Wednesday, 25 April 2018

AG Campos provides reasonable interpretation of the right of communication to the public in his Opinion in Renckhoff

The work at the centre of this litigation
Does the inclusion of a work [the photograph on the right hand side] — 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 an act of communication to the public within Article 3(1) of the InfoSoc Directive if the work is first copied onto a server and is uploaded from there to that person’s own website?

This is the question that the Court of Justice of the European Union (CJEU) has been asked to address in Land Nordrhein-Westfalen v Renckhoff, C-161/17.

This morning Advocate General (AG) Campos Sánchez-Bordona delivered his Opinion [not yet available in English], and answered in the negative.

Let’s see what happened.


Well, the background is quite ... ridiculous (in the sense that it is ridiculous that litigation is brought in the first place in instances like the present one), and also the AG seemed to agree.

At the very outset, in fact, he observed that not long time ago, school research and work on posters used to be accompanied by photographs, prints and drawings published on books and journals/magazines and hanged on the walls of schools (so to allow parents to view them), “without the authors of those images seeking compensation for their use” [NOTE: all direct quotes are my own translations from the Italian version of the Opinion]. Things have changed and, nowadays, the images used are digital and the resulting school work/research is uploaded on freely accessible websites.

This is indeed what happened in this case to a schoolgirl, who 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 online … but the photographer [in my view it might be even questionable that the work is protected by copyright in the first place; although the parties to the national litigation agreed that the photograph is protected, the AG also had his doubts: see further below] 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 ensued all the way up the German Federal Court of Justice [!!], which has decided to stay the proceedings and refer the question above to the CJEU.

The AG Opinion

Preliminary remarks

Before even starting his own substantial analysis, the AG noted that the notion of communication to the public has been “already subject to several decisions of the Court”. Yet, “the current reference shows that the interpretative questions of national courts have not been fully solved yet” [this is indeed true … in terms of numbers, the CJEU is fast approaching its 20th decision on Article 3(1) of the InfoSoc Directive].

Then, the AG noted that the way the referring court has phrased the question requires the CJEU to only consider the construction of the right of communication to the public, not also the issue of reproduction [of course, by downloading the photograph and re-uploading it, the schoolgirl made acts of reproduction].

As mentioned, the AG did not find it straightforward to say that a photograph like the one at issue would be protected by copyright. Nonetheless, pursuant to the freedom left to Member Sates [but not all took advantage of this possibility, an example being the UK] by Article 6 of the Term Directive to protect ‘simple photographs’, it would appear that – at least under German law – such photograph would be protected.

Notion of communication to the public: an ‘act of communication’

The AG then turned to the construction of Article 3(1) of the InfoSoc Directive.

In relation to the need for an ‘act of communication’, the AG noted that one should consider “the indispensable role played by the user and the deliberate nature of its intervention” [here the AG directly referred to GS Media, on which see here]. Such criterion requires to consider both subjective elements relating to the behaviour of the user [the AG referred to GS Media to highlight how the Court has been taking into account also such elements] and objective circumstances, as the user’s act must give access to or facilitate access [this is a very important point relating to Article 3(1), which the CJEU has particularly elaborated in its judgments in Filmspeler – a case in which the AG was once again Campos; see my take here – and Ziggo, on which see here] to a work.

Whilst it is true that both the schoolgirl and her teacher were aware of the consequences of their behaviour when they posted the photo online, ie granting access to a work, it would be wrong not to consider: (1) the accessory character of the photograph as an element of a broader work; (2) the fact that the photograph was already freely accessible and had been published with the author’s consent; and (3) the educational context in which the act of communication occurred, ie without any customers or profit-making intention.

The AG observed that in a case like the one at issue, unlike GS Media, one should not consider whether the pupil and her teacher knew that the original photograph had been published or not with the consent of the author, but rather whether they should know that, to reproduce a third-party photograph, they needed the author’s consent. The AG answered in the negative, holding that one should bear in mind that: A) those who act without a profit-making intention do not usually act with full knowledge of the consequences of their behaviour; and B) the work communicated by the user was already lawfully and freely accessible on another website.

If the factors to which the arguments above refer to subsist, then “there is no communication to the public”. However, this is NOT the case when the the righholders notifies the user that the work to which it gives access is unlawfully available online or when the access granted by the suer circumvents protection measures.

All this considered, the AG found that:

·       There was no mention of who the author of the photograph was on the website from which the pupil had downloaded the photograph;
·       The photograph was easy to obtain, as there were no restrictions (whether technical or related to the terms of use) on such website.

These elements might have led the pupil and her teacher to believe that the photograph was free to use by the public.

This conclusion is not the same as thinking that there are no rights on such photograph. However, in cases like the one at issue, the user “may presume that the author does not object to the limited use of such images, for educational purposes” [para 78 – this is correct both in light of CJEU case law and, more banally but not necessarily a given, in terms of common sense]

The AG continued, holding that any different conclusion would lead to “limiting the use of most information available online. Such limitation could affect freedom of expression and information as per Article 11 of the EU Charter. Furthermore, in the present case such limitation would affect the right to education as per Article 14(1) of the Charter.” [para 79]

AG Campos Sánchez-Bordona
The AG also held the view that lack of a profit-making intention is more relevant than what the referring court appears to think. Here the AG recalled the GS Media presumption as applied to for-profit link providers to hold that – in case there were any doubts – for users without a profit-making intention it is necessary to demonstrate their knowledge of the unlicensed character of the work linked to. And the lack of any warning should be read, according to the AG, as reinforcing the idea that neither the pupil nor her teacher had full knowledge of the protected character of the work and the need to seek the author’s authorization.

Notion of communication to the public: same technical means and a new public

The AG then turned to consideration of whether in the present case the work has been made available to a ‘new public’, in that the technical means used for the original and the allegedly infringing communication was the same.

The AG ruled out that there would be a new public in this case: “As the photograph is easily and lawfully (ie with the consent of the rightholder) available to all internet users, it is unclear how the intervention of a pupil and her teacher may be decisive so that a greater number of persons access” the work [para 100].

The AG also rejected the idea – advanced by some commentators – that the ‘new public’ criterion would amount to an undue exhaustion of the right of communication to the public, which would be as such contrary to Article 3(3) of the InfoSoc Directive: “It is, instead, the logical consequence of the way in which the holder of the rights to the photograph has consented to its use, knowing or having to know that lack of any protection against the reproduction of the image could lead internet users to believe that it was freely available to the public” [para 104].

It is not too much to ask a professional, when he/she publishes a work online, personally or through third parties, to adopt the appropriate measures, also of a technical nature, in order to clarify his/her copyright and the will to control the circulation of his/her own work” [para 105]. This does not reduce the high level of protection that authors are entitled to.

In any case, one can always seek the removal of one’s own work if he/she believes that its use is prejudicial [para 107 - here the AG does not elaborate further, but it seems that this is an argument to strengthen the conclusion that the online publication of a work does not amount to a weakened copyright protection, or even the ‘exhaustion’ of one’s own rights].

Also applicable to copyright protection ...
possibly one of the main points
of the AG Opinion
The role of exceptions

The AG then recalled that, in any case, educational exceptions might be available. If Germany has transposed Article 5(3)(a) into its own law, then account should be given of the fact that the EU Charter recognizes the right to education as a fundamental right. This should guide the correct application of the relevant exception, including ensuring that this fundamental right is not unduly compressed. In any case, in the case at issue, also compliance with the three-step test appears ensured.


This looks like a reasonable Opinion in the context of a fairly unreasonable claim, as well as a good interpretation of CJEU case law on the right of communication to the public. 

Two particular points are worth making.

The first one is that the AG Opinion is a helpful reminder that copyright protection should be balanced against other fundamental rights, including the right to education.

The second point relates to the construction of the right of communication to the public, and in particular the 'new public' criterion. It will be important to see if the Court, like the AG, addresses the criticism that the 'new public' criterion has resulted in an exhaustion of the right of communication to the public. The interpretation provided by AG Campos appears sensible, and suggests that - similarly to the case of other IP rights (eg trade marks and the steps to be taken against 'genericide') also copyright protection comes with certain 'responsibilities' on the side of rightholders. 

Let’s see if the Court agrees …

[Originally published on The 1709 Blog on 25 April 2018]

Monday, 23 April 2018

BREAKING: 9th Circuit rules that Naruto has no standing under US Copyright Act

Naruto 😍
If you thought that the infamous Monkey Selfie case was over, well, you were ... wrong!

A few weeks ago IP enthusiasts were in fact 'thrilled' to learn that - despite the out-of-court settlement agreement concluded in 2017 - the US Court of Appeals for the 9th Circuit would rule anyway on the case brought by PETA (as next friend) against now economically struggling wildlife photographer David Slater over copyright ownership of a series of selfies taken by Celebs crested macaque Naruto.

Today, the Court has ruled that 'an animal ha[s] constitutional standing [Article III standingbut lack[s] statutory standing to claim copyright infringement of photographs known as the "Monkey Selfies."' 

More specifically, the panel confirmed that the "[US] Copyright Act does not expressly authorize animals to file copyright infringement suits."


But what happened before today's ruling? Here's a quick recap.

In 2014 the Wikimedia Foundation rejected Slater’s takedown request to remove from a Wikipedia page one of the photographs taken by Naruto. The Foundation did so on grounds that no copyright could subsist in a work created by an animal. It also concluded that the argument by Slater that he had befriended a group of macaques and set up the photographic equipment, so that they would use it and possibly take pictures (with him editing the resulting photographs) held no value.

In a separate lawsuit against Slater, PETA – admittedly on behalf of Naruto (as 'next friend') – sought a decision that would acknowledge that works created by an animal hold a valid copyright, of which the animal, as author, is the owner. More specifically, PETA alleged that the defendants had infringed Naruto’s copyright pursuant to sections 106 and 501 of the US Copyright Act, by displaying, advertising, reproducing, offering for sale, and selling copies of the Monkey Selfies.

In 2016 the US District Court for the Northern District of California dismissed the action, on grounds that “the [US] Copyright Act does not confer standing upon animals like Naruto”.The court recalled that the notions of ‘works of authorship’ and ‘author’ are not defined in the statute. This was a deliberate choice on the side of the legislature, intended “to provide for some flexibility.” 

However, the court referred to a case decided in the area of environmental law: CetaceanThere, the Cetacean Community, created by the “self-appointed attorney for all of the world’s whales, porpoises, and dolphins,” had brought an action on behalf of the Cetaceans for violations of the Endangered Species Act, the Marine Mammal Protection Act, and the National Environmental Policy Act. The 9th Circuit examined the language of each statute and excluded that US Congress had wished to confer standing on animals. The court concluded that: “if Congress and the President intended to take the extraordinary step of authorizing animals as well as people and legal entities to sue, they could, and should, have said so plainly.” 

According to District Court hearing the Monkey Selfie case, a similar conclusion could be reached in relation to the US Copyright Act. Decisions of the US Supreme Court and 9th Circuit have referred to ‘persons’ or ‘human beings’ when addressing issues of authorship. In addition, in its Compendium of Copyright Practices, the US Copyright Office clearly states that:

“To qualify as a work of “authorship” a work must be created by a human being. See Burrow-Giles Lithographic Co., 111 U.S. at 58. Works that do not satisfy this requirement are not copyrightable. The Office will not register works produced by nature, animals, or plants.”

Kat Selfie
The Compendium specifically refers to “[a] photograph taken by a monkey” as an instance of work that cannot be protected. Courts take into consideration the US Copyright Office’s interpretation in appropriate circumstances, and in this case the District Court also referred to the Compendium to conclude that Naruto could not be the author of a protectable work.

Further to an appeal filed by PETA before the 9th Circuit, the case was (initially) settled out of court. 

Today's ruling

In today's ruling Circuit Judge Bea questioned, first of all, PETA's assertion of its 'next friend' status to represent claims made for Naruto, also because an animal cannot be represented by a 'next friend'. Concluding otherwise would conflict with Cetacean, in which the 9th Circuit held that a group of cetaceans could demonstrate Article III standing. Hence, Naruto's Article III standing would not depend on PETA's sufficiency as a guardian or as a 'next friend'.

This said, Circuit Judge Bea turned to consideration of Naruto's standing under the Copyright Act, and concluded that "[s]everal provisions of the Copyright Act ... persuade us against the conclusion that animals have statutory standing to sue under the Copyright Act." Among other things, the judge referred to the fact that the Act:
  • Allows the children (whether legitimate or not) of the author to inherit certain rights;
  • The author's widow/widower owns the whole of the author's entire termination interests, unless there are surviving children/grandchildren (in which case he/she would own half).
"The terms 'children', 'grandchildren', 'legitimate', 'widow', and 'widower' all imply humanity and necessarily exclude animals that do not marry and do not have heirs entitled to property by law.", wrote the Court.


The conclusion is not particularly surprising. While the Monkey Selfie case might seem like an 'unusual' one, it raises important issues that will likely become more sensitive in the foreseeable future. 

The question of non-human authorship and ownership of copyright in works created by non-humans 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, eg under the umbrella of artificial intelligence, would (and should) result in the broadening of the understanding of what (rather than who) an author is. 

If you are wondering what artificial intelligence is already doing in the creative field, you can listen to this or take a look at this.

[Originally published on The IPKat on 23 April 2018]

Sunday, 22 April 2018

Fearless Girl to be moved due to ... viability concerns

Charging Bull and Fearless Girl
A little over a year ago The IPKat reported that Italian-born sculptor Arturo Di Modica, ie the author of the well-known Charging Bull in Manhattan's Financial District, intended to file a formal complaint with the Office of the New York City Mayor over the decision of the latter to allow the positioning (and stay for a few months) of Kristen Visbal's Fearless Girl right just opposite the famous bull.

Initially an advertisement for an index fund which comprises gender diverse companies that have a higher percentage of women among their senior leadership, Fearless Girl has become a popular sight in Manhattan. 

The reason why Di Modica was unhappy about the positioning of Fearless Girl is explained in his complaint to the Mayor. 

His sculpture was meant to symbolize, initially, the 'strength and power of the American people and, then (after it was moved to its current location), the 'hope of the American people for the future'.

The meaning has arguably changed since the arrival of Fearless GirlAccording to Di Modicacontrasted with the soft, altruistic characteristics of the bronze girl, Charging Bull now appears menacing and aggressive.

Fearless Girl as a derivative work

Di Modica's lawyers have argued that Fearless Girl is a derivative work: 'The statue of the young girl become the "Fearless Girl" only because of the Charging Bull: the work is incomplete without Mr. Di Modica's Charging Bull'. 

According to the complaint, also the features of Visbel's work have been deliberately chosen to create an association/contrast with the Charging  Bull, including its material (bronze) and patina.

The result is that 'the Charging Bull has been appropriated and forced to become a necessary element of a new, derivative work: "Fearless Girl: Girl Confronts Charging Bull". This is direct violation of Mr. Di Modica's copyright.'

§106 of the US Copyright Act provides in fact that the copyright holder has the exclusive right "to prepare derivative works based upon the copyrighted work". 

It should be however noted that such exclusive right is: (1) subject to fair use within §107 and (2) the author of a derivative work owns the copyright to the material that he/she has contributed and this is independent of any copyright protection in the preexisting material, as per §103.

Fearless Girl and a Kat
Fearless Girl as a moral rights infringement 

Besides issues of trade mark dilution, Di Modica's lawyers also argued that the altered meaning of Charging Bull would violate the work's integrity and cause prejudice to the author's honour and reputation, thus amounting to an infringement of §106A.

At the time of reporting on the complaint, I suggested that, although Di Modica's sculpture might potentially qualify for protection under §106A, the right of integrity envisaged therein is only actionable in relation to a "distortion, mutilation, or other modification of the work which would be prejudicial" to the honour or reputation of the author. 

Arguably Fearless Girl and its positioning have not resulted in any direct intervention on Charging Bull.

In addition, §106A(c) sets significant exclusions to moral rights protection. Of particular interest here is that "[t]he modification of a work of visual art which is the result of conservation, or of the public presentation [can the addition of Fearless Girl be considered part of the Charging Bull's public presentation?], including lighting and placement, of the work is not a destruction, distortion, mutilation, or other modification ... unless the modification is caused by gross negligence." (emphasis added)

Finally, it is worth noting that also §106A protection does not exclude availability of fair use within §107 of the Act.

The latest development

Despite all this, on 19 April last Mayor Bill de Blasio announced that Fearless Girl will move to a new location in front of the New York Stock Exchange by the end of this year.

But what reasons have been given for this decision if the threat of litigation on copyright grounds from Di Modica is not mentioned in the press release?

Well, believe it or not the reason is ... health and safety and viability!

"The new, long-term home will also alleviate safety issues arising from the large numbers of pedestrians and visitors drawn to the statue, which has been located on a narrow median on Broadway", says the press release.

While the reasons given by the Mayor for his decision are indeed noble ones, it is a pity that Fearless Girl is being moved. 

Two, brief, additional points can be made.

The first one is that Fearless Girl communicates a certain message irrespective of its location. In this sense, the claim that it is a derivative work that draws its meaning from the positioning in front of the Charging Bull may be debatable. Similarly questionable are, as explained above, the moral rights concerns.

The second point relates somewhat to the reasons given for its relocation and concerns indeed urban planning. Would it be a good idea for an author to be in a position to have a say over items or even buildings placed in the proximity of his/her publicly displayed work or ... would that be just too much (possibly with the exception of special circumstances)?

[Originally published on The IPKat on 22 April 2018]

Saturday, 21 April 2018

Moral rights and architectural works in a recent Italian decision

Casa Bosco
To what extent can an architectural project be modified without the express consent of the architect without such modifications being an infringement of their moral right of integrity?

This is the question that not long time ago the District Court of Milan (Tribunale di Milano) addressed in Boeri v Agnoletto, decision No 1568/2018.


In late 2000s well-known architect Stefano Boeri was commissioned to realize an architectural project - then become 'Casa Bosco' - for ‘residential standardized units – Low Cost housing units’ in Milan by virtue of a contract that foresaw that the architect and the commissioning party would have the co-ownership of any resulting rights, and also that any separate use of the project – including for marketing purposes – by either party should be authorized in writing by the other party.

Following the finalization of the project and the decision of Boeri to leave it due to his political commitment with the Municipality of Milan, a new contract was concluded to prepare the final version of the project and obtain the necessary administrative/building permits. 

Also this contract envisaged that Boeri would co-own any rights to the project as finalized, save for the right to modify the project if any such modifications would be necessary to obtain the necessary authorization.

In 2014 Boeri brought proceedings for infringement of – among other things – Article 20(1) of the Italian Copyright Act. This provision states that, irrespective of economic rights and even after their transfer, the author of a work has the right to object to any deformation, mutilation or any other modifications, as well as any other act to the detriment of the work, that may be prejudicial to their honour or reputation. The architect claimed in fact that both modifications made to his social housing project ‘Casa Bosco’ and the transformation of the project into a for-profit enterprise indeed infringed his moral right of integrity.

The decision

The Court began its analysis by noting that Article 20(2) of the Act also states that [the translation from Italian is mine] “in works of architecture the author cannot object to any modifications that were necessary in the course of their realization. Similarly, they shall not object to any further modifications that were necessary to be made on a work that has been already realized.”

The judges noted that in Italian case law there have been two main interpretations of this provision. On the one hand, there is a restrictive view according to which the only possible modifications are those which in any case do not infringe the author’s moral right of integrity (hence, the provision would only apply with regard to economic rights). On the other hand, the prevalent view is that the derogation within Article 20(2) also applies to the right of integrity [this view appears preferable, also if one considers the fact that it is included within the provision devoted to moral rights]: the authorization of the author is not needed for any modifications that are detrimental to their honour or reputation should such modifications be indispensable to the realization of the work.

The modifications lamented by the architect concerned: (1) the removal of contractual clauses relating to the future sale of the units; (2) the modification of the ratio between free construction- and social construction-reserved areas. 

The Court held that the former would be outside the scope of the author’s rights as it would relate not to the project as such but the economic exploitation of the resulting units, and the latter related to something that the author had consented to by entering the relevant contracts.

The judges thus dismissed Boeri’s action.

[Originally published on The 1709 Blog on 20 April 2018]

Friday, 6 April 2018

The EU copyright reform and the legacy of CJEU case law: lip service?

I am attending what every year is a great conference in one of the greatest cities: the Fordham IP Conference in New York City. Now in its 26th edition, every year this event gathers IP enthusiasts from all over the world to “Learn. Debate. Have Fun.” [official hashtag: #fordhamip]

Yesterday I was part of a panel moderated by Ted Shapiro (Wiggin) and composed of Shira Perlmutter (USPTO), Giuseppe Mazziotti (TCD), and Jerker Rydén (National Library of Sweden). The session was devoted to discussing the state of the EU copyright reform debate.

My short talk [slides here] focused on three main points: 

(1) the progress of the EU reform debate and where we stand now at both the Council and European Parliament levels; 

(2) whether what are being called ‘compromise’ proposals may be actually said to be compromises, given that that the discussion remains extremely polarized and such as not to focus really – or just – on the details of the various draft provisions but also the very merits of certain initiatives; and 

(3) whether we are really going towards a Digital Single Market (DSM) and – if so – what kind of  DSM we are paving the way to. In this respect, the points to consider are identifying:

(a) the beneficiaries of the EU proposals, and 
(b) the goals that the EU is trying to achieve with its copyright reform (if we take the case of the press publishers’ right, over the past few months so many different justifications have been advanced for its necessity – ranging from recouping revenue lost to the web, to preserving press freedom and cultural diversity in Europe, to – now with the latest from MEP Voss [see Recital 31] – contrasting fake news).

It's CJEU orders
There is however an aspect of the discussion – that was explored yesterday during the session – that has remained a bit in the background over the past few months. 

What I am referring to is the idea that EU legislature has been attempting to realize a ‘codification’ of the case law of the Court of Justice of the European Union (CJEU), particularly with regard to the proposals for a press publishers’ right (for instance, in its latest compromise proposal the Bulgarian Council presidency refers to Infopaq and its progeny [Recital 34a], while in his proposal MEP Voss recalls GS Media [Recital 33 - Katposts here]) and the value gap proposal (here the reference is to the CJEU case law on the right of communication to the public, including the most recent decision in The Pirate Bay case [Katposts here]).

What has been a bit less at the centre of attention is those instances in which EU policy- and law-makers are not justifying their own choices by saying ‘it’s what the CJEU said’, but are rather departing from – and in doing so attempting to erase - CJEU case law.

I have two examples in mind, both of which likely contrast with the interests of those ‘authors and creators’ that the EU has been saying to want to protect further with its own initiatives, notably through Articles 15, 16 and 16a [see Bulgarian version].

First – and this is no surprise, since the Commission included it in its original 2016 proposal - is Article 12 of the directive, which substantially says that the CJEU decision in Reprobel [Katposts hereregarding the beneficiaries of the fair compensation for private copying was a bad move. The provision, that has not been really discussed with the same intensity as other proposals, basically says – unlike what the CJEU had decided by relying on the author principle as enshrined in the InfoSoc Directive – that it is OK that subjects other than reproduction rightholders are entitled ab initio to receive part of the fair compensation for private copying.

Rescuing the authors?
The second example, which may be found also in the latest Bulgarian compromise proposal, relates to what looks like a ‘weaponized’ extended collective licensing which substantially makes it clear that the CJEU decision in Soulier and Doke [Katposts hereshould not be considered too relevant. 

In that case the Court held that a law like the French law on out-of-commerce books might be contrary to EU law in that EU law (InfoSoc Directive) requires that any reproduction or communication to the public of a work by a third party requires the prior consent of its author. Recital 23 of the proposal (Bulgarian version) states that “Member States should, within the framework provided for in this Directive, have flexibility in choosing the specific type of mechanism, such as extended collective licensing or presumption of representation, allowing for licences for out-of-commerce works to extend to the rights of rightholders that have not mandated a representative collective management organisation, in accordance with their legal traditions, practices or circumstances.”

All this to say what? That sometimes references to CJEU case law are used to justify choices in certain areas (making them look like non-choices), while in other cases policy- and law-makers do not appear too reluctant to re-assess – and 'correct' – the legacy of certain decisions.

[Originally published on The IPKat on 6 April 2018]