In 1709 (or was it 1710?) the Statute of Anne created the first purpose-built copyright law. This blog, founded just 300 short and unextended years later, is dedicated to all things copyright, warts and all. To contact the 1709 Blog, email Eleonora at eleonorarosati[at]gmail.com
Can the US copyright law apply to the content which although created overseas is made available to the US viewers in violation of the rights of the US rightholders? That was the question the U.S. Court of Appeals for the D.C. Circuit Has recently faced in the dispute between Spanski Enterprises v. Telewizja Polska.
The case which is in them making for over two decades concerns Poland’s public national broadcaster, Telewizja Polska (TVP), granting an exclusive right to Spanski Enterprise (SEI), a Canadian company, to distribute TVP’s content in North and South America for the period of 25 years. It was agreed between the parties that TVP will use geo-blocking technology for its streamed content on the VOD platform, in order to protect SEI’s exclusive licence to share the content on the US soil. Nevertheless, SEI has discovered that the programmes still could be streamed in one of their US offices in New York as the geo-location technology was allegedly disabled. At the first instance, the US District Court for the District of Columbia held in December 2016 that SEI’s exclusive right of public performance has been violated and awarded damages of $3.06 million against TVP.
TVP in its appeal claimed that “[a]cts committed abroad, even if they would be actionable if performed in the U.S., cannot form the basis for a U.S. copyright infringement suit” and that the US Copyright Law does not apply extraterritorially. Contrary, the US Government in its amicus brief has submitted that “a copyright owner’s exclusive right to control the public performance of the work in the United States is infringed just as clearly when the transmission comprising the unauthorized performance originates overseas”. In its view the liability should be imposed on TVP despite the performances being initiated abroad, as the events occurred in the US and the unauthorised performances were addressed towards the American public.
The case is important from the perspective of the US Government as it “implicates the ability of the Department of Justice to prosecute large-scale criminal piracy of copyrighted works by entities located abroad that stream copyrighted works over the Internet to viewers in the United States”. TVP has also raised a second argument saying that “the company may be held liable for direct copyright infringement only if its conduct was ‘volitional’”. Given that TVP has owned the copyright in its content which has been lawfully uploaded to its VOD platform, according to them there was no such conduct.
The Court of Appeals in its judgment has rejected TVP’s appeal confirming that the automated services, where the user selects the content to view (here VOD platform) are not protected from liability in such cases. According to Circuit Judge Tatel “Congress had good reason to allow domestic copyright holders to enforce their rights against foreign broadcasters who direct infringing performances” into the US territory. Furthermore, with the ease of internet transmission across the world, lack of protection of copyright holders would enable widespread infringement “rendering copyright in works capable of online transmission largely nugatory”.
The new research published by RPC shows that music and football right holders bring the most cases to the London's High Court. The rise in the number of claims is a result of rightholders aiming to fight illegal streaming on the internet. The most frequent Claimant in 2017 was PPL (Phonographic Performance Limited), which has brought 88 cases to the High Court. The second most active claimant was Football Association bringing the total amount of 36 cases. Among the top 10 claimants filing the copyright cases are also Sky and BT with 12 and 11 cases respectively. As noted by Paul Joseph, Partner and Editor of RPC’s Copyright Guide “[p]rotecting copyright continues to be a top priority for those holding the rights to music and football.” Given that “the value of football broadcast rights has ballooned over the last two decades, so has the importance to rights holders of protecting their intellectual property.” Football rightholders are now more encouraged to go to the Court following a successful claim in Football Association Premier League Ltd v British Telecommunications plc  EWHC 480, where Arnold J has granted an order to requiring six major internet service providers (ISPs) to block access to streaming servers giving unauthorised access to copyright footage. [as previously reported on IPKat]
With the Internet changing the traditional business model in music industry, it also became important for the rightsholders to pursue “any possible source of revenue from businesses using their material”. Therefore, it is more common for music rightsholders to litigate, in order to maximise their revenues from the copyrighted materials. By filing a number of claims to the High Court, football and music industry companies must hope that their actions will deter potential infringers.
The process of a group of rightholders applying to the Court for orders requiring Internet Service Providers (ISPs) to block access to the websites infringing copyright has also been widespread in other parts of Europe. Knowing that the process requires both parties to spend a lot of money and with the knowledge that injunctions requiring ISPs to block websites infringing content are now more likely to be granted in the European courts, recently rightholders and ISPs decided to take collaborative approach. Belgian Entertainment Association (BEA) and ISPs Proximus, Telenet and VOO in order to avoid complex and costly legal proceedings have decided to jointly present a list of 33 websites and 450 domain names to a judge, together with claims that “they facilitate the illegal downloading of copyrighted material”. With the possibility given in the European legislation to the national judges to order injunctions requiring ISPs to block access the Commercial Court of Brussels will now assess the list of sites and domains “to determine whether they’re acting illegally”. As explained by Benoît Michaux, lawyer for the Belgian Entertainment Association, this “joint request is a little unusual, things are changing, there is a certain maturation of minds, we realize, from all sides, that we must tackle the problem of piracy by blocking measures. There is a common vision on what to do and how to handle piracy”. As reported by L’Echo with potential concerns of ISPs of possible breach of E-Commerce Directive, ISPs are not willing to take any action against websites without any order from the Court. The Court is expected to render its judgment within a month.
Bitmanagement, German software company, has brought a claim against US Government in connection with the US Navy installing its software on hundreds of devices without obtaining the necessary licence and therefore infringing their copyright: As reported by Torrentfreak, in 2011 and 2012 the US Navy initially bought licences of 3D virtual reality application for the use on 38 devices. However, as it was soon discovered the application was installed on 100,000 devices without any additional compensation.
Following its Federal Claims Court complaint, Bitmanagement found out that the number of computes on which software has been installed amounted to at least 429,604. Therefore, after both parties have conducted discovery, Germany software company has requested for partial summary judgment against the US Government for copyright infringement. As stated by the company in their motion “it became clear that the Navy had no intention to pay Bitmanagement for the software it had copied without authorization, as it declined to execute any license on a scale commensurate with what it took”. In response, the US Government claimed that it bought concurrent-use licences that allowed them to install the software across the Navy network and that the authorisation was implied. Both arguments were however rejected by Bitmanagement. The damages according to the software company can amount up to $600 million.
A Jamaican songwriter Michel May (performing as Flourgon) has brought a $300 million claim against Miley Cyrus for infringement, alleging that her 2013 song ‘We Can’t Stop’ [listen here] too closely resembles a song that he released in 1988 and was a No 1 in Jamaica ‘We Run Things’ [listen here]. According to May about 50 percent of Cyrus’ song comes from his ‘We Run Things’ hit. He claims that Cyrus and RCA Record have misappropriated his material by using the phrase “We run things. Things no run we,” which she sings as “We run things. Things don’t run we.”. Additionally, in his view Cyrus’ hit “owes the basis of its chart-topping popularity to and its highly-lucrative success to plaintiff May’s protected, unique, creative and original content.” Apart from seeking damages, ‘Flourgon’ in his complaint filed with the U.S. District Court in Manhattan also requested the Court to a halt to further sales and performances of 'We Can’t Stop’. In the wake of the Blurred Lines decision, and the more recent Taylor Swift decision over the alleged copying in the lyrics of 'Shake It Off', this could be one to watch. This CopyKat by Mateusz Rachubka
Derivative Works in Copyright and Improvement Inventions in Patent Law
"In patent law, subsequent innovators can patent an improvement of an existing patented invention, and then negotiate a license with the initial patent owner. So, while in patent law the rule for improvers is “invent first, and then bargain with the patent owner over the allocation of rights to the improved invention”, copyright law works the other way round: the would-be creator of a derivative work must first bargain with the original copyright owner, and then invest his or her creative effort to produce the authorized derivative." Would a patent-like approach would better serve copyright’s goal of promoting creativity for the public benefit?
Speaker: Professor Maurizio Borghi, Bournemouth University
WHERE: C314, Tait Building, City, University of London, Northampton Square, London, EC1V 0HB
Jumpman blocks photographer's shot at copyright claim
In January 2015 the CopyKat covered the case brought by photographer Jacobus Rentmeester against sporting apparel giant Nike, concerning Rentmeester's 1984 photograph of world-famous basketball star Michael “Air” Jordan, who was warming up for the Los Angeles summer Olympic games. Rentmeester had Jordan use a long horizontal jump technique known in ballet as a 'grand jete.’ It’s worth noting here that the jump itself is unusual for basketball and not something Jordan would have done in normal practice - so in effect a pose. Rentmeester allowed Nike to use the image for a temporary advertising campaign, but In 2014, Rentmeester accused Nike of copyright infringement. His lawsuit alleged that the sports giant copied his carefully choreographed picture using Jordan's left hand to slam dunk the ball. The “jumpman” silhouette logo is known the world over, and is used to promote Nike’s Air Jordan brand of basketball shoes and sportswear. According to Reuters, The Jordan brand now generates $3.1 billion of annual revenue for Oregon, USA headquartered Nike. Rentmeester’s case was dismissed in June 2015 (this was covered by the CopyKat here), with the judge finding that the only similarity between Rentmeester’s photograph and Nike’s “Jumpman” logo was that of Jordan’s pose. The poses were not substantially similar and the District Court of Oregon dismissed Rentmeester’s claims. You can read a very good analysis of this decision over at the IPKat here.
Rentmeester subsequently appealed. However, in a In a 2-1 decision, the 9th U.S. Circuit Court of Appeals has upheld the original decision. In his judgement, Circuit Judge Paul Watford wrote that while both images “capture Michael Jordan in a leaping pose inspired by ballet’s grand jeté,” they were not substantially similar because of differences in setting, lighting and other elements. He added that “all the Nike photographer did [was] build freely upon the ideas and information conveyed by [Rentmeester’s earlier] work.”
The case is Rentmeester v Nike Inc, 9th U.S. Circuit Court of Appeals, No. 15-35509 and also see an updateon the IP Kat here)
Playboy Bunnies vs Boing Boing
Playboy has failed in its attempts to claim that a hyperlink to copyright-infringing content at Imgur and YouTube is itself illegal.
In November of last year, Playboy filed a copyright infringement lawsuit against Happy Mutants, the parent company of website Boing Boing. Boing Boing calls itself “a Directory of Mostly Wonderful Things,” and in 2016, provided a link to a separate gallery of "Every Playboy Playmate Centerfold Ever," hosted on imgur.
The subject matter of the suit included 477 photographs of models, known as "centerfolds." Playboy owns these centerfold images and argued that by linking to online versions of these photos, Boing Boing used, distributed, and exploited said images in websites without Playboy's authorisation or consent. Playboy further accused Boing Boing of vicarious
In a Court order, US District Judge Fernando Olguin noted the court was “skeptical that plaintiff has sufficiently alleged facts to support either its inducement or material contribution theories of copyright infringement.” Olguin allowed Playboy to amend their claims and resubmit, but Playboy failed to do so before the 26 February deadline.
In their press release, Boing Boing thanked their “brilliant attorneys” at the Electronic Frontier Foundation for “standing up to "Playboy's misguided and imaginy claims." EFF explained it was “hard to understand why Playboy brought this case in the first place, turning its legal firepower on a small news and commentary website that hadn’t uploaded or hosted any infringing content.”
Responding to a journalist’s story on the case, Playboy provided a statement which continued the assertion that Boing Boing "is supporting and contributing to privacy and content creators should not tolerate it.” And although they are not filing an amended complaint at this time, Playboy “will continue to vigorously enforce our intellectual property rights against infringement.” Image by Robobobobo and used under a Creative Commons Licence.
EU Recommendations formalise earlier guidelines on IPR enforcement
The European Commission has released a new statement, entitled “A Europe that protects: Commission reinforces EU response to illegal content online.”
The Recommendation gives formal effect to the political guidelines set out in the Communication on tackling illegal content online, first presented by the Commission in September 2017.
In that earlier Communication, the Commission promised to monitor progress in tackling illegal content, and assess whether additional measures are needed to ensure the swift and proactive detection and removal of such content. The Commission focuses on detection and removal of illegal content through both reactive (so called 'notice and action') and proactive measures.
These Recommendations are aimed at European Member States, as well as companies, and are to be used as initial proactive steps before the Commission determines whether new legislation should be proposed. The Stronger procedures suggested include better safeguards and full respect of fundamental rights, freedom of expression and data protection rules, as well as utilisation of more efficient tools and proactive technologies.
Interestingly, the Commission suggests that shared responsibility could particularly benefit smaller platforms with more limited resources and expertise in halting infringement. In particular, the Commission recommends that industry should, through voluntary arrangements, cooperate and share experiences, best practices and technological solutions, including tools allowing for automatic detection.
In terms of next steps, The Commission will continue analysing the progress made and will launch a public consultation later this spring.
You cannot copyright the dolphins!
The depiction of two dolphins crossing underwater is an "idea that is first found in nature," and therefore cannot be the subject of copyright protection, as per the U.S. Court of Appeals, Ninth Circuit decision in the case of Folkens v Wyland.
Peter A. Folkens is wildlife artist who, nearly 40 years ago, drew an illustration of two dolphins crossing each other underwater. The pen and ink artwork depicts one dolphin swimming vertically and the other swimming horizontally.
Robert Wyland painted “Life in the Living Sea,” an underwater scene of two dolphins crossing underwater. Folkens' drawing, was adapted for use on an inexpensive Greenpeace charity postcard. On the other hand, Wyland sells art and merchandise through his Wyland Worldwide business, reported to make $100 million annually (LA Weekly).
Although the artworks are different in many respects - colour, lighting, and medium - there are certain similarities, with the primary similarity (similar to the Rentmeester v Nike case we mentioned above) being the "pose."
A trial judge first reviewed the works to determine if they were "substantially similar," and decided that this pose was a natural position incapable of protection under copyright law. Folkens appealed, but the Ninth Circuit has upheld the original decision.
In its judgement, the Ninth Circuit explained that despite this similar positioning of the dolphins, a pose is not ordinarily copyrightable unless combined with something else. In particular, “a collection of unprotectable elements - pose, attitude, gesture, muscle structure, facial expression, coat, and texture - may earn “thin copyright” protection that extends to situations where many parts of the work are present in another work.”
Folkens attempted to argue that the dolphins he drew are not exhibiting natural behaviour, because photos upon which he based his illustration on were of dolphins posed by professional animal trainers in an enclosed environment. However, Wyland’s counter-argument included an assertion that animal trainers can pose animals to capture positions that naturally occur in the wild.
This “idea” of crossing dolphins was first expressed in nature, and was therefore held by the court to be “within the common heritage of humankind.” Accordingly, no artist may use copyright law to prevent others from depicting this ecological idea. Is this a case of “scene a faire” gone too far? Does it demonstrate that any “natural” pose by anyone (or any animal) is incapable of copyright protection? For the benefit of further analysis, this CopyKat would have preferred the matter go to trial, rather than conclude by way of summary judgment.
Project Gutenberg: the German edition - laudable, but still infringing!
Project Gutenberg is an American website which offers 56,000 free books, many of which have had their copyright expired in the United States. Such classics available include Pride and Prejudice, Heart of Darkness, Frankenstein, A Tale of Two Cities, Moby Dick, and Jane Eyre. The website is run on servers at the University of North Carolina at Chapel Hill, and is classified as a non-profit charity organisation under American law. The website is a volunteer effort which relies mostly on donations from the public, "to digitise and archive cultural works to encourage the creation and distribution of eBooks." Despite the noble cause of making literature available at no or low cost to the masses, a recent ruling (https://cand.pglaf.org/germany/gutenberg-lawsuit-judgement-EN.pdf ) against Project Gutenberg has resulted in the website being geo-blocked for all visitors attempting to access the site from Germany. The claimants in the case are the copyright owners of 18 German language books, written by three authors, each of whom died in the 1950s. In Germany, the term of copyright protection for literary works is "life plus 70 years," which differs from the US approach for works published before 1978 where the works would be in the public domain. They are not in Germany.
The copyright holders of these works notified Project Gutenberg of their alleged infringement back in 2015. In early February 2018, the District Court of Frankfurt am Main approved the claimant's "cease and desist" request to remove and block access to the 18 works in question. The claimants also requested administrative fines, damages, and information in respect of how many times each work was accessed from the website.
The Court reasoned that it was worth taking into account the fact that the works in dispute are in the public domain in the United States. This however "does not justify the public access provided in Germany, without regard for the fact that the works are still protected by copyright in Germany." The judgement also cited Project Gutenberg's own T&Cs in its decision, noting that the website considers its mission to be "making copies of literary works available to everyone, everywhere." While this broad statement may seem innocuous and idealistic, the court used this to support its findings that Project Gutenberg could not reasonably limit itself as an American-only website.
A key point in this matter is the question of jurisdiction. While Project Gutenberg is based in the USA, the claimants successfully argued that as the works were in German and parts of the website itself had been translated into German, the website was indeed "targeted at Germans." Furthermore, even if the website had not been intended for German audiences, that the infringement occured in Germany is sufficient grounds to bring the claim in German court.
While Project Gutenberg was only required to remove the 18 works listed in the lawsuit, the organisation has blocked its entire website in Germany to protect itself from any further potential lawsuits on similar grounds (see the Q&A here https://cand.pglaf.org/germany/index.html )
France has, for the last few months, been the scene of a fierce commercial battle between free-to-air channels and television distributors (satellite, cable and IPTV operators). Historically, such FTA channels did not receive any remuneration or fees from the distributors for the right to carry, distribute and market these channels to subscribers (unlike other jurisdictions such as the United States with its so-called re-transmission consent fees).
Recently, French FTA channels (and in particular TF1, the leading private broadcaster) have adopted new bargaining stances: fees must be paid by distributors for the right to carry and dsitribute FTA channels.
While it would appear (based on press reports of agreements reached with certain distributors) that TF1 is not averse to dressing up the agreement so that a large chunk of the fees is allocated to so-called enhanced services (extended ctach-up, start-over or other functionalities), the fact remains that in essence the distributor is paying for the right to distribute a FTA channel.
From a strictly legal perspective, the broadcaster's right to seek such payment stems from Section L.216-1 of the Intellectual Property Code (IPC) which provides that audio-visual communcation entities (i.e. broadcasters) have the following rights with regard to their programmes:
- making available to the public via sale, rental or exchange,
- broadcasting ("télédiffusion"), and
- communication to the public in a place accessible thereto against payment.
(Contrary to what is sometimes said about the making availble right under Section L.216-1 IPC, this does not correspond to the making available right under the EU InfoSoc Directive; rather, it was intended to cover the distribution (sale or rental) of tangible goods incorporating the programmes.)
As regards broadcasting, this is defined in Section L.122-2 IPC as the dissemination by any means of telecommunication of sounds, images, documents, data and messages of any kind whatsoever.
In light of this definition, the broadcasting right under Section L.216-1 IPC is extremely broad indeed. It covers any form of telecommunication by which the original signal (carrying the programmes) is re-transmitted (whether by wireline, wireless, internet or any combination thereof).
It certainly applies to the case of a distributor who seeks the right to distribute and market a channel to its susbscriber base (given that in such case there are clearly acts of reproduction and rebroadcasting).
Naturally, the fact that such an IP right exists does not necessarily mean that TF1 is entitled to payment. After all, nowhere does the law say that a broadcaster must be paid for the right to re-broadcast the sigal (programmes); its consent can be given free of charge (or for non-monetary consideration). Moreover, as reported by the press, the distributors appear to be marshaling arguments from other areas of the law (in particular competition law, claiming that TF1 is abusing its market power by demanding payment).
The 1709 Blog is delighted to host the following contribution by Angela
Saltarelli (Chiomenti) on the recent decision of
the US District Court for the Eastern District of New York in the in the 5Pointz case.
Here’s what Angela writes:
“The US District Court for the Eastern District of New
York has recently ordered a real estate developer to pay millions of dollars in
damages to a group of artists to compensate them for destroying their 45 famous
aerosol artworks which were at the 5Pointz building in Queens, New York City.
5Pointz was a former factory owned by Jerry Wolkoff,
who bought the 19th century Neptune Meter factory in Long Island
City in Queens in the early 1970s. He started leasing the space as artists’
studios in the 1990’s. As a result, street and graffiti artists started using
his building to create their works. In 2002, Wolkoff appointed famous street
artist Jonathan Cohen as 5Pointz’s de
facto curator. 5Pointz thus became soon a tourist attraction drawing
thousands of daily visitors, including busloads of tourists. Movie, television
and music video producers used 5Points as a location.
Starting in 2011, there were rumours that Wolkoff
wanted to destroy 5Pointz and turn this space into luxury condos. Subsequently,
Cohen filed an application before the City Landmark Preservation Commission to
preserve the site as one of cultural significance, but the application was
denied because the artistic work was of too recent creation.
After the City of New York declined to declare the
building a landmark, 21 artists (including Mr Cohen) decided to sue Wolkoff and
four of his real estate entities asking for a preliminary injunction to prevent
the planned demolition. As soon as the Court denied the plaintiff’s application
for preliminary injunction, Wolkoff whitewashed the entire complex overnight
without waiting the final Court’s decision.
After the demolition, the plaintiffs’ requests for
damages went on claiming that the defendants had acted contrary to the Visual
Artists Rights Act (VARA), which introduced a new provision into the
US Copyright Act added in 1990 to comply with the Berne Convention granting
some moral rights, namely the right of attribution and the right of integrity.
As to the right of integrity, the author can prevent
the destruction of the work of visual art when can be prejudicial to artist’s
honor or reputation or when the work is of recognized stature, namely when the visual
artwork is viewed as meritorious and this stature is recognized by art experts
or other members of the artistic community. The Court found that 28 of 49
destroyed works at 5Pointz achieved recognized stature, and eight more were
modified to the prejudice of the artists’ honour or reputation.
One of the exception raised by the defendants in this
case was that street art works are ephemeral per se and that VARA should not afford protection to temporary
works. Before this case the application of VARA to the works of exterior
aeorosol artists had not been discussed in courts.
The court rejected this legal approach saying that
VARA resolves the tension between building owners’ rights and the artist’
rights, including also temporary works. Indeed, Section 113 of VARA provides
for two hypotheses when a protected work of art has been integrated into a
building: (i) when the artwork cannot be removed from the building (in this
case the artist may sue to prevent the destruction of the work unless he waived
this right) and (ii) when the artwork can be removed, so contemplating that the
work can be temporary.
In the latter case, VARA gives the opportunity to the
artist to save the work upon receipt of a 90 days’ written notice from the
building owner. If the artist fails to remove within the 90 days or if the
owner could not notify the artist after making good effort, the artist’s VARA
rights are deemed waived and the owner may destroy them without
The Court finally held that the artists’ works were legally
protected under VARA and that each artworks could have been removed from 5Pointz
walls. Then the Court stated that the defendants broke the law in willfully destroying
5Pointz before having the Court’s permit and failing to give the 90 days’
notice to the artists to remove their works provided by VARA.
The Court awarded the owner to pay the maximum
statutory damages under VARA for each works for the whole sum of USD 6,750,000.
The decision was greeted with enthusiasm by the
artistic community as a further validation of street art. For the future, more
real estate owners will probably give artists the time to remove their works.
On the other side, this decision could also hinder
street art as many real estate owners could be reluctant in the future to
authorize artists to use their walls as Wolkoff did in 5Pointz.”