Wild Boys Sometimes Lose It: Duran Duran fail to reclaim their US copyright

This post is by David Brophy writing on the IPKat

A few weeks after his eighteenth birthday, Duran Duran co-founder Nick Rhodes signed a music publishing agreement assigning his existing and future copyrights to a publisher, as did the other band members. None of them was aged more than 21 at the time.

Had they taken advice from a copyright lawyer at the time (1980), one can imagine a conversation along the following lines:

Duran Duran: Please please tell me now: Is there something I should know? Is there something I should say?

 Lawyer: You mean, is there something you should say, before your copyright goes away?

Duran Duran: That's funny, for a lawyer. But we didn't agree to pay you a hundred quid for your songwriting talents. What do you think about this contract?

Nick Rhodes, co-founder of Duran Duran (photo: Eva Rinaldi, CC BY_SA 2.0)

Lawyer: Well, you're agreeing here to assign all of your existing and future copyrights worldwide for their full term. That's pretty standard stuff. But there's a new Copyright Act in the United States, just two years old, and it will allow you to reclaim your copyright from the publishers after 35 years. Which is nice, though it does rather assume anyone will be buying your records in 2015 (no offence). 

Duran Duran: Eh thanks. What exactly should we do? 

Lawyer: When the 35 year mark is approaching, you'll simply serve a notice on the publisher. Tell them you want your copyright back, lodge a copy of the Notice with the Copyright Office and hey presto it will revert to you. So in your contract, you could include a clause stating that the assignment is without prejudice to your rights under section 203 of the US Copyright Act to terminate the assignment of the US copyright. 

Duran Duran: They'll never go for it. Have you seen our haircuts? They won't change their standard contract for us. And if they don't sign us up, nobody will.

Lawyer: Well don't worry about it. When Congress was passing the law, they had unequal relationships like that in mind. Here's what they say in House Report 94–1476 introducing the law: 

"A provision of this sort is needed because of the unequal bargaining position of authors, resulting in part from the impossibility of determining a work’s value until it has been exploited ... Instead of being automatic, as is theoretically the case under the present renewal provision, the termination of a transfer or license under section 203 would require the serving of an advance notice within specified time limits and under specified conditions. However, although affirmative action is needed to effect a termination, the right to take this action cannot be waived in advance or contracted away."  

And it's right here in section 203(5): "Termination of the grant [of a transfer or licence of copyright] may be effected notwithstanding any agreement to the contrary, including an agreement to make a will or to make any future grant." So basically, it doesn't matter what you sign now. You can't contract away the right to claim the copyright back when the time comes. 

Duran Duran: Cool. Now about your fees. We've been thinking. Maybe we can cut you in on the royalties for our first three albums instead? 

Lawyer: Thank you, but my understanding is that you have never even been inside a recording studio. I think I'd prefer the hundred pounds we agreed on. In cash please, boys.

Factual background

This conversation never happened of course, and indeed we don't know if the band took any advice or knew about the possibility of claiming the US copyright back in the future. What we do know is the band members signed a music publishing agreement assigning the "entire copyrights" in their existing and future works for the "full term" of the copyrights, to Gloucester Place Music Ltd (then called Tritec Music Ltd, and now part of the Sony/ATV group).

In 2014, with the 35 year point approaching, band members Nick Rhodes, Simon Le Bon, John Taylor, Andy Taylor and Roger Taylor, duly served Notices under section 203 in respect of 37 songs, including most of their best-known works like "Girls on Film", "Rio", "Hungry Like The Wolf" and "Is There Something I Should Know?".

Gloucester Place Music responded by seeking a determination from the English High Court that such Notices, if not retracted, would represent a breach of contract, i.e. by improperly terminating an assignmentwhich the band members had no right to do.

Effect of contractual agreement

Mr Justice Arnold has decided in favour of the publisher and against the band members. The case is Gloucester Place Music Ltd v Le Bon & Ors [2016] EWHC 3091 (Ch). His decision is based on the fact that the contract was made under English law, and on its proper interpretation the parties are assumed to have been aware when entering into the Agreements, at least in general terms, of the effect of section 203, and to have nevertheless contracted away the US copyright for its full term. He summarised at [44]:

"The language of clause 3(a) is wide and general. Particularly when read together with clause 4, I consider that what the language would have conveyed to a reasonable person having the relevant background knowledge was that the parties' intention was that the "entire copyrights" in the Compositions should vest, and remain vested, in the Claimant for the "full term" of the copyrights. That implicitly precludes the Group Members from exercising rights under US law which have the result that the Claimant's ownership of the copyrights is brought to an end prior to their expiry. Moreover, this interpretation is reinforced by clause 6(b), by which the Group Members promised not to transfer any interest in the copyrights to any other person, which I read in context as meaning any person other than the Claimant. (This is clearer from the wording of clause 6(b) of the Service Company Music Publishing Agreements, which refers to "any person, firm or corporation other than Tritec".) In effect, what the Group Members have done by exercising their rights of termination is to transfer the reversionary interest in the copyrights from the Claimant to themselves."

The reference to "a reasonable person having the relevant background knowledge" was held to include some knowledge of US copyright law. In other words, someone signing a contract such as this was assumed to know, at least in general terms, about the possibility of reclaiming copyright in the US.

Insofar as it goes, this may be a pretty unremarkable interpretation of a contract under English law. But what about the fact that under US law the right to terminate the assignment cannot be contracted away?

Conflict with US law

Arnold J. noted the US law aspect but pointed to the fact that Article 7(1) of the Rome Convention, which provides for effect to be given to the mandatory rules of the law of another country with which the situation has a close connection, does not have the force of law in the United Kingdom by virtue of section 2(2) of the Contracts (Applicable Law) Act 1990.

The issues of US law were treated as questions of fact. No expert evidence had been provided as to the meaning of the US statute, nor had permission been sought to do so. So efffectively they were never brought properly before the court.

The solicitor for the defendants (i.e. the band members and their service companies) had made a statement in his witness statement that:

"As a consequence of Section 203, a US Court would not allow a claim for damages for breach of a contractual agreement because the statutory termination right supersedes any contractual right. This applies whether that contract was governed under English or US law." 

The defendants argued that this was admissible evidence, and was unchallenged. Arnold J had little time for this argument. It was no more than a statement of case with which they could expect the other side to take issue at trial. It was a statement made by an English solicitor who, he noted, claimed no expertise in US law, with no basis given and no citation of any decided cases supporting the assertion, and nor did it address whether the position was the same in the period 1980-1983.

To the IPKat it appears that this failure to introduce evidence as to US law represented a major oversight by the defendants, or at least a very risky assumption that the point was self-evident. This Kat cannot tell whether the outcome would have changed if the judge had evidence that the position as stated by the solicitor was both correct as to the law now and at the relevant time, but the failure to adduce this evidence undermined the defendants' reliance on the US law point.

Nick Rhodes, commenting on the judgment, said "We are shocked that English contract law is being used to overturn artists’ rights in another territory. If left untested, this judgment sets a very bad precedent for all songwriters of our era and so we are deciding how properly to proceed."

The IPKat would like to see the case appealed, and would prefer to see artists free to exercise their statutory rights, but is less convinced that the decision sets a "very bad precedent". A future litigant who introduces strong expert evidence on the US law point would at the minimum ensure that the court would have to consider afresh the conflict of laws question.

Rhodes also commented that the band members signed the agreement as "unsuspecting teenagers ... when we knew no better". This bears out the "unequal relationship" rationale for section 203, and is another reason why it would be extremely interesting to see the US law point properly considered.

Arnold J's decision serves a salutory purpose, reminding anyone signing a publishing agreement that the court will interpret the agreement from the viewpoint of a reasonable person with the necessary background information, including some knowledge of copyright law. This makes obtaining good advice all the more critical when the bargaining position is unequal. 

Posted By David Brophy to The IPKat on 12/06/2016 

THE COPYKAT

This CopyKat from David Liao

Duran Duran lose copyright battle: Under US copyright law, songwriters have an inalienable right to call for a reversion of copyright after 35 years, a provision introduced to help address the imbalance of negotiating power artists tend to have early on in their careers. 1990’s group Duran Duran had sought to use this right to reclaim copyright in their first three albums, Duran Duran, Rio, and Seven and the Ragged Tiger, effectively terminating their agreement with publishers Gloucester Place Music (owned by Sony/ATV via their takeover of EMI Music Publishing). However in a High Court ruling last week, Mr Justice Arnold ruled “not without hesitation” that the contractual interpretation suggested by Gloucester Place was the correct one, and that the “parties' intention was that the 'entire copyrights' in the compositions should vest, and remain vested, in the claimant (Gloucester Place) for the 'full term' of the copyrights.” As such, Duran Duran would have to withdraw its application to have their copyright reverted. The effect of this is to allow English contract law to override statutory rights in another jurisdiction, and sets a troubling precedent for other UK songwriters as a test case.  We wait to hear whether the group will be granted leave appeal.

Symposium - ‘Harmonising European Intermediary Liability in Copyright’. The Institute for Information Law (IViR) of the University of Amsterdam is organising a one-day academic symposium on European intermediary liability on 14 January 2017: In view of the new EU copyright reform package, the symposium will examine the issues surrounding intermediary liability in copyright in Europe, including the extent of duties and remedies which are appropriate to impose on intermediaries and the conditions to govern these. Moving beyond the current safe harbour regime, it will explore avenues towards the adoption of a substantive European system. Spaces are limited and registration is required – see here for more details.

Jersey Boys: The creators of hit musical “Jersey Boys” have been held by a jury in Nevada to have infringed copyright in an unpublished book. The claimant (Donna Corbello) is the widow of Rex Woodward, who had co-written an autobiography with founding member of the Four Seasons Tommy DeVito (as previously covered here on the 1709 Blog). Despite Judge Robert Jones previously noting that historical works are entitled to lesser protection than works of fiction, which suggests only Woodward's expression of these facts or his “unique selection and arrangement” of otherwise unprotectable elements would attract copyright protection, there were eleven similarities identified between the manuscript and the musical. It was not indicated which specific parts of the autobiography were copied but these similarities include the dialogue surrounding songs, the characterisation of individuals, and the description of scenes. It was also decided that the copied material contributed 10% to the show’s success. Damages will be determined at a late trial and a spokesman for the show has told NBC 4 New York “Jersey Boys” plans to appeal this decision – stay tuned.

Getty Images: Getty Images has had a copyright case dismissed without prejudice. Previously covered here by the 1709 Blog, Getty had threatened photographer Carol Highsmith via License Compliance Services (LCS) for copyright licence infringement. Ironically the image in question was one of Highsmith’s own - she had donated it to the Library of Congress, and Getty and its affiliates were subsequently discovered to have made available more than 18,000 of her other photographs. Highsmith responded with a copyright claim of statutory damages of almost $500m. These claims were, however, recently dismissed in a New York District Court, along with other claims that Getty and LCS had charged licensing fees and collected settlements from purported infringers for images they had no right to represent.

InfoSoc Directive fair compensation claims and jurisdiction: your chance to influence things

The UK Intellectual Property Office (IPO) has just been reminding us of the forthcoming Court of Justice the European Union (CJEU) reference in Case C-572/14 Austro-Mechana. This is a request for a preliminary ruling from the Austrian Oberster Gerichtshof on the following question:

Does a claim for payment of ‘fair compensation’ under Article 5(2)(b) of Directive 2001/29 ... on the harmonisation of certain aspects of copyright and related rights in the information society which, in accordance with Austrian law, is directed against undertakings that are first to place recording material on the domestic market on a commercial basis and for consideration constitute a claim arising from ‘tort, delict or quasi-delict’ within the meaning of Article 5(3) of Council Regulation ... 44/2001 ... on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters?

If you would like to comment on this case please email [email protected] by 9 February 2015. This will give the IPO a window of opportunity within which it will be able to consider whether the UK government should make submissions on this question or whether it should leave it to others. If you can't respond in time, don't panic:

We understand how difficult it is to provide detailed comments in the time available. The IPO has tight time limits in which to consider and provide advice to ministers on CJ cases. In order to help us provide the right advice, we just need a short email by the deadline stating whether you think the UK should intervene and some general points about how you think we should answer the questions. 

You are welcome to follow this email up with more detailed comments after the deadline, which can be taken into consideration if we have chosen to submit observations or if we decide to attend a hearing.

NOTE: since this piece was posted, our friend and reader Axel Paul Ringelhann has furnished us with his English translation of the referring court's decision.  Thanks so much!

Online infringement actionable where damage occurs, irrespective of where it was intended to happen, says CJEU

In another preliminary ruling of yesterday's date, the Court of Justice of the European Union (CJEU) had to determine where a copyright owner can bring proceedings for infringement when a third party has made the work available online for viewing and downloading without consent. The decision is Case C‑441/13, Pez Hejduk v EnergieAgentur.NRW GmbH, a request for a preliminary ruling from the Handelsgericht Wien (Austria).

The facts are as follows. Pez Hejduk, a professional photographer of architecture, created photographic works depicting the buildings of the Austrian architect Georg W. Reinberg. As part of a conference organised by EnergieAgentur, Reinberg used Hejduk’s photographs in order to illustrate his buildings, with her permission.  Subsequently EnergieAgentur -- without Hejduk’s consent and without stating that she was the author -- made those photographs available on its website for viewing and downloading. Hejduk sued EnergieAgentur in the Handelsgericht Wien, seeking damages of over 4,000 euro plus permission to publish the judgment at EnergieAgentur's expense.

EnergieAgentur raised an objection that the Handelsgericht Wien lacked international and local jurisdiction, saying that its website was not directed at Austria and that the mere fact that a website may be accessed from Austria is insufficient to confer jurisdiction on that court. The Handelsgericht Wien therefore stayed the proceedings and asked the CJEU:

‘Is Article 5(3) of [Regulation 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters] to be interpreted as meaning that, in a dispute concerning an infringement of rights related to copyright which is alleged to have been committed by keeping a photograph accessible on a website, the website being operated under the top-level domain of a Member State other than that in which the proprietor of the right is domiciled, there is jurisdiction only

– in the Member State in which the alleged perpetrator of the infringement is established; and

– in the Member State(s) to which the website, according to its content, is directed?’

Yesterday the CJEU ruled as follows:

Article 5(3) ... must be interpreted as meaning that, in the event of an allegation of infringement of copyright and rights related to copyright guaranteed by the Member State of the court seised, that court has jurisdiction, on the basis of the place where the damage occurred, to hear an action for damages in respect of an infringement of those rights resulting from the placing of protected photographs online on a website accessible in its territorial jurisdiction. That court has jurisdiction only to rule on the damage caused in the Member State within which the court is situated.

While the jurisdictional side of the ruling has its upside, the notion that the court has jurisdiction only to rule on the damage caused in the Member State within which the court is situated is a pain if it potentially means separate litigation in each of 28 jurisdictions to recoup damages on a country-by-country basis, particularly if the aggregated damage is substantial but the per-country damage is rather less so.

Eleonora's Katpost, pointing out that the Advocate General's Opinion also took the view that damages rulings should not be so limited, can be read here.

More on blocking injunctions...

Further to Ben's post last week that BPI is taking legal action to force internet service providers to block access to three more file-sharing websites, today the High Court handed down its decision in EMI & Others v BSkyB & Others in which the UK's six main retail ISPs were ordered to block access to three file sharing websites.

This judgment comes as no great surprise given Arnold J's similar decisions in Newzbin, Newzbin 2 and The Pirate Bay, however it makes it clear that use of s.97A CDPA to get a blocking order is now a viable option for rightsholders trying to prevent access to illegal file sharing sites. Arnold J's decision also contains an interesting discussion on jurisdiction which is often a difficult issue in online cases.

The websites in question were KAT, H33T and Fenopy, all music file-sharing websites. Arnold J first discussed the website users' infringements and the website operators' infringements.

The website users (the uploaders)

It was clear to Arnold J that the websites users' activities constituted both copying and communication to the public.

As regards communication to the public, Arnold J split the issue into three questions:

1. Do users of the websites, who are uploaders, communicate the Claimants' sound recordings to the public?

He held that they did, as they "make the recordings available by electronic transmission in such a way that members of the public may access the recordings from a place and at a time individually chosen by those members of the public."

2. Do such users communicate the recordings to a new public applying the criteria identified in Societá Consortile Fonografici v Del Corso?

In that case, the CJEU held that the broadcasting of sound recordings within private dental practices was not communication to the public for the purposes of Article 8(2) of the Related Rights Directive because the patients constituted a determinate circle of potential listeners, who only heard the recordings one at a time; that the patients attended for the purposes of dental treatment and had no choice over the recordings they listened to; and that the broadcast was not of a profit-making nature.

In the present case Arnold J held that users do communicate recordings to a new public as the users intervene, in full knowledge of the consequences of their actions, to give others access to the works. The recordings are made available to all other users of the websites and although the uploaders didn't directly make money from uploading, they would do so indirectly by downloading other users' music without paying.

3. Does the act of communication to the public occur in the UK?

Arnold J found that where the uploader was located in the UK, communication to the public occured in the UK. He was more doubtful as to whether the same would be true if the downloader was located in the UK. However as in this case the uploaders were in the UK he avoiding having to give a conclusive answer as regards the location of downloaders.

He referred to Football Dataco Ltd v Sportradar Gmbh in which the CJEU held that "re-utilisation" of data held in a database occurs at least in the state of transmission. Arnold J clarified that this should not be interpreted to mean that re-utilisation cannot also occur in the state of emission. He held: "Furthermore, this reading would be consistent with the natural meaning of "making available". It would be odd if this did not include the place of origin." On that basis Arnold J accepted the Claimants' argument that where a communication to the public which originates outside the UK is received inside the UK, the act will be treated as occurring within the UK if the communication is targeted at the public in the UK.

So Arnold J concluded that the users of the websites did communicate works to the public.

The website operators

The question of whether the operators of the websites made copies of the works was not considered. In considering whether the operators of the websites communicated the works to the public, Arnold J again split his analysis into three questions.

1. Do the operators of the websites communicate the Claimants' sound recordings to the public?

Arnold J found that in this instance there was no material distinction between Newzbin 1 and the websites in this case: the defendant had intervened in an active manner to make the films available, therefore the operators of the websites did communicate the Claimants' recordings to the public by electronic transmission.  

2. Do the operators communicate the recordings to a new public?

Arnold J held that they did as they intervened, in full knowledge of the consequences of their actions, to give others access to the works. The recordings were made available to all the users of the websites and the operators benefited financially from their activities.

3. Does the act of communication to the public occur in the UK?

In considering this question Arnold J took into account the CJEU's decisions in Pammer v Reederei Karl Schlüter GmbH & Co. KG and Hotel Alpenhof GesmbH v Heller; L'Oréal SA v eBay International and Donner. In doing so he found that the websites were targeted at the UK as:

- there were a large number of users of each website in the UK;

- a substantial proportion of the visitors to each website was from the UK;

- the recordings listed on each of the websites included large numbers of both (a) recordings by UK artists and (b) recordings that are in demand in the UK; and

- the default language of each of the websites was English.

In addition, KAT included advertisements with prices in sterling. On that basis Arnold J found that KAT was reasonably clearly targeted at the public in the UK but that the position was less clear in the case of H33T and Fenopy. In any event he reached the same conclusion in respect of all three: the act of communication to the public occurs in the UK.

Authorising and Joint Tortfeasorship

Further, Arnold J found that the website operators authorised the users' infringement of copyright. He said that the website operators went "far beyond merely enabling or assisting", they sanctioned, approved and countenanced the infringements of copyright committed by their users and purported to grant users the right to copy and communicate the works to the public. Further, as the operators profited from their activities they were also jointly liable for the users' infringements.

Conclusion

As both the users and the operators of the websites used the Defendants' services to infringe the Claimants' copyright, and as the Defendants had actual knowledge that users and the operators of the websites used the Defendants' services to infringe copyright (this was not denied), Arnold J was satisfied that granting blocking orders was a proportionate remedy. He concluded by saying that:

"The orders are narrow and targeted ones, and they contain safeguards in the event of any change of circumstances. The cost of implementation to the Defendants will be modest and proportionate."

Online database infringement occurs both where sent and received

Advocate General Cruz Villalon gave his Opinion yesterday in Case C‑173/11 Football Dataco Ltd, The Scottish Premier League Ltd, The Scottish Football League, PA Sport UK Ltd v Sportradar GmbH and Sportradar AG, a reference to the Court of Justice of the European Union from the Court of Appeal, England and Wales.

The note that appears below has been sent in by John Wilks of DLA Piper. John is part of the team that acted for Football Dataco and the other claimants.

What was referred

This was a reference to the CJEU from the English claim brought by Football Dataco and others against sports data supplier Sportradar, relating to the use of data collected live during English and Scottish football matches.  Sportradar sought to avoid the jurisdiction of the English courts, arguing that the infringing act of "re-utilisation" of the claimants' database could only take place  in the Member States in which its servers were situated.  The Database Directive defines "re-utilisation" as "any form of making available to the public", and the key question for the CJEU was whether the relevant data was made available in Austria (the place of "emission", where Sportradar's servers were), in the UK (the place of "reception", where the internet users targeted by the website hosting the data were), or both.  

What the AG Thought

The Advocate General considered that "The act of sending [the data] by Sportradar … is one of the necessary component parts of [the act of making available to the public] and…must therefore be regarded… as being in the nature of ‘re-utilisation’".  He expanded on this by saying "the term ‘re-utilisation’ would include the collection of acts which, in this case, starting with the ‘sending’ of data from Sportradar’s server and ending with the acts performed by the betting companies, culminates in the customers of those companies having access to the data sent".

He went on to explain the policy reasons behind his conclusion, that "In the context of the internet, the categories of ‘emission’ and ‘reception’ become highly relative as criteria for determining the ‘location’ of the points between which there is an act of communication. Categories based on concepts, such as time and space, the meaning of which becomes highly ambiguous in the world of virtual reality, are rendered ineffective by the networked configuration of a global communication medium". 

The Advocate General also rejected as "highly questionable" the idea that the more specific provisions relating to where copyright infringement occurs in a broadcasting context (the so-called "emissions theory") should be applied to online infringement.  This conclusion (if followed by the CJEU) could be of broader relevance to areas of copyright where there is debate as to whether case-law relating to broadcasting should be applied to the online world.

The Advocate General also dismissed as "misplaced" some submissions made to the court by the Portuguese and Belgian governments on the issue of subsistence of database right in live football data, which was not the subject of the reference at all.  

Further thoughts 

... If the Court follows the AG's Opinion, the ... High Court will have jurisdiction to rule on the issue of whether Sportradar is liable for primary infringement for the act of making its original service available to people in the UK.  More broadly, the decision is in line with the policy applied by the CJEU to questions of jurisdiction involving the internet in the earlier personality rights case of eDate (decided by the same Advocate General and referred to in this opinion), which concluded that the claimant could sue either where the publisher was based or where the affected claimant was based.

What does this all mean? John's colleague Simon Levine (IP partner, DLA Piper) explains:

"If followed by the court, the Opinion will bring good news to database right and copyright owners throughout Europe. While it was expressed as limited to the EU database right, it is hard to see why the logic behind it would not apply equally to copyright infringement on the web. Its implications are that website owners will not be able to escape the jurisdiction of the national courts of the content owner by locating themselves in a jurisdiction where it is more difficult for them to be sued".

Might this be the mystery case?

This blog's quest for details of the mysterious reference to the Court of Justice of the European Union (CJEU) in Case C-170/12 Pinckney has yielded an early dividend. A correspondent (thanks!) has emailed to suggest that this case may be a reference from the Cour de cassation, France, to the CJEU concerning jurisdiction in online copyright infringement disputes in M. X v Kdg Mediatech AG , which is available online thanks to Legalis here.

The action seeks to test out the legal position regarding the offering of CDs for sale on the internet, looking this time at the distribution right, not the right of communication to the public (though the questions referred appear to cover both communication to the public and physical distribution).

Early efforts at online trade caused more
technical problems than legal ones ...

In short, one X, a songwriter resident in France, claimed that Austrian company Mediatech infringed his copyright by making CDs of his songs which were then sold by British companies on websites that were accessible in France. His preference would be to sue Mediatech in France, but the French court said it did not have jurisdiction. X then appealed and the top French appellate court, the Cour de cassation, is now asking the CJEU whether Article 5(3) of the Brussels Regulation means that, in a case of online copyright infringement, the claimant can issue proceedings in any country where the site can be viewed (for the purpose of obtaining damages for that jurisdiction alone) -- or does the content of the website have to be targeted at that jurisdiction or have some other connection with the jurisdiction? And does it make any difference if the infringing content is in a physical medium?

Has anyone any better suggestions? And would anyone like to hazard a guess as to what, in the light of current CJEU jurisprudence, the answer is likely to be?

Pinckney: can anyone help?

A couple of pink knees
here, but not quite what
we're looking for ...

A notification from the UK Intellectual Property Office (IPO) informs us of a new copyright case that has been referred to the Court of Justice of the European Union: it's Case C-170/12 Pinckney. The subject of the reference is said to be "Identification of the courts with jurisdiction in relation to an alleged cross-border copyright infringement" and the IPO kindly furnishes a link to the case on the Curia website.

Alas, on clicking through, this blogger has been unable to unearth the questions which have been referred for a preliminary ruling, since there no documents in the case file. This is a pity, because the IPO invited comments by 26 May.

Can anyone shed light on this litigation?

Painer: pain for the press?

On 1 December the Court of Justice delivered its 150-paragraph ruling in Case C-145/10 Eva-Maria Painer v Standard VerlagsGmbH, Axel Springer AG, Süddeutsche Zeitung GmbH, SPIEGEL-Verlag Rudolf AUGSTEIN GmbH & Co KG and Verlag M. DuMont Schauberg Expedition der Kölnischen Zeitung GmbH & Co KG (Opinion of AG Trstenjak noted by the IPKat back in April here).

As our readers may remember, this case was a reference for a preliminary ruling from the Handelsgericht Wien (Austria), in the context of proceedings for copyright infringement brought about by photographer Eva-Marie Painer against some Austrian and German newspaper and magazine publishers.

Ms Painer is a freelance photographer and took several photographs of Natascha Kampusch  designing the background, deciding the position and facial expression, and producing and developing them. Ms Painer sold the photographs which she produced, but without conferring on third parties any rights over them and without consenting to their publication. After Natascha Kampusch was abducted in 1998, the competent security authorities launched a search appeal in which the photographs by Ms Painer were used. Following Natascha’s escape from her abductor in 2006 and prior to her first public appearance, the defendants in the main proceedings published such photographs in newspapers, magazines and websites without, however, indicating the name of the photographer, or indicating a name other than Ms Painer’s as the photographer. They claimed that they had received the contested photographs from a news agency without Ms Painer’s name being mentioned or with a name other than Ms Painer’s name being indicated as the photographer’s. Several of those publications also featured a portrait, created by computer from the contested photographs, which, since there was no recent photograph of the girl until her first public appearance, was a photo-fit of Natascha.

In 2007, Ms Painer sought an order that the defendants in the main proceedings immediately cease the reproduction and/or distribution, without her consent and without indicating her as author, of the contested photographs and the contested photo-fit. The Oberster Gerichtshof held that the defendants in the main proceedings did not need Ms Painer’s consent to publish the contested photo-fit. Despite being the contested photograph which had been used as a template for the contested photo-fit a photographic work protected by copyright, the production and publication of the contested photo-fit was not an adaptation for which the consent of Ms Painer was needed. Anyway, the court decided to stay the proceedings and revert to the Court of Justice, seeking clarification of four questions:

(1) Is Article 6(1) of Regulation No 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters [aka Brussels I] to be interpreted as meaning that its application and therefore joint legal proceedings are not precluded where actions brought against several defendants for copyright infringements identical in substance are based on differing national legal grounds the essential elements of which are nevertheless identical in substance – such as applies to all European States in proceedings for a prohibitory injunction, not based on fault, in claims for reasonable remuneration for copyright infringements and in claims in damages for unlawful exploitation?

The Court held that Article 6(1) must be interpreted as not precluding its application solely because actions against several defendants for substantially identical copyright infringements are brought on national legal grounds which vary according to the Member States concerned. It is for the referring court to assess, in the light of all the elements of the case, whether there is a risk of irreconcilable judgments if those actions were determined separately.

(4) [which the Court deemed it appropriate to address after Question 1] Are Article 1(1) of Directive 2001/29 in conjunction with Article 5(5) thereof and Article 12 of the Berne Convention, particularly in the light of Article 1 of the First Additional Protocol to the European Convention for the Protection of Human Rights and Fundamental Freedoms and Article 17 of the Charter of Fundamental Rights of the European Union, to be interpreted as meaning that photographic works and/or photographs, particularly portrait photos, are afforded “weaker” copyright protection or no copyright protection at all against adaptations because, in view of their “realistic image”, the degree of formative freedom is too minor?

By referring to the ruling in Infopaq (noted in this Blog here), the Court first recalled that copyright is liable to apply only in relation to a subject-matter, such as a photograph, which is original in the sense that it is its author’s own intellectual creation, i.e. if it reflects the author’s personality. That is the case if the author was able to express his creative abilities in the production of the work by making free and creative choices (see, a contrario, Joined Cases C‑403/08 and C‑429/08 Football Association Premier League and Others [2011] ECR I‑0000, paragraph 98).

As regards a portrait photograph, the photographer can make free and creative choices in several ways and at various points in its production. In the preparation phase, the photographer can choose the background, the subject’s pose and the lighting. When taking a portrait photograph, he can choose the framing, the angle of view and the atmosphere created. Finally, when selecting the snapshot, the photographer may choose from a variety of developing techniques the one he wishes to adopt or, where appropriate, use computer software. By making those various choices, the author of a portrait photograph can stamp the work created with his ‘personal touch’. Consequently, as regards a portrait photograph, the freedom available to the author to exercise his creative abilities will not necessarily be minor or even non-existent.

In view of the foregoing, a portrait photograph can be protected by copyright if – which it is for the national court to determine in each case – such photograph is an intellectual creation of the author reflecting his personality and expressing his free and creative choices in the production of that photograph.

Coming to the question whether such protection is inferior to that enjoyed by other works, particularly photographic works, the Court observed that nothing in Directive 2001/29 or in any other directive applicable in this field supports the view that the extent of such protection should depend on possible differences in the degree of creative freedom in the production of various categories of works. Therefore, as regards a portrait photograph, the protection conferred by Article 2(a) of Directive 2001/29 cannot be inferior to that enjoyed by other works, including other photographic works.

(3)(a) [which the Court decided to address next] Is Article 5(3)(e) of Directive 2001/29, in the light of Article 5(5) thereof, to be interpreted as meaning that in the interests of criminal justice in the context of public security its application requires a specific, current and express appeal for publication of the image on the part of the security authorities, i.e. that publication of the image must be officially ordered for search purposes, or otherwise an offence is committed?

(b)If the answer to question 3a should be in the negative: are the media permitted to rely on Article 5(3)(e) of [Directive 2001/29] even if, without such a search request being made by the authorities, they should decide, of their own volition, whether images should be published “in the interests of public security”?

(c)If the answer to question 3b should be in the affirmative: is it then sufficient for the media to assert after the event that publication of an image served to trace a person or is it always necessary for there to be a specific appeal to readers to assist in a search in the investigation of an offence, which must be directly linked to the publication of the photograph?

As a preliminary point, the Court observed that the provisions of Directive 2001/29 do not expressly address the circumstances in which the interests of public security can be invoked with a view to the use of a protected work, meaning that, though the Member States which decide to enact such an exception enjoy a broad discretion in that respect, such discretion must comply with the need for legal certainty for authors with regard to the protection of their works and, in any case, is limited by Article 5(5) of the Directive. The Court held that the media, such as, in this case, newspaper publishers, cannot be allowed to confer on themselves the protection of public security. Only States, whose competent authorities are provided with appropriate means and coordinated structures, can be regarded as appropriate and responsible for the fulfillment of that objective of general interest by appropriate measures including, for example, assistance with a search appeal. Such a publisher cannot, therefore, of its own volition, use a work protected by copyright by invoking an objective of public security. However, the Court added that it is conceivable that a newspaper publisher might, in specific cases, contribute to the fulfilment of such an objective by publishing a photograph of a person for whom a search has been launched. In any case, it should be required that such initiative is taken, first, within the framework of a decision or action taken by the competent national authorities to ensure public security and, second, by agreement and in coordination with those authorities, in order to avoid the risk of interfering with the measures taken by them, without, however, a specific, current and express appeal, on the part of the security authorities, for publication of a photograph for the purposes of an investigation being necessary.

(2)(a) Is Article 5(3)(d) of Directive 2001/29, in the light of Article 5(5) of that directive, to be interpreted as meaning that its application is not precluded where a press report quoting a work or other protected matter is not a literary work protected by copyright?

(b) Is Article 5(3)(d), in the light of Article 5(5) thereof, to be interpreted as meaning that its application is not precluded where the name of the author or performer is not attached to the work or other protected matter quoted?

The Court observed – inter alia - that Article 5(3)(d) of Directive 2001/29 sets out a series of conditions for its application which do not include a requirement that a work or other protected subject-matter must be quoted as part of a literary work protected by copyright. Therefore the proviso must be interpreted as not precluding its application where a press report quoting a work or other protected subject-matter is not a literary work protected by copyright. As a consequence, it must be interpreted as meaning that its application is subject to the obligation to indicate the source, including the name of the author or performer, of the work or other protected subject-matter quoted. However if, in applying Article 5(3)(e) of Directive 2001/29, that name was not indicated, that obligation must be regarded as having been fulfilled if the source alone is indicated.

The decision of the Court may lead the readers of this Blog to engage in reflections and comments upon the well-known tendency – at the level of EU judiciary – to tackle the concept of originality as a means to define the scope of protection. This case may also raise observations as to the related issue of copyright limitations …

Compulsory licensing and civil jurisdiction in India

Amit Jamsandekar has just sent me a copy of the judgment of the Division Bench of the Bombay High Court, which last week decided an important issue relating to the jurisdiction of a civil court in matters relating to compulsory licensing of sound recordings for broadcasting. The Single Judge of the Bombay High Court in Music Choice India Pvt. Ltd v Phonographic Performance Limited, MIPR 2009(1)329; 2009(111) Bom LR 609 held that the jurisdiction of the civil court to deal with such matters was barred by Section 31 of the Copyright Act 1956, which conferred jurisdiction to deal with compulsory licences upon the Copyright Board. The Single Judge further held that a civil suit for injunctive and declaratory relief pending an application for a compulsory licence was not maintainable in the civil court.

This judgment was challenged by Music Choice India Pvt. Ltd and the Division Bench, having heard the appeal, has now confirmed the view taken by the Single Judge.

You can read the decision of the Single Judge here and the ruling of the Division Bench here.

Scottish court rules on jurisdiction regarding online infringements

Here's an interesting Scottish decision, from Sheriff Principal Lockhart, in Mackie v Askew which considers jurisdiction in relation to infringement of copyright and moral rights by activities using the internet, with a focus on Article 5(3) of the Brussels I Regulation. In short:

"Photographs had been placed on the internet by Mackie, and Askew had then placed these photographs on her own internet site. The key issue is which of the Scottish Sheriff (lower) courts has jurisdiction, on the basis of Civil Jurisdiction and Judgments Act Order schedules 4 and 8. Scotland is split into a series of sheriffdoms, determined by geography. These courts have limited IP jurisidiction, but can look at copyright cases.

The court made particular reference to the Scottish decision in Bonnier Media Ltd v Gregg Lloyd and Kestrel Trading Corporation (2002 Scot CS 347 (1 July 2002) regarding jurisdiction, domain names and trade mark infringement. The court then held that the action could be raised where the harm is felt -- as well as where the harmful event occurs. Here, the harmful event occurred in the Sheriffdom of Greenock, where Askew is. Harm was felt, however, in the Sheriffdom of Ayr; and it is was therefore permitted for Mackie to raise the action in Ayr.

This note has been kindly furnished by Abbe E. L. Brown (Lecturer in Information Technology Law, University of Edinburgh), who adds:

"This decision is likely to be of key importance for those seeking to raise copyright actions Scotland, and may also be of broader interest regarding article 5(3) and litigation in relation to the internet".