Friday 17 May 2019


(Common Law v. EU Law?)

For the first time there will be no live television broadcasts of Rugby World Cup games in New Zealand this year.  Telecommunications provider, Spark, has acquired the rights to ‘show’ the games (hosted in Japan) and they will be live streamed on its Spark Sport service.  Putting aside the problems of those who still do not and will not have adequate broadband connections by September, there will undoubtedly be many who will seek out pirate streams to avoid Spark’s subscriptions.  Because rugby is New Zealand’s most popular sport, streaming copyright issues are likely to multiply from current levels.

As in other countries New Zealand satellite broadcasters who have acquired licences to show content have been encountering a form of piracy by the parallel delivery of this content streamed over the internet from other jurisdictions free of charge.  Various technologies have been used, although Kodi programmed set top boxes are popular for viewing on a television screen.  There has been litigation. 

Current Case Law

In 2010 there was Munhwa Broadcasting Corporation v Young International which concerned Korean broadcasts being digitised and streamed online to NZ viewers to watch on their screens. The defendant argued that the transient copying that occurred in the buffers of the set top box and then by each picture frame momentarily appearing on a viewer’s screen were within the section 43A exception for transient reproduction.  Section 43A is equivalent to the Directive Article 5.1/UK section 28A exception for transient copying.  Potter J rejected this defence on the basis that these incidents of copying were not authorised by the rights owner. 

Then in 2018 two courts held in separate suits brought by Sky Network TV that (i) the sale of set top boxes with ‘add-ons’ providing access to pirated streams constitutes an infringing communication, (ii) the transient storage in the set top box memory of internet packets making up each video frame was copying, and (iii) the transient display of each frame on the viewer’s screen was also copying.  In each case Sky referred to the streaming of cricket matches live for which it had the sole rights to communicate within NZ.  The streams were generated from reception of a broadcast from Sky UK.  In one case, a District Court did not consider the section 43A exception to infringement for transient copying, while in the other case the High Court which did, rejected this defence on the basis that only the owner of copyright in the original broadcast could authorise the streaming in NZ and without such authorisation the use made by viewers could not be ‘a lawful use’

In the High Court decision it was accepted that the streaming of a live cricket match was a communication of a copyright work.  Since live sport cannot constitute a copyright work then it must have been the broadcast which was at issue.  That of course was not Sky NZ’s broadcast and the evidence did not show how and by whom Sky UK received its feed.

Comments on Current Case Law   

It is suggested the reasoning in all three decisions is at the least questionable, despite the fact that the primary cause of action in the two 2018 actions was breach of the Fair Trading Act based on allegations that the defendants in the advertising of their set top boxes had suggested purchasers would not be infringing copyright.  One issue of concern arises because CJEU statutory interpretation under the InfoSoc Directive seems to have been used rather than classic common law interpretation.  Further, the WIPO Copyright Treaty which gave rise to the right to communicate was totally forgotten about.  The ‘internet provisions’ in the NZ Copyright Act derive from the WCT, including the Article 8 right to communicate to the public’.  But, the NZ courts, like the CJEU, ignored or misinterpreted the Agreed Statement on Article 8, namely: ‘It is understood that the mere provision of physical facilities for enabling or making a communication does not itself amount to communication within the meaning of the Treaty …’. 

As to case law precedents, the CJEU decision in Strichting Brein v Jack Frederick Wullems was used in the two 2018 judgments to interpret breaches of the exclusive right to communicate a work to the public to include the sale of ‘tweaked’ set top boxes.  But for the s.43A defence the most applicable and persuasive authority for NZ, the UK Supreme Court judgment in Public Relations Consultants Association v The Newspaper Licensing Agency [2013] UKSC 18, (the Meltwater case) was not considered.

Statutory interpretation issues

Following the common law rules of interpretation, the right to communicate would have been given its literal meaning as there is no ambiguity in the way it is expressed in the restricted acts listed in s.16 of the NZ Act.  It would not be broadened beyond its literal meaning which is to transmit information.  It would not encompass the sale of individual pieces of apparatus for receiving or processing the information.  Under the old broadcast right, common law courts, including NZ, did not interpret that right to include the distribution of radio or television receivers.  In addition, the exception provided by way of the Agreed Statement on Article 8 would be given the same weight as the Article 8 right itself.  It should not be devalued on the argument used by the CJEU that the EU Directive was for the benefit of copyright owners.  The aim of the WCT was to bring copyright into the internet age in a balanced manner.      

In the section 43A transient reproduction exception, limbs (b)(i) and (ii) offer alternative defence components, and if either one is satisfied then section 43A provides a defence to transient copying.  But the Munhwa and Sky judgments seemed to conflate limbs b(i) and b(ii) and concluded that if viewers were receiving a communication which might infringe copyright, then the viewers’ transient reproduction could not be a ‘lawful use’ of the communicated work.  However, as was pointed out by Lord Sumption in the Meltwater case, ‘The use of material is not unlawful by reason only of the fact that it lacks authorisation of the copyright owner.’  ‘Lawful use extends to use which is “not restricted by the applicable legislation”’.  And copyright legislation does not make private viewing of content on a screen an infringing act any more than it makes reading a book an infringing act even if the book is a reprint made by an unlicensed third party.

The defence provided in s.43A for transient reproduction is not even necessary for the actual display of sport on a domestic television screen.  Copyright is not infringed by the private display of content on a screen. It never has been since the days of home film projectors being used to show bought or hired movies.  To suggest otherwise, as the courts did, is in direct conflict with the statutory limitation of the s.16(1)(e) exclusive right ‘to show the work’ to showings which are made in public.


In the litigation that will predictably arise as the Rugby World Cup draws closer it is to be hoped New Zealand’s copyright law will not be misconstrued to ensure licensees can obtain a remedy.  Until the legislation is changed to reflect a more comprehensive understanding of the digital technology used to supply content, instead of trying to use concepts more appropriate to content stored on physical media, licensees will be best served by seeking blocking orders against ISPs to block access to the IP addresses of pirate streamers.  NZ courts have plenty of persuasive precedents to follow in the form of Arnold J’s blocking orders in the UK.

As it happens, NZ has recently started a major (and no doubt lengthy) review of its Copyright Act and it is tempting to advocate introducing the US patent concept of ‘contributory infringement’ to render liable those who supply especially configured hardware to assist pirates.  And the cumbersome concept of infringing copyright by ‘authorising’ needs to be supplemented or totally replaced!     

Tuesday 14 May 2019


COPYRIGHT IN GEORGIA’S LEGAL CODE: THE WAY FORWARD?  In 2018 The 11th Circuit had held that the statutory legal code of Georgia is not protected by copyright law. An important decision propagating the norm of open access to legal documents and rules was given by this court. The prime reason for this action of review is to reaffirm this ruling and set it as a binding precedent even beyond the precedential scope of 11th Circuit. As open records activist Carl Malamud said "Access to the law is a fundamental aspect of our system of democracy, an essential element of due process, equal protection, and access to justice". The Eleventh Circuit's ruling is persuasive authority, that could be used elsewhere, and this petition has been filed to convert it to a completely binding precedent by the hands of the US Supreme Court. The core reason for this action of review is to bring in efficiency in copyright implementation by ruling the 11th Circuit’s decision as the law of the land. The critical need for public’s access to law needs to be ultimately recognized. A meaningful access for the purpose of public accountability, learning, teaching etc, is imperative and copyrighting the same would involve inclusion of subscription and other commercial mechanisms to access the content of law. “An intrinsically public domain material, which belongs to the public” cannot be allowed to be curbed from open access. Analyzing another jurisdiction, it is worthy to be noted that the Indian Supreme Court has also gone on to hold that court Judgments and orders are public documents and the text thereof cannot be monopolized by the instrument of Copyright. 

BATISTE v. MACKLEMORE COPYRIGHT INFRINGEMENT SUIT DISMISSED. in another music industry plagiarism case,  Paul Batiste of the Batiste Brothers Band had, in 2017, filed an infringement suit against Macklemore and Lewis, arguing that a number of Macklemore’s songs lincluding “Can’t Hold Us”, “Same Love”, and “Thrift Shop”  had (and in an unauthorized manner) copied and sampled certain original elements of eleven of his songs. Now in Louisiana a Federal Judge has reached a decision on the matter which  reinforces the test for determining copyright infringement in musical works - whilst applying the same to the facts of this case and ruling against infringement (Judge Martin L.C. Feldman in a summary decision). Judge Feldman reiterated that there are three elements that need to be fulfilled to determine copyright infringement in a musical work. These are: (i) Ownership of a valid copyright, (ii) factual copying and (iii) substantial similarity. Factual copying needs to be established through circumstantial evidence, wherein the factor of “access” (reasonable opportunity to view) to original works can be claimed while proving such infringement. In the case at hand, neither factual striking similarity was established nor was access proven satisfactorily for an action of infringement to succeed. No evidence which could show that the defendants had even heard of Batiste was adduced before the court. Mere wide dissemination does not fulfill the threshold required to prove conclusive possibility of access.

NORA ROBERTS ALLEGES MULTI-PLAGARISM AGAINST A BRAZILIAN INDEPENDENT AUTHOR  A copyright infringement case has been filed in the Rio Court by Nora Roberts on the issue of plagiarism. She has reportedly claimed 3,000 times the value of the highest sale of the books alleged to infringe written by  Cristiane Serruya. The court filing alleges that the infringing books to convey practically identical 'emotions' to Nora’s books and that Serruya has committed “multi-plagiarism” on a “rare and scandalous” level. Nora has released a statement saying, “If you take my work, you will pay for it!” Further, Roberts has acknowledged the issue of funds to pursue such infringement litigation by writers who have their works plagiarized and profited upon.  The position of the defendant has constantly been that she is innocent of the allegations say8ng that  she uses ghostwriters for her books and further a plagiarism checker tool - to check against such unauthorized copying. The decision is pending.

FORTNITE SUED AGAIN!! And thus time it's for some signature “Phone It In” moves:  saxophonist Leo Pellegrino has alleged Fortnite to have misappropriated his likeness without permission involving a saxophone dance in the game. He has alleged that Epic (Fortnite developers) has, without permission, used certain moves which have become inseperable from his persona. The claim focuses on  the likeness of the character performing such moves in the game with Leo including the use of “outward pointing feet” used specifically by Pellegrino while playing the Saxophone and the striking similarity with the pose and the 'passion'. It must be noted that Fortnite has also been sued with respect to certain dance moves which has brought in the contentious issue of whether dance moves can be copyrighted. Another instance wherein Fortnite has been in news is the claim of royalties being brought in by the music industry against this inline gaming platform, wherein a virtual concert of DJ Marshmellow was shown. Post the EU Copyright Directive being signed, tech companies are to seek licenses from music industry before hosting any of their content online. Such digital royalty claims of usage of music in gaming platforms has been made possible post the signing of the new EU Copyright provisions.

LA LIGA SUCCESSFUL IN BLOCKING PIRATE CHANNELS IN DENMARK Spain's premier football league La Liga had brought a claim in Denmark to block certain channels which played and streamed its matches in a pirated format. This landmark decision  brings in protection to right holders in a market with suffers from ongoing and widespread piracy issues. Further, acknowledging the risk of getting malware infected due to such illegal streaming, the court, not only concerned its decision with the right holders but also the users of such services. La Liga’s audiovisual director was quoted commenting this to be an important step to fight the peril of broadcast piracy which is rampant around the world, and the commercial gain developed by such illegal advertising on these services, resulting in heavy earnings for those behind developing these unauthorized and illegal methods. He said: “Audio-visual Piracy is illegal and has significant consequences, not only for us, but for the league and the future of the game, so we are very happy that Rettigheds Alliancen has joined us in the fight. We know that Denmark is at the forefront of the development of digital tools to fight online piracy, and this is a big issue for us. We are now looking forward to seeing the effects of the blocking and hope that they can serve as an example for other countries, so that we can stand together in the fight against online piracy.”

INTERNET STREAMING, OUTSIDE THE PURVIEW OF STATUTORY LICENSING UNDER SECTION 31D OF THE COPYRIGHT ACT, IN INDIA. The Bombay High Court has reached an important decision that may well effect the development of the music streaming market in India - not least as Spotify seeks to expand in the Indian market. In the matter of Tips Industries Limited vs Wynk Music Ltd, the single bench of Justice S.J. Kathawalla in the Bombay High Court (judgement dated April 23, 2019) ruled upon many issues with respect to internet streaming on OTT platforms and its implications on the statutory licensing provided under Section 31D of the Indian Copyright Act. Section 31D of the Copyright provides for a statutory licensing scheme, as per which any ‘broadcasting organisation’ desirous of ‘communicating to the public’ any sound recording or its underlying works, may obtain a statutory license to do so, provided they pay the royalty rates to the copyright owners. The core highlight of the judgment includes the point that the services rendered by the Defendants through their download and purchase features amount to commercial rental / sale of the Plaintiff’s (Tips) copyrighted sound recordings. Since the right to commercially rent and sell a sound recording is a separate and distinct right as against the right to communicate the sound recording to the public, the Defendants cannot exercise a Statutory License under Section 31-D in respect of the download and purchase features provided by them. Had the Legislature intended for a statutory license under the said Section 31-D to encompass the sale and/or commercial rental as contemplated under Section 14(1)(e)(ii), The legislature would have employed express language to that effect in Section 31-D of the Act. The absence of such language or even mention of sale and/or commercial rental in Section 31-D of the Act makes the intention of the Legislature crystal clear to exclude the commercial rental/sale of sound recordings from the purview of Section 31-D. It is therefore evident that Section 31-D contemplates communication to the public by way of the broadcast of sound recordings only, and not their commercial rental and/or sale. The grant of Statutory The license under Section 31-D is only restricted to radio and television broadcasting organizations and the Defendants’ on-demand streaming services offered through the internet as an “internet broadcasting organization” do not fall within the purview of Section 31-D of the Act. More here

This update from the 1709 Blog intern Akshat Agrawal

Friday 3 May 2019

Man fined for stealing sketches from Gerhard Richter's trash

A 49-year-old German man was recently found guilty of theft in relation to four artworks, which had been thrown in the garbage by world-famous artist Gerhard Richter in July 2016. 

Richter became aware of the scam when the Gerhard Richter Archive was contacted by the defendant with a request to issue certificates of authenticity, before selling the works at auction in Munich.

Dietmar Elger, the head of the Archive (which is now part of Dresden State Art Collection) became suspicious as the sketches – though authentic - were unusually unframed and unsigned. The man claimed to have received the sketches from a painter, who in turn would have obtained them directly from Richter. The Archive then informed the latter, who decided to file a complaint against the defendant, also requesting the destruction of the works. A few days ago, a judge of the Cologne District Court held that - although the works were discarded and thrown away – they still belonged to the artist, who decided to hand them over to a waste disposal facility for the purpose of disposal. The man was thus fined EUR 3,150 for theft and the works -valued at approximately EUR 60,000 – were seized.

Gerhard Richter, Yusuf, 2009
This case raises some interesting legal issues.

First, whether a work which is thrown away by an artist still belongs to the latter or, instead, shall be considered as an abandoned property, belonging to the first taker, who can subsequently sell it as an authentic work of art.

Second, and most importantly, it concerns the artist’s right to disown and request the destruction of authentic works, if they do not correspond any longer to their artistic feelings. In 2015, for instance, Richter decided to exclude some early works of his West German period from his catalogue raisonné to better shape his artistic legacy. The artist is known for editing his oeuvre and these artistic choices often bring criticism and uncertainty to the art world. The artist’s right to change their mind about the worth of their own artistic production often conflicts with the owner's right of the disowned works to dispose of them.