Copyright Cases

Question 1

Discuss “Infopaq International A/S v Danske Dagblades Forening Case C-5/08 (CJEU)” as it relates to

Originality

Answer 1

• Danish court had to decide whether electronic news clipping serviced infringed copyright by reproducing 11-word snippets comprising 8 words either side of a search term.
• Danish court asked ECJ whether 11 words comprised a ‘part’ of an article protected by copyright
• ECJ ruled on basis of acquis (previous directives - InfoSoc, database and term directive) and Berne convention that there was was a generalized standard of originality to determine this - “author’s own intellectual creation” - and applied this to authorial works too
• Whether 11 words satisifed these criteria in this case was a matter for national courts
• Infopaq strictly precedent for infringement only but quickly applied to issues of subsistence

Question 2

Discuss “Infopaq International A/S v Danske Dagblades Forening Case C-5/08 (CJEU)” (Infopaq I) as it relates to

Temporary Technology-Dictated Copies

Answer 2

• Requirements under Art. 5(1) Information Society Directive (CDPA 1988 S28A) that temporary copies escape liability only if:
  
  • the copy is transient or incidental
  • the making of the copy is ‘an integral and essential part of a technological process’
  • the copying only occcurs to enable either transmission of the work in a network between third parties and an intermediary, or to enable a lawful use of the work; and
  • the temporary copy has ‘no independent economic significance’
• In Infopaq I:
  
  • Court ruled that, to be transient, the duration of act must be limited to that necessary for completion of the process, and the copy must subsequently be deleted automatically and without human intervention.
  • A printout (as used in Infopaq’s process) would clearly not be a transient copy, nor would making digital copies available on a library terminal
  • A scan (as also used in Infopaq’s process) might be, however, depending on details of process

Question 3

Discuss “Infopaq International II, Case C-302/10” (Infopaq II) as it relates to

Temporary Technology-Dictated Copies

Answer 3

• Requirements under Art. 5(1) Information Society Directive (CDPA 1988 S28A) that temporary copies escape liability only if:
  
  • the copy is transient or incidental
  • the making of the copy is ‘an integral and essential part of a technological process’
  • the copying only occurs to enable either transmission of the work in a network between third parties and an intermediary, or to enable a lawful use of the work; and
  • the temporary copy has ‘no independent economic significance’
• In Infopaq II, the court considered that:
  
  • to be ‘an integral and essential part of a technological process’:
    
    • the temporary acts of reproduction must be carried out entirely in implementation of such a process so were not to be carried fully or partially outside of that process
    • however, the Court indicated that the condition could be satisfied even if initiated by human being e.g. scanning newspapers
  • ‘lawful use’:
    
    • should be interpreted broadly
    • making a summary of a newspaper article, being a use the copyright owner could not prevent, might justify the making of temporary copies for faciliating that use
  • ‘economic benefit’:
    
    • must be no economic benefit that was ‘distinct or separable’ from the economic advantage derived from the lawful use of the work concerned, or went beyond that derived from that use of the protected work
    • efficiency gains, e.g. making search easier, are not relevant

Question 4

Describe the findings of the CJEU in “FAPL v QC Leisure C-403/08”

Answer 4

• Art 2(e) of Conditional Access Directive defining “illicit devices” (equipment/software designed or adapted to give access to a protected service without authorisation) does not cover (legal) foreign decoding devices even if obtained using false name & address or in breach of a contractual limitation
• Art. 56 TFEU (freedom to provide services) precludes legislation in a member state making it unlawful to import/use foreign decoding devices
• Art. 101 TFEU (competition) prohibits exclusive license agreements between IP holders and broadcaster where they oblige broadcaster not to supply decoding devices outside territory
• Copyright Directive Art 2(a) means reproduction right extends to transient fragments in satellite decoder memory and on TV but fulfil conditions under exception of Copyright Directive Article 5(1) (temporary digital copies)
• Communication to public within meaning of Art. 3(1) of copyright directive covers transmission of broadcast works via tv to customers present in public house

Question 5

Discuss the significance of

Painer v Standard Verlags GmbH Case C-145/10 (CJEU)

Answer 5

• Background - Case involved publication of old portrait photos of kidnap victim, Natascha K, taken by a freelance portrait photograph, Ms. Painer, prior to disappearance. Newspapers also used simulated photo-fits of what she might look like then (eight years later). Ms Painer objected to use of her photos and the simulated photo-fit.
• Originality:
  
  • standard for photographs (under Art. 6 of duration directive) is same
  • standard is author’s intellectual creation reflecting his personality and expressing his free and creative choices
• Art 6(1) of Brussels regulation (allows cases to be brought in one member state against co-defendants from two member states):
  
  • cannot be avoided for substantially identical copyright infringements just beacause national legal grounds vary according to member state if there is a risk of irreconcilable judgments
• Art 5(3)(e) of Copyright Directive (defence for purposes of public security):
  
  • newspapers cannot of their own volition use work protected by copyright by invoking public security objective
  • however, defence may operate where initiative taken by national authorities and in agreement and coordination with those authorities
  • attribution obligation fulfilled if source indicated (e.g. photo from relevant police authority)
• Art 5(3)(d) (quotation defence):
  
  • Quotation defence is not limited to literary work so defence applies to photographs
  • Source must be indicated including name of author or performer

Question 6

Discuss the significance of

“Bezpečnostní softwarová asociace –Svaz softwarové ochrany v Ministerstvo kultury (BSA) Case C-393/09” (BSA)

Answer 6

• Background:
  
  • BSA claimed graphical user interface should be protected by copyright as a computer program
  • BSA claimed that television broadcasting of graphical user interface constitutes a communication to the public
• Judgment:
  
  • Graphical User Interface is not a form of expression of a computer program within the meaning of Article 1(2) of Software Directive (so not protected as a computer program)
  • However, GUI can be protected where it is author’s own intellectual creation
    
    • But, this criteria cannot be met where expression is dictated by their technical function as different methods of implementing an idea are so limited that expression and idea are indissociable
  • Television broadcasting of graphic user interface is not a communication to public (Art 3(1) copyright directive) as does not enable interaction (which is point of GUI)

Question 7

Discuss the significance of

SAS Institute Inc v World Programming Ltd Case C-406/10 (CJEU) and [2013] EWCA Civ 1482 (Court of Appeal)

Answer 7

• Background:
  
  • World Programming Ltd. had created their own program for running SAS code and processing their data files
  • Copyright infringement alleged in respect of both computer program and manuals
• Art 1(2) of Software Directive (protectable subject matter):
  
  • should be interpreted as meaning functionality, programming language and data file formats cannot be protected
• Art 5(3) of Software Directive - must be interpreted as allowing person who has obtained license to copyright program to observe, study, test to determine functionality of program (regardless of contractual provisions which are null and void)
• Art 2(a) of Information Society directive - reproduction of elements in user manual may be infringement, if intellectual creation of author
• EWCA:
  
  • affirmed CJEU and High Court decision, stated that copyright in manual was not infringed as “expression” of ideas in manual were copyrightable not ideas themselves
  • If InfoSoc Directive has changed the traditional domestic test, it seems to me that it has raised rather than lowered the hurdle to obtaining copyright protection

Question 8

Discuss the significance of

“Newspaper Licensing Agency Ltd v Meltwater Holding BV & ors [2011] EWCA Civ 890 (Court of Appeal)” (Meltwater I)

Answer 8

• Case determined newspaper headlines are capable of being original literary works
• Judge stated:
  
  • “considerable skill in devising [headlines] and they are specially designed to entice by informing the reader of the content of the article in an entertaining manner”
  • “the test of quality has been re-stated but for present purposes not significantly altered by Infopaq …the full implications of the decision have not yet been worked out”
  • English courts bound by Infopaq but prefer old language of “labour, skill and/or judgment”

Question 9

Discuss the significance of

“Public Relations Consultants Associations v Newspaper Licensing Agency Ltd (Meltwater) [2013] UKSC 18 (Supreme Court) and Case C-360/13 (CJEU)” (Meltwater II)

Answer 9

• Temporary copying exception (CDPA s. 28/ Copyright Directive Art. 5(1)) - browsing the internet and temporarily viewing copies falls within exception:
  
  • even though starting/ending the viewing of copies may begin manually
  • storage in cache may be for indefinite time period

Question 10

Discuss the significance of

Creation Records Ltd v News Group Newspapers [1997] EMLR 444 (High Court)

Answer 10

• CDPA 1988 s1(1) provides seemingly exhaustive list of types of creation covered by copyright law, which are literary works, muscial works, dramatic works, artistic works, films, sound recordings, broadcasts and published editions.
• This has been brought into question recently by CJEU jurisprudence but traditional English approach shown in Creation Records
• Background to case:
  
  • Series of objects were ‘artistically’ placed around a swimming pool and photographed for use on Oasis’s album ccover
  • Photgrapher from defandant’s newspaper took photograph of scene
  • Newspaper published their photo and offered to sell posters of it
  • Creation Records sought interim injunction for copyright infringement
• Significance:
  
  • Claim for copyright infringement failed as the arrangement of objects in the scene was not considered in the categories of protected work; in particular, it was neither an artistic work nor a dramatic work
  • Static scene so not dramatic work
  • Could not be considered a sculpture or collage under CDPA 1988 s4(1)(a) or work of artistic craftsmanship under CDPA 1988 s4(1)(c)

Question 11

Discuss the significance of

Sawkins v Hyperion Records Ltd [2005] EWCA Civ 565

Answer 11

• Background:
  
  • Hyperion appealed decision that it had infringed Sawkins copyright in performing editions of the works of Lalande (out of copyright) that he’d produced
  • Sawkins work did not involve recomposition or making an arrangement of Lalande’s work but instead editing to produce score, transpose into modern notation, correcting it and making certain other additions.
  • Sawkins claimed editions were original musical works hence copyrightable
  • Hyperion claimed they were merely transcriptions so no copyright subsisted
• Decision:
  
  • Judge ruled that copyright subsisted in Sawkins’ work as effort, skill and time invested was sufficient for Sawkins’ work to be original
  • Performance of music from editions infringed copyright as performers used majority of editorial additions added by Sawkins

Question 12

Discuss the significance of

Lucasfilm Ltd v Ainsworth [2011] UKSC 39

Answer 12

• Background:
  
  • Lucasfilm had brought copyright claim against Ainsworth for reproductions of stormtrooper helmets (which Ainsworth had originally made but the copyright for which was with Lucasfilm)
• English Copyright Claim:
  
  • Supreme Court upheld decision of lower courts that the Stormtrooper helmet did not qualify for copyright protection as it was not a “sculpture” under s.4 of CDPA 1988
  • Argument for applying copyright to Stormtrooper helmet was stronger than say for recreation of 19th century helmet in war film due to imagination involved. However, the helmet was primarily utilitarian as a prop in the film and the film, not the helmet, was the work of art.
  • SC stated appelate courts should be slow to interfere with trial judge’s decision in IP cases unless error in principle (based on precedent of Designer’s Guild)
• Justiciability of US copyright
  
  • Decided English courts should usually have jurisdiction of foreign copyright where there was in personam jurisdiction over defendant
  • Relevant EU regulations only assigned exclusive jurisdiction where rights were registered and/or validity of rights was concerned which rarely, if ever, would be the case for copyright
  • No policy issues mitigating against such enforcement
  • Mocambique precedent did not apply

Question 13

Discuss the significance of

UsedSoft GmbH v Oracle International Group Case C-128/11 (CJEU)

Answer 13

• Background:
  
  • Oracle sells perpetual software licenses distributed as internet downloads which according to the licencse are non-transferable
  • UsedSoft resold Oracle software licenses to customers who did not yet possess Oracle’s software and downloaded copies from Oracle’s website
  • Oracle obtained interim injunction, UsedSoft appealed, Court referred questions to ECJ
• Questions referred to ECJ:
  
  • Was the right to distribute copy under Art. 4(2) of Software Directive exhausted when acquirer had made copy with rights-holder’s consent by downloading onto data carrier?
  • Can lawful acquirer of user license under Art. 5(1) rely on exhaustion rule to make new copy if first acquirer has erased thier copy or no longer uses it?
• Decision:
  
  • Right to distribute exhausted under Art 4(2) if rights holder permitting download granted a perpetual license to use that copy for consideration
    
    • Followed from preliminary consideration that sale of software was making computer program available in EU for unlimited period in return for lump sum payment
  • Second acquirer is able to rely on exhaustion under Art 4(2) and be regarded as lawful acquirer of program

Question 14

Discuss the significance of

Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] FSR 121 (House of Lords)

Answer 14

• Background:
  
  • Claimant produced fabric design ‘Ixia’ and sold in shops
  • A year later defendant sold fabric with similar design in shops
  • Claimant sued for copyright infringement
• High Court ruling:
  
  • Judge found seven similarities between the designs which went beyond that expected from idea alone
  • Defendant had opportunity to copy claimant’s design as she was at trade fair where ‘Ixia’ was exhibited
  • Defendant’s account of how their design was created found unconvincing
  • Judge concluded defendant copied and took substantial part so infringement
• Court of Appeal
  
  • Defendant appealed on grounds that what was copied was not a substantial part
  • Court upheld appeal based on a seeming reanalysis of the facts of the case (rather than differing in principle/point of law)
  • Court looked at overall impression produced by both works and how they differed
• House of Lords
  
  • Claimant appealed decision of appeal court
  • House of Lords agreed with original decision of high court that substantial part was copied and reversed decision Cout of Appeal
  • Ruled appelate court did not have right to reverse first instance decision in absence of error of principle (e.g. in application of ambiguous legal standard)
  • Lord Millet - “Whether part taken is substantial must be determined by quality rather than quantity … depends on importance to copyright work [not defendant’s work]”
    
    • Don’t conduct visual comparison between works for assessing substantiality (only assessing copying)
    • Don’t dissect when assessing substantiality
  • Lord Hoffman:
    
    • protects foxes better than hedgehogs
    • originality tends to lie in detail with which basic idea protected

Question 15

Discuss the significance of

Temple Island Collections Ltd v New English Teas Ltd [2012] EWPCC 1 (Patents County Court)

Answer 15

• Background:
  
  • Claimant had created image comprising photo of Westminster Bridge in greyscale with a bus in red
  • Defendant photographed their own similar image
  • Claimant sued for infringement
• Decision
  
  • ​composition of photograph was original and could give rise to copyright
    
    • accepted and applied Infopaq ruling that copyright may subsist if it is author’s “own intellectual creation” (but hedged this by also referring to skill & labour)
  • Infringement was present as recreation copied so extensively from original composition that it copied expression rather than just idea - defendants’ cited collection of other works which worked against them as emphasised how different independent expressions of same idea could be

Question 16

Discuss the significance of

CBS Songs Ltd v Amstrad Consumer Electronics plc [1998] UKHL 15 (House of Lords)

Answer 16

• Background:
  
  • Amstrad sold twin-tape recorders which could be used for infringing copyright works
  • CBS brought case of copyright infringement on basis of CDPA s. 16(2):
    
    • Copyright in a work is infringed by a person who without the licence of the copyright owner does, or authorises another to do, any of the acts restricted by copyright
• Decision:
  
  • facilitating infringement with tape recorders was not enough as they could have been used for other purposes and infringing or not was up to user
  • no authorisation given as advertising made clear that they had no authority to grant permission, and they had no control over machines once sold
  • not joint infringer, no incitement to commit tort or criminial offence, no negligence as not their responsibility to discourage or warn against infringement

Question 17

Discuss the significance of

Svensson v Retriever Sverige AV Case C-466/12 (CJEU)

Answer 17

• Background:
  
  • Svensson’s et al.’s articles were freely accessible on a newspaper website
  • Clickable links to these articles were posted on the defendant’s website without authorisation from journalists
  • Svensson et al sued for alleged damages due to these internet links
• Question to CJEU: Does the provision of links constitute an act of communication to the public with the meaning of Art 3(1) of InfoSoc directive so require copyright’s holders authorisation?
• Decision:
  
  • Clickable links to protected works constitute a communication
  • The potential users of the site were a public as they were indeterminate and fairly large
  • But, for it to be considered “a communication to the public”, it must be communication to a new public not envisioned by the copyright holder
  • As work was communicated by same technical means and freely accessible, the public was the same so no new public communicated to in this case
  • But, new public would have been communicated to if hyperlink allowed users to circumvent restrictions (e.g. a paywall)

Question 18

Discuss the significance of

GS Media BV v Sanoma Media Netherlands BV Case C-160/15 (CJEU)

Answer 18

• Background:
  
  • Website operated by GS Media had posted hyperlinks to other websites with leaked photos of Playboy magazine model
  • Sanoma Media etc. alleged this was infringement of their copyright in photos
• Question to CJEU:
  
  • Whether, and in what circumstances, posting a hyperlink to protected works, freely available on another website without the consent of the copyright holder, constituted a communication to the public (InfoSoc Directive Art. (3)(1))?
• Decision:
  
  • Posting hyperlink to works protected by copyright and published without author’s consent did not constitute such a communication when the poster did not seek financial gain and acted without knowledge that the works had been posted illegally
  • But, where the person knew or ought to have known, e.g. because of notice given by rightsholders, then providing link was such a communication
    
    • when links posted a profit, person posting link should make necessary checks and knowledge presumed unless rebutted

Question 19

Discuss the significance of

Stichting Brein v Jack Wullems Case C-527/15 (CJEU)

(Filmspeler case)

Answer 19

• Background:
  
  • Wullems sold a media player (for profit) allowing unrestricted, free of charge access to material protected by copyright
  • Content provided by hyperlinks to websites providing unauthorised works
  • These websites did not require the meida player to function
• Question to CJEU:
  
  1. Was this a communication to the public under InfoSoc Dir. Art. 3(1)?
  2. Was it covered by temporary copying exception (InfoSoc Dir. Art 5(1?)
• Decision:
  
  1. The provision of the hyperlinks in the boxes was a communication to the public as:
     
     • sale of media player is an act of communication and is not (when these links are installed on it) the mere provision of physical facilities
     • box purchased by fairly large number of people so communication is to public
     • communication to new public as had knowledge that the content was illegal
  2. The acts of temporary reproduction on the multimedia player were not covered by the exemption as:
     
     • do not satisfy conditions set out in art. 5(1)(5) which specifies exceptions “shall only be applied where they do not conflict with normal exploitation of the work and don’t unreasonably prejudice legitimate interests of the rightsholder

Question 20

Discuss the significance of

Stichting Brein v Ziggo BV (C-610/15)

(The Pirate Bay case)

Answer 20

• Background:
  
  • Netherlands anti-piracy foundation applied for order requiring two ISPs to block access to a website providing peer-to-peer file sharing
  • Held on first instance, dismissed on appeal, supreme court referred question to CJEU on further appeal
• Question for CJEU:
  
  • Whether the operator of a website which made it possible to find files containing copyright-protected works, offered for peer-to-peer sharing, by indexing metadata for those files and providing search engine, constituted a communication to the public (art. 3(1) info soc dir.)
• Decision:
  
  • Set out previously establshed factors for determining communication to the public:
    
    • must be act of communication
    • must be to the public
    • must be made using new technical means or communicated to new public
  • Act of communication:
    
    • Yes, providing clickable links to copyright protected work has been considered an act of communication (see Svensson) so links to works in file sharing platform are act of communication
    • This is not mere provision of physical facilities in this case either as file sharing platform is not “dumb” but indexes to make content easy to find, classifies works, filters, removes obsolete links etc.
  • To the public:
    
    • De minimis threshold i.e. small or insignificant groups are not “a public”
    • Large number of subscribers to two internet proceedings had used website to use the peer-to-peer file sharing platform
  • A new public:
    
    • The public was new as it was not one taken into account by copyright holders when authorising initial communication (i.e. the content was illegal)

Question 21

Discuss the significance of

Ashdown v Telegraph Group Ltd [2001] EWCA Civ 1142 (Court of Appeal)

Answer 21

• Background:
  
  • Telegraph published extract from Paddy Ashdown’s diaries about meeting with Blair
  • Paddy Ashdown sued for copyright infringement
  • Ashdown won at first instance
  • Telegraph appealed on the grounds of fair dealing for criticism and review, and reporting current events - CDPA s.30, and public interest, CDPA s171(3) defences (and asked the right to freedom of expression in HRA to be considered)
• Decision
  
  • Appeal dismissed
  • Fair dealing for criticism and review (CDPA 1988 s.30(1)) defence:
    
    • Using extract from diary did not come within exception because the use wasn’t to critices or review the minute but merely to review or criticise the actions within it
  • Fair dealing for purpose of reporting current events (CDPA s.30(2):
    
    • there was continuing public interest in meeting despite being two years old so was current event (as it was meeting between current prime minister and opposition leader)
    • Limited extracts may have been justified on this ground to show that it wasn’t merely a rumour but the extent of reproduction was clearly for commercial reasons
  • Public interest defence (CDPA s.171(3) - allows for common law public interest exceptions)
    
    • Legal Points
      
      • Disagreed with Aldous LJ tightly circumscribing the public interest defence and preferred conclusion of Mance LJ that circumstances are not capable of precise categoristation or definition
      • Enactment of HRA means (in rare cases) right to freedom of expression may trump rights conferred by CDPA
      • S171(3) permits this defence to be raised
    • Case Points
      
      • Defence under CDPA s.171(3) will generally not need to be considered in course of report on current events because s30 affords court necessary scope to protect public interest
      • No argument for additional public interest scope under HRA because statement by Sunday Telegraph that they had the minute and one or two select quotes would be enough to show authenticity

Question 22

Discuss the significance of

Deckmyn v Vandersteen Case C-201/13 (CJEU)

Answer 22

• Background:
  
  • Under Infosoc Directive Art 5(3)(k) member states may (but do not have to) provide parody exception
  • Belgium had implemented such an exception
  • Member of far right political party (Deckmyn) had reproduced edited drawing from comic books with anti-immigration bent and captions in calendar
  • Owner of copyright in drawings (Vandersteen) brought proceedings
  • Court of first instance ordered that the political party cease all use of this drawing
  • Deckmyn appealed and submitted drawing was a political cartoon that fell under the scope of parody exception but this was disputed by Vandersteen
  • Questions on parody exception referred to CJEU
• Questions to CJEU:
  
  • Was the concept of “parody” an autonomous concept of EU law?
  • For a work to be a parody, did it have to satisfy certain conditions or conform to certain characteristics?
• Decision:
  
  • Parody was an autonomous concept of EU law (despite being optional exception) so should be interpreted uniformly throughout the EU
  • Parody is not defined in directive so usual meaning in everyday language should be used, so to be a parody:
    
    • it should evoke an existing work
    • be noticeably different from the existing work
    • constitute an expression of humour or mockery (of anything not limited to mockery of the work)
  • Parody not subject to conditions that:
    
    • displays “original character” of its own
    • it could reasonably be attributed to someone other than the original author
    • it mentions source of parodied work
  • However, application of exception for parody must strike a fair balance between the interests of rights holder and user of protected work relying on parody exception
    
    • e.g. may allow rightsholders preventing their work being associated with discriminatory messages

Question 23

Discuss the significance of

UPC Telekabel Wien GmbH v Constantin Film Verleih GmbH Case C-314/12 (CJEU)

Answer 23

• Background:
  
  • Constantin Film made application to Austrian courts to prohibit UPC (an ISP) from providing access to copyright infringing website
  • UPC considered such an injunction could not be addressed to it as:
    
    • it did not have any business relationship with operators of kino.to
    • never established that its own customers acted unlawfully
    • also raised points that:
      
      • blocking measures could be technically circumvented
      • some measures were excessively costly
• Questions referred to CJEU:
  
  • Should InfoSoc directive be interpreted as meaning that a person making protected subject-matter available on internet without rightholder’s consent was using services of access providers of persons seeking access to that protected subject-matter?
  • Was an injunction against an access provider prohibiting them from allowing its customer to access a certain website compatible with EU law, provided material on the website was provided exclusively or predominantly without the rightholder’s consent?
    
    • and could rightsholder avoid preventive penalties for breach of prohibition by showing it had nevertheless taken all reasonable measures?
• Decision:
  
  • 1st Question - Art 8(3) of InfoSoc directive had to be interpreted as meaning that person making protected subject-matter available without authorisation was making use of the services of businesses providing internet access to persons accessing that subject-matter
    
    • No specific relationship required between infringers and intermediary
  • 2nd Question
  • IP rights must be balanced with ISP’s freedom to conduct a business and freedom of information of internet users
    
    • freedom to conduct a business - injunction as described did not infringe substance of right because:
      
      • left decisions as to implementation to ISP who could choose to put in place measures best adapted to resources and abilities available to them
      • allowed ISP to avoid liability by taking all reasonable measures
    • Overall - fundamental rights did not preclude injunction provided:
      
      • measures taken by ISP did not unnecessarily deprive users of lawfully accessing the information available
      • measures had effect of preventing unauthorised access to protected subject-matter, or at least, made it difficult to achieve and seriously discourage users

Question 24

Discuss the significance of

Twentieth Century Fox Film Corp v Newzbin Ltd

Answer 24

• Background:
  
  • Newzbin provided a searching and indexing facility and guide to materials via Usenet
  • Newzbin retrieved title information from messages, stored information, categorised and subcategories content
  • Editors of indexes encouraged to focus on films
  • “NZB facility” enabled premium subscription users to download contents of files including movies sourced by newzbin
  • Fox contented that Newzbin had infringed its copyright directly or through its editors
• Decision:
  
  • Premium members of Newzbin had infringed Fox’s copyright
  • Newzbin by indexing, categorisation and NZB facility had implicitly authorised these infringements
  • Newzbin had engaged in common design to infringe with premium members as:
    
    • it was designed and intended to make infringing copies readily available
    • guided members towards infringing copies of thir choice
    • it profited from infringement (because of premium subscriptions)
  • Newzbin had communicated Fox’s works to the public, i.e. their members, by electronic transmission
    
    • not a passive service
    • Newzbin had intervened to make films available to a new audience, its premum members, via sophisticated, technical and editorial system, and in this way had communicated copyright films to public

Question 25

Noah v Shuba (EWHC)

Answer 25

• Where work was outside duties of contract of service then, even though it may be a useful accessory to their contracted work, it is not part of it (reaffirming Stevensson)
• Even where in course of employment, there can be an implied term in the contract of service which means that copyright subsists with employee, e.g. longstanding practice and implicit consent
• Background:
  
  • Dr Noah had written guide to safe skin piercing practices
  • Alleged his copyright had been infringed by publication in magazine
  • Employer alleged that the copyright belonged to them instead
  • Copyright was found to reside with Dr Noah as it had not been in course of employment and even if it had been there was a long standing practice where consultants owned the copyright in these sorts of works

Question 26

Stevenson Jordan & Harrison v MacDonald & Evans [1952] Court of Appeal

Answer 26

• Employee had mixed contract: part contract of services, part contract for services
• However, other ancilliary duties may be in effect be a contract for services (even if they are beneficial to the employee in their duties)
• In this case:
  
  • public lectures - under contract for services so copyright subsisted with employee
  • extracts from work with specific client - under contract of service so copyright was with employer

Question 27

Tidy v Natural History Museum

Answer 27

• Reducing size of cartoons of dinosaurs and adding colour background was not a derogatory treatment of a work

Question 28

Pasterfield v Denham

Answer 28

Not derogatory treatment to produce smaller version of drawings with alterations including omissions and colour variations

Question 29

Delves-Broughton v House of Harlot [2012] EWPCC 29

Answer 29

• Cropping a photo infringed moral rights as a distortion even though it not prejudicial to honour or reputation of author

Question 30

Henderson v All Around the World Recordings

in relation to damages for

Moral Rights

Answer 30

• In principle Article 13(1) of IP Enforcement Directive, allowed claimant to ecover damages for moral prejudice in relation to mental distress, injury to feelings and humiliation.
• Only in unusual circumstances, where damages for economic loss alone were insufficient, would moral prejudice be sufficiently significant to justify a further award.

Question 31

Walmsley v Education Ltd (IPEC)

Answer 31

• Education Ltd had used two of Walmsley’s photgraphs on their website without attribution
• Walmsley’s license terms (which Walmsley claimed were standard for the industry) doubled the license fee in the case of non-attribution
• The court granted Walmsley this double license fee i.e. his standard license fee for the infringement of his copyright and the additional uplift for infringement of his moral rights
• One of few cases where substantial additional damages were given for infringement of moral rights