Wednesday 30 January 2019

New Zealand Copyright Act under review

The 1709 Blog is delighted to host the following contribution by 1709 Blog friend Ken Moon (AJ Park Law, Auckland) concerning the ongoing review of the New Zealand Copyright Act. 

Here’s what Ken writes:


The New Zealand Copyright Act 1994 is now under review. The review got underway in earnest with the November release of a 126-page Issues Paper by the Ministry of Business, Innovation & Employment (MBIE). This review is of the whole of the Act, although internet issues are pre-eminent.

The MBIE Issues Paper identifies potential issues upon which it seeks submissions from interested parties. MBIE appreciates that the Act may already adequately address some issues it has identified and is happy to receive submissions arguing for no change.

Adherence to international copyright treaties
Over the years, New Zealand has not been good at amending its copyright legislation to ratify international copyright treaties or conventions. However, as is noted in the Issues Paper, under the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), New Zealand is obliged to make amendments to incorporate many of the provisions in the IP Chapter of the TPP and this process is already underway. Some of these require implementation of terms of the 1996 WIPO Performers and Phonograms Treaty (WPPT) which addressed internet issues, particularly for performers who had previously been side-lined. However, there are other provisions of the WPPT which will need to be addressed in the comprehensive review, such as performer remuneration for broadcasts and communications of their recordings.

Some of the Identified Issues
Fair use and exceptions to copyright infringement
Currently, the Act ensures certain listed non-commercial activities are not infringements of copyright, including those categorised as ‘fair dealing’. The Act also makes specific exceptions for the education industry and libraries. This is the traditional British approach.

But should a broader US fair use defence be adopted in place of fair dealing? Naturally social media advocates favour this. However, fair use is somewhat subjective and reduces the certainty of legal opinions on what is infringement and what is not.

As to the adequacy of the existing statutory exceptions to infringement, it is time to look at whether the reproduction of parts of a work for the purposes of satire should be excepted. Also, should exceptions for public playing of works and format-shifting be more extensive? On the other hand, is the current exception for reproducing artistic works on public display, such as sculptures, unnecessarily broad. An example being applying an image of a sculpture to t-shirts without obtaining a licence from the sculptor and paying royalties.

Internet-related issues
  • Should a website link to infringing content stored on another website constitute copyright infringement as under EU law? 
  • MBIE questions whether content streaming should be treated the same as broadcasting under the existing right to communicate. But many will argue that the particular transmission technology is irrelevant from a creator’s point of view. 
  • New Zealand is the only country that has ‘communication works’ specified as a work in which copyright subsists. This makes broadcasts and internet streams to the public copyright works in themselves, in addition to any copyright in the content. Thus, retransmission may constitute infringement. This was the most far-sighted of all the 2008 ‘internet amendments’ made to the Act. However, MBIE believes this is problematic because it is hard to know who might constitute the ‘public’. Strangely, MBIE does not see this as a problem with the communication right. 
  • User-generated content on social media platforms, even if it is supposedly merely ‘inspired’ by existing content, can amount to copyright infringement if it reproduces a substantial part of that content. Should this be the case or should there be exceptions? 
  • Currently, section 43A of the Act provides an exemption from infringement for transient reproduction of a work if it is an integral part of the technological process for communicating the work. This has application to streaming technology, but has been interpreted by a New Zealand court in a more restrictive manner than has been the case in the UK. Clarification seems called for even if all that is done is inserting a definition of ‘transient’. 
Software-related issues
  • The Act does not allow for a copyright owner to renounce their copyright. Some software developers (and users) have wished for this instead of retaining copyright and adopting licensing schemes of the open source or creative commons types. Should renunciation of copyright be provided for? 
  • The Act currently already provides specific exceptions to infringement for computer programs such as: 
    • decompilation of a program in order to write an interoperable program 
    • copying or adapting a program to allow for continued use and for correcting errors 
    • studying the functioning of the program to determine the ideas that underlie it while loading, displaying, running, transmitting, or storing the program. 
These were radical enough when introduced in the 2008 amendments, but MBIE is asking if there should be further exceptions to program infringement.

Enforcement of copyright
  • MBIE asks whether a voluntary register be made available, as in Canada, to simplify identification of copyright owners. But it is questionable whether there have been injustices in past New Zealand copyright cases to justify the costs of running such a register of ownership. 
  • Currently legal action for copyright infringement can only be taken by copyright owners or their exclusive licensees. Should non-exclusive licensees be able to sue?
  • Should the Act provide a remedy for groundless threats of copyright infringement as is the case for patents? 
Relationship between copyright and registered design protection
In New Zealand the Copyright Act protects three-dimensional copying of functional products via the copyright which subsists in the design drawings of the product – as used to be the case under UK law. MBIE raises the old question of whether the potential overlap between copyright protection for product design and protection by the Designs Act should be permitted. The fear of New Zealand protection providing greater protection for foreign designers compared to what New Zealand designers may receive in some other countries emerges. Of course, New Zealand designers are accorded unregistered design rights in European Union countries, even if not in the USA.

Due date for submissions to be made
Submissions on the Issues Paper can be made to MBIE until 5.00pm on 5 April 2019. An online portal can be used for this. Submissions will be published, although confidentiality can be claimed for some content.”

Monday 28 January 2019


The planned and now revised and re-revised EU copyright law reforms have been repeatedly criticised for bringing in new laws that will 'break' the internet due to provisions that Google in particular finds very worrying. But they are just one voice (albeit one very noisy and well funded voice) clamouring for the proposals to be watered down or ditched altogether. As reported by The Verge, Google has released an image showing the implication of the directive on its search engine. The image clearly shows how its “news segment” will look like. It involves an empty description area wherein the 'transformative' usage by Google of short snippets of news in its search web page would disappear. The screenshot showed that if a user in the EU searches “latest news”, Google would merely be able to provide links to the web sites which display such news, without any short summaries, stories, headlines, pictures or videos. This has been claimed to have a majorly adverse impact on the way Google perceives its users to use its platform. Why so? Well Article 11 of the Copyright Directive gives publishers the right to demand paid licences for using snippets of their stories, which definitely defeats the transformative use claim by Google.  Google has claimed this will lead to two choices: Either paying for licenses - or no snippets at all. This would thus mean a massive change in the whole way Google is used and is expected to be used as a platform for the dissemination of information and Google says that surely this is definitely a regressive path.  Google has further reportedly threatened to pull its operations out of the EU if the “link tax” (Article 11) provisions are passed. Another development came from the January 18th meeting when 11 countries (including Germany, Belgium, the Netherlands and Finland) voted against the reforms, concerned about the now near infamous Article 13 and the aforementioned Article 11. A direct implication of this was then the cancellation of the approval meeting which was scheduled to take place on the 21st of January. Another major opponent of this approval was Italy which didn’t seem to be very impressed with the strict copyright proposals. It's STILL all to play for!

But of course its not all one way PR traffic: 95 Leading European filmmakers including Alejandro Amenabar, Marco Bellochio, Cristian Mungiu, Pawel Pawlikowski, Alan Parker, Betrand Tavernier and Susanna White, have signed and sent an open letter calling on the European Union (EU) to honour a key part of the pending  Directive - Article 14 - which  calls for “fair and proportionate” payment for work throughout its commercial life. And CMU Daily reports that the global music industry has said proposed Article 13 compromises are a backwards step: An open letter says: “After years of hard work, the Copyright Directive is at a very critical point. The proposed text circulated ... falls below the standard of the three texts produced by the three European institutions and would not be an acceptable outcome of the negotiations” adding “The European Union cannot miss this unique opportunity to achieve one of the key objectives of the European Commission proposal, which was to correct the distortion of the digital market place caused by user-upload content services. Therefore, the undersigned call on negotiators to urgently make substantial changes to the 13 Jan proposal by the Romanian Presidency in order to get the directive back on the right track” with signatories including music industry organisations IAO, ICMP, IFPI, IMPALA and IMPF with support from the film, media, broadcast and book sectors.

Canadian Prime Minister Justin Trudeau's appointment of a former law professor as Minister of Justice and Attorney General has raised some eyebrows, not least as the appointee, David Lametti, once wrote in a paper that file sharing “is not necessarily theft, piracy or even wrong.” Lametti, is a founding member of McGill University’s Centre for Intellectual Property Policy (CIPP), where he served as director from 2009 to 2012 and although Music Canada and SOCAN provided only careful statements about Lametti’s appointment, some creators and music executives are concerned about the potential effect on the current Canadian copyright reform process, now in its final stages. In Lametti’s 2011 paper, The Virtuous P(eer): Reflections On The Ethics Of File Sharing, he wrote that his “strong ethical intuition is that one should never put up a digital barrier or fence around music, whatever the law might allow.” He also argues that “current normative structures ought to be adapted to reflect this more profound understanding of the impulse to share music.”

The Delhi High Court has restrained a website from putting on  copies of The Times of India and The Economic Times on its pages. In an interim direction, Justice Manmohan barred the website and instructed the registrar GoDaddy to to lock the ownership of the domain name The law suit seeks a for permanent injunction for trademark infringement, copyright infringement and unfair competition.

Lucasfilm and Disney have lifted the copyright claim that they recently placed on Star Wars Theory’s Darth Vader 'Fan Film'. In fact the claim was driven by Disney as Star Wars Theory had released his Darth Vader Fan Film (which as of now, has been viewed over 7.2 million times on Youtube)_ with the permission of Lucasfilm who gave him their blessing as long as the film was made it without crowd funding and the video was un-monetized.  But then Disney and music publisher Warner Chappell claimed that a rendition of the Imperial March score infringed copyright and seemed to be seeking to have the entire film taken offline. It seems pressure by Lucasfilm led to a change of heart by Disney, and the film stays up

In Hong Kong, a Harry Potter-themed cafe is being sued for copyright infringement by film studio Warner Bros. The 9 ¾ Cafe in Mong Kok, which opened in 2017, is covered in paraphernalia from the hit books and movie franchise The Hollywood giant says the cafe’s owners are infringing on its copyright, even though the cafe does not claim any relation to the franchise. The South China Morning Post says the claim demands an unspecified sum of damages, a removal order plus multiple injunctions.

It seems that Google is looking for a final resolution in its ongoing legal battle with Oracle, with  Google asking the Supreme Court to make the final call in the dispute. The company has announced it has filed a petition with the Court, asking the USA's most senior court to determine the boundaries of copyright law in code.

My thanks to our intern Akshat Agrawal for his assistance with this update 

Friday 25 January 2019

Unmasking 'La casa de papel'?

TV series 'Money heist' by Atresmedia 

Gala-Salvador Dalì Foundation, which manages the estate of the Spanish artist, recently challenged the use of a mask having Dali’s features during the famous Spanish TV series “La casa de papel” (“Money Heist” in English), distributed by Netflix all over the world.  

This TV series, which is now one of the most successful non-English speaking series in the history of the platform, describes the heist of eight robbers assaulting the Spanish National Currency Factory to print their own money, approximately EUR 2,4 billion. The robbers in the series make the assault using a mask which became one of the most iconic elements of the TV series, together with the red overalls that the robbers and the hostages wear. This mask has the same appearance, curling moustache and eyes of Salvador Dali.

This use of artist's image was questioned by Gala-Salvador Dali Foundation, the private institution created by the surrealist painter in 1983 with the purpose of promoting, fostering, protecting and defending the artistic legacy and Salvador Dali’s image. The Foundation requested the producers of the series, Atresmedia and Vancouvermedia, to reemdy to the unauthorized use of the painter’s image, which would infringe Dali’s image rights.

For their part, the series producers claimed that the mask was just a caricature of Dali’s image and, as such, did not require any authorization. 

The alleged caricatural use of Dali’s image could be challenged in different jurisdictions where the TV series is distributed and where caricatures may be treated very differently. In Europe, for example, Art. 5.3 (k) of Information Society Directive 2001/29/EC gives Member States the option to provide for exceptions or limitations to economic rights “for the purpose of caricature, parody or pastiche”, without giving any specific definition of these terms, leaving ground to several interpretations. Possible court decisions in Europe could then have different outcomes.   

Anyway, newspaper reported that the Foundation and the TV producers are coming to an agreement concerning the past and future use of the challenged mask in 'La casa de papel'.

Wednesday 23 January 2019

The 1709 Blog welcomes new intern Akshat Agrawal

Akshat Agrawal
Every now and then The 1709 Blog team gets a refresh! 

We are delighted to announce that for the next 6 months we will be joined by a new intern, Akshat Agrawal (Jindal Global Law School, India).

Here's Akshat's profile and experience in his own words.
I am Akshat Agrawal and I am currently pursuing my undergraduate BA LLB degree from Jindal Global Law School, India. I am in my penultimate year.
I was a part of the team that represented Jindal at the Oxford IP moot 2018, and am the coach for the team representing in 2019. 
My core research interests lie in substantive copyright law and the core concepts which drive the threshold of copyrightability. Most of my research has been with respect to copyrightability of unconventional works, and the interface of tech and copyright (AI!!)
I am a huge advocate of author's rights, specifically singers mainly because of being from a musical background and the ground level issues we face. 
P.S. My artist name is 'raagasforsolace'. Check my music out. 
More about me on LinkedIn here.

Monday 14 January 2019



In a case being tagged as “one of the most important battles” in YouTube history, Mars Argo (Brittany Sheets) had alleged identity and copyright infringement against Corey Mixter and Moriah Pereira (commonly known as Poppy). The grounds of the allegation mostly related to a video put up by the duo, which was termed as a “Mars Argo knockoff” by Sheets. The core of the dispute (as far as copyright and image rights are concerned) rested upon the claims stating an intimation of Mars Argo’s identity, likeness, expression of ideas, sound style and certain other distinctive elements of Argo’s voice and look (dyed hair to a specific Platinum color). It was claimed by Sheets in the lawsuit, that the duo tried to emulate the look as well sound style-associated with her and tried to pass themselves as her for commercial purposes. This law suit has however reached an ugly settlement (details can be found here) where the parties have agreed to never speak to or of each other and where all the rights to the work and identity have been settled to remain with Sheets. According to us however, a claim for fair use is bound to exist here, as there was no substantial reproduction of the work per say, and such a restrictive interpretation of a parody can have major ramifications on the YouTube creator community. Even in the case of H3H3 v. Matt Hoss, fair use was upheld on a YouTube upload which was criticising or came into the category of a parody. Similarly, herein as well merely the style or the way the content is expressed has been appropriated rather than the expression itself. The intricacies of the matter are not present in the public domain and hence an accurate analysis would be tough to construe, however I would like to point out to the case of Campbell v. Acuff Rose (1994) which bought in the concept of “parody as an obvious claim of transformative and fair use”. Justice Souter in that case had held that, parody, like comment or criticism, is bound to be covered under fair use and Section 107 of the US Copyright Act. It is an amalgamation of reference and ridicule which has been held to be permissible as a transformative element. Further, the court had coined the “conjure up” test wherein it was established that the threshold to deny a finding under fair use, in the case of a work which was a parody, was when the parodist appropriated a greater amount than necessary to ‘recall or conjure up’ the object of the parody. Hence, merely appropriating the sound style or look won’t qualify as infringing content per say, as long as substantial similarity is sufficiently established.


As reported in Spanish by Cointelegraph, the Argentina based NEM foundation signed an MOU with a local trade union of journalists to work upon building a blockchain based solution for copyright protection. The issues which are sought to be countered through this are that of content theft and royalty paying failures amongst others. It has been developed to regulate the flow of content and enforce licensing rights effectively. A similar arrangement was recently entered into for a similar purpose by Associated Press (AP), to track the use of content. AP had entered into such an agreement with CIVIL, to use its network to track the use by potentials of created content. The main aim of the same is to keep a check on the chain of value and ensure adequate receipt of credit and compensation on the event of exploitation and use of a copyrighted work. The usage of block chain technology has been hailed to be effective in keeping track of how the information is used and avoid use for illicit purposes like Fake News propagation. Control over all kinds of information created, with the creator, has been argued to be the basic goal of inculcation and usage of blockchain technology, particularly in journalism.

The method of operation of the same has been enunciated upon by the press secretary of the local Argentina based union of journalists – CISPREN, who states, “Authors will be able to upload their content to blockchain, ensuring authenticity. Further, presence of a QR code along with a digital signature will be additional safeguards in the case of a dispute.” An advantageous implication of the emergence of blockchain technology in the journalism domain obviously will be the presence of a “vigilant eye” for anyone violating copyright due to a permanent record of the work and the ability to track the usage of the work, as has been reported by the bitcoin magazine. However, certain anxious issues exist as well, with the evolution of technology and the incapability of law to address the various consequential problems associated with it. The law, is not in its current state, woke enough to accommodate to such technological usage and there is grave possibility of misuse. Due to the anonymous nature of blockchain based transactions, which are embedded in an immutable manner, there is a huge possibility of circulation of infringing content and mis-information. The option to exploit such technology is not merely limited to rightsholders but rather is accessible to infringers as well, and until regulation is at its paramount, there is a certain risk associated with the adoption of newer technological mechanisms. Certain questions like management of takedown requests, identification of location of infringing work in an immutable embedded world are being posed, which are imperative to be brainstormed upon before lauding the appealing usage of such technology.


The registration requirement is unique to the United States copyright enforcement and has been a topic of debate, in relation to its ambit, since long. There has been a split on the threshold requirement to fulfil “registration” amongst the circuits, with some preferring the “certified registration complete” approach (10th and 11th circuit) and some, the application approach, which is limited to merely applying (5th and 9th circuits). Even within the 6th and 7th circuits, there is no harmony in the view adopted and there has been a multitude of opinions flowing as to which is the most appropriate and intended one. The Copyright office has also shown its support towards the registration approach. It’s inclination towards the registration approach obvious, keeping in mind the profitability that follows from it. There is an expended approach mechanism, wherein the rightsholder can finalize upon a registration in under 5 days, upon the payment of a hefty 800$ per claim, over and above the regular application fee. The argument resorted to by the proponents of the registration approach is merely grounded on the literal rule of statutory interpretation, read on the provision which states,” no action for infringement can be instituted until registration of the copyright claims are made in accordance of the act.” This however goes against the creators’ interest and is a burdensome procedural flaw in the US copyright system.

This issue is finally being taken up the US Supreme Court, upon a certificate issue in the matter of Fourth Estate Public Benefit v. The Supreme Court too on 8th January, seemed divided on the interpretation with Justice Elena Kagen saying that the only way to be read the statute is to imply registration as registration being made and finalized conclusively. This was in support by Justices Sonia Sotomayor and Brett Kavanaugh and Chief John Roberts, however the Chief also acknowledged the technological development taking place resulting in faster infringing mechanisms and the problems associated with waiting for completion of registration. A purposive interpretation was also argued for by the amicus groups in the issue like the National Music Publishers association. In my opinion, in the current age of technological dynamism and the Copyright Act being drafted in 1976, waiting for a registration-based practice can result in validating infringement actions on an incidence of a lackadaisical conduct by the Copyright office. Further, there is a chance of exploiting the literal connotation of the provision by the Copyright office, in order to mooch of extra money. Hence, a harmonious purposive construction is imperative to effectively safeguard the rights of the shareholders especially in the realm of US Copyright law, wherein the threshold of copyrightability is a minimal modicum of creativity as compared to novelty in patent law.


India is known as the land of folk music because of the traditional association of music and lifestyle even within the diverse religious and sectoral groups present. An interesting question regarding the copyrightability of such traditional songs has been brought in before the Bombay High Court, which is set to decide this matter soon. Old songs which are sung in traditional community-based weddings have been argued to have been infringed by being included in a lyrical compilation, without the earlier author’s permission who had published the same earlier. The counter argument that has been raised is that these songs are traditional and not owned by any individual person. They are in the Public domain. In this light, I would like to get in the WIPO’s interpretation of the same. The WIPO has described the concept of Traditional Cultural expressions and has used it synonymously with the phrase “expressions of folklore”. It has defined it to mean productions consisting of characteristic elements of the traditional artistic heritage developed and maintained by a community. These include verbal expressions such as folk tales, musical expressions such as folk songs and instrumental music.  They have defined traditional as- not “old” but rather an expression based upon tradition or associated with an indigenous or traditional society (based on location or community beliefs) and practiced in traditional ways. (WIPO Publication no. 489 (E), 2004). A specific expression of the same inculcating elements of originality or in a form of a compilation has although been held to be protectable due to involvement of sufficient skill and judgment, which is the threshold of originality. This doesn’t seem the case for lyrical infringements as the lyrics are always in the public domain and cannot be specifically changed in traditional works. “Traditional” implies a community economy, wherein authorship is not a central concern and is evolutionary in nature.

Hence, it can easily be held that a copyright or a monopoly right to exploitation cannot be claimed over lyrics of a traditional song that has been published, due to it being a generic element of a society and hence a mere idea rather than an original expression of the same. The court in the case at hand, although, needs to analyse the work wherein copyright is being claimed and examine whether, there are elements in the work which go beyond being traditional and generic, and fulfil the threshold of originality. Otherwise, a claim of copyright on an expression of a traditional song merely lyrically written, should ideally not be sustainable and there would be no infringement.


A certiorari has been filed in the United States Supreme Court, against the decision of the 9th Circuit case of Rentmeester v. Nike, (883 F.3d 1111 (9th Cir. 2018) wherein, it has been argued that the 9th circuits decision is problematic and creates a circuit split, by giving “photographs a thinner protection than any other art form”. It has been alleged that an evaluation which requires super-substantial similarity is to be conducted which goes against the 11th, 1st and 2nd circuit decisions which treat the individual elements of a photograph substantially protectable while evaluating the whole, rather merely the whole of the expression. The background of the case dealt  with 2 photographs involving Michael Jordan jumping in the style of ballet’s grand jete, with the ball in his left hand. However, the picture was taken from a different angle. This issue has been previously covered by the CopyKat in January 2015 and March 2018. The dispute in the 9th circuit case involved 2 photographers, however it brings up a highly important question of how to treat photographs in copyright law and the concept of art within it the law - and transformative art in the context of 'fair use'. In the case of Cariou v. Price, 714 F.3d 694 (2d Cir. 2013) , substantiality was evaluated on the basis of “character” and “aesthetics”. Similar questions have been asked in cases like Kienitz v. Sconnie Nation LLC, 766 F.3d 756 (7th Cir. 2014), however a conclusive determination of what is to be considered of substantial importance when evaluating similarity amongst photographs is yet to determined. The CopyKat has its eyes set. Will it be lighting choices or painter’s use of colours?, individual elements or the whole of a photograph?, superficial texture or imagery? It will be really interesting to see how the Supreme Court resorts to resolve this long standing question. In my opinion, there is no infringement in the case at hand as separate creativity was exercised on the part of both the fixers in terms of clicking the photograph and the instantaneous reactions irrespective of the subject captured. It’s not the subject pictured which is copyrightable rather the expression which comes out of the photograph. Until and unless, the same photograph is not reproduced, merely the subject which is fixed cannot be claimed a copyright on. The differentiating factor from music and other forms of art and a photograph is the creativity involved in the art of curating and the art on one hand and merely fixing it on the other. I aint undermining the skill, judgment and creativity involved in fixing and clicking a photograph, rather am appreciating the intuitive technique and fixation involved in it which differs inherently from person to person.  The CopyKat is highly excited to see what the Supreme Court opines of the same.


In the month of June 2018, Bethesda had brought in a copyright infringement suit over is videogame mobile title Fallout Shelter against Behavior Interactive and Warner Bros title Westworld. The main grounds alleged were based upon similar game design, art style, animations, features and other gameplay elements including various bugs being similar!! Notably even the source code in the resultant game was argued to be copied by Bethesda, claiming from an injunction from distribution and complete removal from the market. These allegations were completely denied then by Behavior Interactive. As reported by, the dispute has amicably been resolved and the CopyKat can peacefully enjoy both these games now.

This CopyKat by our new intern, Akshat Agrawal. Thank you Akshat! 

Saturday 12 January 2019

AG Szpunar advises CJEU to rule that quotation exception is not limitless and that there is no fair use in the EU

After the late 2018 Opinions in Funke Medien [here] and Pelham[here], yesterday Advocate General Maciej (AG) Szpunar - IPKat's copyright person of the year 2018 - issued his Opinion in Spiegel Online, C-516/17 [background here], the third German referral asking the Court of Justice of the European Union (CJEU) to weigh in on, among other things, the interplay between copyright and other fundamental rights.

The Opinion, which is not yet available in English, advises the CJEU to rule that, among other things:
  1. The exception within Article 5(3)(d) of the InfoSoc Directive requires one to consider the purpose of the quotation at issue, and 
  2. Fundamental rights like freedom of expression do not allow EU Member States to go beyond the catalogue of exceptions in Article 5 therein to envisage new exceptions or even introduce a general fair use clause.

Volker Beck (photo by Mathias SchindlerCC-BY-SA)
As readers might remember, this referral originated in the context of litigation initiated by a German politician (Volker Beckwho, in 1988, authored a work about “sexual acts of adults with children”. The publisher apparently edited the manuscript without the author's consent and the resulting publication was, according to the author, a distortion of his views.

The original manuscript was found in an archive in 2013, and the author submitted it to several newspapers to demonstrate what he had actually written. Although he did not authorize publication of the manuscript or extracts thereof, he consented to newspapers linking to a statement he published on his own website.

The publisher also released a press report on its own portal, Spiegel Online, to support its view that the original manuscripts had not been distorted. To this end, the publisher included a link that allowed users to download both the original manuscript and the resulting publication. No link to the author’s website was provided.

The politician argued successfully at both first instance and on appeal that all this would amount to copyright infringement.

The case is currently pending before Germany's Federal Court of Justice, which has stayed the proceedings and asked the CJEU to clarify, among other things, how far the 'quotation' exception can go and what discretion EU Member States enjoy when transposing and applying relevant EU copyright directives.

The AG Opinion

AG Szpunar started by noting the relevance of freedom of expression (which has been recognized as a fundamental freedom since the 1789 Declaration of the Rights of the Citizen) and freedom of the press in a democratic society. However, the drafters of the 1789 Declaration itself were also aware of how freedom of expression could limit third-party rights and freedoms. As such, Article 4 therein provides that
 Liberty consists in being able to do anything that does not harm others: thus, the exercise of the natural rights of every man has no bounds other than those that ensure to the other members of society the enjoyment of these same rights. These bounds may be determined only by Law.
Freedom of EU Member States

This said, the AG tackled the question of Member States' discretion when transposing relevant exceptions within Article 5 of the InfoSoc Directive into their own laws, and noted how this is a similar issue to the one at stake inPelham.

Like in his Opinion in that case, AG Szpunar reiterated that - while EU Member States are free to determine the means for transposing relevant EU directives into their own laws - they are bound to achieve the objectives of those directives. In the case of the InfoSoc Directive, these include providing a 'high level of protection' of economic rights.

Article 5(3)(c)

The referral also includes a question concerning the exception within Article 5(3)(c) of the InfoSoc Directive, in particular whether the making available to the public of copyright works on the web portal of a press undertaking does not fall within its scope because it was possible and reasonable for the press undertaking to obtain the author’s consent before making his works available to the public (this is the approach under the German news reporting exception).

According to the AG, such a limitation of the exception would not be problematic from an EU law standpoint because it is Article 5(3)(c) itself that limits reproductions 'to the extent justified by the informatory purpose'. Accordingly [the translation from Italian is mine]

 It is my view that such limitation does not only concern the extent of the authorized reproduction and communication, but also those situations in which the exception applies, that is those in which the author of the report could not be reasonably required to request the authorization of the author of the work reproduced and communicated in the context of said reporting. As such, in my view, a limitation of the exception at issue like the one under German law, not only does not contravene the relevant provision in Directive 2001/29, but is actually in line with the nature and objective of said exception. 

According to the AG, the reason why this exception would not apply in the present case is different, and lies in the fact that the EU provision should be read in light of Article 10bis(2) of the Berne Convention. This provision states that:
It shall also be a matter for legislation in the countries of the Union to determine the conditions under which, for the purpose of reporting current events by means of photography, cinematography, broadcasting or communication to the public by wire, literary or artistic works seen or heard in the course of the event may, to the extent justified by the informatory purpose, be reproduced and made available to the public. 
The exception is limited to 'works seen or heard in the course of the event' subject to the reporting. This is not the case of the background proceedings, as the work reproduced is a literary work which one needs to read, rather than just view or hear.

Kat quotation
Article 5(3)(d)

This said, the key issue in this case relates to the scope of the quotation exception. The AG noted that:

The exception in principle is not limited to certain types of work only, and  The methods for including a qutotation into one's own work and identifying the quotation might differ depending on the situation. Also the provision of a link might be appropriate for the sake of making a quotation.

The problem is not, however, how that quotation may be realized but - rather - the extent of what may be quoted. In the present case what the defendant reproduced is the entirety of the claimant's work.

Although the CJEU appears to have allowed the possibility of quoting a photographic work in its entirety (inPainer), it has also spoken of 'reproduction of extracts' (Painer, para 135). The Berne Convention originally spoke of short quotations, while the current text states that the extent of a quotation must not exceed what is justified by the purpose. A similar formulation can be found in Article 5(3)(d). It follows that a quotation may be also of a work in its entirety, insofar as the aim pursued justifies it.

In any event, a quotation must not compete with the original work. Holding otherwise would allow one to elude the economic rights of an author over their work, rendering them devoid of any content thereof:
 the quotation exception may not be applied in situations in which, lacking the authorization of the author, a work is made available to the public on the internet, in its entirety, in the form of an accessible and autonomously downloadable file.
In addition, allowing a quotation that was a substitute for the original would also be contrary to the three-step test in Article 5(5) of the InfoSoc Directive and Article 9(2) of the Berne Convention, notably the requirement that an exception does not conflict - whether actually or even just potentially - with a normal exploitation of the work

Fundamental rights: no fair use in Europe

Having excluded that the exceptions within Article5(3)(c) and (d) would apply, the AG considered whether the use made by the defendant of the claimant's work might be nonetheless justified in light of Article 11 of the Charter of Fundamental Rights of the EU (freedom of expression/information and freedom of the press). This is also a question at issue in Funke Medien and Pelham.

In line with his Opinions in those cases, the AG proposed to rule that normally it is necessary to respect the choices made by legislature, considering that copyright already contains limitation and exceptions aimed at reconciling the exclusive rights of authors with third-party freedoms and rights, including freedom of expression/information.

Holding that it might be possible to supplement the exceptions and limitations provided for in Article 5 of the InfoSoc Directive with further exceptions and limitations would also run contrary to the harmonization objectives of the EU. Above all:
 such possiblity would be tantatmount to introducing into EU law some sort of "fair use clause", in that basically any use of a work that infringes copyright could rely, in one way or another, on freedom of expression. This way, the protection actually available to the rights of authors would depend on the sensitivity of the judges in each Member State towards freedom of expression, thus transforming any harmonization effort into an unattainable goal.

The Opinion of AG Szpunar might appear restrictive to some - especially with regard to the scope of quotation and the take on fair use - but it is not at all surprising, also considering earlier CJEU case law and the wording of the InfoSoc Directive.

That quotation is not borderless appears correct, considering the wording of the Berne Convention and the InfoSoc Directive, as well as the three-step test. This said, consideration of the circumstances at issue is key: the AG was correct in reiterating that a quotation might be also of a work as a whole, but whether that might be the case depends on the purpose of said quotation. 

Finally, the fundamental rights assessment also appears correct and - even if the Opinion does not mention it, it is in line with the case of law of the European Court of Human Rights which has tackled the interplay between copyright and freedom of expression, eg Ashby Donald [here]The Pirate Bay [here] (see also here). 

Let's now see what the CJEU rules. One will have an idea of the fate of Funke MedienPelham and Spiegel Online as soon as the first of these three decisions is out.

By Eleonora Rosati writing on the IPKat