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]

BREAKING: CJEU rules in that the making available of copies of TV programmes saved in the cloud must be authorised by rights owner

Further to the Opinion of Advocate General (AG) Szpunar [here], this morning the Court of Justice of the European Union (CJEU) delivered its judgment in VCAST, C-265/16.

This was a reference for a preliminary ruling from the Turin Court of First Instance (Italy), seeking guidance on the application of the private copying exception within Article 5(2)(b) of the InfoSoc Directive to cloud-based video recording services. 

More specifically: does EU law prohibit a commercial undertaking from providing - without the authorisation of the relevant copyright owner - private individuals with cloud computing services for the remote video recording of private copies of works protected by copyright, by means of that commercial undertaking’s active involvement in the recording?

The AG provided a sophisticated response to this question, substantially concluding that the exception - while being applicable also in instances involving  the intervention of a party other than the direct beneficiary - requires in any case that the user/beneficiary has lawful access to the work that he/she copies.

The CJEU judgment - which is not yet available on the Curia website - seems to side with the AG's conclusions. However it appears that the CJEU judgment focuses more extensively on the analysis of the right of communication/making available to the public within Article 3 of the InfoSoc Directive than what the AG Opinion does.

According to the press release:

"By today’s judgment, the Court finds that the service provided by VCAST has a dual functionality, consisting in ensuring both the reproduction and the making available of protected works.

To the extent that the service offered by VCAST consists in the making available of protected works, it falls within communication to the public. In that regard, the Court recalls that, according to the directive, any communication to the public, including the making available of a protected work or subject-matter, requires the rightholder’s consent, given that the right of communication of works to the public should be understood, in a broad sense, as covering any transmission or retransmission of a work to the public by wire or wireless means, including broadcasting.

The Court takes the view that the original transmission made by the broadcasting organisation, on the one hand, and that made by VCAST, on the other, are made under specific technical conditions, using a different means of transmission for the protected works, and each is intended for its public.

The Court concludes that the (re)transmission made by VCAST constitutes a communication to a different public from that of the original transmission and must therefore receive the consent ofthe copyright owner or holder of related rights. Accordingly, such a remote recording service cannot fall within the private copying exception."

A more detailed analysis will be provided as soon as the judgment becomes available: stay tuned!

[Originally published on The IPKat on 29 November 2017]

Florence court's decision on use of David's image now available

Michelangelo's David
Last weekend I reported on this blog the news of an interesting decision of the Florence Court of First Instance (Tribunale di Firenze) that prohibited a travel agency, Visit Today, from using the image of Michelangelo's David for commercial purposes, including to sell unofficial tickets for guided tours inside the Galleria dell'Accademia.

At the time when the blog post was published the text of the interim decision was not yet available. Now readers can access and download it here, thanks to Katfriends Fabio Ghiretti (Mondini Rusconi) and Francesco Rossi (SIB Legal).

The decision (ordinanza) was rendered in the context of interim (emergency) proceedings that the Avvocatura dello Stato had brought against Visit Today pursuant to Article 669-octies of the Italian Civil Procedure Code.

As anticipated, the reasoning underlying the granting of the injunction against Visit Today is rooted within the provisions of the Italian Cultural Heritage Code, also known as Codice Urbani, notably Article 108 therein.

As explained by the Florence court [the translation from Italian is mine],

"Article 108 of the Cultural Heritage Code provides that the authority which administers a cultural good has the right to allow its reproduction, subject to an application and the payment of a royalty set by the authority itself, with the sole exception of reproductions of work for non-profit purposes.
There is no doubt that the sculpture at issue [David] is a cultural good, nor is there any doubt that the authority that administers it is the Galleria dell'Accademia, which is subject to the Ministry [of Culture]; it follows that its use for for-profit purposes done through the reproduction of its image falls within the cases for which the authorization of the administrative authority is needed."

While ordinary proceedings should follow the issuing of the injunction, for the time being the court ordered that Visit Today's advertising materials be destroyed, and prohibited it from using the David's image in Italy and all over Europe, whether by analogue or online means (including the undertaking's website). 

The court however rejected Avvocatura dello Stato's request to block completely access to Visit Today's website in that such measure would be disproportionate to the nature and scope of the infringement. 

[Originally published on The IPKat on 28 November 2017]

Saturday, 25 November 2017

Florence court prohibits unauthorized commercial use of David's image

Michelangelo's David in Florence
Earlier this week the Florence Court of First Instance (Tribunale di Firenze) issued an important and interesting decision [not yet available], which has been widely reported by newspapers in Italy [eg herehereherehere] and abroad [eg here]

The Avvocatura dello Stato, this being the body responsible for advising and representing the Italian state (including in legal proceedings), sued a company, Visit Today, before the Florence Court of First Instance, seeking to obtain a decision that would prohibit this from selling unofficial tickets for the Galleria dell'Accademia in Florence, also using brochures and materials depicting what is probably the most famous guest of this beautiful museum: Michelangelo's David.

The Florence court sided with Avvocatura dello Stato, and prohibited Visit Today from using the David's image for commercial purposes. 

On what grounds?

I have received several messages asking what the possible grounds for a decision of this kind would be, since copyright protection in this artwork has clearly lapsed ... well, at least economic rights.

It is in fact worth recalling that in Italy moral rights protection is perpetual and also the State [or rather, the Head of Italian Government: see Article 23 of the Copyright Actcan enforce an author's own moral rights. Similarly to other droit d'auteur jurisdictions, Italian courts have interpreted moral rights provisions generously, with the result that the scope of the right of integrity is rather broad.

recent visitor
of Galleria dell'Accademia
This said, the main ground for the decision appears to have been [as I mentioned, the decision has not been published yet] the Italian Cultural Heritage Code, also known as Codice Urbani [see here for a recent discussion of Italian freedom of panorama and its relationship with the Code; see also here for an analysis of the decision].

Article 106 of the Code sets the general principle that for cultural heritage items subject to their own control, the State, the various Italian regions and local public bodies may allow individual applicants to use such items for purposes compatible with their own cultural value. 

This means that for-profit uses of cultural heritage under the responsibility of Italian public administration are not generally free: instead, they are subject to preventive authorization. 

Articles 107 and 108 of the Code provide that the competent public administration may allow third-party uses of an item - including an artwork - belonging to Italian cultural heritage, subject to the payment of royalties to be determined on the basis of - among other things - the type of use requested and the possible economic gain that the user would obtain from the use of the item. 

This said, authorization is not required in each and every case. Article 108(3-bis) clarifies in fact that non-profit uses of cultural heritage items for purposes of study, research, freedom of expression or creative expression, and promotion of the knowledge of cultural heritage do not require authorization. 

A surprising decision? Not really

The Florence court's decision, therefore, is not surprising. It is not the first time, in fact, that improper and unauthorized commercial use of Italian cultural heritage has been at the centre of litigation or ... threats of litigation. With specific regard to Michelangelo's David, readers will for instance remember the rather recent case of the 'armed David' [here]

Similarly, lawyers who advise clients in the advertising business regularly remind them that the Cultural Heritage Code may prevent them from using works that, otherwise, would be in the public domain from a copyright standpoint.

A Kitten ... but actual David's legs?
What is at stake

When visiting Italian cities like Florence, Rome, and Venice it is very frequent to see long queues outside museums and monuments. Invariably frequent is also the sight of vendors (known as 'bagarini') offering tickets - at prices higher than the official ones - to people standing in the queue, alleging great bargains and promising to let them skip the queue (admittedly a rather attractive perspective when you are queuing under the sun and facing a temperature of 38°C). 

However, visitors are also often victims of scams. 

The reason why the Avvocatura dello Stato brought the present proceedings was indeed also to set a 'precedent' and reduce, and possibly eliminate, the problem of bagarini.  

Commenting on the Florence decision, Italian Minister of Culture stated that the decision is a good step in the direction of repressing the unauthorized sale - including over the internet - of tickets for Italian cultural heritage sites and the improper use of cultural heritage items. He added that this decision "is an important step forward for the protection of consumers and the protection of masterpieces held in Italian museums." The Cultural Heritage Ministry - he added - will continue to monitor improper uses and take action in all cases that infringe relevant provisions in the Cultural Heritage Code. 

Although the decision is of course limited to the defendant's activities, according to the director of Galleria dell'Accademia, Cecilie Hollberg, the outcome will serve as a model for all the museums that face the problem of unofficial ticket vendors who sell tickets at a higher price, thus scamming wannabe visitors.

[Originally published on The IPKat on 25 November 2017]

Wednesday, 15 November 2017

When public domain works meet trade mark law: Norwegian Industrial Property Office applies EFTA Court’s judgment and dismisses applications to register Vigeland’s artworks as trade marks

One of the artworks that Oslo municipality
tried to have registered as a trade mark:
The Angry Boy (Sinnataggen)
A few months ago this blog reported on an interesting and important decision issued by the EFTA Court, this being the court with jurisdiction over EFTA states that are parties to the EEA Agreements (Iceland, Liechtenstein, and Norway): Case E-5/16 - Norwegian Board of Appeal for Industrial Property Rights – appeal from the municipality of Oslo.

The decision followed a request for an advisory opinion from the Board of Appeal of the Norwegian Industrial Property Office (NIPO), and required consideration of whether and to what extent signs representing artworks by Gustav Vigeland and in which copyright protection has lapsed could be registered as trade marks under the previous EU Trade Mark Directive, ie  Directive 2008/95 [EFTA countries are not part of the EU but are subject to EU legislation, being part of the European Economic Area].

The first round: NIPO application

The NIPO Examiner had partly rejected the applications filed by the Oslo municipality to register six signs as Norwegian trade marks, on grounds that the signs at issue would be devoid of distinctive character, be descriptive or be shapes that add substantial value to the goods.

The appeal and the EFTA Court’s judgment

The decision was appealed before the NIPO Board of Appeal, which - in addition to the grounds considered by NIPO – wondered whether registration should be also refused on grounds of public policy and morality (Article 3(1)(f) of the Trade Mark Directive). More specifically, the Board of Appeal was unsure whether trade mark registration of public domain works might, under certain circumstances (notably when the artwork in question is well-known and has significant cultural value), be against “public policy or accepted principles of morality”.

The NIPO Board of Appeal decided therefore to seek guidance from the EFTA Court, which in turn provided a detailed judgment addressing the registrability of shape marks and the notions of public policy and morality.

The case returns to the NIPO Board of Appeal

As already discussed here, earlier this week the NIPO Board of Appeal issued its decision regarding the registrability of the signs applied for, and rejected the Oslo municipality’s applications.

The Board of Appeal applied the principles expressed in the EFTA Court’s judgment, and held that the signs at issue could not be registered on grounds that registration would be contrary to public order.

 Gustav Vigeland
According to the official translation of the decision,

The trade marks in question consist either of depictions of sculptures and wrought iron
works which have undoubtedly been protected by copyright until the death [possibly a bit longer than that …] of Gustav Vigeland (the figure marks) or the sculptures themselves (the three-dimensional marks). In other words, the case concerns works of art which reverted to the public domain on 1st January 2014. According to the approach taken by the EFTA Court, copyright protection is an exception to the rule that intellectual property, as a matter of principle, belongs to the public domain once communicated (paragraph 66). Consequently, creative content reverts to the public domain with the lapse of copyright protection. The public must therefore have the ability to freely use the works, as the considerations justifying limitations to this freedom no longer apply.”

This position might sound harsh if considered in isolation, And in fact the Board added that it is not excluded that a sign depicting a work in which copyright protection has expired may be eligible for trade mark registration.

Nonetheless in cases like the one at issue it is necessary to consider whether trade mark registration of signs representing artworks that are now in the public domain would conflict with the rationale underlying limited duration of copyright. This might be so no irrespective of whether the requirements for trade mark registration, including that the sign at issue is sufficiently distinctive, are met.

The Board considered that the present case would be extraordinary. Nonetheless two considerations in particular would rule out the possibility to grant the Oslo municipality’s applications.

First, “both the artist Gustav Vigeland and the Vigeland space (park and museum) must be considered as belongings of the Norwegian cultural heritage”. Secondly, granting the trade mark registrations would amount to granting someone (the Oslo municipality) a competitive advantage over third parties without having contributed to the development of the trade marks thus obtained.

The conclusion could be, therefore, only to reject the applications filed by the Oslo municipality.

[Originally published on The IPKat on 15 November 2017]

Sunday, 12 November 2017

Can a film be released without mention of the name of its director?

This question relates to moral rights. In particular the right at stake is attribution, ie the right - to use the language of Article 6-bis of the Berne Convention - of an author to claim authorship of his/her work.

The protection of moral rights has been traditionally regarded as particularly strong in those jurisdictions that follow the traditional French-style droit d'auteur approach to copyright protection, including Italy. This is indeed the country where this question may be raised.

The latest news is in fact that the latest film by well-known film director and writer Fausto Brizzi, due for release on 15 December and entitled Poveri ma ricchissimi, may appear in cinemas without indication of his name as the director of the film. 

In the wake of the Harvey Weinstein, Kevin Spacey, etc etc scandals, it is rumoured (so far no confirmation has been provided though) that Brizzi might have sexually assaulted a number of Italian actresses. According to Corriere della Sera[the translation from Italian is mine]

"[Brizzi's] film is produced by Wildside [a production company in which Brizzi himself used to hold a minority quota until recently] and Warner Bros, which is also the film distributor. And Warner is currently assessing the option to release Poveri ma ricchissimi without the indication of Brizzi's name, as if it was a film without a director. The US entertainment colossus would thus follow a policy that in the US has been in place since the Weinstein scandal, as it also happened to Kevin Spacey who has been erased from the new Ridley Scott film."

Aside from the consideration whether a move of this kind would be appropriate in the case of a person, Brizzi, who so far has not been explicitly identified (nor found to have actually behaved as claimed) as "the well-known, 40-year-old film-maker" that a number of Italian actresses referred to when revealing their own experiences of sexual harassment to Italian TV programme Le Iene, the question that arises is whether Italian copyright law would allow an initiative like the one considered by Warner.

Directors as authors, and their moral rights

In line with what is required under EU law [on the issue of directors of cinematographic works as authors, see the important decision of the Court of Justice of the European Union in Luksan, C-277/10], the Italian Copyright Act (Legge 633/1941) recognises directors among the authors of a cinematographic works. Article 44 states in fact that the principal director of the work shall be considered to be the author of a cinematographic work, together with the authors of the film plot, screenplay, and soundtrack.

Fausto Brizzi
What about the moral rights of directors as authors then? 

Article 20(1) provides that independently from the exclusive economic rights, and even after their transfer, the author shall have the right to be recognised as the author of his/her work. However, Article 22 states that, while moral rights are non-assignable, the author who has known and accepted the modifications to his/her work shall not be entitled to prevent its execution and seek its destruction. 

The scope of attribution

In all this, it would appear that Warner might find it potentially difficult to distribute Brizzi's film without the mention of his name. 

Brizzi's consent would be necessary, but might not be sufficient. In fact, at least two further points would require consideration. 

The first is whether the omission of the authorship credit may be regarded as some sort of 'modification' of the work. If the answer was yes, then the author could consent to it and be prevented from opposing the subsequent release of the film. However, the answer to this question might be potentially problematic because 'modification' appears to relate more to another key moral right, this being the right of integrity [see again the language of the Berne Convention, Article 6-bis], rather than attribution. 

The second point (directly related to the answer to the point above) is whether and to what extent the moral right of attribution may be waived. This issue is still debated, both in Italian scholarship and case law. The conclusion that one is entitled to waive his/her moral right of attribution would be hardly acceptable to those who hold the view that moral rights are not just non-assignable, but also unwaivable under Italian law. In this respect, one might recall that it is not entirely clear under Italian law whether an agreement by means of which one waives his/her right of attribution, eg in the context of ghostwriting, is valid and binding or, instead, should be regarded as void because contrary to the imperative norms on moral rights protection.

In all this, Brizzi's case is fairly unprecedented, and it will be interesting to see whether and to what extent Warner goes ahead with the initiative of 'erasing' the director's authorship credit from Poveri ma ricchissimi. 

[Originally published on The IPKat on 12 November 2017]

Friday, 3 November 2017

Linking in the US: is an embedded tweet an infringement of the public display right?

Tom Brady
Can a tweet containing an unlicensed photograph amount to a copyright infringement by the person who embeds such tweet on their own site?

One would not be surprised if a question of this kind was asked in Europe [it was actually asked but answered very ambiguously in BestWaterhere, whose conclusions appear now questionable in light of subsequent case law, notably GS Mediahere]

On this side of the Atlantic linking can fall within the scope of the right of communication to the public within Article 3(1) of the InfoSoc Directive, although different considerations must be undertaken depending on the case at issue, including whether the link provider is aware of the unlicensed character of the content linked to and/or pursues a profit. 

This very question is now being asked  alsoin the US, where a photographer working with Getty Images [this had already raised issues of linking and copyright under US law, eg here], Justin Goldman, has sued a number of publishers over the unauthorised embedding, by their relevant publications, of a tweet containing an unlicensed image of American football quarterback Tom Brady that he had taken.

According to the complaint filed with the US District Court for the Southern District of New York, the plaintiff alleges that the defendants - by embedding content hosted elsewhere (Twitter) - have infringed his public display right under §106(5) of the US Copyright Act. According to this provision, the copyright owner has the right, "in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly". 

It should be recalled that the US, despite being a party to both WIPO Internet Treaties, does not expressly recognise a making available right or a right of communication to the public, as instead the EU and its Member States do. 

Not Tom Brady
However, in the past US courts have had the opportunity to address to some extent linking issues. The best-known and possibly most relevant decision is the one of the Ninth Circuit in Perfect 10 v, which discusses the potential liability for the the displaying of low-resolution thumbnails in response to Google Search queries. In that case the court considered that, although there was a prima facie infringement of the plaintiff's rights, the public display right requires that the work or a copy thereof is actually displayed. That would not be the case of someone that merely displays copies hosted on servers other than its own. The Ninth Circuit concluded that “[p]roviding ... HTML instructions is not equivalent to showing a copy.”

As explained in the Making Available Study published by the US Copyright Office, the "Ninth Circuit’s reasoning in Perfect 10 has been relied on to bar direct infringement claims for instances of inline linking and framing" (p 49). 

This, however, has not happened without criticisms, especially by (1) those who think that the US position as interpreted in Perfect 10 would be inconsistent with this country's international obligations; and (2) by those who argue that the technological issues at stake in Perfect 10 would be different from those relevant to the embedding on one's own site of content hosted elsewhere.

According to the US Copyright Office the treatment of linking under US law remains uncertain and further guidance from courts is required. Is this new case perhaps the right opportunity?

After the filing of the complaint by Mr Goldman, a number of amicus curiae briefs have been filed: they are available here.

Further developments will be closely monitored: watch this space!

[Originally published on The IPKat on 3 November 2017]