Friday 29 June 2012

Le Corbusier v. Getty

                                                                       Le Corbusier

                                                                          J.P. Getty

Within the span of six weeks, the French Supreme Court (Cour de cassation) has handed down two rulings involving copyright law and stock photo agencies.  While the first decision contained some good news for the agency involved (Corbis, see, the same cannot be said for themore recent one (12 June 2012) involving its rival Getty Images.

Photography is an interesting phenomenon in copyright law terms because it is both a form of artistic endeavour in its own right that can attract copyright protection provided certain conditions are met and a vector of infringement (inasmuch as it is a method of reproducing protected works).

In the recent ruling dealing with photographic reproductions of furniture designed by Le Corbusier, this latter aspect was on display.

Heirs of the famous architect brought legal action against Getty Images France claiming that it had infringed the copyright (right of display) in certain pieces of furniture by marketing photographs of them. 

The Court found that the photographs were indeed infringing as the pieces of furniture were clearly visible and perfectly identifiable and in no way merely accessory to some other feature or subject.

In a rather original fashion (at least from a French-law perspective), Getty had argued that the heirs lacked standing to sue because they had previously entered into an agreement with a company called Cassina for the manufacturing of the furniture at issue and that such agreement necesarily entailed the transfer of a right of display (notably for commercial and advertising purposes) such that this company could be said to be vested with a right of exploitation over the furniture.

The Court rejected this argument, holding that, pursuant to the provisions of Section L.131-3 of the Intellectual Property Code, which makes a valid tranfer of copyright interests subject to such interest being specifically and expressly spelled out, the lower court had rightly held that Cassina was not the  assignee of a "right of exploitation" but merely of a right to manufacture the relevant pieces of furniture (such that the heirs did indeed have standing to sue under the right of diplay).

Text of the Cour de cassation's ruling here:

The strange case of the wizard

Surrounded as we are by elves, sprites, pixies, goblins and toads (aka teenagers) I was a little surprised the other day when one of them addressed me personally asking if I too was a 'wizard'.  It took me some time to work out the connection until I watched the excellent new BBC4 series called 'The Strange Case of the Law' - which traces the history of the English common law. Its well worth a watch, and  in the UK is on Wednesday evenings at 9pm (why this teenager was watching is beyond me, surely Hollyoaks or Snog, Marry, Avoid was on somewhere?)  - and can still be found on the BBC iPlayer. Whether the TV rights travel as widely as the common law remains to be seen.

So - why the wizard reference - check out the presenter .... I can say no more.

iPlayer here 

Royalty reducers back in the spotlight

Judge Philip Gutierrez is not a man to be messed with, as lawyers for the Universal Music Group have found out as the 'Eminen' digital royalty case progresses onwards.  

This is one of the claims brought by artistes and here producers (FBT Productions) to try to force record labels to pay a higher royalty on digital sales of sound recordings. This case was the first to reach a conclusion which favoured artistes, although another major claim by artistes including Cheap Trick and the Allman Brothers was settled by Sony. 

So what's happened now? Well, having lost the battle to keep royalties at the lower 'per unit' sales basis on appeal, Universal Music Group’s still hoped that royalties could be paid on 'net receipts'. But their lawyers really didn't want their royalty reducing practices to fall under the court's scrutiny,  As UMG had argued in court that any royalty that had to be paid to FBT (even at a higher rate for digital) should be paid on a “net receipts” basis they thought that this was settled and agreed by the judge. FBT had other ideas having discovered that only about 29% of international revenue actually returns to the major's Aftermath division (the relevant label here) with the other 71% being kept by the local Universal companies that actually sell the product - so a net receipts basis made a massive difference - reducing royalties by a whacking 71%.

One can see why FBT might not want this as the basis for accounting, but UMG felt that the Judge had already accepted the “net receipts" basis. Judge Gutierrez was having none of this,  and made it clear in a written judgement that [a] he did not mean to make a ruling on this matter when asked for clarification on "our net receipts" last year, and [b] he doesn't believe that FBT were aware that Universal intended for the international royalties issue to be resolved via that clarification either, because there would be no logic in them choosing to ignore the matter until later. On the latter point, the judge wrote: 

"The court is deeply troubled by defendants' argument. While it is hard to see what FBT could gain by feigning ignorance, it is now quite apparent what defendants could hope to gain by bamboozling the court and plaintiffs on this issue. Defendants' current stance makes it appear as though defendants carefully inserted the issue into the motion for summary judgment before they had notified FBT or the Court of what percentage of the revenues from foreign sales of permanent downloads would be paid to FBT. An attempt to dupe the court into a premature ruling will not serve as the basis to deny FBT an opportunity to challenge defendants' accounting practices". 

Harsh criticism and UMG will also no doubt be horrified that royalty reducers have been put in the spotlight as they attempt to convince regulators in US, EU and elsewhere that they are a safe haven for EMI’s recorded music division and artistes. 

Thursday 28 June 2012

Funny junk not so amusing for some

(c) Matthew Inman
The Oatmeal ( is a popular destination for fans of online humour, created and run by illustrator Matthew Inman. All well and good, but its now embroiled in a massive and very public spat with another website called, over alleged copyright infringement by the latter, and indeed now it seems the lawyer for Funnyjunk, one Charles Carreon, has joined in personally. 

The whole debacle is causing a massive debate (and some amusement) in cyberspace and its interesting to see those perhaps more usually inclined to be on the 'liberal' side when it comes to online copyright infringement now taking a more pragmatic line. So what's happended? 

Well initally Inman noticed that that large quantities of his illustrations and comics from The Oatmeal were appearing on is "a sort of YouTube for funny pictures and artwork". Inman wrote on his blog about the problem (here) asking his readers what he should do about it, claiming that the FunnyJunk site was making “six figure advertising checks from other artist’s stolen material” while hiding behind the takedown provisions in the US Digital Millennium Copyright Act by claiming (Inman's words) "It was our users who uploaded your photos! We had nothing to do with it! We're innocent!". Inman decided to  send a simple cease and desist letter. 

Now the story starts to get bizzare (but strangely predictable in the angry world of cyberspace where manners, politeness and common sense are at a premium). The owner of FunnyJunk sent a message to all of his users telling them (wrongly) that Inman was attempting to have his site shut down but FunnyJunk did remove all posts with  “The Oatmeal” in the title - some but by no means all of the infringing material as much did not contain a direct reference. A DCMA takedown? Maybe.  Inman in the meantime found himself bombarded with abuse from users of FunnyJunk - from online hero to online zero in a matter of hours.. It's a strange old world out there in the ether.

The next development was when Inman published a letter he’d received from FunnyJunk's lawyer (Carreon) which accused Inman of defamation for previous postings about, and demanded that he remove all mention of the website from The and hand over $20,000 in damages to avoid further action being taken. Now I can let the Electronic Frontiers Foundation (who are supporting Inman and The Oatmeal) take up the story who explain the Inman then decided to raise funds and ridicule FunnyJunk:  "Inman started his fundraiser as part of his criticism of the frivolous legal threats he received from the website FunnyJunk. Rather than pay the $20k demanded, Inman was going to raise money and send a photo of the money to FunnyJunk, but send the money to (two) charities" instead saying he would send the photo to Carreon “along with this picture of your mom seducing a Kodiak bear” (see above) and then donate half the money to The National Wildlife Federation and the other half to The American Cancer Society.The fundraiser raised $220,024.00 - some 11 times the original goal of $20k. 

This seems to have provoked Carreon ever more, and according to the EFF he then "filed a lawsuit on his own behalf, suing Inman, the two charities, the online fundraising platform Indiegogo, 100 unidentified John Does, and even the California Attorney General, asserting trademark infringement, cybervandalism, and false advertising and the EFF report that Carreon is seeking to take control over the fundraiser from Inman, and place the money in a trust. 

Arts Technica add "The astonishingly tenacious Arizona attorney Charles Carreon, apparently not satisfied with his original filing last week, has now amended his case against Matthew Inman et al. to now include California State Attorney General Kamala Harris" adding "The updated Monday filing is the latest chapter in an "increasingly ridiculous legal case" involving an online intellectual property dispute. Neither Carreon, Harris, nor any of the other defendants (except for Ars commenter "Modelista") responded immediately to our [Arts Technica] request for comment. The move to include California’s top law enforcement officer may be a tactic to compel Harris to act on Carreon’s accusations of charitable fundraising fraud as carried out by Inman and IndieGoGo." 

Amusing or not,  one thing this case does do is highlight the increasing dissatisfaction amongst many content owners, artists, performers and others about the 'safe harbour' provisions of the USA's Digital Millennium Copyright Act – and whether or not safe harbour is really now appropriate in a world where cut and paste, uploading and file sharing are just so easy - and where user generated content can provide rich rewards for site owners - even where content is infringing. The fact that the DCMA provisions are little more than a decade old just adds to my feeling that change on the web is accelerating,  and accelerating at an ever increasing rate. There is some very pithy comment from the CMU on the DCMA  here.  and

Tuesday 26 June 2012

Ofcom consults: Will DEA Implementation finally leave the station?

Many of you will recall that in 2010, Ofcom started a consultation process in relation to the implementation of the ISP letter-sending provisions of the Digital Economy Act.  That process was shunted into a siding pending the judicial review process that finally hit the buffers in April as reported here.

Today, the DEA implementation train left the station again, with Ofcom publishing a further consultation notice snappily entitled "Online Infringement of Copyright and the Digital Economy Act 2010 - Notice of Ofcom’s proposal to make by order a code for regulating the initial obligations" and checking in at a mere 129 pages of PDF.  This blogger has neither the time nor the enthusiasm to summarise every last detail, but suffice it to say that the Government is proposing 19 main changes - largely procedural - following on from the last round of consultations and wants your views and mine by 26 July.

More interesting in terms of this particular journey is the second consultation published by Ofcom today entitled "Online Infringement of Copyright: Implementation of the Online Infringement of Copyright (Initial Obligations) (Sharing of Costs) Order 2012" -  which observant readers of this blog might realise is about the sharing of the costs of the entire process.  Broadly speaking, content owners, perceived as the "beneficiaries" (in the sense that they have the benefit of not being deprived of their intellectual property rights) are required to pay 75% of ISPs' (efficient and reasonable) costs of implementation, along with all of Ofcom's not inconsiderable costs - set out in the table below (whether reasonable or not??) and the majority of the costs of the appeals body.

Ofcom Costs
Ofcom Costs
2010/11 2011/12 2012/13 2013/14 2014/15
£1.8m £0.7m £1.6m £3.2m £3.2m

All of which, apparently, leads to a sliding scale, depending on how many notices are sent - so if the DEA process is "only" used to serve 70,000 notices per month, across all ISPs and content providers, the cost will be £17 for each notice served on the big 4 ISPs (BT, Virgin, Sky and TalkTalk) and £45.10 for each notice served on the two smaller ISPs within the regime (O2 and EverythingEverywhere).  Luckily (!?) there are some economies of scale, so if 175,000 notices per month are served, those figures drop to £7.20 and £18.40 respectively.

Given the head of steam (sorry - this metaphor is being stretched too far now) gained by the non-DEA processes initiated by content owners against Newzbin, PirateBay etc, that is feeling like a lot of money for a process when (despite positive data for Hadopi) nobody knows how successful the DEA process will be.  However, given the fight to get the law onto the statute books and keep it there, maybe content owners feel they have no choice but to buy a ticket in order to keep the line running and keep the Government on their side.

On bold infringement or unauthorised use of hit singles for commercials

Über-cool US rock duo The Black Keys are composed of Dan Auerbach and Patrick Carney and, during their careers, have already attracted some attention, among the other things, in the general discussion concerning fully-licensed online music services. A while ago, they indeed joined those (such as Coldplay) who have decided not to make their works available on music-streaming services, such as Spotify, MOG, Rdio or Rhapsody, on fear that, as argued by Billboard, these services detract from already declining music sales. 
The band has recently released their seventh album, entitled El Camino. According to Wikipedia, this has been very successful so far and received positive reviews, being also ranked by many music publications as one of the best albums of the year. In the US, it debuted at number two on the Billboard 200 and sold 206,000 copies in its first week, the highest charting position and single-week sales. 
Apparently the success of the album has been so great that its first two singles are already at the centre of some copyright litigation.
A few days ago the duo, together with music producer Danger Mouse (copyright enthusiasts will promptly recall that there was a time when Danger Mouse was on the other side of the courtroom, being the defendant in the well-known Grey Album case), brought two distinct proceedings against The Home Depot and Pizza Hut for copyright infringement (you can read the lawsuit which has been filed against The Home Depot here. However, this blogger has not been able to find a copy of the suit against Pizza Hut: can any reader help?). 
As mentioned, these concern unauthorised use of the two first single of The Black Keys' El Camino, these being Lonely Boy (which was released last October) and Gold on the Ceiling (which was released in February last).
The Black Keys appalled
by news of shameless infringers
As regards the first lawsuit, which was filed before the US District Court for the Central District of California, plaintiffs claim that commercial advertisement for "Ryobi" brand power tools prominently features significant portions of Lonely Boy, without any authorisation from The Black Keys, thus infringing 17 USC §§ 106 and 501.
As to the Pizza Hut commercial for Cheesy Bites Pizza, this is said to include a (highly) significant part of Gold on the Ceiling.
We'll see what happens next. It may be likely that all this ends up with a settlement, as was eventually the fate of the commercial for Dannon's Oikos Greek Yoghurt, which was first aired during last Super Bowl (see here and here).
In any case, it is not that difficult to realise that unauthorised use of third parties' music for commercials is not an activity which may go unnoticed and not upset anyone ... Is this the place where copyright infringement meets boldness?

Cheer for China as performers take the limelight

Something for performers to make
a song and dance about?
This weblog has received in the past year or so a veritable barrage of emails from readers, drawn from the community of performers, along the lines of "what about us, then? Why are we always being so taken for granted and neglected?" Well, here's something to cheer them up.  Today the World Intellectual Property Organization (WIPO) has issued a media release that breaks the [rather expected] news of a new international treaty that is addressed specifically at the needs  -- or at least at the perceived needs -- of the performers.  According to document PR/2012/714:
"The diplomatic conference to finalize a new treaty for audiovisual performers was successfully concluded on June 26, 2012 as negotiators from WIPO’s member states signed the Beijing Treaty on Audiovisual Performances– so-named in recognition of the city that hosted the final round of negotiations. The new treaty brings audiovisual performers into the fold of the international copyright framework in a comprehensive way, for the first time. ...

The President’s gavel brought an end to over 12 years of negotiations held under WIPO auspices. Mr. Gurry hailed this major development in the history of international copyright as a success of the multilateral system. “The conclusion of the Beijing Treaty is an important milestone toward closing the gap in the international rights system for audiovisual performers and reflects the collaborative nature of the multilateral process,” Mr. Gurry said. He noted that “the international copyright framework will no longer discriminate against one set of performers.”

... The Diplomatic Conference was attended by 156 member states, 6 intergovernmental organizations and 45 non-governmental organizations. This is the highest level of participation ever at a WIPO Diplomatic Conference. 122 countries signed the Final Act of the treaty, and 48 countries have signed the treaty itself.

... The treaty will enter into force once it has been ratified by 30 eligible parties, including countries or certain intergovernmental organizations.

... Most commonly, countries that support a treaty sign shortly after it has been adopted. They then ratify the treaty when all of their domestically required legal procedures have been fulfilled. Other states may begin with the domestic approval process and accede to the treaty once their domestic procedures have been completed, without signing the treaty first".
The 1709 Blog can tell you that the Beijing Treaty -- which you can read in full here -- consists of 30 Articles. The blog is sure it will be carrying some commentary once the text has been read and digested.

Monday 25 June 2012

ACTA, SOPA and PIPA back in the news

Last week the European Parliament's influential International Trade Committee recommended that members of the Parliament vote against adopting the Anti Counterfeiting Trade Agreement (ACTA) but the recommendation has prompted an angry backlash from trade groups representing the content industries including the record labels international body the IFPI who said in statement "The recommendation by the European Parliament's International Trade Committee that the Parliament should reject ACTA is a disappointment to Europe's creative, innovative and manufacturing sectors, which employ over 120 million people across Europe and depend on intellectual property to support and grow their businesses" and added "More than 130 organisations representing the breadth of European industry have urged the European Parliament to wait for the opinion of the Court Of Justice of the European Union before taking a final decision on the treaty. A vote to follow the INTA recommendation and to reject ACTA now would be to ignore the voices of industry, unions, employees, the Commission, the Council and Member States. ACTA should be given careful and responsible consideration before a decision that will have significant effects on the EU's trade relationships and economy". Nineteen MEPs on the Trade Committee voted against adopting ACTA, with twelve in favour. 

Elsewhere, Wikipedia founder James (Jimmy) Wales has come out in support of Richard O'Dwer, the 24 year old multimedia student at Sheffield Hallam University who set up, making some £140,000 in the process, and who is now facing extradition from the UK to the USA on copyright infringement charges. Wales has said O'Dwyer is the "human face" of the global battle over the interests of the film, TV and movie industries and the wider public, which led to the public outcry over the proposed PIPA and SOPA (the USA's Protect Intellectual Property and the Stop Online Piracy Acts). The Guardian has a front page story and has dedicated two pages to O'Dwyer's battle in today's newspaper which can be found here (Knock on the door that could lead to 10 years in US jail for film fan). 

"Adaptation", software and databases: can you help?

A PhD candidate in IP law at a very highly-regarded academic institution in Germany has written to ask for a little assistance from this weblog's reasders. He explains:
"I am researching a section of UK copyright law and am reaching out ... for some help. The question I am concerned with is about section 21(3)(ab) and (ac) of the Copyright, Designs and Patents Act 1988. These sections give the authors of computer programs and databases the right to make adaptations, and adaptation is defined as an "arrangement, altered version...or a translation".

My question is: how have these words been interpreted in the UK? I am searching for case law on this provision but currently have not found any.
For the record, the relevant part of the provision reads like this:
"(3) In this Part "adaptation" -
(ab) in relation to a computer program, means an arrangement or altered version of the program or a translation of it;
(ac) in relation to a database, means an arrangement or altered version of the database or a translation of it; ..."
Offhand, this blogger couldn't think of any British decision, reported or otherwise, in which the meaning of "adaptation" has been discussed in relation to computer programs and databases.  However, he has the uneasy feeling that he may have missed something quite obvious.  Can anyone else help?

What might also be interesting is to hear of anyone who has based their own decision either not to take legal action or not to defend one on the basis of an interpretation or application of those words in this context.  If you have anything you can usefully add, please do so!

Friday 22 June 2012

Bits and pieces: some recent news

The United Kingdom's Copyright Licensing Agency (CLA) has announced the launch of a new online title search tool for legal professionals. The tool, which licensees can play with to their heart's content here -- enables customers to find out whether they can lawfully photocopy, scan or digitally reproduce from a publication under their firm’s CLA licence.  The idea is that each title search allows licensees to confirm quickly whether the activity is compliant with the terms of their CLA licence. The title search, developed in response to research with customer groups, is designed to complement existing website support for included and excluded licence material.


Last Friday Neil J. Wilkof posted an article on the IPKat weblog, "Government Intervention in the Publishing Industry: Say It Isn't True!", which in hindsight might have been better placed on the 1709 Blog, given its relevance to the copyright-based publishing industry. Neil is particularly keen to hear from correspondents in jurisdictions where the market for publications in the local language is small and intervention is seen as having a cultural or political dimension to it which transcends, rightly or wrongly, the notion that the best conditions for commercial exploitation are those which are dictated by the open market.  You can read Neil's piece here.


Here's a reminder to readers that there are two rather appealing events coming up in London next month, each of which comes with a substantial discount for readers of this weblog.  They are as follows:
  • 11 July 2012: Half day workshop, "Design Rights", hosted in Central London by LexisNexis Conferences and Training. Further particulars of the programme and registration details are available here. To qualify for a 10% registration discount fee as a blog reader, quote code L11290/IPKAT.
  • 11 July 2012: Half day workshop, "IP and the Creative Industries", hosted in Central London by LexisNexis Conferences and Training. Further particulars of the programme and registration details are available here. To qualify for a 10% registration discount fee as a blog reader, quote code L11290/IPKAT.

Polish blogger and IP enthusiast Tomasz Rychlicki has posted this piece on an unusual episode involving the actual or deemed date of death of an author.  Children's book author, humanitarian and educator Henryk Goldszmit (better known as Janusz Korczak), was believed to have died in the Treblinka concentration camp in 1942 but, for obvious reasons, no eye-witness evidence was available. The County Court in Lublin, in an order of 30 November 1954, considered Korczak’s death to have been 9 May 1946, with the consequence that his works would be expected to be available in the public domain from 1 January 2017. This outcome has now been challenged by the Modern Poland Foundation, as Tomasz explains.

On the idea/expression dichotomy and puzzle videogames

An interesting case touching upon the fascinating topic of the idea/expression dichotomy has been decided recently by the US District Court for the District of New Jersey. This is Tetris Holding, LLC and Tetris Company, LLC v Xio Interactive, Inc (on which see Wired report here.)
Plaintiffs Tetris Holdings and Tetris Company (respectively, the owner and licensor of copyright and trade dress in well-known 1980s videogame Tetris) brought a lawsuit against defendant Xio Interactive, creator of Mino, a 2009 multiplayer puzzle videogame for iPhone. They claimed, among the other things, federal copyright and trade dress infringements. 
Tetris is a facially simple puzzle game in which the player is tasked with creating complete horizontal lines along the bottom of the playing field by fitting several types of geometric block pieces (called Tetrimino pieces) together. The game becomes more complex and more difficult as one progresses and is left with fewer options to arrange the pieces and less area of the playing field is available. 
Since its first appearance, Tetris Holding has developed numerous versions of Tetris for modern platforms, including iPhone.
According to District Judge Freda Wolfson, the facts of the case were undisputed. 
Mino was created by recent college graduate Desiree Golden, who admittedly used Tetris 
as an inspiration. Actually, Mino was intended to be Golden's version of Tetris and Golden had donwloaded Tetris's iPhone app for the purpose of developing Mino.
Yet defendant Xio, a company formed by Golden, claimed that it had taken inspiration 
from Tetris after diligently researching intellectual property law and in such a way so as not to 
copy any copyright-protected materials. Indeed, the elements copied were said to be 
non-original expression of Tetris, because they were part of the game itself—the rules, function, and expression essential to the game play—which is not protected. In any case, Xio had also tried to obtain a licence from Tetris Holding, but this was refused.
Shortly after Mino was released, Tetris sent DMCA takedown notices to Apple, which removed Mino from its apps marketplace. However, Xio sent two counter-notifications and Apple informed Tetris Holding that Mino would be reinstated unless Tetris filed a lawsuit. This is what eventually happened.
Tetris Holding claimed that Mino infringed the following original elements of Tetris:
1. Seven Tetrimino playing pieces made up of four equally-sized square joined at their sides;
2. The visual delineation of individual blocks that comprise each Tetrimino piece and the display of their borders;
3. The bright, distinct colors used for each of the Tetrimino pieces;
4. A tall, rectangular playfield (or matrix), 10 blocks wide and 20 blocks tall;
5. The appearance of Tetriminos moving from the top of the playfield to its bottom;
6. The way the Tetrimino pieces appear to move and rotate in the playfield;
7. The small display near the playfield that shows the next playing piece to appear in the playfield;
8. The particular starting orientation of the Tetriminos, both at the top of the screen and as shown in the "next piece" display;
9. The display of a "shadow" piece beneath the Tetriminos as they fall;
10. The color change when the Tetriminos enter lock-down mode;
11. When a horizontal line fills across the playfield with blocks, the line disappears, and the remaining pieces appear to consolidate downward;
12. The appearance of individual blocks automatically filling in the playfield from the bottom to the top when the game is over;
Both Tetris and Mino were iPhone apps
13. The display of "garbage lines" with at least one missing block in random order; and
14. The screen layout in multiplayer versions with the player's matrix appearing most prominently on the screen and the opponents' matrixes appearing smaller than the player's matrix and to the side of the player's matrix.

The judgment
The judge held that it was unquestionable that Mino and Tetris looked alike. However, to resolve the claim of copyright infringement, it was necessary to first determine which elements of Tetris are protected and which are not.
Pursuant to 17 USC §102 and relevant case law, elements of computer programs which may 
be protected by copyright include both the code of the program and its graphical elements. In no case, however, does copyright protection extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained illustrated, or embodied in a work.
The judge acknowledged that the idea/expression dichotomy is simple to state but "difficult to apply, especially in the context of computer programs." [this also because US courts have elaborated many tests to determine what is protectable and what is not]. However, said the judge,
At the end of the day, no matter how one expresses the test, the task is clear: because copyright only protects original expression, I must delineate between the copyrightable expression in Tetris and the unprotected elements of the program, then evaluate whether there is substantial similarity between such expression and Defendant's Mino game. The starting point in this analysis must be to understand the ideas and concepts of Tetris itself.
To this end, two related doctrines must be considered: merger and scènes à faire. Merger exists when an idea and its particular expression become inseparable. The doctrine of scènes à faire applies to expression that is so associated with a particular genre, motif, or idea that one is compelled to use such expression. 
Where expert evidence is gathered
in videogame cases
With these principles in mind, the judge held that:
Xio is correct that one cannot protect some functional aspect of a work by copyright as one would with a patent. But this principle does not mean, and  cannot mean, that any and all expression related to a game rule or game function is unprotectible. Such an exception to copyright would likely swallow any protection one could possibly have; almost all expressive elements of a game are related in some way to the rules and functions of game play. Tetris Holding is as entitled to copyright protection for the way in which it chooses to express game rules or game play as one would be to the way in which one chooses to express an idea ... Xio conflates the doctrines of merger and scènes à faire to say that Tetris Holding cannot protect expression inseparable from either game rules or game function ... Xio also relies on a number of opinions discussing video games. In no case, however, did a court find that expression was unprotectible merely because it was related to a game rule or game function. 
Within this framework, the judge then compared the audiovisual aspects of the two games: 
Tetris is a puzzle game where a user manipulates pieces composed of square blocks, each made into a different geometric shape, that fall from the top of the game board to the bottom where the pieces accumulate. The user is given a new piece after the current one reaches the bottom of the available game space. While a piece is falling, the user rotates it in order to fit it in with the accumulated pieces. The object of the puzzle is to fill all spaces along a horizontal line. If that is accomplished, the line is erased, points are earned, and more of the game board is available for play. But if the pieces accumulate and reach the top of the screen, then the game is over. These then are the general, abstract ideas underlying Tetris and cannot be protected by copyright nor can expressive elements that are inseparable from them. [Indeed, in the past few years, many Tetris look-alike versions have been released: just search them on Google]
The parties argued over a number of particular features of both games, which the judge 
Will a 'common user' get upset when he finds out
 that his new videogame is an old game's clone?
found it appropriate to compare as they would appear to a layman concentrating upon the gross features rather than an examination of minutiae. The conclusion was in the sense that:
Without being told which is which, a 
common user could not decipher between the two games. Any differences between the two are slight and insignificant. If one has to squint to find distinctions only at a granular level, then the works are likely to be substantially similar. Reviewing the videos of the game play bolsters this conclusion as it is apparent that the overall look and feel of the two games is identical. There is such similarity between the visual expression of Tetris and Mino that it is akin to literal copying ... In particular, the style of the pieces is nearly indistinguishable, both in their look and in the manner they move, rotate, fall, and behave. Similar bright colors are used in each program, the pieces are composed of individually delineated bricks, each brick is given an interior border to suggest texture, and shading and gradation of color are used in substantially similar ways to suggest light is being cast onto the pieces. 

This decision is important, in that it further clarifies (also in theoretical terms) the scope of copyright protection for computer programs (in particular videogames), as well as the relationship between the idea/expression dichotomy, merger, and scènes à faire.
As observed by Jack Schecter, the case demonstrates that “the critical fight with clones will be over the appropriate level of abstraction of the game mechanics and gameplay. The Tetris developer’s victory was almost assured once it persuaded the court to identify the underlying game rules and gameplay at a very high level. Having adopted a relatively high-level understanding of the idea of Tetris, the court could readily identify more detailed, granular expressions of that idea that qualified for copyright protection.” 
In any case, what seemed decisive to the actual finding that Xio had infringed Tetris Holding’s copyright were the similarities in the look and feel of the two games (which were held to be tantamount to literal copying), rather than sole reliance on the idea/expression dichotomy.

Those occasionally infringing chairs again

In March the 1709 Blog published this note, "Free movement of occasionally infringing chairs: IP trumps the level playing field", on the Advocate General's Opinion in Case C-5/11 Criminal proceedings against Titus Donner. The facts of the case can be found in the earlier post, if you are not already familiar with them.  In essence, at the relevant time the sale of Bauhaus style furniture was a copyright infringement in Germany, but not in Italy. Furniture was made in Italy and aimed at the German market; it was sold to German purchasers through a scheme which, though it was intended to make the sale an Italian one, was regarded as having taken place in Germany.  Donner, a German national who ran a freight forwarding company based in Bologna, Italy, was prosecuted for copyright infringement, He argued, inter alia, that he had not infringed any copyright since there was no 'distribution to the public' in terms of the Infosoc Directive and that Germany's criminalisation of the sale in Germany of products which did not infringe copyright where they made, in Italy, was an interference with the free movement of goods.

Today, in a fairly short (38 paragraph) ruling, the Court of Justice of the European Union gave an unsurprising ruling, the active part of which reads thus:
"A trader who directs his advertising at members of the public residing in a given Member State and creates or makes available to them a specific delivery system and payment method, or allows a third party to do so, thereby enabling those members of the public to receive delivery of copies of works protected by copyright in that same Member State, makes, in the Member State where the delivery takes place, a ‘distribution to the public’ under Article 4(1) of Directive 2001/29 ... on the harmonisation of certain aspects of copyright and related rights in the information society.

Articles 34 TFEU and 36 TFEU must be interpreted as meaning that they do not preclude a Member State from bringing a prosecution under national criminal law for the offence of aiding and abetting the prohibited distribution of copyright-protected works where such works are distributed to the public on the territory of that Member State in the context of a sale, aimed specifically at the public of that State, concluded in another Member State where those works are not protected by copyright or the protection conferred on them is not enforceable as against third parties".

Online database infringement occurs both where sent and received

Advocate General Cruz Villalon gave his Opinion yesterday in Case C‑173/11 Football Dataco Ltd, The Scottish Premier League Ltd, The Scottish Football League, PA Sport UK Ltd v Sportradar GmbH and Sportradar AG, a reference to the Court of Justice of the European Union from the Court of Appeal, England and Wales.

The note that appears below has been sent in by John Wilks of DLA Piper. John is part of the team that acted for Football Dataco and the other claimants.
What was referred
This was a reference to the CJEU from the English claim brought by Football Dataco and others against sports data supplier Sportradar, relating to the use of data collected live during English and Scottish football matches.  Sportradar sought to avoid the jurisdiction of the English courts, arguing that the infringing act of "re-utilisation" of the claimants' database could only take place  in the Member States in which its servers were situated.  The Database Directive defines "re-utilisation" as "any form of making available to the public", and the key question for the CJEU was whether the relevant data was made available in Austria (the place of "emission", where Sportradar's servers were), in the UK (the place of "reception", where the internet users targeted by the website hosting the data were), or both.  
What the AG Thought
The Advocate General considered that "The act of sending [the data] by Sportradar … is one of the necessary component parts of [the act of making available to the public] and…must therefore be regarded… as being in the nature of ‘re-utilisation’".  He expanded on this by saying "the term ‘re-utilisation’ would include the collection of acts which, in this case, starting with the ‘sending’ of data from Sportradar’s server and ending with the acts performed by the betting companies, culminates in the customers of those companies having access to the data sent".
He went on to explain the policy reasons behind his conclusion, that "In the context of the internet, the categories of ‘emission’ and ‘reception’ become highly relative as criteria for determining the ‘location’ of the points between which there is an act of communication. Categories based on concepts, such as time and space, the meaning of which becomes highly ambiguous in the world of virtual reality, are rendered ineffective by the networked configuration of a global communication medium". 
The Advocate General also rejected as "highly questionable" the idea that the more specific provisions relating to where copyright infringement occurs in a broadcasting context (the so-called "emissions theory") should be applied to online infringement.  This conclusion (if followed by the CJEU) could be of broader relevance to areas of copyright where there is debate as to whether case-law relating to broadcasting should be applied to the online world.
The Advocate General also dismissed as "misplaced" some submissions made to the court by the Portuguese and Belgian governments on the issue of subsistence of database right in live football data, which was not the subject of the reference at all.  
Further thoughts 
... If the Court follows the AG's Opinion, the ... High Court will have jurisdiction to rule on the issue of whether Sportradar is liable for primary infringement for the act of making its original service available to people in the UK.  More broadly, the decision is in line with the policy applied by the CJEU to questions of jurisdiction involving the internet in the earlier personality rights case of eDate (decided by the same Advocate General and referred to in this opinion), which concluded that the claimant could sue either where the publisher was based or where the affected claimant was based.
What does this all mean? John's colleague Simon Levine (IP partner, DLA Piper) explains:
"If followed by the court, the Opinion will bring good news to database right and copyright owners throughout Europe. While it was expressed as limited to the EU database right, it is hard to see why the logic behind it would not apply equally to copyright infringement on the web. Its implications are that website owners will not be able to escape the jurisdiction of the national courts of the content owner by locating themselves in a jurisdiction where it is more difficult for them to be sued".

Wednesday 20 June 2012

Hopping Mad

From guest blogger Philippa Malas comes this thoughtful piece which the 1709 Blog commissioned on a fascinating development in the US: Philippa, who used to work within the art world at Sotheby's, is a persistant IP enthusiast who studied for the Bar course last year.
"Hopping Mad

The major US television networks are potentially hopping mad at the release of a new digital video recorder (“DVR”). “The Hopper” was recently launched by the third largest satellite television provider in the States, DISH. Subscribers to Primetime Anytime can activate the Hopper to record the entire prime time broadcast schedule aired across NBC, ABC, CBS and Fox networks (the “Networks”). The Hopper also features “Auto Hop” which automatically skips the adverts of the stored prime time content during play back. DISH actively markets its product as “commercial free TV”. Ted Harbert, NBC Broadcasting Chairman referred to the device as “an attack on our ecosystem”.

DISH pre-empted objections to its product by filing suit in New York for declaratory relief, arguing that it had complied with its transmission licences and that copyright had not been infringed. Unsurprisingly, the Networks disagreed. Auto Hop allows the consumer to skip advertising during prime time periods which generate significant advertising revenue. NBC, CBS and Fox -- but not ABC -- (the “Networks”) filed suit in Los Angeles for copyright infringement with Fox also suing for breach of contract, in an action which has been stayed pending a motion to dismiss brought by DISH against CBS and NBC. A hearing date in New York is set for 2 July 2012.

The US Copyright Act confers an exclusive right on a copyright owner to reproduce, distribute and prepare derivative works which are based upon the works capable of attracting the right, § 106(1). The Networks contend that infringement has occurred under § 501, alleging (a) direct infringement and (b) secondary infringement through (i) inducement of infringement; (ii) contributory infringement; and (iii) vicarious infringement. It is worth identifying the substance of these objections, then considering the case in relation to EU provisions.

Direct infringement

The Networks argue that the Hopper’s storage capacity (two terabytes or 2000 hours of video content) combined with the Primetime Anytime service means a user can create an on demand library which is copied to a device under the ongoing remote control of DISH. DISH is creating and distributing unauthorised copies of the Networks’ work which directly infringe their rights under §. 501. Note: it is the user and not DISH that is responsible for activating the service and therefore for creating the copy.

Secondary infringement

Inducement to infringe

The Networks also claim that by providing the user with the Hopper and related features, DISH are promoting the use of its products for infringement and inducing infringement (§. 101). They claim that DISH targets known markets for infringement, namely consumers who wish to watch content without paying for permanent copies of ad-free works (via iTunes or This draws parallels to terminology used in the US internet file-sharing case MGM Studios v Grokster. The Supreme Court found against Grokster, which had aimed to satisfy a known source of demand for copyright infringement. It would be difficult to draw the same conclusion in the instant case. DISH’s customers are likely to assume that the third largest US satellite TV provider had obtained the requisite broadcasting licenses and are therefore, dissimilar to the potential pirates a Grokster-type scenario might pre-suppose. In Grokster, the defendants were also found liable as the court established that they had not developed tools to diminish infringing acts and that they were gaining an economic benefit by selling advertising space on their site. DISH is gaining economic benefit and markets the Hopper to an audience as a way of avoiding the advertisements. It is not easy to determine whether infringement has occurred under this head.

Contributory infringement

Second, the Networks allege contributory infringement. The provision of DISH’s services and the Hopper facilitate and assist the user to infringe copyright. FOX’s pleadings allege that DISH has control over one of two storage elements in the Hopper and can monitor its users’ and prevent infringement but that it fails to do so. Success on this ground depends on whether DISH is aware that the users are infringing copyright. Its declaratory relief filing is evidence to the contrary. Even if the users are recording broadcasts, the activity could be exempt under fair use, as established in Sony v Universal City Studios 464 U.S. 417 (1984), and there would be no secondary infringement.

Vicarious infringement

Finally, the Networks argue that DISH vicariously infringes their rights. As DISH has partial control over the Hopper, it has the power to control infringing conduct of its customers. Again, the difficulty here is that it is the customer (not an agent of DISH) which is creating the copy. Control is only recognized in cases which establish a recognised agency relationship. Since the user is not obliged to use the Hopper’s features, infringement is not an inevitable conclusion.

An EU perspective

It seems that the Networks may have difficulty pursuing the infringement claims. Only Fox has filed for breach of contract. Fox also states that it is not taking issue with ‘traditional DVRs’, merely DISH’s particular product. From an EU perspective, that would be a wise path to adopt following the conclusions of the Court of Justice of the European Union (CJEU) in Airfield v Sabam C-431/09 and C-432/09 and more recently FAPL v QC Leisure C-403/08 and C429/08. In Airfield the court considered ‘communication to the public’ under the Satellite Broadcasting and Cable Retransmission Directive (93/83). It held that permission from a rights holder was required when a satellite provider intervenes in the communication from the original broadcaster, making works accessible to a public (‘new public’) wider than that conceived under the original authorisation. This is regardless of whether the programmes are already being broadcast by means reaching viewers directly. DISH counter that they obtained the relevant licences to permit the retransmission of the broadcast. In FAPL, the CJEU again examined ‘communication to the public’, concluding that it was not irrelevant that such a communication is of a profit-making nature [177]. DISH might also struggle with a defence under Article 5(1) Copyright Directive (2001/29). The copies stored on the Hopper are more substantial reproductions than those considered in ITV Broadcasting Ltd and others v TV Catch Up Ltd [2011] EWHC 1874 (Pat) (applying Infopaq)".
A katpat to Chris Torrero, for steering us to the initial link on IP Brief