Tuesday, 29 September 2015

Mongolia commits to Marrakesh

The World Intellectual Property Organization (WIPO) has now released Marrakesh Notification No. 10: Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled. As its title suggests, it reflects the deposit by the Government of Mongolia last week of its instrument of ratification of the Marrakesh Treaty. Readers of this weblog can probably chant in their sleep the mantra that
The date of entry into force of the said Treaty will be notified when the required number of ratifications or accessions is reached in accordance with Article 18 of the said Treaty.
The day will come, however, when we will all be astonished to discover that the requisite number of countries has been reached [for a reminder of the coming-into-force details just click here].

Russian court orders VK to implement effective technology to block illegal uploads

Russian social network vKontakte (VK) has been ordered by a Russian court to use effective technology to prevent copyright infringement of the recordings of two record companies.

The IFPI say that the ruling, handed down in the Saint Petersburg & Leningradsky Region Arbitration Court on Monday, is a significant judgment which, when implemented, should improve the environment for developing a thriving licensed music business in Russia. The IFPI is the organisation that represents the global recording industry.  It was supported by the Russian National Federation of the Music Industry (NFMI).

Universal Music and Warner Music had brought copyright infringement cases against VK in April 2014.  The judge issued an oral decision on 28th September, and the full judgments will be handed down in due course.

The court granted the record companies’ request to require VK to use effective technology to prevent the upload of their sound recordings to its service, meaning that VK must remove the record companies’ recordings and prevent them from being uploaded again in the future. The claimaints said 98% of their sound trecordings featuring in the Top 40 UK chart from the past seven years are available on VK's unauthorised music service, and  whilst VK did have a take down procedure, VK's filtering  technology, which was meant to prevent unauthorised uploads, was inadequate and ineffective. The claimants presented expert evidence that VK must be fully aware of the scale of the infringement, not least as VK advertised the availability of infringing tracks through its charts of the 'most downloaded' tracks and its recommendation service to individual users.

VKontakte and Sony Music Russia agreed a confidential global settlement in July 2015.

IFPI Chief Executive Officer Frances Moore welcomed the judgment saying: “This is a very important and positive decision for the Russian music market and for music creators in Russia.   VK’s infringing music service has been a huge obstacle to the development of a licensed business in Russia, making available hundreds of thousands of copyright infringing tracks to more than 70 million daily users. Now, the Russian court has ordered VK to use technology to stop infringements.  This is good news for rights holders in Russia.  We now look to VK to implement the court’s decision and stop these ongoing infringements.”

vKontakte spokesperson Georgy Lobushkin told Billboard: “We are glad that the court supported our position and has declined to impose fines on VK. The court has also ordered that we make our ‘music copyright DMCA technology’ more effective, and we are constantly working on that”. he also criticised the IFPI for commenting “on the judgement in the most advantageous way for themselves” before the final ruling had even been published.

Record companies file legal proceedings against vKontakte for deliberately facilitating piracy on a large scale

VK's press release on the final court decision can be found here: VKontakte Cleared in Dispute with Warner and Universal

Monday, 28 September 2015

Recent French Ruling on the Protection of Slogans


The issue of the protection of slogans (or taglines) as intellectual property is always of interest inasmuch as it is often perceived as existing at the crossroads of copyright and trademark law.

As we know, copyright protection raises thorny issues of originality (in short expressions) and trademark registration for such expressions is often complicated by their inherently promotional and laudatory nature.

However, a recent (June 9, 2015) ruling by the French Cour de cassation reminds us that general tort law should not be ignored in such cases and, in particular, in French law what is called parasitisme or parasitical conduct.

Cora, a retailer that had been using the advertising slogan “large volumes = low prices” (gros volumes = petits prix) for 25 years, took legal action against Auchan for committing what it felt were acts of parasitical conduct by distributing catalogues featuring the slogans ‘mini prices for large volumes’ (prix mini sur gros volumes), ‘large volumes at mini prices’ (gros volumes à prix mini) and ‘large volumes big savings’ (gros volumes grosses économies).

The Cour de cassation upheld the factual analysis of the lower court, which had held in favour of the plaintiff and stated that “Parasitism, for commercial traders, exists where one entity rides on the coattails of another by unduly benefiting from its repute or investments, irrespective of any risk of confusion”. 

Following a syntactical, phonetic and visual analysis of the slogans at issue, the court found that the combination of two groups of three-syllable words ‘gros volumes’ and ‘petit prix’ placed on equal footing is not a part of common everyday language. It also found that the association of the two phrases to be original  and distinctive of Cora. Auchan used identical syntactical structure in forming its slogans, merely replacing the sign ‘=’ in Cora’s slogan with a coma, where the use of words ‘prix mini sur gros volumes’ and ‘gros volumes à prix mini’ had a resonance that was parallel to that of Cora's. Moreover, Auchan’s use of slogans, even after repeated warnings given by Cora, did not seem to be mere coincidence as there were numerous other ways to express the same idea. Finally, the court noted that Cora had carried out multiple advertising campaigns that contributed to its reputation.

Link to ruling here

Thursday, 24 September 2015

The CopyKat - The Pirate Bay on new Swedish advertising blacklist

The Pirate Bay and several other locally significant 'pirate' sites have been placed on an advertising blacklist. The initiative is the result if a collaboration between anti-piracy group Rights Alliance and the national association of Swedish advertisers which has  more than 600 member companies. As Torrent Freak says, this “follow the money” approach is gaining momentum worldwide and is largely centered on the companies financing pirate sites with their advertising spend.

Acording to daya presented by the Motion Picture Association at a conference focused on online law enforcement in Southampton last week, 504 web blocking injunctions have been issued in Europe: Italy tops the list of orders against  internet service providers requiring them to block consumers access to copyright infringing websites, with 238 injunctions now issued. The UK comes second with 135 web-blocks now in place. More here.

Aurous, which MBW likened to the new Grooveshark last week and which was also called the 'Popcorn Time for music', and which we highlighted in the last CopyKat, has pulled its attempted crowdfunding on IndieGogo citing "unwanted attention"

Raanan Katz , the real estate mogul and owner of the Miami Heat basketball team, has learned about copyright law the hard (and expensive) way. Irina Chevaldina,an unhappy former tenant of Katz’s company, copied a rather unflattering photograph of Katz taken by photographer Seffi Magriso onto her blog which was highly critical of Katz. Unhappy about this, Katz acquired the photo’s copyright, and then claimed Chevaldina had infringed his newly acquired copyright. The District Court gave the claim short shrift - and applying the standard tests they found fair use, and in particular found: The nature of the use was non-commercial - Chevaldina used the photo to criticise, ridiule and satirize Katz; and because Katz acquired the photo to block any publication, Chevaldina's use could not have any effect on the marketplace:  "Due to Katz’s attempt to utilize copyright as an instrument of censorship against unwanted criticism, there is no potential market for his work", concluding "“every reasonable factfinder would conclude the inclusion of the Photo in her blog posts constituted fair use.” Chevaldina was awarded her attorney's fees. 

Shares of in Pandora Media, the Internet radio company have jumped by 5.3% after the firm received good news in an ongoing fight over royalties. The company said it "was pleased that the U.S. Registrar of Copyrights agreed that the company's pact with Merlin Network, a global rights agency for independent musicians, was admissible as a benchmark in royalty proceedings before the Copyright Royalty Board  according to a Reuters report. In May The Federal Communications Commission gave Pandora Media permission to buy a small radio station in South Dakota in a move to obtain lower royalty rates. ASCAP's objection to the acquisition of the terrestrial radio station was finally put to rest by the FCC last week .The agency rejected the performance rights organization's request for reconsideration of its original ruling.

The cabinet reshuffle in Canberra has seen the Australian Attorney-General George Brandis not only lose his position as the Minister of Arts, but his responsibilities for copyright and content classification - which have been moved from his office to that of newly appointed Communication Minister Mitch Fifield.

And finally, the he much delayed extradition hearing of the former management team of MegaUpload has begin in New Zealand, despite lawyers for MegaUpload founder Kim Dotcom and his former colleagues again trying to get their clients' extradition case pushed back, not least as court imposed restrictions on funds mean Dotcom and his colleagues cannot hire U.S based experts in U.S. copyright and criminal law. 

Return of the Macaque

Animal rights charity PETA has filed a  federal lawsuit in San Francisco seeking to vest copyright in that infamous 'Monkey Selfie' in the crested black macaque who snapped the image with photographer David Slater's unattended camera.  PETA - People for the Ethical Treatment of Animals - is suing on behalf of the macaque, dubbed Naturo, claiming he is the author of his selfies allowing Peta to administer all proceeds from the photos for the benefit of the monkey, and other crested macaques living in a reserve on the Indonesian island of Sulawesi:  "While the claim of authorship by species other than homo sapiens may be novel, 'authorship; under the Copyright Act, 17 U.S.C. § 101 et seq., is sufficiently broad so as to permit the protections of the law to extend to any original work, including those created by Naruto," PETA said in the suit.

The The U.S. Copyright Office has already addressed the dispute in the latest draft of its “Compendium Of U.S. Copyright Office Practices”, which was published on August 19th. The previous compendium stated that “Materials produced solely by nature, by plants, or by animals are not copyrightable.” The new 1,222-page report again makes their stance on animal artwork clear by referring specifically to photographs taken monkeys (and other species of course). “[T]he Office will refuse to register a claim if it determines that a human being did not create the work." Jeffrey Kerr, a lawyer with Peta, told the Guardian that the copyright office policy “is only an opinion”, and the US Copyright Act itself does not contain language limiting copyrights to humans.

It waxs hard enough to work out who 'owned' the infamous Ellen DeGeneres Oscar's selfie. But a monkey? 

PETA have used the courts before but not with any great success: In 2011 PETA filed a lawsuit against marine park operator SeaWorld, alleging five wild-captured orca whales were treated like slaves. A San Diego court dismissed the case

At the end of 2014, the appeals court in New York state said that a caged chimpanzee called Tommy could not be recognised as a "legal person" as it "cannot bear any legal duties" although the Nonhuman Rights Project say the state has previously conferred legal "personhood" status on domestic animals who were the beneficiaries of trusts, as well as extending rights to non-human entities such as corporations. Similarly in 2007 an Austrian Supreme Court refused to appoint a woman as legal guardian of a 26 year old chimpanzee called Hiasl as he was not a person, in a case that was referred to the European Court of Human Rights. Interestingly in December 2014, in another case brought by the Nonhuman Rights Project, a court in Argentina allowed a claim for habeas corpus - for orang-utan Sandra - who had been born in captivity and was being held at Buenos Aires Zoo - finding she deserved the basic rights of a non human person, including the right to life, liberty and freedom from harm, and pending appeal should be released to a sanctuary; but does that extend to the right to copyright authorship one must ask?

In this case, Slater licensed the image to the Caters News Agency, and Slater argued that he had "engineered" the shot, and that "it was artistry and idea to leave them to play with the camera and it was all in my eyesight. I knew the monkeys were very likely to do this and I predicted it. I knew there was a chance of a photo being taken" and claimed copyright. The photographs were uploaded to Wikimedia Commons and the website listed the selfie photograph as being in the public domain on the grounds that it was the creation of an animal, and not a person. Slater requested that the Wikimedia Foundation, the owners of Wikimedia Commons, either pay for the photographs or remove them from Wikimedia Commons: His claim was rejected by the organisation, which determined that no one owned copyright as the monkey was the author of the photograph.

The results of the 1709 reader's poll into who owns the 'black macaque image can be found here -  52%  of 1709 readers polled thought that "there is no copyright in works authored by animals: they are a gift to humanity which we can all use" although 30% thought that only humans are authors so the photographer owns the copyright as the nearest relevant human" - and aurelia J Schutlz's 2011 opinion can be found here.

Over on the IPKat, Lucy Harrold examines how the case would proceed under the provisions of the Copyright Designs & Patents Act here in the UK - opining (just as a starter) that as the monkey is neither an individual nor a body corporate so on similar facts in the UK, its case would fall at the first hurdle, before turning to the somewhat complex issues of authorship. well worth a read.

Orang-utan image: "Orangutan-bornean" by Julie Langford - Own work. Licensed under CC BY 3.0 via Commons - https://commons.wikimedia.org/wiki/File:Orangutan-bornean.jpg#/media/File:Orangutan-bornean.jpg

Return of the Mack by Mark Morrison here

Wednesday, 23 September 2015

Happy Birthday IS in the public domain

In the USA, a federal judge has found that the song "Happy Birthday To You" is entirely in the public domain. 

U.S. District Judge George H. King held in a summary judgment that the song's original copyright, assigned  Clayton F. Summy, who copyrighted and published them in a book titled "Song Stories for the Kindergarten" is now free of copyright claims. The rights to the song were bought for $15 million in 1988 by music publisher Warner/Chappell Music Inc. Any copyright now only covered specific piano arrangements of the song and not its lyrics. “It now belongs to the public,” Mark Rifkin, a lawyer representing a documentary filmmaker who filed the suit against the publisher told reporters adding "We did exhaustive historical research and none of it showed that the publisher owned anything other than copyrights to four very specific piano arrangements". One of the co-plaintiffs, Ruypa Marya of the music group Ruypa & The April Fishes, also praised the decision as momentous, saying "I hope we can start reimagining copyright law to do what it's supposed to do — protect the creations of people who make stuff so that we can continue to make more stuff."  Marya, said she had paid Warner/Chappell $455 to include the song on a live album during which members of her band and audience sang the song to her the night before her birthday.

The song was said to have been generating $2 million annually for Warner/Chappell

The basic "Happy Birthday" tune, derived from another popular children's song, "Good Morning to All," which was composed by two Kentucky sisters Mildred and Patty Hill in 1889 or 1890, and first published in 1893 by the Summy Co, and then passed on to Warner/Chappell.

King's decision comes in a lawsuit filed two years ago by Good Morning To You Productions Corp., which was working on a documentary film tentatively titled "Happy Birthday." The company challenged the copyright, arguing that the song should be "dedicated to public use and in the public domain."

With the music accepted as public domain, the Plaintiffs advanced three arguments as to why the lyrics were not, in fact, in copyright: 

Firstly, they questioned whether orginial writter Patty Hill had written the specific 'Happy Birthday' lyrics, because of other use of similar lyrics before sister claimed they were Patty's lyrics during a deposition as part of a 1935 lawsuit.

Secondly, even if the Patty Hill had written the lyrics, the plaintiffs argued that the sisters had abandoned the copyright ibefore Summy Co registered the new arrangement of the song - which may or may not have included the lyrics - in the mid-1930s.

The third and most telling argument was that while it is clear that the Hill sisters assigned the copyrights in 'Good Morning To You' and the 1930s rearrangements of the melody to Summy Co, there was no evidence of any deal regarding the 'Happy Birthday' lyrics.

The Judge erjected Warner's argument that a copyright entitles them to a presumption of validity with the judge noting that it isn't particularly clear whether the registration included the lyrics. Furthermore, the ruling establishes that rights never properly transferred. "Defendants ask us to find that the Hill sisters eventually gave Summy Co. the rights in the lyrics to exploit and protect, but this assertion has no support in the record. The Hill sisters gave Summy Co. the rights to the melody, and the rights to piano arrangements based on the melody, but never any rights to the lyrics."

The Judge noted "The origins of the lyrics to Happy Birthday ... are less clear"  adding the first known reference to them appeared in a 1901 article in the Inland Educator and Indiana School Journal. The full lyrics themselves, King said, didn't appear in print until 1911.

"Because Summy Co. never acquired the rights to the 'Happy Birthday' lyrics, defendants, as Summy Co.'s purported successors-in-interest, do not own a valid copyright in the Happy Birthday lyrics," King concluded in his 43-page ruling. 

The lawsuit also asked for monetary damages and restitution of more than $5 million in licensing fees it said in 2013 that Warner/Chappell had collected from thousands of people and groups who've paid to use the song over the years. That matter is still pending

"We are looking at the court's lengthy opinion and considering our options," Warner/Chappell said in a statement following Tuesday's ruling.

The judgment can be found here


Third UK-China IP Symposium (London)

Third UK-China IP Symposium (London)

September 2015
The Royal Society, 6-9 Carlton House Terrace
London, SW1Y 5AG

09:00-17:00, Wednesday 21 October

Do you want to know more about obtaining and enforcing your intellectual property rights in China? Have you experienced IP issues in China and want to know more about the support networks available or how the IP system is changing? Do you work for a Chinese company looking to protect IP as you invest and do business in the UK?

The 3rd UK-China Intellectual Property Symposium is an opportunity for businesses to engage with policymakers to understand the current IP systems in both countries and to learn about future reforms.

China is a key priority of the Government’s trade and investment strategy. In 2013, UK exports to China were worth $24.5bn (£15.7bn). The Government has worked to increase two-way trade to $100 billion by the end of 2015, and within this to double UK exports to China from their 2010 level to $30 billion. The UK is on track towards achieving this goal.

An effective IP regime is crucial to the success of British businesses in China. China’s IP legal framework is improving through a rapid and relatively transparent process of legislative reform. In this dynamic context the UK Intellectual Property Office and the China-Britain Business Council, will host the 3rd UK-China IP Symposium in London at the Royal Society on 21st October. It will be opened by the UK’s Minister for Intellectual Property, Baroness Neville-Rolfe.

The Symposium will cover all the intellectual property rights as well as more focused sessions on anti-counterfeiting and judicial enforcement. Each session will include a diverse panel of speakers from the British and Chinese governments, industry and academia. They will outline the latest developments and current approaches to IP in both China and the UK.

For more information, the full agenda and to register, visit the cbbc.org 

Monday, 21 September 2015

Distribution right encompasses advertisement for sale of copyright works, says the CJEU

Nedim Malovic
A few months ago the Court of Justice of the European Union (CJEU) issued a very interesting and definitely important decision concerning whether mere advertisement for sale of copyright-protected works falls within the scope of the right of distribution as per Article 4 of the InfoSoc Directive.

The decision in Dimensione Direct Sales and Michele Labianca v Knoll International, C-516/13 (Labianca) was noted by the IPKat here, but not by this very blog.

Thankfully talented IP enthusiast Nedim Malovic (Stockholm University) has come to our rescue with this thoughtful note that will be also published in the Journal of Intellectual Property Law & Practice soon.

Here's what Nedim writes: 

"This reference for a preliminary ruling arose from a dispute between two Italian companies, Dimensione Direct Sales (Dimensione) and Knoll International SpA (Knoll). Knoll manufactured furniture including chairs, stools, couches and tables - to which it also held the copyright, and sold it globally. Dimensione traded in furniture and distributed it around Europe, also offering it for sale on its website.

Knoll brought proceedings before a German court, claiming that the items offered for sale by Dimensione were counterfeit versions of its protected designs. Following Knoll’s victory at both first instance and in appeal, the Bundesgerichtshof (the German Federal Court of Justice) decided to refer a number of questions to the CJEU, these being whether: (1) the distribution right under Article 4(1) of Directive 2001/29 (the InfoSoc Directive) would include the right to offer the original or copies of a work to the public for sale and, if so, (2) the right to offer the original or copies of a work to the public for sale would include not only contractual offers, but also advertising measures; (3) the distribution right may be infringed even if no purchase of the original or copies of the work takes place on the basis of such offer.

Not just beautiful:
Knoll's Wassily chair,
one of the pieces of "high-value furniture"
at the centre of the national litigation ...
The CJEU response 

The CJEU answered all the three questions in the affirmative, finding that Article 4(1) of the InfoSoc Directive allows the copyright holder to distribute a protected work and prevent an offer for sale or a targeted advertisement of the original or a copy of that work.

This is the case even if it is not established that the advertisement in question gives rise to the purchase of the original or a copy of the copyright work by a buyer. It suffices that the advertisement invites a consumer to purchase it. The CJEU supported this reasoning on the basis of its previous judgments in Donner [here], and Blomqvist [here], in which it had held that the distribution to the public is characterised by a series of acts going, at the very least, from the conclusion of a contract of sale to the performance thereof by delivery to a member of the public.

According to the Court, use of the phrase "at the very least" in those judgments means that “it is not excluded that the acts or steps preceding the conclusion of a contract of sale may also fall within the concept of distribution and be reserved, exclusively, to the holders of copyright.” (para 26) 

It follows that even an invitation to submit an offer, or a non-binding advertisement for a protected object may be considered as falling under the scope of Article 4(1). As such, "[t]here may be an infringement of the exclusive distribution right, under Article 4(1) of [the InfoSoc Directive], where a trader, who does not hold the copyright, sells protected works or copies thereof and addresses an advertisement, through its website, by direct mail or in the press, to consumers located in the territory of the Member State in which those works are protected in order to invite them to purchase it.” (para 31)

To this end, “it is irrelevant, for a finding of an infringement of the distribution right, that such advertising is not followed by the transfer of ownership of the protected work or a copy thereof to the purchaser." (para 32).

... also makes a comfortable seat
(dog not referred to CJEU though)
The Court noted that this approach could be seen as a departure from its previous ruling in Cassina [here], in which it held that the distribution to the public only takes place where there is a transfer of the ownership of that object (paras 33, 36 and 41). However, similarly to what Advocate General Cruz Villalón held in his Opinion in Labianca (para 32) [here], the CJEU stressed how the particular outcome in that case was justified in light of its peculiar factual background, which consisted of displaying in public unauthorised reproductions of copyright works. In the case at hand, instead, Dimensione made unequivocally clear its intention to market the alleged infringing furniture. Even if no sale or actual delivery of infringing goods actually occurred, the fact that the consumers were invited, by targeted advertising, to acquire ownership of the original or copy of the work in question, would suffice to trigger application of Article 4(1).

What does this ruling mean?

Without the need for an actual sale to have an act of distribution, although seemingly in line with earlier rulings in Donner and Blomqvist, this CJEU decision appears to have extended the scope of the distribution right, up to the point of potentially blurring (further) the distinction between acts of distribution and acts of communication/making available to the public, the latter as per Article 3 of the InfoSoc Directive. The implications of this remain to be seen.

What however seems clearer is that this judgment may have made an (additional) aspect of UK copyright incompatible with EU law. Section 18 of the Copyright, Designs and Patents Act 1988 defines the distribution right as the “right to issue” to the public copies of a protected work, ie putting into circulation in the European Economic Area copies of such work not previously put into circulation therein. There seems to be consensus that the act of offering or exposing copies for sale could not be considered as akin to putting copies into circulation. As such, UK distribution right currently appears narrower in scope than its InfoSoc counterpart. Whether this is acceptable may be doubtful following this latest CJEU instalment on Article 4(1) of the InfoSoc Directive."

Saturday, 19 September 2015

YMCA's Willis triumphs again on costs claim

Victor Willis, the 'cop' and a naval officer in the ‘70s disco group The Village People has been awarded more than a half-million dollars in attorney's fees by a federal court. U.S. District Court Judge Barry Ted Moskowitz granted Willis $527,236 to cover his attorney’s fees and $3,034 in costs incurred during copyright battles to reclaim ownership of his share of the songwriting and the associated revenues in over 33 of the songs Willis co-wrote, including Village People’s huge hit“YMCA” as well as "In The Navy", "Go West" and "Macho Man".

The right to reclaim arose when the Copyright Act amendments went into effect in 1978 and it meant that songwriters could terminate copyright grants to publishers and record labels 35 years later.

The San Diego Union Tribune reported that the 64 year old songwriter said the award sent a loud message to record producers “attempting to stop artists like myself” from asserting their rights to let them know “there are going to be repercussions” and commenting to the two music publishing companies and music producer Henri Belolo who fought his claims he said “I had to put out a lot of money to fight him,” says Willis, who was reached at home. “He made motion, after motion, after motion. Most artists don’t have the money to keep going.”

A year after his initial claim, Willis sued to increase his copyright share from one-third to 50 percent on 24 of those songs. The jury found enough evidence to grant his request on 13 titles, including “YMCA,” ruling that Belolo was not a joint author of the lyrics as he had contended. The melodies were written by Jacques Morali.

Judge Moskowitz noted that the costs award was justified to “encourage authors like Willis to assert their rights to regain their copyright interests and to deter production companies… from attempting to interfere with those rights.”

It was, Willis noted, a victory for artists throughout the United States.


Just who did write YMCA?

Friday, 18 September 2015

The CopyKat - pirates, treasure and safe habours ahoy!

Ahoy me hearties! To celebrate International Talk Like a Pirate Day on the 19th of September, the CopyKat is taking a look at all things piratical, and in true buccaneering styleeee, he hopes that all scurvy sea dogs are safely in their kennels, safely out of reach of his cat o' nine tails. So, hoist the mainsail, shiver me timbers, gawd save us all from Davy Jones's locker, and when you are out and about today remember is 'ahoy' not 'hello', it's never too late to get someone to walk the plank, swash your buckle, remember treasure is still treasure and finders are surely keeperrsrrrr, and so its yo-ho-ho and a bottle of rum, and time to talk like a pirate! A Pirate's Lexicon can be found here. Oh - and this image - it's is mine, all mine!

When the makers of an anti-piracy advert approached independent musician Melchior Rietveldt asking him to make music for an advertisement that would be used at a local film festival to fight piracy. he was happy to sign up! But it seems the ad makers liked Mr. Rietveldt's work so much they the used it in over 71 DVDs and pre-movie ads in dozens of regions, including the USA.  Mr. Rietveldt never received any compensation and was unaware of this infringement - which some might also call piracy - until he watched a DVD copy of a Harry Potter movie and was shocked to hear the track he composed. It gets worse - his collection society, Daily Tech reports that Buma/Stemra (Buma was recently in the news over a secret  'kickback' scheme it was operating) then got involved - but then a director of the collection society offered to 'collect' royalties through his own company for a 33% share of revenues. All a bit odd? Well yes! In June, Buma/Stemra agreed to pay over €31,000 - but by now Mr. Rietveldt had launched a law suit in place and this week he was awarded another €60,000, plus legal fees, while Buma/Stemra was most certainly in the naughty boys corner. More on Daily Tech here.

A right wing video attacking the newly elected leader of the UK's Labour Party, Jeremy Corbyn has been taken down from YouTube after it was found to infringe copyright. The video showed footage of the new Labour leader's controversial comments on a range of topics before warning that the prospect of him in Downing Street was a "threat to Britain's security". However it was found to contain material owned by one Adrian Cousins, in which Corbyn calls for Nato to be scrapped. No one asked Cousins for  his permission and he duly submitted a takedown request to YouTube to remove the pirate video. And so it was taken down - although after a hasty re-edit the video re-appeared and is back up again on the Conservative Party's Facebook page.

Davy Jones's Locker, by John Tenniel, 1892
Adult movie studio Malibu Media has received a slap on the wrist from New York federal judge Katherine Forrest. The company, often criticised as a copyright 'troll', had asked the court permission to interrogate the neighbours and spouse of an accused downloader - but this was a tactic that the court equated to harassment with Judge Forrest saying "Plaintiff may not subpoena neighbors or Defendant’s significant other based on the current record. As to the neighbors, Plaintiff would be engaged in a fishing expedition and/or harassment of defendant (by way of causing embarrassment/humiliation)." More on Malibu from Artstechnica here.

The UK's IPO tells us that the National Copyright Administration of China (NCAC) has published a draft of revised Implementing Measures for the Administrative Enforcement of Copyright. The deadline for submitting comments to the consultation is September 30. Areas under revision include liability of network service providers, thresholds for constituting “serious infringement” and other timelines and procedures for administrative enforcement cases. More here (in Chinese).

Judgement at the Federal High Court in Lagos has been adjourned until October 30, 2015 in the alleged copyright infringement case instituted by popular Nigerian musician, King Sunny Ade. The seven defendants in the suit, filed in 2007, include musical records and cassettes marketers and a cassette jacket printer in Nigeria. Sunny Ade is seeking damages in the sum of N3bn from the defendants for alleged copyright infringement on 43 works categorised as singles, extended, series and others. Ade is also seeking a court order directing the defendants to deliver to him the master tapes of the said musical works.

Safe harbour?
One of the music industry's ongoing targets is a wholesale revision of 'safe harbour' (or even 'safe harbor') provisions in both the European Union and the United States of America - arguing that they both facilitate piracy and disadvantage properly licensed services. Now another 'search engine' is on the horizon, no doubt aiming to take advantage of those generous protections,  but one that has already been labelled as both the "new Grooveshark" and the "Popcorn Time of music". So what is it? Well its called Aurous and  
the new music platform that grabs content from P2P sharing networks and other online platforms (Aurous can easily import all your favourite playlists from other services like Spotify, Pandora  ....) - and is set to go live on Mac, Windows and Linux from next month, albeit in an alpha testing format. Planned funding reportedly will come primarily from banner adverts. Presuming Aurous will have a  functioning take down system - will it be accepted as legitimate? Or go the way of The Pirate Bay, Grooveshark and Limewire and face significant (or terminal) challenges for copyright infringement - whether directly or indirectly facilitating violations? That remains to be seen. For now, unfurl the spinnaker, hoist the mainsail, scuttle the jib and weigh anchors!

Thursday, 17 September 2015

Everyday I'm hustlin' ....... but now rapper's case is shuffling

COPYRIGHT: Rapper Rick Ross cannot copyright the words "Everyday I'm hustlin'," a U.S. judge has ruled, putting an end to his claim against music group LMFAO for selling T-shirts with the similar catch-phrase "Everyday I'm shufflin'." Ross sued LMFAO in 2013 over their 2010 hit 'Party Rock Anthem' because it contains the line "Everyday I'm Shuffling" which, the rapper claims, is a rip off of his 2006 track 'hustlin', which contains the lyric "Everyday I'm hustling".

In her ruling in the Miami federal court, U.S. District Judge Kathleen Williams said Ross's slogan, a prominent part of his 2006 debut hit "Hustlin'," is a short expression that courts have repeatedly said cannot be copyrighted.

Ross, whose real name is  William Leonard Roberts II, has alleged the Los Angeles-based electropop duo, made up of Stefan Gordy and Skyler Gordy, copied "Hustlin'" into"Party Rock Anthem" - which contains the lyric "Everyday I'm Shufflin'."

The hip hop star said LMFAO's song was "an obvious attempt to capitalize on the fame and success of Hustlin'." He also sued Kia Motors for using "Party Rock Anthem" in an advertising campaign.

In the complaint, Ross claimed LMFAO also violated his copyright by selling T-shirts and other merchandise bearing the Shufflin' slogan.

In her order Judge Williams said that "Hustlin'," as a song, is protected by copyright. But Ross' three-word slogan, is made up of ordinary words and cannot be copyrighted. Judge Williams compared it to other music catch-phrases from the past, such as "you got the right one, uh-huh," "holla back," and "we get it poppin'," saying it is a "short expression of the sort that courts have uniformly held uncopyrightable." saying: 

"The question ... is not whether the lyrics of 'Hustlin', as arranged in their entirety, are subject to copyright protection, the question is whether the use of a three word phrase appearing in the musical composition, divorced from the accompanying music, modified, and subsequently printed on merchandise, constitutes an infringement of the musical composition 'Hustlin'".

And the answer to that question, said Williams, is "no", adding

"the average lay observer would not confuse t-shirts bearing the phrase 'everyday I'm Shufflin' with the musical composition 'Hustlin', nor without reference to 'Party Rock Anthem' and 'Hustlin', would an average lay observer recognise the merchandise as having been appropriated from 'Hustlin'".

The judge did not rule on whether LMFAO's song itself was an unauthorized copy of "Hustlin'." A trial is scheduled for October.

William L. Roberts, II et al. v. Stefan Kendal Gordy et al, in the U.S. District Court for the Southern District of Florida, No. 13-cv-24700.


Wednesday, 16 September 2015

Beijing: now Moldova commits

By Beijing Notification No. 9 ("Beijing Treaty on Audiovisual Performances: Ratification by the Republic of Moldova") we learn that
The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of the Republic of Moldova, on September 4, 2015, of its instrument of ratification of the Beijing Treaty on Audiovisual Performances, adopted at Beijing on June 24, 2012.

The date of entry into force of the said Treaty will be notified when the required number of ratifications or accessions is reached in accordance with Article 26 of the said Treaty.
Including Moldova (which is listed by WIPO under "R" for "Republic") there are now nine ratifications or accessions. You can check the current list at any time by clicking here. Under Article 26 the Treaty doesn't come into force till three months after 30 "eligible parties" have committed themselves.

Quantum Surveying the IPEC Way

When we report cases of copyright infringement, we all too often concentrate just on the arguments and evidence which lead to the outcome at trial: the winners and losers. For obvious reasons it is rarely possible to look in detail at those cases which settle, because the agreements usually bind the parties to confidentiality, and slightly less rarely do we examine the separate hearings in which quantum is assessed and awarded. There are  two possible reasons why these hearings are less commented upon: they are intrinsically less interesting as they have little bearing on the law per se (ie they tend to be very fact specific to each case therefore hard to draw inferences from), and they also tend to be less extensively reported on Bailii and in the law reports.

However for those less conversant with litigation - and this includes the growing number of litigants in person - the process(es) by which quantum is assessed can form an important element when considering whether to fight or settle. For the layman to only consider such matters as the likely damages after liability has been established, is rather too late. And from lawyer’s point of view, occasionally a costs hearing can involve a determining of which law which should be applied.

And so it was with a recent judgment from the IPEC under His Honour Judge Hacon in the matter of Absolute Lofts Ltd v Artisan Home Improvements Ltd and Anor [2015] EWHC 2608 (IPEC). The case provides both a welcome insight into the current thinking on assessing quantum in copyright cases, and the extent to which the UK law may be at variance with the EU Enforcement Directive (2004/48 EC) (pdf) brought into force by the Intellectual Property (Enforcement etc) Regulations 2006. This is the second time that Judge Hacon has published a judgment concerning an inquiry into damages - the first being Henderson v All Around The World Recordings Ltd, which was a case about unpaid royalties and performer’s rights, reported on by Eleonora here.

Returning to the current case, it is only necessary to set out the facts in the most outline of terms, because the defendant admitted liability at trial. The claimant, Absolute Lofts, is as its name suggests, a company which specialises in loft conversions. It is based and operates in London and has its own website. The owner of the company, Mr Craig Colton takes photographs of work he has completed and posts them on his company's website. There was no dispute that he owned the copyright in these images and that he had assigned the copyright to his company.

Artisan Home Improvements Limited is a company operating in the Bradford area. In around 2009, the company's owner (and second defendant) Mr Darren Ludbrook expanded his existing small building business to include the loft conversion market. He needed images of conversions for his website in order generate interest in this new area of work. Although he blamed his website designer, the court found that he either took 21 images from the website of Absolute Lofts and included them on the Artisan website, or there were reasonable grounds for believing he knew they were infringing images. The fact that potential customers of Artisan were being misled in this way was not at issue in the proceedings, although the judge took this into account when assessing Mr Ludbrook’s integrity and general approach to business.

In something of a departure from the normal structure of a court judgment, Judge Hacon first outlined in some detail the methodology chosen to calculate the quantum, before addressing the law which governs the awarding of damages. In this case, the so-called 'user principle' was followed. This principle is based on the construction by the court of a hypothetical negotiation between claimant and defendant before the act complained of, where each party would have been acting willingly and without duress to achieve the same state of affairs (ie the use of the 21 images) in a legal way. This differs from quantum based on presumed (or provable) losses suffered by the claimant, or the presumed ( or provable) profits made by the defendant arising out of the infringement.

The first thing the court looked at were the alternatives to using Mr Colton's images: Mr Ludbrook could have commissioned his own photographer, or he could have purchased licensed images from a stock agency (which is ultimately what he did, once the letter before action was received and he was obliged to take down Mr Coltan's images). Counsel for each side provided their own estimates, supported by expert testimony, of the cost of commissioning 21 similar photographs, which ranged between £9,000 (the claimant's figure) and £700 (the defendant's lowest estimate), but the court rejected this analysis on the basis that Mr Ludbrook was seen as a man "prepared to use the cheapest images he could find that looked good enough and could pass for photos of loft conversions done by Artisan" [22]. Instead, the judge took the view that the best evidence was provided by what actually happened when Mr Ludbrook was forced to find substitute images - he obtained them from a stock agency for a total of £300. This was the level of ordinary damages the court awarded.

The claimant had also sought aggravated damages under Section 97(2) of the CDPA. This subsection says a court may award additional damages having regard to all the circumstances, but in particular to the flagrancy of the infringement and any benefit accruing to the defendant by reason of the infringement. However the judge found that he needed to consider whether s 97(2) had been made redundant by the Enforcement Directive, specifically Art. 13(1). This came about because the UK Regulations which brought the Directive into force, state in Reg 3 (2) that damages may be awarded based on taking all appropriate aspects into account (this would include those factors covered in s 97(2)), or damages based royalties or fees which would have been due if the parties had agreed beforehand (the user principle outlined above). However this strict either/or approach was not to be found to be so rigid in the Directive (Art 13 1a and 1b). In the directive, the wording for the second condition is: damages “such as at least the amount of royalties or fees …” (my added emphasis). The court decided at [48] that the Directive thus allowed the national courts to consider additional damages, such as those contemplated by s 97(2), since Art 2 of the Directive permitted national differences in the means of enforcement if they were more favourable for rightholders than those provided for in the Directive. On this basis the court felt it was appropriate to award additional damages on the basis of the indirect benefits the defendant gained from the infringement, that is to say the increased business in loft conversions following the use of the images on the website. The business accounts for Artisan over the relevant period were inadequate to show the actual profits but turnover was clearly substantial (around £500,000 in 2013 for example), and it had to be assumed that this was in part due to orders won of the strength of the website. The judge awarded an extra £6,000 in damages under this head. This figure would have been the same he concluded, whether it was calculated under the Art 13(1) process, or s 97(2) CDPA.

This is a somewhat simplified version of the judgment, which interested readers are encouraged to read  for themselves in order to gain the full nuance of the deliberations.

Postscript.   Following the hand down of this judgment, counsel for Absolute Lofts returned  to the court to ask for an amendment to the award of ordinary damages (the figure of £300). Their grounds for seeeking this were that when the court had taken the Shutterstock fees as good evidence of the real world  cost of obtaining a licence for 21 similar images of loft conversions. However the full terms of the licence had been omitted from the trial bundle. The claimant had subsequently obtained these terms  and found that amongst other things they contained the following:
    “YOU [the licensee of the images] MAY NOT”:
12. Use an Image in a manner that infringes upon any third party’s
trademark or other intellectual property, or would give rise to a claim of deceptive advertising or unfair competition.
18.  Use any Image (in whole or in part) as a trademark, service mark,  logo or other indication of origin, or as part therefore, or to otherwise endorse or imply the endorsement of any goods and/or services.’
19.  Falsely represent, expressly or by way of reasonable implication, that any Image was created by you or a person other than the copyright holder(s) of that image."
Clearly Artisan's use of the licensed images was in breach of these terms and so the licence was invalid. It follows that Shutterstock would either have charged more for the actual use, or would not have permitted such use at all. Either way the figure of £300 was the wrong basis for the award.

The judge then had to decide whether he was permitted to reconsider his judgment and award of damages without the necessity a new trial or an appeal. Fortunately earlier this year Mr Justice Birss had had cause to examine much the same issue in Vringo Infrastructure Inc v ZTE (UK) Limited [2015] EWHC 214 (Pat). Birss J  concluded that where evidence was adduced after judgment had been given, the principles set out in Ladd v Marshall [1954] 1 WLR1489 might well be applied by the trial judge since he would have a better view of the facts than an appeal court.

HHJ Hacon stressed that while these principles are not decisive they are highly relevant to the current case:
“First, it must be shown that the evidence could not have been obtained without reasonable diligence for use at the trial. Secondly, the evidence must be such that, if given, it would probably have an important influence on the result of the case, though it need not be decisive. Thirdly, the evidence must be such as is presumably to be believed or, in other words, it must be apparently credible, though it need not be incontrovertible.”
Counsel for Absolute Lofts argued that this was not new evidence, and therefore the first principle did not apply, but the judge disagreed. On the basis that these additional terms could have been discovered with reasonable diligence before the trial or at least before judgment, the first principle was not met and so the application must fail.

Full details of the judgment here