Tuesday, 18 September 2018

Fashion, algorithms, and copyright: is it all about what we want or rather what we didn't know we want?

Rodarte S/S 2019
Yesterday The New York Times published a very interesting article by fashion expert Vanessa Friedman, which praises the spring/summer 2019 collections presented by Telfar and Rodarte during New York Fashion Week, as being about fashion that consumers do not really know they want yet. 

Apparently it has become commonplace for fashion houses to produce garments that consumers already want. As explained by Friedman, 
There’s a lot of pressure these days to design by algorithm. We know too much about buying habits and likes, and the result is an insidious bias toward giving people what they have already indicated they want. It may be safe, and easier to sell, but it’s antithetical to the whole point of fashion, which should be about giving people what they never knew they wanted — what they couldn’t imagine they wanted — until they saw it.
But how is all this 'profiling' done?

It will not come as a surprise that identification of what we will want, and what we will be eventually given and shop, owes a great deal to our own social media activity, that is the 'likes' we give, whom we follow, and the content that we share ourselves. Is this data difficult to collect and elaborate, and are online platforms the (gate)keepers of all this information that can be then translated into revenues and personal success of fashion designers? The answer is: not necessarily.

Mining social media content

A few months ago, as I was looking for applications of text and data mining  (TDM) techniques in various fields, I read an intriguing study conducted at Cornell University. With the aid of TDM techniques researchers were able to mine 100 million photographs made available on Instagram and devise patterns on how clothing styles vary around the world, and tackle the frequency of use of certain garments and colours. By training a machine-learning algorithm, the researchers were able to identify a set of visual themes and study how these would vary by time and place, and also identify the preference for certain colours.

A study of this kind is interesting from an anthropological standpoint, but may be even more interesting for fashion businesses in order to understand and even anticipate the next big trend ... or the next cerulean sweater. As explained by the authors of the study themselves,
Individuals make fashion choices based on many factors, including geography, weather, culture, and personal preference. The ability to analyze and predict trends in fashion is valuable for many applications, including analytics for fashion designers, retailers, advertisers, and manufacturers. This kind of analysis is currently done manually by analysts by, for instance, collecting and inspecting photographs from relevant locations and times. We aim to extract meaningful insights about the geo-spatial and temporal distributions of clothing, fashion, and style around the world through social media analysis at scale.
The question that arises from an IP standpoint is whether and to what extent unauthorized mining activities of this kind may be considered lawful.

Matzen et al, 'StreetStyle: Exploring world-wide clothing styles from millions of photos' (2017) arXiv:1706.01869 [cs.CV]
Instagram's Terms

According to Instagram's Platform Policy, by making content available there, users grant Instagram and its affiliates a non-exclusive, transferable, sub-licensable, royalty-free, worldwide licence to use any data, content, and other information made available by users or on their behalf in connection with their use of Instagram. This licence survives even if one stops using the platform feature. Users are responsible for obtaining the necessary rights from all applicable rightholders to grant such licence.

It would thus appear that, unless one is an affiliate of Instagram, the licence granted to the platform may not cover the making of annotated datasets containing thousands of images to be made publicly available. 

From a copyright standpoint, the extraction and reproduction of Instagram images may pose copyright issues (among other things). One may thus wonder whether and to what extent liability might arise for the making of such restricted acts without permission from relevant rightholders or whether, instead, no permission is needed because of applicable copyright exceptions.

FashionKat: Karl Lagerfeld's Choupette
The approach in the US

Under US law, the question would be one of fair use under §107 of the Copyright Act. The fair use assessment requires to consider - among other things - whether the use made of a work 'adds value to the original - if the quoted matter is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings - this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society' (PN Leval (1990), 'Toward a Fair Use Standard' 103 Harv L Rev 1105, 1111).

In the longstanding litigation over the Google Books Library Project, the 2nd Circuit considered relevant for a finding of fair use also the fact that the search engine 'makes possible new forms of research, known as “text mining” and “data mining.”' by using the Google Library Project corpus 'to furnish statistical information to Internet users about the frequency of word and phrase usage over centuries'.

There is case law in the US (see Sag and Schultz (2013), 'Brief of Digital Humanities and Law Scholars as Amici Curiae in Authors Guild v Hathitrust', 4) that suggests that acts of incidental or intermediate copying which do not ultimately result in the external re-use of protectable (expressive) parts of a copyright work (this might not be the case of the whole of the Cornell project) should not be considered infringing, ie such as to supersede the objects or purposes of the original creation. 

It may thus be the case that, under US law, the mining of Instagram content - insofar as protected parts of the content mined are not re-used or made available as such - might be considered fair use.  That would be so because the goal of the mining activity is not creating a replacement for the original content, but rather extracting information (ideas and facts are not protectable as such under copyright) in order to obtain new information. 

Things, however, may be different in Europe, especially considering the limitations that might be envisaged for an EU-wide TDM exception.

The approach in the EU?

While a limited number of Member States in the EU has already introduced (UK, France, Germany and Estonia: see here) or is planning to introduce (eg Ireland, on which see Katposts here and here) a specific text and data mining exception, in the context of the current copyright reform debate, a provision (Article 3) has been included in the draft Directive on copyright in the Digital Single Market

In its original formulation, the mandatory EU TDM exception would allow any type of TDM (commercial and non-commercial). However, the catalogue of beneficiaries and the purpose of  permitted mining activities would be limited: Article 3 would only apply to 'research organisations in order to carry out text and data mining of works or other subject matter to which they have lawful access for the purposes of scientific research'.

As proposed in the JURI Committee Report of the European Parliament, Member States should remain free - despite the introduction of a mandatory EU-wide TDM exception - to retain or introduce TDM exceptions in accordance with point (a) of Article 5(3) of the InfoSoc Directive, this being the legislative basis used to introduce non-commercial TDM exceptions that, as is the case of the UK (section 29A CDPA), do not envisage any limitations as regards the beneficiaries of the exception.

Conclusion

Algorithmic fashion is a thing: fashion houses have been increasingly giving consumers something that consumers have already suggested - more or less implicitly - to be wanting. This knowledge may be acquired manually but also through TDM techniques. These allow to learn much more and much more reliably, not just about things as they are, but also about things as they will be. 

From an IP standpoint, all this raises a number of legal questions at the interplay between copyright subsistence, exceptions and licensing. From a fashion perspective, it instead raises the question whether fashion should be about what we want and everything consumer profiling and purchasing habits or, instead, what we didn't know we wanted ... yet.   

[Originally published on The IPKat on 11 September 2018]

Saturday, 8 September 2018

Copyright and tattoos: where are we now?

LeBron James's avatar in NBA 2K18
Copyright and tattoos is one of The IPKat’s favourite topics. Over time a few posts have been devoted to exploring the intricacies of copyright law as applied to this type of works: see, eg here,  herehereherehereherehere. However, as Jeremy recalled - despite all this interest - The IPKat sports no tattoos, not least because of the mess it would make of the fur.

Having said so, tattoos are artistic works with no particular features, if not the medium they are attached to, ie the human body. From a copyright standpoint, issues might arise in a number of circumstances, including when:
  • The owner of the body (clearly a tangible medium) on which the tattoo is affixed is not also the owner of the copyright in the work (the tattoo);
  • The tattoo reproduced on someone's body is an infringing copy of a third-party copyright work.
While the former scenario has been already subject to litigation - whether concluded with a judgment  [eg in Belgiumor settled out of court - the latter, as far as I am aware [but please let me know if it is otherwise!], has not yet been fully litigated. 

Let's see a bit more in detail what the issues for these two scenarios might be.

Scenario A - Owner of the body on which the tattoo is affixed is not also the owner of the copyright in the work


This scenario might not appear particularly problematic to the lay person, but it has been causing celebrities and athletes more than an headache over the past few years. Readers will remember for instance the (in)famous case of the Mike Tyson's face tattoo and the lawsuit that his tattoo artist brought in the US against the producers of The Hangover - Part II over the unauthorized reproduction of that artistic work. The case was eventually settled out of court, but it was sufficient to generate a renewed new awareness around the legal issues potentially affecting tattoos. 

This has become true also for sports organizations. For instance, in 2013 Forbes reported that the NFL Players Association (this is the organization that represents professional American football players in the National Football League) had become increasingly concerned about potential copyright claims concerning its members' tattoos, and started advising agents to tell their players that, when they get tattoos, they should get an assignment from the tattoo artist and, if they can track down their former artists, they should get an assignment as well.

Mike Tyson (L) and 
Stu in The Hangover - Part II (R)
One of the reasons as to why such concerns have started arising is also because athletes routinely license use of their likeness in advertising, merchandising, and important 'side' products like videogames. And videogames seem to have become problematic indeed. 

As The IPKat reported back in 2013, videogame publisher THQ was sued by a tattoo artist over the UFC Undisputed games for reproducing, without his permission, the drawing of a lion that he had tattooed on the ribcage of mixed martial fighter Carlos Condit

Now, a new lawsuit - still concerning videogames and tattoos - is pending before the US District Court for the Southern District of New York against Take Two over its NBA 2K videogame franchise. The owner of copyright in a number of tattoos featured on the bodies of NBA basketball players, including LeBron James, is arguing that it is an infringement of its copyright to reproduce these artworks in the videogame without permission. Also James has weighed in on this issue, summarizing better than any lawyer what the real conflict - besides all legal technicalities - is in a case like this:
In the fifteen years since I've been playing professional basketball, this case is the first time that anyone has suggested to me that I can't license my likeness without getting the permission of the tattooists who inked my tattoos. No tattooist has ever told me I needed their permission to be shown with my tattoos, even when it was clear I was a public basketball player.
He added:
Each of my tattoos was created to showcase parts of my life and things that are important to me. ... My tattoos are a part of my persona and identity; if I am not shown with my tattoos, it wouldn't really be a depiction of me.
So, which one should prevail, copyright protection (for the owner of copyright in the tattoo) or the right of the person whose body carries the tattoo to decide how their image and likeness are to be presented and used, this being - it is arguable - also a form of self-determination and exercise of one's own freedom of expression? 

Neither right - copyright and publicity/image - is absolute. With regard to the latter, readers may for instance recall the interesting decision in the Olivia de Havilland case [reported here]. With regard to copyright, fair use under §107 of the US Copyright Act is a central doctrine that sets limitations to the scope of a copyright holder's control [see also here]

Overall, if one was to set a balance, it would appear that what is being reproduced in, say, a videogame, is not the tattoos on LeBron James's body as such, but rather the likeness of LeBron James, which happens to include tattoos. In this sense, one might argue - though not without risks - that the reproduction of tattoos is an incidental inclusion of copyright material and therefore the copyright aspects should be superseded by the right to control one's own image. 

Tattooed guy in London
Scenario B - The tattoo reproduced on someone's body is an infringing copy of a third-party copyright work

This second scenario is something that remains even less explored than the first one. A few weeks ago I was walking in the Borough Market area in London, when the tattoo on someone's leg caught my attention. Spotting the resemblance with a well-known comic character, I thought a bit about the case of those that like to get tattoos of fictional characters or well-known artworks (Banksy's graffiti appear to be particularly popular) on their bodies. 

Can one argue that those tattoos are infringing copies if they are realized without a licence from the copyright owner? The UK does not even have a private copying exception [it was quashed in 2015], but things might not be better in other countries, as the Court of Justice of the European Union (CJEU) has clarified that:
  • The private copying exception within Article 5(2)(b) of the InfoSoc Directive only applies to reproductions from licensed sources: ACI Adam, on which see Katposts here;
  • Exhaustion of the right of distribution only applies to the tangible support of a work, not also the work as such: Art&Allposters, on which see Katposts here
Conclusion

All in all it appears that the safest option, when getting a tattoo, is also obtaining a copyright assignment from the tattoo artist, as per NFL suggestions. This is certainly true when the tattoo artist applies to your body one of their creations, but it may be a useful precaution even when the tattoo artist executes a tattoo that you have designed. In the meantime, let's wait to see how the NBA 2K case ends ...

[Originally published on The IPKat on 8 September 2018]

Saturday, 25 August 2018

Milan court issues dynamic blocking injunction against Italian ISPs

Does a blocking injunction against an intermediary only concern the domain names indicated in the relevant order or can it be also considered as encompassing future infringements committed through other domain names?


This is the question that the Milan Court of First Instance (Tribunale di Milano) had to address in the context of interim proceedings between publisher Mondadori and a number of major Italian internet access providers (ISPs).



It provided an interesting response in two twin decisions [available hereissued last June and which the IPKat has learned about thanks to Katfriend Valentina Borgese.



Background



In 2017 publisher Mondadori requested the Milan Court of First Instance to issue an interim injunction against a number of major Italian internet access providers (ISPs) consisting of an order to adopt the most appropriate measures to block access to a platform and all the different domain names (alias) under which it operated and from which unauthorized copies of Mondadori magazines could be downloaded through links made available therein. 



The Milan court initially granted the interim injunction in favour of Mondadori.

Later that year, Mondadori discovered that the platform had once again changed name and, through a new domain, was still making links available for the download of unlawful copies of its magazines. 


So, Mondadori requested the ISPs subject to the first injunction to take the appropriate measures to block access to the new versions of the platform, but without success. The ISPs, in fact, claimed that Mondadori’s request would be outside the scope of the injunction against them. This means that Mondadori had to apply for a new injunction, which it obtained inaudita altera parte.

The ISPs opposed the new injunction, on the following grounds:
  • They are mere conduit providers under the meaning of the provision under Italian law (Article 14 of Legislative Decree 70/2003) corresponding to Article 12 of the E-commerce Directive, and are not responsible for third-party unlawful activities;
  • The measures requested by Mondadori would result in a general monitoring obligation, which is contrary to Article 15 of the E-commerce Directive and Article 17 of the Italian Legislative Decree;
  • The court should also hear the actual infringers in the context of such proceedings.
During the hearing for the confirmation of the injunction, Mondadori requested that the ISPs be ordered to block access not just to the domains indicated in the application, but also any domain names that would redirect to the platform.

Ineffective blocking
The decision

In its decisions, the Milan court rejected the need that, in proceedings against ISPs, also the actual infringers should be heard.

Turning to the claim that the measure requested by Mondadori would amount to a general monitoring obligation, the Court recalled the decisions of the Court of Justice of the European Union (CJEU) in L’Oréal and Scarlet, to note that enforcement measures must be proportionate and not excessively costly. This said, an ISP is under an obligation to promptly inform competent authorities should it become aware of any infringements committed by users of its service, and this is so irrespective of any liability of the intermediary for the infringements themselves. In any case, intermediaries may be the addressees of injunctions against them.


Dynamic blocking injunctions


The court then noted that Mondadori’s rights were repeatedly infringed through the different domain names under which the infringing platform operated. 


Also recalling the CJEU Telekabel decision, the court ruled that it is compatible with the E-commerce Directive (notably Article 15 therein) to request an ISP to take the most appropriate measures to block access, not just to the domain names identified in the relevant injunction, but also to any further domain names under which infringements relating to the same rights are committed. 



If the obligation of an ISP as resulting from a certain injunction was limited to the domain names indicated therein, this would make the measure issued pointless: it is in fact likely that, at the time of issuing the injunction, the infringer is already operating under a different domain name. 



Hence, an injunction that required the ISPs targeted by it to block access to current and future domain names through which infringements of the same rights are committed would be the only one that may “have the effect of preventing unauthorised access to the protected subject-matter or, at least, of making it difficult to achieve and of seriously discouraging internet users who are using the services of the addressee of that injunction” (Telekabel, para 64). 



The court reasoned that, if the intervention of a judge was needed in relation to any further infringement of the same right, no injunction could be issued pro futuro, and this would be contrary to the rationale underlying the availability of injunctions themselves.



In reaching this conclusion, the court also referred to the EU Commission's guidance on the Enforcement Directive. In particular, it referred to the following:

Furthermore, injunctions may in certain cases lose some effectiveness because of changes in the subject matter in respect of which the injunction was ordered. This may be, for example, the case of website blocking injunctions, where a competent judicial authority grants the injunction with reference to certain specific domain names, whilst mirror websites can appear easily under other domain names and thus remain unaffected by the injunction.  
Dynamic injunctions are a possible means to address this. These are injunctions which can be issued for instance in cases in which materially the same website becomes available immediately after issuing the injunction with a different IP address or URL and which is drafted in a way that allows to also cover the new IP address or URL without the need for a new judicial procedure to obtain a new injunction. 
Safeguards


However, to be compatible with the prohibition of general monitoring obligations, a dynamic injunction must include an obligation of the relevant rightholder to provide the targeted ISPs with a prior, specific notification concerning the new domain names through which infringements are committed. 


Compiling the list of domains
to be blocked
Cost allocation

The court also ruled on the issue of cost allocation, and held that, since the measure requested was distinct from an assessment of any liability of the ISPs, [the translation from Italian is mine] “by balancing different interests, the costs relating to technical expenses, strictly necessary and concerning the measure requested by the rightholder, should be borne, provisionally, by the rightholder itself.”


Comment 



This is an interesting, although not completely new, development in the approach to intermediary injunctions in Italy. In reaching its conclusion, the court referred to the rationale of injunctions as an enforcement measure. 



The CJEU itself in L'Oréal clarified that injunctions against intermediaries may be aimed repressing existing infringements but also preventing future infringements of the same rights. In that case, the CJEU clarified how the injunctions referred to in the third sentence of Article 11 of the Enforcement Directive differ from those to in the first sentence of that provision: while the latter directly target infringers and intend to prohibit the continuation of an infringement, the former relate to the ‘more complex’ situation of intermediaries whose services are used by third parties to infringe third-party rights. Also taking into account the overall objective of the Enforcement Directive, this being ensuring an effective protection of intellectual property rights, alongside the provision in Article 18 of the E-commerce Directive and Recital 24 in the preamble to the Enforcement Directive, the CJEU concluded that the jurisdiction conferred by the third sentence in Article 11 of the Enforcement Directive allows national courts to order an intermediary to take measures that contribute not only to the termination of infringements committed through its services, but also preventing further infringements. 



This conclusion appears in line with the overall framework established by the E-commerce Directive: Articles 12(3) (in relation to mere conduit providers), 13(2) (in relation to caching providers) and 14(3) clarify in fact that a court or administrative authority, in accordance with Member States' legal systems, may require the service provider at issue to terminate or prevent an infringement.



Furthermore, the safeguards envisaged by the Milan court appear in line with the practice in other EU Member States, including the UK, where - also in the context of the most recent innovation, live blocking orders [here and here- rightholders are required to provide the list of target sites to be blocked. As regards the issue of costs, in the Milan case, the reasoning (albeit in the context of interim proceedings) appears substantially similar with the most recent approach in the UK, as envisaged by the Supreme Court in Cartier [here].

[Originally published on The IPKat on 25 August 2018]

Wednesday, 22 August 2018

Has the CJEU quietly changed the conditions for safe harbour availability?

Kat at the beach
Right before the summer break, on 7 August last, when most people had already turned their out-of-office auto-reply on or were getting ready to move to the beach, the Court of Justice of the European Union (CJEU) issued quite an interesting ruling - SNB-REACT, C-521/17 - concerning enforcement of IP rights under Article 4(c) of the Enforcement Directive and the availability and scope of the safe harbours under the E-Commerce Directive.

Background

This referral from Estonia was made in the context of proceedings that a collecting society, SNB-REACT, had initiated against an individual, Deepak Mehta, concerning the latter's alleged liability for infringement of the IP rights of 10 trade mark owners. 

According to SNB-REACT, Mehta had allegedly registered a number of IP addresses and internet domain names, which unlawfully used signs identical to the trade marks owned by SNB-REACT members, together with websites unlawfully offering for sale goods bearing such signs. 

Mehta, however: (1) denied that he had registered the IP addresses and domain names challenged by the claimant; (2) even if he owned 38,000 IP addresses, he had rented them to third-party companies; and (3) this activity should be regarded as akin to that of a service providing access to an electronic communications network, together with an information transmission service, being - as a result - eligible for the safe harbour protection under the Estonian provisions corresponding to Article 12 to 14 of the E-Commerce Directive.

At first instance, SNB-REACT's action was dismissed on grounds that, first, it would lack standing to bring legal proceedings in its own name to enforce its members' rights and, second, Mehta was eligible, as an information society service provider, for the safe harbour protection.

SNB-REACT appealed to the Tallinn Court of Appeal, which made a reference to the CJEU and asked:

(1) Is Article 4(c) of [the Enforcement Directive] to be interpreted as meaning that Member States are required to recognise bodies collectively representing trade mark proprietors as persons with standing to pursue legal remedies in their own name to defend the rights of trade mark proprietors and to bring actions before the courts in their own name to enforce the rights of trade mark proprietors?
(2) Are Articles 12, 13 and 14 of [the E-commerce Directive] to be interpreted as meaning that even a service provider whose service consists in registering IP addresses, thus enabling them to be anonymously linked to domains, and in renting out those IP addresses, is to be regarded as a service provider within the meaning of those provisions to whom the exemptions from liability provided for in those articles apply?’
The CJEU answered both questions in the affirmative, without seeking the prior Opinion of the appointed Advocate General (Wathelet). 

Here's how it reasoned.

Standing of a collecting society

Article 4(c) of the Enforcement Directive provides that:
Member States shall recognise as persons entitled to seek application of the measures, procedures and remedies referred to in this chapter [...] intellectual property collective rights-management bodies which are regularly recognised as having a right to represent holders of intellectual property rights, in so far as permitted by and in accordance with the provisions of the applicable law
The Court deemed it necessary to clarify the meaning of ‘applicable law’ and ‘as permitted’ in that provision:
  • First, the expression 'applicable law' refers to both EU and national laws, as appropriate. 
  • Second, Member States do not enjoy unlimited discretion as to whether or not recognize collecting societies as having standing.
  • Third, as is apparent from Recital 18 in the preamble to the Enforcement Directive, EU law intended to grant standing also to those having a direct interest in the defence of third-party IP rights.
It follows that, where a collecting society is regarded by national law as having a direct interest in the defence of its members' rights and that law allows that body to bring legal proceedings, the Member States are required to recognize such collecting society as a person entitled to seek application of the measures, procedures and remedies provided for by the Enforcement Directive, and to bring legal proceedings for the purpose of enforcing such rights.

Liability of providers of IP address rental and registration service

Turning to the second question, the CJEU provided a recap of the conditions at which the safe harbours within Article 12 to 14 of the E-commerce Directive apply.

Notion of 'information society service'

First, the Court tackled the question whether the provider of an IP address rental and registration service could be deemed an information society service provider for the sake of the E-commerce Directive. The Court noted how this notion is fairly loose, in that the concept of ‘information society service’ refers to services which are provided:
  • at a distance, 
  • by means of electronic equipment for the processing and storage of data, 
  • at the individual request of a recipient of services, 
  • normally in return for remuneration. 
It is a notion that includes services contributing to facilitating relations between persons engaged in online sales activities and their customers

The CJEU found that it did not have sufficient evidence to determine whether a service like that one at issue in the background proceedings would fall within the notion of information society service, but it appeared not to exclude it. 

Availability of safe harbours

Then the CJEU turned to consideration of the conditions at which the 'limitations of liability' [note that the Court used the term 'limitations'], aka safe harbours under the E-commerce Directive, apply. And here the Court provided a 'checklist'.

What one needs to do is in fact the following:
  1. Identify whether the information society service at issue consists of mere conduit (Article 12), caching (Article 13) or hosting (Article 14);
  2. Review whether the conditions for the safe harbour for the specific service at issue are satisfied.
For all three scenarios, the safe harbour only applies where the activity of the information society service provider is of a mere technical, automatic, and passive nature. This implies that that service provider has neither knowledge of nor control over the information which is transmitted or stored by the persons to whom he provides his services. 
By contrast, those limitations of liability do not apply in the case where a provider of information society services plays an active role, by allowing its customers to optimise their online sales activity. [para 48]
It's impossible to speak of safe harbours
without at least a (cheerful) sailor Kat pic!
When is the safe harbour trumped?

At this point of the judgment, things become a bit more interesting (or troubling, depending on one's own perspective), in that the CJEU stated [para 50]:
it is for the referring court to satisfy itself, in the light of all relevant facts and evidence, as to whether such a service provider has neither the knowledge of nor control over the information transmitted or cached by his clients and whether he does not play an active role by allowing them to optimise their online sales activity.
This paragraph is quite ambiguous. The reasoning appears construed in light of landmark safe harbours decisions like Google France and L'Oréal, yet the wording is not the same. In those cases the CJEU linked the active role of the provider which excludes the availability of the safe harbour to knowledge of or control over of third-party information. In Google France the Court held [para 120, emphasis added]:
Article 14 of Directive 2000/31 must be interpreted as meaning that the rule laid down therein applies to an internet referencing service provider in the case where that service provider has not played an active role of such a kind as to give it knowledge of, or control over, the data stored. If it has not played such a role, that service provider cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned.
Similarly in L'Oréal the Court stated that [para 113, emphasis added]:
Where, by contrast, the operator has provided assistance which entails, in particular, optimising the presentation of the offers for sale in question or promoting those offers, it must be considered not to have taken a neutral position between the customer-seller concerned and potential buyers but to have played an active role of such a kind as to give it knowledge of, or control over, the data relating to those offers for sale. It cannot then rely, in the case of those data, on the exemption from liability referred to in Article 14(1) of Directive 2000/31. 
In those cases the logic was the following:


active role  knowledge of or control over information  unavailability of safe harbours


While in SNB-REACT the process is different [see also para 52 of the judgment]:


knowledge of or control over information + active role (eg optimization of online sales activities) = unavailability of safe harbours
Comment


As it appears to be the case when the Court decides without the prior Opinion of the appointed AG, the resulting reasoning is not as straightforward as one would wish. 



The approach to the definition of the conditions for excluding the availability of the safe harbours is telling: are paragraphs 50 and 52 in the judgment just the result of rather imprecise writing or has the Court, instead, inaugurated a new approach to the definition of the conditions for the E-commerce safe harbours? 



The answer is ... till the next preliminary ruling!

[Originally published on The IPKat on 22 August 2018]

CJEU rules that unauthorized re-posting of protected content may be an infringement

The Cordoba photo at issue in Renckhoff
Today the Court of Justice of the European Union (CJEU) issued its last copyright judgment [but also - incredibly - the first copyright judgment of 2018] before the summer break. 

In Renckhoff, C-161/17 it ruled - contrary to the Opinion of Advocate General Campos Sanchéz-Bordona [here and here; ALAI thought it was very bad, and criticized it here] - that in a situation like the one at issue the unauthorized re-posting of a copyright work would be an act of communication to the public within Article 3(1) of the InfoSoc Directive.

Background

As readers might remember, this case had a fairly odd factual background. The national proceedings relate in fact to copyright litigation that a photographer has brought in Germany against a school over the use, by one of the pupils, of copyright-protected material without authorization. 

More specifically, one of the pupils found an image of the city of Cordoba online and used it for an assignment for her Spanish class, providing acknowledgment of the website from which she had downloaded the photograph (though not of the photographer, because the website where the photograph appeared did not provide any). 

Upon finishing her work, she and her teacher uploaded it on the school's website, but the photographer came forward claiming infringement of his copyright in the photograph, and that he had just granted a licence to use to the image to the website from which the pupil had downloaded it.

Litigation has gone all the way up the German Federal Court of Justice, which decided to stay the proceedings and refer this question to the CJEU:

Does the inclusion of a work — which is freely accessible to all internet users on a third-party website with the consent of the copyright holder — on a person’s own publicly accessible website constitute a making available of that work to the public within the meaning of Article 3(1) of [Directive 2001/29] if the work is first copied onto a server and is uploaded from there to that person’s own website?

The CJEU response


Today the Court answered in the affirmative, noting that:

  1. The reposting of protected content freely available with the rightholder's consent on a third-party website is a new act of communication to the public (I'd also add that it is also an act of reproduction, and in fact this has been already established in the national proceedings) and no analogy with linking to lawful and freely accessible content in a Svensson sense may be drawn. Here the point is not - as it was, instead, in Svensson whether there is a communication to a new public, because there is a new communication to the public tout court.
  2. Holding otherwise would mean that a copyright owner would lose any control over their work once this has been made available online the first time. This would basically amount to an undue exhaustion of the right of communication to the public, contrary to Article 3(3) of the InfoSoc Directive, and would also be in breach of the principle according to which economic rights are preventive in nature (in a Soulier sense)
  3. The fact that a work has been initially published online and made available with no restrictions is irrelevant: holding otherwise would be akin to imposing formalities to the enjoyment and exercise of copyright, and this would go against the prohibition in Article 5(2) of the Berne Convention.
If that was ever possible,
now school may become even more stressful
The Court also recalled that copyright protection in a photograph only arises when the photograph is its author's own intellectual creation, in the sense that it results from the making of free and creative choices and carries the author's personal touch, in the sense clarified in Painer. Readers will remember that the AG doubted that the one at issue would be a copyright-protected photograph. However, Article 6 of the Term Directive leaves EU Member States free to protect sub-original photos.

Implications

Overall, the judgment is good news for copyright owners, in that it gives them reassurance that the control over their works is not reduced over the internet. 

The ruling is also interesting in relation to the practice of certain websites (including newspapers) that directly host third-party video content in respect of which they neither own the rights nor do they have a licence, in lieu of displaying such videos by means of embedded links. While the latter might be lawful (depending on whether the requirements set in Svensson and GS Media are fulfilled), the former might pave the way to a finding of liability. This may be something that we knew already, but that now the CJEU has confirmed.

[Originally published on The IPKat on 7 August 2018]