Monday, 24 April 2017

Higher Regional Court of Düsseldorf applies CJEU Mc Fadden decision

1709 Blog readers will recall that last September the Court of Justice of the European Union (CJEU) issued its decision in the important Mc Fadden case [here and here], a reference for a preliminary ruling from Germany.

The CJEU ruled that the provider of a password-free, free WiFi can be requested to have his internet connection secured by means of a password. 

Via 1709 Blog friend Mirko Brüß (Waldorf Frommer Rechtsanwälte) comes the news that a German court (though not the one that had made the Mc Fadden reference) has recently applied the CJEU judgment, and the principles laid down therein 
[Mirko also wishes to let readers know that a new reference on the right of communication to the public and filesharing was made by the Regional Court of Munich on 17 March last (Case No21 S 24454/14): details are not yet available on the Curia website, but as soon as they are this blog will provide relevant information].

Here’s what Mirko writes:

In a judgment on 16 March 2017 the Higher Regional Court of Düsseldorf requested the operator of an open WiFi (and a TOR exit node) to take action against repeated copyright infringements by users of his IP-addresses (case no. I-20 U 17/16). 

This appears to be the first time a German court has dealt with such a case after the CJEU handed down its Mc Fadden decision on 15 September 2016 ... At least, this is the first publicly available decision. 

The ruling of the court does have wide implications for the operators of open WiFi networks, so-called hotspots.

Tobias McFadden
Factual background

The defendant was an operator of five so-called hotspots, ie access points that can be used by anybody to log into the internet using the defendant‘s internet connection. It remained disputed between the parties whether the defendant operated his network commercially or privately, and whether or how users needed to register themselves to be able to use the network. The defendant claimed that users were asked to refrain from ‘illegal activities’, but did not explicitly ask users to refrain from sharing copyright-protected material via peer-to-peer networks. The defendant also operated a ‘TOR exit-node’ on his IP-address, thus enabling anonymous users to access the internet via his IP address (see this infographic on general TOR functionality).

The claimant is the owner of copyright in a computer game. He had noticed the defendant’s IP-address on several occasions as being the source of an infringing download offer of other works via a BitTorrent network. After obtaining knowledge of the defendant‘s name and address via the court proceedings provided for such cases in Germany (§ 101 Abs. 2, 9 Urheberrechtsgesetz, = UrhG, German copyright code), the claimant sent several cease-and-desist letters to the defendant in 2011, asking him to stop the infringing activities.

However, further infringements were found in 2013, even after the cease-and-desist letters were served to the defendant. At this point, the claimant took matters to court, and obtained a judgment of the District Court of Düsseldorf, that enjoined the defendant from aiding third parties to make available to the public the claimant’s game via peer-to-peer networks and via his own IP-addresses. The court also ordered the defendant to pay the claimant's out-of-court costs for EUR 651,80 (judgment on 13 January, 2016, case no. 12 O 101/15).

The defendant appealed the decision. He claimed that unknown users of his network were the culprits, and he had no way to identify them and no obligation to stop their activities.

View of Düsseldorf
The Higher Regional Court‘s decision

The Higher Regional court of Düsseldorf rejected the appeal and upheld the first decision. While the Regional Court’s judgment was issued before the CJEU decided Mc Fadden, the Higher Regional Court had knowledge of this decision and applied it to the case.

In so doing, the court found that it did not matter whether the defendant operated the hotspots commercially or privately. Furthermore, it did not matter to the court whether the copyright infringements were committed by users of the Hotspots or users of the TOR exit-node.

In all scenarios, the defendant was liable for the infringements and was requested to take reasonable measures to prevent further infringements. To justify this, the court cited Mc Fadden, especially paras 80 – 96. The judges found that, because of the earlier infringements, the operator should have taken reasonable measures to ensure that his users would not continue to infringe third-party copyrights. With regards to the WiFi network, the court sided with the CJEU and ruled that password-protecting the internet connection may dissuade the users of that connection from infringing copyright, provided that such users are required to reveal their identity in order to obtain the required password and may not therefore act anonymously. If this could have been asked of the defendant irrespective of earlier infringements was left undecided by the court.

With regards to the TOR exit-node being the possible source of the infringements, the court found that the defendant could have and should have taken measures against copyright infringements by disabling peer-to-peer communication via the TOR network. It remained undisputed between the parties whether this is technically possible, so the court took such a measure for granted.” 

Sunday, 23 April 2017

CopyKat - April

Beyoncé attempts to “kick out” infringement claim
As previously covered in the CopyKat here, a copyright infringement claim has been made against Beyoncé for samples taken from Messy Mya (Anthony Barré) – the singer has now responded by asking a federal judge in Louisiana to dismiss the claim. First, the filing claims that the sample amounts to no more than 10 seconds and falls within fair-use doctrine, especially as the raw material was then allegedly “transformed”.  Secondly, and admittedly outside the scope of the application, it is claimed the material was licenced from Barré’s family. Source here

Fan subtitles illegal
The Amsterdam District Court has handed down a recent decision in a claim made by the “Free Subtitles Foundation” (Stichting Laat Ondertitels Vrij) against BREIN, the latter of which has been active in taking fan subtitles and translations offline.
The lawyer acting for the Free Subtitles Foundation, Camiel Beijer, had previously told TorrentFreak that the case revolved around two issues:
  1. Whether the creation and publishing of film subtitles is an act only reserved to the maker of the film work in question; and
  2. A review of the conduct of BREIN against people who create and reproduce subtitles.
While hoping for an outcome which would favour fair-use, the Court in fact reached the opposite decision and held that subtitles can only be created and distributed after permission has been obtained from copyright holders – anything else would amount to infringement. With the potential to set a precedent for “fansubbing”, see here for more details.

Upcoming events
Dr Eleonora Rosati, a member of the 1709 Blog Squad, will be speaking at the following events:
  • IPSoc’s event “Latest Developments in copyright”: this will be held on Wednesday 10 May 2017 from 18:30 to 21:30 at Simmons & Simmons offices at 1 Ropemaker Street, EC2Y 9SS, London United Kingdom. IPSoc is a society for junior IP practitioners from all areas of intellectual property which hosts CPD accredited educational and social events for members to learn and socialise in a fun and relaxed environment. 2016/2017 membership will need to be confirmed before you can sign up for this event, and will also allow you to sign up to other events. The membership form and further information on membership can be found at For any queries relating to membership, please contact the Membership Secretary (
  • ASK Centre (Art, Science and Knowledge) at Bocconi University will be hosting a seminar “Second-hand Markets for Digital Copies - An EU copyright chimera?” on Friday 5 May 2017 at 12:30pm in Room 32 via Sarfatti 25. Registration is required here.

 Open Call for Speakers – CopyCamp

The biggest conference about social and economic aspects of copyright in Europe invites our prospective speakers to submit presentation proposals on the following:
·       business models, heritage digitization, remix
·       health, food, security, and exclusive rights
·       text and data mining, machine learning, online education
·       the Internet of Things: autonomous cars, smart homes, wearables
·       hacking government data, public procurement, public aid in culture

Deadline is 31 May 2017 – for more details and how to apply, see here.  

Copyright or Wrong?
Finally, for those that may have missed it, copyright lawyer and author Richard Taylor discussed copyright law in the digital age on BBC Radio 4 last Friday – still available here for those who wish to listen.

Monday, 17 April 2017

Easter COPYKAT Part 2

Appropriation art and fair use, the latest twist – the estate of Andy Warhol sues photographer Lynn Goldsmith over ‘Prince’ series

The legal status of most (if not all) appropriation art cases within the U.S. hinge on the court’s case-by-case analysis of the fair use doctrine. Many recent cases have involved Richard Prince and his artworks (more information on this can be found here and here). This writer has always found appropriation art fascinating. From Handel’s famous borrowings to the ground-breaking ‘It Takes a Nation of Millions to Hold Us Back’, taking something old and re-imagining it enriches our culture. Within the jurisdiction of the US, the contentious issue has always been (and will always be) whether the new use of the work falls under fair use, or whether it falls outwith the doctrine and is therefore an infringement of copyright.

Andy Warhol
The estate of Andy Warhol is at the centre of the most recent twist relating to the interaction between appropriation art and copyright law. In an interesting turn of events, the estate of Warhol has pre-emptively filed suit against photographer Lynn Goldsmith. Goldsmith had complained to the Warhol Foundation that Warhol’s 1984 ‘Prince’ series infringes her copyright in a publicity photograph taken in 1981. Goldsmith reportedly stated in an email to Daily News that, “I believe that Warhol infringed my rights and I will oppose their action and counter claim for copyright infringement.”

Amongst the four causes of action in the complaint submitted by the estate, a declaratory judgement of fair use is being sought. The complaint reads: “Although Warhol often used photographs taken by others as inspiration for his portraits, Warhol's works were entirely new creations… As would be plain to any reasonable observer, each portrait in Warhol’s Prince Series fundamentally transformed the visual aesthetic and meaning of the Prince Publicity Photograph.”

The complaint is also seeking declarations that Warhol’s Prince Series does not infringe Goldsmith’s copyright and that any potential copyright claims are barred by the statute of limitations (set at three years under § 507 of the US Copyright Act) and the doctrine of laches. Therefore, if the court action does eventually come to fruition, a fair use analysis may not be necessary if the court finds in relation to any of the other causes of action. The Copykat will no doubt issues updates on this case as they come.

Ed Sheeran’s ‘Photograph’ suit is settled

Ed Sheeran
In her very first post for the 1709 blog, this writer covered Ed Sheeran’s ‘Photograph’ lawsuit. The suit was brought by Martin Harrington and Thomas Leonard in relation to their 2010 single ‘Amazing’. The two songwriters alleged in the initial lawsuit that Ed Sheeran’s ‘Photograph’ was ‘verbatim, note-for-note copyright’.

This case is now settled, with full details of the deal having been kept confidential. However,
according to the Hollywood Reporter, songwriting credits on the BMI database relating to Ed Sheeran’s Photograph have now been updated - the two plaintiffs Martin Harrington and Thomas Leonard are now listed as co-authors alongside Ed Sheeran and Johnny McDaid.

US Safe Harbour – moderators with actual or ‘red flag’ knowledge of infringement might disqualify platforms from safe harbour protection

Safe harbour is the qualified limitation of liability for hosting providers which host third party content, where users have uploaded infringing content (§ 512 of the US Copyright Act). Safe harbour was introduced through the Digital Millennium Copyright Act (“DMCA”) nearly two decades ago.

The 9th Circuit recently issued a ruling in Mavrix Photographs v LiveJournal, which states that; where volunteer moderators can be legally classified as agents of a company, and that said moderators had actual or ‘red flag’ knowledge of infringement in posts they reviewed and authorised, a company might lose its safe harbour protection.

The case surrounds 20 photos belonging to celebrity news photo agency Mavrix. These photos had been published (without Mavrix’s permission) on the gossip site LiveJournal, specifically, its blog ‘Oh No They Didn’t’ (“ONTD”). Of significant importance to the case, the ONTD blog content is uploaded by users. However, before this content is published on the site, it is reviewed by a moderator to ensure adherence to site rules.

Rather than issue a takedown request, Mavrix chose instead to file suit against LiveJournal for copyright infringement. LiveJournal subsequently invoked the safe harbour defence. LiveJournal’s downfall in this case was the fact that it employs a team of volunteer moderators who review all posts according to the website’s rules before any posts are published on the site. According to the court, if the moderators can be classified as agents of LiveJournal, and the agents had ‘red flag’ or actual knowledge of copyright infringement, the safe harbour exception may not apply.

Judge Paez states that “Although LiveJournal calls the moderators 'volunteers,' the moderators performed a vital function in LiveJournal’s business model. There is evidence in the record that LiveJournal gave moderators express directions about their screening functions, including criteria for accepting or rejecting posts. Unlike other sites where users may independently post content, LiveJournal relies on moderators as an integral part of its screening and posting business model.”

The Electronic Frontier Foundation has criticized the decision, stating that “The DMCA does not forbid service providers from using moderators … many online services have employees (or volunteers) who review content posted on their services, to determine (for example) whether the content violates community guidelines or terms of service. Others lack the technical or human resources to do so. Access to DMCA protections does not, and should not, turn on this choice."

This case is reminiscent of the Grooveshark case, where safe harbour protections were denied where employees uploaded infringing content in order to attract users to the service, as also the MP3tunes case, where the  company’s inadequate repeat infringer policy cost it its safe harbour protection.

Pornhub ordered to hand over details of copyright infringers

As a site that relies on content uploaded by third party users, Pornhub falls under the DMCA safe harbour protection. While most copyright owners submit DMCA takedown requests as a means of controlling their copyright, Foshan Limited – known for a particular type of porn brand – has obtained a DMCA subpoena compelling Pornhub to hand over all information available on infringing individuals by 1 May. This includes names, email addresses, IP addresses, user and posting histories, physical addresses, telephone numbers, and any other identifying or account information. The subpoena was issued by a federal court in California.

When Foshan Limited receives the information covered under the subpoena (that is, if Pornhub doesn’t appeal), it may potentially launch legal action against the infringers.

TorrentFreak asserts that, “As far as we’re aware, this is the first time that a rightsholder has used a DMCA subpoena to obtain information about Pornhub uploaders. And since it’s a relatively cheap and easy way to expose infringers, this might not be the last.”

In another recent case, Malibu Media, LLC v Doe, a similar subpoena has been issued to the Internet Service Provider of an alleged infringer who has illegally uploaded pornography. This time, proceedings took place in the district court of Connecticut.

In this case, the subpoena issued had several caveats to protect the identity of the alleged infringer. As reported by William Dalsen, these are “First, the court limited the subpoena solely to the name and physical address of any subscriber associated with the IP address at issue, and not any additional contact information. Second, the court required the ISP to delay its response to the subpoena, pending notice to the subscriber of the lawsuit and of the subpoena, notice to the subscriber that the ISP would comply with the subpoena, and after allowing the ISP itself an opportunity to quash the subpoena. Third, the purported defendant had 60 days from notice of the subpoena to move to quash the subpoena. Fourth, the court would permit the purported defendant to litigate the subpoena anonymously. Finally, plaintiff could not publicly file any identifying information about the supposed defendant without further order of the court.”

These unusual caveats reflect the court’s concern that a defendant, having been accused of distributing pornographic content, may feel coerced into settling any lawsuit merely to avoid being publicly named in that suit.

The photo of Andy Warhol is courtesy of moscot, under the CC BY-SA 4.0 licence.