Friday, 29 December 2017


When historians look back at the copyright world in 2017 (if our attention spans allow us to have roles such as a 'historian' in the future!) what would they make of this year? Well one of the main 'themes' of 2017 was the ongoing battle between 'big tech' and 'big content' around the globe, set in the context of possible reforms to copyright law. In Europe, the US and Australia 'safe harbour' was being re-examined, with the film studios and recorded music sector finally making some headway against the likes of YouTube and now Facebook in shrinking the 'value gap' that has propelled the technology sector to host some of the biggest businesses in the World. And finally the record labels and the platforms were doing deals! But it wasn't just technology vs content: two major platforms, Spotify and Deezer, urged European legislators to ensure that the globally dominant giant US technology companies (primarily Apple, Amazon and Google) don't abuse their position as gatekeepers to digital consumers, not least as all three tech giants make and operate devices, control transaction platforms and own content services. Spotify and Deezer are big in their sector, but dwarfed by the likes of Google. And if Rupert Murdoch has seen the writing on the wall, shouldn't we all? Does Disney's $52.4 billion acquisition of 21st Century Fox give the combined content and broadcasting behemoth a chance of competing with Netflix or Amazon Prime? It no doubt explains why Spotify and China's internet giant Tencent exchanged equity stakes of just under 10 per cent of each other, and why Tencent now has a $2 billion stake in Snapchat. The content industries might be worried about the US tech giants, but the US tech giants will be looking East, at the astonishing growth of the likes of Baidu, and Albibaba. 

Elsewhere, the Court of Justice of the European Union has defined, re-defined and refined its own and (perhaps) our understanding of what the right of 'communication to the public' under Article 3(1) of the InfoSoc Directive actually is. The topic had already been subject to nearly 20 references to the CJEU for preliminary rulings, and yes, there would be more from the court in 2017 as the decisions in Filmspeler, C-527/15, and Ziggo, C-601/15 (The Pirate Bay) loomed! And what of copyright itself? In an ever changing world, courts around the globe continue to revise our understanding on the subsistence of copyright, sometimes moving on from the classic definition (where copyright subsists in  "original literary, dramatic, musical and artistic works") to approaches such as the CJEU's 2009 concept of protecting works which are the "author's own intellectual creation'" in its decision in Infopaq. But this approach and indeed traditional approaches presume that a particular person is the author of a work - and it a world of selfie taking monkeys, animal rights and very smart robots ....... do we even know what a 'person' is any more - a conundrum confusingly explored and partially explained in Ex-Machina (pictured).
January and our first update of 2017 was news from India that three Indian music copyright collection societies were restrained by the Delhi High Court from granting any licences until April. Justice Sanjeev Sachdeva made an interim order against  the Indian Performing Right Society (IPRS), the Phonographic Performance Ltd (PPL) and Novex Communications Pvt Ltd preventing them from contravening section 33 of India's Copyright Act,  which provides that only registered societies can grant licences in respect of copyrighted work(s). In the USA, one of the major musical works collection societies (and there are now four!)  BMI filed an action in Federal Rate Court to set interim fees for radio stations represented by the radio industry's trade body the RMLC, while BMI and the RMLC negotiate the terms of a new five-year deal. Again in the US, the Second Circuit affirmed the January 2016 order of Judge Furman of the Southern District of New York (SDNY), which had found that the use of the Louis Vuitton logo and the representation of the Louis Vuitton bags on fabric totes (pictured) with one side representing a somewhat cartoonish rendition of a famous luxury bag, while the other side read “My Other Bag is…” with the Louis Vuitton ‘LV’ logo replaced by the initials 'MOB' (and retailing for $35 to $55) was fair use. And AG Szpunar issued his opinion in The Pirate Bay case, advising the CJEU to answer the question posed by the Dutch Supreme Court of whether the Pirate Bay undertakes the act of communication to the public in the affirmative saying "the fact that the operator of a website makes it possible, by indexing them and providing a search engine, to find files containing works protected by copyright which are offered for sharing on a peer-to-peer network, constitutes a communication to the public within the meaning of Article 3(1) of [the InfoSoc Directive], if that operator is aware of the fact that a work is made available on the network without the consent of the copyright holders and does not take action in order to make access to that work impossible". 

February began with Tibbie McIntyre posing the question "Should Press Publishers be Given an Exclusive Neighbouring Right?" in the context of Article 11 of the Proposed EU Directive on Copyright in the Digital Single Market. In Spain, a press publisher right was introduced which automatically made Google pay, without the press publishers having to pursue payment under an exclusive right. Google’s response was simply to close down Google News in Spain. Further consequences were felt, with online Spanish news sites garnering less traffic. Tibbie opined that the cogent opinion released by CIPIL stated that “If the real problems facing press publishers relate to licensing and enforcement, the best answer is surely to focus on licensing and enforcement rather than to create new rights” and that “Multiple rights are associated with clogging and opportunistic behaviour” wisely noting that "Realising policy objectives is a complex and difficult goal, with almost endless variables to consider", with drafting of new laws posing a particularly challenging task. The debate being played out across the globe presents many challenges, and it will be interesting to review further developments with this proposed right in future. The Turtles ongoing tri-state litigation against SiriusXM over the satellite radio broadcaster's refusal to pay to broadcast pre-1972 sound recordings reached the the Florida Supreme Court, who looked again at Judge Darrin Gayle's decision which found in favour of SiriusXM and agreed that "There is no specific Florida legislation covering sound recording property rights, nor is there a bevy of case law interpreting common law copyright related to the arts" and "If this Court adopts Flo & Eddie’s position, it would be creating a new property right in Florida as opposed to interpreting the law" adding that it's the job of the Florida state legislature to address the issue, and that a decision to plug the gap would bring up a host of other issues such as resolving who sets and administers licensing rates, who owns sound recordings for dead artists and what exceptions there might be to a public performance right. A host of impressive signatories (including the Centre d’Etudes Internationales de la Propriété Intellectuelle (CEIPI), University of Strasbourg, CREATe at the University of Glasgow and the Max Planck Institute for Innovation and Competition)  penned an open letter with the heading "EU Copyright Reform Proposals Unfit for the Digital Age".  And singer, songwriter and producer T Bone Burnett delivered a telling contribution to the US Copyright Office's review of Digital Millennium Act 'safe harbor' provisions in the USA, saying in a video that whilst the law that was supposed to "balance the internet's openness with creators' ability to earn a living wage from their work  ..... [T]hose safe harbours have failed".

We've won an WEB BLOCKING ORDER !! 
(Photo by Ben Challis)
On March 8th, a French art history student was escorted out of the Louvre Museum in Paris. His crime? He was taking pictures of the Valentin de Boulogne exhibition, a painter who has been dead for almost 400 years. Contrast that with the approach of the New York Metropolitan Museum of Art which recently made the images of it's artworks in the public domain freely available through a new open access policy, without restrictions. But French law does provide for the Louvre's actions: last December last, France's highest administrative court, the Conseil d’État, confirmed that a public entity can forbid a private entity to take pictures of works inside a public museum. But, asked Marie-Andree Weiss, is it right? In the UK in FAPL v BT [2017] Mr Justice Arnold concluded that the High Court has the jurisdiction to make an order against an access provider that would require the ISP to block access not to a website but rather streaming servers giving unauthorised access to copyright content - 'live' blocking.  One of the more incredible allegations about Prenda Law, the copyright-trolling operation that sued people for downloading movies online, was that the lawyers behind Prenda and its associated companies might have created and uploaded some of the porn, simply as a way of catching more offenders. ArtsTechnica told us in March that this may well be true, and despite repeated denials by the Prenda lawyers. The report said that John Steele [a Prenda lawyer] pled guilty in Minnesota to federal charges of "conspiracy to commit mail and wire fraud" and to money laundering. And guess what? In 2011 "Team Prenda had in fact become porn producers (they continued to have other "real" clients at that time as well") and "On at least three separate occasions in Chicago, Miami, and Las Vegas, Steele and [Paul] Hansmeier... contracted with adult film actresses and produced multiple short pornographic films". In an interesting decision, the Court of Appeal in London upheld a custodial sentence imposed on Wayne Evans by HHJ Trevor Jones at the Crown Court in Liverpool for two offences of distributing an article infringing copyright contrary to section 107(1)(e) of the Copyright Designs and Patents Act 1988 and also to a further offence of possessing an article for use in fraud contrary to section 6(1) of the Fraud Act 2006. A twelve month custodial sentence was thought right, despite Evans having no previous convictions, pleading guilty at the first opportunity and making very little (if any) financial gain from distributing thousands of copyrighted music tracks through his webite: But there was undoubtedly a real loss to the owners of the relevant copyrights and related performers - and that weighed against him as did the need for a deterrent. Can cheerleader uniforms be protected by copyright in the US even on utilitarian clothing? Well the US Supreme Court said YES - when a feature incorporated into the design of a useful article it can be eligible for copyright protection but only if the feature (1) can be perceived as a two or three dimensional work of art separate from the useful article,and (2) would qualify as a protectable pictorial, graphic, or sculptural work, either on its own or fixed in some other tangible medium of expression if it were imagined separately from the useful article into which it is incorporated (Star Athletica LLC v Varsity Brands, Inc.)  And finally, back to France where the Tribunal de Grande Instance de Paris found that Jeff Koons had infringed the copyright of French photographer Jean-François Bauret after reproducing (without authorisation) one of Bauret’s photographs to create his Naked sculpture - and that a defence of parody would fail, one of the first cases to look at the CJEU's decision in Deckmyn v Vandersteen, where the CJEU explained that a parody must “evoke an existing work while being noticeably different from it, and, secondly, to constitute an expression of humour or mockery". 

Prince by Andy Warhol (1984) Copyright AWF
In April, a group of bipartisan legislators in the US reintroduced a bill which is designed to put AM/FM radio into the same shoes as satellite radio and webcasters such as Pandora and iHeartRadio.  AM/FM radio stations pay nothing to perform music yet webcasters are required to pay a statutory royalties for playing music on their online radio platforms. A joint statement from the bipartisan group stated that "Our current music licensing laws are antiquated and unfair, which is why we need a system that ensures all radio services play by the same rules and all artists are fairly compensated". It's the Fair Play Fair Pay Act. The Italian web-blocking system was held to  just fine by Italy's administrative court which ruled that the powers granted to Italy's communications regulator AGCOM to issue web-block injunctions are not in conflict with either the EU's E-Commerce Directive or Italian copyright law, or the Italian constitution. And in Ireland, the Commercial Court ordered nine internet service providers to block access to three websites which  were alleged to have facilitated the illegal streaming of copyrighted TV shows and movies. The claimant film studios said the three sites were facilitating piracy on an "industrial scale". Mr Justice Brian Cregan granted the order being sought by the six TV and film studios against the ISPs which included Sky Ireland, Vodafone Ireland and Digiweb. The CJEU's decision in the important Mc Fadden case that  the provider of a password-free, free WiFi can be requested to have his internet connection secured by means of a password was applied with news that he Higher Regional Court of Düsseldorf had requested that  the operator of an open WiFi (and a TOR exit node)  take action against repeated copyright infringements by users of his IP-addresses. And the Court of Justice of the European Union issued its long-awaited decision in Filmspeler, C-527/15, ruling that the sale of a multimedia player was a ‘communication to the public’, with Eleonora explaining that the CJEU had substantially followed the opinion of Advocate General  Manuel Campos Sánchez-Bordona, who proposed a broad(er) interpretation of the right of communication to the public and, with it, a broader reading of what amounts to an 'indispensable intervention': the CJEU noted that the aim of the [Infosoc) Directive is to establish a high level of protection for authors and so the concept of ‘communication to the public’ must be interpreted broadly. In addition, the Court had already held that the availability, on a website, of clickable links to protected works published without any access restrictions offers users of the first website direct access to those work, and that was extended in this case to the sale of the multimedia player.  And finally, The Andy Warhol Foundation filed a pre-emptive suit against photographer Lynn Goldsmith asking the Southern District of New York Court (SDNY) to declare that the Andy Warhol Prince Series did not infringe on Defendant’s copyright, that the portraits in the series are transformative works protected by fair use, and that Defendant’s claim is barred by the equitable doctrine of laches. 

In May we said farewell to our excellent blogging interns, Tibbie McIntyre and Davis Liao, who added so much to the 1709 Blog. Thank you David and Tibbie. You were both exceptional. And we welcomed Matthew Lingard and Lolita Huber-Froment to carry on where Tibbie and David left off, not least with our regular CopyKat updates.  In Australia, in the midst of a big review of copyright, examining the impact of extending a 'fair dealing' doctrine to a wider 'fair use' approach came news that a collection society was channelling fees intended for authors into their ‘fair-use opposition fund’. The Copyright Agency had set aside a A$15 million fund specifically to oppose the implementation of a fair-use system. Astonishingly, the fund came from payments made to the Australian Copyright Agency for the use of orphan works! Staying 'down under', the Eminem song ‘Lose Yourself’ was at the centre of a trial in the Wellington High Court: a campaign advert during New Zealand's general election by the ruling party was alleged to have infringed the copyright in ‘Lose Yourself’ - but the song used was a 'sound alike' entitled ‘Eminem-esque’. Did it matter? The answer was no - the copyright in the song had been infringed and damages of NZ$600,000 were awarded. Prenda Law attorney John Steele was disbarred by the Illinois Supreme Court. And Lolita asked the question 'is the taste of a Dutch cheese protected by copyright?' Surely not ..... well maybe ....  as a case about cheese seemed to have slipped through the net and said the taste of the cheese (or specifically “Heks’nkaas”, a Dutch cheese) could be a protected creation under author rights,  but more importantly asked the CJEU (a) whether EU Law allows copyright protection of taste? and (b) if so, what requirements must be met in order to determine subsistence of copyright protection?

Jimi Hendrix by Gered Mankowitz
At the beginning of June, the Bundesgerichtshof (BGH, the German Federal Court of Justice) referred not one but two important copyright cases to the Court of Justice of the European Union for guidance on (a) the extent EU copyright allows sampling and (b) what role fundamental rights play in the copyright sphere. More specifically, what is the relationship between copyright protection, freedom of the press, and freedom of information? The first reference had been made in the context the longstanding and complex Metall auf Metall litigation concerning the unauthorised sampling by music producer Moses Pelham of a 2-second rhythmic sequence from Kraftwerk's 1977 song 'Metall auf Metall'. The second reference was made in the context of litigation between the German Government and German newspaper WAZ over the unauthorised publication by the latter of the so called 'Afghanistan Papers' (confidential military reports). And there was more on sampling with Drake, his record label and music publishers winning a difficult lawsuit that had claimed his song “Pound Cake/Paris Morton Music 2” which featured on the 2013 album “Nothing Was the Same” sampled a 1982 spoken-word recording titled the “Jimmy Smith Rap.” It was a sample, but Judge William Pauley noted that whilst in many cases of parody the average observer would need to identify the target of derision, it’s not a universal prerequisite for a finding of transformative use, commenting that Drake used Smith’s work as “raw material” for his new work. The judge also commented that the use of “Jimmy Smith Rap” was transformative regardless of whether the average listener would identify the source and comprehend Drake’s purpose. In a decision applauded by photographers around the world, and reversing the Paris Tribunal de Grande Instance (TGI) first instance decision, the Paris Court of Appeal decided that the iconic photograph of Jimi Hendrix by Gered Mankowitz was original and that, by using the altered copyright-protected work to commercially promote their products online and in two brick-and-mortar shops, the defendant electronic cigarettes sales company had infringed copyright. The Court of Appeal confirmed that the person claiming copyright protection bears the burden of proof. Here Mr Mankowitz had organised the 1967 shoot, had directed the rock star in terms of position and angle, had chosen the use of a specific camera and lens to create a wide-angle effect without distortion, and had chosen the lightning, background, framing and angle of capture - so yes, a copyrighted image embodying the expression of the photographer's own personality. It was a busy month in France as France’s Cour de Cassation ruled in favour of the 'freedom of expression' of Director Dmitry Chernyakov in respect of "Le Dialogue des Carmélites" staged for the Munich Opera in 2010 trumped moral rights - here his use did not violate the moral rights of composer and librettist Francis Poulenc. 

July, and the French courts blazed with more copyright news with another case about the importance of originality in French copyright, this time deciding that a retail stores’ layouts was original enough to be protected by copyright. The court of first instance, the Tribunal de Grande Instance de Lille, had already ruled in favour of  the plaintiffs, an Italian cosmetics store, who had claimed that its stores’ layout was original and protected by the French droit d’auteur.The Douai Court of Appeals also ruled in favour of the Italian company against the defendants, a French cosmetics and accessory company, and recognised that French copyright protects interior design such as “the rhythm of colour and the layout of a store chain” and explained that “[w]hen this protection is contested in defence, the originality of a work must be explained by the person who claims to be the author, that is the only person able to identify the elements expressing his personality…. [and that] the exploitation of a work by a moral entity under its name shall presume that this moral entity [owns the copyright].” When a group of museums and researchers in the Netherlands unveiled a portrait entitled The Next Rembrandt, it was something of a tease to the art world. It wasn’t a long lost painting - but a new artwork generated by a computer that had analysed thousands of works by the 17th-century Dutch artist Rembrandt Harmenszoon van Rijn. We've had monkeys taking photos - now asked "Should robot artists be given copyright protection?".  

Still in July and speaking of that monkey, freelance photographer David Slater, who facilitated the now infamous 'monkey selfie' taken by black macaque Naruto said he was in a dire financial situation as the appellate proceedings regarding the selfie continued in the United States courts. More photography: snapper Donald Graham, who had filed a copyright infringement suit against the notorious 'appropriation artist' Richard Prince in 2016 claiming that Prince’s use (without permission) of Graham’s Rastafarian Smoking a Joint photograph to create an Untitled (Portrait) featured in Prince’s New Portraits exhibition was copyright infringement, had some good news. Prince, who of course has that controversial but helpful judgment in Cariou v Prince behind his art, claimed his appropriation was fair use. U.S. District Judge Sidney H. Stein from the Southern District of New York allowed the case to go forward and denied Prince’s motion to dismiss the case. And the CJEU issued its much-awaited judgment in Stichting Brein v Ziggo BV and XS4All Internet BV, C-610/15 (The Pirate Bay case) and the Court developed further its construction of the right of communication to the public within Article 3(1) of the InfoSoc Directive, and clarified under what conditions the operators of an unlicensed online file-sharing platform would be liable for copyright infringement.

August began with Marie-Andree asking "Is Reconstructing a Work to Preserve It Copyright Infringement?" in an update which looked at  the law suit that followed the reconstruction of artist Cady Noland's "Log Cabin" sculpture, a life size artwork created in the nineties. Art collector Wilhelm Schurmann bought the work and loaned it to a museum which exhibited it outside for ten years. Over time the work deteriorated, and in 2010 an art conservator recommended the work should be reconstructed it entirely with new materials and new logs. The complaint alleges that Cady Noland was not informed of this decision, but instead learned in 2014 that the work had deteriorated, had been reconstructed, and the decayed material thrown away - and she said her moral rights were violated. Noland also disowned the 'new' work. Is there a claim? A federal judge ordered the dispute over the "Lady Liberty" stamp to go to trial. The United States Postal Service mistakenly produced a 2010 stamp that was based on a replica of the Statue of Liberty created by artist Robert S Davidson rather than the original.  And a New York judge dismissed a lawsuit brought the estate of promoter Sid Bernstein, who staged the Beatles’ legendary 1965 show at Shea Stadium. The Estate had argued that band’s Apple Corps had infringed on the copyright of Sid Bernstein Presents by including footage from the concert in Ron Howard's  documentary film Eight Days a Week - the Touring Years which was released in September 2016 - but the Judge noted that contract signed in 1965 “reserves no rights whatsoever for Bernstein in any filming or recording of the concert. And finally in August, the case between Solid Oak Sketches against Take-2 Software, the maker of the NBA 2K video game which claims that the latter's reproduction of several tattoos worn by famous basketball players was copyright infringement rumbled on. The defendants argued fair use, the use was de minimis - and that the law suit would "seek to hinder the ability to depict people as they appear in real life”.

That monkey selfie
What news in September? Well carrying on from August, Solid Oak's lawsuit was back in the news as ArtsTechnica took a detailed look at the issues. Elsewhere The creator of Pepe the Frog stepped up his fight against far-right activists who had appropriated the cartoon character as a meme. Matt Furie vowed to "aggressively enforce his intellectual property" after the character he created for a comic strip was plastered across social media and even merchandise, particularly by fans of US President Donald Trump as he fought his election campaign. George Chin reported that "We Shall Overcome" - labelled by the US Library of Congress as “the most powerful song of the 20th century” - was not original. A federal judge struck down the copyright for part of the civil rights anthem saying that the song’s adaptation from an older work, including changing “will” to “shall”,  was not original enough to qualify for protection with Judge Cote saying “This single word substitution is quintessentially trivial and does not raise a question of fact requiring a trial to assess whether it is more than trivial … The words ‘will’ and ‘shall’ are both common words. Neither is unusual” adding "The fact that a trivial change to the lyrics became a part of a popular version of a song does not render that change nontrivial and automatically qualify the popular version for copyright protection". Professor Lionel Bently (University of Cambridge) and Associate Professor Valeria Falce (Università Europea di Roma) were in Rome to discuss the proposed Directive on copyright in the Digital Single Marketconcluding "Ultimately, while the Commission appears to pursue a clear objective (reviewing the set of responsibilities) through a bold framework, because the proposed Directive lies within a network of pre-established instruments Article 13 is likely to become a legislative bull in a fragile legal china-shop. It will at the very least introduce “large amounts” of uncertainty, or, worse, obscure the obligations of the subjects involved.” And finally - was it really the end of the 'monkey selfie' case? It seemed so!  The People for the Ethical Treatment of Animals announced it had settled the federal lawsuit that sought to establish the right for animals to own property. In a joint statement PETA and photographer David Slater said: "PETA and David Slater agree that this case raises important, cutting-edge issues about expanding legal rights for non-human animals, a goal that they both support, and they will continue their respective work to achieve this goal. As we learn more about Naruto, his community of macaques, and all other animals, we must recognize appropriate fundamental legal rights for them as our fellow global occupants and members of their own nations who want only to live their lives and be with their families. To further these goals, David Slater will donate 25% of future gross revenue from the Monkey Selfie photographs to charitable organizations dedicated to protecting and improving the welfare and habitat of Naruto and crested black macaques in Indonesia." This may be the end of this case, but is it the end of the story? If the monkey cannot be the author, but does that mean that Mr Slater owns the copyright in the picture taken by the monkey? And if he doesn't - who does?

October - already!  The Bundesgerichtshof had been considering a case that dated all the way back to 2009 and finally decided that Google had not infringed the US adult website Perfect 10 by linking to illegally uploaded thumbnail with its image-search engine. Perfect 10 maintained that it was owed damages for copyright infringement. The Bundesgerichtshof disagreed. Under German and EU law, Google's tool was not infringing copyright by reproducing the thumbnails of Perfect 10's models., the massive Chinese e-commerce company was been hit with a US 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 was seeking to certify a class of copyright holders who have seen their work copied and sold on Alibaba’s network of websites without their permission. And it seemed web blocking was now on the cards for copyright owners in the US 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. In the UK the copyright (or perceived lack thereof) in TV formats was revisited in Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd [2017] EWHC 2600 (Ch). Here the court held that a TV format can be potentially protected by copyright, although in the specific case the action failed: but copyright protection will not subsist unless "as a minimum (i) there are a number of clearly identified features which, taken together, distinguish the show in question from others of a similar type; and (ii) that those distinguishing features are connected with each other in a coherent framework which can be repeatedly applied so as to enable the show to be reproduced in recognisable form.”

Remember - November!  First off, would the Review Board of the U.S. Copyright Office agree with a new request from T.W.N. Industries to reconsider the denial to register two of its patterns. The answer was 'no'. Even though the Board recognised that TWN's "Gold Wood" had been independently created, it was not creative enough to be protected by copyright, as “it consists of simple, minor variations on common shapes arranged in an obvious and uniform manner.” The Board explained further that Gold Wood “is made up of only a very few elements (monochromatic lines in a few shades of gold” arranged in an unoriginal manner (densely and with only minor and repeating variations throughout the pattern).” As explained in § 313.4(J) of the Compendium of U.S. Copyright Office Practices, “a work consisting of a simple combination of a few familiar symbols or designs with minor linear or spatial variations, either in two-dimensional or three-dimensional form, cannot be registered.” Next up, and in the space of under a week, there were two big decisions in the USA looking at web blocking - with differing results.  First off, a federal judge in California issued a preliminary injunction preventing Canada’s Supreme Court from forcing Google to de-list websites for Datalink on its American search engine. The Canadian Supreme Court (Google Inc v Equustek Solutions Inc, 2017 SCC 34) had ordered Google to de-list the tech company’s website(s) worldwide. Indeed the music industry trade body Music Canada welcomed the judgement saying it was “a crucial development given that the internet has largely dissolved boundaries between countries and allowed virtual wrongdoers to move from jurisdiction to jurisdiction in search of the weakest enforcement setting”. The US court disagreed - That ruling won't apply here! And Judge Leonie Brinkema confirmed  the October ruling of Magistrate Judge Anderson who had recommended a ruling in favour of the American Chemical Society. The court issued the injunction that meant US based registrars can't offer their services, and server farms can't host Sci-Hub. The order goes further, ordering “any person … including any Internet search engines, web hosting and Internet service providers, domain name registrars, and domain name registries, cease facilitating access to any or all domain names and websites through which Defendant Sci-Hub engages in unlawful access to, use, reproduction and distribution of the ACS [trade] marks or ACS's copyrighted works”. The 1709 Blog posed the French focussed question "Does a decree aiming at protecting the health of our auditory systems by making it mandatory to lower the sound level of music a violation of the moral rights of the author of the music?". An editorial published in the daily newspaper Libération, titled Faites du bruit pour sauver la musiqueMake noise to save music, and signed by several personalities and musicians, including former Minister of Culture Jack Lang, claimed that a French decree aimed at preventing risks associated with noise distorts musical works and violates freedom of creation. ResearchGate was said to moved at least 1.7 million articles to make them less easily available after legal action by a group of five publishers including Elsevier, Wiley and Brill, who issued a wave of take-down notices. Since then, 93 per cent of the CRS publishers' papers had been made less accessible and instead of being instantly downloadable, users had to request a copy from the author. And finally (and importantly) the CJEU delivered its judgment in VCAST, C-265/16: Does EU law prohibit a commercial undertaking from providing - without the authorisation of the relevant copyright owner - private individuals with cloud computing services for the remote video recording of private copies of works protected by copyright, by means of that commercial undertaking’s active involvement in the recording? The CJEU held "To the extent that the service offered by VCAST consists in the making available of protected works, it falls within communication to the public. In that regard, the Court recalls that, according to the directive, any communication to the public, including the making available of a protected work or subject-matter, requires the rightholder’s consent, given that the right of communication of works to the public should be understood, in a broad sense, as covering any transmission or retransmission of a work to the public by wire or wireless means, including broadcasting."

And we are here. The final month of the year!  At the beginning of December the EFF published a critique of the USA's CASE Act of 2017, explaining that CASE would have several unwanted consequences, and the most negative of  these was (is) the fact that the Copyright Office will become a Copyright Court as the Act would set up a “Copyright Claims Board” within the Copyright Office, staffed by three judges empowered to hear copyright complaints from all over the country. The major national sports leagues in Europe, including the English Premier League and Germany’s Bundesliga, won a reprieve from the EU who agreed to exclude them from the scope of a copyright reform that would help make content more easily available online in the EU. The World Intellectual Property Organisation said it was going to take a long hard look at the of limitations and exceptions to copyright, and provide draft action plans, one each for libraries, archives, museums, educational research institutions, and persons with other disabilities than sight impairment. As we said in our opening, a  theme that has been bubbling around for a few years (and not unrelated to a famous monkey's claim for a copyright) was explored in Eleonora's examination of artificial intelligence - and copyright: As AI machines become increasingly autonomous, can they be regarded as 'authors' in a copyright sense and, if so, can the works they create be eligible for copyright protection? If the answer was again in the affirmative, who would own the copyright in such works? In China, Lego A/S, Europe’s biggest toymaker, said it won its first copyright court case after the China Shantou Intermediate People’s Cour ruled that products under the name Bela, sold by two Chinese companies, infringed upon Lego’s copyrights. And another recurring theme in 2017, the battle between the tech giants and the content sector bubbled over again when Google and members of Australia's technology sector urged the government to reconsider excluding them from changes to safe harbour rules, while the content sector has applauded the decision to not extend the copyright provisions to digital businesses. In Canada, the House of Commons triggered a parliamentary review of Canada's Copyright Act, first passed in 1921. TorrentFreak commented that the music industry was quick to weigh in, congratulating government ministers and making it known that the so-called 'Value Gap'  and  how the tech giants seem to be good at everything except removing infringing material, and why likes of Google don't seem keen to pay for what drives the likes of YouTube should be high on the agenda. And the battle between the tech behemoths, and giants of the content industries, was in full spate in the US where the likes Google and Facebook are now facing off against Hollywood studios and major record labels over how to update the North American Free Trade Agreement to protect copyright in the digital age. Silicon Valley is pushing for exceptions to copyright rules for online platforms and Internet service providers it says are needed to keep content flowing on the web. Meanwhile, the U.S. government seems to be taking positions more favoured by companies such as Walt Disney and Time Warner who are lobbying for stronger protections for copyright owners. The new (US led) proposals for NAFTA would limit allowances for online use of copyrighted material, a position seemingly less supportive of online platforms than existing US law, in particular a watering down of fair-use exceptions and a re-evaluation of 'safe harbor'. There was an uodate on our opeming story with IPRS re-registering as a copyright society and finally, would the mess surrounding pre-1972 sound recordings in the US be sorted? Maybe! A group of 41 recording artists urged the US Congress to sort out the mess with the new "Compensating Legacy Artists for their Songs, Service & Important Contributions to Society Act"  - or (wait for it, and a a drum roll please)  the CLASSICS Act. 

Our last thoughts: what of the andriod, more intelligent than a human, stronger and faster than a human being who looks like a human but ia built in a factory. Lets say one called Miim, some 100 years from now and having lived with and outlived her creators, aspires to be the best self taught artist ever?

Miim visits Mars and paints the most stunning Marscape every seen. A real masterpiece. If Miim dreams of electric sheep - surely she is the author of this stunning work? AI and copyright -  no need to short circuit this debate - it's the wild wild Westworld out there. And more here and here and here and here

Sadly we have lost some important creative talent this year. In music, Tom Petty, Chris Cornell, Joni Sledge, Fats Domino, Glen Campbell, Gord Downie, Chuck Berry, Al Jarreau, Johnny Hallyday, Gregg Allman, composer Vladimir Shainsky, and trance DJ and producer Robert Miles were just some of those who passed. Film, TV and theatre lost a wealth of talent including the actors Sir John Hurt, Erin Moran, Frank Vincent, Sir Roger Moore, Danielle Darrieux, Robert Hardy, Kritika Chaudhary, Rosemary Leach, Aracy Cardoso, Reema Lagoo, Hiromi Tsuru and Partha Mukhopadhyay, comedian and actor Jerry Lewis, along with the film directors Jonathan Demme and George A. Romero. And we said farewell to Paddington Bear author Michael Bond, sitcom writing icon Alan Simpson, Japanese playwright Akira Hayasakathe, children's author and artist Dick Bruna, Inspector Morse creator Colin Dexter, and the cartoonist Leo Baxendale. So all we can do is wish you a happy and healthy 2017 and that you all 'live long and prosper'.
You can catch up with Eleonora's excellent and well deserved 2017 Copyright Awards on the IPKat here - and some of those are mentioned above (thank goodness!!). 

The EFF's Time to Rethink Copyright Safe Harbors? 2017 in Review

And from Motherboard: 2018 Is the Last Year of America's Public Domain Drought

As ever - readers will have their own views on what should (or perhaps should not) be included in the copyright year. The CopyKat writes from a UK/US, music industry and common law perspective: So please let us know if you think something important is missing - comment is free on the 1709 blog, but please be polite and thoughtful! 

Using the Copyright Force May Help LucasFilm to Win Sabacc Lawsuit

Lucasfilm Ltd. and Lucasfilm Entertainment Company Ltd. LLC recently filed a trademark infringement and copyright infringement suit in the Northern California District Court against Ren Ventures Ltd, Sabacc Creative Industries Ltd., which created and released in 2015 the “Sabacc” mobile game app, shortly before the release of the Star Wars The Force Awakens movie. The case is Lucasfilm Ltd. v. Ren Ventures Ltd, 3:17-cv-07249.

Han Solo cunningly used his Sabbac skills to win his spaceship, the Millennium Falcon, from Lando Calrissian. The game was played, a long time ago, in a galaxy far, far away, using cards, while we seem to play in the 21st century mostly on our phones.

Defendant Ren Ventures also owns the “Sabacc” U.S. trademark, in class 09 and 41, for computer games software and entertainment services. As this blog is about copyright, I will not discuss the trademark infringement claim in detail.

The complaint alleges that Defendants used protected works owned by Plaintiffs, such as  images and quotes from movie dialogues, on their website, Facebook page, and other social media sites in order to promote their app, such as “From a Cantina far, far away to your mobile device, welcome to the world’s largest Sabacc site.” Defendant’s “Ren Ventures” name is inspired by the Star Wars The Force Awakens character Kylo Ren.

 What is the Sabacc game?

“Sabacc” is a fictional card game which first appeared in the 1978 draft screenplay, Star Wars Episode V: The  Empire Strikes Back, under the name “Sabacca” , which was later changed to “Sabacc.” The game then appeared in three novels about Lando Calrissian published in 1983. One of these novels, Lando Calrissian and the Mindharp of Sharu, describes Sabacc’s rules, as stated as such in the complaint:

The Sabacc deck comprises a number of face cards (including the Idiot, the Evil One, and the Star) and four suits of fifteen pip cards (Flasks, Sabers, Staves, and Coins). It is a betting game in which the goal is to finish with a hand as close as possible to positive or negative 23 without going over. At various intervals, the cards in a player’s hand change at random (the “Sabacc shift”) unless they are placed in an “interference field” that reveals their value to the other players.

The only hand that defeats a hand of positive or negative 23 (“Pure Sabacc”) is a hand comprising the Idiot, a 2 card, and a 3 card (the “Idiot’s Array).”

A Sabacc card game was published by Plaintiffs in 1989 and again in 2015. The game was also referenced in Star Wars comic books and in the television series Star Wars Rebels “Idiot’s Array” episode in 2015.

Can a card game be protected by copyright?

Could these rules be protected by copyright? Section 102(b) of the Copyright Act excludes protection of ideas, procedures, processes, systems, methods of operation, concepts, principles, or discoveries, “regardless of the form in which it is described, explained, illustrated, or embodied in such work.”

Therefore, the mere rules of a game cannot be protected by copyright. However, the Second Circuit explained in Affiliated Hosp. Prod., Inc. v. Merdel Game Mfg. Co. that “arrangement of the rules and the manner of their presentation, [but] not their content” can be protected by copyright. Therefore, the way the cards or the board game are designed, even the way the instructions are written and presented, can be protected by copyright.

However, the rules themselves cannot be protected, as explained by the Southern District Court of Texas in DaVinci Editrice SRL v. Ziko Games because, “[u]nlike a book or movie plot, the rules and procedures, including the winning conditions, that make up a card-game system of play do not themselves produce the artistic or literary content that is the hallmark of protectable expression.”

Can a third party register as a trademark a word protected by copyright?

The answer if no, but… Is it possible for a single word to be protected by copyright? Titles, names, short phrases, and slogans are not protected by copyright, and it can be argued that ‘Sabacc’ is the name of a game. Plaintiffs do not claim that they own the copyright in ‘Sabacc’, but that the app:

mimics the fictional Sabacc game… as well as the physical Sabacc card games previously licensed and authorized by Plaintiffs. The names and values of the suits (Coins, Flasks, Sabres, Staves), face cards (e.g., the Evil One, the Star), and hands (e.g., Pure Sabacc, Idiot’s Array) are identical.”

Plaintiffs seem to claim they own the common law ‘Sabacc” trademark. One can argue that it was an oversight on their part not to register the federal ‘Sabacc” trademark. Do. Or do not. [register a federal trademark] There is no try.

Image is courtesy of Flickr user Camille Rose under a CC-BY-NC-ND 2.0 license.

Friday, 22 December 2017

No wallflower: Paper Goods Company Sues Wal-Mart Over Spanish Rose Design

A paper goods company from Florida, Rifle Paper, filed a copyright infringement suit against Walmart in the U.S. Middle District of Florida Court. Hat Tip to Sarah Burstein who posted the complaint online. The case is Rifle Holdings, LLC v. Wal-Mart Stores, 6:17-cv-02105.

Plaintiff creates and sells all kind of paper goods such as cards, calendars, and stationary. It sells them in its Florida store, online and in several department and retail stores as well. The products have been featured in several magazines, and Plaintiff actively promotes them on social media.

Plaintiff owns by assignment the copyright of a design created by Anna Bond, the “Spanish Rose Design”, which is registered with the U.S. Copyright Office. The pattern features small and big roses, some in red, others in pink, with a black center, surrounded by leaves and baby’s breath. The background of the print is dark blue.

The protected work, the Spanish Rose design  
This design has been used on several of Plaintiff’s products, including a phone case, a greeting card, a notebook, and other cards sold throughout the U.S. since 2013. The design has also ben licensed to fashion company Paper Crown, owned by former television actress Lauren Conrad.

The complaint alleges that Beco, a company designing and manufacturing home-textiles goods sold at Wal-Mart under Wal-Mart’s brand “Mainstays”, copied the Spanish Rose Design in several products which were then sold at Wal-Mart. Plaintiff claims that the designs at stake are similar, but for a change of color for the roses, and leaving out details from the original design, such as the baby’s breath. The allegedly infringing pattern was then used on sheets, covers, boxes, plates, shower curtains, even furniture. The pattern is sold with a dark blue background and with a white background.

Plaintiff first noticed this use in October 2017 and sent Beco a cease-and-desist letter to Wal-Mart, which informed its manufacturer of the matter (the letter is reproduced in the complaint as one of the exhibits). The allegedly infringing products continued to be sold at Wal-Mart stores and Plaintiff filed this copyright infringement suit.

Fabric and paper designs are protected by U.S. copyright, unlike fashion designs, and the Spanish Rose has been dully registered. It is undoubtedly original enough to be protected by copyright. Therefore, the crux of the case will be whether the Spanish Rose design has indeed been copied. Also, not all acts of copying are actionable, as some elements of the designs may not be protected by copyright, whereas they are mere ideas or concepts, or are using elements which are the public domain.

How much copying is infringing?

In a 1960 fabric design case, Peter Pan Fabrics, Inc. v. Martin Weiner Corp, famous judge Learned Hand wrote that “[t]he test for infringement of a copyright is of necessity vague,” adding that “[i]n the case of designs, which are addressed to the aesthetic sensibilities of an observer, the test is, if possible, even more intangible.”

In our case, Plaintiff will be easily able to prove that defendant had access to the designs, which are sold in stores around the U.S. and thus will not have to demonstrate that the original work and the alleged infringing work are “strikingly similar.”

Instead, it will have to prove that there are “substantial similarities” between the work protected by copyright and the allegedly infringing work.

Courts use different substantial similarities tests, depending on their circuit. Florida is in the 11th Circuit, which finds substantial similarity "where an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work."

In order to decide whether the protected elements of two works are substantially similar, courts in the 11th Circuit  compare the various components of the two works, but are mindful that lists of similarities are inherently subjective and unreliable, particularly where the lists contain random similarities, and many such similarities could be found in very dissimilar works”,  Baby Buddies, Inc. v. Toys" R" UsBaby Buddies, Inc. v. Toys" R" Us, Inc.

Proving or denying copying is no bed of roses. Will Wal-Mart try to settle? Stay tuned…