THE COPYKAT spins around the world of copyright

Alibaba.com, the massive Chinese e-commerce company that provides consumer-to-consumer, business-to-consumer and business-to-business sales services via web portals, has been hit with a class action lawsuit claiming that its network of e-commerce websites is home to rampant copyright infringement of visual artwork.The lawsuit has been brought at the instigation of professional Indiana artist Michel Keck who is seeking to certify a class of copyright holders who have seen their work copied and sold on Alibaba’s network of websites. The 81-page complaint, filed  in U.S. District Court for the Northern District of California, outines the frustration Keck faced as she attempted to get dozens of China-based sellers to stop selling cheap copies of her work, primarily modern abstract canvas prints that feature dog portraits and religious themes.Keck claims that she repeatedly filled out online forms to report the alleged infringement to Alibaba, only to run into error messages, requests for documentation, or messages in Chinese. Often, she claims, she simply received no response. Alibaba has just announced that it will invest more than $15 billion over the next three years in a global research and development programme.

The Ontario Court of Appeal has upheld a decision to dismiss a class action lawsuit against Teranet Inc., which is the company that manages the province’s electronic land registration system (ELRS). In Teresa Scassa, University of OttawaIn Keatley Surveying Ltd. v. Teranet Inc., 2007 ONCA 748, the court heard that the plaintiff, Keatley Surveying Ltd., had brought action in 2007 on behalf of all land surveyors in Ontario who registered their plans of survey in the provincial land registry offices. Keatley claimed that Teranet Inc., the defendant, infringed their rights. The plaintiff, representing the class of surveyors, objected to what it saw as Teranet profiting from the commercial reproduction and dissemination of their copyright-protected works. Finding against the surveyors, the appellate court said it agreed "with the motion judge that copyright in the registered or deposited plans of survey belong to the Province. ... In summary, I would hold that the extensive property-related rights bestowed on the Crown by the land registration scheme in Ontario compel the conclusion that the publishing of those plans, by making copies of the plans available to the public, is done under the “direction or control of Her Majesty.” Section 12 of the Copyright Act declares that the copyright in the registered or deposited plans of survey belongs to the Crown." Read more here Crown copyright alive and well in new decision from the Ontario Court of Appeal. 


In the US, it seems web blocking is now on the cards for copyright owners whose rights have been infringed, after Magistrate Judge John Anderson in the District Court for the Eastern District of Virginia recommended a ruling in favour of the American Chemical Society in their action against Sci-Hub (sometimes dubbed the “Pirate Bay of science” whom the ACS accused of copyright infringement for making available online copies of the former’s academic papers without licence. Sci-Hub lost its sci-hub.org domain during an earlier (and separate) legal action against the site by science publisher Elsevier. More on CMU Daily here


And continuing with acaedemia, and the same to claimants, and copyright alleged infringement: scholarly publishing giant Elsevier and the American Chemical Society (ACS) have filed a lawsuit in Germany against ResearchGate, a popular academic networking site, alleging copyright infringement on a mass scale. The move comes after a larger group of publishers became dissatisfied with ResearchGate’s response to a request to alter its article-sharing practices. Sciencemag explains that ResearchGate, a for-profit firm based in Berlin that was founded in 2008, is one of the largest social networking sites aimed at the academic community. It claims more than 13 million users, who can use their personal pages to upload and share a wide range of material, including published papers, book chapters, and meeting presentations. Science funders and investors have put substantial funds into the firm; it has raised more than $87 million from the Wellcome Trust charity, Goldman Sachs, and Bill Gates personally - but the claimants say that published papers now include copyrighted papers whch are usually accessible only behind subscription paywalls. Initially, the International Association of Scientific, Technical, and Medical Publishers wrote to ResearchGate on behalf of more than 140 publishers, expressing concerns about its article-sharing policies, and proposed that ResearchGate implement a “seamless and easy” automated system to stop their copyrighted works appearing on the site. This was rejected and a 'take down' system suggested by ReserachGate - which the publishers are not happy with, saying  hat the company’s “business model depends on the distribution of these in-copyright articles to generate traffic to its site, which is then commercialised through the sale of targeted advertising" Two coalition members, ACS and Elsevier, have now opted to go to court.


A small claims procedure for IP in the USA? Congressmen Hakeem Jeffries (D-NY) and Tom Marino (R-PA), along with Representatives Doug Collins (R-GA), Judy Chu (D-CA), Ted Lieu (D-CA), and Lamar Smith (R-TX)  have introduced a new bill in the House of Representatives that photographers and others involved in the visual atrts say will be a valuable tool to complement the current “ one-size-fits-all copyright system" which "leaves out most visual artists.” The Copyright Alternative in Small-Claims Enforcement (CASE) Act is intended to give creators a cost-effective way to enforce their rights. The idea of a copyright small-claims court, which has been discussed in Washington D.C. for several years, could make it easier for small companies and independent creators to enforce their rights,  And Billboard says it could be a game-changer for photographers and visual artists, especially where merchandise is concerned.


Nigeria has presented four key Copyright ratified Treaties to the Assembly of member states of the World Intellectual Property Organization in Geneva. The News Agency of Nigeria reports that the presentation was made at a 57th WIPO General Assembly meeting in Geneva.  Ambassador Audu Kadiri, Nigeria’s Permanent Representative to the United Nations Office in Geneva, whopresented the treaties to the Director General of WIPO, Dr. Francis Gurry said, Nigeria was committed to the implementation of the treaties in support of the country’s drive to revatilise its economy. The treaties were listed as the WIPO Copyright Treaty, the Performances and Phonograms Treaty, the Beijing Treaty on Audio Visual Performances, and the Marrakesh Treaty.

There has been another delay by the EU's Committee on Legal Affairs (JURI) on EU copyright reforms set out in the Draft Directive on Copyright in the Digital Single Market (COM 2016(593). It was anticipated that JURI would have its final vote on the amended wording on the 10th October 2017. However, the draft Copyright Directive had been removed from the agenda for that date. For now, it seems that we will all have to wait until JURI’s next session on 7th December 2017 to see how the bill progressing. Axel Voss assumed the role of the rapporteur in June this year. More on Lexology here.

Madagascar: will it protect copyright better than it protects lemurs?

Two fresh accession notices have just been published by the World Intellectual Property Organization. They are

• WIPO Copyright Treaty - Accession by the Republic of Madagascar WCT Notification No. 82
  
• WIPO Performances and Phonograms Treaty - Accession by the Republic of Madagascar WPPT Notification No. 87 

Each of these notifications relates to the accession of the Republic of Madagascar to its respective treaty, the effective date of which is 24 February 2015.

Madagascar is more closely associated with a Dreamworks movie than with indigenous issues of copyright protection.  The original Madagascar animation came out in 2005, with sequels in 2008 and 2012. A third sequel, Madagascar 4, is scheduled for May 2018.  There have also been various spin-offs.  This blogger has the impression that the movie and its spin-offs are much more highly-publicised and better-known than the country whose name they bear; the first movie alone was estimated on Wikipedia to have earned over $532 million by 2013. He wonders whether the good folk of Madagascar have received any benefit. In any event he hopes that the exotic island state manages its copyright protection with less need for external support than its protection of its lemurs has required.

Algeria accedes to WCT, WPPT

The World Intellectual Property Organization (WIPO) has now issued media releases, here and here, to the effect that Algeria has deposited its instruments of accession to both the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. The two treaties take effect for Algeria on 31 January 2014.

While many African countries have no high-profile copyright generating personalities who are known beyond their home territories, Algeria was home to one of the most celebrated authors of the 20th century, Nobel Prize laureate Albert Camus -- who died in 1960. His works L'Etranger and La Peste are considered among the finest of their genre.

Does Oracle ruling breach WIPO Copyright Treaty?

Case C-128/11 Oracle v UsedSoft has attracted a good deal of attention and analysis from within Europe, much of it sharply critical -- but it has also been noted by both academics and practitioners from further afield. One such distant source is a respected and seasoned New Zealand lawyer, Ken Moon (AJ Park Law), who has expressed himself as being troubled by it.  His perspective on the case is reproduced here:

"Europe in breach of international copyright treaty 

A recent decision of the European Court of Justice (CJEU) on the licensing model for software transactions, has inadvertently breached the WIPO Copyright Treaty of 1996. There are numerous international treaties governing copyright law, but the treaty which brought copyright law up to date with the internet was the 1996 World Intellectual Property Organisation (WIPO) Copyright Treaty (WCT).

It now appears that a decision from the European Union's highest court, the CJEU, means that the countries of Europe, despite ratifying the WCT in 2001, are now breaching it, although the court itself seems not have realised this.

The Oracle v UsedSoft decision

In July, the CJEU in the case Oracle v UsedSoft decided two things. First, that a software licence was actually a sale and second, that the downloading of the Oracle software over the internet to the licensee "exhausted" a component of Oracle's copyright in the software, namely its exclusive "right to communicate" that copy of the software. This article focuses on the second issue.

UsedSoft GmbH was a German company which marketed "used" software licences and for this purpose purchased licences from Oracle's licensees (including Oracle client-server databank licences) for the purposes of resale on the second hand market.

The CJEU was referred this case by Germany's Federal Supreme Court (BGH) after two prior appeals by UsedSoft, and the CJEU's decision is final and non-appealable.

Finding that a licence is a sale is in conflict with US and Commonwealth decisions, and is controversial in itself, but it is the decision on the exhaustion of copyright issue which offends the WIPO Copyright Treaty.

WIPO Copyright Treaty 1996

Among other things the WCT required member states to incorporate in their copyright law a more comprehensive "right of communication" for copyright owners than had been required previously under the Berne Copyright Convention. This right, contained in Article 8 of WCT, is the "right of communication to the public" and it gives copyright owners the exclusive right to communicate their copyright works to the public. "Communicate" here means communication "by wire or wireless means". It covers "transmission" and, as it was intended to do, covers transmissions of digital and digitised works over the internet. Under Article 22 of WCT no member state could implement Article 8 (or any other Articles) in a manner which amounted to a variation of the Treaty text. The online aspect of this communication right was said to be one of the greatest achievements of the WCT.

In case there was any doubt as to the copyright status of a computer program, Article 4, in line with what was then the law of most countries, expressly confirmed that "computer programs are protected as literary works", "whatever may be the mode or their form of expression" and the right to transfer computer programs was made exclusive to their copyright owner. The Treaty also confirmed in Article 6 an exclusive "right of distribution" which relates to "copies that can be put into circulation as tangible objects". A number of countries had long had a principle of "exhaustion" of the right to distribute copies after their first sale (first sale doctrine). For example, the purchaser of a book would be free to resell the book without breaching the copyright owner's distribution right. The WCT expressly allowed exhaustion of right of distribution (of tangible physical copies) in Article 6(2), but not for the Article 8 right of communication of intangible digital files.

The European Union was one of the sponsors of the right to communicate in the WCT negotiations and ratified the WCT in 2001 by way of the Information Society Directive 2001/29/EC. This obligated the members of the EU to ensure their national copyright law implemented the provisions of the WCT.

Confusing the right to communicate with the right to distribute

The CJEU in the Oracle case, despite the fact that the Oracle software was only transferred to licensees in digital form over the internet, decided that this amounted to distribution and that being the case that the copyright owner's distribution right in each downloaded copy was exhausted. This meant that those copies could be freely "sold" on despite the Oracle licence agreement saying that they could not.

Oracle, the European Commission itself and some EU governments, unsuccessfully argued that the appropriate right that should be considered by the court was the WCT Article 8 communication right and not the Article 6 distribution right which should only apply to physical things. The CJEU relied on the later EU Software Directive 2009/24/EC, which in Article 4(2) confirmed first sale of software exhausted the distribution right and which whether deliberately or by oversight made no reference to the status of the right to communicate after first sale. The ECJ said this software specific law overrode the 2001 general copyright law.

But it is stretching legal logic somewhat to say that because the Software Directive does not refer to the right to communicate then this right is somehow subsumed within the right to distribute to thereby allow the first sale doctrine to apply.

Breach of the WIPO Copyright Treaty

Even if the CJEU reasoning is correct for current EU law, its decision in the Oracle case means that European copyright law does not comply with the WCT Article 8 which does not authorise any exhaustion of the copyright owner's right of communication on first sale, let alone what in reality was a licence and not a sale.

Article 8 of WCT requires that member states of WCT must give to copyright owners the exclusive right to communicate their works to the public by wire or wireless means. Article 4 WCT confirms a computer program is a copyright work. Oracle communicated its software to its licensees. Under the WCT, licensees do not acquire any right to "re-communicate" their Oracle software to third parties. The WCT Article 8 does not allow any member state to make laws which exhaust Oracle's exclusive right to communicate its software. The CJEU has interpreted European Union law to do just that. Such an interpretation means European law is in breach of the WIPO Copyright Treaty.

Impact of the CJEU decision on software licensing

The Oracle decision will severely impact software developers who trade in Europe, especially as all existing licences in Europe will be now classed as sales. For the future the traditional software licensing model will have to be modified (annual royalty fees perhaps?) or replaced with a software as a service model (SAS) with the software resident in the cloud and not with the end user. However while this may mean Europe's breach of the WCT becomes less exposed it cannot cure it. A cure will have to come through a new EU Directive amending the 2009 Software Directive to expressly recite the WCT right to communicate and the denial of any exhaustion of this right by first "sale".

Fortunately, because the CJEU relied on an interpretation of the Software Directive 2009 to override EU copyright law it is hard to see how the Oracle decision could be interpreted to extend to other licensed digital products communicated online such as films and sound recordings. The licensing model for online dissemination of these products should remain viable".

Is Ken right? And has he overstated the significance of this case, or understated it? Do let us --and him -- know what you think.