Thursday, 22 March 2018

US Appellate Court majority rules that 'Blurred Lines' DID infringe Gaye classic

The US Court of Appeals for the Ninth Circuit has upheld the 2015 jury verdict which found that Robin Thicke and Pharrell Williams' 2013 hit 'Blurred Lines' infringed on the copyright in Marvin Gaye's 1977 song 'Got To Give It Up'. The decision had attracted widespread criticism and comment, not least as many commentators felt that the jury made their decision by comparing the 'sound' or vibe of the songs, rather than the actual song itself. The appellate panel's  decision was a split decision, 2-1, with a scathing dissent from US Circuit Judge Jacqueline Nguyen who is openly critical of the majority and said that the Marvin Gaye Estate had been able to “accomplish what no one has before: copyright a musical style.” The decision means that Thicke and Williams remain liable for $5.3m in damages and ongoing royalties to the Marvin Gaye Estate from future revenues earned from 'Blurred Lines'. 

The majority of the panel (Judge Milan D. Smith, Jr and Judge Mary H Murguia) held that “Got To Give It Up” was entitled to broad copyright protection because musical compositions are not confined to a narrow range of expression. That said, the panel accepted, without deciding, the merits of the district court’s ruling that the scope of the defendants’ copyright was limited, under the Copyright Act of 1909, to the sheet music deposited with the Copyright Office, and did not extend to sound recordings.

The panel held that the district court’s order denying summary judgment was not reviewable after a full trial on the merits. The panel held that the district court did not err in denying a new trial. The district court properly instructed the jury that there is no scienter requirement for copyright infringement and that it must find both access and substantial similarity. The district court did not erroneously instruct the jury to consider unprotectable elements of “Got To Give It Up.” The district court did not abuse its discretion in admitting expert testimony. In addition, the verdict was not against the clear weight of the evidence because there was
not an absolute absence of evidence of extrinsic and intrinsic similarity between the two songs. The panel held that the district court’s award of actual damages and infringers’ profits and its running royalty were proper.

Reversing in part, the panel held that the district court erred in overturning the jury’s general verdict in favor of certain parties because the defendants waived any challenge to the consistency of the jury’s general verdicts. In addition, there was no duty to reconcile the verdicts. The district court erred in finding one party secondarily liable for vicarious infringement. To that end rapper  Clifford "TI" Harris and Interscope Records were not liable for any infringement holding: 

 "Harris and the Interscope parties contend that the district court erred in overturning the jury's general verdicts finding in their favour. We agree. First, the Gayes waived any challenge to the consistency of the jury's general verdicts. Second, even had the Gayes preserved their challenge, neither Federal Rule of Civil Procedure 50(b) nor our decisions in Westinghouse and El-Hakem v. BJY Inc, conferred authority on the district court to upset the jury's verdicts in this case. Third, as to Harris specifically, the district court erred for the additional reason that no evidence showed Harris was vicariously liable".

The panel held that the district court did not abuse its discretion in denying the defendants’ motion for attorneys’ fees under § 505 of the Copyright Act or in apportioning costs among the parties.

The majority of the appeals court also disagreed the proposition that the two tracks "differed in melody, harmony, and rhythm". In dissent Judge Nguyen said that the ruling "strikes a devastating blow to future musicians and composers everywhere”.

It will be Judge Nguyen's dissent which will no doubt attract the most attention. In her strongly worded opinion she says “ 'Blurred Lines’ and ‘Got to Give It Up’ are not objectively similar” and that the two songs "differ in melody, harmony, and rhythm. Yet by refusing to compare the two works, the majority establishes a dangerous precedent that strikes a devastating blow to future musicians and composers everywhere.”

"While juries are entitled to rely on properly supported expert opinion in determining substantial similarity, experts must be able to articulate facts upon which their conclusions—and thus the jury’s findings—logically rely. Here, the Gayes’ expert, musicologist Judith Finell, cherrypicked brief snippets to opine that a “constellation” of individually unprotectable elements in both pieces of music made them substantially similar. That might be reasonable
if the two constellations bore any resemblance. But Big and Little Dipper they are not. The only similarity between these “constellations” is that they’re both compositions of stars.

The case certainly brings up questions of how expert evidence should be viewed by the court: Again and at the end of her opinion Judge Nguyen is critical of the role of the musicologists in this case saying "Admittedly, it can be very challenging for judges untrained in music to parse two pieces of sheet music for extrinsic similarity. But however difficult this exercise, we cannot simply defer to the conclusions of experts about the ultimate finding of substantial similarity. While experts are invaluable in identifying and explaining elements that appear in both works, judges must still decide whether, as a matter of law, these elements collectively support a finding of substantial similarity. Here, they don’t, and the verdict should be vacated. 

Noting that "In assessing the similarity of two pieces of music, it’s important to keep in mind “the limited number of notes and chords available to composers and the resulting fact that
common themes frequently reappear in various compositions, especially in popular music.”
and that "Not all expression is protectable. Originality, the “sine qua non of copyright,” accommodates authors’ need to build on the works of others by requiring copyrightable expression to be “independently created by the author” and have “at least some minimal degree of creativity and that "If an author uses commonplace elements that are
firmly rooted in the genre’s tradition, the expression is unoriginal and thus uncopyrightable" Judge Nguyen adds: "The Gayes, no doubt, are pleased by this outcome. They shouldn’t be. They own copyrights in many musical works, each of which (including “Got to Give It Up”) now potentially infringes the copyright of any famous song that preceded it  ... That is the consequence of the majority’s uncritical deference to music experts."

Judges Smith and Murguia in the majority countered with :"Our decision hinges on settled procedural principles and the limited nature of our appellate review, dictated by the particular posture of this case and controlling copyright law. Far from heralding the end of musical creativity as we know it, our decision, even construed broadly, reads more accurately as a cautionary tale for future trial counsel wishing to maximise their odds of success". They are forthright on Judge Nguyen's dissent "The dissent's position violates every controlling procedural rule involved in this case" and they say "The dissent improperly tries, after a full jury trial has concluded, to act as judge, jury and executioner" and "Our decision does not grant license to copyright a musical style or 'groove'" and they add "Nor does it upset the balance Congress struck between the freedom of artistic expression, on the one hand, and copyright protection of the fruits of that expression, on the other hand".

The central issues raised in the case are far from settled - and up next there is the Led Zeppelin 'Stairway To Heaven' appeal which is pending before the Ninth Circuit in a claim brought on behalf of late Spirit songwriter Randy Wolfe's estate that says that the heavy rock classic copies the riff found on Spirit's instrumental "Taurus".

Williams v Gaye No. 15-56880 D.C. No. 2:13-cv-06004-JAK-AG and 

Blurred Lines: The difference between inspiration and appropriation By Ben Challis (September 2015) here

UPDATE: A very useful article on Billboard here which also discuss the possible approaches to an appeal by Thicke and Williams - an en banc review by the 9th Circuit, or an appeal to the Supreme Court?

Wednesday, 21 March 2018

French Cour de cassation Confirms Broad Interpretation of Making Available/Communicating to the Public as applied to P2P Software


While peer-to-peer cases of copyright infringement tend to focus on the infringement of the protected works and the rights that are implicated therein (reproduction, making available) as well as assigning legal liability for such acts, there is, at times, another aspect of such cases, namely that which relates to the software that is used for such purposes.

French law provides for a distinct offense in this regard under Section L.335-2-1 of the Intellectual Property Code:

"Is punishable by three years' imprisonment and a fine of €300,000:

1. publishing, making available or communicating to the public, knowingly and in any form whatsoever, software manifestly intended to unlawfully make availble works or protected objects;

2. knowingly inciting, including by way of advertising, the use of software referred to in paragraph 1".

A recent ruling by the Cour de cassation (27 February 2018) underscores the court's broad interpretation of the concept of "making available or communicating to the public" under paragraph 1 of this Section.

In a case involving the Emule-paradise peer-to-peer platform, the appellate court had found that the Emule software had been made available to the public inasmuch as:

- regardless of the fact that the software itself was not stored on the site at issue (emule-paradise), the site contained on its home page a sub-file that made available to the public the equivalent of an instruction manual for the impugned software;

- the site contained a deep link to an intenal page of the Emule site as well as various sections offering advice and instructions on how to install the software.

The plea before the Cour de cassation was that the infraction under Section L.335-2-1 IPC fails where the accused has "merely communicated to the public information on this type of software and the way it works but has not offered it for downloading either via storage or via access to a download on another site".

This plea is soundly rejected by the Cour de cassation, thereby endorsing the lower court's broad interpretation of the "making available" concept under Section L.335-2-1, par. 1 IPC.

While one might take issue with such a broad reading of "making available or communicating to the public" under Section L.335-2-1 IPC (i.e., as applied to software used to make works available via peer-to-peer networks), it is difficult to argue that it is not consistent with recent case-law on linking, making available and communication to the public in general as applied to works themselves (see by way of example the CJEU's ruling of 14 June 2017 C-610/15, the so-called Pirate Bay case).

Link to ruling by Cour de cassation (in French) here

Thursday, 15 March 2018


Can the US copyright law apply to the content which although created overseas is made available to the US viewers in violation of the rights of the US rightholders? That was the question the U.S. Court of Appeals for the D.C. Circuit Has recently faced in the dispute between Spanski Enterprises v. Telewizja Polska.

The case which is in them making for over two decades concerns Poland’s public national broadcaster, Telewizja Polska (TVP), granting an exclusive right to Spanski Enterprise (SEI), a Canadian company, to distribute TVP’s content in North and South America for the period of 25 years. It was agreed between the parties that TVP will use geo-blocking technology for its streamed content on the VOD platform, in order to protect SEI’s exclusive licence to share the content on the US soil. Nevertheless, SEI has discovered that the programmes still could be streamed in one of their US offices in New York as the geo-location technology was allegedly disabled. At the first instance, the US District Court for the District of Columbia held in December 2016 that SEI’s exclusive right of public performance has been violated and awarded damages of $3.06 million against TVP. 

TVP in its appeal claimed that “[a]cts committed abroad, even if they would be actionable if performed in the U.S., cannot form the basis for a U.S. copyright infringement suit” and that the US Copyright Law does not apply extraterritorially. Contrary, the US Government in its amicus brief has submitted that “a copyright owner’s exclusive right to control the public performance of the work in the United States is infringed just as clearly when the transmission comprising the unauthorized performance originates overseas”.  In its view the liability should be imposed on TVP despite the performances being initiated abroad, as the events occurred in the US and the unauthorised performances were addressed towards the American public.  

The case is important from the perspective of the US Government as it “implicates the ability of the Department of Justice to prosecute large-scale criminal piracy of copyrighted works by entities located abroad that stream copyrighted works over the Internet to viewers in the United States”. TVP has also raised a second argument saying that “the company may be held liable for direct copyright infringement only if its conduct was ‘volitional’”. Given that TVP has owned the copyright in its content which has been lawfully uploaded to its VOD platform, according to them there was no such conduct. 

The Court of Appeals in its judgment has rejected TVP’s appeal confirming that the automated services, where the user selects the content to view (here VOD platform) are not protected from liability in such cases. According to Circuit Judge Tatel “Congress had good reason to allow domestic copyright holders to enforce their rights against foreign broadcasters who direct infringing performances” into the US territory. Furthermore, with the ease of internet transmission across the world, lack of protection of copyright holders would enable widespread infringement “rendering copyright in works capable of online transmission largely nugatory”.

The new research published by RPC shows that music and football right holders bring the most cases to the London's High Court. The rise in the number of claims is a result of rightholders aiming to fight illegal streaming on the internet. The most frequent Claimant in 2017 was PPL (Phonographic Performance Limited), which has brought 88 cases to the High Court. The second most active claimant was Football Association bringing the total amount of 36 cases. Among the top 10 claimants filing the copyright cases are also Sky and BT with 12 and 11 cases respectively. As noted by Paul Joseph, Partner and Editor of RPC’s Copyright Guide “[p]rotecting copyright continues to be a top priority for those holding the rights to music and football.” Given that “the value of football broadcast rights has ballooned over the last two decades, so has the importance to rights holders of protecting their intellectual property.” Football rightholders are now more encouraged to go to the Court following a successful claim in Football Association Premier League Ltd v British Telecommunications plc [2017] EWHC 480, where Arnold J has granted an order to requiring six major internet service providers (ISPs) to block access to streaming servers giving unauthorised access to copyright footage. [as previously reported on IPKat]

With the Internet changing the traditional business model in music industry, it also became important for the rightsholders to pursue “any possible source of revenue from businesses using their material”. Therefore, it is more common for music rightsholders to litigate, in order to maximise their revenues from the copyrighted materials. By filing a number of claims to the High Court, football and music industry companies must hope that their actions will deter potential infringers.  

The process of a group of rightholders applying to the Court for orders requiring Internet Service Providers (ISPs) to block access to the websites infringing copyright has also been widespread in other parts of Europe. Knowing that the process requires both parties to spend a lot of money and with the knowledge that injunctions requiring ISPs to block websites infringing content are now more likely to be granted in the European courts, recently rightholders and ISPs decided to take collaborative approach. Belgian Entertainment Association (BEA) and ISPs Proximus, Telenet and VOO in order to avoid complex and costly legal proceedings have decided to jointly present a list of 33 websites and 450 domain names to a judge, together with claims that “they facilitate the illegal downloading of copyrighted material”. With the possibility given in the European legislation to the national judges to order injunctions requiring ISPs to block access the Commercial Court of Brussels will now assess the list of sites and domains “to determine whether they’re acting illegally”. As explained by Benoît Michaux, lawyer for the Belgian Entertainment Association, this “joint request is a little unusual, things are changing, there is a certain maturation of minds, we realize, from all sides, that we must tackle the problem of piracy by blocking measures. There is a common vision on what to do and how to handle piracy”. As reported by L’Echo with potential concerns of ISPs of possible breach of E-Commerce Directive, ISPs are not willing to take any action against websites without any order from the Court. The Court is expected to render its judgment within a month.

They want you, they want you, 
They want you as a new recruit

Bitmanagement, German software company, has brought a claim against US Government in connection with the US Navy installing its software on hundreds of devices without obtaining the necessary licence and therefore infringing their copyright: As reported by Torrentfreak, in 2011 and 2012 the US Navy initially bought licences of 3D virtual reality application for the use on 38 devices. However, as it was soon discovered the application was installed on 100,000 devices without any additional compensation.

Following its Federal Claims Court complaint, Bitmanagement  found out that the number of computes on which software has been installed amounted to at least 429,604. Therefore, after both parties have conducted discovery, Germany software company has requested for partial summary judgment against the US Government for copyright infringement. As stated by the company in their motion “it became clear that the Navy had no intention to pay Bitmanagement for the software it had copied without authorization, as it declined to execute any license on a scale commensurate with what it took”. In response, the US Government claimed that it bought concurrent-use licences that allowed them to install the software across the Navy network and that the authorisation was implied. Both arguments were however rejected by Bitmanagement. The damages according to the software company can amount up to $600 million.

A Jamaican songwriter Michel May (performing as Flourgon) has brought a $300 million claim against Miley Cyrus for infringement, alleging that her 2013 song ‘We Can’t Stop’ [listen here] too closely resembles a song that he released in 1988 and was a No 1 in Jamaica ‘We Run Things’ [listen here].  According to May about 50 percent of Cyrus’ song comes from his ‘We Run Things’ hit. He claims that Cyrus and RCA Record have misappropriated his material by using the phrase “We run things. Things no run we,” which she sings as “We run things. Things don’t run we.”. Additionally, in his view Cyrus’ hit “owes the basis of its chart-topping popularity to and its highly-lucrative success to plaintiff May’s protected, unique, creative and original content.” Apart from seeking damages, ‘Flourgon’ in his complaint filed with the U.S. District Court in Manhattan also requested the Court to a halt to further sales and performances of 'We Can’t Stop’. In the wake of the Blurred Lines decision, and the more recent Taylor Swift decision over the alleged copying in the lyrics of 'Shake It Off', this could be one to watch. 

This CopyKat by Mateusz Rachubka 

Friday, 9 March 2018

SEMINAR: Derivative Works in Copyright and Improvement Inventions in Patent Law

Derivative Works in Copyright and Improvement Inventions in Patent Law

"In patent law, subsequent innovators can patent an improvement of an existing patented invention, and then negotiate a license with the initial patent owner. So, while in patent law the rule for improvers is “invent first, and then bargain with the patent owner over the allocation of rights to the improved invention”, copyright law works the other way round: the would-be creator of a derivative work must first bargain with the original copyright owner, and then invest his or her creative effort to produce the authorized derivative."  Would a patent-like approach would better serve copyright’s goal of promoting creativity for the public benefit?

Speaker: Professor Maurizio Borghi, Bournemouth University

WHERE: C314, Tait Building, City, University of London, Northampton Square, London, EC1V 0HB

WHEN:  Tuesday March 20th at 13.00

Free to attend, but please register here:  

Thursday, 8 March 2018

Posing some difficult questions: the COPYKAT investigates

Jumpman blocks photographer's shot at copyright claim

In January 2015 the CopyKat covered the case brought by photographer Jacobus Rentmeester against sporting apparel giant Nike, concerning Rentmeester's 1984 photograph of world-famous basketball star Michael “Air” Jordan, who was warming up for the Los Angeles summer Olympic games. Rentmeester had Jordan use a long horizontal jump technique known in ballet as a 'grand jete.’ It’s worth noting here that the jump itself is unusual for basketball and not something Jordan would have done in normal practice - so in effect a pose.

Rentmeester allowed Nike to use the image for a temporary advertising campaign, but In 2014, Rentmeester accused Nike of copyright infringement. His lawsuit alleged that the sports giant copied his carefully choreographed picture using Jordan's left hand to slam dunk the ball. The “jumpman” silhouette logo is known the world over, and is used to promote Nike’s Air Jordan brand of basketball shoes and sportswear. According to Reuters, The Jordan brand now generates $3.1 billion of annual revenue for Oregon, USA headquartered Nike.

Rentmeester’s case was dismissed in June 2015 (this was covered by the CopyKat here), with the judge finding that the only similarity  between Rentmeester’s photograph and Nike’s “Jumpman” logo was that of Jordan’s pose.  The poses were not substantially similar and the District Court of Oregon dismissed Rentmeester’s claims. You can read a very good analysis of this decision over at the IPKat here.

Rentmeester subsequently appealed. However, in a In a 2-1 decision, the 9th U.S. Circuit Court of Appeals has upheld the original decision. In his judgement, Circuit Judge Paul Watford wrote that while both images “capture Michael Jordan in a leaping pose inspired by ballet’s grand jeté,” they were not substantially similar because of differences in setting, lighting and other elements. He added that “all the Nike photographer did [was] build freely upon the ideas and information conveyed by [Rentmeester’s earlier] work.”

The case is Rentmeester v Nike Inc, 9th U.S. Circuit Court of Appeals, No. 15-35509 and also see an updateon the IP Kat here)

Playboy Bunnies vs Boing Boing

Playboy has failed in its attempts to claim that a hyperlink to copyright-infringing content at Imgur and YouTube is itself illegal.  

In November of last year, Playboy filed a copyright infringement lawsuit against Happy Mutants, the parent company of website Boing Boing. Boing Boing calls itself “a Directory of Mostly Wonderful Things,” and in 2016, provided a link to a separate gallery of "Every Playboy Playmate Centerfold Ever," hosted on imgur.

The subject matter of the suit included 477 photographs of models, known as "centerfolds." Playboy owns these centerfold images and argued that by linking to online versions of these photos, Boing Boing used, distributed, and exploited said images in websites without Playboy's authorisation or consent. Playboy further accused Boing Boing of vicarious

In a Court order, US District Judge Fernando Olguin noted the court was “skeptical that plaintiff has sufficiently alleged facts to support either its inducement or material contribution theories of copyright infringement.” Olguin allowed Playboy to amend their claims and resubmit, but Playboy failed to do so before the 26 February deadline.

In their press release, Boing Boing thanked their “brilliant attorneys” at the Electronic Frontier Foundation for “standing up to "Playboy's misguided and imaginy claims." EFF explained it was “hard to understand why Playboy brought this case in the first place, turning its legal firepower on a small news and commentary website that hadn’t uploaded or hosted any infringing content.”

Responding to a journalist’s story on the case, Playboy provided a statement which continued the assertion that Boing Boing "is supporting and contributing to privacy and content creators should not tolerate it.” And although they are not filing an amended complaint at this time, Playboy “will continue to vigorously enforce our intellectual property rights against infringement.”   Image by
Robobobobo and used under a Creative Commons Licence.

EU Recommendations formalise earlier guidelines on IPR enforcement

The European Commission has released a new statement, entitled A Europe that protects: Commission reinforces EU response to illegal content online.”

The Recommendation gives formal effect to the political guidelines set out in the Communication on tackling illegal content online, first presented by the Commission in September 2017.

In that earlier Communication, the Commission promised to monitor progress in tackling illegal content, and assess whether additional measures are needed to ensure the swift and proactive detection and removal of such content. The Commission focuses on detection and removal of illegal content through both reactive (so called 'notice and action') and proactive measures.

These Recommendations are aimed at European Member States, as well as companies, and are to be used as initial proactive steps before the Commission determines whether new legislation should be proposed. The Stronger procedures suggested include better safeguards and full respect of fundamental rights, freedom of expression and data protection rules, as well as utilisation of  more efficient tools and proactive technologies.

Interestingly, the Commission suggests that shared responsibility could particularly benefit smaller platforms with more limited resources and expertise in halting infringement. In particular, the Commission recommends that industry should, through voluntary arrangements, cooperate and share experiences, best practices and technological solutions, including tools allowing for automatic detection.

In terms of next steps, The Commission will continue analysing the progress made and will launch a public consultation later this spring.

You cannot copyright the dolphins!

The depiction of two dolphins crossing underwater is an "idea that is first found in nature," and therefore cannot be the subject of copyright protection, as per the U.S. Court of Appeals, Ninth Circuit decision in the case of Folkens v Wyland.

Peter A. Folkens is wildlife artist who, nearly 40 years ago, drew an  illustration of two dolphins crossing each other underwater. The pen and ink artwork depicts one dolphin swimming vertically and the other swimming horizontally.

Robert Wyland painted “Life in the Living Sea,” an underwater scene of two dolphins crossing underwater. Folkens' drawing, was adapted for use on an inexpensive Greenpeace charity postcard. On the other hand, Wyland sells art and merchandise through his Wyland Worldwide business, reported to make $100 million annually (LA Weekly).

Although the artworks are different in many respects - colour, lighting, and medium - there are certain similarities, with the primary similarity (similar to the Rentmeester v Nike case we mentioned above) being the "pose."

A trial judge first reviewed the works to determine if they were "substantially similar," and decided that this pose was a natural position incapable of protection under copyright law. Folkens appealed, but the Ninth Circuit has upheld the original decision.
In its judgement, the Ninth Circuit explained that despite this similar positioning of the dolphins, a pose is not ordinarily copyrightable unless combined with something else. In particular, “a collection of unprotectable elements - pose, attitude, gesture, muscle structure, facial expression, coat, and texture - may earn “thin copyright” protection that extends to situations where many parts of the work are present in another work.”

Folkens attempted to argue that the dolphins he drew are not exhibiting natural behaviour, because photos upon which he based his illustration on were of dolphins posed by professional animal trainers in an enclosed environment. However, Wyland’s counter-argument included an assertion that animal trainers can pose animals to capture positions that naturally occur in the wild.

This “idea” of crossing dolphins was first expressed in nature, and was therefore held by the court to be “within the common heritage of humankind.” Accordingly, no artist may use copyright law to prevent others from depicting this ecological idea. Is this a case of “scene a faire” gone too far? Does it demonstrate that any “natural” pose by anyone (or any animal) is incapable of copyright protection? For the benefit of further analysis, this CopyKat would have preferred the matter go to trial, rather than conclude by way of summary judgment.  

Project Gutenberg: the German edition - laudable, but still infringing!

Project Gutenberg is an American website which offers 56,000 free books, many of which have had their copyright expired in the United States. Such classics available include Pride and Prejudice, Heart of Darkness, Frankenstein, A Tale of Two Cities, Moby Dick, and Jane Eyre. The website is run on servers at the University of North Carolina at Chapel Hill, and is classified as a non-profit charity organisation under American law. The website is a volunteer effort which relies mostly on donations from the public, "to digitise and archive cultural works to encourage the creation and distribution of eBooks."

Despite the noble cause of making literature available at no or low cost to the masses, a recent ruling ( ) against Project Gutenberg has resulted in the website being geo-blocked for all visitors attempting to access the site from Germany. The claimants in the case are the copyright owners of 18 German language books, written by three authors, each of whom died in the 1950s. In Germany, the term of copyright protection for literary works is "life plus 70 years," which differs from the US approach for works published before 1978 where the works would be in the public domain. They are not in Germany.

The copyright holders of these works notified Project Gutenberg of their alleged infringement back in 2015. In early February 2018, the District Court of Frankfurt am Main approved the claimant's "cease and desist" request to remove and block access to the 18 works in question. The claimants also requested administrative fines, damages, and information in respect of how many times each work was accessed from the website.

The Court reasoned that it was worth taking into account the fact that the works in dispute are in the public domain in the United States. This however "does not justify the public access provided in Germany, without regard for the fact that the works are still protected by copyright in Germany." The judgement also cited Project Gutenberg's own T&Cs in its decision, noting that the website considers its mission to be "making copies of literary works available to everyone, everywhere." While this broad statement may seem innocuous and idealistic, the court used this to support its findings that Project Gutenberg could not reasonably limit itself as an American-only website.

A key point in this matter is the question of jurisdiction. While Project Gutenberg is based in the USA, the claimants successfully argued that as the works were in German and parts of the website itself had been translated into German, the website was indeed "targeted at Germans." Furthermore, even if the website had not been intended for German audiences, that the infringement occured in Germany is sufficient grounds to bring the claim in German court.

While Project Gutenberg was only required to remove the 18 works listed in the lawsuit, the organisation has blocked its entire website in Germany to protect itself from any further potential lawsuits on similar grounds (see the Q&A here )

Project Gutenberg is planning to appeal the decision. There is more on the IPKat here at

This CopyKat by Kelsey Farish

Friday, 2 March 2018

Dispute over the Distribution of FTA Channels in France

                                                                       Because I'm Worth It!

France has, for the last few months, been the scene of a fierce commercial battle between free-to-air channels and television distributors (satellite, cable and IPTV operators).  Historically, such FTA channels did not receive any remuneration or fees from the distributors for the right to carry, distribute and market these channels to subscribers (unlike other jurisdictions such as the United States with its so-called re-transmission consent fees).

Recently, French FTA channels (and in particular TF1, the leading private broadcaster) have adopted new bargaining stances:  fees must be paid by distributors for the right to carry and dsitribute FTA channels. 

While it would appear (based on press reports of agreements reached with certain distributors) that TF1 is not averse to dressing up the agreement so that a large chunk of the fees is allocated to so-called enhanced services (extended ctach-up, start-over or other functionalities), the fact remains that in essence the distributor is paying for the right to distribute a FTA channel.                                                   


From a strictly legal perspective, the broadcaster's right to seek such payment stems from Section L.216-1 of the Intellectual Property Code (IPC) which provides that audio-visual communcation entities (i.e. broadcasters) have the following rights with regard to their programmes: 

- reproduction
- making available to the public via sale, rental or exchange,
- broadcasting ("télédiffusion"), and
- communication to the public in a place accessible thereto against payment.

(Contrary to what is sometimes said about the making availble right under Section L.216-1 IPC, this does not correspond to the making available right under the EU InfoSoc Directive; rather, it was intended to cover the distribution (sale or rental) of tangible goods incorporating the programmes.)

As regards broadcasting, this is defined in Section L.122-2 IPC as the dissemination by any means of telecommunication of sounds, images, documents, data and messages of any kind whatsoever. 

In light of this definition, the broadcasting right under Section L.216-1 IPC is extremely broad indeed.  It covers any form of telecommunication by which the original signal (carrying the programmes) is re-transmitted (whether by wireline, wireless, internet or any combination thereof).

It certainly applies to the case of a distributor who seeks the right to distribute and market a channel to its susbscriber base (given that in such case there are clearly acts of reproduction and rebroadcasting).

Naturally, the fact that such an IP right exists does not necessarily mean that TF1 is entitled to payment.  After all, nowhere does the law say that a broadcaster must be paid for the right to re-broadcast the sigal (programmes); its consent can be given free of charge (or for non-monetary consideration).  Moreover, as reported by the press, the distributors appear to be marshaling arguments from other areas of the law (in particular competition law, claiming that TF1 is abusing its market power by demanding payment).

Press articles on the dispute:

here and here and here

Tuesday, 27 February 2018

5Pointz: a stronger legal protection for street art … or not?

The 1709 Blog is delighted to host the following contribution by Angela Saltarelli (Chiomenti) on the recent decision of the US District Court for the Eastern District of New York in the in the 5Pointz case.

Here’s what Angela writes:

“The US District Court for the Eastern District of New York has recently ordered a real estate developer to pay millions of dollars in damages to a group of artists to compensate them for destroying their 45 famous aerosol artworks which were at the 5Pointz building in Queens, New York City.

5Pointz was a former factory owned by Jerry Wolkoff, who bought the 19th century Neptune Meter factory in Long Island City in Queens in the early 1970s. He started leasing the space as artists’ studios in the 1990’s. As a result, street and graffiti artists started using his building to create their works. In 2002, Wolkoff appointed famous street artist Jonathan Cohen as 5Pointz’s de facto curator. 5Pointz thus became soon a tourist attraction drawing thousands of daily visitors, including busloads of tourists. Movie, television and music video producers used 5Points as a location.   

Starting in 2011, there were rumours that Wolkoff wanted to destroy 5Pointz and turn this space into luxury condos. Subsequently, Cohen filed an application before the City Landmark Preservation Commission to preserve the site as one of cultural significance, but the application was denied because the artistic work was of too recent creation. 

After the City of New York declined to declare the building a landmark, 21 artists (including Mr Cohen) decided to sue Wolkoff and four of his real estate entities asking for a preliminary injunction to prevent the planned demolition. As soon as the Court denied the plaintiff’s application for preliminary injunction, Wolkoff whitewashed the entire complex overnight without waiting the final Court’s decision.

After the demolition, the plaintiffs’ requests for damages went on claiming that the defendants had acted contrary to the Visual Artists Rights Act (VARA), which introduced a new provision into the US Copyright Act added in 1990 to comply with the Berne Convention granting some moral rights, namely the right of attribution and the right of integrity.

As to the right of integrity, the author can prevent the destruction of the work of visual art when can be prejudicial to artist’s honor or reputation or when the work is of recognized stature, namely when the visual artwork is viewed as meritorious and this stature is recognized by art experts or other members of the artistic community. The Court found that 28 of 49 destroyed works at 5Pointz achieved recognized stature, and eight more were modified to the prejudice of the artists’ honour or reputation. 

One of the exception raised by the defendants in this case was that street art works are ephemeral per se and that VARA should not afford protection to temporary works. Before this case the application of VARA to the works of exterior aeorosol artists had not been discussed in courts.

The court rejected this legal approach saying that VARA resolves the tension between building owners’ rights and the artist’ rights, including also temporary works. Indeed, Section 113 of VARA provides for two hypotheses when a protected work of art has been integrated into a building: (i) when the artwork cannot be removed from the building (in this case the artist may sue to prevent the destruction of the work unless he waived this right) and (ii) when the artwork can be removed, so contemplating that the work can be temporary.

In the latter case, VARA gives the opportunity to the artist to save the work upon receipt of a 90 days’ written notice from the building owner. If the artist fails to remove within the 90 days or if the owner could not notify the artist after making good effort, the artist’s VARA rights are deemed waived and the owner may destroy them without consequences. 

The Court finally held that the artists’ works were legally protected under VARA and that each artworks could have been removed from 5Pointz walls. Then the Court stated that the defendants broke the law in willfully destroying 5Pointz before having the Court’s permit and failing to give the 90 days’ notice to the artists to remove their works provided by VARA.

The Court awarded the owner to pay the maximum statutory damages under VARA for each works for the whole sum of USD 6,750,000.

The decision was greeted with enthusiasm by the artistic community as a further validation of street art. For the future, more real estate owners will probably give artists the time to remove their works.

On the other side, this decision could also hinder street art as many real estate owners could be reluctant in the future to authorize artists to use their walls as Wolkoff did in 5Pointz.”