Private copying in Spain: a new look for fair compensation rules

From our Spanish friend Fidel Porcuna (Bird & Bird) comes some significant news of developments in the bottom left hand corner of the European Union.  Fidel writes:

"On 18 October the Spanish Government launched a public consultation over the new draft regulation for collecting fair compensation for private copying. This consultation ended on 5 November and, presumably, collective societies and other private institutions and associations have filed substantive observations. This new draft follows the abolition on 31 December 2011 of the Spanish copyright levy: its main objective is to establish a new system to compensate right holders for private copying.

Under this new system, compensation will be calculated annually and charged to the State Budget: there will be no collecting obligations for the industry as in the past. This is interesting: if you link the copyright levy to the actual sale of the digital reproduction equipment, devices and media, the indiscriminate application of the copyright levy to virtually all users of such equipment, devices and media is incompatible with Directive 2001/29 (Case C-467/08 Padawan). If you however discharge this obligation via the State Budget, such obligation would still be imposed on virtually all users of such equipment, devices and media, and even extended to non-users but, in the eyes of the Spanish lawmaker, that will be in conformity with Directive 2001/29.

The amount of compensation will be calculated on the basis of the harm actually caused to copyright  owners in result of copying by individuals for private use, but not professional or business use. The estimate of this harm is done by applying the following objective criteria:

(a) an estimate of the number of copies made, excluding those reproductions made by equipment, devices and digital reproduction media that have not been made available to private users and are clearly reserved for uses other than private copying. 

(b) the impact of private copying on the sale of original works, taking into account the actual degree of substitution by these private copies made and the effect it has on such original works the possibility of private copies by the purchaser. 

(c) the nature of the copies (digital or analogue) and the different impact it has on the private copy limit.

(d) The application of technological measures referred to in Article 160(3) of the Intellectual Property Law to avoid non-authorised uses of the protected works.

The preceding paragraph does not give rise to an obligation tocompensate in those situations in which the prejudice to the right holder is minimal.

There will be three categories for distribution: phonograms, audiovisual works and books. The Government will pay the collective societies, which will distribute the amount to right-holders.

Manufacturers, distributors, wholesalers or retailers and end-buyers who paid levies before 1 January 2012 will not be entitled to a refund of the amount paid. Further, debtors and, where appropriate, parties who are jointly responsible for fair compensation for private copying who acquired such status before 1 January 2012 and did not submit the settlement declaration to collective societies or had not paid the amounts due, must do so within six months from the entry into force of the Royal Decree. Note: the levy will be generated for the importer/ manufacturer the moment it transfers the ownership of the product to the next link in the chain (distributor).

The Spanish Government has set the amount for 2012 and 2013 at €5 million for each year. 

Finally, the draft Royal Decree amending the current Intellectual Property Law was leaked to the press a few days ago. Although the Government sustains that such draft is not the current version, it has not denied that the leaked document is fake. The amendments are substantive. For example, the text reads that the private copy shall only be the copy of the original work or the original broadcast of such work, so a copy made from a private copy will fall outside of the limitation (the position currently is broader because the law expressly refers to copies made from works to which the user has legal access). In addition, internet service providers offering links to protected contents (to be downloaded through Torrent etc.) must publish the list of the authorisations from the right holders of the linked contents under a penalty of up to 150,000 Euros. The disclosure of IP address identification will be possible in cases of unauthorised massive dissemination of protected contents".

Is the term of protection of copyright too long?

Last Friday the Republican Study Committee published a policy brief entitled "Three Myths About Copyright Law and Where to Start to Fix It", which Techdirt labelled as "surprisingly awesome".

The brief analysed the "possible reforms to copyright law that will lead to more economic development for the private sector and to a copyright law that is more firmly based upon constitutional principles". It argued that the current US copyright regime has retarded the creation of a robust DJ/Remix industry, hampers scientific inquiry, stifles the creation of a public library, discourages added-value industries and penalises legitimate journalism and oversight.

The brief suggested the following four potential policy solutions: statutory damages reform, expansion of fair use, punishing false copyright claims and heavily limiting the terms for copyright and creating disincentives for renewal.

However, the day after the brief was published the RSC issued a statement retracting it. The Executive Director of the RSC, Paul Teller, sent an email saying:

"We at the RSC take pride in providing informative analysis of major policy issues and pending legislation that accounts for the range of perspectives held by RSC Members and within the conservative community. Yesterday you received a Policy Brief on copyright law that was published without adequate review within the RSC and failed to meet that standard. Copyright reform would have far-reaching impacts, so it is incredibly important that it be approached with all facts and viewpoints in hand. As the RSC's Executive Director, I apologize and take full responsibility for this oversight. Enjoy the rest of your weekend and a meaningful Thanksgiving holiday...."

It is hard to find any information on the RSC's website, neither the brief nor the statement retracting it are there, however you can access a copy of the brief here thanks to InfoJustice.

The suggestion by the RSC brief  to reduce the term of protection is particularly interesting and has already been much discussed. Article 7 of the Berne Convention provides for minimum copyright protection of 50 years plus life, and current US law grants copyright protection for 70 years after the date of the author's death.

Both seem relatively long, in particular compared with the limited protection granted to inventions by patents. As you can see from the graphic to the right, copyright term in the US has increased steadily over the years. Before 1978 (which is when the US Copyright Act 1976 came into force), copyright was protected for an initial term of 28 years, renewable for a further 28 years, giving a maximum term of 56 years.

An interesting post by the Center for the Study of the Public Domain, at Duke University, lists the works (published in 1955) that would have come into the public domain this year had the US Copyright Act of 1976 remained in force. These include:

- J.R.R. Tolkien's The Return of the King, the final installment in his Lord of Rings trilogy.
- Vladimir Nabokov's Lolita.
- Richard III, Laurence Olivier's film version of the Shakespeare play.
- Various scientific journal articles about the synthesis of DNA- and RNA-like molecules, the effect of placebos, the experimental confirmation of the existence of the antiproton, fibre optics, and the synthesis of mendelevium.

There is a certain irony that utility patents are currently protected for 20 years from application whereas articles containing know-how required to make the products of the patents can be protected for 70 years.

In the US there is a registration requirement for copyright, which makes it possible to see how many rightsholders still rely on copyright in works published in 1955, by looking at how many of them renewed their copyright registrations after the first 28 year term. The Center for the Study of the Public Domain has done the maths: 85% of authors did not renew their copyright (for books 93% did not renew). This means that if the pre-1978 law were still in force, 85% of the works created in 1983 might have come into the public domain this year.

The Open Government Dialogue suggests that: "Life of the author plus 50 years is enough to take care of the author and his family, and that is really what copyright protection is all about. The corporations are not people and do not need such protection to be successful." The above evidence indicates that a term of protection of 28 years is sufficient.

The RSC's policy said that:

"It is difficult to argue that the life of the author plus 70 years is an appropriate copyright term for this purpose – what possible new incentive was given to the content producer for content protection for a term of life plus 70 years vs. a term of life plus 50 years? Where we have reached a point of such diminishing returns we must be especially aware of the known and predictable impact upon the greater market that these policies have held, and we are left to wonder on the impact that we will never know until we restore a constitutional copyright system."

The RSC's policy suggested that the term of copyright protection should be reduced to 12 years for all new works, with various renewal periods but with an upper limit of 46 years' copyright protection. This would contravene the Berne Convention however given the retraction of that policy we are unlikely to see any change in the US law any time soon.

I would be interested to hear what readers think: is the current US protection of 70 years plus life too long? Is the Berne Convention minimum of 50 years plus life too long? Given that copyright is more and more often used to protect technology, should the term of protection of copyright be aligned with that of of patents?


More legible versions of the above images can be accessed here:

Map showing copyright term worldwide

© Balfour Smith, Canuckguy, Badseed

Expansion of copyright term in the US
© Vectorization: Clorox (diskussion), Original image: Tom Bell.

Should parents be responsible for their teenager's actions?

I should rephrase that as: should parents be legally responsible for their teenager's actions? As we all know, teenagers are a law unto themselves. The thought of being legally responsible for one is pretty frightening. Fortunately, yesterday the German Federal Court, der Bundesgerichtshof, handed down a decision saying that the parents of a 13 year-old file-sharer could not be held responsible for their son's infringement. Further, they could not be required to monitor or hinder his activity online. Phew.

The Bundesgerichtshof released a press release, in German, saying that the parents could not be held responsible as they had taught their son that file-sharing was illegal and had not known that their son was file-sharing.

The case was brought by various record producers who, back in 2007, found that a particular IP address was linked to the illegal download of 1,147 audio files. The IP address was traced to this teenager's family home, specifically to a computer belonging to the teenager himself. The computer was subsequently seized and the authorities found that "Morpheus" and "Bearshare" had been installed, with the "Bearshare" icon appearing on the desktop.

The record producers sued the parents of the teenager citing a violation in their duties of parental supervision, and claimed damages of €2,380.80. The district court found in favour of the record producers, and the family's subsequent appeal to the appellate court was unsuccessful. The appellate court found the parents liable for damages caused by their son's illegal file sharing because they failed to properly supervise him. The court relied on under s.832(1) BGB which says [my rough translation assisted by Google Translate]:

"Any person legally required to supervise a legal minor or a  person requiring supervision due to a mental or physical condition, will be liable for any damage caused by the person subject to supervision. The supervising person is excluded from liability if he meets his duty of supervision or if the damage would have occurred had he met his duty of supervision."

The appellate court said that the parents should have installed a firewall and security program, and that they could have seen by checking the computer that their son had installed file-sharing programs.

However the Bundesgerichtshof found yesterday that given that the parents had taught their son that file-sharing was illegal, they had met their "parental obligation to supervise a normally developed 13-year-old child". They were not required to go so far as to monitor or obstruct their son's use of the internet nor to conduct checks on the computer. The court held that such measures would only be required if parents had reasonable grounds for suspecting their child of infringing use.

Of course this raises the question of how much any parent knows about what their teenage child does on a computer but overall this seems to be the right decision. Parents should teach their children the do's and don't of the internet but cannot, practically, be required to monitor their child's every move.

TorrentFreak  labels this decision a "blow to rightsholders in their quest to clamp down on illicit file-sharing". This seems a step too far; in a world where teenagers often know much more about computers than their parents do it would be unfair to make them responsible for activities that they may know nothing about.

TorrentFreak also notes that Germany is the toughest jurisdiction in the world when it comes to enforcing laws against on file-sharers, as legislation means that internet account holders are almost always found liable for activities taking place on their connections. Further, Columbia University recently noted that most people in Germany think that it is wrong to file-share (other than with friends or family). It sounds to this blogger like German law is heading in the right direction, by prioritising education and personal responsibility but clamping down on file-sharing by finding individuals liable when it has to.

Pandora opens up a box of fun

Pandora, the American streaming music service, has issued legal proceedings in the USA on the basis that the rates currently being offered by ASCAP, the US collecting society are unfair, because they are not as favourable as those offered to traditional broadcasters like Clear Channel, which have recently moved into the online music space. Arguing that Clear Channel have an advantage as it can negotiate the royalties they pay for their online services at the same time as negotiating music publisher fees for their FM networks, via the Radio Music Licensing Committee, the move comes after direct negotiations had failed. 

However, in the world of sound recordings, the collection societies are fighting back with the news that SoundExchange, the non-profit organisation that represents record labels and recording musicians, has launched its opposition to the Internet Radio Fairness Act, highlighting a letter signed by 125 artists who oppose Pandora's plan to "cut artists' pay" when music is played over Internet radio. The open letter, which has over 40 Grammy winners' signatories and the backers includes Kiss, the Dead Kennedys, Missy Elliot, Pink Floyd, Megadeath, Robert Plant, Don Henley, Billy Joel, Maroon 5, Martha Reeves, David Sanborn, Ne-Yo, Common and Roger Waters, praises Pandora saying "We are big fans" - and celebrates the company's commercial success, but asks why Pandora, with massive growth in revenues and a successful IPO under its belt, is pushing Congress to "slash musicians" pay saying "That's not fair and that's not how partners work together" telling Pandora it's time to go back to the drawing board.

“We all want Internet radio to succeed, but it won't if it tries to do so on the backs of hard working musicians and singers," said MusicFIRST Executive Director Ted Kalo, and SoundExchange President Michael Huppe added "This issue is critical to the tens-of-thousands of recording artists we represent - all of whom rely on this digital performance revenue stream to make a living,". "It is important that we protect artists and the long-term value of their music, which is, after all, the foundation of Internet radio." 

Pandora claims the internet service has paid considerably more in performance royalties than satellite radio provider SiriusXM and the legislation is needed to level the playing field. 

The proposed law, the Internet Radio Fairness Act, (H.R. 6480/S 3609) was introduced in the US Senate by Oregon Democrat Ron Wyden. The House version has bi-partisan support and is backed by Republicans Jason Chaffetz (Utah) and Darrell Issa (California) and Democrats Jared Polis (Colorado) and Zoe Lofgren (also California) The legislators claim the Internet Radio Fairness Act would modernise the music copyright royalty system by setting a more equitable standard for the calculation of royalty rates for Internet radio. Interestingly, the EFF also support the legislation saying on their website that now the 2012 presidential campaign is over, “Congress may soon be able to get back to business. One of the things it should prioritize is fixing a longstanding tax on innovation that most folks don’t know about, but they should:the unfair legal treatment of Internet radio”.

So - a tax on innovation?  or a tax on musicians and the music industry? The debate seems set to run .......

https://www.eff.org/Internet-Radio-Fairness-Act-ExplanationA musicians perspective on Pandora

http://www.musicfirstcoalition.org/sites/default/files/Artist%20Letter.pdf 

http://www.examiner.com/article/music-industry-protests-pandora-and-internet-radio-fairness-act

Does Oracle ruling breach WIPO Copyright Treaty?

Case C-128/11 Oracle v UsedSoft has attracted a good deal of attention and analysis from within Europe, much of it sharply critical -- but it has also been noted by both academics and practitioners from further afield. One such distant source is a respected and seasoned New Zealand lawyer, Ken Moon (AJ Park Law), who has expressed himself as being troubled by it.  His perspective on the case is reproduced here:

"Europe in breach of international copyright treaty 

A recent decision of the European Court of Justice (CJEU) on the licensing model for software transactions, has inadvertently breached the WIPO Copyright Treaty of 1996. There are numerous international treaties governing copyright law, but the treaty which brought copyright law up to date with the internet was the 1996 World Intellectual Property Organisation (WIPO) Copyright Treaty (WCT).

It now appears that a decision from the European Union's highest court, the CJEU, means that the countries of Europe, despite ratifying the WCT in 2001, are now breaching it, although the court itself seems not have realised this.

The Oracle v UsedSoft decision

In July, the CJEU in the case Oracle v UsedSoft decided two things. First, that a software licence was actually a sale and second, that the downloading of the Oracle software over the internet to the licensee "exhausted" a component of Oracle's copyright in the software, namely its exclusive "right to communicate" that copy of the software. This article focuses on the second issue.

UsedSoft GmbH was a German company which marketed "used" software licences and for this purpose purchased licences from Oracle's licensees (including Oracle client-server databank licences) for the purposes of resale on the second hand market.

The CJEU was referred this case by Germany's Federal Supreme Court (BGH) after two prior appeals by UsedSoft, and the CJEU's decision is final and non-appealable.

Finding that a licence is a sale is in conflict with US and Commonwealth decisions, and is controversial in itself, but it is the decision on the exhaustion of copyright issue which offends the WIPO Copyright Treaty.

WIPO Copyright Treaty 1996

Among other things the WCT required member states to incorporate in their copyright law a more comprehensive "right of communication" for copyright owners than had been required previously under the Berne Copyright Convention. This right, contained in Article 8 of WCT, is the "right of communication to the public" and it gives copyright owners the exclusive right to communicate their copyright works to the public. "Communicate" here means communication "by wire or wireless means". It covers "transmission" and, as it was intended to do, covers transmissions of digital and digitised works over the internet. Under Article 22 of WCT no member state could implement Article 8 (or any other Articles) in a manner which amounted to a variation of the Treaty text. The online aspect of this communication right was said to be one of the greatest achievements of the WCT.

In case there was any doubt as to the copyright status of a computer program, Article 4, in line with what was then the law of most countries, expressly confirmed that "computer programs are protected as literary works", "whatever may be the mode or their form of expression" and the right to transfer computer programs was made exclusive to their copyright owner. The Treaty also confirmed in Article 6 an exclusive "right of distribution" which relates to "copies that can be put into circulation as tangible objects". A number of countries had long had a principle of "exhaustion" of the right to distribute copies after their first sale (first sale doctrine). For example, the purchaser of a book would be free to resell the book without breaching the copyright owner's distribution right. The WCT expressly allowed exhaustion of right of distribution (of tangible physical copies) in Article 6(2), but not for the Article 8 right of communication of intangible digital files.

The European Union was one of the sponsors of the right to communicate in the WCT negotiations and ratified the WCT in 2001 by way of the Information Society Directive 2001/29/EC. This obligated the members of the EU to ensure their national copyright law implemented the provisions of the WCT.

Confusing the right to communicate with the right to distribute

The CJEU in the Oracle case, despite the fact that the Oracle software was only transferred to licensees in digital form over the internet, decided that this amounted to distribution and that being the case that the copyright owner's distribution right in each downloaded copy was exhausted. This meant that those copies could be freely "sold" on despite the Oracle licence agreement saying that they could not.

Oracle, the European Commission itself and some EU governments, unsuccessfully argued that the appropriate right that should be considered by the court was the WCT Article 8 communication right and not the Article 6 distribution right which should only apply to physical things. The CJEU relied on the later EU Software Directive 2009/24/EC, which in Article 4(2) confirmed first sale of software exhausted the distribution right and which whether deliberately or by oversight made no reference to the status of the right to communicate after first sale. The ECJ said this software specific law overrode the 2001 general copyright law.

But it is stretching legal logic somewhat to say that because the Software Directive does not refer to the right to communicate then this right is somehow subsumed within the right to distribute to thereby allow the first sale doctrine to apply.

Breach of the WIPO Copyright Treaty

Even if the CJEU reasoning is correct for current EU law, its decision in the Oracle case means that European copyright law does not comply with the WCT Article 8 which does not authorise any exhaustion of the copyright owner's right of communication on first sale, let alone what in reality was a licence and not a sale.

Article 8 of WCT requires that member states of WCT must give to copyright owners the exclusive right to communicate their works to the public by wire or wireless means. Article 4 WCT confirms a computer program is a copyright work. Oracle communicated its software to its licensees. Under the WCT, licensees do not acquire any right to "re-communicate" their Oracle software to third parties. The WCT Article 8 does not allow any member state to make laws which exhaust Oracle's exclusive right to communicate its software. The CJEU has interpreted European Union law to do just that. Such an interpretation means European law is in breach of the WIPO Copyright Treaty.

Impact of the CJEU decision on software licensing

The Oracle decision will severely impact software developers who trade in Europe, especially as all existing licences in Europe will be now classed as sales. For the future the traditional software licensing model will have to be modified (annual royalty fees perhaps?) or replaced with a software as a service model (SAS) with the software resident in the cloud and not with the end user. However while this may mean Europe's breach of the WCT becomes less exposed it cannot cure it. A cure will have to come through a new EU Directive amending the 2009 Software Directive to expressly recite the WCT right to communicate and the denial of any exhaustion of this right by first "sale".

Fortunately, because the CJEU relied on an interpretation of the Software Directive 2009 to override EU copyright law it is hard to see how the Oracle decision could be interpreted to extend to other licensed digital products communicated online such as films and sound recordings. The licensing model for online dissemination of these products should remain viable".

Is Ken right? And has he overstated the significance of this case, or understated it? Do let us --and him -- know what you think.

Mobile phone ringtone downloads cause $15 million claim

The four main Canadian mobile phone providers, Rogers, Telus, Bell and Quebecor have filed a claim against the Society of Composers, Authors and Music Publishers of Canada (SOCAN) in which they have asked for restitution of CA$ 15 million as well as special damages. The mobile phone providers are claiming that fees paid to SOCAN in respect of mobile phone ringtone downloads should be reimbursed to them.

The ringtones had been subject to tariffs certified by the Copyright Board and upheld by the Federal Court of Appeal however the mobile phone providers are relying on the Canadian Supreme Court decision of 12 July 2012 in Entertainment Software Association v. SOCAN to argue that the Copyright Board did not have jurisdiction to certify the tariffs.

In ESA v SOCAN the Supreme Court found that downloading a video game does not constitute a communication to the public under s.3(1)(f) of the Canadian Copyright Act. In this case ESA represented a coalition of video game publishers and distributors who enabled customers to download copies of video games as an alternative to buying physical copies of the games in shops. It was key in this case that ESA had already paid royalties in respect of the video games, therefore the Supreme Court held that download of the game should not attract additional fees as this would violate the principle of technological neutrality. Therefore downloading the game was not a communication to the public.

Of course the last sentence of the above paragraph does not necessarily flow from the principle of technological neutrality that the Supreme Court was seeking to implement, and to say that a download does not constitute communication to the public has much broader implications. It is not clear from the statement of claim whether the mobile phone providers have already paid royalties in respect of the ringtones in a different format and therefore are seeking to apply the principle of technological neutrality affirmed by the Supreme Court, or whether they simply want to rely on the Supreme Court's finding that downloads do not constitute communications to the public to exempt them from paying royalties at all.

Either way, the Canadian mobile phone providers are asking for their money back as well as a declaration that that the transmission of a ringtone is not a communication to the public by telecommunication.

As an aside, in Europe the term communication to the public (used at Article 3 of the InfoSoc Directive) has also been much discussed. Most recently, the CJEU has held in UsedSoft v Oracle that in the EU download of a computer program is a distribution rather than a communication to the public for the purposes of Article 3 (see here for a report of the judgment). The CJEU limited its decision to software licensing, so the principle doesn't automatically extend to other content distributed over the internet, however it gives a good indication of how the CJEU might address the question of downloads in general.

The main similarity between the decisions of the Canadian Supreme Court and the CJEU is the feeling that users should not be penalised because they choose to download content rather than buying it on the high street. With that in mind, if the Canadian mobile phone providers are looking to benefit from not paying royalties at all they may find that they have an uphill battle on their hands.

Assignment of copyright: "done… thanks!"

A quick post on assignment of copyright further to the decision in MVP Entertainment, Inc.,

v Mark Frost which was handed down in the Court of Appeal of California last week.

In this case Frost wrote a book called "The Match: The Daythe Game of Golf Changed Forever". Copyright in the book was assigned to Good Comma Ink, of which Frost was the sole owner, however a company called MVP was interested in acquiring rights in the book to make it into a film.

© kulicki

In late 2008 and early 2009, the parties' lawyers corresponded about MVP's potential purchase of copyright in the book and on 30 April 2009 MVP's lawyer sent Frost's lawyer an email proposing certain terms and saying: "Let me know if this is okay and we'll send paperwork . . . .". Frost's lawyer, Mr Wertheimer replied saying: "done . . . thanks! Werth." On the face of it this seems an ambiguous email, however the parties proceeded: in May MVP's laywer sent Wertheimer an agreement which he wanted to have signed by 17 or 18 August, however no formal agreement was signed.

At some point in the summer of 2009, Frost met with the president of MVP and shortly afterwards told him he did not want MVP to make his book into a film. This caused MVP to sue Frost for breach of contract, promissory estoppel, declaratory relief, and negligent misrepresentation. MVP's overarching claim was that the parties entered a contract or promised MVP they would enter into a contract to allow MVP to make a film of Frost's book. Essentially they were arguing that Wertheimer's email saying "done . . . thanks! Werth" was signed by Wertheimer and created a binding contract. This may seem a far reaching claim, so readers will not be surprised by the court's decision.

Wertheimer's response to the claim was that his email "was intended to simply note that the parties were in accord on the broad economic terms of a deal" and that by signing off as "Werth" he had not intended to sign a contract or to bind himself or Frost to anything. Frost added that although Wertheimer negotiated deals on his behalf, he never signed contracts for him and that in this instance Frost had not given Wertheimer the authority to assign copyright in his book.

In the US, as in the UK, assignment of copyright must be done in writing and must be signed (s.204(a) of the US Copyright Act and s.90(3) CDPA 1988).

At first instance the trial court granted summary judgment concluding that a transfer of ownership was invalid unless signed by the owner or the owner's duly authorized agent. The court further concluded that even if express authority were not required, Frost had done nothing to suggest that Wertheimer had authority to transfer the property.

MVP appealed this decision saying that Wertheimer had actual or ostensible authority to enter into the alleged contract. The Court of Appeal held that it was undisputed that Wertheimer did not have actual authority to transfer the copyright in the book, and it was actual rather than ostensible authority that was required under the US Copyright Act. Because MVP failed to raise a triable issue of fact showing that Wertheimer was Frost's duly authorized agent, its remaining arguments could not defeat summary judgment.

This is a simple case which serves to remind us that although assignment of copyright is very straightforward in the US and the UK, it pays to get it right: assignment needs to be signed by or on behalf of the owner of the copyright and it needs to be done in writing. Also additional requirements may apply in other jurisdictions and there may also be more fundamental differences to consider. In Germany, for example, copyright cannot be assigned but can be bequeathed, and in France future copyright cannot be assigned.

French Supreme Court Rules on Catch-up TV

                                                                      

A long-running court battle between French FTA television broadcaster M6 (and related entities within the M6 Group) and the publisher of a website that gave access to the broadcaster's catch-up TV sites (without permission) has come to an end.  On October 31st, the French Supreme Court (Cour de cassation) rejected the appeal against the appellate court's ruling in favour of the publisher (decision here).

In addition to broadcasting its over-the-air signal, M6, like most other broadcasters, operates a catch-up TV site accessible via the internet.  SBDS Active published a site called Totalvod TV-replay which lists the programs of various third-party sites including M6's catch-up TV webites (m6 replay and w9 replay) and provides links thereo.  In doing so, the viewer is taken directly to the program, bypassing the homepage of the M6 site (i.e., so-called deep linking).

M6 Group sued SBDS on a number of grounds including copyright infringement.  While the trial court rejected the argument on the substantive ground that making available such links did not constitute public performance, the appellate court and the Supreme Court dismissed the claim on more technical grounds, viz. failure to prove legal standing (copyright ownership in respect of the programs).  In the court's view, the plantiff companies making up the M6 Group appeared to be seeking a collective remedy with respect to a host of programming without clearly spelling out who owned what.  In other words, according to the court, they had failed to establish with sufficient clarity the rights of each plaintiff to each program at issue.

The plaintiffs had also raised the sui generis right vesting in the producer of a qualifed database.  This argument was rejected beacuse they failed to adduce evidence of substantial investment in the database, which is a pre-requisite to such protection.

With regard to the claim made for parasitical conduct, this too was rejected with the court noting that the user was directed to the genuine catch-up website including all its functionalities and adversting.

There is also a discussion of whetehr SBDS was bound by M6's general terms for use of the replay website (with the court concluding in the negative) and a discussion of SBDS's counter-claim in denigration (M6 had  sent a note to media agencies warning of the potential illegality of tv-replay).