24 May, 2016

I Looked it Up - Original Research Not Protected by Copyright in Canada

Research is incredibly labor intensive, and can take great leaps to achieve a given result (whether intended or not) or to argue a specific line of thinking. This expended effort into creating a work of merit or intrigue can be something that many would want to defend and benefit from, while preventing others from doing the same without putting in the very same work. With that being said, would one therefore be able to protect their research through copyright? This question was answered by the Federal Court of Canada in early May.

The case of Judy Maltz and others v Jennifer Witterick and Penguin Canada Books Inc. dealt with the documentary "No. 4 Street of Our Lady", which delved into the life of Francizska Halamajowa and her daughter Helena, who lived in Polan during World War 2 during the country's occupation by the Germans. During this time Ms. Halamajowa hid three Jewish families from the Nazis for nearly two years, as well as some German soldiers who deserted the Nazi army towards the war's end. The documentary was produced and directed by the claimant (along with her co-claimants), Ms. Maltz, who used her Moshe Maltz's, her grandfather's, diary for the factual background of the work. Jennifer Witterick, the defendant, after learning about the story of Ms. Halamajowa, wrote a book about her (although in a fictional context, incorporating some facts from the documentary in the book) titled "My Mother’s Secret". Ms. Maltz subsequently took the parties to court, asserting copyright infringement in her work.

The Court faced the questions of whether the work is protected by copyright, whether Ms. Maltz's moral rights had been infringed, and if she could claim damages for the same.

An interesting submission by the claimant is the use of 'small facts' versus 'big facts'. This distinction is made on the basis that big facts, such as World War 2 as a whole or other associated major events, cannot be protected by copyright, but the use of small facts, pertaining to very specific, possibly niche or unknown events, would be protectable through copyright.

Justice Boswell, handing down the judgment of the Court, first dealt with the copyright protection of the work. He acknowledged that (which stood undisputed by either parties) that the documentary was indeed a protected work, and Ms. Maltz would have rights to assert against any substantial copying of that work. He further affirmed, as has been accepted since the judgment in CCH (discussed more here on this very blog) that 'sweat of the brow' (work and effort, in other words) is not protected, but a proper exercise of skill and judgment in the creation of any given work. Similarly, this does not extend to mere facts.

Bill just never knew when to stop asking questions
Justice Boswell saw that "Mrs. Halamajowa’s story is not in and of itself covered by the Applicants’ copyright in the Documentary. The factual details of her story are also not covered by the Applicants’ copyright. It is not the story that the Applicants’ copyright protects but, rather, the Applicants’ specific expression of it through the exercise of their skill and judgment". As has been firmly established in copyright, it extends to the expression of ideas and not those ideas alone. Justice Boswell also handidly rejected the claimant's argument in 'small' or 'big' facts, as determined that "[c]opyright law recognizes no such difference or distinction. Facts are facts; and no one owns copyright in them no matter what their relative size or significance". The use of the facts from the documentary therefore would not infringe copyright. Arguably, this makes perfect sense, since facts are always facts, irrespective of their size or notoriety. Allowing for the protection of 'small' or even lesser known facts would create an area where the law would be at odds with itself, and the interpretation of Justice Boswell makes sense in preventing this issue.

The judge then turned to the matter of whether the work had been copied substantially. He emphasised that this would not include any facts presented in the documentary, but only the expression of those facts (as mentioned above). Justice Boswell concluded that there was very little verbatim copying from the book in the documentary, and its impact on the documentary's value would be minimal, or even non-existent, as the documentary's popularity had already been on the wane before the book's publication. He ultimately deemed the works to be wholly different in their expression, and although share the same story, would be separate, protectable works in their own right.

Finally, Justice Boswell addressed the issue of moral rights, and whether the book had infringed on those rights after its publication, which he deemed to be not infringed, due to no evidence existing that supported this notion. He dismissed the claim and awarded no damages to Ms. Maltz as neither her copyright or moral rights had been infringed.

Although the case is a very straightforward application of the law, it still presents an interesting notion on nuanced research or factual knowledge. While being able to present a niche argument, or a very little known story, can be a valuable asset, factual subject matter should not be protected through copyright, which would impede on the dissemination of freely available factual information by those who desire to create a different work entirely. Justice Boswell's judgment is a common sense one, but this writer enjoyed the mental exercise put forth by Ms. Maltz in her case.

Source: The Globe and Mail

16 May, 2016

Hidden Benefit - Use of Trademarks as Google AdWords Allowed in Australia

There are many aspects of the Internet that most of its users are blissfully unaware of, including mountains of code and infrastructure that goes unseen. This is important, since seeing every aspect of a web browsing experience would cause information to be muddled and hard to digest, if not impossible to handle properly, so this 'invisible' network is necessary for the modern experience. Even so, the hidden layers of the Internet could be used for nefarious purposes, or possibly to try and take advantage of the goodwill of businesses or their trademarks, which puts it in a position of some scrutiny. While this blog has discussed metatags before (in a Canadian context), a similar question arose yet again, only this time all the way across the world in Australia.

The case of Veda Advantage Limited v Malouf Group Enterprises Pty Limited dealt with Veda, who are a big credit reporting organization in Australia. Among providing consumer credit reports, they also offer a credit repair service, expunging incorrect or otherwise erroneous listing on a consumer's credit report, therefore improving their credit score (although Veda do not do this proactively, only responding to customer's notices on this information). Malouf Group offer a similar service, although liaising with Veda on their customers behalf (in the process acquiring a copy of their report from them). Veda are also in possession of several registered trademarks over its name, or variants of it, including VEDA, VEDA ADVANTAGE and VEDACHECK. In advertising their business online, Malouf used the name Veda in 86 Google AdWords keywords, which were targeted at those wanting to contact Veda and would be directed to Malouf's services. They were subsequently sued by Veda for trademark infringement for their use of the name (or its variants) in their Google AdWords campaigns, potentially contravening section 120 of the Australia Trade Marks Act 1995.

Under the section above a trademark is infringed when a sign is "...use[d] as a trade mark... that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered". The key questions therefore are whether the name "Veda" was used 'as a trade mark' and whether this was done 'in relation to services' that the marks were registered for.

Judge Katzmann, handing down the Federal Court's judgment, first dealt with the issue of whether the name Veda was used as a trade mark by Malouf in their use of it in their Google AdWords advertising. The use would have to be "...as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods". This has to be done objectively, including taking into account the nature and purpose of the use.

Google AdWords can be questionable at times
She rejected the notion that Malouf were using the signs as trademarks, as, in her mind, the selection of marks used in the Google AdWords platform does not create a connection with the services of the marks' owner, but act as a way to direct possibly interested parties to your own services. They can equally be acquired by any business, including Malouf's competitors, which would add further links in the search results. The marks are also invisible to the user, who will not see them outside of the results and their search query itself.  The invisible nature of the marks would not create an impression on the user that that specific word is what brought up the results, and therefore would not confuse them as to their indication of origin. She distinguished Google AdWords from metatags, which function differently and are possibly visible to the user (although, this writer will contest that many will ever see them), being therefore used as a trademark in the context of the Act. She concluded that "...the use of a sign which is invisible to the consumer is [not] use as a trade mark within the meaning of the Trade Marks Act".

Judge Katzmann then moved onto discussing the marks' use in the sponsored links that appear at the top of results when a keyword or words are searched. What is worth also noting is the use of the name Veda (and other words) in custom headings that appear within these sponsored results. Judge Katzmann saw that in the majority of the instances (all but one) the use of Veda was not a use as a trademark. In her view the use was to "...describe the object to which its services are directed — fixing, cleaning or repairing Veda credit files or reports — not as a badge of the origin of its business and therefore not as a trade mark". To put this into slightly different terms, this meant that the mark was used merely to describe a specific service, and not as an indication that it originated from Veda.

The final point in relation to infringement was whether the marks were used in relation to services in respect of which the trade marks were registered. As the marks were registered for several different classes they encompassed a wide array of services, including consultation, advice and analysis in relation to financial services (with plain financial services not being offered by Malouf). Judge Katzmann rejected Malouf's assertion, and accepted that the marks were used in relation to the services they were registered for, even if the services offered by Malouf were not identical to Veda's. After a very brief discussion, Malouf was also deemed not to have a defence under section 122 of the Act through a use in good faith. In the end Judge Katzmann saw that Malouf only infringed the marks in respect of two search queries (specifically "The Veda Report Centre" and "The Veda-Report Centre"), with the rest deemed not to infringe under the Act.

What was curious in the case is the discussion surrounding the European or UK position in relation to this type of meta-information and infringement of trademarks. Judge Katzmann distinguished both Google France SARL v Louis Vuitton Malletier SA and Interflora Inc and Anor v Marks & Spencer, determining that the wording used in the EU legislation was not an equivalent to the Australian wording, especially with the difference in 'using in the course of trade' (per Article 5 of the first Trade Mark Directive) and 'used as a trademark' under section 120 of the Australian Act. In her view, the use would have to be, contrary to the aforementioned judgments, as a 'badge of origin' and not merely in the course of trade (whether used as a badge or not). The invisibility of the use seems to be key here in an Australian context, whereas in Europe this seems to be mostly irrelevant under previous considerations.

The case also dealt with competition issues under the Australian Consumer Law, and Judge Katzmann deemed that the provisions were only contravened under the above two search queries for which the marks were also infringed.

All in all the case is very interesting, and provides some valuable insight into the nuanced world of the Internet and its hidden facets. Australian law seems to diverge, at least for now, from its cousins in Europe and the UK, and this judgment strongly cements it as such.

Source: K&W IP Whiteboard

05 May, 2016

It's Better than That! - CJEU Allows Compensation for Moral Prejudice for IP Infringement

As many people can imagine, the soul of an artist can be a fragile one, and uses of their works (in what ever particular way they are used in a derivative sense) can be a sensitive topic. Even so, especially in an era where technology has enabled us to use material as we please in a myriad of ways, these uses can be objectionable if used for a contrary purpose or otherwise smear the reputation of the work or the author themselves. Although fair dealing/fair use do allow for some uses of works without infringing them, in the event that the use does infringe, can the owner of the work possibly sue for more than just damages, but also for compensation for moral prejudice? The CJEU set out to answer this question in March this year.

The case of Christian Liffers v Producciones Mandarina SL and Mediaset España Comunicación SA dealt with Christian Liffers' movie "Dos patrias, Cuba y la noche" (Two Homelands: Cuba and the Night), which he directed, wrote and produced, discussing six intimate stories about homosexual or transsexual individuals living in Cuba. Mandarina, one of the defendants in the case, produced a documentary on child prostitution in Cuba, utilizing hidden cameras to film candid footage of criminal activity around the topic. Some parts of Mr. Liffers' movie were included in the Mandarina production without any authorization being sought from him to use the material. He subsequently sued the production company and the TV channel for copyright infringement.

Mr. Liffers' action succeeded partially at first instance in Spain, seeking damages for both lost licensing fees (had he done so voluntarily for the purposes of the documentary) and for moral prejudice suffered as a result. On appeal damages were reduced, with payments for moral prejudice being excluded entirely. The Supreme Court of Spain, upon further appeal, referred the matter to the CJEU on the question of damages for moral prejudice under Article 13(1) of the Enforcement Directive.

Moral prejudice is very relative, and painful (Source: SMBC)
The Court summarized the question asked by the Supreme Court concisely: "...whether Article 13(1) of [the] Directive... must be interpreted as not permitting a person injured by an intellectual property infringement, who claims compensation for the material damage suffered as calculated, in accordance with heading (b) of the second subparagraph of Article 13(1) of that directive, on the basis of hypothetical royalties, also to claim compensation for his moral prejudice as provided for under heading (a) of the second subparagraph of Article 13(1) of that directive".

The Court first considered subsection b (which allows for the payment of a lump sum of damages, for, e.g. royalties or other fees due to the owner), and saw that the wording does not exclude the possibility of including other harm as a part of the damages awarded, even if not expressly mentioned. This would, in certain instances, include moral prejudice suffered. However, it has to be "...appropriate to the actual prejudice suffered... as a result of the infringement" (including damage to the reputation of the work, as set out by the Advocate General in his opinion).

They then moved onto subsection a (expressly setting out criteria to consider when affording damages, including moral prejudice), and determined that "In the light of the objectives of [the] Directive... [subsection a] of that directive must be interpreted as establishing the principle that the calculation of the amount of damages to be paid to the holder of the intellectual property right must seek to ensure that the latter is compensated in full for the ‘actual prejudice suffered’ by him, which also includes any moral prejudice". This would, by this writer's assessment, be proved through evidence adduced of actual prejudice, and without such would be difficult to attain, as this would not necessarily qualify as 'actual prejudice'.

What the Court sets is a double-whammy of damages, as one can claim for a lump sum under subsection b for lost royalties and fees (and other factors deemed relevant), and also moral prejudice under subsection a, provided it is actual prejudice.

This is slightly different to the position in the UK, where, according to the decision in Henderson v All Around the World Recordings Ltd, damages for moral prejudice can only be afforded in limited circumstances, where financial loss is minimal (or was not suffered at all), or if the damages would otherwise not be proportionate to the actual damage suffered. The UK position would clearly have to change in subsequent case law to reflect the CJEU's decision.

All in all the case is a peculiar one, and arms IP enforcers with the possibility of claiming for moral prejudice irrespective of the financial damage suffered (provided there is actual prejudice suffered through the copying of the work). This writer sees this as a common sense approach, since financial loss does not in itself encapsulate all possible losses suffered, with future losses possibly suffered through the prejudice to the work or its reputation. The decision will potentially act as a deterrent against those who seek to (wrongfully) exploit works and/or attack their reputation.

Source: IPKat