. This will replace the current practice of DMCA violation notices being sent to the ISP, who then forwards them to the account holder.

The agreement also establishes a Center for Copyright Information to support implementation of the system and educate consumers about the importance of copyright.

Comment from the ISPs seems limited with Randal S.Milch, executive vice president and general counsel of Verizon saying “This is a sensible approach to the problem of online-content theft and, importantly, one that respects the privacy and rights of our subscribers”

Comment from the content industries was widespread (and rather verbose in places). Both Michael O’Leary, Executive Vice President for Government Relations at the MPAA and Cary Sherman, president of the RIAA said that piracy put the jobs of many creative industry workers at risk, and that the provisions of the new Agreement would lead consumers to discover the multitude of content now legitimately available online with O’Leary saying “Many people don’t realize that content theft puts jobs – and future productions of films, TV shows, music, and other content – at risk …. today, there are more ways to enjoy content legitimately online than ever before. This agreement will help direct consumers to legal platforms rather than illicit sites, which often funnel profits to criminals rather than the artists and technicians whose hard work makes movies, television, and music possible.”

James Assey, executive vice president of the National Cable & Telecommunications Association (NCTA) said “Consumers have a right to know if their broadband account is being used for illegal online content theft, or if their own online activity infringes on copyright rules – inadvertently or otherwise – so that they can correct that activity” adding “We are confident that, once informed that content theft is taking place on their accounts, the great majority of broadband subscribers will take steps to stop it. That’s why the educational nature of this initiative is so critical.” The International Federation of Phonographic Industries, representing the recording industry worldwide welcomed the agreement and the IFPI’s Chief Executive Officer, Frances Moore, said “It is very good news that ISPs in the US recognise their pivotal role in tackling online piracy and have committed to take proactive steps to achieve this. The agreement also sends an important signal internationally. It adds to the momentum already created by initiatives such as graduated response and blocking of infringing websites in other countries, and is the latest mark of recognition that ISP cooperation is the most effective way of addressing online piracy.”

A word of caution came from The Center for Democracy & Technology and Public Knowledge said the agreement met many but not all of their concerns regarding the rights of the average citizen, and that “close ongoing scrutiny will be required to ensure that the agreement achieves its purpose without unfair or disproportionate consequences for Internet users.”

Both the Center for Copyright Information and the Copyright Alert System are voluntary collaborations between the entertainment and broadband business communities. Participating ISPs will begin implementing Copyright Alerts in 2011 and 2012.