14 September, 2014

The Intellectual Property Act 2014 - Thoughts

After a myriad of changes in recent years, more specifically in copyright (more on which on this very blog can be found here, here, here and here), one can seem overwhelmed by the constant updates and tweaking intellectual property law has gone through. Just as things have seemed to settle down new changes have to be discussed, although this writer will wholly admit he is a bit late to the punch on this one (as the law was passed over a month ago). Nevertheless, a new piece of legislation has been passed, the Intellectual Property Act 2014, which is coming into force in a matter of weeks, prompting this writer to expand on its potential impact prior to it becoming solid law. The Act focuses on designs and patents, which shall be discussed separately below.


By far the bulk of the legislation, designs have been needing some revamping and adding to, even though they are quite well protected under the current Copyright, Designs and Patents Act 1988 and the Registered Designs Act 1949. As explained by the UK IPO: "Design law is often considered messy, complex and confusing, and small businesses, who don’t have the time or resources to disentangle it, can lose out. The IP Act will introduce a number of new measures and make some changes to the law in order to make design law simpler, clearer and more robust".

In terms of unregistered designs the Act changes the definition of a design from (in the CDPA 1988) "...the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article" to one which omits the phrase '...any aspect of'. Although a seemingly minute change, the law now reflects in a more concrete fashion what is considered a design and what isn't as a part of the legislation, whereas should you leave the phrase in it makes things a bit more ambiguous. This clearly reflects the legislature's attempt at making things more straightforward, and arguably they have done so, at least on the face of things.

The Act also changes the default ownership of an unregistered design, allowing for the designer to be the owner of their design should it not be made in the course of their employment. The Act omits the phrase "...in pursuance of a commission or" from the previous provision in the CDPA 1988, which clearly gave ownership to those who commissioned the work, even if rights were not intended to be conferred upon the creation of a design. This will undoubtedly lower any confusion or potential issues of ownership, though does lower the protection of the individuals or entities which commission a work unless specifically assigned to them as a part of the commission contract. Ownership is also extended to persons who reside in the European Union (i.e. a qualifying country) at large, or conduct business in the Union regularly. Previously this was much more narrow under the CDPA 1988.

Finally, in relation to unregistered designs, the Act creates exceptions for infringement of a design right for private acts, experimentation and teaching, and over ships and aircraft. This exception is more relevant to the new form of infringement, which was created to protect registered designs.

Nothing gets a designer's creative juices flowing like new legislation
All of the above changes largely apply to registered designs as well, with some minor differences; however the most important, and discussion inducing, change has been the addition of the aforementioned infringement of registered design rights. Should a person or a business copy a design (without the consent of the rights' holder), doing so intentionally and with knowledge or have reason to believe the design is registered, they can be held liable for infringement. The offense also extends to businesses selling, importing, exporting, or uses items which they know or have reason to believe have copied a registered design. Prima facie the offenses seem quite broad, and with a defense of only reasonable belief to the items' registration status, can be potentially quite wide-reaching, especially in relation to businesses selling or exporting goods. An infringer can face up to ten years' imprisonment and/or a fine. This can be said to be a welcomed change, in that designs have lacked a proper offense provision, which trademarks and copyright have had for years.

In the light of the new offense the Act does allow for third parties to use registered designs, should they have done so in good faith and prior to the work's registration. This is assessed under the light of proper measures taken to ensure the design is or was free to use, preventing others from using this provision as merely a guise to protect themselves from infringement.

Finally, the Act allows for design registrants to finally apply for one single design registration within the remit of the Hague Convention registration system, streamlining and enabling quicker, more efficient registration of designs in a more international scale. 


The Act makes minor, yet important changes to the current patent regime, explained by the UK IPO in better terms: "The IP Act will introduce a number of changes to patent law, which simplify complex areas and make it cheaper and easier to use and defend patents. This will be beneficial for both patent holders and third parties"

The IP Act also adds a provision which will add specific powers allowing for the inclusion of the Unified Patent Court as a part of the patent protection scheme in the UK. This will allow for a much quicker, more unified approach to processing any claims of patent infringement, as it spans the entire 25 Member States of the EU in the scheme. In addition to the Unified Patent Court the Act also allows for the sharing of unpublished patent applications with other patent offices through the UK IPO, which would allow for potential issues to be processed quicker and unclog the international system more. 


Overall the IP Act makes some welcome changes, and at least attempts to internationalize and streamline both patents and designs; something which has been, at least on the patent regime, long needed. Whether the new design infringement provision will cause issues will remain to be seen; however this writer for one believes it will strengthen the registered design scheme and potentially deter cases where infringement would be obvious. The Act will come into force in October, giving relevant parties enough time to prepare for any changes that affect them.

Source: Eversheds

07 September, 2014

Genes are Still Patentable in Australia, Says Full Federal Court

Since the US Supreme Court's decision in Association of Molecular Pathology v Myriad Genetics last year (more on which can be found on this very blog here and here), most of the general public and even the legal profession thought that the matter was done and dusted, and that genes, in the application created by Myriad Genetics, would be unpatentable. Even so the fight still lives on in the Land Down Under, and after a decision in the Federal Court of Australia last year the matter has gone further into the Full Federal Court of Australia on appeal, prompting yet a new analysis of the patentability of genes under Australian law.

The case in question is D’Arcy v Myriad Genetics Inc, which concerned the same patent (albeit its Australian counterpart) as was discussed in the US Myriad Genetics case; Australian Patent 686004. The patent itself relates to, in simple terms, the isolation of one specific gene; BRCA1. Analysis of this particular gene can identify a heightened risk of breast or ovarian cancer in the carrier, should a mutation exist in that gene. Yvonne D'Arcy, a former cancer patient herself, brought the case forward, challenging the patent, in an attempt to potentially lower the costs of testing the gene, having an impact on future testing and the amounts of women getting their genes analysed for that particular mutation. Currently in Australia the costs are upwards to 3000 dollars, clearly indicating a potential costs issue in the field.

As was the question in the previous case, the Full Federal Court would have to decide whether the invention would fall under the Statute of Monopolies 1623 as a 'manner of manufacture', and its interpretation in the NRDC case (more on which can be found here). The court extensively discussed the precedent and jurisprudential considerations which affect the case, yet left the application of those considerations quite brief. 

The appeal hinged on three arguments made by Ms. D'Arcy; that the artificial state of affairs in which the gene exists post isolation is not enough for it to fall under the Statute of Monopolies and be considered a 'manner of manufacture'; that the gene, even if isolated, is still the same as the one which exists in the human body; and that the patenting of a gene would be patenting a natural phenomenon, contravening the Patents Act 1990's exclusion of such matters from patentability.

Ms. D'Arcy argued that the isolation of the gene does not produce a product, which would leave the invention short from potentially being a manner of manufacture, as, in her mind, the isolation merely produces an end-effect, rather than a product. She further argued that the isolation of the gene does not produce an artificial state of affairs, as nothing is done to the gene aside from its removal from the genome for analysis, producing no artificial effect in itself bar from what occurs naturally as it exists within the genome. Even though she recognizes that this requires human intervention it still falls short from the word's definition in NRDC.

Gene isolation can be a good thing.
The court rejected this argument, stating that "[t]his submission fails to recognise that the High Court has made it clear that the principles discussed in NRDC are equally applicable to products. Further, the isolated nucleic acid is itself an artificial state of affairs. It is removed from the genome and from the cell. In order to determine whether an invention claimed is a relevant product, the question is whether it consists of an artificially created state of affairs, not whether it produces or fails to produce an artificial effect" (emphasis the court's). This writer for one would argue slightly against the court as an artificial state of affairs should consist of something which does not occur naturally, either through manifestation or through composition. The patent in question certainly does remove the gene from the genome, yet the gene still remains the same, both in what it contains and how it resides, but is merely taken out of its space like a Lego block. This, in my mind, is not enough. The court does qualify their position and agree that not all isolation can confer patentability; however this hinges largely on an economic benefit viewpoint rather than purely a scientific one. The court does draw on scientific facts and that the gene cannot code due to its removal, yet the argument seems flat and doesn't, to this writer at least, confer much logic. Take an engine as an example. Should the engine be removed from the car and all of its connections disconnected, it cannot move the car, yet one could logically argue the engine is still the same engine even without his capability. Although a simplified analogy it illustrates the folly in the court's argument.

The second argument brought forth is one which contends that the gene is the same as the one which occurs naturally in a human's genome. Ms. D'Arcy contended that even with the isolation factor the actual information within that gene is exactly same as in the one which has not been isolated from the aforementioned genome; a fact that the court and Myriad Genetics did acknowledge, albeit contended that this makes it identical to the one in the genome. This challenges the primary judge's notion of economic utility, which allows for the isolation to create an artificial state of affairs due to this utility. The court wholly rejected this, stating that "[the] [g]enomic DNA sequence does not exist outside the cell and in that sense it can be said that an isolated chemical is not the same as the chemical in situ. One difference is that the isolated chemical can be manipulated and utilised in ways that the other cannot. That is, they may have different uses or functions, including those set out in the specification. Treating the claim as one to chemical entities, they are not the same as the nucleic acid sequence encoding the BRCA1 polypeptide in situ. They have different beginnings and different ends". Again, this writer humbly disagrees with the court's notion of different utilization, and a clear emphasis on economic benefit in the gene's isolation. The gene still serves the same function as the one in the genome, yet cannot do so outside of the genome due to its isolation. This, and that its chemical composition is almost identical aside from the separated chemical bonds, clearly leaves the gene as the same as the one that occurs naturally and doesn't create an artificial state of affairs or a new invention.

The court also rejected Ms. D'Arcy's argument of Myriad Genetics patenting laws of nature, stating plainly that "The isolated DNA can be characterised as material derived from naturally occurring material. This is not excluded from patentability within the reasoning of NRDC. The use of a living organism to produce a substance such as an antibiotic is patentable. It is not a question whether there is any overlap between what occurs in nature and that which is claimed. If so, all biological material would be inherently unpatentable".

The court finally summarized its position:

"In our view the products the subject of claim 1 are different to the gene comprising the nucleic acid sequence as it exists in nature. It follows that the notice of contention based on this ground succeeds... The isolation of the nucleic acid also leads to an economically useful result – in this case, the treatment of breast and ovarian cancers. This is surely what was contemplated by a manner of new manufacture in the Statute of Monopolies."

The Federal Court also openly rejected the US Supreme Court's decision on the Myriad case: "With respect, the [US] Supreme Court’s emphasis on the similarity of ‘the location and order of the nucleotides’ existing within the nucleic acid in nature before Myriad found them is misplaced. It is the chemical changes in the isolated nucleic acid which are of critical importance, as this is what distinguishes the product as artificial and economically useful". Again, the Federal Court ignored the clear lack of differences in the gene and the one naturally occurring in the human genome, and places a heavy emphasis on economic utility rather than any differences which can be noted as marked.

Arguably the court has reached the wrong result, but one can imagine their potential rationale as to the economic benefit and a future marketplace for genetic and biological modification and analysis of humans in Australia. Yet the case seems flat in its reasoning and ignores the larger picture in its attempts to focus on the nuances of convalescent bonds. The case can be, and possibly will be, further appealed, and this writer for one cannot wait to see where the case is taken.

Source: IPWatchdog

28 August, 2014

Proposed Australian Copyright Law Changes - Copyright Infringement Challenged

Copyright seems to be going through some growing pains in the last few years, with extensive changes happening all over the world in the area. This has not been left out in the discussions of this blog, where copyright reform has been quite extensively covered in Ireland, Australia and the United Kingdom. As has been said by myself and others copyright needs this change, and updates have been warranted for some years. Arguably our neighbors in the Southern Hemisphere have been ahead of their UK counterparts for some time, at least in relation to copyright, with the introduction of the Copyright Amendment Act 2006, which amended the Australian Copyright Act 1968. Yet this didn't seem to be enough for the Aussies, and recently new changes to the 1968 Act have been brought up, flaring up opinions on both sides of the spectrum especially since the changes pertain largely to infringement. 

The proposed update to the current legislative scheme were introduced in a discussion paper titled "Online Copyright Infringement", commissioned by the Australian government, which was published last month. As presented by the paper itself: "[t]his paper outlines the Government’s proposed approach to amending the Copyright Act 1968 to provide a legal framework within which rights holders, ISPs and consumer representatives can develop flexible, fair and workable approaches to reducing online copyright infringement". Prima facie the paper does have a point, with millions of Australians accessing torrenting sites on an almost regular basis; however the issue isn't necessarily that one-sided and straightforward. This writer shall endeavor to discuss the proposed changes and whether the measures called for are appropriate for the current IP environment in Australia, which from just looking at things as a whole is quite complicated.

Extended Authorization Liability

The first proposed change is extended liability for the authorization of copyright infringement. What this is, in simple terms, is the allowance of copyright infringement through one's services more relevant to ISPs and websites. Authorization of infringement was the subject of a heated legal battle in the Roadshow Films Pty Ltd v iiNet Ltd case (discussed more extensively on this very blog over a year ago) - the very example discussed in the paper as well. Currently this is covered by section 36 of the Copyright Act 1968, which provides that certain factors have to be taken into account when assessing authorization under the Act: the party's power to prevent the infringement; the nature of the relationship between that party and the infringing party; and whether that party took any reasonable steps to prevent the infringement. Even though one can argue that the provisions is quite great in balancing blatant authorization vis-a-vis lesser forms of potential authorization such as the mere provision of services or the scope of measures which would have to be employed to fully prevent infringement, the provision can fall flat in the vastness of the Internet. The paper discusses this and states that "[e]xtending authorisation liability is essential to ensuring the existence of an effective legal framework that encourages industry cooperation and functions as originally intended, and is consistent with Australia’s international obligations"

How this is proposed to be done is by having the courts assess authorization by looking at the relationship between the parties, and whether the potentially authorizing party took any reasonable steps to prevent the infringement. The reasonable steps the party took would be gauged through certain factors: "(a) the extent (if any) of the person’s power to prevent the doing of the act concerned; (b) whether the person or entity was complying with any relevant industry schemes or commercial arrangements entered into by relevant parties; (c) whether the person or entity complied with any prescribed measures in the Copyright Regulations 1969; and (d) any other relevant factors". This change puts the onus quite heavily on the 'authorizing' party, in other words, potentially places ISPs and others with an onus that is potentially very vague and strict. Increases in liability and a need for more enforcement and monitoring will undoubtedly create costs, and potentially cause disruptions and claims processes for users (both legitimately and illegitimately in some cases one can imagine), which would only have a negative impact on the average Australian consumer.

Extended Injunctive Relief to Block Infringing Overseas Sites

The second proposal put forth is the extension of rights holders' capabilities to block foreign websites which facilitate the infringement of copyright. As put forth by the paper: "[w]here online copyright infringement is occurring on a commercial scale, rights holders need an efficient mechanism to disrupt business models operated outside of Australia". The changes discussed take cues from the UK regime where under section 97A of the Copyright, Designs and Patents Act 1988 a court can block access to a service provider, i.e. a website, should an ISP have 'actual knowledge' of a person using the aforementioned service to infringe copyright. As explained by the paper "[a] similar provision in Australian law could enable rights holders to take action to block access to a website offering infringing material without the need to establish that a particular ISP has authorised an infringement".

Roo was worried over his habit of downloading the newest jams
The proposed change to the provision would impose a vague duty on ISPs for injunctive relief against websites given: "[t]he Copyright Act would be amended to enable rights holders to apply to a court for an order against ISPs to block access to an internet site operated outside Australia, the dominant purpose of which is to infringe copyright... Rights holders would be required to meet any reasonable costs associated with an ISP giving effect to an order and to indemnify the ISP against any damages claimed by a third party". On the face of it the proposed change would give third-parties more capabilities to block websites, however when compared to its UK cousin, leaves out the specification of 'actual knowledge' on the ISPs part, affording rights holders a carte blanche of injunction possibilities against potentially any website which serves the 'dominant purpose' of infringing copyright. 

Extended Safe Harbor Scheme

The final proposed change is one which provides protection for monetary damages for service providers, such as ISPs. Under section 116AA (and subsequent sections 116AC-116AF) of the Copyright Act 1968 a service provider is protected, if they fulfill the conditions set out in section 116AH, for acting as a conduit for Internet activity; for caching through an automatic process; for storing protected material in its systems or network; and for referring users to a location on the web. Even though the provision is akin to its American cousin in the Digital Millennium Copyright Act, it's still much stricter as it currently stands. 

The proposal merely wishes to extend the application of the safe harbor provision to others beyond 'carriage service providers', the wording currently used, to 'service providers', extending the scope of protection beyond just ISPs. As the paper states: "[t]he Copyright Act would be amended to extend the application of the safe harbour scheme to entities engaged in the activities set out in sections 116AC to 116AF. This would be achieved by removing the reference to carriage service provider and replacing it with a definition of ‘service provider’, being any person who engages in activities defined in sections 116AC to 116AF". This is the only change which will wholly, at least on the face of it, impact the current scheme positively rather than negatively. 

Thoughts on the Changes

The proposed alterations to the current scheme have drawn a heap of criticism from several parties. Nicolas Suzor and Alex Button-Sloan have argued that "[the changes] could include blocking peer-to-peer traffic, slowing down internet connections, passing on warnings from industry groups, and handing over subscriber details to copyright owners". In their mind the heart of the issue is not the lack of addressing copyright infringement, but "... that Australians are not being fairly treated by the copyright industries", which stems from the fact that "...Australians pay more for digital downloads, have less choice in how they can access film and television, face large delays before content is released, and much foreign content is still not available at all in Australia". This is arguably very true, and lies at the heart of the high infringement rates, as Australians are paying 50% or even more for software and other digital goods than other nations; an example which serves to illustrate what drives illegal copying. 

Mr. Suzor and Button-Sloan further state that "...the draft proposal is likely to have serious unintended consequences. It is likely to raise the price of internet access in Australia... [and] cause major uncertainty in copyright law". Arguably this is true, as was discussed above, the buck for extra enforcement and monitoring will be passed onto the consumer. One final thought the gentlemen provide is that consumers have been left out the debate; a debate which potentially impacts them in a drastic way. 

Overall the proposed changes are quite rights holder heavy, and showcase somewhat of a one-sided approach to the issue if infringement. What needs to be addressed is the pure and unadulterated heavy pricing of our Southern Hemisphere friends, especially in a time when the digital distribution of content is practically free for software companies. Physical media will incur more costs due to the distance it needs to be shipped, storage costs and so forth, but in a world where media is shifting to an intangible form, this pricing is nothing short of a money-grab. How the proposal is finally implemented, if at all, remains to be seen; however this writer for one hopes the Australian legislature will think long and hard about the implications to the average Australian it may cause.

Source: TechDirt

22 August, 2014

Can You Patent Embryonic Stem Cells? - Preliminary Thoughts

Sometimes people seeking patents just seem to want to be the focus of hatred or controversy, especially when it comes to newer areas of medicine or scientific progression. Although this blog has discussed more unsavory topics, such as patenting clones or the method of selecting desirable traits for your child, the field constantly brings forward more interesting questions posed to the judiciaries of various countries. It so happens yet another such a question has been posed, this time pertaining to the potential patenting of embryonic stem cells; a topic which has been discussed at length by our neighbors across the pond in the US.

The case in question is International Stem Cell Corporation v Comptroller General of Patents, initially having been dealt with in the High Courts of the UK, having since been referred to the European Court of Justice for clarification. Although the opinion delivered is of the Advocate General Cruz Villalon's, it still remains an important indication of the potential direction of the ECJ's ultimate decision on the question, but is no way binding.

What the matter dealt with were two patent applications filed by the International Stem Cell Corporation, namely GB2431411 and GB2440333 (application numbers GB0621068.6 and  GB0621069.4 respectively), which effectively sought to patent certain applications for the use of human stem cells taken from embryos. Upon first inspection the patents were rejected by the UK Intellectual Property Office, based on the ECJ's previous decision in Oliver Brüstle v Greenpeace almost three years ago, which sought to decide what the definition of a 'human embryo' was under Directive 98/44/EC. This decision was important for the case in hand as it effectively limits the patentability of embryos, through which embryonic stem cells, for commercial or industrial purposes. The decision in Brüstle was why the patents were rejected at first instance, and serves as a platform from which the Advocate General formulated his view on the case.

To give more exposition on the patents at hand, as said above, they both deal with specific applications involving human stem cells extracted from embryos. Application GB0621068.6, titled "Parthenogenic activation of human oocytes for the production of human embryonic stem cells", to put in incredibly simplistic terms, deals with the production and cultivation of stems cells from unfertilized oocytes (female egg cells) through the manipulation of oxygen tension. These cells are often referred to as "parthenotes", which can turn into practically any cell type in the human body. Application GB0621069.4 deals with the use of said parthenotes to produce synthetic corneas. What is worth noting is that the ECJ saw, in Brüstle, that "...any human ovum after fertilisation, any non-fertilised human ovum into which the cell nucleus from a mature human cell has been transplanted, and any non-fertilised human ovum whose division and further development have been stimulated by parthenogenesis constitute a ‘human embryo’". This would, through superficial assessment, include Stem Cell Corporation's inventions and therefore prevent them from being patented.

The distinguishing factor for the Stem Cell Corporation, in their argument, is that the cells harvested have been modified so that they cannot continue human development; a reason under which the UK IPO rejected the application: "...Brüstle was intended to exclude from patentability only organisms capable of commencing the process of development which leads to a human being". This would run contrary to Schedule A2 of the Patents Act 1977 and the Directive it implements. According to the Stem Cell Corporation "...the inventions in question concern parthenogenetically-activated oocytes [ which are] not 'capable of commencing the process of development of a human being...' due to the phenomenon of genomic imprinting" and are therefore beyond the interpretation of Brüstle and the legislation.

The Advocate General's opinion is an interesting one, as he argues that "[t]he wording of Article 6(2) [of the Directive] itself makes clear that the list of prohibitions is non-exhaustive", which leads to an issue of whether the Directive would therefore include a non-developmentally capable parthenote. Mr. Villalon proposed that "[t]he non-exhaustive character of the list in Article 6(2) of the Directive implies that the exclusion of a parthenote from the concept of human embryo contained in Article 6(2)(c) of the Directive, does not prevent a Member State from excluding parthenotes from patentability based on Article 6(1) of the Directive".

Mr. Villalon furthered this point by arguing that the Directive is not one which is meant to be the 'law of bioethics'. Interpreting the Directive can lead to a discussion of morality and public impression; a discussion the judiciary will have to address to a degree. He leaves the matter more for Member States to decide, to see whether they deem the prohibition of embryonic patents a necessity in light of morality of public order.

Discussing submissions from the UK, France, Sweden and the Stem Cell Corporation, in addition to his understanding of the Brüstle case, Mr. Villalon did come up to a conclusion where he saw that the term 'human embryo' should not include developmentally incapable parthenotes: "Unfertilised human ova whose division and further development have been stimulated by parthenogenesis are not included in the term ‘human embryos’ in Article 6(2)... of [the] Directive... as long as they are not capable of developing into a human being and have not been genetically manipulated to acquire such a capacity".

Whether the ECJ sees things like the Advocate General will remain to be seen, but the opinion at least leaves the option of embryonic patents relating to cells which are not able to develop into a human being. This is a promising sign in light of future developments in the field of using stems cells to treat humans, yet still limiting it to ones where there is a lesser issue of morality, i.e.  the development of a human being. This writer for one is quite keen on reading the Court's opinion upon its publications, along with a healthy amount of others I am sure.

Source: PatentlyO

15 August, 2014

Retrospective - What is a 'Work' in Copyright?

Lawyers and the legal profession love their words and their singular interpretations, which can be quite odd from the perspective of the layman, especially when the interpretation seems quite obvious from the very beginning. Even so, we have learned to embrace this tradition, and understand that the nuanced meanings of words can have a huge impact on cases and their outcomes, and have no shame in jostling over the meanings of even the most basic of words. Intellectual property in this regard is no exception, and a word that is very important in terms of copyright is what is a 'work' protectable by copyright? As said, the answer may seem obvious and the discussion of what is a work seem a bit frivolous, but the reason why is incredibly important. What constitutes a 'work' under copyright sets up boundaries for the laws and expands or limits its application to both old and new artistic endeavors, making it one of the most important parts of interpretation when discussing the scope of copyright. Although discussed for for as long as copyright has existed, the modern definition of what a 'work' is came about in the 1960s through the hands of the House of Lords in the United Kingdom.

The case in question was Ladbroke (Football) Ltd v William Hill, which dealt with two competing companies in the sphere of bookmaking. The respondents to the appeal, William Hill, were firmly established in the marketplace, sending out weekly football odds to their customers during the season. The appellants, Ladbroke, have also been well-established players in the world of bookies, and entered the football bookmaking scene in the late 1950s, sending out coupons which looked very much like the ones William Hill sent to their customers. As a result William Hill sued Ladbroke for copyright infringement, with the case culminating in the highest court of the UK in 1964.

Sisyphus, for some reason, thought his work was for naught.
The coupons which the case concerned were very simple in their design, consisting of a list of the games that week along with boxes next to each match, allowing for the person to indicate the games' outcomes and therefore to change the odds of winning, as each bet would have to be successful for the individual to win. Some of the lists provided contained all of the games that week, whereas some only contained a selection of games. William Hill's coupons contained 16 lists, while Ladbroke's coupons contained 15 lists of games. The latter lists were almost identical to William Hill's ones, with only some slight deviations in terms of headers or different odds. What was allegedly copied were the possible wagers to be made and, to a large extent at least, the layout and headers of the lists. The big question that remained was whether such lists would be a work protectable under copyright.

Under the Copyright, Designs and Patents Act 1988 a 'work' is defined as "...a work of any of those descriptions in which copyright subsists", which include musical, literary and artistic works, among others. That definition alone seems like not much help, but it's an important statement of what can be considered as obvious, which can be expanded upon. Although the wording differs from the Copyright Act 1956 which was at issue in the case, the considerations can be argued to applying equally to the newer 1988 Act.

The discussion in the case pertained mostly to whether such a work could be considered as an original work (more on which can be found here); however whether the sheer compilation of information into tables and lists would be a work is also quite important under this consideration. After all, even if a work is 'original', but does not qualify as a genuine 'work' (in most cases quite hard as the two are more or less intertwined), the piece would not attract copyright protection. In the end this is a determination by assessing the "...skill, judgment or labour" put into the creation of the work; or in other words, did the author of the work do anything more than the bare minimum in the creation of the work in question. Many have mentioned the very scattered approach to this question, as often judges will take into account expense, knowledge and even literary skill employed into the creation of the work; leaving the question without a definitive judicial consideration. This has been seen different in the United States, as under the Feist Publications v Rural Telephone Service decision (more on which can be found here) effort alone won't give a work protectability under copyright. In the end the appeal was dismissed by the House of Lords, and William Hill's coupons and lists were indeed protected by copyright.

As one can see what a 'work' is is quite ambiguous, and the consideration of judgment, skill and labor leaves it even more in the mist, as plain effort might not be the most accurate description or factor in deciding what truly amounts to a work or not. This uncertainty leaves short pieces and low-effort works potentially in the fringes of copyright, and can cause issues to those authors as a result. Clearly this is something which copyright should not cause, and might be a reason why the definition of a 'work' should be revisited by either the judiciary or the legislature in the future.

09 August, 2014

Monkey Business - When Copyright and Simians Collide

The law and the world surrounding it can often be dry and, quite frankly, boring to those who don't love it as most of us working within the legal profession. However, sometimes a topic comes through that permeates that misconception and brings the law and its impact into the discussion at large, often through more unconventional events. In this vein a question can be posed: can an animal own the copyright to a work? This writer for one had never considered this and found himself pondering it a bit longer than I would like to admit. Due to this extended contemplation this answer should be shared for those interested in the implications of animal artistry and copyright.

This issue came to light after an image of a macaques taking a 'selfie' was spread around the Internet, springing up a discussion of both copyright and whether the trend of the 'selfie' has well and truly gone too far. The photograph was taken with a camera which the monkey appropriated from David Slater, a nature photographer in his own right. After his acquisition of the camera the monkey took several pictures, a few of which turned out quite fantastic and display the monkey grinning and staring at the camera. The images were shortly thereafter uploaded to Wikimedia, and have remained there since as freely usable images, with Wikimedia firmly contesting any and all assertions of copyright in the pictures and argue they are in the public domain. As posed above the question still stands: can this monkey own the copyright to its 'selfie', or can Mr. Slater claim the rights over the picture even though he did not take the picture himself?

Rick wanted to ride the animal selfie fame train as well
Under the UK Copyright, Designs and Patents Act 1988 a work is only protected by copyright if it is created by an 'author', defined as "...the person who creates [the work]". Arguably, at least on the face of things, the monkey will have no rights in the pictures as animals are not 'persons' within the meaning of the Act, making the work ineligible for copyright. Although Mr. Slater owned the camera and potentially set up the photo he still does not own the copyright for the work as he himself did not take the photograph. Sometimes the final piece of the puzzle is the most important, especially in intellectual property law.

In the United States there is no real definition of an 'author' under US Copyright law, leaving the matter, on the onset, in limbo. However, through the guidance of the United States Copyright Office's Copyright Compendium, the term 'authorship' used in the US legislation "...implies that, for a work to be copyrightable, it must owe its origin to a human being. Materials produced solely by nature, by plants, or by animals are not copyrightable", and that non-human authors such as monkeys, therefore cannot hold the copyright to a work.

The photographer has since argued that the monkey "...was [his] assistant", potentially causing a case of joint authorship in the work or even affording the rights to Mr. Slater outright. Through his own admission Mr. Slater "...set the camera up on a tripod, framed [the shot] up and got the exposure right", giving the final shot to the monkey itself. Right from the start one has to be slightly incredulous about Mr. Slater's assertion here, and with no evidence bar his own word, as the monkey has refused to comment on the matter, his presentation of what happened has to be taken with a pinch of salt. Should he have effectively directed and set out the shot for the monkey he could potentially claim authorship, as framed by Brad Newberg: "If the photographer actually developed it in a certain way, made some tweaks, used some lighting to make some original choices, and said essentially 'Look at my collaboration with this monkey,' then he would have had some part of the creative process", and could potentially claim the rights to the work. In the end this would be a matter he would have to argue in court, and would be hard-pressed to do so.

So far the monkey's picture has lost Mr. Slater over 10,000 pounds since 2011, and clearly presents him with an incentive to pursue the matter further, especially due to the notoriety of the case at the moment. This writer for one would absolutely love to see the argument go into litigation and hopes Mr. Slater will pursue the matter further, if not just for the legal profession's enjoyment. The case would decide the rights of dozens of animals and who knows, maybe one of them will be the new big thing in nature photography.

Source: Ars Technica

04 August, 2014

Can You Infringe Copyright by Browsing the Internet?

Browsing the web can be full of pitfalls, both legally and in terms of your own safety. It's this world that we endeavor to navigate on our times surfing, but often don't think about the unknown issues or are blissfully unaware of the implications of our digital actions. It's because of this many things can slip through the cracks. Web browsers have made temporary copies of the content we read, look at and watch for years, more often than not without our knowledge, and this can present legal issues when dealing with copyrighted content, whether we want it or not. Whether just innocent surfing can infringe copyright is an interesting question, and this writer for one automatically thought the answer would be obvious, yet one would be surprised about the nuances behind the answer.

The case which dealt with this interesting conundrum was Public Relations Consultants Association Ltd v The Newspaper Licensing Agency Ltd, having been referred to the European Court of Justice by its UK counterpart earlier on in 2013. The Public Relations Consultants Agency (PRCA) is an association public relations professionals, who among other duties monitor the news for their clients, clearly to safeguard or preempt any potential PR disasters. The members of this association used a service provided by the Meltwater group of companies; one which used software to automatically compile an index of words used by newspapers in their content online. To better utilize this service Meltwater's clients provide them with a list of search terms which interest them, which are then used to create an index which is oriented around those key words. In the service's results the opening words of the article, the key word and a few surrounding words and a hyperlink are provided for the client, allowing them to find the article containing their desired content more easily. The service does not circumvent any paywalled articles, and the client will have to pay for that specific content should they wish to view it. The respondents of the appeal objected to this use of their content, and took the Agency to court, culminating in the UK Supreme Court in the earlier part of 2013.

The button that all internet users wished existed for certain purposes
The question faced by the ECJ therefore was, as iterated by the Supreme Court: "The question which arises on this appeal is whether [Internet users reading the an article online] are nonetheless infringing copies unless licensed by the rights owner [by creating temporary copies of those works]". More specifically whether this infringes Directive 2001/29/EC, and through which the Copyright, Designs and Patents Act 1988.

Under Article 5 of the Directive incidental copies are treated as not infringing copyright should they be "... temporary, transient or incidental, which are an integral and essential part of a technological process and whose sole purpose is to enable... a transmission in a network between third parties by an intermediary, or a lawful use... and has no independent economic significance". Arguably, on the face of it, the matter is quite clear-cut, as temporary copies are essential to how the internet functions and how we both conserve and make internet traffic more efficient. Nonetheless, the matter is still not that simple, at least from a legal perspective.

The court quickly saw that the temporary copies made through the viewing of websites indeed do satisfy the first requirement under Article 5, as the copies are lost once the user moves on from the website and other content is subsequently brought in to replace the temporary copies of the prior page. This makes those copies wholly temporary in nature. The court then moved on to the third requirement, under which the copies have to be essential for the technology to work properly; or as presented in Infopaq International v Danske Dagblades Forening: "...first, the acts of reproduction are carried out entirely in the context of the implementation of a technological process and, secondly, the completion of those acts of reproduction is necessary, in that the technological process could not function correctly and efficiently without those acts". As the user has to say (mostly) in the creation or deletion of these copies, the technology needs for those copies to be created in order to function as intended, as they are a part of its process. The copies are, as said above, essential to the internet's proper function and help prevent excess volumes of traffic, which would undoubtedly choke the internet beyond use. The court seemed quite satisfied with the technology satisfying the second requirement, meaning that the technology is needed for the process to function properly and efficiently, and therefore satisfies the third requirement.

Under the second requirement the copies have to be transient or incidental, and as the copies, as stated above, are deleted once the user switches to a different page, they are transient, even if there is some level of human intervention in their deletion. Finally, the copies are created as a part of the technology which uses them, and do not by themselves exist independent of it nor have a purpose outside of it, making the copies incidental for the purposes of Article 5. The court therefore saw that the temporary copies created during web browsing do not infringe copyright and are excluded as a part of Article 5.

As one can see the ECJ's decision was one of pragmatism and common sense. The prevention of transient copies in the viewing of content on the web would be detrimental to how the internet functions today, potentially even causing issues in its overall usability. As said above the answer to the question seemed obvious, and quite frankly, should not have even been argued in court this far. The matter will be passed onto the Supreme Court to decide on ultimately; however the ECJ's word is a powerful one and clearly demonstrates an unwillingness to compromise the net as we know it for the sake of copyright.

Source: The Guardian