1709 Blog: for all the copyright community

Friday, 12 February 2016

Does Kendall Jenner Have a Laser Sharp Right to Publicity Claim?

On February 10, 2016, Kendall Jenner and Kendall Jenner, Inc., filed a right of publicity and trademark infringement suit in the Central District of California against Cutera, a provider of laser dermatological treatments. The case is Kendall Jenner Inc. v. Cutera, CD California, 16-00936.

Who is Kendall Jenner? Well, she is “one of the one of the world’s most popular supermodels” [sic] as the complaint explains (or hiccups?). She has “graced the covers of the world’s most prestigious fashion magazines” and “walked the runways for the elite of the fashion world.” She also is a “successful clothing designer” and a “well-known television personality” as the Keeping Up with the Kardashians reality show airs “in over 160 countries worldwide” (you read that right).

If all these achievements would not be enough, Ms. Jenner is also “one of the largest social media presences of any young woman of her generation,” with over 48 million followers on Instagram, over 15 million followers on Twitter, and some 12 million “likes” on Facebook. Wouldn’t it be nice if Ms. Jenner tweeted about this blog post?

Defendant Cutera is, according to the complaint, a “designer of medical aesthetic applications.” One of its products is Laser Genesis, a laser treatment which dermatologists may use to rid their patients of spider veins, dark spots, wrinkles, razor bumps and other skin defects.

Just before the beginning of Fashion Week in New York, Cutera started advertising early February the Laser Genesis treatment in New York, particularly “outside New York skin care centers.” The ad features a picture of Plaintiff on the right side and reads at the top: Acne “Completely Ruined” Kendall Jenner’s Self-Esteem. The ad further claims that Laser Genesis is responsible for Plaintiff’s “nearly flawless skin.” The ad has also allegedly been distributed in California, around the U.S. and even around the world.

Alas, Defendant had allegedly not sought permission to use Plaintiff’s name and likeness. If this is proven, it would clearly be an infringement of Ms. Jenner right of publicity.

As this blog concentrates on copyright, I will not address the trademark infringement claim. Let’s just note that Plaintiff owns the KENDALL JENNER registered trademark in class 35 for “advertising services, namely, promoting the brands, goods and services of others” and “endorsement services, namely, promoting the goods and services of others.” The complaint alleges that Cutera’s ad is likely to create consumers ‘confusion, and capitalizes on Plaintiff’s good will. The complaint also alleges that the ad confuses the public to mistakenly beleive that the famous model sponsors, endorses and is somewhat associated with Cutera, which would be a false association or endorsement under 15 U.S.C. § 1125(a).

Plaintiffs claim that Defendant has violated Ms. Jenner’s right to publicity, as protected by California Civil Code § 3344. The complaint does not elaborate on the right to publicity claim, but indicates that “Plaintiffs have suffered and will continue to suffer damages in an amount to be proven at trial, but not less than a number well into eight figures.”

Indeed, it is obvious that it is Ms. Jenner who is pictured on the ad, and therefore she is, under the California statute, “readily identifiable from a photograph when one who views the photograph with the naked eye can reasonably determine that the person depicted in the photograph is the same person who is complaining of its unauthorized use” (the ad is pictured p. 11 of the complaint).

There is no doubt that the ad is using Plaintiff’s name and likeness under California right to publicity statute “for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services.” Consent would be a defense, but it does not appear to be available to Defendant in this case.

The complaint does not mention it, but Cutera tweeted in November 2015: “Have you heard? Kendall Jenner Admits to Getting #cutera #lasergenesis!” with a link to an blog post on the supermarket checkout gossip magazine Life & Style site, which in turn quoted a statement allegedly made by Ms. Jenner on her website. The link to this page on Ms. Jenner’s site now returns a 404 error message and the page seems to have been recently taken down, if one refers to the Internet Archive site. However, even if it would be true that Ms. Jenner had mentioned Laser Genesis on her website, this would not be an endorsement, only the expression of her opinion. Indeed, if she had mentioned it on her site and not disclose that she had been compensated for the endorsement, it would have been a breach of the Federal Trade Commission Endorsement Guides. However, the part of the ad which quotes her as saying that acne “completely ruined” her life may be protected by the First Amendment, even if Ms. Jenner did not consent to its use , but that would be quite a stretch.

The complaint claims 10 million dollars in damages and further claims that, as Defendant has acted “willfully, maliciously, and oppressively,” Plaintiffs are thus entitled to punitive and exemplary damages as well. The case is likely to settle before going to trial.

Image is courtesy of Flickr User Brian Bald Under a CC BY-NC 2.0 License

Thursday, 11 February 2016

Hoops, Tattoos, and Video Games

Football season ended in the U.S. last Sunday with the Super Bowl (Denver won), and baseball season (alas!) has not started yet. Basketball season is in full bloom (go Knicks!), but will end in the Spring.

But basketball fans may assuage their end-of-season blues by playing basketball video games all year long. These games features digital versions of the current players, and thus are regularly updated. Last fall, video game company 2K Games, Inc. (2K) released the 2016 version of its annual basketball video game, NBA 2K16. Four million copies were sold its first week on the market.

The game reproduces the likeness of basketball players. Some of them, LeBron James, Kobe Bryant, Eric Bledsoe, DeAndre Jordan, and Kenyon Martin sport tattoos in real life, and their digital representation sport the same tattoos in the NBA 2K16 game, as they already did in the NBA 2K14 and the NBA 2K15 games.

The design of these tattoos had been created by several artists who later signed licensing agreements with Solid Oaks Sketches, LLC. (Solid Oaks). Following the release of the NBA 2K14 and NB 2K15, Solid Oaks engaged in a negotiation with 2K in July 2015, in anticipation of the September release of NBA 2K16, as it believes that, by reproducing the tattoos in its video games, 2K infringed Solid Oaks ’copyright.  

The negotiation fell through and, on February 1, 2016, Solid Oaks filed a copyright infringement suit in the Southern District of New York (SDNY) against 2K, game publisher Take Two, and game developer Visual. The case is Solid Oaks Sketches, LLC. V. Visual Concept, LLC and 2K Games, Inc., and Take Two Interactive Software, Inc., 1:16-cv-00724.

Are Tattoos Protected by Copyright?

The designs at stake are all registered with the Copyright Office, as tattoo artworks. What about the real tattoos?

Plaintiff argues that tattoos are protected by copyright, as they are “pictorial, graphic, and sculptural works” under 17 U.S.C. §102(a) (5). Plaintiff also argues that tattoos are fixed in a tangible medium of expression, noting that “the tattoos designs are imprinted permanently upon the skin of humans, clearly stable and able to be perceived for much more than a transitory duration” (at 28). Tattoos also satisfy the “minimal degree of creativity” requirement set by the Supreme Court in Feist Publications, Inc. v.  Rural Tel. Serv. Co.

Plaintiff cites an article by Yolanda M. King, The Challenges Facing Copyright Protection for Tattoos to support its claim but notes, however, that “[t]he issue of tattoo copyrightability has yet to be decided upon in court due to numerous settlements preventing a final judicial opinion.”

It seems that tattoos may be  protected by copyright. Is there a defense available to the Defendants?

Possible Defenses: Fair Use and De Minimis

Fair use is a defense to a copyright infringement claim, and the SDNY would look at the four fair use factors, (1) purpose and character of the use, (2) nature of the copyrighted work, (3) amount and substantiality of the portion used in relation to the copyrighted work as a whole and (4) effect of the use upon the potential market for or value of the copyrighted work to find whether the use of the tattoos was fair.

Defendants in this case could certainly claim that the amount taken in relation to the video game was small enough to be fair. They could even claim that the use of original work was so little that it does not even warrant a review by the court, as de minimis non curat praetor, the court does not concern itself with trifles.

However, plaintiff took care to note in the complaint that “On social media, 2K has promoted the improved tattoo customization as a major feature in the game” (at 15) and that “Game reviewers praised NBA 2K16’s improved visuals, which included smoother looking character models and more individualized tattoos” (at 16), and so probably stands ready to argue that the use was significant, both quantitatively and qualitatively.

A Possible Defense: Terms of Players’ Contracts with Their Tattoo Artists

Did the players themselves have a licensing contract with the tattoo artists who applied the designs at stake on their bodies?

Indeed, sports agents should be well advised to explain to their clients that sporting one or more tattoos may impede their ability to monetize their image. While his tattoos make LeBron James an even more interesting player, having a court find out that their reproduction infringes the right of a third party would rather complicate the drafting of a (lucrative) agreement to license his image.

Should players be advised to secure the exclusive right of their tattoos before going under the inky needles? An author has argued for the need of an implied license.

It has been reported in 2013 that the National Football Association Players Association advised agents to recommend that their clients secure a release from the tattoo artist, and even to track down the artists who have done their previous tattoos to secure such release as well. This advice was given following the Whitmill vs. Warner Bros. Entertainment Inc., 11-cv-00752 (E.D. Mo.) case, where the tattoo artist who had created the highly original tattoo sported by Mike Tyson filed a copyright infringement suit to prevent the release of The Hangover 2, where actor Ed Helms sports a similar tattoo.

The National Basketball Players Association will probably issue similar advice following the 2K Games copyright infringement complaint, if it has not done it already. Meanwhile, many IP attorneys are hoping the 2K16 case will not settle, so that the SDNY will have an opportunity to rule on whether tattoos in general, and tattoos reproduced in video games in particular, are indeed protected by copyright. It should not be a slam dunk case (sorry).
Photo is courtesy of Flickr user Chili Head under a CC BY 2.0 license.

Wednesday, 3 February 2016

The Higher Regional Court in Munich decides that licensing duties lie with the uploaders, not YouTube

The Higher Regional Court Munich (OLG) decided yesterday that YouTube and its service cannot be called to account for any copyright infringements. Instead, the judges found that the sole responsibility lies with individual uploaders, even though GEMA is keen to point out "YouTube generates substantial economic profits by making the videos available". Based on this decision, YouTube is presently not held financially accountable within the current legal framework when works protected by copyright are used on the platform.. The action against YouTbe was brought by GEMA which represents the copyright of more than 70,000 members (composers, lyricists and music publishers) in Germany, and more than two million copyright owners globally. It is one of the largest collective rights management organisations for authors of musical works in the world.

The GEMA press release says this: On 28 January 2016, the Higher Regional Court Munich (OLG) pronounced the decision regarding the claim for damages against YouTube (file number 29 U 2798/15). This was another instance where the judges could not bring themselves to recognise YouTube as a copyright infringer and subsequently hold it accountable for payment of an adequate remuneration for authors.

 "Today's decision is most regrettable. The court has obviously followed YouTube's argumentation that it is only the uploaders who are responsible for the contents that are retrievable via the service", comments Dr Tobias Holzmüller, General Counsel at GEMA, on the decision: "We consider this to be wrong. Furthermore, the decision is not justified from an economic perspective, as it continues to enable YouTube to generate high advertising revenues without passing them on to musical authors."

The background to the legal dispute is GEMA's demand for an adequate payment to musical authors for the use of their repertoire protected by copyright via YouTube's platform. YouTube has not paid GEMA any licence fees for the use of music on its video platform to date, even though it generates substantial advertising revenues with the music.

Thomas Theune, Director of Broadcasting and Online at GEMA, adds: "In our opinion, YouTube exploits works retrievable via the service. This type of exploitation is subject to licence fee payments. YouTube is not only a technical service provider, it actually conducts itself like a music service. As a consequence, YouTube should, just like a music service, obtain licences and not pass the responsibility on to the uploaders".

The OLG decision is not yet legally binding. The right to appeal was expressly granted. Holzmüller explains the next steps as follows: "We shall study the reasons for the decision and then probably launch an appeal".

"The unfair allocation of value created in the digital economy has been a problem for authors for many years. Creative content has led to substantial income being generated in the online sector." 

"To date, it has been mainly platform operators such as YouTube that have gained an economic benefit by shirking their responsibilities to pay authors adequately, referring to their privileged position as to liability. It is thus time that authors finally get their fair share of the value created in the digital economy." 


Tuesday, 2 February 2016

The CopyKat

Despite a $25 million rebuke by a federal jury in December for contributing to piracy on its Internet service, Music publisher BMG says that Cox Communications has not learned its lesson. BMG said Cox's network continues to be used by its customers for massive copyright infringement, undermining BMG's music sales. The company asked U.S. District Judge Liam O'Grady in Alexandria, Virginia, to grant a permanent injunction to force Cox to stop the illegal file sharing saying  “Now, more than a month later, Cox’s network continues to be the site of massive, ongoing infringement of BMG’s copyrights,” the music publisher complained.  “This ongoing infringement inflicts irreparable harm on BMG.” For its part Cox wants the jury's decision reversed as ‘a matter of law'.

In another frustrating day for the music industry, but possibly another nail in the coffin of the current tech friendly 'safe harbour' rules, another German court judge has sided with Google’s YouTube in its battle with German music performing right society GEMA, again confirming that the platform is not responsible for what its users upload. The higher regional court of Munich has now rejected GEMA’s claim for damages to the tune of around €1.6 million ($1.75 million). The court upheld a judgement by the lower regional court in Munich, which said YouTube is just a host for uploaded video.

TechDirt tells us that one of the worst abusers of copyright law (and US copyright law specifically) to censor critical speech is the government of Ecuador - focussing on the activities of Ares Rights, a Spanish company that has been regularly sending DMCA notices in the US to try to suppress any kind of criticism of Ecuador's government (and also on criticism of Ares Rights). TechDirt goes on to say "this should certainly reinforce the fact that copyright is frequently used for censorship. Sometimes it's censorship that many people approve of, such as blocking someone merely making use of someone else's work -- and sometimes it's used to censor political criticism. Until people recognize, however, that copyright is absolutely (and regularly) used for censorship, it's difficult to have any realistic discussion of how to prevent the abusive kind of censorship with kinds that people may find more reasonable."

A task force set up by the US Department of Commerce has rejected the need to introduce a compulsory license to deal with the issue of remixes although it has suggested the development of negotiated guidelines providing greater clarity as to the application of fair use to remixes; It has also recommended not to change the existing regulation on the first sale doctrine, which could have allowed digital copies of works to be traded without compensation for rights holders, and suggested a series of changes in the field of statutory damages including incorporating into the Copyright Act a list of factors for courts and juries to consider when determining the amount of a statutory damages award.   More on Music Week here and on the EFF's website here and of course on this blog - from Marie-Andree!

Ukraine's parliament is considering a bill that would require hosting services and Internet service providers to block websites violating copyright - without any form of judicial oversight. Approved in first reading on January 28th, the bill is reported;y the latest in a series of attempts by a group of lawmakers to introduce “anti-piracy” norms into legislation aimed at protecting the Ukrainian cinema, television and video industries. But the latest round of the proposed amendments could impact a broader number of online platforms and Internet users than past policies.

And now selfies ...... yes again! Firstly back to that black macaque Naruto: Remember that animal rights organisation PETA argued that non-humans like Naruto should be deemed the author of the selfie he took under the US Copyright Act and PETA would look after the macaque's rights and would use the proceeds from licensing if the photograph to benefit Naruto, his family, and his habitat? Well Judge William H. Orrick disagreed and granted a motion to dismiss the suit. But the judge has now said PETA can have a second chance and has given PETA leave to file an amended complaint—meaning that Naruto the macaque will have a second shot at claiming his copyright.

And secondly - a photo competition with a £2,000 holiday prize from Thomson Holidays has ended up in a real spat between the winners, The Bellis family whose son Jacob took a picture of himself and his dad, David, with a gurning Betty the horse in the snap - and Betty's owner, Nicola Mitchell. The Bellis' say Betty photobombed their son's selfie, which was taken on a public path, but Ms Mitchell says that even though she didn't know about the competition, she is entitled to a share of the prize as the Bell's should have asked for her permission before they took a picture of her horse saying "I didn't give him permission to use our horse in a competition" and that she would be phoning Thomson Holidays to "tell them I'm not happy". Now this is an interesting conundrum - what rights DOES Ms Mitchell have over her horse's image - or indeed what claim could she possibly have over the resultant selfie taken by a three year old boy?

PRS and PPL lauch a new joint venture for public peformance licensing

In the United Kingdom, PRS for Music and Phonographic Performance Limited (PPL) have confirmed that, following a strategic review commenced in 2015, the two companies plan to create a joint venture. The new company, jointly and equally owned by PPL and PRS for Music, would focus on serving all PPL and PRS for Music UK public performance licensing customers for both music and sound recording rights. PPL is the music licensing company which works on behalf of record companies and performers to license recorded music played in public. PRS for Music represents the rights of over 115,000 songwriters, composers and music publishers in the UK. 

The two CMOs say that this will further streamline the experience for customers obtaining public performance licences, allowing them to secure a joint PPL and PRS for Music licence |"with a single phone call or a few clicks on the web, paid for with a single invoice." Over the coming months, PRS for Music and PPL will be undertaking the necessary preparatory work for the joint venture "Including engagement with regulators and other key stakeholders."

It is anticipated that the new company would start licensing in 2017, followed by a 12-month period during which the full transition of public performance licensing would be completed. It is likely that the new joint venture will be located in a UK city outside the M25.

Robert Ashcroft, Chief Executive, PRS for Music, said, “Creating a single point of contact for our UK public performance customers would allow us to significantly simplify music licensing for UK businesses. It is in our members’ and customers’ interests to ensure that our licensing is ever more accurate and efficient. A joint venture between our organisations would be a landmark event for both societies.”

Peter Leathem, CEO, PPL commented, “Both our organisations firmly believe that the proposed joint venture would be a very positive development for both our customers and our members, building on the successful joint licensing solutions and other joint working initiatives that PPL and PRS for Music have delivered over the last few years.”

For an interesing analysis of the cost efficiency of PRS and PPL see MBW here

Monday, 1 February 2016

Changes Ahead in U.S. Copyright Statutory Damages Law

The U.S. Department of Commerce’s Internet Policy Task Force  (the Task Force), which is led by both the U.S. Patent and Trademark Office (USPTO) and the National Telecommunications and Information Administration (NTIA), published on January 28 a  White Paper on Remixes, First Sale, and Statutory Damages which addresses three issues:

1)      the legal framework for the creation of remixes;
2)       the relevance and scope of the first sale doctrine in the digital environment; and
3)      the application of statutory damages in the context of individual file-sharers and secondary liability for large-scale online infringement.

The Task Force had published a Green Paper, “Copyright Policy, Creativity, and Innovation in the Digital Economy” on July 31, 2013, which had identified these three issues warranting further review by the Task Force.  

The Task Force then published a Notice in the Federal Register seeking comment on these issues. It conducted a public meeting in December 2013 and also held roundtables around the U.S., before reviewing comments from stakeholders as diverse as rights holder organizations, Internet-based companies, public interest groups, libraries, academics, and individual authors and artists.


Remixes use existing works, some of them still protected by copyright, to create new works, which may be compilations or derivative works under the Copyright Act, or collective works.  As noted by the Task Force, user generated content (“UGC”) “has become a hallmark of the Internet” (p.6).

Some of the remixes, such as fan fiction and fan videos, are created by non-professionals, while others, such as music mashups, are created by professionals and may even be sold. Several stakeholders noted that “the lines between amateur and professional, and between noncommercial and commercial, are often blurred” (p. 7). Others noted that “noncommercial activities can cause harm to the market for the original work or for licensed derivative works” (p.8).

Some remixes are fair use, some are not, and determining what is fair use or not is not easily determinable, even by attorneys or by courts, as noted by some stakeholders (p.10). The Copyright Office maintains an online fair use index to help determine whether a particular use may be fair or not, but this tool alone does not provide an absolute determination of whether a particular use is fair or not.

The Task Force did not believe that a compulsory license, such as the one provided by section 115 of the Copyright Act for phono records, would be advisable. At the time this compulsory license was enacted, one company had the monopoly on the piano roll market, and the Task Force has not seen evidence that a similar monopoly exists today for remixes or their licensing.

Also, such compulsory licenses would allow the creation of derivative works, whereas statutory licenses now only permit reproducing, distributing, and public performance of the licensed work, without alteration (p. 26). While the Task Force acknowledged that remixes are “valuable contributions to society… the record has not established a need to amend existing law to create a specific exception or a compulsory license for remix uses” (p. 4).

Instead, the Task Force recommends three goals to be pursued so that remixers would understand when a use is fair or not, and to understand how to obtain licenses.
These three goals are:  

1.       developing negotiated guidelines which would provide greater clarity as to the application of fair use to remixes;
2.       expanding the availability of a wider variety of voluntary licensing options; and
3.       increasing educational efforts aimed at broadening an understanding of fair use.

The guidelines could be developed independently or with the collaboration of the government (p. 28) and should be written in language easily understandable by the general public (p.29). The White Paper notes that such guidelines already exist, such as the Principles for User Generated Content Services which aims at “foster[ing] an online environment that promotes the promises and benefits of UGC Services and protects the rights of Copyright Owners.”

As licensing would remain voluntary, authors and rights holders would have the option to refuse granting a license, “especially when the prospective licensee is seeking permission for a use that the author or rights holder considers offensive” (p. 30).

A stakeholder gave the example of the Beatles Hey Jude song used to create an Anti-Semitic work (see note 44 of the White Paper). But such hateful use would probably be fair use, and protected by the First Amendment. Only granting authors a moral right would allow them to bar every use they find offensive. By the way, what is “offensive”?  The Beatles example would be considered offensive by many, if not all, but what about use of a protected work to comment on issues where opinions diverge more, such as political opinions?

First Sale Doctrine

The Task Force noted that works distributed online are often licensed, not sold, and “this could make the resale market obsolete” (p. 35). Some stakeholders noted that the contractual terms of such licenses are often “opaque” (p.39).

Libraries expressed concerns that their use of digital works may be limited, including eBook library loans (p. 47). Indeed, libraries may only lend books thanks to the first sale doctrine, but the Task Force believes that “early government intervention into the eBook market could skew the development of innovative and mutually beneficial arrangements” between eBook publishers and libraries. However, this may change if libraries are not able to “appropriately serve their patrons due to overly restrictive terms imposed by publishers” (p.4).

In order to preserve the first sale doctrine in the online environment, the Task Force believes it is not advisable to extend the first sale doctrine to digital transmissions of copyrighted works, because of the risks that would cause to copyright owners’ primary markets. 

The Task Force noted that digital works are offered at lower prices than the hard copies of the works and thus deliver the benefit offered by the first sale doctrine to consumers who may purchase used books and used copies of protected works at a lower price (p.58).

While consumers are not allowed to resell their digital copies, “[i]t is difficult… to determined the value of this lost benefit” as the Task Force does not have “sufficient data to conduct an authoritative  cost-benefit analysis of the trade-offs between the consumer benefits from the first sale doctrine and from licensed online services”(p. 59).

So U.S. law is not (yet) ready to authorize the resale of digital goods.  

Statutory Damages

Statutory damages have been applied against individuals sharing files online and against online services found to be secondarily liable for such infringements. Remix artists often refrain from using a protected work, even they believe their use is fair, as fair use can not be accurately predicted and “the threat of high statutory damages can stifle lawful activity” (p.33). Some stakeholders also argued that statutory damages have a chilling effect on innovation and investment (p.80), an assessment disputed by some right holder groups (p. 81).  

Statutory damages have also allowed the development of a noxious “business model” of massive copyright infringement suits (aka copyright trolls), which abuse the litigation process by filing hundreds of boilerplate copyright infringement suits, using the subpoena power of the courts to find the identity of Internet users. These suits are, however, rarely litigated, but instead are settled after intimidating correspondence (p. 74).

The Task Force recommends three amendments to the Copyright Act so that the needs of copyright owners, users, and intermediaries may be better balanced:

First, the Task Force recommended that Congress add a new paragraph in Section 504 of the Copyright Act to provide a list of factors for courts and juries to consider when determining the amount of a statutory damages award. It proposed the insertion of this new clause in subsection Section 504(c): (p.87)

FACTORS TO CONSIDER -- In making any award under this subsection, a court shall consider the following nonexclusive factors in determining the appropriate amount of the award:

(1) The plaintiff’s revenues lost and the difficulty of proving damages.
(2) The defendant’s expenses saved, profits reaped, and other benefits from the infringement.
(3) The need to deter future infringements.
(4) The defendant’s financial situation.
(5) The value or nature of the work infringed.
(6) The circumstances, duration, and scope of the infringement, including whether it was commercial in nature.
(7) In cases involving infringement of multiple works, whether the total sum of damages, taking into account the number of works infringed and number of awards made, is commensurate with the overall harm caused by the infringement.
(8) The defendant’s state of mind, including whether the defendant was a willful or innocent infringer.
(9) In the case of willful infringement, whether it is appropriate to punish the defendant and if so, the amount of damages that would result in an appropriate punishment.

The Task Force explained that these factors “should be weighted holistically” (p. 88).

Secondly, the Task Force recommended amending Section 401(d) and 402 (d) of the Copyright Act to expand eligibility for the lower “innocent infringement” statutory damages awards (p. 97).
Thirdly, the Task Force recommended giving courts discretion to assess statutory damages other than on a strict per-work basis in cases of non-willful secondary liability for large scale online services (p. 97).

Small Claims Tribunal

The Task Force is also in favor of establishing a small claims tribunal, as it believes this “could help diminish the risk of disproportionate levels of damages against individual file-sharers” (p.5). This has been proposed by the Copyright Office itself.

The tribunal would be centralized, in a single location, and would provide for a cap on awards of both statutory and actual damages. There would be limited discovery and counterclaims, and all relevant defenses could be asserted, including fair use. Also, it would not be mandatory to be represented by an attorney, and the tribunal could award costs and fees against frivolous litigants (p. 99). This is a very interesting proposal and I hope it will be implemented soon. 

Thursday, 28 January 2016

The CopyKat - putting you in the picture?

Debate on Hong Kong's contentious copyright amendment bill was cut short in the Legislative Council not because of protests or opposition  – but because not enough members showed up. The premature adjournment came a day after the commerce minister said he was optimistic that there would be enough time for discussion, despite the nearing Lunar New Year holiday and sessions for scrutinising the chief executive’s policy address and the financial secretary’s budget speech. All but one Pan-democrats were absent when the last quorum bell rang on Friday. House committee chairman Andrew Leung Kwan-yuen, who chaired the meeting in the absence of the ill president Jasper Tsang Yok-sing, said he regretted the adjournment. More on the SCMP here.

The BBC tell us that a breach of copyright claim against the Welsh government over photographs used of Dylan Thomas in a tourism drive has been thrown out by a court in Ireland. Visit Wales used photos taken in the 1930s to help promote the 100th anniversary of the poet's birth. But the judge said that if the case was to proceed, Pablo Star Ltd, which owns the copyright. would have to bring the action in a court in Wales or England. Interstingly The Welsh government claimed it has sovereign immunity. But there was worse yet to come for a Mr Haydn Price, who owns Pablo Star Limited. The BBC again tell us that Mr Price has just lost a libel action against 93 year old Gwen Watkins, whose husband Vernon took the Dylan Thomas photos. It seems Mr Price persuaded Mrs Watkins to sell him the copyright in several of the photos for the princely sum of £1,000. The Judge in the libel case, Judge Raymond Groarke, the told Dublin's Circuit Court that he was dismissing the claim as there was no evidence that a latter from Mrs Watkins to Mr Price saying he was a 'bad man' had ever been published: The BBC report that Judge Groarke added "I am not going to go so far as to say Mr Price took advantage of Mrs Watkins but he certainly should have been a lot more careful with the way he dealt with an elderly person."  Mr Price reportedly has a “zero tolerance” approach to copyright infringement and has had some success in other actions. In the current case against the Welsh Government, it was reported that Mr Price was claiming €3,000 for every use of the photos.

Mark Towle,who made replica Batmobiles until being enjoined, has petitioned the US Supreme Court to review his dispute with  DC Comics. He argues that the Batmobile doesn't deserve copyright protection as its a 'useful article'. In february 2013 the District Court held that the “The ‘functional elements’ – e.g., the fictional torpedo launchers, the Bat-scope, and anti-fire systems – are only ‘functional’ to the extent that they helped Batman fight crime in the fictional Batman television series and movies. Thus, the Batmobile’s usefulness is a construct.”  Last September, the 9th Circuit Court of Appeals agreed. Towle had argued that the replicas were fully functioning automobile. In her opinion, 9th Circuit judge Sandra Ikuta disagreed saying the car also has "character" with "physical as well as conceptual qualities," and "sufficiently delineated" to be recognizable whenever and wherever it appears. More on the Hollywood Reporter here. The CopyKat doubts the SCOTUS will take on the case. A final knockout blow for Towle. 

Sheep on Top - and yes, (C) 2015 Ben Challis
As photography is my new hobby (and yes, I am  published!), but still reeling from that French Jimi Hendrix decision, the CopyKat was a little horrified to read that  photojournalists in Serbia have had to appeal to lawmakers to reject a proposal by the ruling party to define their work as the result of a “routine mechanical act” and therefore not worthy of copyright protection. Not worthy!!!!! Photojournalists in Serbia (and quite honestly elsewhere) frequently complain that newspapers and Internet portals publish their pictures without payment, and are happy to "risk being sued in Serbia’s overloaded, inefficient and sometimes corrupt courts." The Serbian Progressive Party’s latest proposals to parliament "would legalise such theft", photojournalists warned.

And finally, we've just been alerted to a new online music platform, Wefre, which TorrentFeak  says is clearly 'inspired' by Spotify, but which claims to use officially available APIs from licensed sources to provide 'free unlimited music' to fans. TorrentFreak says experts believe that borrows its music from YouTube's API feed and its song/album database from Spotify. A Kickstarter fundraiser is underway to help build iOS and Android apps - but we expect rapid attention from the major and leading independent record labels in the very near future. TorrentFreak says: Not only does this beautiful YouTube / Spotify mashup out-perform the recently defunct Aurous in every way, Wefre uses officially available APIs from already licensed sources. Legal? We might not have to wait long to find out.  UPDATE (30.01.16) : A two week old music streaming site, Wefre, has announced that until further legal research is done, it will close access to its music streaming platform. "Initially, the Spanish-based team didn't think that they were breaking any laws because they were providing the service through YouTube's and Spotify's official APIs for developers. Wefre claimed that they created the service whilst fulfilling the terms of use of those APIs." The team of three students behind Wefre wrote "We want to point [out] that we haven't received any official warning from Google or Spotify, we never wanted to profit at the expense of the artists and, before making a huge mistake, we want to seek advice in a smarter way."

Thursday, 21 January 2016

The CopyKat - its no laughing matter

The Japan Times says that architects whose design for the original 2020 Tokyo Olympics stadium was scrapped due to ballooning costs say they have rejected a request to give up the copyright to their plans in return for an overdue final payment. U.K. based Zaha Hadid Architects (ZHA) was chosen in an international contest to build the main Tokyo stadium, but the much-criticized futuristic design was dropped last year. A design by Japanese architect Kengo Kuma with a price tag of ¥149 billion ($1.27 billion), as opposed to an estimated ¥252 billion for Hadid’s plans, was chosen last month instead.

A copyright suit filed against rapper 50 Cent over his 2007 hit “I Get Money” has been dismissed. The plaintiff, Tyrone Simmons (aka Young Caliber) filed papers against 50 and the song’s producer William Stanberry in 2010, claiming they had infringed on his rights to use the instrumental for “I Get Money”, reported Billboard. Simmons also named Universal Music Group, Interscope Records and Aftermath Entertainment as defendants.
Officials at the US Court of Appeals for the Second Circuit ruled the case was “time-barred” adding Simmons had waited beyond the allowed three years to file the suit. More here.

Beastie Boys have resolved their lawsuit that accused the energy drinks company Monster Beverage Corp of using excerpts from five of the hip-hop group’s songs without permission in a video promoting a Canadian snowboarding competition. Capitol Records and Universal-Polygram International Publishing  settled a related lawsuit against Monster over the same video. The terms were not disclosed. Orders dismissing the cases were filed in two Manhattan federal courts but it appears Monster dropped its appeal of a $1.7 million jury verdict and an award of $667,849 in legal fees which resulted from the Beastie Boys’ lawsuit.

Readers will no doubt remember the epic battle between Supap Kirtsaeng, who built a business on eBay buying textbooks in Asia and reselling them to students in the US, and academic publisher John Wiley & Sons who took action against him. The case went all the way to the Supreme Court who ruled in favour of Kirtsaeng under the first sale doctrine, but he's going back to the Supreme Court to try and get his attorney's fees paid by Wiley, having been rejected by both the district court and the US Court of Appeals for the 2nd Circuit. Why? Well Kirtsaeng's petition says this: "Had Kirtsaeng prevailed in the Ninth or Eleventh Circuit, he would have obtained his reasonable attorneys’ fees. Had he prevailed in the Fifth or Seventh Circuits, he would have had a rebuttable presumption in favor of obtaining his attorneys’ fees. Had he prevailed in the Third, Fourth, or Sixth Circuits, Kirtsaeng very likely would have obtained his attorneys’ fees. Unluckily for Kirtsaeng, Wiley sued him in the Southern District of New York, and so when Kirtsaeng prevailed, he prevailed in the Second Circuit, where Second Circuit precedent meant Kirtsaeng could not obtain his attorneys’ fees."

And finally, and this is no laughing matter, we have a very interesting article from US attorney Dylan Price on .... wait for it ...... the potential for the infringement of copyright in jokes. As Dylan says, the case in question is a surprisingly rare foray into humour by the courts, but he tells is that last summer, comedian Robert Kaseberg filed a copyright infringement suit against Conan O’Brien, among others, alleging that O’Brien incorporated four jokes written by Kaseberg in the opening monologues of his television show “Conan.” According to the complaint,  Kaseberg published each of the jokes – all of which were based on then-current events and news stories – on his personal blog and Twitter feed on various dates between January and June, 2015, only to have O’Brien feature the same jokes in his monologues on the same respective dates. The case has yet to get to court by Dylan gives us a thorough review of the position of jokes under copyright in US law - in particular the decision Foxworthy v. Customer Tees, Inc., 879 F.Supp. 1200 (N.D. Ga. 1995) and its well worth a read on the Sheppard Mullin IP Law Blog here.