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Law Society: 17th Annual Intellectual Property Law, The Year in Review - Copyright
Barry B. Sookman bsookman@mccarthy.ca 416-601-7949
McCarthy Ttrault S.E.N.C.R.L., s.r.l. / mccarthy.ca 12084941
Canada++
Copyright law reform: Bill C-11, Copyright Modernization Act, November 7, 2012.
Supreme Court
ESA v. SOCAN, 2012 SCC 34 Rogers Communications Inc. v. SOCAN, 2012 SCC 35 SOCAN v. Bell Canada, 2012 SCC 36 Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright), 2012 SCC 37
Re:Sound v. Motion Picture Theatre Associations of Canada, 2012 SCC 38 Reference re Broadcasting Regulatory Policy CRTC 2010 167, 2012 SCC 68 See, Summary of Copyright Pentology by Justice Rothstein @ http://ow.ly/go2cr
Phonographic Performance Company of Australia Limited v Commonwealth of Australia, [2012] HCA 8 (28 March 2012)
Principles of interpretation: copyright balance The copyright given to authors and makers of records was, as Augustine Birrell said of the copyright granted by the Statute of Anne of 1709, "qualified and time-limited property". Although the categories of protected works were much enlarged by the time of the 1911 Act, speaking generally the 1911 Act, like the Statute of Anne, took into account and balanced the interests of authors, entrepreneurs and the public. The public's interest lay in the dissemination of copyright works, including dissemination on reasonable terms. Any detailed consideration of the historical context of the Statute of Anne supports this construction of its intent and its provisions. Further, presaging compulsory licence schemes, the prices of books under the Statute of Anne were regulated to ensure that they were "just and reasonable" and the uses by, and rights of, nominated libraries and universities in respect of copyright works were preserved. It was settled in Donaldson v Beckett that copyright in published works depended upon statute, not the common law, and that the Statute of Anne limited the exclusive right of an author or owner of the copyright to multiply copies of an original published work so as to balance that right against the public interest in freedom to have access to, and to exploit, such works. It can be noted that the American copyright tradition exemplified in Wheaton v Peters follows Donaldson v Beckett.
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Dramatico Entertainment Ltd & Ors v British Sky Broadcasting Ltd & Ors, [2012] EWHC 1152 (Ch)
Communicate to the public/making available right I turn, therefore, to consider whether such users [of The Pirate Bay] thereby communicate such recordings available to the public. This involves two questions. First, do they communicate the recordings by electronic transmission? In my judgment they do. I consider that they make the recordings available by electronic transmission in such a way that members of the public may access the recordings from a place and at a time individually chosen by them within section 20(2)(b). Accordingly, I conclude that UK users of TPB infringe the Claimants' copyrights in this way also. This conclusion is consistent with that of the Full Court of the Federal Court of Australia, albeit under a slightly different statutory provision, in Roadshow Films Pty Ltd v iiNet Ltd [2011] FCAFC 23, (2011) 89 IPR 1: see Emmett J at [151]-[158], Jagot J at [322]-[330] and Nicholas J at [664]-[672].
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Hoffman v Drug Abuse Resistance Education (UK) Ltd, [2012] EWPCC 2 (19 January 2012)
Communication/making available right: Does posting of a photo on a website infringe the MAR? Section 20(2)(b) is expressed to include making the work available to the public by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them (see Art 3.1 of the Information Society Directive). In terms of s20(2)(b), in this case the claimant's artistic works have been made available to the public on the defendant's websites by electronic transmission in such a way that members of the public may access the works from a place and at a time individually chosen by them. In terms of the Art 3.1 the claimant's artistic works have been communicated to the public by wire or wireless means and have been made available to the public in such a way that members of the public may access the works from a place and at a time individually chosen by them.
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Section 3(1)(f) Is Not Limited to Traditional Push Technologies; It Is Technology-Neutral Although the words in any material form whatever qualify the right to produce or reproduce the work in s. 3(1), the same principle should guide the application of the neutral wording of the right to communicate to the public by telecommunication. The broad definition of telecommunication was adopted precisely to provide for a communication right not dependent on the form of technology
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American Broadcasting Companies, Inc. v. Aereo, Inc., 2012 U.S. Dist. LEXIS 70749, (S.D.N.Y. 2012)
Communication/public performance: Are on-demand transmissions to the public? Aereo characterizes its system as merely allowing users to rent a remotely located antenna, DVR, and Slingbox-equivalent device, in order to access content they could receive for free and in the same manner merely by installing the same equipment at home. Housing this argument more specifically in the terms defined by Cablevision, Aereo contends that, like the RSDVR system in Cablevision, its system creates unique, userrequested copies that are transmitted only to the particular user that created them and, therefore, its performances are nonpublic. Despite this creative attempt to escape from the express holding of Cablevision, for the reasons discussed below this Court finds itself constrained to reject the approach Plaintiffs urge. Contrary to Plaintiffs' arguments, the copies Aereo's system creates are not materially distinguishable from those in Cablevision, which found that the transmission was made from those copies rather than from the incoming signal. Moreover, Plaintiffs' attempt to distinguish Cablevision based on time-shifting fails when confronted with the reasoning of that case, particularly considering that the Second Circuit's analysis was directly focused on the significance of Cablevision's copies but did not say one word to suggest that time-shifting played any part in its holding. See, contra, Fox Television Studios v BarryDriller Content Systems, Case, No. CV-12-6921, (C.D.Cal. Dec 20, 2012)
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Fox Broadcasting Company Inc. v. Dish Network, L.L.C., 2012 U.S. Dist. LEXIS 169112, (C.D. Cal, 2012)
Who is responsible for committing the infringing act? It is clear that Dish exercises a degree of discretion over the copying process beyond that which was present in Cablevision. Nevertheless, at this stage of the proceedings, the Court is not satisfied that PTAT [Primetime AnyWhere, home DVR] has crossed over the line that leads to direct liability. Despite Dish's involvement in the copying process, the fact remains that the user, not Dish, must take the initial step of enabling PTAT after deciding that he or she wants to initiate the recording. The user, then, and not Dish, is the most significant and important cause of the copy. Prosser and Keeton on Torts 42. Accordingly, the Court finds that Fox has not established a likelihood of success on the merits of its claim that PTAT directly infringes on its exclusive right to reproduction.
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National Rugby League Investments Pty Limited v Singtel Optus Pty Ltd, [2012] FCAFC 59 (April 2012)
Who is responsible for committing the infringing act? Legality of TV Now service enables a subscriber to have free to air television programmes recorded as and when broadcast and then played back at the time (or times) of the subscribers choosing on the subscribers compatible Optus mobile device or personal computer. we consider that Optus role in the making of a copy ie in capturing the broadcast and then in embodying its images and sounds in the hard disk is so pervasive that, even though entirely automated, it cannot be disregarded when the person who does the act of copying is to be identified. So one comes back to the question of construction raised by the word make and its application in the present setting. As we have indicated, Optus not only has solicited subscriber utilisation of its Service, it has also designed and maintained a sophisticated system which can effectuate the making of recordings wanted for viewing by subscribers. For s 101 purposes, it manifestly is involved directly in doing the act of copying. It counts as a maker of copies for the subscriber. Does the subscriber as well?
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Phonographic Performance (Ireland) Ltd v Ireland, CJEU, Case C-162/10, 15 March, 2012
Who communicates a sound recording to the public? A hotel operator which provides in guest bedrooms televisions and/or radios to which it distributes a broadcast signal is a user making a communication to the public of a phonogram which may be played in a broadcast for the purposes of Article 8(2) of Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property. The user makes an act of communication when it intervenes, in full knowledge of the consequences of its action, to give access to a broadcast containing the protected work to its customers. In the absence of that intervention, its customers, although physically within the area covered by the broadcast, would not, in principle, be able to enjoy the broadcast work.
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See, Government of the United States v ODwyer, Westminister Magistrates Court, 13 January, 2012
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The Court concludes that there is a substantial similarity between these two characters.
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The Court concludes that there is a substantial similarity between these two characters.
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The Court concludes that there is a substantial similarity between these two characters Duresoire and Boum Boum.
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The Court concludes that there is a substantial similarity between these two characters.
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The Court concludes that there is a substantial similarity between these two characters.
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Marlboro Canada Limited v. Philip Morris Products S.A., 2012 FCA 201
Infringement: objective/substantial similarity Do the Defendants 1996, 2001, and 2007 ITL Canadian Marlboro packages infringe PMPSAs copyright in the MARLBORO Red Roof Label?
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Marlboro Canada Limited v. Philip Morris Products S.A., 2012 FCA 201
Mere similarity between two works is insufficient to establish copying. What is required is a substantial similarity between the original work and the allegedly infringing work that is observable when the works are viewed as a whole. Unless a substantial part of a work is copied, there can be no cause of action for copyright infringement. The question to be asked is whether the reproduction contains within it, in qualitative rather than quantitative terms, a substantial part of the skill and judgment exercised by the creator of the original, protected mark: Robertson v. Thompson Corp.,2006 SCC 43 (CanLII), 2006 SCC 43, at para. 81. Substantial similarity is made out where the impugned work comes so near to the original as to give every person seeing it the idea created by the original; such similarity creates prima facie evidence of copying. Approving decision of trial judge, 2010 FC 1099.
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Peace sign images: We conclude that no reasonable juror could determine that the Jake figure is substantially similar to the protected, expressive choices Mr. Blehm used for the Penman figure.
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Frisbee Images: Although the images share a similar idea of catching a Frisbee between the legs, the protectable expression in the Penman is not substantially similar to the Jake image.
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Temple Island Collections Ltd v. New English Teas Ltd & Anor [2012] EWPCC 1 (12 January 2012)
The blank sky serves to emphasise the buildings and gives the whole image a dramatic appearance and the bright red bus stands out even more prominently. This has been reproduced. The basic composition of the image has the Routemaster driving from right to left on the bridge but there is more to it than that. The bus is actually framed by the building. Although the framing is a little different in Annex 2, to my eye the essence of the framing effect has been reproduced. Although the bus is larger in Annex 2 than Annex 1, in both images the bus roughly in scale with the facade of the Houses of Parliament. Also the riverside facade of the building is a prominent feature. There are no other vehicles clearly visible and although there are some small people visible they are not prominent. This all gives the image an element of simplicity and clarity.
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Harmony Consulting Ltd. v. G.A. Foss Transport Ltd., 2012 FCA 226
Infringement: Is a screen display a reproduction of a computer program? With respect, I cannot agree that a screen display is simply a reproduction of the object code. A computer program is defined in section 2 of the Act as: computer program means a set of instructions or statements, expressed, fixed, embodied or stored in any manner, that is to be used directly or indirectly in a computer in order to bring about a specific result; In my view, the screen display on a user monitor is the result of such a set of instructions rather than a reproduction of the set of instruction in another form. To use the analogy of the Supreme Court of Canada in Cuisenaire v. South West Imports Ltd., 1968 CanLII 122 (SCC), [1969] S.C.R. 208, 2 D.L.R. (3d) 430, the screen display is the rabbit pie rather than the recipe (the recipe being the set of instructions).
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Monge v. Maya Magazines, Inc., 2012 U.S. App. LEXIS 16947, (9th Cir. 2012)
Fair use The fair use doctrine has been called the most troublesome in the whole law of copyright. Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661, 662 (2d Cir. 1939) (per curiam). This affirmative defense presumes that unauthorized copying has occurred, and is instead aimed at whether the defendants use was fair In the years following the 1976 Act, courts have decided countless cases involving the fair use doctrine. Some commentators have criticized the factors, labeling them billowing white goo or naught but a fairy tale, echoing courts that threw up their hands because the doctrine is so flexible as virtually to defy definition. Princeton Univ. Press v. Mich. Doc. Servs., Inc., 99 F.3d 1381, 1392 (6th Cir. 1996) (citation omitted). A leading treatise in this area notes that the statute provides no guidance as to the relative weight to be ascribed to each of the listed factors, and, in the end, courts are left with almost complete discretion in determining whether any given factor is present in any particular use. Nimmer on Copyright 13.05[A] (footnotes omitted). We acknowledge the porous nature of the factors but nonetheless recognize that we are obliged to make sense of the doctrine and its predicates See, also, Balsley v. LFP, INC 691 F.3d 747 (6th.Cir.2012)
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Authors Guild, Inc. v. HathiTrust, 2012 U.S. Dist. LEXIS 146169, (SDNY, 2012)
Fair use: The totality of the fair-use factors suggest that copyright law's "goal of promoting the Progress of Science . . . would be better served by allowing the use than by preventing it." Bill Graham, 448 F.3d at 608. The enhanced search capabilities that reveal no in-copyright material, the protection of Defendants' fragile books, and, perhaps most importantly, the unprecedented ability of print-disabled individuals to have an equal opportunity to compete with their sighted peers in the ways imagined by the ADA protect the copies made by Defendants as fair use to the extent that Plaintiffs have established a prima facie case of infringement... I cannot imagine a definition of fair use that would not encompass the transformative uses made by Defendants' MDP and would require that I terminate this invaluable contribution to the progress of science and cultivation of the arts that at the same time effectuates the ideals espoused by the ADA. See also, Cambridge University Press v. Becker, 863 F.Supp.2d 1190 (N.D.Ga. 2012)
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Acohs Pty Ltd v Ucorp Pty Ltd [2012] FCAFC 16 (2 March 2012)
Subsistence: originality, computer generated works The primary judge reasoned (at [47]), correctly in our view, that there was no a priori reason to deny a body of source code, such as that described, the status of a literary work. The significant question, however, was whether the HTML source code for each identified MSDS, generated and rendered by the Infosafe system as described, was an original literary work for copyright purposes. On appeal the appellant sought to invoke the notion that in any given case of a literary work whose creation has been assisted by computer, the question whether the work has been created by a human author or by human authors is one of fact and degree: Telstra Corporation Ltd v Phone Directories Company Pty Ltd (2010) 194 FCR 142 at [118] per Perram J and [169] per Yates J. To this end, we were taken in the course of argument, to an example of the relevant source code. This example simply confirmed the discrete nature of the source code as a separate work created by the operation of the Infosafe program on other elements entered into the Infosafe system. It did not emanate from authors. It was not an original work in the copyright sense.
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Harmony Consulting Ltd. v. G.A. Foss Transport Ltd., 2012 FCA 226
Infringement: Onus of proof Writing for the Court in Positive, Justice Pelletier held that infringement is defined in the Act in terms of the absence of consent and, consequently, proof of infringement requires proof of lack of consentIn my view, this statement can only mean that the plaintiff bears the burden of persuasion with respect to the lack of consent. This is in line with the general principle that a plaintiff must establish on a balance of probabilities all the necessary elements of its claim. A defendant who says he has the plaintiffs implied consent equally puts this point in issue, but then it seems reasonable for the defendant to plead and prove the facts on which he relies, and the inferences to be drawn from them. The plaintiff can then produce whatever tends to rebut this case. That does not change the ultimate legal burden of proof, which remains on the plaintiff throughout. Only the evidentiary burden shifts to the defendant: he needs to produce some evidence of consent or the plaintiffs prima facie case succeeds Quoting, David Vaver, Consent or No Consent: The Burden of Proof in Intellectual Property Infringement Suits, (2001) 23 I.P.J. 147
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Golden Eye (International) Ltd & Ors v Telefnica UK Litd & Anor [2012] EWCA Civ 1740 (21 December 2012)
Infringement: obtaining identities of alleged infringers In my judgment the correct approach to considering proportionality can be summarised in the following propositions. First, the Claimants' copyrights are property rights protected by Article 1 of the First Protocol to the ECHR and intellectual property rights within Article 17(2) of the Charter. Secondly, the right to privacy under Article 8(1) ECHR/Article 7 of the Charter and the right to the protection of personal data under Article 8 of the Charter are engaged by the present claim. Thirdly, the Claimants' copyrights are "rights of others" within Article 8(2) ECHR/Article 52(1) of the Charter. Fourthly, the approach laid down by Lord Steyn where both Article 8 and Article 10 ECHR rights are involved in Re S [2004] UKHL 47, [2005] 1 AC 593 at [17] is also applicable where a balance falls to be struck between Article 1 of the First Protocol/Article 17(2) of the Charter on the one hand and Article 8 ECHR/Article 7 of the Charter and Article 8 of the Charter on the other hand. That approach is as follows: (i) neither Article as such has precedence over the other; (ii) where the values under the two Articles are in conflict, an intense focus on the comparative importance of the specific rights being claimed in the individual case is necessary; (iii) the justifications for interfering with or restricting each right must be taken into account; (iv) finally, the proportionality test or "ultimate balancing test" - must be applied to each. Statement on Norwich orders approved in Rugby Football Union v Consolidated Information Services Limited [2012] UKSC 55
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EMI Records (Ireland) Ltd & Ors v The Data Protection Commissioner, [2012] IEHC 264
Infringement: obtaining identities of alleged infringers "An activity of swarm participation for peer-to-peer downloading does not legitimately carry the expectation of privacy. It is flying in the face of commonsense for the Data Protection Commissioner to equate participation in an open communication with all comers on the internet for the purpose of illegal downloading of copyright material with interception, with tapping or with listening. Those concepts are rightly to be deprecated as illegal in circumstances of privacy. That is not the situation here: there is no legitimate reposing of trust pursuant to contract or reasonable expectation that when a person goes on the internet with a view to uploading or downloading what does not belong to them. That circumstance does not give rise to any constitutional entitlement or human right to remain immune from a music company also participating in that open forum to discover the economic damage that is being done to it and to creative artists. The interest of music companies is proper and proportionate. It is beyond doubt that while each individual act of copying, in itself, does little damage the reproduction of that activity by millions repeated over time is industrial in scale. The response of internet service providers of doing nothing perhaps reflects the greater economic strength of intermediaries as compared to creative people or recording companies. There is also the immeasurable and disproportionate power of these peer-to-peer swarms which are increasingly rendering the entitlement to those on whom creativity depends to no consideration.
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United States
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Peace sign images: We conclude that no reasonable juror could determine that the Jake figure is substantially similar to the protected, expressive choices Mr. Blehm used for the Penman figure.
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Frisbee Images: Although the images share a similar idea of catching a Frisbee between the legs, the protectable expression in the Penman is not substantially similar to the Jake image.
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Society of Holy Transfiguration Monastery, Inc. v. Gregory, 689 F.3d 29, (1st.Cir. 2012)
Infringement: substantial similarity We traditionally have assessed whether substantial similarity lies between copyrightable expressions by applying the ordinary observer test. Under this rubric, two works will be deemed substantially similar if a reasonable ordinary observer, on examining both, would be disposed to overlook [the disparities between the works], and regard their aesthetic appeal as the same. a court's substantial similarity analysis must center on a work's original elements.. Such examination may require more than the simple determination that "an overall impression of similarity" between the contested works as a whole exists... Typically, to properly conduct this examination, a court must "dissect[] the copyrighted work and separat[e] its original expressive elements from its unprotected content," honing in solely on the unique (and thus protected) components... Indeed, should a work's appearance of similarity rest upon elements that are not themselves copyrightable, this will drive a problematic stake through an infringement claim.
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Tetris Holding, LLC v. Xio Interactive, Inc., 2012 U.S. Dist. LEXIS 74463 (D NJ, 2012)
Infringement: idea expression dichotomy Xio's argument that the Tetris pieces are unprotectible because they are related to a rule or function of the game is without merit. The idea of Tetris does not necessitate the particular characteristics of the audio-visual display. And Tetris's copyright is not protecting the style and movement of the pieces as methods of operation, but instead the expression associated with those elements. There are many ways Xio could have expressed these same concepts. To accept Xio's reasoning would give a copyright defendant free reign to copy another's expression, to pilfer another's creativity, merely by describing that expression in sufficient detail related to a rule or a function. Tetris Holding has given the rules of its game to the public domain, but has kept the rights to its expression. Tetris Holding made specific and deliberate design choices and its product has enjoyed great success; to allow Xio to profit off that expression, and that success, by blatant copying, without offering any originality or ingenuity of its own, defies the very purpose of copyright law. Any game expression can always be defined as relating to a game rule and be defined in such detail that the description of the expression would add nothing to the idea. There was no necessity for Mino to mimic Tetris's expression other than to avoid the difficult task of developing its own take on a known idea.
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Tetris Holding, LLC v. Xio Interactive, Inc., 2012 U.S. Dist. LEXIS 74463 (D NJ, 2012)
The first is Tetris and the second is Mino. Without being told which is which, a common user could not decipher between the two games. Any differences between the two are slight and insignificant. If one has to squint to find distinctions only at a granular level, then the works are likely to be substantially similar. [] There is such similarity between the visual expression of Tetris and Mino that it is akin to literal copying. While there might not have actually been literal copying inasmuch as Xio did not copy the source code and exact images from Tetris, Xio does not dispute that it copied almost all of visual look of Tetris. This leaves one to wonder what Xio believed was protectible expression.
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WPIX, Inc. v. Ivi, Inc., 2012 U.S. App. LEXIS 18155 (2d Cir, 2012)
Communication/public performance: Is internet streaming a public performance? Indeed, ivis actions streaming copyrighted works without permission would drastically change the industry, to plaintiffs detrimentThe absence of a preliminary injunction would encourage current and prospective retransmission rights holders, as well as other Internet services, to follow ivis lead in retransmitting plaintiffs copyrighted programming without their consent. The strength of plaintiffs negotiating platform and business model would decline. The quantity and quality of efforts put into creating television programming, retransmission and advertising revenues, distribution models and schedules - all would be adversely affected. These harms would extend to other copyright holders of television programming. Continued live retransmissions of copyrighted television programming over the Internet without consent would thus threaten to destabilize the entire industry.
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Flava Works, Inc. v. Gunter, 2012 U.S. App. LEXIS 15977, (7th Cir, 2012)
Public performance: is uploading a video to a web site to the public But if the uploaded video is copyrighted, the uploader has (depending on the terms of use) infringed the copyright. A customer of Flava is authorized only to download the video (or if he obtained it on a DVD sold by Flava, to copy it to his computer) for his personal use. If instead he uploaded it to the Internet and so by doing so created a copy (because the downloaded video remains in his computer), he was infringing. One possible interpretation is that uploading plus bookmarking a video is a public performance because it enables a visitor to the website to receive (watch) the performance at will, and the fact that he will be watching it at a different time or in a different place from the other viewers does not affect its publicness, as the statute makes clear. Well call this interpretation, for simplicity, performance by uploading. An alternative interpretation, howevercall it performance by receivingis that the performance occurs only when the work (Flavas video) is transmitted to the viewers computerin other words when it is communicated to the public in a form in which the public can visually or aurally comprehend the work.
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American Broadcasting Companies, Inc. v. Aereo, Inc., 2012 U.S. Dist. LEXIS 70749, (SD NY, 2012)
Communicate/public performance: are on-demand transmissions to the public? Aereo characterizes its system as merely allowing users to rent a remotely located antenna, DVR, and Slingbox-equivalent device, in order to access content they could receive for free and in the same manner merely by installing the same equipment at home. Housing this argument more specifically in the terms defined by Cablevision, Aereo contends that, like the RSDVR system in Cablevision, its system creates unique, userrequested copies that are transmitted only to the particular user that created them and, therefore, its performances are nonpublic. Despite this creative attempt to escape from the express holding of Cablevision, for the reasons discussed below this Court finds itself constrained to reject the approach Plaintiffs urge. Contrary to Plaintiffs' arguments, the copies Aereo's system creates are not materially distinguishable from those in Cablevision, which found that the transmission was made from those copies rather than from the incoming signal. Moreover, Plaintiffs' attempt to distinguish Cablevision based on time-shifting fails when confronted with the reasoning of that case, particularly considering that the Second Circuit's analysis was directly focused on the significance of Cablevision's copies but did not say one word to suggest that time-shifting played any part in its holding. See, contra, Fox Television Studios v BarryDriller Content Systems, Case, No. CV-12-6921, (C.D.Cal. Dec 20, 2012)
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Fox Broadcasting Company Inc. v. Dish Network, L.L.C., 2012 U.S. Dist. LEXIS 169112, (CD Cal, 2012)
Who is responsible for committing the infringing act? It is clear that Dish exercises a degree of discretion over the copying process beyond that which was present in Cablevision. Nevertheless, at this stage of the proceedings, the Court is not satisfied that PTAT has crossed over the line that leads to direct liability. Despite Dish's involvement in the copying process, the fact remains that the user, not Dish, must take the initial step of enabling PTAT after deciding that he or she wants to initiate the recording. The user, then, and not Dish, is the most significant and important cause of the copy. Prosser and Keeton on Torts 42. Accordingly, the Court finds that Fox has not established a likelihood of success on the merits of its claim that PTAT directly infringes on its exclusive right to reproduction.
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Monge v. Maya Magazines, Inc., 2012 U.S. App. LEXIS 16947, (9th Cir. 2012)
Fair use The fair use doctrine has been called the most troublesome in the whole law of copyright. Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661, 662 (2d Cir. 1939) (per curiam). This affirmative defense presumes that unauthorized copying has occurred, and is instead aimed at whether the defendants use was fair In the years following the 1976 Act, courts have decided countless cases involving the fair use doctrine. Some commentators have criticized the factors, labeling them billowing white goo or naught but a fairy tale, echoing courts that threw up their hands because the doctrine is so flexible as virtually to defy definition. Princeton Univ. Press v. Mich. Doc. Servs., Inc., 99 F.3d 1381, 1392 (6th Cir. 1996) (citation omitted). A leading treatise in this area notes that the statute provides no guidance as to the relative weight to be ascribed to each of the listed factors, and, in the end, courts are left with almost complete discretion in determining whether any given factor is present in any particular use. Nimmer on Copyright 13.05[A] (footnotes omitted). We acknowledge the porous nature of the factors but nonetheless recognize that we are obliged to make sense of the doctrine and its predicates See, also, Balsley v. LFP, INC 691 F.3d 747 (6th.Cir.2012)
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Society of Holy Transfiguration Monastery, Inc. v. Gregory, 689 F.3d 29 (1st.Cir. 2012)
Fair use:
Applying this framework, we agree with the Monastery that the Archbishop "profited" from his use of the Works. Regardless of whether the Archbishop's versions generated actual financial income for himself or the Dormition Skete, he benefitted by being able to provide, free of cost,[22] the core text of the Works to members of the Orthodox faith, and by standing to gain at least some recognition within the Orthodox religious community for providing electronic access to identical or almost-identical English translations of these ancient Greek texts. For these reasons, we conclude that as to the first factor, the scales tip in the Monastery's favor.
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Authors Guild, Inc. v. HathiTrust, 2012 U.S. Dist. LEXIS 146169, (SDNY, 2012)
Fair use: The totality of the fair-use factors suggest that copyright law's "goal of promoting the Progress of Science . . . would be better served by allowing the use than by preventing it." Bill Graham, 448 F.3d at 608. The enhanced search capabilities that reveal no in-copyright material, the protection of Defendants' fragile books, and, perhaps most importantly, the unprecedented ability of print-disabled individuals to have an equal opportunity to compete with their sighted peers in the ways imagined by the ADA protect the copies made by Defendants as fair use to the extent that Plaintiffs have established a prima facie case of infringement... I cannot imagine a definition of fair use that would not encompass the transformative uses made by Defendants' MDP and would require that I terminate this invaluable contribution to the progress of science and cultivation of the arts that at the same time effectuates the ideals espoused by the ADA.
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Fox Broadcasting Company Inc. v. Dish Network, L.L.C., 2012 U.S. Dist. LEXIS 169112, (CD Cal, 2012)
Fair use: is time shifting fair use? Here, the parties agree that the Hopper [Whole Home High Definition Digital Video Recorder] is only available to private consumers and the evidence does not suggest that consumers use the PTAT [PrimeTime Anytime] copies for anything other than timeshifting in their homes or on mobile devices. In fact, Fox has identified no specific theory under which individual PTAT users could themselves be liable for copyright infringement without circumventing Sony. In the absence of any evidence of such direct infringement on the part of PTAT users, Dish cannot be responsible for intentionally inducing or encouraging direct infringement, or for profiting from direct infringement while declining to exercise a right to stop or limit it . Grokster, 545 U.S. at 930.
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Fox Broadcasting Company Inc. v. Dish Network, L.L.C., 2012 U.S. Dist. LEXIS 169112, (CD Cal, 2012)
Fair use: Dish also makes QA copies of the primetime line-ups to ensure that AutoHop, when enabled, functions properly on PTAT recordings.... Having considered the fair use factors, the Court finds that, on balance, the QA copies do not constitute a fair use under the Copyright Act. Although they are intermediate copies not ultimately used in any end product, they threaten to reduce the value of the right to copy the Fox Programs and undermine Fox's relationships with licensees who pay for that right. The fact that consumers ultimately use AutoHop in conjunction with PTAT for private home use, a fair use under Sony, does not render the intermediate copies themselves a fair use as well.
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Capitol Records, Inc. v. Thomas-Rasset, 2012 U.S. App. LEXIS 19040 (8th Cir, 2012)
Remedies: statutory damages On the question of damages, we conclude that a statutory damages award of $9,250 for each of the twenty-four infringed songs, for a total of $222,000, does not contravene the Due Process Clause. The district court erred in reducing the third jury's verdict to $2,250 per work, for a total of $54,000, on the ground that this amount was the maximum permitted by the Constitution. Congress's protection of copyrights is not a "special private benefit," but is meant to achieve an important public interest: "to motivate the creative activity of authors and inventors by the provision of a special reward, and to allow the public access to the products of their genius after the limited period of exclusive control has expired....With the rapid advancement of technology, copyright infringement through online file-sharing has become a serious problem in the recording industry. Evidence at trial showed that revenues across the industry decreased by fifty percent between 1999 and 2006, a decline that the record companies attributed to piracy. This decline in revenue caused a corresponding drop in industry jobs and a reduction in the number of artists represented and albums released.
McCarthy Ttrault S.E.N.C.R.L., s.r.l. / mccarthy.ca 12084941
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Flava Works, Inc. v. Gunter, 2012 U.S. App. LEXIS 15977, (7th Cir, 2012)
Infringement: secondary/contributory infringement Is myVidster therefore a contributory infringer if a visitor to its website bookmarks the video and later someone clicks on the bookmark and views the video? myVidster is not just adding a frame around the video screen that the visitor is watching. Like a telephone exchange connecting two telephones, it is providing a connection between the server that hosts the video and the computer of myVidsters visitor. But as long as the visitor makes no copy of the copyrighted video that he is watching, he is not violating the copyright owners exclusive right, conferred by the Copyright Act, to reproduce the copyrighted work in copies and distribute copies of the copyrighted work to the public. But if the public performance is the transmission of the video when the visitor to myVidsters website clicks on the videos thumbnailand viewing begins, there is an argument that even though the video uploader is responsible for the transmitting and not myVidster, myVidster is assisting the transmission by providing the link between the uploader and the viewer, and is thus facilitating public performance. myVidster was not liable for contributing to the transmissions of Flavas videos. This was because there was no admissible evidence that users had actually accessed any of Flavas videos via myVidster, rather than via other websites. Since no videos had actually been accessed by clicking on the inline links created by myVidster, myVidster is not contributing to their performance.
McCarthy Ttrault S.E.N.C.R.L., s.r.l. / mccarthy.ca 12084941
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The Authors Guild v Google, Inc 2012 WL 1951790 (S.D.N.Y. May 31, 2012)
Procedure: class action certification Furthermore, given the sweeping and undiscriminating nature of Google's unauthorized copying, it would be unjust to require that each affected association member litigate his claim individually. When Google copied works, it did not conduct an inquiry into the copyright ownership of each work; nor did it conduct an individualized evaluation as to whether posting "snippets" of a particular work would constitute "fair use." It copied and made search results available en masse. Google cannot now turn the tables and ask the Court to require each copyright holder to come forward individually and assert rights in a separate action. Because Google treated the copyright holders as a group, the copyright holders should be able to litigate on a group basis.
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UK and Commonwealth
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Phonographic Performance Company of Australia Limited v Commonwealth of Australia, [2012] HCA 8 (28 March 2012)
Principles of interpretation: copyright balance The copyright given to authors and makers of records was, as Augustine Birrell said of the copyright granted by the Statute of Anne of 1709, "qualified and time-limited property". Although the categories of protected works were much enlarged by the time of the 1911 Act, speaking generally the 1911 Act, like the Statute of Anne, took into account and balanced the interests of authors, entrepreneurs and the public. The public's interest lay in the dissemination of copyright works, including dissemination on reasonable terms. Any detailed consideration of the historical context of the Statute of Anne supports this construction of its intent and its provisions. Further, presaging compulsory licence schemes, the prices of books under the Statute of Anne were regulated to ensure that they were "just and reasonable" and the uses by, and rights of, nominated libraries and universities in respect of copyright works were preserved. It was settled in Donaldson v Beckett that copyright in published works depended upon statute, not the common law, and that the Statute of Anne limited the exclusive right of an author or owner of the copyright to multiply copies of an original published work so as to balance that right against the public interest in freedom to have access to, and to exploit, such works. It can be noted that the American copyright tradition exemplified in Wheaton v Peters follows Donaldson v Beckett.
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Principle of interpretation: copyright is a negative right A copyright is a purely negative right. Thus, if someone owns a copyright in work, the person can stop others from doing any of the acts included within the owners exclusive rights. But the copyright does not give the owner the positive right to exercise any of the copyright rights. As a negative right, it has been called a power to prevent the making of a physical thing by copying.
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Acohs Pty Ltd v Ucorp Pty Ltd, [2012] FCAFC 16 (2 March 2012)
Subsistence: originality, computer generated works The primary judge reasoned (at [47]), correctly in our view, that there was no a priori reason to deny a body of source code, such as that described, the status of a literary work. The significant question, however, was whether the HTML source code for each identified MSDS, generated and rendered by the Infosafe system as described, was an original literary work for copyright purposes. On appeal the appellant sought to invoke the notion that in any given case of a literary work whose creation has been assisted by computer, the question whether the work has been created by a human author or by human authors is one of fact and degree: Telstra Corporation Ltd v Phone Directories Company Pty Ltd (2010) 194 FCR 142 at [118] per Perram J and [169] per Yates J. To this end, we were taken in the course of argument, to an example of the relevant source code. This example simply confirmed the discrete nature of the source code as a separate work created by the operation of the Infosafe program on other elements entered into the Infosafe system. It did not emanate from authors. It was not an original work in the copyright sense.
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Tonnex International Pty Ltd v Dynamic Supplies Pty Ltd, [2012] FCAFC 162 (16 November 2012)
Subsistence: originality Whether copyright subsists in a compatibility chart, a CSV file with information about
whether types of printer cartridges or other consumables are suitable for use on a particular type of printer or other device. There are several observations to make concerning his Honours assessment of the evidence in relation to the issue of originality. First, the primary judge was careful to distinguish between the skill, judgment and labour required to create and maintain the Navision database from the skill, judgment and labour necessary to create the compatibility chart. Secondly, the primary judge was careful to focus on the intellectual effort brought to bear by Mr Campbell in selecting and arranging the information contained in the compatibility chart. Thirdly, the primary judge rejected Tonnexs argument that, for any practical purpose, the information contained in the compatibility chart could only be expressed in one form. His Honour undertook a detailed examination of the nature of the intellectual effort expended by Mr Campbell in creating the compatibility chart and found that this involved making choices as to what information would or would not be extracted from the Navision database for use in the compatibility chart based upon Mr Campbells appreciation of customers needs.
McCarthy Ttrault S.E.N.C.R.L., s.r.l. / mccarthy.ca 12084941
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Abraham Moon & Sons Ltd v Thornber & Ors, [2012] EWPCC 37 (05 October 2012)
Subsistence: are instructions that produce an artistic work an artistic work? Artistic copyright must relate to the content of the work of the artist and not the medium in which it is recorded. It is or should be a "content" copyright and not a "signal" copyright. The visual image of Skye Sage if it was fixed in a material form as a drawing would be protected by artistic copyright. It seems to me that to deny artistic copyright in this case despite the fact that the visual image is indeed fixed in a material form is to confuse the medium with the message... I find that the Skye Ticket Stamp is an artistic work within s4 of the 1988 Act. I think it is best described as a "graphic work" within s4(1)(a) and 4(2). Mr Turner submitted that terms like "graphic work" should be given their ordinary meaning. I do not think it is doing violence to the language to regard the ticket as a graphic work. It may be of an unusual sort but it is a record of a visual image.
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Temple Island Collections Ltd v. New English Teas Ltd & Anor [2012] EWPCC 1 (12 January 2012)
Infringement: idea expression dichotomy
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Temple Island Collections Ltd v New English Teas Ltd & Anor [2012] EWPCC 1 (12 January 2012)
I have not found this to be an easy question but I have decided that the defendants' work does reproduce a substantial part of the claimant's artistic work. In the end the issue turns on a qualitative assessment of the reproduced elements.... Although the techniques used by Mr Fielder to achieve the effect he did may have been simple, the result has an aesthetic quality about it which is the product of his own work. The blank sky serves to emphasise the buildings and gives the whole image a dramatic appearance and the bright red bus stands out even more prominently. This has been reproduced. The basic composition of the image has the Routemaster driving from right to left on the bridge but there is more to it than that. The bus is actually framed by the building. Although the framing is a little different in Annex 2, to my eye the essence of the framing effect has been reproduced. Although the bus is larger in Annex 2 than Annex 1, in both images the bus roughly in scale with the facade of the Houses of Parliament. Also the riverside facade of the building is a prominent feature. There are no other vehicles clearly visible and although there are some small people visible they are not prominent. This all gives the image an element of simplicity and clarity.
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means that the clear conclusion is that the 1999 Macros are a reproduction of a substantial part of the CA URT Macros, notwithstanding any minor differences.
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Meltwater Holding BV v The Newspaper Licensing Agency Limited, UK Copyright Tribunal, 14 February, 2012
Infringement: what is a substantial part; news clippings? The Google News and Google Alerts services are very similar to the Meltwater News service save of course that it is not paid for by the end user. The articles are identified automatically without human intervention. Unlike Meltwater, Google do not provide a personal service assisting with the search algorithms. Like Meltwater, the link provided by Google is a link to the newspapers website and behaves in the same way (subject to caching (below)). Both Meltwater and Google provide other related services as well and there was some unsatisfactory evidence about a further Google service called Google Reader. This arose as part of an argument about just how similar Meltwaters overall offering may or may not be to Google. It seemed to us to be of peripheral relevance and we will ignore Google Reader.... We find that all three services are based essentially on the same thing identifying relevant articles and sending links to those articles to clients.
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Dramatico Entertainment Ltd & Ors v British Sky Broadcasting Ltd & Ors, [2012] EWHC 1152 (Ch)
Communicate to the public/making available right I turn, therefore, to consider whether such users [of The Pirate Bay] thereby communicate such recordings available to the public. This involves two questions. First, do they communicate the recordings by electronic transmission? In my judgment they do. I consider that they make the recordings available by electronic transmission in such a way that members of the public may access the recordings from a place and at a time individually chosen by them within section 20(2)(b). In any event, however, it is clear from the CJEUs judgment in FA v QC Leisure at [193] that the concept of communication must be construed broadly. Accordingly, I conclude that UK users of TPB infringe the Claimants' copyrights in this way also. This conclusion is consistent with that of the Full Court of the Federal Court of Australia, albeit under a slightly different statutory provision, in Roadshow Films Pty Ltd v iiNet Ltd [2011] FCAFC 23, (2011) 89 IPR 1: see Emmett J at [151]-[158], Jagot J at [322]-[330] and Nicholas J at [664]-[672].
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Hoffman v Drug Abuse Resistance Education (UK) Ltd, [2012] EWPCC 2 (19 January 2012)
Communication/making available right: Does posting of a photo on a website infringe the MAR? Section 20(2)(b) is expressed to include making the work available to the public by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them (see Art 3.1 of the Information Society Directive). In terms of s20(2)(b), in this case the claimant's artistic works have been made available to the public on the defendant's websites by electronic transmission in such a way that members of the public may access the works from a place and at a time individually chosen by them. In terms of the Art 3.1 the claimant's artistic works have been communicated to the public by wire or wireless means and have been made available to the public in such a way that members of the public may access the works from a place and at a time individually chosen by them. Since the websites in issue in this case were the defendant's own websites, and in the absence of any other evidence to the contrary, I find that it is the defendant who has committed the acts restricted by s20/Art 3 in relation to the works on its websites. It seems to me on the paucity of evidence before me, the fact that the websites may have been designed by someone else does not matter. In my judgment the defendant is the person responsible for those sites and is liable under s20/Art 3.
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Government of the United States v ODwyer, Westminister Magistrates Court, 13 January, 2012
Communication to the public: does linking to a work communicate it? I am grateful to both learned counsel for their original and additional written submissions as well as oral argument. Without, I hope, discourtesy the lengthy submissions come to a comparatively narrow dispute. Mr Cooper argues nothing in the instant Request amounts to a basis for saying Richard ODwyer made available copyright material that came from remote websites not the two domain names operated by Richard ODwyer This has necessarily been a lengthy ruling given the arguments and material put forward. A dispassionate appraisal of all matters is the essential function of any court. I acknowledge the endeavours of both learned counsel. I repeat again all matters have been considered even if not expanded upon or cited directly here. That said, for the reasons given, I reject all challenges advanced to this Request. No bars or other challenge being raised or found I send the case to the Secretary of State (for her consideration of the statutory criteria) pursuant to Section 87(3) Ex Act 2003. Richard ODwyer has the right to pursue an appeal to the High Court so long as it is submitted in time and in proper form (s 103 Ex Act 2003) but cannot be heard until after the Secretary of State has confirmed an order for extradition.
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National Rugby League Investments Pty Limited v Singtel Optus Pty Ltd, [2012] FCAFC 59 (April 2012)
Infringement: who is responsible for the infringing act? Legality of TV Now service enables a subscriber to have free to air television programmes recorded as and when broadcast and then played back at the time (or times) of the subscribers choosing on the subscribers compatible Optus mobile device or personal computer. we consider that Optus role in the making of a copy ie in capturing the broadcast and then in embodying its images and sounds in the hard disk is so pervasive that, even though entirely automated, it cannot be disregarded when the person who does the act of copying is to be identified. So one comes back to the question of construction raised by the word make and its application in the present setting. As we have indicated, Optus not only has solicited subscriber utilisation of its Service, it has also designed and maintained a sophisticated system which can effectuate the making of recordings wanted for viewing by subscribers. For s 101 purposes, it manifestly is involved directly in doing the act of copying. It counts as a maker of copies for the subscriber. Does the subscriber as well?
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National Rugby League Investments Pty Limited v Singtel Optus Pty Ltd, [2012] FCAFC 59 (April 2012) focussed not only upon the automated service which is held out as able to If one
produce, and which actually produces, the copies but also on the causative agency that is responsible for the copies being made at all, the need for a more complex characterisation is suggested. The subscriber, by selecting the programme to be copied and by confirming that it is to be copied, can properly be said to be the person who instigates the copying. Yet it is Optus which effects it. Without the concerted actions of both there would be no copy made of a football match for the subscriber. Without the subscribers involvement, nothing would be created; without Optus involvement nothing would be copied. They have needed to act in concert to produce they each have contributed to a commonly desired outcome. The subscribers contributing acts were envisaged by the contractual terms and conditions. How they were to be done were indicated by the prompts given on the Optus TV Now TV guide page. The common design the production of the selected programme for transmission to the subscriber informed the solicitation and the taking of a subscription by the subscriber; it was immanent in the service to be provided. In consequence, they could both properly be said to be jointly and severally responsible for the act of making the copies.
McCarthy Ttrault S.E.N.C.R.L., s.r.l. / mccarthy.ca 12084941
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Abraham Moon & Sons Ltd v Thornber & Ors, [2012] EWPCC 37 (05 October 2012)
Infringement: can an artistic work infringe the copyright in a literary work? I do not propose to go down the road suggested by Ms EdwardsStuart to the extent of denying the existence of differences between literary and artistic works. At this stage of the case I am concerned with literary copyright. As a literary work the Skye Ticket Stamp embodies a series of instructions which define how to make something. In my judgment it is just not accurate to say that this Spring Meadow fabric is a reproduction of this literary work. It is not a copy of the instructions. Although the Spring Meadow ticket is an infringing copy of the Skye Ticket Stamp, I find that the Spring Meadow fabric is not.
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Dramatico Entertainment Ltd & Ors v British Sky Broadcasting Ltd & Ors, [2012] EWHC 1152 (Ch)
Infringement: authorization/secondary liability Conclusion. In my judgment, the operators of TPB do authorise its users' infringing acts of copying and communication to the public. They go far beyond merely enabling or assisting. On any view, they "sanction, approve and countenance" the infringements of copyright committed by its users. But in my view they also purport to grant users the right to do the acts complained of. It is no defence that they openly defy the rights of the copyright owners. I would add that I consider the present case to be indistinguishable from20C Fox v Newzbin in this respect. If anything, it is a stronger case. In the present case, the matters I have considered in relation to authorisation lead to the conclusion that the operators of TPB induce, incite or persuade its users to commit infringements of copyright, and that they and the users act pursuant to a common design to infringe. It is also relevant in this regard that the operators profit from their activities. Thus they are jointly liable for the infringements committed by users.
McCarthy Ttrault S.E.N.C.R.L., s.r.l. / mccarthy.ca 12084941
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Roadshow Films Pty Ltd v iiNet Ltd, [2012] HCA 16 (20 April 2012)
Infringement: authorization For the reasons that follow, in our opinion, the conduct of iiNet did not constitute authorisation of its customers infringing acts. The appellants submission, that iiNet should be taken to have authorised the infringements unless it took measures with respect to its customers, assumes obligations on the part of an ISP which the Copyright Act does not impose. A consideration of the factors listed in s 101(1A) does not permit a conclusion that iiNet is to be held liable as having authorised the infringements.
95
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Acohs Pty Ltd v Ucorp Pty Ltd [2012] FCAFC 16 (2 March 2012)
Implies licenses In the present case the parties treated the licence as arising as a matter of law in a particular class of contract between an MIS and a service provider, such as the appellant or the first respondent: cf Concrete at [18]. Necessity, in that context, means necessary for the reasonable or effective operation of all contracts of that particular class lest the enjoyment of rights be rendered nugatory, worthless, or, perhaps, be seriously undermined: Byrne at 450; see also Concrete at [59]. The implication of such terms is to be distinguished from terms implied in the circumstances of the particular case to give business efficacy to the contract. In that latter category of case the terms implied are unique to the particular contract in question, depending upon the form of the contract, the express terms and the surrounding circumstances: Byrne at 448. In those cases, the implication is taken to reflect the actual intention of the parties. In cases of contracts of a particular class, wider considerations are at play and the term is implied as a legal incident of such contracts.
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Golden Eye (International) Ltd & Ors v Telefnica UK Litd & Anor [2012] EWCA Civ 1740 (21 December 2012)
Infringement: obtaining identities of alleged infringers In my judgment the correct approach to considering proportionality can be summarised in the following propositions. First, the Claimants' copyrights are property rights protected by Article 1 of the First Protocol to the ECHR and intellectual property rights within Article 17(2) of the Charter. Secondly, the right to privacy under Article 8(1) ECHR/Article 7 of the Charter and the right to the protection of personal data under Article 8 of the Charter are engaged by the present claim. Thirdly, the Claimants' copyrights are "rights of others" within Article 8(2) ECHR/Article 52(1) of the Charter. Fourthly, the approach laid down by Lord Steyn where both Article 8 and Article 10 ECHR rights are involved in Re S [2004] UKHL 47, [2005] 1 AC 593 at [17] is also applicable where a balance falls to be struck between Article 1 of the First Protocol/Article 17(2) of the Charter on the one hand and Article 8 ECHR/Article 7 of the Charter and Article 8 of the Charter on the other hand. That approach is as follows: (i) neither Article as such has precedence over the other; (ii) where the values under the two Articles are in conflict, an intense focus on the comparative importance of the specific rights being claimed in the individual case is necessary; (iii) the justifications for interfering with or restricting each right must be taken into account; (iv) finally, the proportionality test or "ultimate balancing test" - must be applied to each. Statement on Norwich orders approved in Rugby Football Union v Consolidated Information Services Limited [2012] UKSC 55
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EMI Records (Ireland) Ltd & Ors v The Data Protection Commissioner, [2012] IEHC 264
Infringement: obtaining identities of alleged infringers "An activity of swarm participation for peer-to-peer downloading does not legitimately carry the expectation of privacy. It is flying in the face of commonsense for the Data Protection Commissioner to equate participation in an open communication with all comers on the internet for the purpose of illegal downloading of copyright material with interception, with tapping or with listening. Those concepts are rightly to be deprecated as illegal in circumstances of privacy. That is not the situation here: there is no legitimate reposing of trust pursuant to contract or reasonable expectation that when a person goes on the internet with a view to uploading or downloading what does not belong to them. That circumstance does not give rise to any constitutional entitlement or human right to remain immune from a music company also participating in that open forum to discover the economic damage that is being done to it and to creative artists. The interest of music companies is proper and proportionate. It is beyond doubt that while each individual act of copying, in itself, does little damage the reproduction of that activity by millions repeated over time is industrial in scale. The response of internet service providers of doing nothing perhaps reflects the greater economic strength of intermediaries as compared to creative people or recording companies. There is also the immeasurable and disproportionate power of these peer-to-peer swarms which are increasingly rendering the entitlement to those on whom creativity depends to no consideration.
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Wilkinson v London Strategic Health Authority [2012] EWPCC 48 (14 November 2012)
Assignments of copyright Where the first assignment in time is of the later work, then its effect will depend on its construction but prima facie an assignee of the copyright in the later work can maintain an action for infringement against a person using the first work to the extent it can be said to reproduce the later work.1 This is on the basis that the assignment of the second work must generally be taken to include an assignment of the copyright in the preceding works to the extent that they are found in the final work. Otherwise the assignment would be valueless if confined only to what was new in the final work. The assignment could of course be expressly framed to have this effect. Quoting Copinger (16th Ed) in paragraph 5-93.
101
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Infopaq International A/S v Danske Dagblades Forening, Case C-302/10 January 17, 2012
Article 5(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as meaning that the acts of temporary reproduction carried out during a data capture process, such as those in issue in the main proceedings, fulfil the condition that those acts must constitute an integral and essential part of a technological process, notwithstanding the fact that they initiate and terminate that process and involve human intervention; fulfil the condition that those acts of reproduction must pursue a sole purpose, namely to enable the lawful use of a protected work or a protected subject-matter; fulfil the condition that those acts must not have an independent economic significance provided, first, that the implementation of those acts does not enable the generation of an additional profit going beyond that derived from the lawful use of the protected work and, secondly, that the acts of temporary reproduction do not lead to a modification of that work.
McCarthy Ttrault S.E.N.C.R.L., s.r.l. / mccarthy.ca 12084941
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Martin Luksan v. Petrus van der Let, Case C-277/10, 9 February, 2012
rights to exploit a cinematographic work such as those at issue in the main proceedings (reproduction right, satellite broadcasting right and any other right of communication to the public through the making available to the public) vest by operation of law, directly and originally, in the principal director. Consequently, those provisions must be interpreted as precluding national legislation which allocates those exploitation rights by operation of law exclusively to the producer of the work in question.
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Football Dataco Ltd and Ors v. Yahoo! UK and Ors., Case C-604/10, 1 March 2012
Article 3(1) of Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases must be interpreted as meaning that a database within the meaning of Article 1(2) of that directive is protected by the copyright laid down by that directive provided that the selection or arrangement of the data which it contains amounts to an original expression of the creative freedom of its author, which is a matter for the national court to determine. As a consequence: the intellectual effort and skill of creating that data are not relevant in order to assess the eligibility of that database for protection by that right; it is irrelevant, for that purpose, whether or not the selection or arrangement of that data includes the addition of important significance to that data, and the significant labour and skill required for setting up that database cannot as such justify such a protection if they do not express any originality in the selection or arrangement of the data which that database contains. Directive 96/9 must be interpreted as meaning that, subject to the transitional provision contained in Article 14(2) of that directive, it precludes national legislation which grants databases, as defined in Article 1(2) of the directive, copyright protection under conditions which are different to those set out in Article 3(1) of the directive.
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As regards, to begin with, the indeterminate nature of the public, the Court has observed that, according to the definition of the concept of communication to the public given by the WIPO glossary, which, while not legally binding, none the less sheds light on the interpretation of the concept of public, it means making a work perceptible in any appropriate manner to persons in general, that is, not restricted to specific individuals belonging to a private group.
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Societ Consortile Fonografici (SCF) v Marco Del Corso, Case C-135/10, 15 March 2012
As is clear from the explanatory memorandum to the Proposal for Directive 2001/29 (COM(97) 628), confirmed by recital 25 of that directive, making available to the public, for the purposes of that provision, is intended to refer to interactive on-demand transmissions characterised by the fact that members of the public may access them from a place and at a time individually chosen by them. According to the decision for reference, the issue in the main proceedings is the broadcasting of music in a dental practice for the benefit of the patients present and not interactive on-demand transmission. The concept of communication to the public for the purposes of Article 8(2) of Directive 92/100 must be interpreted as meaning that it does not cover the broadcasting, free of charge, of phonograms within private dental practices engaged in professional economic activity, such as the one at issue in the main proceedings, for the benefit of patients of those practices and enjoyed by them without any active choice on their part. Therefore such an act of transmission does not entitle the phonogram producers to the payment of remuneration.
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Bonnier Audio et al. v Perfect Communication Sweden AB, Case C-461/10, 19 April, 2012
Directive 2006/24/EC of the European Parliament and of the Council of 15 March 2006 must be interpreted as not precluding the application of national legislationin order to identify an internet subscriber or user, permits an internet service provider in civil proceedings to be ordered to give a copyright holder or its representative information on the subscriber to whom the internet service provider provided an IP address which was allegedly used in an infringement Directives 2002/58/EC of the European Parliament and of the Council of 12 July 2002 concerning the processing of personal data and the protection of privacy in the electronic communications sector (Directive on privacy and electronic communications) and 2004/48 must be interpreted as not precluding national legislation such as that at issue in the main proceedings insofar as that legislation enables the national court seised of an application for an order for disclosure of personal data, made by a person who is entitled to act, to weigh the conflicting interests involved, on the basis of the facts of each case and taking due account of the requirements of the principle of proportionality.
McCarthy Ttrault S.E.N.C.R.L., s.r.l. / mccarthy.ca 12084941
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DR and TV2 Danmark v NCB - Nordisk Copyright Bureau, Case C-510/10, 26 April, 2012
For the purposes of ascertaining whether a recording made by a broadcasting organisation, for its own broadcasts, with the facilities of a third party, is covered by the exception laid down in Article 5(2)(d) of Directive 2001/29 in respect of ephemeral recordings, it is for the national court to assess whether, in the circumstances of the dispute in the main proceedings, that party may be regarded as acting specifically on behalf of the broadcasting organisation or, at the very least, under the responsibility of that organisation. As regards whether that party may be regarded as acting under the responsibility of the broadcasting organisation, it is essential that, vis--vis other persons, among others the authors who may be harmed by an unlawful recording of their works, the broadcasting organisation is required to pay compensation for any adverse effects of the acts and omissions of the third party, such as a legally independent external television production company, connected with the recording in question, as if the broadcasting organisation had itself carried out those acts and made those omissions.
McCarthy Ttrault S.E.N.C.R.L., s.r.l. / mccarthy.ca 12084941
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GEMA v YouTube Hamburg Regional Court, Case 310 O 461/10, 20 April, 2012
Relevant to evaluating whether the operator of an Internet site has appropriated the content accessible on it is an objective consideration based on the foundation of reviewing all relevant circumstances. In doing so, it is relevant whether a prudent Internet user is given the impression that the Internet sites operator is also responsible for the content on the site. The circumstance alone that it is recognizable that the content does not originate from the Internet sites operator does not necessarily exclude the content being attributed to the operator (see German Supreme Court ruling dated 12/11/2009, file ref.: I ZR 166/07 marions-kochbuch, GRUR 2010, 616/618 marg. no. 23, 24, 27). Within the scope of this requisite overall review, it especially must be checked whether the Defendant has editorial control regarding uploaded content, whether the way the content is presented infers that the Defendant appropriates it, whether the videos named are among the Internet sites core editorial content, and whether the Defendant assumes economic benefit from the videos, e.g. by having comprehensive exploitation rights conceded to it for its own commercial exploitation. According to a ruling by the German Supreme Court, anyone who without being perpetrator or participant in any way willingly and adequately causally contributes to a rights infringement can fundamentally be subject to a negligence claim as Strer.
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GEMA v YouTube Hamburg Regional Court, Case 310 O 461/10, 20 April, 2012
Since Strer liability may not be unduly placed upon third parties who did not commit the illegal encroachment themselves, Strer liability is contingent upon the infringement of reasonable conduct obligations according to the German Supreme Courts ruling, especially a breach of auditing obligations. Whether and the extent to which it is reasonable to expect a Strer against whom a claim has been made to perform audits is based on the corresponding circumstances of the individual case in consideration of its function, duties, and the own authority of the party that performed the illegal encroachment directlyAccording to these standards, it fundamentally is not reasonable to expect of the operator of a commercial Internet platform to audit every offering prior to publishing on the Internet for potential rights infringement. If, however, a reference is made to a clear rights infringement, then the operator does not have to block the concrete offering immediately, but rather must undertake precautionary measures so that further rights infringements of the same nature do not occur to the extent possible. Court ordered YouTube to use its content ID and a keyword filtering system to prevent identified infringing videos to be posted on the site.
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GEMA v YouTube Hamburg Regional Court, Case 310 O 461/10, 20 April, 2012
According to the German Supreme Courts ruling, no controlling measures can be reasonably expected of the operator of an Internet auction platform that would not track down suspected cases of rights infringement using filter software. Thus, filter software that can track down suspected cases must be available to the operator. The use of filter software that tracks down suspected cases by entering corresponding search terms, which may then have to be checked manually, however, cannot be reasonably expected according to the ruling by the BGH. The threshold of reasonably expectable, however, is reached when there are no properties suitable for entry into a search system.
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Underlines in quotes may reflect emphasis added. Some quotes were translated from original source.
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