Thursday, 30 March 2017

GS Media and its implications for the construction of the right of communication to the public within EU copyright architecture: a new article

In its 2016 decision in GS Media, C-160/15 the Court of Justice of the European Union (CJEU) sought to clarify under what conditions the provision of a link to a work protected by copyright made available on a third-party website (where it is freely accessible) without a licence from the relevant rightholder falls within the scope of the right of communication to the public within Article 3(1) of the InfoSoc Directive.

In its decision the CJEU held that whether linking to unlicensed content falls within or outside the scope of Article 3(1) of the InfoSoc Directive depends – crucially – on whether the link provider has a profit-making intention or knowledge of the unlicensed character of the work linked to.

This new article of mine - which will be published in Common Market Law Review - assesses the implications of the GS Media decision in respect of linking, and - more generally - the construction of the right of communication to the public.

The main conclusion is that GS Media imposes a re-consideration of what amounts to an act of communication to the public. Yet, the forthcoming CJEU decisions in pending references for a preliminary ruling (Filmspeler, C-527/15, and Ziggo, C-601/15) might lead to a relaxation of the concept of 'indispensable intervention', thus broadening the notion of who makes an act of communication to the public.

Ultimately the discussion undertaken in this contribution suggests that the concept of ‘communication to the public’ has been undergoing an evolution. The next frontier for Article 3(1) of the InfoSoc Directive appears to be not just a determination of what amounts to an act of communication to the public, but also who makes an act of communication to the public. The latter in particular is the next question for the CJEU to tackle, and also poses significant – and not entirely worked out – challenges to EU policy- and law-making.


The article can be accessed and downloaded here.

[Originally published on The 1709 Blog on 29 March 2017]

Wednesday, 22 March 2017

Italian Supreme Court rules that mere reproduction of Vespa image may amount to counterfeiting

Roman Holiday Vespa
Italian online IP resource Marchi & Brevetti has just reported a very interesting and recent decision of the Criminal Section of the Italian Supreme Court (Corte di Cassazione) regarding the crime of counterfeiting within Article 474 of the Italian Criminal Code.

More specifically, it its judgment on 17 March 2017 (sentenza No 13078/2017) the Fifth Section of the Supreme Court addressed the question whether the mere reproduction of the image of a Vespa [a well-known and iconic symbol of 'italianità', ie 'Italian-ness' and - more generally - Italian life-style] on gadgets (eg key rings) and T-shirts without also the reproduction of the word 'Vespa' [a registered trade mark] would amount to counterfeiting. 

Under Italian law counterfeiting is not just a matter of trade mark infringement [in this case, it would be trade marks held by Piaggio, which also produces quite a lot of Vespa-related merchandisebut also a conduct that is subject to criminal sanctions.

Background

The Rome Court of First Instance (Tribunale) had already found against the defendant, who appealed the decision before the Supreme Court and argued that his conduct would not fall within the scope of Article 474 of the Italian Criminal Code. This provisions states [translation by myself]:

"1. Except in cases of joint liability covered by Article 473 [ie counterfeiting, alteration or use of distinctive signs of creative works or industrial products], anyone who introduces into the territory of the State, in order to make a profit, industrial products bearing trade marks or other distinctive signs, whether national or foreign, that are counterfeited or altered, is punished with imprisonment between 1 and 4 years, and a fine between EUR 3,500 and 35,000.
2. Except in cases of joint liability in the counterfeiting, alteration, introduction into the territory of the State, anyone who is in possession for the sale, starts selling or otherwise circulates, in order to make a profit, the products mentioned above sub paragraph 1 is punished with imprisonment up to 2 years and a fine up to EUR 20,000.
3. The delicts sub paragraphs 1 and 2 are punishable upon condition that internal laws, EU regulations and international conventions on the protection of intellectual and industrial property are observed."

Kat Holiday Vespa
The core of the defendant's argument was that the crime within Article 474 of the Italian Criminal Code distinguishes between the concepts of, on the one hand, trade marks and distinctive signs and, on the other hand, products or objects. There would be no crime when one merely reproduces images of industrial products (like a Vespa) without also reproducing any trade marks or distinctive signs. In such case, there could be confusion among products, but not also trade marks or distinctive signs.

The decision

The Supreme Court rejected the defendant's argument.

Recalling an earlier Supreme Court decision (sentenza No 9362/2015), the court noted that even the mere reproduction of an image can fall within the scope of Article 474 as long as: (1) such image is a trade mark or a distinctive sign of the product; and (2) the reproduction has the potential to create in some way confusion among consumers as regards the origin of the good in question.

It follows that the material reproduction of a trade mark as such is not required for Article 474 to apply.

Comment

This decision is consistent with earlier Italian case law on this point. 

Even if the Supreme Court did not refer to decisions other than Italian ones, the ruling also appear consistent with relevant trade mark case law, including the seminal decision of the Court of Justice of the European Union (CJEU) in Adidas-Salomon, C-408/01. In the case the CJEU considered use of a sign as embellishment [this appears to have been to some extent the defensive line used in the case decided by the Supreme Court], and held that the fact that a sign is viewed as an embellishment by the relevant section of the public is not, in itself, an obstacle to trade mark protection where the degree of similarity is none the less such that the relevant section of the public establishes a link between the sign and the mark. 

[Originally published on The IPKat on 22 March 2017]

Tuesday, 14 March 2017

First live blocking order granted in the UK

Can an injunction be sought against an access provider that would require this to block access not to a website [as per the standard scenario] but rather streaming servers giving unauthorised access to copyright content? Can such an injunction consist of a 'live' blocking, ie a block limited to when the relevant content is being streamed? 

An application of this kind was recently and successfully made - for the first time as far as the UK is concerned - by the Football Association Premier League (FAPL, supported by other rightholders) against 6 main retail internet service providers (ISPs).

In yesterday's decision in FAPL v BT [2017] EWHC 480 Ch Arnold J concluded that the High Court has jurisdiction to make an order of the kind sought by FAPL.

The law

Arnold J noted at the outset how the law on copyright blocking injunctions under s97A of the Copyright, Designs and Patents Act (CDPA) [by which the UK transposed Article 8(3) of the InfoSoc Directive into its own law] "is now fairly well established" [the first blocking injunction was granted in Newzbin 2 - here - in 2011], and was recently reviewed by the Court of Appeal of England and Wales in Cartier, ie in the context of trade mark blocking injunctions under s37(1) of the Senior Courts Act 1981 [here and here].

The application: what has changed

As explained by the learned judge [para 10], through its application for a blocking order FAPL sought to combat the growing problem of live Premier League footage being streamed without authorisation on the internet. 

Since the decision in FAPL v Sky in 2013, things have gotten worse for a rightholder like FAPL.

First, consumers are increasingly turning to set-top boxes, media players and mobile device apps to access infringing streams, rather than web browsers running on computers. The direct consequence of this is that "traditional blocking orders (targeting websites) will not be able to prevent the growing majority of infringements, because these devices do not rely upon access to a specific website in order to enable consumers to access infringing material. Instead, such devices can connect directly to streaming servers via their IP addresses." [para 11].

Secondly, access to and use of the devices mentioned above does not present many challenges [para 12].

Thirdly, there is a significant availability of high-quality infringing streams of footage of each Premier League match [para 13].

Fourthly, evidence suggests that a "significantly higher proportion of UK consumers believes that it is lawful to access unauthorised streams using such devices and software than believes that it is lawful to access unauthorised content via file-sharing websites." [para 14]

A stream and a Kat
Fifthly, the streaming servers [these being crucial to making the content accessible to the viewers] used to make available infringing streams to the public have increasingly been moved to offshore hosting providers who do not cooperate with rightholders' requests to take down infringing content either at all or in a timely manner [the latter being essential for a rightholder like FAPL; para 15]

According to Arnold J, as a result of these factors, evidence supports the view that football fans are turning to streaming devices instead of paid subscription services [para 16].

The order sought: identification of streaming servers

In light of the above, FAPL sought an order that would order 6 ISPs to block access to a number of streaming servers identified in different ways and according to a 2-stage process. 

While one identification criterion remains confidential, Arnold J held the view that other criteria should be described for public interest reasons [para 21].

These are that FAPL (and its appointed contractor) [para 21]:
  • must reasonably believe that the server has the sole or predominant purpose of enabling or facilitating access to infringing streams of Premier League match footage; or
  • must not know or have reason to believe that the server is being used for any other substantial purpose.

The order sought: what is new

In addition, the order sought by FAPL was different from previous ones for a number of reasons.

First, it is "a "live" blocking order which only has effect at the times when live Premier League match footage is being broadcast". [para 24]

Secondly, the order provides for the list of target servers to be "re-set" each match week during the Premier League season. [para 25]

Thirdly, the order sought would be only for a short period: 18 March 2017 - 22 May 2017 [that is when 2016/17 Premier League season ends].

Fourthly, in addition to the safeguards which have become standard in section 97A orders, the order would require a notice to be sent to each hosting provider each week when one of its IP addresses is subject to blocking. [para 27]

Profit made
The decision: communication to the public by streaming servers (and first UK application of GS Media)

While reviewing the (classic) jurisdictional requirements under s97A CDPA, Arnold J also tackled the issues of whether the operators of the target servers would make acts of communication to the public within s20 CDPA

He concluded in the affirmative for a number of interesting reasons, including that the operators "intervene deliberately, and in full knowledge of the consequences of their actions, to give access to the Works in circumstances where the users would not in principle be able to enjoy the Works without that intervention" [para 34, referring to the decision of the Court of Justice of the European Union (CJEU) in GS Media].

As far as I know, this is the first UK application of GS Media. Of particular interest is paragraph 37, in which Arnold J touched upon the issue of 'profit-making intention':

"Generally speaking, the operators of the Target Servers are not merely linking to freely available sources of Premier League footage. Even if in some cases they do, the evidence indicates that they do so for profit, frequently in the form of advertising revenue, and thus are presumed to have the requisite knowledge for the communication to be to a new public". 

Conclusion


This is an important order that demonstrates how technological advancement prompts a re-consideration of traditional approaches, including whether intermediary injunctions should be only aimed at blocking access to infringing websites [the answer appears to be no, and this order may pave the way to even more creative enforcement strategies in the future].

Arnold J's decision shows how the law - including the one on blocking orders - is subject to evolution. This is so also to permit that the 'high level of protection' that the InfoSoc Directive [from which s97A CDPA derives] intends to provide is actually guaranteed.

As far as the GS Media 'profit-making intention' is concerned, to some extent the view of Arnold J appears somewhat narrower (but practically not dissimilar) than that of other courts, eg the District Court of Attunda in Sweden [herehere, and herethat have applied GS Media so far. Further applications of GS Media by UK courts are however keenly awaited.

[Originally posted on The IPKat on 14 March 2017]

Wednesday, 8 March 2017

BREAKING: Politico publishes (part of) draft copyright report by MEP Comodini Cachia

MEP Therese
Comodini Cachia
Politico Europe (PRO version) has just published part [so far only the odd pages] of the text of the draft report that MEP Comodini Cachia is preparing on the European Commission's copyright package - including the proposal for a directive on copyright in the Digital Single Market [Katposts here] - at the request of the European Parliament. 

The IPKat has been able to access this part of the text of the draft report, and here are some of the most interesting proposals included therein.

Press publishers' right to disappear and be replaced by a presumption of representation

MEP Comodini Cachia appears willing to suggest that this proposed new sui generis right should be dumped subject to a significant re-thinking. 

In particular, the draft report proposes to re-write Article 11(1) of the proposed directive as follows:

"Member States shall provide publishers of press publications with a presumption of representation of authors of literary works contained therein and the legal capacity to sue in their own name when defending the rights of such authors for the digital use of their press publications."

The future of the
proposed
press publishers' right?
Together with a re-writing of Article 11(1) comes also the deletion of Article 11(4). This paragraph, in the Commission's original proposal, would have made the new press publishers' right subject to a 20-year duration.

Value gap proposal to be clarified

In relation to the so called value gap proposal in Article 13, in her draft report MEP Comodini Cachia notes how the liability regime envisaged therein is complementary to the one already established in the E-commerce Directive, to the extent that Article 13 seeks to ensure the effective implementation of agreements concluded between online service providers and rightholders for the use of works.

In this sense, Article 13 should provide clarity as to which online service providers it refers to, and should use the same classification employed in the E-Commerce.

According to MEP Comodini Cachia, the implementation of agreements between online service providers and rightholders may be carried through technological measures, but these must be respectful of the copyright acquis in its entirety, including relevant exceptions and limitations.

I have only seen part of the newly worded Recital 38, but MEP Comodini Cachia proposes to clarify that the obligation of online service providers to conlcude licensing agreements with rightholders only arises when they are "actively and directly involved in the making available of user uploaded content to the content and where this activity is not of a mere technical, automatic and passive nature".

***


Further details on the draft report will be provided as soon as they become available: stay tuned!

[Originally published on The IPKat on 8 March 2017]

Friday, 3 March 2017

TVCatchup 2 and the harmonising vision of the CJEU

What room does EU copyright leave for national initiatives in areas harmonised by relevant EU directives?

The question of EU preemption (linked to, yet distinct from, EU supremacy) in the area of copyright is not a new one. Personally, I have been very interested in it for a while [see here], and so has been apparently the Court of Justice of the European Union (CJEU). 

A string of recent copyright decisions demonstrates a diminished tolerance on the side of the Court for diverging national solutions to copyright protection in areas for which EU harmonisation has occurred. In this sense, the search of flexibilities in EU copyright has been proving increasingly challenging ... if not a vain quest altogether. 

Favouring internal market goals over pretty much anything else, the CJEU has not been shy in holding that certain national arrangements would be incompatible with EU law. In this sense, there is probably no need to recall the (endless) series of references for a preliminary ruling on national private copying exceptions and, a few months ago, the decision in Soulier, C-301/15 [here and - particularly - here], just to mention a couple of examples.

Now comes a further CJEU ruling in which this trend is once again visible.

Earlier this week, the Court issued its judgment in ITV Broadcasting v TVCatchup, C-275/15 (TV Catchup 2), a reference for a preliminary ruling from the Court of Appeal of England and Wales. 

Background to TVCatchup 2

If the parties' names sound familiar, it is because they are. A first reference for a preliminary ruling had been done at the first instance level, when the High Court asked the CJEU to clarify - among other things - whether the provision of an unauthorised internet stream of a protected broadcast would amount to an act of communication to the public within Article 3(1) of the InfoSoc Directive [the CJEU said yes in 2013]

The case returned to the High Court of England and Wales, and the High Court ruled that - while the defendant, TV Catchup [currently in administration], would be prima facie liable under the UK equivalent Article 3(1) of the InfoSoc Directive, ie s20 of the Copyright, Designs and Patents Act (CDPA), it could nonethtlees rely on the defence provided within s73(2)(b) and (3) CDPA [pending the litigation between broadcasters and TVCatchup UK Government decided to repeal this provision].

Cables? They are Billy's speciality
This defence can [or rather, could] be invoked in an action for infringement of copyright in a broadcast or in any work included in a broadcast, applicable "where a wireless broadcast made from a place in the United Kingdom is received and immediately re-transmitted by cable". In the particular case at hand, s73(2)(b) and (3) means that copyright is [was] not infringed "if and to the extent that the broadcast is made for reception in the area in which it is re-transmitted by cable and forms part of a qualifying service".

The broadcasters appealed the High Court's decision. The Court of Appeal stayed the proceedings, and sought guidance on the interpretation of Article 9 of the InfoSoc Directive. This provides that the InfoSoc Directive "shall be without prejudice to provisions concerning in particular ... access to cable of broadcasting services ...".

The UK court asked the CJEU whether Article 9 of the InfoSoc Directive - specifically the concept of ‘access to cable of broadcasting services’ therein - must be interpreted as covering and permitting national legislation which provides that copyright is not infringed in the case of the immediate retransmission by cable, including, where relevant, via the internet, in the area of initial broadcast, of works broadcast on television channels subject to public service obligations.

The Court's response

The CJEU [unsurprisingly] noted at the outset [para 17] that, in the absence of any express reference to the laws of the Member States, the concept of ‘access to cable of broadcasting services’ in Article 9 must be given an autonomous and uniform interpretation throughout the EU which takes into account the wording of that provision, its context and the objectives of the legislation of which it forms part.

Having said so:
  1. The concept of 'access to cable' [used in Article 9 of the InfoSoc Directive] is different from that of ‘retransmission by cable’ [used in s73 CDPA], since only the latter concept designates, within the framework of the InfoSoc Directve, the transmission of audiovisual content.
  2. In line with what Advocate General (AG) Saugmandsgaard Øe noted at para 55 of his Opinion, Article 1(2)(c) of the InfoSoc Directive deals expressly with ‘cable retransmission’, and excludes from the scope of the directive the provisions of EU law [notably the SatCab Directive, which the Court deemed not relevant to the background national proceedings: see para 21] governing that question.
  3. Again unsurprisingly [the CJEU has consistently stressed this, including in the first TVCatchup case], the principal objective of the InfoSoc Directive is to establish a high level of protection of authors, allowing them to obtain an appropriate reward for the use of their works, including on the occasion of communication to the public.

It follows that - as a rule - a retransmission by cable is subject to the authorisation of the relevant rightholder [the Court speaks of 'author' at para 24], unless this activity falls within one of the exceptions contained within the exhaustive list in Article 5 of the InfoSoc Directive [and, I would add, the relevant Member State whose law is applicable has transposed such exception into its own legal system]. This is not the case here.

Access is not the
same as re-transmission
The Court then recalled (with approval) that in his Opinion the AG had noted that the rationale of Article 9 is "to maintain the provisions applicable in areas other than that harmonised by the directive" [para 26], not to defeat the EU harmonising efforts:

"Indeed, an interpretation of Article 9 of [the InfoSoc Directive] to the effect that it permits a retransmission, such as that at issue in the main proceedings, without the consent of the authors, in cases other than those provided for in Article 5 of that directive, would run counter not only to the objective of Article 9, but also to the exhaustive nature of Article 5, and, consequently, would be detrimental to the achievement of the principal objective of that directive which is to establish a high level of protection of authors." [para 27]

The CJEU concluded that Article 9 of the InfoSoc Directive, and specifically the concept of ‘access to cable of broadcasting services’, must be interpreted as not covering, and not permitting, national legislation which provides that copyright is not infringed in the case of the immediate retransmission by cable, including, where relevant, via the internet, in the area of initial broadcast. The Court also noted that this applies to works broadcast on TV channels subject to public service obligations.

In conclusion

Given UK Government’s choice to repeal s73 CDPA, the general impact of TVCatchup 2 in the UK is likely to be limited.

However, as mentioned at the beginning of this post, this decision is yet another reminder that greater harmonisation of Member States’ copyright laws appears to be a primary concern for the CJEU. The direct implication of this is that the Court is very vigilant when interpreting provisions in the relevant directives – notably the InfoSoc Directive – and not particularly keen in tolerating national solutions that go astray from what the relevant body of EU legislation allows Member States to do.


[Originally published on The IPKat on 3 March 2017]