Son of NewzBin: another victory for the film-makers

STOP PRESS: the full judgment -- 67 pages and 204 paragraphs -- can be read here, till it's available on BAILII.  11.23am: it's now available on BAILII here.

In a week that has been absolutely heaving with copyright rulings from the British courts, the IPKat now brings you NewsBin 2, courtesy of Mr Justice Arnold of the Chancery Division, England and Wales. If you remember NewzBin I, just scroll down to the heading NewzBin 2 below.

Background and NewzBin 1

Usenet is a "worldwide distributed internet discussion system". In NewsBin 1 (Twentieth Century Fox Film Corporation and others v Newzbin Ltd [2010] EWHC 608 (Ch)) Fox, together with other film makers and distributors, sued NewzBin, "a British Usenet indexing website notable for its introduction of new technologies and search techniques that aid users by facilitating access to content on Usenet" (per Wikipedia), for copyright infringement.  According to the claimants, NewzBin was focused on piracy in that it located and categorised unlawful copies of films and then (i) displayed the titles of these copies in its indices, (ii) provided a facility for its users to search for particular unlawful copies, (iii) displayed their search results and (iv) provided a simple one-click mechanism for users to acquire the unlawful copies of their choice.

 The defendant company, which owned and ran NewzBin, said its website was simply a search engine like Google -- but that it was directed to Usenet rather than to the worldwide web. It also said it was "content agnostic", being designed to index the entire content of Usenet. Where possible, it provided hyperlinks so that any supply of unlawful material was an act occurring exclusively between the hyperlink user and the relevant Usenet server operators -- but that it played no part in any such activity.

Following a review of both the technology and the relevant law, Mr Justice Kitchin concluded on the evidence that NewzBin clearly knew that its facility was used mainly by its members for the unauthorised downloading of infringing copies of the claimants' films. He then turned to Fox's action, which was based on the following:

(i) authorising acts of infringement by NewzBin's members;
(ii) procuring, encouraging and entering into a common design with its members to infringe;
(iii) communicating the claimants' copyright works to the public, namely the defendant's members;
(iv) categorisation of NewzBin as a service provider with actual knowledge of other persons using its service to infringe copyright, in respect of which the claimants seek an injunction under section 97A of the Copyright, Designs and Patents Act 1988.

As to "authorisation", Kitchin J reviewed and analysed the law relating to that word as it affected copyright infringement, with particular regard to the narrow, literal interpretation placed upon it by the House of Lords in C.B.S. Songs Ltd and others v Amstrad Consumer Electronics Plc [1988] 1 A.C. 1013, when the sale of tape-to-tape recording machines was not regarded as "authorising" infringement of the music copied by them since the company that made and sold the machines had not acted as though it had an entitlement to permit infringing acts by those machines' users. At paragraph 90 he summarised the position:

"... "authorise" means the grant or purported grant of the right to do the act complained of. It does not extend to mere enablement, assistance or even encouragement. The grant or purported grant to do the relevant act may be express or implied from all the relevant circumstances. In a case which involves an allegation of authorisation by supply, these circumstances may include the nature of the relationship between the alleged authoriser and the primary infringer, whether the equipment or other material supplied constitutes the means used to infringe, whether it is inevitable it will be used to infringe, the degree of control which the supplier retains and whether he has taken any steps to prevent infringement. These are matters to be taken into account and may or may not be determinative depending upon all the other circumstances".

Applying this to the facts, he held NewzBin liable:

" ... I am entirely satisfied that a reasonable member would deduce from the defendant's activities that it purports to possess the authority to grant any required permission to copy any film that a member may choose from the Movies category on Newzbin and that the defendant has sanctioned, approved and countenanced the copying of the claimants' films ...".

As for "procuring, encouraging and entering into a common design" to infringe, the judge drew again on C.B.S. v Amstrad and the stiff test which had to be satisfied if liability were to be found:

"... mere (or even knowing) assistance or facilitation of the primary infringement is not enough. The joint tortfeasor must have so involved himself in the tort as to make it his own. This will be the case if he has induced, incited or persuaded the primary infringer to engage in the infringing act or if there is a common design or concerted action or agreement on a common action to secure the doing of the infringing act" (para.108).

Even so, there was ample evidence from which to conclude that NewzBin had so involved itself.

As to whether NewzBin had communicated the claimants' films to the public, Kitchin J found guidance in a European Court of Justice ruling in rather a different context, Case C-306/05 Sociedad General de Autores v Editores de España (SGAE) v Rafael Hoteles SA. In that preliminary ruling on a reference from Spain, the Court had said:

"46 While the mere provision of physical facilities, usually involving, besides the hotel, companies specialising in the sale or hire of television sets, does not constitute, as such, a communication within the meaning of Directive 2001/29, the installation of such facilities may nevertheless make public access to broadcast works technically possible. Therefore, if, by means of television sets thus installed, the hotel distributes the signal to customers staying in its rooms, then communication to the public takes place, irrespective of the technique used to transmit the signal".

On this basis, since NewzBin's premium members indeed downloaded the claimants' films from a place and at a time individually chosen by them, and since its members considere NewzBin to be making the films available to them, liability was established. An enquiry into damages, including additional damages for flagrant infringement was ordered. Injunctive relief would however be less dramatic:

"In my judgment the scope of any injunction under section 97A(2) should extend no further than that to which I have already concluded the claimants are entitled, namely an injunction to restrain the defendant from infringing the claimants' copyrights in relation to their repertoire of films" (para. 135).

NewsBin 2

Following a two-day hearing late last month, the Motion Picture Association succeeded in an action which it brought against a major internet service provider, BT to invoke Section 97A of the Copyright, Designs and Patents Act 1988 so as to require BT to take direct action to block the website NewzBin2 (which, since June 2010, was in effect the resurrected version of NewzBin, using the same code and database as its  predecessor but this time being hosted offshore from the Seychelles).  A fairly joyous joint media release from what seems like a representative selection of the top faces in the rights-owners' camp, reports as follows:

"Arnold J. ... ruled that the Motion Picture Association (MPA), supported by the creative industries, has won an order requiring BT to block access to the pirate website Newzbin2. The site makes unlawful copies of films and television programmes, alongside other content from games, publishers and music available without permission in direct violation of a previous court order against it.

Around 700,000 members use the Newzbin service generating the operators in excess of £1 million per year. This verdict will prevent the site from using BT’s internet service to make money through copyright infringement. 

In his ruling, [Mr, unless there's another media statement on the way, announcing his elevation to the Supreme Court] Justice Arnold stated: 

“In my judgment [not yet circulated at the tine this blogpost was posted] it follows that BT has actual knowledge of other persons using its service to infringe copyright: it knows that the users and operators of Newbin2 infringe copyright on a large scale, and in particular infringe the copyrights of the Studios in large numbers of their films and television programmes, it knows that the users of Newzbin2 include BT subscribers, and it knows those users use its service to receive infringing copies of copyright works made available to them by Newzbin2.”

This significant judgment reflects a clear recognition that, under the existing law, Courts can issue orders to prevent illegal activity online. It rejects BT arguments that they have no responsibility to act against copyright theft and states that the order is proportionate. 

This comprehensive and unequivocal judgment sets a clear legal precedent which will enable content creators and distributors to secure greater cooperation from ISPs to address content theft on the internet and in particular to deal with websites that are focused on wholesale copyright theft".

On proportionality of the remedy, a PDF attached to the media release adds this quote from Arnold J:

"…I am satisfied that the order sought by the Studios is a proportionate one. It is necessary and appropriate to protect the Article 1 First Protocol rights of the Studios and other copyright owners. Those interests clearly outweigh the Article 10 [presumably freedom of expression under the European Convention on Human Rights] rights of the users of Newzbin2, and even more clearly outweigh the Article 10 rights of the operators of Newzbin2. They also outweigh BT’s own Article 10 rights to the extent that they are engaged. The order is a narrow and targeted one, and it contains safeguards in the event of any change of circumstances. The cost of implementation to BT would be modest and proportionate.” [draft Judgment para 200]".

This was intended as a test case, as the court clearly stated, and other ISPs now have a clear idea what is expected of them:

"“The Studios have made it clear that this is a test case: if they are successful in obtaining an order against BT, then they intend to seek similar orders against all the other significant ISPs in the UK. The other ISPs were invited to intervene in the present application if they so wished, but have not done so [was this a strategic decision, wonders Merpel, to keep their powder dry and decide how to respond without being weighed down by the baggage of being parties in these proceedings?]".

The full text of the judgment is keenly awaited. Meanwhile, BT's defences and what happened to them are neatly summarised in the PDF mentioned above. Given the complexity of the issues, as well as the identity of the judge, the smart money is on the judgment being a long one ...

Bently slams "very disappointing" ruling in Meltwater

The IPKat's email in-box has been bulging at the seams since he posted his pieces yesterday on the two big copyright cases of Lucasfilm v Ainsworth (here) and NLA v Meltwater (here).  For one thing, he has discovered that there are a lot of angry Americans who don't like Lucasfilm.  For another, he has discovered that no less an academic than Professor Lionel Bently has had some harsh words for the Meltwater ruling. He comments thus:

"The Court of Appeal decision in NLA v Meltwater is very disappointing indeed. The Court, lacking the presence of anyone with a real knowledge of intellectual property [Alas, says Merpel, this is not the first time that has happened -- but that will have to be the subject of a separate post], has merely affirmed the reasoning of Proudman J. adding very little, if anything, of analytic value. In part, this was possible because of the peculiar form of the declaration being sought against the PRCA. The Court took advantage of the vagueness inherent in the form of order sought, merely affirming that Proudman J was right when she found that in some circumstances PRCA memners who received the Meltwater news service would themselves infringe. In so doing, the Court of Appeal ducked the difficult issue of precisely when the activities of a given PRCA member would infringe. Rather than setting the court of first instance straight, examining the law and the facts with rigour and a view to the consequences, the Court chose not to confront the difficult issues of law and its application with which it was faced. 

Firstly, the Court affirmed the judgment of first instance that, by copying the titles and short extracts of newspaper articles, PRCA memners would somtimes infringe copyright. In so doing, it referred to case law that suggested titles may sometimes be protected, but failed to explain away other statements that titles will rarely be substantial enough to constitute works. 

The Court appears too, to have cowered in the face of being asked to make a qualitative judgment (that titles will only be protected in exceptional circumstances) that it did not even bother to consider the consequences of the protection of titles for freedom of expression more generally. Those involved in all sorts of businesses which involved reproduction of titles of books, films, sound recordings and so on will now be left to wonder in what circumstances, if any, they will be infringing copyright. Moreover, it must be doubtful whether such a conclusion will be particularly useful to the Copyright Tribunal when deciding on what is a reasonable fee for PRCA members to pay. 

Secondly, the Court of Appeal failed to engage at all with the criticisms of Proudman J's decision on section 28A concerning temporary copies. There is no engagement whatsoever with the travaux behind Article 5(1) of the Information Society Directive and no attempt to engage with its purpose. 

The Court instead simply adopts Proudman J's view that a "consumptive use" such as accessing a web-page falls outside the purview of the provision. 

This means that its utility is confined merely to the making of copying by third parties in transmission systems, even though recital 33 clearly indicates that the Article is aimed at facilitating "lawful use" of a work. 

The Court seems to have missed the fundamental point that browsing -- looking at a web-page -- does not involve an infringement and is perfectly lawful (unless in breach of some sort of security provision). Article 5 is intended, amongst other things, to "enable" such legal acts of browsing: temporary copies created to facilitate such browsing are deemed non-infringing. Remarkably the Court adopted NLA's claim that these acts failed to meet any of the conditions in Article 5. 

Once again, the Court makes no reference to the consequences of such a holding. In the absence of an express or implied licence, hereafter web-users surf the internet at their peril. If a site prohibits access to certain users (commercial users for example, as many newspaper sites do), the browsers acts becomes ipso facto immediately infringing (because the copies inevitably made are outside Article 28A). For sure, very few actions will be taken against such users. But there is something fundamentally wrong with a legal regime which renders the innocent acts of many millions of citizens illegal".

Disclosure: Lionel was advising Meltwater and the PRCA in these proceedings.

This Kat's own personal views are somewhat different, not least because he thought the trial judge and the Court of Appeal got it right. However, he greatly respects Lionel's opinions and thinks that they should never be ignored. In any event, Lionel must be right that this decision will be of little use to the Copyright Tribunal when ascertaining a fair licence fee for PRCA members and he is also correct that the vast majority of titles never even come within sniffing distance of substantiality in terms of copyright protection -- but it's not easy to see precisely what weight should be given to that statement of statistical truth within the context of this case.

The position that "there is something fundamentally wrong with a legal regime which renders the innocent acts of many millions of citizens illegal" is a tricky one. Every day, on the London Underground, millions of innocent commuters push past (and occasionally through) one another when seeking to get on or off trains, overtake on the escalators and so on. Every such contact is at least potentially a civil wrong, a tort of battery, yet we are prepared to tolerate the illegality of these acts. Is internet browsing in all its varied forms the same, or different?

Do please let the IPKat know what you think!

Meltwater in hot water over business model

The Kat has a technical
 solution to the Meltwater problem

"Do you know where your web end is?" That was the question with which the IPKat introduced his analysis of  Newspaper Licensing Agency Ltd and others v Meltwater Holding BV and other companies [2010] EWHC 3099 (Ch), in which Mrs Justice Proudman (Chancery Division, England and Wales) gave a ruling back in December of last year. If you operate a media monitoring service, she said, this being a business that provides customers with copies of headlines and extracts from articles on newspaper websites, your customers will infringe the copyright in those newspapers if they don't have a "web end-user licence" to use and receive those headlines and extracts from you.

In this action the claimants (a number of newspaper publishers and the NLA, a company that managed some of their intellectual property rights) sought a declaration that the Public Relations Consultants Association Limited -- PRCA --a professional association representing public relations providers -- and its members needed a copyright licence in order lawfully to receive and use copies of the claimants' newspaper content.   The media monitoring service consisted of the supply of reports which included the headline, opening text and an extract from articles which matched search terms selected by the customer. Whether these reports were sent by email to the PRCA or downloaded from Meltwater's website, they inevitably ended up being copied into the memory of PRCA's computer.

In these proceedings the judge was asked to rule on the following issues:

(i) is a newspaper headline capable of being a free-standing original literary work?

(ii) Does the text extract constitute a "substantial part" of the article as a literary work?

(iii) do the PRCA and its members need a web end-user licence from the NLA or its members in order to lawfully use and receive Meltwater's service?

Mrs Justice Proudman first identified the relevant principle of law, this being the test laid out by the Court of Justice of the European Union in Case C-5/08 Infopaq International A/S v Danske Dagblades Forening: no distinction should be be made between part of an article and the whole, provided that the part contained elements which were the expression of the author's intellectual creation. The Information Society Directive (2001/29), which governed the extraction of works, did not itself make reference to the need for the extraction to be of a "substantial part" of the copied work.  Rather, the Directive (as Infopaq explained) made it clear that originality -- not substantiality  -- was the test to be applied to the part extracted.  

On this basis the judge attacked the questions before them and answered them as follows:

(i) On evidence from the newspaper publishers that the creation of headlines involved considerable skill, some headlines were indeed capable of being independent literary works. However, even those that were not independent legal works still formed part of the articles to which they related.

(ii) As to whether the text extracts constituted a substantial part of the articles, what is decisive is the quality of the extracted part and the level of the author's skill and labour which the copier has appropriated, not the amount extracted. In Infopaq the Court of Justice found that copying an extract of 11 consecutive words from an article would be partial reproduction in part for the purposes of Article 2 of the InfoSoc Directive -- so long as those words had the necessary quality of originality. This does not require the court to conduct some sort of assessment of whether the extract is novel or artistically worthwhile on its own, since that would be treating the extract as if it was itself a literary work. In these proceedings, many of the text extracts did contain elements that could be said to be the expression of the intellectual creation of the author of the article as a whole, and which thus infringed.

(iii) Since customers of the media monitoring service made copies of the headline and text extract when viewing or accessing Meltwater's report, there was a prima facie copyright infringement. There were no fair dealing or other defences either, since the sole reason why the extracts were copied was to see if the news items were of any further use or not. 

Today the Court of Appeal dismissed the PRCA's appeal. In [2011] EWCA Civ 890 the Chancellor of the High Court, together with Lords Justices Jackson and Elias, took just 51 paragraphs to affirm the position taken by Proudman J.

Good news for copyright purists is that the Court says the test of what constitutes copyright-protectable subject matter has not been affected by the much-criticised ruling of the Court of Justice of the European Union in Case C-5/08 Infopaq: "intellectual creation" in that ruling referred to the origin of a work, not its novelty or merit. On this basis, Proudman J's finding that headlines were capable of being original literary works was "plainly correct". She was also correct to conclude that even an 11-word extract of a larger work was capable of being a substantial part of it.  Reproduction of a work through the involvement of a "voluntary human process" in accessing a webpage failed to satisfy the criteria of the 'temporary and transient copying' defence.  The other grounds of appeal failed too.  Proudman J's judgment was described as "clear, careful and comprehensive". However, the Court of Appeal felt that her declaration had been drawn too widely, since not every copying of every headline or 'scraping' would, on the facts, constitute a copyright infringement.

Early reaction to the decision has been predictable. Thus, in a media release issued shortly after the decision was handed down, Toby Headdon (BLP, for the copyright owners) is quoted as saying:

"Following some pretty trenchant and perhaps misguided criticism by opponents of the NLA's scheme, the Court of Appeal has set the record straight not least by dispelling the notion that the copyright exception for temporary copies made as part of a technological process provides Internet users with a carte blanche to access material on a website as they please". 

When the trial decision was made public, the IPKat commented that the ruling was an inevitable consequence of the fact that copyright infringement is broken down into so many restricted acts, each of which can constitute infringement even if they closely follow the performance of a permitted act by a licensed person -- but that is in the nature of the right itself.  While he can see that customers may feel peeved that they need a licence to have their own copy of extracts which are made under licence themselves and which they've paid for, he can also see why newspaper proprietors are desperate to turn opportunities such as this into a sort of 'last chance saloon' for coaxing a little more income out of a news provision service that is increasingly harder to finance and run profitably.  Merpel added that, within a few years, the availability of increasingly improved search engines and better techniques for harnessing them will lead many current customers of media monitoring services to do their own self-monitoring. She still thinks this is a likely development, though the availability of licences on reasonable terms may make current customers happier to stay with the status quo.

STOP PRESS: the court's ruling is now available on BAILII, here.

TV Catchup case goes to Europe

Cast your mind back to last December and you might recall, though the midst of winter's murky memories, a bright and cheeky interlude in which the recently-promoted Mr Justice Kitchin starred, ITV Broadcasting Ltd and others v TV Catch Up Ltd [2010] EWHC 3063 (Ch).  This was a copyright infringement action with a twist to it: instead of sitting there and waiting to be sued, the defendant (TV Catchup) decided to take the initiative and go apply in summary proceedings for the action against it to be dismissed on the basis that it had no chance of succeeding at trial. The outcome, which was a little bit like what happens when a fly picks a fight with an oncoming windscreen, was a decision not to dismiss the action straight off but to allow the claimant copyright owners to have their day -- four days as it turned out -- in court (click here for the IPKat's note on the summary judgment application).

ITV said that TV Catchup ('TVC') had infringed the copyright in its broadcasts by communicating those broadcasts to the public through a process of electronic transmission. This consisted of TVC running a website which allowed ordinary viewers to watch live United Kingdom television -- including broadcasts by ITV -- on their very own computers, smart phones and games consoles. To do this, the viewer had to become a member of TVC, which gave him the option to choose one of 50 or so channels. The viewer, having made his or her choice, would be taken to a new screen on which TVC provided a stream of the programme being broadcast.

"For goodness' sake, Henry,
I said 'pause', not 'paws'"

The ITV agreed that these transmissions to viewers were not "broadcasts" under section 6 of the Copyright, Designs and Patents Act 1988 (CDPA) and that TVC hadn't made ITV's broadcasts available to the public so that they could be accessed from a place and at a time individually chosen by them. However, ITV did feel that TVC’s services, which, er, communicated its broadcasts to the public by means of an electronic transmission were, if it might be so bold as to suggest this possibility, a communication of the broadcasts to the public by electronic transmission under section 20 of the same Act. TVC disagreed: in its view, in order to infringe the copyright in a broadcast under section 20, the alleged infringer's transmission must itself be a broadcast within the meaning of section 6 (which even the ITV agreed it wasn't). Mr Justice Kitchin thought this line of attack, ingenious and original though it might be, had no chance of succeeding, so we all looked forward to the trial.

Today Mr Justice Floyd delivered a 39-page, 145 paragraph judgment which reflected the judge's thoroughness in dealing with the parties' respective arguments concerning an area of law which has become almost unbearably complex and taken on an almost metaphysical dimension, divorced from the mundane nature of the activities it governs. He had to consider the validity of the amended version of section 20 itself, as well as a variety of issues relating to TVC's defences, one of which was reliance on the CDPA, s.28A which states:

"Copyright in a ... film, is not infringed by the making of a temporary copy which is transient or incidental, which is an integral and essential part of a technological process and the sole purpose of which is to enable -
(a) a transmission of the work in a network between third parties by an intermediary; or
(b) a lawful use of the work;
and which has no independent economic significance".

This was most definitely not
the sort of transmission that
Fluffikins was thinking of ...

The judge's at-a-glance ruling goes like this:

• the CDPA s.20(c) was not ultra vires the InfoSoc Directive; 
• TVC was indeed communicating films and broadcasts to the public, but, just to be on the safe side, it's a good idea to refer this issue to the Court of Justice of the European Union for a preliminary ruling, so hold your breath! ;
• subject to anything the Court of Justice might say to the contrary in its keenly-awaited ruling in Football Association Premier League v QC Leisure [Advocate General's Opinion this February noted briefly here, with links], TVC had reproduced a substantial part of the films in its buffers (which could in theory hold up to 8 seconds worth of video streaming) and on screen; 
• provisionally, the reproduction in the buffers and on the screens was not a reproduction of a substantial part of a broadcast ... but this is also to be referred to the Court of Justice of the European Union for a preliminary ruling. Keep holding that breath!
•  final judgment on the application of the CDPA, s.28A to reproduction of the films and broadcasts in the buffers and on the screens should await the outcome of the Football Association Premier League case -- but the judge's provisional view is that the defence does apply to the reproductions in the buffers;
• the CDPA section 73 defence ['Reception and re-transmission of wireless broadcast by cable': the Kat isn't even going to try to explain this one here] applies to the qualifying services ...
• ... but not in respect of re-transmission to mobile phones or of out of area services. [Throwing caution to the wind, Merpel says "the finding that, for s.73 purposes, "internet streaming" is "cable" is no great shock, since it reflects obiter observations in two earlier decisions, even though the scope of the s.73 defence now looks rather limited. However, it will be fun to see how the distinction Floyd J makes between mobile phone access and land line access will work in practice"].

So, all in all, errors and omissions excepted and without prejudice to anything that the Court of Justice may say, do or think in the future, this looks like a fairly good day in court for the commercial broadcasters. But what do the Kats say?

Without the aid of an abacus on which to count them, the IPKat finds it increasingly difficult to keep track of the increasing number of cases in which the meaning of the words "communication to the public" has been referred to Europe's highest court for an authoritative ruling. Is it six now? Merpel quips, soon we'll have as many rulings on "communication to the public" as we have on "use of a sign" in trade mark law.

You can't copy press unless you're with Copiepresse ...

Google: making the news
as well as facilitating
access to it

The news broke yesterday that internet search leviathan Google Inc lost its appeal against Belgian ruling that blocked it from publishing links to local newspapers on its online news service. According to the Bloomberg report, compiled by the IPKat's friend Stephanie Bodoni,

"The Court of Appeal in Brussels on May 5 upheld a 2007 lower court ruling that forced Google to remove links and snippets of articles from French- and German-language Belgian newspapers from Google.com and Google.be. Google, the owner of the world’s most-used search engine, faced a 25,000-euro ($36,300) daily fine for any delay in implementing the judgment [Quick question from Merpel, who is clueless with numbers: how long does it take Google to earn US$ 36,300?]].

Copiepresse, the group that filed the suit on behalf of the newspapers, said the snippets generated revenue for the search engines and that publishers should be paid for the content. The publications have a second suit pending in which they seek as much as 49.1 million euros for the period in which their content was visible on Google News. ...

Google said it remains committed to further collaborate with publishers in finding “new ways for them to make money from online news”. [They've found one: it's called 'Let's sue Google'] Google has the option to appeal the ruling to the Cour de Cassation, Belgium’s highest court [The Kat understands that this is more than a mere option, indeed a racing certainty. He also suspects that, if that looks likely to fail, Google will be raking over the embers of some Court of Justice of the European Union (ECJ) rulings on the interface of copyright and competition law with a view to engineering a reference to the ECJ that might either buy time or generate a favourable ruling].

“We believe Google News to be fully compliant with copyright law and we’ll review the decision to decide our next course of action,” Mountain View, California-based Google said in an emailed statement. “We believe that referencing information with short headlines and direct links to the source -- as it is practiced by search engines, Google News and just about everyone on the web -- is not only legal but also encourages web users to read newspapers online.” ...”

Google has made it plain that, if publishers do not want their websites to appear in search results, technical standards like robots.txt and metatags enable them automatically to prevent the indexation of their content. This looks a bit like having to opt out.  Can readers recall any other Google-related litigation recently, on the other side of the Atlantic, in which Google argued in favour of an opt-out ...?

Sources: "Google loses appeal over internet links to Belgian newspapers" here and "Google Loses Copyright Appeal Over Internet Links to Belgian Newspapers" here. Thank you, Toby Headdon (Berwin Leighton Paisner) for the links

Letter from Amerikat: Happy Bunny Day!

The AmeriKat has been enjoying the warmth of the sunbeams that have danced across her numerous files, spreadsheets and bundles this past week. The warmer weather brings out the summer clothes and English smiles, but also insects. Almost this time last year the AmeriKat was in the throws of a biblical scale warfare with swarms, floods, and drought inflicting her house. She had hoped that the spring and summer of 2010 was a blip in the calendar of insect infestations she would have to deal with, but alas, with the warmer weather the ants are back. She has now found the gap in her floorboards were the pesky insects have been arriving from, but like plugging a hole in a leaky boat, the water will always find somewhere else to spill in from. So instead of lounging out in the sun, dying eggs, eating chocolate and drinking lemonade on Easter Sunday, she is instead attacking any small six-legged body racing across her floor. (picture, left- the AmeriKat inspecting an alleged Easter bunny) Happy Easter from the AmeriKat!

Bratz Beats Barbie with $89 million jury-award

From pesky six-legged insects, to perky two-legged dolls. Last week a Californian federal jury issued their verdict in favor of Bratz (picture, right) in the now-famous copyright and trade secret battle between Barbie and Bratz (see previous reports here). Barbie's maker, Mattel, had alleged that the maker of the Bratz doll - MGA Entertainment- stole the idea for the Bratz doll by entering into a deal with the designer of the doll, Carter Bryant, who had previously worked for Mattel. Mattel subsequently filed a lawsuit for copyright infringement and trade secret violations, while MGA alleged unfair competition and also trade secret theft. This case was heard by first by Judge Larson who ruled in favor of Mattel, but that $100 million verdict was overturned on appeal. The Court of Appeals for the Ninth Circuit held that the federal court judge had erred in ruling that Mattel automatically owned the designer's sketch of the doll under the terms of the 'Employee Confidential and Inventions Agreement' between Mattel and the designer and remanded the case back to the federal court.

Bryant's employment agreement had assigned all rights, titles and interests in any such inventions, patents and copyrights to Mattel. The contract defined "inventions" as including, but not limited to, discoveries, improvements, processes, designs and know-how. The district court had held that this agreement assigned Bryant's ideas to Mattel despite 'ideas" not being included on the list or mentioned anywhere else. Mattel argued that the list of examples in the contract were illustrative not exclusive, but the Court held that "ideas" are "markedly different from the list of examples including discoveries, improvements and designs" (People ex rel Lungren v superior Court (1996)). (picture, left - no amount of law school could prepare Lawyer Barbie for the cruelty of a jury verdict) The Court of Appeals stated that the contract was arguable capable of either including or not including ideas, but that the trial court did not recognize this ambiguity and thus did not examine the extrinsic evidence before it on this issue.The Appeals Court concluded that the agreement could be interpreted to cover ideas, but that the text of the agreement did not compel that reading and thus remanded the issue back to the district court. They stated that:

"Designs, processes, computer programs and formulae are concrete, unlike ideas which are ephemeral and often reflect bursts of inspiration that exist only in the mind."

At the end of last year, Mattel and MGA applied for summary judgment on the issue of copyright infringement for the first and second generation Bratz dolls. Judge Carter granted summary judgment in MGA's favor in respect of the second generation Bratz dolls, but the remaining issues, including breach of copyright for the first generation of Bratz dolls and the breach of confidence/trade secret claims, remained for trial. The court was tasked with determining whether the Inventions Agreement entitled Mattel to Bryant's ideas for names like "Bratz" together with sketches that he created outside working hours. Also, ripe for ruling was MGA's trade secret claim against Mattel through a campaign of corporate espionage, whereby MGA alleged that Mattel's employees gained access to regulated private MGA toy showrooms by deceptive means.

On Thursday, a federal court jury in Santa Anna, California, found in favor of MGA and following the Court of Appeals opinion held that Mattel did not own the sketches or ideas for the Bratz dolls. The jury verdict also held in favor of MGA's counterclaim that Mattel had willfully misappropriated trade secrets and slammed Mattel with a $88.5 million damages price tag. A slight saving grace, albeit an insulting one, was that the federal jury also found that MGA had interfered with Bryant's contract with Mattel and issued Mattel a $10,000 award for the interference.

Although the battle may not be over with reports that Mattel will file a motion for a retrial within two weeks and will reserve the right to appeal, the case does remind everyone of the importance of carefully drafted employee contracts, as well as taking the business decision to litigate over seven or so years even if it costs your shareholders $400 million (see MSN money report here). However, if Mattel's intention was to quash the rival dollmaker, the litigation may have just done that. MGA's CEO, Isaac Larian is reported as saying that the Bratz brand "will never be the same level it was before."

The IPKat will keep you posted on any further developments in the case.

Tony Duquette seeing Spots with J.Crew sweater

Tony Duquette, Inc, the proprietor of the various IP rights associated from the late namesake artist and designer filed a trade mark infringement suit against clothing retailer and AmeriKat favorite, J.Crew in a New York federal court last week. For those not in the know, the late Tony Duquette was a Tony award-winning designer and artist who counted Elizabeth Arden and the Duke and Duchess of Windsor as clients. Tony Duquette allege that J.Crew has infringed the DUQUETTE name and trade mark by producing and selling a sweater with the style name the "J.Crew Duquette Factory Leopard Print". The complaint alleges that J.Crew knowingly and willfully used the DUQUETTE trade mark in connection with their leopard print sweater because of Duquette's alleged unique association with leopard prints, in particular with woven and printed textiles including carpets and tapestries. (picture, left - a fabric design by Duquette) The AmeriKat is seeing more and more product descriptions that use trade marked words become the subject of trade mark disputes. In the UK, one can always invoke the fun game of whether the product description is being used as a function (of many, many functions) of a trade mark. In the U.S., the case is arguably little more straightforward.

Albeit having not read the complaint, the AmeriKat's gut instinct is that there is not enough here to satisfy the test of trade mark infringement. i.e., namely where is the confusion and whether Duquette has enough reputation in his name associated with leopard print textiles to claim dilution? Further live trade mark registration for DUQUETTE the AmeriKat found on USPTO is for tapestries of textiles, carpets and rugs - not apparel (Reg No. 3863326). The AmeriKat perused J.Crew's website today and found one leopard print sweater which is called the "Wild spots cardigan" - a very un-J.Crew product name - so her guess is that J.Crew has already taken steps to change the name of the contentious product. The Amerikat predicts this lawsuit to die a quickish death, just like the animal print trend of last season.

Apple v Samsung v Apple v Samsung v Apple....

Last year the AmeriKat was constantly up-to-date reporting on the latest of the patent mobile phone wars. She has now officially lost track, except for the latest of the battles now between Samsung and Apple. Apple sued Samsung two weeks ago in California federal court for trade dress, design patent, trade mark and patent infringement against Samsung's Galaxy line of smartphones and tablets. Apple allege that Samsung's products are copies of the iPhone and iPad designs including the "icons with the rounded corners."

The incestuous ties of the smartphone and tablet manufacturers and retailers are felt in this case. In 2010 Samsung earned a reported $5.7 billion revenue from Apple by way of their purchase of Samsung semidconductors. Tim Cook, Apple's CEO, told the Wall Street Journal that Apple is

"Samsung's largest customer, and Samsung is a very valued component supplier to us, and I expect the strong relationship will continue. Separately from this, we felt the mobile communication division of Samsung had crossed the line, and after trying for some time to work the issue, we decided we needed to rely on the courts."

The litigator in the AmeriKat sensed a nice little bargaining chip for Apple in this suit, however not to be uncharacteristic in this type of litigation Samsung then "countersued" Apple last week, but not in the U.S. Samsung filed patent infringement lawsuits against Apple in Korea, Japan and Germany alleging violations of patents filed in each of those jurisdictions. The allegedly infringed patents involve "transmission optimization and reduction of power usage during data transmission, 3G technology for reducing data-transmission errors and a method of tethering a mobile phone to a PC to enable the PC to utilize the phone's wireless data connection." The speed in which these lawsuits were filed indicate that Samsung may have been preparing itself for this counter-attack for sometime.

This latest chapter in the mobile patent war saga again demonstrates that when it comes to litigation surrounding smartphone technology, the best defence that is repeatedly being employed by parties is that of pursuing offensive litigation strategies on a global level. Whether or not that will prompt the parties to settle sooner is not a certainty, but the more complicated and more jurisdictions in which a company has to battle, the more attractive it becomes to resolve the dispute before litigation costs rocket and stated commercial relationships are massively affected.

BGH: hyperlinks, freedom of expression and copyright infringing software

Already decided on 14 October 2010, even though only published in its entirety now, has been a decision (case reference: I ZR 191/08; 'AnyDVD') by the German Federal Supreme Court (Bundesgerichtshof) concerning a lawsuit brought by several music companies against Heise Verlag, an online publisher specializing in IT and computer news. The claimaint's took objection to reports published on Heise’s website which included links to a third party website (SlySoft) that offered software that allowed circumventing copy protection for DVDs.

While the lower courts, the Regional and Higher Courts of Munich I, had held that Heise's online reports were itself copyright infringing, the First Civil Senate of the Bundesgerichtshof took the view that adding the links on Heise's website which linked to SlySoft's website (where SlySoft offered copyright right infringing software) was covered by the constitutional right of freedom of press and freedom of opinion under Article 5(1) German Constitution (Grundgesetz). Further, in cases where the actual text of a report was protected by freedom of expression and freedom of press, the included links would also be afforded equal protection. The judges stressed that the purpose of the links on Heise's website was not only to technically facilitate to access the SlySoft's website but the links were to be regarded as part of Heise's reporting because they were complementing and 'backing up' what was reported with additional information. The fact that the Heise was aware that the software offered on SlySoft's website was copyright infringing did not change this and so could not be blamed on Heise since the information interest of the general public was of higher importance.

The judges also argued that reports on illegal conduct (here: that SlySoft offering copyright infringing software) could be of particular public information interest. It was also important that Heise had clearly indicated in its report that SlySoft's software was copyright infringing. In this context the Bundesgerichtshof explained that protection of Article 5(1) Grundgesetz encompassed freedom of expression and freedom of media in all its aspects and was thus not limited to the content of the report, but it also included the (outer) form of this reporting. As such, it was up to Heise itself, as the subject entitled to the fundamental right under Article 5(1) Grundgesetz, to decide which form of presentation it chose for its reporting. This also encompassed the decision whether additional information about a company and its products (here: SlySoft) should be expressly used in the report and it could include the decision to publish links to SlySoft's website.

The court, inter alia, based its decision on Article 95 a German Copyright Act which is based on Article 6 of the Copyright Directive (Directive 2001/29/EC) (“Obligations as to technological measures”). Intriguingly, the Bundesgerichtshof interpreted Article 95 a German Copyright Act not only in the light of Article 5(1) Grundgesetz but also in light of Article 11 (1) of the Charter of Fundamental Rights of the European Union which stipulates as follows “(e)veryone has the right to freedom of expression. This right shall include freedom to hold opinions and to receive and impart information and ideas without interference by public authority and regardless of frontiers.” Article 11 (2) provides that “(t)he freedom and pluralism of the media shall be respected.” Referring to the ECJ's precedent in Connolly/Commission (C-274/99 P), the Bundesgerichtshof also stressed that content and quality of a report are irrelevant when it comes to the application of Article 11 of the Charter of Fundamental Rights of the European Union.

This interesting decision can be retrieved from the Bundesgerichtshof's website here (in German).

Not acte clair, but easy as A, B ... see!

Acte Clair, Cat Claire or Claire de Lune?

We have another A and B situation today, but this time it's not Anheuser-Busch and Budvar.  Back in November Mr Justice Floyd gave judgment in Football Dataco Ltd, The Scottish Premier League Limited, The Scottish Football League Limited and PA Sport UK Limited v Sportradar GmbH & and Sportradar AG [2010] EWHC 2911 (Ch), Chancery Division, England and Wales. In this action the claimants ("FDC") exploited certain data relating to English and Scottish football matches. This data, which was compiled in a database known as "Football Live", included goals scored, goal-scorers, penalties, yellow and red cards and substitutions; it was both updated and provided to third parties while matches were actually taking place. The defendants, Sportradar (a German company and its Swiss parent) assembled data relating to live English and Scottish football matches from public sources and called it "Sports Live Data". Their data was stored on webservers in Germany and Austria but could be accessed via links from elsewhere, including the United Kingdom.  FDC sued, alleging infringement of their UK copyright and database right. Sportradar denied liability since, whatever they might be doing, they weren't doing it in the UK; nor were they domiciled in the UK. The courts of England and Wales therefore had no jurisdiction. The German Sportsradar then sued FDC in Germany in July, seeking negative declarations that its activities did not infringe any of FDC's IP rights.

FDC then applied to amend their Particulars of Claim in order to clarify the nature of the acts which they alleged to constitute infringements and also to add some new ones.

Floyd J started by warning that it was important to examine with some care what, if any, claims were made in the original Particulars of Claim. This was because Sportradar argued that, by virtue of its application for declarations of non-infringement, the German Court was first seized of any claim which the English Court was not properly seized of before July. That exercise had to be carried out without the benefit of the amendments for which permission had not yet been granted. Jurisdiction with regard to the German company was governed by the EU's Judgments Regulation and, in the case of the [non-EU] Swiss company, by the Lugano convention.

Could FDC show a "good arguable case" of UK copyright and/or database right infringement in order to establish jurisdiction in the UK? On the basis of the evidence, Floyd J said "no": Sportradar had not done any act of reproduction (in respect of copyright) or extraction (in respect of database rights) in the UK. As for re-utilization in respect of database right, Article 7(2)(b) of the Database Directive stipulated that
Any form of making available to the public all or a substantial part of the contents of a database by the distribution of copies by renting, by on-line or other forms of transmission. This raised a question of law of where the act of "making available" occurred. The issue was closely related if not identical to an issue raised on the amendment application of where "making available" occurred for the purpose of section 20 of the Copyright Designs and Patents Act 1988. He had to face this issue since, where a question of whether the Court has jurisdiction turns on a pure question of law, that question has to be decided.

Referring by way of analogy to the debate as to where a "broadcast" occurred (was it at the place of transmission or also at the place of receipt?) he pointed to the Satellite Broadcasting and Cable Re-transmission for broadcasts orginating within the EU. Under that directive, a broadcast occurs where the signals are introduced under the control of the person making the broadcast into an uninterrupted chain of communication (the "emission theory"). Said Sportradar, the emission theory should equally apply to the making available right and to re-utilization, since the act which statute deems to be the infringement is a "making available" and the public do not have to actually access the database to infringe. The judge agreed: that right would prevent transmission or re-transmission in a state to which the Directive applies and other restricted acts would prevent further use of the database within the state of reception. He said:

"... the better view is that the act of making available to the public by online transmission is committed and committed only where the transmission takes place. It is true that the placing of data on a server in one state can make the data available to the public of another state but that does not mean that the party who has made the data available has committed the act of making available by transmission in the State of reception. I consider that the better construction of the provisions is that the act only occurs in the state of transmission".

Though the point was not acte clair, Floyd J felt that he could still rule on it and therefore decided not to refer the point to the Court of Justice of the European Union (ECJ), particularly since the issue was not determinative of whether the court had jurisdiction at all. This was because he interpreted the Particulars of Claim as alleging acts of reproduction and extraction by Sportradar's end users in the UK who downloaded the data from the their servers. Although the customers/end users were not party to the proceedings, the pleadings alleged that Sportradar had authorised and/or was jointly liable for, the acts of the end users/consumers. On this basis, the English court had jurisdiction to rule on whether Sportradar had authorised, or was jointly liable for, the acts of reproduction, extraction and re-utilisation of a substantial part of the Football Live database.

Turning then to FDC's application to amend its application, he felt that he could not allow any amendment which raised a new cause of action if it was already within the scope of the German proceedings. He therefore allowed the amendments which gave further particulars of joint tortfeasorship by Sportradar and which pleaded communication to the public by its customers -- but not an amendment alleging making available by Sportradar itself under the Copyright Designs and Patents Act 1988, section 20.

Today the Court of Appeal (Lords Justices Laws, Jacob and Wilson) [2011] EWCA Civ 330, hearing the appeal and cross-appeal, decided to refer the following questions to the ECJ for a preliminary ruling:

"Where a party uploads data from a database protected by sui generis right under Directive 96/9/EC ("the Database Directive") onto that party's webserver located in member state A and in response to requests from a user in another member state B the webserver sends such data to the user's computer so that the data is stored in the memory of that computer and displayed on its screen
(a) is the act of sending the data an act of "extraction" or "re-utilisation" by that party?
(b) does any act of extraction and/or re-utilisation by that party occur
(i) in A only
(ii) in B only; or
(iii) in both A and B?".

In making this reference, and before reviewing the parties' arguments, the Court summarised the position thus, at paragraphs 42 to 45:

"42. In the case of the UK database right, the claimants say that this means making available to the UK public. That they say the defendants do by copying (re-utilizing) Football Live on their Austrian server and transmitting the copied data to those members of the UK public who click on "live scores". "Transmission," they say, in the case of provision of data over the internet or indeed otherwise by wire involves both the acts of hosting the website (Austria and Holland in this case) but also the act of the user in accessing it. It is not transmitted unless and until it is received. Before there can in reality be a transmission there must be a transmittor and a transmittee. This I will call the "transmission theory" or the "communication theory". 

43. The defendants say not so, that acts of "transmission" occur only in the place from which the data emanates. This was called the "emission theory." The Judge thought that the "better view" was that the defendants were right about that though it was not acte clair. 

44. Before us the parties deployed considerable arguments in support of their respective positions. Mr Mellor contended that the argument was so strong in the claimants' favour to be acte clair. After we had heard him we were not satisfied of this. Mr Carr did not dispute that position or that the point was important and could be decisive. He did not, therefore, oppose a reference to the CJEU. 

45. We decided it was not appropriate for us to form our own view about this very important and difficult question".

In consequence of this reference, the part of FDC's action relating to direct liability for sui generis database right infringement must necessarily be stayed -- but the part relating to joint-tortfeasorship by unlawful communication to the public can proceed merrily on its way.

Addendum: in his haste to get this post up-and-running, the Kat left out the bit about infringement of copyright in an original database (in contrast with infringement of the sui generis database right), so Merpel is adding it now. At paragraphs 14 to 18 Jacob LJ killed any suggestion that there was such an infringement on the facts before the court:

"14. I turn first to the copyright claim. The criteria for subsistence of copyright in a database are that "by reason of the selection or arrangement of their contents, it constitutes the author's own intellectual creation". The defendants contend that the data collected by the claimants' agents is not of that sort – it involves no intellectual creation. Therefore, they submit, there is no copyright right at all. Alternatively, they submit, the data alleged to have been copied (namely goals, goalscorers, own goals, penalties, yellow and red cards and substitutions) are matters of pure fact. Such data is merely the contents of the alleged copyright and is precluded from protection by way of copyright by virtue of Art. 3.2. 

15. I accept the latter submission. The Judge was obviously sympathetic to it (and to the attack on copyright subsistence as a whole) for he said:

[49] Paragraph 22 of the particulars of claim alleges that the compilation of Football Live involves "considerable skill, effort and/or intellectual input by experienced personnel to generate, select and/or arrange its contents". There is also an allegation that a substantial part has been used: see paragraph 37. In the light of the law as stated above, those combined allegations must include the allegation that what is taken is a substantial part of the intellectual input of the authors. Those allegations are supported by a statement of truth from each claimant. Mr Cuddigan's argument that the part alleged to have been reproduced by his clients does not amount to an intellectual creation is not supported by any evidence. Whilst the court might have a view based on its own impressions, I do not think that it would be right to place those ahead of what is properly in evidence. In those circumstances, whilst there may ultimately prove to be force in the argument, I think the claimants have a good arguable case on this issue.

16. Unlike the Judge I think the point can be dealt with now. The statement of truth really adds nothing. It may be that some of the information collected for the claimants includes matter which involves intellectual creation. So there may be copyright in Football Live. But what is alleged to have been copied is mere data on any reasonable view. Its recording may sometimes involve some skill (who scored in a goalmouth scramble) but it is not creative skill. 

17. Nor, speaking more technically, do I think it matters that there is no evidence saying that the matter taken does not amount to intellectual creation. For I cannot imagine any credible evidence to the effect that it does. And actually, although the particulars of claim are supported by a statement of truth (so are a sort of evidence) there is no assertion that what was taken amounted to the taking of work involving intellectual creation.

18. It follows that when the proceedings started the court was not seized of a claim in copyright to the necessary standard. From that it follows that the argument we heard about "authorising" an act restricted by copyright (which by s.16(2) of the Act constitutes an infringement) becomes irrelevant. I say no more about it other than I saw considerable force in it.".

Acte clair here
Eclair here
Claire de Lune here

"Making available" only happens where it happens

On Wednesday Mr Justice Floyd handed down his keenly-awaited ruling in Football Dataco Ltd, The Scottish Premier League Limited, The Scottish Football League Limited and PA Sport UK Limited v Sportradar GmbH & and Sportradar AG [2010] EWHC 2911 (Ch), a sharply-contested battle that took place in the genteel surroundings of the High Court, Chancery Division, for England and Wales. The result: we now know something which many of us already suspected -- that where an alleged infringement consists of the act of making a work available to the public, "making available" by online transmission is committed (and only committed) where that transmission takes place.

So what happened in this case? The claimants ("FDC" for ease of reference) exploited certain data relating to English and Scottish football matches. This data, which was compiled in a database known as "Football Live", included goals scored, goalscorers, penalties, yellow and red cards and substitutions. That data was both updated and provided to third parties while matches were actually taking place. The defendants, Sportradar, were a German company and its Swiss parent. What did they do? They assembled data relating to live English and Scottish football matches from public sources and called it "Sports Live Data". Their data was stored on webservers in Germany and Austria but could be accessed via links from elsewhere, including the United Kingdom.

FDC launched proceedings in April 2010, alleging infringement of their UK copyright and database right. No, said Sportradar -- whatever they might be up to, they weren't doing it in the UK; nor were they domiciled in the UK. The courts of England and Wales therefore had no jurisdiction. The German Sportsradar then cunningly sued FDC in Germany in July, seeking negative declarations that its activities did not infringe any of FDC's IP rights.

Back in England, FDC then applied to amend their Particulars of Claim in order to clarify the nature of the acts which they alleged to constitute infringements and also to add some new ones.

Floyd J started by warning that it was important to examine with some care what, if any, claims were made in the original Particulars of Claim. This was because Sportradar argued that, by virtue of its application for declarations of non-infringement, the German Court was first seized of any claim which the English Court was not properly seized of before July. That exercise had to be carried out without the benefit of the amendments for which permission had not yet been granted. Jurisdiction with regard to the German company was governed by the EU's Judgments Regulation and, in the case of the [non-EU] Swiss company, by the Lugano convention. Could FDC show a "good arguable case" of UK copyright and/or database right infringement in order to establish jurisdiction in the UK? On the basis of the evidence, he said "no": Sportradar had not done any act of reproduction (in respect of copyright) or extraction (in respect of database rights) in the UK. As for re-utilization in respect of database right, Article 7(2)(b) of the Database Directive stipulated that

Any form of making available to the public all or a substantial part of the contents of a database by the distribution of copies by renting, by on-line or other forms of transmission.

This raised a question of law of where the act of "making available" occurred. The issue was closely related if not identical to an issue raised on the amendment application of where "making available" occurred for the purpose of section 20 of the Copyright Designs and Patents Act 1988.  He had to face this issue since, where a question of whether the Court has jurisdiction turns on a pure question of law, that question has to be decided.

Referring by way of analogy to the debate as to where a "broadcast" occurred (was it at the place of transmission or also at the place of receipt?) he pointed to the Satellite Broadcasting and Cable Re-transmission for broadcasts orginating within the EU. Under that directive, a broadcast occurs where the signals are introduced under the control of the person making the broadcast into an uninterrupted chain of communication (the "emission theory"). Said Sportradar, the emission theory should equally apply to the making available right and to re-utilization, since the act which statute deems to be the infringement is a "making available" and the public do not have to actually access the database to infringe. The judge agreed: that right would prevent transmission or re-transmission in a state to which the Directive applies and other restricted acts would prevent further use of the database within the state of reception. He said:

"... the better view is that the act of making available to the public by online transmission is committed and committed only where the transmission takes place. It is true that the placing of data on a server in one state can make the data available to the public of another state but that does not mean that the party who has made the data available has committed the act of making available by transmission in the State of reception. I consider that the better construction of the provisions is that the act only occurs in the state of transmission".

Though the point was not acte clair, Floyd J felt that he could still rule on it and therefore decided not to refer the point to the Court of Justice of the European Union, particularly since the issue was not determinative of whether the court had jurisdiction at all. This was because he interpreted the Particulars of Claim as alleging acts of reproduction and extraction by Sportradar's end users in the UK who downloaded the data from the their servers. Although the customers/end users were not party to the proceedings, the pleadings alleged that Sportradar had authorised and/or was jointly liable for, the acts of the end users/consumers.  On this basis, the English court had jurisdiction to rule on whether Sportradar had authorised, or was jointly liable for, the acts of reproduction, extraction and re-utilisation of a substantial part of the Football Live database.

Turning then to FDC's application to amend its application, he felt that he could not allow any amendment which raised a new cause of action if it was already within the scope of the German proceedings.  He therefore allowed the amendments which gave further particulars of joint tortfeasorship by Sportradar and which pleaded communication to the public by its customers --  but not an amendment alleging making available by Sportradar itself under the Copyright Designs and Patents Act 1988, section 20.

The IPKat reminds readers that the battle has only just begun.  We can expect some stunning litigation before two of the best squads judicial brains in the European Champions League -- the British and the Germans -- and even the prospect of a replay or two at appellate level.

Sportradar here
Cat radar here
Bat radar here

This note was prepared with the assistance of a press release from Bird & Bird, who acted for Sportsradar in these proceedings.

Breaking news: Willy the Wizard v Harry Potter to go to full trial

A case of throwing
the book at the claimant?

You won't find it on BAILII, but today's decision of Mr Justice Kitchin in in Paul Allen (trustee of Adrian Jacobd, deceased) v Bloomsbury Publishing and JK Rowling [2010] EWHC 2560 (Ch) (Chancery Division, England and Wales) is brought to you here by the IPKat himself as an act of kindness.

In short, it is alleged that JK Rowling infringed the copyright in Adrian Jacobs' Willy the Wizard in the course of writing Harry Potter and the Goblet of Fire.  JK Rowling and her publisher Bloomsbury deny that there has been any copying of all or a substantial part of Willy, claim that any similarity is superficial and assert that JK Rowling had no access to Willy either.  In this hearing the defendants sought summary judgment on the basis that the infringement claim could not possibly succed or, in the alternative, a conditional order that the case go to trial only if Allen, on behalf of Willy's deceased author, provides security for costs.

The Wizard and his backers may lose at trial -- and indeed Kitchin J expressed the view that it was improbable that the action would succeed -- but this was Willy's day of triumph.  The judge took the view that the infringement claim was not so weak as to be unarguable, inviting submissions as to the form that the conditional order should take.

The IPKat will of course be watching this action carefully.  If anyone is interested in writing a serious piece for JIPLP on the various allegations of copyright infringement made against Harry Potter around the world and how they've been dealt with, please email Jeremy here.