Some Thoughts on TF1-DailyMotion Ruling from Paris Court of Appeals

This is a follow-up to my previous post on the TF1/DailyMotion ruling from the recent Paris Court of Appeals (see here).

Perhaps the most interesting feature of the ruling relates not to the issue of the liability of DailyMotion as a hosting entity (after all, TF1's argument that it ought to be treated as a publisher of the material posted by its users was a longshot given that various French courts, including the Cour de cassation had already recognized DailyMotion as being entitled to the hoster safe harbour) but to the detailed analysis of the  plaintiffs' standing to sue.


As regards the rights held by the broadcaster qua broadcasting entity, this did not prove very difficult inasmuch as the Court agreed that the on-screen presence of the channel logo sufficed to establish that the content emanated from its signal.

Turning to the issue of standing with respect to the rights in the various works as audio-visual works, the Court proceeds with a work-by-work analysis in order to determine whether the relevant plaintiff  sufficiently established its rights thereto.  What is particularly striking however is that the Court expressly states that such an approach is necessary because:

"...it results from the provisions of Section L.113-7, par.1 of the Intellectual Property Code that an audio-visual work must be categorized as a collaborative work and that TF1, as a legal person, cannot avail itself of a presumption of ownership of an intellectual property right."

In other words, the Court rejects the reliance on a presumption because the work at issue is an audio-visual work and under French law an audio-visual work is, by statute, a collaborative work among natural persons (such as director, screenplay writer).

While the Court is quite right that Section L.113-7, par.1 IPC (at least as interpreted by most courts and a majority of legal scholars) provides that audio-visual works are works of collaboration among natural persons, it is somewhat surprising that this fact leads the Court to reject the possibility of relying on a presumption of ownership.

French case-law has, since 1993, recognized a presumption of ownership in copyright protected works in favour of legal persons (acting against third parties in infringement proceedings) provided that the legal person can establish acts of commercialization of the work under its name and provided further that there are no adverse claims from the actual natural peron authors.  This presumption has been applied in all kinds of situations and it has been expressly held that it applies irrespective of the legal categorization of the work i.e., whether or not it is a collective work (being a work the rights to which can vest ab initio in a legal person).

In this ruling the Court of Appeals appears to be rejecting this understanding of the applicability of the presumption and limiting its applicability to cases where the work is not a collaborative work.  This reasoning seems to be based on the fact that the statute defines collaborative works as works created by natural persons.

The decision thus highlights the tension between the seemingly broad application of the presumption as stated by the courts to date and the specific nature of audio-visual works and other collaborative works (limited to natural persons).  Given the original rationale for the presumption (to facilitate actions against infringers and to avoid complicated issues related to standing) and the previous recognition that it is to apply irrespective of the legal categorization of the work, it seems to me that the Court's approach to the presumption in this instance is overly restrictive.

Happy Holidays!

When is the UK public targeted by an infringing website?

Kevin Bercimuelle-Chamot

A few weeks ago I posted a note on IPKat on the recent decision of Birss J in Omnibill, a saucy case concerning copyright infringement over escorts' photographs.

I asked my students at the University of Southampton to read and analyse this decision, and I am happy to host on this very blog the thorough account by 1709 Blog friend and French Erasmus student, Kevin Bercimuelle-Chamot (@KevinBerci).

Here's what Kevin writes:

"In Omnibill the Intellectual Property Enterprise Court decided that a South-African subdomain owned by a UK company could infringe the copyright of a South-African claimant through acts of communication to the public if they could be considered as targeted at the UK public, and provided that several circumstances and conditions were met. 

The legal context in the present case called into consideration two provisins of the Copyrights, Designs and Patents Act 1988 (CDPA), ie s20 (infringement by communication to the public), and s16 (as regards the issue of secondary infringement).

Facts

Photographs hosted on the website of a company (Omnibill) providing escort services had been unlawfully reproduced on a competing website (www.escortgps.xxx). Those photographs, generally of pornographic nature, were used as advertisements by escorts. 

The allegedly infringing website was owned by UK company EGPSXXX, of which Mr Carter was the sole director and sole shareholder. He worked jointly with a third party to set up this website. 

Omnibill brought proceedings for copyright infringement against EGPSXXX and Mr Carter in 2013.

Birss J addressed the case by looking into two sets of issues: (1) the first was whether the website or parts of it could be considered as targeted at the UK, so that UK copyright law would apply; (2) the second was whether the sole director of the allegedly infringing company could be held liable for the infringing acts of his company.

Analysis

In the first place the judge found that the copyright of the claimant had been infringed by unauthorised reproduction and communication to the public of its works. Birss J had subsequently to determine if those infringements had taken place in the UK. To decide whether the website and the acts of communication were targeted at the public in the UK multiple factors were taken into account. 

Birss J noted that the language of the website and the subdomain could be considered as pointing towards a finding that they were targeted at a global audience and several countries. Indeed the earlier decision in Victoria's Secret [here] underlined the possibility of a multiple target.

Then Birss J focused on other aspects, including the way the website was structured. He pointed out that the main one, through country flags displayed on it, directed users to different subdomains. As the South-African one was written in English and displayed an international phone number, the judge considered that it could be another element showing that it was targeted at the public in the UK.

Furthermore Birss J examined a number of additional circumstances, including the number of website visitors. Although it could be argued that they are not always reliable, he held that those figures suggested that a substantial part of traffic came from the UK. 

As a result, Birss J found that the acts of communication of the first defendant were targeted at the public in the UK.

Regarding the question of Mr Carter's liability, Birss J referred to the test employed in Newzbin to determine whether there was or not such authorisation to infringe a third party copyright. This requires to analyse “the degree of control of the authoriser, the relationship between the first infringer and the authoriser, the equipment used, and the steps taken to prevent the infringement”. Birss J concluded that Mr Carter was liable for copyright infringement under s16 CDPA for authorising EGPSXXX Ltd to infringe the claimant's copyright.

What does this decision mean?

The present judgment follows the decision of the Court of Justice of the European (CJEU) in Pammer, as regards the circumstances defining when the acts of communication are targeted at the public on a certain territory.

In addition Birss J followed Arnold J’s approach in EMI v BSkyB when considering what elements should be taken into account to determine whether a certain website is targeted at a specific public, including the number of visitors. Overall it appears that the specific circumstances of the case at hand are key to determine whether UK law comes into question.”

Is Every Orc an Author? On Rehearing, Judges Challenge 5-Second Copyright in Garcia v. Google

This article comes from the EFF website and is written by CORYNNE MCSHERRY

A panel of eleven Ninth Circuit federal judges heard oral arguments yesterday in Garcia v. Google, a copyright case arising from the notorious "Innocence of Muslims" video that was associated with violent protests around the world. The appellant, Cindy Lee Garcia, argues that she holds a copyright in her five-second performance in the video (a performance she says was tricked into giving), and is trying to use that claim to get the video pulled off the internet. To the shock of many, last February two Ninth Circuit judges agreed she might have a claim and ordered Google to remove the video from YouTube and prevent future uploads. Yesterday’s hearing revisited the facts and law that led to that decision. 

The judges grilled Garcia’s counsel on the question of copyrightability, challenging the notion that Garcia’s five-second performance could be a copyrightable work.  “Could any person who appeared in the battle scenes of the Lord of the Rings claim rights in the work?” asked Judge Margaret McKeown. And, she wondered, wasn’t this case really an issue of possible fraud, not copyright infringement?

Judge Alex Kozinski, however, suggested that the Beijing Treaty on Audiovisual Performances, which recognizes certain performance rights for actors, requires courts to recognize Ms. Garcia’s claimed copyright interest. However, the treaty is not yet in force, in the U.S. or anywhere else. In any event, as Google counsel explained, it is not clear that the treaty would create a copyright interest in a five-second performance that was part of a much longer work. Judge Kozinski also compared Ms. Garcia’s claim to a 1977 case involving a short performance by a “human cannonball.”

Google’s counsel stressed the burden on service providers and video-makers of recognizing a copyright interest in this case. If every person captured doing something creative on film could claim a copyright in it, service providers could find themselves flooded with takedown notices under the DMCA, resulting in the silencing of all kinds of lawful speech.  

Google’s counsel also attempted to keep the court focused on the preliminary injunction standard, which requires courts to deny the broad injunctive relief Garcia sought if the law does not “clearly favor” the legal claim. In this case, the overwhelming weight of case law (including a recent Ninth Circuit opinion) and even the Copyright Office clearly disfavors Garcia’s theory.  In our view, that, by itself, should have resolved the question.

Monday's hearing follows months of controversy. EFF and many other public interest groups have filed friend-of-the-court briefs in the case, noting (among other concerns) that actors generally do not have a copyright in their performances and that in any case neither Garcia nor the earlier opinion had justified a prior restraint of speech. We hope the Ninth Circuit quickly comes to the same conclusion and lifts the injunction.

Tis article is available on the EFF website at https://www.eff.org/deeplinks/2014/12/every-orc-author-rehearing-judges-challenge-5-second-copyright-garcia-v-google

The CopyKat - last Christmas you ......

As Eleonora reports over on theIPKat, Google has announced that it will be permanently shutting down the Spanish version of Google News, effective from December 16, 2014. The shutdown comes in direct response toamendments to the Spanish intellectual property law (Ley De Propiedad Intellectual) imposing a compulsory fee for the use of snippets of text to link to news articles, by online news aggregators that provide a search service. Google says its news service makes no profit and so hasd decided to pull the service out of Spain.  Richard Gingras, Head of Google News, said "[t]his new legislation requires every Spanish publication to charge services like Google News for showing even the smallest snippet from their publications, whether they want to or not. As Google News itself makes no money (we do not show any advertising on the site) this new approach is simply not sustainable."

Finland has decided to ditch copyright levies on digital devices. Instead a special government fund will be set up to compensate artists for private copying of music and movies. Following a Parliamentary  vote, Finnish MEP Henna Virkkunen said the new system would be “fairer to consumers and better better for artists because they will get more compensation this way”. Even Veronique Desbrosses, general manager of GESAC, which represents authors’ rights, agreed that increased compensation for artists was a positive element, saying “private copying compensation is part of the ecosystem and is essential”.

Chief Judge
Alex Kozinski 

With the eleven person en banc Ninth Circuit panel set to begin to re-hear arguments in Garcia v. Google case today in Pasadena, a number of Silicon Valley technology companies are amongst those resisting Cindy Lee Garcia's quest to "scrub the internet of her 5-second appearance in the controversial trailer for Innocence of the Muslims". Those against actors gaining a recognised copyright in their performances include Netflix, and the remaining amici range from law professors to news organizations, public interest groups to the Screen Actors Guild-American Federation of Television and Radio Artists—the last being the lone brief endorsing Garcia's copyright position. But interestingly no other major content owners from the film, TV or recorded music sectors have joined the battle: yes they want Google to take down infringing items - but no - they don't want performers and recording artists having any rights that might restrict their own commercial objectives. Google, the California Broadcasters Association and the American Civil Liberties Union all "foresee dire consequences if a U.S. appeals court doesn’t overturn a first-of-its-kind ruling" given by Chief Judge Alex Kozinski that gave actress Cindy Lee Garcia a copyright interest in her performance. Small filmmakers have also weighed in, backing Google; Jack Lerner, an assistant clinical professor at UC-Irvine School of Law, helped write an amicus brief on behalf of the International Documentary Film Association, other independent film groups and filmmakers including Morgan Spurlock, whose "Supersize Me" was nominated for an Academy Award. The California Broadcasters Association said that if the February ruling stands, it will open the floodgates to demands by minor players in movies for the removal of their performances from the Internet. More here.


Torrentfreak now reports that the Motion Picture Association Of America is now looking to secure web-blocks in the U.S without requiring new U.S. legislation. It seems having originally investigated how it might resurrect the web-block elements of SOPA/PIPA in Congress without causing so much controversy (which seems to have been a fanciful hope!)  - the MPAA has now opted for seeing if it can find a way to secure web-blocks in the American courts under existing laws, without requiring new legislation to be passed.

For the past three Decembers, a new musical tradition has been quietly taking root in the recorded music sector, stemming from the 2012 revision to European Union copyright law providing that sound recordings would be protected for an extended 70 years (rather than 50). But attached to that extension was a crucial proviso: in order to qualify for the extra 20 years of protection, the recordings had to be released within the first 50 years after they were made. Now Bob Dylan is said to be releasing a nine-LP box set of unreleased material from 1964, to keep the recordings from entering the public domain. The Beach Boys, The Byrds and The Kinks  are also due to release material although a number of websites noted that Universal Music is running out of time if it wants to reboot the copyright in any unreleased Beatles recordings from 1964. This time last year the major and the band's Apple Corps released 'The Beatles Bootleg Recordings 1963' onto iTunes. 

The one-time pirate website FilesTube has been officially "un-blocked" in the UK after relaunching itself as a licensed video aggregator. UK internet service providers were ordered to block their users from accessing  the site by the High Court in an action brought by record industry trade body the BPI in October last year. A relaunched Filestube is now as an aggregator of only legitimate content. and according to Torrentfreak, FilesTube's Poland-based operators had anticipated having to go the English High Court to get their domains unblocked, but the BPI had been monitoring the situation and voluntarily requested the block be removed. Indeed the BPI's General Counsel Kiaron Whitehead told TorrentFreak: "We are pleased that the block has encouraged FilesTube to change its business model so that it no longer appears to infringe music rights. Accordingly, we have agreed to un-block the site, which the ISPs will implement over the next few weeks. We hope that other sites which are subject to blocking orders will follow suit and help to support the development of legal digital entertainment".

Following on from our last blog and from TorrentFreak comes the opinion: "The Pirate Bay was taken offline in a police raid in Sweden. It may only have been the front-end load balancer that got captured, but it was still a critical box for the overall setup, even if all the other servers are running in random, hidden locations. Sure, The Pirate Bay was old and venerable, and quite far from up to date with today’s expectations on a website. That tells you so much more, when you consider it was consistently in the top 50 websites globally: if such a… badly maintained site can get to such a ranking, how abysmal mustn’t the copyright industry be?

Swedish raid knocks The Pirate Bay offline

Swedish police have seized servers, computers and other equipment used by The Pirate Bay, effectively (for the time being) taking the controversial file-sharing platform offline. The takedown directly affected the service's thepiratebay.se domain, and had a knock on effect on other domains and proxies cused to access the site. CMU Daily reported that the service's homepage" did reappear at a new domain registered in Costa Rica, though at the time of writing [09.12.14] that version of the site isn't actually working - the homepage and community feed appear, but any attempt to access links to content via the site result in an internal server error." Other file-sharing sites such as EZTV, Zoink, and Torrage were also offline, as was Pirate Bay's forum Suprbay.org.

The National Coordinator of IP Crime at Stockholm County Police Paul Pinter told Reuters: "We had a crackdown on a server room in Greater Stockholm because of a copyright infringement, and yes it was Pirate Bay".

Interestingly, one of the orginal founders Peter Sunde, who is no longer involved with TPB, posted a blog admitting that he was happy that the website was offline saying "News just reached me that The Pirate Bay has been raided, again. That happened over 8 years ago last time. That time, a lot of people went out to protest and rally in the streets. Today few seem to care. And I’m one of them" and that over "the past [few] years there was no soul left in TPB. The original team handed it over to, well, less soul-ish people to say the least" adding "TPB has become an institution that people just expected to be there" and "[But with] no one willing to take the technology further. The site was ugly, full of bugs, old code and old design. It never changed except for one thing - the ads. More and more ads were filling the site, and somehow when it felt unimaginable to make these ads more distasteful they somehow ended up even worse" and "As a big fan of the KLF I once learned that it’s great to burn great things up. At least then you can quit while you’re on top. I think I left TPB just a little bit after that top, and not when it’s as shitty as it was when it was closed today. It feels good that it might have closed down forever, just a real shame the way it did that" although perhaps more ominously for content owners he did conclude "It feels good that it might have closed down forever, just a real shame the way [was taken offline] it did that. A planned retirement would have given the community time and a way to kick off something new, something better, something faster, something more reliable and with no chance of corrupting itself. Something that had a soul and could retain it".

The KLF reference (did they burn a million pounds in 1994?) explained here

The CopyKat - can Batman land a knockout punch for actors in copyright spat?

Those pesky Turtles

It seems SiriusXM has decided to rely on the 1940 case of  RCA v Whiteman et al to persuade  U.S. District Judge Colleen McMahon to reconsider her view that SiriusXM should be paying royalties from the broadcast of pre-1972 sound recordings by The Turtles and other acts. In that case Judge Learned Hand for the Second Circuit Court of Appeals wrote that state law should not let performers, once a phonograph was sold, control how and when it was played saying "we think that the “common-law property” in these performances ended with the sale of the records and that the restriction did not save it; and that if it did, the records themselves could not be clogged with a servitude." Judge McMahon says the 1940 case "might require her to rethink the ruling." More on the series of cases brought by the Turtles' Flo & Eddie here. 

Cisco Systems has said it will initiate a legal action against its fast growing rival, Arista Networks, accusing the company of patent and copyright infringement. Cisco has alleged that Arista has violated its patents and copyrights linked to its networking equipment. With copyright, Cisco's claims tha Arista has not only copied the Cisco product features, but has also apparently copied the language in Cisco's operating manuals - with typos and grammatical errors and all. More here.

Sol-seom by Michael Kenna

A case from South Korea where the plaintiff, Gallery Kong, a Korean image agency representing the interest of professional photographer Michael Kenna, has lost an appeal in a copyright infrngement lawsuit against Korean Air. The dispute concerns a photograph Kenna took of a small island in Gangwon Province under the title of “Island of Pine Trees.” He took the photo February 2007 while coming back from a photo shoot and spent about one and a half hours walking along the embankment to find an appropriate spot for shooting and produced the now famous black-and-white image called “Sol-seom” (meaning an island of pine trees). Korean Air used a similar colour image taken by an amateur photographer in a 2011 TV commercial - resulting in the lawsuit.

The Korean Air image

 

But it was not the same image - and the appellate court upheld the trial judge saying “Creative works using the same natural scenery like mountains, trees, and stones tend to be similar and thus the range of its creativeness is bound to be limited” and  “Given the fact that the object in the photograph is a natural one, a creativeness claim about it is weak and minor adjustments like taking a picture from a different angle can’t be taken as creative elements”. They also commented that the two pictures (one taken by Michael Kenna and the other by an amateur) are different in terms of volume and direction of light and the way the picture was taken. As to the claim by the plaintiff that the pictures are similar in their first impression, the judges answered, “The plaintiff’s work gives an impression of an Oriental ink-and-wash painting while the amateur’s exudes dynamism at the time of sunrise, which are fundamentally different.”

It's an interesting approach, but post the CJEU's Inforpaq decison it seems contrary to the decision made by Sir Colin Birss in Temple Island Collections Ltd v New English Teas Ltd & another [2012] EWPCC 1 -although here the claimant had manipulated a photograph of the House of Parliament to created a disticntive predominalty black and white image with a red routemaster bus on Westminster Bridge, which was then recreated by the defendant. Judge Birss (as he was then) considered the scope of photographic copyright by reference to three aspects which could be considered 'original': (i) Residing in specialities of angle of shot, light and shade, exposure and effects achieved with filters, developing techniques and so on; (ii) Residing in the creation of the scene to be photographed; (iii) Deriving from being in the right place at the right time -  and with a nod to Infopaq - found for the claimant.

Cindy Lee Garcia, the actress who got death threats for her role in a trailer for the rather horrible Innocence of Muslims before taking action against Google to enforce a takedown notice - and convincing the majority of the 9th Circuit Court of Appeals (with the ruling from Chief Judge Alex Kozinski) that actors could have a copyright interest in their performances - has now attracted amici support from SAG-AFTRA, the Actors Equity Association, the American Federation of Musicians and other associated talent labour groups in the entertainment industry. They say that an actor can indeed have a copyrightable interest in a performance that's separate and apart from the interest anyone else holds in a motion picture. SAG-AFTRA and the other performer's guilds have argued for the originality of acting performances to be protected and say that a performance can be considered a pantomime or dramatic work under Section 102 of the U.S. Copyright Act. The brief argues that usually each actor adds something new to the character he or she performs saying "Google and its amici argue that the actor is basically a puppet — an automaton that merely does as the director instructs, reading the words the writer writes, depicted as the cinematographer sees him or her. But this is clearly not the case. The actor imbues the character with originality. Compare, for example, the various actors who have played the character Batman on the big screen — each actor brought something different to their performance of the character that, even when masked in full costume, Christian Bale’s performance stands apart from Michael Keaton’s, or Val Kilmer’s, or George Clooney’s or even Adam West’s television appearances. And the recent casting of Ben Affleck to play the role sparked considerable debate among fans of the character" and "While a director or cinematographer may help guide the actor’s performance, particularly in connection with stage directions, it is the actor’s own original expression that the audience sees" says the brief. Facebook, Twitter, IAC and Pinterest had all requested permission to file an amicus brief supporting Google's position. The dissenting judge in the 9th Circuit, Judge N. Randy Smith, accused the panel's majority of writing new law saying "We have never held that an actress' performance could be copyrightable" but the majority held that "An actor's performance, when fixed, is copyrightable if it evinces 'some minimal degree of creativity ... no matter how crude, humble or obvious it might be".  More in the Hollywood Reporter here

In Australia Attorney General George Brandis and Communications Minister Malcolm Turnbull have written to major copyright holders to urge them to come up with ways to discourage people from infringing copyright online. It's a carrot and stick approach with ministers saying that if the code of practice is not agreed with 120 days, the government will impose its own rules to crack down on illegal downloading and streaming of material on the internet. The planned code of practice “will include a process to notify consumers when a copyright breach has occurred and provide information on how they can gain access to legitimate content,” Mr Turnbull said. The Australian government will also amend the Copyright Act so copyright owners can seek a court order to block a website operated from overseas that Australians use to access content unlawfully although some commentators say the planned scheme would be open to abuse by content owners - Dr Matthew Rimmer told TechWorld "There are a number of whistleblowing sites that have a large number of copyright materials on them" adding  "A site like Wikileaks, for instance, could certainly be targeted under these laws." More here.

And finally an interesting case from the world of music sampling. A US Judge has thown out a case against rapper Jay Z over the use of just one word 'oh' - from a recording and song by Eddie Bo called The Hook & Slings  in his track and video Run This Town with the court saying "Run This Town bears very little and perhaps no similarity at all to Hook & Sling Part I. The melody and lyrics are entirely different. The lyrics do not contain the word “oh.” .. [It appears] only in the background and in such a way as to be audible and aurally intelligible only to the most attentive and capable listener. "This does though seem to sidestep the ruling made in Westbound Records and Bridgeport Music v No Limit Films (September 2004) by the 6th Circuit Court of Appeals: here the court posed the question “If you cannot pirate the whole sound recording, can you ‘lift’ or ‘sample’ something less than the whole?” The Court’s answer to this was in the negative” and the court added “Get a license or do not sample – we do not see this as stifling creativity in any significant way” although that decision can istelf be contrasted by US District Judge Alison Nathan's more recent decision in the Tuf America v Beastie Boys case in 2013 .  More here. and more on music sampling here.

Uruguay signs up for Marrakesh Treaty

According to Marrakesh Notification No. 4: Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled, the Government of the Eastern Republic of Uruguay [that's its real name -- there isn't a Western Republic], on 1 December 2014, deposited its instrument of ratification of the Marrakesh Treaty -- but it won't come into force till it reaches the required number of ratifications or accessions in accordance with Article 18 of that Treaty, ie three months after 20 eligible parties have signed up for it. Right now the number stands at four, but you can check here to see whether more have signed up since.

IP, gender ... and copyright term

"WIPO Seminar Discusses Intellectual Property And Gender" is the title of a recent post on Intellectual Property Watch which relates to an event this blogger would quite like to have attended. Professor Dan Burk (University of California, Irvine) was the man of the moment, reviewing the most recent empirical research on gender issues in intellectual property law as well as potential ways forward to help ensure equitable systems of promoting innovation and creativity.

Most of the data concerned patents, but the title of the seminar suggested something else to this blogger: if copyright term is based on life expectancy, and the life expectancy of women outstrips that of men by around five years, might not there be a good case for leaving the period of post-mortem copyright protection of works authored by men at 70 years and reducing that for works authored by women to life plus 65 years so that a work might be expected to reach the public haven at the same time without regard to the gender of its author?

There again, problems would arise. For example, would a work co-authored by a man and a woman be affected where the woman outlived the man? And what would be the status of works authored by creators who had undergone gender reassignment, both before and after the reassignment?  Maybe leaving the same period of post-mortem protection for male and female-authored works isn't such a bad thing after all ...