A Host of Problems - US Court of Appeals Decides on Copyright and Hosting User Uploaded Content

This writer fondly remembers the early days of the Internet when it felt like a totally lawless, open and free space where users could do whatever they wished with whatever they wanted. As the Internet has become more ubiquitous and 'corporate' this had to be reined in, and legislation has slowly caught up to how people use the Internet. One still meddling piece that the legislature and the courts have struggled with is user-uploaded content, where the service provider merely provides the platform for uploading content (infringing or not), and does not actively do it itself. With this in mind, where do you draw the line between freedom and intermediary liability when it comes to user-uploaded content? The US Court of Appeals recently issued an important decision trying to take on this issue.

The case of VHT Inc. v Zillow Group Inc. concerned Zillow, an online marketplace for real estate. VHT is a photography company who take professional pictures of houses and apartments that are then used to illustrate the location for sale to prospective buyers. VHT saves these pictures onto a centralized database, where they are given to clients under a license, which Zillow receives from various real estate related sources. VHT subsequently sued Zillow for copyright infringement for its use of VHT's pictures in its "Listing Platform" and "Digs" pages, exceeding the scope of the licenses issued to VHT's customers.

The first aspect of the case dealt with direct infringement, particularly in the context of Zillow's automated systems. While ownership in the copyright of the works can be easily established, infringement requires direction causation, i.e. volitional conduct. What this means is that "...'direct liability must be premised on conduct that can reasonably be described as the direct cause of the infringement'". What remains key here is who the ultimate selector of the content is; Zillow or the end-user. In order for Zillow to have liability VHT would have to "...show [the alleged infringer] exercised control (other than by general operation of [its website]); selected any material for upload, download, transmission, or storage; or instigated any copying, storage, or distribution" of its photos".

Zillow's systems operate on licensed feeds provided by external third parties, and the providers guarantee those licenses are up to date and authorized. The Court considered that this automated system didn't involve any volitional conduct on part of Zillow, not supporting an argument of direct infringement. This and the various rules within Zillow's systems protected it from direct infringement. Even when notices were filed on behalf of VHT, Zillow acted promptly and removed any infringing images. Overall the Court, therefore, rejected VHT's argument of direct infringement.

Even with this in mind, the jury at first instance did, however, find that Zillow's Digs service did infringe directly on VHT's rights. In considering the evidence issued to the jury, the Court overturned the jury verdict of direct infringement, as VHT had not presented substantial evidence of infringement.

The Court then turned to the matter of fair use in relation to the Digs service. As a short primer, fair use allows for the use of copyright-protected works under certain situations. This is assessed looking at four specific factors: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. In short, the user would have to do something different with the work, and the more it deviates from the original the more likely it is that fair use applies (in essence), i.e. whether it is 'transformative' or not.

How Digs operated was much like a search engine, allowing users to search for photos of apartments in specific styles or configurations. Recent case law has considered search engines to typically be transformative, but that is by no means a panacea to a claim of infringement.

In assessing the Digs service's features in relation to the first factor, the Court considered that it was not a transformative use, since, while the service tagged the photos and organized them, their intended use and nature remained the same; to display space in an apartment in an artful manner. The images didn't serve a different function from what VHT had intended them for.

In terms of the second factor, the Court quickly concluded that the creativity of the photos is critical to their nature, and therefore potentially deserve a higher degree of protection. While this is true, the fact that the photos were published on the listing platform for Zillow to use did work against them in a finding of non-fair use.

For the third and fourth categories, Zillow copied the entire images, which turned the third factor against them. As they were copied in their entirety, they had a direct impact on VHT's market for licensing photos, including to Zillow. The Court, therefore, rejected Zillow's argument of fair use.

The Court then moved onto secondary liability, which can be established if "...a party (1) has knowledge of another's infringement and (2) either (a) materially contributes to or (b) induces that infringement". A material contribution to infringement would require "...actual knowledge that specific infringing material is available using its system, and can take simple measures to prevent further damage to copyrighted works, yet continues to provide access to infringing works".

Most of Zillow's activities around the works were purely passive. Any evidence adduced in relation to those activities would not, according to the Court, fulfill the requirements for the second prong (even with knowledge of infringing materials). VHT argued that Zillow needed to take proactive steps to prevent infringement, including requesting the URLs of infringing works, which the Court promptly rejected. In the end, the Court considered that no jury would be convinced of secondary liability. In equal mesure, the Court rejected VHT's argument on vicarious liability.

The case is a very interesting one, and yet again demonstrates the difficult position internet services and search engines alike are when it comes to copyright infringement.

No Free-For-All - Is Posting a Freely Available Image Online Copyright Infringement?

Posting images online, whether it is on your own website or otherwise, is so easy these days and often feels quite harmless. The lack of effort and often consequence for the copying and sharing an image, even if protected by copyright, can lead to what feels like a dissemination near free-for-all on intellectual property on the Internet. With this in mind, where does one draw the line on what is allowed and what isn't, and how do we assert control over any unauthorised sharing, even if your content is freely available on different websites? The CJEU took on this question early this month, and handed down a decision that has prompted a great deal of discussion in the general public.

The case of Land Nordrhein-Westfalen v Dirk Renckhoff concerned a photograph taken by Mr Renckhoff. This picture was exclusively licenced to an online travel portal for use, and had no restrictions on the website where it was posted. In 2009 a school student in Waltrop (within the Nord Rhine-Westphalia region of Germany) used the image in their presentation, which was subsequently posted on the school's website. Mr Renckhoff subsequently sued the school district for copyright infringement for the posting of the image on the school's website.

Only one question was referred to the CJEU, which asked "…whether the concept of ‘communication to the public’, within the meaning of Article 3(1) of Directive 2001/29, must be interpreted as meaning that it covers the posting on one website of a photograph which has been previously published without restriction and with the consent of the copyright holder on another website".

As many will be aware, 'communication to the public' includes two cumulative criteria that need to be considered: (i) an act of communication; and (ii) the communication of that work to a 'public'.

The first criterion simply concerns an act where "…a work is made available to a public in such a way that the persons forming that public may access it, irrespective of whether or not they avail themselves of that opportunity". The Court swiftly determined that the posting of the work on the school's website did amount to 'an act of communication'.

The danger of copyright infringement made the creation of
school presentations all the more thrilling

In terms of the second criterion, a 'public' "…covers all potential users of the website on which the photograph is posted, that is an indeterminate and fairly large number recipients". Again, the Court quickly determined that the act had been a communication to a 'public' under this definition. However, the Court did note that for the act to be an infringing 'communication to the public' it needs to be done so to a 'new public', i.e. "…a public that was not already taken into account by the copyright holders when they authorised the initial communication to the public of their work".

Looking at the right to prevent the unauthorized communication of works, the Court saw that "…[s]uch a right of a preventive nature would be deprived of its effectiveness if it were to be held that the posting on one website of a work previously posted on another website with the consent of the copyright holder did not constitute a communication to a new public". The Directive, under Article 3(3), does not exhaust the rights held in works once they have been communicated to the public by the rightsholder or an authorized third-party.

Ultimately they concluded that the communication of a work in a separate website would amount to a communication to a new public under the Directive, as the publication of the work was only intended for the users of the authorized website, and no other third-party sites. Limitations on the copying or use of the particular work are irrelevant in this assessment.

The Court did, however, have to navigate the issues set by their earlier decision in Svensson and BestWater (discussed more here and here), which allowed for the sharing of links to content that was freely available, as the intended public for those works was, in essence, the entirety of the Internet.

The cases were distinguished as they related to hyperlinks, and not copies of available works. The former is required for the proper operation of the Internet, whereas works themselves would not contribute to this aim to the same extent. Hyperlinks can also be disabled by the removal of the website it links to; whereas once an image has been copied elsewhere its removal is much harder. The Court therefore clearly emphasised the preventative nature of their conclusion, rather than the imposition of arbitrary preclusions to the sharing of content (innocent or not).

In short, the Court concluded that "…the concept of ‘communication to the public’… must be interpreted as meaning that it covers the posting on one website of a photograph previously posted, without any restriction preventing it from being downloaded and with the consent of the copyright holder, on another website".

The decision is somewhat unsurprising, as the exhaustion of rights through the posting of any content on an authorized website would be devastating to many creating industries. The Court upheld the rightsholder's rights in their works, even if posted innocently on a school website. The case did briefly discuss exemptions relating to education and research, and one has to note that this was not a big part of the case and therefore not discussed at length. Any such use as in the case would most likely be fair use; the Court simply made sure that no rights were exhausted even if this were the case.

Doesn't Pose a Threat - Can You Have Copyright in a Pose?

The arrangement of a picture can hugely affect its effect on the viewer, and potentially its artistic merit. This includes the various poses that any subjects in the picture have, which often are intended to convey certain emotions, thoughts and commentary the artist had in mind. We discussed the potential rights that one might have in yoga poses some time ago, and after a recent action in the US courts, a similar case has pushed its way into the Court of Appeal. In the light of this, can you have copyright in poses?

The case of Folkens v Wyland Worldwide LLC concerned an illustration created by Mr Folkens titled "Two Tursiops Truncatus" or otherwise known as "Two Dolphins", in the late 1970s. In the illustration two dolphins cross each other in an underwater scene, one swimming vertically and the other horizontally. No other marine animals are in the illustration. Mr Wyland created his own work in 2011 titled "Life in the Living Sea", which consisted of an underwater scene, including three dolphins, two of which cross each other similarly to Mr Folken's work, and other marine animals and flora. Having learned of Mr Wyland's work sometime after its creation, Mr Folkens took him to court for copyright infringement.

The matter hinged on whether the pose exhibited by the two dolphins could be protected by copyright.

As set out in Feist (discussed more here), to prove infringement the claimant has to show "…ownership of a valid copyright and the copying of constituent elements of the work that are original". Should no evidence exist as to copying, a claimant can prove this by showing "…that the defendant had access to the plaintiff's work and that the two works are substantially similar". The defendant agreed that they had access to the work, but contended that they were not substantially similar.

Tom's poses were always on point

For there to be copying, the Court did first have to assess whether the two dolphins crossing element would be one that can be protected. What also plays an element in this is whether the pose struck by the dolphins is one that could occur in nature.

Judge Gould, handing down the Court's judgment, set out that "…ideas, first expressed in nature, are the common heritage of humankind, and no artist may use copyright law to prevent others from depicting them". This would arguably include the natural movements of dolphins. They did, however, emphasise that, as was set in Satava v Lowry, "…an artist may obtain a copyright by varying the background, lighting, perspective, animal pose, animal attitude, and animal coat and texture, but that will earn the artist only a narrow degree of copyright protection". This generally would exclude depictions of ideas first expressed by nature, but any original expression contributed to these ideas could potentially be protected, albeit narrowly.

 The Court concluded that, following the above, a depiction of two dolphins crossing under sea, one in a vertical posture and the other in a horizontal posture, is an idea first expressed in nature and as such is within the common heritage of humankind. The behavior exhibited in the image is something that social animals such as dolphins would normally do. Other examples would be ants marching in a straight line or birds flying in a V-shape.

The rights held by Folkens are much narrower than what is sought, i.e. in a very specific expression of the natural behavior. In his image this includes "…the [dolphins'] exact positioning, the stippled light, the black and white depiction, and other specific and unique elements of expression". His rights were not infringed by Wyland by exhibiting the same behavior in a different setting.

The Court therefore dismissed the appeal, and upheld the District Court's summary judgment on the matter.

The case is by no means ground-breaking, but does illustrate the difficulty in protecting common, natural elements, such as poses and animal behavior. The more common the pose, the harder it is to protect it, albeit it is possible via the unique expression of that idea.

Source: Written Description

Passing Off on Persons - Rihanna Wins Appeal Case

If reality TV has taught something to most individuals is that personality, and personas especially, are valuable. This, along with other celebrities, musicians and actors, illustrates an interesting aspect of humanity; a self-imposed value on the eccentric and the unusual, making people and their respective persons more than salable. People often buy things based on association, be it quality, notoriety or just through the endorsement of the right person. Because of this there is a huge amount of value in the right brand or good being associated with the right person, even if that image is conjured up through more 'nefarious' means, i.e. through the illusion of association or endorsement, which can potentially damage the 'brand' of an individual. After a recent case, this writer was inspired to answer one question: can you pass off on a person, not just a brand?

The case in question was Fenty & Ors v Arcadia Group Brands Ltd, decided in the Court of Appeal in the early days of 2015, which dealt with the sale of a simple article of clothing; a t-shirt. Topshop, a well-known store for all that is clothing, sold a t-shirt printed with the image of Robyn Fenty - more commonly known as Rihanna. The image itself was one of her posing, taken during the shooting of a music video for one of her songs. The picture was taken by a third-party photographer, and not commissioned by Rihanna herself, allowing the photographer to sell the rights to the image to Topshop, which he promptly had done, leading to its use in the aforementioned garment. Rihanna subsequently objected to this use, and initiated proceedings against Topshop for the image's use, citing an infringement of her rights, and claiming its use can confuse consumers to believe she endorses the shirt, amounting to passing off (more on which can be found here).

The starting-point for the discussion surrounding the law was set out by Lord Justice Kitchin: "There is in English law no "image right" or "character right" which allows a celebrity to control the use of his or her name or image". In the United States, under various State legislation, an individual's personality or persona can be protected; something that isn't protectable per say under UK legislation.

Some faces are just made for t-shirts

Nevertheless, the protection offered under passing off can potentially extend to individuals, at least on a prima facie application of the requisite elements: there has to be goodwill associated with that individual; a misrepresentation as to that goodwill applying to goods and/or services not associated with that individual; and actual or potential damage to said goodwill. Should Topshop have sufficiently misrepresented a connection with Rihanna, they could be liable under passing off. To put things in more simplistic terms, as described by Lord Justice Kitchin: "...it was [Rihanna's] case that the misrepresentation that she was associated with the t-shirt made it more attractive and so played a material part in the decision of the public to buy it".

Lord Kitchin turned to the earlier decision in Edmund Irvine Tidswell Ltd v Talksport Ltd, where Justice Laddie formulated two criteria that needed to be established for a successful case in passing off in a false endorsement matter: "It follows from the views expressed above that there is nothing which prevents an action for passing off succeeding in a false endorsement case. However, to succeed, the burden on the claimant includes a need to prove at least two, interrelated facts. First, that at the time of the acts complained of he had a significant reputation or goodwill. Second, that the actions of the defendant gave rise to a false message which would be understood by a not insignificant section of his market that his goods have been endorsed, recommended or approved of by the claimant".

Whether the public perceive the image of Rihanna as an endorsement or not is very much irrelevant, As long as an image of a potential endorser is used, the use can amount to a misrepresentation to that individual's endorsement of that product. This, however, does not allow a celebrity to unilaterally prevent all uses of their images, but is an assessment that has to be made in every instance and relating to every specific use separately. Topshop had attempted to use Rihanna's fame to their advantage through prior campaigns and contests, clearly leveraging her image to boost their sales. This does not amount to passing off itself, but is a contributing factor usable by the courts. In the end the Court saw that Topshop were indeed liable under passing off, and prevented the further sale of the above t-shirt.

While this case is not a landmark one, it serves an interesting curiosity in the world of celebrity and marketing, and showcases that even images can carry weight and value. Next time you print an image of your loved ones on custom-made t-shirts, think twice.

Source: BBC

Monkey Business - When Copyright and Simians Collide

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

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

Rick wanted to ride the animal selfie fame train as well

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

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

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

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

Source: Ars Technica