Friday 25 May 2018

The COPYKAT follows the money

As the world comes together today to panic about celebrate the GDPR coming into force, this COPYKAT follows the money.

Stock photo companies: uncertain standing? When a photographer licences their work to a stock photo company, is that company entitled to bring a copyright infringement claim if those images are subsequently used unlawfully? The answer, at Federal District level in the United States at least, is "maybe".

In May 2012, stock images company DRK Photo sued textbook publishing giant McGraw-Hill for alleged copyright infringement. DRK claimed that McGraw-Hill printed and distributed textbooks containing licensed images (636 unique photographs in total) which exceeded its licence agreement. However, the Court issued a summary judgement in favour of the defendants, because DRK failed to demonstrate any adequate ownership in the copyrights to confer standing.  The case, DRK Photo v. McGraw Hill et alwas then heard on Appeal from the United States District Court for the District of Arizona.  The Ninth Circuit affirmed the district court's verdict in favour of McGraw Hill. 

This case turned on a seemingly nuanced point of blackletter law, which reinforces the importance of careful drafting in intellectual property assignments and licensing agreements. Section 501(b) of the Copyright Act allows the “legal or beneficial owner of an exclusive right under a copyright” to sue for infringement. Unhelpfully, the Copyright Act does not define “beneficial owner.” The question before the Court was therefore whether the right to sue extends to an assignee, who has pre-existing interests in the copyright, and is subsequently injured by infringement.

A key precedent was established in the 1969 case of Prather v. Neva Paperbacks, Inc., which held that an assignee is a proper party to bring suit for copyright infringement. As recently as 2015, Minden Pictures, Inc. v. John Wiley & Sons, Inc held that a stock photography agency, serving as the exclusive licensing agent for allegedly infringed photographs, did have standing to sue for infringement under the Copyright Act.

In its claim against McGraw Hill, DRK contended that Minden created “a bright line rule” that all stock photography agencies have standing to bring copyright infringement claims, by virtue of their agreements with their photographers. In his judgement, Judge Hawkins slapped down DRK for “reading Minden too broadly.”

The decision went on to cite the 2005 case of Silvers v. Sony Pictures Entertainment, Inc, which reaffirmed the principle that a party with no ownership interest has no standing to sue, as “the Copyright Act does not permit copyright holders to choose third parties to bring suits on their behalf.” In evaluating the licence agreements between the photographers and DRK, the Court found that those photographs were under non-exclusive licenses. Accordingly, DRK could not be deemed the legal owner of any exclusive right pertaining to the images.

Freelancers finally make (some) bank. 
In 2001, nearly 3,000 freelance journalists filed a class-action lawsuit for copyright infringement against some of the country’s biggest publishers, including The New York Times. It’s taken 17 years, but the cheques are finally in the mail.

The Authors Guild (whose press release about the case can be read here) filed the suit, together with the American Society of Journalists and Authors, the National Writers Union, and 21 individual freelancers who were named as class representatives.  Of the original 3,000 freelancers, almost 2,500 writers made it through what has been described as “a tortuous legal process” and have already begun to receive their pieces of the $9 million (approx. £6.8m) settlement.

The case, Re Literary Works in Electronic Databases Copyright Litigation (or simply “Freelance”) concerned the copyright relationship between freelance authors, print publications, and electronic databases. In particular, the lawsuit alleged that publishers – including the New York Times, TIME, and Economist – shared licensed articles written by freelancers to the Lexis/Nexis electronic database and other digital indexers, without first obtaining the writers’ approval.
James Gleick was previously a reporter and editor for The New York Times for 10 years. He is now the president of the Authors Guild and one of the named claimants in the case. He explained, “the argument that we made was the writers got paid for one-time use. We sued The Times because they sold copyrighted work by not just their staff, but also freelance writers. And the correct thing to do would have been to ask the freelance writers for permission and then pay the writers.”

While freelance writers account for nearly 70% of all professional writers in the United States, according to a survey done by Contentlyover 20% of full-time freelancers make below the American poverty threshold for individuals.
Settlement was nearly reached in 2005, but negotiations stalled over disagreement regarding writers who had not registered copyrights for their work. In the United States, registration with the US Copyright Office is required before a suit for copyright infringement may be brought in federal court. However, the 2010 Supreme Court ruling Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 held that the settlement proceedings could continue.

The parties again reached what seemed to be a final agreement in 2014, only to endure four more years of delays caused by 41,000 objections challenging specific claims under the revised settlement agreement (Publishers Weekly). This tactic appears to have paid off for the defendants, however, as the final pay-out for the freelancers equalled only 50% of the $18 million liability cap negotiated in the initial settlement agreement.

Writing about her experience as a class member for LA Observed, Ellen Alperstein explained: “Did I receive what I was due? Nah. But more important than my check for $2,555.77 was confirmation that my work has value that our justice system respects. That organizations such as the ASJA served a vital role in my nascent career, educating me about writers' rights and my responsibility in advocating for them.”

Nightmare in Nigeria for Copyright Society. 

Controversy surrounding the Copyright Society of Nigeria (COSON) reached epic proportions earlier this month, as power struggles between the organisation and the Nigerian Copyright Commission (NCC) rumble on (Daily Trust).

Following a General Meeting of COSON in December 2017, several members sent a petition to the Governing Board to request an investigation regarding certain decisions made at the meeting. The Commission then issued directives to COSON Management, requesting that the irregularly-made decisions not be implemented. COSON Management failed to comply, and subsequently had its license revoked in line Regulation 19 (2) of the Copyright (Collective Management Organizations) Regulation 2007.

The continuing defiance of COSON Management is, according to Ezekude, “a clear indication of COSON’s unwillingness to operate within the framework of the Copyright Act” (4Traders). In return, COSON has called directly upon Nigeria’s President, Muhammadu Buhari, to immediately relieve Afam Ezekude of his position as the Director General of the NCC (

By way of background, COSON was established in 2010 as the sole collective management organisation approved by the Nigerian Copyright Commission (NCC) to act on behalf of musicians and owners of sound recordings in Nigeria. In particular, COSON undertakes negotiating, granting copyright licences and collecting royalties, and curbing the “biting case of piracy that has plagued the Nigerian music industry.”  (Music in Africa).

Before COSON was founded, multiple entities had promised to represent the interest of musicians and other creatives, including the Nigeria Copyright Council, Music Collective Society of Nigeria and the Performing Musicians Association of Nigeria. Their failure to deliver on these promises led to the call for a singular collective management organisation as a result. Ultimately, it was COSON which obtained support of other national associations and the permission to collect royalties on behalf of Nigerian artists.

When first established, COSON was heralded as “one of the most important developments in the Nigerian entertainment industry in the last fifty years“ (Lessons for Africa). Unfortunately, this ongoing drama will provide little comfort to Nigeria’s creatives.

Speaking to The Nation on the subject, Nigerian artist Paul Play Dairo stated: “When you have a monopoly, this will not be flexible. They will take things for granted. I don’t know why Nigerians feel that only one collecting society will solve their problems. And also, as a concerned Nigerian musician, I believe that I have the right to protect my intellectual property, I have the right to choose the collecting society that I want to join.”

Smokey Robinson supports CLASSICS for fairer compensation.
As the CopyKat previously covered, copyright legislation is soon to be updated in the United States. Earlier this month, Motown legend Smokey Robinson joined a number of other entertainers before the United States Congress to throw weight behind stronger copyright protections for artists and rights owners. The proposed Music Modernisation Act (MMA) has received wide bipartisan support from Democrats and Republicans alike. Musicians from all backgrounds likewise welcome the new payment provisions in particular, as many assert that making a living off sales of albums and CDs is "a thing of the past" as users increasingly turn to streaming.

The MMA will be comprised of several separate titles (sections). Title II, entitled “Compensating Legacy Artists for their Songs, Service, and Important Contributions to Society (CLASSICS) Act” will focus on public performance rights for pre-1972 recordings. If passed, musicians with pre-1972 recordings will receive royalty payments when their tracks are played on the radio, with royalties then allocated for recordings played on the Internet, cable, and satellite radio.

This will amend current copyright law, which only protects music produced after Feb. 15, 1972. Robinson explaining that musicians deserve to be compensated in the same way, regardless of the recording dates of their particular music. The CLASSICS Act is intended (inter alia) “to fix the quirk in the law that created this loophole” (Variety).

“The records of the 50’s and 60’s aren’t called “classics” because of their age,” he noted. “They’re called classics because of their greatness. They still resonate today. They add value to our lives and bring people together. They define America.”

Robinson then detailed that during an audit of a digital services company several years ago, he discovered the company owed him $250,000 in royalties. After confronting them, he was offered $12,000 and told, “If you don’t like it, sue us.” In his written testimony, Robinson explained that few artists have the financial resources to commence legal proceedings, and would therefore benefit from statutory damages protection. You can watch a clip of Robinson answering Senator Cornyn’s question about statutory damages here.

Thursday 24 May 2018

The 1709 Blog and the GDPR

Inspired by our friends at The IPKat and the post that Ebhlin Vardy published this morning, we also wish to let our readers know that tomorrow the EU General Data Protection Regulation EU (2016)/679 (GDPR) comes into force in all EU Member States.

The GDPR applies to ‘personal data’ meaning any information relating to an identifiable person who can be directly or indirectly identified by reference to an identifier. It requires that personal data be processed lawfully, fairly and in a transparent manner, and that personal data be collected for specified and legitimate purposes.

For those who subscribe to the blog, the 1709 Blog collects email addresses which can include personal data.

The 1709 Blog relies on its legitimate interests to process this data so that we can keep you up to date with developments as reported on the blog. The 1709 Blog does not make any other use of this data.

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The 1709 Blog respects your personal data and takes care to maintain its confidentiality.  It does not share your data with third parties.

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The International Framework for the Protection of Authors: Bendable Boundaries and Immovable Obstacles

The International Framework for the Protection of Authors: Bendable Boundaries and Immovable Obstacles

Thursday June 7th   17.30-19.30   CITY UNIVERSITY LAW SCHOOL 

The international framework within which authors’ rights in their works are protected and exploited is often the topic of debate in the context of  the reform of national copyright laws: Professor Sam Ricketson takes a pragmatic approach to identifying the “immovable obstacles” to reform, while seeking to expose the potential flexibilities and gaps – the “bendable boundaries” - within the international framework that may enable the realisation of some, at least, of the objectives of those who would seek to reform and reformulate copyright laws. It may be that there is a brave new world for the protection of authors’ rights that is embedded within the interstices of the present international framework that is waiting to be uncovered and realised. Why not attend this free seminar to find out more!

Professor Sam Ricketson (University of Melbourne) holds degrees from the Universities of Melbourne and London, and is a Fellow of the Academy of Social Sciences of Australia and Australian Academy of Law. 

Location: AG07b
College Building
City, University of London
St John Street



Sunday 6 May 2018

Academic boycott of new journal over open access

Many months ago, this blogger wrote about ‘Open Science and Open Culture’. I’d like to continue this line of discourse if I may, (having recently emerged from a writing malaise borne out of a seemingly unending job search) with a discussion on academic publishing and open access. Of particular interest is the boycotting of a brand new academic journal entitled “Nature Machine Intelligence”, which is to be launched in January 2019 by publishing giant, Springer Nature.

The era of machine learning is upon us.

Nature Machine Intelligence will be an “online-only journal for research and perspectives from the fast-moving fields of artificial intelligence, machine learning and robotics” (quote source here). The fledgling commercial subscription journal has, however, been met with a certain amount of hostility by the academic community. Indeed, 2,816 individuals (at time of writing) have refused to “submit to, review, or edit for this new journal” in a Statement on Nature Machine Intelligence. This move is a signifier of a larger cultural shift that has been growing since the inception of the internet, which seeks to move away from ‘paid-for’ access to research knowledge to an open access model. The objective of this open access model is that anyone with an internet connection might furnish themselves with the latest scientific and academic knowledge and insights.

The traditional system of academic publishing

In order to have a piece of work published by a respected publisher (a must for many academics – ‘publish or die’), academics must usually assign the copyright in their work to the publisher. The publisher then locks the work behind paywalls, charging money to gain access to the research output via subscription payments. This maximalist use of copyright – to limit access to academic knowledge to only those who pay the toll – is what proponents of openness argue hinders development in society. Subscriptions to academic journals will usually only ever be paid by universities and other large institutions or companies and even at that, these large organisations face problems in being able to afford publisher subscription charges: see this famous memo from Harvard, one of the worlds richest and most prestigious universities, for an example of the budget strain that besets many institutions as a result of prohibitive publishing charges. Probably the most galling aspect of the situation is that – despite academic research being funded mostly from the public purse – large swathes of the general public will never be able to access research output and are therefore unable to gain any of the benefits brought about from these tax payer funded investments.

The push for openness

The driving rationale behind the push for openness is to create a counterpoint to an ‘all rights reserved’ culture.  Bestowing property rights in intellectual creations is intended to “promote the progress of science and the useful arts” (Article I, § 8.01.8 of the U.S. Constitution), yet there is a growing pushback within society which posits that the propertisation of all intellectual creations actually hinders the development of science and the arts. Innovation is always built upon that which came before it – everyone is always somehow “standing on the shoulder of giants” after all. However, if standing on the shoulders of giants entails insurmountable difficulties – such as exorbitant licence fees, expensive copyright infringement lawsuits or even a complete inability to gain access to knowledge and research – innovation will likely be stilted. Academic publishing is something that many openness advocates would describe as the archetypal example of innovation being hindered because intellectual creations have been commodified and propertised. For publishers to use copyright as a tool to generate profit from research output that was funded largely by the tax payer presents legitimacy issues for the existence of copyright, as well as the publishing industry.

The internet has been the fundamental driver behind open values. Various international legal instruments have been crafted to push forward the openness agenda, with the objective of making academic research available to anyone with an internet connection. These include the Budapest Open Access Initiative, the Montreal Declaration, the Bethesda Statement, the Berlin Declaration, the Durham Statement of Open Access to Legal Scholarship. The opening of the Berlin Declaration is particularly powerful:

“The Internet has fundamentally changed the practical and economic realities of distributing scientific knowledge and cultural heritage. For the first time ever, the Internet now offers the chance to constitute a global and interactive representation of human knowledge, including cultural heritage and the guarantee of worldwide access.”

This paragraph emphasises the key importance that the sharing of knowledge has to our species and how the internet has made the sharing of knowledge easier than it has ever been. Indeed, the dramatically decreased costs of sharing academic outputs that has been engendered by the internet makes spiralling publisher subscription costs somewhat confounding. Making knowledge available to everyone opens up possibilities of collaboration and follow-on innovation; it helps us develop our understanding of the world, as well as our understanding of ourselves.

Statement on Nature Machine Intelligence – the boycott of Nature Machine Intelligence

Many of the major academic journals that cover machine learning (which covers the plethora of science relating to artificial intelligence) are already open source. These include the Journal of Machine Learning Research, NIPS, ICML and others. Importantly, these journals do not charge for access, nor do they charge authors for publication, which is in direct contrast to the subscription based Nature Machine Intelligence. The Statement on Nature Machine Intelligence explaining the boycott emphatically declares that signatories

“see no role for closed access or author-fee publication in the future of machine learning and believe the adoption of this new journal as an outlet of record for the machine learning community would be a retrodgrade step. In contrast, we would welcome new zero-cost open access journals and conferences in artificial and machine learning.”

The boycott of this new subscription journal by nearly 3,000 experts within its specific scientific field signals that the academic community are pushing back against the closed-access model employed by the majority of academic publishers. Open access is moving into the mainstream culture within academia. With it comes new and exciting opportunities of follow-on innovation, collaboration and new possibilities for the advancement of human knowledge.

Wednesday 2 May 2018

The COPYKAT celebrates World IP Day

Following the celebrations of World Book and Copyright Day and World IP Day we are bringing you the latest news from the copyright world.

Monkeys Lack Standing to Sue for Copyright Infringement – 9th Circuit Rules on ‘Monkey Selfie’ Case

On April 23rd the long dispute over the infamous ‘monkey selfie’ (covered here, here and here), which was taken by a Macaque monkey, named Naruto, has finally been decided. Following PETA’s complaint in 2015 where the organisation had requested to have any profits that will be gained from the photo taken by Naruto should go to the monkey and preserve its habitat, last year in July the Ninth Court has heard the parties’ arguments. Subsequently, two months later the parties have reached the settlement and filed a motion to dismiss the case but the motion was denied by the court.

The Ninth Circuit Court of Appeals held that the monkey, which was named as the plaintiff, lacked statutory standing to bring an action for copyright action under the Copyright Act. Neither it was possible for PETA to validly assert ‘next friend’ status that would allow it to represent the monkey “both (1) because PETA has failed to allege any facts to establish the required significant relationship between a next friend and a real party in interest and (2) because an animal cannot be represented, under our laws, by a ‘next friend’”.

Bulgaria was one of the four countries which have failed to pass the laws that will fully implement EU Collective Rights Management Directive (Directive 2014/26/EC). On 7th December 2017 the European Commission said it will refer Bulgaria to the Court of Justice of the EU and request a fine of €19,121.60 per day for failure to transpose the Directive which the country was supposed to enact by April 2016. The main aim of the Directive is to improve the operation of collective management organisations and set common standards for the multi-territorial licensing of rights for musical works that are distributed online.

In light of the Directive, Bulgaria has recently passed several amendments to is Copyrights and Neighbouring Rights Act. The new provisions will now allow non-profit organisations and other commercial legal entities (independent companies) to conduct the collective management of copyrights. In order to do so, independent companies will have to enter into a separate agreement for copyright management with the rightholders and register in the Rights Management Organisations Register at the Ministry of Culture. Furthermore, amendments introduced to the Copyrights Act regulate the responsibilities of the parties in the event of live performances, shift the control of copyright compliance to municipalities and provide the Minister of Culture with a power to oversee the collective management of rights.

Several major Hollywood studios, including Disney, Paramount Pictures and Warner Bros, together with Netflix and Amazon, have formed a new (another?!) anti-piracy partnership, Alliance for Creativity and Entertainment (ACE), and have brought an action against Set Broadcast LLC, seller of the popular IPTV service SET TV. Following their actions against Tickbox and Dragonbox devices, members of ACE have filed a complaint against Set Broadcast accusing it of facilitating mass copyright infringement. In the view of the Plaintiffs, the software offered by Set Broadcast allows its buyers to stream copyright infringing content. As stated in the complaint, “Defendants market and sell subscriptions to “Setvnow,” a software application that Defendants urge their customers to use as a tool for the mass infringement of Plaintiffs’” copyrighted works. Additionally, Defendant invites its customers to download and install the software on their portable devices and computers. Apart from the software the company also offers preloaded boxes which enable their users to watch ‘on demand’ content and live streams of TV Channels. Plaintiffs claim that “[f[or its on-demand options, Setvnow relies on third-party sources that illicitly reproduce copyrighted works and then provide streams of popular content”. Therefore, ACE members are claiming in their action statutory damages and seeking an injunction to close the service and seize all the devices that are in Defendant’s possession. ACE spokesperson said that piracy software such as ‘Setvnow’ impair films and TV shows market, and cause harm “to a vibrant creative economy that supports millions of workers around the world”. Therefore, ACE is committed to “protecting creators and reducing online piracy through dedicated actions against illegal enterprises”.

Earlier this year in February, director Christian Charles has filed a complaint in the Southern District of New York alleging comedian Jerry Seinfeld, together with companies involved in the production of the Comedians in Cars Getting Coffee web series. Charles claims that he has come up with the concept of the series and although he created the pilot episode, he is now out of the production, and royalties, as well as profits in violation of his copyright. In response to the lawsuit, (as reported by IPWatchdog), on April 4th Seinfeld filed a memorandum to support the motion to dismiss the case. He asserts that the copyright claim should be dismissed for being time-barred given the claims were filed after the expiration of the statute of limitations. In the situation, where the Court finds the claims cannot be dismissed on the time limit basis, Plaintiff’s claims should be dismissed on the basis that they fail to provide a protectable copyright interest. In the view of Seinfeld and others, the concept of comedians in cars that has been followed by similar concepts such as Carpool Karaoke and Cougars in Cars Getting Cosmos, which “consists of nothing but ‘common stock ideas’ and unoriginal scènes à faire that do not rise to the level of original protectable expression”. Additionally, the Defendants claim that Charles has fraudulently obtained his copyright by registering similar title “designed to mislead the Copyright Office into accepting a copyright application that directly conflicted with the one filed by Mr. Seinfeld.”

In the previous CopyKat [look here] we have looked at the dispute between Solid Oak Sketches and Take-Two over copyright infringement of tattoo designs. During the last week, a new lawsuit has been filed which addresses the issue of tattoo’s copyright protection. In her action against WWE and 2K Gamers, tattooist, Catherine Alexander who inked WWE wrestler Randy Orton argues that her designs were used in a commercial manner without her consent. Similarly to the NBA2K game, here video games from WWK2K series prominently feature Orton’s multiple tattoos in digital designs. According to Alexander, the games display Orton’s tattoos in a manner that is same or substantially similar to her copyrighted works. The question that the Court will have to answer, as indicated by Forbes, will be whether WWE and 2K Games have actually copied the work and whether there is a similarity between Alexander’s protectable designs and works in the video games. In the view of Alexander, “there is no doubt that her designs have been ripped off and reproduced in an effort to make them seem as close to real-life as possible”. 

In 2017 China’s Internet Copyright Industry Grew by Over 27%

In a recently released report, The National Copyright Administration of China reveals that its internet copyright industry grew by over 27% last year and has reached over  636 billion yuan, (US$100 billion). The biggest contributors are online news portals and online games which account for 73% of the total market value. In 2017 online news and information market grew by 40%, whereas online gaming increased by 32% and reached 235.5 billion yuan. Live streaming and short videos over the past two years have seen the most rapid growth, achieving a number of 422 million live streaming users. Mr Zhang Qinkun, Secretary-General of the Internet Copyright Industry Research Center, in observing prospects in the industry for the coming years said that businesses should concentrate on improving the quality of their content in order to attract users.

At the same time, the National Office for the Fight Against Pornography and Illegal Publications revealed in its report that China has dealt with over 460 cases in the first three months of the year that involved copyright infringement. According to the National Office, in connection with the cases more than 1.5 million illegal publications, such as e-books, videos and games were confiscated.

The Swedish Patent and Registration Office (PRV) has created national aggregator called (‘stream legally’), which aims to promote legal streaming among Swedish citizens. The platforms allow for searching of copyrighted works, such as films, TV shows, music, and sports events providing a single access point to find legal digital content. is part of agorateka, portal of the European Intellectual Property Office (EUIPO) that intends to raise awareness and allow the search for legal content through national-level portals. Through the creation of its portal, Sweden joins 14 other EU countries that already have aggregator websites as part of agorateka programme.

For more information click here and here, and watch the video here.

This update by Mateusz Rachubka