21 November, 2017

Indexing Free-for-All - US District Court Issues Injunction against Canadian Supreme Court De-indexing Order

After the decision in the Canadian Supreme court in the Equustek case, many, including this writer, raised concerns about the possible abuse of the precedent set by the case. The de-indexing of online content, while well-intentioned in the removal of infringing content, could still be used as a sword more than a shield against legitimate infringement, including against free speech. This writer for one awaited the first application of the case, particularly in a jurisdiction that leans more towards free speech, and seems like the wish has been granted by the District Court of the Northern District of California only a few weeks ago.

The case of Google LLC v Equustek Solutions Inc. concerns the same subject matter as the Canadian case. In short, Equustek sued Google seeking to force Google to block websites selling infringing goods all over the world, not just in Canada where Google had blocked the websites selling the goods. The Supreme Court of Canada ultimately issued the order, and forced Google to block access to the websites all over the world.

Google challenged this ruling in the United States, arguing that the order conflicts with the First Amendment right to free speech, and disregards the Communication Decency Act, which affords immunity to interactive service providers.

Justice Davila first looked at the CDA, which affords immunity from claims to "…providers of interactive computer services against liability arising from content created by third parties". This means that should another publisher, using these services, publish infringing content Google couldn't be sued for that infringement. Even so, to qualify for immunity three criteria need to be satisfied: (1) the company is a "provider or user of an interactive computer service"; (2) the information in question was "provided by another information content provider"; and (3) the Canadian order would hold it liable as the "publisher or speaker" of that information.

Looking at the first criterion, Justice Davila concluded that Google was a 'provider of interactive computer services'. This means that the company provides "…any information service, system, or access software provider that provides or enables computer access by multiple users to a computer server", which encompasses Google's search facility, among other services.

As the content, i.e. the website and the information contained in it (including the infringing goods for sale), was provided by Datalink and not Google, the second criteria was also easily fulfilled. The provision of Google's search facility relies on the company 'crawling' websites on the Internet, which it then indexes and makes available through search results. This allows for users to discover the content, which Google does not post, clearly being provided by 'another information content provider'.

The First Amendment - the best kind of pop-up
Finally, the third criterion looks at whether Google would be held liable for the content provided by another under the order made by the Canadian Supreme Court as the 'publisher or speaker' of that content. According to the order Google has to "…de-index the Datalink websites [from its global search results]… [because it is] the determinative player in allowing the harm to occur".

Per the decision in Barnes v Yahoo!, "…removing content is something publishers do, and to impose liability on the basis of such conduct necessarily involves treating the liable party as a publisher of the content it failed to remove". This liability as a third party for the non-removal of content, should Google not do so when ordered, clearly treats Google as the publisher of that content rather than a mere intermediary with no liability.

Justice Davila therefore considered that Google was immune from the claim under the CDA.

The Court then turned to the question of free speech and irreparable harm. Justice Davila swiftly determined that the Canadian order restricts Google's activity protected by the CDA, and deprives of it of benefits given by US federal law. Similarly an injunction wouldn't serve the public interest, as free speech would be restricted if websites "…were to face tort liability for hosting user-generated content". This has been particularly legislated against through the CDA. As the Internet and other interactive computer services "…offer a forum for a true diversity of political discourse, unique opportunities for cultural development, and myriad avenues for intellectual activity", the legislature deemed it required protecting for that purpose to flourish.

Justice Davila issued the injunction against the Canadian order as it "…undermines the policy goals of [the CDA] and threatens free speech on the global internet".

The decision is a very interesting one, and strongly advocates for the protection of the Internet from blanket orders requiring the removal of content globally. This writer is very much a proponent of this approach, as, amongst its faults, the Internet is a bastion of freedom and dissemination of information (including this blog as a very example of that). Infringements should be dealt with appropriately, but blanket de-indexing orders might not be the best way; however, with this in mind, third-party service providers do have to take some responsibility on the removal of content when needed.

14 November, 2017

Indistinct Taxi Service - London Taxi Design not Distinctive, says UK Court of Appeal

Shape trademarks have always been a difficult issue for the courts. The balancing act of trying to protect the general shape of something while being distinctive to get protection is a difficult line to tread, as the recent Kit Kat cases have shown among other decisions. One such saga that is currently being waged is over the design of the London black taxi, which many, this writer included, have used on a regular basis in the city. After a defeat at first instance, The London Taxi Company pursued the matter further into the Court of Appeal, who rendered their decision very recently.

The case of The London Taxi Corporation Ltd (t/a the London Taxi Company) v Frazer-Nash Research Ltd dealt with, as mentioned above, EU and UK trademarks over the design of the London black taxi (EUTM 951871 and UKTM 2440659). Frazer-Nash Research, a vehicle research and design company, designed and were ready to launch a new London taxi called the Metrocab (a hybrid electric car). In anticipation of infringement, LTC sued FNR for trademark infringement and passing off.

The Court had to look at 8 different points of appeal focusing on the validity of the trademarks and infringement of the trademarks if deemed valid.

The first point dealt with the definition of the average consumer in the case, particularly whether it would be the taxi driver who purchases the taxi or the same together with members of the public who hire taxis. Having extensively considered case law on the definition of 'average consumer', Lord Justice Floyd saw that the 'average consumer' is "…any class of consumer to whom the guarantee of origin is directed and who would be likely to rely on it". It followed from this that the 'average consumer' could include both the purchaser and the hirer of the services, but the Court didn't make a full decision on this point.

The second point dealt with the trademarks' inherent or acquired distinctive character.

In terms of inherent distinctive character, Lord Justice Floyd observed that the test for assessing distinctiveness for 3D trademarks, as set in Freixenet, is whether "…the appearance of the product itself [is] no different from those applicable to other categories of trade mark". Additionally, the trademark has to depart significantly from the norm of the customs of the sector would have distinctive character. Lord Justice Floyd then set out his test for determining whether a mark departs significantly from the norms and customs of the sector (1) determine what the sector is; (2) identify common norms and customs, if any, of that sector; and (3) whether the mark departs significantly from those norms and customs. Following this test, Lord Justice Floyd determined that the trademarks didn't have inherent distinctive character, since none of the features in the design registered were a significant departure from features in other taxis in the sector.

Therefore, the only way for the trademarks to have distinctive character is for them to have acquired it through use. As set in the recent Court of Appeal judgment in Nestle (see more in the link above), the test for acquired distinctiveness is that "…the mark must have come to identify the relevant goods as originating from a particular undertaking and so to distinguish those goods from those of other undertakings". In other words, the London Taxi Company's taxis would have to be distinguishable from other taxis through their design.

Blake loved the design of his taxi a little too much
Following the decision of Justice Arnold at first instance, Lord Justice Floyd decided that the trademarks had not acquired distinctive character among taxi drivers, and that consumers were not concerned with the origin of the taxis they hired and therefore the trademarks wouldn't have acquired distinctive character in the mind of the average consumer. Lord Justice Floyd ultimately considered the marks to be invalid, but still went through the other points of appeal for the sake of clarity.

The third point is whether the shape of the mark gives substantial value to the goods, exclusive of any goodwill in the shape. Lord Justice Floyd found the guidance on this point unclear, and would have referred the matter to the CJEU if this point would still have been relevant.

The fourth point was revocation for a lack of use of the EUTM. If the mark hasn't been used in five years within the EU, the trademark is revoked. The only activity that LTC had undertaken in the EU in relation to the marks was to sell them second-hand, as production had ceased some time ago (the EUTM model was an older model of the taxi). Lord Justice Floyd, in his hypothetical answer, saw that the mark had been used in the EU, although only through the later models that were sold.

The fifth and sixth points dealt with infringement of the trademarks under Article 9(1)(b) and 5(1)(b), and Articles 9(1)(c) and 5(2). As the Metrocab and the trademark designs differed significantly, there would likely be no infringement on the marks under the former two Articles, according to Lord Justice Floyd. With regards to the latter two, there could be infringement, had distinctive character been established in the marks, as the Metrocab would've caused detriment to the trademarks' distinctiveness.

The seventh point concerned a defence of using an EUTM as an indication of, among others, quality, quantity and geographical origin. As set in Maier v ASOS, the legitimacy of the use is considered looking at "…whether there exists a likelihood of confusion; whether the trade mark has a reputation; whether the use of the sign complained of takes advantage of or is detrimental to the distinctive character or repute of the trade mark; and whether the possibility of conflict was something which the defendant was thought to have been aware".

Having considered the matter briefly, Lord Justice Floyd accepted LTC's assertion that there would be no defence of legitimate use, as the rights of a trademark holder should not be trumped by the conveying of a message that the vehicle is a licenced London taxi. This would be possible to be displayed otherwise, without infringement (although none happened in the matter).

Finally, the Court looked at the point of passing off. Lord Justice Floyd swiftly dismissed the claim of passing off, as, similarly to acquired distinctiveness above, LTC would struggle to prove goodwill in the design of the trademark. Even so, the design of the Metrocab is very different to LTC's design, and therefore wouldn't infringe even if goodwill were present in the case. The Court ultimately dismissed the appeal.

The case is yet another painful reminder of the difficulty in registering and particularly maintaining 3D trademarks. Distinctiveness is the hurdle most fall on, and the LTC taxi was no different. LTC have indicated that they might appeal to the Supreme Court, so the fight over taxis might not be over just yet.

07 November, 2017

Database Error - UK High Court Takes on Copyright Infringement of Cloud Databases

Databases are a curious creature within the world of IP, existing on the fringes of protectability, at least when considering from the perspective of originality. Specific rights attach to databases outside of mere copyright protection, and the remit of those rights has been debated by the courts for some time. Since the advent of cloud computing, database rights in purely 'cloud-based' technologies haven't been debated much in the courts, and the question therefore arises: do you have database rights in a cloud database? The High Court took on this issue in a recent decision handed down in late August 2017.

The case of Technomed Ltd v Bluecrest Health Screening Ltd concerned electrocardiograms and the analysis of the data created through the ECG measurements. An ECG measures the movement of electricity through a patient's heart, giving details of its health to varying degrees based on the ECG technology used. Technomed supplied ECG equipment, systems and services, including an online ECG analysis and reporting system called "ECG Cloud". The platform allows for ECG information to be analysed externally (the information itself is reviewed remotely by a qualified cardiologist) when taking the readings, offering a simplified analysis using three colors to indicate the heart's health status. The analysis is done using resources in Technomed's database, including characteristics of ECG readings and their associated issues. Technomed licenced its technology to Bluecrest, and after a relationship breakdown proceedings were initiated to protect the rights in the database and its reporting format, which were passed onto a competitor (the second Defendant in the case) by Bluecrest.

The crux of the case revolved around sui generis rights in the database (protection of the money, time and effort put into the database, rather than), copyright in the database, copyright in the reporting software that produces the results from ECG Cloud in XML format, and copyright in various other peripheral elements of the system, e.g. images and explanatory materials.

After assessing the decision of Fixtures Marketing Limited v OPAP, Deputy Judge Stone concluded that Technomed's database was a database as defined under the Database Directive, meaning "…a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means". Even so, Technomed still had to establish a sui generis right in that database.

Sui generis rights are afforded to a database under the Directive, in essence, when the maker shows substantial investment in obtaining, verifying and presenting the data in the database, derived from pre-existing information. The Court quickly determined that there had been substantial investment in the above by Technomed (taking hundreds of hours to do so), affording them a sui generis right in the database.

Infringement of sui generis rights in databases falls under the Directive as well, happening when the data is 'extracted' and 're-utilized' by another party. As Bluecrest had extracted the whole database, which was then provided to the competitor, it infringed Technomed's right in the database. Additionally, should a party repeatedly and systematically reproduce the database, it will also infringe on the sui generis rights afforded. Bluecrest repeatedly produced the XML reports from the database, prejudicing Technomed's legitimate interests in the database until the reports were updated to no longer infringe in 2016.

Even databases have feelings
The Court then moved onto the matter of copyright in the database under section 3A of the Copyright, Designs and Patents Act 1988. As both parties agreed that the assessment for copyright protection is the same as for the sui generis right (as set in Football Dataco v Brittens), Judge Stone quickly concluded that the database had copyright in it. Similarly, as the sui generis right was infringed, the copyright in the database was also infringed. While he didn't need to address the alternate pleading in infringement of a literary work in the database, Judge Stone nonetheless concluded that the database was a literary work (a PDF copy of it) and that it was infringed by Bluecrest by copying the same.

Judge Stone then moved onto the other works, including the XML report format. For them to qualify as protected works, the works will have to be the "…author's own intellectual creation". Even though no rights were claimed in the XML format itself, the reports did, as agreed by Judge Stone, contain the personal stamp of its authors, and was protected by copyright. As Bluecrest had the report format copied by a competitor, it clearly was infringed as well.

The Court also decided that further documents, such as explanatory materials and patient definitions were also protected by copyright, but only the explanatory materials were infringed, as the patient definitions were only used as a starting point to create new definitions by the defendants.

Bluecrest did combat the infringement claims through an argument against causation, i.e. that they didn't cause any damage to Technomed through their alleged infringement. Judge Stone dismissed this out of hand, as through the clear infringement detailed above there would have been loss caused to Technomed.

Judge Stone concluded that all of the rights in the works had been infringed, but there would be no continuing threat of infringement.

While the case is by no means a landmark one, it is still a continuing reminder in database rights and their infringement, including copyright and sui generis rights. This writer always seems to forget about the strength of these rights, particularly as databases don't come across ones desk too often, so the case was an interesting and refreshing read.

31 October, 2017

Needs Formatting - TV Show Formats Potentially Protected by Copyright

As companies like Netflix and Hulu are entering the fray of traditional TV production, creating their original content and licensing others, the value of more typical TV competition for eyeballs on particular timeslots has become negligible. Grabbing the attention of viewers are a fixed time, competing with other networks for the same slot, used to be a competition of outsmart and 'outcreate', giving TV formats incredible value if done right. Even if the specific production of 'prime time' TV has diminished due to the shift towards on-demand, TV formats still have value under IP laws. The matter rarely sees the light of day in a court room, but a recent UK High Court decision discussed whether a TV format can be protected under copyright.

The case of Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd & Anor concerned a TV gameshow called "Minute Winner", which was created by Derek Banner, the owner of Banner Universal Motion Pictures. Allegedly Mr Banner had disclosed a document detailing the format of the show to Friday TV (the second defendant in the matter), a Swedish TV production company at a meeting in 2005. Mr Banner also claimed that the defendants had misused confidential information to create and broadcast a show called "A Minute to Win It" in 2011, infringing on BUMP's rights in the format, breaching confidence in the same and passing off. The defendants contested the rights in the format document, that a breach of confidence claim was estopped due to a decision earlier by the Swedish courts and the passing off claim.

The Court first addressed the issue of whether the format document was a copyright protected work, specifically as a dramatic work under section 1 of the Copyright, Designs and Patents Act 1988.

As discussed, for example in SAS Institute Inc. v World Programming Ltd, a work has to be 'original', i.e. "…the work must be an expression of the author's own intellectual creation". This is assessed by looking at the whole of the work, not just its constituent parts, including both novel and non-novel parts. A dramatic work itself is defined as "…a work of action, with or without words or music, which is capable of being performed before an audience".

There has been some degree of case law on TV formats; however, only in the far-away land of New Zealand. The leading authority is Green v Broadcasting Corporation of New Zealand, where the New Zealand Court of Appeal considered that merely the idea of a TV format is not sufficient to be a dramatic work protected by copyright. This was in that "…because [the format] could not be acted or performed, being no more than a general scheme for a proposed entertainment", and "…in what way the underlying idea has been distilled out and translated into an expression thereof in a material form sufficiently identifiable to be copied". Due to this lack of tangible expression, bar an idea, leaves the subject matter unclear and therefore not protectable.

Brad was truly captivated by the TV format
Justice Snowden disagreed with the New Zealand authorities, and set out that TV show formats could arguably be protected by copyright under certain criteria. These would be, as a minimum: "…(i) there are a number of clearly identified features which, taken together, distinguish the show in question from others of a similar type; and (ii) that those distinguishing features are connected with each other in a coherent framework which can be repeatedly applied so as to enable the show to be reproduced in recognisable form". Under the criteria, Justice Snowden concluded that BUMP had a low likelihood of success to meet them for an arguable case of infringement, due to a lack of "…a coherent framework or structure which could be relied upon to reproduce a distinctive game show in recognisable form". All of the features of the show were commonplace and indistinguishable from other similar shows (including its name). Even if there were copyright in the work, the show that was produced differed from the BUMP work in many ways, and there would be no infringement.

The second matter was of breach of confidence. Having considered the principles of estoppel and res judicata, Justice Snowden determined that the action would fail due to Mr Banner being estopped from pursuing the claim as it is res judicata or an abuse of process. The legislation in the UK and Sweden is sufficiently similar so as to not require further determination.

Finally, the Court considered the matter of passing off. As discussed in Starbucks (HK), to establish a claim under passing off the claimant has to "…establish that it has actual goodwill in this jurisdiction, and that such goodwill involves the presence of clients or customers in the jurisdiction for the products or services in question". Even without a physical presence in the country it is possible to have goodwill. Justice Snowden swiftly dismissed this argument, as Mr Banner never had any customers in the UK who purchased the rights to the TV show. He did have a website displaying his formats, but the TV show in question was only one of several on that site, and it was nonetheless one of many sent to ITV by email after the meeting in 2005. No goodwill was therefore established in the UK, and the passing off claim failed.

The case has opened the door for claims on TV show formats, but clearly sets a high threshold to establish actual rights in that format. As no UK authorities have dealt with this subject matter, the case is a welcome one, even though the matter is a very niche one. A good TV show format is still very valuable, and protection should be offered, but not willy-nilly.

Source: IPKat

18 October, 2017

Citation Needed - CJEU Decides on Use of Registered Designs as Citations for the Sale of Goods Online

Marketing your goods online can be very tricky, especially if you are in the business of making proprietary goods or accessories relating to well-known brands or goods. Using the name, image or design of the goods your items relate to is almost necessary to communicate the relationship of the goods to the consumer, but without proper authorisation this can be a thorny issue. The law does allow for the use of registered designs for some purposes, but could the use of a design for the sale of goods be allowed under EU law? The CJEU took on this question in late September, giving some clarity to those wishing to do so.

The case of Nintendo Co. Ltd v BigBen Interactive GmbH dealt with the manufacture sale of remote controls and other accessories for the Nintendo Wii gaming console by BigBen, selling them online to consumers in France, Belgium and Luxembourg, and to its German subsidiary. The German entity sold the goods, manufactured by BigBen in France, to consumers in Austria and Germany. The German entity in itself does not hold any stock, but orders them when needed from the French entity. Both companies used images of the Wii and its official accessories (protected by registered designs, e.g. here and here) in the sale of these goods. Nintendo took both entities to court in Germany for design infringement.

The CJEU faced three questions in the matter, specifically dealing with whether the court of a Member State has jurisdiction over the matter where the infringement happened elsewhere; is this use allowed as citation under EU law; and how the place of infringement would be determined.

The first question, as summarized by the court, asked in essence whether the Community Designs Regulation (along with Article 6(1) of the Jurisdiction Regulation) gives jurisdiction to a court to impose an injunction against a party who is supplied by another party in another Member State for infringement of a registered design.


The CJEU first dealt with the issue of jurisdiction. Article 82 of the Community Designs Regulation sets out that "…claims fall primarily within the international jurisdiction of the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in any Member State in which he has an establishment". This can also include the Member State where the act of infringement has been committed or is threatened. For Article 6 of the Jurisdiction Regulation to apply there has to be a connection between various defendants in different jurisdictions "…that it is expedient to determine those actions together in order to avoid the risk of irreconcilable judgments resulting from separate proceedings". The court also highlighted that, under case law, two companies in the same group acting in an identical or similar manner would constitute the same situation of fact.

According to the CJEU, "…the territorial jurisdiction of a Community design court seised of an action for infringement within the meaning of Article 81(a)… extends throughout the European Union also in respect of the defendant who is not domiciled in the Member State of the forum". This means that there would be no jurisdictional issue with regards to pursuing a company in a different Member State through a national court within the EU.

The court then moved onto the second issue of use of the design as a citation. The question posed to the court, in short, asked whether Article 20 of the Community Designs Regulation meant that the use of a registered design by a third party, without authorisation, to demonstrate goods being sold online would be use as a citation and therefore allowed.

Burt definitely needed a citation (Source: xkcd)
The CJEU first looked at the meaning of 'citation'. They emphasised the designs' use for an illustrative purpose, in that "…a third party that lawfully sells goods intended to be used with specific goods corresponding to Community designs and reproduces the latter in order to explain or demonstrate the joint use of the goods it sells and a product corresponding to a protected design carries out an act of reproduction for the purpose of making ‘citations'". The use, however, would be assessed using three cumulative conditions: "…the compatibility of the acts of reproduction with fair trade practice, the absence of undue prejudice to the normal exploitation of the design on account of such acts and mention of the source".

The first condition look at whether the reproduction of the design falls within 'honest practices in industrial or commercial matters', i.e. should the design be reproduced in such a way as to create an impression of a commercial connection between the two entities, it would not be made for the purpose of citation. The second condition concerns the reproduction of the design that negatively affects the economic interest or their normal exploitation by the rightsholder. The third condition is simply attribution, so that a reasonable and observant consumer will know the design's commercial origin.

The court concluded that in the matter at hand the reproduction would be for the purpose of citation if it fulfils all of the above conditions.

Finally, the court addressed the last question of where the infringement would be committed between the two group companies, as the group companies reside and have committed infringements in several EU Member States. The CJEU, having considered the legislative framework, considered that "…the ‘country in which the act of infringement was committed’ within the meaning of Article 8(2) of that regulation must be interpreted as meaning that it refers to the country where the event giving rise to the damage occurred, namely the country on whose territory the act of infringement was committed". This hones down the legislation as applying to where the act was committed, rather than the damage occurring (i.e. infringement in Germany damaging a country in France).

As acknowledged by the court, IP does leave this interpretation as difficult, since the act could happen in a variety of locations in one time. In the light of this, the CJEU set out that "… where the same defendant is accused of various acts of infringement falling under the concept of ‘use’ within the meaning of Article 19(1) of [the Community Designs Regulation] in various Member States, the correct approach for identifying the event giving rise to the damage is not to refer to each alleged act of infringement, but to make an overall assessment of that defendant’s conduct in order to determine the place where the initial act of infringement at the origin of that conduct was committed or threatened". In the situation in the current matter, the place where the goods were put on sale online would be where the infringement took place.

 The CJEU's decision is a very interesting one, and while they made no assessment on the particular infringements in the case, it still gives national courts the tools to do so themselves in a more flexible manner rather than just designating each infringement in its respective country. This will make the assessment of infringement, and similarly of citation, much clearer for the future.

10 October, 2017

Shared by a Little Bird - Does Retweeting Protected Works Infringe IP?

Social media has made the near-thoughtless sharing of content a part of everyday life, whether it is sharing an article you liked or a picture you found somewhere. Even though the sharing of the content seems innocuous and more often than not will drive views towards the original creator, the possible legal issues of sharing without actually seeking permission or checking whether, for example, a Creative Commons licence exists. One such platform that might not come to people's mind at first is Twitter, where users can 'retweet' content that someone else has posted on their Twitter account (more on Twitter in general here and here) with very little effort. In the light of this, could the retweeting of content infringe on someone's rights?

This question will soon potentially get an answer, after a claim was commenced in the District Court of the Middle District of Pennsylvania, as reported on JDSupra. In the complaint Keith Bell, a well-known sports psychologist and author, sued King's College (a Pennsylvanian private educational institution) and Jeffrey Knarr (the head coach of American football at King's College) for both copyright and trademark infringement. Mr Knarr had retweeted two images of pages from Mr Bell's book "Winning Isn’t Normal", which were originally shared by a separate Twitter account operated by Northeastern State University's baseball team. While the baseball team removed their tweet after being approached by Mr Bell, Mr Knarr didn't do so, and his retweet had garnered some degree of interest. Mr Bell had registered copyright and trademark rights in his book well before the claim.


Sharing is caring?
As a starting point, Twitters TOS set out that "[b]y submitting, posting or displaying Content on or through the Services, you grant us a worldwide, non-exclusive, royalty-free license (with the right to sublicense) to use, copy, reproduce, process, adapt, modify, publish, transmit, display and distribute such Content in any and all media or distribution methods (now known or later developed). This license authorizes us to make your Content available to the rest of the world and to let others do the same". Clearly this is simply to protect Twitter's position in the event that an author of a work posts their content on the platform, but it doesn't offer a safe harbour for those who post material they have no rights in (or equally, further sharing that material through retweets). Clearly there would be no protection offered by the TOS to any users sharing materials without ensuring its legitimacy.

Case law doesn't shed light on this issue much, as most cases dealing with social media have yet to hit the scene in a big way. For example, a similar claim to the above was filed in 2015, but the case settled before being decided.

Even so, the case of Agence France Presse v Morel offers some guidance. In the case a photographer claimed copyright infringement after a picture they took was copied from their Twitter account and used in newspaper reporting. Among many other observations, the District Court of the Southern District Court of New York saw that the Twitter TOS didn't protect copying the works from the service, as the artists retained the rights in the works even when posted (but Twitter could put them on the website and display them on the artist's account). No licence is therefore given to the copier, even if the TOS state terms that might indicate as such. The retention of rights and the work's subsequent copying are therefore the important considerations around Twitter and copyright infringement.

Arguably, by retweeting e.g. a picture of a work you are creating a copy of that work, and should it be substantial enough it can be copyright infringement. There can be an argument under fair use in the US, which would be, in this writer's mind, a good one, but in the UK fair dealing would be more difficult to argue. A claim of trademark infringement would also be very viable, as the full name of the book (a registered trademark) is included in the Twitter post with the body of the text.

Overall it seems that retweeting material can be risky, particularly if the content is not attributed at all. This writer is a large proponent of sharing content on social media, and believes that the more sharing the better (with proper attribution, of course); however, users need to keep in mind that not everyone wants that to happen. It will be interesting to see where the law develops in terms of social media in the coming years, but it seems that the rights in an author's works would still very much remain and be enforceable.

03 October, 2017

Hungry for a Fight - Are There Rights in a Recipe How-to Video?

Food has become incredibly trendy in recent years (not that people didn't eat in years before), and many aspiring home cooks and chefs alike have moved onto modern platforms to share their know-how and passion with others. Sites like YouTube are filled with instructional and entertaining cooking videos, garnering millions of views from all over the world. Because of this, there is tremendous value in these videos and their viewers, and competition can get heated. This blog has discussed IP and food before (more here and here), and this writer has just come across a very interesting dispute over a how-to video involving cupcakes.

While the case has only recently begun, it still shows an interesting facet of copyright, particularly surrounding recipe videos.

The case of Elizabeth Labau v Food Network (complaint accessible here) concerns a recipe video made by Ms Labau for her website SugarHero. After a very successful online recipe that went viral, Ms Labau created a how-to video showing how to make her recipe step-by-step, following the success of her recipe article, which was subsequently published in December 2016. Sometime later in December 2016, the Food Network had published a video illustrating their take on the snow globe cupcake, and according to Ms Labau, copied numerous elements from her video, including "...choices of shots, camera angles, colors, and lighting [and] textual descriptors". Ms Labau has since complained to the District Court of the Central District of California, alleging copyright infringement.


Alex's take on cupcakes was a little "unique"
Although the decision from the District Court is still pending, the case will face its share of problems along the way. Ms Labau has not asserted copyright infringement in the recipe for the snow globe cupcakes, but only in the video showing how to make the cupcakes themselves. As discussed on this blog before, recipes are incredibly difficult to protect, and the only thing one can pursue in relation to them is the expression of that recipe, i.e. pictures or video. A simple list of ingredients won't be protectable.

It'll be interesting to see where the case goes, and whether the Food Network has actually copied elements of Ms Labau's video. Due to the proximity on posting the videos it is likely that one took inspiration from another, but as long as the expression of the recipe differs from Ms Labau's video, it'll be difficult for an argument for infringement to be established. This writer thinks Ms Labau could have a case, but this would require a near exact shot-for-shot recreation to have much strength in a court of law.

This writer does think that the case will most likely settle out of court, but a proper inspection of how-to videos and copyright would be very interesting, considering the generic nature of these types of videos. The style of many cooking how-to videos are only distinguished through choices of lighting and general filmography, and this writer thinks it would be interesting to see whether a sequence of steps could attract copyright protection, and how close would one have to get to infringe those rights, seeing as the style of these types of videos if widely established. Should the court side with Ms Labau, it could open the floodgates for many claims involving simple step-by-step videos of the same, or similar recipes to fight for the scrupulous viewership of today's Internet populace.

Source: Hollywood Reporter