Tuesday, 17 January 2017

Billions of Bilious Barbecued Blue Blistering Barnacles: Tintin Gets Color Makeover!

There is only one Tintin album which was not originally published in color, and this is the first one ever been published, in 1930, Tintin in the land of the Soviets. It has now, however, been published in color, on January 11, with the authorization of Hergé’s estate.
There are divided opinions on (1) why Hergé, Tintin’s sole author, never colorized this album and (2) whether he even wanted this album to be colorized. Some argue that Hergé never wanted the album to be colorized, as he considered it be a minor opus of his work, and he did not even authorize its re-publication until 1973, and did so even then only to counter piracy.

Others argue that the colorization is just an “alternative” to the original work. In this article, Nick Rodwell, who is married with Hergé’s widow and heiress, and who manages Hergé’s estate, is quoted as saying:

We’ve added something to the original oeuvre, while still respecting it. We’re not betraying the original black-and-white, we’re just offering a colour alternative.”

Let’s say that Hergé wanted the album to be eventually colorized. This colorization is then the expression of his will, as expressed while alive.
Tintin in the land of moral rights

But what if Hergé did not want the album to be colorized? Alain Baran, Hergé’s former secretary, does not believe that Hergé would have wanted his first album to be colorized. For Mr. Baran, “although technically successful, the colorization, which is published under the Hergé name, infringes on the author’s right of integrity in his works, as a work must be respected and left in its original state after the death of the author and that “respect for any work owed to that creator requires that it remain in the state in which it left it.”

Indeed, moral rights are perpetual, and inalienable. They are recognized by Belgium intellectual property law, Act of June 30, 1994, which article 1.2 provides that:

The author of a literary or artistic work shall enjoy an inalienable moral right in his work. Overall renunciation of the future exercise of this right shall be null and void. This right shall comprise the right to disclose the work. Non-disclosed works may not be seized. An author shall have the right to claim or to refuse authorship of his work.”

They are also recognized by Article 121-1 of the French intellectual property Code, which provides that:

The author has the right to respect for his name, his quality and his work. This right is attached to his person. It is perpetual, inalienable and imprescriptible. It is transferable upon death to the author's heirs. Exercise can be given to a third party by virtue of testamentary dispositions.”

French case law from the 19th century considers that adding color to a black and white picture violates the author’s moral right, Cass Crim. March 3, 1898. If the author is still alive, he can expressly say whether he considers that adding color is a violation of his moral rights. But Hergé died in 1983, and apparently did not leave written instructions as to whether he wanted his first album to be colorized. However, he may have expressed his opinion in conversations with his wife. A written expression of the author’s will is not mandatory.

His widow inherited his moral right and exercises them through Hergé’s estate. The estate states that Hergé wanted the album to be colorized. Therefore, publishing a colorized version of Tintin in the land of the Soviets is legal both under Belgium and French law.

Heroes never die…

Hergé’s widow strictly enforces his wish not to have Tintin undertake more adventures after his author’s death. This is not, however, the case for every famous francophone bande dessinée: Astérix survived the death of scenarist René Goscinny in 1977 and came back for new adventures written and designed by Albert Uderzo. Mr. Uderzo is now retired, but two more Astérix albums have been published so far penned by two new authors, Jean-Yves Ferri and Didier Conrad. Lucky Luke was originally designed by Morris with René Goscinny as scenarist. A new album, written and drawn by new authors, Jul and Achdé, has just been published. These new albums are published with the authorization of the heirs.

In all these cases, Tintin, Astérix and Lucky Luke, the persons who inherited the patrimonial rights also inherited the moral rights. But this is not necessarily the case: one person can inherit the patrimonial right and another person the moral rights. This often creates tension and may lead to a lawsuit. The author can also designate one heir to be in sole charge of one of his moral rights, such as the right of disclosure as in the Levinas affair. In that case, French philosopher Emmanuel Levinas, who died in 1995, had two heirs, his son and his daughter, but had given the right to divulgate his works only to his son, who authorized a post mortem publication of one of his father’s work. The sister sued, but the Cour de cassation, France’s highest civil Court ruled in 2010 that the sister had no right to divulgate, and thus her authorization to publish the work was not required.

I just wonder… What if the U.S had moral rights…? Would it have an impact of Walt Disney’s business model?

Monday, 16 January 2017

SEMINAR: The Rise of Web Blocking Orders in the UK: Empirical Evidence Perspectives

CITY UNIVERSITY are hosting a seminar with  Professor Lilian Edwards (Strathclyde University & CREATe) on Friday 3rd February. 13.00 - 15.00

The digital copyright and piracy wars, which began with Napster and continue today into the age of streaming, Spotify and Netflix, have engaged in broadly three strategies to defend existing content industries, which can be described as punish, prevent, and provide alternative business models. Both anecdotal experience in the legal system and empirical research carried out by CREAte and others point to the failure and partial abandonment of the punishment strategy, especially in its legislative "graduate response" form. By contrast, prevention, in its latest forms of site blocking and geoblocking, is rising in popularity, at least in the UK which has recently been described as the world leader in web blocking.  While it may be argued that prevention tactics are unnecessary given the rise  of legal streaming , have unfortunate side consequences and may even impede  a more profitable long term shift to alternative business models, it is hard to prove this using empirical evidence, as seen in recent UK court cases. This paper asks what evidence would be convincing here and if empirical evidence ,rather than normative claims, can ever successfully inform the copyright wars.

More here: It's free to attend but please register here:

Wednesday, 11 January 2017

Court gives jury mission to explore strange world of copyright and fair use

As noted by Tibbie in last the installment of CopyKat, Judge Klausner from the Central District Court of California sent the Paramount v. Axanar case off to jury trial on January 4, as he denied both parties’ motions to dismiss. Tibbie explained that the fair use defense failed. What could be next?

Judge Klausner noted that both motions “raise two core issues – whether the Axanar Works are substantially similar to the Star Trek Copyrighted Works, and whether Defendants have a valid fair use defense under the Copyright Act.” This is catnip for IP attorneys, especially IP attorneys writing for a cousin of The IPKat blog. We wrote about the Paramount v. Axanar case several times before (see here, here, and here) and it seems that 2017 will provide more opportunities for us to try to find witty [at least for us] Star Trek-related titles.

Plaintiffs in this case are Paramount and CBS Studios, which filed a copyright infringement suit against Axanar Studios and its principal Alec Peters claiming that the short movie Prelude to Axanar is an unauthorized derivative work. Axanar Studios is also planning to issue a full feature film, crowdfunded by Star Trek fans.
The case is not immature

Defendants were arguing that the court could not determine whether Defendants had indeed infringed Plaintiffs’ copyright without the completed Axanar motion picture, but Judge Klausner disagreed, as “evidence of a final shooting script satisfies the judicial standard for summary judgment.”

Substantial similarity between Plaintiffs’ and Defendants’ works

Judge Klausner noted that “the copyright infringement claim can live long and prosper if the Axanar Works are substantially similar to the Star Trek Copyrighted Works.” [Ha!]

To establish a prima facie case of copyright infringement, a plaintiff must demonstrate (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.

A plaintiff claiming copyright infringement must demonstrate that the defendant copied a substantial amount of elements of the protected work that are original. Courts in the Ninth Circuit use an objective extrinsic test and a subjective intrinsic test to find out whether there are substantial similarities between the works. This two-part test was first coined in the Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp. 1977 Ninth Circuit case. The extrinsic test asks if there is similarity of ideas, and analytic dissection is allowed. The intrinsic test asks if an "ordinary reasonable person" would perceive a substantial taking of protected expression. Analytical dissection is not appropriate.

Judge Klausner found the Axanar works, that is, both the short movie and the upcoming motion picture, have objective substantial similarities to the Star Trek copyrighted works, that is, the original television series and the movies. The intrinsic test “must be left to the jury.”

Judge Klausner performed the extrinsic test, analyzing whether Defendants used copyright protected elements from Plaintiff’s works.

Defendants use elements protected by copyright

Copyright only protects original works of authorship and therefore courts must filter out and disregard the elements of a protected work which are not copyrightable. This is called dissecting and filtering. Only elements which are protectable are then being compared with the allegedly infringing work. If there is substantially similarity, there is copyright infringement. Judge Klausner noted, however, that a combination of unprotectable elements can be protected by copyright “if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.”

Infringement of the character of Garth of Izar

Defendants argued that the characters and species used in their works were not subject to copyright protection. Judge Klausner disagreed, “at least with respect to Garth of Izar.” To reach this conclusion, he used the DC Comics v. Towle three-part test used in the Ninth Circuit to determine whether a particular character is protected by copyright. A character must (1) have physical and conceptual qualities, (2) be sufficiently delineated to be recognizable as the same character whenever it appears and (3) be especially distinctive and contain some unique elements of expression to be protectable by copyright.

Judge Klausner applied this test to Garth of Izar and concluded that this character can be protected by copyright. Garth appeared in the Whom Gods Destroy television episode as a live character and thus has physical as well as conceptual qualities. He is a former starship captain and he is very famous among Starfleet officers, including Captain Kirk, because he won the battle of Axanar in such an illustrious way that his exploits were required reading at the Starfleet Academy. The Garth of Izar novel published by Plaintiffs in 2003 further developed this character. As such, his “identity as a Federation hero sufficiently delineates him and sets him apart from a stock spaceship officer.”

Klingons and Vulcans species may be protected by copyright

The Klingons, long-time enemies of the Federation, stem from the planet Qo’noS. They have ridged foreheads and dark hair. Vulcans are part of the Federation, and one of their finest specimens is Spock, who, as do all his other fellow Vulcans, “suppresses emotions in favor of logic and reason.” Vulcans have pointed ears and upswept eyebrows, and males “usually have a bowl-shaped haircut.” For Judge Klausner, these characteristics of Klingons and Vulcans are not elements of expressions that necessarily follow from the idea behind the expression and may be entitled to copyright protection.

Star Trek Costumes may be protected by copyright

Judge Klausner found that several costumes from the original Star Trek works, such as a Klingon officer’s uniform, “a gray tunic with shoulder covers and a red neckpiece,” or the costume of Vulcan Ambassador Soval, an “Asian-style long robe and a drape decorated with Vulcan writing,” were similar to those used by Defendants in their works. Judge Klausner was careful to note that “[t]he artistic aspects of these costumes… can be identified separately from, and are capable of existing independently of, the utilitarian purpose of the costumes,” since utilitarian articles are not protected by U.S. copyright. However, these costumes may be protected by copyright, as “[t]he combination of artistic visual elements of these uniforms likely contains original expressions protectable under the Copyright Act.”

Settings and the Klingon language may be protected by copyright

Judge Klausner also found that the settings for the original Star Trek works, such as the planets Axanar, Qo’noS, and Vulcan, “the military spaceships including Klingon battlecruisers, Vulcan ships with an engine ring, and Federation spaceships with their iconic saucer-shaped hull (e.g., the U.S.S. Enterprise), space travel elements such as spacedocks, and Vulcan buildings – cathedrals with sword-blade-shaped domes” are protectable.

Judge Klausner also listed “the Federation, the Klingon Empire, and conflicts between the two in the Four Years War at the Battle of Axanar… , the Vulcan council, the teachings of the Vulcan philosopher Surak, the use of the Federation logo, stardate, transporters and warp drive, weapons such as phasers and photon torpedoes, and the Klingon language” as being protectable.

Judge Klausner explained that [a]lthough each of these elements may not be individually original and copyright protectable, they are “numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship,” especially when combined with the costumes and fictional characters and species, examples of which are described above.”

Works are substantially similar

Judge Klausner found that under the extrinsic test, Defendants’ works were substantially similar to Plaintiffs’ works. He noted that Defendants wanted “to create an authentic and independent Star Trek film that [stayed] true to Star Trek canon down to excruciating details.” Defendants’ works are set in the Star Trek universe and “intentionally use or reference many elements similar to those appearing in the Star Trek Copyrighted Works,” such as the appearance of the Klingons and their weapons. For Judge Klausner, “Defendants intentionally use[d] elements from the Star Trek Copyrighted Works to create works that stay true to Star Trek canon down to excruciating details.”

“Excruciating details” seems to be used by Judge Klausner in place of “substantial similarity” and this cannot be good news for Defendants’ attorneys.

Defendants are not entitled to the fair use defense

Judge Klausner examined the four fair use factors to decide whether the use of the original Star Trek works by Defendants was fair and found that all the factors weighted in favor of Plaintiff.

As for the first factor, the purpose and character of the use, Judge Klausner found that Defendants’ use was not transformative, as it does not have a further purpose or different character, nor does it alter the original Star Trek works with new expression, meaning, or message, as required by Campbell v. Acuff-Rose Music. Indeed, “Defendants want the Axanar Works to supplant the Star Trek Copyrighted Works” by creating “alternative ways for fans to view Star Trek.”

Defendants argued that their works are “mockumentaries,” that is, fictions presented in a documentary form, which is a form of parody and are thus transformative. Judge Klausner was not convinced, reasoning that, under Campbell, a parody must use some elements of a prior work to create a new work that criticizes the substance or style of the prior work, and must “target the original, and not just its general style, the genre of art to which it belongs, or society as a whole.” Judge Klausner could not discern any criticism of the Star Trek Copyrighted Works in Defendants’ works.

Defendants argued that their works are not commercial because they are and will be distributed for free. Judge Klausner was not convinced by this argument either, noting that “Peters hoped to derive non-monetary benefits, for example, other job opportunities, from the Axanar Works.” Therefore, Defendants, who did not obtain a license from Plaintiffs, “profit from exploitation of the copyrighted material without paying the customary price.”

Judge Klausner also found that the second fair use factor, the nature of the copyrighted work, weighted in favor of Plaintiff as their works “have transported the hearts of a legion of fans to the Star Trek universe. …They are the type of works that are given broad copyright protections.”

As for the third factor, the amount and substantiality of the portion used, Judge Klausner found that Defendants used elements which are part of the Star Trek canon “down to excruciating details[the third time Judge Klausner wrote ‘excruciating details,’ ouch] and that Star Trek elements “pervade” Defendants’ works.

Finally, Judge Klausner found that the fourth factor, the effect of the use upon the potential market, also weighted in favor of Plaintiffs, because “Defendants evidently intend for their work to effectively function as a market substitution to the Star Trek Copyrighted Works,” further noting that “[t]he fact that Defendants distributed Prelude and the Vulcan Scene for free online and intend to likewise distribute their future works may likely increase the risk of market substitution as fans choose free content over paid features.”

The ultimate, but infringing fan fiction?

Peters wanted to create “a whole new way that fans can get the content they want, by funding it themselves.” It is an interesting initiative, which tests the scope of the legality of fan fiction. The case may ultimately set a precedent to the detriment (or benefit?) of more modest fan fiction initiatives.

Image of Spock is courtesy of Flickr user JD Hancock under a CC BY 2.0 license.

Image of cake courtesy of Flickr user Claire Neill under a CC-BY-NC-ND 2.0 license.

Sunday, 8 January 2017

Fair Use? It’s in the bag

On December 22, 2016, the Second Circuit affirmed the January 6, 2016 order from Judge Furman of the Southern District of New York (SDNY), which had found that the use of the Louis Vuitton logo and the representation of the Louis Vuitton bags on fabric totes was fair use. The maker of the tote, My Other Bag (MOB), was represented by David Korzenik, my former Entertainment Law professor at Cardozo School of Law, who encouraged all his students to write and publish and first gave me the idea to write about law.

Louis Vuitton famously designs and sells luxury bags carrying its LV logo. These bags are often seen in first class airport lounges all around the world, or so I’ve been told, but is it wise to use them as gym bags or shopping bags? The founder of MOB, Tara Martin, wondered, like all of us, if one should carry one’s Louis Vuitton bucket bag to go grocery shopping, considering, after all, that one Louis Vuitton bag was originally designed to carry champagne bottles (the French are so clever, non?)

Ms. Martin’s answer was to create fabric totes with one side representing a somewhat cartoonish rendition of a famous luxury bag, such as Hermès’ Kelly bag, Chanel’s matelassé bag, and several models of Louis Vuitton bags, while the other side read “My Other Bag is…”This phrase is inspired by the “My other car is a Jaguar/a Mercedes…” bumper stickers which were once ubiquitous on automobiles of a somewhat less expensive nature. The Louis Vuitton ‘LV’ logo are replaced on the MOB totes by the initials MOB and are sold from $35 to $55.
Source: http://www.myotherbag.com
Louis Vuitton considered this use to be infringing and filed a suit against MOB, claiming trademark dilution, trademark infringement, and copyright infringement. MOB moved for summary judgment, which was granted on all points by Judge Furman from the SDNY.

As this blog concentrates on copyright, I will only address this particular issue in this case (I wrote about the trademark issues of the case here). Judge Furman had examined all the four fair use factors and found the use of the copyrightable elements of Louis Vuitton’s prints to be fair use.

Judge Furman from the SDNY: it is a parody and it is fair use

The first factor, the purpose and character of the use, was in favor of MOB, even though the use is commercial, because the use is a parody, which, “even when done for commercial gain, can be fair use” (at 445). Judge Furman found that that the second factor, the nature of the copyrighted work, was not of much help, as a parody almost invariably copy publicly known, expressive works. The third factor, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, was found by Judge Furman to be reasonable in relation to the purpose of the use, because “MOB's totes must successfully conjure Louis Vuitton's handbags in order to make sense”(at 445).

As for the fourth factor, the effect of the use upon the potential market, Judge Furman had found that even though

MOB's totes are, in an abstract sense, in the same market as Louis Vuitton's handbags, its totes do not "serve[] as a market replacement for" Louis Vuitton's bags in a way that would make "it likely that cognizable market harm to [Louis Vuitton] will occur… [as] any reasonable observer would grasp that the whole point of MOB's invocation of the "my other car..." trope is to communicate that MOB's totes are not replacements for Louis Vuitton's designer handbags. See Cariou v. Prince, 714 F.3d 694, 707 (2d Cir.2013) ("What is critical [in evaluating a fair use defense] is how the work in question appears to the reasonable observer.") (at 445).

The Second Circuit: the use is transformative

The Second Circuit reviewed the summary judgment de novo and affirmed both the award of summary judgment to MOB on Louis Vuitton’s trademark infringement claim, trademark dilution claim, and copyright infringement claim.

The Second Circuit found that MOB's use of Louis Vuitton’s designs was a parody which “produces a “new expression [and] message” that constitutes transformative use…. Like the district court, we conclude that the remaining fair-use factors either weigh in MOB's favor or are irrelevant, see Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 156 F. Supp. 3d at 444–45, and LV's arguments to the contrary largely repeat or echo those we have already rejected.”

This case signals that the Second Circuit is continuing to affirm the importance for a court to assess whether a particular use is transformative when deciding whether a particular use is fair use or not.

Friday, 6 January 2017

Now BMI takes on the US Radio industry

Last month, Irving Azoff’s US collection society, Global Music Rights (GMR), launched a legal attack on the Radio Music License Committee (RMLC), which represents over 10,000 commercial radio stations in the United States. The suit followed an action by the RMLC that moved that GMR be enjoined from licensing its catalogue of songs for more than a rate that represented the pro-rata share of its catalogue against those of the other PROs (primarily BMI and ASCAP, and SESAC) while its broader antitrust action is aimed at establishing an appropriate mechanism for determining those rates in the future - and forcing the rights agency to submit to independent arbitration to set the rates broadcasters must pay to play the songs it represents. Azoff formed GMR in 2013 to compete with ASCAP and BMI, which together control approximately 95% of music copyrights. The other independent and privately owned PRO in the USA, SESAC, recently entered into a settlement of with RMLC, following an antitrust action similar to the one filed against GMR.

Against a background of many songwriters and music publishers believing that commercial radio stations in the USA and elsewhere are paying far too little to use their work, GMR's lawsuit accused the RMLC of operating a ‘cartel’ which deliberately suppressed royalty payments to songwriters for music used across its network and targeted over 10,000 radio stations with an action that would have forced the stations to acquire a license in order to play music associated with any GMR songwriter artist (GMR have published a roster that includes Jay Z, The Eagles, Pharrell Williams, Adele, Daft Punk and hundreds more). One blip was that in response, heavy metal band Anthrax penned an open letter to Azoff for mistakenly including the band in the GMR "fair pay for fair play" lawsuit against the radio stations. The band suggested that whilst they have performed one song which is a composition by members of Metallica and Megadeth (the latter being represented by GMR) they are not represented by GMR and the error could discourage radio stations from playing Anthrax songs. 

On December 24th, GMR offered RMLC stations a temporary license to play songs by its clients. In a statement GWR said

"Today, GMR has offered a license to all radio stations represented by the RMLC allowing the stations to play GMR's repertoire in exchange for specified license fees. This license extends ‪through September 30th, 2017 and gives everyone additional time to negotiate long-term licenses with GMR. GMR offered this license to the RMLC last month, but the RMLC refused it and, instead, chose to sue and seek an injunction. With today's agreement, the RMLC has withdrawn its request for an injunction and radio stations across the country will have the opportunity to offer their listeners GMR's quality music."

Elsewhere, fellow PRO ASCAP has since re-signed a deal with RMLC for the next five years, covering its repertoire at a mutually agreed rate.

But the other major (and regulated) PRO BMI hasn't been so amenable.  The society has now filed an action in Federal Rate Court to set interim fees for radio stations represented by the RMLC – while BMI and the RMLC negotiate the terms of a new five-year deal beginning in 2017.

BMI said that the RMLC had "proposed an interim rate well below BMI‘s previous deal, the effect of which would have a significant impact on the royalties BMI pays to its songwriters, composers and music publishers" saying "The RMLC has justified its proposed rate based upon incomplete and incorrect information regarding BMI‘s radio performances. BMI disagrees fundamentally with the RMLC’s proposal and, consistent with past practices, is asking the Court to maintain its most recent rate while new terms are negotiated."

Mike Steinberg, Senior Vice President of Licensing for BMI, told reporters: “We attempted to negotiate in good faith with the RMLC for many months, and just before the end of the year, the RMLC presented an interim rate that significantly undervalues the work of BMI’s songwriters. Given the unmatched caliber of BMI‘s repertoire, our superior market share on radio, and the ever-increasing value that BMI music brings to the radio industry across all its platforms, we believe the RMLC’s proposal falls well short of what is in the best interests of our affiliates."

In an extreme version of a similar situation,  albeit here with a public service broadcaster, Bulgarian press reports said that as of 00.01 on January 1, 2017, Musicautor, Bulgaria’s non-profit society of composers, lyricists and music publishers, took action that has forced the country's national radio to play only music produced before 1945:  indeed, instead of hearing the official Bulgarian anthem at midnight, as they do every year, listeners to Bulgarian National Radio (BNR) heard an alternative version performed by BNR’s own choir and symphonic orchestra - and now have a diet of folk, classical and some jazz music. Musicautor, which hold the copyright to over 14,000,000 songs from Bulgarian and worldwide artists, suspended its contract with BNR and BNR is prevented from playing much contemporary Bulgarian and foreign music until the fee issue is resolved. The PRO has asked for a threefold increase in its payments, saying this would bring payments into line with those made by other European public radio broadcasters to use music.






US radio industry accuses Global Music Rights of monopoly abuse http://www.musiclawupdates.com/?p=7048

The First CopyKat of the Year, Courtesy of Tibbie

The first CopyKat of the year, written by Tibbie McIntyre.  Enjoy!

Disney’s Lightning McQueen wins in Chinese Copyright case, Cars vs. Autobots

Back in July 2016, Disney took three Chinese firms (Blue MTV, media company Beijing G-Point and PPLive Inc.) to court for copyright infringement of ‘Cars’, the main protagonist of which being ‘Lightning McQueen’.

An ancestor of Lightning McQueen?

Claimed to be infringing Disney’s copyright in ‘Cars’ was another cartoon escapade surrounding automobiles called ‘Autobots’, a Chinese film directed by Zuo Jianlong. A side-by-side comparison of the movie posters for the ‘Autobots’ and ‘Cars’ can be found here.

Released at the very end of 2016, the ruling in this case found that ‘Autobots’ does indeed infringe the copyright of Disney’s ‘Cars’. More specifically, it was found that two characters from ‘Cars’ had been plagiarised – Lightning McQueen and Francesco Bernoulli. Additionally, it was found that the ‘Autobots’ Chinese title characters had been manipulated to make it appear as if the movie was part of the series. According to Li Rongde of Caixing Global,

“The Chinese titles for the movies are very similar, with the local production’s being Mobilization of Autobots, while the Disney film’s was Mobilization of Race Cars. One crucial Chinese character that differentiates the words Autobots and Race Cars was hidden behind an image of a wheel, a comparison of the two movie posters showed.” [You can visually compare the Chinese characters between the two posters here.]

Damages awarded by the Court, covering both legal fees and compensation, amounted to 1.35 million Yuan ($194,000), although it is interesting to note that the film grossed around $864,000 at the box office, from a budget of approximately $431,000.

The case has been lauded as a success for Disney, which recently opened a $5.5 billion Shanghai Disney theme park. It has, however, also been reported that the director of ‘Autobots’, Zuo Jianlong will launch an appeal.


Walt Disney and the Public Domain in Canada

In keeping with the Disney theme, it is interesting to note that any works of which Walt Disney was the sole or last surviving joint author, are now in the public domain in Canada, since he died in 1966 and Canada has a copyright term of life + 50 years. It might be interesting to review any upcoming uses of such works.

Online Service Providers – A Series of Updates

Online registration required for online service providers to maintain safe harbor

Online service providers benefit from the Safe Harbor rule. Essentially, this means that companies which host third party content will escape from liability for infringing content posted by third parties (examples include YouTube, Google and Facebook, where users generate content). The American legislation (Digital Millennium Copyright Act (“DMCA”)) provides rules and guidance on how Internet copyright infringement should be dealt with, as well as guidelines on how to issue notice and takedown procedures, which enable copyright holders to notify online service providers of infringing content posted by third parties.

Designating an agent that deals with notifications (i.e. take down requests) received from copyright holders alleging copyright infringement is an essential component for online service providers to maintain their limitation of liability. In order to designate an agent, an online service provider must (i) provide contact details of that agent available on its website and (ii) provide the same information to the US Copyright Office, which maintains a directory for public use.  Upon notification from the copyright holder of infringing content, the designated agent has further statutory obligations, including the removal of material identified as infringing. Appropriate designation of an agent is of great importance, as failure to comply in BWP Media USA v Hollyood Fan Sites (S.D.N.Y. 2015) led to the denial of safe harbor protection.

***The US Copyright Office is currently requiring each online service provider to assign an agent to receive notifications of alleged infringement (as required under the DMCA) on a new online system, which can be found here.***

The US Copyright Office will no longer accept paper designations, and the deadline to assign a designated agent on the new online system is December 31 2017. Until 31 December 2017, an agent compliantly registered in either the old directory or the new directory will satisfy the online service provider’s obligation under section 512(c)(2) of the DCMA. Register here.

***In order for an online service provider to maintain its safe harbor from copyright infringement, it must register its designated agent on its new online system by December 31 2017.***  Register here.

Google take down requests in 2016

Between 4 January 2016 and 4 January 2017 Google removed 916 million URLs as a result of take down requests from copyright holders.

UK music industry group BPI issued the most take down requests, at 263 million – equating to an average of 763 per week. Of these requests, 95% were removed. The other 5% are still pending. The designated agent for Google would have to remove 22 URLs per hour for the entire working year in order to meet these requests, keeping in mind that this figure relates to the take down notices received from just one copyright holder, amounting to just over a quarter of the take down notices over the year.

In order to review the 915 million take down requests issued throughout the year, the take down requests would have had to have been reviewed at an average of 503,297 per working hour*. It is an interesting reflection, especially considering the challenges ahead in how we regulate copyright online.

*I haven’t taken into consideration automation or outsourcing. These numbers are to simply illustrate the sheer volume of take down requests made in 2016.

Australian online service providers ordered to block pirate websites

In December last year, Australia’s biggest online service providers (Telstra, Optus, TPG and M2) were injuncted to block user access to The Pirate Bay, Torrentz, TorrentHound, IsoHunt and SolarMovie. The court action was brought by copyright holders Foxtel and Village Roadshow. The online service providers were given 15 business days to implement the ruling in whichever manner they chose: DNS, IP address, ULR blocks or any other technical approach.

The online service providers were able to successfully argue against a rolling injunction scheme, whereby the copyright holders would be granted the discretion to issue out-of-court orders to online service providers to block mirror domains.

To further elucidate, when pirate sites are blocked, proxies often pop up to replace the blocked sites. Once these proxies are up and running, they effectively replace the infringing activity previously performed through the injuncted sites. In order to have these new proxies blocked, copyright holders must again take court action to have these new infringing sites blocked – like a judicial game of whack-a-mole. A rolling injunction scheme – allowing copyright holders to issue out-of-court orders to online service providers – would avoid the necessity for copyright holders to have to pursue another court action to block the new proxies. Richard Lancaster, the lawyer of Foxtel and Village Roadshow stated that the creation of proxies;

“is a known problem in the real world. It will be a problem that arises in the implementation of your honour’s orders. And we’re concerned – given this is the first case – that a procedure be adopted that will not create a real administrative burden for the future in having to do something unnecessary and elaborate such as the [internet firms] suggest”.

Judge John Nicholas ruled that “Whether the terms of any injunction should be varied to refer to additional domain names, IP addresses or URLs is a matter for the court to determine in light of evidence”.

Web-blocking is favoured by big creative industry, however the fast pace creation of replacement proxies, coupled with judicial reticence to issue rolling injunction schemes (in Australia, at least) appears to highlight some of the forthcoming challenges in 2017.

Space … the final frontier – ‘Star Trek: Prelude to Axanar’ denied fair use defence

Star Trek, the show that inspired the creation of an entire fictional canon, is at the forefront of a current fair use story.

“I don’t believe in a no win scenario” – Captain Kirk on the Kobayashi Maru Test

In 2015 Paramount Pictures and CBS filed court action against the makers of fan fiction spin-off Star Trek: Prelude to Axanar for copyright infringement. Fan fiction has existed for a number of years, including works such as Star Trek: New Voyages and Star Trek Continues, yet this is the first to be targeted by the big studios in a court action. The reasoning behind targeting this fan fiction project, as detailed by CBS and Paramount, was that a studio had been constructed for filming - from which future rental income could potentially be earned, Axanar tried to license out their Star Trek through products and an attempt had been made to make Axanar available to view on Netflix, all of which would lead to commercial gain for the Defendants.

A significant consequence of the ruling released this week is that the four factor fair use defence has been excluded for use by the Defendants. A brief summary of the judges reasoning in relation to the fair use aspect is found below, for the interested Trekkies among our readers.

Factor 1, ‘The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes’ (17 U.S.C. § 107(1)) (also known as the ‘transformative factor’):

The judge ruled that, even though no direct commercial benefit would be received by the defendant,

“common experience suggests that Defendants stood to gain at least indirect commercial benefit from the viewership boost which they had reason to hope would (and in fact did) result from the Axanar Works” (internal citations omitted)

The judge ruled that Axanor is not transformative as a parody because “parody must use some elements of a prior work to create a new work that criticizes the substance or style of the prior work. … Here, the Court has difficulty discerning from the Axanar Works any criticism of the Star Trek.” This factor weighed in favour of the Plaintiffs.

Factor 2, ‘The nature of the copyrighted work’ (17 U.S.C. §107(2))

The judge ruled that “the Star Trek Copyrighted works include …. a fictional universe. … The creativity in these Works and their status as published works …. are given broad copyright protections.” This factor weighed in favour of the Plaintiffs.

Factor 3, ‘The amount and substantiality of the portion used in relation to the copyrighted work as a whole’ (17 U.S.C. §107(3))

“Defendants intentionally use elements from the Star Trek Copyrighted Works to create works that stay true to the Star Trek canon down to excruciating details. … elements of the Star Trek Copyrighted Works pervade the Axanar Works. … the third factor weighs in favor of Plaintiffs.”

Factor 4, ‘Effect of the Use upon the Potential Market’ 17 U.S.C. §107(4)

“The Axanar Work is the kind of potential derivative Plaintiffs would in general develop or license others to develop … Defendants evidently intend for their work to effectively function as a market substitution to the Star Trek Copyrighted Works … The fact that Defendants distributed … for free online and intend to likewise distribute their future works may likely increase the risk of market substitution as fans choose free content over paid features.”

The exclusion of the fair use defence in this case leaves only a finding of substantial similarity for a jury (it might be safe to assume that Axanar is substantially similar to the Star Trek canon). No other defences are available. Which means that, unless a deal is struck between the parties in the meantime, resistance is futile for Axinar.

Monday, 2 January 2017

Happy New Year!

To all our readers: Happy New Year!

Thank you for reading our blog, we are looking forward to a new IP law year with you!

With our best wishes,

The 1709 Blog Team.

Friday, 30 December 2016

Delhi High Court rules that three Indian collection societies must cease to issue licences

In a blow to three Indian music copyright collection societies, the Delhi High Court has restrained them from granting any such licence till April 24th 2017. Justice Sanjeev Sachdeva, in an interim order, restrained the Indian Performing Right Society (IPRS), the Phonographic Performance Ltd (PPL) and Novex Communications Pvt Ltd from contravening section 33 of Copyright Act,  which provides that only registered societies can grant licences in respect of copyrighted work(s). 

In the order issued on the 23rd December the court ruled:

“Since the respondent 1 (Centre) and 2 (Copyright Office) have already initiated an inquiry and are taking action vis-a-vis the respondents 3 (PPL) and 4 (IPRS) and their stand is that neither of the three respondents, i.e 3, 4 and 5 (Novex) are registered in terms of section 33 of the Act, till the next date of hearing, respondents 3 to 5 are restrained from acting in contravention of section 33 of the Act..”. The  court listed the matter for a further hearing on April 24th.

In July 2015 The Delhi Organisers and Artists Society and the Mumbai based Organisers and Artists Welfare Trust said that the IPRS and PPL had been de-registered after the amendment to the Copyright Act in 2012 when it was laid down that any organisation had to re-apply for registration, which would be valid for five years. They also complained that IPRS had failed to make royalty payments to artistes.

The Event and Entertainment Management Association of India (EEMA) had filed a enquiry with the court, and EEMA said that iy had been working towards regularising and streamlining the music licensing regulatory framework for many years now. It has been engaged in a "long, slow but constant legal battle against the exploitation by the so called ‘Registered Copyright Societies’ who charge a ‘royalty’ for music played out at events." EEMA argued before the court that PPL and IPRS's registrations had lapsed in June 2013, and these had not been renewed, whilst Novex has never been registered as a copyright society.

Ankur Kalra, Secretary (Legal), EEMA, said, “The music licensing lobby (PPL / IPRS / Novex) has been engaged in illegal issuance of licences for over two years now and flouts all laws by openly threatening venues to stop events unless the licence is procured. Venues in turn pressurise event managers to do the same who despite knowing that it is wrong are forced to procure these licences to safeguard their events. The music licensing ‘societies’ today are private limited companies operating purely for profit and very little or no money actually reaches the artists. It has become an organised syndicate and when we highlighted the same to the court we got an injunction almost immediately. We will take this battle forward and ensure that all event managers, venues and police departments are educated on this matter.”

Abhishek Malhotra, Legal Counsel, EEMA, said, “The music industry has been going through a flux. While the law clearly provides that issue and grant of licences can be done only through a registered copyright society, these three entities have been effectively carrying on this business in violation of the clear legal provisions. This order as well as the government of India’s endorsement of the issues facing the users of music is a welcome development.”

The court also directed the Centre and the Copyright Office “to take action in accordance with law for any breach of provisions of section 33 by the respondents 3 to 5”. The Centre and the Copyright Office submitted that they have received complaints that PPL and IPRS were violating the Act and had already initiated an enquiry.