27 November, 2020

It's Just a Part of the Process - The Disclosure of Copyright Protected Materials Is Not Communication to the Public

Any litigator will be very familiar with the process of disclosure (or discovery for our American friends), where you exchange a wealth of documents with each other as parties to litigation in order to better assess the case you have and what materials support it. Often the breadth of disclosure can be immense and encompass a huge variety of documents of all sorts, from emails, internal notes to photos, depending on the case at hand. Unsurprisingly many of these documents will be protected by copyright, and it's unclear, at least on its face, whether the sharing of those documents as a part of disclosure would infringe copyright (or could be prevented using copyright to do so). Luckily enough the CJEU was tasked to answer this question in a recent case and handed down their judgment in late October. 

The case of BY v CX concerned litigation between the parties in the Swedish civil courts, where during the disclosure process CX sent the court a seized copy of a page of text containing a photograph as evidence in the proceedings via email, which was taken from BY's website. BY requested that CX pay damages for copyright infringement for the sharing of the photographs with the court. At first instance the Swedish courts dismissed BY's claim, as, although the photographs were protected by copyright, no harm was suffered since they were shared as a part of litigation. BY subsequently appealed the decision, which ultimately ended up with the CJEU. 

The Court considered the four questions submitted to it together, which asked "...whether Article 3(1) of Directive 2001/29 must be interpreted as meaning that the concept of ‘communication to the public’, referred to in that provision, covers the transmission by electronic means to a court, as evidence in judicial proceedings between individuals, of a protected work".

To kick things off the Court went through the requirements for what amounts to a 'communication to the public', namely: (i) an act of communication of a work and (ii) the communication of that work to a public.

The Court first noted that 'an act of communication' includes any act by which a user gives access to protected works, with full knowledge of the consequences of that action, is liable to constitute an act of communication, This would be the case, prima facie, where a protected work is transmitted by electronic means to a court as evidence in judicial proceedings between individuals.

Secondly, the work has to be communicated to a 'public', which refers to an indeterminate number of potential recipients and implies, moreover, a fairly large number of persons, which does not simply mean private groups but could be the general public. 

In the current case the Court determined that the public in this instance would be a clearly defined and closed group of persons holding public service functions within a court, and not to an indeterminate number of potential recipients. The communication has not therefore been made generally, but to a specific set of professionals in the court system. In the light of this the Court saw that it would not amount to a 'communication to the public'. 

Further, even if national legislation allows for the public inspection of documents in court proceedings does not change this fact. In these instances access is granted by the courts, and not the person that sent the documents to the courts, which is often under an obligation to provide access to court documents. Article 9 specifically allows for this, as it permits the transmission of copyright protected materials for the purpose of access to public documents. 

The CJEU therefore decided that: "Article 3(1)… must be interpreted as meaning that the concept of ‘communication to the public’, referred to in that provision, does not cover the transmission by electronic means of a protected work to a court, as evidence in judicial proceedings between individuals".

The decision is in no way surprising, since access to litigation related documents is paramount in many jurisdictions, and preventing access to them would hinder the availability of important documentation. The argument was indeed a very novel one, but one that was set to fail from the beginning. This writer wonders whether it was simply an attempt to hinder the disclosure process, but that is merely conjecture.

05 October, 2020

An Emotional Case - Can Sherlock Holmes Exhibiting More Emotions be Copyright Infringement?

 The world of copyright often springs up very odd cases and arguments for copyright infringement, and the character of Sherlock Holmes is by no means unfamiliar in that particular world (discussed on this blog, for example, here and here). With some of Sir Arthur Conan Doyle's iconic stories falling out of copyright some years ago, it would be easy to assume that the character is totally out of copyright and that an inevitable free-for-all on the character will be hitting various screens and mediums soon. However, there are still stories that the author penned that remain protected by copyright (specifically the stories written in the early to mid-1920s), and the estate of the deceased author will got to great lengths to protect those rights. With this in mind, a new case has sprung up revolving around the detective, bringing the question of whether the exhibition of emotions can showcase copyright infringement. 

According to numerous news outlets the estate of Sir Arthur Conan Doyle has sued Netflix and the author Nancy Springer for copyright infringement relating to their new movie, Enola Holmes, which focusses on Sherlock Holmes' teenage sister, based on the books by Nancy Springer on the same character. 

In their complaint the estate argue that the character of Sherlock Holmes changed in the last 10 books from an aloof, near emotionless individual to one that actually had a heart and could form friendships and express his emotions, and respect women (one can appreciate that this stance was probably quite progressive in the 1920s). Mr Holmes' relationship also changed with his companion Watson to one of actual friendship and not merely one of master and assistant. 

In the Enola Holmes movie by Netflix (and also the books by Ms Springer), Sherlock Holmes showcases the detective transforming from a cold, aloof individual to one who is warm, respectful and kind in his relationships. He also worries about his friend Watson's health during altercations in those stories. Sherlock also exhibits other emotions such as that of worry and distraught, being unable to eat due to his internal turmoil. Finally, Sherlock also shows that he cares for his sister Enola and shows brotherly love towards her. 

The estate argues that this emotional depth is never exhibited in the books that are in the public domain, and therefore are protected by copyright as it relates to the latter 10 books where Sherlock Holmes evolves into a more fleshed out, emotionally open person. 

Arguably, the estate's argument is quite flimsy, since, unless either Ms Springer or Netflix have copied the actual expression within the last ten books by the author, it will be hard to stretch copyright protection over the simple aspect of emotional depth or development. There are near countless adaptations of Sherlock Holmes, which, to varying degrees, will showcase emotions or the lack thereof. While it is arguable that some specific expressions of emotions could be protected by copyright (for example, as noted by the Verge, Sherlock caring about dogs), overall emotional depth or availability will be hard to stretch to cover any thematic arcs in the books themselves. 

Although the courts have acknowledged in Klinger v Conan Doyle Estate that Sherlock Holmes as a character is protectable (within the relevant term), the extent of "roundedness" that could extend outside of the term is very debatable. The court also discusses the alleged incremental nature of copyright in the depiction of the characters and denies that such an incremental approach could be taken. 

There is a very good chance that this case will never see the light of day in court, as the parties will undoubtedly settle the issue out of court, but it would be interesting to see whether the courts would consider emotional development for characters to be something that copyright would protect. This writer is very doubtful that the courts would find any infringement here, but bigger surprises have been created by the courts in the past.

26 August, 2020

A Swirl of Personality - Can You Have Copyright in a Fingerprint in the US?

It's easy to forget how such a minor detail as a person's fingerprint can be an important part of their person. Even setting aside the old school method of identification of potential criminals, smearing their ink covered fingers onto a police log book, a fingerprint evokes a more romantic notion of individuality; a truly unique set of impressions that are yours and only yours. While there is some truth to this notion, it might not be entirely the case, but nonetheless it's a hard thought to let go of. Fingerprints have often also been used in art, undoubtedly playing to the above thinking, but as it has been used in creative works, could one own the copyright to a fingerprint? Luckily, the USP Copyright Office issued a decision answering this question earlier this month. 

The decision in Re Equilibrium concerned an application to register the copyright in a variety of works by the artist Manjit Dhaliwal. The works, including one titled "Equilibrium", comprised different partial fingerprints cropped into four geometric shapes, namely a square, hexagon, circle, and triangle. Mr Dhaliwal attempted to have the works registered as early as 2018, however, the Copyright Office rejected the applications for a lack of authorship in those works. Mr Dhaliwal then requested that the applications be reconsidered a total of two times, the latter of which is the decision in question. 

The matter concerned whether the works could be deemed as original works. This means that they have to be an "...original work of authorship fixed in any tangible medium of expression", meaning that they were (i) independently created by the author and (ii) possess sufficient creativity. This can include the mere arrangement of common or standard designs, but the author has to show some creative authorship in its delineation or form. 

Also, patterns can be protected by copyright (including a fingerprint pattern), so long as the use of the shapes in the patterns is sufficiently creative.  

After the discussion of the legal background, the Copyright Office then dove into the assessment of the works themselves. The Board quickly determined that none of the elements in the works, including the fingerprints, are sufficiently creative to be eligible for copyright protection. 

Specifically in relation to the fingerprints, the Copyright Office noted that copyright does not protect the design found on a human fingerprint, as copyright will only protect an original work of authorship created by a human being and not works produced by nature. Since a fingerprint is  a part of the human body formed by natural processes outside of human control, it cannot have human authorship, and thus isn't original. Even though the author had made alterations to the fingerprint by cropping and amending its lines, it still wasn't sufficiently original to be protected. 

The Copyright Office therefore rejected Mr Dhaliwal's application for registration of the copyright in the above works. 

The decision is quite a curious one, but makes sense, as protection in a fingerprint would extend its remit beyond human creation, but also into the realm of natural creation. Even though the artist had made alterations in the shape and lines of the prints, they remained largely as they were scanned, and very little originality was applied bar the shape and order of the scanned fingerprints. While unsurprising, it's always nice to see discussions of more novel things in the sphere of copyright within governing bodies. 

20 August, 2020

I'm Not Involved! - AG Øe Opines on the Liability of Intermediaries in Copyright Infringement by Communication to the Public

The freedom of many services on the Internet can create a pile of problems for service providers, particularly when users have a wide berth in the use of those services. YouTube has faced a deluge of issues in relation to copyright over the years, since users are free to upload whatever they please, and those materials are then processed through the Content ID system for any potential copyright infringement. As copyright holders have taken issue on this freedom and have demanded for more direct action, YouTube itself hasn't faced a great deal of litigation around copyright infringement matters. A recent saga in the European courts, however, changed this, where the service provider was alleged to have infringed copyright through its users' actions. The case is now closing on its end in the CJEU, and Advocate General Øe gave their opinion only recently on the case before the decision of the CJEU.  

The case of Frank Peterson v Google LLC concerned music tracks and a live concert that were uploaded onto YouTube in 2008 by the users of the platform from an artist, Sarah Brightman's, album 'A Winter Symphony', in which Mr Peterson owned the copyright. After requests for the removal of the music were unsuccessful, Mr Peterson took Google to court in Germany for copyright infringement requiring the removal of the materials and the acquisition of profits made from the works availability. Google challenged Mr Peterson's actions, which ultimately were referred to the CJEU for further clarification. The CJEU has joined the above case with two similar ones concerning Cyando AG (who operated a file-sharing site onto which potentially infringing works were uploaded) Elsevier (who also sued Google for copyright infringement over the uploading of episodes of the TV show 'Gray's Anatomy) that concerned similar questions on liability.

The above cases raised a number of questions to the CJEU predominantly in relation to the liability of service providers for the uploading of infringing materials onto their platforms. For the sake of brevity, this article will not discuss every nuance of the judgment, so it is advised for anyone wanting a full picture to consult the opinion for themselves if needed. 

The first question asked whether "...the operator of a video-sharing platform and the operator of a file-hosting and ‑sharing platform carry out an act of ‘communication to the public’ within the meaning of Article 3(1) of Directive 2001/29 when a user of their platforms uploads a protected work there"

The AG first set out what amounts to a 'communication to the public', which is comprised of two separate elements: (i) an act of ‘communication’ of a work and (ii) a ‘public’. In relation to the first element, a person or company carries out an act of 'communication' when it "...transmits a work and thus makes it perceptible at a distance" - or to put in different terms, transmission a work via the Internet or makes a work available on the same. This includes interactive on-demand transmissions where members of the public may access the work from a place and at a time individually chosen by them, such as uploading a work onto a website. As to the second element, a 'public' refers to "...an ‘indeterminate’ and ‘fairly large’ number of persons", including the general public that can access a website. 

The AG swiftly concluded that works shared on YouTube would be communicated to the public under the Directive. The uploading of the works is also not covered by the exceptions under Article 5 of the Directive.

The AG then moved onto considering whether the user uploading a work or platforms like YouTube, carries out the act of communication to the public. He considered that the acts of companies like YouTube are those of an intermediary, and not of a party that communicates a work to the public. This is due to the fact that intermediaries don't decide, on their own initiative, to transmit works to a public, but follow the instructions of their users. The communicator is therefore the user alone. However, if a service provider intervenes actively in the ‘communication to the public’ of works, i.e. selects the content transmitted, determines it in some other way or presents it to the public in such a way that it appears to be its own, the provider would be the communicator to the public. 

The AG then concluded that service providers like YouTube don't communicate works to the public that are uploaded by their users onto their services, as they merely provide the 'physical facilities' necessary for the communication of those works (as envisaged by recital 27). Clearly, passive service providers will not be deemed as such, but ones that take an active role in the selection of materials to be communicated would potentially be in breach.

He ultimately suggested that the answer to the first question is "...the operator of a video-sharing platform and the operator of a file-hosting and -sharing platform do not carry out an act of ‘communication to the public’ within the meaning of Article 3(1)... when a user of their platforms uploads a protected work there"

The AG then moved onto the second question, which asked "...whether operators such as YouTube and Cyando can benefit from Article 14(1) of Directive 2000/31 with regard to the files that they store at the request of users of their platforms"

Article 14 provides an exclusion over liability for the storage of files by service providers, which, according to the AG, applies in relation to both primary and secondary liability for the information provided and the activities initiated by those users. In the AG's view Article 14 doesn't apply where a provider communicates to the public its ‘own’ content, but does apply on the other hand when the content communicated was provided by the users of its service. 

After an incredibly exhaustive discussion on the details of Article 14, the AG saw that Article 14 therefore applies to service providers like YouTube would be exempted under the provision in relation to liability for files that have been uploaded by their users. 

The case then moved onto the third question, which asked whether the conditions mentioned in Article 14(1)(a) refer to specific illegal information. The provision relates to the discussion above, as the service providers cannot have knowledge of illegal activities or information on their service in order to benefit from the exemption. This could, potentially, include any infringing materials on those services, and it is important for providers like YouTube to have actual and abstract knowledge or awareness of those materials. 

According to the AG, this knowledge has to be specific and in relation to objective factors relating to specific information on its servers, which then obligates the service provider to remove that material from its servers. To summarize: "...a service provider is obliged diligently to process facts and circumstances brought to its knowledge, in particular by notifications, concerning specific illegal information". They are, however, in no way obligated to actively search for infringing materials before notification. 

Even with that in mind, the awareness factor cannot be used as a shield by service providers and any bad faith would make them lose the exemption altogether. 

In short, the AG noted that "...Article 14(1)(a)...  must be interpreted as meaning that... where a service provider has ‘actual knowledge of illegal activity or information’ and the situation where such a provider is ‘aware of facts or circumstances from which the illegal activity or information is apparent’ — refer to specific illegal information".

The AG then moved onto the fourth question, which asked what the conditions are for rightsholders to be able to apply for an injunction under Article 8(3). 

After some discussion in relation to German legal concepts in terms of conditions, the AG determined that this is possible "...where it is established that third parties infringe its rights through the service provided by the intermediary, without the need to wait for an infringement to take place again and without the need to show improper conduct by the latter". This means that rightsholders won't necessarily have to establish infringement and apply for an injunction each time an infringement occurs, but future infringements could also be prevented through a court order. This could include measures to 'detect and block', which, according to the AG, does not infringe Article 15(1). However, as discussed above, this should not be in order to establish a pre-emptive detection system, as actual knowledge is still required. 

 The AG summarized his position in relation to question four as "...Article 8(3)... precludes rightholders from being able to apply for an injunction against a provider whose service that consists of the storage of information provided by a user is used by third parties to infringe a copyright or related right only if such an infringement has taken place again after notification of a clear infringement has been provided".

The fifth and sixth questions asked whether the operators, such as YouTube, would be regarded as 'infringers' pursuant to Article 13(1). If the operators are not deemed to be 'communicating to the public' they of course would not be classed as infringers. Even so, the legislation does leave a great deal of room for national harmonization in this respect. 

The case is really important in establishing the remit of infringement, and liability over the same, in materials uploaded to services like YouTube by their users. As such the CJEU's decision will be an important one, which will most likely be handed down later this year. This writer will await in with bated breath, as undoubtedly many companies like Google who offer services allowing for user-uploaded materials. 

28 July, 2020

None of My Concern - CJEU Looks at TM Infringement on Online Marketplaces and Operators' Liability

Online business, particularly for consumer goods, has exploded in the last ten years, and this writer for one can attest to being one of the most rabid online shoppers. However, with the explosion in popularity comes the legal challenges that often accompany popularity, especially due to the use of third party sales platforms to sell illegitimate goods to unsuspecting consumers. The misuse of trademarks by third-party sellers is not a new thing to be battled over in the courts, but online platforms like Amazon do present new challenges as to the liability of the marketplace itself, which allows for the sale of these goods with relative impunity. Even with this in mind, the CJEU has been set up to answer the question of whether platforms like Amazon can have any liability in relation to the misuse of trademarks by sellers and handed down their judgment on this topic only a few weeks ago.

The case of Coty Germany GmbH v Amazon Services Europe Sàrl concerned the sale of knock-off Davidoff perfume on Amazon. The claimant, Coty, owns the rights to distribute Davidoff perfumes in the EU under the registered trademark (EUTM 876874). After a number of test purchases on the Amazon platform for Davidoff perfumes sold by third parties, with orders being fulfilled by Amazon, Coty pursued the platform itself due to the infringement of the trademark by the third-party sellers. Coty pursued an order that third-party sellers, and Amazon, would not be able to stock the knockoff Davidoff goods - with the matter ultimately ending up with the CJEU through the German courts.

The CJEU only had to look at one question, which asked "...whether Article 9(2)(b) of Regulation No 207/2009 and Article 9(3)(b) of Regulation 2017/1001 must be interpreted as meaning that a person who, on behalf of a third party, stores goods which infringe trade mark rights, without being aware of that infringement, must be regarded as stocking those goods in order to offer them or put them on the market for the purposes of those provisions, if that person does not itself pursue those aims". In essence, the question concerns liability for the proprietor over the sale of goods on an online marketplace, like Amazon.  

As a part of the prohibitions under Article 9(3)(b), a third-party is prevented from offering trademark protected goods, putting them on the market or stocking them. This could include the proprietors of online marketplaces if they are seen to be doing this through the offering of goods on their website by third-party sellers. 

As a part of the platform's service, Amazon stored the goods of third-party sellers, including the counterfeit perfume, which are sold on the platform and processed by Amazon after sale. The Court therefore had to determine whether such a storage operation may be regarded as 'using' or 'stocking' the trademark goods under the above Regulations. 

According to case law, 'using' a trademark entails active behavior and direct or indirect control of the act constituting the use, which includes the activities under Article 9 of the Regulations. However, the prohibitions only apply to third-parties that have direct or indirect control of the act constituting the use, and can therefore comply with those prohibitions. 

Also, the Court noted that operators of e-commerce platforms are not using trademarks in relation to goods sold by sellers on that platform, and the ultimate 'user' of the trademarks is the seller. Similarly, any warehouse-keeper who is sent goods to be held for sale does not use the trademarks contained in those goods. 

Following an extensive discussion of the above precedent and other cases, the Court determined that "...in order for the storage of goods bearing signs identical, or similar to trade marks to be classified as ‘using’ those signs, it is also necessary... for the economic operator providing the storage itself to pursue the aim... which is offering the goods or putting them on the market". In essence this means that requires Amazon, or other similar operators, to actively offering goods they hold for sale, and not simply allowing for third parties to do so using their platform (and their logistics facilities).

This led the Court to conclude that Amazon was not using the trademarks when third parties sold goods through their platform. 

The Court then summarized the matter as "...a person who, on behalf of a third party, stores goods which infringe trade mark rights, without being aware of that infringement, must be regarded as not stocking those goods in order to offer them or put them on the market for the purposes of those provisions, if that person does not itself pursue those aims"

The decision makes perfect sense, since Amazon, or any other similar operator, is not actively selling any counterfeit goods on their platform, but merely enable third parties to be doing so. To conclude that the marketplaces themselves would be liable would hinder their effective operation, and potentially cause them to be liable for 'actions' that they have not taken; namely selling goods unknowingly that are counterfeit. The decision does, however, put them on notice, and ensures that marketplaces that do indeed actively sell counterfeit goods can still be pursued for trademark infringement in that event. 

21 July, 2020

My Digital Home - CJEU Decides Whether IP Addresses, Email Addresses and Phone Numbers are 'Addresses' under EU Copyright Law

The Internet provides a great deal of anonymity and enables those who want to infringe IP rights, including copyright, to often do so without any repercussions. Sometimes, however, companies will pursue infringers, and the first step in any litigation involving any degree of anonymity is to establish who the infringer is and where they reside. In an online environment an individual's "address" is difficult to establish, but it is possible to track them down using the users' IP addresses (which, in brief, identifies the computers used to connect to a website or other online service). Even though legislation has been conceived during this time, whether an IP address amounts to an 'address' and is therefore something that needs to be disclosed by ISPs is unclear; however, the CJEU tackled this question earlier this month. 

The case of Constantin Film Verleih GmbH v YouTube LLC concerned the movies ‘Parker’ and ‘Scary Movie 5 over which Constantin had the exclusive rights to. The movies were uploaded in their entirety onto YouTube sometime in 2013 and 2014 by users of the website and viewed thousands of times. When materials are uploaded to YouTube the users will have to register on it, and provide certain details to YouTube including contact information and their age (particularly when posting material over 15 minutes long). YouTube and Google also logs the users' IP addresses under their T&Cs during this time. Constantin pursued YouTube (and Google) for the IP addresses and other details of the users who uploaded the movies onto the service in order to pursue them for copyright infringement - a request that YouTube declined, with the matter ending up in the CJEU after litigation in the German courts.

The CJEU was issued two questions, which it dealt with together, summarising them as asking "...whether Article 8(2)(a) of Directive 2004/48 must be interpreted as meaning that the term ‘addresses’ covers, in respect of a user who has uploaded files which infringe an intellectual property right, his or her email address, telephone number and IP address used to upload those files or the IP address used when the user’s account was last accessed"

Article 8 stipulates that third parties must provide the 'names and addresses' of infringers if requested by the Claimant. The Court noted that the term 'address' is not defined in the Directive, but should be interpreted in a uniform way across the whole of the EU and not with reference to national legislation, and in accordance with the term's usual meaning in everyday language. 

Rightsholders really sticking it to users
Following the Advocate General's opinion, the Court determined that the term 'address' only covers postal addresses (namely the place of a given person’s permanent address or habitual residence) and not the email address, telephone number or IP address of a user. Nothing in the proposals for the Directive also point to their inclusion within the term.

Further to this the Court discussed that the purpose of the Directive is to strike a fair balance between the interest of the holders of copyright and the protection of the interests and fundamental rights of users of protected subject matter. Article 8 of the Directive specifically aims to reconcile compliance with various rights, among others the right of holders to information and the right of users to protection of personal data. 

Even with the above in mind the Court did mention that it is up to the Member States to enact a potential right to the information within the Directive should they choose to do so. This is enabled by Article 8(3)(a), which expressly provides for the possibility for the Member States to "...grant holders of [IP rights] the right to receive fuller information, provided, however, that a fair balance is struck between the various fundamental rights involved and compliance with the other general principles of EU law". This could include email addresses, telephone numbers or IP addresses of users. 

In summarizing their position, the CJEU concluded that "...Article 8(2)(a)... must be interpreted as meaning that the term ‘addresses’ contained in that provision does not cover, in respect of a user who has uploaded files which infringe an intellectual property right, his or her email address, telephone number and IP address used to upload those files or the IP address used when the user’s account was last accessed".

The decision highlights the CJEU's inclination to protect users' rights alongside the rights of copyright holders, even if this means that they are unable to pursue particular users. While the matter remains in the hands of the legislatures of Member States, giving rightsholders carte blanche to users' information could be hugely detrimental to users' rights and cause rafts of information to be floating around that contain incredibly sensitive information. Pursuing the uploader of a video on YouTube might not even be monetarily worth it for rightsholders in the end, however, if the infringement is so detrimental to their business, it might be possible to pursue other avenues of enforcement in those instances. It'll remain to be seen whether Member States enact any freedoms as discussed above, but it would seem highly unlikely given the current state of the World. 

14 July, 2020

Function Above Form - CJEU Discusses Copyright Protection over Functional Designs

Protection over functionality in relation to copyright is a bit of a contentious subject. Many laws around the world, including in the EU, preclude protection from extending to methods of procedures, potentially including functional aspects of a particular form of expression. The idea of this is to prevent the use of copyright in the way of patents to protect some specific function, giving the rightsholder a much longer period of protection than under patent legislation. Nevertheless, the issue has been litigated before, and the CJEU was set to decide on the matter once and for all earlier this Summer, and finally handed down its decision in June 2020. 

The case of Brompton Bicycle Ltd v Chedech/Get2Get concerned a folding bicycle sold by Brompton, whose design's comprises three different folding positions. The design was patented, however the patent has expired. Get2Get sold a similar bike (called the "Chedech"), which also featured three folding positions. Brompton subsequently took Get2Get to court over copyright infringement, with the defendant arguing that you cannot have copyright in functional designs, i.e. the technical function of the bike design. After a period of litigation in the Belgian courts the matter ultimately ended up with the CJEU. 

The CJEU was asked two questions, which it combined into one; "...whether Articles 2 to 5 of [the InfoSoc] Directive must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result", meaning, can Brampton have copyright in the three-fold design of their bike. 

The court first discussed the requirements for a "work" under EU case law, namely, that it has to be an original subject matter which is the author’s own intellectual creation and an the expression of that creation. This is slightly different when it comes to subject matter that has been dictated by technical considerations, such as the design of a bike. 

In relation to originality, the courts will have to keep in mind that there can be no "work" as such if "...that subject matter cannot be regarded as possessing the originality required for it to constitute a work", which leaves it ineligible for copyright protection. In relation to expression of that 'work' it needs to be identifiable with sufficient precision and objectivity. 

With that said, the Court noted that "...a subject matter satisfying the condition of originality may be eligible for copyright protection, even if its realisation has been dictated by technical considerations, provided that its being so dictated has not prevented the author from reflecting his personality in that subject matter, as an expression of free and creative choices". This would allow for works with functional designs to be protected, provided that the technical considerations included in that design haven't prevented the author from creating it using their own determination as discussed above in relation to originality. 

The Court then moved onto discussing the actual design of the Brampton bike and whether it could be protected by copyright. 

The design of the bike is clearly necessary to obtain a certain technical result, namely that the bicycle may be folded into three positions. Even though there remains the possibility that choice shaped the design of the bike, the Court was unable to conclude that it was indeed a 'work' pursuant to the above Articles, as further evidence would be required. 

The Court further noted that even though the existence of other possible shapes which can achieve the same technical result makes it possible to establish that there is a possibility of choice, this does not in itself show that the design is an original one. In addition, the intention of any alleged infringer is not relevant for the assessment of originality, but courts can indeed consider the existence of a patent over the design (even if expired), but only to the extent that the patent(s) make it possible to reveal what was taken into consideration in choosing the shape of the product concerned.

After all of the above discussions the Court summarized their decision on the matter: "... Articles 2 to 5... must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result, where that product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality, which it is for the national court to verify, bearing in mind all the relevant aspects of the dispute in the main proceedings"

The decision opens the door for national courts to consider the application of copyright in relation to functional designs, and will be quite important for companies wishing to protect those designs going forward. The big hurdle will be evidence, at least in this writer's opinion, as it will be difficult to demonstrate clear decision-making and choice by the author simply by showing designs of a bike. It would clearly have to show a trail of decision-making, potentially even deviations from earlier designs, to show that the author has exercised sufficient thought and scrutiny to fulfill the requirements of originality. It will remain to be seen how national courts will apply this going forward, and what evidence will/might be sufficient to establish copyright in functional designs. 

07 July, 2020

Artificial Intelligence Cannot be an Inventor of Patents, Says USPTO (and the UKIPO and EPO)

Artificial intelligence is a topic that is near and dear to this writer's heart, and something that has the potential to hugely impact the world of intellectual property law. Whether it is in relation to the possibility of copyright protection being afforded to copyright works by AI, or even inventions devised by the same, both the legislatures and judiciaries of the world will have to tackle these questions more deeply as the technology evolves and becomes more commonplace. However, recently many national governing bodies dealing with IP have handed down decisions relating to artificial intelligence and patents, which will undoubtedly shape the direction we will be heading.

First off, the USPTO handed down its decision in Re FlashPoint IP Ltd, where it had to consider whether AI can be an inventor under US law, and therefore could own patents for those inventions. The case concerned applications for a patent relating to devices and methods for attracting enhanced attention (Application No. 16/524,350), which was created by DABUS - an AI that was created by Stephen Thaler. DABUS was solely listed as the inventor for the invention in question (with Mr Thaler being listed as its representative and assignee for the rights). At first instance, the USPTO rejected the application due to a lack of an inventor, and Mr Thaler subsequently appealed the decision. The Commissioner of Patents then handed down its opinion earlier this Summer.

Pursuant to 35 USC 115, an application for a patent has to include the name of the inventor of that invention being claimed, with "inventor" being defined as "the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention". The Commissioner then noted that the entirety of the law around this concept only speaks of 'natural persons', i.e. humans, and that the declaration at the end of the application requires a declaration from a person. In brief, the legislation seems to therefore preclude any non-human inventors from applying for patents. 

Furthermore, the Commissioner considered the decision in the University of Utah v Max-Planck-Gesellschaft, where the US Federal Court determined that 'inventors' of patents are the individuals that conceived the invention, which seems to, again, not include non-human inventors. Similarly, in the same case, the Court noted that "...only natural persons can be 'inventors'". The Commissioner then concluded that, based on the above precedent and interpretation of the provisions, AI cannot itself be an inventor. Additionally, even if applicants list a natural person as the inventor, when they have not invented the invention in question, the application will fail due to that person not fulfilling the inventorship criteria under the legislation. 

Mr Thaler also applied for patents in relation to the same invention in both the UKIPO and the EPO. 

The UKIPO handed down its decision in relation to Thaler's applications GB1816909.4 and GB1818161.0 in December 2019. Again, the rejection of the applications concerned the naming of DABUS as the inventor of the inventions, which, according to the UKIPO, does not fulfill the requirements of the UK legislation for registration. 

According to s. 7 of the Patents Act 1977, a patent can only be granted to the inventor of the invention, with an 'inventor' being defined as "...the actual deviser of the invention". Additionally, if no inventor is named in an application, s. 13 requires that the applicant identify the “person or persons whom he believes to be the inventor or inventors” in the application - clearly referring to persons and not non-human inventors. The UKIPO quickly determined that this indeed did require a natural person as the inventor. 

Finally we'll look at the decision from the EPO in late January 2020, specifically concerning applications EP18275163 and EP18275174. In its decision, the EPO determined that "...the inventor designated in a European patent must be a natural person", which was a standard that was intentionally applicable and supported by decisions in national European bodies (as above in the UK). The requirement for an inventor is also mandatory in relation to EP applications, and without proper legal personality the owner of the rights in the patents would be unable to exercise them, including any AI machines. With this in mind, the applications didn't meet the requirements of the EPO, and the applications were rejected. 

The above decisions highlight the current issues with AI and the legislative frameworks that require human inventors or creators for works to be able to be protected. Whether this changes in the future remains to be seen, but it would probably be more likely that the current scheme remains and AI is relegated to supporting human inventors in the creation of inventions, allowing for patentability and protection. Without this human end-point it would be improbable for AI to be the inventor of inventions barring a shift in legislative attitudes. 

01 July, 2020

This is my Domain - US Supreme Court Decides on the Registration of Generic ".com" Domains as Trademarks

Since the advent of the world wide web, domain names' value to their owners have skyrocketed, with some, such as Google.com, being valued by some at roughly $31 billion. Although the valuation of that domain is a little ridiculous, being able to have the right domain at the right time can in itself create a business opportunity and thus be very valuable. However, domain names and their registration and trademarks has been a hot-button issue for some time, since the inclusion of ".com" along with a descriptive element might not be enough to allow for their registration. The USPTO has had a long-standing position where the inclusion of ".com" with a generic word would render that mark as generic and therefore ineligible for registration. This position has since been challenged, and the matter went up all the way to the US Supreme Court, which handed down its opinion earlier this week.

The case of USPTO v Booking.com BV concerned the registration of the mark "Booking.com" by, you guessed it, Booking.com BV, which is a site specialized in the booking of hotels for travelers. At first instance the mark was refused registration as the USPTO deemed it to be generic under the above rule, meaning the name would only have the descriptive meaning to consumers of the service and would not signify that particular website to consumers. Booking.com challenged the ruling, and ultimately took the matter all the way up to the Supreme Court.

Handing down the majority's judgment, Justice Ginsburg first discussed the registration of trademarks overall, particularly the requirements for a mark to be registered. This includes that the the mark has to be one "...by which the goods of the applicant may be distinguished from the goods of others", i.e. it has to be distinctive. Word marks, such as the domain above, can be distinctive in a sliding scale of sorts, namely (from least to most distinctive)  (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. A mark will have to achieve distinctiveness specifically "...in the minds of the public".

Justice Ginsburg then moved onto considering whether the mark in question is registrable or not. Booking.com applied to register the domain (and other variants of it, including visual features) as a trademark in relation to travel-related services; however, the application, as discussed above, was rejected at first instance. 

The main question the Supreme Court had to therefore consider is whether the term "Booking.com" is generic, specifically naming "...a “class” of goods or services, rather than any particular feature or exemplification of the class". As the domain is also a compound term (consisting of "Booking" and ".com" as separate elements), the Court would have to consider its meaning as a whole and not in isolation of those parts. Its meaning would have to be considered in the light of its meaning to consumers. In short, as noted by the Court, the consideration is "...whether “Booking.com” is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services".

The Court quickly noted that under evidence, consumers don't perceive the domain as being generic for hotel-reservation services, and as such, the term cannot be generic. The USPTO argued that, irrespective of that evidence, the term should be seen as generic since when a generic term is combined with a generic top-level domain like “.com,” the resulting combination is generic, barring exceptional circumstances. 

Finally, the Court considered whether the registration of  “generic.com” terms as trademarks would hinder competition, i.e. prevent a competitor from using the term "booking" when describing their services. The Court outright rejected this notion, noting that the risk of deterrence of using a term exists in relation to all descriptive marks. Even if a competitor uses that term, provided it's done in good faith, they would most likely be protected by fair use. 

The Court subsequently affirmed the decision of the Court of Appeals, and allowed the registration of the mark as it was not considered generic.

The case is a very important one, and surprisingly very late into the existence of domain names. It's important for brands that have more descriptive names to be able to potentially register their name as a trademark, particularly if it's in relation to a specific domain that is the heart and soul of that business. Competitors should be adequately protected by fair use and other similar doctrines, allowing for the use of those terms in describing their business, while allowing for sufficient protection of legitimate registered trademarks for those domains. 

05 May, 2020

That's Me! - NCAA Allows for Athletes to Share in the Profits from their Image Rights

The article below was drafted by Laura Schrauth who is a licensed attorney involved in sport, entertainment, intellectual property, and business law. As a law student, she participated in the American Bar Association Intellectual Property Section’s Law Student Reporters program and has been published in law reviews and practice magazines throughout the United States. When she’s not working, Laura enjoys all things music, cooking shows, and the Chicago Cubs. She can be found on Twitter @LauraSchrauth17.

The term “celebrity” has come to mean many things in 2020. Once reserved for movie stars, recording artists, and professional athletes, technology has opened the term up to include those with popular YouTube or gaming channels, social media influencers, and even amateur athletes. Although the term has changed meanings to include more people than ever before, the law in the United States protecting “celebrity” has remained the same.

In the United States, celebrities often market themselves using what are commonly called rights of publicity. These rights fall under federal trademark protections, chiefly section 43 of the Lanham Act. This section allows individuals the rights to limit or control how their name, image, and likeness (NIL) are used in marketing. While everyone is entitled to these federal protections, only 33 of the 50 states recognize any rights of publicity on the state level, and unsurprisingly, only California and New York have comprehensive practices.

Recent controversy has sparked conversations about how far these NIL rights go when the NCAA (National Collegiate Athletic Association) voted to change their policy that forbids college athletes from capitalizing on their own rights of publicity at risk of forfeiting their amateur status to one that allows the athlete to exercise rights of publicity while remaining NCAA eligible. Beginning in 2021, college athletes will be allowed to share in the profits that universities and athletic companies generate by using their NIL. Many opponents argue that this decision is unwise, as most top preforming college athletes are already afforded many luxuries by their universities, while others are glad for the change, noting that those with shorter careers will gain the most benefit from cashing in sooner rather than later in their college years.

One notable example of the latter’s argument can be seen in recent Olympic swimming champions Missy Franklin and Katie Ledecky. Even though the Olympic Committee eliminated their amateurism requirement in 1971, the NCAA only voted for the 2021 change at the end of 2019. After the 2012 Olympic season, gold medal winner Missy Franklin had to turn down millions of dollars in endorsements in order to return back to her college swim team. By the 2016 Olympics, Franklin could not keep up with the new talent, and found herself without any offers for endorsements. That same year, 2016 champion Katie Ledecky decided to quit her college swim team in order to avoid making that same mistake. Both swimmers expressed their disappointment in having to choose between the two.

Senator Richard Burr, an opponent of this decision, proposed that student athletes should now be taxed for athletic scholarships, citing them as income. Critics of that idea counter that only endorsement money should be taxed as income, because the scholarship is still the only compensation universities give student athletes in consideration of playing for their school. Others question the profitability of student athletes to universities and athletic companies, who prior to the rule kept 100% of all jersey and apparel monies, where students are now in a position to control their own NIL. This should not interfere with university or apparel company profits, however, because it is via those mediums that student athletes gain their exposure in the first place, which encourages student athletes to participate for their own benefits. Fee agreements could easily be incorporated into athletic contracts, wherein universities, companies, and players could come to mutual understandings of how those NIL rights can be utilized by them all. Rather than losing a share in anything, players now have the opportunity to gain a share in their own marketing, which could serve as encouragement for student athletes to stay in collegiate athletics, rather than leave early to pursue professional or monetary opportunities instead.

While controversial, this seems to be a good move for the NCAA. No longer will student athletes have to decide which persona, student or athlete, to attach to in order to maximize their careers or career potential. Going into the 2020 Olympics, we will see athletes who are both.

20 April, 2020

Off the Hook - UK Supreme Court Considers Companies' Vicarious Liability for Data Breaches by Employees

Since the introduction of the General Data Protection Regulation, data breaches and their consequences have been a huge topic in Europe and abroad, with the GDPR imposing tremendous fines for breaches if they occur. Needless to say, many companies have taken note of the courts dealing with these issues, and one case, in particular, has rattled many cases in its journey through the UK Courts; the Morrisons case. Disgruntled workers can cause huge damage to a company, its reputation and its customers, which can include the sharing of sensitive information, but the case has led to the question of whether a company can be vicariously liable for the breaches of their disgruntled workers, in particular in relation to data. To the delight of many, the Supreme Court has finally handed down its hotly anticipated decision in the Morrisons case at the beginning of April 2020.

The case of WM Morrison Supermarkets plc v Various Claimants concerned the grocery store chain Morrisons in the UK, and a former employee of the company, Andrew Skelton. During his tenure with the company, Mr Skelton was a senior in-house auditor, who had access to employee information for auditing purposes. After a disciplinary action against him, Mr Skelton copied information relating to around 98,000 employees from Morrisons internal systems and shared the data on a file-sharing website (subsequently also sending the data to three newspapers as an anonymous third party). Morrisons took action to remove the data from the website, and Morrisons was then sued by the Respondents (a collective of various employees) alleging vicarious liability for Mr Skelton's actions and the data breach. After several years of litigation via the High Court and Court of Appeal (with Morrisons losing at every stage), the matter finally landed on the desk of the Supreme Court for final determination.

Lord Reed, handing down the judgment of the unanimous court, initially considered the long appellate history of the matter and the findings of the lower courts. Lord Reed considered that the lower courts had misunderstood the principles governing vicarious liability, and saw that the matter would have to be considered entirely afresh by the Supreme Court.

The first matter was to consider the matter under the test set out in Dubai Aluminium, which required the court to consider whether "...the disclosure of the data was so closely connected with acts [Mr Skelton] was authorised to do that, for the purposes of the liability of his employer to third parties, his wrongful disclosure may fairly and properly be regarded as done by him while acting in the ordinary course of his employment". Indeed Mr Skelton was authorised to collate and transmit the data as a part of his function as an internal auditor. However, the question of whether the wrongful disclosure was so closely connected with that authorisation that it would render Morrisons liable for it.

Morrisons GC pictured before the judgment hearing
Following an exhaustive consideration of related case law, Lord Reed noted that mere employment giving Mr Skelton the opportunity to commit the act would not be sufficient to make Morrisons liable for the act. Even though, as set out by the lower courts, the acts were closely linked to what Mr Skelton was tasked to do (including their transmission), the acts were an independent personal venture of Mr Skelton's.

As set in Dubai Aluminium, for the employee's acts to cause vicarious liability through their acts, misguidedly or not, they would need to be done "...in furthering his employer's business". Clearly, he was not engaged in furthering his employer’s business when he committed the wrongdoing, as he was merely pursuing a personal vendetta against Morrisons, and the wrongdoing, therefore "...was not so closely connected with acts which he was authorised to do that, for the purposes of Morrisons’ liability to third parties, it can fairly and properly be regarded as done by him while acting in the ordinary course of his employment".

The Court then moved onto consider whether the Data Protection Act 1998 excludes vicarious liability for the torts caused by an employee.

As a starting point, DPA does not exclude vicarious liability either for a breach of the duties imposed by the DPA itself or for a breach of common law or equitable obligations. Although argued by Morrisons, the Court did not see that the DPA excluded employers vicarious liability impliedly (specifically under s. 13). In short, the Court concluded that "...the DPA neither expressly nor impliedly indicates otherwise, the principle of vicarious liability applies to the breach of the obligations which it imposes, and to the breach of obligations arising at common law or in equity, committed by an employee who is a data controller in the course of his employment".

The Court ultimately decided that Morrisons could not be held responsible for Mr Skelton's actions and allowed their appeal.

The case is a huge win for employers, particularly considering the appellate history and Morrisons' consecutive losses, and sets an important precedent even in the light of the GDPR which has taken over from the DPA. The position would most likely be the same under GDPR, so employers liability should not be excluded. Employers should therefore be extra careful to avoid any data breaches by employees during the course of their employment, and take any measures possible to avoid issues like that, especially considering the humongous fines that the ICO can impose under the GDPR.

14 April, 2020

Mind Your Language! - CJEU Decides on the Registration of Offensive Trademarks

Rude language can be a sore point of contention for many people. The offensive nature of trademarks has been litigated quite a bit in high-profile cases recently, including the case regarding the band "The Slants" (discussed more here) in the US. The European courts have faced the question of offensive trademarks sometime ago, and Advocate General Bobeck looked at this in some detail in the Summer of 2019. Following the AG's decision, the CJEU has finally considered the question of offensive trademarks and handed down their judgment earlier this year.

The case of Constantin Film Produktion GmbH v EUIPO concerned an application to register the name "Fack Ju Göhte" (EUTM 13971163), which is the name of a German comedy film produced by Constantin. The film saw tremendous success in the year it was published, and Constantin released a subsequent two sequels under the same name. The EUIPO refused the application under Article 7(1)(f) of the CTM Regulation, which prevents the registration of trademarks "...which are contrary to public policy or to accepted principles of morality". Constantin then appealed the decision, which ultimately ended up with the CJEU.

The Court began by limiting the scope of the issue, following the guidance of the Advocate General, to only consider whether the mark was contrary to accepted principles of morality, as the matter didn't relate to any issues of public policy.

To consider the above, the Court noted that, to determine the scope of Article 7(1)(f) "...it is not sufficient for the sign concerned to be regarded as being in bad taste. It must, at the time of the examination, be perceived by the relevant public as contrary to the fundamental moral values and standards of society as they exist at that time". This clearly shows that the morality the courts will be concerned with is transient, and the standard can fluctuate as morality does within wider society; however, the examiner will have to consider it within a snapshot in time when applied for.

Mittens just couldn't handle Rover learning any more bad words
Furthermore, the Court saw that this would be determined according to "...the perception of a reasonable person with average thresholds of sensitivity and tolerance, taking into account the context in which the mark may be encountered and, where appropriate, the particular circumstances of the part of the Union concerned". This includes "...elements such as legislation and administrative practices, public opinion and, where appropriate, the way in which the relevant public has reacted in the past to that sign or similar signs, as well as any other factor which may make it possible to assess the perception of that public".

Reviewing the judgment of the General Court, the CJEU determined that they had misapplied the law concerning Article 7. In their assessment, the General Court should have included, among the things they considered, the great success of the comedy, the fact that its title does not appear to have caused controversy, as well as the fact that access to it by young people had been authorised and that the Goethe Institute (which promotes the German language abroad) uses the movie for educational purposes. The General Court should not have merely considered the inherent vulgar nature of the English phrase it was compared to, namely "Fuck You", to decide that the mark would be contrary to public morality.

The Court also noted that one would have to take into account the freedom of expression, enshrined in Article 11 of the Charter of Fundamental Rights of the European Union when considering any infringement of Article 7(1)(f). The General Court considered that this would not be the case, which the CJEU clearly did not agree with.

Following the dismissal of the General Court's decision the CJEU then moved onto consider the trademark in question under Article 7(1)(f).

The CJEU thought that, following a discussion of the Board of Appeal's decision, the title of a film need not be descriptive of its content in order to constitute a relevant contextual factor in assessing whether the relevant audience perceives that title and an eponymous word sign as contrary to accepted principles of morality. Additionally, although the success of a film does not automatically prove the social acceptance of its title and of a word sign of the same name, it is at least an indication of such acceptance which must be assessed in the light of all the relevant factors in the case in order to establish the perception of that sign in the event of use of that sign as a trademark.

As said above, the movie spawned a further two sequels with the same name, all of which have had great success, and is used in educational purposes, it goes to show that it isn't against the public morality in Germany. The Court did note that, however, the perception of the phrase "Fuck You" will be different between German-speaking countries and English-speaking ones, especially when dealing with a phrase written phonetically and inclusive of other words, such as the name Goethe.

The CJEU determined that the EUIPO has failed to demonstrate to the requisite legal standard that Article 7(1)(f) precludes registration of the mark applied for under the above grounds.

The case is a very important one and highlights the potential evidence looked for when determining whether a mark is contrary to public morality or not. The case also demonstrates that freedom of expression is very relevant in this exercise, which this writer agrees with since the remit of trademarks should by no means be exempt from freedom of expression even though one could describe it as "commercial expression" rather than traditional expression as you would commonly think of it.

08 April, 2020

I Can Do What I Want - What Are The Limits to State Immunity in the US on Copyright Infringement?

Many national governments, and indeed US states, have particular immunities when it comes to their legal liability. In the UK, for example, the Crown has sovereign immunity from civil claims, which prevents the Crown from being sued by individuals or companies (to put things very simplistically). Similar legislation exists in the US, and there have been efforts to pass legislation to stop the immunity held by States. With this in mind, what is the extent of this immunity with regards to copyright? Can States simply infringe copyright without any regard to the copyright holders, or would they have to face some accountability? Luckily the Supreme Court recently took on this case and handed down its judgment late last month.

The case of Allen v Cooper concerned videos and photographs taken by Mr Allen for the company Intersal Inc., which discovered the shipwreck of the Queen Anne's Revenge (the famous ship owned by the pirate Blackbeard) in 1996 outside of the coast of North Carolina. The wreck, under both federal and state law, belongs to North Carolina. Mr Allen documented the recovery operation over the course of a decade and registered the copyright in those works. The State of North Carolina then published some of Mr Allen's videos and photographs in 2013 on its website, to which Mr Allen objected to. The parties agreed on a settlement of the initial dispute, however, Mr Allen then alleged further infringements by the State through the publication of five of his videos online and in a newsletter. Subsequently, he sued the State for copyright infringement, with the matter ending up with the Supreme Court.

Generally, a federal court generally may not hear a suit brought by any person against a non-consenting State, although this bar is not enshrined in the US Constitution. However, the courts have allowed suits to be brought if two conditions are fulfilled: (i) Congress must have enacted “unequivocal statutory language” abrogating the States’ immunity from the suit; and (ii) some constitutional provision must allow Congress to have thus encroached on the States’ sovereignty. In short, if there is legislation that repeals the States' immunity, which is permitted by the US Constitution, the suit can be brought against the State in question.

As set out by Justice Kagan (handing down the majority's decision), there is no question that the first requirement has been fulfilled. The Copyright Remedy Clarification Act of 1990 removed the States’ sovereign immunity in copyright infringement cases, and therefore it is possible, pursuant to Constitutional approval, that States could be sued for copyright infringement. The remaining question is whether Congress has the authority to pass the legislation.

After a very thorough discussion of the previous cases dealing with State immunity, the Supreme Court noted that Mr Allen will not be able to overcome the precedent set, where States cannot be sued for copyright infringement as matters stand.

The Court then moved onto discussing section 5 of the Fourteenth Amendment to the Constitution, which, can authorize Congress to strip the States of immunity. The abrogation has to be "appropriate" under section 5, which means that the abrogation must be "tailored to “remedy or prevent” conduct infringing the Fourteenth Amendment’s substantive prohibitions". Furthermore, the courts have held that the appropriate test for section 5 is that "...must be a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end" - to put differently, the courts have to consider both the nature and the extent of state conduct violating the Fourteenth Amendment.

Justice Kagan decided that the issue of copyright infringement didn't pass the above test. In the Court's view, the infringement of copyright by States is not a prevalent issue (consisting of only 12 cases), which left the balancing of the stripping of States immunity askew and not proportionate to the injury posed by State infringement. The Court did, however, leave the door open for Congress to pass laws in the future to abrogate States' immunity with regards to copyright infringement.

Ultimately, the Supreme Court dismissed Mr Allen's case and ruled that section 5 of the Fourteenth Amendment does not support the abrogation of States' immunity with regards to copyright infringement, and Mr Allen could not bring his infringement case against the State forward.

State or sovereign immunity cases don't come across very often, and it is always interesting to see the extent to which the courts will protect that immunity. The Court's approach to the proportionality of the possible injury with the stripping of the entire immunity seems sensible in this instance since governments should be given broader protections lest we see the dams break and a wave of cases being brought against States or governments. They shouldn't, by any means, be given carte blanche to do as they wish, but the stripping or specific immunities will need thorough and appropriate consideration in the future.

27 March, 2020

Significant Damage - US Courts Order Immense Damages for Music Copyright Infringement

The following article was written by Assaad Lyn, who is a US attorney specializing in Intellectual Property, seeking to help artists, entrepreneurs, and creatives by helping them through the legal issues they may encounter so they can keep working on their craft. You can find Assaad's LinkedIn profile here and his website at www.assaadlynlaw.com.

Remember when Napster first came out? It was a peer-to-peer (P2P) file-sharing service that allowed people to download music. While Napster was eventually shut down (and later brought back), the issues of downloading music on P2P networks persist, and was the reason for a court case in the US where the jury gave an unprecedented damages reward.

The case of Sony Music Entertainment v Cox Communications Inc is a class action lawsuit where Sony and other music companies alleged that Cox Communications did not stop ongoing copyright infringement after receiving notice of the alleged behavior. Sony and the others are music companies that make, license, manage, and sell music. As a primer, copyright law separately protects the musical composition (the sheet music and lyrics) and the sound recording (what we hear on radio or streaming services), so Sony had to prove that it owned, controlled, or otherwise managed the works in question.

Once a work of art (such as a book, a movie, or music) is created, ownership in the copyrighted work automatically exists in it. The author of the work can then transfer all or some of these rights to any other party. In order to prove that you are the rightful owner of a copyrighted work, a copyright owner usually registers the copyrighted work with the United States Copyright Office. Luckily, registration is not the only way to prove ownership, and transfer agreements and documents such as licenses can show a chain of title and may suffice to prove ownership. Sony asserts that they protect their copyrights through registration with the United States Copyright Office and through written agreements where they own or control the copyrighted works. Sony was able to prove they own various songs through the online Copyright Catalog, works registered as works made for hire, declarations, and more.

Cox Communications is a broadband communications network, and acts as an internet service provider, or ISP, to customers throughout the United States. Cox Communications has a department with the purpose of monitoring internet security issues, such as copyright infringement (through illegal downloads for example), and has adopted a policy in order to respond to alleged abuse of its network and systems.

The Recording Industry Association of America (RIAA), acting as the agent for Sony, hired MarkMonitor, an anti-piracy company, to scan the internet for infringing file sharing on P2P networks. MarkMonitor participated in the P2P networks in order to gather data from the potentially infringing users, and create infringement notices. MarkMonitor’s reports contained information such as the timestamp of the infringement detection, the date the notice was sent, the Cox user (identified by IP address and port), and more. They then sent the infringement notices to Cox Communications on the behalf of Sony. Cox Communications received and processed those notices through their in house system. The question therefore is, did Cox Communications have enough information to be viewed as contributorily liable for the infringement occurring on its network?

Contributory infringement can be found when one “(1) has knowledge of another’s infringement and (2) either (a) materially contributes to or (b) induces that infringement.” Generally, knowing that infringing activity is occurring on an ISP’s network is not enough to prove contributory infringement. The question is if Cox Communications had enough information in order to do something about the infringing activity. The detailed MarkMonitor reports show that Cox Communications could have acted in various ways, such as, evaluating a subscriber’s activity, or even terminating said subscriber. Since Cox Communications did not take appropriate action after being notified of the infringing activity, the jury found Cox Communications liable for contributory infringement and vicarious liability of over 10,000 works.

Then came the question of damages. Statutory damages in a copyright case in the US can range from a minimum of $750 or more than $30,000. In a case where the infringement was committed willfully, the award of statutory damages can go up to $150,000. The damage amounts are per work infringed, and not simply a total. Cox Communications was fined $99,830.29 per work, resulting in damages for a total of about $1 billion.

It is shocking to see such high damages being awarded in this case, and that an ISP was not protected by the Digital Millennium Copyright Act (DMCA) safe harbor provision. Just because Cox Communications did not do anything about the infringement, does not mean that the infringement was willful. Whether or not this case will affect ISP’s in the future, remains to be seen. As of January 31, 2020, Cox Communications has filed an appeal asking for either 1. a remittitur (lowering of damages), or 2. a new trial.