THE COPYKAT

COPYRIGHT IN GEORGIA’S LEGAL CODE: THE WAY FORWARD?  In 2018 The 11^th 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 11^th 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 11^th 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

THE COPYKAT

A federal judge in Manhattan has refused to dismiss a lawsuit claiming that Woody Guthrie's classic 1940 folk song "This Land is Your Land" belongs to the public. Guthrie, then 27, wrote "This Land," in reaction to Irving Berlin's 1918 war time song "God Bless America" which he thought glossed over wealth and land inequality in the country. U.S. District Judge Deborah Batts said members of Satorii, a New York band that recorded two versions of "This Land" could pursue federal copyright claims against two publishers who say they control rights to the song - Ludlow Music and The Richmond Organization. Readers will remember that "We Shall Overcome" and "Happy Birthday to You" have already returned to the  public domain. Satorii said the "This Land" melody was "substantially identical" to a Baptist gospel hymn from around the start of the 20th century, known by such titles as "Fire Song." It also said any copyright to "This Land" was forfeited several decades ago. The case is Saint-Amour et al v The Richmond Organization Inc et al, U.S. District Court, Southern District of New York, No. 16-04464.

Ten members of the European Parliament (MEPs) have said they voted against a crucial amendment to the EU's Copyright Directive by accident, and that if they had got their votes right it would have let MEPs take a further vote on the inclusion of Articles 11 and 13, the most controversial parts of the law (and named by the tech sector as the  “link tax” and “upload filter”). That vote was lost by just five votes but official voting records published by the EU show that 13 MEPs have declared they accidentally voted the wrong way on this amendment. According to the record, ten MEPs say they accidentally rejected the amendment when they meant to approve it, two MEPs accidentally approved the amendment, and one MEP says he intended not to vote at all on that matter. If these MEPs had voted as they said they meant to, the amendment would have been approved by a small majority, prompting further votes on whether the law would include Articles 11 and 13 (renamed articles 15 and 17 in the final draft). Whilst no one knows how that might have gone, it makes no difference now of course as the final vote has passed and stands, with a clear majority 348 MEPs voting in favor of the new reforms, and 274 against. YouTube 'creators' and the tech sector are now starting to re-voice concerns, and no doubt will continue lobbying, with one creator saying they will be forced to block content from being seen in Europe, and one of the most vocal activists leading a charge against the Directive, Dr. Grandayy, says it’s time for YouTubers to get serious about copyright activism.

And Poland's right-wing government has hinted that they may not fully implement the European Union's new copyright reform, saying it stifles freedom of speech. Ruling party leader Jaroslaw Kaczynski said Saturday that a copyright directive adopted by EU lawmakers this week threatens freedom. Of course the bloc's nations have two years to incorporate it into their legal systems. Without elaborating, Kaczynski said the Law and Justice party will implement it "in a way that will preserve freedom."

Vodafone in Germany has blocked access to a popular platform where users share links to infringing content after a complaint from music collecting society GEMA, but seemingly without GEMA securing an injunction to mandate the block. the German division of Vodafone has now blocked Boerse telling  Torrentfreak "On the basis of a notification from GEMA, we have set up a DNS blockade for the 'boerse.to' domain. The blockade affects Vodafone GmbH's fixed and mobile network" citing recent precedents in the German courts regarding the responsibilities and liabilities of internet companies saying "GEMA has officially sent us a notification and we have set up the DNS blockade in order to avoid a legal dispute in accordance with the principles established by the Federal Court Of Justice".
adding that whilst it was "critical of these blocking requests" it would nevertheless comply with its legal obligations. The site is still accessible via other ISPs in Germany. 


A fascinating article on Above the Law - In Your Face: How Facial Recognition Databases See Copyright Law But Not Your Privacy - and Tom Kulik, an Intellectual Property & Information Technology Partner at the Dallas based law firm of Scheef & Stone, LLP says "Like many legal issues involving evolving technology, there is more here than meets the eye". Well worth a read! Image by Mike Mackenzie via www.vpnsrus.com.

And finally, Lexology reports that the latest (and unanimous) US Supreme Court decision in  Rimini Street, Inc. v. Oracle USA, Inc., holds that 17 U.S.C. § 505’s award of “full costs” is limited to the specific categories of costs defined in 28 U.S.C. §§ 1821 and 1920, which exclude expert witness fees, e-discovery expenses and jury consultant fees. “A statute awarding ‘costs’ will not be construed as authorizing an award of litigation expenses beyond the six categories listed in §§ 1821 and 1920, absent an explicit statutory instruction to that effect.”[2] This decision effectively limits the costs recoverable by a successful litigant as a matter of course in copyright litigation and in “exceptional” trademark and patent cases. More here. 

THE COPYKAT

Extradition to US for alleged torrenter Artem Vaulin

Artem Vaulin – the alleged owner of the torrenting site KickAss Torrents (“KAT”) and Ukranian national – is facing extradition to the United States. In July 2016 he was arrested in Poland and charged by criminal complaint, filed in U.S. District Court in Chicago, with one count of conspiracy to commit criminal copyright infringement, one count of conspiracy to commit money laundering and two counts of criminal copyright infringement. Vaulin has been held in custody since his arrest, having been denied bail.

The US is alleging that Vaulin, who is 30 years old, is responsible for the unlawful distribution of $1 billion of copyrighted materials.

Vaulin’s American defence council has asked the Illinois District Court to dismiss the case, arguing that torrent files are not copyright protected. Vaulin’s defence team argued that “Torrent files are not content files. The reproduction and distribution of torrent files are not a crime.” The defence council continued; “If a third party uses torrent files to infringe it is after they leave the KAT site behind and such conduct is too random, inconsistent, and attenuated to impose criminal liability on Mr. Vaulin. The government cannot use the civil judge-made law in Grokster as a theory in a criminal case.”

The Warsaw District Court has ruled in a preliminary ruling that Vaulin can be extradited. The extradition process does, however, have another hearing until the decision is final, as the process is decided in two stages. If the lower court fully grants the extradition request, Vaulin will have recourse to the Polish Supreme Court. If extradition is granted, he will be facing a criminal trial in the US.

And more extradition! it's off to the US for alleged torrenter Kim Dotcom

Kim Dotcom has been at the centre of an extradition saga since 2012. He is the founder of Megaupload, another BitTorrent site. Dotcom, a German national with permanent residency rights in New Zealand, was arrested at the behest of the US on criminal copyright violation and racketeering charges.

In a recently released decision, it has been ruled that Kim Dotcom cannot be extradited to the US on copyright infringement charges. Dotcom’s legal team had argued that there are no equivalent criminal sanctions for copyright infringement in New Zealand that would activate the extradition treaty with the US.

Instead, it was ruled that Dotcom can be extradited on grounds of conspiracy to commit fraud, which is an extraditable offence under section 24 of the Extradition Act 1999. Dotcom and his legal team immediately criticized the decision, stating that “The U.S. Supreme Court has ruled that copyright charges can't be fraud charges. Let's just ignore that minor detail over here in New Zealand.”  Image portal gda https://creativecommons.org/licenses/by-nc-sa/2.0/

The saga is not at its end, and further updates should be available in the upcoming months.

Piracy filters for ISPs – web blocking

The contentious issue of the blocking of pirating sites by ISPs has been reported on this blog previously here, here and here.

The Recording Industry Association of American (“RIAA”), along with 14 other groups of rightsholders have now expressed its dissatisfaction with the current DMCA takedown regime and is advocating for ISPs to directly filter out pirated content in comments filed with the US Copyright Office. It argues, inter alia, that “the notice and takedown system as currently configured results in an endless game of whack-a-mole, with infringing content that is removed from a site one moment reposted to the same site and other sites moments later, to be repeated ad infinitem.”

Google responded to the RIAA’s comments, principally pointing out the 99% of links it was asked to remove in January of this year “were not in our search index in the first place.”

These comments to the US Copyright Office are being made within the context of a review of US Copyright laws which is taking place at the moment.

Search engines potentially to be forced to delist piracy sites in Russia

A new copyright law has been proposed in Russia which would force search engines to delist piracy websites.

Sites that would potentially be blocked under the new law would be those that have been subject to a web-block injunction in the Russian courts, as well as piracy sites that have failed to respond to takedown requests by rightsholders.

Students to pay to play whilst learning music?

Conflict is brewing in Japan between The Japanese Society for Rights of Authors, Composers and Publishers (“JASRAC”) and The Association to Protect Music Education.

The domestic Copyright Law grants an exclusive “right of performance” to composers and lyricists to perform their copyrighted music. JASRAC is planning to introduce a policy charging copyright fees for performances of copyrighted music at music schools in January 2018. This policy would be to charge music schools 2.5% of the income generated from tuition fees for a fixed rate licence to perform copyrighted music.

JASRAC argues that it is unfair that music schools are not covered under this right. In contrast, The Association to Protect Music Education argues that performing music for instruction is not for the purpose of having people listen to it, and that copyright fees are already paid through payment for scores and other materials.

The Association to Protect Music Education is ready to take legal action in order to verify that no such financial obligation flows from the domestic Copyright Act.

This CopyKat by Tibbie McIntyre

CopyKat - a Thursday typhoon of copyright titbits

The Seoul High Court has ruled that performers and copyright owners whose music is streamed to the public from a digital source can indeed protect their rights. The appellate court ordered Hyundai Department Store to pay 235 million won ($230,000) to the Federation of Korean Music Performers (FKMP) and the Recording Industry Association of Korea (RIAK) for streaming music of their members for a two year peiod between January 2010 and December 2012.  Hyundai had taken the recordings from KT Music, a digital musical source retailer, and used the music at retail outlets.  The court noted  “There is no difference between streaming music and albums, in terms of financial losses from possible performances and sales of music albums” adding  “Streaming music also should be considered as same as music albums because its digital sources were saved in the database of KT Music and they also temporarily stayed on computers of the stores while they were streamed.”  The Korean Ministry of Culture, Sports and Tourism said earlier this year that it plans to revise the IP Law to boost the legal status of digitalized musical sources to the level of albums.  

Back in July, Aimee Mann brought an interesting lawsuit over the possible existence of a massive amount of unlicensed music being streamed online against MediaNet, a company once backed by EMI, AOL, BMG and RealNetworks before being taken over by a private equity firm. MediaNet is essentially a white label that has served up more than 22 million songs to more than 40 music services, including Yahoo Music, Playlist.com, eBay and various online radio services. Mann sued the company for allegedly infringing 120 of her songs, saying that a license agreement signed in 2003 expired three years later. MediaNet maintained it had a valid license and argued that a provision of its agreement with Mann granted it an ongoing statutory license even after the agreement's termination and a Section 115 US Copyright Act compulsory licence. But District Judge George King disagreed, siding with Mann saying "This is a reasonable interpretation of the License Agreement, and MediaNet has failed to argue otherwise," writes the judge. "Accordingly, Mann has adequately alleged that MediaNet does not have a Section 115 compulsory license to use her pre-December 5, 2003 and post-December 4, 2006 songs and Judge King went further agreeing the MediaNet cannot escape a charge of secondary infringement for allegedly causing others to infringe Mann's works. 

From Italy - with  no love? The Court of Rome has blocked Italian resident's access to VKontakte the Russian social network (with over 160 million subscribers) after a successful complaint by Medusa Film, who said that a non authorised copy of their comic film Sole a catinelle had circulated among the users of the Russian media giant. The Public Prosecutor decided the effective remedy was to block access to Vkontakte from Italy and now an Italian - or a Russian living in Italy, cannot communicate with their friends in Russia on VKontakte. But how long will this blanket ban extend for? And is it a reasonable solution to the problem - not least as it seems The Public Prosecutor did not make any attempt to contact the Russian social network and ask for the removal of the illegal copy of the film? One commentator mused “It is right to protect copyright...but the [Italian] Constitution puts the right of expression and communication and authors right on the same level. It is not correct to have one right prevail over the other” and Marco d’Itri who runs Osservatorio Censura, a site dedicated to reporting on Italian web censorship commented that action was being taken before a hearing on the full merits of the case. Rapidgator has also been blocked.

Six days before movie studios were set to begin a jury trial over alleged copyright violations by the "cyberlocker" site Hotfile, the case has settled. Hotfile has agreed to pay $80 million and to stop operating "unless it employs copyright filtering technologies that prevent infringement," according to a press release sent out today by the Motion Picture Association of America (MPAA). Judge Kathleen Williams had already ruled that Hotfile was not eligible for the DMCA "safe harbor" protection and that it was going to be liable for the actions of its users. Hotfile employed an incentive system to encourage downloading and paid users who uploaded popular files, including copyrighted files. 

Chinese online video site Youku Tudou has won a number of copyright infringement cases brought against Chinese search giant Baidu. Baidu was found guilty of copyright infringement by a court in Beijing. It was ordered to pay 491,000 yuan ($101,107) for illegally hosting 18 Chinese television shows that Youku Tudou bought exclusive rights to. Since October this year Youku Tudou has 32 filed cases against Baidu for infringing it's copyrights. The remaining cases are awaiting verdicts.

A new study by Peter DiCola for Northwestern University's School of Law shows that the 'average' musician relies more on income from live music and teaching than from the copyright industries. A study of the revenue streams of 5,000 musicians found that the largest portion of musician earnings are from live gigs (28 percent). Teaching comes second with 22 percent, salaried musical work has a 19 percent, share along with session work, also 19 percent. Songwriting/composing fees and recording earnings - the two categories most tied into copyright, bring in 6 percent each with DiCola's saying "A hypothetical boost in revenue from more effective [copyright] enforcement would only increase the average musician's total revenue by a small amount today, in the short term," adding "Stronger copyright might provide them incentives to move up the income ladder in a winner-­take-­all kind of market. But it will not put more money in their pocket today; for the hypothetical legislation to help them in the future, they must get rich first."

A man who was found to be in possession of one of the largest hauls of hi-tech equipment for use in copyright theft ever found in the UK has been sentenced to 18 months in prison. 52-year-old Keith Tamkin from Bognor had pleaded guilty to six offences - one of distributing articles infringing copyright, two of money laundering (a total of £140,000), one of transferring criminal property - a computer - and two of possessing prohibited weapons, a pepper spray and a stun gun. At one of the two properties used by Tamkin the police found more than 100 full computer hard drives, an estimated 150,000 CDs and DVDs, computers and eight 'multiple bay burning towers' to copy music, films and software. A large catalogue of 25,000 titles distributed to an extensive client base was also seized. 

The Turtles

Sirius XM have failed in an attempt to move a $100 million class action lawsuit in California for distributing and performing pre-1972 sound recordings to New York, where the broadcaster is facing another action. The satcaster is also facing two more actions brought by major record labels and a fifth lawsuit from SoundExchange, the digital performance rights organization that collects royalties on behalf of sound recording copyright owners. The California lawsuit is being led by members of The Turtles who say that Sirius cannot rely on section 114 of the US Copyright Act for protection – as pre 1972 recordings are subject to state law – which may arguably mean that Sirius plays songs recorded before that date without permission. Sirius argued that the plaintiffs were playing "lawsuit lottery" alongside the actions in New York and the third in Florida and sought to have the case transferred to New York and perhaps consolidated. But U.S. District Judge Philip Gutierrez denied Sirius' motion saying "it seems at this point that although the three suits share a common factual core, they are legally distinct and will turn on the separate interpretations of California, New York, and Florida law, respectively."

Could Judge William Alsup's June 2012 ruling that APIs could not be covered by copyright.about to be overturned by Federal appeals court? There are rumours about that at least one appeals judge is  are sceptical of the decision and may be leaning towards overturning it which would no doubt cheer up Oracle.

Watch this space!

Blocking orders, proxies and VPNS: a reader asks

Blog reader Dan Scofield writes to ask the following question:

"With the recent order forcing ISPs to block Primewire.ag and other sites that provide hyperlinks to 'infringing hosting sites' what can be done, if anything, about the use of proxy websites and VPNs to bypass these blocking orders?

My 13 year old sister knows how to use proxy websites and I doubt it will be long before kids (even the most technically illiterate of them) figure out how to use these sites. They really aren't complicated to use and I don't know if the courts have the powers to block the use of proxy websites (given they have perfectly legitimate uses) in order to stop this practice. Therefore, it seems to me that the only thing the courts can do to stop this is to actually have the infringing sites taken down rather than blocking access to them -- a feat that will be incredibly hard when the hosts can easily kickstart a new server in some remote location.

I suppose the blocking order of the sites that facilitate copyright infringement is a victory for IP rights holders, but when one reaslises how easy it is to get around the block, it becomes a rather hollow victory. And, in this day and age, people will quickly learn of proxies/VPNs for this purpose and the block will rendered a futile attempt at putting a stop to copyright infringement".

Readers' thoughts are welcome, both on the legal issues and on the wider commercial issues on both sides of the equation.

UPC Telekabel v Constantin and Wega: AG opines on site blocks

It's not yet available in English, and our colleague Eleonora has already put it centre-stage with her stunning breaking news post on the IPKat, but this morning's publication on the Curia website of Advocate General Cruz Villalón’s Opinion in Case C-314/12 UPC Telekabel Wien GmbH v Constantin Film Verleih GmbH und Wega Filmproduktionsgesellschaft GmbH deserves notice on this blog too, if only so that people checking its database of notes on rulings and opinions will see that we haven't forgotten it. Fortunately the Curia website carries a media release on today's Opinion, reproduced here in relevant part:

"According to Advocate General Cruz Villalón an internet provider can be required to block access by its customers to a website which infringes copyright

Such a court injunction must refer to specific blocking measures and achieve an appropriate balance between the opposing interests which are protected by fundamental rights

According to EU law, Member States are to ensure that copyright holders or holders of related rights are able to apply for an injunction against intermediaries whose services are used by a third party to infringe their rights [referencing Directive 2001/29 on the harmonisation of certain aspects of copyright and related rights in the information society]. It is already established that internet providers ["Internet access services", referring to Case C-557/07 LSG-Gesellschaft zur Wahrnehmung von Leistungsschutzrechten and Case C-70/10 Scarlet Extended. The same applies to operators of social networking platforms: see Case C-360/10 SABAM] can in principle be regarded as intermediaries and therefore as persons against which such injunctions, which are aimed at bringing to an end infringements already committed and at preventing further infringements, can be granted. In practice, the operators of illegal websites and the internet providers which make them available online are frequently based outside Europe or conceal their identity, making it difficult to pursue them before the courts.

The Austrian Oberster Gerichtshof ... seeks to ascertain ...  whether a provider which provides internet access only to users of an illegal website is to be regarded as an intermediary in that sense, that is to say as an intermediary whose services are used by a third party – such as the operator of an illegal website – to infringe copyright, meaning that an injunction can also be granted against it. It also seeks clarification of the EU rules on the content and procedure for the issuing of such an injunction.

The Oberster Gerichtshof is called upon to decide ... in respect of a legal dispute between UPC Telekabel Wien, a major Austrian internet provider ... and Constantin Film Verleih and Wega Filmproduktionsgesellschaft .... On application by Constantin Film and Wega, the courts ... granted an interim injunction – in the case of the appellate court without mentioning specific measures to be taken – prohibiting UPC from allowing its customers to access kino.to. By accessing that website, users were able to view by streaming or to download films the rights in respect of which are held inter alia by Constantin Film and Wega, without their consent [In June 2011.... kino.to closed after the German prosecuting authorities took action against its operators]. UPC has no legal relationship with the operators of the website and made neither internet access nor storage space available to them. According to the ... Oberster Gerichtshof, it can, however, be assumed with near certainty that individual UPC customers availed themselves of the kino.to offer.

In his Opinion today, Advocate General Pedro Cruz Villalón takes the view that the internet provider of the user of a website which infringes copyright is also to be regarded as an intermediary whose services are used by a third party – that is the operator of the website - to infringe copyright and therefore also as a person against whom an injunction can be granted. That is apparent from the wording, context, spirit and purpose of the provision of EU law.

The Advocate General is also of the view that it is incompatible with the weighing of the fundamental rights of the parties [the fundamental right of the copyright holder to property vresus the provider’s freedom to conduct a business and its customers’ freedom of expression and information, on which the provider can also rely] to prohibit an internet service provider generally and without ordering specific measures [eg an IP block, where requests are no longer forwarded to the blocked IP address, or a DNS block. DNS (Domain Name System) blocks concern domain names which are used instead of unwieldy IP addresses by users. DNS servers, which are operated by every provider, ‘translate’ domain names into IP addresses. In the case of a DNS block, such translation is prevented] from allowing its customers to access a particular website that infringes copyright. That also applies where the provider can avoid incurring a penalty for breach of that prohibition by showing that it has taken all reasonable steps to comply with the prohibition. Advocate General Cruz Villalón underlines in that connection that the provider of the user has no connection with the operators of the website that infringes copyright and has not itself infringed the copyright.

However, a specific blocking measure imposed on a provider relating to a specific website is not, in principle, disproportionate only because it entails not inconsiderable costs but can easily be circumvented without any special technical knowledge. It is for the national courts, in the particular case, taking into account all relevant circumstances, to weigh the fundamental rights of the parties against each other and thus strike a fair balance between those fundamental rights. When weighing the fundamental rights it must however be taken into account that in future action could be taken in numerous similar cases against any provider before the national courts. Advocate General Cruz Villalón also points out that rightholders must, in so far as possible, claim directly against the operators of the illegal website or their providers".

India: ISPs ordered to block URLs containing film name

Blocking injunctions have been much talked about in the UK over the last year, with the Newzbin II and Pirate Bay cases paving new ground. So far the UK courts have only issued injunctions requiring specific ISPs to block specific sites known to contain infringing content. They have been wary not to overly restrict ISPs, and are mindful that there can  be no general obligation to monitor (Article 15 of the E-Commerce Directive; SABAM v Scarlet).

© Rohanlabs

The Indian courts have taken a different approach to blocking injunctions. Today the Madras High Court passed an interim order prohibiting a dozen ISPs and one named individual from uploading the Tamil film "Mirattal" or any portion of it to the Internet. The order also prohibits facilitating downloads of the film. In addition, the Court granted five "John Doe" orders imposing the same restrictions on persons whose identity is not know at the time that the order is granted.

The first John Doe (or Ashok Kumar) order to be granted in India was in respect of Tamil film "3". It was controversially used to block sites containing pirated material not associated with the film, requiring the courts to clarify that it was only to be used to block URLs containing the name of the film. How this was dealt with in practice, given that the film was called "3", is not clear.

In today's order all URLs containing "Mirattal" are blocked, however the trailer and soundtrack are not protected by the order.

Does anyone know how this type of order works in practice? It seems incredibly broad, making it difficult for ISPs to implement and for rightsholders to enforce. And how does it operate in relation to URLs containing the word "Mirattal" which do not point to sites containing the film, for instance those pointing to sites reviewing the film?

Dramatico: a belated note on the sequel

In February we posted a note, "Pirate Bay "a stronger case" of infringement than Newzbin", here, on the decision of Mr Justice Arnold in Dramatico Entertainment Ltd & others v British Sky Broadcasting Ltd & others [2012] EWHC 268 (Ch) to the effect that British ISPs could be ordered to block access to The Pirate Bay. In a further development earlier this month, in Dramatico Entertainment Ltd & others v British Sky Broadcasting Ltd & others [2012] EWHC 1152 (Ch), the same judge gave further consideration to the making of the orders in question.

To recap, the claimants were record companies which sought orders blocking access to the file-sharing facilitator The Pirate Bay -- both in their own right and in a representative capacity on behalf of other members of BPI (British Recorded Music Industry) Ltd and Phonographic Performance Ltd. The defendants were the six major retail internet service providers. Following the earlier judgment, the claimants subsequently agreed the terms of the orders with five of the six defendants for the purpose of blocking or impeding access to The Pirate Bay.

For the court to have jurisdiction to make the orders sought by the claimants, three matters had to be established: (i) the defendants had to be 'service providers' within the meaning of the Copyright, Designs and Patents Act 1988, s.97A; (ii) users and/or operators of The Pirate Bay must have used the defendants' services in order to infringe copyright, and (iii) the defendants must have had actual knowledge of the use for infringing purposes. As to (iii), the claimants contended that the defendants had acquired actual knowledge through evidence which was given by counsel during the proceedings on behalf of the BPI, through the contents of the claimants' evidence in support of their claim and in the findings of the first judgment itself.

In a very short (13 paragraph) judgment, and without the need to listen to submissions from the defendants -- who did not put in an appearance -- Arnold J granted the orders in the form sought by the claimants.  There was no doubt that the defendants were ISPs; there was evidence that The Pirate Bay's website was used for infringing purposes and that the defendants had knowledge of this.

Of particular interest, since the question of access to The Pirate Bay is a matter which, we learn, is likely to be coming before the European Court of Human Rights (see Eleonora's post here), is this:

" ... One of the arguments advanced by BT in 20C Fox v BT was that the order sought by the applicants in that case would be contrary to Article 10 of the European Convention on Human Rights. I did not accept that argument for the reasons I gave at [163]-[177]. In so holding, I distinguished the reasoning of Advocate General Villalón in his Opinion dated 14 April 2011 in Case C-70/10 Scarlet Extended SA v Société belge des auteurs compositeurs et éditeurs (SABAM). Since then, the Court of Justice of the European Union has delivered its judgment in that case on 24 November 2011 [2011] ECR I-0000 and its judgment in Case C-360/10 Société belge des auteurs compositeurs et éditeurs (SABAM) v Netlog NV on 16 February 2012 [2012] ECR I-0000. I have considered those judgments with care, but I do not believe they call into question any of my reasoning in 20C Fox v BT. In particular, I have considered whether it makes any difference if, instead of asking whether the order would be contrary to Article 10 ECHR, it is asked whether the order would be contrary to Article 11 of the Charter of Fundamental Rights of the European Union ("the Charter"), as suggested by those judgments. I do not believe that that would make any difference".