Sunday, 21 January 2018

Image rights and the unauthorized use of one's own portrait on cigarette packs

Plescia's image and
the warning that
"Smoking causes strokes and disability"
Can someone's own image be used without permission?

This question may have different answers, depending on both the context in which the relevant image is used and the legal system considered. With particular regard to the latter, in countries that envisage 'image rights' (or publicity rights), the availability of protection may be even irrespective of the context in which one's own image is being used.

Italian law

This is for instance the case of Italy which, similarly to other continental European jurisdictions, has a long-standing history of protecting image rights. 

The relevant provision in the Italian Civil Code, ie Article 10, states that if one's own image is displayed or published outside the cases in which the display or publication is allowed by law, or in situations which are prejudicial to the honour or reputation of the person, a court may - upon application by the interested person - order that such use is brought to an end, as well that damages are awarded.

In a similar tone, Article 96 of the Italian Copyright Act states that - subject to some limitations pursuant to Article 97 thereof - the portrait of a person cannot be put on display, reproduced or used commercially without their consent. 

The image rights story that a number of Italian newspapers [eg here and here] have reported is therefore quite interesting.

Maurizio Plescia
Becoming a health warning ... without knowing it

A man from Ischia (one of the islands in the Naples Gulf), Maurizio Plescia, was quite shocked when he found out that his image was reproduced on the cigarette packs marketed by different multinationals, as part of what the EU Tobacco Products Directive calls ‘combined health warning’, ie health warnings consisting of a combination of a text warning and a corresponding photograph or illustration illustrating the risks of smoking.

The image of Plescia represented him while hospitalized in Colombia. He had gone there to visit his former partner and - further to certain breathing issues - had taken a medication to which he happened to be allergic. Together with the initial symptoms of pneumonia, such allergic reaction resulted in his hospitalization.  

Apparently while he was lying in his hospital bed, someone took a photograph of him. Subsequently such photograph was included in the picture library administered by the EU Commission pursuant to Schedule 2 of the Tobacco Products Directive, which contains images to be used for the marketing of tobacco products [if you wish to know more about the rationale of health warnings, see here].

Apparently Plescia was not the only one to come forward as the person allegedly depicted in the image of the man in bed, and this has complicated the matter further for him. However, he eventually managed to obtain an expert certification that there are no doubts that the person represented in the image is really him. He first contacted the companies marketing the relevant cigarette packs, but these said that they have no control over or responsibility for the use of the images selected for use on packaging of cigarettes, and that the EU Commission would be rather the one to address.

What's in one's own image?
Other cases

There is abundant case law concerning the unauthorized use of one's own image, and this blog has reported on decisions which have found an infringement of image rights even lacking use of one's own actual image. 

Protection has been granted also in instances relating to the unauthorized use of one's own image in situations in which one was filmed during a public event. For instance, the Italian Supreme Court has held that a TV programme could not use one's own image, captured during a football match, after that event's current character has ended (in this specific case, 6 years after the match).

Some readers might have also read news reports [hereherehere] that a judge in Rome has recently ordered - at the risk of a financial penalty - the mother of an teenager to refrain from publishing pictures of her son on social media. Although the text of the decision is not particularly detailed in the legal reasoning part, it seems that also the protection of one's own image has played a role in the conclusion reached.

A comment

Newspapers do not report whether Plescia’s case has come to an end, but it seems quite incredible – if true - that one could be photographed without their authorization and the resulting image could be included in the Directive's picture library and subsequently used for combined health warnings without obtaining all necessary permissions.

In this sense, Plescia’s case is a useful reminder that, when it comes to using third-party images, wannabe users should not be just concerned about copyright issues (including the non-assignable moral rights of the author of the photograph), but also the rights of the person(s) portrayed in the photograph. The latter may present potentially a risk also in those countries that do not explicitly recognize the existence of self-standing image rights. In this sense, the quite recent Rihanna case in the UK is a telling example [here and here].

[Originally published on The IPKat on 21 January 2018]

Wednesday, 17 January 2018

New presidency of the Council of the European Union ... new position on the EU copyright reform?

Following the conclusion of the 6-month Estonian presidency, the presidency of the Council of the European Union is now Bulgarian, and will be so for the first semester of 2018.

The Council is one of the key EU institutions and brings the voice of Member States' governments into the decision- and law-making process. In fact and among other things - together with the European Parliament - the Council is in charge of adopting EU legislation.

Of course, one of the pending pieces of legislation that might receive a decisive boost towards its formal adoption over the next few months is the Directive - proposed by the EU Commission in September 2016 - on copyright in the Digital Single Market [here; Katposts here].

Since its release, the draft directive has attracted extensive commentary. In particular, the draft provisions contained in Article 11 ('Protection of press publications concerning digital uses', this being a proposal to introduce a new neighbouring right in favour of press publishers) [Katposts hereand Article 13 ('Use of protected content by information society service providers storing and giving access to large amounts of works and other subject-matter uploaded by their users', this being a proposal to be read in combination with Recital 38 in the preamble to the directive and aimed at remedying the so called 'value gap' or 'transfer of value') [Katposts hereare those that have been subject to the most extensive scrutiny, at several levels.

Consensus in the Council regarding the proposed copyright directive

The former Estonian presidency worked indeed on reaching consensus among Member States' governments regarding the position that the Council of the European Union would adopt in relation to Articles 11 and 13 in particular.  

Different versions of the Estonian 'compromise' were made available and, of course, widely commented. 

For the Council to be able to advance its position political consensus among the various Member States' governments is key.

The latest, consolidated, version of the presidency compromise proposal is available here.

Now that the presidency of the Council has passed to Bulgaria, what will change (if anything)?

Bulgarian's questions for Coreper orientation debate

Yesterday, a document prepared by the Bulgarian presidency and aimed at setting up an 'orientation debate' on Articles 11 and 13 of the proposed directive within Permanent Representatives Committee (Coreper) was released.

What's in it?

First, the Bulgarian presidency highlighted the progress made under the Maltese and Estonian leadership, and noted that any progress would have as a basis the latest compromise proposal prepared by the Estonian presidency. 

This said, the Bulgarian document sets up some questions for consideration by Coreper, with the hope that consensus could be reached among Member States.

Press publishers' right: to be kept ... possibly with some nuances

With regard to the proposed press publishers' right, Bulgaria noted that no consensus could be reached on either option advanced by Estonia, ie: (A) an actual right, that would be written in such a way that its scope would be clearer than what the Commission had proposed; or (B) a presumption of entitlement of press publishers to license and enforce the rights in their press publications. 

From the text of the document it would appear that Bulgaria favours option (A). In fact, the document formulates a number of questions around option (A), the answer to which could help Member States achieve consensus in the Council in the form of an acceptable compromise. 

Where do you think you're going?!
In particular, the Bulgarian presidency is asking Member States about:

- determination of the extracts of press publications that would fall within the scope of the right: would that be a matter of originality (and therefore eligibility for protection also under copyright, as per Infopaq) of the part reproduced, or should size be a criterion irrespective of originality?

- whether the type of use made of the press publication (commercial or non-commercial) should be a relevant criterion;

- term of protection: is the original proposal of a 20-year term adequate?

Value gap proposal: also to be kept ... subject to a few clarifications (or not) 

Also here, the Bulgarian presidency seems oriented towards maintaining Article 13 in the text of the directive, but is asking Member States to comment on certain aspects of the provision, hoping that addressing these issues would allow consensus to be reached.

In particular:

- Should the directive clarify or not what is to be intended as communication to the public by platforms that host and make available user-uploaded content [the original proposal does not clarify]?

- Should the directive exclude that platforms that make acts of communication to the public are eligible for the safe harbour under Article 14 of the E-commerce Directive [the original proposal refers to the safe harbour for hosting providers]?

- If platforms are liable for unauthorized acts of communication to the public, should there be some sort of "targeted liability mitigation provided for to avoid potentially excessive impact on platforms storing and giving access to user uploaded content" [this could be so, assuming the ineligibility of such platforms for the Article 14 E-commerce Directive safe harbour]

- If there is a clarification of the communication to the public, should there also be an obligation to apply measures [likely including pro-active filtering - on this point it might be interesting to look at this and bear in mind the recent EU Commission's Communication on Tackling Illegal Content Online, which includes reference to the so called 'good Samaritan clause' (p 3)] as an additional provision, and if so, should it apply to the same service providers as those concerned by the clarification on communication to the public or should the scope of this obligation be different and potentially wider? 

Where to write one's
own thoughts and responses
Finally, Bulgaria is asking whether a better option could be NOT to include in Article 13 any language relating to communication to the public and safe harbours and include, instead, a new recital that would recall the existing principles of EU law which are relevant to determine the conditions under which user-uploaded content platforms engage, based on existing case law of the Court of Justice of the European Union, into a copyright-relevant act and are not covered by the limited liability in Article 14 of the E-commerce Directive.

Conclusion

From this document released by the new Bulgarian presidency it would appear that neither Article 11 nor Article 13 are going anywhere, Council-wise. 

With regard to Article 11, the idea of replacing a right in favour of press publishers with a presumption of representation seems to have been abandoned. 

There is greater room for manoeuvre in relation to the value gap proposal, and on crucial aspects indeed. 

Let's see what happens over the next few months, also at the Parliament level. The JURI Committee is now expected to vote on the report by MEP Axel Voss (who has replaced MEP Comodini-Cachia) on 26-27 March (the January date has been in fact postponed once again), and it will be crucial to see what the report proposes, and how the vote goes.

[Originally published on The IPKat on 17 January 2018]

Thursday, 4 January 2018

Brands and online ecommerce platforms: a tainted relationship?

What has happened to online ecommerce platforms? Over the past few months news reports have multiplied – or, perhaps, their underlying issues have acquired greater visibility – that brand owners have been increasingly voicing criticisms against, sued, or discontinued sales on ecommerce sites. In particular, after the criticisms made against Alibaba, it seems that Amazon is now making the headlines.

Let’s have a quick look at what has happened over the past few months.

Court actions

First, there have been legal proceedings being brought by trade mark owners, claiming a direct responsibility of Amazon in the sale of counterfeits or invoking a right to prevent sales on such platform.

An example of the former is the lawsuit filed by Daimler against Amazon in late 2017 in the US District Court for the Western District of Washington at Seattle. The well-known German car manufacturer argues that Amazon is directly responsible for the “offer for sale, sale and distribution of wheels which blatantly copy issued design patents in various distinctive and artistic wheel designs owned by Daimler” under the Lanham Act (§ 1051 ff), the US Patent Act (§ 1 ff), and Washington State statutory and common law.

As explained on Forbes here, this is not the first time that a trade mark owner is seeking to have the direct liability of Amazon established. However, back in 2015 a 9-member jury in the same court that has now been asked to rule on the lawsuit filed by Daimler held that Amazon was not liable for the sale of counterfeit Milo & Gabby (now JoliMoli) animal-shaped pillows.

If the case brought by Daimler ended with a finding of liability for Amazon, that would likely have a significant impact on the liability of platforms allowing third-party listings, and set a different approach to platform liability in the US.

As readers knows, the particular issues surrounding platform liability have been at the centre of attention also in Europe. 

Reference in the online trade mark realm goes instinctively to the landmark decision of the Court of Justice of the European Union (CJEU) in eBay, C-324/09, in which the highest EU court clarified that the safe harbour for hosting providers within Article 14 of the E-Commerce Directive does not apply to “an information society service [which is] aware of facts or circumstances on the basis of which a diligent economic operator should have identified the illegality in question and acted in accordance with Article 14(1)(b) of Directive 2000/31.” [para 120]

More recently, the CJEU appears to have pushed the liability of platforms even further than the realm of safe harbours (hence, scenarios of secondary liability) by holding that a platform may be even directly (primarily) liable for third-party infringements. It has done so in the copyright context, especially in the recent Filmspeler decision [Katposts hereand – even more clearly – in the Ziggo ruling [Katposts here].

If we remain in the EU context, the issue of platform liability is not the only aspect that has been touched upon in relation to ecommerce platforms. Readers will in fact remember the recent judgment in Coty Prestige, C-230/16 [here], in which the CJEU tackled the compatibility with EU competition rules of selective distribution agreements for luxury brands, including clauses that would prevent resellers from distributing branded products via Amazon. The CJEU provided an interpretation of relevant EU provisions that allows – at certain conditions – trade mark holders from preventing distribution of their goods via platforms of this kind.

Have you bought
your KatBirki's yet?
Discontinued sales

In parallel with court actions, other brands have recently announced their intention to discontinue sales on Amazon, over issues of counterfeiting and allegedly excessive discounts.

In a timeframe of just a few weeks, this has been for instance the case of Birkenstock and Italian publisher E/O, respectively.

Shoe producer Birkenstock announced that as of 1 January 2018 it would terminate its business relations with Amazon, on grounds that

“there have been a series of violations of the law on the Marketplace platform operated by Amazon which the platform operator has failed to prevent of its own accord. On a number of occasions, BIRKENSTOCK lodged a complaint that counterfeit products of poor quality which infringed BIRKENSTOCK’s trademark rights and misled the consumers regarding the origins of goods were being made available on the platform.
Putting the issue of legal obligations aside, BIRKENSTOCK is of the opinion that an integral part of a trusting business relationship is that, upon being first notified as the operator of the Marketplace platform of such a breach of the law, Amazon would, of its own accord, do everything within its power to prevent this type of and similar infringements. To this day, no binding statement has been made to the effect that no more counterfeit BIRKENSTOCK products would be offered for sale through the platform.”

A couple of weeks ago also E/O [the Italian publisher of Elena Ferrante’s books, amongst others] announced that it would no longer sell on Amazon, on consideration that the discounts requested by the ecommerce provider would be excessive. It is not the first time that a complaint of this kind is made by the publishing industry.

What’s next?

In all this, what does the future hold?

On the one hand, it appears that brand owners' complaints may result in the adoption of new approaches towards responsibilization and liability of online platforms. 

This could occur not just at the court level, but also by means of initiatives of policy- and law-makers. In Europe, for instance, the issue of platform liability, notice-and-stay down obligations (including filtering), as well improved enforcement tools are currently central items to the agenda of the EU Commission and legislature. In the first half of 2018 it is expected that the Commission will unveil further legislative proposals in this area, under the umbrella of its Digital Single Market Strategy.

On the other hand, platforms like Amazon may not rely just on partnerships with brand owners or the making available third-party offerings but, rather, increasingly invest on the making available of their own offerings. In this sense, the trend in fashion seems to be already reality. As noted by The Fashion Law, Amazon has in fact been working on and launched a number of in-house collections that have been already finding success among consumers, “particularly in light of the current retail environment, when brand loyalty is low, consumers are overly price/value conscious, and branding is simply not as significant a player as it used to be.” 

In this sense, the general trend seems to be towards a configuration of platforms' activity as no longer - or just - passive hosts of third-party offerings but, rather, active providers of own offerings. What should the legal treatment of this evolving and evolved scenario be? While the functioning of the internet must be safeguarded [as was also recently stressed by the German Federal Court of Justice, here and herethe questions that lie ahead and require a response are whether new rules are needed, existing rules should be applied differently ... or what else?

[Originally published on The IPKat on 4 January 2018]

Sunday, 24 December 2017

A Kat's 2017 Copyright Awards

Kat Awards!
The Holidays have finally begun, and the end of 2017 is quickly approaching. In line with what has become sort of a ‘tradition’ [herehereherehere], also this year I have reviewed the past 12 copyright months and awarded a number of symbolic prizes to the most interesting or relevant developments occurred in 2017.

Overall, 2017 has been a year in which courts have been once again at the centre of attention, answering tough questions and providing attempts of solutions to very concrete and new problems. In contrast – possibly with the exception of Australia – not much has happened on the legislative front. It is true that the EU legislature has adopted new pieces of legislation, including a Portability Regulation (applicable as of 1 April 2018) and new instruments to implement the WIPO Marrakesh Treaty, but the most heated piece of legislation, ie the proposal for a Directive on copyright in the Digital Single Marke[Katposts here], remains heavily debated and subject to contrasting views and proposals for amendment.

Overall, it can be said that 2017 has been dominated once again by online issues.

Anyway, without further ado, here we go:

Most important copyright decision


The choice is not easy, as in 2017 courts around the world have issued very interesting and potentially far-reaching decisions.
These include – amongst others - the saga (unfolding before the Delhi High Court and the Division Bench of the Delhi High Court) of the preparation and making available of course packs containing photocopied materials without permission from the relevant publishers, which our friends at SpicyIP have covered extensively, and the US Supreme Court’s (rather obscure) decision on ‘copyrightability’ of cheerleading uniforms [here and here], which other courts, eg the Israeli Supreme Court, have also considered.
However, in my view the most important decision this year has been once again one of the Court of Justice of the European Union (CJEU): Ziggo, C-610/15, ie The Pirate Bay case [Katposts here].
At times I have received observations that I may place too much emphasis on CJEU decisions: I accept this criticism, but the reasons why I believe that the Ziggo ruling is particularly significant is twofold.
First, it is the latest instalment in a string of judgments (nearly 20 since the landmark 2006 ruling in SGAE, C-306/05) which have tried to define the structure and scope of what has arguably become the most controversial and complex exclusive right, ie the right of communication to the public within Article 3 of the InfoSoc Directive.
Secondly, the judgment touches upon the liability of online platforms, and the CJEU has provided a response that goes beyond the particularly egregious case of The Pirate Bay. In this sense, the judgment provides an important tool to appreciate the evolution of CJEU case law on Article 3 of the InfoSoc Directive, and an interpretative aid for the various shapes that the controversial value gap proposal (Article 13 of the proposal for a Directive on copyright in the Digital Single Market) has taken over time, including the latest compromise proposal of the (soon to finish) Estonian Presidency of the Council of the EU.
One of the points that I have often heard being made about the Ziggo decision is that its actual relevance is nearly null, because – of course – you cannot say that The Pirate Bay (also look at its name!) is not liable of copyright infringement. In other words, the CJEU decision has been prompted by the very specific set of underlying facts, and cannot be regarded as having a broader relevance. I do not agree with this reading for a number of reasons, including that: (1) all CJEU judgments originate from very specific sets of facts; and (2) the analysis undertaken by the Court builds upon its earlier construction of the Article 3 right and, although fairly ambiguous in some parts and deserving of further elaboration, paves the way to an understanding of whether and in what sense online platforms may be directly liable for users’ infringements.
Finding safe harbours ...
easy?
Most important piece of legislation

Last year, I indicated the proposal for a Directive on copyright in the Digital Single Market as the likely to be most relevant piece of legislation (once adopted). I remain of the view that the directive will be significant, so it is important to follow closely the relevant developments over the next few months.

The piece of legislation that gets the prize this year is also at the proposal stage. It is the proposed reform of Australia’s safe harbour regime. Introduced a few days ago, the Copyright Amendment (Service Providers) Bill proposes to extend the existing – quite narrow – safe harbour regime in the Copyright Act (Part V – Div 2AA) for carriage service providers (defined narrowly in the Telecommunications Act 1997) to the disability, education, library, archive and cultural sectors.
The Bill is noteworthy especially because of its scope. If passed in the form proposed, the Australian safe harbour regime would in fact remain narrower in scope than what is the case in other countries, it being arguably unavailable to online service providers like hosting platforms [hereherehere].
Together with the current discussion in the US (§512 DMCA) and EU (Article 13 of the proposed Directive on copyright in the Digital Single Market), the Australian move may be read as signalling a general trend towards a greater, rather than less, responsibilization of online service providers. While rightholders would enjoy greater protection, one might wonder what impact all this would have on potential new entrants on the market, notably start-ups, given resulting compliance costs.
Copyright person of the year
Not a person, but someone whose next friend (PETA) has deemed deserving of the same protection of persons as authors in a copyright sense, ie everyone’s favourite macaque: Naruto.
Although the Monkey Selfie case was settled out of court in mid-2017, after a long-running battle that has allegedly left wildlife photographer David Slater broke, the case is important because it raises an issue that is not new, but is nonetheless likely to be faced with increasing frequency over the next few years, also thanks to the potential of Artificial Intelligence (AI; see further below): who is an author in a copyright sense?
As I discuss more at length here and herethe question of non-human authorship is not really (or just) about whether a monkey can be the owner of copyright in the photographs that it takes, but whether increasing sophisticated technologies, under the umbrella of AI, would result in the broadening of the understanding of what (rather than who) an author is.

For years, literature and cinema have raised the question of what a human. Now such issues might re-surface with increasing frequency and relevance also in the area of copyright and, in doing so, test the scope of protection.

Most important unresolved issue

This is an issue that is somewhat unresolved because, on the one hand, there is not a clear rule written at the legislative level and, on the other hand, it arises in an area (injunctions against intermediaries) that has been proving particularly fast-evolving. It is the issue of costs of injunctions against intermediaries: who has to bear them?

Since the landmark Newzbin 2 decision (2011) [here], the rule in the UK has been that intermediaries bear the costs of application for an injunction within s97A of the Copyright, Designs, and Patents Act 1988 (including a blocking injunction), while intermediaries bear the costs of implementing the injunctions.

Filtering
However, in the Cartier case [here; if I am not mistaken, this was the first time that in the UK the online intermediaries targeted by an injunction ever appealed the decision and resulting order] the issue of costs has taken centre stage, especially in light of the dissent of Briggs LJ in the Court of Appeal [here]. Now, the UK Supreme Court will have to decide on the issue of cost allocation.

In France the Supreme Court [here] has taken an even more trenchant approach, holding that intermediaries have to bear all costs, while in his Opinion in Mc Fadden, C-484/14 [note that however the case did not really concern costs of intermediary injunctions] Advocate General Szpunar had suggested that intermediaries should not be responsible for any costs relating to copyright enforcement in the event of third-party infringements (but the Court did not really follow him on this point).

Why is the issue of costs so important? For one thing, because the number of applications for intermediary injunctions has been growing over time, with an increasingly diverse group of rightholders seeking them and different types of orders being granted by courts, including the news of 2017 – live blocking.

Most important policy issue for 2018
This is something that is currently being discussed in a number of jurisdictions, including Thailand (which is in the process of reforming its law, further to a number of recent amendments) and the EU, and is the issue of filters and notice-and-stay down obligations.
To what extent can an intermediary be required to prevent the uploading (or re-uploading) of potentially infringing content?
Existing legislation and case law provide some – but not complete – guidance, and the issue of filtering remains subject to heated debate. What will the future hold?
Most important copyright-protected work

Have you listened to Hello Shadow yet?

If not, then you should. Besides being a quite catchy tune, this single is the first one extracted from the first multi-artist music album composed with AI.  The album was curated by Benoit Carré, head of SKYGGE, who collaborated with several musicians and performers, including - in the case of Hello Shadow - Stromae [Papaoutai, amongst others] and Kiesza [Hideaway, amongst others].
Hello Shadow suggests that creativity and AI can go hand in hand, but also – in not too a far remote future – that AI has the potential to create on its own. But will the resulting works be protectable?

However, the most important copyright work of the year is not Hello Shadow, but rather Heks'nkaas  What is this? It is a spreadable Dutch cheese whose taste is allegedly protected by copyright. Further to litigation in The Netherlands, the Heks'nkaas case has now headed to the CJEU: does EU copyright allow protection of the taste of a food product?

I discussed this reference here. We will know the answer of the CJEU sometime in late 2018 or early 2019 … but in the meantime why not dreaming (or rather having the nightmare, depending on one's own views) that the Court will say yes to sensory copyright?

***

Best wishes to all IPKat readers for a copyright-rich and fun New Year, and many thanks for following the blog this year!

[Originally published on The IPKat on 24 December 2017]

Monday, 11 December 2017

Artificial Intelligence and copyright: a happy (or even possible) relationship?

After years spent discussing the IP implications of 3D printing [which the the European Parliament - JURI Committee has also tackled in this recent working paper] it seems that now the new 'hot' topic is Artificial Intelligence (AI) and its potential.

Aside from issues of citizenship, in the realm of IP one of the questions that have been asked with increasing frequency is whether and to what extent AI has the potential to replace humans, including in the creative fields.

As AI machines become increasingly autonomous, can they be regarded as 'authors' in a copyright sense and, if so, can the works they create be eligible for copyright protection? If the answer was again in the affirmative, who would own the copyright in such works?

Recent developments stand as a demonstration that answering these questions may not be something for an indefinite future.

For instance, readers with an interest in music might have had the opportunity to listen to the recently released single Hello Shadow, which is the first song extracted from the the first multi-artist music album composed with AI. 

This album was curated by Benoit Carré, head of SKYGGE, who collaborated with several musicians and performers, including - in the case of Hello Shadow - Stromae and Kiesza.


The SKYGGE project started as a research project (the Flow-Machines project, conducted at Sony Computer Science Laboratories and University Paris 6) in which scientists were looking for algorithms to capture and reproduce musical “style” [an example being Daddy’s cara song in the style of the Beatles]However, the novelty and huge potential of the approach triggered the attention of musicians who joined the team. 


It is clear that SKYGGE produces music thanks to AI, but there is a substantial human input. But as things have the potential to develop in the sense that AI will be able to create music entirely on its own, without any human input, will the resulting songs be protected by copyright?


The notion of 'authorship'


As I discuss more at length in this recent short article for the Journal of Intellectual Property Law & Practice here, at the international level there is no definition of who is to be regarded as an 'author' in a copyright sense. However, legal scholarship seems oriented in the sense of concluding that, from its text and historical context, under the Berne Convention only natural persons who created the work can be regarded as authors. 


In any case, although generally speaking it seems possible “to agree that an author is a human being who exercises subjective judgment in composing the work and who controls its execution”, this does not mean that at the national level there are not situations in which also works created by non-human authors can qualify for protection, or courts have not addressed issues of non-human authorship. 



New potential Monkey Selfie case
In the UK context [for the US, it is interesting to look at the text of the Monkey Selfie first instance decision], for instance, examples of the former include the fictions of authorship in section 9(2) of the UK Copyright, Designs and Patents Act 1988 and, even more evidently, the provision in section 9(3) therein, according to which – in the case of a literary, dramatic, musical or artistic work which is computer-generated – the author shall be taken to be the person by whom the arrangements necessary for the creation of the work are undertaken.

At the EU level – with the exception of cinematographic and audiovisual works, computer programs and databases – copyright directives do not really address the issue whether only human beings can be regarded as authors. This said, however, the Term Directive (Recital) 14 refers the calculation of the term of protection of copyright to the life of authors as “physical persons”.

The question that arises under EU law is, therefore, whether – with the exclusion of cinematographic and audiovisual works, computer programs and databases – Member States can protect works created by non-human authors.

The answer may be in the negative, if we consider how the other requirement for copyright protection, ie originality, has been intended by the Court of Justice of the European Union (CJEU).

Originality under EU law

Harmonization of the standard of originality at the EU level has been limited. Only the Software Directive (Article 1(3)), the Database Directive (Article 3(1)) and the Term Directive (Article 6) provide that, respectively, for computer programs, databases and photographs copyright protection shall be only available if they are their “author’s own intellectual creation”.

Until the landmark 2009 decision in Infopaq, it was believed that for works other than those for which harmonization of the originality standard had explicitly occurred EU Member States remained free to define the conditions of copyright protection under their own legal regimes. In that judgment the CJEU took the (rather radical) view that this would not be the case, and that also for works protected under the InfoSoc Directive the same standard of originality as in the Software, Database and Term Directives should apply.

The reason, according to the CJEU, is that the Berne Convention (notably Article 2(5) and (8)) presupposes that protection is available to works that are intellectual creations, and this is the standard also envisaged under the Software, Database and Term Directive. According to the court, the InfoSoc Directive is based on the principle that a work is protected if it is its author’s own intellectual creation. This is evidenced by Recitals 4, 9 to 11 and 20 in the preamble thereto. Hence, also under the InfoSoc Directive the standard of originality is that of ‘author’ own intellectual creation’.

The CJEU elaborated on the notion of ‘author’s own intellectual creation’ in subsequent case law. When discussing copyright protection in graphic user interfaces (C-393/09), the court held that the standard of originality requires that the author expresses “his creativity in an original manner”. In Football Association Premier LeagueC-403/08 and C-429/08 the court clarified that originality as author’s own intellectual creation requires exerting “creative freedom”, ie something that football matches – being subject to the rules of the game – do not possess. 

The CJEU refined further its construction of the standard of protection in its subsequent decision in PainerC-145/10. In discussing originality for photographs and, in particular, portrait photographs, the court held that what is required is for the author “to express his creative abilities in the production of the work by making free and creative choices”, so that he “can stamp the work created with his ‘personal touch’”. 

It is therefore apparent that the EU standard of originality, as also acknowledged by Advocate General Mengozzi in his Opinion in Football DatacoC-604/10 entails a “‘creative’ aspect, and it is not sufficient that the creation of [the work] required labour and skill.”

Can an AI machine's creation fulfill the requirement of originality as intended by the CJEU?


Pinocchio,
arguably one of the first AI machines children
(here)
In addition

Another argument against the proposition that also non-human authors can be regarded as potentially eligible for copyright protection in their works is that, at the EU level, the general rule is that concepts used in different directives must in principle have the same meaning. So, in Football Association Premier LeagueC-403/08 and C-429/08, the CJEU clarified that if a directive in based on rules and principles already laid down in other directives, “given the requirements of unity of the European Union legal order and its coherence, the concepts used by that body of directives must have the same meaning, unless the European Union legislature has, in a specific legislative context, expressed a different intention.”

In the case of the InfoSoc Directive (as well as the Term Directive, with specific regard to photographs) this might mean that, similarly to what is instead expressly stated Software Directive, the concept of author implies that this is a human being. This is because, as the CJEU clarified in Infopaq, C-5/08, the InfoSoc Directive, as well as the Term Directive, is based – inter alia – on the same principles and rules laid down in the Software Directive.

A further argument in favour of the conclusion that under EU copyright directive only human beings can be recognized as authors descends from the reading of its various provisions. In particular, the InfoSoc Directive vests authors with the right to authorize third parties to make acts of reproduction (Article 2a), communication to the public (Article 3(1)), and distribution (Article 4(1)) of their works. 

One may wonder how a non-human author can exercise such rights. The question becomes even more complex, if not impossible to solve, if one considers that the CJEU has clarified that the language of that directive imposes that authors are considered as the exclusive first owners of economic rights [ReprobelSoulier].


Ted
Conclusion

From the discussion above it emerges that, with limited exceptions, legislation is generally silent regarding the question whether copyright can vest in works authored by non-humans. However, a broader reading of legislative texts – including at the international, regional and national levels – suggests that the notion of authorship for the sake of copyright protection is generally reserved to human beings.

For years, literature and cinema have raised the question of what a human is: from the wooden puppet who wishes to become a child in Pinocchio to the robot-butler in The Bicentennial Man, from the male prostitute Mecha in A.I. Artificial Intelligence to the outrageous and recreational drugs-loving teddy bear in Ted, the public has been exposed – more or less lightheartedly – to questions surrounding the meaning of ‘human’. 

Now such issues might re-surface with increasing frequency and relevance also in the area of copyright and, in doing so, test the scope of protection. This will require revisiting concepts that traditionally have been considered basic. 

However, similarly to the case of originality, it has become clear that what ‘basic’ refers to may not be entirely straightforward.


[Originally published on The 1709 Blog on 11 December 2017]