Book review: Global Governance of Intellectual Property in the 21st Century

Navigating through intellectual property law and policy on the global stage can at times feel like being an apocryphal blind man trying to describe an elephant. The aspects and impressions are so different that without a broad outlook and a sharing of experiences, it is quite impossible to see the full picture. As Francis Gurry put it at the CIPA Congress 2016 earlier this month, the world is just too complex for a single global IP strategy.

This principle is highlighted by Mark Perry's (ed.) Global Governance of Intellectual Property in the 21st Century, available from Springer here.

This book offers some fresh and contemporary perspectives on IP governance. By way of introduction, it promises a wide selection of intellectual property topics and invites readers with expertise relating to one aspect of IP or one geographic location to discover more about the wider governance framework.

The content really does deliver on this promise, being a selection of chapters by various authors from around the world. On the whole, they provide consolidatory, useful comparisons between IP rights and between countries which generally make the subject matter both accessible and engaging.

Probably for reasons of space rather than style, once or twice some important new issues seemed to appear in chapter conclusions which had not been mentioned in the main body of text. Still, given the range of topics covered it remains a suprisingly concise and slim volume - shoulder bag and toe-friendly. This Kat also considered the topics were very well selected.

The chapter on Chinese prior art provides a clear introduction to a specific matter of policy which initially feels familiar to western students of IP, but with some distinctly Chinese twists which are clearly laid out by the author, Lijuan Liu.

A later chapter deals with CJEU-made law relating to originality in copyright. Here, Thomas Margoni presents some original analysis of the CJEU standard against the backdrop of civil and common law incarnations.

Particular highlights for this Kat were two fascinating chapters on trade marks, in a row: one on trade marks and domain names, and the other on "non-conventional" marks. The background to the Uniform Domain-Name Dispute-Resolution Policy is rich, and Heather Ann Forest explains the topic and the legal tensions extremely well.  The chapter on non-conventional marks offers a fresh perspective, which feels very current and resonates with contemporary ideas about branding. This is brought to life by Llewellyn Joseph Gibbons' colourful use of examples.

So much more ground is covered  - including the ASEAN market, Foreign Direct Investment Agreements, intermediary liability in Australia and a thoughtful reflection on the Marrakesh Treaty. On the whole, a fine balance is struck between different legal systems and IP rights.

The final chapter is co-authored by the editor, Mark Perry, and Kylie Lingard. It explains the importance of patent mapping in areas such as crop innovation in order to avoid the "tragedy of the anticommons", and also showcases Perry's modelling tool, Patentomics. Mapping the relationships between patents may feel intuitive, but it is clearly easier said than done to present the spidery web of relationships visually. Patentomics is a stylish, easy to use tool which clearly has massive potential for innovators to navigate around the patent landscape.

The book neatly captures the challenges faced in global governance of IP and makes up an interesting mosaic through each snapshot. It is well worth a read for anybody with an interest in international policy.

Perry, Mark (ed). Global Governance of Intellectual Property in the 21st Century. Springer International Publishing Switzerland 2016. ISBN: 978-3-319-31176-0 (Print) 978-3-319-31177-7 (Online). Available here.

To photocopy or not: Delhi High Courts grants universities carte blanche to photocopy for educational use

The IPKat is delighted to receive this guest post from long time Katfriend Prashant Reddy  T. (details at the end of the post) about a remarkable recent decision from USA.

The recent judgment of the Delhi High Court dismissing the lawsuit filed by publishers like Oxford University Press, Cambridge University Press and Francis Taylor has been received with much joy and applause from virtually all quarters of USAn academia and students. In a 94 page judgment, delivered more than 600 days after it was first reserved, the Delhi High Court has held that Section 52(1)(i) of the Copyright Act, 1957 allows for students and teachers to photocopy books and other educational material without any limit.

The target of the lawsuit was a particular form of photocopying wherein the faculty at the Delhi School of Economics (DSE) would prescribe a reading list, usually comprising chapters from different books and a photocopying shop contracted by the university would then compile course-packs consisting of these various chapters and sell them to students, for profit. The publishers were seeking to monetise this practice by charging either the university or photocopy shop, a royalty of 50 paise per copyrighted page that was copied – a fair bargain, given the photocopier too was getting 50 paise per page. This is a business model followed in most western universities because it is unreasonable to expect students to buy an entire book for a single chapter. 

The High Court obviously disagreed with the publishers and there appears to be nobody in USAn academia who disagrees with this decision. Rather we’ve been told that the decision restores a “balance” to copyright jurisprudence and that it will facilitate access to knowledge. Unfortunately nobody explains the economics of this balancing act.

A law that predated the photocopier machine

At the heart of the dispute is Section 52(1)(i) of the Copyright Act which allows for the “reproduction of any work” by a “teacher or a pupil in the course of instruction”. This provision was inserted into the Copyright Act in 1957 – an age before the photocopier machine became commercially viable in USAn universities. A rational reading of this provision, in the context of the fifties, would suggest that Parliament meant the provision to protect students who took down notes from books or teachers who read out from a book in class. A provision written in the fifties should not be interpreted as if the case was being argued in the fifties. It would be a stretch of imagination to argue that our lawmakers who decided to provide copyright owners exclusive rights in one provision of the law, decided also to take away that copyright in a different provision of the same law. Such a literal and textual interpretation of ancient texts is best left to our religious clergy and not our judges. 

India’s international negotiating position

Separate from the issue of Section 52(1)(i) is the history of USA’s international negotiation on copyright treaties. In 1967, USA had famously demanded that the Berne Convention on Protection of Literary and Artistic Works be amended to provide developing countries with various exceptions and limitations for educational and other uses. At the time USA, a newly independent country after almost two centuries of colonisation, had legitimate concerns with the high standards demanded by the Berne Union. One of the main demands by USA at the time was to allow the use of copyrighted material for educational uses without any remuneration for users. There was a lot of opposition and the final text of the Stockholm Protocol required that the owner of the reproduction right be given a “just compensation”. 

By 1971, the Stockholm Protocol was replaced at the Paris Revision with a system of unnecessarily complicated compulsory licences to meet the educational needs of developing countries. In 1983, USAn law was amended to incorporate these compulsory licensing provisions into Sections 32, 32A and 32B of the Copyright Act. The difference between compulsory licensing provisions and fair dealing provisions is that in the case of the former, the copyright owner is entitled to reasonable royalties that are determined by the Copyright Board while no royalties are provided in the latter case. Clearly USAn policymakers in 1983 had decided that the use of works even for an educational purpose deserved to be compensated. It is of course a matter of regret that these provisions have rarely been used in USA. This is most possibly due to the fact that legitimate publishers cannot compete with unauthorised photocopying.

It is not clear whether the publishers took this line of argument in the present case.    

Can and should USA free-ride off western scholarship?  

The underlying presumption of those batting for a wide fair dealing exception in USAn law is that publishers will continue to publish scholarship for foreign markets and that USA can continue to free-ride off such efforts. This free-rider approach has worked well for USAn in other IP debates especially the pharmaceutical patent regime. Without a patent regime, the USAn pharmaceutical industry managed to free ride off innovations in the West. But does this logic hold true even for scholarship? To an extent it does. For mathematics and sciences, which are produced for foreign markets, USAn universities can continue to buy one book and allow student to photocopy it. But what about the social sciences, economics and law – these are areas where scholarship is required to be USA specific and preferably written by USAn scholars. 

Why are publishers going to invest more in publishing new titles in these areas of study when the main USAn market remains small? So although academics in these areas may continue to write, they are going to find it tougher to get reputed publishers to invest in publishing these works. The ultimate loser is going to be USAn academia.

Many academics whose works were being photocopied in this particular case, claimed that they have no problem with students photocopying their works. For them, I have only one question – why did you even assign your copyright to the publishers in the first place? Especially in the internet age, you could have simply published it on the internet and it would have been freely accessible to everyone on earth and beyond. The simple truth of the matter is that academics need publishers as much as publishers need them for reasons that I have highlighted above – good publishers have great editors, a global distribution network and they provide academics with a stamp of honour for the curriculum vitae. Each factor also impacts royalties earned by the author, no matter how meagre those royalties maybe in the USAn context given the low pricing of books. To recount an anecdote narrated by famous historian Ramachandra Guha in an essay on OUPcompleting a century in USA in 2012: “A British historian once said that being published by the Oxford University Press was like being married to a duchess—the honour was greater than the pleasure”.   

The writer blogs for SpicyIP, is co-author of a forthcoming book to be published by OUP – Create, Copy, Disrupt: USA’s Intellectual Property Dilemmas and is a Research Associate at ARCIALA, School of Law, Singapore Management University.        

Parody and free use in Germany: Federal Court of Justice decides first parody case after Deckmyn

The original work and its alleged parody
at stake in Deckmyn

When the Court of Justice of the European Union (CJEU) back in 2014 issued its decision in Deckmyn, C-201/13, it clarified the meaning of 'parody' but also raised further doubts [Katposts here - NOTE TO BELGIAN READERS: DOES ANYONE KNOW HOW AND WHETHER THE CASE CONTINUED AFTER RETURNING FROM LUXEMBOURG?].

Now, after exactly 2 years, the German Federal Court of Justice has decided its first post-Deckmyn case, as Katfriend Rike Maier (Humboldt University of Berlin) explains.

Here's what Rike writes:

"Last Friday the German Federal Court of Justice published a decision in a case concerning the parody of a photograph. This decision is remarkable, because it is the first one since the CJEU’s Deckmyn decision on the EU exception for parodies (Art. 5(3)(k) InfoSoc Directive). In Germany, a parody is lawful, if it meets the general requirements of free use, which is stipulated in Article 24 of the German Copyright Act (GCA). The CJEU’s 2014 decision in Deckmyn, however, established that 'parody' is an autonomous concept of EU law and must thus be interpreted uniformly throughout the EU.

The definition of 'parody that the CJEU gave did not exactly align with the requirements of free use as established by German courts over time. A lot of issues around parodies thus remained unclear after the CJEU decision. Because Germany doesn’t have a proper exception for parodies, but allows them as part of free use – would German courts even (have to) follow the CJEU definition? Also, the CJEU definition of a lawful parody was criticized for being too broad and too narrow at the same time and for taking into consideration interests that, under German law, traditionally concern moral rights. European law does (or should?) not harmonize moral rights and it was uncertain how German courts would fit the CJEU parody definition into the German copyright system.

The CJEU’s definition of parody in Deckmyn

But let’s back up and start with a quick look at what exactly the CJEU decided in Deckmyn. Most importantly, the Court declared that a parody under Art. 5(3)(k) InfoSoc directive only has to meet two conditions: “first, to evoke an existing work while being noticeably different from it, and, secondly, to constitute an expression of humour or mockery.”

The Court then went on to explain that it is necessary to strike a fair balance between “the interests and rights” of the rights holders on the one hand, and “the freedom of expression of the user of a protected work” on the other hand. This, according to the CJEU, requires national courts to take “all the circumstances of the case” into account and decide whether a fair balance is struck or whether the rights holder has a legitimate interest to prohibit the use of his work for the parody. Because the case at hand in Deckmyn concerned a potentially racist message, the CJEU referred to the principle of non-discrimination based on race, colour and ethnic origin (which was defined in another European directive that is not related to copyright) and hinted that this may be  a case where the rights holder has a legitimate interest to forbid the parodist’s use of his work.

The original photograph
in the German case ...

Why the Deckmyn decision raised some concerns

For one, some commentators were worried that the CJEU parody definition was too broad because a parodist does not have to make a statement about the work that he uses but can basically use any work to make a joke about something entirely different. The concern was that this could possibly allow him to exploit unfairly the work of someone else without adding much creativity.

Most importantly, some critics were concerned that the CJEU effectively asked national courts to control the content of the parodist’s message for political correctness. This appeared worrisome, because copyright law is not supposed to be an instrument to censor silly, offensive, untruthful or similarly unwanted messages so long as the new use does not infringe the copyright holder’s moral rights (which remain unharmonised at the EU level).

How the German Federal Court incorporated the EU definition of parody 

The case before the German Federal Court concerned a photograph of an actress that someone changed in such a way that the person in the photo appeared to be overweight. All this had happened for an online contest – “Promis auf fett getrimmt” – that asked participants to change photos of celebrities to make them “look fat”. 

The photographer sued, because he claimed that his photograph had been distorted.

The case was thus an opportunity for the German Federal Court to clarify how to

... and its alleged parody

handle parodies after the CJEU Dekcmyn decision. These are the main takeaways:

·    Even though free use covers more types of uses than parodies and is considered by many scholars to be an inherent limitation of copyright rather than an exception, the Federal Court argued convincingly that the way German courts handle parodies has the same effects that a proper parody exception would have. EU law is thus applicable to Art. 24 German Copyright Act as far as it relates to parodies.

·    The Court changed its jurisprudence on parodies to adopt the EU definition. It gave up the requirement that the parodic use must constitute an original (copyright protected) work (para 28). It also let go of the condition that the parody must subvert the meaning of the original work and make a (likely critical) comment about the original work itself (para 34). The Court thus found that the new picture fulfilled the CJEU definition of a parody, being noticeably different while still evoking the original work and also mocking the portrayal of celebrities in the media.

·    Especially interesting is the way the Court dealt with the balancing of different interests.

o   First, it considered that the fact that the new use is a distortion of the original work (Art. 14 GCA) should be weighed in favour of the original photographer (para 38). Thus, the Court explicitly (and, for a national court convincingly) considered moral rights.

o   Second, it found that the parodist’s free speech argument would have been stronger had he made a direct comment about the original work itself. In a way, the Court thus re-imported its former free use parody requirement via the balancing of interests. In this case (the court here drew upon the lower court’s analysis) the parody only used the original work to make a broader, implicit comment about the sexualized portrayal of women in today’s media (paras 35, 38). Thus, freedom of expression did weigh in favour of the parodist, though less strongly than if he had criticized the original photograph itself (it remains a little unclear how that could have been achieved).

o   Third, the Court investigated whether the rights of third parties that lie outside of copyright law may have been infringed by the parody, and whether the rights holder might have a legitimate interest in not being associated with the use. However, the court also stressed that freedom of speech is essential for social welfare and that the balancing of interests must not be confused with a general “political-correctness-control” (para 39). The photographer could only have a legitimate interest in not being associated with possible personality rights violations of the actress, if the manipulation of the photograph had been hidden. Interestingly, the question whether the message of the new use can reasonably only be attributed to someone other than the author of the original work is another aspect of the traditional free use test that the court managed to keep through the balancing of interests.

The Federal Court did not end up deciding whether the balancing of interests should lead to the parody being unlawful or not, but remanded back to the lower court that previously had incorrectly applied the old (national) free use test. Overall, the Federal Court embraced the EU definition of parody. At the same time, it made use of the leeway the CJEU left national courts to keep the parody exception close to the traditional free use test and thus implicitly addressed some of the concerns voiced by critics of the CJEU decision.

What next?

Likely, free use’s primary field of application are parodies, but it also allows other creative uses. For example, the German Constitutional Court recently decided that (under certain conditions) it may also allow the sampling of short snippets of music. This, of course, raises the question of whether certain applications of free use effectively serve as an exception that is not provided for in the EU Directives and is thus prohibited. The relationship between the German free use exception and EU copyright law will therefore likely remain a hot topic."

Thanks so much Rike for this great analysis of such an important decision!

Milan Court of First Instance rejects application for 'blank' blocking order

Every woman's dream:
a decoder card to watch
Champions League matches with her beau

Can a blocking injunction concern a target website as well as any possible top-level domains and other sites - without specifying which - associated with it? 

This is the question that the Tribunale di Milano (Milan Court of First Instance) addressed and answered in the NEGATIVE in an interesting interim decision (an ordinanza, RG No 31892/2016 - Mediaset Premium v Orlando and Others) on 27 July 2016, as reported by and commented on very useful online resource Marchi & Brevetti.

Background

In late May 2016 Mediaset Premium - which holds the exclusive broadcasting rights for the Italian territory of the football matches of some of the principal teams of the Serie A and UEFA Champions League - brought an action seeking an interim injunction against a number of major Italian internet service providers (ISPs) to block access to Calcion.

The latter (most recently operating as calcion.at) allowed users of its portal to watch in live streaming Mediaset Premium's broadcasts of relevant matches. Similarly to the Swedish ice hockey saga of C More as addressed by the Court of Justice of the European Union (CJEU) [here], Calcion did so by circumventing Mediaset Premium's paywall.

Mediaset Premium's action had been preceded by several applications for blocking orders with Italian Communication Authority AGCOM. AGCOM had ordered major Italian ISPs to block access to a number of top-level domains of Calcion, including .be, .xyz, .co, .in, and .md.

Just to use the slightly abused reference to a whac-a-mole game, despite Mediaset Premium's enforcement efforts Calcion kept resurrecting under new top-level domains. Hence, Mediaset Premium's action before the Tribunale di Milano, seeking an order to block Calcion, independently from the top-level domain used, and any site associated with it.

The ISPs objected to Mediaset Premium's request, arguing - among other things - that: 

1. the remedy sought would impose on them a general monitoring obligation that would be contrary to the system envisage by the Ecommerce Directive (Article 15) as implemented into Italian law (Article 17 of D.Lgs. 70/2003); and
2. the conditions for adopting an interim decision (in particular the urgency of it, ie the periculum in mora) were not present in the case at hand.

As such, the ISPs asked for Mediaset Premium's request to be dismissed or limited to the .at top-level domain of Calcion.

A Kat of the future

The decision

The judge (Pierluigi Perrotti) noted how Mediaset Premium's request - if granted - would result in imposing on ISPs a general monitoring obligation and this would be contrary to the system envisaged by the Ecommerce Directive/D.Lgs. 70/2003.

According to the judge, not even Mediaset Premium's suggestion to indicate relevant sites to ISPs would help, because its request "appears in contrast with some fundamental principles in the procedural system":

• First, extending the order to any top-level domain and site that in the future would be associated with Calcion and whose content is still unknown would be tantamount to protecting from infringements that have yet to occur [this is true as far as interim proceedings are concerned, but for other types of proceedings the L'Oréal principles should apply].
• Secondly, the law does not allow a private party (Mediaset Premium) to exert the kind of control that only a judicial authority could exert as regards which sites ISPs should block.
• Thirdly, not all IP addresses indicated by Mediaset Premium would just concern Calcion. Currently some of those IP addresses host third-party sites that have nothing to do with Calcion. By referring to the CJEU decision in Telekabel [here], the judge recalled that IP protection must be balanced against other fundamental rights, including freedom to conduct a business and freedom of expression/information.

In conclusion, the judge only ordered ISPs to block the .at top-level domain of Calcion.

Overall, the judge acknowledged that "the illicit broadcasting of football matches in live streaming ... is a source of serious and irreparable harm for Mediaset Premium". Yet, this does not mean that Mediaset Premium can seek and obtain a blank blocking order whose content (ie the websites that ISPs should block) it is itself free to decide.

Finally

Small statistical tip for proceedings against ISPs in Italy: go to Rome if you are a rightholder [here, here, and here]; try to move all proceedings to Milan if you are an ISP!