ACTA is out

A draft (in PDF form) of ACTA, the Anti-Counterfeiting Trade Agreement, has been released by the European Commission. This is the first time any of us have been allowed "officially" to see a draft of the treaty as hitherto negotiations have been conducted in secret. As governments often remind us — if you have done nothing wrong you have nothing to hide — why the secrecy?

Inspired by leaked versions, the treaty has excited much opposition. For example from La Quadrature du Net, the EFF and many others. Michael Geist gives a very thorough analysis on his blog site for those inclined to dig deeper.

If you read the draft you will see that it is marked up with numerous possibilities, indicating differences of opinion between the national delegations. The draft coyly avoids telling us which those delegations might be, but a recently leaked draft may give a clue. I am fairly confident that an analysis of the various parties positions can be crowd-sourced so that we all know where to apply pressure.

This multiple choice nature of the draft makes it hard to analyse whether it is really good or bad or indeed what effect it will have at all. This is particularly so where there are two possible drafts: one stating what parties to the treaty "may" do (which means they need not) or "must" do (which means they certainly will). For example Article 2.2(2) on damages.

I leave a thorough analysis to others who have rather more time than I do, but a couple of points strike me as being of particular interest to the digital/internet environment:

Damages

The normal rule in English civil proceedings is that the damages are compensatory and intend to put you back in the position you would have been if the defendant had done no wrong (or not breached a contract or whatever). In some circumstances a claimant might be able to force a defendant to disgorge any gain they have made without a good lawful reason, or even to pay over any profits they have made as a result of their actions.

In the world of intellectual property this limitation does not operate. Many jurisdictions allow more compensation on top. For examples97(2) of the Copyright Designs and Patents Act 1988, a court may award "such additional damages as the justice of the case may require", having particular regard not only to any benefit gained by the defendant but also to the "flagrancy" of the infringement. In the United States 17 USC 504 allows a copyright owner, where they have registered their copyright, to elect to receive "statutory damages" rather than actual damages and profits, at a minimum of $750 (but up to $30,000) per work infringed. The ludicrous effect of such damages is well known.

ACTA's proposed article 2.2(2) provies that the parties may or shall (which to be later determined) maintain a system of pre-established damages much like that of the US, as well as presumptions for determining the amount of damages. Such a presumption might be that the damages suffered for copyring N works each of which would have made (if sold) a profit of p would be Np. Such a sum would almost always be more (probably much more) than the actual loss. There may (or shall) also be a provisoin for "additional damages".

It is quite possible that rights industries could make more money this way than they would if there were no infringement which would be a surprising outcome in any other field of law.

Criminal liability

Copyright infringement may be a criminal offence in the UK in essentially two circumstances: first where it is done in the course of business and second where it is done "to such an extent as to affect prejudicially the owner of the copyrigh" (I am simplifying this somewhat). Article 2.14 of ACTA suggests there should be criminal liability for infringement on a commercial scale, which is defined to include "significant wilful". I am unclear on what "wilful" means (perhaps readers can help) but that looks to me to increase the range of criminal liability.

Online infringement

The headline part of ACTA for me ought to be section 4 which concerns enforcement "in the digital environment". With the passage of the Digital Economy Act 2010 it may be we have seen the last of new attempts to legislate in this field in the UK for a few years. It may be that ACTA makes little difference to us except to provide the government of the day with political cover to push things a little further.

Article 2.18 requires that parties make available enforcement procedures that include "expeditious remedies to prevent infringement and remedies which constittue a deterrent to further infringement". So to protect and deter. The detail that results from this general requirement could be almost anything because the draft includes two main options, and many sub-options, that range from a less intrusive system of copyright control than we have in the UK to a system that goes much further. I find it difficult to give any kind of useful summary — if such a thing is even possible.

There are options to protect intermediate service providers though these may be predicated on the provider either taking proactive steps to prevent infringement (but not including monitoring) or responding properly to requests to block/take-down material or both. There are also provisions that may require legal protecetion of effective technological measures, though to what extent they will go further than those already imposed on us is unclear.

Conclusion

There's an awful lot more in there. I look forward to reading a wider analysis and to seeing what response the varoius campaigning organisations now adopt. Overall the treaty seems to be a mixture of unnecessary repetition of existing treaty arrangements (such as TRIPS or WCT) and overly draconian provisions. In my view the best outcome would be for the treaty to be abandoned, but I realise that is unlikely, so it might be time to focus more on the detail.

New amendment gives copyright owners a blank cheque for web censorship

Imagine that, in the Summer of last year, you had been following the MP's expenses scandal and heard that The Telegraph was publishing a rather less redacted version that MP's were prepared to give us. Interested, you navigated your way to www.telegraph.co.uk only to find it was not responding. After some searching around and asking friends you discover that the website has been blocked by most major UK ISP's. It seems a junior official in Parliament had asked them to block The Telegraph for copyright violation.

Just this could happen as a result of amendment 120A to the Digital Economy Bill that was passed yesterday in the House of Lords. Being strictly accurate (and I am a stickler for accuracy) I don't think that Parliament going after The Telegraph is likely any time soon for reasons I will explain at the end of this post, but the reasons for that are political not legal and that should worry all of us.

Why?

What is this all about? The copyright industry (which I will call "the BPI" for short) would like a way to make ISP's block internet access to servers that are involved in wholesale copyright violation. Trying to go after the owners of the servers is difficult, either because they are convicted criminals or because they are a mega corporation that will thumb their noses at the BPI and fight tooth and nail against any effort to take them down. How much easier to get ISP's to do the job.

I believe (and I think most copyright lawyers agree with me) that the courts could be persuaded to develop a general form of order requiring an ISP to block access to unlawful content. They have already done this with so-called "Norwich Pharamcal" orders that are used to ask innocent third parties (like ISP's) to divulge the names of the guilty. If there was any doubt, section 97A of the Copyright Designs and Patents Act 1988 makes it quite clear that the courts have the power to do this.

What seems to be bugging the BPI is that a court order costs money and they (the BPI) will have to pay for it. What they want is to be able to get the orders they want for free, or rather at someone else's expense. Amendment 120A does the job. The killer bit is this wording:

(4) Where—
(a) the Court grants an injunction under subsection (1) upon the application of an owner of copyright whose copyright is infringed by the content accessible at or via each specified online location in the injunction, and
(b) the owner of copyright before making the application made a written request to the service provider giving it a reasonable period of time to take measures to prevent its service being used to access the specified online location in the injunction, and no steps were taken,
the Court shall order the service provider to pay the copyright owner's costs of the application unless there were exceptional circumstances justifying the service provider's failure to prevent access despite notification by the copyright owner.

ISPs will feel forced to block on request

What this means is that a copyright owner can send a notice to an ISP asking them to block access to a website. The ISP has a choice: either they block the site, or they wait to see if a court will make an order to block it. If they wait, they pay the costs. There's going to be a really strong temptation just to block without asking any questions, rather than go to court and risk what will amount to a fine.

Its much worse than that. The written request doesn't need to explain why the website should be blocked. It can just be a bald instruction "block this site", or perhaps a list of websites to block like that supplied by the Internet Watch Foundation>. The ISP won't find it easy to "ask questions" because it will have nothing to work with. There is also nothing to stop the BPI sending huge numbers of requests, swamping the ISP so that a conscientious ISP that does not want to blindly block everything will find it prohibitively expensive to do so.

Furthermore, the website won't usually be run by anyone with a contractual relationship with the ISP. This is not a "block your customers" type of order but a "block someone on the internet" one. The ISP won't have any customer relations incentive not to block, nor will they have any way (in general) of recovering their costs from the website owner.

In most cases the only safe way for an ISP to proceed will be to just block everything they are told to block. What is to stop the BPI routinely requesting a block whenever there is anything they vaguely dislike? Nothing. There is no penalty for sending an unjustified written requests. The request does not have to say that anything in particular is wrong, its just a request after all. If I were the BPI I'd just churn these out wholesale and cherry pick which to actually enforce, relying on the spread of fear, uncertainty and doubt to get my own way.

No redress for the innocent

What about website owners? There's no requirement in the amendment to tell the owner of the website that a request has been made to an ISP. The owner/operater will usually first find out they have been blocked by the ISP after it has happened. Aside from persuading all ISP's in the UK to unblock you (perhaps by promising to pay their costs if they eventually are ordered to block) there is nothing you can do about it. There won't have been a court order, so there's no appeal.

Even if you, as a website owner, hear about the request from some well-meaning ISP, you may not know what it is exactly that you are accused of. Like Joseph K's legal team in The Trial you will have to deduce what you are charged with doing. How anyone can think that is fair or reasonable defeats me.

If an ISP is persuaded to resist a request to block your site and you then intervene in subsequent court proceedings brought by the BPI, the case could go on a long time — copyright cases can be quite complicated. Maybe there are important issues of law at stake that will take the matter to the Supreme Court and back. The result an enormous costs bill. Who will have to foot it if you lose? Ordinarily, the ISP. You can see why an ISP is going to require a lot of persuading not to just roll over and do what its told.

The court will be bypassed

The amendment is stuffed full with good intentions. There's a whole list of things a court would have to take into account before making an order, all of which would be things a court would probably take into account anyway. Courts really don't need to be told to take into account "the importance of preserving human rights, including freedom of expression, and the right to property" for instance — they are required to do so by the Human Rights Act 1998 — which suggests that the amendment was not drafted by someone with any knowledge of legal practice more's the pity.

But all these good intentions are quite irrelevant because the new law gives the BPI huge leverage before anyone gets near a court. The court process may be scrupulously fair, but which ISP is going to routinely risk getting there?

Well there's plenty more that's wrong with the amendment, for example what on earth is a "location on the internet" (IP address, URL, DNS domain...)? Did anyone who knows anything about computer networking get asked about this before it was tabled (I assume: no)? But I think that is enough for me to complain about in one post. I hope you get the general idea. Sadly the politicians involved don't.

Conclusion

The Telegraph case is unlikely. Not because the legal conditions aren't made out - it is certainly true "a substantial proportion of the content accessible at or via" the part's of the Telegraph's site where all those barely redacted expenses claims where displayed infringed copyright, so there's certainly a basis for a claim. The Telegraph is in the position of having an alternative outlet to air its grievances (the paper version) and enough money to fight the government over it and to offer to indemnify any UK ISP that is nervous about it. By contrast the House of Commons was running scared in the middle of 2009 and its officials were probably sane enough to try to avoid the huge scandal associated with blocking the newspaper.

But the blocking of a newspaper, a major site like youtube, or indeed any other site (insert your favourites in here) is by no means implausible. Newspapers regularly republish information quoted in other newspapers, much of which may infringe copyright. Where a site is overseas and won't make so much of a fuss about blocking in the UK, it all becomes more likely.

My last blog on the topic of the Bill complained of a similar power that would allow the government to block sites it didn't like such as wikileaks. Subsequent amendments blocked that hole, but now we have a new provision that lets private individuals as well as the government shut down sites, with wikileaks still a prime target. Politicians of all parties need to think very seriously about whether they really want to give the BPI this amount of power.

Home copying of e-books and digital rights management

A frequently asked question that seems appropriate this time of year (given the number of e-books that are likely to appear in people's Christmas stockings) concerns what one is legally allowed to do with documents on one's own e-book, particularly one that is protected by some form of digital rights management.

Let us consider John, a keen adopter of technology. John has a number of different e-book reader platforms and numerous e-books in a variety of formats. He'd like to be able to make back up copies of the books and transfer them from one device to another — known as "format shifting". He is interested in what the law has to say about it. To keep things simple I'm not going to think about what he ought to be able to do or what he might get away with: working through the law will be enough for one post. Let us also assume that someone owns the copyright in the book being read.

Contract

John's first difficulty is that if he "bought" the e-book he may well be bound by a contract with the distributor. For example the mobipockets terms of trade (which are written in appallingly broken English) appear to prevent him format shifting since they say, under section 5 "Terms of Product or Service Use/Loadings":

You admit and you accept that the product or the service bought is exclusively readable on the PDA corresponding to the PID you registered on the Site at the inscription moment.

and further under section 9 "Property Rights":

Every elements you will find on the Site in particular the texts, the information, the images, the softwares, the logos and other distinctive signs etc. may be protected by property rights in particular copyrights. By the way you promise not to reproduce, copy, sell, resell, rent or exploit etc. whole or part of these elements in a commercial or other purpose, unless you have allowed to do it by the beneficiary.

These terms appear to prohibit John from copying an e-book to another device. If he does so he will be in breach of contract.

But at Christmas many of John's e-books were probably bought for him by his friends and family. Most legal systems won't enforce a contract against someone who was not a party to it (except in certain exceptional circumstances). In particular I think this is true in French law — the law selected by the mobipockets terms of service. John would therefore not be bound by the e-book's terms of service.

Copyright

John's second difficulty occurs if the book is subject to copyright. As a general rule John may only copy it with the permission (direct or indirect) of the copyright owner. The exceptions to the rule, most of which fall under the heading of "fair dealing" (a poor, stunted relation of the United States concept of "fair use"), are few and far between and most certainly don't include format shifting and backup.

That permission, or as we lawyers prefer to say licence, will usually come with strings attached restricting John to certain kinds of copying. For most e-books this will not include format shifting, though backup may be permitted. If John format shifts he risks doing so without a licence and thus infringing copyright.

Digital Rights Management

In practice this is all rather theoretical: no-one seems to take a blind bit of notice and format shifting particularly of recorded music in breach of its owner's copyright is the rule rather than the exception. Publishers have responded by adopting an asortment of technical measures to try to control what their customers are able to do with works that they have "bought". For example by adding region codes to DVD's so as to partition the world market, or in the case of e-books by adopting various format restrictions such as Amazon's AZW file format.

If reading E. E. "doc" Smith taught us anything it was that, given time, pretty much any technology can be beaten. The other side will invariably find a way around it. This appears to be true with DRM as with anything else. John will almost certainly be aware that the DRM used by the Amazon kindle has been hacked.

Legal protection of DRM

The next round in this rather sorry conflict between the desire of publishers to control the use of their works after they have been sold and their customers' understandable wish to be able to freely use what they have "bought" comes with the signing of the WIPO Copyright Treaty (a.k.a the WCT) on December 20 1996. Article 11 specifically requires parties to the treaty to take steps to prevent John getting around the DRM on his e-books:

Article 11
Obligations concerning Technological Measures
Contracting Parties shall provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors in connection with the exercise of their rights under this Treaty or the Berne Convention and that restrict acts, in respect of their works, which are not authorized by the authors concerned or permitted by law.

If you read this carefully you will see that there is no need to protect against the circumvention of a technological measure where that measure is being used to restrict an act that is permitted by law. In other words the states that are parties to the WCT do not need to enact laws that prohibit John from getting around DRM which is stopping him from doing something he is otherwise allowed to do: for instance if the e-book is not subject to copyright; or if he lives in a country (like France) where there is a private copying exemption or (if he lived in the US) where what he is doing would be fair use and so on.

The European Union legislative response to the WCT came on 22 May 2001 with Directive 2001/29/EC sometimes known as the Copyright Directive or the Information Society Directive. The directive is much less generous than the WCT. The definition of "technical measure" found in article 6(3) is even less easy to read than article 11 of the WCT, for reference (though feel free to skim over it):

For the purposes of this Directive, the expression "technological measures" means any technology, device or component that, in the normal course of its operation, is designed to prevent or restrict acts, in respect of works or other subject-matter, which are not authorised by the rightholder of any copyright or any right related to copyright as provided for by law or the sui generis right provided for in Chapter III of Directive 96/9/EC.

So, a "technological measure" is anything which prevents an act not authorised by the owner of copyright (or some similar right) even if that act would otherwise be permitted by law. In this way the directive is going much further than the WCT. Article 6(4) does permit members states of the EU to incorporate some relief for anyone who is prevented from some otherwise lawful uses of their work by technological measures, but as we shall see article 6(4) does not sweeten things nearly as much as one might hope.

The directive enters English law on 31 October 2003 as a number of new sections in the Copyright Designs and Patents Act 1998. Section 296ZA attempts to prevent the circumvention of DRM ("technological measures"). It does this by making the circumvention of DRM the equivalent of copyright infringement. It permits not only the copyright owner, but also the publisher (strictly speaking the person who issues to or communicates to the public the protected work) to sue the person circumventing the DRM. Amazon could pursue John, alongside the owners of any copyright in any e-book he format shifts.

What if John wants to do something he would otherwise be permitted to do (for example that would be fair dealing for the purposes of private study)? In other words how has the UK tried to prevent DRM being used in an overly powerful way? Answer: they can complain about it. Section 296ZE permits them to issue a notice to the Secretary of State. The Secretary of State may then (but is entirely free not to) order the copyright owner or any exclusive licensee of the work to do something about it. As far as I know, the Secretary of State has never done so.

The real target of section 296ZA will not be John who after all is doing things in the privacy of his own home.Anyone who works out how to get around (say) Amazon's DRM and publishes that information on the web will also have circumvented a technological measure and will make a much more attractive target, not least because Amazon et al will have a much easier time in proving that they have suffered significant damages as a result of the circumvention.

Two small brighter points appear: first s.296ZF, defining a "technological measure", makes it clear that they only apply to a "copyright work". There should be no pentalty for getting around DRM attached to an out of copyright work. Second, only "effective" technological measures are protected. It would be marvellous, though I think unlikely, if the European Court of Justice accepts the literal meaning of that word so that once there is a widely known exploit that will crack any particular DRM we are all free to use it.

In conclusion: if John wants to avoid infringing any legal rights, he will only be able to format shift, take backups or otherwise copy material if permitted to do so by the copyright owner. Whether a company that digitised (say) the Complete Works of Shakespeare could claim that in doing so it gained a new copyright over the digitised version is another (and much more complicated) story. For now, Happy Christmas.

Government wants new powers to block wikileaks and squeeze web tv

Just over a week ago I wrote a fairly dry legal analysis of the Digital Economy Bill. I spotted an extremely serious provision — clause 11 — in the version being discussed in the House of Lords. Having looked at the amendments (which you can find on the Bill's document page) I am worried that no-one in Parliament appears to be taking the problem seriously.

What is the problem with clause 11 that I am getting so alarmed about it? It amends the Communications Act 2003 to insert a new section 124H which would, if passed, give sweeping powers to the Secretary of State. It begins:

(1) The Secretary of State may at any time by order impose a technical obligation on internet service providers if the Secretary of State considers it appropriate in view of—

Pausing there. Note that this says nothing at all about copyright infringement. For example the power could be used to:

• order ISP's to block any web page found on the Internet Watch Foundation's list
• block specific undesireable sites (such as wikileaks)
• block specific kinds of traffic or protocols, such as any form of peer-to-peer
• throttle the bandwidth for particular kinds of serivce or to or from particular websites.

In short, pretty much anything.

I do not exagerrate. The definition of a "technical obligation" and "technical measure" are inserted by clause 10:

A "technical obligation", in relation to an internet service provider, is an obligation for the provider to take a technical measure against particular subscribers to its service.

A "technical measure" is a measure that— (a) limits the speed or other capacity of the service provided to a subscriber; (b) prevents a subscriber from using the service to gain access to particular material, or limits such use; (c) suspends the service provided to a subscriber; or (d) limits the service provided to a subscriber in another way.

As you can see blocking wikileaks is simply a matter of applying a technical measure against all subscribers of any ISP.

Surely something must limit this power you ask? It seems not. The Secretary of State may make an order if "he considers it appropriate" in view of:

(a) an assessment carried out or steps taken by OFCOM under section 124G; or (b) any other consideration.

Where "any other consideration" could be anything. To their credit the Tories do seem to have realised that this particular alternative is overly permissive. Lord Howard of Rising and Lord de Mauley have proposed (in the first tranche of amendments proposed that the "or" be replaced by an "and".

What astonishes me is that there is no obligation for the Secretary of STate to even publish such an order, let alone subject it to the scrutiny of Parliament, yet he could fundamentally change the way the internet operates using it. Other orders made under other parts of the Bill will have to be made by statutory instrument and most will require Parliamentary approval. Not this one.

The only other amendment that has so far been tabled that might restrict the powers of the Secretary of State under clause 11 appears in a third tranche proposed by the liberal democrat Baroness Miller of Chilthorne Domer which deletes the paragraph (b) from the definition of a technical measure (i.e. "limits the service provided to a subscriber in another way") which does put some bounds, although not very tight bounds on what an imaginative Secretary of State might do.

The government is not at all imaginative. In their explanatory notes they envisage:

The government envisages that the criteria for taking a technical measure against a particular subscriber would be the same as the criteria used to determine whether the subscriber' s alleged infringements are included in a copyright infringement list under the initial obligations. So a technical measure would be applied if a subscriber had been linked to a number of CIRs sufficient to place them on a serious infringers list.

Note very well: they expect to use the power against the guilty and the innocent (of copyright infringement) equally.

The problem, I think, is that people are skim-reading the Bill and thinking that this part has to do with copyright infringement. Clause 11 is nestled between provisions about notifications of copyright infringement (the "strikes" idea) and the technical obligations code. People seem to be assuming that the Clause 11 power will only get used in that context but there is nothing in the Bill to make that so. As fellow blogger Julian Todd pointed out the government froze the funds in the Landsbanki bank using powers contained in the Anti-terrorism, Crime and Security Act 2001. A future government might well think "that's a useful power" and use it for almost anything. Let us hope that the Lords wake up to this fast. I have much less hope of the Commons.

National Portrait Gallery: is there a database right?

I have already written about the National Portrait Gallery's legal threat against Mr Coetzee, an editor of wikipedia. I considered only the validity of the gallery's copyright claim. What about its claim that Mr Coetzee infringed the gallery's database right?

The database right is a based on the EC Directive 96/9/EC, transposed into English law by the Copyright and Rights in Databases Regulations 1997.

The directive defines a "database" as:

a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means

That's a pretty broad definition and covers anything you might think of as a "database". The photographs of paintings are independent works (even if they are not subject to copyright protection) and the gallery seem to have arranged them in a systematic way so that they are accessible by electronic means. That just tells us what a "database" is. In order to obtain the protection of the database right, the maker of the database must show:

that there has been qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents to prevent extraction and/or re-utilization of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database

That is actually 6 different conditions, all neatly packed up in the compression system that is legal drafting. First the maker of the database must show that there has been some substantial investment, which can be of two kinds, either quantitative or qualitative; and second that investment can be in one of three things: obtaining, verification or presentation.

What sort of investment counts? Here the decision of the European Court of Justice in Fixtures Marketing v OPAP C-444/02 comes into play. The top divisions in English and Scottish football drew up fixture lists for the matches to be played in the various divisions during each season. Fixtures Marketing Limited had been assigned the rights to manage this information outside the United Kingdom. OPAP repeatedly extracted the names of pairs of football teams playing against each other and displayed them on its website. Fixture Marketing were obviously unhappy about this and sued. The question of what was a database and how was it infringed was referred to the European Court of Justice.

The court held that "investment in ... the obtaining ... of the contents" referred to resources used to seek out independent materials that already existed and to collect them into the database and not the resources used to create the independent materials in the first place. The purpose of the database right was (thought the court) not to protect the creation of materials that went into the database but to protect the creation of the storage and processing systems for the database.

As support for this view the court pointed out that recital 19 of the directive states that the compilation of several recordings of musical performances on a CD does not represent a substantial enough investment to be eligible. The investment in the music is not enough.

The relevance of this case to the NPG is obvious. One suspects a great deal of the investment in creating the photograph database was in taking and making the photographs. That, on the authority of Fixtures Marketing is irrelevant.

As for verification and presentation, the court seems to have required that any investment that forms a part of the creation of the independent materials would also have to be disregarded. For example, on verification the court said:

The professional football leagues do not need to put any particular effort into monitoring the accuracy of the data on league matches when the list is made up because those leagues are directly involved in the creation of those data. The verification of the accuracy of the contents of fixture lists during the season simply involves, according to the observations made by Fixtures, adapting certain data in those lists to take account of any postponement of a match or fixture date decided on by or in collaboration with the leagues. Such verification cannot be regarded as requiring substantial investment.

Of course I have no idea exactly what work went in to the NPG's database, but I think it is here that they come unstuck. In their letter to Mr Coetze the gallery's solicitors use the time honoured tactic of proof by assertion:

Our client’s website includes a searchable database of over 60,000 carefully chosen, curated and watermarked images. There can therefore be no doubt that our client’s database of images is a “database” for the purposes of s.3(A)(1) of the CDPA.

If, as seems to be the case, the gallery had set aside funds to digitise its collection, those funds and the investment they represent would have to be ignored. The "carefully chosen" images would be just those images that the gallery had chosen to digitise, creating a database from that collection would not necessarily represent the substantial investment the directive envisages. I have no idea whether the "curated" refers to the paintings (in which case it is irrelevant) or the images (in which case I don't know what curating a digital image might mean). The watermarking would surely form a part of the gallery's effort in creating the digital images in the first place and also have to be disregarded.

There's too little information to be able to assess how good the gallery's claim might be, but whether they have a database right at all is open to some considerable doubt.

National Portrait Gallery: photographs of paintings

There's been quite a bit of discussion about a legal threat made against a wikipedia administrator Derrick Coetzee. What he is accused of doing is of having accessed the National Portrait Gallery (NPG)'s website and downloaded some 3,300 high resolution images from its database. Solicitors acting for NPG have alleged 4 different causes of action:

• breach of contract
• unlawful circumvention of technical measures
• infringement of NPG's database right
• infringement of copyright

I'm not going to discuss the first 3 claims (if anyone is interested please let me know and I can write about them in another post). I will say that the first two claims seem hopeless to me to the point of being misconceived while the database claim depends on some facts about the NPG database and its extraction that I do not know.

There's also a question about jurisdiction. Mr Coetze appears to be based in the United States, the NPG is claiming under English law. Assume for the moment that that is not a problem.

In this post I'll try to explain what I think the legal controversy is all about. Obviously there's a huge debate about policy, both for the general question of whether photographs of paintings should be the subject of copyright in themselves, and also whether the NPG itself should or should not be allowing organisations like wikipedia to use its stock of digitised photographs. I'll leave that debate to another forum.

Introduction

The problem starts with the requirement of s.1(1)(a) of the Copyright Designs and Patents Act 1988, which states that copyright "subsists" in an original literary, dramatic, musical or artistic works. If the work is not original then it cannot be the subject of copyright.

What does "original" mean? Everyone seems to agree that it doesn't cover the same ground as the terms "novel" or "inventive" do from patent law. Roughly speaking: copyright not about ideas but the expression of those ideas: you can copy the idea but not the expression.

In English law there seems to be two strands of thought on what "original" means:

• "Original" implies "not copied". An author may adapt something that already exists but they must put enough "independent skill and labour" into that adaptation to result in something that is "original".
• "Original" means that sufficient" independent skill and labour" has gone into the work. It really doesn't matter if its an identical copy of something that already exists provided that enough originality has gone into the copying.

Strand 1: "original" means "not copied"

An early, and classic attempt to get to grips with originality came in University of London Press Ltd v University Tutorial Press Ltd (1916). The court was considering whether university examination papers were "original". Peterson J said:

The word “original” does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought, and, in the case of “literary work", with the expression of thought in print or writing. The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work - that it should originate from the author.

No-one had suggested that the examination papers were direct copies of anything, but that the examiners had drawn on the general stock of knowledge in mathematics and so the papers were not "original". That means that the case did not directly concern whether or not there can be "original copying". Strictly speaking that part of the judgment is what lawyers call an obiter dicutum — something that is said in passing but which does not have binding authority on future cases (though it can be pretty persuasive).

In British Northrop Limited v Texteam Blackburn (1973), Megarry J cited University of London and added:

A drawing which is simply traced from another drawing is not an original artistic work: a drawing which is made without any copying from anything originates with the artist.

Again the case was actually about whether drawings were original enough, so again this is strictly an obiter dictum.

The saga continues: Northrop was approved by the Court of Appeal in Merlet v Mothercare (1986) (concerning copies of designs for a baby's rain cape) but again the main question was whether the designs were original enough.

The first strand of thought in English law culminates in the case of Interlego v Tyco Industries(1988) in which Lord Oliver said:

It takes great skill, judgment and labour to produce a good copy by painting or to produce an enlarged photograph from a positive print, but no one would reasonably contend that the copy painting or enlargement was an "original" artistic work in which the copier is entitled to claim copyright. Skill, labour or judgment merely in the process of copying cannot confer originality.

This decision comes with a health warning: it was made by the Judicial Committee of the Privy Council. Its decisions, though strongly persuasive, are not binding on English courts.

Strand 2: "original" means "with independent skill...."

The other strand of thought can be seen in the House of Lords decision in Walter v Lane (1900). The Times employed reporters who took a verbatim note of speeches made by Lord Rosebery, and transcribed the notes into copy that was published in the newspaper. The Times claimed copyright on the reports.

One of the issues before the court was whether the reporters were the "authors" of the reports. The House of Lords decided that they were.

At first sight this is a fairly unpromising authority since, at that time, copyright in works of literature did not have an originality requirement. Indeed Lord Halsbury was quite scathing about the use of the word "original" in the Court of Appeal. For that reason a succession of High Court judges have questioned whether or not Walter v Lane is still good law but the question was not decided until Express Newspapers v News (UK) (1990) when Sir Nicholas Browne-Wilkinson decided that Watler v Lane was good law after all.

In Express Newspapers there had been a relatively long interview (at least 8 hours according to the report) with a member of the Royal Family, excerpts of which had been reproduced by the newspaper. So the situation differed a little from the reporter taking down a speech situation in Walter v Lane.

The Court of Appeal gave its seal of approval to Walter v Lane in Sawkins v Hyperion Records(2005). The court made clear its strong disagreement with the first strand of authorities culminating in Interlego.

Most relevant for the NPG claim is that the court adopted a statement from a text called The Modern Law of Copyright which directly addresses the "picture of a picture" question (apologies for the long quotation but it is worth reading through):

However, whilst the remarks made in Interlego may be valid if confined to the subject matter then before the Privy Council, they are stated too widely. The Privy Council was there considering fairly simple technical drawings. This is a rather special subject-matter. While the drawing of such a work is more laborious than it looks, it is a fact that any competent draftsman (perhaps, any conscientious amateur) who sets out to reproduce it exactly will almost certainly succeed in the end, because of the mathematical precision of the lines and measurements. This should be contrasted with, eg a painting by Vermeer, where it will be obvious that very few persons, if any, are capable of making an exact replica. Now, assume a number of persons do set out to copy such a painting, each according to his own personal skill. Most will only succeed in making something which all too obviously differs from the original – some of them embarrassingly so. They will get a copyright seeing that in each instance the end result does not differ from the original yet it took a measure of skill and labour to produce. If, however, one of these renders the original with all the skill and precision of a Salvador Dali, is he to be denied a copyright where a mere dauber is not? The difference between the two cases (technical drawing and old master painting) is that in the latter there is room for individual interpretation even where faithful replication is sought to be attempted while in the former there is not. Further, a photographer who carefully took a photograph of an original painting might get a copyright and, if this is so, it is rather hard to see why a copy of the same degree of fidelity, if rendered by an artist of the calibre aforementioned, would not be copyright.

This statement (and Sawkins in general) make me somewhat nervous.

The logic seems to go: applying some (but not enough) skill to copying a painting exactly results in a copyright, therefore the application of considerable skill ought to. But exactly the question we are asking is: is skill all by itself the criterion, or does that skill have to produce something new? The statement in Sawkins seems to do nothing but beg that question and thus resolve nothing.

Furthermore, the case concerned a musicologist who produced modern performing versions of the work by the French composer de Lalande. Far from being an exact copy, considerable work was involved, which included writing parts that were missing from the original. To my inexpert eye it seems to me that Mr Sawkins's work was "original" in the sense of not being a copy. A French court considering the same works agrees with my conclusion. Arguably the interesting discussion about paintings and photographs by Lord Justice Jacobs in Sawkins is also obiter dicta.

I also have great difficulty with Walter v Lane for a completely different reason. In English law a work does not become subject to copyright until it is recorded in some permanent form ("fixation"). It is normally accepted that the person recording a work might not be the author. Where an author dictates to a secretary (for example) there is no doubt that the work is the author's not their secretary's. It is very common in the modern music industry for musicians to jam together to produce a work but for the recording to be done by someone else. Again no-one supposes that the musicians are not the authors of the work. That principle does not seem to sit well with Walter v Lane.

Even in Sawkins it is recognised that a slavish copy would not be original. The question would be one of degree.

Is it different for photographs anyway?

I have been deliberately ignoring a direct authority from way back in the nineteenth Century — Graves' Case (1869). The court of the Queen's Bench had to deal with a case involving 3 photographs of engravings. Under the Fine Arts Copyright Act 1862 originality was a criterion for copyright. Blackburn J said:

All photographs are copies of some object such as a painting or statue. And it seems to me that a photograph taken from a picture is an original photograph, in so far that to copy it is an infringement of this statute.

Ooops.

The difficulty with Graves' Case is that it does not explain what "original" does mean for a photograph. It seems reasonable to assume that some photographs must not be original, otherwise there would be no need to restrict copyright to original ones. Nor is it clear from the report what kind of photographs they were and how they were taken.

Conclusion

As far as I can see, the authorities look bad for Mr Coetze but not by any means hopeless. If I had to argue the case for him, I might proceed as follows:

• Walter v Lane is not good law because it did not consider the question of originality
• National Express and Sawkins address works which are not exact copies and so any statements within them are obiter.
• In Walter v Lane and National Express there was no existing "work" to copy (since they both deal with words that had been said but not written down and therefore fixed).
• London University Press has (via Northrop) been adopted by the Court of Appeal and so is at least as good an authority as Sawkins although strictly speaking they are all obiter
• Graves' Case is a ruling on the particular facts of the case which cannot be easily determined from the report so we cannot tell what criteria were applied by the court making it a problematic authority
• Lord Oliver's view in Interlego should be strongly persuasive
• Other jurisdictions with which we are closely connected (eg much of the EU) and with which there is considerable trade (the United States) do not accept that a photograph of a painting which attempts to be as faithful to the original as possible can command copyright, hence as a matter of comity our law should be developed in that way.

I have not given the subject a great deal of thought, and it may be that there is more to be found by a more thorough search, but it seems to me that Mr Coetze's position is not ideal, but nor is it hopeless.

Post codes and the database right

At opentech 2009 Harry Metcalfe presented the idea for a site (which I will call Ernest Marples) to convert postcodes into latitude and longitude pairs. Ingeniously, the site does not store any data itself, instead it scrapes a number of other sites for the information and returns the result. Does this get around the Royal Mail's database right in the postcode database? Sadly, I do not think it does.

Let us ignore for the moment whether the site breaches any terms and conditions of the sites that it is scraping for its data. The identity of those sites is a secret so although there amy be a question mark over the legality of the scraping, to say any more would be to theorise without data. Instead I want to focus on the database right.

In the 1990's it became clear that, in a number of EC/EU member states, that collections of information could not necessarily be protected by copyright. For example in the Dutch case of Van Daele v Romme a publisher was unable to prevent the copying of all the words in its dictionary. A similar position was reached in the United States where the Supreme Court decided in Feist that a telephone directory could not be subject to copyright.

The eventual result was Directive 96/9/EC of the European Parliament and of the Council on the legal protection of databases. Chapter III of the directive creates a thing called the "sui generis right". The core of that right can be found in article 7(1):

Member States shall provide for a right for the maker of a database which shows that there has been qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents to prevent extraction and/or re-utilization of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database.

As you can see a lot of alternatives are being packed in. If all that you remember is that the focus is substantial investment you will not go far wrong. Roughly speaking, lots of investment implies protection. To unpack a little: the substantiality of the investment can be qualitative (it took real skill to select just these poems) or quantitative (we spent many person years walking to every grid point and photographing it). That investment can be in verification and presentation as well as collection.

The right allows a rights holder to prevent either:

• extraction; or
• reutilisation

Of a substantial part of the database.

Ernest Marples is not extracting a substantial part of the database, but I'm less sure about re-utilisation. The term "re-utilization" is defined in article 7(2)(b) to mean:

any form of making available to the public all or a substantial part of the contents of a database by the distribution of copies, by renting, by on-line or other forms of transmission.

Is that what Ernest Marples site is doing? On the one hand Ernest Marples only hands out single (postcode, co-ordinate) pairs and so it could be argued that it is not making the whole of the database available at any one time. On the other hand a member of the public can query any postcode and Ernest Marples is almost certain to be able to return a result for it.

It may be that the drafters of the directive saw Ernest Marples coming because they added an additional form of infringement in article 7(5):

The repeated and systematic extraction and/or re-utilization of insubstantial parts of the contents of the database implying acts which conflict with a normal exploitation of that database or which unreasonably prejudice the legitimate interests of the maker of the database shall not be permitted.

Roughly speaking: lots of insubstantial extractions etc may add up to a substantial one. When exactly? That was just the question that the Swedish Supreme Court in Fixures Marketing v AB Svenska and the Court of Appeal of England and Wales in British Horseracing Board v William Hill wanted to know. The European Court of Justice explained to them that the purpose of article 7.5 is exactly to prevent someone getting around 7.1. If the effect of the repeated extractions or re-utilzations would have the same negative effect on the maker of the database as a breach of 7.1 (if all the extractions etc had been done all at once), then that is a breach of 7.5.

I think Ernest Marples is probably caught by 7.5 even if he gets away with avoiding 7.1. Article 8 does provide a defence for lawful users of the database but that is even more fraught a line of argument (if you thought 7 was badly drafted, have a read of 8 and try and work out what its meant to do). There is some doubt, but not enough to make Ernest Marples's method your business plan.

As Harry explained at opentech, part of the purpose of the site is political. There is a strong body of opinion that the Royal Mail should not have a monoploy on this extremely important database. If Ernest Marples is sued that will generate terrible publicity for the Royal Mail (as it should).

Tags: postcode, database right, databases