Problem Fixed - CJEU Decides on IP and the Right to Repair Goods

Tinkering with old gadgets or cars is a beloved pastime for many, and often prolongs the life of the goods you own even beyond their warranty periods. Many manufacturers are making it increasingly difficult to repair items, particularly high-end electronics, and with discussions heating up relating to Apple's slow-down of their devices due to hardware aging, it is conceivable even more important for people to fix their old items. We've discussed IP issues relating to repairing or tinkering with tractors, but there has been very little judicial consideration around it. In that vein, what are the limits of IP and peoples' right to repair their goods? The CJEU took this question on late last year.

The case of Acacia Srl v Pneusgarda Srl and Audi AG concerned the sale of alloy rims for cars, for which Audi owns several registered community designs (e.g. RCD 132899 and 207667). Acacia manufactured rims under the brand WSP Italy, sold on their website, which are identical to the rims registered by Audi. The rims made by Acacia were clearly stamped as not made by the OEM, and were sold exclusively as replacement parts for the purpose of making repairs. Audi took Acacia to court over design infringement, with the matter ending up with the CJEU. Porsche had a similar matter joined with the Audi case against Acacia.

The Court joined the questions from both matters, which, essentially inquired about EU law in relation to repairs and design infringement.

The first combined question dealt by the Court asked whether "…Article 110(1) of Regulation No 6/2002 must be interpreted as meaning that the ‘repair’ clause in it makes the exclusion of protection as a Community design for a design which constitutes a component part of a complex product which is used for the purpose of the repair of that complex product so as to restore its original appearance subject to the condition that the protected design is dependent upon the appearance of the complex product".

The restoration of a vehicle's appearance is important, especially in a crash situation, and without the exception this wouldn't be possible. The Article 110 exception allows for this, and the CJEU had to therefore consider the provision's remit.

The CJEU rejected the condition that the exception only operates where the design is dependent upon the appearance of the complex product due to the absence of this phraseology in the legislation. The provision also protects against captive markets, where only the design holder can produce certain spare parts, allowing for consumers to purchase less expensive alternatives and not be tied to one particular provider. The Court therefore set out that "…Article 110(1)… must be interpreted as meaning that the ‘repair’ clause in it does not make the exclusion of protection as a Community design for a design which constitutes a component part of a complex product which is used for the purpose of the repair of that complex product so as to restore its original appearance subject to the condition that the protected design is dependent upon the appearance of the complex product".

The Court then moved onto the second combined question, which asked "…to which conditions the ‘repair’ clause in Article 110(1)… subjects the exclusion of protection as a Community design for a design which constitutes a component part of a complex product which is used for the purpose of the repair of a complex product so as to restore its original appearance".

The CJEU quickly set out that the provision is subject to three conditions: (i) the existence of a Community design; (ii) the presence of a ‘component part of a complex product’; and (iii) to the need for ‘[use] within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance’.

It's not just sellers who struggle with auto repairs

In specifying these conditions, the Court first observed that the second condition (as rights exist in the wheel rims) covers "…multiple components, intended to be assembled into a complex industrial or handicraft item, which can be replaced permitting disassembly and re-assembly of such an item, without which the complex product could not be subject to normal use", and that a wheel rim would indeed fall under this definition.

With regards to the third condition, the CJEU saw that 'use' of that product for the purpose of repairing that product includes making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes. This use, however, has to be with the aim to 'permitting the repair of the product', which encompasses the situation where, if that part were faulty or missing, this would prevent the product's normal use.

In short, the 'use' of the product, set out above, needs to be necessary for the repairing of that product if it has become defective through damage or lack of original parts. Purely aesthetic repairs wouldn't be covered by the provision, as it's only for convenience. Even still, the repairing would have to be done ‘so as to restore its original appearance’.

What this amounts to is that "…the component part must be used so as to restore the complex product to the appearance it had when it was placed on the market". The CJEU also added that the clause only applies to component parts of a complex product that are visually identical to the original parts.

In short, the CJEU saw that "…the ‘repair’ clause in it makes the exclusion of protection as a [RCD] for a design which constitutes a component part of a complex product which is used for the purpose of the repair of that complex product so as to restore its original appearance subject to the condition that the replacement part must have an identical visual appearance to that of the part which was originally incorporated into the complex product when it was placed on the market".

The Court then moved onto the final combined question, which asked "…whether Article 110(1)... must be interpreted as meaning that, in order to rely on the ‘repair’ clause in that provision, the manufacturer or seller of a component part of a complex product must ensure and, in that case, how it must ensure, that the component part can be purchased exclusively for repair purposes".

As detailed above, the repair clause is subject to a number of conditions, and in particular ones that emphasises a genuine need for repairs. This imposes compliance on part of the downstream user, not just the seller. This means that the seller needs to inform the buyer that "…the component part concerned incorporates a design of which they are not the holder and, on the other, that the part is intended exclusively to be used for the purpose of the repair of the complex product so as to restore its original appearance". Similarly, this needs to be ensured and enforced through contractual means with the buyer. Finally, "…the manufacturer or seller must refrain from selling such a component part where they know or, in the light of all the relevant circumstances, ought reasonably to know that the part in question will not be used in accordance with the conditions laid down in Article 110(1)".

In summary, the CJEU stated that "…Article 110(1)… must be interpreted as meaning that, in order to rely on the ‘repair’ clause contained in that provision, the manufacturer or seller of a component part of a complex product are under a duty of diligence as regards compliance by downstream users with the conditions laid down in that provision".

The case is a very important one, and clarifies the provisions surrounding the repairing of vehicles or goods owned by an individual and in particular the sale of those goods for repair. The onus is clearly on the seller, which makes sense, as they are the ones likely to benefit from the sales of the goods for repair, rather than the rightsholder.

Source: D Young

Cast Aside - Recording of TV Through the Cloud Infringes Copyright, Says CJEU

Many foreign nationals who have immigrated abroad yearn for a piece of home, either through food, music or TV and movies. Often this is done using online or on-demand services, and this interest can create opportunists who wish to capitalise on the home-sickness of ex-pats. Quite a few websites offer both legitimate and illegitimate means of doing so. In that vein, would the recording of TV shows for users, without copying it into your own servers, infringe copyright?

The case of VCAST Limited v RTI SpA concerns this question, where VCAST offered a service to users enabling them to record Italian television on-demand to an external storage provider of their choice. The user would select which show on which channel they would want to record, which VCAST then recorded for them onto their storage provider's servers. VCAST was subsequently sued by RTI, an Italian TV channel, for copyright infringement, ending up all the way at the CJEU.

The CJEU was posed two questions in the proceedings, which it subsequently merged into one, as they asked two sides of the same coin. The question was whether "…[the InfoSoc Directive], in particular Article 5(2)(b) thereof, precludes national legislation which permits a commercial undertaking to provide private individuals with a cloud service for the remote recording of private copies of works protected by copyright, by means of a computer system, by actively involving itself in the recording, without the rightholder’s consent". In other words, is it possible for national legislation to prevent the private copying of copyright protected works using a cloud recording service.

As set out by the Court: "…Article 5(2)(b) of Directive 2001/29, Member States may provide for exceptions or limitations to the reproduction right in respect of reproductions on any medium made by a natural person for private use and for ends that are neither directly nor indirectly commercial". So long this use doesn't conflict with the works' normal exploitation or prejudice the legitimate interests in the works, exceptions and/or limitations are allowed.

According to case law, the CJEU considered that copying by natural persons acting in a private capacity would be likely to cause harm to the rightsholders concerned if prior authorisation from them isn't sought. This position was developed further in ACI Adam where the Court allowed for rightsholders objecting to infringements that might accompany the making of private copies, even though the exception prohibits them from objecting to private copying. Finally, third-parties can be involved in the making of private copies, provided they are a precondition to it.

The distinction between a mere third-party copying content and VCAST is VCAST's provision of the programs themselves, which the user then selects from. They therefore both copy and make available the copyright protected works to the consumer.



The Cloud can makes emotions run high

Even though rightsholders are prohibited from preventing the private copying of copyright works, as discussed above, they are not prohibited from preventing access to the works that are desired to be privately copied. This allowed the Court to move onto the matter of communication to the public, which third-parties cannot do. The distinction between simply copying, where the entity does not make the content available in a wider scale, and making works available and then copying them on request, is important and requires the court to address this point.

When assessing 'communication to the public' Courts have to consider two cumulative criteria; an 'act of communication' that is done to a 'public'. The former is a transmission of protected works, irrespective of technical means, and the latter an undetermined amount, although impliedly large, of people as possible recipients.

Through their service VCAST records broadcasts of TV shows and makes them available for its users. The amount of users is clearly enough to constitute a 'public', while the original transmission through VCAST's service is transmitted to that public. The service therefore infringes the right to communication to the public, and would require the authorisation of RTI (and other relevant parties not involved in the litigation).

The CJEU concluded that VCAST's service does not fall under the scope of Article 5(2)(b). In different words, answering the question posed: "…Directive 2001/29, in particular Article 5(2)(b) thereof, precludes national legislation which permits a commercial undertaking to provide private individuals with a cloud service for the remote recording of private copies of works protected by copyright, by means of a computer system, by actively involving itself in the recording, without the rightholder’s consent".

The case is quite surprising, since the matter didn't involve communication to the public at the face of it, only private copying. Even so, the connection made between the two makes sense, and is a relevant consideration in the wider issue. Third-parties making copies for users is still very much allowed; however, the stumbling block will be the making available of that content to users as done by VCAST.

Press Pause - Sale of Multimedia Players to Facilitate Copyright Infringement is a Communication to the Public

The question of what amounts to a 'communication to the public' under EU law has been debated and adjudicated on fiercely in the last couple of years (discussed more here, here, here, here and here) with very little or no end in sight in the near future. Every decision seems to make an ultimate determination more and more elusive, and this writer for one thinks that the matter will never be decided. Even so, the Court of Justice of the EU has been busy yet again, and a recent decision discussing the sale of devices that aid the infringement of copyright was awaited keenly by many. After some time, the CJEU finally rendered its verdict last week.

The case of Stichting Brein v Jack Wullems dealt with the sale of a multimedia player (Filmspieler) that came pre-loaded with applications and open-source software that allowed you to access pay-for content online for free using your own TV. The Filmspieler was sold on a variety of websites, including Mr Wullems' own website. Stichting Brein found out about the sale of the Filmspieler, and requested that Mr Wullems stop selling the device, which he refused to do. Stichting Brein then took the matter to court, which ultimately ended up in the CJEU, where Stichting Brein asked four questions from the Court.

The first and second questions were dealt with together by the CJEU, which asked in essence "...whether the concept of ‘communication to the public’, within the meaning of Article 3(1) of [the InfoSoc Directive], must be interpreted as covering the sale of a multimedia player… on which there are pre-installed add-ons, available on the internet, containing hyperlinks to websites… on which copyright-protected works have been made available to the public without the consent of the right holders".

What 'communication to the public' entails requires a certain set of criteria to be fulfilled, namely an ‘act of communication’ of a work and the communication of that work to a ‘public’. Whether there has been an act of communication requires a more flexible approach where certain complementary criteria, taken holistically, are applied to the act. A particular focus is on whether, in making the act of communication, in full knowledge of the consequences, intervenes to give access to a protected work to a customer, and without their intervention, the customer would not have had access to the work in question.

A 'public' is defined as an indeterminate number of potential viewers, but implies a fairly large number of people viewing the work. The works have to, however, be communicated to a 'new public' or via new means that were not used in its prior communication. Finally, whether the communication makes a profit or not is not a wholly irrelevant criterion in this determination.

The Court therefore had to assess whether the sale of a multimedia player, as described above, would amount to a 'communication to the public'.

Dave was too lazy to care about his Filmspieler no longer working

While the InfoSoc Directive does expressly exclude the provision of physical facilities enabling or making a communication to the public, the Court determined that this didn't in itself limit it from the sale of such devices. The CJEU focussed on the pre-installation of the applications allowing for the infringing activities, which, according to the Court: "...enable[ed] a direct link to be established between websites broadcasting counterfeit works and purchasers of the multimedia player, without which the purchasers would find it difficult to benefit from those protected works", separating it from the mere provision of physical facilities for doing so.

Through this the CJEU considered that "...the provision of a multimedia player such as that at issue in the main proceedings enables, in view of the add-ons pre-installed on it, access via structured menus to links that those add-ons which, when activated by the remote control of that multimedia player, offer its users direct access to protected works without the consent of the copyright holders and must be regarded as an act of communication". Clearly the Court distinguishes between the provision of a device that would have the capability of utilizing such applications, and the pre-installation of those applications on the same device, where the proactive step of installation puts it beyond the 'mere provision of physical facilities' under the Directive.

Whether the act of communication had been done to a 'public' still remained, and the Court decided that, as the Filmspieler had been purchased by a large amount of people, and continued to be available for further purchases, and clearly the communication was therefore aimed at an indeterminate number of people amounting to a 'public' under the Directive. The Filmspieler made the protected works also available to a 'new' public, as the material accessed was not freely available online for all to view, and the Filmspieler made it available to a 'new' public beyond the contemplation of the rightsholder when the works were published. Mr Wullems knew, or ought to have known, that the hyperlinks posted provided access to works illegally placed online. Finally, if the posting of the hyperlinks is done seeking gain or profit, it is expected that the poster would check the links for legality, presuming that any illegal hyperlinks would have been included within the full knowledge of the poster. Mr Wullems sought profit through the sale of the multimedia player, and thus, his sale of the Filmspieler amounted to a communication to the public.

The CJEU was then faced with two questions, which dealt with the streaming of content, but the questions themselves were only treated as hypotheticals and didn't directly apply to the case at hand. The questions asked "...whether the provisions of Article 5(1) and (5) of [the InfoSoc] Directive… must be interpreted as meaning that acts of temporary reproduction, on an multimedia player such as that at issue in the main proceedings, of a copyright protected work obtained by streaming from a website belonging to a third party offering that work without the consent of the copyright holder satisfies the conditions set out in those provisions". The Article in question provides that, in essence, any temporary reproductions that are transient or incidental (e.g. streaming) are exempt from the rights afforded in the Directive in Article 2.

For Article 5 to apply, certain conditions need to be fulfilled, namely: the act is temporary; it is transient or incidental; it is an integral and essential part of a technological process; the sole purpose of that process is to enable a transmission in a network between third parties by an intermediary or a lawful use of a work or protected subject matter; and that act does not have any independent economic significance. All of the conditions are cumulative, and need to be fulfilled for the exemption to apply. Additionally, the use under the exemption cannot conflict with a normal exploitation of the work and prejudice the interests of the author.

The key aim of Article 5 is therefore to protect innocent conduits between two parties or entities, such as the ISP, not causing liability for transient copying of works for the facilitation of services between other parties.

The Court ultimately saw that "...temporary acts of reproduction, on a multimedia player such as that at issue in the main proceedings, of copyright-protected works obtained from streaming websites belonging to third parties offering those works without the consent of the copyright holders are such as to adversely affect the normal exploitation of those works and causes unreasonable prejudice to the legitimate interests of the right holder, because... that practice would usually result in a diminution of lawful transactions relating to the protected works, which would cause unreasonable prejudice to copyright holders". Due to the prejudice to the legitimate interests of the rightsholders through the streaming of content through the Filmspieler, the temporary copies made for the purpose of streaming would not be exempt by Article 5.

The decision in the case is clearly a positive one for rightsholders, particularly trying to combat the sale of multimedia devices such as in the case. What remains key in the case is the provision of physical facilities (in itself not infringing) in addition to facilitating copyright infringement can turn the provision of physical facilities into an infringing act. One would have to therefore be careful about the content and usability of devices that have the capability of infringing copyright, particularly with pre-installed software. While the case does not settle things once and for all, it remains an important step in the progression of the definition of a 'communication to the public' under the Directive.

Source: IPKat

Link Away - CJEU Decides Hyperlinking to Images is Not Communication to the Public

After the Advocate General's opinion on the GS Media (discussed here) case some 5 months ago, many people in the IP sphere have awaited the ultimate decision of the CJEU with baited breath. While the Advocate General's opinion reflected a pragmatic, very liberal interpretation of the legislation, some seemed skeptical on whether the CJEU would follow his thoughts. After, what felt like a small eternity to this writer, the CJEU has released its judgment on the case yesterday.

The case of GS Media BV v Sanoma Media Netherlands BV dealt with pictures of Britt Dekker (a famous Dutch TV personality), commissioned by Sanoma Media for publication in Playboy magazine. Prior to their publication, the images were somehow acquired and posted by a user on the file-sharing service Filefactory; a link to which was subsequently sent to the website GeenStijl, which is operated by GS Media. GeenStijl shared a part of one of the images of their website, with an additional hyperlink to Filefactory where users could download the images onto their computers. Although vehemently demanded by Sanoma Media, GS Media refused to remove the link from the website, although the content itself was removed from Filefactory. Sanoma Media then took GS Media to court for copyright infringement, which ultimately ended in the CJEU.

The Court had to determine "...whether, and in what possible circumstances, the fact of posting, on a website, a hyperlink to protected works, freely available on another website without the consent of the copyright holder, constitutes a ‘communication to the public’ within the meaning of Article 3(1) of Directive 2001/29".

The context is important here too, as the images in question had not been published prior to their leaking to the website and then to GS Media, and their hyperlink makes the finding of the files a lot easier and they had, or ought to have had, the knowledge that the works' publication on that particular website was not authorized.

Following the judgment in Svensson (discussed more here), the concept of a 'communication to the public' under the Directive consists of two criteria, specifically  an 'act of communication' that was communicated to a 'public'. While the Court followed its earlier decisions on the nuances of what amounts to a communication to the public, the meat of the matter lie in the application of this in the current scenario.

As was decided in Svensson, posting hyperlinks on a website to works freely available on another website does not constitute a ‘communication to the public’ (followed in the BestWater case). The Court did distinguish that, in both of the aforementioned cases, the content linked to was authorized by the copyright holder, i.e. the content was legally on the website that the hyperlink lead to (meaning there was no new public for the content) As further clarified by the Court: "...as soon as and as long as that work is freely available on the website to which the hyperlink allows access, it must be considered that, where the copyright holders of that work have consented to such a communication, they have included all internet users as the public". This clearly distinguishes this case from both Svensson and BestWater, as the content was not authorized and therefore, arguably, the communication happened to a 'new public'.

The Court refused to infer the above, and stated that, to protect the freedom of expression and the Internet as we know it, one cannot simply categorize all linking to unauthorized content as a communication to the public. They further saw that, in assessing whether a communication to the public in such a scenario, one has to consider "...when the posting of a hyperlink to a work freely available on another website is carried out by a person who, in so doing, does not pursue a profit, to take account of the fact that that person does not know and cannot reasonably know, that that work had been published on the internet without the consent of the copyright holder". What remains interesting is the potential liability of an unknowing sharer, who still makes a profit by doing so. Ultimately, this seems to just raise the bar for negligence (or a willful blind eye), but is a curious consideration made by the Court.

Hyperlink profiteers enjoying their unlawful gains for one last time

The judgment did not, however, give everyone a free pass: "In contrast, where it is established that such a person knew or ought to have known that the hyperlink he posted provides access to a work illegally placed on the internet, for example owing to the fact that he was notified thereof by the copyright holders, it is necessary to consider that the provision of that link constitutes a ‘communication to the public’ within the meaning of Article 3(1)". This makes sense, and would offer a safe harbor for those who were notified of any infringing content, especially if it had been placed there without the express authorization of the rightsholding party. The Court also put the onus on checking the content on those who gained a profit from sharing hyperlinks to other websites: "...it can be expected that the person who posted such a link carries out the necessary checks to ensure that the work concerned is not illegally published on the website to which those hyperlinks lead, so that it must be presumed that that posting has occurred with the full knowledge of the protected nature of that work and the possible lack of consent to publication on the internet by the copyright holder. In such circumstances, and in so far as that rebuttable presumption is not rebutted, the act of posting a hyperlink to a work which was illegally placed on the internet constitutes a ‘communication to the public’ within the meaning of Article 3(1)". Knowledge, or presumed knowledge, is key here, and clearly the Court wants to curtail profiteers who would use this 'loophole' for their own benefit by sharing links to infringing, unauthorized content.

The Court then finally summarized their findings to the questions posed: "...the answer to the questions raised is that Article 3(1) of Directive 2001/29 must be interpreted as meaning that, in order to establish whether the fact of posting, on a website, hyperlinks to protected works, which are freely available on another website without the consent of the copyright holder, constitutes a ‘communication to the public’ within the meaning of that provision, it is to be determined whether those links are provided without the pursuit of financial gain by a person who did not know or could not reasonably have known the illegal nature of the publication of those works on that other website or whether, on the contrary, those links are provided for such a purpose, a situation in which that knowledge must be presumed".

The decision is a very interesting one, and this writer had been waiting for it for some time. What seems surprising is the emphasis of financial gain, but it makes sense, as often those who do not pursue pure monetary gains will be more honestly ignorant to the content  they have shared than those who aim to profit from it (often knowing full well what they are sharing, as it is the source of their users).

Clear Enough? - CJEU Further Clarifies Communication to the Public

The CJEU does not seem to be able to make its mind up on the topic of what amounts to a 'communication to the public', as is perfectly illustrated by the recent decisions in Svensson, C More Entertainment, BestWater and the Advocate General's opinion prior to the decision in GS Media (the very decision so many are waiting for). This difficulty in establishing a firm position on this very important subject has created many headaches for IP practitioners, who, by now, are grasping for any concrete and consistent judgments to this effect. While we have to still wait on the CJEU tackling GS Media, there is potentially some respite in the air via a decision discussing, yet again, what a 'communication to the public' might entail.

The case of Reha Training Gesellschaft für Sport- und Unfallrehabilitation mbH v GEMA dealt with the a rehabilitation center, Reha Training, which provides post-operative treatment to better rehabilitate those who needed it after their medical procedures. The center itself included two waiting rooms and a training room (similar to a gym), where, between June 2012 and June 2013, they showed television programs for the patients who used the facilities in their recovery in installed TVs in the rooms. No permission was requested from GEMA (a German collection society) to display the content for the patients. GEMA then took Reha Training to court, asserting that the display of the TV content amounted to a 'communication to the public' under the InfoSoc Directive.

The referring court essentially asked whether the broadcasting of TV programmes in a rehabilitation center constitutes a communication to the public under several provisions (including the above Directive).

The CJEU first observed that, as the question referred to dealt with two Directives that mention a 'communication to the public', the provision in the InfoSoc Directive applies without prejudice to the application of the Rental Right and Lending Right Directive (which, similarly, offers the exclusive right to the author to communicate to the public a work, though through a more monetary provision). Although the wordings in each of the above Directives differs somewhat from each other, the Court concluded that their interpretation should be the same in order to keep a unified and coherent legal standard. They further clarified this, establishing that "...the different nature of the rights protected under those directives cannot hide the fact that, according to the wording of those directives, those rights have the same trigger, namely the communication to the public of protected works". Arguably, the interpretation of what amounts to a 'communication to the public' should be clear across the board, and this writer would agree that, unless specifically needed, the interpretation should be the same irrespective of the context of a given directive.

The Court then moved onto discussing the actual interpretation of the phrase. As the Court stated, this involves the assessment of several criteria, and the phrase has to be interpreted broadly. The criteria that are looked at are whether there has been an 'act of communication', and if that has been done to a 'public'.

No, Chuck, you can't communicate what you want,
even with a megaphone

In putting things in simple terms, the Court stated, as established, that an 'act of communication' is "...any transmission of the protected works, irrespective of the technical means or process used", and that every such transmission, to be legal, has to be authorized by the author of that work. Following on, the transmission of the work, to be an infringement of the above rights, has to be communicated to a 'public', which is deemed as "...an indeterminate number of potential recipients and implies, moreover, a fairly large number of persons". The public cannot be a restricted, small subset of people, but 'persons in general'. The CJEU has also established that the communication has to happen to a 'new public', meaning people who the author did not take into account when they authorized the communication of the work (i.e. if the content is paywalled, any people who do not have access through said paywall would be, prima facie, a 'new public'). This also involves a clear and calculated part by the person communicating the work to the new public, where their intervention is essential for the user to receive that broadcast. Without the intervention and the clear 'targeting' by the communicator, there would be no communication to a public.

In the earlier decision in SCF v Marco Del Corso the Court discussed this type of communication in a similar context, holding that the broadcast of TV programming in a dentist's office is not a communication to the public, as the patients do not visit the office to primarily watch TV, which in turn does not increase the users of that particular practice (or its attractiveness to a new public).

The Court concluded that Reha Training had indeed communicated the works to a public, as, drawing an analogy to previous case law involving restaurants, spas and hotels "...the operators of... [the] establishment carry out an act of communication where they intentionally broadcast protected works to their clientele by intentionally distributing a signal by means of television or radio sets which they have installed in their establishment". The clientele would not be an insignificant number, and the intervention of the operator of the center is key for their enjoyment of those works, and were not in the contemplation of the original broadcaster as an audience for the works, making them a 'new' public. The communication of the works also makes the center more attractive to prospective clients, giving it a competitive advantage (and thus benefiting from the communication).

The case is a curious development, and further cements the CJEU's position on the concept of a 'new public', which has been somewhat rejected in the Advocate General's opinion in GS Media. As the decision in the case looms in the horizon, it will be interesting to see whether this decision has a big impact on it, and whether the mere provision of hyperlinks would be an intervention that is indispensable for the enjoyment of the works, especially considering the material is freely accessible online to begin with (rather than locked behind a paywall). This writer believes the CJEU will not deem the sharing of hyperlinks to be a communication to the public, but the Court's track record does show that there are no guarantees to this effect.

Source: IPKat

Links A-OK - Hyperlinking to Infringing Material Online is OK, Says AG Wathelet

Since the CJEU's decision in Svensson the fate of hyperlinking in a European context has been up in the air, especially when it comes to copyright infringing materials and directly linking to that content. This is an incredibly important issue, and one that might have ramifications beyond our wildest imaginations, leading to great issues to how the Internet operates in today's world. While the CJEU deliberates its decision in the matter, Advocate General Wathelet provided us with a preview on the potential swing of the CJEU's vote in an opinion that was awaited by many.

The case of GS Media BV v Sanoma Media Netherlands BV dealt with the sharing of images online, specifically linking to images that have been deemed to infringe copyright. Sanoma Media, the publisher of the famous magazine Playboy, had commissioned a photographer to take photos for the magazine of Britt Dekker, a Dutch TV personality. Prior to their publication in Playboy the photos were leaked, and found their way onto an Australian file data storing website Filefactory. These images were then published on the website of a Dutch tabloid magazine, GeenStijl, who linked directly to the photos' location on Filefactory (where they could be downloaded as a zip file). Despite Sanoma's demands to do so, GeenStijl refused to remove the link to the website, although they were eventually removed from Filefactory. After pursuing GS Media through the courts, GeenStijl repeatedly posted new links to the photos in subsequent articles about the litigation, and the matter eventually ended up for the CJEU to decide.

The questions referred to the CJEU essentially dealt with whether the sharing of a hyperlink on another website containing infringing materials would be a 'communication to the public' under the InfoSec Directive.

In his opinion, AG Wathelet summarized the first question asked from the court as "...whether Article 3(1) of [the] Directive... must be interpreted as meaning that the provision on a website of a hyperlink to another website operated by a third party, which is accessible to the general internet public and on which works protected by copyright are made available to the public, without the authorisation of the copyright holder constitutes an act of communication to the public". Additionally, the Advocate General had to give an opinion on whether this question would be impacted by knowledge on part of the sharing party as to the lack of consent to share the content, and whether the previous publication of the work (or lack thereof) is of any relevance.

What remained a point of contention in the case is the findings in both the Svensson and BestWater cases, which the Advocate General first addressed. What both of the cases ultimately boiled down to was that the provision of hyperlinks to works that are freely available would not amount to a 'communication to the public', and therefore escapes infringement. Authorization of the initial publication was never an issue (although not approved in BestWater), or seemed to affect both decisions according to his opinion.

Ultimately, the Advocate General looked at the two criteria set out to establish a communication to a public, meaning looking at whether there has been 'an act of communication', and that it has been done to a 'public' (or a new public, considering Svensson).

Some links can lead to unsavory results

In answering the first criterion, the Advocate General took the position that the provision of a hyperlink to another website containing infringing works would not be an act communication, explaining that: "Although it is true that hyperlinks posted on a website make it much easier to find other websites and protected works available on those websites and therefore afford users of the first site quicker, direct access to those works, I consider that hyperlinks which lead, even directly, to protected works do not ‘make available’ those works to a public where the works are already freely accessible on another website, but merely facilitate the finding of those works". The Advocate General therefore distinguishes between the provision of the materials, and the finding or accessing of those materials, even if they infringe or not. What seems important in his opinion is the initial provision of the works, and not their subsequent sharing even via hyperlinks. He further iterated this position through the decision in Football Association Premier League and Others, where the intervention of the materials (and their subsequent provision for the first time as infringing copies) was key, which a hyperlink would not do, as it does merely facilitate an already available work. He concluded that "...in order to establish an act of communication, the intervention of the ‘hyperlinker’ must be vital or indispensable in order to benefit from or enjoy works". In his opinion GS Media therefore did not communicate the works, as their intervention was not indispensable in order to access the infringing works. He also considered that, as the question was answered in the negative, the question of a lack of authorization (and knowledge thereof) was irrelevant, even through 'nefarious' intentions.

The Advocate General then considered the question of whether the act of communication was done to a 'public'. He outright rejected the applicability of the 'new public' consideration borne in Svensson, deeming it not applicable in this instance (and potentially in other instances as well as a result). This would only be applicable when the work has been authorized, and thus accessed illegally for the benefit of a new public (i.e. from behind a pay-wall). Even if it applied in the event of a lack of authorization, the above intervention considerations would still apply, negating the assessment as the hyperlink would not add to the potential public that already could access the materials. He concluded that question 2 would therefore be answered in the negative.

The Advocate General made general observations as to this issue and the Internet: "...aside from the fact that, in principle, the posting of the hyperlinks in the main proceedings does not, in my view, constitute a ‘communication to the public’... I consider that any other interpretation of that provision would significantly impair the functioning of the Internet and undermine one of the main objectives of [the] Directive... namely the development of the information society in Europe. Such an interpretation could also distort the ‘fair balance of rights and interests between the different categories of rightholders, as well as between the different categories of rightholders and users of protected subject-matter’". He further emphasized the necessity of hyperlinking for the functionality of the Internet, and the lack of ability of Internet users to check sources of materials and whether they were authorized or not. If the posting of hyperlinks were to infringe copyright, users would not post them as readily, which would impede the development of the worldwide web.

The opinion leaves the matter quite open, and departed from the CJEU's previous considerations in Svensson and BestWater. Whether the CJEU follow the Advocate General's opinion remains to be seen, but as he wisely raised in his opinion, hyperlinking is essential to how the Internet works, and a balance has to be struck between the provision of links, but the protection of intellectual property from those seeking to blatantly benefit or even undermine this privilege. This writer will await the CJEU's decision with great intrigue, and hopes they will follow along the lines of the Advocate General.

Source: IPKat 

No Cause for Celebration - Happy Birthday To You Deemed to be Out of Copyright

Birthdays are a peculiar phenomenon when fully dissected and thought through, yet they evoke an image of youthful bliss and happiness, along with often copious amounts of presents and sugary foods. Almost every language and culture celebrates birthdays (bar some religions etc.), and wishing someone a happy birthday can be as colorful and varied as the cultures themselves. A big part of Western birthday traditions is the song "Happy Birthday to You" (and other regional variants thereof), which has been held under lock and key by Warner/Chappel Music, and as discussed over two years ago on this very blog, the saga challenging its copyright protection has been a long and arduous one. The case has since reached its newest milestone, which will be cause for celebration for many, and a loss for the few.

For the uninitiated, the case of Rupa Marya v Warner/Chapell Music Inc dealt with the aforementioned song "Happy Birthday to You", which was created by the Hill sisters, Mildred and Patty, in the late 1800s (although only in melody). Their original song, "Good Morning to All", featured the melody we associate with the above song, however the lyrics were only changed some time after the publication of Good Morning to All in a collection of songs by Clayton Summy, who had acquired the rights to the song in the 1890s. The author of the lyrics to Happy Birthday to You is largely unknown. Rupa Marya, as a part of a class-action lawsuit, asserted that Warner/Chappell did not own the copyright in the song, and that "...they should be compelled to return the “millions of dollars of unlawful licensing fees” they have collected by wrongfully asserting copyright ownership in the Happy Birthday lyrics".

The first consideration for the District Court for the District of Central California was whether the copyright in the lyrics to the song actually vested in Warner/Chappell. As the acquisition and transfer of the rights to Good Morning to All, and the creation of the lyrics to the derivative work Happy Birthday, remained unclear, the Court had to discern whether the rights to the work vested in their alleged owner (i.e. who wrote the song Happy Birthday), and if so, whether they were correctly assigned onwards affording Warner/Chappell enforceable rights to the song.

Warner/Chappell had very little to celebrate after the decision

In determining the ultimate author of the song, judge King saw that, even though claiming so under oath in a deposition, Patty Hill had not written the lyrics, as several other authors either directly or indirectly had claimed to have done so, and very little evidence illustrated that Patty Hill had concretely written them. Also, under old US law, an author could lose their rights in a word if they publish it before seeking proper registration or publishing it without proper notice, effectively forfeiting their federal and state common law rights. Judge King saw that, in the absence of authorized publication of the song, the defendant had not divested their rights through publication. Although claimed, the court did not find that the lyrics had been abandoned by Patty Hill, even though evidence was put forth to this effect, as the hearsay evidence provided was non-conclusive. As no author was clear, the motion was denied and the Court moved onto the question on ownership of the rights.

The main focus of the case was then the transfer of the rights to Mr. Summy by the Hill sisters in 1934. Through two separate agreements, neither of which has survived from their drafting in the 1930s, the defendant alleged that it had indeed transferred the rights to the lyrics to Mr. Summy. The Court rejected their arguments, and saw that the only transference that had occurred was for the piano melody of the song Good Morning to All, with no reference to the lyrics or the derivative work Happy Birthday to You being a part of either agreement. Judge King therefore concluded that the rights to the lyrics for the song Happy Birthday to You had not been transferred to Mr. Summy, and ultimately to Warner/Chappell Music. The case leave the ownership of the copyright for the song in doubt, potentially causing for the song to fall into the public domain before the end of its copyright term.

The case shows an important facet of copyright and intellectual property, the importance of the chain of evidence. Should there have been concrete provenance of a transfer of rights, the rights in the lyrics to Happy Birthday would have vested in Warner/Chappell Music. In the end, the uncertainty in evidence and the inception of the lyrics to the song left them with very little recourse to protect their rights, and lost them as a result. No repayment of license fees was discussed by judge King; a point that might be contested in court some time in the future. Whether Warner/Chappell will appeal remains to be seen, but this writer doubts the likelihood of this.

Source: The Guardian

Retrospective - Intention to Use Trademarks

Often in business it pays off to preempt what might be the next big thing, especially when it comes to names. The right timing can yield quite the monetary results, even if such predatory practices could be argued to linger outside of what is acceptable. To limit the potential hoarding of signs which could be used as trademarks, most common law legislatures have enacted provisions preventing such practices, such as in the United Kingdom and Australia for example. Under such provisions a mark has to be used, or intended to be used, as a trademark for it to be eligible for protection as such. Without proper use, or the compulsion to do so, companies would hoard any and all marks they could, with no intent to use them, only to sue for infringement if others would use that mark even when they are not doing so themselves. Even with the existence of such provisions, the question still remains as to what counts as an intention to use in the absence of actual usage; a question which was subsequently answered in the 1980s.

The case in question is Imperial Group v Philip Morris & Co, decided in the very beginning of the 80s. This concerned the prior Trade Marks Act 1938; however the provision in question is still in the currently in force Trade Marks Act 1994, and would apply equally in relation to the more modern legislation. The case concerned the word "NERIT", which was successfully registered by Philip Morris. Their registration of the word was a result of an unsuccessful attempt to register the word "MERIT" in relation to tobacco products; a mark which was rejected due to it being a laudatory and thus, descriptive word. In their mind the registration of the word "NERIT" would be close enough to be used to enforce against any uses of the word "MERIT" should their competition adopt or use the word in relation to competing products. To further legitimize the mark, Philip Morris sold roughly 1 million cigarettes under the name "NERIT", although had no real interest in using the mark as a legitimate trademark aside from its potential use against anyone using the word "MERIT". Subsequently Imperial Group challenged the mark, having used the word "MERIT" in relation to their cigarettes, and the case finally ended up in the UK Court of Appeals.

Mark loved to dress up as a ghost

In its deliberation the Court of Appeals saw that Philip Morris' mark was merely a ghost mark, with no real intention to be used as a legitimate trademark, and was registered under bad faith, contrary to the Trade Marks Act 1938. For a trademark to be considered legitimate under the legislation it must be used "...in the normal course of trade", and not merely under the guise of use through the manufacture of a small batch in order to legitimize the mark or its use. What the plaintiff had was merely a ghost mark. To further illustrate the intent by the plaintiff in the matter, the Court saw that "[t]hey wanted to treat the word "MERIT" as if they had a copyright interest in it"; which they clearly did not have. The Court of Appeal in the end determined that the word "NERIT" was not registered bona fide, and clearly not used for a legitimate commercial purpose and therefore would not be allowed as a registered trademark.

As one can see the use of trademarks is complex, and predatory registrations are no longer allowed. Registration of ghost marks was common practice before the Imperial Group decision, and clearly the case illustrates a well-needed adjustment from those practices. Should frivolous marks, or unused marks, be allowed to be registered by anyone, their function as a badge of origin could potentially cease to exist, and would only serve as a means to prevent others from trading through legitimate marks. The Imperial Group case has been decided in a multitude of countries, such as Australia, with similar results, clearly showcasing the common law's position in relation to modern trademark law with regards to ghost marks.

Happy Birthday to Us All? The Challenge Over the Well-Known Birthday Song

If there ever has been a song that most people on Earth have heard, it's the one sang in celebration of one's birthday; Happy Birthday to You. The copyright owners of the song, Warner/Chappell Music, have kept the rights in a tight grip, charging as much as $1500 dollars for a single use of the song, but recently the rights to the song have come into question.

In a recent court filing, Jennifer Nelson, an American film-maker, is seeking for the song to be declared to being in the public domain (and having been there since the 1920s) as opposed to under the ownership of Warner/Chappell. If the song were to be declared to being in the public domain, anyone and everyone could be free to use it as they wish.

Birthdays aren't always so happy

The song's origin is in the old folk song of 'Good Morning to All', published as far back as 1893.The rights were subsequently bought by several entities, originally from the authors Patty and Mildred Hill, ending up with Warner/Chappell in 1988. The song brings in 2 million dollars per year for the owners through licensing fees.

Should the courts not make the declaration being sought, the copyright for the song should end sometime in 2016 in Europe, due to the passing of Patty Hill in 1946 and copyright terms extending to 70 years after the death of the last author of the work. Should a European nation have a longer period, the changes made under European Union legislation will not affect that period and the song will enjoy copyright protection for that extended period. In the United States the song's copyright should have expired in 1991, however the period was extended twice; initially by the Copyright Act of 1976 and further by the Copyright Term Extension Act and protection should therefore extend till 2030.

What Jennifer Nelson is arguing in her case is that the song belongs to everyone, and should not be owned by any entity. When thinking of the important role the song plays in a very simple event, the celebration of someone's birthday and the commonality of the song's use, she could have a solid case. Unlike trade marks, copyright doesn't face the effects of genericization, where the trade mark has become eponymous with the product it represents - in other words the name has become intrinsically what most products in that category are called. Even if a song is deemed to being incredibly common or 'everyone's', it is still protected by copyright.

With the great extensions of American copyright terms and the strict nature of copyright as a means to protect your intellectual property, I have my doubts about the song being in the public domain. Albeit not the exact same case, the popularity or commonality of a book doesn't automatically place it out of strict protection and into the free use of the public, so what would make a song any different?

Source: Thomson Reuters