Monday, 16 January 2017

SEMINAR: The Rise of Web Blocking Orders in the UK: Empirical Evidence Perspectives

CITY UNIVERSITY are hosting a seminar with  Professor Lilian Edwards (Strathclyde University & CREATe) on Friday 3rd February. 13.00 - 15.00

The digital copyright and piracy wars, which began with Napster and continue today into the age of streaming, Spotify and Netflix, have engaged in broadly three strategies to defend existing content industries, which can be described as punish, prevent, and provide alternative business models. Both anecdotal experience in the legal system and empirical research carried out by CREAte and others point to the failure and partial abandonment of the punishment strategy, especially in its legislative "graduate response" form. By contrast, prevention, in its latest forms of site blocking and geoblocking, is rising in popularity, at least in the UK which has recently been described as the world leader in web blocking.  While it may be argued that prevention tactics are unnecessary given the rise  of legal streaming , have unfortunate side consequences and may even impede  a more profitable long term shift to alternative business models, it is hard to prove this using empirical evidence, as seen in recent UK court cases. This paper asks what evidence would be convincing here and if empirical evidence ,rather than normative claims, can ever successfully inform the copyright wars.

More here: It's free to attend but please register here:

Wednesday, 11 January 2017

Court gives jury mission to explore strange world of copyright and fair use

As noted by Tibbie in last the installment of CopyKat, Judge Klausner from the Central District Court of California sent the Paramount v. Axanar case off to jury trial on January 4, as he denied both parties’ motions to dismiss. Tibbie explained that the fair use defense failed. What could be next?

Judge Klausner noted that both motions “raise two core issues – whether the Axanar Works are substantially similar to the Star Trek Copyrighted Works, and whether Defendants have a valid fair use defense under the Copyright Act.” This is catnip for IP attorneys, especially IP attorneys writing for a cousin of The IPKat blog. We wrote about the Paramount v. Axanar case several times before (see here, here, and here) and it seems that 2017 will provide more opportunities for us to try to find witty [at least for us] Star Trek-related titles.

Plaintiffs in this case are Paramount and CBS Studios, which filed a copyright infringement suit against Axanar Studios and its principal Alec Peters claiming that the short movie Prelude to Axanar is an unauthorized derivative work. Axanar Studios is also planning to issue a full feature film, crowdfunded by Star Trek fans.
The case is not immature

Defendants were arguing that the court could not determine whether Defendants had indeed infringed Plaintiffs’ copyright without the completed Axanar motion picture, but Judge Klausner disagreed, as “evidence of a final shooting script satisfies the judicial standard for summary judgment.”

Substantial similarity between Plaintiffs’ and Defendants’ works

Judge Klausner noted that “the copyright infringement claim can live long and prosper if the Axanar Works are substantially similar to the Star Trek Copyrighted Works.” [Ha!]

To establish a prima facie case of copyright infringement, a plaintiff must demonstrate (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.

A plaintiff claiming copyright infringement must demonstrate that the defendant copied a substantial amount of elements of the protected work that are original. Courts in the Ninth Circuit use an objective extrinsic test and a subjective intrinsic test to find out whether there are substantial similarities between the works. This two-part test was first coined in the Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp. 1977 Ninth Circuit case. The extrinsic test asks if there is similarity of ideas, and analytic dissection is allowed. The intrinsic test asks if an "ordinary reasonable person" would perceive a substantial taking of protected expression. Analytical dissection is not appropriate.

Judge Klausner found the Axanar works, that is, both the short movie and the upcoming motion picture, have objective substantial similarities to the Star Trek copyrighted works, that is, the original television series and the movies. The intrinsic test “must be left to the jury.”

Judge Klausner performed the extrinsic test, analyzing whether Defendants used copyright protected elements from Plaintiff’s works.

Defendants use elements protected by copyright

Copyright only protects original works of authorship and therefore courts must filter out and disregard the elements of a protected work which are not copyrightable. This is called dissecting and filtering. Only elements which are protectable are then being compared with the allegedly infringing work. If there is substantially similarity, there is copyright infringement. Judge Klausner noted, however, that a combination of unprotectable elements can be protected by copyright “if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.”

Infringement of the character of Garth of Izar

Defendants argued that the characters and species used in their works were not subject to copyright protection. Judge Klausner disagreed, “at least with respect to Garth of Izar.” To reach this conclusion, he used the DC Comics v. Towle three-part test used in the Ninth Circuit to determine whether a particular character is protected by copyright. A character must (1) have physical and conceptual qualities, (2) be sufficiently delineated to be recognizable as the same character whenever it appears and (3) be especially distinctive and contain some unique elements of expression to be protectable by copyright.

Judge Klausner applied this test to Garth of Izar and concluded that this character can be protected by copyright. Garth appeared in the Whom Gods Destroy television episode as a live character and thus has physical as well as conceptual qualities. He is a former starship captain and he is very famous among Starfleet officers, including Captain Kirk, because he won the battle of Axanar in such an illustrious way that his exploits were required reading at the Starfleet Academy. The Garth of Izar novel published by Plaintiffs in 2003 further developed this character. As such, his “identity as a Federation hero sufficiently delineates him and sets him apart from a stock spaceship officer.”

Klingons and Vulcans species may be protected by copyright

The Klingons, long-time enemies of the Federation, stem from the planet Qo’noS. They have ridged foreheads and dark hair. Vulcans are part of the Federation, and one of their finest specimens is Spock, who, as do all his other fellow Vulcans, “suppresses emotions in favor of logic and reason.” Vulcans have pointed ears and upswept eyebrows, and males “usually have a bowl-shaped haircut.” For Judge Klausner, these characteristics of Klingons and Vulcans are not elements of expressions that necessarily follow from the idea behind the expression and may be entitled to copyright protection.

Star Trek Costumes may be protected by copyright

Judge Klausner found that several costumes from the original Star Trek works, such as a Klingon officer’s uniform, “a gray tunic with shoulder covers and a red neckpiece,” or the costume of Vulcan Ambassador Soval, an “Asian-style long robe and a drape decorated with Vulcan writing,” were similar to those used by Defendants in their works. Judge Klausner was careful to note that “[t]he artistic aspects of these costumes… can be identified separately from, and are capable of existing independently of, the utilitarian purpose of the costumes,” since utilitarian articles are not protected by U.S. copyright. However, these costumes may be protected by copyright, as “[t]he combination of artistic visual elements of these uniforms likely contains original expressions protectable under the Copyright Act.”

Settings and the Klingon language may be protected by copyright

Judge Klausner also found that the settings for the original Star Trek works, such as the planets Axanar, Qo’noS, and Vulcan, “the military spaceships including Klingon battlecruisers, Vulcan ships with an engine ring, and Federation spaceships with their iconic saucer-shaped hull (e.g., the U.S.S. Enterprise), space travel elements such as spacedocks, and Vulcan buildings – cathedrals with sword-blade-shaped domes” are protectable.

Judge Klausner also listed “the Federation, the Klingon Empire, and conflicts between the two in the Four Years War at the Battle of Axanar… , the Vulcan council, the teachings of the Vulcan philosopher Surak, the use of the Federation logo, stardate, transporters and warp drive, weapons such as phasers and photon torpedoes, and the Klingon language” as being protectable.

Judge Klausner explained that [a]lthough each of these elements may not be individually original and copyright protectable, they are “numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship,” especially when combined with the costumes and fictional characters and species, examples of which are described above.”

Works are substantially similar

Judge Klausner found that under the extrinsic test, Defendants’ works were substantially similar to Plaintiffs’ works. He noted that Defendants wanted “to create an authentic and independent Star Trek film that [stayed] true to Star Trek canon down to excruciating details.” Defendants’ works are set in the Star Trek universe and “intentionally use or reference many elements similar to those appearing in the Star Trek Copyrighted Works,” such as the appearance of the Klingons and their weapons. For Judge Klausner, “Defendants intentionally use[d] elements from the Star Trek Copyrighted Works to create works that stay true to Star Trek canon down to excruciating details.”

“Excruciating details” seems to be used by Judge Klausner in place of “substantial similarity” and this cannot be good news for Defendants’ attorneys.

Defendants are not entitled to the fair use defense

Judge Klausner examined the four fair use factors to decide whether the use of the original Star Trek works by Defendants was fair and found that all the factors weighted in favor of Plaintiff.

As for the first factor, the purpose and character of the use, Judge Klausner found that Defendants’ use was not transformative, as it does not have a further purpose or different character, nor does it alter the original Star Trek works with new expression, meaning, or message, as required by Campbell v. Acuff-Rose Music. Indeed, “Defendants want the Axanar Works to supplant the Star Trek Copyrighted Works” by creating “alternative ways for fans to view Star Trek.”

Defendants argued that their works are “mockumentaries,” that is, fictions presented in a documentary form, which is a form of parody and are thus transformative. Judge Klausner was not convinced, reasoning that, under Campbell, a parody must use some elements of a prior work to create a new work that criticizes the substance or style of the prior work, and must “target the original, and not just its general style, the genre of art to which it belongs, or society as a whole.” Judge Klausner could not discern any criticism of the Star Trek Copyrighted Works in Defendants’ works.

Defendants argued that their works are not commercial because they are and will be distributed for free. Judge Klausner was not convinced by this argument either, noting that “Peters hoped to derive non-monetary benefits, for example, other job opportunities, from the Axanar Works.” Therefore, Defendants, who did not obtain a license from Plaintiffs, “profit from exploitation of the copyrighted material without paying the customary price.”

Judge Klausner also found that the second fair use factor, the nature of the copyrighted work, weighted in favor of Plaintiff as their works “have transported the hearts of a legion of fans to the Star Trek universe. …They are the type of works that are given broad copyright protections.”

As for the third factor, the amount and substantiality of the portion used, Judge Klausner found that Defendants used elements which are part of the Star Trek canon “down to excruciating details[the third time Judge Klausner wrote ‘excruciating details,’ ouch] and that Star Trek elements “pervade” Defendants’ works.

Finally, Judge Klausner found that the fourth factor, the effect of the use upon the potential market, also weighted in favor of Plaintiffs, because “Defendants evidently intend for their work to effectively function as a market substitution to the Star Trek Copyrighted Works,” further noting that “[t]he fact that Defendants distributed Prelude and the Vulcan Scene for free online and intend to likewise distribute their future works may likely increase the risk of market substitution as fans choose free content over paid features.”

The ultimate, but infringing fan fiction?

Peters wanted to create “a whole new way that fans can get the content they want, by funding it themselves.” It is an interesting initiative, which tests the scope of the legality of fan fiction. The case may ultimately set a precedent to the detriment (or benefit?) of more modest fan fiction initiatives.

Image of Spock is courtesy of Flickr user JD Hancock under a CC BY 2.0 license.

Image of cake courtesy of Flickr user Claire Neill under a CC-BY-NC-ND 2.0 license.

Sunday, 8 January 2017

Fair Use? It’s in the bag

On December 22, 2016, the Second Circuit affirmed the January 6, 2016 order from Judge Furman of the Southern District of New York (SDNY), which had found that the use of the Louis Vuitton logo and the representation of the Louis Vuitton bags on fabric totes was fair use. The maker of the tote, My Other Bag (MOB), was represented by David Korzenik, my former Entertainment Law professor at Cardozo School of Law, who encouraged all his students to write and publish and first gave me the idea to write about law.

Louis Vuitton famously designs and sells luxury bags carrying its LV logo. These bags are often seen in first class airport lounges all around the world, or so I’ve been told, but is it wise to use them as gym bags or shopping bags? The founder of MOB, Tara Martin, wondered, like all of us, if one should carry one’s Louis Vuitton bucket bag to go grocery shopping, considering, after all, that one Louis Vuitton bag was originally designed to carry champagne bottles (the French are so clever, non?)

Ms. Martin’s answer was to create fabric totes with one side representing a somewhat cartoonish rendition of a famous luxury bag, such as Hermès’ Kelly bag, Chanel’s matelassé bag, and several models of Louis Vuitton bags, while the other side read “My Other Bag is…”This phrase is inspired by the “My other car is a Jaguar/a Mercedes…” bumper stickers which were once ubiquitous on automobiles of a somewhat less expensive nature. The Louis Vuitton ‘LV’ logo are replaced on the MOB totes by the initials MOB and are sold from $35 to $55.
Louis Vuitton considered this use to be infringing and filed a suit against MOB, claiming trademark dilution, trademark infringement, and copyright infringement. MOB moved for summary judgment, which was granted on all points by Judge Furman from the SDNY.

As this blog concentrates on copyright, I will only address this particular issue in this case (I wrote about the trademark issues of the case here). Judge Furman had examined all the four fair use factors and found the use of the copyrightable elements of Louis Vuitton’s prints to be fair use.

Judge Furman from the SDNY: it is a parody and it is fair use

The first factor, the purpose and character of the use, was in favor of MOB, even though the use is commercial, because the use is a parody, which, “even when done for commercial gain, can be fair use” (at 445). Judge Furman found that that the second factor, the nature of the copyrighted work, was not of much help, as a parody almost invariably copy publicly known, expressive works. The third factor, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, was found by Judge Furman to be reasonable in relation to the purpose of the use, because “MOB's totes must successfully conjure Louis Vuitton's handbags in order to make sense”(at 445).

As for the fourth factor, the effect of the use upon the potential market, Judge Furman had found that even though

MOB's totes are, in an abstract sense, in the same market as Louis Vuitton's handbags, its totes do not "serve[] as a market replacement for" Louis Vuitton's bags in a way that would make "it likely that cognizable market harm to [Louis Vuitton] will occur… [as] any reasonable observer would grasp that the whole point of MOB's invocation of the "my other car..." trope is to communicate that MOB's totes are not replacements for Louis Vuitton's designer handbags. See Cariou v. Prince, 714 F.3d 694, 707 (2d Cir.2013) ("What is critical [in evaluating a fair use defense] is how the work in question appears to the reasonable observer.") (at 445).

The Second Circuit: the use is transformative

The Second Circuit reviewed the summary judgment de novo and affirmed both the award of summary judgment to MOB on Louis Vuitton’s trademark infringement claim, trademark dilution claim, and copyright infringement claim.

The Second Circuit found that MOB's use of Louis Vuitton’s designs was a parody which “produces a “new expression [and] message” that constitutes transformative use…. Like the district court, we conclude that the remaining fair-use factors either weigh in MOB's favor or are irrelevant, see Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 156 F. Supp. 3d at 444–45, and LV's arguments to the contrary largely repeat or echo those we have already rejected.”

This case signals that the Second Circuit is continuing to affirm the importance for a court to assess whether a particular use is transformative when deciding whether a particular use is fair use or not.

Friday, 6 January 2017

Now BMI takes on the US Radio industry

Last month, Irving Azoff’s US collection society, Global Music Rights (GMR), launched a legal attack on the Radio Music License Committee (RMLC), which represents over 10,000 commercial radio stations in the United States. The suit followed an action by the RMLC that moved that GMR be enjoined from licensing its catalogue of songs for more than a rate that represented the pro-rata share of its catalogue against those of the other PROs (primarily BMI and ASCAP, and SESAC) while its broader antitrust action is aimed at establishing an appropriate mechanism for determining those rates in the future - and forcing the rights agency to submit to independent arbitration to set the rates broadcasters must pay to play the songs it represents. Azoff formed GMR in 2013 to compete with ASCAP and BMI, which together control approximately 95% of music copyrights. The other independent and privately owned PRO in the USA, SESAC, recently entered into a settlement of with RMLC, following an antitrust action similar to the one filed against GMR.

Against a background of many songwriters and music publishers believing that commercial radio stations in the USA and elsewhere are paying far too little to use their work, GMR's lawsuit accused the RMLC of operating a ‘cartel’ which deliberately suppressed royalty payments to songwriters for music used across its network and targeted over 10,000 radio stations with an action that would have forced the stations to acquire a license in order to play music associated with any GMR songwriter artist (GMR have published a roster that includes Jay Z, The Eagles, Pharrell Williams, Adele, Daft Punk and hundreds more). One blip was that in response, heavy metal band Anthrax penned an open letter to Azoff for mistakenly including the band in the GMR "fair pay for fair play" lawsuit against the radio stations. The band suggested that whilst they have performed one song which is a composition by members of Metallica and Megadeth (the latter being represented by GMR) they are not represented by GMR and the error could discourage radio stations from playing Anthrax songs. 

On December 24th, GMR offered RMLC stations a temporary license to play songs by its clients. In a statement GWR said

"Today, GMR has offered a license to all radio stations represented by the RMLC allowing the stations to play GMR's repertoire in exchange for specified license fees. This license extends ‪through September 30th, 2017 and gives everyone additional time to negotiate long-term licenses with GMR. GMR offered this license to the RMLC last month, but the RMLC refused it and, instead, chose to sue and seek an injunction. With today's agreement, the RMLC has withdrawn its request for an injunction and radio stations across the country will have the opportunity to offer their listeners GMR's quality music."

Elsewhere, fellow PRO ASCAP has since re-signed a deal with RMLC for the next five years, covering its repertoire at a mutually agreed rate.

But the other major (and regulated) PRO BMI hasn't been so amenable.  The society has now filed an action in Federal Rate Court to set interim fees for radio stations represented by the RMLC – while BMI and the RMLC negotiate the terms of a new five-year deal beginning in 2017.

BMI said that the RMLC had "proposed an interim rate well below BMI‘s previous deal, the effect of which would have a significant impact on the royalties BMI pays to its songwriters, composers and music publishers" saying "The RMLC has justified its proposed rate based upon incomplete and incorrect information regarding BMI‘s radio performances. BMI disagrees fundamentally with the RMLC’s proposal and, consistent with past practices, is asking the Court to maintain its most recent rate while new terms are negotiated."

Mike Steinberg, Senior Vice President of Licensing for BMI, told reporters: “We attempted to negotiate in good faith with the RMLC for many months, and just before the end of the year, the RMLC presented an interim rate that significantly undervalues the work of BMI’s songwriters. Given the unmatched caliber of BMI‘s repertoire, our superior market share on radio, and the ever-increasing value that BMI music brings to the radio industry across all its platforms, we believe the RMLC’s proposal falls well short of what is in the best interests of our affiliates."

In an extreme version of a similar situation,  albeit here with a public service broadcaster, Bulgarian press reports said that as of 00.01 on January 1, 2017, Musicautor, Bulgaria’s non-profit society of composers, lyricists and music publishers, took action that has forced the country's national radio to play only music produced before 1945:  indeed, instead of hearing the official Bulgarian anthem at midnight, as they do every year, listeners to Bulgarian National Radio (BNR) heard an alternative version performed by BNR’s own choir and symphonic orchestra - and now have a diet of folk, classical and some jazz music. Musicautor, which hold the copyright to over 14,000,000 songs from Bulgarian and worldwide artists, suspended its contract with BNR and BNR is prevented from playing much contemporary Bulgarian and foreign music until the fee issue is resolved. The PRO has asked for a threefold increase in its payments, saying this would bring payments into line with those made by other European public radio broadcasters to use music.

US radio industry accuses Global Music Rights of monopoly abuse

The First CopyKat of the Year, Courtesy of Tibbie

The first CopyKat of the year, written by Tibbie McIntyre.  Enjoy!

Disney’s Lightning McQueen wins in Chinese Copyright case, Cars vs. Autobots

Back in July 2016, Disney took three Chinese firms (Blue MTV, media company Beijing G-Point and PPLive Inc.) to court for copyright infringement of ‘Cars’, the main protagonist of which being ‘Lightning McQueen’.

An ancestor of Lightning McQueen?

Claimed to be infringing Disney’s copyright in ‘Cars’ was another cartoon escapade surrounding automobiles called ‘Autobots’, a Chinese film directed by Zuo Jianlong. A side-by-side comparison of the movie posters for the ‘Autobots’ and ‘Cars’ can be found here.

Released at the very end of 2016, the ruling in this case found that ‘Autobots’ does indeed infringe the copyright of Disney’s ‘Cars’. More specifically, it was found that two characters from ‘Cars’ had been plagiarised – Lightning McQueen and Francesco Bernoulli. Additionally, it was found that the ‘Autobots’ Chinese title characters had been manipulated to make it appear as if the movie was part of the series. According to Li Rongde of Caixing Global,

“The Chinese titles for the movies are very similar, with the local production’s being Mobilization of Autobots, while the Disney film’s was Mobilization of Race Cars. One crucial Chinese character that differentiates the words Autobots and Race Cars was hidden behind an image of a wheel, a comparison of the two movie posters showed.” [You can visually compare the Chinese characters between the two posters here.]

Damages awarded by the Court, covering both legal fees and compensation, amounted to 1.35 million Yuan ($194,000), although it is interesting to note that the film grossed around $864,000 at the box office, from a budget of approximately $431,000.

The case has been lauded as a success for Disney, which recently opened a $5.5 billion Shanghai Disney theme park. It has, however, also been reported that the director of ‘Autobots’, Zuo Jianlong will launch an appeal.


Walt Disney and the Public Domain in Canada

In keeping with the Disney theme, it is interesting to note that any works of which Walt Disney was the sole or last surviving joint author, are now in the public domain in Canada, since he died in 1966 and Canada has a copyright term of life + 50 years. It might be interesting to review any upcoming uses of such works.

Online Service Providers – A Series of Updates

Online registration required for online service providers to maintain safe harbor

Online service providers benefit from the Safe Harbor rule. Essentially, this means that companies which host third party content will escape from liability for infringing content posted by third parties (examples include YouTube, Google and Facebook, where users generate content). The American legislation (Digital Millennium Copyright Act (“DMCA”)) provides rules and guidance on how Internet copyright infringement should be dealt with, as well as guidelines on how to issue notice and takedown procedures, which enable copyright holders to notify online service providers of infringing content posted by third parties.

Designating an agent that deals with notifications (i.e. take down requests) received from copyright holders alleging copyright infringement is an essential component for online service providers to maintain their limitation of liability. In order to designate an agent, an online service provider must (i) provide contact details of that agent available on its website and (ii) provide the same information to the US Copyright Office, which maintains a directory for public use.  Upon notification from the copyright holder of infringing content, the designated agent has further statutory obligations, including the removal of material identified as infringing. Appropriate designation of an agent is of great importance, as failure to comply in BWP Media USA v Hollyood Fan Sites (S.D.N.Y. 2015) led to the denial of safe harbor protection.

***The US Copyright Office is currently requiring each online service provider to assign an agent to receive notifications of alleged infringement (as required under the DMCA) on a new online system, which can be found here.***

The US Copyright Office will no longer accept paper designations, and the deadline to assign a designated agent on the new online system is December 31 2017. Until 31 December 2017, an agent compliantly registered in either the old directory or the new directory will satisfy the online service provider’s obligation under section 512(c)(2) of the DCMA. Register here.

***In order for an online service provider to maintain its safe harbor from copyright infringement, it must register its designated agent on its new online system by December 31 2017.***  Register here.

Google take down requests in 2016

Between 4 January 2016 and 4 January 2017 Google removed 916 million URLs as a result of take down requests from copyright holders.

UK music industry group BPI issued the most take down requests, at 263 million – equating to an average of 763 per week. Of these requests, 95% were removed. The other 5% are still pending. The designated agent for Google would have to remove 22 URLs per hour for the entire working year in order to meet these requests, keeping in mind that this figure relates to the take down notices received from just one copyright holder, amounting to just over a quarter of the take down notices over the year.

In order to review the 915 million take down requests issued throughout the year, the take down requests would have had to have been reviewed at an average of 503,297 per working hour*. It is an interesting reflection, especially considering the challenges ahead in how we regulate copyright online.

*I haven’t taken into consideration automation or outsourcing. These numbers are to simply illustrate the sheer volume of take down requests made in 2016.

Australian online service providers ordered to block pirate websites

In December last year, Australia’s biggest online service providers (Telstra, Optus, TPG and M2) were injuncted to block user access to The Pirate Bay, Torrentz, TorrentHound, IsoHunt and SolarMovie. The court action was brought by copyright holders Foxtel and Village Roadshow. The online service providers were given 15 business days to implement the ruling in whichever manner they chose: DNS, IP address, ULR blocks or any other technical approach.

The online service providers were able to successfully argue against a rolling injunction scheme, whereby the copyright holders would be granted the discretion to issue out-of-court orders to online service providers to block mirror domains.

To further elucidate, when pirate sites are blocked, proxies often pop up to replace the blocked sites. Once these proxies are up and running, they effectively replace the infringing activity previously performed through the injuncted sites. In order to have these new proxies blocked, copyright holders must again take court action to have these new infringing sites blocked – like a judicial game of whack-a-mole. A rolling injunction scheme – allowing copyright holders to issue out-of-court orders to online service providers – would avoid the necessity for copyright holders to have to pursue another court action to block the new proxies. Richard Lancaster, the lawyer of Foxtel and Village Roadshow stated that the creation of proxies;

“is a known problem in the real world. It will be a problem that arises in the implementation of your honour’s orders. And we’re concerned – given this is the first case – that a procedure be adopted that will not create a real administrative burden for the future in having to do something unnecessary and elaborate such as the [internet firms] suggest”.

Judge John Nicholas ruled that “Whether the terms of any injunction should be varied to refer to additional domain names, IP addresses or URLs is a matter for the court to determine in light of evidence”.

Web-blocking is favoured by big creative industry, however the fast pace creation of replacement proxies, coupled with judicial reticence to issue rolling injunction schemes (in Australia, at least) appears to highlight some of the forthcoming challenges in 2017.

Space … the final frontier – ‘Star Trek: Prelude to Axanar’ denied fair use defence

Star Trek, the show that inspired the creation of an entire fictional canon, is at the forefront of a current fair use story.

“I don’t believe in a no win scenario” – Captain Kirk on the Kobayashi Maru Test

In 2015 Paramount Pictures and CBS filed court action against the makers of fan fiction spin-off Star Trek: Prelude to Axanar for copyright infringement. Fan fiction has existed for a number of years, including works such as Star Trek: New Voyages and Star Trek Continues, yet this is the first to be targeted by the big studios in a court action. The reasoning behind targeting this fan fiction project, as detailed by CBS and Paramount, was that a studio had been constructed for filming - from which future rental income could potentially be earned, Axanar tried to license out their Star Trek through products and an attempt had been made to make Axanar available to view on Netflix, all of which would lead to commercial gain for the Defendants.

A significant consequence of the ruling released this week is that the four factor fair use defence has been excluded for use by the Defendants. A brief summary of the judges reasoning in relation to the fair use aspect is found below, for the interested Trekkies among our readers.

Factor 1, ‘The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes’ (17 U.S.C. § 107(1)) (also known as the ‘transformative factor’):

The judge ruled that, even though no direct commercial benefit would be received by the defendant,

“common experience suggests that Defendants stood to gain at least indirect commercial benefit from the viewership boost which they had reason to hope would (and in fact did) result from the Axanar Works” (internal citations omitted)

The judge ruled that Axanor is not transformative as a parody because “parody must use some elements of a prior work to create a new work that criticizes the substance or style of the prior work. … Here, the Court has difficulty discerning from the Axanar Works any criticism of the Star Trek.” This factor weighed in favour of the Plaintiffs.

Factor 2, ‘The nature of the copyrighted work’ (17 U.S.C. §107(2))

The judge ruled that “the Star Trek Copyrighted works include …. a fictional universe. … The creativity in these Works and their status as published works …. are given broad copyright protections.” This factor weighed in favour of the Plaintiffs.

Factor 3, ‘The amount and substantiality of the portion used in relation to the copyrighted work as a whole’ (17 U.S.C. §107(3))

“Defendants intentionally use elements from the Star Trek Copyrighted Works to create works that stay true to the Star Trek canon down to excruciating details. … elements of the Star Trek Copyrighted Works pervade the Axanar Works. … the third factor weighs in favor of Plaintiffs.”

Factor 4, ‘Effect of the Use upon the Potential Market’ 17 U.S.C. §107(4)

“The Axanar Work is the kind of potential derivative Plaintiffs would in general develop or license others to develop … Defendants evidently intend for their work to effectively function as a market substitution to the Star Trek Copyrighted Works … The fact that Defendants distributed … for free online and intend to likewise distribute their future works may likely increase the risk of market substitution as fans choose free content over paid features.”

The exclusion of the fair use defence in this case leaves only a finding of substantial similarity for a jury (it might be safe to assume that Axanar is substantially similar to the Star Trek canon). No other defences are available. Which means that, unless a deal is struck between the parties in the meantime, resistance is futile for Axinar.

Monday, 2 January 2017

Happy New Year!

To all our readers: Happy New Year!

Thank you for reading our blog, we are looking forward to a new IP law year with you!

With our best wishes,

The 1709 Blog Team.

Friday, 30 December 2016

Delhi High Court rules that three Indian collection societies must cease to issue licences

In a blow to three Indian music copyright collection societies, the Delhi High Court has restrained them from granting any such licence till April 24th 2017. Justice Sanjeev Sachdeva, in an interim order, restrained the Indian Performing Right Society (IPRS), the Phonographic Performance Ltd (PPL) and Novex Communications Pvt Ltd from contravening section 33 of Copyright Act,  which provides that only registered societies can grant licences in respect of copyrighted work(s). 

In the order issued on the 23rd December the court ruled:

“Since the respondent 1 (Centre) and 2 (Copyright Office) have already initiated an inquiry and are taking action vis-a-vis the respondents 3 (PPL) and 4 (IPRS) and their stand is that neither of the three respondents, i.e 3, 4 and 5 (Novex) are registered in terms of section 33 of the Act, till the next date of hearing, respondents 3 to 5 are restrained from acting in contravention of section 33 of the Act..”. The  court listed the matter for a further hearing on April 24th.

In July 2015 The Delhi Organisers and Artists Society and the Mumbai based Organisers and Artists Welfare Trust said that the IPRS and PPL had been de-registered after the amendment to the Copyright Act in 2012 when it was laid down that any organisation had to re-apply for registration, which would be valid for five years. They also complained that IPRS had failed to make royalty payments to artistes.

The Event and Entertainment Management Association of India (EEMA) had filed a enquiry with the court, and EEMA said that iy had been working towards regularising and streamlining the music licensing regulatory framework for many years now. It has been engaged in a "long, slow but constant legal battle against the exploitation by the so called ‘Registered Copyright Societies’ who charge a ‘royalty’ for music played out at events." EEMA argued before the court that PPL and IPRS's registrations had lapsed in June 2013, and these had not been renewed, whilst Novex has never been registered as a copyright society.

Ankur Kalra, Secretary (Legal), EEMA, said, “The music licensing lobby (PPL / IPRS / Novex) has been engaged in illegal issuance of licences for over two years now and flouts all laws by openly threatening venues to stop events unless the licence is procured. Venues in turn pressurise event managers to do the same who despite knowing that it is wrong are forced to procure these licences to safeguard their events. The music licensing ‘societies’ today are private limited companies operating purely for profit and very little or no money actually reaches the artists. It has become an organised syndicate and when we highlighted the same to the court we got an injunction almost immediately. We will take this battle forward and ensure that all event managers, venues and police departments are educated on this matter.”

Abhishek Malhotra, Legal Counsel, EEMA, said, “The music industry has been going through a flux. While the law clearly provides that issue and grant of licences can be done only through a registered copyright society, these three entities have been effectively carrying on this business in violation of the clear legal provisions. This order as well as the government of India’s endorsement of the issues facing the users of music is a welcome development.”

The court also directed the Centre and the Copyright Office “to take action in accordance with law for any breach of provisions of section 33 by the respondents 3 to 5”. The Centre and the Copyright Office submitted that they have received complaints that PPL and IPRS were violating the Act and had already initiated an enquiry.

Monday, 26 December 2016


2016 - it's been another frantic copyright year - and buzz words and themes for the twelve months included 'the value gap' between the content industries and the technology giants, linking, that 'new public', fair use, 'transformative' art, and the ongoing reform of copyright laws - in Europe, and in particular reforms to the Digital Millennium Copyright Act in the USA. Here at the 1709 Blog we welcomed our first ever interns in October - and they are blogging already - so thank you Tibbie McInytre and David Liao - the CopyKat is grateful to them both for their continued stroking and petting. So, onwards and upwards - we've got monkeys and pirates, tattooists and cheer leaders, turtles and trolls, and Trekkies and transformers enjoy on our way to the year's denouement. 

Naruto by ?
The year kicked of with the news that the monkey was back! PETA, the not for profit organisation that campaigns to for animals' rights, failed in its attempt to get copyright in the infamous monkey selfie transferred to the black macaque monkey Naruto, who took the snap.  US District Judge William Orrick ruled that the monkey, who borrowed British photographer David Slater's camera and took the selfies, cannot own the copyright in the pictures. During a brief hearing the judge, dismissing the suit, stated: "I'm not the person to weigh into this. This is an issue for Congress and the president. If they think animals should have the right of copyright they're free, I think, under the Constitution, to do that." And Marie-Andree told us that yet another photographer (this time Donald Graham) had filed a copyright infringement suit against notorious 'appropriation artist' Richard Prince, the Gagosian Gallery, and its owner Larry Gagosian. Graham claimed that Prince used the “Rastafarian Smoking a Joint” photograph without permission in the New Portraits exhibition. Prince presented inkjet prints on canvases of images he had found on Instagram, complete with his own comments as @richardprince4nd. 

In February the Higher Regional Court Munich (OLG) decided that YouTube and its service cannot be called to account for any user generated copyright infringements. Instead, the judges found that the sole responsibility lies with individual uploaders, even though German collection society GEMA was keen to point out "YouTube generates substantial economic profits by making the videos available". Based on this decision, YouTube is currently not held financially accountable within the current legal framework when works protected by copyright are used on the platform. But read on! In the USA, despite a $25 million rebuke by a federal jury in December 2015 for contributing to piracy on its Internet service, Music publisher BMG said that Cox Communications had not learned its lesson. BMG said Cox's network continued to be used by its customers for massive copyright infringement, undermining BMG's music sales. The company asked U.S. District Judge Liam O'Grady in Alexandria, Virginia, to grant a permanent injunction to force Cox to stop the illegal file sharing saying  “Now, more than a month later, Cox’s network continues to be the site of massive, ongoing infringement of BMG’s copyrights” and  “This ongoing infringement inflicts irreparable harm on BMG.” For its part Cox wanted the jury's decision reversed as "a matter of law". In the UK, PRS for Music and Phonographic Performance Limited (PPL) confirmed that, following a strategic review commenced in 2015, the two companies would create a new joint venture focusing on serving all PPL and PRS for Music UK public performance licensing customers for both music and sound recording rights. And finally this month, The U.S. Department of Commerce’s Internet Policy Task Force published a White Paper on Remixes, First Sale, and Statutory Damages which addressed three issues: (i)  the legal framework for the creation of remixes; (ii) the relevance and scope of the first sale doctrine in the digital environment; and (iii) the application of statutory damages in the context of individual file-sharers and secondary liability for large-scale online infringement.
Phasers to kill

In March UK record label association the BPI said that its members had issued more than 200m takedown requests to Google for removal of copyright infringing links in just twelve months. The BPI, which represents the three major recorded music labels, Universal, Sony and Warner as well as many independent labels, sent its first takedown request to Google in July 2011. In 2015 the BPI sent 65m takedown requests and said they are now, perhaps understandably, calling for a more permanent solution. Donald Trump’s presidential campaign was sued by an award-winning wildlife photographers who said Trump's team were using their copyright-protected image of an American bald eagle without permission. Attorneys for Wendy Shattil and Robert Rozinski filed the civil complaint in federal court after watching a Trump presidential rally on television and noticing that an attendee was holding a campaign sign that incorporated one of their photographs of the national bird. Asim told us that the Paris Court of Appeals upheld a lower court's decision that internet access providers (ISPs) and search engines were obliged to block access and/or remove links to pirate sites and reversed the trial court's decision that the rightsholders (here movie companies) had to bear the costs associated with the implementation of such measures, with the appellate court finding that such costs should be borne by the ISPs.  In the 'Star Trek' case,  the Star Trek rights holders came back with an amended complaint that listed many of the alleged specific instances of infringement by the makers of Prelude to Axanar of what they say are copyrighted elements in Star Trek itself: These include the language and culture of alien races such as the Klingons and Vulcans, the cowl-neck uniform that Majel Barrett wore as the Enterprise’s first officer in the original series episode The Cage, and the concept of “Stardate." Some 57 instances of infringement were listed in the amended complain including the concept of dilithium crystals and phasers. Appropriation artist' Richard Prince responded to the recently-filed copyright infringement lawsuit, claiming he should be shielded from infringement charges because his use of others’ copyright-protected images amounts to fair use. Prince asked the Southern District of New York court to dismiss the case with prejudice as it was an attempt to ‘essentially re-litigate’ his controversial fair use victory against another photographer Patrick Cariou. And John updated us on not one but two public consultations on copyright, one from Brussels and one from the UK 's IPO. The Brussels offering was a consultation on two things, the role of the publisher and the "panorama" right, and the IPOs a further consultation and technical review "on changes to Section 72 of the Copyright, Designs and Patents Act 1988 (which permits the free public showing or playing of a film contained in a broadcast)."

What is the Klingon for
'Copyright' ?
In April the decade-long legal fight over Google’s effort to create a digital library of millions of books appeared to be finally over when the Supreme Court declined to hear a challenge from authors who had argued that the tech giant’s project was ‘brazen violation of copyright law’, effectively ending the legal battle in Google’s favour. Without the Supreme Court taking up the case, a federal appeals court ruling from October, which found that the book-scanning program fell under the umbrella of fair use, stood. Following on from march's reports on the 'Star Trek' case,  Marie-Andree wrote an excellent piece on whether or not the Star Trek rights owners were right to argue that the Klingon Language, “Klingonese or Klingon, the native language of Qo’noS” could be protected by copyright. Could it? Well Marie-Andree cited that 1879 case  Feist Publications, Inc. v. Rural Telephone Service Co., where the US Supreme Court ruled that a compilation of facts may be protected by copyright but only if such selection, coordination and arrangement is original enough: would that cover an invented language?  Well a modicum of originally suffices! And the song that inspired one of America’s greatest freedom fights was made the subject of a battle over its own. A California not for profit organisation filed a class-action lawsuit against the Richmond Organization and Ludlow Music over the copyright to “We Shall Overcome,” a song the Library of Congress calls “the most powerful song of the 20th century, saying that  "the song was written well before anybody copyrighted anything”. Sweden’s Supreme Court held Wikimedia guilty of violating copyright laws by providing free access to its database of photographs of artwork - without the artists’ consent. And some 400 recording artists, songwriters and groups including the Recording Industry Association of America (RIAA) called on Congress to reform existing US copyright law saying that the Digital Millennium Copyright Act (DMCA) was and is obsolete, dysfunctional and harmful,  and calling for stronger measures against the ongoing piracy troubles they face. Christina Aguilera, Katy Perry, Steve Tyler, Lionel Richie and Garth Brooks were just some of music’s biggest names want to make it harder to pirate music online calling for “drastic reforms” to the Act.

In May came the news that Pirate Party MEP Julia Reda had got herself into a bit of a pickle after a tweet on World Intellectual Property Day saying that she was “trying to read Anne Frank’s Diary” but couldn’t because of copyright laws. The Anne Frank Foundation has claimed that despite Anne's death in 1945,  the Diary is still protected under EU law as Anne's father Otto was the co-author of the Diary, he had edited the published editions, and he didn't die until 1980. However, putting aside whether or not the book should be in the public domain,  Canadian poet and head of the Writers Union of Canada, John Degen, pointed out that Ms Reda could of course read the book (available on Kindle for as little as $1.99) - it was just that she did't want to pay to read it - and her 'struggle' somewhat paled into insignificance when compared to Frank's own persecution at the hands of the Nazis. YouTube promised to update its Content ID system - not just to appease the record companies and movie studios who complain about it is remarkably unsophisticated nature (remembering that parent company Google is a leading technology company), but also to appease YouTubers who say that their material is sometimes taken down by mistake, and revenues they are due withheld. Universal Music and Capitol Records obtained summary judgment against IFP and parent company Global Eagle, an in-flight airline music licensing company, and the two recorded music companies could now look forward to a jury deciding the quantum of damages to be awarded, with reports saying this "could be worth hundreds of millions of dollars." And we received our first ever correction over the use of Klingon on this Blog - thank you qurgh lungqIj for your wise and lucid comments. You might begin to suspect there is more than one Trekkie writing for this Blog .........

Is sampling back in vogue?
June began with the news that The Court of Justice of the European Union (CJEU) had been asked to say whether the making available of TV broadcasts in rehabilitation centres should be regarded as an act of communication to the public in Reha Training, C-117/15essentially asking whether the making available of TV broadcasts by means of TV sets on the premises of a rehabilitation centre fell within the scope of Article 3(1) of the InfoSoc Directive and Article 8(2) of the Rental and Lending Rights Directive; The Grand Chamber's judgment substantially confirmed the Opinion of Advocate General Bot, although not relying on the four elements indicated therein. The Court highlighted that there are some differences between relevant provisions in the InfoSoc and Rental and Lending Rights directives. However, it concluded that there is no evidence that EU legislature intended the concepts of 'communication to the public' differently in these two pieces of legislation. Here the court found on the facts that the operator of a rehabilitation centre had deliberately transmitted protected works to patients by means of TV sets installed in several places on the premises. As such, he was committing an 'act of communication' and; The patients of a rehabilitation centre constitute a 'public' that can enjoy the works broadcast by means of TV sets thanks to the indispensable intervention of the centre operator; This public is also 'new' in that it was not taken into account by the relevant copyright owner. In another case, the question of whether an ISP loses its safe harbour protection because, upon obtaining actual knowledge or awareness of third-party illegal content, it has not acted expeditiously to remove or disable access to such content was posed. The Tribunale di Roma (Rome Court of First Instance) had to decide, and having looked at a range of precedents held that (on the facts) the defendant ISP should be liable for the damages caused to the claimant by such delay. A majority of the U.S. 9th Circuit Court of Appeals decided that Madonna did not violate copyright law when her producer allegedly used a short section of music taken from another recording for her hit song “Vogue”, casting doubt on the strict approach taken by the 6th Circuit Court of Appeals in the leading case of Bridgeport Music, Inc., et al. v. Dimension Films. Guns N Roses and now AC/DC frontman Axl Rose filed six DCMA take down notices in what was widely seen as an attempt remove an unflattering photo of him from a 2010 Canadian concert from the web. And TechDirt reported on two more decisions from the US courts that confirmed that "legal threats against alleged infringers, based on "nothing more than IP addresses", will not succeed in the courts.  In the first case, New Jersey Judge Kevin McNulty disagreed with Malibu Media's request for default judgment, pointing out that the limited information it was working with could not rule out a successful defence being raised by the accused infringer and Oregon Magistrate Judge Stacie Beckerman said that as only facts the Plaintiff pleaded in support of its allegation about an alleged infringer was that he was the subscriber of the IP address used to download or distribute the movie, and that he was sent notices of infringing activity to which he did not respond "is not enough". And befuddled by lies, exaggerations, suppositions and multiple nonsense advanced by politicians and commentators of all hues, England voted for Brexit. 

Black and gold
July saw new copyright legislation come into effect in Cayman to provide greater legal protection for Cayman’s musicians, visual artists and others in the creative fields, the first step in modernising intellectual property legislation. Australia’s Full Federal Court confirmed digital data streams are not protected by the Copyright Act. The court upheld Justice Annabelle Bennett’s December 2014 ruling that held that copyright did not subsist in digitally streamed broadcasts. Commissioner of Taxation v Seven Network Limited revolved around whether payments made to the International Olympic Committee for broadcasting rights by Seven were royalties and therefore taxable. The court found that “a cinematograph film in which copyright subsisted under the Copyright Act is not made until the first copy is made” and that there was no way for the broadcast to be reproduced without an external receiving device. And in a fascinating contribution our guest blogger Divya Mirlay (Christ College, Bangalore) looked copyright in colours - and the specific copyright implications surrounding Vantablack - the blackest of all blacks.

In August, tattoo artists Solid Oak Sketches lost an important battle in their claim against the animators behind the NBA 2K video game series - which feature  several NBA stars including James, Kobe Bryant and Eric Bledsoe - tattoos and all! The tattoo designers were seeking actual damages in an amount to be determined at trial, or statutory damages and attorneys' fees — but a New York federal judge Laura Taylor Swain ruled out the latter saying "[I]n order to obtain statutory damages and attorneys' fees, a plaintiff must have registered its copyright prior to the alleged infringement" and the copyrights in the tattoos were not registered until 2015 - AFTER the alleged infringements began. Cox Communications were ordered to pay that $25 million dollar penalty for copyright infringements to the music rights management company BMG by a federal judge. The ruling follows the earlier jury decision which found Cox liable for illegal movie and music downloads by its customers. The company's behaviour amounted to wilful infringement of copyright in the eyes of the jury. The Eastern Virginia District Court dismissed Cox’s appeal of the earlier verdict, and ordered Cox to pay up - a ruling which may have widespread repercussions for online copyright infringement in the US as the court decided that Cox did not do enough to stop users pirating music from BMG, and therefore did not qualify for Digital Millennium Copyright Act (DMCA) ‘safe harbor’ protections. And it came as no surprise that Pharrell Williams, Robin Thicke and TI filed their appeal against the verdict in the 'Blurred Lines' case that saw them ordered to pay $5.3m (reduced from $7.3 million) and pay over 50% of songwriting and publishing revenues to the family of Marvin Gaye, after a jury ruled last year that their song copied Gaye’s 1977 hit 'Got to Give It Up'.

September's headline in Europe was the decision in GS Media (C-160/15) and Eleonora reported that the EU Court of Justice had decided that hyperlinking to content placed online elsewhere is a communication to the public if the hyperlinker had (or should have had) knowledge that the content had been posted online without the consent of the copyright holder. According to the judgment, the Court had freedom of expression and information in mind with its ruling. By requiring knowledge of the illegal nature of the content referred to, internet users linking to it in good faith are meant to be protected. To balance things out, however, the Court also held  that knowledge that the content the link refers to is illegal must be presumed iuris tantum (i.e. until rebutted) if the posting of hyperlinks “is carried out for profit”.  Over on the IPKat Eleonora posted one of her regularly updated and extremely useful tables on linking and copyright (see above!). Staying in Europe, the European Commission published their Digital Single Market copyright reform proposals, including a draft Directive of the European Parliament and Council on copyright in the Digital Single Market. The proposed Directive, alongside the ‘Regulation of the European Parliament and Council laying down rules on the exercise of copyright and related rights applicable to certain online transmission of broadcasting organisations and the re-transmission of television and radio programmes’, represent the European Commission’s efforts to modernise the copyright framework in order to further realise the European Digital Single Market. In announcing the publication, President Junker said: “Artists and creators are our [Europe’s] crown jewels” going on to say “I want journalists, publishers and authors to be paid fairly for their work.” There were many many responses! And then even more

In October, Marie-Andree updated us  on the work of the Commission of European Affairs of the French lower Chamber, the Assemblée Nationale who had been looking af report on copyright protection in the European Union, written by Representatives Marietta Karamanli and Hervé Gaymard (the Rapporteurs). And what did the Rapporteurs suggest? Well highlights included an opposition to Julia Reda's suggestion to promote the mandatory harmonisation of exceptions of the rights of reproduction and communication to the public in all the Member States: the Rappurteurs were suspicious of the American concept of 'fair use', because it is unpredictable and “potentially unfavourable to creation” and is even “likely to cause significant damage to the authors” and they "welcom[ed] the proposal for a regulation for cross-border portability of content, which will allow users to enjoy, wherever they are in the territory of the Union, the programs to which they subscribed in their State of habitual residence. But they stress the idea that portability should be strictly temporary, and that temporality must be a precise definition, without which the settlement would disproportionately infringe the principle of territoriality of rights, which is the base of the financing system for the creation, notably in France.” Marie also added another flavour of France, when the French law for a Digital Republic (Loi pour une République Numérique) finally came into force on October 7th. Article 39 modifies article L. 122-5 of the French intellectual property Code, and now recognises some limited freedom of panorama rights - so it is now legal in France to reproduce and to represent, without having to secure the authorisation of the copyright holder, “architectural works and sculptures, located permanently on public roads, made by natural persons to the exclusion of commercial uses." Following on from the turmoil and tussles for the writers of "Blurred Lines" and "Stairway" to Heaven, in her first CopyKat, Tibbie updated us on Ed Sheerhan's attempts to have a $20 million lawsuit over the copyright in his hit "Photograph" dismissed in the Californian federal court. The Court of Justice of the European Union ruled that the doctrine of exhaustion of distribution rights in computer software does not apply to back-up copies.  The Music Managers Forum published 'Dissecting the Digital Dollar Part 2' saying "While recognising that record companies continue to make significant investments in new music, many in the music community believe that there needs to be a frank conversation about how streaming income is shared" and "Many people felt that the share received by heritage artists, session musicians and songwriters needs particular consideration, and that a ‘performer equitable remuneration’ system like that that operates in the radio sector and the ‘contract adjustment mechanism’ proposed in the draft European copyright directive might be ways to address some of these concerns". In Verwertungsgesellschaft Rundfunk GmbH v Hettegger Hotel Edelweiss GmbH, C-641/15, Advocate General Szpunar opined that "the communication of a television or radio signal through television sets installed in hotel rooms does not constitute communication to the public of the broadcasts of broadcasting organisations in a place accessible to the public against payment of an entrance fee within the meaning of that provision." And on the 31st October the question of what is the appropriate test to determine whether a feature of a “useful article” is copyrightable under the Copyright Act was posed to the Supreme Court in Star Athletica, LLC v. Varsity Brands, Inc. We await the outcome with interest.

In November,  the Court of Justice of the European Union (CJEU) issued its decision in Soulier and Doke, C-301/15 which held that Article 2(a) and Article 3(1) of the InfoSoc Directive must be interpreted as precluding national legislation that gives an approved collecting society the right to authorise the reproduction and communication to the public (here out-of-print books) and NOT authors with the right to authorise the making of acts restricted by copyright is incompatible with EU law.  The French Cour de cassation, France’s highest judiciary court, held on that a corporation cannot have moral rights over a work, even if it had commissioned the work or if the work was created by one of its employees.  Roosa Tarkiainen (University of Southampton) penned an excellent update on the CJEU's decision in Microsoft which examined the principle of digital exhaustion as applied to computer programmes, with Roosa opining that the decision "confirmed the rule in UsedSoft that distribution rights in computer programs are extinguished upon sale, allowing for the creation of a secondary market for these programs under Article 4(c) of the Software Directive. "Although questionable on technical grounds, the Court was ultimately carrying out the difficult balancing act between giving effect to free movement in the internal market through the principle of exhaustion, and protecting the rightholder – in this case from being undercut by criminal activities.”  Richard Prince was sued by yet another photographer over the use of a photograph in his New Portraits series. This case is Eric McNatt v. Richard Prince, 1:16-cv-08896, Southern District of New York (SDNY). The case was brought by the founding member and bassist of Sonic Youth, who says Prince downloaded his photograph from the web, where it had been published with a copyright notice, and uploaded it on his own Instagram account.  Prince has since deleted this account. It is claimed that Prince then wrote three lines of comments under the photograph:  “Portrait of Kim Gordon,” then “Kool Thang You Make My Heart Sang You Make Everythang Groovy” and finally added a string of music-related emojis. The Donald Graham v. Richard Prince case filed in January was of course still pending at the SDNY, and in November attorneys for Graham sent a letter to Judge Sidney Stein from the SDNY to alert him of the decision in TCA Television Corp. v. McCollum Second Circuit case (2nd Circ. Oct. 11, 2016), which, in their view, “undermines Defendants ‘motion to dismiss on fair use grounds.” BUT - we still do not have a “so transformative it is fair use” test. In England, the latest case against a publican who used a foreign decoder card to show Premiership football was decided with David telling us that the Court of Appeal maintained the distinction between the lawful enforcement of intellectual property rights from any alleged anti-competitive agreements between FAPL and foreign broadcasters to restrict the supply of foreign commercial cards outside the territory in which that broadcaster operates in The Football Association Premier League Limited v Anthony William Luxton, dismissing the publican's appeal. YouTube and German collection society GEMA finally reached a licensing agreement - meaning German consumers can now finally (legally) use YouTube to stream music videos. And finally - members of 1960s rock group The Turtles settled their action against Sirius XM in California over what the band claimed were unpaid royalties for the use of 'Pre 1972' copyrights - but this was most certainly NOT the end of this long running saga.

The Turtles have kept us busy
So to December, and Mirko Brüß (Rasch) alerted us to the fact that the Regional Court of Hamburg (Landgericht) had just provided us with a decision that appears to be the first ruling from Germany to apply the GS Media principles [Case no. 310 O 402/16] and the court came to the conclusion that (commercial) linking to unauthorised content is infringing, even when it is quite hard to determine the infringing nature of the work that is being linked to finding that the defendant operated a website for commercial gain on which he had linked to a work that was not (in this form) published with the rightholder’s consent, the court concluded that the defendant had "infringed the claimant’s right of communication to the public."  There was a Swedish application of GS Media too, in a case involving a video of a bungee jump, a snapped cord and a plunge into crocodile infested waters! The Center for International Intellectual Property Studies (CEIPI) published its Opinion on the proposed European Commission’s copyright reforms, focusing on the introduction of neighbouring rights for press publishers in EU law and concluding that the EU should "refrain from advancing this legislative action.” Academic publishing houses OUP and CUP suffered yet another defeat in India in their litigation against Delhi University and a photocopy shop when a Divisional Bench of the Delhi High Court ruled against them on appeal - on the grounds that photocopying for educational use was covered under Section 52(1)(i) of the Copyright Act, 1957 - which states that the “the reproduction of any work—(i) by a teacher or a pupil in the course of instruction” shall not be considered as an infringement of copyright. The Central District of California Court heard both parties in the Paramount v. Axanar case. Plaintiffs Paramount Pictures and CBS Studios moved for partial summary judgment for direct, contributory and vicarious copyright infringement claims against Axanar Production and its owner Alec Peters. The Defendants moved for summary judgment - noting the “longstanding tradition of Star Trek [f]an [f]iction”,  and one argument is that their film is "transformative - going where no man has gone before”. Andy brought us up to date with the most public of all the copyright trolling sagas  - here the news that the two surviving attorneys behind the 'Prenda Law' operation, Paul R Hansmeier and John L Steele, who had already repeatedly annoyed numerous US Judges, were now facing federal indictment on charges of wire fraud, mail fraud, conspiracy to commit mail fraud and wire fraud, conspiracy to commit perjury and suborn perjury, and conspiracy to commit money laundering. And yet another decision in the 'Turtles' cases - here New York's highest court ruling that Sirius XM does not have to get permission, or pay compensation, to the owners of pre-1972 music recordings in order to play their tracks - The Court of Appeals determined that New York common law does not recognise a "public performance right" in their decision in Flo & Eddie v. Sirius XM Radio, overturning Southern District Judge Colleen McMahon's decision which had denied Sirius' motion for summary judgment in 2014, when McMahon found that New York common law did provide a public-right performance. which at the time concurred with the ruling by U.S. District Judge Phillip Gutierrez in California that California state law, as it is written, gives the owner of master recording exclusive performance rights. This though, was contrary to the ruling by U.S. District Judge Darrin Gayles in Florida who ruled in favour of SiriusXM's, saying he understood why his judicial colleagues in other states ruled differently, noting that California and New York are creative centres of culture, and laws have been enacted there to protect artistic rights, but that there was no legislation or case law supporting such a property right in Florida and nor would he create one, saying that is the job of the Florida state legislature. The majority of New York's senior court has now taken the same approach - there is no such public performance right in New York state - and they were not about to create one. 

Donald Trump by Gage Skidmore
As the year ended the content owners, included movie companies, publishers, recorded music labels, games companies and television groups continued to press for “strong protections for intellectual property rights”. Nineteen US music industry organisations delivered an open letter to President-elect Donald Trump pointing out that the likes of YouTube, Google and Facebook have thrived on 'free' music and what they term the "value grab", and that "sophisticated technology corporations can do better" at fighting piracy, and and shouldn't be able to hide behind legislation such as safe harbor - which has arguably allowed the technology and telecoms giants to grow and grow at the expense of the music industry and noting "Strong protection for intellectual property rights will assure growth in both creativity and technology, benefiting the American economy as a whole." The EFF had their own take on this, and at the same time, the tech trade groups penned a letter to U.S. regulators warning against proposed European Union copyright reforms sating “The Commission’s Proposal on copyright in the Digital Single Market risks undermining trans-Atlantic commerce and internet openness” in a letter that was sent to Secretary of State John Kerry, Secretary of Commerce Penny Pritzker and U.S. Trade Representative (USTR) Michael Froman. The letter's signatories included the Computer and Communications Industry Association (CCIA), Consumer Technology Association (CTA), Information Technology Industry Council (ITI) and the Internet Association (IA) — groups that represent a number of major tech companies including Google parent Alphabet, Amazon and Facebook.

We have lost some true giants of music this year, and David Bowie and Prince are just two of the outstanding creative talents who passed on. I write this on the news of the untimely death of George Michael aged just 53, another sad sad loss. So all we can do is wish that you 'live long and prosper'.
You can catch up with Eleonora's 2016 Copyright Awards on the IPKat here

And here's a link to the EFF's This Year in U.S. Copyright Policy: 2016 in Review

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