Private copying - a new copyright exception in the UK

Hooray! We (in the UK) now have a "private copy" exception to copyright. About time too. Until recently, many forms of private copying were infringements of copyright. In particular format shifting such as copying music from your old CD's and DVD's onto your phone or making a "mix tape" for your own use were infringements of copyright and, if you believe some of the rhetoric of the music industry, morally equivalent to theft.

By contrast, almost everyone seemed both to engage in private copying and to think it was OK. Indeed a recent survey I conducted suggests that the vast majority of people think that format shifting is OK (a 95% credible interval of 89 - 93% of the population). So it is very surprising that the law continued to turn its face against something subject to such overwhelming approval.

Analysis

The new law comes in the form of the Copyright and Rights in Performances (Personal Copies for Private Use) Regulations 2014, which is as yet only available in draft. It will come into force on 1st October and add a new section 28B to the Copyright, Designs and Patents Act 1988.

The effect of the new law is that making a copy of a work is not an infringement, subject to 3 conditions:

• the source of the copy (i.e. what you are copying from) is either your "own copy" or a "personal copy"
• it is made for your private use
• it is made for ends which are "neither directly nor indirectly commercial"

Own copy

Your "own copy" of a work is one which:

• you have lawfully acquired
• on a "permanent basis"
• is not an infringing copy
• has not been made under any exception to copyright

This means that you cannot use the private copy exception to "launder" an infringement, eg by copying a work from a friend (still an infringement) and then making a copy of that copy. Similarly, a copy made for private study or research (an exception to copyright under section 29 of the 1988 Act) or a temporary copy, such as one in the browser's cache (see section 28A) is not your "own copy" and so cannot be safely duplicated under the private copy exception.

Your "own copy" is not necessarily a copy that you "own" in the intellectual property law sense. As I read it "lawfully acquired" includes a download which is only made available under licence. In the long run almost all digital content will be downloaded in some fashion rather than bought on a physical medium so a restriction to "owned" copies would be hopelessly restrictive.

The tricky part of the definition is likely to be what is meant by "lawfully acquired on a permanent basis"?

The new section 28B(4) "helpfully" give a short list of examples of copies that are or are not "lawfully acquired on a permanent basis". I am not sure they help all that much. Unsurprisingly copies which have been borrowed, rented, broadcast or streamed are not "acquired on a permanent basis". The same applies to a "download enabling no more than temporary access to a copy", whereas any other download that arises from a purchase or gift would be lawfully acquired on a permanent basis.

Could a copyright owner get around this exception by selling works for very long periods (decades perhaps) with a provision that the work reverts to the owner at the end? I doubt it. My hope is that the courts apply a normal English understanding to the words "temporary" and "permanent". For example, if I say I have a temporary job, you would be a bit surprised to learn that I have a fixed term of 30 years. You are more likely to describe my post as permanent.

Personal copies

A further example of something that is not your "own copy" is a copy made under the private copy exception. These are known as "personal copies". For example a lawful backup copy of an mp3 music file is not your "own copy", but it is a "personal copy". This means, as you would expect, that you can copy your backup copies.

Private use and file lockers

Just in case there was any doubt, the new s28B will make it clear that making back up copies and format shifting are certainly private use. Interestingly s28B(5)(c) makes it clear that storing a copy online so that you can access it later is also "private use" even though the file will be accessible to the file host as well.

This means that you will be able to store your own and personal copies of files on Dropbox (privately at least) and on similar servers.

Transfers

Section 28B will apply fairly common-sense provisions to transfers. If you transfer a personal copy (i.e. one of the copies you have made under this exception) to someone else, you will be infringing copyright unless the copyright owner has given you permission to do so. Personal copies are not meant to change hands. Even if the transfer is otherwise lawful, you would infringe copyright if you retained any of your other personal copies.

For example: if you buy a DVD, make a back up, and then sell the DVD second-hand (something you are entitled to do under section 18(3) of the 1988 Act), you must delete that back up copy. If you keep the back up copy it becomes and infringing copy and stops being a "personal copy".

Is lending OK?

But wait there is something a little odd here. Section 28B(6) says "Copyright in a work is infringed if an individual transfers a personal copy of the work to another person (otherwise than on a private and temporary basis)...". That appears to suggest that it is OK to transfer a personal copy of the work to another person if it is done on a private and temporary basis.

Could my "private use" include lending copies - on a temporary basis only - to friends? There is certainly material in s28B for such an argument. Whether it would run in court is another matter.

Restrictions by the copyright owner

One point that (bafflingly) appears to have upset a number of politicians is the new 28B(10) which blocks copyright owners from preventing private copying by contract. Clearly without such a clause it would be routine to add a provision that private copying was in breach of contract and we might as well not have bothered.

Copyright owners could also use a form of digital rights management to prevent private copying. Circumventing that protection may, at least for something that is not a computer program, itself be an infringement contrary to s296ZA.

It is already the law that, where digital rights management (what is referred to in the legislation as "effective technological measures) prevents one of a list of "permitted acts" (found in schedule 5A of the 1988 Act) then anyone prevented from doing the permitted act may complain to the Secretary of State, who may then do something about it.

This has always seemed to me a rather weak remedy since the Secretary of State is not obliged to do anything about it. When I last asked, no valid complaints appear ever to have been made.

Rather than make private copying another "permitted act" and thus apply the existing mechanism to it, the regulations will create a new s296ZEA. The main difference from 296ZE appears to be that it applies not only when the making of personal copies is prevented, but also when there is a technological restriction that restricts the number of personal copies which may be made. Whether anyone complains to the Secretary of State remains to be seen, please let me know if you do.

Legacy copies

If you made a copy in the past that would have been a "personal copy" if the new law had been in force back then - for example it would have to have been made from your "own copy" and been for individual private use - then that copy is now a personal copy.

Those old mix tapes that people made will become (on 1st October) "personal copies" and so may be lawfully backed up etc provided of course the mix tape was made from their owners "own copy" etc. Oddly the making of the copy (in the past) is still an infringement and so a copyright owner could, in principle, sue you for making private copies in the past, but nothing can be done about your use or possession of them now.

What about compensation?

One objection to these regulations raised by some rights owners is that there should be provision for them to receive some form of compensation for the private copying.

The power used to make the regulations derives from article 5(2)(b) of the Information Society Directive (2001/29/EC) which allows member states of the EU to provide for exceptions to the "reproduction right" (i.e. the right to copy):

in respect of reproductions on any medium made by a natural person for private use and for ends that are neither directly nor indirectly commercial, on condition that the rightholders receive fair compensation which takes account of the application or non-application of technological measures referred to in Article 6 to the work or subject-matter concerned

This would appear to mean that some form of "fair compensation" is required. In many EU countries this takes the form of a levy, for example on CD's, that is then distributed via collecting societies.

But recital 35 of the directive says that in assessing the level of fair compensation "account should be taken of the circumstances of each case" and "In cases where rightholders have already received payment in some other form, for instance as part of a licence fee, no specific or separate payment may be due.". The argument made by the UK government is that because private copying is restricted to a lawfully acquired work, the rights owner will have already priced in any private copying when charging for that access and so there is no need for any further payment. The level of "fair compensation" is nil.

Whether this argument is likely to be challenged by any part of the copyright industry I do not know. Given that private copying, of the kind that will be permitted by section 28B, is almost universal, it is hard to believe that these regulations will impose any further, quantifiable, loss on rights owners. It seems tome that the very limited private copy exception should not entitle rights owners to any further compensation. We shall see.

Copynorm survey - answering some questions

Thank you for everyone who has responded to the survey so far. I have just short of 500 responses, it would be really great to double that before the survey closes, so please share with your friends.

The survey has generated a lot of comments and I think I owe it to those who have bothered to comment to collect together some of their questions and address them here. Unfortunately I can't discuss the thinking behind the questions - otherwise I might bias the answer - and so I won't talk about specific questions.

The unexplored

There are a lot of interesting areas that I have left unexplored. That is deliberate. In order to keep the survey reasonably short and within various technical constraints I had to pare down the range of things I explored considerably.

Penniless artists

For example: does the status of the creator of the work make a difference? Some people do seem to think that a very wealthy rock star has less right to complain about copying of their work than a penniless artist: others disagree. It would be very interesting to know what difference that made and I considered asking questions to explore that distinction. Unfortunately those questions had to be cut.

A similar example is given by a commenter known as Julian:

... if the artist gets paid 0.02p out of a £15.99 product, or is dead, then it's a little difficult to argue that copying the CD counts as stealing from them.

Intention

It is often asserted that people who illegally download music (in particular) are more likely to buy music than people who do not. I have no idea whether that is true, but there is clearly a view that it is OK to circumvent a publisher and download something without paying if you are "testing" the work out. Provided you actually buy a copy if you keep it, then you have done nothing wrong.

An anonymous commenter said:

in the situation where [someone] wants to listen to an album but doesn't want to pay for it, while I marked that I thought it was OK, there needs to be a little nuance there. If he wants an album so he can hear it and decide whether or not he likes it and is willing to spend money, that's totally fine. If he wants it specifically so he doesn't ever have to pay for it, that's a problem.

This was another of the questions I wanted to ask but fell on the cutting room floor.

The law

One of the main aims of this survey is to find out what people think is acceptable not what people think is legal. But that causes a problem for some people who believe there is inherent value in obeying the law whatever their own morality might be.

"James" says:

whilst I believe that the law relating to copyright, patents, trademarks and other forms of so-called "intellectual property" ought to be drastically liberalised, I believe that people ought to obey the law even though they disagree with it this distinction is not recorded by the survey

James's position is to give what philosophers call "deontological value" to the law. His concern is that the survey doesn't capture that distinction.

In fact I am in roughly the same position as James. As a child I was enormously influenced by the character of Sir Thomas More as brilliantly portrayed by Paul Scofield in Fred Zinnemann's A Man for All Seasons and in particular by the following quote:

William Roper: So, now you give the Devil the benefit of law!
Sir Thomas More: Yes! What would you do? Cut a great road through the law to get after the Devil?
William Roper: Yes, I'd cut down every law in England to do that!
Sir Thomas More: Oh? And when the last law was down, and the Devil turned 'round on you, where would you hide, Roper, the laws all being flat? This country is planted thick with laws, from coast to coast, Man's laws, not God's! And if you cut them down, and you're just the man to do it, do you really think you could stand upright in the winds that would blow then? Yes, I'd give the Devil benefit of law, for my own safety's sake!

(courtesy IMDB) 

The answer to James is that I am aware that the law affects people's views on right and wrong and I will try to take that into account. If I have sufficient responses from different jurisdictions world-wide (I am hopeful) then I may be able to analyse whether the jurisdiction in which someone lives affects their views.

Gervase Markham also wonders why I don't ask people "do you think this should be legal so you could do this". That would be a fascinating. In fact my first plan for the project was to find out what people thought was or was not legal. I think it would be really interesting to know what people think the law actually is and that seems to me logically prior to asking them whether they want the law to be changed (you can't want to change the law if you don't know what it is).

All I can say is that what my supervisor and I ended up thrashing out was different. However if anyone wants to help out with a survey of that or something else of interest later in the year, I would be very interested in suggestions (see my remarks at the end).

Charles Oppenheim says:

Another problem with the survey is that, assuming the changes go through, UK copyright law will permit some of the actions outlined in the survey that are currently illegal.

That may be right (there's a lot of "it depends") and if people would like me to I would be happy to produce an analysis of all the questions and their legality once I am finished with the dissertation.

The world as it is 

Reuben Thomas is unhappy that his answers may not reflect his true belief. 

I said "yes" to almost every part of every question, but that does not mean that I think that it's good if everyone copies and shares everything; it's rather that the current situation is bad in so many ways.

He then goes on to give a number of situations where (to paraphrase) the market is distorted, which in turn may justify behaviour that would not be justified if those distortions were not present. Origami Girl and Saxon Christopher raise similar points.

My hope was that people would understand the survey to be about the world as it is with all its perfections and oddities. I wanted to avoid being overly abstract. I thought that concrete "real world" situations might bring clearer answers. Whether I am right about that remains to be seen. However the point is taken and, if I had more space, would be something worth exploring.

Ethics

Paul and Gervase both suggest asking a question along the lines of "would you do this?". That would be a logical since I ask what other people would do, why don't I ask what the person answering the survey would do. The simple answer is that I am constrained by university rules on ethics. If I ask whether someone would do something that may be unlawful (or in some places and cases criminal) that is very much more intrusive than asking them what they think is OK. It is also very close to asking them "have you ever done this?", which would be an even more intrusive question.

Much as I would like to know, I have had to avoid questions like this altogether.

Free text

I considered allowing free text comments in the survey (either for each question or for the survey as a whole). Maybe I should have allowed them as an option. I was keen to keep things short and simple and I thought the value of adding free text might be less than the cost in additional cognitive load on people answering the survey.

Given the very interesting questions and comments from people on completion, maybe that was a mistake and I should have added something to let people express their frustration at the narrowness of the categories offered (something I struggle with in surveys) and to offer me the benefit of their wisdom. I am grateful that so many have bothered to add their comments to the survey.

Finally

Thank you for all your comments. I am sorry if I haven't (yet) addressed something you have said. I am really grateful for all the feedback.

One of the main themes seems to be that I didn't answer questions people wanted answering. I hope to have this dissertation done and dusted by May / June, but I will still have some time left on my surveymonkey subscription so if anyone wanted to do the hard work of canvassing people to answer another more detailed survey, or a survey about other things (eg what you think the law should be) I would be more than happy to offer legal, technical and statistical advice and support. 

I think we know far too little about what the general population thinks about copying and the law, so the more the merrier. Maybe a kickstarter to raise funds to buy a properly sampled audience is something to try.

I hope to be able to publish the data in open data format and some commentary on the final results later in the year, but for now please keep sharing and let's see if we can hit 1,000 respondents.

Orphan Works - the new law in the UK

My social media feeds have been full links to alarmist stories about a recent change to UK copyright law that allows for the licensing of orphan works. Photographers have been particularly concerned after one site (which I won't dignify with a link) used the headline "ALL your pics belong to everyone now". So much alarm has been created that the UK's intellectual property office felt moved to publish a PDF debunking some of the myths that have arisen. I was waiting until the Enterprise and Regulatory Reform Act 2013 was published on the government's legislation website before making my own comment.

The problem of orphan works is well known. Copyright lasts for a long time. In the UK it will usually be for 70 years after the death of the author. Discovering the author of a work to discover whether it is, or is not, protected by copyright can be difficult, let alone discovering the present owner of that copyright in order to ask them for a licence. The effect of that is that many works are either not used, or used only by organisations that care little about copyright on the ask forgiveness not permission principle.

There are radical solutions to this problem, for example we could require that copyright owners register their copyrights in order to enforce them, as the United States did until relatively recently. Or we could adopt William Patry's more modest proposal where no registration would be required for an initial, but relatively short, copyright term. To extend the life of a work's copyright, the copyright owner would be required to register. Such a system would make it very easy to discover who was the owner of a work older than the short initial period of copyright, but of course there would be administrative costs associated with it. Legislators have been more timid in their response.

The European Directive

One solution that has already been enacted is the European the orphan works directive (2012/28/EU), although the UK does not have to transpose it into UK law until 29 October 2014.

The orphan works directive is an exceptionally modest provision. Its beneficiaries are public libraries, education establishments, museums and archives. Any institution wishing to use an orphan work must first carry out a "diligent search" in good faith from "appropriate sources". The directive itself lists some "appropriate sources" which would have to be searched, but member states may add to the list, which varies depending on the type of work involved.

Records have to be kept by the institutions of their diligent searches which must be sent to their national government which in turn must make the results available on a publicly searchable website (good to see that governments are beginning to understand open data). This ought to make it easy for copyright owners to discover whether one of their works has been designated as an "orphan" and, having found out, make sure that oprhan status is rescinded.

Institutions may only use the works to achieve their "public-interest missions" and may only charge in order to recover costs of copying or making available to the public. They may not exploit the works commercially.

Canada

The orphan works directive tries to maintain the broad integrity of copyright by delegating the task of carrying out a diligent search and managing the orphan works system to trusted public institutions. By contrast Canada has been using an orphan works law which relies on a central authority, theCopyright Board of Canada.

Section 77 of the Canadian Copyright Act 1985, entitled "owners who cannot be located", requires anyone seeking a licence for what we call orphan works to satisfy the Copyright Board that they have made "reasonable efforts to locate the owner". The Board may then issue a non-eclusive licence on any terms it chooses to specify. According to their brochure they will usually require the payment of a licence fee, which will be paid to a collecting society. If the owner of the copyright appears within 5 years of they expiry of the licence, they may claim the licence fee. Where the fee was paid to a collecting society, the society will pay the owner.

The Board do not issue very many licences - roughly 22 a year since 1990. Not all applications for a licence are accepted. Whether "it works" in Canada I do not know, but copyright has clearly not come to an end there.

The United Kingdom

So where does that leave us? Section 77 of the Enterprise and Regulatory Reform Act 2013 introduces a new section 116A of the Copyright, Designs and Patents Act 1988 concerned with orphan works. Section 116A is a mere skeleton. It allows the government to make regulations that would allow someone (an authorised person) or alternatively some people to be chosen by someone designated for the purpose, to grant licences to orphan works. The content and circumstances of the licences we do not know. All we do know is:

• a work will not be an orphan work unless a diligent search is made for the copyright owner
• what counts as a "diligent search" will be defined in the regulations
• the licences may not be exclusive
• nor may they be granted to a person authorised to grant licences

Now in theory this means we could end up with a Wild West system where there was little real control over licensing of orphan works. The regulations could be very lax on what counted as a "diligent search" and very generous about the licensing terms. That is always a risk with open-ended legislative provisions (and why they should not be used by Parliament).

The reality, according to the intellectual property office, is that we will end up with something similar to the Canadian system. Licences will not be free. Copyright owners will be able to claim fees that have been paid. There will almost certainly be a fairly tight and prescriptive description of what counts as a "diligent search". It will not be enough simply to look at the metadata on a photograph, shrug one's shoulders, and go ahead.

Extended Collective Licensing

In parallel to section 116A is a new 116B which will allow collecting societies in sectors where they now organise (eg books and music) to be given permission to license works that they do not have any existing right to license - eg where they do not own the rights and the author has not given the society permission to license them. This is not an orphan work provision. It applies even though the society knows full well who the author of a work might be. I mention it because it has been mixed into some of the reports about the orphan works provisions.

I have my doubts about extended collective licensing, but it will at least be an "opt out" system. No-one has to participate if they do not want to. In a sector where most licensing is direct (author to user) such as photography, there may never be such a system as the intellectual property office has indicated.

Consultation

The intellectual property office tell me that there will be extensive consultation on the detail of any regulations. Anyone having an interest in these provisions should make sure they engage with the consultation or join with others to represent them collectively. I am sure the open rights group will be making representations.

Copyright in industrial art - more protection

The problem with copyright is that it isn't strong enough - are words you are unlikely to hear me say. Today clause 55 of the Enterprise and Regulatory Reform Bill brings us an amendment to a fairly obscure corner of the Copyright, Designs and Patents Act 1988.

UK Copyright law has always had a somewhat awkward relationship with 3 dimensions. Graphical works, sculptures, collages and photographs are all protected "irrespective of artistic quality". Apart from sculptures, copyright also protects works of architecture (buildings and models for them) and works of "artistic craftsmanship". The latter category appears to be a fairly narrow one, though exactly how narrow is unclear.

Instead, UK law offers an alternative protection in the form of various design rights. There are actually 4 of these - design right, registered designs, and community unregistered and registered design rights. All of these are different to a greater or lesser extent, protecting different things, in different ways for different periods of time.

Inevitably there are overlaps between the two sets of rights. The Copyright, Designs and Patents Act 1988 does a certain amount to keep the two spheres of art and design separate. For example section 51 prevents the making of a object to a design from being an infringement of the design document. But it is section 52 that interests us today.

Section 52 deals with the situation where an artistic work has been exploited in the making of articles by an industrial process and marketing them in the UK. At the end of 25 years after the articles are first marketed, it ceases to be an infringement of copyright to copy the work by making articles (of any kind) or doing any thing for the purpose of making those articles (for example by producing preliminary design drawings). The articles may also be sold to the public and otherwise dealt with without infringing copyright in the original artistic work.

Section 52 is supplemented by the Copyright (Industrial Process and Excluded Articles)(No. 2) Order 1989 which, amongst other things, excludes certain kinds of article from its operation. For example, exploiting an artistic work by making a sculpture would not engage section 52 and hence would not weaken copyright protection after 25 years, which is one of the reasons why the question of whether a  storm-trooper's helmet was a "sculpture" was considered by our Supreme Court in Lucasfilm v Ainsworth (see from paragraph 29). Many more literary or artistic articles are excluded as well such as greetings cards, book jackets and stamps (you can read the whole list in regulation 3).

In other words, an artistic work is protected by copyright, but if its owner stoops to allow its industrial exploitation then, in that sphere, it is given a period of protection akin to that of a registered design.

What section 52 does not do is shorten the period of copyright protection, it merely weakens the protection copyright gives. A clear example of this appeared in Jules Rimet Cup v Football Association [2007] EWHC 2376 (Ch) which was a dispute about the registration of a trademark in World Cup Willie. The court had to decide (amongst other things) what effect section 52 had on the Football Association's copyright in the image of World Cup Willie. It had been the subject of considerable exploitation, but the court decided that, while section 52 would allow the making of many kinds of World Cup Willie articles, it would not allow the making of excluded articles (such as the sculptures, stamps and greetings cards mentioned above). To do so would still be an infringement of copyright.

An example (stolen from Copinger) demonstrates how section 52 works. Suppose an artist drew a picture of an iconic vehicle - lets say a car- in a comic strip. After 25 years of marketing models of the car as merchandising, the artist could no longer use copyright protection from preventing others making rival versions of the car, but the artist could still stop the making of stamps, greeting cards and, most importantly, comic books based on the original drawings.

The proposed clause 55 will do away with all that. The artist would, if the clause passes, be able to sue any imitator of the car for copyright infringement. Clause 55 therefore represents a further extension of copyright, albeit in a rather subtle way.

The coverage of the proposal has been rather patch. The Design Council say:

We understand that the Bill will repeal section 52 of the Copyright, Designs and Patents Act 1988, which currently restricts copyright to 25 years (calculated from the date on which the work is first placed on the market) on artistic works which are exploited through an industrial process.

Which, you will see, is garbled at best. The Design Council seems to think the clause only applies to "design classics". The government's own press release demonstrates the same confusion:

... extending copyright protection for mass-produced artistic works to life of the creator plus 70 years. These measures will promote innovation in the design industry and encourage investment in new products, while discouraging unauthorised copies

As usual there is an unevidenced claim that there will be a promotion of innovation and of course no comment no the innovation in terms of competing designers seeking to give a new physical embodiment to already exploited artistic works.

All this coverage suggests that at least some of those thinking about the new law are thinking it applies to works of artistic craftsmanship alone, whereas it will apply much more widely than that, even to tins of paint.

Marks: 0/10 for failing to address what impact this will have on the now lawful re-exploitation of industrially produced art.

Newzbin2 - the order

The High Court has just handed down its order in "Newzbin2".

For those not following the story so far goes like this: newzbin (whose site I will not link to for obvious reasons) describe themselves as a "Hand edited, searchable archive of Usenet binary content from the creators of the NZB Format." USENET is of course the grandparent of most peer-to-peer file sharing networks. People were sharing copyright material via USENET even when I started using the internet over 20 years ago. Newzbin do not host any of the material (which is available via USENET) but their site undoubtedly makes it much easier to find copyright infringing material to be downloaded. Unsurprisingly, many large copyright owners do not like it.

Last year, a group of Hollywood studios persuaded Mr Justice Kitchen that Newzbin were guilty of copyright infringement in three different ways (1) their actions amounted to "authorisation" of copyright infringement; (2) they were also joint infringers with or procurers of the infringement of their subscribers; (3) even though they did not host any of the movies complained about they "made them available to the public" which is an act protected by copyright. The case Twentieth Century Fox v Newzbin [2010] EWHC 608 (Ch) makes interesting reading as it explores just how far a website may (or in that case may not) go without infringing copyright.

Newzbin's reaction was to be expected: their operation moved outside the jurisdiction of the UK courts. Undeterred (one hopes they were sufficiently web-savvy to have anticipated the move) the studios applied to the High Court for an injunction against BT to force BT to block access to Newzbin to its (ISP) customers. The studios made use a statutory power given to the High Court to make injunctions of this kind under section 97A of the Copyright Designs and Patents Act 1988.

At the end of July, Mr Justice Arnold agreed to grant the injunction (Twentieth Century Fox v British Telecommunications [2011] EWHC 1981 (Ch) ). Lillian Edwards wrote a very neat analysis of the decision on the day it appeared. As she explains, Newzbin was an unusually good case for an injunction, not least because there had already been a decision of the High Court finding that the site was involved in copyright infringement. Other cases may be more difficult for rights holders to argue. It will depend.

Mr Justice Arnold postponed deciding on the exact form of the injunction — that is exactly what BT should be ordered to do — until he had heard further submissions from the parties. His decision on the form of order was what was handed down today.

A huge simplifying factor is that BT are already running a system known as Cleanfeed which is used to filter out material on the Internet Watch Foundation's list of suspect IP addresses and blacklisted URL's. This meant the order could require BT to add IP addresses and URL's supplied by the studios to its Cleanfeed list.

Cleanfeed is not used with all BT ISP products. In particular it is not used for what is effectively wholesale supply of internet connectivity, nor to particular customers in certain cases — one example being the police who, one imagines, absolutely do wish to be able to access illegal material for investigatory purposes. The order applies "In respect of its customers to whose internet service the system known as Cleanfeed is applied whether optionally or otherwise". Read literally that would appear to mean that customers who have Cleanfeed as an option but have opted out would still have to be filtered by BT. It is unclear to me whether that is what the judge intends.

The order makes it clear that BT is not required to carry out deep packet inspection. BT need simply rely on the IP addresses and URL's reported to it by the studios, but this, in my view, leads to the most serious defect in the order: it relies entirely on the good faith and judgment of the studios. There is no sanction for mis-reporting of websites. Since there is no requirement to publish the list of sites supplied to BT or to notify site owners that they have been placed on the list, it may be difficult to ensure that the studios act fairly and properly.

BT did try to obtain what is known as a cross-undertaking or an indemnity from the studios which would have compensated BT for any loss it suffered as a result of any mistakes made by the studios. The judge rejected that request on the basis that, as he decided, BT could not be liable for damages (eg by being sued by its customers) because it was acting under a court order. That will no doubt be a useful decision for ISP's and web service providers in other situations, but it did mean there was no basis for imposing any sanction on the studios for supplying incorrect sites in its list.

There was some argument as to how precisely the list should be described. In order to ensure that it would be difficult to circumvent the order, the judge decided that the order would apply to not only the newzbin website itself but also to "any other IP address or URL whose sole or predominant purpose is to enable or facilitate access to the Newzbin2 website". Here we see one of the weaknesses of section 97A. It gives the High Court the power to grant an injunction but it fails completely to say what kind of an injunction that might be. In particular it does not say that the injunction should be restricted to preventing access to sites where copyright is being infringed (like Newzbin). I am therefore concerned about whether the combination of the wording of the order and lack of sanction on studios may cause problems at a later date.

The other significant issue was costs. While costs (which lawyers get very excited about) may not seem as interesting as arguments about what should be blocked and how, costs are often as expensive to a party as the consequences of losing (or winning) a claim. Costs are a big deal. One positive outcome of the decision is that BT was entitled to be paid its legal costs for the first part of the claim up to 16 December 2010 - in other words the costs that would have to be incurred to obtain a court order. In the future ISP's can be reasonably confident that they can demand a court order before instituting website blocking and not expect to have to pay the costs of that order. The judge found that BT should pay the costs of the contested part of the proceedings, but that each party would bear its own costs for the decision about the final order.

In conclusion, I have two points to make: first, it is now clear that copyright owners are perfectly able to obtain quite favourable court orders to block websites, so that there was really no need for the Digital Economy Act 2010 to introduce more website blocking provisions when the existing ones (in section 97A) had not been properly tried out. Second, other cases may not work out the same way as this one. For example TalkTalk do not run Cleanfeed. One expects that the argument (and subsequent order) in a case against TalkTalk might be a little different for that reason. We will see.

Digital Economy Act appeal: more detail

As I said on Saturday, TalkTalk and BT have obtained permission to appeal to the Court of Appeal in their judicial review of the Digital Economy Act 2010 ("the DEA").

Thanks to the counsel for the appellants I now have a little more information. The appeal is going forward on essentially the first four grounds that were put forward at the original judicial review hearing. The appellants did not appeal on the fifth ground: proportionality. I thought it might be useful, at this stage, to give an extremely rough outline of those four grounds.

The first objection concerns the Technical Standards Directive (83/189/EEC), the aim of which is that any laws that impose technical standards on goods or services (known as "technical standards" and "rules on services") are reported to the European Commission in enough time for the impact of the proposed law on intra-community trade to be assessed and any objections to be raised. This is known as the "standstill period". Failure to comply with the procedure renders the relevant law unenforceable.

The appellants say: "The DEA is a technical standard and/or rule on services; it wasn't notified to the Commission before it was passed, therefore it is void. The government responds: "No it isn't! Its not nearly detailed enough to be a technical standard etc at this stage, you have to wait for all the little statutory instruments we are going to make under it before there's enough detail to need notification."

The second ground concerns the E-Commerce Directive. As readers may know, this gives various kinds of immunity to providers of "information society services" and in particular to ISP's who, as "mere conduits", are not liable for the information that they transmit.

The appellants case is that the DEA does impose liability for information transmitted and/or it imposes a requirement to remove or disable access to information. Neither of these, they say, can be imposed on a mere conduit. In the High Court, the appellants also argued that the DEA imposed a "general obligation to monitor" which is forbidden by article 15 of the directive. That argument is no longer live - I think (though I may have misunderstood this) because the Court of Appeal did not give permission on that point.

The third ground is based on the Directive on Privacy and Electronic Communications (2002/58/EC) which (amongst other things) imposes conditions on the processing of traffic data by ISP's. Ordinarily, traffic data must be anonymised or erased when it is no longer needed for the purposes of transmission, except for certain limited exceptions and derogations. The appellants case is that the DEA's purpose does not fall within any of those exceptions or derogations and so keeping the traffic data in order to enforce copyright is not permitted.

The last of the four grounds is built on the Authorisation Directive. The Authorisation Directive was aimed at opening up the electronic communications sector to competition by preventing member states from imposing onerous conditions on prospective comms providers. To that end, a member state may not charge a prospective ISP fees, or impose conditions on them, unless authorised to do so by the directive. The appellants say that is exactly what the DEA does, or will do, and that the DEA therefore offends against the Authorisation Directive. The appellants won a partial victory on this point in the High Court, managing to knock out a requirement that they pay a share of OFCOM's fees for managing the initial obligations code.

I am extremely pleased that permission has been given. Being optimistic, I can hope that light will be thrown - possibly even by the CJEU if the Court of Appeal consults it - on any one of these directives. They are all of some importance in my practice and so I am understandably keen to see as much clarity as possible. With four directives to chose from there's every chance that some useful principles will come out of this case.

In any event, it means that the "graduated response" intended by the DEA is going to be just that farther in the future. In related news, Julian Hupper (Liberal Democrat MP for Cambridge) has tweeted his plan to try to have the web blocking provision (section 17) of the DEA repealed. The government have already indicated that they are unlikely to use section 17 in the foreseeable future, so this may be uncontroversial. I will watch events with interest as they unfold.

Digital Economy Act to go to the Court of Appeal

Yesterday, the Court of Appeal gave BT and TalkTalk permission to appeal to the Court of Appeal. I do not have any more details - in particular what was the reasoning of the court and what on what grounds will the appeal be argued. I hope to blog about them as soon as they become available.

Earlier this year, the Court of Appeal, in the form of Buxton LJ, had refused permission to appeal, leading to some rather misleading press coverage such as the Guardian's "Court of appeal's decision means long-running battle by UK's biggest ISPs is effectively over". Not so of course.

Unless the Court of Appeal thinks that an application for permission is "totally without merit", a prospective appellant may always renew an application for permission orally, under CPR 52.3. This, is, I understand, what BT and TalkTalk did.

Colonel Mustard is not in the Library with a copyright claim form

My friend Sym came up with a neat joke:

Playing Big Society Cluedo. It's easier than normal Cluedo because there isn't a library.

and promptly tweeted it. Much retweeted it ended up being used by the BBC's Now Show, without attribution of any kind. Sym is a generous soul and I doubt that worried him too much but he mentioned it on his (private) facebook wall.

As regular readers will know I'm not exactly a copyright maximalist, but I do find it unattractive that large and powerful organisations that would certainly pursue you if you used their intellectual property appear to be quite happy to use other people's so long as those other people are too small to matter very much. I jokingly suggested I'd help draft his claim form and that lead him to wondering whether there could be any copyright in so slight a thing as a tweeted joke.

Unsurprisingly there are lots of answers on the internet, as a cursory google search will show. One site says categorically "no"; an article in the WIPO magazine thinks "it depends" and there's even a site called canyoucopyrightatweet.com written by a US attorney which again comes down on the side of "it depends". Unfortunately all the really detailed discussion relates to US law, not European or English law. While there's some internationally harmonisation of copyright, there are still significant differences.

So, what of English law. Well, English copyright protects, amongst other things any "original literary work". Most tweets are not going to be original - in fact in many cases that is the whole point - but some, like Sym's joke, seem quite capable of being so. Certainly, I am quite sure that he came up with the joke first.

A "literary work" does not have to be high art. Indeed section 3 of the Copyright, Designs and Patents Act 1988 says that a

“literary work” means any work, other than a dramatic or musical work, which is written, spoken or sung

so its really quite a broad term. In a relatively recent case which rejected a claim for copyright in the names of commands for an airline booking system, Mr Justice Pumfrey was quite clear that single words, at least on their own, could not be copyrighted. In the 2009 Infopaq case, the European Court of Justice were prepared to accept that an 11 word textual extract could be the subject of copyright and last year in the case of Meltwater Mrs Justice Proudman agreed that, whatever might have been the position under English law, the decision in Infopaq made it plain that as a matter of European law copyright could exist in newspaper headlines provided they were original enough.

So it seems to me that a tweet, provided it is sufficiently original, can be the subject of copyright.

But as I said in an earlier post the existence of copyright is only half the question. What would or would not infringe a short humorous tweet? I haven't heard the particular episode of the Now Show in question but if they read it out they have certainly infringed (and twitter's terms of service don't appear to let them off the hook). If, on the other hand, they only paraphrased the joke, the question is more difficult. Sym might be able to claim ownership of the particular expression of his joke, but he cannot copyright the idea that lies behind it. That idea is free and open to all.

The difficulty with this neat distinction (called the "idea/expression dichotomy") is that courts recognise that you can infringe by copying something more abstract than the exact words used. This should be obvious when you consider that a translation of a work (which will usually use quite different words, unless its into "pirate") is a potential infringement of the original work. Too close a copy of the plot or characterisation in a play (say) would be an infringement even if there had been a good deal of rewriting and reworking.

How on earth this would apply to something as small and neat as a tweet is anybody's guess. I suspect that it is only a matter of time before someone tries to test the question.

UPDATE

In the comments, Sym has helpfully provided the quote from the Now Show:

Someone amused me no end on twitter the other day, ok, when they answered twitter's question 'what are you doing?' by writing: "I'm playing big society cluedo, it's easier than normal cluedo because there isn't a library"

Clearly, if there is copyright in the tweet, this looks like a potential infringement because the whole tweet has been copied pretty much verbatim. But, could there be a defence. There is, of course, no such thing as "fair use" in English law. But quoting a tweet could be "fair dealing for purposes of criticism or review" which is a defence under section 30 of the Copyright, Designs and Patents Act 1988. This requires that:

• the use is fair dealing
• the purpose of the use is criticism or review of a work (not necessarily the work quoted) or works
• the use is accompanied by sufficient acknowledgement

Normally it would not be "fair dealing" to use the whole of a work, but where the work is as short as a tweet it is likely to be impossible to use it critically in any meaningful way without quoting the whole of it. "Someone amused me" probably counts as "criticism".

What about attribution? Section 178 of the act defines "sufficient acknowledgement" as "an acknowledgement identifying the work in question by its title or other description, and identifying the author". "Someone" doesn't seem like enough to me. Although its just possible to argue that "Someone" means "Someone on twitter" and that it is thereby possible identify the author by searching on twitter for the origin of the tweet. Seems like a long shot to me.

Update: I realise with some embarrassment that I didn't link to Lillian Edward's blogpost on this very question.

Phone hacking and copyright

Hugo at the 1709 blog asks a question about a recent case involving 2 of those who may have been victims in the News of the World phone hacking affair (as wikipedia calls it). Before I try to answer the question, some background.

From information obtained from the Metropolitan Police, Andrew Gray and Steve Coogan both suspected that their voicemail had been accessed by Glenn Mulcaire, the private investigator at the centre of the affair. They sued him — apparently for breach of confidence.

The claimants felt that the Mr Mulcaire's defence left a lot more questions unanswered. For example who had instructed him to intercept voicemails; to whom had he passed on the information; and who else had he been targeting. In order to press him further they each made a request for information asking him a number of questions which, unsurprisingly, he did not appear to wish to answer. In order to resist answering the claimants' requests, Mr Mulcaire relied on the common law right not to be required to answer questions that might incriminate oneself.

The right, known as the "privilege against self-incrimination" is not an absolute one. There are a number of statutory exceptions to it. For example section 31 of the Theft Act 1968 prevents someone from relying on the privilege in proceedings for recovery of property (where things they say might well implicate them in a charge of theft). In a similar manner, section 72 of the Senior Courts Act 1981, lifts the privilege in "proceedings for infringement of rights pertaining to any intellectual property or for passing off".

The phrase "intellectual property" means different things to different people and is much misused. There is no single statutory definition either. I found it interested to read that the court was shown a sample of 20 different enactments where "intellectual property" is defined in different ways and for different purposes and, in the Income Tax Act 2007, in three different parts of the same act. In section 72 it is defined thus:

"intellectual property" means any patent, trade mark, copyright, design right, registered design, technical or commercial information or other intellectual property;

Now the defendants contended that "commercial information" meant only commercial information which was protectable as intellectual property (for which see the other items in the list). The claimants (correctly in my view) said this didn't make sense — obviously what was meant was an extended definition to include "normal" intellectual property of the kind we are used to talking about such as copyright but extended to cover things that would normally not be treated as intellectual property, such as commercial information.

Mr Justice Vos agreed. The defendant lost his privilege and the claimants were allowed to ask some of their questions. Others, the judge thought, were not strictly relevant and constituted "a fishing expedition" (as lawyers call it). An earlier and very similar case, this time involving Nicola Phillips as the victim, had already been decided in the same way and headed to the Court of Appeal. The hope is that all three cases will be joined on appeal and a decision given.

Given how topical phone hacking has been, and the fact that many readers of this blog are involved in industries where confidential information could be intercepted wrongly, I thought this was an interesting case to talk about.

Now to Hugo's question. He asks the question that may be in some of your lips: why didn't the claimants bring a claim for infringement of copyright? Then there would have been no doubt about the application of section 72 and no need to have the argument in the first place. He asks:

Could the claimants simply have relied on the argument that Mulcaire had in any case infringed copyright in sound recordings by recording and transcribing the voicemails? Copyright in sound recordings is owned by their ‘producer’, who is ‘the person by whom the arrangements necessary for the making of the sound recording are undertaken’. Would this be Steve Coogan and Andrew Gray – or would it be Vodafone?

Note that we aren't interested in copyright in the words that were recorded on the victims' voice mail. Even if they qualified for copyright protection — one assumes that "hi, its me" probably does not, whereas something with more substance probably does — the person who left the message would be the author of the words and therefore the copyright would belong to the caller or their employer.

Copyright does protect sound recordings, though for a shorter period than copyright in literary, musical or dramatic works. As Hugo points out, section 9 of the Copyright Act makes the "producer" of a sound recording its "author" (and therefore potential first owner of the copyright) and section 178 gives us the definition.

The nearest authority I can think of is A&M Records v Video Collection International [1995] EMLR 25 which concerned the ownership of an arrangement of "Let's Face the Music and Dance" created for Torvill and Dean's 1994 competition entry. The skater's agent asked a conductor to do the job. He found an arranger, paid for an arrangement of the work suitable for the skaters and then conducted it in a studio he had hired with an orchestra he had put together. The court found that while the conductor had clearly made the recording, it was the agent who had made the "arrangements necessary for the making of the sound recording". I thin this indicates that the courts take a high level view of "producership" and so it would be Mr Gray and Mr Coogan who made the arrangements and were the "producers" even if everything else was done by their mobile telephone company.

But wait, the story doesn't end there. There's no point asking whether something is protected by copyright, without also asking whether there has been infringement. In this case, if Mr Mulcaire had transcribed the telephone conversations, rather than just listened to them and made notes of the facts contained in them, would he have "copied" them? We are all used to the extended definition that section 17 gives to copying of a literary, dramatic, musical or artistic work, which includes "reproducing the work in any material form", but there is no such extended definition for sound recordings. To transcribe a sound recording is not to "copy" it since no new sound recording is made.

So, Mr Mulcaire might have infringed the copyright in the words recorded but that copyright didn't belong to Messrs Gray and Coogan. They probably did own the sound recording copyright, but that wasn't infringed. Their lawyers obviously did know what they were doing (as we suspected) in only suing for breach of confidence. If there's a moral here its that having multiple copyrights in the same "thing" makes for a more complicated analysis.

A new kind of copyright? Graphical user interfaces in the ECJ.

A decision of the European Court of Justice published before Christmas concerning whether a graphical user interface is protected by copyright causes me concern. I have not seen any detailed analysis of the decision which may be due to Christmas and New Year stupor. I plead the same excuse for what follows.

The case Bezpečnostní‌ softwarová‌ asociace‌ –‌ Svaz‌·softwarové‌ ochrany v Ministerstvo kultury C-393/09 has a rather involved background an excellent account of which is provided by Martin Husovec on his blog. Very roughly speaking, a Czech organisation called the Security Software Association (BSA) wished to set up a collective licensing scheme for computer software which included the right to transmit works by cable television. The point in issue was whether the broadcast of the graphical user interface of a computer program could infringe copyright (and would therefore require licensing).

Copyright in computer programs was harmonised across the EU under the Software Directive (91/250/EEC). Article 1(2) applies the directive to "the expression in any form of a computer program". The first question referred to the ECJ was whether a graphical user interface could be described as a computer program "in any form". The ECJ said "no". One fact influencing the court was that Article 10(1) of the TRIPS Agreement requires the protection of computer programs "whether in source or object code". Clearly source and object code are examples of forms of expression of a computer program.

Similarly the 7th recital to the directive states that the term "computer program" also includes "preparatory design work leading to the development of a computer program provided that the nature of the preparatory work is such that a computer program can result from it at a later stage". The common element of these examples, thought the court, was that they lead to the reproduction or creation of a computer program. A graphical user interface does not enable the reproduction or recreation of a compute program, therefore it is not the expression of a computer program "in any form".

This all seems reasonable so far. Although a graphical user interface might contain one or more images or graphical works that would attract copyright as an "artistic work" in the normal way; attempts to claim copyright in an abstraction of the user interface — such as its mode of operation — have tended to founder in the English Courts in cases such as Nova Productions v Mazooma Games [2007] EWCA Civ 219 (concerning features of the play of two computer Pool games) and in Navitaire v Easyjet (concerning a clone of a air travel booking system).

However, the court went on to consider — although it had not been asked to do so — whether the graphical user interface of a computer program might be protected by the "ordinary" law of copyright. Here the court appears to have committed the logical fallacy of affirming the consequent. To explain why I need to say a something about earlier developments in European Copyright Law.

The Information Society Directive (Directive 2001/29/EC) ("INFOSOC") has partially harmonised other forms of copyright in the European Union. Article 2 INFOSOC requires that Member States create in their domestic law a "reproduction right" for "authors, of their works". Although described as a "right" it amounts to a prohibition on anyone else reproducing (in whole or part) a work without the author's permission. In other words it is a copyright. Although INFOSOC does not define "works" (or indeed "reproduction" or "reproduction in part"), the European Court of Justice in the earlier case of Infopag v Danske Dagblades Forening C-5/08 held that the directive only applies to a work that is "original in the sense that it is the author's own intellectual creation".

So to the apparent fallacy: in Bezpečnostní‌, the ECJ reasons thus:

The Court has held that copyright within the meaning of Directive 2001/29 is liable to apply only in relation to a subject-matter which is original in the sense that it is its author’s own intellectual creation (see, to that effect, with regard to Article 2(a) of Directive 2001/29, Infopaq International, paragraphs 33 to 37).

Consequently, the graphic user interface can, as a work, be protected by copyright if it is its author’s own intellectual creation.

In other words the court deduces from a statement of the form "P implies Q" a conclusion that "Q implies P". Infopaq establishes that being the author's "own intellectual creation" is a necessary condition. That does not mean it is a sufficient one.

Now the judges of the ECJ are, for the most part, bright and well educated. They will be well aware of the dangers of affirming the consequent. I think it is safe to assume they don't mean quite what they appear to be saying. In particular, the idea that any form of intellectual creation is protected by the general law of copyright would be quite revolutionary.

For example, INFOSOC does not exclude from copyright protection inventions that could form the subject of a patent, or designs that might be protectable under one of the European design rights. Although both might well be some author's "own intellectual creation", I doubt very much that copyright is intended by anyone to extend so far.

In English law merely being creatively original is not enough for a work to obtain copyright protection. For example in Creation Records v News Group Newspapers [1997] EMLR 444, the judge held that it was not even arguable that the scene for the Oasis album cover of Be Here Now could be protected by copyright. It simply did not fit into any existing protected category — and the record company attempted to argue that it was a dramatic work, a work of artistic craftsmanship or even a collage.

So I assume (in hope) that all the ECJ are guilty of is a failure to show working and that they have in mind some other criteria that must be satisfied before a work is protected by copyright. What those criteria might be the ECJ do not say which leaves me with the following questions: if a graphical user interface is protected by copyright, what kind of a work is it and what about it is protected?

It may be possible to gain some inkling as to what is in the ECJ's mind from their answer to the second question posed to them. They were asked if graphical user interfaces were protected by copyright in computer programs (the first question), would television broadcasting of the graphical user interface be an infringement of that copyright (by communication of that work to the public)? Although the ECJ had answered "no" to the first question, ever helpful they considered whether, on the assumption that graphical user interfaces were protected by "ordinary" copyright, TV broadcasting of them could constitute infringement. Again the ECJ thought "no" because the viewers "cannot use the feature of that interface which consists in enabling interaction between the computer program and the user".

It seems from this that the ECJ have in mind not the graphical elements of the user interface, but something about its operational behaviour. A sort of copyright in interactivity, which cannot of course be infringed by TV broadcasting because you cannot interact with the subject of the broadcast. If that is what the ECJ have in mind, then I am troubled.

First, what kind of a copyright is this? Is it an artistic work, a literary work or something else (a work of artistic craftsmanship perhaps)? For the purposes of English law this matters. Different species of work are protected in different ways, even if the differences are sometimes rather subtle. The ECJ do not tell us the answer to this question.

Second, where is the graphical user interface "fixed". In English law a work is only protected if and when it is fixed in some permanent form. If I make a really excellent speech, I will have copyright in the speech when, but only when, it is recorded. Similarly if a group of musicians create an exciting musical work while jamming together in the studio, the work will not be protected until fixed in some form. Is the graphical user interface fixed in the computer program's source code? If so, copying the code may be an infringement of the copyright in the graphical user interface. If it is not fixed in the code, where is it?

Lastly, there are numerous special rules that apply to copyright in computer programs. For example there are rights to make back-up copies, to test and to decompile for certain purposes. If the ECJ is right, these would not apply to a user interface which represented an author's own intellectual creation. In English law, moral rights do not apply to computer programs, but would (presumably) apply to a suitable user interface. Both of these conclusions could be awkward.

Not all is bleak. The ECJ emphasize that when assessing whether a graphical user interface is protected by copyright as its author's "own intellectual creation", a national court should ignore components of an interface that are "differentiated only by their technical character". It will not be every, or every aspect, of a user interface that will be protected. Despite this limitation I suspect that this decision, if taken to its logical conclusion and followed by later cases, will require some careful rethinking about copyright in the computer industry. Just what we need.

ACS:Law - at last, a hearing

UPDATE: For professional reasons I won't be commenting on this case for the time being. Please feel free to continue to comment on this post, but don't feel insulted if I do not respond.

After my recent post on ACS:Law's failure to obtain default judgments in some of their claims. Another judgment Media C.A.T Limited v Alan Billington [2010] EWPCC 18 of the patents county court has been pointed out to me.

The facts of the particular case are not particularly crucial. The Defendant, an Aaron Billington, complains amongst other things that there is no "Alan Billington" and that he did not receive a "response pack" (which comes with the Claim Form and which includes a form for acknowledging service). Although he does not say so, there also seems to be a complaint that ACS:Law did not follow good pre-action practice.

What is interesting is that the judge reviewed cases pending before the court (27 in all) and has ordered that a hearing for directions be held at 10:30am on 17th January 2011. At the hearing the court can decide how the cases should be dealt with. Clearly if you are (or know someone who is) one of the defendants and there's a reasonable defence to the claim, or the sum claimed is larger than the claimant is entitled to, then it would be a very good idea to attend the hearing and have your (or their) voice heard.

Although courts do have a power to make orders on their own initiative, without being asked to do so by the parties, many courts do not seem to use this power as much as, perhaps, Lord Woolf envisaged when he created the civil procedure rules. The hearing proves to be interesting as it may give a much broader picture of how ACS:Law are progressing their cases and it may also help the court to tidy up what sounds (from the last judgment anyway) like something of a mess even from a purely technical perspective. Mildly good news I think.

ACS:Law come unstuck

Earlier this month ACS:Law suffered a set-back in their campaign against alleged copyright infringement through peer-to-peer file sharing. ACS:Law (or more pedantically, their clients) had tried to obtain judgments in default against 8 defendants, but failed for a variety of reasons in each case. The judge in the Patents County Court criticised the nature of their claim and the way in which the applications were brought — reported as Media C.A.T Limited v A (and others) [2010] EWPCC 17.

Default judgment is a speedy way for claimants to obtain judgment without a trial. In most cases a defendant served with a claim form and particulars of claim is supposed to acknowledge service and then file a defence. If not acknowledgement or defence is forthcoming the claimant can ask the court to give it judgment in default.

This is where ACS:Law start to come unstuck. In 3 of the cases a defence had been filed in court. So default judgment does not apply. In a further 3 of the cases there was no evidence on the court file that the claim form and particulars of claim had been served on the defendant. It is ordinarily the court's job to serve these documents, but there's no presumption that it has. In my practice I have come across situations where some administrative mistake has been made and the court has failed to do so. Whatever the reason, it is bad practice to issue requests for default judgment without checking with the court that no defence has been filed. A slap on the wrist for ACS:Law in my view. As the judge said "The requests for judgment should never have been filed."

There is an easy way and a not so easy way to ask the court for a default judgment. The easy way simply requires the claimant to file a request to the court. The defendant does not have to be informed of the request and will ordinarily know nothing about it. The not so easy way requires a formal application, with evidence, to the court, which must be served on the defendant, who will therefore have an opportunity to defend against it.

The "easy way" is only available where the claim is for one or more of: a specified amount of money, an amount of money to be decided by the court, delivery of goods where the claim form gives the defendant the alternative of paying their value (CPR 12.4). In each case, the claim was not only for damages for copyright infringement (including additional damages for flagrant infringement), interest and costs but also for:

"a permanent injunction pursuant to the inherent jurisdiction of the Court; ordering the defendant to take reasonable steps to safeguard their internet connection being used, either through the defendant's personal computer and/or third parties taking advantage of the defendant's unsecured wireless connection to repeat the infringement of the claimants copyright in the Work(s)."

Ooops. That doesn't appear to comply with CRP 12.4. The judge thought not. ACS:Law ought to have made a formal application rather than merely filed a request and that would have alerted the defendants to the possibility of default judgment and given them an opportunity to respond. The judge had serious doubts as to whether, in peer to peer file sharing cases, default judgment ought to be given on request without a formal application. He said:

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

Most interesting for me are the criticism that the judge made of the way in which the case was pleaded (one assumes by ACS:Law, but certainly on their behalf).

• The particulars of claim stated that the claimant "represents" the owner of copyright in the films that were the subject of the claim. Only the owner of the copyright or a licensee (and for a non-exclusive licensee only if certain conditions are met) has a right to sue for copyright infringement. Thus the pleadings were defective.
• The allegations relate to unsecured internet connections. It is unclear whether the owner of (say) an open wifi can be held responsible for copyright infringement effected using that connection.
• The claimant's plea was that the defendant was guilty of "allowing" copyright infringement, which, as the judge put it, "is simply wrong". The term used by the act is "authorising", which is rather different.

and more of the same. In short: even accepting all of ACS:Law's allegations, they do not appear to have a proper case. To succeed they would at least have to amend their claim, assuming they have a case at all.

A health warning: this decision is made by a county court. It is not, strictly speaking, binding on any future court. It does however illustrate the extremely dubious nature of the claims being put before the court by ACS:Law and will, I hope, encourage defendants to be more confident in resisting them. The list of defects in the pleadings might make a useful basis for an application to strike out against the claimant.

Hat tip to Philippe Bradley for pointing this case out to me.

Image rights: England v Germany and Philip Woolas's mug

Matt Wardman of the Wardman Wire asks an interesting question on the mySociety:public mailing list. He had created a couple of mug designs poking fun at the former MP Phillip Woolas and submitted them to the online platform Spreadshirt. According to his blog post they refused to accept the designs, saying:

These designs or products most likely infringe legal regulations. If not then the content is considered offensive, discriminatory or glorifies violence.

Now of course the designs were offensive — in the sense that someone could be offended by them — that really was the idea. If there were a law against being offensive Private Eye could never be published. Spreadshirt's Terms and Conditions say nothing to forbid offensive material; nor could the designs possibly seen as discriminatory (except perhaps against MP's who lose election courts) or glorifying violence. What of the "legal regulations" that Spreadshirt thought might be infringed.

A later response gave some clarification:

"Unfortunately we could not admit them for your shop because they infringe on the personal rights of Phil Woolas. These basically state that any image with his photo or name on it that does specifically refer to his person must be authorized by him. "

Such an unqualified statement of law must be rubbish, at least in any civilised society. If it were true then editors would find it virtually impossible to illustrate their newspapers and most of their budgets would be spent on clearing image rights with those depicted.

English law doesn't recognise an image right per se. The use of a person's image is not entirely free. For example if I take a photograph of you, you may be able to prevent me from using it:

• in a way that is defamatory of you — as in Tolley v J S Fry Ltd [1931] AC 333, where an amateur golfer successfully sued for libel when his image was used in a chocolate advert since it carried an implication that he had been paid for the advertisement and was therefore not maintaining his amateur status;
• to pass off your business as mine — this extends as far as using the image of a celebrity to falsely imply that they endorse my business, as Talksport did when the edited an image of Eddie Irvine holding a mobile phone into one holding a radio labelled "Talksport" in Edward Irvine Tidswell Ltd v Talksport [2002] EWHC 367 (Ch);
• in breach of trademark — assuming of course that you have trademarked your image and that my usage amounts to an infringement of that mark;
• in breach of confidence — if I received the photograph in confidence and my use of it is a breach of that confidence
• in a way that infringes your right to privacy derived from Article 8.1 of the European Convention on Human Rights(assuming I obtained the photograph in confidence) — in a case (Campbell v MGN [2004] UKHL 22) brought by Naomi Campbell against the Mirror for the publication of photographs of her going to a Narcotics Anonymous meeting, the House of Lords extended the action for breach of confidence to cover intrusions into an individuals private life;

There is also the Data Protection Act 1998. If the photographs are processed by computer (as they are by spreadshirt in this case) then they must also be “personal data”. If so, then they may only be processed if one of the conditions in Schedule 2 to the act are met. Processing for the purposes of journalism, literature and art is excluded from an obligation to comply with most of the data protection principles (by section 32) which makes life very much easier for newspapers. For use of photographs which is not journalism, literature or art, paragraph 6 of Schedule 2 would have to be relied on which requires that:

The processing is necessary for the purposes of legitimate interests pursued by the data controller or by the third party or parties to whom the data are disclosed, except where the processing is unwarranted in any particular case by reason of prejudice to the rights and freedoms or legitimate interests of the data subject.

Unfortunately there has been little consideration of this aspect of the Data Protection Act. In many cases the act is pleaded, but the eventual decision hangs on some other branch of the law. For example in Campbell's case.

It seems to me that neither of the mugs could possibly be defamatory (“Phillip Woolarse” doesn't come close), no-one coudl think that the mugs implied that Mr Woolas endorsed the Wardman Wire or that they were really the same business as him. The photographs were taken from election leaflets, criticised by the election court, and so are hardly an invasion of Mr Woolas's privacy and, arguably, they are “art” and so defensible against a Data Protection Act 1998 claim.

So much for England, but spreadshirt is German based. Now as an English lawyer, I known next to nothing about German law, but as I understand it the German KunstUrhG (law on the copyright of works of visual arts and photography) recognises a right known as Recht am eigenen Bild, usually glossed as “right in their own image” which I will refer to as “image right”. Section 22 of the KunstUrhG prohibits the distribution or public exhibition of the image of an individual without that individual's consent. A right to control over the use of one's image is also derived from Article 2 of the German Basic Law.

To an English lawyer's eyes this seems, at least at first sight, to give an excessive degree of control by an individual over the use of their image, and also to be a serious impairment of the freedom of speech. But German law is much more nuanced than that, not least because Article 5 of the Basic Law guarantees a right to freedom of expression.

Section 23 of the KunstUrhG makes a number of sensible exceptions, including one for images of people from the sphere of contemporary history (Bereiche der Zeitgeschichte). Until recently the German courts divided contemporary public figures into two groups: absolute figures of contemporary society (absolute Person der Zeitgeschichte) — those who stand out from the rest of society for example because of their political or social position, such as major political figures; and relative figures of contemporary society (relative Person der Zeitgeschichte)— those in whom there is public interest only due to a single event, such as victims of a notorious crime.

Section 23(1) is subject to section 23(2) which prevents distribution or display which harms the legitimate interests of the person portrayed (or after their death, the legitimate interests of their family). But section 23(2) aside, the absolute/relative classification would have meant that absolute figures of contemporary society had little protection against the use of photographs in a way that invaded their private lives unless they could show that a specific legitimate interest had been harmed.

The German law was found to be contrary to Article 8 of the European Convention on Human Rights in von Hannover v Germany brought by Princess Caroline of Hanover. The German Federal Court dropped the absolute/relative distinction (VI ZR 51/06) and held that the proper approach in all cases was to consider the balance between an individual's article 8 (basic law article 2) rights as against the interests of free speech under article 10 (basic law article 5). This approach has been endorsed as constitutional by the Federal Constitutional Court in a decision [link to English version] which usefully summarises a lot of the background.

Even after Princess Caroline's victory in the European Court of Human Rights, not everything has gone her way. Although the German courts agreed to prevent the distribution of some pictures of her, they permitted others. They have upheld the principle that sometime the interests of journalism, even where that is merely for entertainment rather than purely for information, outweighs the rights of an individual to their image. Princess Caroline is pursuing further action before the European Court of Human Rights.

My apologies for that long digression into German law (or what little I understand of it). In short: Spreadshirt's statement about image rights is rubbish even in German law. It seems to me extremely unlikely that using a picture of a Member of Parliament taken from an election leaflet that was the subject of a notorious and important trial could fall foul of the German image right as I have explained it. Spreadshirt staff may be forgiven for not realising that (if they are based in Germany) but for knowing that Mrs Thatcher (who cast a long long shadow) was a public figure.

Matt Wardman also wondered whether there might be a problem with copyright in the original election leaflet. The short answer is that

• copyright subsists in election leaflets just as in almost everything else (there is no special exception for them);
• copying the image is therefore a potential infringement, unless there is some defence available;
• there is no “fair use” defence in English law, contrary to the situation in the United States;
• there might be a defence of fair dealing for the purposes of criticism or review (to be found in section 30 of the Copyright Designs and Patents Act 1988, on the basis that the images on the mugs are a critical work, criticising the election leaflets which brought about Mr Woolas's downfall and that they are fair because they only use a small part of the offending leaflet;
• there might also be (and in this case there really ought to be) a public interest defence.

Copyright exceptions are so open textured that it is very difficult to be certain as to any of these, but I suspect any copyright suit would look very stupid.

Final draft of ACTA is out - nothing to see here

Thanks to the Patently-O blog on the subject, I learn that the Final Draft of the Anti-Counterfeiting Trade Agreement (ACTA) has been released. The EFF's web page on the subject has some background.

Earlier drafts contained a great deal of "pick and mix" material which still up for debate between the parties. The Final Draft suggests that those differences have been ironed out (though since the deliberations have been in secret I do not know the details).

My skim read suggests that there is not much in the treaty that would require the UK government to change our copyright law either in substance or as to the procedures used to enforce it. That does not mean that ACTA won't be used as an excuse (or opportunity depending on your outlook) to make changes, but there is a sufficient amount of flexibility in the treaty and a sufficient number of weasel words, that there should be no need for it to do so.

The Patently-O blog post does a good job of summarising the feel of the treaty. My own further thoughts follow.

Measures of damages

Article 2.2(2), which survives from earlier drafts, is particularly unreasonable. It starts uncontroversially enough:

Each Party shall provide that in civil judicial proceedings, its judicial authorities shall have the authority to order the infringer ... to pay the right holder damages adequate to compensate for the injury the right holder has suffered as a result of the infringement.

in other words damages should be compensatory and aim to compensate the injured for the wrong done to them — the usual position in English law. The treaty goes on:

In determining the amount of damages for infringement of intellectual property rights, its judicial authorities shall have the authority to consider, inter alia, any legitimate measure of value submitted by the right holder, which may include the lost profits, the value of the infringed good or service, measured by the market price, the suggested retail price.

Now just how bad this is depends on quite what effect "shall have the authority to consider" will have. Logically merely because a court may consider something, does not automatically mean that the court will pay much attention to it. In practice a legislative requirement to consider a factor will often mean that a court feels obliged to give that factor more weight than it would otherwise do.

What is so odd about that is that "market price" and "suggested retail price"may be a very long way from a good measure of the actual loss suffered by a rights holder. For physical goods, production costs may make up a large part of that price, but even for digital goods, the loss effected by infringement will almost always be less than the actual price because not everyone will have been prepared to buy at that price.

It is also very unusual to have a law that requires a court to consider one of the party's evidence as to damages, but not the other. The usual practice is for the court to have one or more objective measures for awarding damages and for the parties to submit evidence as to what those damages should be.

Since, strictly speaking, an English court certainly has the authority to consider any measure of damages put forward by either of the parties, this particular article should require no change to English law.

More damages

Article 2.2(3) obliges that party's to the treaty to implement one of 3 mechanisms for establishing damages for copyright infringement. All parties would have to chose one of:

• pre-established damages (that is some fixed measure that the court can apply mechanically
• presumptions for determining the amount of damages — in other words a pre-established mechanism for computing the amount
• additional damages — that is extra damages over and above those used to compensate

Section 97(2) of the UK's Copyright Designs and Patents Act 1988 already provides for additional damages. So there is no need for change here.

In my last post on ACTA I pointed out that the United States does have a rather draconian form of statutory damages, but only awarded to those who had the presence of mind to register their copyright — surprisingly many do not. At first sight it looks like the US will have to remove that precondition or implement one of the other options for pre-computing damages.

As I said then, it seems odd to me that copyright owners should be put in a better position than most other classes of claimant in civil proceedings (who have to prove their loss in the normal way and who are generally entitled to compensation for their loss and that's all). Rights in real property are not protected in this way. Similarly, someone carelessly injured and left quadriplegic (to use an emotive example) would have to prove all their loss and would expect to obtain no more. Why should IP be so special?

Costs

Article 2.2(5) requires parties to allow courts to award the winner their costs in copyright proceedings. That seems uncontroversial from the English point of view, where "costs follow the event" but the usual US rule is that each party bears their own costs. Copyright is special. 17 USC 505 allows the prevailing party to be awarded their costs and attorney's fees, but this is restricted by which requires that the copyright be registered at the time of the infringement (or soon after where the infringement takes place shortly after publication) as a prerequisite of costs recovery. Again the US may be forced to relax this requirement as a consequence of ACTA.

Summary

There's lots more in the treaty. The criminal provisions are probably already compatible with UK law, though they are triggered by "wilful" copying on a "commercial scale", rather than the various specific situations set out in places like Section 107 of the Copyright Designs and Patents Act 1988. There are all sorts of requirements for the parties to the treaty to work together to eliminate IP infringement and even (in article 3.4) a requirement to engage in pro-IP propaganda (one wonders at a time of budget cuts why we need to spend money on this but...). As far as I can see there's not much in the treaty that needs to directly impinge on our law. What our government chooses to do in response is another matter.