France: Cour de cassation on software copyright

Legalis.net reports today (en français)  that on 17 October 2012 the Cour de cassation annulled a decision of the cour d’appel  of Aix-en-Provence, which appeared to have forgotten the rules of originality for copyright in computer programs. It has to be shown that:

les choix opérés [témoignent] d’un apport intellectuel propre et d’un effort personnalisé de celui qui avait élaboré le logiciel litigieux, seuls de nature à lui conférer le caractère d’une œuvre originale protégée. 

So, software is protected only if it is the author's own intellectual creation - under the software directive, if not expressly in UK copyright law. France seems to have got it more right than us.

The cour d'appel had held that the software was original because it provided a particular solution to the management of bailiffs - a significant problem, I can confirm, having once acted for a large organisation of bailiffs ... The cour de cassation referred back to its 1986 decision in Pachot, where it had held that the creator of a program had to impress his or her own personality on it: it had to be more than the mere implementation of an automatic, logical process. And that, in all areas of copyright law, must be right - although our law might not say so in so many words, and the required standard of originality might be abysmally low (and falling).

You can read the judgment here, si vous voulez.

European Commission looks at trade secrets

The Commission has announced that it is carrying out a survey on confidential business information and trade secrets. The idea, at the moment, is that businesses (well, it says "companies", but I don't imagine we are talking strict Companies Act definitions here) can contact the contractor carrying out the survey (Baker & MacKenzie) to register their interest in being involved, and they will receive credentials to enable them to log in to the website where it is all going to happen.

Should we hold Baker & MacKenzie responsible for the split infinitive in the piece on the Commission's website?

There's now an app for checking CLA licensing

The Copyright Licensing Agency has developed a mobile app for iPhone and Android (further discrimination against BlackBerry users, I fear) which enables users to scan the ISBN or ISSN code of a book and find out whether they may legally copy it under their CLA licence. More details, including where to download it, via this link.

Hubris: Apple's knuckles rapped by Court of Appeal

The whole world, or at least quite a large part of it, knows the story of Apple's failure to post the apology which the courts thought they had told it to post, to Samsung. But there's more to it than is apparent from reading the newspapers. Have a look at Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1430 (9 November 2012) and marvel that they ever thought they might get away with it.

As Sir Robin Jacob made clear - indeed, went out of his way to emphasise - the case was never about whether Samsung copied the iPad. It was about whether Samsung had infringed a registered design, which was not the same as the iPad, and as Sir Robin had said on the original appeal, the case had to be decided as if the iPad had never existed. The UK case was not at odds with decisions of other courts around the world - in fact, it was at one with them, which is precisely the opposite of the impression given by the Apple statement. The court awarded costs to Samsung on an indemnity basis, one of the devices available to it as "a mark of the court's disapproval of a party's conduct, particularly in relation to its respect for an order of the court." It must, indeed, have come close to being contempt.

I have read some comments which accuse the Court of Appeal of Apple-bashing. Apart from demonstrating a degree of ignorance which should deter any sensible person from going public with their views, the idea that somehow an American corporation should be able to cock a snook at the legal system of a country in which it does business is disturbing - one can imagine the howls from the same commentators if a British company treated the American legal system that way (however richly it might deserve it).

Director jointly liable for copyright infringement

It is not unknown for directors of companies to be held personally liable for copyright infringements committed by their companies. One can be jointly liable for an infringement if one has acted in concert with another infringer, or other infringers, for a common purpose, but it is rare for directors of a company to be jointly liable with their company. In a recent Scottish case, Naxos Rights International Ltd v Project Management (Borders) Ltd and Salmon [2012] CSOH 158 the Outer House of the Court of Session ruled that the defendant and its sole director were jointly liable for infringing copyright.

 

Naxos is the largest independent classical music record label in the world, and certainly when it was new it was widely disliked in the industry. It developed its catalogue by using eastern European orchestras and performers which it could hire for much less than it would have to pay British ones. It also had a spot of copyright trouble in the US, in Capitol Records, Inc. v Naxos of America, Inc. 2005 NYSlipOp 02570, arising from its issuing of CDs made from old shellac discs which it turned into digital recordings and cleaned up. But that was then, and this is now: Naxos seems now to be regarded as a respectable player in the classical music industry, with a fantastic repertoire at budget prices.

The defendant company offered classical music through its website, which ominously could be found at the address www.royalty-free-classical-music.org. Naxos sued the company and Dr. Salmon, its sole director and shareholder (don't get your fish mixed up) for unpaid royalties stemming from sale and resale of two Naxos recordings, one Vivaldi's "The Four Seasons" performed by Cappella Istropolitana, which was based in Bratislava, with Takako Nishizaki (violin), conducted by Stephen Gunzenhauser - a classic Naxos mix, I think; and the other the Christmas carol "Joy to the World" performed by the Choir of Worcester Cathedral under Donald Hunt, which fits the Naxos mould less well - indeed, not at all. A total of 14 tracks were in issue, and there was no doubt that the files offered by the defenders were indeed copies of the Naxos recordings. The court found the company liable for infringement with no difficulty, but what about the director, Mr. Salmon? On the principle that there is joint liability where a party "intends and procures and shares a common design that the infringement takes place", the court ruled that he was liable in his own right. He had, along with the company, put together and operated the website through which the infringing tracks were sold, and he could not hide behind the corporate veil. Ironically, of course, Mr. Salmond's defence was based on the principle in Saloman v Saloman and Co. Ltd. [1897] AC 22, but more important was the less ancient (English) precedent  MCA Records v Charly Records Ltd [2002] FSR 26 (CA), in which Chadwick LJ identified the four principles which deal with a director's liability, which I think bear repeating here:

49 First, a director will not be treated as liable with the company as a joint tortfeasor if he does no more than carry out his constitutional role in the governance of the company - that is to say, by voting at board meetings. That, I think, is what policy requires if a proper recognition is to be given to the identity of the company as a separate legal person. Nor, as it seems to me, will it be right to hold a controlling shareholder liable as a joint tortfeasor if he does no more than exercise his power of control through the constitutional organs of the company - for example by voting at general meetings and by exercising the powers to appoint directors. ... I would hesitate to use the word 'never' in this field; but I would accept that, if all that a director is doing is carrying out the duties entrusted to him as such by the company under its constitution, the circumstances in which it would be right to hold him liable as a joint tortfeasor with the company would be rare indeed. ...

50 Second, there is no reason why a person who happens to be a director or controlling shareholder of a company should not be liable with the company as a joint tortfeasor if he is not exercising control through the constitutional organs of the company and the circumstances are such that he would be so liable if he were not a director or controlling shareholder. In other words, if, in relation to the wrongful acts which are the subject of complaint, the liability of the individual as a joint tortfeasor with the company arises from his participation or involvement in ways which go beyond the exercise of constitutional control, then there is no reason why the individual should escape liability because he could have procured those same acts through the exercise of constitutional control. ...

51 Third, the question whether the individual is liable with the company as a joint tortfeasor - at least in the field of intellectual property - is to be determined under principles identified in CBS Songs Ltd v Amstrad Consumer Electronics Plc [1988] AC 1013 and Unilever Plc v Gillette (UK) Limited [1989] RPC 583. In particular, liability as a joint tortfeasor may arise where, in the words of Lord Templeman in CBS Songs v Amstrad at page 1058E to which I have already referred, the individual 'intends and procures and shares a common design that the infringement takes place'.

52 Fourth, whether or not there is a separate tort of procuring an infringement of a statutory right, actionable at common law, an individual who does 'intend, procure and share a common design' that the infringement should take place may be liable as a joint tortfeasor. As Lord Justice Mustill pointed out in Unilever v Gillette, procurement may lead to a common design and so give rise to liability under both heads.

 

Heading for trouble over extended collective licensing?

The Register reports, under the headline UK's planned copyright landgrab will spark US litigation 'firestorm', that American photographers are not amused by the changes which will be wrought by the Business and Enterprise Reform Bill currently before Parliament. The American Society of Media Photographers, the Professional Photographers of America, the National Press Photographers Association, the Picture Archive Council of America, and the Graphic Artists Guild, argue in a letter to Business Secretary Vince Cable that the proposals to create extended collective licensing schemes breach international law, saying:

 

If the use of foreign works in the UK is directly or indirectly permitted by this Bill, a firestorm of international litigation will immediately ensue, and any persons, businesses or institutions making use of foreign works under this Bill would be well served to expect to be promptly sued by the copyright holders, incurring significant liability for copyright infringement.

 

The schemes can grant others the rights to use material without the copyright owners' consent, and without payment of a royalty, unless they manage to opt out of the scheme. Rather like the Google book scheme, then. Intended to deal with the problem of orphan works, the UK legislation seems to be being pushed through with indecent haste before the recently-adopted directive has to be implemented: the UK's own approach is very different from that in the European Union.

The Register explaines that calling things "orphan works" is often misleading because "most of them are actually recent digital images that have been stripped of their attribution, rather than old black-and-white snaps festering in library vaults". It also reports that no economic impact assessment of the potential damage has been conducted by the IPO, which it refers to as a "rogue agency" (singling out one civil servant for particular opprobrium, which I won't compound by mentioning names here).

No EU Rights in Fixtures Lists -- Court of Justice Judgment

The long-running claim by the English and Scottish professional football leagues, Football DataCo, and its sub-contractor PA Sport has finally come to an end, four years after it started: Football Dataco Ltd & Ors v Yahoo! UK Ltd [2012] EWCA Civ 1696 (12 November 2012). The Claimants told the Court of Appeal that, following the Court of Justice's decision, they accepted they did not have rights in the fixture lists.

The Court of Appeal declared that neither database copyright nor sui generis database rights subsists in the EU in fixtures lists. It ordered the claimants to post this message on their respective websites for a month clarifying the position:

Following the decision of the Court of Justice of the European Union dated 1 March 2012 in Case C-604/10 Football Dataco Ltd v Yahoo! UK Ltd & Others, it has been determined that neither copyright nor sui generis database rights subsist in the EU in fixture lists for the English and Scottish football leagues."

The claimants suggested at the hearing before the Court of Appeal that they might find a way to create fixture lists in a new way in future that attracted protection, but they do not seem to have any concrete ideas at present. Given that the Court of Justice found that the activity conducted by the Claimants in creating the fixtures should be disregarded when assessing whether the fixture lists merited protection, they sound very optimistic indeed.

Presumably now there will be rather a lot of claims for repayment of licence fees - especially for the period since the Court of Justice decided that there were no rights to support the claimants' licensing activities.

Public showing of films - there's more to it than copyright

If you wish to show a film in public, there's quite a lot to think about - not all of it copyright-related. It's certainly not just a mater of going to the DVD rental shop, or buying the disc from Amazon or somewhere - those copies will have copyright restrictions that will thwart your purpose (or land you in trouble if you breach them). Having done some delving, I thought I might usefully make the result of my research available.

To start with, you can find out what sort of licences you might need at Licences you may need to apply for - Licence Finder - GOV.UK. It covers a wide range of activities, not only showing a film. In addition to a licence covering the copyright in the film, you will also - probably - need a premises licence under the Licensing Act 2003.

The licence to show the film itself is dealt with by crossing the palms of either the Motion Picture Licensing Company Ltd or Filmbank with silver. Which of them you need to go to, depends on the film you want to show and the market sector in which you operate. Whether you are showing a single film (whether on a commercial or non-profit basis), or need an annual licence, they can usually help. Otherwise you will have to approach the distributor of the film.

Look at the sky, look at the river ...

... Isn't it good? No, not in this case, there's nothing good at all.

I haven't blogged the so-called Angry Gnomes case on Community registered designs before, which is surprising given that it has been through so many levels of appeal. It fell within one of my blogging hiatuses, although I covered the OHIM Board of Appeal decision in a podcast. From Alicante it embarked on an expedition to Luxembourg, where the General Court had a go and now the Court of Justice has weighed in too.

The real name of the case is Joined Cases C-101/11 P and C-102/11 P Herbert Neuman, Andoni Galdeano del Sel, and Office for Harmonisation in the Internal Market (Trade Marks and Designs) v José Manuel Baena Grupo, SA and the General Court case, slightly abbreviated, is T-513/09 Baena Grupo v OHIM (that link is to the French text, which I assume is usually going to be the most useful to my readership). Mr Neuman and Mr Galdeano del Sel were interveners in the General Court, but became appellants when they took it to the Court of Justice. The subject matter comprised two representations of gnomes, in the form of simple line drawings, both seated but one looking relaxed and the other looking distinctly angry about something - perhaps about the temerity of the applicant for registration of the later design, which it believed conflicted with its own earlier trade mark rights. The RCD was first invalidated as being a misuse of the earlier rights, but the Board of Appeal overturned that decision on the basis that the idea of "use" did not extend to use of something merely similar. However, it decided that the RCD lacked individual character over the cited trade mark, so it was still invalid, and the owner of the RCD appealed to the General Court.

The General Court (in January last year) reversed the Board of Appeal, to do which it had to perform some strange gymnastics. It decided that the informed user was a young child or teenager, and that the first gnome's angry expression was what that informed user would notice. This is very different from the approach of the English courts in Procter & Gamble v Reckitt Benckiser: the General Court's "informed user" is not especially attentive or particularly interested in design issues, and the Court gave a leading role to the doctrine of "imperfect recollection", which the English court considered less important in design cases than in trade mark ones.


The Court looked at the cited (angry) gnome as a whole, thus overlooking the small matter of the later gnome's lack of a mouth. Commentators, such as Dave Musker on the Class 99 blog (who I predict will be one of probably a small number of people who recognise the title of this piece), observed that a fair comparison would have been to compare that part of the cited gnome without a mouth to the design. "In the context of an infringement, the implication of the General Court's approach is that one could take the entirety of a design, add something and thus avoid infringement", he commented. Or take something away, like the mouth. Either way, I think that this holistic approach can result in absurdities and injustices, not to mention cluttering, foreclosure and depletion, and runs counter to the general tenor of registered design protection which has always focussed on novel features of a design while UK UDR (and copyright before it) considers the design as a whole.   So what has the grown-up court done now? Not a lot. It merely decided that the General Court was entitled in law to come to the conclusions it came to. Not a very exciting denouement, especially when the conclusion it had come to seems to so many people to be patently wrong.

More on digital copyright exchange(s) et al

This posting records - as well as my notes allow me to do so - the question and answer session that followed the IBIL Hallowe'en seminar last Wednesday. The chairman, Sir Robin Jacob, prefaced it by remarking that one effect of the hub and the Observatory would be to reduce the number of works that actually were orphans. In response to a question from the floor about the duration of copyright protection - making it shorter would remove many orphan works problems - he told the audience that the oldest work held by the British Library still protected by copyright dates from 1874 - and not long ago it had been 1862.

Sir Richard Arnold asked a question which highlighted the difference between the "limitations" approach taken in the abortive US legislation and the "permission" approach taken in the EU directive. The public sector, and public interest bodies, are the beneficiaries of the Directive: but an institution such as the British Library would find it unacceptable to do something which is unlawful, protected only by a limitation on the remedies available to the copyright owner. Better that they operate within legal permissions - or, to use the trendy phrase as Maria Martin-Prat did, "safe harbours". [I think this proposition should become known as Arnold's Principle.]

Carol Lee, a director of ALCS, was aggrieved that neither Hargreaves nor Hooper had much to say about authors. Hooper claimed that the hub would be good for the little guys, but there would be disputes, a matter being addressed by the steering group (or whatever term was used for the body dealing with implementation of the idea). The quality of data on who owns what is poor, and in the digital age there can be no excuse for this.

Shira observed that there is a list in the back of the Directive that gives an indication of where to look in the course of a diligent search, adding that had the US Copyright Office been required to produce the guidance mentioned in the abortive legislation it might have included a Google search [one might even imagine that a Google search alone could one day be considered exhaustive].

In reply to a question from Jeremy Phillips about anonymous photos of cats, Graeme made the observation that silence on the part of an author does not indicate acquiescence. Maria added that were that to be the case the directive would amount to compulsory licensing. And Richard Hooper pointed out that although it is an offence to strip out metadata, thus removing ownership information, newspapers do it all the time with images.

Google made another appearance, with someone [my notes don't record who] saying that access to authoritative ownership information is fundamental to the proper operation of their takedown procedure [and I made a mental note to check whether they had taken down something I gave them notice about a couple of days ago]. Of course (as someone else whose identity Peter failed to note said), having such an authoritative source would defeat many of the excuses and justifications for copyright infringements.

In reply to another question, Richard Hooper explained that the Hub would not be a building, just a website, and it would not compete with those who connect with it.

Tom Rivers asked about extended collective licensing, observing that an essential pre-requisite for it is collective licensing. Often, he said, people do not want to license their copyright collectively, but if they could do this they would undermine the whole idea of licensing for mass digitisation. Maria pointed out that extended collective licensing (ECL, a new abbreviation that is becoming common currency) allows an opt-out for copyright owners, which is what distinguishes it from compulsory licensing.

A propos something which I didn't note, two final comments from members of the panel which deserve to be recorded even if I have lost the context ... Graeme Dinwoodie commenting on the fact that there is a great deal of paternalism in copyright laws (citing the US provisions on reversions), and Richard Hooper saying that complexity provides excellent protection for the "big guys", and drawing parallels with the way the complexity of the financial markets allowed the global financial crisis (or GFC, an shorthand expression which seems to be current in Australia only but which ought to be more widespread) to catch everyone by surprise including those who were supposed to understand what they were doing (he mentioned, though he did not pose, the twin questions "have you ever met an intelligent banker?", and "have you ever met a banker who did not think he was intelligent?")

Given that note-taking is an imprecise science, and my memory an increasingly unreliable piece of equipment, readers are invited to comment on, add to and correct this posting. Please.

Digital Copyright Exchange(s), The Hooper Report and Orphan Works

On Wednesday, the Institute of Brands and Innovation Law (IBIL) of University College London held a seminar to discuss these topical copyright issues. With some material added by me, Marta Safin reports ...

The event was opened by the Chairman, Professor Sir Robin Jacob who compared orphan works' authors to property owners who do not maintain their properties and asked whether they should have the right to their work if they 'cannot be bothered to be found'. He drew a comparison with the landowners' neglect leading to the creation of rights of way or squatters' rights.

Position in Europe

The seminar progressed to a brief summary of the current position in Europe by Maria Martin-Prat,  the Head of Unit 'Copyright' in the IP Directorate of the European Commission. Maria introduced the new Directive 2012/28/EU, adopted on 25th October 2012, on 'certain permitted uses of orphan works'. She described the digital technology as the start point of the development of the Directive, as trying to locate the author who cannot be found seemed an increasing problem, which the Directive is aiming to solve. In Maria's opinion the individual works are not the problem; it is the mass digitisation and mass use of collective works which requires proper licensing which needs facilitating. The Directive is the first piece of copyright legislation with a cross-border effect and the Member States were given 2 years to implement it.

Position in the USA

The situation of orphan works in the US was presented by Shira Perlmutter, the Chief Policy Officer and Director of International Affairs for the US Patent and Trade Mark Office. She described it as 'work in progress', whereby the USA are starting over again, after the first proposal did not pass 4 years ago. The draft law applied to all types of orphan works and focused on the limitation of remedies. It required that a 'diligent effort reasonable in the circumstances' is used: the Copyright Office would have been required to publish guidance on what would constitute diligence. If the owner was found (or "showed up", as she put it), they should be paid reasonable compensation.

The Hooper Report

The next panellist to speak was Richard Hooper CBE, the author of the Hooper Report, who started off by saying that his research concentrated on copyright licensing and processes and organisation of copyrights rather than copyright changes and commercial rights or rights' owners. For the first 4 months of his research Richard looked at streamlining of copyrights' licensing and establishing key existing issues experienced by people working in the industry. The second 4 months of work was spent on trying to find solutions for the identified issues. He chose to focus on the proposals for a 'copyright hub', which has 5 main purposes:

1. It will help people to find their way through the complexity of copyright

2. It will educate people about copyright

3. It will be a place where people are able to register their rights

4. It will be a place for automated copyright licensing system for a high volume, low transaction cost copyright licensing

5. It will act as an authority where prospective users of orphan works can go to demonstrate they have done proper, reasonable and due diligence searches for the owners of those works before they digitise them

The view from the IPO

Edmund Quilty, Copyright and IP Enforcement Director, IPO, started with the Gowers Review, which had touched on the issue of orphan works, and the Digital Britain report which had made recommendations on collective licensing. He mentioned the notorious clause 43 of the Digital Economy Bill, which had been dropped from the Act as eventually passed in the "wash-up" at the end of the last Parliament. The new government had commissioned a new intellectual property review, under a different former Financial Times journalist (ex-deputy editor this time, though Ed seemed to promote him).

He then spoke about the Enterprise and Regulatory Reform Bill, which contains scheme-making powers to deal with orphan works (powers which might now come to be exercised in the course of implementing the directive) and extended collective licensing, as well as a few other copyright matters.

Sir Robin took the opportunity afforded by the need to introduce the next speaker to say that as a result of the directive there would be a registry of orphan works in Alicante, part of the Observatory, adding that he had wondered what there was to observe in Alicante.

The Academic view

Graeme Dinwoodie from Oxford University spoke of the international climate which frames the choices to be made – in particular, the requirements in Berne and Trips that there be no formalities. He reinforced the point that the new Directive reflects the 'country of origin' rule in its art. 4 on diligent search, and complies with the formalities rule from the Berne Convention. This (he noted) was often considered to be fundamental to Berne, but had only been included in the Berlin Act of 1908. Prior to that there was a “one formality” (home country) rule, and the Directive reverts to that approach.

Doing away with the need for formalities, he said, tends to damage the "little guy", because the "big guys" can set up systems to deal with the lack of information about copyright ownership. in the US system, if the "little guy" messed up he would lose copyright altogether.

Graeme pointed to the weakness of the current Directive: the fact that there is still right for compensation even for past uses which might not make it beneficial to go through the diligent searches. On the other hand, he commented on the innovative approach it takes to mutual recognition of orphan status which will be helpful to users.

Questions and answers

The panellists' presentation was followed by a Q and A session and discussion on the links between orphan works and Hooper's 'copyright hub', the practicality of implementing the Directive and the extended collective licences scheme. [I am putting this in a separate posting, as it is based on my notes of the discussion and therefore should be separate from Marta's report - Peter.]