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! 

Wednesday, 21 December 2016

Sirius XM triumph in New York appellate court

New York's highest court has ruled 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 in the case brought by the owners of The Turtle's 1967 hit "Happy Together." 

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. The Court of Appeals' ruling comes in response to a certified question from the U.S. Court of Appeals for the Second Circuit, which inquired in April whether New York's common law provides copyright protections for recordings not covered by federal law. Southern District Judge Colleen McMahon had denied Sirius' motion for summary judgment in 2014, finding that New York common law did provide a public-right performance 

The ruling comes just weeks after a settlement between the Turtles members and SiriusXM in a related lawsuit in California. That settlement, which also covers class action claims on behalf of other performers, called for payouts of up to $99 million (an amount that is likely to be reduced as a result of  this ruling). U.S. District Judge Phillip Gutierrez ruled against SiriusXM in 2014, holding that California state law, as it is written, gives the master recording owner exclusive performance rights.

In Florida a court found that there was no state law to protect pre-1972 recorded works.  U.S. District Judge Darrin Gayles 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 it must be the job of the Florida state legislature to address the issue, and that a decision to plug the gap would bring up a host of other issues such as resolving who sets and administers licensing rates, who owns sound recordings for dead artists and what exceptions there might be to a public performance right. 

In a similar approach, the New York Court of Appeals (in a split 4-2 decision) said that whilst it understood the anomalies in copyright laws, it should be up to Congress to define the public performance rights sought by creators of the Turtles' music, as it did for post-1972 recordings under the federal Copyright Act of 1976.

Judge Leslie Stein for the majority noted that the digital age, satellite technology and now the internet had allowed subscription music on-demand services such as Sirius to become lucrative and this has distorted the previous "symbiotic" relationship between artists and broadcasters, where it was advantageous to both sides to play music recordings publicly saying for the majority:

"Indeed, it would be illogical to conclude that the right of public performance would have existed for decades without the courts recognizing such a right as a matter of state common law, and in the absence of any artist or record company attempting to enforce that right in this state until now […]. Simply stated, New York’s common-law copyright has never recognized a right of public performance for pre-1972 sound recordings. Because the consequences of doing so could be extensive and far-reaching, and there are many competing interests at stake, which we are not equipped to address, we decline to create such a right for the first time now. Even the District Court here, while finding the existence of a common-law copyright of public performance in sound recordings, acknowledged that such a right was “unprecedented,” would upset settled expectations, and would “have significant economic consequences” … Under these circumstances, the recognition of such a right should be left to the legislature."

Stein was joined by Judges Eugene Pigott Jr., Eugene Fahey and Michael Garcia.

Judge Jenny Rivera wrote in a dissent that the common-law right of public performance in New York has always been recognised as a "broad and flexible" one that the court should now extend to the pre-1972 sound recordings in the new age of satellite broadcasting saying 

"I reject a parochialism that justifies turning a blind eye to the exploitative practices of today's music industry made possible by technological advances and that, as a consequence, excludes from our common-law copyright in sound recordings a quintessential property interest in the use of these works," 

Judge Sheila Abdus-Salaam joined in Judge Rivera's dissent. Chief Judge Janet DiFiore took no part in the decision.

However Judge Fahey wrote a concurring opinion in which he said he believed that the common-law right of public performance should apply to the on-demand services sold by Apple Music, Spotify, Rhapsody and Amazon's Music Unlimited where consumers hear one song at a time from massive catalogues without downloading the individual songs, as listeners can through iTunes. Fahey said, in his view, pre-1972 public performances are protected in such on-demand "rental or lease" use of the songs.

In a related but separate matter, Capitol Records (now part of the Universal Music Group) has said it will appeal to the Supreme Court of the United States to answer the questoin of whether 'safe harbor' provisions brought in by the Digital Millennium Copyright Act should apply to pre-1972 sound recordings. In June the Second Circuit court ruled in favour of the Vimeo, saying that exempting older recordings from the safe harbour principle would “defeat the very purpose Congress sought to achieve in passing [it]”. The Second Circuit then refused to rehear the case in August and now Capitol has filed papers with the Supreme Court. arguing that “Section 301(c) of the Copyright Act explicitly protects state law remedies for infringement of pre-72 sound recordings until February 2067”.

Saturday, 17 December 2016

Those who live by the Sword (of Justice) must be prepared to die by the Sword

As many of the readers of this blog and all of my fellow bloggers are lawyers, I need to tread carefully here. But every so often the news of the downfall of some over-zealous lawyer decidedly lifts my mood. Not that I have anything against lawyers - I don't go as far as William Shakespeare (Henry VI, Part2, Act IV, Scene 2) for instance - but evidence that they are prone to human fallibilities, just like the rest of us, is reassuring. We already know that courts are fallible: why else would there be appeal courts? And occasionally the courts feel the need to point out the errors of lawyers appearing in front of them. But dramatic and public falls from grace are somewhat rare. Too few of us treat the SRA's list of recent decisions as our required daily reading.

Not so long ago it was the turn of Andrew Crossley and his company ACS:law to receive the disapprobation of HHJ Birss as he then was, for their creative approach to copyright infringement. And more recently came the non-IP related news that solicitor Paul Shiner faces being struck off for some of his activities in relation to human rights cases which he has brought against the Ministry of Defence.

Now, like an early Christmas present, comes news from the USA that the legal firm which is a sort of ACS:law on steroids, Prenda law, faces criminal prosecution. Or more accurately, two of its attorneys do. I imagine that most readers will have heard of Prenda law and its regrettably not-unique business model. We've previously featured many stories about it here on 1709 and so I won't try to provide a summary of their past deeds. The latest twist in the saga is a 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. It will probably take half a morning just to read out the charges to the two defendants, Paul R Hansmeier and John L Steele.

Clearly it is necessary for me to stress that, of course, these two upright citizens are entirely innocent until the court finds otherwise, but the news of this indictment may just have a salutary effect on other copyright trolling operations. Or at least cause them to amend their modus operandi. 

Merry Christmas!

U.S. Bill Would Introduce a Copyright Claims Board

You may have heard that 2016 was an election year in the United States. Congress and life go on, and Representatives Judy Chu (CA-27) and Lamar Smith (TX-21) introduced this month a bill, the Fairness for American Small Creators Act, which would amend the Copyright Act to introduce a Copyright Claims Board (the Board). The press release is here. 

The Board would be established within the Copyright Office and would be an alternative forum to resolve some, but not all, copyright claims (collective sigh of relief from IP attorneys).

Three Copyright Claims Officers

Three full-time copyright claims officers would serve on the board for a six-year term. They would all be attorneys with at least seven years of legal experience. Two of the copyright claims officers would “have substantial experience in the evaluation, litigation, or adjudication of copyright infringement claims and, between them, … have represented or presided over a diversity of copyright interests, including those of both owners and users of copyrighted works. The third copyright claims officer [would] have substantial experience in the field of alternative dispute resolution.”

They would be independent from the Register of Copyrights, but could consult it on general issues of law, but not with respect to the facts of any particular matter pending before the Board or the application of law to a particular matter. The Board’s decisions could be reviewed by a court.

Copyright Claims Attorneys

No less than two attorneys would be appointed by the Register of Copyrights to assist in the administration of the board. They would have to have at least three years of copyright law experience.

Authority and Responsibilities of the Copyright Claims Board

The Board would determine whether a particular copyright claim, counterclaim, and defense could be brought before the Board, and would ensure that they are “properly filed and otherwise appropriate for resolution by the Board.” The Board would manage the proceedings of the Board and render rulings relating to the consideration of these claims, which would include scheduling and discovery. Indeed, the Board would have the power to request the production of information and documents relevant to the resolution of a claim, and to conduct hearings and conferences. The Board would also have the power to facilitate the settlement of any claim or counterclaim of parties and to require cessation or mitigation of an infringing activity, including takedown or destruction of infringing materials, but only if the party asked to do so agrees.

Authority and Responsibilities of the Copyright Claims Attorneys

Copyright Claim Attorneys would have to provide assistance to the copyright claims officers in the administration of their duties, and provide assistance to members of the public with respect to the procedures and requirements of the Board.


Parties would only participate in a Board proceeding on a voluntary basis and the right of any party to pursue a claim in any court of law would be preserved. The claim would have to be filed no more than three years “after the claim that is the basis for the proceeding accrued.” The Board could review claims for infringement, or provide a declaration of non-infringement, unless the claim is already pending before, or finally adjudicated by a court of law. Both parties would have to be in the U.S. The Board could award actual damages and limited statutory damages, but the latter could not exceed $15,000 per work infringed.

This would be a centralized process, as the Board would conduct proceedings “by means of Internet-based applications and other telecommunications facilities, except that in any case involving physical or other nontestimonial evidence, the Board may make alternative arrangements for the submission of evidence if the arrangements do not prejudice another party to the proceeding.”

The parties could be represented before the Board by an attorney or law student who is qualified under applicable law to represent a party on a pro bono basis.

It is an interesting proposal, especially as the whole procedure could be conducted electronically. Allowing qualified law-students to represent parties may, however, have a somewhat limited impact on the ability of parties to seek pro bono counsel, as U.S. states typically require law students representing parties pro bono to be supervised by a faculty member or a practicing attorney.

Image courtesy of Flickr user Michael Coghlan under a CC BY-SA 2.0 license.

Friday, 16 December 2016

PRS led investigation results in prison term for chart pirate

A Liverpool man has been sentenced to a 12 month prison sentence after pleading guilty to illegally distributing UK chart hits online, which PRS for Music says potentially cost the music industry "millions of pounds and depriving the creators of the content fair remuneration for their work". The sentence was the result of a joint investigation between PRS for Music and the City of London’s Police Intellectual Property Crime Unit (PIPCU) and is the first custodial sentence to arise from the two organisations working together.

In October Wayne Evans pleaded guilty to two counts of distributing an article infringing copyright and one of possessing or controlling an article for use in fraud - Evans had been illegally uploading the UK’s Top 40 singles to various torrent sites as they were announced each week by the Official Charts Company. The 39-year-old was also distributing tracks through his own website, including ‘acappella’ music to be used for DJ-ing and remixing. He admitted using his computers and the website for use in or in connection with fraud. Before sentencing Judge Alan Conrad, QC, agreed that a pre-sentence report was a necessity,  and said the sentencing judge would require assistance, because it was “a very unusual case”.

Detective Constable Steven Kettle, who was in charge of the case, said: “Today’s sentencing will suggest to others that illegally distributing music is not without its consequences. Evans caused significant loss to the music industry and his actions will have effected jobs across the music industry. By working with partners such as PRS for Music we are better able to work collaboratively to ensure the best investigation of people like Evans and ensure that they are brought to justice.”

PRS for Music Head of Litigation, Enforcement and Anti-Piracy, Simon Bourn commented: “Music piracy on a commercial scale is a serious criminal offence and this sentencing by the Crown Court acknowledges that. Copyright infringement has a severe impact on the livelihoods of creators and so it is important that PRS for Music, alongside PIPCU, continues to champion and protect our members’ rights. We hope that today’s sentencing sends a message to all those involved in this type of criminal activity, that consequences will follow.”

Fair Use… The Final Frontier?

The Central District of California Court will hear on December 19 both parties in the Paramount v. Axanar case. Plaintiffs Paramount Pictures and CBS Studios are moving for partial summary judgment for direct, contributory and vicarious copyright infringement claims against Defendants Axanar Production and its owner Alec Peters. Defendants are moving for summary judgment. Hat’s tip to Ars Technica for providing the link to these two motions.

Readers of this blog may remember (see here and here) that Paramount Pictures and CBS Studios are suing Axanar Productions and Alec Peters, “one of Star Trek’s biggest fans” (Defendants motion p. 7), claiming that the short movie Star Trek: Prelude to Axanar and the full-length movie titled Star Trek: Axanar, which Defendants plan to release soon(ish), are infringing unauthorized derivative works of the original Star Trek works.

Defendant’s short movie is a prequel to the original television series and movies. Defendants call it a “mockumentary, ”with direct interviews of characters, in “a style never before used by either Plaintiffs or in any other Star Trek fan fiction” (Defendants’ motion p. 10). It features Klingons, Vulcans, and some other characters originally created for the CBS television series. Axanar is a battle between the United Federation of Planets and the Klingon Empire which was won by one of Captain Kirk’s hero, Starfleet Captain Garth of Izar. CBS will premiere in 2017 a new Star Trek series, Star Trek: Discovery, which will be a prequel to the original series, taking place about twenty years before Captain Kirk took command of the U.S.S. Enterprise.

Let’s first note that both of the Defendants’ movies are crowd-funded. The issue of whether the individuals who contributed to finance these movies, and the crowdsourcing platform, could be sued for contributory infringement would make a fun “additional question” in a copyright law exam.
As the full-length Axanar movie has not been made yet, let alone released, Defendants are claiming that Plaintiffs‘claims with respect of the full length movie are premature, as the Court cannot compare the two works for similarities to decide whether or not there is infringement. The movie’s script is still evolving, and thus the dispute is not ripe. Defendants cite in their motion several cases where courts refused to review drafts to determine substantial similarities (Defendants’ motion p. 15).

Copyright Infringement Claims
Plaintiffs are claiming that Defendants’ works are substantially similar to the original Star Trek works and that Defendants‘works are not fair use. Plaintiffs claim that these works are not “fan films” but rather unlicensed professional productions, and that they take place in the “alien star systems created by Plaintiffs, on spaceships belonging to the United Federation of Planets, on Klingon battlecruisers fighting the Klingon Empire, and on planets such as Qo’nos, Vulcan and Axanar” (Plaintiffs’ motion p. 21 and 22).
Defendants are arguing that their works are not substantially similar to Plaintiff’s works and that Plaintiffs, while owning a limited number of Star Trek episodes and films, “do not own a copyright to the idea of Star Trek, or the Star Trek Universe as a whole” (Defendants’ motion p. 7). Defendants further argue that Plaintiffs cannot claim copyright in “the general mood and theme of science fiction; names and words used in Plaintiff’s Works; elements in the public domain and nature; the Klingon language; Scènes à Faire [for once spelled correctly, I tip my hat to Defendants’ attorneys]; most specific characters; and the general costuming and appearance of, or shapes affiliated with, characters in Plaintiffs’ Works.” Once these unprotectable elements are filtered out, Defendants claim that both Plaintiffs and Defendant’s work are not substantially similar (Defendants’ motion p. 17).

Plaintiffs claimed that Defendants infringed on the Star Trek characters which are protected by copyright. They cited the Ninth Circuit DC Comics v. Towle case, where the Court found the Batmobile to be a character protected by copyright (see here). The Court laid out then a three-part test to determine whether a particular character is protected by copyright: the character must have "physical as well as conceptual qualities," the character must be "sufficiently delineated" to be recognizable as the same character whenever it appears, and the character must be "especially distinctive" and "contain some unique elements of expression.”
Defendants argued that such elements as “pointy ears” cannot be protected but, as noted in Plaintiffs’ motion, though ideas are not protectable by copyright, the expression of these ideas can be protected. Plaintiffs claim that Defendants have copied the exact Star Trek characters in their movie. Defendants admit that Plaintiffs own the copyright in the Spock and Captain Kirk characters, but that its works do not include them, “or any other characters to which Plaintiffs own separate copyright” (Defendants’ motion p. 9). Defendants also noted that the still unfinished script of the full-length movie features 50 original characters out of 57 characters in total.

Is Prelude to Axanar Fan Fiction?
Defendants are claiming that their work is fan fiction, made “to celebrate their love of Star Trek” (Defendants’ motion p. 9), and is protected by fair use. They note that there is a “longstanding tradition of Star Trek [f]an [f]iction” and that Star Trek’s creator, Gene Roddenberry, encouraged fan fiction (Defendants’ motion p. 13 and p. 14). As there is no “fan fiction” provision in the Copyright Act, fan fiction is not infringing if it is fair use. Is it the case here?
Plaintiffs claim that the use of the Star Trek characters, setting and plots are not fair use, as they are not a parody or a satire, nor were they created for purposes of criticism or teaching, and thus furthered the goals of the Copyright Act. They also argue that the use is not transformative enough to be fair use, but that, instead, Defendants have “meticulously replicate[d]” the Star Trek works. For Plaintiffs, merely setting the action of the movie in a different time is not transformative enough, as the “creation of a derivative work that is set in a (slightly) different time than the original does not constitute a “transformative use” (Plaintiffs’ motion p. 19).

Defendants are arguing that their works “are transformative-going where no man has gone before” [ah!), and feature “numerous original characters, original dialogue, a unique plot, and an unexplored timeline” (Defendant’s motion p. 8). Also, “the styling of Prelude [to Axanar] as a short mockumentary featuring first-person interviews makes it especially unique and distinctive from Plaintiffs’ Works”(Defendants’ motion p. 22).

Plaintiffs claim that Defendants’ plot is directly taken from the original Star Trek television show episode which introduced Garth of Izar and also took story elements from a Star Trek role playing game book. For them, the effect on the market, which is one of the four fair use factors, is significant, as Defendants damaged Plaintiffs’ potential market for derivative works (Plaintiffs’ motion p. 23). Defendants are arguing instead that their works have no effect on the potential market, but instead “offer free promotional value to Plaintiffs (Defendant’s motion p. 19 and p. 20).They “do not act as a substitute for Plaintiff’s work.

Defendants are claiming that their works “are not intended to be commercialized” and that “Defendants have no ambitions of competing against Plaintiffs’ Works in movie theaters, on television, over premium streaming services or to otherwise sell their [w]orks for profits” (Defendant’s motion p. 11). In the eyes of the  Defendants, their works are protected by fair use.
I have to admit that I am wishing for more episodes of this Paramount v. Axanar saga. And you?

Star Trek cover courtesy of Flickr user Tom Simpson under a CC BY-NC-ND 2.0 license.

Captain Kirk and Spock courtesy of Flickr user Rooners Toy Photography under a CC BY-NC-ND 2.0 license.