Saturday, 26 May 2018

Coreper agrees common position on text of draft DSM Directive

Compromising on
copyright issues ...
a stable equilibrium?
After months of discussion, yesterday the Council’s permanent representatives committee (Coreper) common position on the text of the draft Directive on Copyright in the Digital Single Market (DSM Directive).
agreed a 

The text thus approved will serve as a mandate for the presidency of the Council [currently Bulgaria, but Austria as of 1 July] to start negotiations with the European Parliament, once this has also agreed its own position.

As readers may know, following the proposal for a DSM Directive by the EU Commission [on which see Katposts here] the Council and the European Parliament are now the EU institutions tasked with adopting the draft directive and making it EU law [if you wish to learn more about how the EU law-making process works, click here].

So, what are the key points of the text agreed within Coreper, particularly with regard to the provisions that have attracted the most attention?

Here’s a summary of the most notable elements, with some notations:

Text and data mining (Art 3)
  • The beneficiaries would only be research organisations (the term is loose but appears to encompass those entities the primary goal of which is to conduct scientific research or to do so together with the provision of educational services: see Recital 11 and Art 2(1)) and cultural heritage institutions (as defined in Recital 11a and Art 2(3)) [Coreper has not opted for an exception without a restricted catalogue of beneficiaries; from this standpoint the EU position would be different from the one envisaged in some Member States, which have legislated using Art 5(3)(a) of the InfoSoc Directive as a basis];
  • The purposes of text and data mining activities should be ‘scientific research’ (Art 3(1));
  • The availability of the exception would be subject to the beneficiaries having lawful access to the content in respect of which the mining activities are to be carried out;
  • Considering the ‘minimal harm’ caused by the exception to rightholders, Member States should not provide for fair compensation mechanisms;
  • Member States would be free to implement also a ‘neighbouring’ exception (which, unlike the one for text and data mining, would be optional) for temporary reproductions and extractions of works and other subject-matter, insofar as these form a part of the text and data mining process and the copies made are not kept beyond that process (Art 3a);
  • It appears possible for Member States to adopt their own non-commercial text and data mining exceptions for different types of beneficiaries, in line with what is stated in Recital 5 and Art 17 [already discussed here].

Press publishers’ right (Art 11)
  • The right should be only available to publishers established in the EU [should this aspect be part of the final text of the directive, depending on the timeframe for national implementations, this might be a Brexit-relevant issue for the UK];
  • Also The IPKat could be eligible for the right, in that its content seems to fit within the definition of ‘press publication’ as provided for in Recital 33;
  • The draft Directive clarifies that the use of insubstantial parts of press publications should not fall within the scope of the right. It is left to Member States to determine the ‘insubstantial’ nature of parts of press publications: to this end they may take into account whether these parts are the expression of the intellectual creation of their authors [hence, sufficiently original as per Infopaq - Coreper's press release suggests that Member States have their own standards of originality, which is questionable after a long string of decisions of EU's highest court] or whether these parts are limited to individual words or very short excerpts, without independent economic significance, or both criteria [Recital 34a and Art 11(1) – this new rule does not appear particularly clear in that the text seems to conflate concepts that belong to copyright with concepts that are found in respect of, eg, the protection of the investment in the sui generis database right … In any case, leaving this choice to Member States might lead to a rather unharmonised framework ...];
  • The duration of this new right would be 1 year [instead of 20 years, as originally proposed by the Commission] from the publication of the press publication (Art 11(4));
  • The new right would not have retroactive effect (Art 11(5)).

Value gap proposal (Art 13)
  • Unlike the initial Commission’s text, the Coreper version explicitly refers to the E-commerce Directive (Recital 4), clarifying that the DSM Directive is based upon and complements the rules contained also therein;
  • The notion of ‘online content sharing service provider’ is one that encompasses providers whose “main or one of the main purposes … is to provide access to a large amount of copyright-protected content uploaded by their users with the purpose of obtaining profit therefrom, either directly or indirectly, by organising it and promoting it in order to attract more audiences” [this is potentially a very broad definition, and the text of the Directive does not really clarify what is to be meant as ‘profit']. One can however read that (Recital 37a):
  • Organising and promoting content involves for example indexing the content, presenting it in a certain manner and categorising it, as well as using targeted promotion on it;
  • The notion of ‘online content sharing service provider’ (see Art 2(5)) does not include services whose main purpose is not to provide access to copyright-protected content with the purpose of obtaining profit from this activity, eg internet access providers, cloud providers or online marketplaces. It would thus seem that The IPKat be out of the scope of the provision, in that – similarly to online non-for-profit encyclopaedias – it does “not store and give access to content for profit making purposes” [phewww, says Merpel];
  • Whether an online content sharing service provider stores and gives access to a large amount of copyright-protected content needs to be made on a case-by-case basis;
  • The directive is said to clarify without changing the concept of ‘communication to the public’ and ‘making available to the public’. In accordance with Art 13(1) “an online content sharing service provider performs an act of communication to the public or an act of making available to the public when it gives the public access to copyright protected works or other protected subject matter uploaded by its users.” [I wonder whether it would be more appropriate, instead of attempting a definition of what qualifies and who makes an act of communication to the public, to say that “an online content sharing service provider performs an act of communication to the public or an act of making available to the public in accordance with the case law of the Court of Justice of the European Union”].
  • If an online content sharing service provider is deemed to engage in acts of communication to the public/making available to the public, then it should not enjoy the safe harbour protection within Art 14 of the E-commerce Directive in relation to copyright-relevant acts (Recital 38b and Art 13(3)) [this seems correct to me, as I discuss more at length here]. However, this subject might escape liability in a number of situations as per Art 13(4). Online content sharing service providers are in fact subject to a ‘diligent operator’ obligation (Recital 38c) [this appears in line with the L’Oréal and Ziggo judgments of the Court of Justice of the European Union]. This means that: “they should not be liable if some unauthorised content is available on their services despite their best efforts to prevent its availability by applying effective and proportionate measures based on the information provided by rightholders.” In addition, the directive refers to a duty to act expeditiously to remove or disable access to content upon being notified by rightholders, and also a subsequent obligation to “make their best efforts to prevent their future availability” (how this is to be done depends on the type of content: see Recital 38e);
  • licence granted to online content sharing service providers should also cover the copyright-relevant acts in respect of uploads by the users but only in cases where the users act in their private capacity and for non-commercial purposes (Recital 38d);
  • Applicable exceptions and limitations shall remain unaffected [also note that Recital 45 mandates an interpretation and application of the Directive in accordance with the rights and principles found in the EU Charter of Fundamental Rights].

The next step will be now to see the position of the European Parliament (the JURI Committee Rapporteur has yet to issue his report) ... Stay tuned!

[Originally published on The IPKat on 26 May 2018]

Monday, 21 May 2018

Intermediaries and IP: 5 key principles of EU law

Marcus felt slightly challenged
after reading all those CJEU IP decisions ...
It is a truth universally acknowledged, that online IP enforcement must be (increasingly) in want of an effective involvement of intermediaries in the enforcement process. 

The topic thus turns to intermediary injunctions, ie something that at the EU level is substantially enshrined in two pieces of legislation, these being: the InfoSoc Directive (Art 8(3)), as far as injunctions in copyright cases are concerned; and the Enforcement Directive (Art 11, third sentence), with regard to the other IP rights. 

The relevant provisions have similar content. 

Art 8(3) states that "Member States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right."

The third sentence of Art 11 provides that "Member States shall also ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of Directive 2001/29/EC [that is the InfoSoc Directive]."

Intermediary injunctions are available irrespective of whether the intermediary targeted by it has any liability for the infringement committed by users of its services and is therefore distinct from both issues of safe harbours protection as per the E-commerce Directive and issues of primary (direct) liability or the intermediary itself.

Having said this, it seems fair to say that the actual EU framework for intermediary injunctions and, more generally, intermediary liability has been shaped through the wealth of cases that have reached the Court of Justice of the European Union (CJEU) over the past few years by means of references for a preliminary ruling.

But what core principles can be extracted from the resulting CJEU decisions?

In my view, of course by means of a simplification that I prepared with IP students in mind [for more of my IP materials see here; and here's my Facebook IP group for more 'informal' IP-related discussions], there are 5 key principles that emerge from CJEU case law. They are the following:

And here's a short explanation [for a more detailed account, see here and here]:

Principle #1 - In its case law - including the recent judgments in Tommy Hilfiger [here] and Mc Fadden [Katposts here- the CJEU has clarified that the notion of 'intermediary' is both loose and broad: for an economic operator to be considered as ‘intermediary’ it is sufficient that they provide – even among other things – a service capable of being used by one or more other persons in order to infringe one or more IP rights.

Principle #2 - This is a principle that the CJEU provided in its landmark decision in L'Orèal when it held that the injunctions referred to in the third sentence of Article 11 differ from those referred to in the first sentence of that provision: while the latter are addressed to infringers and intend to prohibit the continuation of an infringement, the former are addressed to the “more complex” situation of intermediaries whose services are used by third parties to infringe one's own IP rights. Also taking into account the overall objective of the Enforcement Directive, ie to ensure an effective protection of IP rights, alongside the provision in Article 18 of the E-commerce Directive and Recital 24 in the preamble to the Enforcement Directive, the court concluded – contrary to the more limited view expressed by Advocate General (AG) Jääskinen in his Opinion – that the jurisdiction conferred by the third sentence in Article 11 of the Enforcement Directive allows national courts to order an intermediary to take measures that contribute not only to terminate infringements committed through its services, but also prevent further infringements.

Principle #3 - In respect of this principle it should be noted that, while EU law leaves the conditions and modalities of injunctions to EU Member States, the CJEU has referred to the need of complying with different types of sources that include, inter alia: the Charter of Fundamental Rights of the European Union (notably copyright protection, freedom of expression/information, freedom to conduct a business, protection of personal data), the Enforcement Directive (in particular Arts 2(3) and 3 therein), the E-commerce Directive (including Art 15 therein).

Principle #4 - In UPC Telekabel [Katposts here] the CJEU held that this particular type of injunction is indeed available under EU law. Importantly, and contrary to the view expressed by AG Cruz Villalón, a blocking injunction does not have to be specific: its addressee should determine the specific measures to be taken in order to achieve the result sought.

Principle #5 - The final principle, which the CJEU has adopted in the context of a reference also concerning the availability of intermediary injunctions (The Pirate Bay case [Katposts here]), serves to note that - when we speak of intermediaries - we should not (or perhaps, no longer) think about them solely as addressees of injunctions or as subjects that might lose (if the relevant conditions are satisfied) their safe harbour protection, but also as subjects that - in certain contexts - might be directly liable for the infringement of third-party IP rights. The decision in The Pirate Bay has potentially begun a new chapter in the topic of intermediary liability (and also injunctions), the relevant implications of which are currently being worked out. While it is true that the CJEU case concerned a rather 'rogue' platform (The Pirate Bay), are the considerations made in that decision more broadly applicable? In this sense, a case pending before the German Federal Court of Justice and concerning the primary liability of YouTube [reported by The IPKat here] might assist in understanding more fully the implications of CJEU case law.

[Originally published on The IPKat on 21 May 2018]

Monday, 14 May 2018

Can YouTube be primarily liable for users' infringements?

Who's responsible for making
this video available:
(a) the user-uploader
(b) YouTube
(c) both of them
(d) Merpel
(e) no one
Can YouTube be considered primarily responsible (and, therefore, potentially liable) for the making available of user-uploaded content through its platform? In other words: can YouTube be considered as directly making acts of communication to the public?

This is the crucial question Germany’s Federal Court of Justice (BGH) will need to address in a case (I ZR 140/15) that was heard last week. The decision is due on 13 September.

The case

As summarized by the BGH press office, the claimant in this case is a music producer who has sued Google/YouTube over the unauthorized making available, on the defendants’ platform, of videos containing musical works from the repertoire of soprano Sarah Brightman. The claimant had signed an exclusive contract with this singer in 2006, allowing him to exploit recordings of her performances.

In 2008 unauthorized videos featuring Brightman’s performances were made available on YouTube. Apparently, following a takedown request, a number of videos was removed from YouTube, but infringing material was made available once again shortly afterwards.

In 2010 the first instance court sided with the claimant in respect of three songs, and dismissed the action for the remaining claims. 

Both the producer and Google/YouTube appealed the decision and in 2015 the appellate court only partly sided with the producer. Most importantly, it rejected the idea that YouTube could be regarded as primarily liable for the making available of infringing content, although it found that liability would subsist under the typically German Störerhaftung’ doctrine (a form of accessory liability) under §97(1) of the German Copyright Act.

The case is now pending before the BGH and the decision is keenly awaited. As far as I know (but please correct me if I am mistaken), a platform like YouTube has never been found primarily liable for the infringement of copyright or a related right by a German court. However, the decision of the BGH – no matter in what sense - will be of great importance, also outside Germany, for two essential reasons.

First, it will be an opportunity to reflect upon and test the effect of the (rather expansive) case law of the Court of Justice of the European Union (CJEU) on the right of communication to the public within Article 3 of the InfoSoc Directive. It should be noted that the appellate court decided the case in 2015, ie before key judgments like GS Media [Katposts here]Filmspeler [Katposts here] and Ziggo (ie The Pirate Bay case) [Katposts herewere even issued.

Sarah Brightman
Secondly, it will serve to appreciate whether and to what extent the policy discourse around the so called ‘value gap’ proposal within Article 13 of the draft Directive on copyright in the Digital Single Market [Katposts herewould signal a departure from the existing legal framework.

CJEU case law on the right of communication to the public

So far the CJEU has decided nearly 20 cases on the right of communication to the public [see here for my map offering a ‘simplified’ version of the construction of this exclusive right], the latest instalment being last year’s decision in Ziggo (The Pirate Bay case). There the CJEU held that the operators of a platform that makes available to the public third-party uploaded copyright content and provides functions such as indexing, categorization, deletion and filtering of content may be liable for copyright infringement, jointly with users of the platform. For a finding of liability it is not required that the operators possess actual knowledge of the infringing character of the content uploaded by users.

The judgment, which I discuss more at length here, is rather short and leaves certain points ambiguous. Crucially, it is not entirely clear to what extent conclusions which are valid (and sensible) for a ‘rogue’ platform like The Pirate Bay can be extended to other platforms.

What seems however self-evident is that CJEU case law on Article 3 of the InfoSoc Directive has adopted a broad approach to the definition of what constitutes an ‘act of communication to the public’, stressing – among other things –the centrality of the notion of ‘indispensable intervention’ of the user/defendant. We now know, at least since GS MediaFilmspeler and Ziggo, that ‘indispensable intervention’ should be intended as an intervention aimed at facilitating access to content that would be otherwise more difficult to locate. 

Germany’s Federal Court of Justice
The policy discourse

In parallel with developments at the CJEU level, the policy discourse has unfolded in such a way that Article 13 of the proposed DSM Directive is rooted within the idea that operators of platforms – no matter how you wish to call them – that give access to user-uploaded copyright content make in fact acts of communication to the public, together with users of their services.

In the latest versions of the DSM Directive – both at the Council [this should be the latest compromise proposal of the Bulgarian presidency] and EU Parliament levels [here for MEP Voss's compromise proposal] – it is clarified that this idea would not be a departure from what the law already says, in that it is based on case law on Article 3 of the InfoSoc Directive. Hence, it would be just a consolidation and clarification of what the law already is.


As things currently stand, it seems that the BGH will decide this case without making a reference for a preliminary ruling to the CJEU. 

In any event, the resulting decision will add an additional piece to the (complex) construction of the right of communication/making available to the public. 

What has become central is no longer (or rather, not just) what constitutes an act of communication to the public, but rather who is responsible/liable for such act. 

The BGH decision might help refine further the terms of such fundamental debate.

[Originally published on The IPKat on 14 May 2018]

Wednesday, 9 May 2018

Originality in copyright: a meaningless requirement?

Is there even such thing
called 'originality'?
Is the originality requirement in copyright a non-requirement? In other words: is there any meaningful threshold to copyright protection?

I’ve had the opportunity to discuss this issue three times over less than a month: first, at a workshop in Berlin, then with a Belgian student and, finally, with an IP lawyer based outside Europe. If these three situations had anything in common, it was the suggestion that the originality requirement is not really a requirement – whether under EU or US law – and that copyright protection is very easy to obtain.

While it is true that originality is not a particularly difficult condition to satisfy, it is still a requirement and: (1) it is not a mundane one, both in the EU and the US; and (2) there are a few instances in which the threshold would unlikely be passed.

The EU originality requirement

If we start from the EU, since the landmark decision of the Court of Justice of the European Union (CJEU) in Infopaq – as a matter of fact – there has been a harmonized EU standard of originality that would be generally applicable, that of ‘author’s own intellectual creation’. 

While formally, EU legislature has only harmonized the standard for computer programs, databases and photographs, in Infopaq the Court held that the understanding of originality found under, respectively the SoftwareDatabase and Term Directives is also the standard under the InfoSoc Directive.

What is originality?
The CJEU further elaborated upon the notion of ‘author’s own intellectual creation’ in its subsequent decisions, notably (though not only) those in BSAFAPL, and Painer. 

We now know that the EU standard requires the making of ‘free and creative choices’ and that the work carries the ‘personal touch’ of its author. In his Opinion in Football Dataco, Advocate General (AG) Mengozzi also clarified (in case there were any doubts), that the EU standard requires a ‘creative’ aspect, and it is not sufficient that the creation of a work (a database in that specific case) has required labour and skill.

Is this standard easy to satisfy? Not necessarily.

There is national case law (in particular in France) in which the claimant has had demonstrate – but not always succeeded [for an incredible case, see here– that the work in respect of which they claimed copyright to have been infringed would be protected, ie sufficiently original.

A recent example, at the CJEU level, is the Opinion of AG Campos in Renchoff [here and here]. Although under German law the photo below would be protected [however it should be noted that the Term Directive leaves Member States free to protect ‘simple’ photographs, but that is arguably not by means of copyright, but other types of rights instead], it may be questioned whether the same would be true applying the EU originality standard. The AG, in fact, did not find it straightforward to say that a photograph like the one at issue there would be protected by copyright.

Another example – which I always make when discussing originality with students (in Germany this issue has also been litigated) – concerns digitized images of public domain artworks. This has become common practice in several cultural heritage institutions. What is questionable is suggesting that such institutions own a valid copyright in the digitized images. It is difficult to see in what sense the author of the digitized image below made free and creative choices, and impressed their personal touch in digitizing this (public domain) portrait of the Brontë sisters as realized by their brother Branwell …

The US understanding of originality

If we move to the other side of the Atlantic, the landmark decision on the concept of originality arguably remains the Supreme Court judgment in Feist, in which the ‘sweat of the brow’ approach was rejected. The Court held that "[a]s a constitutional matter, copyright protects only those constituent elements of a work that possess more than a de minimis quantum of creativity."

According to some, this decision has not raised the bar to protection too high, in the sense that whenever the creative effort is above minimal, copyright protection would remain available.

However, there are cases in the US that prove that the originality requirement is an actual threshold to protection, eg in a decision concerning simple designs consisting of two linked letter "C" shapes and in a case (Satava) relating to this glass sculpture of a jellyfish:

As the US Copyright Office has put it in a recent decision that has denied registration to the “American Airlines Flight Symbol”, "While the bar for creativity is low, it does exist". 

Again in Satava, the 9th Circuit held that:

“It is true, of course, that a combination of unprotectable elements may qualify for copyright protection. But it is not true that any combination of unprotectable elements automatically qualifies for copyright protection. Our case law suggests, and we hold today, that a combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.”


While it might appear that, compared to other IP rights, copyright protection is ‘easy’ to obtain, a thorough assessment of the originality requirement might help dispel this idea (or 'myth'?). If we wish originality to be regarded as an actual ‘requirement’ and not just something we pay lip service to, then its assessment should be conducted rigorously.

This morning I read that an Indiana-based former lawyer and photographer has brought approximately 200 copyright infringement actions over this photo of the Indianapolis skyline:

While it might be the case that this photograph possesses that creative sparkle required under copyright law (but try Google-ing ‘Indianapolis skyline’), it would be also interesting to know whether the actual originality of this work has ever been thoroughly assessed. The result might be interesting …

[Originally published on The IPKat on 9 May 2018]