Monday, 23 October 2017

TV formats potentially eligible for copyright protection as dramatic works under UK law

The allegedly infringing TV gameshow

Can TV formats be protected by copyright? 

While this question has received an answer in the affirmative in a number of jurisdictions around the world [this blog recently reported on the latest judgment of the Italian Supreme Court to confirm eligibility for protection of this subject-matter under Italian law], under UK law things have been uncertain for a long time.

One of the reasons for such uncertainty is the outcome of the Opportunity Knocks case (Green v Broadcasting Corporation of New Zealand), in which a claim to the copyright in the format for a game show failed. However, it is important to recall that one of the principal reasons why the action was dismissed is that no scripts were available at trial and in any case they contained little more than general ideas and concepts.

Leading UK copyright commentaries like Copinger and Skone James have indeed highlighted how (§3.93) "[t]here is no reason in principle ... why a format should not be protectable as a dramatic work [under section 1(1)(a) and section 3 of the Copyright, Designs and Patents Act 1988 (CDPA)] if it contains a sufficient record of how the show is to be presented."

Last week a response in the sense of eligibility for copyright protection of TV formats under UK law also came from the High Court of England and Wales.

In Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd & Anor [2017] EWHC 2600 (Ch), the court held that a TV format can be potentially protected by copyright, although in the specific case the action failed.

Background

The action was brought by Banner Universal Motion Pictures (BUMP, a UK company), in its capacity as assignee of the rights to the Minute Winner format developed in 2003 by a Danish citizen, against - amongst others - a Swedish TV production company (Friday TV). 

The claimant submitted that, further to a 2005 meeting in Stockholm at which confidential information was disclosed, including the disclosure of catch-phrase “You have a minute to win it” [at the time when the action was brought in the UK Swedish court had already ruled that no confidential information had been disclosed; the High Court of England and Wales declared that the cause of action estoppel operated], Friday TV misused such information to develop a gameshow format: Minute to Win ItThis show first aired in the US in 2010 and was subsequently broadcast in the UK in 2011. Rights to Minute to Win It were sold in over 70 countries around the world.

Kat format
The Minute Winner format

The format of the claimant is described in the Minute Winner Document presented bto the court as follows:

"MINUTE WINNER
Mini-format Game show
Daily or weekly show.
Or short one minute between main programs.
Morning, Evening or Afternoon program.
One minute, or 30 minutes with several winnings."

Minute Winner is further described as “a television program in which people are given one minute to win something. WHERE? The program takes place in a studio (and in location: street, shopping mall or unexpected at people's homes). The program is cheaper to produce on location, as it only requires a cameraman, soundman, a host and a stopwatch PRIZES [examples are provided in the rest of the format document] The prizes are sponsored by firms/companies in exchange with advertisements during the program."

The Minute Winner Document further adds that "The combination of luck and pure coincidence is a factor that would make people wish that one day they could be stopped on the street and be given a chance to win something on television."

As to showing times, the Document clarifies that "The program can be shown daily (optional) as a one-minute fill in, before or after a main program. Minute Winner can also be shown either as a morning program, afternoon program or evening access prime time program."

The Document also contains the following disclaimer:

"Concept created by Derek Banner/Bump Productions. Copyright 2003, all rights reserved. This format is protected under the international copyright law and intellectual property protection. It shall not be transmitted, exploited, copied produced, used, disclosed or distributed, in part or in its entirety, without permission from its owner."

BUMP submitted that copyright subsists in the Minute Winner Document as an original dramatic work under the CDPA. It did not submit that it was also a literary work, because such categories under UK law are mutually exclusive.

Originality

As regards originality, Snowden J recalled that – further to SAS v WPL [of course informed by relevant case law of the Court of Justice of the European Union which arguably mandates something more than the just “sufficient skill, labour or effort” traditionally indicated by UK courts since University of London Press], what is required is “that the work must be an expression of the author's own intellectual creation … This does not, however, mean that every constituent aspect of a work must be original. The work must be taken as a whole, and can include parts that are neither novel nor ingenious.”

Notion of dramatic work

The court then recalled that, although the expression ‘dramatic work’ is not defined in the statute, it must be given its ordinary meaning. This, in Norowzian v Arks Ltd (No 2) was said to be that of “a work of action, with or without words or music, which is capable of being performed before an audience."

According to Snowden J, while the unauthorized re-enactment of a recorded episode of a TV game show or quiz show would likely amount to copyright infringement, what was at stake in this case was NOT the single episodes of Minute Winner, since the show was never produced.


Dramatic Kat
The question was rather “whether what is usually referred to as the "format" of a television game show or quiz show is separately capable of being protected by the law of copyright.” 

The judge noted that his is a question that has been considered in comparatively few cases.

A format as a protectable dramatic work

Snowden J held that:

“it is at least arguable, as a matter of concept, that the format of a television game show or quiz show can be the subject of copyright protection as a dramatic work. This is so, even though it is inherent in the concept of a genuine game or quiz that the playing and outcome of the game, and the questions posed and answers given in the quiz, are not known or prescribed in advance; and hence that the show will contain elements of spontaneity and events that change from episode to episode.” [para 43]

Requirements for protection

What is required for a format to be protected is explained at para 44 of the decision:

“copyright protection will not subsist unless, as a minimum, (i) there are a number of clearly identified features which, taken together, distinguish the show in question from others of a similar type; and (ii) that those distinguishing features are connected with each other in a coherent framework which can be repeatedly applied so as to enable the show to be reproduced in recognisable form.”

The format at issue

Having affirmed the potential eligibility for copyright protection of TV formats, Snowden J however excluded that Minute Winner could be protected. In fact,

“tested against any of those requirements [indicated above], there is no realistic prospect of BUMP persuading a court that the contents of the Minute Winner Document qualified for copyright protection. In my view, those contents are both very unclear and lacking in specifics, and even taken together they did not identify or prescribe anything resembling a coherent framework or structure which could be relied upon to reproduce a distinctive game show in recognisable form. The features were, in truth, commonplace and indistinguishable from the features of many other game shows.” [para 46]

Breach of confidence and passing off

The court also dismissed the claims for breach of confidence (for the reason indicated above) and passing off, the latter on grounds that the claimant did not possess the necessary goodwill [including actual customers in the UK, as per the Supreme Court decision in Starbucks] to succeed in its claim.

Conclusion

This decision sheds light on an area of UK copyright that has remained uncertain for a long time, also due to the rigid and closed system of categories envisaged by the CDPA.

However, as the outcome of the case confirms, wannabe holders of copyright in TV formats must pay substantial attention when drafting relevant documents, and provide as many details and information as possible. Another crucial aspect when it comes to potentially commercially valuable works like TV formats is to draft and rely on robust non-disclosure agreements, also to offset the fact that relevant documents should be sufficiently detailed.

[Originally published on The IPKat on 23 October 2017]

Sunday, 22 October 2017

Another German decision warns against broad application of GS Media presumption for for-profit link providers

           Visual map on linking after GS Media, available here
A few days ago this blog reported on a recent decision of the Regional Court of Hamburg that, similarly to another German judgment – this being the also recent ruling of the Federal Court of Justice (BGH) [here] – questioned or, at least, proposed a restrictive meaning and application of the recent decisions of the Court of Justice of the European Union (CJEU) on the right of communication to the public and linking to protected content under Article 3(1) of the InfoSoc Directive.

It appears, in particular, that it is the CJEU construction of prima facie liability for unauthorized linking as found in GS Media [Katposts here] – notably the presumption of knowledge applied to link providers with a profit-making intention (see my table on the right hand side) – to face resistance.

Thanks to a couple of German Katfriends, I have been made aware that there is a third recent decision that also shows an approach to linking and the GS Media presumption which is possibly different from the one envisaged by the CJEU.

It is once again a judgment (310 O 117/17) [also commented here] of the Regional Court of Hamburg, once again involving pug dog Loulou.

The new Hamburg decision

In a nutshell, in this case the Hamburg court held that there is no act of communication to the public within §§ 15(2) UrhG and 19a UrhG if a person who links to protected content without the relevant rightholder’s permission is unaware that such content is unlawful. 

In particular, even if the link provider has a profit-making intention, there should be no presumption that he had awareness that the content linked to was unlawful if he operates in a context in which it would be unreasonable to expect that checks are performed to ensure that the content linked to is (and remains) lawful.

In the case at issue, the defendant’s linking activities were performed algorithmically and, similarly to the other Hamburg decision, also in this instance the infringing content linked to was available on Amazon.de.
Loulou

The defendant had no actual awareness that the content linked to was unlawful, nor was its unlawful nature recognizable. A relevant aspect was also the fact that, to be able to offer products for sale on Amazon, merchants have to agree to the platform’s terms of use, including declaring that they own the copyright to the images displayed.

Scaling down GS Media

According to the court [para 67], the GS Media presumption of knowledge cannot be considered as indistinctly applicable: instead, it should be only relevant in situations in which the link provider/defendant can be expected to carry out the necessary checks to determine the status – lawful or unlawful – of the content linked to.

Paragraph 68 of the decision contains a direct scaling down of the CJEU approach in GS Media

The German court acknowledged that [at para 51] the CJEU seemingly mandated a generally applicable presumption for links posted out of profit. However, a conclusion of this kind would contradict what is stated at paragraph 34 of GS Media itself, ie that the assessment of whether a link provider can be liable under Article 3(1) of the InfoSoc Directive must be individualized and take account of several complementary criteria that “may, in different situations, be present to widely varying degrees”.

Loulou's
unauthorized
telephone case
According to the court, in the case at issue it would be “unreasonable” and “economically unjustifiable” to expect that the defendant carries out such checks in relation to each and every content (automatically) linked to, including content hosted on a platform like Amazon.

The defendant’s business model – including the fact that the content is not ‘incorporated’ to look as the defendant’s own content - is such that no specific searches for unlawfulness can be expected. Holding otherwise would not only be unreasonable, but also amount to an undue compression of the fundamental freedom to conduct a business, pursuant to Article 16 of the EU Charter of Fundamental Rights.

Conclusion

This is the third decision in a short timeframe that proposes a 'minimalist' reading of the GS Media presumption for for-profit link providers. 

In these cases the German courts, instead of holding the presumption rebutted in the specific instance considered (as it appears - or rather appeared? - to be the approach in GS Media), held against its applicability tout court, on grounds of reasonableness and by placing significant emphasis on the fundamental rights dimension. 

From the reading of these judgments, the fear that the relationship between copyright protection and freedom to conduct a business might be too unbalanced in favour of the former is acutely felt. This - together with considerations relating to the proper construction of the right of communication to the public, including the requirement of an individualized assessment - arguably supported the resulting outcome. 

[Originally published on The IPKat on 22 October 2017]

Tuesday, 17 October 2017

Another German decision questions reasonableness of GS Media presumption if generally applied

A few weeks ago this blog reported on the judgment of the German Federal Court of Justice which decided that the presumption of knowledge envisaged by the Court of Justice of the European Union (CJEU) in GS Media [Katposts here] for for-profit link providers would not be applicable to search engines due to their importance to the functioning of the internet.

I have been made aware that this decision is not an isolated instance, and a similar line of reasoning can be found also in another recent German judgment, ie the one of the Regional Court of Hamburg issued earlier this year (308 O 151/17). Also this ruling shows a certain disagreement with recent CJEU case law on the right of communication to the public, including in the linking context, and warns against the dangers of intending the GS Media presumption of knowledge in too a broad sense.

Background

The decision orginated in the context of proceedings brought against the operator of a product search engine which lists furniture and home accessories for sale. The results are obtained by aggregating the listings of over 200 online shops. Further to a certain search, the defendant’s site displays results which consists of photographs (stored on third-party sites) of relevant products and links to the various listings.

The claimant operates an internet site on which it offers photos and products displayed by photos depicting a pug dog named Loulou, including the photograph below (to which it owns the copyright):
Use of the photograph above is licensed to third parties. One day, the claimant found out that the defendant's website displayed among the various results also a listing for a cushion (available for sale on Amazon) that reproduced - without its permission - the Loulou photograph above:
The claimant submitted that, by displaying this result, the defendant made an unauthorised act of communication to the public pursuant to §§ 15(2) UrhG and 19a UrhG

Being a for-profit undertaking, according to the claimant, the defendant had an obligation to ensure that the links displayed through its search engine would be to lawful content.

The decision

The Hamburg court dismissed the action, holding that the simple linking of a work hosted on a third-party site by way of 'framing' does not constitute an act of making available to the public within §19a UrhG. Referring to the decisions in Die Realität I and II, according to the court this is so because it is the operator of the third-party site that decides on the making available of the work at issue. 

Accordingly, the only provision that might come into consideration is the 'unnamed' right of communication to the public within §15(2) UrhG. To determine whether that would be actually the case, the court deemed it necessary to review relevant CJEU case law on Article 3(1) of the InfoSoc Directive.

The Hamburg court recalled the requirements of (1) an act of communication (2) directed to a public, as well as the other interdependent criteria employed by the CJEU and the 'indispensable intervention' of the user. The court then focused on the GS Media presumption of knowledge for link providers that act with a profit-making intention.

The court excluded that there would be a communication to the public in the case at issue. Although the requirement of the 'new public' was met, the act at issue would not take place with the indispensable intervention of the defendant, ie - as the CJEU held in Filmspeler [here] - an intervention made “with full knowledge of the consequences” of such conduct. 

According to the Hamburg court, the defendant in this case - although operating for a profit - had neither positive knowledge of the unlawfulness of the offer displayed through its search engine, nor could it have acquired knowledge of the offer’s unlawfulness in a reasonable way. The court also noted that a platform like Amazon is not usually associated with unlawful listings.

The links displayed were created through a completely automated process and the relevant offers were not subject to any editing or other manual control. This means that it cannot be assumed that the defendant had knowledge that the offer at issue incorporated content that would infringe the claimant's rights. 

In addition, upon becoming aware of the unlawfulness of the listing, the defendant promptly removed it. 

According to the court, considering that the defendant's databank contains 50 million offers, it would be unreasonable to expect that every single link is checked beforehand. In the event of (several) completely automated processes it cannot be expected that the GS Media presumption operates in relation to each and every link. Referring to the Opinion of Advocate General Szpunar in Ziggo [here], the Hamburg court held that holding otherwise would extend liability to every imaginable far-removed contribution due to negligible lack of knowledge and, therefore, on the basis of merely fictitious intention. 

The court added that any different interpretation would also result in an undue compression of one's own freedom to conduct a business, as per Article 16 of the Charter of Fundamental Rights of the European Union.

As to whether things would change in the event that the link provider adopts third-party content as its own (which in any case was not what happened here), the court stated that this remains uncertain at the EU level. 

Comment

The decision of the Hamburg court, similarly to the one of the Federal Court of Justice, warns against an overly broad understanding of both communication to the public and the obligations imposed on link providers that operate for profit, especially if these handle a high number of links. 

Some aspects of the CJEU judgments discussed by the German courts are ambiguous and in need of further clarification. One might wonder whether national courts are best placed to carry out such an explanatory task or whether, instead, clarification at the CJEU level might be a better option to avoid inconsistent applications of relevant judgments by national courts.

[Originally published on The IPKat on 16 October 2017]

Tuesday, 10 October 2017

Freedom of panorama: would it hurt architects? Survey among Italian-based architects says NO

Contemporary architecture in Rome:
the stunning MAXXI museum by Zaha Hadid
The (until fairly recently little-known) copyright exception in Article 5(3)(h) of the InfoSoc Directive allowing Member States to authorize the "use of works, such as works of architecture or sculpture, made to be located permanently in public places", also known as freedom of panorama, has been subject to increasingly frequent (and heated) discussion over the past few years.

Freedom of panorama: from niche to ubiquitous?

At the EU level, in her report MEP Julia Reda proposed to make the exception mandatory for all Member States to have. At the moment, however, there seems to be no real discussion around this issue, nor does it seem that the EU Commission intends to propose legislation in this sense.

At the national levels legislatures and courts have been busy addressing this area of copyright [a handy overview of national approaches (both at the EU and non-EU levels) to freedom of panorama is available here].

Examples of the former include the recent initiatives in Belgium [Article XI.190(2/1°) of the Code de Droit Économique, introduced in 2015] and France [Article L 122-5 No 11 of the Code de la propriété intellectuelle, introduced in 2016 - here], which have resulted in the adoption of specific exceptions allowing freedom of panorama. 

An example of the latter is the (rather) controversial 2016 decision of the Swedish Supreme Court [here] that arguably interpreted narrowly the relevant exception in section 24(1) of the Swedish Copyright Act. The decision was applied earlier this year by the Swedish Patent and Market Court.

As an EU Member State, Italy occupies a relatively peculiar position. While formally Italian copyright law does not envisage an exception allowing freedom of panorama, a certain freedom is nonetheless recognized by means of other provisions [here]

As Italy also expressly includes works of architecture among protectable subject-matter, it is the perfect candidate to see how those who would be harmed by the introduction of a specific exception allowing freedom of panorama would react to the introduction of a specific exception. 

Santiago Calatrava's Ponte
della Costituzione
in Venice
The Associazione Wikimedia Italia survey

This is indeed what the Associazione Wikimedia Italia sought to discover earlier this year, when it conducted a survey among architects based in different parts of Italy, obtaining over 600 responses.

The results [available hereare very interesting.

First, the facts: only one respondent stated to have every received payment for a photograph taken of their work. 

More generally, over 70% of those surveyed stated that they are not aware that permission is required to make reproductions of works of architecture, sculptures et sim permanently located on public display. Nearly 60% thinks that it would not be reasonably possible for, eg, a photographer to locate and contact relevant rightholders to seek permission. 

Associazione Wikimedia Italia also asked respondents whether they agreed with a freedom of panorama provision, described as following: the ability to take a photo of a work of yours visible from the public street, distribute it with a free license and add it to a Wikipedia article, all without your permission. 11.5 % of the respondents believed this to be a bad thing for them or in general, while 68.6 % declared it to be a good thing and around 20 % gave a more nuanced response, generally stressing that the photographer should if possible state the provenance and name the architect/author.

Conclusion

It would be interesting to see if the results of the survey changed in different Member States. Overall, however, it appears that - at least in Italy - architects may be more concerned about attribution of the work, rather than licensing use upon payment of a fee.

The survey results also prompt a broader reflection on the goals pursued by certain policy initiatives and whether they would be really beneficial to their ... beneficiaries. In this sense, a fairly immediate connection is with the discussion currently being undertaken around the introduction of an EU press publishers' right, further to somewhat similar initiatives in Germany and Spain. Would the beneficiaries of this new neightbouring right (if adopted) uncontroversially benefit from it? 


[Originally published on The IPKat on 10 October 2017]

Monday, 2 October 2017

Is the German press publishers' right lawful? More details on the CJEU reference

As reported by this blog a few months ago, the Court of Justice of the European Union (CJEU) has been required to address issues of lawfulness - notably enforceability - of the German neighbouring right for press publishers.

Why a CJEU reference?

Back in May, in fact, the Landgericht Berlin decided [hereto stay the proceedings in the litigation between the collecting society responsible for collecting royalties in favour of publishers (VG Media) and Google, and make a reference for a preliminary ruling to the CJEU. 

The purpose of the reference is to receive guidance on the actual enforceability of the German press publishers' right. 

Directive 98/34 requires in fact Member States to notify the European Commission of any  “technical regulations” that they intend to adopt. This is to allow the Commission to assess their impact on the internal market. Apparently German Government failed to notify the Commission because of impending elections in Germany at the time.

Already in 2015 Bo Vesterdorf (former president of what is now the General Court) had argued that both the German (but also Spanish) initiative(s) in favour of press publishers would be unenforceable because of their lack of notification to the European Commission. 

The Berlin court has now asked the CJEU to determine whether the rules adopted in Germany should be considered "technical" and, if so, what the effect of their missed notification is.

From Berlin ...
The German press publishers' right

Adopted in 2013, the Leistungsschutzrecht für Presseverlege introduced into the German Copyright Act new provisions - sections 87f, 87g and 87h - which provide for the exclusive right of press publishers to exploit their contents commercially for one year, thus preventing search engines and news aggregators from displaying excerpts from newspaper articles without paying a fee. Readers will also remember that the same day the new provisions entered into force, Google News became opt-in in Germany.

The rationale underlying this legislative initiative is similar to what is currently under discussion at the EU level in the context of Article 11 of the proposed Directive on copyright in the Digital Single Market, ie addressing declining revenues in the press publishing sector [Katposts here]One of the ideas underlying initiatives like the German one is that the advent of the internet, including news aggregation services (ie aggregators of syndicated web content in one location, an example being Google News), as primarily responsible for this phenomenon. 

... to Luxembourg
The questions to the CJEU

Further to the CJEU reference, the questions in VG Media Gesellschaft zur Verwertung der Urheber- und Leistungsschutzrechte von Medienunternehmen mbH v Google Inc, C-299/17, have been finalized and are now available on the Curia website.

They are:

1.    Does a national rule which prohibits only commercial operators of search engines and commercial service providers which edit content, but not other users, including commercial users, from making press products or parts thereof (excluding individual words and very short text excerpts) available to the public constitute, under Article 1(2) and (5) of Directive 98/34/EC (as amended by Directive 98/48/EC), a rule which is not specifically aimed at the services defined in that point,

and, if that is not the case,

2.    does a national rule which prohibits only commercial operators of search engines and commercial service providers which edit content, but not other users, including commercial users, from making press products or parts thereof (excluding individual words and very short text excerpts) available to the public constitute a technical regulation within the meaning of Article 1(11) of Directive 98/34/EC (as amended by Directive 98/48/EC), namely a compulsory rule on the provision of a service?

More to follow! 


[Originally published on The IPKat on 2 October 2017]

Monday, 25 September 2017

Italian Supreme Court confirms availability of copyright protection to TV formats

The TV format at the centre of the case
decided by the Supreme Court
TV formats may be incredibly valuable, and be sold in franchise in several countries. As a result, also disputes relating to TV formats may be complex, lengthy and with uncertain outcomes, as the current litigation relating to The Voice, for example, demonstrates [here and here].

In addition to the complexities of individual cases, a further difficulty is defining what kind of legal treatment TV formats are subject to in the first place. Discussion of the type of protection available has been, in fact, rather contentious in a number of countries. 

On the one hand, there are jurisdictions (like the UK), in which subject-matter like TV formats may not to be really suitable for inclusion in the scope of protection of an IP right like copyright (also for difficulties related to the closed subject-matter categorisation envisaged by the Copyright, Designs and Patents Act). On the other hand, there are countries which have managed to accommodate protection of TV formats within their own copyright regimes. 

An instance of the latter approach is Italy [see here]

As reported by DIMT - Diritto Mercato Tecnologia, in its 2017 decision in RTI Reti Televisive Italiane Spa v Ruvido Produzioni Srl, decision 18633/17 (27 July 2017), the Italian Supreme Court (Corte di Cassazione) confirmed that TV formats can be protected under the Italian Copyright Act (Legge 633/1941), and clarified at what conditions such protection is available.   

The Court recalled that the Italian Copyright Act does not contain a notion of 'format'. However the definition provided in Bulletin 66/1994 of SIAE, which also allows authors of formats to deposit them, should be taken into account. 

The Italian Supreme Court
According to SIAE's document, a work can qualify as a format if it displays - as relevant elements - logical and thematic connections composed of a title, a basic narrative structure, a scenography and fixed characters, which result in a structure that can be repeated. This means that, for instance, a TV programme that mainly consists of improvisations lacks such repetitiveness and cannot be considered a format (Supreme Court, decision 3817/2010).

Other requirements are that the format possesses a programmatic structure that displays a modicum of creativity. This requires the identification of, at least, the structural elements of the story, as well as its space and time collocation, the main characters and their personalities, and the main thread of the plot. Lacking these elements, copyright protection shall not be available, because what one would try to protect is still so vague that it can be regarded as an idea, rather than an expression thereof.

In light of earlier case law, [translation is mine]:

"this Court intends as a format for a TV programme, protectable as an original work under copyright law, a sketch for a programme, a plot outline defined in its essential elements, generally intended for a serial TV production, as resulting from a brief description."

In conclusion, under Italian law a TV format may be protected by copyright if it has both a structure that can be repeated and certain fixed elements, as well displaying a modicum of creativity. With regard to the latter, case law seems consistent in requiring that the TV format is not novel, but rather the personal and individual expression of its author.

[Originally published on The IPKat on 25 September 2017]