1709 Blog: for all the copyright community

Thursday, 30 October 2014

Designs, copyright and UK law reform post-Flos

A perplexed 1709 Blog-reader has written to us with the following request for clarification. If any reader(s) would like to respond by posting their comments below, our reader would be hugely gratified, though possibly no less perplexed.  The request runs as follows:
I understand that the CJEU’s decision in Case C-168/09 Flos is about pre-1989 designs that have copyright protection because they were protected according to the law of an EU member state at the relevant time. In response, the UK Government is proposing to repeal section 52 of the Copyright, Designs and Patents Act 1988 (CDPA) which restricts copyright protection for some artistic works that have been industrially exploited to 25 years (instead of 70 years post mortem auctoris).

The repeal of section 52 applies (I believe) to pre-1989 designs that were the subject of Flos, but I am sure that it applies to post-1989 designs that have copyright protection, such as being works of artistic craftsmanship.

As noted in a recent IPKat post, ACID’s consultation on the topic focuses on the effects on pre-1989 designs only, which is consistent with Flos but ignores the totality of the effect of the repeal of section 52; Peter Smith’s comments on that post on the other hand referred mainly to works of artistic craftsmanship, which is all very well post-1989, but seems irrelevant to Flos-derived reason for the repeal of section 52.
(1) The repeal of section 52 seems to be much wider in ambit than is required to address the mischief identified in Flos – why is this? and has there been any consultation about the appropriateness of the repeal of section 52 as a means to achieve the UK’s obligations under Flos?

(2) Does the effect of the repeal have the same effect, or a different effect, vis-à-vis designs pre- and post- CDPA 1988?

(3) Is there anything else I have missed?
Do let us know what you think!

Wednesday, 29 October 2014

Starting today, UK has new licensing scheme for orphan works

Orange (or Orphan Works
So spring/summer 2014!
The Orphan Works Directive? So last season! Even if the deadline for implementation is today [but how many Member States have transposed it into their national laws yet? Not all, The 1709 Blog is told ...] and this means that there should be a new exception to the rights of reproduction and making available to the public [see Article 6] that would allow [very] limited uses of orphan works, excitement for prospective users of orphan works might be even greater in the UK.

The orphan works licensing scheme pursuant to s77 of the Enterprise and Regulatory Reform Act 2013 [the lawfulness of which this blogger questioned here] launched in fact today. This means that it is now possible to apply for a licence to use "at least 91 million culturally valuable creative works - including diaries, photographs, oral history recordings and documentary films." 

UK IP Minister, Baroness Neville Rolfe, said: "The UK's trailblazing orphan works licensing scheme enables access to a wider range of our culturally important works. The scheme has been designed to protect right holders and give them a proper return if they reappear, while ensuring that citizens and consumers will be able to access more of our country's great creations, more easily."

Apparently, "[t]his ground breaking scheme builds on UK and international best practice and is the first to use an electronic application system and searchable register of the licences granted. It is being implemented alongside the EU Orphan Works Directive that enables cultural institutions to digitise certain orphan works in their collection and display them on their websites.Together these two schemes will help to display more of the UK’s cultural work at home and across Europe."

The UK scheme will be administered by the UK Intellectual Property Office.

In all this, if you are wondering about the meaning of one of the key concepts in orphan works jargon, ie 'diligent search', just click here.

Tuesday, 28 October 2014

Who framed the CopyKat?

The UK government has confirmed another two years of funding for the City Of London Police's Intellectual Property Crime Unit, or PIPCU, which has been spearheading a number of anti-piracy initiatives since its launch last year.

Finnish Parliamentarians have voted to reject a proposal to reform copyright laws by reducing infringements by private individuals to a misdemeanour. The bill reached the attention of lawmakers by way of a citizen’s initiative following a highly-publicised case in which anti-piracy authorities fined a 10-year old girl for illegally downloading pop music on to her home computer. The Finnish Parliament's Education and Culture Committee had already proposed rejecting the Bill.

Napoleon Crossing the Alps,
Jacques-Louis David (1805)
"Napoleon's conquest of Italy led to a copyright-fuelled opera boom" - well that caught my eye! And it seems a new study provides evidence of how copyright laws inspire more and higher-quality artistic works. Michela Giorcelli and Petra Moser, Stanford University economists, studied Italian opera from the late 1700s through 1900 and found that after Napoleon invaded Italy — bringing with him French copyright laws — those copyright laws were associated with both more and higher-quality operas. More here

Over on the IPKat, Eleonora has alerted all CopyKats to a new decision from the CJEU which follows in the wake of Svennson: in the  BestWater  case the Court of Justice of the European Union handed down a "landmark" verdict - ruling that embedding or framing copyrighted videos is not copyright infringement, even if the source video was uploaded without permission. The CJEU said (this is a translation from German and may not be wholly accurate) as long as the original video not altered or communicated to a new public.- and in this case the original video was already available on YouTube - embedding it is not seen as a new communication with the court saying "“The embedding in a website of a protected work which is publicly accessible on another website by means of a link using the framing technology … does not by itself constitute communication to the public within the meaning of [Article 3(1) of the EU Infosoc Directive] to the extent that the relevant work is neither communicated to a new public nor by using a specific technical means different from that used for the original communication”. The CopyKat thinks this is an important decision - with major ramifications for owners of audio visual content - Eleonora has already updated this breaking news with a second post over on the IPKat with some assistance from a guest contribution from Oliver Löffel who says this was the answer to the question posed by the  Bundesgerichtshof (as translated):

The embedding, within one’s own website, of another person’s work made available to the public on a third-party website, by means of a link using the framing technology, such as that at issue in the main proceedings, does not by itself constitute communication to the public within the meaning of Article 3(1) of Directive 2001/29 of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society [the InfoSoc Directive], insofar as the work concerned is neither directed at a new public nor communicated by using specific technical means that differ from that used for the initial communication. 

This means that embedding videos which are freely available on, for example (and is it was the case here) YouTube, does not constitute an infringement of the right of communication/making available to the public if the work concerned is neither directed at a new public nor communicated by using specific technical means different from that used for the initial communication.

Another case referencing Svennson is the recent decision by Mr Justice Arnold in 1967 Ltd & Others v British Sky Broadcasting Ltd & Others [2014] EWHC 3444 (Ch) (23 October 2014). Here - in another clear judgment on how website blocking injunctions should be applied for pursuant to section 97A of the Copyright, Designs and Patents Act 1988 (itself a result of Article 8.3 of the InfoSoc Directive which provides that  "Member States shall ensure that rightsholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right) Arnold J noted that the following four matters had to be established: (1) that the Defendants are service providers; (2) that users (i.e. consumers) and/or the operators of the target websites infringe the Claimant's copyrights; (3) that users and/or operators of the target websites use the Defendants' services (here ISPs - the big UK five of BSkyB, BT, EE, Talk Talk and Virgin) to do that; and (4) that the Defendants have actual knowledge. These four matters had been covered by the record label claimants and so Arnold J had no difficulty in finding all four matters established.  And Arnold J found that users infringe by copying and communicating the Claimant's works to the public and also found that the website operators infringe by communicating those works to the public - and here held that in the case of the 13 target websites, it is a communication to a new public, "...which is to say a public which was not considered by the rights holders concerned when they authorised the original communication or other act of dissemination of the recordings." (emphasis added).

Monday, 27 October 2014

CopyrightX returns

Brian Stevens (Senior Intellectual Property Consultant, Danfoss Limited) writes to tell us how much he enjoyed the 2014 CopyrightX online course offered by HarvardX, Harvard Law School, and the Berkman Center for Internet & Society, which will be offered again in 2015. Says Brian: "Their use of real-time online discussion was very helpful and overall it provided a very useful and interesting educational experience".

The 12-week course begins on January 26. The application process for the online sections opened on October 15 and closes on December 15. Information about this course is available here.

No "controlling mind"? Never mind, you can still be liable ...

Phonographic Performance Ltd v John Nash (T/A Charlie Wrights International) is another Chancery Division, England and Wales, ruling from judicial "super-sub" Judge Pelling QC, who has picked up quite a few intellectual property cases without being one of the jurisdiction's specialist IP judges. This decision, on 23 October, is extempore and has been noted on the Lawtel subscription-only service.

In this action the PPL sued Nash, the premises licence holder and designated premises supervisor of a music bar, for copyright infringement and sought summary judgment on the basis that Nash had either played musical recordings at the venue without being licensed or permitted to do so, or had authorised others to do so -- or both. Said the PPL, Nash was perfectly aware that PPL held the public performance rights in the relevant recordings. The company sought a final injunction on the basis that Nash was going to carry on infringing its copyrights unless he was restrained from doing so. Nash resisted the application for summary judgment and argued that (i) the venue was operated by a company that employed him as a manager, (ii) he never traded from the premises on his own account, and that (iii) he was not the "controlling mind" of any company operating from that address. He also applied for two previous orders to be set aside on the ground that they violated his right to a fair trial since they were made in his absence.

Judge Pelling QC granted the relief sought by PPL. In his view:

* Even if the court proceeded on the assumption that Nash had not traded in the manner alleged, that was not going to help him since being an employee was not a defence to copyright infringement and Nash could not avoid personal liability on that basis.

* In any event, the suggestion that Nash was only ever an employee was unreal and fanciful given (i) evidence of his continuing, intimate involvement in the operation of the business at the premises, plus (ii) evidence of his continuing role as the responsible office holder under the licensing legislation.

* PPL had shown that there was a continuing risk of Nash's direct infringement, so the company was entitled to a final injunction restraining him from continuing to infringe its copyrights.

* Nash's application to set aside the two previous orders failed. One of the orders actually permitted Nash to apply to set it aside, and so it plainly did not violate his right to a fair trial and, so far as the judge could see, the other order had not been made in his absence.

This decision offers a useful reminder that being in the employ of someone else is no defence to an action for copyright infringement in the UK (though the employer may be vicariously liable too).

Friday, 24 October 2014

Donaldson v Becket(t): revising the revisionists?

H. Tomás Gómez-Arostegui (Kay Kitagawa & Andy Johnson-Laird IP Faculty Scholar and Associate Professor of Law, Lewis & Clark Law School, Portland, Oregon) has recently sent me a copy of an article that he thought might be of interest: "Copyright at Common Law in 1774", 47 Conn. L. Rev. 1 (2014). This article takes a look at one of the seminal pieces of English litigation on common law copyright: Donaldson v Becket(t). According to the abstract:
As we approach Congress’s upcoming re-examination of copyright law, participants are amassing ammunition for the battle to come over the proper scope of copyright. One item that both sides have turned to is the original purpose of copyright, as reflected in a pair of cases decided in Great Britain in the late 18th century—the birthplace of Anglo-American copyright. The salient issue is whether copyright was a natural or customary right, protected at common law, or a privilege created solely by statute. These differing viewpoints set the default basis of the right. Whereas the former suggests the principal purpose was to protect authors, the latter indicates that copyright should principally benefit the public.

The orthodox reading of these two cases is that copyright existed as a common-law right inherent in authors. In recent years, however, revisionist work has challenged that reading. Relying in part on the discrepancies of 18th-century law reporting, scholars have argued that the natural-rights and customary views were rejected. The modified account has made great strides and has nearly displaced the traditional interpretation. Using a unique body of historical research, this article constitutes the first critical examination of the revision. Ultimately, it concludes that the revision is incorrect and that we must return to the orthodox view.
The article also contains information regarding, more generally, appellate procedure in the House of Lords and the publication of appeals, particularly in newspapers and periodicals. Tomás also includes an appendix that traces the numerous newspapers and periodicals that published material on Donaldson v. Beckett.

I welcome this approach, having sometimes been faced with revisionist propositions that seemed to me to be so far from my recollection of old cases that I have had to return to the original sources in order to reassure myself that my memory was not at fault.

You can read this article via SSRN here.

There's also a spot of further background reading in a very much shorter piece which I wrote several lifetimes ago, noted in "Past historic 5: common law copyright in England".

Thursday, 23 October 2014

More copyright creation opportunities for women? Not if they are film directors in Europe

The European Audiovisual Observatory has been at it again.  This time it has published Female directors in European films, which it describes as a "first-of-its-kind pan-European analysis of films by female directors".

This slender (61 page) report reveals that only 16.3% of the European films produced between 2003 and 2012 were shot by female directors -- a percentage which is even lower when it comes to the share of admissions, with European films by women directors accounting for 8.9% of the total admissions in Europe during the same period ["admissions" in this context is not a synonym for "confessions", but rather a reference to the number of viewers admitted to cinemas to watch the films].

The report is available in English with an executive summary in French and German -- something that might make French and German women directors feel even more discriminated against.

You can check out the further particulars of this work and even order it by clicking here [it's a good old-fashioned 484-character URL, so we're not reproducing it in full ...].

How to heal a Broken-Heart … under the Enforcement Directive

Dorothea Thompson
For a select few, the recent damages assessment in Henderson v All Around The World Recordings may provide an excuse to reminisce about the ‘glory’ of late-noughties Bassline music. For everyone else, it provides the first guidance on the interpretation of the Enforcement Directive and implementing UK Regulations, with particular regard to the notion of ‘unfair profits’ and ‘moral prejudice, as 1709 Blog friend and music loving trainee solicitor Dorothea Thompson (Bray & Krais) explains in her guest contribution.

According to Dorothea, “this case confirmed that inquiry as to damages and account of profits remain available as alternatives only, and ‘additional damages’ for infringement of performance rights under the Copyright, Designs and Patents Act 1988 (CDPA) are now effectively redundant.

Here’s what Dorothea writes in more detail:


The song Heartbroken was recorded by Jodie Henderson (aka Jodie Aysha) and Tafazwa Tawonezvi (aka T2) in 2005. In 2007 Mr Tawonezvi re-mixed the track to produce a Bassline version and signed a record deal with 2NV Records Ltd (2NV). 2NV then signed a deal with All Around the World Recordings Ltd (AATW) to release Heartbroken (for those readers with an enquiring/nostalgic mind, the song in its released version can be found here). 2NV offered Ms Henderson £1,500 for her performance, but she refused. She then entered into a publishing contract with Sony ATV.
In November 2007 AATW released Heartbroken. It was a big hit, reaching No.2 in the singles charts, staying there for 5 weeks, and remaining in the Top 40 for 46 weeks.
To date Ms Henderson had received no performance royalties for AATW's release, nor been paid for her participation in the video or the use of her name.
Breach of performance rights

Back in February 2013, in the Patents County Court (as it then was) HH Judge Birss QC found that Ms Henderson had consented to the recording of her vocal, but not any future exploitation. Objectively, there were no grounds for AATW to infer consent, as they knew Ms Henderson had not signed with 2NV. 2NV had not obtained consent which could be passed on to AATW, and Ms Henderson had no contractual right to royalties.

AATW had "gone ahead at risk" in the knowledge that Ms Henderson had not signed a contract. AATW had thereby infringed the singer's rights by making copies of her performance and issuing those copies to the public without her consent, contrary to sections 182A and 182B CDPA.

Fair enough, but:
can you at least claim damages?
Assessment of damages

Ms Henderson elected for an inquiry as to damages. Aside from loss of royalties, assessed under the standard ‘user-principle’ (royalties that would have been paid had there been a licence negotiated between willing licensor and willing licensee), Ms Henderson sought damages under the Enforcement Directive and additional damages under the CDPA.

Enforcement Directive

It was not disputed that Ms Henderson was entitled to rely on reg. 3 of the 2006 Regulations, implementing art. 13(1) of the Directive, which applies where the infringer knowingly, or with reasonable grounds to know, engages in infringing activity. However, Ms Henderson argued that reg. 3 allowed a claim for both damages and defendant's profits, and required the court to consider both and make an award in relation to both as appropriate.

Judge Hacon reiterated that as a matter of English law, inquiry as to damages and account of profits are only available as alternatives. In intellectual property proceedings a claimant is free to choose between them but may not have the benefit of both.

Under art. 13(2) in respect of unknowing infringement, it is clear that there is a choice between inquiry as to damages or account of profits. Where knowledge is proved, art.13(1)(a) requires the court to take into account relevant aspects of the actual prejudice suffered, including both lost profits and unfair profits. However, the overall task is to order damages appropriate to the actual prejudice suffered, and this is usually profit lost (possibly plus expenses). Recital 26 of the Directive confirms the aim is not to impose punitive damages but to achieve objectively assessed compensation.

‘Unfair profits’

Judge Hacon considered that art. 13(1) did not mean that the court must always take into account profit made by the defendant from his knowing infringement. Instead, if the claimant would not receive adequate compensation for actual prejudice suffered where damages were assessed as lost profits, moral prejudice and expenses, or account of profits, there was flexibility to award an additional sum related to profit that the defendant has generated through the knowing infringement.

He referred to the example of a defendant making no direct financial profit from the infringement, but his business expanded in volume and/or in reputation on the back of loss-leader infringements.

What about 'moral prejudice'?
‘Moral prejudice’

Damage for 'moral prejudice' is rooted in continental civil law, but there is little guidance to a single meaning according to EU law. Judge Hacon held that art.13(1)(a) entitles recovery for three of the categories of non-economic loss on which Ms Henderson relied: mental distress, injury to feelings and humiliation.

He considered that the moral prejudice contemplated by this provision was confined to prejudice arising in limited circumstances, particularly where a claimant had suffered little or no financial loss and would otherwise either be left with no compensation, or the compensation would not be proportionate to the overall damage suffered.

For example, if a defendant were to infringe the copyright in photographs disclosing private grief by publishing them on the internet (which, unfortunately, seems like an entirely plausible situation these days), that might generate no profit for the defendant and no financial loss for the copyright owner, but the emotional stress caused might be acute. In such circumstances, the court could award compensation for moral prejudice, previously unavailable in England to copyright owners.

Additional damages under the CDPA

Section 191J(2) CDPA provides that in an claim for infringement of performer’s rights, the court may award additional damages, having regard in particular to the flagrancy of the infringement.
Judge Hacon held that art. 13 (with reg. 3(3)) now provides a lower hurdle - of knowing infringement.  Consequently, s. 191J(2) has effectively become redundant.

In conclusion, Ms Henderson was awarded damages according to the 'user principle' of £30,000 and a further £5,000 pursuant to art.13(1)(a) of the Enforcement Directive, making a total of £35,000. This might not seem like an enormous result for her, some 7 years after the infringement, but the case has provided welcome clarification on the assessment of damages post-Enforcement Directive.”