tag:blogger.com,1999:blog-38938745858186360082024-03-14T18:33:37.243+00:00IP IustitiaThe discussion of news, cases, legislation and anything to do with Intellectual Property law (and associated topics), made accessible to everyone.Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.comBlogger329125tag:blogger.com,1999:blog-3893874585818636008.post-77861972109985778692023-08-23T09:30:00.002+01:002023-08-23T09:39:21.691+01:00Humans Only - US Federal Court Rules that AI Cannot Own Copyright in Created Works<p>This blog has on many occasions discussed the difficult world that IP can be for both AI creations and inventions (e.g. more <a href="https://www.ipiustitia.com/2020/05/ai-cant-be-inventor-of-patents-uspto.html">here</a>, <a href="https://www.ipiustitia.com/2022/03/yet-another-rejection-us-copyright.html">here</a> and <a href="https://www.ipiustitia.com/2017/04/sine-hominum-impact-of-artificial.html">here</a>), with the landscape looking more and more 'hostile' towards AI creations and inventorship. This hasn't, however, put a damper on many who will keep trying to push the envelope, and test the limits of IP laws across the world. Such an individual is the prolific inventor, Stephen Thaler, who has been on a crusade to enable AI to own many IP rights, having failed on many occasions along the way. His saga has since continued, with the US Federal Court being the next court to consider AI authorship this month.</p><p>The case of <a href="https://cdn.patentlyo.com/media/2023/08/THALER-v.-PERLMUTTER-et-al-Docket-No.-1_22-cv-01564-D.D.C.-Jun-02-2022-Court-Docket-1.pdf">Stephen Thaler v Shira Perlmutter, Register of Copyrights an Director of the US Copyright Office</a> concerned a system called "Creativity Machine", which Mr Thaler owns. Creativity Machine has, according to Mr Thaler, generated a piece of visual art of its own accord, which he then sought to register on the system's behalf. This application was rejected by the US Copyright Office for a lack of human authorship (see link above). Mr Thaler did not accept this outcome and appealed the decision, which landed on the desk of Judge Howell. </p><p>Both parties sought summary judgment on the matter, for which Judge Howell handed down their judgment. At its core the matter concerned <i>"whether a work generated entirely by an artificial system absent human involvement should be eligible for copyright"</i>.</p><p>Judge Howell first noted that, pursuant to the US Copyright Act 1976, copyright protection attaches immediately upon the creation of “original works of authorship fixed in any tangible medium of expression", provided those works meet certain requirements. </p><p>The judge also noted that <i>"copyright law has proven malleable enough to cover works created with or involving technologies developed long after traditional media of writings memorialized on paper"</i>, which gives the Act scope to broadly adapt to changing technologies and methods of creation. </p><p>However, despite this adaptability, at its core copyright still requires human creativity, even if that creativity is <i>"channeled through new tools or into new media"</i>. The judge determined that <i>"[h]uman involvement in, and ultimate creative control over, the work at issue was key to the conclusion that the new type of work fell within the bounds of copyright"</i> (referring to the decision in <a href="https://scholar.google.com/scholar_case?case=17794409671595926696">Burrow-Giles Lithographic Co. v Sarony</a>). </p><p>To really drive the point home, Judge Howell states that <i>"[c]opyright has never stretched so far, however, as to protect works generated by new forms of technology operating absent any guiding human hand, as plaintiff urges here. Human authorship is a bedrock requirement of copyright"</i>. The important point here is that the decision requires that a human guides the creation of a work by AI systems, so an absence of human intervention can lead to the works falling outside of copyright protection. </p><p>As has been mentioned in earlier decisions, this position is corroborated by the text in the Act itself, which notes that copyright attaches to <i>"original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device"</i>. The fixation of the work must also be done <i>"by or under the authority of the author"</i>. </p><p>While the term 'author' is not defined in the Act, the judge quickly decided that the Act requires a copyrightable work to have an originator with the capacity for intellectual, creative, or artistic labour who specifically is a human. Additionally, <i>"[t]he act of human creation—and how to best encourage human individuals to engage in that creation, and thereby promote science and the useful arts—was thus central to American copyright from its very inception"</i>.</p><p>The requirement for human authorship has also been followed and kept as copyright laws have evolved, with the Supreme Court consistently ruling that it is a crucial requirement for copyright protection (e.g. in <i>Sarony </i>above, <a href="https://scholar.google.com/scholar_case?case=11977251527545760686">Mazer v Stein</a> and <a href="https://scholar.google.com/scholar_case?case=3043821630623021343">Goldstein v California</a>). </p><p>The courts have also consistently rejected copyright ownership by non-human authors. This has included divine beings (<a href="https://scholar.google.com/scholar_case?case=4011213220383829206">Urantia Found. v Kristen Maaherra</a>), gardens (<a href="https://scholar.google.com/scholar_case?case=3758465383238141042">Kelley v Chicago Park District</a>) and monkeys (<a href="https://scholar.google.com/scholar_case?case=13190929204257895673">Naruto v Slater</a>). </p><p>Judge Howell nevertheless acknowledges that in the future the courts and/or legislatures will have to grapple with "how much human input is necessary to qualify the user of an AI system as an “author” of a generated work, the scope of the protection obtained over the resultant image, how to assess the originality of AI-generated works where the systems may have been trained on unknown pre-existing works, how copyright might best be used to incentivize creative works involving AI, and more". </p><p>Judge Howell concluded that the US Copyright Office acted properly in denying copyright registration for a work created absent any human involvement. </p><p>The decision is one in a long string which have denied AI authorship and inventorship, and it looks unlikely that this will change bar legislative amendments to existing copyright regimes. The current, admittedly nearly archaic legislative frameworks have not, and frankly could not have, conceived of a world where computers or AI systems could create as they do currently. This leaves legislative action as imperative, lest we want the law to forever lag behind technology. </p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-48520944290320576412023-08-09T09:30:00.001+01:002023-08-09T09:30:00.137+01:00A Can of Copyright - US Supreme Court Rules on Fair Use in Andy Warhol's Work<p>From the iconic lithographic cans of Campbell's soup to the Marilyn Monroe, Andy Warhol's art is iconic and one that most (if not everyone) recognises. However, with success and notoriety comes potential legal battles, particularly if artists "take inspiration" from works of other artists. In the US the doctrine of fair use is very broad and can encompass several acts, but it's remit in relation to more direct copying as 'inspiration' has been hazy. A recent, and rare foray into the realm of the US Supreme Court was set to make matters clearer, and the awaited decision was indeed handed down earlier this Summer. </p><p>The case of <a href="https://www.supremecourt.gov/opinions/22pdf/21-869_87ad.pdf">Andy Warhol Foundation for the Visual Arts Inc. v Lynn Goldsmith</a> concerned the aforementioned iconic art of Andy Warhol, namely his lithographs of the music artist Prince. The lithographs used a picture taken by a famous photographer in her own right, Ms Goldsmith, in 1984 for Vanity Fair magazine as an "artist reference". Ms Goldsmith had licenced the picture to Vanity Fair with the strict condition that it only be used once in the magazine. Mr Warhol created 15 lithographs of Prince in total, and later his Foundation licenced one of those works to Conde Nast for a story about Prince. Ms Goldsmith subsequently informed the Foundation that they had infringed her copyright in her picture, which then lead to the Foundation suing Ms Goldmith asserting fair use. The lower courts have reached differing outcomes on the matter, which lead to the case ending up in the Supreme Court for final decision. </p><p>The Foundation did not challenge the conclusion made by the Court of Appeal that the lithograph and the series of works created by Warhol are substantially similar. This left the question of whether Mr Warhol's use of the photograph was 'fair use'. In addition, the only factor within the assessment of fair use remained the first factor, i.e. whether <i>"the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes"</i> weighs in Ms Goldsmith's favor or if the work would be considered 'transformative'.</p><p>The first factor specifically looks at whether, as has been firmly established in <a href="https://scholar.google.com/scholar_case?case=16686162998040575773">Campbell v Acuff-Rose Music Inc</a>: <i>"an allegedly infringing use has a further purpose or different character, which is a matter of degree, and the degree of difference must be weighed against other considerations like commercialism"</i>. This means that even though the expression may be new (as the Foundation argued), it, by itself, is not enough to deal with the first factor. </p><p>Justice Sotomayor, handing down the majority's decision, focussed on the meaning of the first factor at issue. She noted that it <i>"considers the reasons for, and nature of, the copier’s use of an original work"</i>, and specifically asks <i>"whether the new work merely ‘supersede[s] the objects’ of the original creation… (‘supplanting’ the original), or instead adds something new, with a further purpose or different character"</i>. In other words, does the new work 'substitute' the other work, or is its purpose the same or highly similar to that of the original work. </p><p>The preamble to <a href="https://www.law.cornell.edu/uscode/text/17/107">section 107</a> of the US Copyright Act does give helpful guidance on what may be included in this factor, which includes, but is not limited to: <i>"criticism, comment, news reporting, teaching… scholarship, or research"</i>. The similarly will be a degree of similarity, rather than a clear cut similarly assessment, so the Court will not restrict itself to just these categories. </p><p>If a use has a further purpose or different character it is deemed to be 'transformative', which is, yet again, a matter of degree. However, there is a minimum threshold for transformative use, specifically that the <i>"degree of transformation required to make “transformative” use of an original must go beyond that required to qualify as a derivative"</i>. </p><p>To summarize a very lengthy and detailed discussion of the minutiae of the definition of the first factor, Justice Sotomayor summarized it as: <i>"the first fair use factor considers whether the use of a copyrighted work has a further purpose or different character, which is a matter of degree, and the degree of difference must be balanced against the commercial nature of the use. If an original work and a secondary use share the same or highly similar purposes, and the secondary use is of a commercial nature, the first factor is likely to weigh against fair use, absent some other justification for copying"</i>.</p><p>Justice Sotomayor then moved on to considering whether the particular 'use' of the protected works would be an 'infringement'. </p><p>Ms Goldsmith's pictures were used in a variety of ways: (i) to create the Vanity Fair illustration and the other Prince Series works; (ii) Vanity Fair then used the photograph when it published Warhol’s illustration in 1984; and (iii) the Foundation used the photograph when it licensed an image of Warhol’s Orange Prince to Condé Nast in 2016. However, only the latter 2016 use has been argued to be infringing. </p><p>Typically photographs, such as Ms Goldsmith's, are used accompanying articles relating to the given celebrity or subject. As such, the use by Condé Nast and the Foundation in 2016 was substantially the same. The use was also clearly of commercial nature, as the images were licenced from the Foundation, weighing against a finding of fair use. Taken together these factors weigh against fair use absent some other justification for copying, i.e. any transformative nature of Mr Warhol's work.</p><p>Justice Sotomayor then moved on to considering whether Mr Warhol's work was transformative. As described in the Campbell decision, as mentioned above, transformative use is one that <i>"alter[s] the first [work] with new expression, meaning, or message"</i>. Agreeing with the Court of Appeals, Justice Sotomayor noted that <i>"any secondary work that adds a new aesthetic or new expression to its source material is necessarily transformative"</i>, however, the courts should not attempt to evaluate the artistic significance of a particular work. </p><p>The key, in the Court's view, is what the purpose of the new, potentially transformative work, really is and if the use is distinct from the original. In this case, the licensing of the lithographic image by Condé Nast is similar to the use of the original work, namely as illustrating a magazine about Prince (although acknowledging difference between them). </p><p>Justice Sotomayor noted that <i>"[t]o hold otherwise would potentially authorize a range of commercial copying of photographs, to be used for purposes that are substantially the same as those of the originals"</i>. </p><p>Despite arguments made by the Foundation, the Court rejected their argument that the Warhol lithographic was commentary on the dehumanizing nature and effects of celebrity. According to Justice Sotomayor, the commentary could not stand on its own two feet, and the commercial use of it required compelling reasons to see otherwise. </p><p>Ultimately, the Court held against the Foundation, determining that <i>"Goldsmith’s original photograph of Prince, and AWF’s copying use of that photograph in an image licensed to a special edition magazine devoted to Prince, share substantially the same purpose, and the use is of a commercial nature[, and] AWF has offered no other persuasive justification for its unauthorized use of the photograph"</i>. This means that the first factor would weigh in favor of Ms Goldsmith. </p><p>The scathing dissent by Justice Kagan highlights the contentious nature of this decision, and its potential impact on both copyright holders and artists trying to take inspiration of other works. The decision does limit the scope of artistic inspiration in the world of fair use, and potentially may have a cooling effect on art creation (though this remains to be seen). It does, however, add further weight to the copyrights held by individuals and entities, which they will undoubtedly receive with open arms. As said, the impact of the decision will be interesting to see and whether more derivative, or 'inspired' works will be litigated in the future. </p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-23440670896304167382023-04-13T12:19:00.006+01:002023-04-13T12:19:33.882+01:00Keeping Their AI on the Ball - US Copyright Office Issues Guidance on the Copyright Protection of AI Generated Works<p>At this point there probably is no one on Earth that has not heard of, or even tested, various AI content generation systems, including <a href="https://openai.com/blog/chatgpt">ChatGPT</a>, <a href="https://bard.google.com/">Google Bard</a> and <a href="https://www.midjourney.com/">Midjourney</a>. The tools are already impressive and are only slated to get better, so many legislatures and national bodies are (finally!) getting to grips with AI, its implications, and legal issues around the technology. One such aspect is whether AI generated works can, or will be protected by copyright, as the area remains firmly hazy as the law stands, including in the common law. One of the first off the blocks is the US Copyright Office which recently released guidance on the protection of AI generated works. </p><p>The guidance, titled <a href="https://www.copyright.gov/ai/ai_policy_guidance.pdf">"Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence"</a> is brief and to the point, covering most of the issues to give better light on copyright protection on these emerging works.</p><p>The guidance initially starts with the basics, noting that for works to be protected by copyright they must have human authorship. The main decision in this regard is <a href="https://scholar.google.com/scholar_case?case=17794409671595926696">Burrow-Giles Lithographic Co. v Sarony</a> where the US Supreme Court confirmed that an author is <i>“he to whom anything owes its origin; originator; maker; one who completes a work of science or literature”</i>, which specifically can only be a human author. Subsequent decisions have confirmed the position to be the same, with precedent being clearly set in stone since 1886.</p><p>The same requirement is extended to the registration of copyright protected works by the Copyright Office, with its <a href="https://www.copyright.gov/comp3/docs/compendium.pdf">Compendium</a> noting this position clearly. Any works created by AI systems are treated as the result of “mechanical reproduction” instead of an author’s <i>“own original mental conception, to which [the author] gave visible form”</i>, so the authorship of AI generated works will depend on the circumstances, e.g., how the AI tool operates and how it was used to create the final work. </p><p>The Copyright Office notes that this includes simply giving the AI system a prompt and it then produces a new work, which is how most of the systems operate currently, as then the <i>"'traditional elements of authorship' are determined and executed by the technology"</i>. What users would have to do is exercise ultimate creative control how such systems interpret any given prompts and then generate the material for them to have human authorship. </p><p>Human authorship is possible, however, if a user <i>"select[s] or arrange[s] AI-generated material in a sufficiently creative way that “the resulting work as a whole constitutes an original work of authorship"</i>, or if an artist modifies the works created by the AI systems to meet authorship requirements. </p><p>The guidance is a clear sign that legislation is behind the times and legal requirements for authorship would need to be updated to reflect the new paradigm of AI generation of works and their protection in some form. The protection would still have to balance the remuneration of artists whose works are used in the training data and/or source of any derivative works, while encouraging the development of these AI systems and to remunerate them accordingly. This will be a difficult balance to strike, especially since legislatures across the world are woefully behind the development of these technologies. </p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-16610049873192190242022-09-27T09:09:00.000+01:002022-09-27T09:09:10.745+01:00A Row Over Nothing? - UK High Court Considers Whether a Rowing Machine Can be a Work of Artistic Craftsmanship<p>Art can often be very subjective and, quite frankly, baffling as to why a particular piece is seen to be 'good' or not. Nevertheless, the law doesn't see things that way, and even works that are less of 'artistic merit' can, and should be protected under various IP rights, since those rights don't discern based on the artistic value of something. You don't often get novel things argued as being works of artistic craftsmanship, but a recent case in the Intellectual Property Enterprise Court had to look at whether a piece of exercise equipment could be one, and therefore protected by copyright. </p><p>The case of <a href="https://www.bailii.org/ew/cases/EWHC/IPEC/2022/2084.html">WaterRower (UK) Ltd v Liking Ltd (T/A Topiom)</a> concerned an application for strike out and/or summary judgment of a claim made by WaterRower against Liking for copyright infringement, involving a water resistance rowing machine called the WaterRower (pictured <a href="https://www.bailii.org/ew/cases/EWHC/IPEC/2022/2084.image001.gif">here</a>) developed by the company of the same name. In its application Liking argued that the rowing machine is not a "work of artistic craftsmanship" within the meaning of <a href="https://www.legislation.gov.uk/ukpga/1988/48/section/4">section 4(1)(c)</a> of the Copyright Designs and Patents Act 1988. The main focus on the application was this, as the Defendant admitted that, if copyright were to subsist in the rowing machine, Liking's copying machines will infringe that right. </p><p>Although the case also discusses aspects of the law relating to applications for strike out/summary judgment, for the purposes of this article we will skip this as it is by no means the most interesting aspect of the case. </p><p>Section 4 provides copyright protection for 'artistic works', which includes 'a work of artistic craftsmanship', however, the legislation doesn't provide any definition for what this would include. The UK courts have grappled with this definition before, most notably in the case of <i>George Hensher Ltd v Restawile Upholstery (Lancs) Ltd</i> (helpfully summarized <a href="https://www.cipil.law.cam.ac.uk/virtual-museum/hensher-v-restawile-1976-ac-64">here</a>), which has been interpreted further in <a href="https://www.bailii.org/uk/cases/UKSC/2011/39.html">Lucasfilm Ltd v Ainsworth</a>. </p><p>In considering the definition of 'a work of artistic craftsmanship' Deputy High Court Judge Stone considered the five speeches given by the Law Lords in the <i>Hensher</i> case. </p><p>Without delving too deep into the particular considerations raised by all of the Law Lords, Deputy High Court Judge Stone disagreed with the Defendant that the WaterRower is not a work of artistic craftsmanship. </p><p>He noted that, as discussed in the <i>Hensher</i> case, <i>"…the intention of the creator was at least relevant to whether or not a work of craftsmanship is artistic"</i>, which was also mentioned as the primary test to define a work of artistic craftsmanship. The Deputy High Court Judge also mentioned that, as shown by witness evidence, the creator of the WaterRower, John Duke, did indeed intend to create a rowing machine in which the user has <i>"a welcoming emotional connection, as they would with a piece of art or furniture"</i>, which clearly demonstrated an intention to create a work of artistic craftsmanship. </p><p>Despite the Defendant's assertion that the intention needs to focus on the <u>primary</u> intention of the creator of the work (and Mr Duke's intention was to simply create a water resistance machine and nothing else), the Deputy High Court Judge disagreed that this would be enough, by itself, to strike out the claim. He determined that <i>"…so long as the artistic purpose was one of the creator’s purposes, it does not need to be the primary or dominant one"</i>. </p><p>There is also evidence that could be adduced that show that the WaterRower was indeed a work of artistic craftsmanship, and, as noted by the Deputy High Court Judge, this would be a matter for a trial judge to decide on the basis of that evidence in any event. </p><p>The Deputy High Court Judge also discussed a number of tests put forward by the Defendant on deciding what amounted to a work of artistic craftsmanship. He, however, refused to decide on which of them was the 'real' test, but nonetheless found that there were real prospects of success of meeting all of the relevant tests. He concluded that the Claimant has real prospects of success in proving that <i>"…the WaterRower has a real artistic or aesthetic quality, beyond simply being appealing to the eye, and that the WaterRower embodies a sufficient degree of both craftsmanship and artistry, with the combination of these two things leading to the end result"</i>.</p><p>The Deputy High Court Judge then turned to consider the EU copyright law that relates to the matter. The main cases here are <a href="https://curia.europa.eu/juris/document/document.jsf;jsessionid=9D2C1D2E11178E3442F5DC2900319D50?text=&docid=217668&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=6168657">Cofemel — Sociedade de Vestuário SA v G-Star Raw CV</a> and <a href="https://curia.europa.eu/juris/document/document.jsf?text=&docid=227305&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=6168944">Brompton Bicycle Ltd v Chedech/Get2Get</a>. </p><p>In brief, in <i>Cofemel</i> the CJEU considered the potential preclusion of copyright protection over design works which generate a significant aesthetic effect. In its decision the CJEU set out that copyright protects works that fulfil two requirements: (i) the existence of an original object, and (ii) the expression of intellectual creation. This means that the object in question <i>"…must express the “intellectual creation” of its author, ie, the author has made free and creative choices in creating the work"</i>. </p><p>However, as specified in <a href="https://curia.europa.eu/juris/document/document.jsf?text=&docid=119904&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=6171548">Football Dataco Ltd v Yahoo UK Ltd</a>, if the subject matter <i>"…has been dictated by technical considerations, rules or other constraints, which have left no room for creative freedom"</i>, it will not possess the requisite originality to be protected by copyright. </p><p>In <i>Brompton</i>, the CJEU had to consider whether copyright applies to a product where its shape is at least in part necessary to obtain a technical result (in the case, a folding bike). In its decision, the CJEU agreed with the position in <i>Football Dataco</i>, but specified that <i>"…in order to establish whether the product concerned falls within the scope of copyright protection… through that choice of the shape of the product, its author has expressed his creative ability in an original manner by making free and creative choices and has designed the product in such a way that it reflects his personality"</i>. They also noted that earlier patents, if any apply to have applied to the item in question, will be relevant if they clarify the intentions of creating the shape of that item. In brief, the Court summarized its position as <i>"…that [a] 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"</i>.</p><p>While the position in the UK and the EU are inconsistent, the Deputy High Court Judge nonetheless found that the Claimant would have real prospects of success even in the European context. He noted that the WaterRower: (i) is an original object; (ii) is an expression of Mr Duke’s intellectual creation; and (iii) whilst there were some technical constraints, they are not such that the idea and its expression become indissociable. </p><p>The Deputy High Court Judge did flag that this should be a matter for Parliament of the higher courts to decide and to specify what will amount to a 'work of artistic craftsmanship' and depending on what the judge dealing with the matter decides, the case could very well be appealed to the Court of Appeal for another look. </p><p>The case is a very interesting one and shows that even novel subject matter that one typically doesn't associate with copyright can be one that comes up in litigation. Although the case didn't provide a great deal of clarity on a definition for a work of artistic craftsmanship, it does provide some more discussion and sets the scene for a potential appeal down the line unless the matter settles (or the parties leave it at that following trial). </p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-16533480286112456332022-09-20T09:30:00.000+01:002022-09-20T09:30:00.141+01:00Cadbury's Color Conundrum - UK High Court Considers Registration for the Color Purple for Cadbury's After Settlement with Nestle<p>Sometimes a specific color is really important. Nothing highlights this more than the seemingly never-ending story of Cadbury's fight to register the color purple (or more specifically, Pantone 2685C) in relation to its iconic chocolate products. The fight over the color started nearly 20 years ago in 2004, so those born in the same year can now legally buy alcohol in the UK - which really puts the time spent in perspective. Nevertheless, color marks have always been difficult to register, however, in a highly anticipated victory Cadbury have done just that, potentially putting this matter to bed once and for all.</p><p>The case of <a href="https://www.bailii.org/ew/cases/EWHC/Ch/2022/1671.html">Societe des Produits Nestle SA v Cadbury UK Ltd</a> concerned an appeal against a decision by the UKIPO Hearing Officer, in which they rejected the registration of three trademarks (specifically applications <a href="https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00003019362">3019362</a>, <a href="https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00003025822">3025822</a> and <a href="https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00003019361">3019361</a>). Nestle opposed all three applications on the grounds that: (i) the marks did not fulfil the requirements of a "sign" under <a href="http://legislation.gov.uk/ukpga/1994/26/section/1">section 1(1)</a> of the Trade Marks Act 1994, challenged under section 3(1)(a) of the Act; and (ii) whether the marks had distinctiveness under section 3(1)(b) of the Act. The oppositions against marks '361 and '822 were successful. Cadbury then appealed the decision against those two marks to the High Court, which handed down its decision this Summer.</p><p>Justice Meade initially focused on the core cases that were argued to be central to the matter. </p><p>The first case was CJEU decision in <a href="https://curia.europa.eu/juris/document/document.jsf;jsessionid=605EA0B6CA6DFC825A492FD53AA63627?text=&docid=48237&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=502432">Libertel Groep BV v. Benelux-Merkenbureau</a>, which set out that <i>"a colour per se, not spatially delimited, may... have a distinctive character within [the <a href="https://eur-lex.europa.eu/legal-content/EN/TXT/HTML/?uri=CELEX:32015L2436&from=EN">Trade Mark Directive</a> then in force] provided that... it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective"</i>. The key here is that a color mark has to be represented graphically clearly for it to be distinctive, and not merely set out as e.g. 'purple' without any distinction as to the hue or use of the color in packaging or otherwise. The case also noted that <i>"...the latter condition could not be satisfied merely by reproducing on paper the colour in question; there had to be a designation using an internationally recognised code"</i> (such as Pantone). </p><p>The second case was the <a href="https://www.bailii.org/ew/cases/EWCA/Civ/2013/1174.html">Court of Appeal decision</a> in the Cadbury saga itself in 2013, where the Court of Appeal saw that the mark that was being applied for registration did not meet the requirements for registration, because it was not a "sign".</p><p>Justice Meade then discussed the legislative position in the matter, namely Article 2 of the Trade Mark Directive. Article 2 requires that, for a mark to be registered as a trademark, it has to: (i) be a sign; (ii) be capable of graphical representation; (iii) be capable of distinguishing the goods or services of one undertaking from those of other undertakings. </p><p></p><div style="text-align: left;"><table cellpadding="0" cellspacing="0" class="tr-caption-container" style="float: left;"><tbody><tr><td style="text-align: center;"><a href="https://i.ytimg.com/vi/ZNRSHr3b4uA/maxresdefault.jpg" imageanchor="1" style="clear: left; margin-bottom: 1em; margin-left: auto; margin-right: auto;"><img border="0" data-original-height="450" data-original-width="800" height="181" src="https://i.ytimg.com/vi/ZNRSHr3b4uA/maxresdefault.jpg" width="320" /></a></td></tr><tr><td class="tr-caption" style="text-align: center;"><i><span style="font-size: x-small;">"I wish I had any idea who owned this color..."</span></i></td></tr></tbody></table><br />The main issue at hand in the Court of Appeal decision was whether the mark was indeed a 'sign', largely focused on its description as <i>"applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods"</i>. The latter part of the description left a lot of leeway in the application of the color, so long as it was the "predominant colour" being applied to the packaging. The Court of Appeal rejected the mark as not being a 'sign' as it couldn't be clearly graphically represented and therefore lacks <i>"clarity, precision, self-containment, durability and objectivity</i>".</div><p></p><p>Justice Meade then moved on to the Hearing Officer's decision. </p><p>The Hearing Officer noted, in relation to mark '361, that although it only referred to the application to packaging of the goods without any limitation to the surface area covered, it still didn't mean the mark would be a single color with no variation and would cover the representation of the trade mark that the Court of Appeal rejected. </p><p>Justice Meade agreed with this position and set out that the formulation of the ‘361 mark is indeed worse than what was rejected by the Court of Appeal, nothing that <i>"[r]emoving the wording held by the Court of Appeal to let in multiple forms and to be objectionably ambiguous is cosmetic at best and does not help"</i>.</p><p>In relation to mark '822, the Hearing Officer aligned its position to that of the above '361 mark, since it does not explain the use of the color and where it will be in the packaging or advertising materials. Justice Meade, however, disagreed with the Hearing Officer. </p><p>He determined that the mark was for the color, which can include its application on the packaging or otherwise. He also distinguished the wording "predominant" from simply the color, which does not cause the same issues. There is no need to specify a simple color mark in relation to, for example, an area of packaging, since requiring that would limit color marks significantly. </p><p>The appeal therefore succeeded in relation to the '822 mark, but not the '361 mark. </p><p>Justice Meade did give some parting words on the issues around the '361 mark, highlighting that it <i>"…leaves it significantly, undesirably and unnecessarily unclear whether combination marks including purple and other colours would be within the scope of the right applied for (and in particular whether they would be identical to ‘361)"</i>. How he distinguished the '822 mark from this is through its simplicity; only covering the color purple. </p><p>Although the case is not a huge upheaval of the world of color marks, it does give some clarity as to appropriate wording for similar marks in the future and notes the pitfalls that can befall any application drafter. The key is sufficient specificity so as to not make the mark very difficult or impossible to understand but considering the '822 mark there is clearly room for some degree of generality. If anything Cadbury will be happy that the saga might just be over now, but who knows what the future will bring. </p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-31863855337726872152022-09-06T09:30:00.000+01:002022-09-06T09:30:00.147+01:00You Gonna Keep That? - EU General Court Considers Trademark Registrations of Dormant Brands and Bad Faith<p>Many brands from the distant past have fallen by the wayside or haven't been used in years or even decades, despite some still fondly remembering them. These 'dormant' brands do also present an opportunity for revival and use of the potential remaining goodwill in those brands, but what happens when an unrelated third party decides to "revive" one of these dormant brands and register it as a trademark? The answer isn't always crystal clear, but a recent decision by the EU General Court set to look at just that and whether this could amount to a bad faith registration. </p><p>The case of <a href="https://curia.europa.eu/juris/document/document.jsf?text=&docid=262324&pageIndex=0&doclang=en">Ladislav Zdút v EUIPO</a> concerned a trademark for a figurative mark for the brand "NEHERA" (EUTM <a href="https://euipo.europa.eu/eSearch/#details/trademarks/011794112">11794112</a>), which was applied for and registered in 2013-2014, including a number of different types of goods such as clothing and footwear. Some 5 years after registration three interveners, Ms Isabel Nehera, Mr Jean-Henri Nehera and Ms Natacha Sehnal, filed an application for a declaration of invalidity of the trademark, alleging that the registrant, Mr Zdut, had acted in bad faith when he filed the application for registration of the contested mark. This was due to the first two interveners' grandfather, Jan Nehera, having established a business using the same brand in Czechoslovakia in the 1930s and had acquired a trademark in Czechoslovakia for the same. However, the brand has not been used since the 1940s. The application was rejected at first instance by the Cancellation Division, but the decision was reversed by the Second Board of Appeal which declared the trademark invalid. Mr Zdut subsequently appealed that decision, with the matter ending up with the General Court.</p><p>Considering the law around the matter, Article 52 of the <a href="https://eur-lex.europa.eu/legal-content/EN/TXT/HTML/?uri=CELEX:32009R0207&from=EN">CTM Regulation</a> sets out that an EU trademark should be declared invalid where the applicant was acting in bad faith when they filed the application for registration of that trademark. 'Bad faith' in this regard <i>"… presupposes the presence of a dishonest state of mind or intention"</i> so it means that the applicant <i>"…has filed the application for registration of that mark, not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark"</i>. </p><p>However, the subjective intentions of the applicant must still be assessed objectively considering all the factual circumstances relevant to the particular case. These circumstances can include: (i) the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product or service capable of being confused with the sign for which registration is sought; (ii) the applicant’s intention to prevent that third party from continuing to use such a sign; and (iii) the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought. </p><p></p><table cellpadding="0" cellspacing="0" class="tr-caption-container" style="float: left;"><tbody><tr><td style="text-align: center;"><a href="https://64.media.tumblr.com/2a7f38631267566ab2fc9544b1db26ad/98d4a95003bfd829-dc/s640x960/df0ab8d8bf16839d2af1d7fb5dc4d63f4d5e50bb.jpg" style="clear: left; margin-bottom: 1em; margin-left: auto; margin-right: auto;"><img border="0" data-original-height="441" data-original-width="640" height="221" src="https://64.media.tumblr.com/2a7f38631267566ab2fc9544b1db26ad/98d4a95003bfd829-dc/s640x960/df0ab8d8bf16839d2af1d7fb5dc4d63f4d5e50bb.jpg" width="320" /></a></td></tr><tr><td class="tr-caption" style="text-align: center;"><i><span style="font-size: x-small;">Even Superman had no respect for historical ownership <br />of things</span></i></td></tr></tbody></table><br />Even outside of the specific circumstances above, the General Court noted that other factors, such as the origin of the sign at issue and of its use since its creation, the commercial logic underlying the filing of the application for the trademark, the reputation of the sign at the time of the registration, and the chronology of events leading up to that filing might be very relevant. <p></p><p>The General Court then turned to the actual matter at hand. It initially noted that there is currently no registration for the "NEHERA" brand in the EU, and that the earlier Czechoslovakian trademark had lapsed in the 1940s and hasn't been used since. </p><p>Interestingly Mr Zdut had been fully aware of the existence and reputation of Jan Nehera and of the old trademark in Czechoslovakia, and even had noted that he wanted to launch the brand to ‘pay a tribute’ to the ‘great days of the Czechoslovak textile industry of the 1930s’ and in particular to Mr Jan Nehera. </p><p>Considering the law in light of the matter, the General Court set out that <i>"[f]ree-riding behaviour with regard to the reputation of a sign or of a name… is, in principle, only possible if that sign or that name actually and currently enjoys a certain reputation or a certain celebrity"</i>. With that in mind, the EU courts have found an intention to take unfair advantage of the surviving reputation of an earlier mark, including where that mark was no longer used or of the current celebrity of the name of a natural person, where the surviving reputation or fame was established. </p><p>In contrast to this position, there is no usurpation of the reputation of a term claimed by a third party and, therefore, no bad faith, where that term was neither registered, used, nor renowned in the EU. </p><p>With that in mind, the General Court noted that in the absence of surviving reputation in respect of the former Czechoslovak trademark and of current celebrity in respect of Jan Nehera’s name at the time of filing, the use of the mark wouldn't be free-riding behavior indicating bad faith. Even though Mr Zdut knew of the individual and the original trademark, it isn't sufficient to establish the existence of bad faith. </p><p>The interveners also highlighted an intention to create a link between the name and the new brand, but the General Court saw that this wasn't in itself sufficient to support a finding that unfair advantage was taken of the reputation of the sign or of the former name. </p><p>The General Court also focused on the lack of a current reputation in relation to the old trademark or the name. As they noted, currently both have been forgotten by the relevant public, and the applicant had made considerable efforts to build up the brand again. This was far from merely parasitically taking advantage of an existing reputation. </p><p>The General Court also determined that it is possible, in certain specific circumstances, that reuse by a third party of a previously renowned former mark or of the name of a previously famous person may give a false impression of continuity or of inheritance with that former mark or with that person. This can happen where the applicant presents itself to the relevant public as the legal or economic successor of the holder of the former mark, when there is no continuity or inheritance relationship. That could then be considered in establishing bad faith. However, no such intention was found in relation to Mr Zdut. </p><p>In summary, the General Court found that the concept of bad faith presupposes the presence of a dishonest state of mind or intention, which they were unable to find in the present matter, and overturned the Board of Appeal's decision. </p><p>The case is an important reminder for any brand owners (even historical ones), or their potential legatees, to make sure that those brands are properly registered if any use of the brand is ever even contemplated. If this isn't done it may present an opportunity for a third party to jump in and take over the brand, which could very well be fully legal and without much recourse down the line. It is possible that this matter will be appealed to the Court of Justice for an ultimate decision, but in the absence of that any dormant brands could very well be up for grabs. </p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-11757461172413219542022-08-23T09:30:00.001+01:002022-08-23T09:30:00.149+01:00Just Can't Catch a Break - US Court of Appeals Decides That AI Cannot be an Inventor of Patents<p>Artificial intelligence's road to recognition as a legal entity keeps hitting obstacle after obstacle, and as things stand it looks like right's in AI created works or inventions will be questionable without proper legislative intervention. Despite the continuous stumbling blocks, it seems that some inventors are very interested in continuing the fight, so yet another important decision has been reached on AI inventorship of patents in the US. The Court of Appeals recently handed down its decision on the matter, which continues on the near never-ending line of decisions across the globe that have been discussed on this blog before many times (for example <a href="https://www.ipiustitia.com/2020/05/ai-cant-be-inventor-of-patents-uspto.html">here</a>, <a href="https://www.ipiustitia.com/2022/03/yet-another-rejection-us-copyright.html">here</a> and <a href="https://www.ipiustitia.com/2022/08/the-epo-are-not-board-of-ai-yet-epo.html">here</a>). </p><p>The case of <a href="https://scholar.google.com/scholar_case?case=748046889305083342">Stephen Thaler v Katherine Vidal</a> concerned the DABUS AI system, which will be very familiar to the readers of this blog by now. DABUS was created by Mr Thaler and set out to create a number of inventions, and subsequently Mr Thaler applied for patents for some of these inventions (at issue specifically applications 16/524,350 and 16/524,532). In these applications Mr Thaler listed DABUS as the sole inventor. Mr Thaler also handled all of the filing formalities for DABUS, including a number of documents setting out why it is the inventor of the inventions. The USPTO rejected both applications due to them lacking a valid inventor and therefore being incomplete. The District Court, on appeal, found that <i>"an 'inventor' under the Patent Act must be an 'individual' and the plain meaning of 'individual' as used in the statute is a natural person"</i>, and Mr Thaler therefore appealed to the Court of Appeals. </p><p>Justice Stark noted that the sole issue in the case is whether an AI software system can be an "inventor" under the <a href="https://www.law.cornell.edu/uscode/text/35/100">Patent Act</a>. </p><p>The Patent Act expressly sets out that inventors are 'individuals', which is means <i>"the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention"</i>. The key here is the word individual, which Justice Stark highlighted to meaning <i>"...a human being"</i> (as decided by the Supreme Court in <a href="https://scholar.google.com/scholar_case?case=8123691441658588112">Mohamad v Palestinian Authority</a>). Unless defined otherwise by statute this remains the definition, as is the case under the Patent Act. </p><p></p><table cellpadding="0" cellspacing="0" class="tr-caption-container" style="float: left;"><tbody><tr><td style="text-align: center;"><a href="https://i.pinimg.com/736x/c5/3a/5c/c53a5c2a7e81052846626391bc6baade--steampunk-drawing-steampunk-book.jpg" style="clear: left; margin-bottom: 1em; margin-left: auto; margin-right: auto;"><img border="0" data-original-height="235" data-original-width="269" height="235" src="https://i.pinimg.com/736x/c5/3a/5c/c53a5c2a7e81052846626391bc6baade--steampunk-drawing-steampunk-book.jpg" width="269" /></a></td></tr><tr><td class="tr-caption" style="text-align: center;"><span style="font-size: x-small;">When not inventing, AI likes to take it easy with<br />a little light gardening in the evenings</span></td></tr></tbody></table><br />Despite the wording 'whoever' being used in the Patent Act, the fact remains that these provisions are still subject to the above, i.e. that an inventor be a human being. Mr Thaler also noted that AI software programs should qualify as 'inventors' since otherwise patentability would depend on <i>"the manner in which the invention was made"</i>. Justice Stark rejected this position, specifying that this isn't about inventorship, and also that that inventions may still be non-obvious even if they are discovered during 'routine' testing or experimentation. <p></p><p>Existing precedent supports this position, with, for example, the decision in the <a href="https://scholar.google.com/scholar_case?case=8186991990803943323">University of Utah v Max-Planck</a> setting out that <i>"inventors must be natural persons and cannot be corporations or sovereigns"</i>, and in <a href="https://scholar.google.com/scholar_case?case=6736394391310560989">Beech Aircraft Corp v EDO Corp</a> where it was decided that <i>"only natural persons can be 'inventors'"</i>. Justice Stark noted that, while they deal with a different question (i.e. corporate ownership), the cases nonetheless support the position that the plain meaning of 'inventor' in the Patent Act is limited to natural persons.</p><p>Justice Stark then touched on Mr Thaler's various arguments to round out their decision. Mr Thaler had argued that inventions generated by AI should be patentable in order to encourage innovation and public disclosure. Justice Stark determined this to be purely speculative and lacking in basis under the Patent Act. Mr Thaler also argued constitutional avoidance where permitting AI programs to be inventors would support the constitutional purpose of patents <i>"to promote the progress of science and the useful arts" </i>and that not recognizing AI as an inventor undermines such progress, raising potential constitutional concerns that we should avoid. Justice Stark also readily rejected this position, setting out that the lack of AI inventorship would be unconstitutional, since Congress has decided to legislative limiting inventorship to human beings. </p><p>The Court of Appeals therefore rejected Mr Thaler's appeal. </p><p>The decision was, by no means, a surprise and continues the trajectory of rejection that AI inventorship has faced over the last several years (despite the South African CIPC registering DABUS' inventions as patents, being the only jurisdiction to do so so far). It remains to be seen whether Mr Thaler will want to try and take the matter to the Supreme Court, but it would seem unlikely to be picked up due to the sheer clarity of the matter in the US. A future involving AI inventorship would clearly require further steps from legislatures across the board, but currently there seems to be very little appetite to do so.</p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-83358043559625574102022-08-16T09:30:00.001+01:002022-08-16T09:30:00.151+01:00These Shoes are Made for Selling - AG Szpunar Opines on Intermediary Liability and the 'Use' of a Trademark for Online Marketplaces<p>Intermediaries in e-commerce are a near necessity for many online sellers of products, but they can produce headaches and issues where potentially unauthorized goods are sold through them that infringe a company's IP rights. The status of intermediaries' liability has been slowly evolving in the courts, and a hotly anticipated decision by the CJEU on the issues is very close in the horizon that should clear matters up significantly in Europe. Before this, however, Attorney General Szpunar has had their say and issued their opinion earlier this Summer (the opinion only being available in English very recently). The opinion sets the scene for the CJEU and could be a glimpse into the CJEU's position on the matter in the near future. </p><p>The case of <a href="https://curia.europa.eu/juris/document/document.jsf;jsessionid=B203B5EC069F7BAC33DD8ED07C23177D?text=&docid=260206&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=672047">Christian Louboutin v Amazon Europe Core Sàrl</a> concerned infringement proceedings launched by Christian Louboutin against Amazon, under which they alleged that: (i) Amazon is liable for infringement of his trade mark; (ii) it should cease the use, in the course of trade, of signs identical to that trade mark in the EU; and (iii) he is entitled to damages for the harm caused by the unlawful use at issue. Amazon unsurprisingly challenged this position, arguing that it is merely an operator of an online marketplace and cannot be held liable for the actions of its sellers. The Luxembourg courts referred the matter to the CJEU for clarification, which is closing in on the crescendo of the decision itself following AG Szpunar's opinion.</p><p>The case combines two separate actions in Luxembourg and Belgium involving the two parties. </p><p>AG Szpunar noted that they both concerned the interpretation of the concept of ‘use’ for the purposes of Article 9(2) of <a href="https://eur-lex.europa.eu/legal-content/EN/TXT/HTML/?uri=CELEX:32017R1001&from=EN">Regulation 2017/1001</a>. In essence the referring courts are asking <i>"…whether Article 9(2)… must be interpreted as meaning that the operator of an online sales platform must be regarded as using a trade mark in an offer for sale published by a third party on that platform on account of the fact that, first, it publishes both its own commercial offerings and those of third parties uniformly without distinguishing them as to their origin in the way in which they are displayed, by allowing its own logo as a renowned distributor to appear on those advertisements, and, secondly, it offers third-party sellers the additional services of stocking and shipping goods posted on its platform by informing potential purchasers that it will be responsible for those activities"</i>. The courts also asked <i>"...whether the perception of a reasonably well-informed and reasonably observant internet user has an impact on the interpretation of the concept of ‘use’"</i>. </p><p>As a primer, Article 9(2) provides that the proprietor of an EU trademark is entitled to prevent all third parties not having their consent from using, in the course of trade, any sign which is identical with the trademark. However, what amounts to 'use' in this context is paramount to determining potential liability under the provision for any would-be infringer. </p><p>AG Szpunar then moved on to discussing the current definition of 'use' under Article 9. Some of the main decisions here are <a href="https://curia.europa.eu/juris/document/document.jsf?text=&docid=174760&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=763905">Daimler AG v Együd Garage Gépjárműjavító és Értékesítő Kft</a>, <a href="https://curia.europa.eu/juris/document/document.jsf?text=&docid=224883&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=764972">Coty Germany GmbH v Amazon Services Europe Sàrl</a>, <a href="https://curia.europa.eu/juris/document/document.jsf?text=&docid=83961&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=766732">Google France SARL and Google Inc. v Louis Vuitton Malletier SA</a> and <a href="https://curia.europa.eu/juris/document/document.jsf?text=&docid=107261&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=767616">L’Oréal SA v eBay International AG</a>. </p><p>The CJEU has found that the term 'using' in terms of intermediaries involves active behavior and direct or indirect control of the act constituting the use, and that the act of use presupposes, at the very least, that that third party uses the sign in its own commercial communication. The latter point was key in this according to the AG and without it any such use would be lacking.</p><p>In terms of the commercial communication aspect, the CJEU has determined that a referencing service provider does not use a sign in its own commercial communication since it only allows its clients themselves to use the relevant signs, with the result that it <i>"…merely creates the technical conditions necessary for the use of a sign"</i>. </p><p>Similarly, a marketplace operator would not be using a sign in its own commercial communication when it provides a service consisting in enabling its customers to display that sign in their commercial activities, and that the stocking of goods bearing the relevant sign is not a use of that sign in a third party’s own commercial communication since it has not itself offered the goods for sale or put them on the market. </p><p>The AG does highlight that this set of definitions is not a clear one and needs to be more specific and focused to make better sense. </p><p>The AG very cleverly shifted the definition towards the recipient away from the actual communicator, i.e. the platforms. He discussed that the commercial communication of an undertaking would be to promote goods or services to third parties. To put simply, the intermediary adopts the sign to such an extent that that sign appears to be part of its activity.</p><p>The adoption condition still has to be looked at from the perspective of the recipient, i.e. the user of the marketplace, to determine whether the sign is perceived by that user as being integrated into that commercial communication. The user that this would be assessed against is a <i>"reasonably well-informed and reasonably observant internet user"</i>. </p><p>AG Szpunar then moved on to discussing Amazon's particular business model and whether they would be 'using' a trademark in the course of their business. </p><p>The first question referred to the CJEU concerned, primarily, if <i>"…the activity of a marketplace operator of publishing commercial offerings from third-party sellers on its website where those offers for sale display a sign which is identical with a trade mark"</i>. </p><p>As noted above, this activity would not constitute a 'use' of a trademark (specifically decided in the <i>eBay</i> case), however, Amazon operates differently to eBay as a marketplace. Amazon provides a much more comprehensive offering, where third party sellers can post their own advertisements for goods in addition to Amazon's own. In those instances, the Amazon logo is merely present to indicate to consumers that the ad was posted by a third party seller. </p><p>In that instances the AG noted that that would not lead to a reasonably well-informed and reasonably observant internet user to perceive the signs displayed on the advertisements of third-party sellers as part of Amazon’s commercial communication. The same would apply to the integration of third-party ads by Amazon into specific shops on the platform, which is the type of organization that is integral to the functioning of these types of online platforms. </p><p>The referring courts also asked whether <i>"…the fact that Amazon offers a ‘comprehensive’ service, including providing assistance in preparing advertisements and the stocking and shipment of certain goods, has an impact on the classification of the use of a sign displayed on those advertisements by Amazon"</i>. </p><p>To properly consider this the AG highlighted that you must consider Amazon’s activities as a whole to determine whether the involvement of that company might be classified as use of that sign. The AG thought that this would not be the case. </p><p>Amazon's involvement, while able to give them more control over the sale of a product that may infringe a trademark, but that involvement was only for the benefit of the consumer so that they could ensure prompt and guaranteed delivery after a product is purchased. In the AG's view this is not sufficient to establish that Amazon has used the sign at issue in its own commercial communication. </p><p>This position ties in with the decision in <i>Coty</i>, where the CJEU determined that <i>"…a sign cannot be regarded as having been used in the marketplace operator’s own commercial communication where that operator stocks goods bearing a sign on behalf of a third-party seller without itself pursuing the aim of offering those goods or putting them on the market"</i>. </p><p>The AG also noted that Amazon's posting of the ads in question would not be 'using' the sign in question either. </p><p>To round things off, the AG summarized their position as answering the questions that <i>"…Article 9(2)… must be interpreted as meaning that the operator of an online sales platform cannot be regarded as using a trade mark in an offer for sale published by a third party on that platform on account of the fact that, first, it publishes both its own commercial offerings and those of third parties uniformly, without distinguishing them as to their origin in the way in which they are displayed, by allowing its own logo as a renowned distributor to appear on those advertisements, both on its website and in the advertising categories of third-party websites and, secondly, it offers third-party sellers the additional services of assistance, stocking and shipping of goods posted on its platform by informing potential purchasers that it will be responsible for the provision of those services, provided that such elements do not lead the reasonably well-informed and reasonably observant internet user to perceive the trade mark in question as an integral part of the operator’s commercial communication"</i>.</p><p>The AG's opinion really sets the scene for the CJEU and seems very sensible in protecting the functionality of online marketplaces, like Amazon. If the courts would see things otherwise, this would clearly massively impede the functionality of these services, and in fact, without heavy moderation by the platforms themselves, would make them impossible to operate. This should not be seen as carte blanche for the platforms either, but could set sensible, clearer boundaries for both platforms, brands and third party sellers, but it remains to be seen what the CJEU's position will be. </p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-26527255492346157022022-08-03T09:30:00.002+01:002022-08-03T09:30:00.163+01:00The EPO Are Not 'Board' of AI Yet - EPO Board of Appeal Weighs in on Whether Artificial Intelligence Can Be an Inventor<p>The progression of AI in the world of IP rights keeps trundling along, with many national and international bodies having already weighed in on whether AI can be an inventor for the purpose of patent law or not (discussed on <a href="https://www.ipiustitia.com/2020/05/ai-cant-be-inventor-of-patents-uspto.html">this blog before</a>). The answer seems to have been a resounding "no", however, following an earlier decision by the EPO, the EPO Board of Appeal has now issued its decision in the ever-continuing DABUS saga, which does shed some further light on the matter and does show that the current legislative framework does seem robust enough on the matter of AI (though this writer would think that specific legislative updates are still a must).</p><p>The case of <a href="https://www.epo.org/law-practice/case-law-appeals/pdf/j200008eu1.pdf">Designation of inventor/DABUS</a> (case J 0008/20) concerned two patent applications filed at the EPO (namely <a href="https://register.epo.org/application?number=EP18275163">EP18275163</a> and <a href="https://register.epo.org/application?number=EP18275174">EP18275174</a>). The applications didn't list an inventor for the patents, but, following a clarification by the applicant, Stephen Thaler, the inventor was noted to be "DABUS". DABUS is an AI created by Mr Thaler. The EPO Receiving Section rejected both applications on the grounds that the designated inventor, DABUS, didn't meet the requirements for an inventor, that being a need for them to be a 'natural person'. Mr Thaler subsequently appealed both decisions to the Board of Appeal.</p><p>The appeal was brought on three separate grounds: (i) whether an applicant can designate an entity which is not a natural person as the inventor under Article 81 of the <a href="https://www.epo.org/law-practice/legal-texts/html/epc/2020/e/ar81.html">European Patent Convention</a>; (ii) to comply with the EPC is it enough for an applicant to file any declaration irrespective of its content, or does the latter need to satisfy specific requirements; and (iii) whether and to what extent the EPO can examine and object to statements filed under Article 81.</p><p>To set the scene, Article 81 requires that an inventor be designated for all patent applications, and any deficient designation of an inventor can be amended under Rule 21 of the EPC. Further, Article 61 of the EPC notes that <i>"[t]he right to a European patent shall belong to the inventor or his successor in title"</i> (the latter being a legal successor in the title of the rights), and the rights of any employee, if they are the inventor, will be determined by the national legislation where they are employed. </p><p>The Board of Appeal first dealt with the main request in the matter, i.e. whether an AI can be an inventor of a patent. The Board firmly rejected this point, as they determined that <i>"[u]nder the EPC the designated inventor has to be a person with legal capacity"</i>, so adopting a simpler, ordinary meaning approach in deciding what an 'inventor' is. What the provisions around designating an inventor seek to do are to confer and protect the rights of the inventor, facilitate the enforcement of potential compensation claims provided under domestic law, and identify a legal basis for entitlement to the application. The Board clearly set out that <i>"[d]esignating a machine without legal capacity can serve neither of these purposes"</i>. </p><p>The Board also noted that there is no practice or agreement that would allow for the Board to overcome this specific language. The appellant also advanced an argument of fairness allowing for AI to be an inventor of a patent; however, the Board immediately rejected this argument as well. </p><p>The Board therefore confirmed that the Receiving Section's decision was correct in raising an objection to the applications. </p><p>In summarizing its position, the Board decided that <i>"…the main request does not comply with the EPC, because a machine is not an inventor within the meaning of the EPC. For this reason alone it is not allowable"</i>. </p><p>The Board then turned to the auxiliary request, i.e. whether the first sentence of Article 81 does not apply where the application does not relate to a human-made invention. The Board swiftly sided with the request and agreed that the part of Article 81 would not apply in that instance, since the provisions were drafted to confer specific rights on the inventor, so where no human inventor can be identified, then Article 81 does not apply. </p><p>The appellant had provided a statement with this request noting that they had derived the right to the European patent as owner and creator of the machine. The Board disagreed and stated that the statement didn't bring them within the remit of Article 60, since there is no legal situation or transaction which would have made him successor in title of an inventor. </p><p>The Board did consider two referrals that were requested to be made to the Enlarged Board, however, the referrals were rejected. </p><p>In discussing why no referral was needed, the Board turned to matters surrounding Article 52 of the EPC, which specifies that an invention is one which is novel, industrially applicable and involves an inventive step is patentable. The appellant argued that the provision only relates to human-made inventions, and the Board agreed with this position. How a particular invention was made doesn't play a part in the patent system, so therefore it is possible that AI-generated inventions too are patentable under Article 52. However, this position can't co-exist with Article 60, so you would have inventions that are patentable under Article 52, but for which no rights are provided under Article 60. </p><p>The Board also considered the requirement to file a statement of origin of the right to a European patent where the inventor and the applicant differ. The Board noted that this is only a formal requirement, and only informs the public of the origin of the right, but that it would be disproportionate to deny protection to patentable subject-matter for failing to fulfil such a formal requirement. </p><p>Additionally, they noted that, as the lawmakers only had human-made inventions in mind when drafting Article 60, so it is possible that no statement on the origin of the right is required where the application concerns an invention developed by a machine. </p><p>The crux of why Mr Thaler's applications have failed in light of the above is that there is nothing preventing him from listing himself as the inventor in relation to both applications. The Board highlighted that there is no case law <i>"…which would prevent the user or the owner of a device involved in an inventive activity to designate himself as inventor under European patent law"</i>.</p><p>The decision is yet another among many that highlight the issues of AI inventorship and why there is simply a need for evolution in the law to accommodate AI inventions somehow. However, as noted by the Board, the creator of the AI could be listed as the inventor, bypassing this issue, however, it seems that Mr Thaler was deadset on setting a new precedent and allowing for direct ownership by the AI systems. This presents the problem of enforcement and/or remuneration, and undoubtedly these would be handled by the creator themselves, rendering this problem almost moot in this writer's view. We will see if the case progresses to the Enlarged Board, but it seems that Mr Thaler is in no way done with the DABUS saga as things stand. </p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-11967768864673978212022-05-03T09:20:00.000+01:002022-05-03T09:20:18.801+01:00Challenger Defeated - Article 17 of the Digital Single Market Directive remains valid in light of the Freedom Expression<p>The EU is currently working on, or passing, big legislative changes in order to address issues within the digital marketplace and in relation to "Big Tech". This includes the <a href="https://eur-lex.europa.eu/legal-content/EN/TXT/HTML/?uri=CELEX:32019L0790&from=EN">Digital Single Market Directive</a> and the forthcoming <a href="https://digital-strategy.ec.europa.eu/en/policies/digital-services-act-package">Digital Services Act</a>, which will make sweeping changes to how companies operate in the digital space. One hotly contested point within this package is Article 17 of the DSM, which was challenged by Poland in a hotly awaited case within the CJEU. Following <a href="https://curia.europa.eu/juris/document/document.jsf?text=&docid=244201&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=638826">an opinion</a> from Advocate General <span face=""Open Sans", sans-serif" style="font-size: 12px; text-align: center;">Ø</span>e as far back as July last year, the Court handed down its decision very recently on this, which sets the scene for the application of the DSM in the near future.</p><p>The case of <a href="https://curia.europa.eu/juris/document/document.jsf?text=&docid=258261&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=190200">Republic of Poland v European Parliamen</a>t concerned an action for annulment brought by Poland in relation to Article 17. What the provision does is introduce liability for platforms that allow users to upload digital content onto the platform, such as YouTube, for copyright infringement if that user-uploaded material infringes copyright. However, platforms can avoid liability by making "best efforts" to either acquire a license or block the infringing content, and an obligation is placed on the platforms to act expeditiously following any notification by rightsholders to remove or disable the content and to use "best efforts" to prevent any future uploads, for example through the use of content filtering.</p><p>As is clear, Article 17 is set to change the landscape for platforms like YouTube and introduces strict measures and steps that need to be taken by the same in relation to infringing content. Poland challenged the provision on the grounds that it infringed Article 11 of the <a href="https://eur-lex.europa.eu/legal-content/EN/TXT/HTML/?uri=CELEX:12012P/TXT&from=EN">Charter of Fundamental Rights of the European Union</a>, which enshrines the freedom of expression in EU law. </p><p>What they specifically argue is that in order to be exempted from all liability for giving the public access to copyright-protected works or other protected subject-matter uploaded by their users in breach of copyright, online content-sharing service providers are required to carry out preventive monitoring of all the content which their users upload. This imposition of these mandatory measures, without appropriate safeguards put in place, would breach the right to freedom of expression.</p><p>The Court discussed their decision in <a href="https://www.ipiustitia.com/2022/01/just-in-middle-cjeu-decides-on.html">YouTube and Cyando</a>, which sets out that <i>"the operator of a video-sharing platform or a file-hosting and ‑sharing platform, on which users can illegally make protected content available to the public, does not make a ‘communication to the public’ of that content, within the meaning of that provision, unless it contributes, beyond merely making that platform available, to giving access to such content to the public in breach of copyright"</i>. In addition, the same service providers will be specifically exempt from infringement provided that they do not play an active role of such a kind as to give it knowledge of or control over the content uploaded to its platform.</p><p>Article 17, as discussed above, is set to change this position and introduce new liability provisions and obligations on platforms. </p><p>As set out by the Court, Article 11 of the Charter and Article 10 of the <a href="https://www.echr.coe.int/documents/convention_eng.pdf">European Convention on Human Rights</a> guarantee the freedom of expression and information for everyone, including in relation to the dissemination of information which encompasses the Internet as a key means of dissemination. Therefore, courts have to take due account the particular importance of the internet to freedom of expression and information and ensure that those rights are respected in any applicable legislation. </p><p>In considering whether Article 17 has an impact on peoples' freedom of expression, they initially noted that the provision assumes that some platforms will not be able to get licenses from rightsholders for the content that is uploaded by users, and the rightsholders are free to determine whether and under what conditions their works and other protected subject matter are used. If no authorization is received the platforms will only have to <i>"...demonstrate that they have made their best efforts... to obtain such an authorisation and that they fulfil all the other conditions for exemption"</i> in order to avoid liability.</p><p>The conditions include acting expeditiously when notified by rightsholders in order to disable access to, or to remove the potentially offending content, to put in place appropriate measures to prevent the uploading of infringing content (e.g. through the use of automatic recognition and filtering tools), and to prevent future uploads. The Court does accept that these early measures can restrict an important means of disseminating online content and thus constitute a limitation on the right guaranteed by Article 11 of the Charter. They, therefore, concluded that <i>"the specific liability regime [under] Article 17(4)... in respect of online content-sharing service providers, entails a limitation on the exercise of the right to freedom of expression and information of users of those content-sharing services"</i>.</p><p>However, the next piece of the puzzle the Court addressed was whether the limitation could be justified. </p><p>The Charter does allow for legislation to impact the freedoms it contains, however, any limitations of those rights must be proportionate and made <i>"... only if they are necessary and genuinely meet objectives of general interest recognised by the [EU] or the need to protect the rights and freedoms of others"</i>. If there is a choice between several different measures the least onerous one has to be chosen over the others and the disadvantages caused must not be disproportionate to the aims pursued. Finally, adequate safeguards need to be put in place within the legislation to guarantee the protection of those rights from abuse. </p><p>The Directive and Article 17(4) do specify the limitations placed on the freedom of expression, it does not specify the means through which it should be done, only that they need to use their 'best efforts' in doing so. Although, as set out above, the Charter does require that these need to be specified, the Court noted that the limitations can be formulated in terms that are sufficiently open to be able to keep pace with changing circumstances. </p><p>The Court also mentioned that the legislation, in Article 17(7) (and similarly in Article 17(9)), requires that other expression not be limited if it does not infringe copyright, so it is specific well beyond mere "best efforts". The Court accepted that both Articles 17(7) and (9) protected the right to freedom of expression and information of users of online content-sharing services adequately. They confirmed that this struck an adequate balance between both parties' interests. Looking at the liability mechanism itself, the Court agreed that it was not only appropriate but also appears necessary to meet the need to protect intellectual property rights. </p><p>Also, the platforms are protected by the provision somewhat due to the notification requirements it sets, and without notification, broadly speaking, they would not be held liable for any infringing contents. Article 17(8) also specifically excludes a general monitoring obligation on the platforms. Any notification also has to contain sufficient information to remove the infringing contents easily. Article 17(9) contains several other procedural safeguards that should protect the right to freedom of expression and information of users where the service providers erroneously or unjustifiably block lawful content.</p><p>In summary, the Court set out that <i>"...the obligation on online content-sharing service providers to review, prior to its dissemination to the public, the content that users wish to upload to their platforms, resulting from the specific liability regime established in Article 17(4)... and in particular from the conditions for exemption from liability... has been accompanied by appropriate safeguards by the EU legislature in order to ensure... respect for the right to freedom of expression and information of the users of those services... and a fair balance between that right, on the one hand, and the right to intellectual property, protected by Article 17(2) of the Charter"</i>.</p><p>The decision is undoubtedly correct and, although a bitter pill to swallow for many platforms that will be impacted by it, the aim of the legislation seems to not be to unduly burden them with monitoring obligations and to stifle the freedom of expression, but attempts to balance that with the protection of legitimate copyrights held by other parties. It will remain to be seen what filtering measures will be considered adequate by the EU courts in the future if they are challenged, but one can imagine sufficient measures already exist, such as Content ID for YouTube. The DSM is the first big step in the new IP regime in Europe, with more changes set to be made in the near future. </p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-5899333538636732112022-04-12T09:19:00.000+01:002022-04-12T09:19:46.801+01:00Data in the Clouds - CJEU Accepts the Use of the Private Copying Exception in Relation to Cloud StorageThe use of cloud storage is near ubiquitous these days, with both companies and consumers using it at increasing amounts to store both their private data and even multimedia content, making it accessible without having all of the data copied onto a given device at all times. However, even though it's not something that most people will consider at the time (or at all), the copying of copyright protected content even onto cloud storage could potentially infringe on the rights of rightsholders, which could result in payments being due for the same. With that in mind as a starting point, could you use a private copying exception to avoid liability for such copying? Luckily, the CJEU has recently handed down its decision on the matter, clarifying the position for current and prospective copiers alike.<div><br /></div><div>The case of <a href="https://curia.europa.eu/juris/document/document.jsf?text=&docid=256462&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=4317134">Austro-Mechana Gesellschaft zur Wahrnehmung mechanisch-musikalischer Urheberrechte GmbH v Strato AG</a> concerned Austro-Mechana, who is a copyright collecting society in Austria acting in a fiduciary capacity for the interests of its members and asserting the legal rights they have in their works on their behalf. Austro-Mechana made an application in court for the invoicing and taking payment for "storage media of any kind" from Strato, as they provide their customers a service called 'HiDrive', which allows for the storage of files through cloud computing. Strato contested this and the matter progressed through the Austrian courts, ultimately ending up with the CJEU.</div><div><br /></div><div>The CJEU were faced with two questions on the matter, with the first one asking <i>"...whether Article 5(2)(b) of <a href="https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=celex%3A32001L0029">Directive 2001/29</a> must be interpreted as meaning that the expression ‘reproductions on any medium’ referred to in that provision covers the saving, for private purposes, of copies of works protected by copyright on a server on which storage space is made available to a user by the provider of a cloud computing service"</i>. In short, does the exception under Article 5(2) include private copying onto cloud storage. </div><div><br /></div><div>The first consideration, according to the CJEU, was whether a 'reproduction' could include copying onto cloud storage. The Directive and its recitals make it amply clear that the phrase should be interpreted very broadly. The court noted that copying onto cloud storage includes both the reproduction through the uploading of a file for storage, and when a given file is accessed by the user subsequently and downloaded into any device. This means that copying onto cloud storage indeed constitutes 'reproduction' under Article 5(2). </div><div><br /></div><div>The second consideration is whether 'any medium' covers the provision of cloud computing servers for the storage of files in the cloud. In the broadest sense the phrase includes all media from which a protected work could be copied from, which includes cloud computing. </div><div><br /></div><div>Additionally, the Directive's purpose is to create a general and flexible framework at EU level in order to foster the development of the information society and to create new ways to exploit protected works. This is underpinned by technological neutrality. The same applies to the protection of copyright protected works, and the legislation is intended to not become obsolete and to apply to as much of new technology in the future as possible. </div><div><br /></div><div>The CJEU therefore concluded that the concept of ‘any medium’ includes a server on which storage space has been made available to a user by the provider of a cloud computing service. </div><div><br /></div><div>In summary, the CJEU set out their answer to the first question that <i>"...Article 5(2)(b)… must be interpreted as meaning that the expression ‘reproductions on any medium’... covers the saving, for private purposes, of copies of works protected by copyright on a server on which storage space is made available to a user by the provider of a cloud computing service"</i>.</div><div><br /></div><div>The second question posed to the CJEU asked <i>"...whether Article 5(2)(b)… must be interpreted as precluding national legislation that has transposed the exception... and that does not make the providers of storage services in the context of cloud computing subject to the payment of fair compensation in respect of the unauthorised saving of copies of copyright-protected works by natural persons, who are users of those services, for private use and for ends that are neither directly nor indirectly commercial"</i>. In short, whether any national legislation that has transposes the exception, and doesn't impose a payment of royalties for the unauthorized copies, is excluded in relation to non-commercial private copying. </div><div><br /></div><div>This expressly refers to Article 2 of the Directive which provides an exception to reproductions made by people for a non-commercial purpose, provided that the rightsholder is fairly compensated. </div><div><br /></div><div>The CJEU notes that when Member States decide to transpose the exception to their national legislative framework they are required to provide for the payment of fair compensation to rightholders. They also note that the copying of copyright protected works by individuals can cause harm to rightsholders, which the compensation is attempting to remedy. </div><div><br /></div><div>As was already answered above, the phrase 'reproductions on any medium' includes cloud computing, but Member States still have wide discretion on the compensation of rightsholders in relation to copying that is covered by the exception. This includes who pays and how the monies are collected. Additionally, case law has set out that <i>"...in principle, for the person carrying out private copying to make good the harm connected with that copying by financing the compensation that will be paid to the copyright holder"</i>, which in this case would be the users of the cloud storage systems.</div><div><br /></div><div>However, there are practical difficulties in identifying individual users and obliging them to pay any requisite fees, especially since the potential harm suffered may be minimal and may therefore not give rise to an obligation for payment, so Member States can impose a private copying levy to cover this more broadly. Even so, this will have an impact on both the users and the fees for the cloud storage services they may be purchasing, impacting the 'fair balance' requirement as set out in the Directive. This is left to the national courts and the Member States to ensure it is in place. </div><div><br /></div><div>The CJEU therefore concluded that the answer to the second question is that <i>"Article 5(2)(b)... must be interpreted as not precluding national legislation that has transposed the exception... and that does not make the providers of storage services in the context of cloud computing subject to the payment of fair compensation in respect of the unauthorised saving of copies of copyright-protected works by natural persons, who are users of those services, for private use and for ends that are neither directly nor indirectly commercial, in so far as that legislation provides for the payment of fair compensation to the rightholders"</i>. </div><div><br /></div><div>The decision gets cloud storage providers off the hook for any compensation that might be payable to rightsholders, and it is up to Member States to impose a levy, if any, for such copying by private individuals. This writer has never heard of such levies even being considered, and any such levies could deter innovation in this space due to the public's lack of desire for its implementation due to costs. If you are not a consumer of cloud storage services, you would undoubtedly not be happy to pay for them either. Nevertheless, this is the CJEU's proposed position which leaves the option very much on the table. </div>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-22396986186318640242022-03-15T09:30:00.004+00:002022-03-15T09:30:00.163+00:00Yet Another Rejection - US Copyright Office Rejects Registration of Copyright in AI Created Artwork<p>How works created by artificial intelligence, or AI, are treated by various jurisdictions has been a hot topic recently, including in this very blog (for example <a href="https://www.ipiustitia.com/2020/05/ai-cant-be-inventor-of-patents-uspto.html">here</a> and <a href="https://www.ipiustitia.com/2021/10/an-unusual-inventor-australian-federal.html">here</a>). It seems that, despite a briefly celebrated win in Australia, the technology is seeing setback after setback on whether AI-created works will be covered by IP and this seems more unlikely every day. The US Copyright Office was the latest blow in the battle for IP protection of AI-created works, which leaves the technology in a bit of a bind, however, it featured a familiar individual yet again. </p><p>The US Copyright Office's Review Board recently released <a href="https://www.copyright.gov/rulings-filings/review-board/docs/a-recent-entrance-to-paradise.pdf">a decision</a> on the copyright protection of a work, A Recent Entrance to Paradise, created by an AI program called Creativity Machine, developed by Steven Thaler. While the Creativity Machine was the author of the work, Mr Thaler was listed as the claimant alongside it as its owner. The work was autonomously created by the Creativity Machine, but Mr Thaler wanted to register the work as a work-for-hire to the owner of the program, himself. </p><p>The US Copyright Office initially rejected the registration of the copyright in the work in 2019 as it <i>"lacks the human authorship necessary to support a copyright claim"</i>, which Mr Thaler subsequently appealed this decision arguing that the <i>"human authorship requirement is unconstitutional and unsupported by either statute or case law"</i>. Despite this, the Copyright Office rejected the registration on the same basis as before and noted that Mr Thaler had not provided any evidence of sufficient creative input or intervention by a human author in the work and that the Copyright Office won't abandon its longstanding interpretation of this matter which is based on precedent from the courts, including the Supreme Court. </p><p>Being ever-persistent, Mr Thaler then yet again appealed, arguing in a familiar fashion that the Office’s human authorship requirement is unconstitutional and unsupported by case law. Mr Thaler also argued that there is a public policy piece to this where the Copyright Office 'should' register copyright in machine-created works because doing so would <i>"further the underlying goals of copyright law, including the constitutional rationale for copyright protection"</i>. Mr Thaler also again rejected the Copyright Office's assertions of supporting case law. </p><p>At the beginning of its decision, the Review Board accepted that the works were indeed created by AI without any creative contribution from a human actor. However, the Board noted that copyright only protects <i>"the fruits of intellectual labor that are founded in the creative powers of the [human] mind"</i>. Mr Thaler was therefore tasked with either proving that the work was created by a human, which it hadn't been, or somehow convincing the Board to depart from long-established precedent.</p><p>The Review Board then moved on to discussing the precedent relevant to the matter at hand. </p><p>Paragraph 306 of the <a href="https://www.copyright.gov/comp3/chap300/ch300-copyrightable-authorship.pdf">US Copyright Compendium</a> sets out that <i>"the Office will refuse to register a claim if it determines that a human being did not create the work"</i>. As such, human authorship is a prerequisite to copyright protection in the US. </p><p>Similarly, <a href="https://www.law.cornell.edu/uscode/text/17/102">17 USC 102(a)</a> affords copyright protection to <i>"original works of authorship"</i>, and, while the phrase is very broad in its definition, it still requires human authorship. This has been supported by US Supreme Court decisions in <a href="https://scholar.google.com/scholar_case?case=17794409671595926696">Burrow-Giles Lithographic Co. v Sarony</a> and <a href="https://scholar.google.com/scholar_case?case=11977251527545760686">Mazer v Stein</a> where the Supreme Court required human authorship for copyright protection. In addition to the highest court in the US, the lower courts have also followed these decisions. </p><p>Although the courts haven't directly decided on AI authorship in relation to copyright just yet, Mr Thaler has featured in a recent decision in the case of <a href="https://scholar.google.com/scholar_case?case=3185255616533083394">Thaler v Hirshfeld</a> (the very same individual as in this decision) where the court decided that, under the Patent Act, an ‘inventor’ must be a natural person and cannot be an AI. </p><p>The Board also discussed a recent report by the USPTO who discussed IP issues around AI. In this report, the USPTO noted that <i>"existing law does not permit a non-human to be an author [and] this should remain the law"</i>. </p><p>The Board also briefly touched on Mr Thaler's secondary argument, which was that AI can be an author under the law because the work-made-for-hire doctrine allows for non-human, artificial persons such as companies to be authors. The Board rejected this argument since the work was not made for hire. This was due to the requirement for such a work to be prepared by e.g. an employee or one or more parties who agree that the work is one for hire. No such agreement was in place between Mr Thaler and the Creativity Machine. Even outside of this, the doctrine merely addresses ownership and not copright protection, so human authorship is, yet again, required. </p><p>The Board, therefore, rejected the appeal and refused to register the work. </p><p>The decision by the Board is by no means surprising, as the status of AI-created works seems to be more and more established as the years go by as a no-go. While copyright protection could be possible in some jurisdictions, as discussed in the above blog articles in more detail, it seems highly unlikely to be possible in the US without legislative intervention. As AI develops the law will have to address this and potentially grant AI-creation some level of protection, however, this will take some time to come true. </p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-9094659884659252492022-01-11T09:28:00.000+00:002022-01-11T09:28:55.134+00:00Just in the Middle - CJEU Decides on Intermediary Liability for Copyright Infringing User Content<p>The issue of intermediary liability for copyright infringement has been a thorny issue in recent years, and the case involving YouTube (discussed more <a href="https://www.ipiustitia.com/2020/08/im-not-involved-ag-e-opines-on.html">here</a>) in this regard has been trundling through the EU courts for what feels like decades (exacerbated by the pandemic no doubt). However, the European courts have reached their decision last summer, giving some needed guidance on the matter and setting the scene for intermediary liability for the future. This writer is woefully behind the times in writing about this decision, but it does merit belated discussion and is a very important decision to keep in mind in relation to intermediaries.</p><p>The case of <a href="https://curia.europa.eu/juris/document/document.jsf?text=&docid=243241&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=3494125">Frank Peterson v Google LLC</a> (along with another case; Elsevier v Cyando) concerns Nemo Studio, a company owned by Mr Peterson who is a music producer. In 1996, Nemo Studio entered into a worldwide artist contract with Sarah Brightman covering the use of her audio and video recordings. Further agreements were entered into in the subsequent years, including one with Capitol Records for the exclusive distribution of Ms Brightman's recordings and performances. One of her albums, "A Winter Symphony", was released in 2008 along with an accompanying tour that year. The same year her album and private recordings from her tour were uploaded onto YouTube. Mr Peterson attempted to have the materials removed from the platform, including through cease-and-desist letters, and Google subsequently blocked access to the offending videos. However, even after this the content could be accessed on YouTube again, and Mr Peterson initiated legal proceedings against Google in Germany for copyright infringement, with the matter ultimately ending up with the CJEU.</p><p>The other combined case, very briefly put, dealt with at the same time involved Elsevier, an international specialist publisher and Cyando, a website where users could upload files for hosting and sharing. Users had uploaded copies of three works for which Elsevier owns the copyright onto the Cyando website, which were then shared on other websites via web links. Elsevier also brought legal proceedings against Cyando in Germany for copyright infringement, after which the CJEU combined both actions into one.</p><p>The first question posed to the court concerned <i>"…whether Article 3(1) of the <a href="https://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:32001L0029:en:HTML">Copyright Directive</a> must be interpreted as meaning that the operator of a video-sharing platform or a file-hosting and ‑sharing platform, on which users can illegally make protected content available to the public, itself makes a ‘communication to the public’ of that content"</i>.</p><p>As a primer, Article 3(1) provides the exclusive right to copyright holders to communicate their works to the public, which also gives them the right to prevent said communications by other parties without authorization. Additionally, what amounts to a 'communication to the public' includes all communication to the public not present at the place where the communication originates, so giving a very broad right to copyright holders. However, a balance has to be struck between the interests of the copyright holder and the interests and fundamental rights of users, in particular their freedom of expression and of information.</p><p>To dive a bit deeper into the meaning of the phrase 'communication to the public', this encompasses two specific criteria, namely: (i) an act of communication of a work; and (ii) the communication of that work to a public. </p><p>In terms of the first criterion, an online platform performs and 'act of communication' where <i>"…it intervenes, in full knowledge of the consequences of its action, to give its customers access to a protected work, particularly where, in the absence of that intervention, those customers would not, in principle, be able to enjoy the broadcast work"</i>. For the second criterion, a 'public' comprises <i>"…an indeterminate number of potential recipients and implies, moreover, a fairly large number of people"</i>.</p><p>Finally, in addition to the above criteria, the courts have determined that for an act to be a 'communication to the public' <i>"…a protected work must be communicated using specific technical means, different from those previously used or, failing that, to a ‘new public’, that is to say, to a public that was not already taken into account by the copyright holder when it authorised the initial communication of its work to the public"</i>. </p><p>One thing to note in the context of both YouTube and Cyando is that both platforms operate through user uploads, who act autonomously from the platform, decide whether the content will be publicly available and are responsible for their own actions. For file-hosting services, like Cyando, there is the additional requirement that the users have to share a link to the content for it to be accessed and/or downloaded, which is up to them to do. While the users might very well be doing an 'act of communication to the public', it remains unclear whether the intermediaries are doing the same through this.</p><p>The Court noted that the platforms play an indispensable part in making potentially illegal content available, but this is not the only criterion that you need to concern yourself with; the intervention of the platform needs to be deliberate and not just incidental. This means that the platforms have to intervene in full knowledge of the consequences of doing so, with the aim of giving the public access to protected works for there to be an infringement.</p><p>The Court highlighted that, in order to determine this, one has to <i>"…take into account all the factors characterising the situation at issue which make it possible to draw, directly or indirectly, conclusions as to whether or not its intervention in the illegal communication of that content was deliberate"</i>. These circumstances can include: <i>"...[i] the circumstance that such an operator, despite the fact that it knows or ought to know that users of its platform are making protected content available to the public illegally via its platform, refrains from putting in place the appropriate technological measures that can be expected from a reasonably diligent operator in its situation in order to counter credibly and effectively copyright infringements on that platform; and [ii] the circumstance that that operator participates in selecting protected content illegally communicated to the public, that it provides tools on its platform specifically intended for the illegal sharing of such content or that it knowingly promotes such sharing, which may be attested by the fact that that operator has adopted a financial model that encourages users of its platform illegally to communicate protected content to the public via that platform"</i>.</p><p>In short this means that platforms will have to take positive steps to prevent the sharing of infringing content. Mere knowledge that this is being done isn't sufficient to conclude that a platform intervenes with the purpose of giving internet users access to that content unless they have been specifically warned by rightsholders of this activity. Making a profit from this activity will also not, in itself, make a platform liable. </p><p>The Court summarized its answer to the question as: <i>"… Article 3(1)… must be interpreted as meaning that the operator of a video-sharing platform or a file-hosting and ‑sharing platform, on which users can illegally make protected content available to the public, does not make a ‘communication to the public’ of that content… unless it contributes, beyond merely making that platform available, to giving access to such content to the public in breach of copyright. That is the case, inter alia, where that operator has specific knowledge that protected content is available illegally on its platform and refrains from expeditiously deleting it or blocking access to it, or where that operator, despite the fact that it knows or ought to know, in a general sense, that users of its platform are making protected content available to the public illegally via its platform, refrains from putting in place the appropriate technological measures that can be expected from a reasonably diligent operator in its situation in order to counter credibly and effectively copyright infringements on that platform, or where that operator participates in selecting protected content illegally communicated to the public, provides tools on its platform specifically intended for the illegal sharing of such content or knowingly promotes such sharing, which may be attested by the fact that that operator has adopted a financial model that encourages users of its platform illegally to communicate protected content to the public via that platform"</i>.</p><p>The Court then turned to the second and third questions together, which it posed as asking: <i>"…whether Article 14(1) of the <a href="https://eur-lex.europa.eu/legal-content/EN/ALL/?uri=celex%3A32000L0031">Directive on Electronic Commerce</a> must be interpreted as meaning that the activity of the operator of a video‑sharing platform or a file-hosting and -sharing platform falls within the scope of that provision, to the extent that that activity covers content uploaded to its platform by platform users. If that is the case, that court wishes to know, in essence, whether Article 14(1)(a) of that directive must be interpreted as meaning that, for that operator to be excluded, under that provision, from the exemption from liability provided for in Article 14(1), it must have knowledge of specific illegal acts committed by its users relating to protected content that was uploaded to its platform"</i>. </p><p>Under Article 14(1) Member States have to ensure that service providers of information society services are not liable for the information stored at the request of the recipient of the services, i.e. users, provided that the provider does not have actual knowledge of illegal activity or information and, is not aware of facts or circumstances from which the illegal activity or information is apparent, or that the provider, upon obtaining such knowledge or awareness, acts expeditiously to remove the information or to disable access to it. What is key here is that the provider has to be an ‘intermediary service provider’, meaning one that they are <i>"…of a mere technical, automatic and passive nature, [i.e.] that service provider has neither knowledge of nor control over the information which is transmitted or stored"</i>.</p><p>The above assessment can be made considering Article 3(1), and if a provider contributes, beyond merely providing its platform, to giving the public access to protected content in breach of copyright, they won't be able to rely on the above exemption (but this isn't the sole determination on the exemption). Also, the technological measures that a provider takes to prevent copyright infringement, as discussed above, doesn't give the provider active knowledge of the infringing activity, and bring them outside the scope of Article 14(1). Knowledge or awareness, however, can be derived through internal investigations by the providers or through notifications by third parties.</p><p>Summarizing its position in relation to the questions the Court determined that <i>"…Article 14(1)… must be interpreted as meaning that the activity of the operator of a video-sharing platform or a file-hosting and -sharing platform falls within the scope of that provision, provided that that operator does not play an active role of such a kind as to give it knowledge of or control over the content uploaded to its platform"</i>. </p><p>The Court then moved on to the fourth question, which asked <i>"…whether Article 8(3) of the Copyright Directive must be interpreted as precluding a situation where the rightholder is not able to obtain an injunction against an intermediary whose services are used by a third party to infringe the rights of that rightholder unless that infringement has previously been notified to that intermediary and that infringement is repeated"</i>.</p><p>To put in simpler terms, the question asks if rightsholders are prevented from seeking an injunction against an intermediary if their services are used to infringe their rights, unless they have been notified of the infringement previously. </p><p>The Court considered that national courts have to be able to stop current and/or future infringements under the Article. The process and any requirements are up to Member States to determine (but must not interfere with other adjacent EU provisions), which includes a potential requirement of notification before an injunction can be granted. However, this isn't the case strictly under the relevant Article. </p><p>The Court did note that, pursuant to Article 15(1) of the E-Commerce Directive, Member States cannot impose a monitoring obligation on service providers over the data that they store. With that in mind, any obligation to monitor content in order to prevent any future infringement of intellectual property rights is incompatible with this Article.</p><p>In light of its considerations on the question, the Court summarized its position as: <i>"…Article 8(3) of the Copyright Directive must be interpreted as not precluding a situation under national law whereby a copyright holder or holder of a related right may not obtain an injunction against an intermediary whose service has been used by a third party to infringe his or her right, that intermediary having had no knowledge or awareness of that infringement, within the meaning of Article 14(1)(a) of the Directive on Electronic Commerce, unless, before court proceedings are commenced, that infringement has first been notified to that intermediary and the latter has failed to intervene expeditiously in order to remove the content in question or to block access to it and to ensure that such infringements do not recur. It is, however, for the national courts to satisfy themselves, when applying such a condition, that that condition does not result in the actual cessation of the infringement being delayed in such a way as to cause disproportionate damage to the rightholder"</i>.</p><p>The fifth and sixth questions were the only ones remaining, but the Court decided that they didn't need to be answered as the first and second questions were answered in the negative.</p><p>As is apparent, the case is a huge milestone for the regulation of intermediaries and copyright on the Internet. It sets fairly clear guidelines and expectations on service providers but seems to attempt to strike a proper balance with freedom of expression and the interests of service providers and rightsholders. This, however, is very much subject to change with the introduction of the <a href="https://eur-lex.europa.eu/eli/dir/2019/790/oj">Digital Copyright Directive</a>, which, under Article 17, now imposes an obligation on service providers to under threat of liability to make 'best efforts' to obtain authorization and act in a similar way when infringing content is present on their services. The case and the new Directive set the scene for service providers, who will have to stay on their toes with the prevalence of infringing content online these days.</p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-51094575270824540272021-10-18T09:52:00.001+01:002021-10-18T09:52:08.597+01:00An Unusual Inventor - Australian Federal Court Gives Green Light for AI Inventors of Patents<p>Having spoken about whether artificial intelligence could be deemed to be an inventor was something that was discussed <a href="https://www.ipiustitia.com/2020/05/ai-cant-be-inventor-of-patents-uspto.html">on this blog</a> over a year ago, with both the UK, the US and the EU, currently, not allowing for AI to be considered as an 'inventor' and therefore any inventions created by the AI would not be patentable. While this position seems to remain in those jurisdiction, an interesting development has emerged in Australia which seems to go counter to what the above jurisdictions have decided. </p><p>The case <a href="https://www.judgments.fedcourt.gov.au/judgments/Judgments/fca/single/2021/2021fca0879">Thaler v Commissioner of Patents</a> concerned a patent application for a patent by Stephen Thaler (application <a href="https://www.comcourts.gov.au/file/Federal/P/VID108/2021/actions">VID108/2021</a>) for a patent for two inventions, created by DABUS (Mr Thaler's AI system), for an improved beverage container and a flashing beacon to be used for emergencies. The case focused on whether the AI system could be an inventor under the <a href="https://www.legislation.gov.au/Details/C2019C00088">Patents Act 1990</a>. The Deputy Commissioner of Patents initially rejected the application as, in their view, the application didn't comply with specific requirements and that under s. 15 of the Patents Act an AI could not be treated as an inventor. Mr Thaler then sought a judicial review of the decision, which ended up in the Federal Court.</p><p>The Court first discussed the issue generally, noting that: (i) there is no specific provision in the Patents Act that expressly refutes the proposition that an artificial intelligence system can be an inventor; (ii) there is no specific aspect of patent law, unlike copyright law involving the requirement for a human author or the existence of moral rights, that would drive a construction of the Act as excluding non-human inventors; (iii) the word "inventor" has not been expressly defined and under its ordinary meaning it can include any 'agent' which invents, including AI; (iv) the definition of an "inventor" can be seen to potentially evolve and change with the times, potentially to include non-human authors; and (v) the object of the Act is to promote the economic wellbeing of the country, which should inform the construction of the Act. </p><p>To include AI as an inventor would, according to the Court, help in promoting innovation and the promotion of economic wellbeing in Australia. But the problem of who the ultimate legal owner of the rights still remains. This would indeed promote the objective of s. 2A of the Act, which sets out the object of the Act as discussed above. </p><p>The Court highlighted the need for a human applicant, on behalf of the AI system, for any inventions that these systems might come up with, who would then also have the rights to any patents granted for that AI system. </p><p>The Court also discussed the notion of the "inventive step" under s. 18 of the Act, which is a legal requirement for patentability. Both s. 18 and 7, which elaborates more on the meaning of the "inventive step", don't require an inventor per say, nor that such an inventor, if even required, would be legal person. The Court concluded that, for there to be an inventive step, a legal person isn't required as the inventor at all, even though the Act does refer to "mental acts" and "thoughts".</p><p>The Court then moved onto discussing the various dictionary definitions for what an "inventor" is. This was quickly dismissed as a grounds to limiting inventors to legal persons, as the Court noted that the definitions, as set out, have moved on from the historical meanings given to them and can't be limited in the same way. </p><p>The next issue was who the patent would be granted to under s. 15 of the Act (but focusing on still who could be classed as an "inventor"). The section includes four different classes of person to whom a patent can be granted. </p><p>The first is if the inventor is a person. The Court quickly determined that, as DABUS is not a person that the section won't apply in this instance, but also discussed that this does not demonstrate that the concept of a "person" would be different to that of an "inventor". An AI system could indeed be the inventor, but not able to be granted a patent as they don't fulfill the requirements of s. 15. </p><p>The second one is a person who would, on the grant of a patent for the invention, be entitled to have the patent assigned to them. This will be discussed in more detail following the other classes. </p><p>The third one is a person who derives title to the invention from the inventor or a person mentioned in the second class. Again, this will be discussed further in the context of the second class. </p><p>Finally, the fourth one is a person who is the legal representative of a deceased person in one of the earlier named classes, which, unsurprisingly, the Court determined to not apply here.</p><p>Returning to the question of the second and third classes, the Court first highlighted that Mr Thaler could indeed fall under the second class as the programmer and operator of DABUS, through which he could acquire title in any inventions that may be granted patents over. The title in the patent flows through to Mr Thaler automatically, so wouldn't require the assignment of any rights by the inventor (here DABUS) to Mr Thaler. Additionally, the Court determined that s. 15 doesn't require an inventor at all, but only requires that an applicant is entitled to have a patent assigned to them. </p><p>Also, Mr Thaler, according to the Court, would fall under the third class as he, on the face of it, he has derived title to the invention from DABUS. As the AI system cannot legally assign any inventions to Mr Thaler, however, the language of s. 15 does allow for one to derive rights in an invention even outside of legal assignment of those rights. All of Mr Thaler's rights in any invention become his by virtue of his ownership and operation of the inventor, DABUS. </p><p>The Court succinctly summarised the matter as <i>"generally, on a fair reading of ss. 15(1)(b) and 15(1)(c), a patent can be granted to a legal person for an invention with an artificial intelligence system or device as the inventor"</i>.</p><p>Ultimately what the case focused on is whether a valid patent application has been made, rather than who will own any patent that might be granted in the future. </p><p>What the Court determined was that <i>"...an inventor as recognised under the Act can be an artificial intelligence system or device. But such a non-human inventor can neither be an applicant for a patent nor a grantee of a patent"</i>. This still leaves the ownership of a patent in the air, but, focusing on what was discussed by the Court, it is more than likely that ownership in any AI inventions would automatically pass to the owner and operator of that AI system. </p><p>The Australian Court's approach to this question has hugely departed from the viewpoints of that of the US, UK and the EU, where AI systems have been rejected as potential inventors. It will be very interesting to see the law change and evolve in this in the years to come, in particular any decisions on the granting of a patent to the owner of an AI system, but so far at least Australia seems to be on the vanguard of allowing for AI systems to potentially push the envelope on innovation and to protect those innovations in the process. </p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-20292433119032946772021-08-10T09:30:00.001+01:002021-08-10T09:30:00.212+01:00Copying Not Allowed - Search Engines Copying Databases Infringes Database Rights If It Causes Financial Detriment, says CJEU<p>Following an earlier opinion from the Advocate General, the CJEU set out its findings on the infringement of database rights by search engines in the indexing of other websites' content. Discussed earlier <a href="https://www.ipiustitia.com/2021/02/thats-my-dataset-ag-szpunar-opines-on.html ">in this blog</a>, the decision is an important one to set the potential boundaries of database rights and indexing, especially when indexing is so ubiquitous in how the Internet as we know it functions. The decision will leave some rightsholders wanting more, as now the position swings firmly in the direction of the indexing websites.</p><p>The decision in <a href="https://curia.europa.eu/juris/document/document.jsf;jsessionid=FBDF051DBAB381E1576F385F115360DA?text=&docid=242039&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=12270767">CV-Online Latvia SIA v Melons SIA</a> concerned the website CV-Online, which included a database of job advertisements published by various employers. The website also included various metatags, or 'microdata', which, while not visible to the users of the website, contained key information to allow internet search engines to better identify the content of each page in order to index it correctly. These metatags included keywords like ‘job title’, ‘name of the undertaking’, ‘place of employment’, and ‘date of publication of the notice’.</p><p>Melons operate a separate website containing a search engine that specializes in job ads. The search engine allows users to search a number of websites containing job ads in one go according to specific criteria that they set. The Melons' website then produces results based on that search, where users can click on links that take them to that particular job website where the ad is located (including CV-Online). Unhappy about this indexing of their content, CV-Online took Melons to court for a breach of their 'sui generis' right under Article 7 of <a href="https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=celex%3A31996L0009">Directive 96/9</a>. The case progressed through the Latvian courts, ultimately ending up with the CJEU this Summer. </p><p>The CJEU was asked two questions, which the court decided together. </p><p>The question posed to the court asked: <i>"whether... the display, by a specialised search engine, of a hyperlink redirecting the user of that search engine to a website, provided by a third party, where the contents of a database concerning job advertisements can be consulted, falls within the definition of ‘re-utilisation’ in Article 7(2)... and... whether the information from the meta tags of that website displayed by that search engine is to be interpreted as falling within the definition of ‘extraction’ in Article 7(2)(a) of that directive"</i>.</p><p>The court first discussed 'sui generis' rights in general, which allow rightsholders to ensure the protection of a substantial investment in the obtaining, verification or presentation of the contents of a database. What is required for a database to be protectable is <i>"...qualitatively and/or quantitatively a substantial investment in the obtaining, verification or presentation of the contents of that database"</i>. Without that investment, the courts will not protect any databases under sui generis rights. The court assumed that this would be the case in terms of CV-Online, however, this matter would ultimately be decided by the local courts following the CJEU's decision. </p><p>For there to be an infringement of sui generis rights there has to be an ‘extraction’ and/or ‘re-utilisation’ within the meaning of Directive, which, as summarised by the court, includes <i>"...any act of appropriating and making available to the public, without the consent of the maker of the database, the results of his or her investment, thus depriving him or her of revenue which should have enabled him or her to redeem the cost of that investment"</i>. </p><p>The court discussed the applicability of the above to the operation of Melons' website and determined that such a search engine would indeed fall within the meaning of extraction and re-utilisation of those databases that the website copies its information from (including in indexing that content). However, this extraction/re-utilisation is only prohibited if it has the effect of depriving that person of income intended to enable him or her to redeem the cost of that investment. This is important since without this negative financial impact the copying will be allowed under EU law.</p><p>The court also highlighted that a balance needs to be struck between the legitimate interest of the makers of databases in being able to redeem their substantial investment and that of users and competitors of those makers in having access to the information contained in those databases and the possibility of creating innovative products based on that information. Content aggregators, such as Melons, are argued to add value to the information sector through their acts and allow for information to be better structured online, thus contributing to the smooth functioning of competition and to the transparency of offers and prices.</p><p>The referring court would therefore have to look at two issues: (i) whether the obtaining, verification or presentation of the contents of the database concerned attests to a substantial investment; and (ii) whether the extraction or re-utilisation in question constitutes a risk to the possibility of redeeming that investment.</p><p>The court finally summarised its position on the questions as <i>"...Article 7(1) and (2)... must be interpreted as meaning that an internet search engine specialising in searching the contents of databases, which copies and indexes the whole or a substantial part of a database freely accessible on the internet and then allows its users to search that database on its own website according to criteria relevant to its content, is ‘extracting’ and ‘re-utilising’ the content of that database within the meaning of that provision, which may be prohibited by the maker of such a database where those acts adversely affect its investment in the obtaining, verification or presentation of that content, namely that they constitute a risk to the possibility of redeeming that investment through the normal operation of the database in question, which it is for the referring court to verify"</i>.</p><p>The decision will, as said above, come as a big blow to database owners, as the added requirement of financial detriment will be a big hurdle for many to overcome in order to protect their databases from potential copying. The CJEU also notes the utility of indexing and the 'copying' of such databases by content aggregators as useful means of organizing the Internet, which leads to the question of where the limits actually are. It will remain to be seen how the decision will impact databases going forward, but one might imagine the more commercial value in a database the less likely the courts will allow copying of that database. </p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-79516728779712289142021-06-08T09:16:00.001+01:002021-06-08T09:16:40.817+01:00Broken Down and Built Again - AG Szpunar Opines Whether the Decompilation of Computer Programs Infringe Copyright<p>Hot off the heels of the recent decision in <a href="https://www.ipiustitia.com/2021/04/not-as-oracle-foretold-us-supreme-court.html">Oracle v Google</a>, copyright protection in computer programming is facing its latest hurdle, which is this time in the European courts. A big aspect of computer software management is the fixing of ever-present errors, be it due to the implementation of the software or the software in isolation. When you encounter such bugs you might have to decompile the program, which, to put simply, means to convert an executable computer program into source code, allowing you to fix errors and then to recompile the program to enable its execution. While decompiling can be used for more nefarious purposes (such as to enable the 'cracking' of protected software), it can allow for the fixing of legitimate issues in licensed copies of software. But, because of this potential nefarious way of using decompilation, would doing so breach copyright? Luckily the CJEU is on the case, but before the main court has looked at the issue Advovate General Szpunar gave his two cents a little while ago.</p><p>The case of <a href="https://curia.europa.eu/juris/document/document.jsf?text=&docid=238707&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=2140954">Top System SA v Belgian State</a> concerned a number of applications developed by Top Systems for the Belgian Selection Office of the Federal Authorities (also called SELOR), including SELOR Web Access and eRecruiting, which is in charge of the selection and orientation of future personnel for the authorities' various public services. Many of the applications developed by Top Systems contained tailor-made components according to SELOR's specifications. In February 2008 Top Systems and SELOR agreed on a set of agreements, one of which concerned the installation and configuration of a new development environment as well as the integration of the sources of SELOR’s applications into, and their migration to, that new environment. As with many projects, there were issues which affected the various applications. Following these problems Top Systems took SELOR (and the Belgian state) to court for copyright infringement due to the decompilation of Top Systems' software. After the usual progression of the matter through the Belgian courts the matter ultimately ended up with the CJEU, and also the desk of the AG. The referring court asked the CJEU two questions. </p><p>The first question asked <i>"...whether Article 5(1) of <a href="https://eur-lex.europa.eu/legal-content/EN/ALL/?uri=CELEX%3A31991L0250">Directive 91/250</a> permits a lawful acquirer of a computer program to decompile that program where such decompilation is necessary in order to correct errors affecting its functioning"</i>. </p><p>The AG first noted that, while computer programs have copyright protection over the reproduction of the program, it is limited due to the nature of how computer programs work (i.e. they need to be reproduced on a computers memory to operate). Strict enforcement would impede consumers' use of computer programs and therefore isn't desirable. The same applies to the protection against alteration. The Directive above does take account of this and sets out that reproduction and alteration of computer programs <i>"...do not require authorisation by the rightholder where they are necessary for the use of the program by the lawful acquirer, including for error correction"</i>. However, Article 5 does leave the possibility open to restrict these acts through contractual provisions. </p><p>Even with that being a possibility, the ability to contractually restrict the reproduction or alteration is there, this cannot extend to all such activities, as the acts of loading and running of a computer program necessary for that use may not be prohibited by contract. </p><p>The AG then moved onto the matter of decompilation for the purposes of correcting errors. He agreed with the submissions made by the interested parties in that decompilation is covered by the author's exclusive rights under the Directive, even though there is no express 'decompilation' provision there. </p><p><table cellpadding="0" cellspacing="0" class="tr-caption-container" style="float: left;"><tbody><tr><td style="text-align: center;"><a href="https://i.pinimg.com/originals/43/ea/ec/43eaecd74cb633890f333cb60b2f0bc9.gif" imageanchor="1" style="clear: left; margin-bottom: 1em; margin-left: auto; margin-right: auto;"><img border="0" data-original-height="432" data-original-width="600" height="230" src="https://i.pinimg.com/originals/43/ea/ec/43eaecd74cb633890f333cb60b2f0bc9.gif" width="320" /></a></td></tr><tr><td class="tr-caption" style="text-align: center;">Gary wanted to fix the software, but his hands were tied...</td></tr></tbody></table><br />Although argued by TopSystems, decompilation cannot be excluded from those rights under Article 6 according to the AG (which allows for reproduction and translation of a computer program if it is indispensable for the operation of the program with other programs). The relevant provision therefore remains at Article 5 and 6 will have no bearing on the exclusion of decompilation. Article 6 does not stand as the only instances where it is possible to decompile a computer program.</p><p>The AG therefore proposed that the first question be answered as <i>"... Article 5(1)... is to be interpreted as permitting a lawful acquirer of a computer program to decompile that program where that is necessary in order to correct errors affecting its functioning"</i>. </p><p>He then moved onto the second question which asked <i>"...in the event that Article 5(1)... were to be interpreted as permitting a lawful acquirer of a computer program to decompile that program where that is necessary in order to correct errors, that decompilation must satisfy the requirements laid down in Article 6 of that directive or, indeed, other requirements"</i>. </p><p>Article 6 sets out, as discussed above, the decompilation of a computer program where that is necessary in order to ensure the compatibility of another independently created program with the program. The AG discussed the specific requirements under Article 6, namely that: (i) they only apply to those who have lawfully acquired the program; (ii) the decompilation must be necessary in order for that program to be used in accordance with its intended purpose and for error correction; and (iii) the intervention of the user of the computer program must be necessary from the perspective of the objective pursued. </p><p>In relation to the second condition, the AG noted that an 'error' should be defined as <i>"...a malfunction which prevents the program from being used in accordance with its intended purpose"</i>. One has to note that this does not include the amendment and/or improvement of a program, but simply the enabling of the use of the program for its intended purpose. </p><p>On the third condition, the AG specified that, while the decompilation of a program can be necessary, it always isn't. He determined that <i>"...the lawful acquirer of a computer program is therefore entitled, under [Article 5(1)], to decompile the program to the extent necessary not only to correct an error stricto sensu, but also to locate that error and the part of the program that has to be amended"</i>. So, a lawful user can decompile a program to both fix and locate any errors, which gives them quite a wide berth in doing so. Nonetheless, the AG noted that the decompiled program cannot be used for other purposes. </p><p>The AG therefore proposed the answer to the second question as <i>"...Article 5(1)… is to be interpreted as meaning that the decompilation of a computer program... by a lawful acquirer, in order to correct errors in that program, is not subject to the requirements of Article 6 of that directive. However, such decompilation may be carried out only to the extent necessary for that correction and within the limits of the acquirer’s contractual obligations"</i>. </p><p>The CJEU's decision will be an interesting one and will undoubtedly impact the ability of programmers and companies to decompile computer programs to correct any errors they might find during the use of said programs. It would make sense to allow for their decompilation for this restricted purpose, since without that right major errors could render programs useless until the point when the provider can, and decides to fix those errors. It remains to be seen whether the CJEU will agree with the AG, but it would seem sensible for them to follow his responses. </p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-11614681696428520962021-04-13T09:13:00.000+01:002021-04-13T09:13:56.065+01:00Not as the Oracle Foretold - US Supreme Court Decides on Copyright Infringement in relation to APIs<p>APIs, or Application Programming Interfaces, are absolutely everywhere these days. APIs allow for two pieces of software to 'speak' with each other, sharing information across to allow for interactivity and interconnectivity between different software applications. While many providers share their APIs freely for implementation, there is still certain rights that attach to those APIs in the form of copyright over the code itself. Just like text in a book, code can be protected by copyright and, in many instances, is absolutely worth protection if a particular coding language becomes very popular. This has been the central focus of an epic legal battle between Oracle and Google in the US, which has spanned for nearly 10 years (discussed previously <a href="https://www.ipiustitia.com/2014/06/apis-protected-by-copyright-programmers.html">on this very blog</a>), and the highly anticipated US Supreme Court decision has finally been handed down in early April 2021. </p><p>The case of <a href="https://www.supremecourt.gov/opinions/20pdf/18-956_d18f.pdf">Google LLC v Oracle America Inc.</a> concerned the Java SE program, which uses Oracle's Java programming language. Parts of the Java SE program's code (roughly 11,500 lines of code) was used in the development of Google's Android operating system, which formed a part of the Java SE API. Java SE is commonly used to develop programs primarily to be used on desktop and laptop computers, which also extends into the realm of smartphones. Oracle subsequently sued Google for copyright infringement over this copied code, and the matter finally ended with the Supreme Court after a long 10-year journey through the US courts. </p><p>The Supreme Court were tasked at looking at two questions: (i) whether Java SE’s owner could copyright the portion that Google copied; and (ii) whether Google’s copying nonetheless constituted a “fair use” of that material. </p><p>Justice Breyer, handing down the majority's judgment, first started off discussing the basic requirements for copyright protection. This means that the work has to be one of authorship, original and fixed in a tangible medium. Copyright encompasses many types of works, such as literary, musical and architectural works, but in a more unconventional manner it includes 'computer programs', which are <i>"...a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result"</i>. In terms of limitations, copyright does not extend to <i>"...any idea procedure, process, system, method of operation, concept, principle, or discovery"</i>. In addition to copyright protection in general, one has to consider the remit of 'fair use', which allows for the use of copyright protected works for various purposes, e.g. criticism, satire and news reporting. </p><p>The first question, as set out above, concerned whether the provision extending copyright protection to 'computer programs' includes APIs and/or whether they are excluded as 'processes', 'systems' or 'methods of operation' from copyright protection. However, the Supreme Court skipped the copyright aspect of the matter and immediately dove into whether Google's use of the API was fair use.</p><p>Justice Breyer noted that computer programs differ from other 'literary works' in that such programs almost always serve functional purposes, which makes the application of copyright to them more difficult. He also mentioned that, in discussions to extend copyright to computer programs, it should not <i>"...grant anyone more economic power than is necessary to achieve the incentive to create"</i>. The key is to not allow copyright to stifle innovation in the realm of computer programs. </p><p>Justice Breyer also mentioned that fair use can be used to distinguish between expressive and functional features of computer code where those features are mixed, and allow for different programs to be more readily distinguished in the light of protection. </p><p>Turning to actually considering whether Google's copying fell into fair use, the Supreme Court had to look at the well-established factors of fair use: (i) the nature of the copyrighted work; (ii) the purpose and character of the use; (iii) the amount and substantiality of the portion used; and (iv) market effects. </p><p>In relation to the first factor, the Supreme Court discussed the use of APIs in general as a way for computer programs to speak to each other. APIs also comprise three different 'functional' aspects, which are various parts of code that handle different aspects of the APIs functionality. Justice Breyer highlighted that the parts are inherently functional and bound together by uncopyrightable ideas (i.e. task division and organization) and new creative expression in the form of Android's implementing code. In their view the nature of APIs diminishes the need for copyright protection over them.</p><p>In terms of the second factor, the focus is on the transformative nature of a copyright protected works use. Google sought to make new products using the API and to expand the usefulness of the Android OS - argued to be transformative and innovative around the copying of the API. The Supreme Court also noted that one has to consider both the commerciality and good faith in relation to the copying. Justice Breyer determined that, while Google's use of the API was a commercial endeavor, it doesn't mean that the use cannot be transformative. Good faith was not a consideration in the case, but Justice Breyer did highlight that the other factors on the copying of the API weight towards a finding of fair use. </p><p>The Court then moved onto looking at the amount of the work copied. As discussed above, Google copied approximately 11,500 lines of code, which was a mere fraction of the totality of 2.8 million lines in Java SE. While the amount is important, it's the substance of what was copied that is the most important part when thinking about substantiality. Why the lines were copied was to enable Java experienced programmers to work with Android; without which this would have been very difficult. This objective for the copying was to enable the expansion of Android, not to replace Java SE, and the Court did see that this favored a finding of fair use.</p><p>Finally, the Court turned to the market effects of the copying, i.e. did it impact the market value of the protected work. Thinking of the use of the code, it was in a market sector where Sun Microsystems (Oracle's predecessor) was not well-positioned, and the primary market for Java SE was PCs and laptops. Android used in smartphones was in no way a substitute for traditional computers where Java SE was typically used. However, the code's implementation did benefit Android through attracting developers to improve the OS. The Court saw that the copying didn't impact Sun Microsystem's position in the marketplace, and issues with an impact on creativity within the development of programs like Android, weighed for a finding of fair use. </p><p>Rounding things off, Justice Breyer discussed the application of copyright in the world of computers and the difficulties the old concept has in adapting to this new environment. In his view, copyright very much persists in computer programs (and their underlying code), but emphasized the fair use doctrine's place in the same. </p><p>The Supreme Court ultimately concluded that Google's copying was fair use as a matter of law and therefore there was no infringement of Oracle's code.</p><p>The case is a massive milestone in the application of copyright in computer programs and code, and as the court observed, Google only took <i>"...what was needed to allow users to put their accrued talents to work in a new and transformative program"</i>. This is curious and can open the door for others to copy code as and when needed, without licensing, if it is used to allow for innovation through the implementation of well-established technologies. Justice Thomas did indeed write a very strong dissent to the majority's verdict, which highlights the blurring of copyright in relation to code. It remains to be seen how this precedent is applied by the courts in future cases, but it could very well lead to the limits of fair use in relation to code being tested sooner than you think. </p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-48062285729503950272021-03-23T09:06:00.000+00:002021-03-23T09:06:01.040+00:00Removing the Frame - Circumvention of Technical Measures Stopping the Sharing of Copyright Works is Communication to the Public, says CJEUThe use of images online seems to be near a free-for-all, where content is copied, shared and viewed across websites and with very little consideration on IP issues. One such way is 'framing', where you showcase an image on your website through the original URL on the website where it was uploaded. This allows for you to share the image, but not copy it across, i.e. 'framing' it within your web page. The CJEU looked at this matter some 6 years ago <a href="https://www.ipiustitia.com/2015/01/framed-questions-ecj-takes-on-content.html">in BestWater</a>, however, the issue has now come back again for determination at the CJEU. This time around the question related to the restriction of framing on websites.<div><br /></div><div>The case of <a href="https://curia.europa.eu/juris/document/document.jsf?text=&docid=238661&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=92293">VG Bild-Kunst v Stiftung Preußischer Kulturbesitz</a> concerned a German digital library called "Deutsche Digitale Bibliothek", operated by SPK, which networks German cultural and scientific institutions. The website contains links to digitized content stored on the internet portals of participating institutions; however, many of these are stored as simple thumbnails on the site, which then lead to the page on that subject matter. VG asserted that the license agreement between the parties allowing for the use of its catalogue works in the thumbnails required that adequate security measures be put in place by SPK when using the images on the DDB website. SPK objected to this, considering it to not be a reasonable requirement, and sought declaratory relief to this effect in the German courts, requiring the granting of the license by VG without such a condition. After traveling through the German courts the matter ultimately ended up with the CJEU, who handed down their decision earlier this month.</div><div><br /></div><div>The CJEU summarized the question posed as <i>"...whether Article 3(1) of <a href="https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=celex%3A32001L0029">Directive 2001/29</a> must be interpreted as meaning that the embedding, by means of the technique of framing, in a third party website page of works that are protected by copyright and that are made freely accessible to the public with the authorisation of the copyright holder on another website, where that embedding circumvents protective measures against framing adopted or imposed by the copyright holder, constitutes a communication to the public within the meaning of that provision"</i>. </div><div><br /></div><div>Article 3 requires that EU Member States protect the exclusive rights given to copyright holders through national legislation, specifically in relation to communication to the public via wired or wireless means (i.e. the Internet). The focus for the CJEU was to decide whether the framing of the thumbnails on the DDB website is itself to be considered to be a communication to the public within the meaning of Article 3(1). </div><div><br /></div><div>The CJEU noted, as a primer, that a 'communication to the public' includes the transmission of works wirelessly via the Internet. Additionally, authorization of the inclusion of protected works in a communication to the public does not exhaust the right to authorize or prohibit other communications to the public of such works. As such, VG still retained the right to prevent any further communication it objected to. </div><div><br /></div><div>As has been discussed before, the actual 'communication to the public' of a work looks at two factors: (i) an ‘act of communication’ of a work; and (ii) the communication of that work to a ‘public’. </div><div><br /></div><div>Firstly, any act where a user, in full knowledge of the consequences of what he or she is doing, gives access to protected work is liable to constitute an act of communication. Secondly, for that act to be classed as a 'communication to the public', the protected work must be communicated to a public consisting of an indeterminate number of potential recipients. The communication itself has to be done using specific technical means different from those previously used, or to a new public, i.e. a public that was not already taken into account by the copyright holder when he or she authorized the initial communication. </div><div><br /></div><div>Following the consideration of the legal underpinnings of the matter, the CJEU turned to considering whether there had indeed been a communication to the public.</div><div><br /></div><div>The act of framing, according to the CJEU, at first blush does constitute a communication to the public; however, as set out in previous CJEU case law, provided that the technical means used by the technique of framing are the same as those previously used to communicate the protected work to the public on the original website (i.e. the Internet), the work is not communicated to 'the public' as it isn't communicated to a new public. Since the works were left freely available on the websites, with no technological means implemented to prevent sharing, a new public wasn't possible and they tacitly authorized the distribution of the works by third-parties. However, if a link has been added to a website allowing for the circumvention of any technological means implemented to stop the sharing of the content, this would be a communication to the public and therefore an infringement. </div><div><br /></div><div>Tying matters to the case at hand, the CJEU saw that <i>"...by adopting, or by obliging licensees to employ, technological measures limiting access to his or her works from websites other than that on which he or she has authorised communication to the public of such works, the copyright holder is to be deemed to have expressed his or her intention to attach qualifications to his or her authorisation to communicate those works to the public by means of the Internet, in order to confine the public for those works solely to the users of one particular website"</i>. If there then is sharing of those works, e.g. by framing, it would be communication to the public and an infringement (as that was not authorized by the copyright holder). </div><div><br /></div><div>Following further discussion, the CJEU concluded that <i>"...Article 3(1)... must be interpreted as meaning that the embedding, by means of the technique of framing, in a third party website page, of works that are protected by copyright and that are freely accessible to the public with the authorisation of the copyright holder on another website, where that embedding circumvents measures adopted or imposed by that copyright holder to provide protection from framing, constitutes a communication to the public within the meaning of that provision"</i>.</div><div><br /></div><div>The decision adds on to the already sizeable precedent pool on framing, and highlights that, if technical measures are employed to prevent the sharing of content beyond a specific website, the communication of that work would be an infringement of copyright. This makes sense, since the licensing, and subsequent protection, of works for use on a specific website would be pointless if that were rendered effectively void by allowing for the wanton sharing of that content. The case highlights the need for copyright holders to put in requirements for the implementation of measures to protect their rights so as to avoid implicit consent to the sharing of their works online. </div>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-8006390618778576522021-03-10T13:04:00.001+00:002021-03-10T13:04:41.661+00:00Non-Fungible Tokens (NFTs) are All the Rage - It Is Not Copyright and is Ripe for Misunderstanding and Misuse<p>Anyone who works in the sphere of intellectual property in the law will have come accustomed to misunderstandings in how various IP rights work, what they mean in real terms and how they can be utilized by both people and businesses. Recently I have come across a new world of "copyright" (even though it is not copyright in any form) that seems to be speculated over, which is Non-Fungible Tokens or NFTs that are used to sell "rights" in digital art. </p><p>For the uninitiated, NFTs are a part of the Ethereum cryptocurrency blockchain, allowing for the distribution and/or sale of unique (i.e. non-fungible) tokens that are separate from the cryptocurrency itself. NFTs themselves can be anything that is digital, and identified as unique through the token (proving that the piece is indeed the original), and can be sold much like a physical piece of art, but in the digital world. What has made things surprising to this writer is the misunderstanding and mixing up of NFTs with copyright, so it might be worth discussing the differences between these and the implications of copyright on the sale of NFTs. </p><p>As a brief primer, copyright is an IP rights that protects the expression of ideas, but not the ideas themselves. This means that you will have copyright in e.g. a piece of art you draw, a photo you take or a video you create, and can utilize copyright to prevent others from copying that work. This also enables the licensing of these rights to others, allowing them to copy the works under the terms of the license; however, copyright does not really impact the sale of a physical item such as a painting. Often the latter point leads to confusion as to the application of copyright to the sale of works, but it undoubtedly will impact the sale of digital copies of works. </p><p>The potential problem with how NFTs are portrayed seems to equate them to the world of copyright, meaning the NFT gives you some sort of rights over the digital art you've purchased the token for. In fact, this is not the case, since NFTs don't give anyone any rights over the digital art, but simply act as provenance to the fact that you "own" the original digital piece. Even though you "own" the art, the ultimate copyright holder retains the rights over the distribution of the art piece. </p><p>With that in mind, do you actually own anything? Yes and no. You own the 'receipt' for the digital art piece in the form of the NFT, but this doesn't give you any further rights, especially under copyright. The artist keeps those rights unless they sell it to you along with the NFT (and in most instances they will not do so). </p><p>One issue that can be overlooked here is individuals or companies could conceivably claim an NFT on works that are not their own and take away monetary gains from artists who don't know, or haven't cared to, do so themselves. This could then lead to a wider sharing of works through these "authenticated" copies that negatively impacts the artist, including the aforementioned monetary loss through a missed opportunity to sell a genuine NFT to your works. Artists will have claims under copyright to challenge the sale of any NFTs (and the potential distribution of their works). </p><p>It seems that NFTs are riding the craze of cryptocurrency, and one should be careful and understand what NFTs actually mean in terms of ownership, and what implications there are in the light of copyright. There will be issues that artists, sellers and purchasers will have to keep in mind, and while it might be cool to "own" a 'signed' copy of a piece of digital art when you buy an NFT, its limits are simply that; it's a way to prove that you have potentially purchased the genuine article, but that's it. </p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-1234350961780711452021-02-24T09:17:00.000+00:002021-02-24T09:17:02.579+00:00That's my Dataset! - AG Szpunar Opines on Whether Search Engines' Indexing can Infringe Database Rights<p>In the age of big data databases can be worth their weight (or in reality, lack thereof) in gold, since the compilation of those databases can take years and cost tremendous amounts of money. As such, databases are afforded special protection through database rights (i.e sui generis rights). These rights don't always pop up in the courts, but when they do, it's worth taking note, since the infringement of these rights can be deceptively simple, at least on the face of things. As a part of the functioning of the Internet as we know it today, search engines like Google index the websites that allow for it to do so, which in effect adds them to the collective directory of that search engine (and accessible to those searching for it). This indexing will affect all websites and sub-pages that are allowed to be indexed, but could that indexing infringe database rights if done so? As luck would have it the CJEU is slated to decide this matter in the near future, but Advocate General Szpunar has given his opinion on the matter ahead of this decision. </p><p>The case of <a href="http://curia.europa.eu/juris/document/document.jsf?text=&docid=236430&pageIndex=0&doclang=EN">SIA ‘CV-Online Latvia’ v SIA ‘Melons’</a> concerns the website 'CV.lv', operated by CV-Online, which includes a database containing notices of jobs published by employers. The website also uses meta tags, allowing for the easier identification of content on each of the site's pages for indexing purposes. The meta tags contain typical information like the name of the job being advertised, place of employment and the date when the ad was posted. </p><p>SIA Melons operates a website called 'KurDarbs.lv', which is a search engine specialising in notices of employment, allowing for several websites posting these notices to be searched on it. The site then refers to the people searching to the websites where the information was found in via hyperlinks (including to the site operated by CV-Online). The meta tags inserted by CV-Online on its website are also displayed in the list of results obtained when SIA Melons’ website is used. </p><p>CV-Online subsequently brought proceedings against SIA Melons for the breach of its sui generis database rights, alleging that it copies substantial parts of the contents of the database on the CV-Online website. Following decisions in the Latvian courts the case ultimately landed on the CJEU's desk, with the Advocate General giving its opinion before the decision.</p><p>The AG first discussed the basics of database rights set out in Article 1 of <a href="https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=celex%3A31996L0009">Directive 96/9</a>. The article sets out databases as <i>"...a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means"</i>. The 'independent works' discussed should be ones that are <i>"...separable from one another without their informative, literary, artistic, musical or other value being affected"</i>, or in other words, they need to have autonomous informative value. The database itself has to include <i>"...technical means such as electronic, electromagnetic or electro-optical processes... or other means... to allow the retrieval of any independent material contained within it"</i>. </p><p>In addition to the above there has to have been <i>"...qualitatively and/or qualitatively a substantial investment in either the obtaining, verification or presentation of the contents of that database"</i>.</p><p>Following on from this the AG quickly set out that the job ads contained in the database were indeed units of information which has autonomous informative value which are separable from the other ads in the same database. The only question that remained therefore was whether CV-Online had made a substantial investment in creating its database. </p><p>Discussing the actual wording of the two questions referred to the court the AG considered that they should be reworded and considered together, namely whether <i>"...under Article 7(1) and (2)... the maker of a database that is freely accessible on the internet is entitled to prevent the use of that database by an internet search engine that specialises in searching the contents of databases"</i>. </p><p>According to the AG, after the reformulation of the questions the case at hand resembles the decision in <a href="http://curia.europa.eu/juris/document/document.jsf?text=&docid=145914&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=6000215">Innoweb BV v Wegener ICT Media BV</a>, in which the CJEU held that where the operator of a meta search engine reutilised the whole or a substantial part of the contents of a database constituted by the website on which that meta search engine allowed searches to be carried out. The use of a meta search engine allowed users to access the whole database through those searches other than intended by the marker (and breached the database rights as a result). </p><p>Looking at whether Melons' website acts as a meta search engine, as in Innoweb, the AG concluded that this is irrelevant, as this is not a requirement for a potential infringement of database rights. He concluded that <i>"...a search engine that copies and indexes the whole or a substantial part of databases which are freely accessible on the internet and then allows its users to carry out searches in those databases according to criteria that are relevant from the aspect of their contents effects an extraction and a reutilisation of those contents"</i>. </p><p>However, even with this mind we have to have a balance of allowing for the indexing (and therefore searching) of the Internet, while protecting against 'parasitic' services utilizing databases they didn't create. Keeping this in mind the AG thought that national courts should verify not only whether the extraction or reutilization of the whole or a substantial part of the contents of a database and whether a substantial investment has been made into the database, but also whether the reutilization or extraction prevents the recouping of that investment. If the latter is the case, the database should be protected. </p><p>Furthermore, national courts should consider the protection of competition within the marketplace. This is to prevent the use of database rights to prevent legitimate competition within the EU, essentially through the abuse of a dominant position through the ownership of key information through database rights. If the reutilization of that information, e.g. such as what Melons has done, does not negatively impact the business of the database rights owner, the courts should allow for the reutilization to allow for fair competition. Thinking about these issues will effectively limit the rights of the database maker, provided there is no or limited impact on the recouping of their investment. </p><p>Ultimately the AG answered the two questions as follows, namely that Article 7(1) and (2) must be interpreted as meaning:</p><p></p><blockquote><p>(i) a search engine which copies and indexes the whole or a substantial part of the contents of databases which are freely accessible on the internet and then allows its users to carry out searches in those databases according to criteria that are relevant from the aspect of their contents effects an extraction and a reutilisation of those contents within the meaning of that provision; and</p><p>(ii) the maker of a database is entitled to prevent the extraction or the reutilisation of the whole or a substantial part of the contents of that database only on condition that such extraction or reutilisation adversely affects its investment in obtaining, verifying or presenting those contents, that is to say, that it constitutes a risk for the possibilities of recouping that investment by the normal exploitation of the database in question, which it is for the referring court to ascertain.</p></blockquote><p></p><p>But one must still keep in mind that this must not result in the abuse of a dominant position under Article 102 TFEU. </p><p>The opinion is an important one in the light of how the Internet functions and sets clear guidelines on how the CJEU should answer the questions posed in this case. The ultimate decision by the CJEU could impact the operation of search engines tremendously if it creates very stringent requirements for the indexing of data, but this writer hopes that certain limits are put while respecting the functionality of the Internet. Provided no, or little, damage is done to the original website's recoupment of its investment, indexing should be rightfully allowed. </p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-62877832920966429532021-02-18T09:19:00.002+00:002021-02-18T09:19:36.911+00:00It’s a Sword! It’s a Shield! It’s Res Judicata! - The dilemma of patent validity in South Africa<p>We're really grateful for the extremely comprehensive article below on a very important case in South Africa, which was brilliantly written by Sfiso Nxumalo. He is a South African lawyer, currently reading for the Bachelor of Civil Law degree at the University of Oxford. He worked at Bowmans as a candidate attorney, and also worked as a law clerk at the South African Constitutional Court before reading for the BCL. You can find his LinkedIn profile <a href="https://www.linkedin.com/in/sfiso-benard-nxumalo- 58ba54b1/">here</a>. </p><p><b>Introduction</b></p><p>On 9 May 2019, the South African Constitutional Court, the highest appellate court in South Africa, heard its first ever patent litigation case in <a href="http://www.saflii.org/za/cases/ZACC/2019/41.html"><i>Ascendis Animal Health (Pty) Limited v Merck Sharpe Dohme Corporation</i></a>. The case required the Constitutional Court to interpret the South African <a href="http://www.cipc.co.za/files/9513/9452/7965/Patent_Act.pdf">Patent Act 57 of 1978</a> and decide the correct approach to proceedings concerning the (in)validity of patents. </p><p>The legal issue before the Constitutional Court was significant, namely: are the different grounds of challenging the validity of a patent separate and distinct causes of action or are they one cause of action. In addressing this issue, the Court also had to consider whether the bifurcated nature of the patent litigation affected the main issue. More precisely, does it matter if the challenge of (in)validity of patents is raised in patent revocation proceedings (as a ‘sword’) or in patent infringement proceedings (as a ‘shield’)? </p><p>Unfortunately, the Court was evenly split in its decision (usually 11 justices sit on the bench – but the Court had one justice missing due to other judicial commitments). Thus, the first patent case to be heard by the apex Court of South Africa is of very little jurisprudential value. However, the want of jurisprudential value should not stop us from engaging some of the key issues in the case. </p><p><b>Facts</b></p><p>In June 2011, Ascendis Animal Health (Pty) Limited (the applicant) initiated revocation proceedings against Merck Sharp Dohme Corporation and Merial Limited (the respondents) for the annulment and repeal of the Patent 1998/10975 (the patent) in terms of section 61(1) of the Patents Act 57 of 1978 (the Act) because the invention was not patentable under section 25 of the Act as the invention was not new and it lacked an inventive step. These were the revocation proceedings. </p><p>While the revocation proceedings were taking place, the respondents in October 2011 instituted proceedings against the applicant for infringing the patent. The respondents argued that, since August 2011, the applicant had made, sold, used, offered for sale and/or imported an anti-parasitic formulation under the trademark entitled Ivermax LA Platinum and had infringed the patent. This was the infringement action. </p><p>The infringement action was stayed awaiting the conclusion of the revocation proceedings. The applicant challenged the patent exclusively on the ground of novelty. At first instance, the Commissioner of Patents found in favour of the applicant and revoked the patent for its lack of novelty. </p><p>On appeal the Supreme Court of Appeal overturned the decision of the Commissioner of Patents and found in favour of the respondents. After this decision, the applicant sought to amend its plea in the infringement action, to remove the defence of novelty (since it lost this case in the revocation proceedings) and sought to include an additional defence – inutility. In response, the respondents sought to amend their pleadings in the same proceedings and argue that all the defences by the respondent were res judicata (already decided by a court) since the question of the validity of the patent had been definitively decided and upheld by the Supreme Court of Appeal.</p><p>In hearing the infringement action, the Commissioner of Patents granted the respondents’ amendment and held that the grounds on which an applicant may rely on to attack the validity of a patent are not separate causes of action. It held that the applicant had effectively abandoned the obviousness claim as a basis of invalidity in the revocation proceedings and that it had not formally elected to reserve the right to rely on a separate cause of action. This is the decision the applicants subsequently appealed to the highest court. </p><p><b>The Constitutional Court’s decision</b></p><p>Five justices of the Court in a judgment penned by Justice Khampepe upheld the appeal and ordered that the parties’ pleadings should be allowed to be amended. The other five justices in a judgment penned by Justice Cameron, held that they would dismiss the appeal. The effect of this is that there is no majority decision and the decision of the Commissioner of Patents stands. The issues are discussed in more detail below.</p><p><i>(i) Are the grounds of challenging the validity of the patent single or distinct and separate causes of action</i></p><p>Justice Khampepe held that the grounds on which a patent may be challenged under section 61 of the Act (such as novelty, utility and obviousness) are concrete, distinct and separate causes of action. She opined that a cause of action comprises every fact that would be necessary for the plaintiff to prove in order to support his right to judgment of the Court. A cause of action, she emphasised, comprises facta probanda (the facts required to be proved) as opposed to the facta probantia (the facts by means of which they are proved, i.e. particulars or evidence). She then strongly reasoned that each ground of revocation are separate, distinct and independent causes of action because the facta probanda that need to be proven for each ground are markedly different. She then explained that although the legal conclusion that results from claims of either novelty, obviousness or inutility may be the same (i.e. the finding of a patent’s invalidity), it does not mean that they all represent a single cause of action. The facts required to prove a claim of novelty, inutility and obviousness are disparate as the elements constituting each ground are dissimilar. </p><p>A compelling point is raised by Justice Khampepe when she reminds us that South Africa is a non-examination state, i.e. the state does not check whether an invention is novel before it is registered as a patent. As a result, South Africa relies on private parties to challenge the artificial monopolies created by way of registering a patent.</p><p>In the opposing judgment, Justice Cameron held that the default position should be that a previously unsuccessful patent validity claim should bar an applicant from raising the validity of the patent as a defence in an infringement action. He posited that the question is essentially the validity of the patent and this was definitively decided by the Supreme Court of Appeal and thus the matter was res judicata or is barred by issue estoppel. In his opinion, all the grounds constituted a single cause of action. </p><p>While Justice Cameron’s argument that there is a need to stabilise our patent litigation system is attractive, it does not overcome Justice Khampepe’s reminder that South Africa relies on private parties to litigate the validity of patents. If the state relies on private parties to litigate, such parties should not be subjected to burdensome procedural requirements seeing that their litigation, while it may be driven by profit, benefits the public. Of greater consequence, allowing parties to challenge patents ensures competition in key industries and thus benefits the larger public. This does not mean that piecemeal litigation should be permitted and encouraged. In this author’s opinion the different grounds of validity claims are separate causes of actions and parties should bring as many claims known to them at the time of instituting proceedings. Should they later bring another ground, it should not be barred based on res judicata or issue estoppel. To my mind, this is a lesser evil, compared to a complete bar, which would mean that parties have one shot at challenging a patent, and should they fail, the patent holder gains a product monopoly. Justice Cameron’s conclusion is striking because it seems to go further than just bar the litigant party. He seems to suggest that res judicata could be relaxed even regarding different parties litigating over the same ‘issue’. </p><p><i>(ii) Are the defences raised in the infringement action res judicata</i></p><p>On this issue, Justice Khampepe held that the defences were not res judicata. She described the scheme of the Act in great detail and she then distinguished between revocation proceedings and infringement actions. Justice Khampepe considered that, in revocation proceedings, evidence is provided by way of affidavit, whereas in an infringement action, evidence is given orally. In addition, the remedies available in these proceedings are different – revocation proceedings remove the patent from the register of patents, thus making it a remedy in rem (against a thing); whereas an invalidity defence in an infringement action does not remove the patent from the register but simply renders it unenforceable against the person challenging it, thus making it a remedy in personam (against a person). She then found that ‘the findings in the revocation proceedings have a final effect on the infringement action for causes which have not actually been adjudicated upon in revocation proceedings.’ In other words, in revocation proceedings the grounds of patent validity are a sword; and in infringement actions such grounds are a shield. And in her view this matters because it would lead to the dual proceedings being nugatory and of no effect because a finding on the revocation proceedings could be carried over to the infringement action.</p><p>In plain terms, Justice Cameron argued that the dispute is essentially about the validity of the patent. Once a court of appeal has ruled on the validity of a patent, the applicant is estopped from bringing the same issue of patent validity (regardless of the ground) in the infringement proceedings. He opined that same cause of action can be interpreted widely to include the same issue (the issue being the validity of the patent). </p><p>Again, Justice Khampepe’s incisive approach is appealing. There seems to be stark differences between the two proceedings. In this author’s view, a statutory basis for the differences indicate that the legislature intended for them to be serve different functions (i.e. a sword and shield). The applicant of course will be barred from raising the same grounds that have been decided before in revocation proceedings. In my mind, requiring parties to bring all their claims at the in one suit might have adverse effects on the patent litigation going forward.</p><p><b>Conclusion</b></p><p>No patent litigation regime is without disadvantages, and the law should be applied with a purposive approach that serves the (national) objectives of patents. While there was no binding decision by the Constitutional Court, its importance lies in its detailed discussion of the South African patent system. </p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com2tag:blogger.com,1999:blog-3893874585818636008.post-66392899182067934712020-11-27T09:19:00.001+00:002022-08-12T16:31:42.852+01:00It's Just a Part of the Process - The Disclosure of Copyright Protected Materials Is Not Communication to the PublicAny 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. <div><br /></div><div>The case of <a href="http://curia.europa.eu/juris/document/document.jsf?text=&docid=233005&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=14987230">BY v CX</a> 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. </div><div><br /></div><div>The Court considered the four questions submitted to it together, which asked <i>"...whether Article 3(1) of <a href="https://eur-lex.europa.eu/legal-content/EN/TXT/HTML/?uri=CELEX:32001L0029&from=EN">Directive 2001/29</a> 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"</i>.</div><div><br /></div><div>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.</div><div><br /></div><div>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.</div><div><br /></div><div>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. </div><div><br /></div><div>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'. </div><div><br /></div><div>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. </div><div><br /></div><div>The CJEU therefore decided that: <i>"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"</i>.</div><div><br /></div><div>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.</div>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-42781973020971594912020-10-05T08:57:00.001+01:002020-10-05T08:57:15.467+01:00An Emotional Case - Can Sherlock Holmes Exhibiting More Emotions be Copyright Infringement?<p> 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, <a href="https://www.ipiustitia.com/2013/10/elementary-dear-watson-sherlock-holmes.html">here</a> and <a href="https://www.ipiustitia.com/2014/01/sherlock-holmes-is-in-public-domain-at.html">here</a>). 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. </p><p>According to numerous news outlets the estate of Sir Arthur Conan Doyle <a href="https://www.theverge.com/2020/6/25/21302942/netflix-enola-holmes-sherlock-arthur-conan-doyle-estate-lawsuit-copyright-infringement#:~:text=The%20estate%20of%20Sir%20Arthur,respecting%20women%20violates%20Doyle's%20copyright.&text=Details%20from%2010%20stories%2C%20however,still%20owned%20by%20Doyle's%20estate.">has sued</a> 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. </p><p>In <a href="https://www.documentcloud.org/documents/6956021-Sherlock.html">their complaint</a> 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. </p>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. <p></p><p>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. </p><p>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. </p><p>Although the courts have acknowledged in <a href="https://scholar.google.com/scholar_case?case=16324874357219278010">Klinger v Conan Doyle Estate</a> 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. </p><p>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.</p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0tag:blogger.com,1999:blog-3893874585818636008.post-1303845305981007272020-08-26T09:00:00.000+01:002020-08-26T09:00:34.586+01:00A Swirl of Personality - Can You Have Copyright in a Fingerprint in the US?<p>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 <a href="https://www.nationalacademies.org/news/2009/02/badly-fragmented-forensic-science-system-needs-overhaul-evidence-to-support-reliability-of-many-techniques-is-lacking">some truth to this notion</a>, 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. </p><p>The decision in <a href="https://www.copyright.gov/rulings-filings/review-board/docs/equilibrium.pdf">Re Equilibrium</a> 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. </p><p>The matter concerned whether the works could be deemed as original works. This means that they have to be an <i>"...original work of authorship fixed in any tangible medium of expression"</i>, 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. </p><p>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. </p>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. <p></p><p>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. </p><p>The Copyright Office therefore rejected Mr Dhaliwal's application for registration of the copyright in the above works. </p><p>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. </p>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com1tag:blogger.com,1999:blog-3893874585818636008.post-87202768150264816612020-08-20T09:21:00.000+01:002020-08-20T09:21:52.254+01:00I'm Not Involved! - AG Øe Opines on the Liability of Intermediaries in Copyright Infringement by Communication to the Public<div>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. </div><div><br /></div><div>The case of <a href="http://curia.europa.eu/juris/document/document.jsf;jsessionid=D7B6BF228B04AF960204959C7C9D2E70?text=&docid=228712&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=10334475">Frank Peterson v Google LLC</a> 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.</div><div><br /></div><div>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. </div><div><br /></div><div>The first question asked whether<i> "...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 <a href="https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=celex%3A32001L0029">Directive 2001/29</a> when a user of their platforms uploads a protected work there"</i>. </div><div><br /></div><div>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 <i>"...transmits a work and thus makes it perceptible at a distance"</i> - 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 <i>"...an ‘indeterminate’ and ‘fairly large’ number of persons"</i>, including the general public that can access a website. </div><div><br /></div><div>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.</div><div><br /></div><div>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. </div><div><br /></div><div>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.</div><div><br /></div><div>He ultimately suggested that the answer to the first question is <i>"...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"</i>. </div><div><br /></div><div>The AG then moved onto the second question, which asked <i>"...whether operators such as YouTube and Cyando can benefit from Article 14(1) of <a href="https://eur-lex.europa.eu/legal-content/EN/TXT/HTML/?uri=CELEX:32000L0031&from=EN">Directive 2000/31</a> with regard to the files that they store at the request of users of their platforms"</i>. </div><div><br /></div><div>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. </div><div><br /></div><div>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. </div><div><br /></div><div>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. </div><div><br /></div><div>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: <i>"...a service provider is obliged diligently to process facts and circumstances brought to its knowledge, in particular by notifications, concerning specific illegal information"</i>. They are, however, in no way obligated to actively search for infringing materials before notification. </div><div><br /></div><div>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. </div><div><br /></div><div>In short, the AG noted that <i>"...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"</i>.</div><div><br /></div><div>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). </div><div><br /></div><div>After some discussion in relation to German legal concepts in terms of conditions, the AG determined that this is possible <i>"...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"</i>. 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. </div><div><br /></div><div> The AG summarized his position in relation to question four as <i>"...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"</i>.</div><div><br /></div><div>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. </div><div><br /></div><div>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. </div>Jani Ihalainenhttp://www.blogger.com/profile/17598782543339966806noreply@blogger.com0