Sunday, 24 December 2017

A Kat's 2017 Copyright Awards

Kat Awards!
The Holidays have finally begun, and the end of 2017 is quickly approaching. In line with what has become sort of a ‘tradition’ [herehereherehere], also this year I have reviewed the past 12 copyright months and awarded a number of symbolic prizes to the most interesting or relevant developments occurred in 2017.

Overall, 2017 has been a year in which courts have been once again at the centre of attention, answering tough questions and providing attempts of solutions to very concrete and new problems. In contrast – possibly with the exception of Australia – not much has happened on the legislative front. It is true that the EU legislature has adopted new pieces of legislation, including a Portability Regulation (applicable as of 1 April 2018) and new instruments to implement the WIPO Marrakesh Treaty, but the most heated piece of legislation, ie the proposal for a Directive on copyright in the Digital Single Marke[Katposts here], remains heavily debated and subject to contrasting views and proposals for amendment.

Overall, it can be said that 2017 has been dominated once again by online issues.

Anyway, without further ado, here we go:

Most important copyright decision

The choice is not easy, as in 2017 courts around the world have issued very interesting and potentially far-reaching decisions.
These include – amongst others - the saga (unfolding before the Delhi High Court and the Division Bench of the Delhi High Court) of the preparation and making available of course packs containing photocopied materials without permission from the relevant publishers, which our friends at SpicyIP have covered extensively, and the US Supreme Court’s (rather obscure) decision on ‘copyrightability’ of cheerleading uniforms [here and here], which other courts, eg the Israeli Supreme Court, have also considered.
However, in my view the most important decision this year has been once again one of the Court of Justice of the European Union (CJEU): Ziggo, C-610/15, ie The Pirate Bay case [Katposts here].
At times I have received observations that I may place too much emphasis on CJEU decisions: I accept this criticism, but the reasons why I believe that the Ziggo ruling is particularly significant is twofold.
First, it is the latest instalment in a string of judgments (nearly 20 since the landmark 2006 ruling in SGAE, C-306/05) which have tried to define the structure and scope of what has arguably become the most controversial and complex exclusive right, ie the right of communication to the public within Article 3 of the InfoSoc Directive.
Secondly, the judgment touches upon the liability of online platforms, and the CJEU has provided a response that goes beyond the particularly egregious case of The Pirate Bay. In this sense, the judgment provides an important tool to appreciate the evolution of CJEU case law on Article 3 of the InfoSoc Directive, and an interpretative aid for the various shapes that the controversial value gap proposal (Article 13 of the proposal for a Directive on copyright in the Digital Single Market) has taken over time, including the latest compromise proposal of the (soon to finish) Estonian Presidency of the Council of the EU.
One of the points that I have often heard being made about the Ziggo decision is that its actual relevance is nearly null, because – of course – you cannot say that The Pirate Bay (also look at its name!) is not liable of copyright infringement. In other words, the CJEU decision has been prompted by the very specific set of underlying facts, and cannot be regarded as having a broader relevance. I do not agree with this reading for a number of reasons, including that: (1) all CJEU judgments originate from very specific sets of facts; and (2) the analysis undertaken by the Court builds upon its earlier construction of the Article 3 right and, although fairly ambiguous in some parts and deserving of further elaboration, paves the way to an understanding of whether and in what sense online platforms may be directly liable for users’ infringements.
Finding safe harbours ...
Most important piece of legislation

Last year, I indicated the proposal for a Directive on copyright in the Digital Single Market as the likely to be most relevant piece of legislation (once adopted). I remain of the view that the directive will be significant, so it is important to follow closely the relevant developments over the next few months.

The piece of legislation that gets the prize this year is also at the proposal stage. It is the proposed reform of Australia’s safe harbour regime. Introduced a few days ago, the Copyright Amendment (Service Providers) Bill proposes to extend the existing – quite narrow – safe harbour regime in the Copyright Act (Part V – Div 2AA) for carriage service providers (defined narrowly in the Telecommunications Act 1997) to the disability, education, library, archive and cultural sectors.
The Bill is noteworthy especially because of its scope. If passed in the form proposed, the Australian safe harbour regime would in fact remain narrower in scope than what is the case in other countries, it being arguably unavailable to online service providers like hosting platforms [hereherehere].
Together with the current discussion in the US (§512 DMCA) and EU (Article 13 of the proposed Directive on copyright in the Digital Single Market), the Australian move may be read as signalling a general trend towards a greater, rather than less, responsibilization of online service providers. While rightholders would enjoy greater protection, one might wonder what impact all this would have on potential new entrants on the market, notably start-ups, given resulting compliance costs.
Copyright person of the year
Not a person, but someone whose next friend (PETA) has deemed deserving of the same protection of persons as authors in a copyright sense, ie everyone’s favourite macaque: Naruto.
Although the Monkey Selfie case was settled out of court in mid-2017, after a long-running battle that has allegedly left wildlife photographer David Slater broke, the case is important because it raises an issue that is not new, but is nonetheless likely to be faced with increasing frequency over the next few years, also thanks to the potential of Artificial Intelligence (AI; see further below): who is an author in a copyright sense?
As I discuss more at length here and herethe question of non-human authorship is not really (or just) about whether a monkey can be the owner of copyright in the photographs that it takes, but whether increasing sophisticated technologies, under the umbrella of AI, would result in the broadening of the understanding of what (rather than who) an author is.

For years, literature and cinema have raised the question of what a human. Now such issues might re-surface with increasing frequency and relevance also in the area of copyright and, in doing so, test the scope of protection.

Most important unresolved issue

This is an issue that is somewhat unresolved because, on the one hand, there is not a clear rule written at the legislative level and, on the other hand, it arises in an area (injunctions against intermediaries) that has been proving particularly fast-evolving. It is the issue of costs of injunctions against intermediaries: who has to bear them?

Since the landmark Newzbin 2 decision (2011) [here], the rule in the UK has been that intermediaries bear the costs of application for an injunction within s97A of the Copyright, Designs, and Patents Act 1988 (including a blocking injunction), while intermediaries bear the costs of implementing the injunctions.

However, in the Cartier case [here; if I am not mistaken, this was the first time that in the UK the online intermediaries targeted by an injunction ever appealed the decision and resulting order] the issue of costs has taken centre stage, especially in light of the dissent of Briggs LJ in the Court of Appeal [here]. Now, the UK Supreme Court will have to decide on the issue of cost allocation.

In France the Supreme Court [here] has taken an even more trenchant approach, holding that intermediaries have to bear all costs, while in his Opinion in Mc Fadden, C-484/14 [note that however the case did not really concern costs of intermediary injunctions] Advocate General Szpunar had suggested that intermediaries should not be responsible for any costs relating to copyright enforcement in the event of third-party infringements (but the Court did not really follow him on this point).

Why is the issue of costs so important? For one thing, because the number of applications for intermediary injunctions has been growing over time, with an increasingly diverse group of rightholders seeking them and different types of orders being granted by courts, including the news of 2017 – live blocking.

Most important policy issue for 2018
This is something that is currently being discussed in a number of jurisdictions, including Thailand (which is in the process of reforming its law, further to a number of recent amendments) and the EU, and is the issue of filters and notice-and-stay down obligations.
To what extent can an intermediary be required to prevent the uploading (or re-uploading) of potentially infringing content?
Existing legislation and case law provide some – but not complete – guidance, and the issue of filtering remains subject to heated debate. What will the future hold?
Most important copyright-protected work

Have you listened to Hello Shadow yet?

If not, then you should. Besides being a quite catchy tune, this single is the first one extracted from the first multi-artist music album composed with AI.  The album was curated by Benoit Carré, head of SKYGGE, who collaborated with several musicians and performers, including - in the case of Hello Shadow - Stromae [Papaoutai, amongst others] and Kiesza [Hideaway, amongst others].
Hello Shadow suggests that creativity and AI can go hand in hand, but also – in not too a far remote future – that AI has the potential to create on its own. But will the resulting works be protectable?

However, the most important copyright work of the year is not Hello Shadow, but rather Heks'nkaas  What is this? It is a spreadable Dutch cheese whose taste is allegedly protected by copyright. Further to litigation in The Netherlands, the Heks'nkaas case has now headed to the CJEU: does EU copyright allow protection of the taste of a food product?

I discussed this reference here. We will know the answer of the CJEU sometime in late 2018 or early 2019 … but in the meantime why not dreaming (or rather having the nightmare, depending on one's own views) that the Court will say yes to sensory copyright?


Best wishes to all IPKat readers for a copyright-rich and fun New Year, and many thanks for following the blog this year!

[Originally published on The IPKat on 24 December 2017]

Monday, 11 December 2017

Artificial Intelligence and copyright: a happy (or even possible) relationship?

After years spent discussing the IP implications of 3D printing [which the the European Parliament - JURI Committee has also tackled in this recent working paper] it seems that now the new 'hot' topic is Artificial Intelligence (AI) and its potential.

Aside from issues of citizenship, in the realm of IP one of the questions that have been asked with increasing frequency is whether and to what extent AI has the potential to replace humans, including in the creative fields.

As AI machines become increasingly autonomous, can they be regarded as 'authors' in a copyright sense and, if so, can the works they create be eligible for copyright protection? If the answer was again in the affirmative, who would own the copyright in such works?

Recent developments stand as a demonstration that answering these questions may not be something for an indefinite future.

For instance, readers with an interest in music might have had the opportunity to listen to the recently released single Hello Shadow, which is the first song extracted from the the first multi-artist music album composed with AI. 

This album was curated by Benoit Carré, head of SKYGGE, who collaborated with several musicians and performers, including - in the case of Hello Shadow - Stromae and Kiesza.

The SKYGGE project started as a research project (the Flow-Machines project, conducted at Sony Computer Science Laboratories and University Paris 6) in which scientists were looking for algorithms to capture and reproduce musical “style” [an example being Daddy’s cara song in the style of the Beatles]However, the novelty and huge potential of the approach triggered the attention of musicians who joined the team. 

It is clear that SKYGGE produces music thanks to AI, but there is a substantial human input. But as things have the potential to develop in the sense that AI will be able to create music entirely on its own, without any human input, will the resulting songs be protected by copyright?

The notion of 'authorship'

As I discuss more at length in this recent short article for the Journal of Intellectual Property Law & Practice here, at the international level there is no definition of who is to be regarded as an 'author' in a copyright sense. However, legal scholarship seems oriented in the sense of concluding that, from its text and historical context, under the Berne Convention only natural persons who created the work can be regarded as authors. 

In any case, although generally speaking it seems possible “to agree that an author is a human being who exercises subjective judgment in composing the work and who controls its execution”, this does not mean that at the national level there are not situations in which also works created by non-human authors can qualify for protection, or courts have not addressed issues of non-human authorship. 

New potential Monkey Selfie case
In the UK context [for the US, it is interesting to look at the text of the Monkey Selfie first instance decision], for instance, examples of the former include the fictions of authorship in section 9(2) of the UK Copyright, Designs and Patents Act 1988 and, even more evidently, the provision in section 9(3) therein, according to which – in the case of a literary, dramatic, musical or artistic work which is computer-generated – the author shall be taken to be the person by whom the arrangements necessary for the creation of the work are undertaken.

At the EU level – with the exception of cinematographic and audiovisual works, computer programs and databases – copyright directives do not really address the issue whether only human beings can be regarded as authors. This said, however, the Term Directive (Recital) 14 refers the calculation of the term of protection of copyright to the life of authors as “physical persons”.

The question that arises under EU law is, therefore, whether – with the exclusion of cinematographic and audiovisual works, computer programs and databases – Member States can protect works created by non-human authors.

The answer may be in the negative, if we consider how the other requirement for copyright protection, ie originality, has been intended by the Court of Justice of the European Union (CJEU).

Originality under EU law

Harmonization of the standard of originality at the EU level has been limited. Only the Software Directive (Article 1(3)), the Database Directive (Article 3(1)) and the Term Directive (Article 6) provide that, respectively, for computer programs, databases and photographs copyright protection shall be only available if they are their “author’s own intellectual creation”.

Until the landmark 2009 decision in Infopaq, it was believed that for works other than those for which harmonization of the originality standard had explicitly occurred EU Member States remained free to define the conditions of copyright protection under their own legal regimes. In that judgment the CJEU took the (rather radical) view that this would not be the case, and that also for works protected under the InfoSoc Directive the same standard of originality as in the Software, Database and Term Directives should apply.

The reason, according to the CJEU, is that the Berne Convention (notably Article 2(5) and (8)) presupposes that protection is available to works that are intellectual creations, and this is the standard also envisaged under the Software, Database and Term Directive. According to the court, the InfoSoc Directive is based on the principle that a work is protected if it is its author’s own intellectual creation. This is evidenced by Recitals 4, 9 to 11 and 20 in the preamble thereto. Hence, also under the InfoSoc Directive the standard of originality is that of ‘author’ own intellectual creation’.

The CJEU elaborated on the notion of ‘author’s own intellectual creation’ in subsequent case law. When discussing copyright protection in graphic user interfaces (C-393/09), the court held that the standard of originality requires that the author expresses “his creativity in an original manner”. In Football Association Premier LeagueC-403/08 and C-429/08 the court clarified that originality as author’s own intellectual creation requires exerting “creative freedom”, ie something that football matches – being subject to the rules of the game – do not possess. 

The CJEU refined further its construction of the standard of protection in its subsequent decision in PainerC-145/10. In discussing originality for photographs and, in particular, portrait photographs, the court held that what is required is for the author “to express his creative abilities in the production of the work by making free and creative choices”, so that he “can stamp the work created with his ‘personal touch’”. 

It is therefore apparent that the EU standard of originality, as also acknowledged by Advocate General Mengozzi in his Opinion in Football DatacoC-604/10 entails a “‘creative’ aspect, and it is not sufficient that the creation of [the work] required labour and skill.”

Can an AI machine's creation fulfill the requirement of originality as intended by the CJEU?

arguably one of the first AI machines children
In addition

Another argument against the proposition that also non-human authors can be regarded as potentially eligible for copyright protection in their works is that, at the EU level, the general rule is that concepts used in different directives must in principle have the same meaning. So, in Football Association Premier LeagueC-403/08 and C-429/08, the CJEU clarified that if a directive in based on rules and principles already laid down in other directives, “given the requirements of unity of the European Union legal order and its coherence, the concepts used by that body of directives must have the same meaning, unless the European Union legislature has, in a specific legislative context, expressed a different intention.”

In the case of the InfoSoc Directive (as well as the Term Directive, with specific regard to photographs) this might mean that, similarly to what is instead expressly stated Software Directive, the concept of author implies that this is a human being. This is because, as the CJEU clarified in Infopaq, C-5/08, the InfoSoc Directive, as well as the Term Directive, is based – inter alia – on the same principles and rules laid down in the Software Directive.

A further argument in favour of the conclusion that under EU copyright directive only human beings can be recognized as authors descends from the reading of its various provisions. In particular, the InfoSoc Directive vests authors with the right to authorize third parties to make acts of reproduction (Article 2a), communication to the public (Article 3(1)), and distribution (Article 4(1)) of their works. 

One may wonder how a non-human author can exercise such rights. The question becomes even more complex, if not impossible to solve, if one considers that the CJEU has clarified that the language of that directive imposes that authors are considered as the exclusive first owners of economic rights [ReprobelSoulier].


From the discussion above it emerges that, with limited exceptions, legislation is generally silent regarding the question whether copyright can vest in works authored by non-humans. However, a broader reading of legislative texts – including at the international, regional and national levels – suggests that the notion of authorship for the sake of copyright protection is generally reserved to human beings.

For years, literature and cinema have raised the question of what a human is: from the wooden puppet who wishes to become a child in Pinocchio to the robot-butler in The Bicentennial Man, from the male prostitute Mecha in A.I. Artificial Intelligence to the outrageous and recreational drugs-loving teddy bear in Ted, the public has been exposed – more or less lightheartedly – to questions surrounding the meaning of ‘human’. 

Now such issues might re-surface with increasing frequency and relevance also in the area of copyright and, in doing so, test the scope of protection. This will require revisiting concepts that traditionally have been considered basic. 

However, similarly to the case of originality, it has become clear that what ‘basic’ refers to may not be entirely straightforward.

[Originally published on The 1709 Blog on 11 December 2017]

Sunday, 3 December 2017

Students often ask me how they can write a good essay (which would also make them eligible to receive a good mark). 

This is a question that is not always easy to answer, also because when structuring and writing an essay there is arguably more room for different types of approaches than what is, instead, possibly the case of so called 'problem questions', ie real-life scenarios in which students are asked to provide legal counsel to a fictional client.

I have tried however to come up with some sort of informal 'checklist' [available here] of issues that law students may want to consider when approaching and preparing to write an essay. Any feedback and comments on how to improve the ‘checklist’ are very welcome!

This is part of my "student materials collection" which IPKat has covered in previous instances and can be found here.

So, student essays. Here we go:

How can the checklist be applied in practice though?

Here's an example:

Let's assume that you need to write an essay that has the following title:

In my judgment the test of quality has been re-stated but … not significantly altered by Infopaq” (per Proudman J, NLA and Others v Meltwater and Others, [2010] EWHC 3099 (Ch), para 81): do you agree with Proudman J that the decision of the Court of Justice of the European Union in Infopaq, C-5/08 and its progeny has left the traditional UK standard of originality unaffected?

How do you use the checklist? Point-by-point. So:


In order to write an essay of this kind you should be familiar at least with issues such as:
1.     the traditional understanding of originality in UK copyright law;
2.    the limited harmonization of the originality requirement occurred at the level of EU legislation;
3.    the decision of the Court of Justice of the European Union (CJEU) in Infopaq;
4.    post-Infopaq CJEU case law, including BSA, C-393/09; FAPL, C-403/09 and C-429/08; Painer, C-145/10; Football Dataco, C-604/10; SAS, C-406/10;
5.    the scholarly discussion of whether and to what extent CJEU case law has affected the standard of originality for works other than software, databases, and photographs (for which the originality requirement is already ‘author’s own intellectual creation) under UK law.


As a minimum, this essay requires one to consider:
1.     the Meltwater High Court decision;
2.    Infopaq;
3.    post-Infopaq CJEU case law;
4.    the traditional UK understanding of originality;
5.    the impact of CJEU case law on the UK test for originality.


In order to appreciate the full extent of CJEU case law on UK law one could – for instance – refer to other UK decisions (following the High Court decision in Meltwater) that have tackled the originality requirement


These are the points that at this stage you have identified as being deserving of consideration:

·      the Meltwater High Court decision
·      Infopaq
·      post-Infopaq CJEU case law
·      the traditional UK understanding of originality
·      the impact of CJEU case law on the UK test
·      other UK decisions (after the High Court decision in Meltwater) that have tackled the originality requirement

You have now to order them in the way you think is going to serve your analysis best: be strategic!


a.     GRAMMAR
Simplicity is a virtue, also when you write: avoid passive forms, complex and long sentences … In other words: clarity is your goal. Double check whether what you have written can be expressed in a more concise and clearer form. If so: make changes.

                         AND SPELLING
For instance, writing “author’s own intellectual creation” as “authors own intellectual creation” does not look great …

Several universities indicate a preference for certain referencing systems, eg OSCOLA. While it is important to follow these indications, what is key is really to keep it consistent: if you have chosen a way to reference a certain kind of source, eg journal articles, use the same system throughout the whole essay.

Again, there might be some guidelines at University/School level. In any case, while looks might not be all you need in life, the appearance of your essay can be important: make your work look good, not just substantially sound!


               Reading your essay 1-2 times after you have written it is clearly not enough.

[Originally published on The IPKat on 3 December 2017]

Wednesday, 29 November 2017

The VCAST decision: how to turn a private copying case into a case about communication/making available to the public

Earlier today this blog reported that, a few months after Advocate General (AG) Szpunar released his Opinion in VCAST, C-265/16 [here], the Court of Justice of the European Union (CJEU) has now released its decision.

As readers know, this was a reference from Italy (Turin Court of First Instance) that one would have thought [as the questions were indeed about it!] to concern the understanding and application of the private copying exception within Article 5(2)(b) of the InfoSoc Directive to cloud-based video-recording services.

Well, although the AG Opinion is indeed about this, the CJEU judgment is not. 

The Court, in fact, made the case about the right of communication/making available to the public within Article 3 of the InfoSoc Directive.

Let’s start then and see why VCAST is not really – or at least is no longer - a case about the private copying exception.


The facts of the case are rather simple: basically, the Italian litigation revolves around the lawfulness of a cloud-based recording service, provided by VCAST, that allows its customers to make copies of terrestrial TV programmes broadcasts including, among other things, those of RTI. 

Importantly, the possibility to make such recording is granted irrespective of whether customers can lawfully access the programmes terrestrially, ie offline. A clear instance is, as well explained by the AG in his Opinion, that for RTI programmes it is generally required that the user happens to be on the Italian territory.

Under Italian law it would appear that VCAST activity might be lawful, although the CJEU did not consider this a given. Nonetheless, the Court deemed it helpful to base its analysis on the assumption that Italian private copying exception applies to VCAST’s activities. 

The question became therefore whether a national law of this kind is compliant with what Article 5(2)(b) of the InfoSoc Directive (read in combination with the three-step test in Article 5(5) therein) provides.

Private copying … but is VCAST’s service only about the making of copies?

After recalling that exceptions should be interpreted strictly, the Court confirmed the finding of the AG – which follows from the seminal Padawan decision - that for the private copying exception to apply it is not required that the beneficiary is the one who directly makes the copy of the copyright work at issue.

However - and this is the interesting part of the Court’s analysis - VCAST’s activity is not about reproductions or, at least, is not just about reproductions. Hence, the discussion around the private copying exception is not the whole story.

More fundamentally, in fact, VCAST does not only organize the recording of TV programmes for its customers but, instead, makes them available to them in the first place. It follows that VCAST’s activity cannot be assessed exclusively under the binary distinction reproduction/private copying. It is also necessary to take into account the making available part and, with it, Article 3 of the InfoSoc Directive.

What does all this lead to?

“[A]lthough the private copy exception means that the rightholder must abstain from exercising his exclusive right to authorise or prohibit private copies made by natural persons under the conditions provided for in Article 5(2)(b) of Directive 2001/29, the requirement for a strict interpretation of that exception implies that that rightholder is not deprived of his right to prohibit or authorise access to the works or the subject matter of which those same natural persons wish to make private copies.

It follows from Article 3 of Directive 2001/29 that any communication to the public, including the making available of a protected work or subject matter, requires the rightholder’s consent, given that, as is apparent from recital 23 of that directive, the right of communication of works to the public should be understood in a broad sense covering any transmission or retransmission of a work to the public by wire or wireless means, including broadcasting.” [39-40]

So, again, communication/making available to the public

The Court thus moved on to recall the requirements for an act of communication (or, rather, making available in this case) to the public [the judgment refers extensively to Reha Training, which – despite being a Grand Chamber ruling – has been quite neglected in decisions like GS MediaFilmspeler and Ziggo].

Interestingly, the CJEU stated that to have an ‘act of communication’ a transmission of a copyright work is required. The Court noted that there would be a transmission made by the broadcasting organisation, on the one hand, and a transmission made by VCAST, on the other hand. Both are done using a different means of transmission for the protected works, and are intended for different publics.

The result?

“without the rightholder’s consent, the making of copies of works by means of a service such as that at issue in the main proceedings could undermine the rights of that rightholder.
Accordingly, such a remote recording service cannot fall within the scope of Article 5(2)(b) of Directive 2001/29.” [51-52]

This means that VCAST’s service cannot be provided without the prior authorization of the relevant rightholders, in that its activity also amounts to communication/making available to the public within Article 3 of the InfoSoc Directive.


The outcome of the VCAST case is not surprising, nor is the fact that the CJEU answered the questions referred by the national judge rephrasing them and considering issues other than those raised.

More generally, the decision highlights once again the absolute centrality of the right of communication/making available to the public, especially in the online environment.

While cloud-based video recording services per se are not to be regarded as unlawful, certainly the CJEU decision sets precise boundaries for designing a service that would be compatible with EU law. 

The first condition, stressed in particular by the AG, is that users of a cloud-based recording service must have lawful access to the terrestrial programmes that they wish to record in the first place. 

The second condition is that the provider of a video-recording service cannot elude the authorization of the relevant rightholders when what it wishes to provide is a service that allows the recording of content by making it available for recording in the first place. But is this a probatio diabolica? Possibly. If so, then cloud-based video recording services would likely need to be licensed to operate under EU copyright law without the risk of infringing third-party rights.

[Originally published on The IPKat on 29 November 2017]