"Que Sera Sera, We sue in the Pee-Cee-Cee"

Hodgson and another v Isaac and another [2011] EWPCC 037 is a fascinating little case which emerged from the Patents County Court, England and Wales, last Monday, courtesy of Judge Colin Birss QC. Hodgson, who was wheelchair-bound as a result of meningitis, wrote and published a autobiography, Flipper's Side, in 2000, with the help of Jarvie. The book, which told of his life as a supporter of Darlington Football Club (the Quakers) and his experiences, included a football chant used by supporters of the club. Sung to the popular 1950s tune of Que Sera Sera, it ran like this:

"When I was just a little boy,
I asked my mamma, 'what should I be?
Should I be Darlo? [an affectionate abbreviation for 'Darlington FC]Should I be Poolie?' [a presumably less than affectionate term for local rivals Hartlepool]Here's what she said to me:
'Wash you mouth out son,
Go get your father's gun,
And shoot the Poolie scum,
shoot the Poolie scum.'" [a surprisingly violent sentiment from supporters of the Quakers ...]

In 2001 Hodgson and Jarvie worked with a film company, Shakabuku, to write a script based on the book but, by 2006, the relationship between them and Shakabuku had broken down.

Isaac, a script writer, owned a company called Notting Hill Movies. In 2006 he became involved with Hodgson, this being part of a project to make a film based on Hodgson's life story, to which end he wrote a script which told of a man who, having been disabled by meningitis, became a supporter of the club. This script, as luck would have it, featured the football chant mentioned above.  Hodgson, Jarvie and Isaac formed a company to promote the script.  Thereafter things began to deteriorate.  After Hodgson sought alterations to the script a dispute broke out, following which Hodgson withdrew Isaac's permission to use an adaptation of the book. Isaac retorted that he didn't need Hodgson's permission anyway, since his script was not an adaptation of the book.  Hodgson and Jarvie then sued Isaac for copyright.

Judge Birss QC had to consider whether the script was indeed an adaptation of the book since the claimants agreed that, if it was only based on conversations with them and not on the book, it wouldn't be an infringement.  Isaac said he'd  written the script after conversations with Hodgson and that he hadn't even read the book.

Judge Birss QC allowed the copyright infringement claim.  In his view, he had to consider whether the elements taken from the book were the expression of the intellectual creation of their author [Infopaq]. Taking both the book and the script as a whole, it was clear that the plot, characters and striking incidents and events were very similar and, if it was possible to quantify the degree of similarity, about half of the dramatic incidents in the script had been derived from the book.  Isaac did have access to the book when writing the script and. given that he had clearly copied part of the Shakabuku script (which he had permission to do at the time), there was no reason why he would not have felt free to base his work on the book itself.

Turning now from the general to the specifics, the judge now considered the chant. Although the claimants made no claim to have composed it, in evidential terms it was something which was included in the book and which, appearing in Isaac's script. had to have come from the book itself. What's more, in addition to the use of the main characters and many of the settings and contexts of the book, Isaac's script used specific and striking incidents from the book and employed the same interpretation of those incidents as Hodgson and Jarvie had given. These details and incidents were a key element in the book and the fact that they were presented as being factual rather than fictional did not make the writing of an autobiography any less the result of an intellectual effort. A substantial part of the book had been copied and that was that.

As a Chelsea supporter, this blogger well remembers, back in the 1960s and again in the 1907s, singing "Que Sera Sera/We're going to Wem-ber-lee".  This use is noted by Wikipedia in its entry under Que Sera Sera. In the 1990s and again in the early 2000s, taking his sons to watch Barnet, he was saddened to hear the same tune put to use in "Shoot the Enfield scum".  Other football rivalries have been commemorated in similar fashion (e.g. Brighton & Hove Albion and Crystal Palace). I have not found any evidence that the composers have sought to prevent this use.

More Scrutiny for First Sale

First comes suit, then comes jury, then comes appeal after appeal after appeal.

A defendant previously found liable for copyright infringement has filed an appeal for an en banc rehearing of his last appeal.  A jury found Supap Kirtsaeng was liable for willful infringement of eight copyrighted works belonging to John Wiley and Sons.  Faced with a rather large damages bill ($600,000), Kirtsaeng did the usual thing and appealed.  The Second Circuit affirmed, in a 2-1 majority, the District Court.  Now Kirtsaeng has filed another appeal, asking for an en banc rehearing in the Second Circuit.

Infringing Acts

Kirtsaeng, a Thai student studying in the US, had friends and family ship him books legally printed in other countries but not authorized for importation into the United States.  He then sold those books on eBay, reimbursed his friends and family for their trouble and kept the remainder of the proceeds.  We’re not talking small change here where the books were used for his studies and then sold after the semester.  Kirtsaeng took in somewhere between $900,000 and a million dollars doing this.

First Sale – What does “made under” mean?

The first sale doctrine in the US Copyright Act allows people to resell copyrighted works “lawfully made under this Act.”  The Second Circuit held that “made under” means made domestically and so the reselling copyrighted items made elsewhere is not protected by the first sale doctrine.  This is the same issue that came up in Costco where the Supreme Court upheld the 9th Circuit on a 4-4 split.

The Second Circuit looked at Costco and found it rather unhelpful, being a Supreme Court 4-4 split.  The court also tried to do a statutory analysis of the “made under” clause and decided the statute was rather ambiguous.  In the end, the court’s decision that “made under” means made domestically rests on language from a 1998 Supreme Court case, Quality King Distributors, Inc. v. L’anza Research International and some jockeying with the Copyright Act trying to make sense of the first sale doctrine language (§ 109(a))  in conjunction with part of the Act prohibiting unauthorized importation (§ 602(a)(1)).  Then the court punted:

If we have misunderstood Congressional purpose in enacting the first sale doctrine, or if our decision leads to policy consequences that were not foreseen by Congress or which Congress now finds unpalatable, Congress is of course able to correct our judgment.

Kirstaeng’s New Appeal

In his appeal for en banc, Kirstaeng argues that Quality King was misinterpreted and that the Second Circuit’s decision is in conflict with decisions from other Circuits (note: as a matter of legality, this is allowed but it is often grounds for a Supreme Court review of the issue).

Kirstaeng argues that the text of the first sale doctrine is not ambiguous because the Supreme Court found that it was “unambiguous” in Quality King.  Basically, Kirstaeng attempts to show the court’s arguments are really in favor of allowing the first sale doctrine as a defense for imported goods but the court just didn’t want to admit it.

The majority’s opinion conflicts with the text, history, and purpose of the Copyright Act, as well as the Supreme Court’s reading of those sources in Quality King. The opinion’s most remarkable feature, however, is that the majority all but conceded those points. Indeed, it repeatedly expressed deep skepticism about the correctness of its own interpretation. It offered a decision at odds with itself.

We’ll keep you posted if the en banc rehearing is granted.

A Rose by Any Other Name

No matter what you call it or how you try to frame it, internet streaming is internet streaming.

Zediva tried to claim otherwise, setting up a rather elaborate system that attempted to get around the copyright law requirements for licensing movies streamed over the internet.  A lot of times this is how the law is figured out, attempts to get around it lead to law suits and court-issued clarifications.  (See the Napster/Grokster/Limewire string of cases.)  But in this case, the Zediva folks missed an important part of copyright law history, and the District Court for the Central District of California issued an injunction.

How Zediva tried to avoid licensing fees

First, I want to acknowledge that I was not able to locate a copy of the decision so my information is coming from various news sources, all listed at the end of this post.

Zediva set-up the service to mimic a video rental store.  Users rented a dvd that Zediva had purchased and the dvd was played in a remote dvd player also purchased by Zediva and shown to the customer via the internet.  One article mentions that users would sometimes get messages that movies were out of stock.  I’m guessing this occurred when customers had rented out all of the DVDs Zediva had purchased of that film. 

Rather than finding this system as a way of remotely renting purchased DVDs, the court found that this was just an annoyance and potential source of confusion for customers learning about video streaming. 

Zediva wasn’t paying licensing fees, trying to rely on the first sale doctrine saving their rental model.  But, as one law professor pointed out, Zedvia seemed to have missed the case where renting a video to be watched in a booth inside the store was infringement.  (That case was Columbia Pictures Indus. v. Redd Horne, Inc. from 1984.)  Even if Zediva could persuade the court that it was renting and not streaming movies, the facts are more similar to Redd Horne than to a regular video rental store.

However, the court did not buy the rental concept and instead found that Zediva was transmitting the performance to the public and thus infringing copyright.  Wonder if they’ll be another attempt at a work around…

Media Post News: http://www.mediapost.com/publications/?fa=Articles.showArticle&art_aid=155164

Read Write Wed: http://www.readwriteweb.com/archives/citing_copyright_law_judge_orders_movie_streaming_service_shut_down.php

CNET: http://news.cnet.com/8301-31001_3-20050579-261.html?tag=mncol;2n

A Motion for Fair Use

The courthouse for the United States District Court, Eastern District of Wisconsin* is majestic, beautiful, dignified. The 100-year old structure’s granite tower draws eyes upward, past elegantly arched windows and into the clear blue sky.  Marble and ornately carved wood add an air of grandness to the sedate black-robed men and women who spend their days in the building’s courtrooms and chambers.  Sunlight pours into the entrance-way atrium from a glass sky-light high above.  It’s a peaceful place, where footsteps echo down from long open balconies and sophisticated women in well-pressed skirts dart in and out of doors.

But this month, one Federal Judge in Wisconsin had to deal with something far less dignified than his magnificent surroundings.  As Judge Stadtmueller’s opening line explained, “Federal lawsuits seldom touch on such riveting subjects and regard so many colorful parties as the present matter.”  The present matter: a copyright dispute over a song called “What What (In the Butt).”

This is one case where no summary could be as entertaining as the actual judicial opinion, and so it will give the basic copyright issues. You can read the full Brownmark Films, LLC v. Comedy Partners decision for yourself.

Dry Background

Brownmark Films made a ridiculous music video that was a smash hit on YouTube.  South Park (Comedy Partners) featured its own 58-second version of the song, performed by a character named Butters Stotch.  Brownmark brought an action for violation of the US Copyright Act (Section 101) against Comedy Partners.  Comedy Partners filed a motion to dismiss on the grounds that Brownmark’s suit failed to state a claim on which relief could be granted.  (A 12b(6) motion for the Fed Civ Pro junkies out there.)

Defenses Raised

Comedy Partners made 2 arguments in its defense: 1) Brownmark lacked standing to bring a federal copyright suit, 2) the use on South Park was permissible under the doctrine of fair use.

Standing – registration and transfer

In order for a US copyright holder to sue for infringement in a federal court, the work involved must be registered with the US Copyright Office.  And, the person bringing the suit has to have exclusive rights to the work.  The song at issue here was registered and two of the joint authors properly transferred their rights to Brownmark such that he had exclusive rights.  In discussing this issue, the court recognized a circuit split between the 9th and 7th Circuits on whether joint copyright owners can grant an exclusive license.  The court sided with the 7th Circuit, saying joint owners can grant exclusive licenses.  This is probably a good thing since the Eastern District of Wisconsin is in the 7th Circuit.  The court goes on to comment further on a wider rejection of the 9th Circuit’s perspective, noting that it “has been widely lampooned in several respected treatises.”

Fair Use – Parody

Factor 1: purpose and character of the use – “to lampoon the recent craze in our society of watching video clips on the internet that are — to be kind — of rather low artistic sophistication and quality.^“  The work is transformed by replacing the original performers with a South Park character, and commentary is made on the value of viral videos.  [Tell that to Justin Bieber.]  In favor of Comedy Partners.

Factor 2: nature of the work – “the "nature" of the copyright in question does not help this court assess whether South Park's parody is a fair use.”  Factor ducked.  In favor of, neither side?

Factor 3:amount and substantiality of the portion of the work used – “the use of the copyrighted work in the South Park episode was relatively insubstantial.”  Only a small amount of the song’s lyrics were used.  In favor of Comedy Partners.

Factor 4:effect of the use on the work’s potential market – “there is little risk that derivative work in question would somehow usurp the market demand for the original.”  In favor of Comedy Partners.

The result: dismissal of the suit, with prejudice.

Strange Procedures?

There are some very interesting nuggets hiding in this apparently standard fair use analysis.  The court notes that normally, to bring in materials from outside of the complaint, i.e. the two video clips at issue here, the court needs a motion for summary judgment rather than a motion to dismiss.  The difference is that in summary judgment, the court is making a decision to a valid legal dispute with the facts given in the pleadings.  In a motion to dismiss, the court is deciding whether or not there is a valid legal dispute to judge. 

When necessary, a motion to dismiss can be transformed into a motion for summary judgment.  But here, the court points out an exception, “where the material in question is expressly referenced in the complaint and is central to the plaintiff's claim,” and continues to make a decision on whether or not there is a valid legal dispute here.

The Court acknowledges another problem to proceeding with a fair use analysis on a motion to dismiss.  Fair use is generally regarded as an affirmative defense to infringement.  Don’t you need a valid dispute, a valid claim, before there can be a defense to it?  Normally, yes.  But here again, the court finds an exception.  If the plaintiffs prove the defense in their own pleadings, then the court can proceed under the motion to dismiss.  And that’s what the court found here.

The court says that this practice is common place.  If that is so, why keep viewing fair use as an affirmative defense instead of as not infringement?  Seems like it would require less legal gymnastics.

Picture credit:Milwaukee Federal Building cc-by compujeremy available at http://www.flickr.com/photos/compujeramey/2041317259/. The photo was cropped for the blog.

* More information about the Milwaukee Federal Building here.  The author spent a splendid 6 weeks exploring the building as an intern.
For our European friends, don’t forget the old quip, “America, where 100 years is a long time and 100 miles is a short distance.”

Systran heads for the ultimate showdown

Back in December the 1709 Blog reported on the ruling of the General Court in Case T-19/07 Systran SA and another v European Commission, a decision of 16 December 2010 that the European Commission was liable for copyright infringement in respect of Systran's Unix translation software [this decision is still not available in English: so much for translation software ...]. Now we have details of the European Commission's appeal, which has been allocated the reference C-103/11 P.

The Commission relies on eight pleas in law in support of its appeal and claims that the judgment is vitiated by a series of errors such as to justify its being set aside. Its pleas relate to the jurisdiction of the General Court to hear the case, its compliance with procedures and its fulfilment of the three conditions which, according to settled case-law, are cumulatively necessary in order to give rise to the Community's non-contractual liability: the existence of fault, of damage and of a causal link between the fault and the damage. Want to read more? Here you are:

By its first plea, the Commission claims that the General Court erred in law by deciding that the dispute was of a non-contractual nature and, accordingly, by declaring that it had jurisdiction to hear the case. [It's the old question: where a tort such as copyright infringement is committed in the course of a contract relationship, is the dispute (i) contractual, (ii) tortious or (iii) both contractual and tortious and actionable as either, at the plaintiff's option?]

By its second plea, the applicant claims that the General Court infringed the rights of the defence enjoyed by the Commission and disregarded the rules on the taking of evidence. 

By its third plea, it maintains that the rules on copyright were incorrectly applied with regard to the ownership of copyright. 

By its fourth plea, the Commission maintains that the General Court made a manifest legal error with regard to its assessment of the existence, first, of an infringement of copyright and, second, of an infringement of Systran's know-how. 

Its fifth plea alleges that, by considering that the Commission's supposed fault constitutes a sufficiently serious breach, the General Court made a manifest error of assessment which led to an infringement of the principles governing the European Union's non-contractual liability. 

By its sixth plea, the applicant submits, first, that the General Court erred in law in its interpretation of the exception laid down in Article 5 of Directive 91/250/EEC and, second, that it failed to fulfil its obligation to state reasons with regard to Article 6 of that directive. 

By its seventh plea, the Commission alleges, first, that the General Court made clearly incorrect findings of fact, misinterpreted evidence, and made manifest errors of assessment and, second, that it failed to fulfil its obligation to state reasons with regard to the existence of a causal link. 

Finally, the eighth plea alleges that, by awarding Systran damages with interest amounting to EUR 12 001 000, the General Court, first, is guilty of making clearly incorrect findings of fact, misinterpreting evidence, and making manifest errors of assessment and, second, the General Court fails to fulfil its obligation to state reasons concerning the calculation of the damage. [What the court rules on the obligation to state reasons will be closely watched, since the extent to which national courts give reasons seems to vary as between jurisdictions and sometimes as between different IP rights. We might expect damages awards under the IP Enforcement Directive to be measured by whatever yardstick the court stipulates]

Nana-na-boo-boo, You Can’t Sue Me

Wilcox v. Career Step, the case is a few months old now, but it hasn’t been mentioned on this blog yet and is worth a look.

The main heart of the Wilcox case is a dispute over ownership of copyright between the author of a medical coding course, Ms. Wilcox, and an online course distributor, Career Step, that offered the course and helped pay for its development and may have employed Ms. Wilcox.  However, these work-for-hire and ownership questions are not the interesting item from the recent decision.

In addition to suing Career Step, Ms. Wilcox also sued a number of individuals and colleges who received the course from the Career Step.  Some of these colleges that were sued are state-run, public institutions.  And one of these state-run, public institutions, West Virginia Community and Technical College, challenged the suit on grounds of sovereign immunity under the 11th Amendment of the US Constitution.  That motion to dismiss was granted.

The 11th Amendment prohibits law suits against a state by citizens of another state unless the state has consented to be sued or a federal law permits the suit.  West Virginia Community and Technical College is considered to be an arm of the state of West Virginia because it is controlled by and receives most of its funding from the state.  The court held that West Virginia did not consent to be sued and that there was no federal law to change the standard 11th Amendment rule.  Thus, the court granted West Virginia Community and Technical College’s motion to dismiss the copyright claims against it.

This case is unusual for a few reasons.  First, this case is going on in the District Court for the District of Utah.  This is not one of the common places for a copyright infringement suit, such as the Eastern District of New York or the Central District of California.

Second, a sovereign immunity claim in a copyright infringement suit is, I believe, a very novel defense.  (Readers can please correct me if they know of other similar cases.)  And, the success of the defense raises questions for the future of interactions between copyright holders and public education.

The United States has a large number of public universities, colleges and technical training schools, as well as an extensive public K-12 system.  If state-run institutions have immunity from copyright infringement suits, do they have a free license to ignore copyright law and infringe content as much as they would like? 

What about secondary liability concerns for things like file-sharing?  A growing number of universities, both public and private, have instituted programs and partnerships with big content to deter file-sharing on their campuses.  If state-run universities can claim sovereign immunity protection, will they have no need for these programs?  Will state universities become sanctuaries for file-sharing students?

The White House has announced recently that IP Czar Victoria Espinel is suggesting new copyright laws.  Will these include a copyright infringement exception to the 11th Amendment?

Decision dismissing claim against West Virginia Community and Technical College

First decision in case addressing a number of joinder and dismissal claims

Russia Prosecuting Online Infringement. For the WTO?

The Criminal Code of the Russian Federation provides for those convicted of copyright infringement to forfeit up to 18 months of their wages, among other possible punishments including jail time or work-relief.  (Art. 146.) 

Rumor has it that though Russia has these laws on her books, their enforcement has been less ideal.  According to an AFP story on Yahoo! News, Russia is working to change that.  The proposed motive: entry into the WTO.

The Recent Enforcement

Basic story-line, young man uploads music tracks to a social networking site without permission from the copyright owner.  Other users download the songs.  In this case, the Russian music tracks uploaded by the young man were downloaded over 200,000 times by other users.  The young man was caught and prosecution charges filed.

High-profile raids to confiscate infringing goods have also increased in the move to step-up enforcement.

The WTO Relationship

According to the AFP story, Russia is increasing its copyright enforcement in order to finally join the WTO, a process it began in 1993.  The article states, “Russia's inability to implement any meaningful form of copyright protection has been one of the main issues raised by the United States during the latest rounds of two sides' World Trade Organization negotiations.”

Some other research sheds some doubt on this reasoning.  Russian WTO negotiations with IP-promoting Western governments have been going well recently.  The EU backed Russia for WTO admittance late last year and negotiations with the US have been progressing with the support of President Obama.  (See here, here and here.)  And while there is some discussion of intellectual property enforcement being a problem, the major barriers remaining are more likely tariffs.

This is not to say that increased enforcement will not help Russia in its bid for the WTO, but merely to suggest that it is not quite as an important factor as the AFP story suggests.  At the very least, such enforcement should help get Russia removed from the Priority Watchlist in the infamous Special 301 Report (pdf).

Willy the Wizard falters in the US, but can he still pull a rabbit from

The BBC report, "Harry Potter plagiarism case dismissed" (here), will not have escaped the eagle eyes of 1709 Blog readers.  The headline refers not to the ongoing litigation in England and Wales between the estate of Adrian Jacobs and the JK Rowling crew, which is set to go to a full trial (see earlier posts on the 1709 Blog here and on the IPKat here) but to its United States counterpart.

In both the US and England and Wales actions Jacobs' estate has claimed that the plot of Harry Potter and the Goblet of Fire plagiarised parts of his earlier Adventures of Willy the Wizard. Judge Shira Sheindlin has however concluded that there were major differences between the two works, which were "distinctly different in both substance and style", adding that "the contrast between the total concept and feel of the works is so stark that any serious comparison of the two strains credulity."

While Mr Justice Kitchin, in the England and Wales proceedings, doubted that the claim would succeed at full trial, it must be remembered that the test of infringement in the United Kingdom does not turn on whether there are major difference between the works in substance or style, or whether the contrast between the two is so stark as to strain credulity, but boringly whether there has been a reproduction in the later work of all or a substantial part of the earlier one -- and a part doesn't have to be very big in order to be  substantial.  This blog accordingly waits with unfeigned excitement to see whether, as has been predicted, the action will fail or whether Willy the Wizard will have just enough magic in him to achieve a result against his best-selling foe.

Punishment by Press Release, as General Court raps Commission's knuckles

In Case T-19/07 Systran SA and another v European Commission, a General Court of the European Union decision of 16 December 2010 which is still available in French only, the Court ordered the European Commission to pay Systran liquidated damages of €12,001,000 for infringing the IP in Systran's copyright and know-how relating to the Unix version of Systran's machine translation software.

In short, the non-contractual liability of the European Union depends on the following conditions being satisfied: (i) the conduct alleged against an institution must be unlawful, (ii) actual damage must have been suffered and (iii) there must be a causal link between the conduct and the damage alleged. The General Court considered that the Commission's conduct ticked all three boxes.  According to the Curia press release,

"Between 22 December 1997 and 15 March 2002, the company Systran Luxembourg adapted, under the name EC-Systran Unix, its Systran-Unix machine translation software to the specific needs of the Commission in this field.

On 4 October 2003 the Commission published a call for tenders for the maintenance and linguistic enhancement of its machine translation system. The services required by the Commission from the successful contractor concerned, inter alia, ‘enhancements, adaptations and additions to linguistic routines’; ‘specific improvements to analysis, transfer and synthesis programs’ and ‘system updates’, as covered by the call for tenders.

Following that call for tenders, Systran – the parent company of Systran Luxembourg – contacted the Commission to inform it that the planned work appeared likely to infringe its intellectual property rights. For more than 40 years Systran has supplied companies and authorities with machine translation solutions based on the software which bears its name. In particular, Systran created and marketed a version of the Systran software capable of functioning on the Unix and Windows operating systems (Systran Unix) and of replacing the earlier, now obsolete version, which functioned on the Mainframe operating system (Systran Mainframe).

After correspondence between Systran and the Commission, the latter took the view that Systran had not produced ‘probative documents’ capable of establishing the rights which Systran might claim in respect of its EC-Systran Unix machine translation system. The Commission therefore considered that the Systran group had no right to object to the work carried out by the company which had been successful in the call for tenders.

Considering that, after the award of the tender contract, the Commission had unlawfully disclosed its know-how to a third party and that the Commission was infringing its copyright when unauthorised development of the EC-Systran Unix version was carried out by the successful contractor, Systran and Systran Luxembourg brought an action for damages against the Commission before the General Court.

Since the parties could not reach any agreement to resolve the matter when invited by the General Court following the hearing to attempt conciliation, the General Court now gives its ruling on the action for damages.

The General Court states, first, that the dispute concerns non-contractual liability. The contracts entered into in the past by the Commission to enable it to use the Systran software do not deal with questions of disclosure of Systran’s know-how to a third party or the carrying out of work which might infringe the intellectual property rights of that company.

As regards the unlawfulness of the Commission’s alleged conduct, the General Court considers
that the Systran group has established that there is a substantial similarity, in the core material and certain linguistic routines (programmes), between the Systran Unix and EC-Systran Unix versions, and that the Systran group can therefore rely on the rights held in the Systran Unix version, developed and marketed by Systran since 1993, to object to the disclosure to a third party without its consent of the derivative EC-Systran Unix version, adapted by Systran Luxembourg from 1997 onwards to meet the needs of the Commission.

For its part, the Commission was unable to establish over which parts of the core material and the linguistic routines of Systran Unix it claimed rights of property as a result, inter alia, of the rights it held in dictionaries encoded by its own staff.

Moreover, Systran has proved that, contrary to the claims of the Commission, the alterations
requested by the call for tenders require access to elements of the EC-Systran Unix version which are taken from the version Systran Unix and require their alteration.

Consequently, by granting the right to carry out work which necessarily entailed an alteration of elements of the Systran Unix version of the Systran software which are within the EC-Systran Unix version, without first obtaining the consent of the Systran group, the Commission acted unlawfully by infringing the general principles common to the law of the Member States applicable to copyright and know-how. That wrongful act, which is a sufficiently serious breach of the copyright and know-how held by the Systran group in the Systran Unix version of the Systran software, gives rise to non-contractual liability on the part of the European Union.
As regards the damage, the General Court rules that liquidated damages and interest amounting to €12 001 000 must be paid to Systran to compensate it for the damage suffered as a result of the Commission’s unlawful conduct, namely:

- €7 million corresponding to the total fees which would have been payable between 2004 and 2010 if the Commission had requested permission to use Systran’s intellectual property rights in order to carry out the work specified in the call for tenders, which requires access to and alteration of elements of the Systran Unix version reproduced in the EC-Systran Unix version;
- €5 million as compensation for the effect which the Commission’s conduct might have had on Systran’s turnover in the years 2004 to 2010, and more widely on the development of that company;
- €1 000 as compensation for non-material damage.

In addition, the General Court observes that it is for the Commission to draw all appropriate
conclusions in order to ensure that Systran’s rights in the Systran Unix version are taken into account as concerns the work relating to the EC-Systran Unix version. If they are not taken into account, given that the damage for which compensation is awarded in this case holds only for the period from 2004 to the date of delivery of this judgment, Systran would be entitled to bring before the General Court a fresh action seeking damages in respect of the further damage it might suffer.

Lastly, the General Court adds that the publication of this press release is also a form of
non-pecuniary compensation for the non-material damage caused by the harm to Systran’s
reputation as a result of the Commission’s unlawful conduct".

Merely allowing others to infringe is not an infringement

Linsey Dawn McKenzie,
hiding behind a tree

Media C.A.T. Ltd v A to H [2010] EWPCC 17 is a series of eight actions brought against unidentified file-sharers who are alleged to have indulged in activity which infringes the copyright in ""5 Linsey Dawn McKenzie Films on Tape", said to be a pornographic film featuring an actress described by Wikipedia as being "known for her naturally large breasts".  In each instance Media CAT was applying for judgment in default under the Civil Procedure Rules, CPR r.12.4(1). In the particulars of each claim in each action, Media CAT asserted that it represented the owners or exclusive licensees of copyright works of a pornographic nature and maintained that the relevant defendant had been engaged in peer-to-peer file sharing which involved copyright infringement. Damages and an injunction were sought.

Sitting in the Patents County Court, Judge Birss QC refused all eight applications. Concluding that it would be inappropriate to give judgment in default, the judge observed that in three cases the defendant had filed a defence and in three others there was nothing to show that the proceedings had been served. While the defendants in the other two actions appeared to be in default the claims did not fall within r.12.4(1) since Media CAT was asking for an injunction as well as damages and the application should have been made under Part 23 of the Rules.

Obiter, Judge Birss QC considered the nature of the alleged infringing act and added:

" ... The claimant's right to bring these claims at all may be entirely solid but that does not emerge clearly from the statement of case. A key part of the plea of infringement rests on an assertion that "allowing" others to infringe is itself an infringing act, when it is not. There is no plea that the works qualify for copyright protection at all. ...

In all these circumstances, a default judgment arrived at without notice by means of an essentially administrative procedure, even one restricted to a financial claim, seems to me to be capable of working real injustice.

Peer to peer file sharing which involves copyright infringement is an important and serious matter and claimants with a proper claim are entitled to use the full machinery of the courts to enforce their rights. Default judgment is an important part of the court's armoury in order to ensure that defendants engage with the legal process properly but it would not be a significant burden on claimants in cases like these to be required to use the part 23 procedure in all such cases".

How times change. A hundred years ago, no plaintiff in copyright infringement proceedings would have dared confess to attempting to enforce rights in a pornographic work.  Even if the subject was not raised by the parties, the court might sua sponte deem a work obscene and decline to enforce copyright in it. See for example Glynn v Weston Feature Films [1916] 1 Ch 261.

Da Bears, Da Dance, Da Lawsuit

Da Bears.  Perhaps one of the most famous phrases in 1980s American football.  The Chicago Bears had a lot of cultural staples that decade, Mike Ditka, Refrigerator Perry and the 1985 Superbowl Shuffle (video available here).  But as the 25th anniversary of the Superbowl Shuffle approaches, there’s trouble in the Windy City.

Photo credit: “It’s Like Making a Trip
to Mecca if You’re a Bears Fan”
CC-BY-SA Senor Codo

Julia Meyer, owner of the copyrights to the video and song Superbowl Shuffle has brought suit against cable network Viacom, owner of MTV and VH1.  Meyer alleges copyright infringement under the US Copyright Act, misrepresentation under the Lanham Act, deceptive trade practices under Illinois state law and unjust enrichment.  (Full brief pdf)
What did Viacom do?  It played the Superbowl Shuffle video on MTV and VH1, not the whole video, but clips of it.  The shortest clip, 16 seconds, the longest, a minute and a half.
According to Meyer,

“The Defendants’ conduct significantly damaged the market for the ’85 Bears Shuffle Video. [Because now that people have seen it, they’ll know better than to buy it?]  The 25th Anniversary of the ’85 Bears Shuffle Video will take place during late 2010 and early 2011, which has created additional interest from the public in the ’85 Bears Shuffle Video.” [What’s more likely to create additional interest is that the Bears could make it to the Superbowl this year.  They’re currently first in their division, just ahead of the Green Bay Packers.]

Copyright Infringement

Meyer’s claims that by airing the Superbowl Shuffle clips on MTV and VH1, Viacom’s actions were “willful and deliberate, and in utter disregard for Meyer’s rights.”
All I can do here is speculate.  Once upon a time, MTV and VH1 actually played music videos, full music videos, all of the time.  That suggests that the Networks are familiar with the standard process for licensing videos and would not have aired the videos without going through that standard process.  (Unfortunately, I am not familiar with the standard process and have no idea if there is any sort of set compulsory licensing in place for music videos or if each video’s airing must be negotiated with the rightsholder.)
On the other hand, most of the videos MTV and VH1 show are produced and owned by major record labels.  This video is different.  It is not owned by a label, but by a entrepreneur who licenses the video via a company in Illinois.  Did Viacom try to take advantage of this situation by airing the video without going through the normal licensing practice?  The brief filed by Meyers gives us no information about any relevant background facts in this area.

Deceptive Trade Practices and Unfair Competition

The claims under the Lanham Act and Illinois State Law (815 ILCS 510/2) are similar.  Meyer and co-plaintiff Renaissance Marketing Corporation alleges that by showing clips of the Superbowl Shuffle on VH1’s program One Hit Wonders and MTV’s MTV News, Viacom engaged in “unfair and deceptive trade practices in that it likely caused confusion and mistake by the public.” 
At first, this sounds pretty ridiculous.  How would the public confuse a football team with some cable channels?  Would the public really think that the airing of the videos means the Chicago Bears are endorsing VH1 and MTV?  But the alleged confusion isn’t over affiliation or endorsement.  Meyer’s claim is that the public will be mislead into believing that she authorized the use of the video on the programs.
It’s possible viewers believe the owners of videos approve the playing of their videos.  But I wonder how realistic it is that the public would believe that for the video uses at issue here.  The MTV clip was part of a news show including interviews with members of the 1985 Chicago Bears team.  Does the public assume permission is granted whenever a very brief (40 seconds in this case) clip appears on the news as part of a story?  And the real question, would the public assume permission is given by the video owners for videos that appear on VH1’s One Hit Wonders?  Being known as a one-hit-wonder isn’t usually a good thing.  The public might assume that if specific permission were needed, there wouldn’t be any videos on the show.
The deceptive practices and likelihood of confusion claims are plausible but tenuous at best.  My guess is the case settles; I’ll be surprised if it goes to trial.

... but he doesn't want to give up his day job

Some Presidents take the rap;
others give it

President Yoweri Museveni of Uganda has been working hard to boost his popularity by releasing a recording of a rap, which you can watch on YouTube here.  There are some copyright issues afoot, since the song is said to be "a folk song that is apparently whose copyright is being registered", though it is not clear "whether it offends the de minimis test under Uganda's Copyright Law".

The work is said to have been mixed or put together by a local DJ without the President's knowledge. So far though, the song is raking in political gold as the campaign for the country's 2011 elections heat up ...

This blog welcomes further information concerning the President's rap.  nb Uganda is not one of the ACTA states.

Thanks, Paul Asiimwe (SIPI Law Associates), for this information.

Creative Commons License Upheld in Belgian Court

In 2004, the Belgian band Lichôdmapwa released the song “Abatchouck” under a Creative Commons Attribution Non-Commercial No Derivatives license (CC BY-NC-ND). Several years later, one of the band members happened to hear about 20 seconds of the 3:20 song on an advertisement for a theater and festival company. Recently, Lichôdmapwa was awarded 4.500 Euros for the infringement of “Abatchouck”.

When Lichôdmapwa first heard their song on the radio, they contacted the theater company (roughly translated by Bablefish as “Festival of theater of spa”) to see if they could negotiate an outcome favorable to all. The negotiations failed and Lichôdmapwa sued the theater company for copyright infringement in September of 2009.

The Band’s Claims

Lichôdmapwa claimed that the theater company had violated all three of the terms of their chosen CC license. The theater had modified the original work to make it fit in the commercial, violating the No Derivatives provision. The theater violated the Non-Commercial clause by using the work in an advertisement. And the theater violated the attribution requirement by not including any mention of the song’s artist in the commercial.

The band asked for 10,380 Euros in damages, plus to have the theater pay for the publication of the court’s judgment in a magazine called “Dogmagazine.”

The Theater Company’s Defense

The theater company attempted to claim ignorance, arguing that it was unaware of the terms of the license. It appears the theater also argued that since Lichôdmapwa is not a member of the Belgian collecting society, SABAM, the band had no rights to collect payments for the music’s use.

The Court’s Decision

Judge Vandeput did not agree with the theater company’s defenses. She recognized the validity of Creative Commons licenses, citing Dutch, Spanish and American courts as others that have also held CC licenses to be valid. She also confirmed that the musicians’ decision to not join SABAM and instead release their music more openly should not prevent enforcement of the license.

As to the theater company’s claim of ignorance, Judge Vandeput found that this was no excuse for violating the license. As an organizer of festivals and a company involved in using licensing, the company should have known to look for and follow the terms of the license. In addition, the website from which the theater downloaded the music, http://www.dogmazic.net, clearly mentions the terms of the license. There was no reason for the theater company not to know about the license or its terms.

The Money

Even though the band is not part of SABAM, the court held that they still suffered damages. And although Judge Vandeput did not award Lichôdmapwa the 12 Euros per distribution and 1,800 Euros per license term violated that they requested or the magazine print request, she did award the band 1,500 Euros per license term violated. 4,500 Euros and possibly court costs, not bad.

For our multi-lingual readers:

• More about the case by Herkko Hietanen (in Finnish)http://www.turre.com/2010/10/tuomioistuin-tietamattomyys-ei-este-cc-lisenssin-loukkaukselle/
• Full text of the case (in French) http://www.turre.com/wp-content/uploads/2010-10-26-D%C3%A9cision-trib.-Nivelles-Lich%C3%B4dmapwa.pdf

Possession. Against the (Copyright) Law

The Malaysian Star reports on some public backlash to a proposed amendment to the Malaysian Copyright Act.  The amendment has been in discussion for about a year now but is not yet law.  If the new amendment is enacted, persons found in possession of infringing DVDs will be fined five times the cost of the legitimate version. (see here.)

I have been unable to locate a copy of the proposed amendment.  It appears from looking at the current act that this amendment would change Section 41(d), which currently says that it is an offense if a person “possesses, otherwise than for his private and domestic use, an infringing copy.” (emphasis added) 

The purpose of the amendment is to help limit the amount of trade in infringing DVDs, CDs, and other forms of amusement delivered in disc form, by discouraging people from purchasing them.  The general idea is that reducing the market for infringing goods will help the creative industries in Malaysia grow and contribute to the nation’s economic growth.  (For more background see MIP Handbook.)

Without having a copy of the amendment, it is hard to know what the real consequences of the change could be.  For example, if the punishment is a fine but the person has to be seen with the infringing disc in public, then it might be considered a reasonable step towards lowering infringement. However, if Section 44 of the Copyright Act will apply to the offense of possession as it does to all other offences, there may be a bigger issue.  Section 44 allows a magistrate to grant a warrant that allows the police to enter suspected premises at any time and seize infringing materials. 

Based on the information in the Star article, details like whether Section 44 will apply are still being worked out.  Concern about potential police raids of private homes was not the comment from the Malaysian people.  Some are worried that the government is acting out of desperation, while others claim the producers of infringing goods should be the target rather than the consumers.  (In all fairness, the Copyright Act does already include making and distribution as offenses and reports of successful factory raids have appeared in the papers.)

In addition to knowing whether Section 44 applies, one might also wonder, “Can consumers distinguish an infringing copy from a legitimate one?” and “Do people know where they can purchase legitimate copies?”  In some places, like Nigeria, the answers to these questions are often “no.”  If that’s the case in Malaysia, how will enforcement of this amendment work?

Which is the original? Image credit: CC BY NC SA 2.5 Malaysia by Yihzy available at http://www.yihzy.com/wordpress/?cat=9

If anyone has a copy of the amendment or knows more about the relationship between infringing and legitimate DVDs in Malaysia, The 1709 Blog would love to hear from you.

Wizard gears up for ten-day tangle with boy magician

Word is now spreading about the news that Scottish author JK Rowling and Bloomsbury Publishing have failed in their bid to prevent an unwanted copyright infringement action getting to court.  A a 10-day Chancery Division trial is now expected, following today's ruling by Mr Justice Kitchin here that Paul Allen, the trustee of the estate of Willy the Wizard author Adrian Jacobs, has an arguable copyright infringement claim against the author and publisher of Harry Potter and the Goblet of Fire.

JK Rowling and Bloomsbury (her UK publisher) both deny all of the claims and argued that, since they were groundless, they should be dismissed summarily. However, after an interim hearing in July which lasted three days, Kitchin J has now concluded that the claim may succeed and would not therefore be dismissed at this early stage. Acting for Allen, Nick Kounoupias (DMH Stallard LLP) said

"This is precisely the result we expected. We were surprised that any attempt was made to dispose of the claim at this stage and before all the relevant documents had been made available. ... If the claim does proceed then JK Rowling and Bloomsbury will be required to explain how the similarities between the two works came about, when to date there has been a refusal to disclose key manuscripts and notebooks despite our request that they do so.”

This blog will be watching developments with interest.
See also the IPKat post here; Sydney Morning Herald here; Matin (Quebec) here; RP-online here.