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European IP Bulletin, Issue 1, April 2003 - Copyrights

COPYRIGHT

‘Young at Heart’ Copyright Claim Upheld

Beckingham v Hodgens, (CA, 19 February 2003) upheld a successful claim by session violinist ‘Bobby Valentino’ to be joint author of the song ‘Young at Heart’, performed and recorded by the Bluebells in 1984. The case looked at joint authorship and estoppel.

Having had limited success on its first release the song re-entered the charts in 1993 after being used for a Volkswagen commercial. Valentino then asserted his claim to authorship and to royalties flowing from the second wave of success. In July 2002, Christopher Floyd, QC, found for Valentino, accepting that in 1993 he had revoked an earlier consent for the band to use the song and stated

‘I see no reason why Mr Valentino should not be entitled to say … "I have let you have free use of my composition until now. But this new success is different, and I claim my share of it".’ [2002] EMLR 45 (see Worth Fiddling About – Joint Ownership of Copyright, R. Massey, [2002] 125 Copyright World 7) The Court of Appeal reviewed two aspects of the deputy judge’s decision.

1. Joint authorship

Mr Hodgens, a defendant, challenged his interpretation of section 11(3) of the Copyright Act 1956. s11(3), which has been carried over with a slight change of wording into s10(1) of the Copyright Designs and Patents Act 1988, provided that a "work of joint authorship" meant "a work produced by the collaboration of two or more authors in which the contribution of each author is not separate from the contribution of the other author or authors." It was argued - relying upon a Canadian case, Darryl Neudorf v Network Expressions [1999] RPC 935 – that a common design to produce a work of joint authorship was required under s11(3). The Court of Appeal disagreed, holding that whilst a common intention to produce a work must be a feature of ‘collaboration’, there was no need to establish joint authorial intent.

2. Estoppel

This was the argument that, having allowed the band to use the song at an earlier stage, it would be unconscionable for Valentino to "jump on the bandwagon" and assert his rights later. A leading case on this point is Taylor’s Fashions Ltd v Liverpool Victoria Trustees [1982] 1 QB 133. To establish estoppel, it must be shown that the other party relied upon a representation to his detriment. Again, the Court of Appeal rejected the defendant’s arguments.

Thus, the Court of Appeal has taken a reasonably broad approach towards assessing joint authorship. As with the recent case Peter Hayes v Phonogram Ltd [2002] EwHC 2062 (Ch) (discussed in Copyright in the Mix, A. Sharples [2003] Ent LR 50) this highlights the importance of setting out clear contractual provisions when multiple authors are responsible for a musical work. This is particularly true given the increasing trend of the last few years for recycling pieces of music.

Sony Music Entertainment (UK) Limited v. Easyinternetcafe Limited [2003] EWHC 62 (Ch)

The CD copying service offered by Easyinternetcafe Limited, an Easyjet affiliated internet café company, assisted infringement of copyright under sections 17(1) and 18(1) of the Copyright Designs and Patents Act 1988 (CDPA 1988). The judgment also considered a defence under s70 of the CDPA 1988 (time shifting).

The claimants in the case were Sony Music Entertainment (UK) Limited, Sony Music Entertainment Inc, Polydor Limited, UMG Recordings Inc. and Virgin Records Limited. Sony, Polydor and Virgin sued not only on their own behalf but also on the behalf of other members of the British Phonographic Industry Limited.

Easyinternetcafe offered a service to customers whereby they could copy files, including sound recording files, downloaded from the internet onto a CD-R (record able compact disc) in return for a fee of £5.00.

The claimants in the case contended that the downloading of sound recordings from the internet without the consent of the copyright owner was an infringement of copyright under s17(1) and s18(1) of the CDPA 1988. Easyinternetcafe did not dispute that such action as outlined above would infringe copyright, subject to the statutory defence under s70 CDPA 1988. However, the defendant denied that the simple virtue of the process would lead to such infringement.

A point at issue in the consideration of the case was whether customers copying sound recordings onto CD’s could have uploaded the files from a separate floppy disk. In oral submission it was submitted by representation for the claimants that even if there was an uploading from material provided by a customer, the inference to be drawn was that the uploaded material nevertheless resulted in the production of an infringing copy CD. On the basis of this statement the claimants considered an application to amend at request of representation for the defendants, but decided not to proceed. Therefore, central to the claimants’ case was the establishment of the fact of material being downloaded from the internet. Smith J concluded that the material was downloaded and, prima facie, was downloaded in an unauthorised manner.

As evidence, Easyinternetcafe submitted that they implemented a policy whereby the contents of a CD-R were protected against staff investigation, unless explicitly allowed by the customer. The Easyinternetcafe customer logon process also included warnings against copyright infringement.

The defence argued that Easyinternetcafe merely facilitated the infringement by providing means by which the copying was made, similar to a situation whereby the owner B of a fax machine is held to have infringed copyright because A faxes infringing copy to that machine. The defence also provided the analogy of an internet service provider (ISP) providing the technology for transmission or storage of infringing copy. In response Smith J found fault with this argument pointing out that liability for infringement under s17 and s18 is strict. Distinguishing between voluntary and involuntary actions, Smith J also pointed out that the owner of a fax machine in the aforementioned scenario is an involuntary copier, as is the ISP. The defendants, he pointed out, had taken the entirely voluntary action of deciding to keep confidential the files of individual customers by informing employees not to look at them unless the customer consents.

Smith J held that a defence under s70 (recording for the purposes of time shifting) was impossible. The two issues arising from reliance on s70 are first, that the copying must be examined to determine whether it was for "private and domestic use" and second that material on the internet must be considered a "cable programme or any work included in it". No evidence was adduced to illustrate that copying was undertaken for private or domestic purposes, the burden of which was entirely on the defendant. In addition, the fact that the defendant was involved in the copying exercise for pecuniary benefit was contrary to the nature of the exception. The copying is facilitated by the defendant for profit, not for time-shifting purposes in a private and domestic scenario. Given the failure of the defence in providing evidence regarding the first issue, Smith J considered it unnecessary to decide whether or not the internet is a cable programme for the purposes of s70.

Norwegian Copy Protection Case Judgment -Circumvention of Copy Protection Devices Not Held Criminally Unlawful

On January 9 2003, a Norwegian Criminal Court acquitted John Lech Johansen of charges under the Norwegian Criminal Code relating to circumventing technical control measures that protect data, after he had succeeded in circumventing a copy protection system employed by the motion picture industry to protect DVD’s

In 1999, Johansen, a computer programmer, succeeded in circumventing a technical protection system called Content Scramble System (CSS) that was employed by the film industry to protect movies distributed on Digital Versatile Discs (DVD). CSS, designed to control the distribution and use of DVD media, requires that purchasers of DVD movies use a DVD player to decrypt and watch the disc. Companies who wish to manufacture DVD players must have licence to use "play keys", the keys required to decrypt CSS encryption. Such keys are licensed by the DVD Copy Control Association on the condition that licensees observe strict confidentiality as to the keys and the keys are implemented in the player software in a manner which prevents use or retrieval.

The Linux operating system is founded on an open source philosophy, which ensures that users can freely explore and develop the system. As such producers of software for the Linux operating system could not accept the terms that would be imposed if they engaged in an agreement to use "play keys" for manufacture of a DVD player for Linux operating system. Johansen wished to play DVD movies on his computer using a Linux operating system. Johansen designed a program entitled DeCSS that allowed a non-protected copy of a CSS protected DVD movie to be created. DeCSS was distributed via the internet several times by Johansen in the period September 1999 to January 2000.

In January 2000, the Motion Pictures Association of the United States and the DVD Copy Control Association jointly reported Johansen to the Norwegian Economic Crime Unit, Økokrim. Subsequently, Johansen was charged under section 145(2) of the Criminal Code, which prohibits "breaking a protection or similarly gained access to data stored or communicated by electronic means or other technical means, and having caused damage by availing himself of or use of such unauthorised knowledge or having co-operated to this".

The court accepted that DeCSS makes a decrypted copy of an encrypted movie, storing it on the hard drive of a computer. However, the issue of guilt was inextricably linked to that of unauthorised access. On this issue of access, the court stated that the gaining of access to certain data may not be that presumed by the producer of the data, but may nonetheless be considered authorised. Finding that a person purchasing a DVD movie, which is legally produced, is authorised to see the movie, the court went on to state that the use of DeCSS gives the user access to the movie in a decrypted form.

On the issue of access the court concluded that Johansen could not be convicted for co-operation to the violation of the penal code s 145(2) with respect to accessing the movies. This holds even though Johansen knew that the program could be misused and also holds for anyone who distributes goods which may be put to lawful or unlawful use.

On a separate issue of access to play keys, the Court found that Johansen could not be convicted for co-operation to the violation of the penal code s 145(2) with respect to the play keys.

Økokrim have appealed the judgment.

On a related issue, the California Supreme Court has recently upheld the right of Andrew Bunner, a California resident to distribute DeCSS on the internet when it found that a "prohibition on future disclosures of DeCSS was a prior restraint on Bunner’s First Amendment right to publish".

IFPI Address Copyright Infringement

The International Federation for the Phonographic Industry (IFPI) has published a Copyright Use and Security Guide for businesses and governments. Addressing the problem of copyright theft in the corporate and government environment, the publication proposes certain best practice and policy considerations.

The Guide suggests a number of activities that institutions can undertake in order to mitigate the potential for both legal and security risks. They advocate the establishment of clear internal policies for employees using computer and network technology for company or government business. They suggest that such guidelines could be outlined in a general policy manual, or in the terms and conditions of employment. The IFPI guidelines also suggest the establishment of internal inventories of all types of copyright material held on internal computing systems, in the same manner as an internal audit. This should operate alongside the deletion of unauthorised copies of copyright material, since commercial recordings of music are "virtually never licensed for corporate or other multiple copying or licensed for Internet distribution except through recognised, legitimate music services".

Finally, the IFPI proposes increased use of internal technological exclusionary and management measures and the creation of internal copyright compliance officers.

The publication of these guidelines by the IFPI can be seen as a practical step in realising the policy proposals put forward by a variety of entertainment industry representative organisations regarding greater education of copyright law. Such proposals have been advanced given the difficulties in legislating on digital copyright law. The practical effect of such guidelines remains to be seen.

Lego Co v Coko Toy Co. - Industrial Copyright Decision in the People’s Republic of China

The Lego Co., the Danish toy manufacturer, won a copyright infringement proceeding on applied art (or industrial design) initiated in 1999 in the China High People’s Court whereby the defendant, Coko Toy Co., a Chinese company, was held liable for the unauthorised use of 33 out of 50 copyright elements owned by Lego Co., though with slight modification. The Defendant was ordered to destroy the relevant moulding equipment, to print a formal apology and to pay compensation.

The question of whether works of applied art should be protected by design and/or patent rights or copyright has long been recognised in many jurisdictions as a difficult and complex area. Likewise, China is lacking in well-established legislation on the protection of applied art. The only legislative basis is its 1992 State Council regulation, intended to enable conformation with international treaties, mainly the Berne Convention (which was never tested in the Chinese courts), as opposed to design/patent law that is relied upon by most. In this case, the court rejected the defendant’s argument that only patent law applied to the work of applied art.

The significance of this case is to make dual protection for works of applied art possible under the ordinary heading of design rights (Patent Law 1995) which lasts for 10 years and stimulates the new heading under copyright protection, which does not require registration and has a longer life span of 25 years. However, this is arguably an unusual case, and there is still uncertainty in its application and scope of extension. Nevertheless, it is an encouraging step, creating new grounds of argument.

The decision provides companies with a useful alternative to enforcement through the common administrative channels. Many view this decision as a positive progression by the Chinese court which affirms its willingness in implementing and enforcing intellectual property rights. It is also a sign of optimism regarding the future, following China's accession to the WTO.

Finnish Update on Copyright Issues

Three issues are reported, unauthorised sub-titles for films, the rejection of proposed domestic legislation relating to copyright infringement based on the EC Copyright Directive (2001/29/EC) and a law governing ISP’s on the internet.

The New Year brought a flurry of activity in Finland. The Finnish copyright organisation, Finsubsa Kopiosto, forced a website that made available Finnish language subtitles for films, to close. On 23 January Finsubs ceased publishing on the Internet after Kopiosto warned that it violated the copyright of its members. Even though many of the subtitles were translated by enthusiasts directly from films rather than copied from DVDs, Kopiosto warned that film industry copyrights were breached as it is also illegal to publish unauthorised translations of film scripts.

On 31 January, the Finnish Parliament returned the proposal to implement the European Directive on Copyright and Related Rights in the Information Society (Directive 2001/29/EC) to the government for revision. Mr Jyrki Katainen, a member of the parliamentary committee on Education and Culture and Vice Chairman of the Conservative Party, revealed that the reason behind this rarely implemented procedure was a lack of clarity in the detail of the draft law. "An unclear law with criminal sanctions of up to two years in prison [for circumventing copyright protection] would have formed a serious risk to unintended citizens", he said. Only Greece and Denmark met the 22 December 2002 deadline for implementing the Directive.

On 17 February, the Finnish Parliament passed a "Law on Liabilities in Public Communications" (HE 54/2002 vp) but only after its Constitutional Committee requested substantial revisions to the government's original proposal. The modified law now explicitly states that the principle of freedom of expression has priority in interpreting the law. Other changes include a reduction in the period of time for Internet Service Providers to archive material (from three months to three weeks) and a requirement to log internet traffic was dropped.

The Finnish position reflects that of many member states concerned about finding the correct balance between the extent of protection that must be offered to the media and entertainment industries and the freedom from restriction that consumers deserve. In the UK the self imposed deadline for implementation of 31 March 2003 will be missed as solutions are sought to the issues raised during last year’s consultation process. However, the UK Patent Office remains committed to implementing the Directive as soon as possible and hopes to produce a draft Statutory Instrument to be laid before Parliament by late Spring.

 

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