Categories
Copyright Industry

Thank You Professor! “Explaining” Section 230 to Canadians

Unabashed booster of—and apologist for—Section 230 of the 1996 Communications Decency Act (CDA), Eric Goldman, recently published an encomiumto help Canadians understand a crucial US law that’s become a flashpoint for heated discussions” (according to the introduction to Goldman’s article distributed by the Santa Clara University School of Law). It was initially released through the Centre for International Governance Innovation (CIGI), a prominent Canadian think-tank at the University of Waterloo. Goldman is Associate Dean and Co-Director of the High Tech Law Institute at the university, which is located in the heart of Silicon Valley). Thanks to Goldman, we poor benighted Canadians can finally begin to fully comprehend how fortunate we are that the new NAFTA (USMCA, called CUSMA in Canada) requires each country—that is the US, Canada and Mexico—to maintain legal rules that, in Goldman’s words, “resemble Section 230”. That provision in CUSMA is Article 19.17. More on the CUSMA treaty language below. But first….

What is Section 230?

Section 230 of the CDA provides that internet intermediaries (internet platforms, websites, social media services) are not liable in civil law for content posted by users. The law was originally passed in order to provide platforms with the means to control illegal or harmful content. As I wrote in an earlier blog post (“Section 230 is Dangerous–Keep it Out of Trade Negotiations”), the problem arose because an online website, Prodigy (no longer in existence) was successfully sued because it had not moderated an online posting put up by a user that allegedly defamed the plaintiff. The court considered that because Prodigy had the ability to moderate the content and did so on occasion, (but not in this case), it was a “publisher” (like a newspaper) and was thus liable for defamation. On the other hand, other websites that made absolutely no attempt to moderate content on their platforms, whether the content was objectionable or not, were considered “distributors” and were off the hook. There was thus no incentive for online platforms to lift a finger to remove obscene, defamatory or content that would be objectionable to children, one of the early concerns about the spread of online content.

The solution was Section 230, which provided, in the words of (now Senator) Rod Wyden, one of its architects, both a sword and a shield. The sword was the ability to take down objectionable content; the shield was immunity from prosecution for doing so. However, over the years its intent has become badly distorted through a series of rulings by various US courts to the point where today the legislation is interpreted as a blanket exemption from responsibility for digital platforms for any content posted by users.

Abuses enabled by Section 230

The misapplication of Section 230 is largely responsible for a general lack of accountability on the part of internet intermediaries for any content that they host, distribute or enable, allowing them to refuse to take action against user-generated abuses. This has led to a litany of abuses without legal remedy against the platforms that turn a blind eye to, enable or even promote, harmful content such as sexual exploitation of children, illegal gambling, false and harmful information, revenge porn, hate speech and so on. It is so wide-sweeping that it has allowed services like AirBNB to thumb its nose at municipalities seeking to enforce bylaws against temporary rentals because the illegal listings were posted by users. (There are limited exceptions to platform immunity under Section 230, namely copyright infringement and, since passage of the SESTA/FOSTA legislationin 2018, sex trafficking, a carve out vigorously opposed by most of Silicon Valley).

Tech platforms love Section 230, as do those who use the content to abuse others, promote illegal activities or spread conspiracy theories. Responsible content producers would like to see some accountability on the part of the platforms. Governments too are grappling with the issue of how to prevent the internet from becoming a law-free zone and to hold businesses that profit from user-generated content to account for the content they distribute and promote.

Because of the many abuses, Section 230 has come under increasing scrutiny in the US. Ironically, when it came under attack by the Trump Administration, it was not because of lack of content moderation by the platforms, but rather because they had—finally and under extreme provocation owing to the proclivity of Trump and his supporters to stretch the truth—exercised some control over the content propagated through their services. This infuriated Trump supporters who accused the platforms of political bias and threatened to bring changes to Section 230. As I commented at the time, (“Reforming Section 230 is the Right Idea—But Not When Done in the Wrong Way for the Wrong Reasons”),

Trump has decided to use Section 230 in order to take personal revenge on Twitter, not to reform it or to address the fundamental issues inherent in the abuse of its immunity provisions by internet intermediaries who have used it to avoid taking down clearly harmful content. By making this allegedly about “silencing conservative voices”, Trump has in effect hijacked the issue of Section 230 reform.”

Of course it didn’t happen, and for several months now we have all been spared the daily torrent of personal, misspelled, vindictive and inaccurate tweets from the former president. For now, Section 230 in the US remains unchanged.

Goldman’s “Five Things to Know”

However, Goldman and his Canadian fellow-cyberlibertarians such as Michael Geist at the University of Ottawa are big fans of Section 230. During the CUSMA negotiations, Geist joined with a number of American academics to write a letter to the chief trade negotiators of the three countries urging the inclusion of a Section 230 provision in the Agreement. He also publicly urged Canadian negotiators to cave in and give the US “a win” on this point. For Goldman and Geist and others of their ilk, Section 230 is the foundation of the internet, enabling free speech, competition, innovation, democracy and more. In his panegyric to Section 230, written for Canadians, Goldman cited “Five Things to know about Section 230”. These are;

  1. Internet Exceptionalism and Section 230
  2. Section 230 Enhances the First Amendment
  3. Section 230 Enhances Competition
  4. Section 230 is the Law in Canada (But Not Really)
  5. Gutting Section 230 Won’t Make the Internet Better.

Let’s examine these assertions and deconstruct the arguments just a bit.

Internet Exceptionalism

With regard to internet exceptionalism, Goldman argues that although the internet is treated differently from and more favourably than other media, Congress got it right when it passed Section 230. He is happy to see the laws governing libel, defamation, hate speech and the other checks and balances that society has imposed on those who are granted the privilege to publish and disseminate information suspended when it comes to the internet. It all seems to hearken back to John Perry Barlow’s 1996 “Declaration of the Independence of Cyberspace”, the mantra of the Electronic Freedom Foundation, a collection of bilious assertions that the internet is beyond the regulations of governments and not subject to national laws.

The First Amendment

Does Section 230 enhance the First Amendment, the “free speech” provision in the Constitution of the United States? First, we have to ask, “does the First Amendment put any limits on free speech?”  The answer is, “of course it does.” The First Amendment does not protect a number of forms of speech, such as obscenity, defamation, perjury, blackmail, incitement to unlawful action, and true threats. The courts have an important role in enforcing these reasonable limitations, but according to Goldman, Section 230 contains “important procedural advantages” that allow courts to dismiss lawsuits over third party lawsuits quickly and relatively cheaply. Put another way, Section 230 hobbles the courts from exercising their responsibility to ensure that free speech is exercised in a way that does not harm others.

Section 230 and Internet Competition

Does Section 230 enhance competition? In Goldman’s upside-down world it does because it keeps the door open to new entrants who don’t have to worry about investing resources in anything as wasteful as content moderation. And we have the proof that this policy increases competition, right? I mean, look at the robust competition that Facebook and Google have to deal with. Or did I miss something?

Is Section 230 the Law in Canada?

According to Goldman, Section 230 is sort of the law in Canada. This is because the new NAFTA (which I will call USMCA/CUSMA hereafter) contains Article 19.17 that says, in part;

“…no Party shall adopt or maintain measures that treat a supplier or user of an interactive computer service as an information content provider in determining liability for harms related to information stored, processed, transmitted, distributed, or made available by the service, except to the extent the supplier or user has, in whole or in part, created, or developed the information”.

According to Goldman, “when Canada ratified CUSMA it committed to providing Section 230-like immunity against internet service liability for third party content”.

However, in USMCA/CUSMA there is an important footnote that reads;

a Party may comply with this Article (19.17) through its laws, regulations or application of existing legal doctrines as applied through judicial decisions”.

In other words, Canadian case law will continue to apply and there is no explicit requirement to create safe harbours in Canada for interactive service providers under this provision. I discussed this in detail at the time in a blog posting labelled “Did Canada get “Section 230” Shoved Down its Throat in the USMCA?”

Goldman argues that Section 230 is the law in Canada but, with respect, that is a highly debatable claim. It’s a brave move for a non-legal practitioner to challenge a Dean of Law at a prominent university on a point of law but even little ol’me knows that a law is not a law unless it has been enacted into legislation. In Canada that is done by an Act of Parliament. True, Canada ratified the USMCA/CUSMA and, as part of the process of so doing, introduced a package of legislative amendments (Canada–United States–Mexico Agreement Implementation Act) to effect changes to various Canadian laws as required by the CUSMA treaty. For example, as part of this legislative package, there were amendments to a variety of statutes ranging from the Fertilizers Act to the Copyright Act and Special Import Measures Act to the Customs Tariff.  But were there any legislative amendments related to Article 19.17 of CUSMA? There were not. There is no new law in Canada establishing Section 230-like immunities for internet platforms—thankfully.  Secondary liability continues to apply in Canada as I discussed in greater detail in here (Will Article 19.17 of the USMCA/CUSMA Influence Canadian Court Proceedings? (The Long—or Short?—Arm of Section 230).

Canada’s “commitment” in the CUSMA was carefully worded, preserving maximum flexibility for Canadian legislators and legal practitioners. I like to think that this was not an accident but by design and is a credit to the Canadian negotiating team who resisted misplaced US demands to “sign on” to Section 230.

Will Changing (“Gutting”) Section 230 Improve the internet?

Goldman argues that removing the dangerous parts of Section 230 will not improve the internet. In his view, since people have been nasty to each other for centuries, changing Section 230 to put the onus on the platforms that disseminate this personal bile won’t change anything. Yet because of the ugly side of society, we have laws to restrain this kind of behaviour in the offline world. We have laws to protect innocent victims. We impose reasonable restraints on unfettered freedom of expression and dissemination of libellous, defamatory and obscene materials everywhere—except on the internet. Goldman would like to keep it that way. He states that “Section 230 reform will accelerate the end of the Web 2.0 era”. This, apparently, will lead to a predomination of “privileged voices” and will exclude “niche non-majoritarian interests” (like those people who spread misinformation, conspiracy theories and indulge in vile personal attacks). So, yes, Professor, changing Section 230 will improve discourse on the internet.

Section 230 in the US

Apart from the attacks on Section 230 by Donald Trump and his acolytes (because the platforms finally exercised a modicum of content moderation), there have been wide criticisms of this legislation because of how it has enabled online abuse. In fact, it almost didn’t make it into the USMCA, since Nancy Pelosi and the Democrats finally woke up to what they were supporting. Pelosi tried to get the Trump Administration to drop Article 19.17 as part of the last-minute deal-making with Congress to get approval of the Agreement, but it was too late in the process. However, the Democrats did succeed in getting a statement from the hi-tech industry acknowledging that inclusion of Article 19.17 did not prevent the US from amending Section 230 in future. Advocates of Section 230 were hoping that its inclusion in the USMCA meant that it would be “baked in” forever and could not be touched by Congress. Given the tepid support in Congress for Section 230, Goldman is right to conclude that even if Canada did not abide by Article 19.17 by passing future legislation that negated it, the US would be most unlikely to object. In fact, he admitted as much in a podcast with Michael Geist that I wrote about earlier this year when he said, with respect to Congressional intentions to modify Section 230 despite Article 19.17 of the USMCA;

“Congress will absolutely blast forward with efforts to tinker with Section 230 even if that would also contravene the USMCA…I don’t know who really plans to abide by it, and if no-one plans to abide by it, I don’t understand what the point was”.

The Future of Section 230

How true. So why the primer on Section 230 just for Canadians? It is not part of the corpus of Canadian law, it is an outdated provision that is in serious need of revision in its homeland, the US, and it is not going to constrain the Canadian government from holding internet platforms responsible for online harms that they distribute if they fail to takedown such material when notified. Eric Goldman, Michael Geist and their friends in the Electronic Frontier Foundation (EFF) can continue to beat the Section 230 drum, but that drumbeat is sounding increasingly hollow, in Canada as in the US. Let Section 230 stay where it is in Canada, effectively buried.

This article was originally published on Hugh Stephens Blog.

Categories
Copyright Industry Intellectual Property Media Piracy

IPRMENTLAW WEEKLY HIGHLIGHTS (September 21st to September 26th)

Twitter appoints personnel in compliance of with new IT Rules

Twitter has appointed Chief Compliance Officer, Nodal Contact Person and Resident Grievance Officer in compliance of IT Rules, 2021. Twitter has appointed these individuals as employees and not ‘contingent workers’ and has also provided names of the said appointed personnel and their respective positions.

This development comes in a petition filed by Amit Acharya stating that Twitter being a ‘significant social media intermediary’ as laid down under the IT Rules, 2021, must ensure compliance with statutory duties imposed upon it by the provision of these rules.

The matter is now fixed for hearing on October 5, 2021.

Bengaluru e-gaming companies plan to challenge ban decision

An amendment to the Karnataka Police Act shall outlaw online gambling and ‘games of chance’. The key concern of various governments with regards to gaming comes through the apprehension that it promotes gambling, however, in the past, there have been judgements that approve ‘skill based gaming’ against ‘chance based games’.

The ban will affect approximately 100 gaming companies operating from Bengaluru.

ASCI dismisses advertisement plagiarism complaint by Amul

A complaint was lodged by Amul Macho alleging that the Lux Cozi advertisement starring Varun Dhawan was a ‘complete copy’ of Amul’s advertisement released in 2007. Amul sought immediate action against Lux on the grounds that the advertisement unfairly took advantage of the brand equity, reputation and goodwill generated by Amul Macho brand.

In response, Lux contended that the complaint seemed to have been initiated with an intention to malign Lux’s reputation in the eyes of public and waste the time of the Consumer Complaints Council (CCC), adjudicatory body of the ASCI. It also pointed out a list of dissimilarities to show how the concept, theme and expression of both advertisements were in complete contrast to each other and hence, there can be no scope of similarity whatsoever.

Lux also informed the CCC that Amul’s advertisement had been a subject of controversy soon after it was released in 2007 on account of its “objectionable and indecent content”, and was banned by the Ministry of Information & Broadcast across all mediums.

Observing that both advertisements barely had any similarities between them, the CCC held that Lux’s advertisement was not in contravention of the ASCI code and rejected Amul’s complaint.

Google moves Delhi High Court against confidential report leak

A writ petition was filed by Google before the Delhi High Court alleging leak of an interim fact finding report relating to an ongoing investigation into Google’s Android smartphone agreements.

The report does not reflect the final decision of the CCI.

Marvel sues to keep rights to Avengers character from copyright termination

Under the termination provisions of copyright law, authors or their heirs can reclaim rights once granted to publishers after waiting a statutory set period of time.

The litigation figures to focus on the “Marvel Method,” a loose collaborative working atmosphere where initial ideas were briefly discussed with artists responsible for taking care of the details. The Marvel Method has been the subject of prior litigation, almost a decade ago, in August 2013, the 2nd Circuit Court of Appeals affirmed a lower court’s ruling that determined Kirby’s heirs couldn’t wrest back his share of rights to the characters because the former Marvel freelancer had contributed his materials as a work made for hire.

The Kirby case was then petitioned up to the Supreme Court, with the late Ruth Bader Ginsburg signaling some interest in taking up the case. Marvel at the time fought hard against any high court review, and before the justices decided, the case was settled.

If the plaintiffs win, Disney expects to at least hold on to at least a share of character rights as co-owners. The studio would have to share profits with the others. Additionally, the termination provisions of copyright law only apply in the United States, allowing Disney to continue to control and profit from foreign exploitation.

Criminal complaint filed against Javed Akhtar

The complaint is against Javed Akhtar’s statement linking RSS to Taliban. Joshi, the Mumbai lawyer, heard Akhtar on a talk show and felt that the alleged statement were meant to defame and vilify the Hindu community.

Joshi’s statement read, “Statements made by the accused is well planned, thought and calculated defamatory statements to defame RSS and discourage, disparage and misguide the people who have joined RSS or who would like to join the RSS and belittle the RSS in the eyes of common public. There was a well planned motive of the accused to defame RSS.”

Joshi has even prayed for investigation for offences of defamation which are punishable under the IPC Sections 499 and 500. The complaint will be heard on October 30.

Plagiarism claim against song titled ‘Teri Mitti’

Writer Manoj Muntashir has refuted all allegations of him having copied the Teri Mitti song from ‘Kesari’ from a Pakistani song.

Muntashir claims that issues have cropped up against him due to a video made by him on the Mughals where he has used strong words against them, referring to them as glorified dacoits.

Plea moved in Delhi High Court seeking withholding of ‘The Conversion’ release

The Petitioner body has submitted that it had sent a representation to the Ministry of Information and Broadcasting and also to YouTube complaining about the biased and communal content shown in the trailer of the film and had also requested to remove the trailer and withhold the release of the of the film, but it didn’t receive any response.

The matter was heard today by a Bench of Chief Justice DN Patel and Justice Jyoti Singh however, it was adjourned as the counsel for Petitioner, appearing through video conference, was inaudible.

The Court has now adjourned the matter for hearing on October 1, 2021.

De Minimis Defense Doesn’t Protect Minimal Use of Concededly Infringing Material

Richard Bell took a photo of the Indianapolis skyline and published it on various websites. Eleven years later, he registered the photo with the US Copyright Office. Bell later conducted an online reverse image search of his photo to identify potential infringers and subsequently filed more than 100 copyright infringement lawsuits.

Bell sued Wilmott for copyright infringement in 2018, asserting that Wilmott infringed his right to “display the copyrighted work publicly” by making it accessible to the public on Wilmott’s server. The district court granted summary judgment to Wilmott on the de minimis use defense.

The Ninth Circuit rejected the district court’s finding that Wilmott’s infringement was a “technical violation” because Wilmott did not know the photo was still on its website. The Ninth Circuit also found that there was no place for an inquiry into whether there was de minimis copying because the “degree of copying” was total since the infringing work was an identical copy of the copyrighted photo.

This article was originally published on IPRMENTLAW.

Categories
Copyright Industry

REVISITING SETTLED TENETS OF INDIAN COPYRIGHT LAW: ALLAHABAD HC’S REFUSAL TO STAY RELEASE OF THE FILM ‘CHEHRE’

The Allahabad High Court’s recent decision in Uday Prakash v. Anand Pandit and Anr. [FAO (D) 432/2021; Order dated 27th August 2021] was particularly illuminative with respect to certain established principles under Indian copyright law, while also shedding light on the procedural requirements in a quia timet action and applications for temporary injunctions. The Court herein was hearing an appeal from an Order of the Ld. District Judge, Ghaziabad, wherein the Plaintiff-Applicant’s application for temporary injunction on account of infringement of copyright was rejected. A summary of the brief facts followed by the Court’s findings and a brief reflection / analysis of the same is provided below:

BRIEF FACTS

The Plaintiff had instituted a suit before the District Judge, Ghaziabad, for infringement of copyright owned by the Plaintiff relating to a literary work titled ‘Highway-39’ (“Plaintiff’s Work”), which he had also gotten registered on 16.07.2007 with the Copyright Office at New Delhi under Registration No. L-28822/2007. The Plaintiff claimed to have discussed the Plaintiff’s Work with a Mr. Mazhar Karman, as he had assured the Plaintiff that he will show the Plaintiff’s Work to a few prominent producers in the film industry, which included Defendant No. 1.

The Plaintiff further claimed that, in June 2019, he came to know from ‘reliable sources in the film industry’ that Defendant No. 1 was producing a movie titled ‘Chehre’ (“Impugned Work”) which is very similar to the Plaintiff’s Work. Defendant No. 2 is the director of said movie, and was accordingly impleaded in this suit as well. The Plaintiff sent a cease-and-desist legal notice to the Defendants on 14.06.2019, asserting that the Impugned Work infringes copyright in the Plaintiff’s Work and accordingly seeking stoppage of production of the Impugned Work. However, the Defendants replied to said notice on 29.06.2019, wherein it wholly denied any copyright infringement by the Impugned Work.

It is also notable that in the Written Statement filed by the Defendants, a similar stance was adopted and it was asserted that the Plaintiff’s Work was devoid of ingenuity / originality and was merely an adaptation of the novel, ‘A Dangerous Game’, by Friedrich Durrenmatt. It was further contended that the Plaintiff’s suit was merely a quia timet action (as the Impugned Work was not to be released in February 2020, as was alleged by the Plaintiff), which was founded on unreliable sources and erroneous apprehensions.

Asides from the overarching issue of infringement of copyright in the Plaintiff’s Work, the Court in this appeal was also dealing with / revisiting the following pertinent legal issues:

  • Is the Defendant obligated to provide access to the allegedly infringing work (herein, the script of the Impugned Work) to the Plaintiff, in order to allow the latter to substantiate its claims of infringement of copyright?
  • What are the appropriate legal principles to be applied while dealing with a quia timet action, specifically when such action is purportedly instituted on the basis of tenuous apprehensions?
  • Can the Defendant be deemed to have ‘access’ to the original work on the basis of merely vague assertions to that effect?

FINDINGS OF THE COURT

At the outset, the Court reiterated the settled legal principles to ascertain whether a prima facie case for infringement of copyright, in an application for temporary injunction, is made out. Namely, the Plaintiff’s Work must be shown to be an original work, the Defendant should have had access to the same and the Impugned Work must be shown to be substantially similar to the Plaintiff’s Work. The Court then proceeded to apply this criteria to the instant factual matrix, and observed as follows:

“28. Now, the question whether a prima facie case is made out, is intrinsically connected to the cause of action regarding infringement of the copyright alleged. It is true that in order to establish a prima facie case, in an action for infringement of copyright, there have to be pleadings to establish that the literary work, of which the plaintiff claims infringement by the defendants should be shown to be the plaintiff’s original literary work, in the sense that the work is at least original rendition of a known theme with the plaintiff producing it, employing his knowledge, labour and skill. In addition, it has also to be established that the defendant had access to the plaintiff’s work, and that the offending script is substantially similar to the plaintiff’s script. Here, there is no doubt about one fact that the plaintiff holds a copyrighted work. But beyond that, the pleadings are utterly vague. There is an assertion to the effect that the plaintiff discussed the copyrighted work with Mazhar Kamran, but it does not say that he showed the copyrighted work to Kamran or handed it over to him. Therefore, there is a very vague case pleaded about the intermediary who could have possibly palmed off the copyrighted work to the defendants, on coming to know of its contents. A mere discussion of a work involving intellectual intricacies with another is not a case enough to impute that other with knowledge of its contents; and knowledge good enough to share it with a third party. The pleadings, therefore, are woefully vague about the access of the defendants to the copyrighted work.

29. The next assertion in the plaint that the plaintiff was given information about defendant no. 1 producing the feature film, that is essentially similar to the copyrighted work, is also utterly vague. It is set out in Paragraph no.5 of the plaint. The plaintiff does not name the source through which he came to know that the feature film is based on a script that is a plagiarized version of the copyrighted work. The terms employed in the relevant pleadings are “reliable source/sources from the film industry” which can hardly go to make for a prima facie case or a triable case for the grant of a temporary injunction in an action for infringement of copyright.

30. There is another issue which is required to be addressed. It is connected to the fundamental issue about whether the plaintiff at all had a cause of action to proceed for infringement with the kind of allegations that find place in the plaint. Prima facie, the plaintiff never had occasion to see what the contents of the script leading to the feature film were, the movie having not been released as yet and certainly not until time the suit was filed. The plaintiff has inferred that it is a copy of his work on the basis of some hearsay, that he has expressed through vague allegations in the plaint, describing them as reliable sources from the film industry. The entire action is, therefore, based on the plaintiff’s conjecture. This cannot be the basis of an action for infringement of copyright.”

In conjunction with the aforementioned observations, the Court also stated that in a quia timet action, the evidence about threat of injury should be tangible and concrete and cannot be based off bald assertions and hypothetical facts. That is to say, the burden of proof in a quia timet action is much heavier than in a case where an actual injury has already occurred. Although the Plaintiff tried to rebut the Court’s findings in this regard by asserting that the potential threat of injury has become increasingly potent in light of the impending release of the Impugned Work, the Court rebuffed this contention as the Plaintiff had still failed to make out a prima facie case on the similarity between the two works. It was reiterated herein by the Court that the Plaintiff’s case was built on mere hearsay and conjecture, and such vague pleadings do not meet the requisite threshold to make out a prima facie case of infringement of copyright.

At this juncture, the Court also dealt with the Plaintiff’s contention that its failure to further substantiate its pleadings must be attributed to the Defendant’s refusal to provide access to the script of the Impugned Work, as in the absence of proper access to said script the Plaintiff could not provide an in-depth comparison of the alleged similarities between the two works. The Court opined that such refusal on the part of the Defendant was an ancillary issue, with the suit more likely to fail or succeed on the questions of whether the Defendant had access to the Plaintiff’s Work in the first place and whether an ordinary person upon comparing the two works would conclude that the latter work is a copy of the former. Relevant observations in this regard are reproduced below:

“39. Therefore, the question that is required to be addressed is not about the burden of proof, or so to speak, the defendants’ burden as the plaintiff claims, once they (the defendants) opposed the application for discovery to disclose the contents of the script that is the basis of the feature film, but whether the plaintiff has a triable case pleaded on the parameters of an action for infringement. It has already been held that there is absolutely vague pleading to show that the defendant could have had access to the copyrighted work. The Court in Mansoob Haider no doubt, has said that failing on the point of access, the plaintiff can still succeed, upon showing that on a comparison of the two works, an ordinary person would inevitably conclude that defendants had copied the plaintiff’s work. There is some doubt whether access has to be necessarily proved, but assuming that it is required to be proved, it would still be necessary for the plaintiff to plead and show that an ordinary person, in comparing the copyrighted work and the feature film, would inevitably come to the conclusion that the latter is a copy of the former.”

Pertinently, the Defendant had agreed to place upon the copy of its script before the Court (although the Plaintiff was still denied access to the same). Therefore, the Court was able to undertake a comprehensive assessment of the two works and to compare similarities (if any) between these works. Upon doing so, the Court agreed with the Defendant’s contention that the works are inspired by the novel, ‘A Dangerous Game’, which thus constituted the underlying idea behind both works. However, as per well-settled principles copyright law, what is material is the treatment / expression of this idea in the two works. Keeping this in mind, the Court finally found that the common theme / idea behind the two works has been expressed in a materially different and distinct manner, and thereby no case for copyright infringement can be made out at this interim stage. The Court did however expressly remark that its observations pertain to the temporary injunction alone, and a final expression on the similarities of the two works could only be delivered after trial has been conducted. The Court also briefly remarked on the potential remedies to be provided to the Plaintiff, in case he succeeds in trial, and also directed the lower court to expedite trial in the instant suit. The Court’s final observations are reproduced below:

“54. There is, thus, prima facie a materially different and distinctive development and treatment of the same theme in both the scripts. In the prima facie opinion of this Court, there is, apart from the fundamentals of the basic theme that appear to have come from a common source, no such distinctive feature in the copyrighted version that have been prima facie plagiarized. It must be remarked here that whatever comparison has been done, is not, in any manner, a final expression of opinion on merits about the distinctive similarities or the dissimilarities. That is something that has to await trial, where wholesome evidence would now be led. All the remarks here are limited to the decision of the temporary injunction matter and nothing more.

55. Now, a still further issue that is required to be examined is what would happen if at the hearing, the plaintiff were to ultimately succeed. Would damages alone be recompense enough? There is relief sought by way of a decree for rendition of accounts of the advance amount received by the defendants from the distribution companies, television channels, OTT platforms, television networks by selling distribution rights/ streaming rights of the feature film, infringing the plaintiff’s copyright. The said decree would entitle the plaintiff, if he succeeds, to proportionate proceeds on account, as may be determined that the film earns. But, apart from that, if the copyright is ultimately held to be infringed at the trial, monetary compensation may not be recompense enough. It is, therefore, to be ordered that if the plaintiff succeeds, all further displays of the feature film shall have to carry an acknowledgment, suitably to be displayed that the movie is based on the copyrighted work, which is the plaintiff’s authorship. Also, the trial of the suit is to be expedited. Since the learned District Judge is hearing the suit himself, he will proceed with the suit, fixing one date every week and endeavour to conclude the trial within four months.”

 CONCLUDING REMARKS

The Allahabad High Court’s decision is certainly a well-reasoned and comprehensive one, which delves extensively into settled tenets of Indian copyright law and reinforces the same. The idea-expression dichotomy drawn out in the instant case is in line with the findings of the Supreme Court in its seminal judgment in R.G. Anand v. Delux Films and Ors. [(1978) 4 SCC 118], and the Court’s detailed breakdown of the similarities (or lack thereof) between the two works is premised upon this dichotomy as well, on the basis of which it ascertained that a prima facie case has not been made out by the Plaintiff.

Additionally, the Court’s decision to not draw an adverse inference against the Defendant’s refusal to produce its script for the Plaintiff’s perusal is also prudent in light of this particular factual matrix, as there was no cause of action made out in the Plaintiff’s vague pleadings which could have been relied upon to compel the Defendant to disclose the script of its Impugned Work (which would have certainly had adverse commercial implications for the Defendants, given the massive scale of the Impugned Work and the numerous stakeholders involved in the production and distribution of such feature films). This aspect of the decision was also intrinsically linked with the Plaintiff’s failure to prove that the Defendant had access to the Plaintiff’s Work, thereby underscoring the importance of proving ‘access’ to an original work in a suit for infringement of copyright.

All-in-all, this decision of the Allahabad High Court helps fortify settled tenets of Indian copyright law while also providing further clarity on the relevant factors to be accounted for by a court of law while dealing with alleged copyright infringement (at the interim stage) in a quia timet action.

This article was originally published on IPRMENTLAW.

Categories
Copyright

Some Reflections on What Can—and Cannot—Be Protected by Copyright

My wife was flexing her wrist, extending her forefinger and manipulating her thumb, following the instructions on the sheet in front of her that the physiotherapist had provided. She (my wife that is) had broken her wrist a few weeks earlier, in an unfortunate fall. With neither of us having ever broken a bone before, it brought home the reality of how challenging recovery from even a relatively minor break can be. Once the operation has taken place, and later when the cast is removed, you start to think you are out of the woods. But then the hard work—the regular and constant physiotherapy and exercise to restore use of the limb—begins. In this instance therapy consisted of ultrasound, massage and personal exercise and manipulation at home, following a set of illustrations and exercises she was given at the clinic.

Having a sharp eye for all things related to copyright, I immediately spotted the “©Island Hand Therapy Clinic 2010” on the instruction sheet. There is nothing protectable about the bone or ligament structure in a person’s wrist any more than the knowledge of how to restore movement and circulation to a limb. So how could this set of instructions outlining and illustrating a sequence of exercises be subject to copyright protection?

This example is a good illustration of the distinction in copyright law between an “idea” and the “expression of an idea”, with the former not subject to copyright while the latter could qualify. The instructions, illustrations and sequence of these specific exercises had all been developed by this clinic for the exclusive benefit of its clients and are the clinic’s particular expression of the idea of wrist manipulation to regain movement. They form part of its intellectual property and are a benefit provided to clients who pay to use the services of the clinic. The exercises needed to regain movement in a limb cannot be copyrighted but the explanations and illustrations, when put together, form an expression of the idea.

Assertion of copyright is simple and straightforward (one of the major advantages of this form of intellectual property, compared to the more costly and legalistic processes required to register a trademark or secure a patent, for example). The ubiquitous © sign is not even required, although to affix it is a good idea as this is a conscious assertion of copyright. In Canada, a copyright can be registered for a modest fee, but it is not necessary to do so. In the US, a copyright does not have to be registered with the US Copyright Office, but registration is necessary if a legal case is to be brought against an alleged infringer.

Although in most countries a work does not have to be registered to be eligible for copyright protection, some form of “fixation” is required for it to constitute a copyrightable work. (A musical score, a photograph, a printed facsimile, for example). Fixation can be difficult to determine at times, as I discussed in an earlier blog post “My Fixation with Fixation”.Recently a Chinese court has extended the concept of fixation even further, ruling that the arrangement of a water fountain display to music can be protected by copyright, notwithstanding the reality that no two performances could be identical (owing to factors such as weather and light). The court dealt with the issue of fixation by virtue of the fact that the water and music show were replicable because of the design of the devices governing the directions and timing of the spray, and the programming of the music.

Most copyrighted works are not infringed, and most minor infringement seems to go unchallenged. It depends on the circumstances. It would be unlikely that the hand clinic would take any action against a patient who unthinkingly shared her physio exercises with a friend who was also having wrist problems. But they might object if another clinic appropriated, copied and distributed the exercises to their own patients. That little © at the bottom of the page is a good reminder and an insurance policy.

The distinction between an idea and its expression is a concept that I explored in an earlier blog “Copyright on the Rocks”.It is something that jurists have grappled with over many years as interpretations of what is subject to copyright evolved. Today, it is widely accepted that a procedure, process, system, method of operation, concept, principle, or discovery (to quote the US Copyright Act) are not subject to copyright, nor are facts, but that wasn’t always the case.

In the 19th century, some newspapers in England pushed to assert copyright over the news that they generated, arguing that the considerable effort and expense they went to in collecting the news entitled them to protection against copying, at least for a specified period of time. For example, if TheTimes (of London) paid a correspondent to report on events abroad (a war for example), and then invested in the costs of transmission (by telegraph) of the latest news, why should rival newspapers be simply allowed to “cut and paste” the news that the Times had generated? Widespread copying of the news in the morning papers by the evening papers, and literally “cutting and pasting” columns of material into subsequent editions, was a common practice in the early days of journalism (and widely accepted).

In a famous case in the 1890’s known as Walter v Steinkopff (documented in Prof. Will Slauter’s book, “Who Owns the News: A History of Copyright), The Times sued another journal, the St. James Gazette, for copyright infringement for reprinting both part of a story by Rudyard Kipling and several news paragraphs. The Gazette admitted infringement with respect to the literary excerpts, but the case turned on the news paragraphs. The Times had taken the necessary steps to ensure payment to the journalist and had arranged assignment of the reporter’s copyright to the newspaper. The case was heard by Sir Ford North who ruled that even if cutting and pasting was a common practice in the British newspaper business at the time, the Times had not expressly consented to it. Moreover, the Times had complied with the legal provisions regarding establishment of copyright. However, North pressed the plaintiffs as to what exactly they thought copyright should protect. To quote from Slauter (p.175);

If The Times published a telegram announcing the death of a foreign leader, would other papers be prohibited from publishing the same news unless they obtained their own telegram? After some back and forth, counsel for The Times was willing to concede that other papers could not copy The Times’s report verbatim but that they could restate the facts.”

North summarized by noting that there is no copyright in news, but there is or may be copyright in the particular forms of language or modes of expression by which information is conveyed. In other words, facts (news) by themselves cannot be copyrighted, although the form of news articles may be subject to copyright protection. The same issue was settled in the US in a precedent setting case in 1921. (Chicago Record-Herald Co. v Tribune Ass’n)

And then there is the “merger doctrine” to consider. This occurs when there are only limited ways to express an idea, where the expression merges with the idea itself and is therefore not protected. The most recent example of what was probably a merger doctrine case, although it was not decided as such, was the US Supreme Court decision on Google v Oracle. Google had copied Oracle’s Java APIs (application programming interface) or source code (aka “declaring code”), without payment or permission, in order to facilitate programmers writing programs for the Android platform, which uses Java code. Google argued that the APIs, which provide a kind of underlying framework for writing computer code, (a so-called “building block”) were not copyrightable as they were basic utilitarian functions. Initially the court agreed but this ruling was overturned on appeal. The case was further appealed to the US Supreme Court where Google also argued that even if the APIs were subject to copyright, there was no infringement because Google’s use was fair based primarily on the fact that its subsequent use of the APIs led to new works and was thus transformative. (This is a gross oversimplification of the case but outlines the basic elements. A more detailed explanation can be found here).

In the end, the Supreme Court did not rule on whether the APIs were subject to copyright protection—which was the essence of the case. Instead, it focused on the fair use argument, and concluded that Google’s use was fair. This is a controversial finding as it potentially opens the door to other arguments that an unauthorized use of a copyrighted work that leads to a transformative product or service is legal under the US fair use doctrine. The Supreme Court tried to ring-fence its decision by stating that its ruling applied only narrowly to “declaring” computer code, but others have already been quick to try to jump on this bandwagon. Ultimately, the real question in Google v Oracle was whether the underlying code—which some have compared to a QWERTY keyboard—was copyrightable because of the limited ways in which computer code can be written.

This landmark case is a long way from my wife’s wrist exercise instructions, which shows how quickly one can go down the rabbit hole when discussing copyright issues. However, the principle of what can be copyrighted, and what cannot—based on the distinction between ideas and facts on the one hand, and the original expression of ideas and facts on the other—is a fundamental if sometimes blurred principle.

I am not sure whether I have made the distinction any clearer or simply blurred it more. But if you are in any doubt, please note the © symbol below. After all it is fixed (you’re reading it); it is my expression of the idea of what is and is not subject to copyright and it is original. Who else in history has connected Google v Oracle with Walter v Steinkopff (1892) with a Chinese court’s copyright finding on a water fountain display with my wife’s hand clinic physiotherapy instructions? It qualifies for the big ©! And I’m pretty confident that no-one is going to challenge my assertion of copyright.

This article was originally published on Hugh Stephens Blog.

Categories
Blog Copyright

Supreme Court of Canada Decision Undermines Canada’s Collective Licensing System: A Parliamentary Fix is Needed

On July 30 the Supreme Court of Canada (SCC) delivered what can only be described as body blow to the management of collective rights in Canada, although the collective society at the centre of the action, Access Copyright, found some comfort, pointing out in its press release that the Court “refuses to legitimize uncompensated copying by the education sector”.  In its decision, the SCC not only dismissed the Access appeal against a ruling by the Federal Court of Appeal that “mandatory” copyright tariffs set by the Copyright Board of Canada are not mandatory with respect to users of content when that content is covered by the tariffs, but also editorialized on the lower court’s earlier ruling that York’s Guidelines (which York claimed allowed it to use material from Access Copyright’s repertoire without obtaining a licence or paying compensation) were not fair. Although the SCC refused to issue a Declaratory Statement legitimizing York’s Guidelines, its reasons for doing so were largely procedural. The Court declared that since payment of the tariff was not mandatory, there was no legal dispute between Access Copyright and York, and therefore it would be moot to take a position on the Guidelines. It then proceeded to cast doubt on the original decision against York, although recognizing that it was not retrying the case and that other factors not before the Court had to be considered.

The Guidelines will be tested when a suit is brought against York by a rights-holder (Access Copyright, although representing rights-holders with respect to collection of royalties, does not itself hold any rights in the works in its repertoire and therefore cannot bring an infringement case in its own name). When that takes place, the views of the SCC that the original finding of unfairness failed to take into account the user’s right of individual students will clearly be a factor in assessing culpability. Despite the unequivocal finding against York by the Federal Court in 2017 that their Guidelines had materially harmed the Canadian publishing market, the interpretive musings by the Supreme Court plus the need for individual rights-holders to establish infringement adds greater uncertainty to the process.

As for the mandatory tariff issue, it is complicated as I explored in a blog post (When is a “Mandatory Copyright Tariff” mandatory only if you opt-in?)last summer. Back in the 1930s when “mandatory tariffs” first entered the legal vocabulary with respect to copyright, they were mandatory in the sense that Performing Rights Organizations were required to issue a licence (for use of sheet music, radio broadcasts etc.) to a user if the user offered to pay or paid the established licensing fee. In the late 1980s and 1990s substantial changes were made to Canada’s copyright legislation to address challenges emerging from photocopying and digital reproduction, and a number of collective societies (collective rights management organizations) were established to facilitate licensing of content and collection of royalties. It became standard practice for the Copyright Board to “certify a tariff” (i.e. approve a royalty fee) which would be applied to all users of a collective’s repertoire unless voluntary arrangements between users and the collective were agreed upon. The Federal Court of Appeal’s decision in June 2020 upended this long-established system, ruling that the legislative intent of the original 1930’s interpretation of the term “mandatory” had not changed. This has now been reaffirmed by the SCC.

In reaching its conclusion the Supreme Court carefully parsed the wording of the 1988 and 1997 legislation and concluded that the original intent of imposing constraints on the ability of collective societies to withhold licences had not changed. Moreover, it concluded that the role of the Copyright Board of Canada in certifying tariffs was to limit the amount that collective societies could charge, not to establish the amount that a user should pay (even though this is at variance with actual practice for the past twenty years). In declaring that it could not impute intent to Parliament where no wording existed (with regard to the question of what was “mandatory”), the SCC declared (at paragraph 76);

It is of course open to Parliament to amend the Copyright Act if & when it sees fit to make collective infringement actions more readily available. But under the existing relevant legislation in this appeal, an approved tariff is not binding against a user who does not accept a licence.

Legislative amendment seems to be the only alternative if the system for the collective management of rights is to be maintained in Canada. Whether and when Parliament will be prepared to take up this matter is another question, particularly given the strong opposition that can be expected from the post-secondary sector.

The alternative is litigation, perhaps a class action lawsuit against York, or at least a series of individual infringement cases funded by major publishers. One of the precepts of the collective management system introduced in the 1988 and 1997 reforms, however, was to avoid endless, costly litigation by facilitating collective licensing. Given this intent, a return to litigation seems like a retrograde step. Small publishers and individual authors will find it difficult to pursue such a remedy. If Access Copyright changed its business model and acquired the rights to works that it holds in its repertoire, it could bring a collective action against York, but whether this is a viable option is a question for members of Access Copyright to decide. Some collective societies, such as SOCAN for example—representing composers, songwriters and music publishers—do have certain rights assigned to them. However, even they intervened in this case since SOCAN’s tariffs that cover bars, restaurants, and clubs cover tens of thousands of small establishments across the country and without enforceable tariffs, licensing at scale becomes impractical and inefficient.

Although York’s Guidelines were found to be unfair in the original trial by the Federal Court in 2017, the SCC’s musings on that decision will make a finding of infringement less certain. The SCC noted that while the Declaration requested by York should not be granted:

This should not be construed as endorsing the reasoning of the Federal Court and Federal Court of Appeal on the fair dealing issue. There are some significant jurisprudential problems with those aspects of their judgments that warrant comment.

According to the SCC the main problem with the analysis by the lower courts was that they approached the fairness analysis exclusively from the institutional perspective.

This error tainted their analysis of several fairness factors. By anchoring the analysis in the institutional nature of the copying & York’s purported commercial purpose, the nature of fair dealing as a user’s right was overlooked & the fairness assessment was over before it began.

This will add complications for those bringing an infringement case, although there are a number of other factors to be considered in evaluating fair dealing that the SCC recognized were dealt with in the original trial and would need to be dealt with in any future litigation, such as amount of the dealing, nature of the work and the effect of the dealing on the market. It is far from certain that York would prevail in a future case. Far from creating clarity, it looks as if the result of the SCC’s decision–barring Parliamentary action on reinterpreting the meaning of mandatory tariffs–is more litigation, more uncertainty, and more waste of public funds as universities defend themselves against infringement actions that could have been avoided by the simple expedient of obtaining a licence.

Copyright minimalist Michael Geist at the University of Ottawa declared that the SCC’ decision was “a massive win for education and copyright”. It may represent a massive win for those educational institutions that seem determined to avoid paying a reasonable licensing fee for the content they provide to their students but it is hardly a win either for education or for copyright. Undermining copyright and payment of royalties for the use of copyrighted material will only result in less quality material being available to students. The quality of education will suffer in order to save payment of a few dollars per student to the copyright collective that represents the bulk of publishing and the vast majority of authors in Canada. The only winners in the end will be the legal profession in terms of legal fees. The solution is for Parliament to plug the holes in the legislation that the Supreme Court’s decision has exposed.

This article was originally published on Hugh Stephens Blog.

Categories
Copyright

The American Music Fairness Act (AMFA): A Better and Fairer Solution for Performers than Seeking “National Treatment”

From the title of this draft legislation, introduced into the US House of Representatives in late June, you can surmise that something is unfair about music in America. What is unfair–from the perspective of performers and record labels–is that US terrestrial radio stations are not required to pay royalties to performers or labels for playing recorded music on air. Online broadcasters and streaming services do, but not over-the-air AM/FM radio stations. Terrestrial stations do, however, pay royalties to composers and songwriters for music played on air, but not to performers. Why is this, and what is the justification for this free-ride on the work of others?

It goes back to the birth of radio in the 1920s and is related to political clout, in this case the political influence exercised by the National Association of Broadcasters (NAB) in the US. I mean, who wants to pay for something, even if that something is the essence of the service you are offering your customers, if you can get it for free? The argument advanced by the NAB is that radio stations shouldn’t pay performers for playing their music because the stations provide “free air-time” that promotes new recordings. If you want to get your music promoted, you need to get it on air, and therefore—so the broadcasters’ argument goes—performers should be grateful for the free publicity. It is similar to the specious argument that seeks to justify piracy by claiming that it helps promote movies or books. It’s also like raiding the orchard next door and selling their apples for personal gain but justifying the theft on the basis that the more people buy apples (from me), the better it will eventually be for the apple growing industry and for the grower next door. Moreover, because internet radio broadcasters are required to pay performance royalties, while terrestrial broadcaster are not (the requirement for digital transmissions to pay performance royalties was introduced in the US in 1995; prior to this date performance royalties applied only to public performances), the exemption for AM/FM stations is another way of tilting the playing field in favour of just one segment of the broadcasting industry. The
AMFA would deal with this longstanding injustice.

The arguments for passage of the AMFA have been well laid out by several commentators, including retired music industry executive Neil Turkewitz (Broadcasting Rights for Performers & Labels: The Fair Thing To Do) and copyright blogger David Newhoff (Has the Moment Finally Arrived for Fairness to Music Performers?). Both point out that the tired old arguments about free publicity and advertising for performers is thread-bare; if they ever had any validity in the past, that has changed with the introduction of many other ways to promote and distribute music. Terrestrial radio competes with streaming services and satellite radio, neither of which are arguing that they should be exempt from the payment of performing royalties. Radio stations are far from the only game in town when it comes to giving exposure to artists, but they are the only ones to get a free ride on the artistic efforts of third parties, which they monetize through advertising. In fact, the US appears to be one of the only countries in the world not to require the payment of performance royalties by over-the-air broadcasters. (I’m not sure about North Korea).

This US exceptionalism (which the AMFA is trying to address) also results in the situation where US artists whose music is broadcast in other countries generally are deprived of royalties for the on-air playing of their work abroad, even though terrestrial broadcasters in those countries are required to pay performance royalties. This loss of overseas income to US artists has been estimated at over $300 million annually. Most countries apply the principle of reciprocity (“tit for tat”) when it comes to collection and payment of royalties. Since US law provides a royalty exemption for radio stations for all music played, this means that foreign artists also don’t get paid when their recorded works are broadcast. Therefore, most countries reciprocate (one might say “retaliate”) by applying the same rule to US performers, either by not requiring collection of royalties on music performed on terrestrial radio by US artists, or by allowing collecting societies to keep the funds generated by US artists and distribute them to domestic performers. The best way to counter this, and to ensure that royalties flow to US performers, is to fix the problem in the US by removing the broadcast exemption. This would also have the additional benefit for non-American artists of ensuring that they receive compensation when their works are played on terrestrial radio in the US.

However, there is another way to address the problem of collecting foreign royalties for US artists—by pushing for “national treatment”. This is a trade principle whereby foreign entities in a given country are treated as well as (or one could say as badly as) domestic entities. The term of art used is that the treatment must be “no less favourable” than that accorded to a domestic equivalent. No favouritism is allowed to be shown to domestic companies, entities or artists vis à vis foreign entities, and there is no tit-for-tat reciprocal treatment. For example, under the principle of national treatment, if British law has a requirement for payment of performance royalties on radio, all performers should receive them, whether they are British, American or Zulu. The fact that British performers in the US are denied royalties when their music is played on radio is not relevant because British performers are no worse off in this respect that their US counterparts. In other words, US law discriminates against all performers, regardless of nationality. Everyone is treated the same—badly.

But national treatment is not granted by countries willy-nilly. It is usually negotiated bilaterally and is subject to many qualifications. Only certain sectors or products are accorded national treatment, and there are usually exceptions. National treatment concessions are carefully negotiated to ensure a balance of benefits overall between countries, which is the main concern of trade negotiators.

Because there is no national treatment in music between the US and UK (there being no bilateral trade agreement), we get the situation described below by the US advocacy group Music First which, among other objectives,  is urging the US Government to negotiate national treatment commitments with foreign governments, under the deceptively catchy slogan “All music creators deserve equal treatment”. The following example is put forward by Music First to substantiate its case;

because the United Kingdom doesn’t recognize national treatment, if a band has members from both the United Kingdom and United States, only the U.K. artists get paid directly from the U.K. collective when their music is played on U.K. radio.”

Some would say that is only fair because the US doesn’t allow British artists to collect royalties in the United States; others would say that two wrongs don’t make a right. Artists lose out in both scenarios. One way for the US music industry to deal with the overseas royalties issue is to push the US government to negotiate national treatment provisions with foreign countries that respect broadcast performance rights. But this is, at best, a stop-gap measure. A far better solution, one that will benefit all artists, including US and foreign performers both in the US and abroad, is to rectify the injustice by eliminating the US terrestrial broadcast exemption once and for all.

This article was first published in Hugh Stephens blog.

Categories
Copyright Industry Piracy

Insights from Industry Insiders: Eileen Camilleri

Each month we hear from industry insiders in Australia and abroad to get their take on content piracy. Is content protection improving? How do we stop piracy? How does Australia compare to the rest of the world? These are some of the questions we’ll be exploring with leaders across the content industry.

Eileen is the Chief Executive Officer of the Australian Copyright Council. After practising intellectual property law, Eileen moved in-house to APRA AMCOS. She has since taught and consulted in intellectual property, most recently at the College of Law where she spent 20 years writing, lecturing and working on course design. She was the Assistant Director of Practitioner Education, running the College’s Masters program. A former occasional legal officer at the ACC, Eileen is also a professional actor with a Masters in Fine Arts (QUT). 

Welcome Eileen, please introduce yourself.

Hi. I am Eileen Camilleri and am the CEO of the Australian Copyright Council (the ACC). We are a small, independent, not-for-profit, non-government organisation dedicated to promoting understanding of copyright law and its application. We currently have 26 affiliate members who we work hard for in advocating for appropriate copyright protection and reform.  

We provide free written legal advice to members of our affiliate organisations and Australian creators on copyright related issues. We also conduct training including seminars, webinars and develop customised training for organisations.  

On the Resources section of our website, we have a large range of free copyright fact sheets available and copyright publications 

Does piracy affect your business or that of your stakeholders? How? 

Piracy affects our affiliate members, particularly collecting societies whose role it is to support creators to earn a living through their work. We also advise individual creators on instances of piracy and online infringement through our legal advice service.  

What do you think is the most significant impact of piracy on the creative industry? 

 The biggest impact unfortunately, is a financial one. It is already difficult for creatives to earn a living through their work and piracy makes it that much harder. Less money flowing to creatives means less resources and opportunity for cultural goods which is a net loss to society as a whole.  

It is of course, very difficult for individual creators and small businesses in particular, who don’t necessarily have the means to litigate when their rights have been infringed.  

What is the biggest challenge in the fight against piracy? 

 The biggest challenge in the fight against piracy is enforcement. The internet presents many challenges in this space, such as the anonymity of pirates and infringers, ever changing technology and the massive size of the world wide web. This means that piracy enforcement is often a ‘whack-a-mole’ exercise.  

How do you think Australia is measuring up in tackling piracy? 

In 2018, amendments were made to the Copyright Act 1968 (Cth) which allow copyright owners to apply to the courts for an injunction requiring search engines and internet service providers (ISPs) to block access to sites which facilitate online copyright infringements. These reforms have been and Kickass Torrents 

Further, the recent shift to easily accessible and affordable online streaming models from rights holders has reduced online piracy by allowing consumers convenient access to copyright material, but it is a continuous battle!  

Do you have any personal experiences or anecdotes about piracy? 

 Only that I have a couple of well-schooled children on the problems of piracy!  

What are you watching and recommending to friends at the moment? 

 There’s a lot of fabulous content on free to air and streaming services at the moment.  

I’m savouring the final season ‘Call My Agent’. On the Australian front, ‘Bump’ was terrific.  

What excites you about the future of your industry sector? 

Creative industries are always exciting. I am very lucky to be working in the space – you never know what new cultural shifts are just around the corner! The ACC is honoured to continue supporting creative Australia.  

This interview was originally published in Content Café.

Categories
Copyright Industry

Negotiating Payment for Use of News Content on Dominant Internet Platforms: What’s Needed to Reach a Fair Deal?

Given a choice between reaching “voluntary” agreements with news publishers for use of news content online and being compelled to do so by government, the dominant internet platforms (Google, Facebook) are now doubling down on negotiations with news providers. Mind you, there is nothing like a hanging in the morning to focus the mind. The latest confirmation that the platforms would prefer to negotiate “voluntarily” rather than face legislation compelling them to do so, or worse, have a government arbitrator set the terms of the agreement, was the announcement last month that Google Canada has reached agreements with eight Canadian publishers, including one major Canadian nationwide daily (The Globe and Mail) to license content and pay news organizations to create and curate journalism. This came on the heels of Facebook’s recent announcement that it had reached agreement with 14 Canadian news providers, most of them small digital players, to pay for some content on the platform.

The sudden interest on the part of the platforms in reaching deals with news content providers is not born of charity or concern for the fate of news publishers. It is a direct response to mounting pressure on governments, and by governments, to deal with the issue of the market dominance of the platforms in online advertising, and the fact that part of their offering to attract viewers is use of content created and produced by news publishers.

It is open to interpretation whether or not it is consistent with copyright law for platforms like Google News to scrape content from news sites in order to display headlines and snippets (brief excerpts) of news stories. That is why the EU created a new neighbouring right for publishersthrough Article 15 of its Copyright Directive, providing news publishers (as opposed to the journalists who create specific stories) with a new right over content they publish, valid for a two year period from the date of publication. This tool was placed in the hands of the publishers supposedly to strengthen their hand in negotiations with the platforms.

This has been a hot topic for a few years now. Attempts to deal with platform free-riding on news content produced by others go back to 2014 when both Germany and Spain enacted a publishers’ right to provide publishers with leverage in negotiations with the major internet platforms. At that time, the main concern was Google’s dominance. Google won the first round, bringing German publishers to heel by threatening to downgrade their search results, and by closing down Google News in Spain. With the enactment of the publishers’ right at the EU level in 2019, the tide began to turn.

France was the first to move to enact the new provision into national law leading, not surprisingly, to a confrontation with Google. After protracted legal struggles and political lobbying, Google decided that negotiation was preferable to confrontation, and managed to reach agreement with a majority of (but not all) French publishers. They negotiated with some major publications as well as a consortium of publishers known as APIG (Alliance de la presse d’information generale) but some other major news providers, such as Agence France Presse, were excluded. Now a ruling by France’s Competition Bureau has put the APIG deal in doubt. According to press reports, antitrust investigators have accused Google of “failing to comply with the French competition authority’s orders on how to conduct negotiations with news publishers over copyright”. On July 13, the Authority fined Google 500 million Euros ($593 million) for failing to negotiate with the publishers “in good faith” as earlier instructed by the Authority. Google was ordered to present a reasonable offer to the publishers for use of content within two months or face a fine of up to 900,000 Euros a day. Now that’s talking tough. The ruling addresses issues that arise from the nature of the negotiations between the platforms and publishers, whether with individual news providers or with a group or groups of publishers. Because of their scale, the platforms can use “divide and conquer” tactics giving them the upper hand.

In Australia, the government dealt with this by introducing legislation that would have required both Facebook and Google to submit to binding “final offer” arbitration if they were not able to reach revenue sharing agreements for use of content with Australian media providers, giving news providers an additional lever. After unsuccessful attempts to overturn the legislation by threatening to abandon the Australian market (Google) or shutting down all Australian news feeds on its service (Facebook), campaigns which spectacularly backfired, both platforms agreed to negotiate with Australian media publishers, avoiding application of the Code. Since then some impressive deals have been struck, resulting in substantial ongoing payments to Australian media.

Google had already seen the writing on the wall. In 2020, it launched its Google News Showcase, an initiative billed at $1 billion (over 3 years) to support journalism by licensing content from news media outlets in a number of countries. (Canada, Germany, Brazil, Argentina, the UK and Australia were the countries initially named). At the time, very few major media companies signed on; Germany’s Der Spiegel and Stern were initially among the few large players to participate. No sooner was it announced, than in Australia the program was suspended as a means of pressuring the government to drop its legislation targetting the platforms. It was not implemented in Canada because no major media outlets agreed to take part. Google was more successful in Britain, however.  In February it was announced that the platform had reached agreement with 120 British publishers, including the Financial Times and Reuters.

The determination of the Australian government to stand up to the pressure tactics of Facebook and Google was favourably noted—in the USwhere publishers are supporting draft legislation that would allow news organizations to bargain collectively with platforms by providing a limited time exemption from anti-trust legislation–and in Canada, where Heritage Minister Steven Guilbeault, has committed to bring in legislation similar to that passed in Australia. Guilbeault, however, has not delivered, much to the chagrin of News Media Canada (NMC), the lobby group representing the news publishing industry (the self-described “voice of the print and digital media industry in Canada”). As I noted in a recent blog posting, “An Open Letter to Justin Trudeau: Canada’s News Publishers up the Pressure on Facebook and Google”, NMC is unhappy that the Trudeau government has not got around to introducing the promised legislation because they believe it would strengthen their position in negotiations with the platforms. (Separate legislation introduced in the Canadian Senate by an opposition Senator and modelled on the EU neighbouring rights provisions, is going nowhere. Senate bills rarely make it through the legislative process and bills sponsored by non-government Senators stand even less chance).

The “Open Letter”, which appeared on June 9, blanked out the front page of many daily papers in Canada, including the National Post, Toronto Starand many of the city dailies owned by the Postmedia Group. At the time I mentally noted that the Globe and Mail, and my local daily, the Times-Colonist (Victoria), did not publish the “Open Letter”. Now I know why. In addition to the Globe, Glacier Media, the owner of the Times-Colonist (and many other smaller community papers and specialty industry publications), along with Black Media, another publisher of many community papers, were among those that reached agreement with Google, despite being members of News Media Canada. That leaves Postmedia, the publisher of daily papers in most major cities in English Canada, the TorStar Corporation, publisher of the Toronto Star and Quebecor, the publishers of French language dailies in Montreal and Quebec City, out in the cold, at least for now.

This piecemeal approach is one of the biggest problems facing publishers, whether in Canada, France, the US or elsewhere (except in Australia, where the compulsory arbitration requirement backstops the process) because the deep pockets of the platforms give them a negotiating advantage. Initially, in most countries, Google and Facebook were able to make deals only with small digital outlets primarily. For these small-scale start-ups, funding from the platforms must have seemed like manna from heaven. The major publishers resisted but inevitably the common front began to crack as each outlet determined what was in its best interest.

In the US there have, to date, been no revenue sharing agreements for use of content between US news publishers and Google or Facebook. Many publishers would rather deal collectively with the platforms rather than being picked off one by one. This is one of the prime reasons for the (re)introduction of the Journalism Competition and Preservation Act (JCPA) in the US Congress. According to its bipartisan sponsors, “this bill will support the independence of local papers by giving news publishers the power to collectively negotiate with digital platforms like Google and Facebook”.

The US is not the only country (besides Australia) to recognize the negotiation imbalance. In Denmark, thirty media companies have decided to come together to bargain collectively with the platforms. This reflects a longstanding Scandinavian preference for cooperation among copyright and collective rights organizations, as I wrote about after my visit to Denmark a couple of years ago.

While the draft US legislation to provide news publishers with an anti-trust exemption has bipartisan support, it has been criticized by two well-known anti-copyright advocacy groups, Public Knowledge (PK) and the Authors Alliance. Their gripe is that the JCPAcould be interpreted by courts to implicitly expand the scope of copyright.”

Presumably they are referring to this language, which forms the core of the Bill;

A news content creator may not be held liable under the antitrust laws for engaging in negotiations with any other news content creator during the 4-year period beginning on the date of enactment of this Act to collectively withhold content from, or negotiate with, an online content distributor regarding the terms on which the news content of the news content creator may be distributed by the online content distributor…”

According to commentary published by both PK and the Alliance, their concern is that hyperlinks could be subjected to copyright protection, and that access to snippets of information that may be subject to fair use would likewise be legally constrained through court interpretations. This is not only a pretty far-fetched conclusion (there is absolutely no reference, implicit or otherwise, to hyperlinks in the legislation), but also attacks one of the fundamental principles of copyright, namely that a creator has the right to determine whether or not, and how, their content will be made available. If content is made openly available by the copyright holder, it may be subject to limited fair use access, but if a rights-holder decides to withhold or restrict access to content by putting it behind a paywall for example, that is their right. According to Public Knowledge (PK), the Bill could be interpreted to implicitly create “a new right that would allow news sites to withhold content until or unless they receive the compensation they seek”.  PK wants additions to the legislation to make it clear that copyright protection is not being expanded by the law to include linking, or fair use snippets of linked material. This is a red herring and totally unnecessary, raising a straw man to knock down where none exists. It almost looks as if PK is using this as an opportunity to try to sneak in new limitations to copyright protection that have no basis in the law.

PK has a variety of other objections to the draft legislation as well, despite claiming that it supports US journalism and access to trustworthy sources of news. Its objections are hard to reconcile with the objective of enabling the news media to negotiate fair compensation from the dominant internet platforms.

Having the ability to deal with giant digital companies like Google and Facebook to get fair compensation for use of news content is the nub of the issue for news publishers large and small in many countries, including the US. Robust government enforcement of competition law (or threats to amend competition law through new legislation) seems to be one way of ensuring a more balanced negotiation, and of bringing the platforms to the table. Allowing publishers to work together, to the extent that they are interested in doing so, is another. At the end of the day, the final outcome should be a deal that fairly compensates those who invest in gathering and creating the news, allowing them sufficient financial security to continue doing what they do best, while leveraging the ubiquitous reach of the internet to promote greater access to curated, responsible journalism.

Paragraph 5 has been updated to reflect the decision of France’s Competition Authority to fine Google 500 million Euros for failing to negotiate “in good faith” with French publishers.

This article was originally published in Hugh Stephens Blog.

Categories
Copyright

The USMCA/CUSMA is One Year Old: What Has Been its Impact on Copyright, Content and Canada-US Cultural Relations?

July 1, apart from marking the 154th Canada Day, was the first anniversary of the entry into force of the “new NAFTA”, now labelled the USMCA (the US-Mexico-Canada Agreement). Canadians, being a stubborn lot, have decided to call it the CUSMA, just because they can. Whatever you call it, reaching agreement with a Trump Administration determined to blow up the original agreement was no small task for Canada, or Mexico. Although Mexico is an equal partner, I am going to concentrate on the implications for Canada (and the US) in this blog with regard to what the Agreement does, and does not do, in the area of copyright, culture, and related fields such as digital services, and to take stock of what has happened in the past year.

Renegotiating NAFTA

Renegotiating NAFTA was no easy task. Trump campaigned on a commitment to renegotiate or tear up the Agreement while Canada’s objective was to preserve as much of it as possible. The essence of the dilemma was summed up by then Commerce Secretary Wilbur Ross who commented that the negotiation was difficult because the US position was all “demand” and no “give”. “We’re asking two countries to give up some privileges that they have enjoyed for 22 years. And we’re not in a position to offer anything in return…”. Nonetheless the three countries finally managed to reach agreement. The fact that much of the original NAFTA was preserved was seen as a victory by Canadian negotiators. The biggest changes were in auto production, with new requirements imposed to try to limit the amount of low-cost Mexican labour involved in the manufacture of vehicles. But not a lot changed. Right after the conclusion of the agreement, the US imposed aluminum and steel tariffs on its NORAD and NATO ally Canada (using national security as the pretext, no less), and to this day continues to apply punitive import tariffs on the import of Canadian softwood lumber (despite unprecedented demand for building materials in the US, shortage of supply and all time high prices for consumers), while Canada continues to find technical ways to frustrate US dairy farmers from gaining a greater share of Canada’s highly protected dairy market.

Renegotiating NAFTA wasn’t just a question of rollbacks. The US set out some negotiating objectives that touched on the area of copyright and digital trade and it achieved some of those objectives– but by no means all. In Canada, there was hope in some quarters that the renegotiation could be used to advance some domestic agendas or reforms. Canadian educational publishers were as unhappy with the new education fair dealing exception introduced into Canadian copyright law in 2012 as were US publishers, given the resulting refusal of post-secondary institutions to license content from the publishers’ copyright collective, Access Copyright. However, renegotiating copyright exceptions was not a priority for either country. If the educational exception is to be narrowed or removed, it will have to be done through domestic legislation. Currently the key litigation (Access Copyright v York University) over the issue of educational fair dealing and mandatory tariffs for use of published materials is before the Supreme Court of Canada, on appeal from the Federal Court.

Extending the Copyright Term in Canada

While the USMCA did not deal with copyright reform in Canada nor did it change Canada’s rather ineffectual “notice and notice” system for dealing with online infringers, it did deal with some copyright and content-related issues, both broad and narrowly targeted. On the broad front it dealt with the longstanding issue of the length (term) of copyright protection, extending it in Canada by an additional twenty years to bring the period of protection in Canada in line with that in the US, the EU and most of the developed world. When implemented (more on that below), this extension will not only benefit Canadian rights-holders in Canada but ironically, will bring them additional benefit in the EU because the EU extends the benefits of the longer period of protection to artists from non-EU countries only on a reciprocal basis. With respect to the US, extension in Canada provides greater equity with respect to US creators in Canada since the US offered the longer term of protection in the US market to Canadian rights-holders, even though Canada did not offer equivalent protection to Americans.

Implementation Still in Progress

The actual implementation of Canada’s term extension commitment is still pending as, under the terms of the USMCA/CUSMA, the Canadian government was accorded 30 months from the date of entry into force of the Agreement to deal with this issue. Thus, it must come into effect no later than December 31, 2022. Exactly how Canada will implement its obligation is still somewhat of an open question. The simplest, most straightforward and most sensible option is to simply extend the existing “life of the author plus 50 year” term by an additional twenty years. That is what all other countries that have extended the life of the copyright term beyond the Berne Convention minimum of “life plus 50” have done. But there are those in Canada who, having opposed the term extension in the first place, now want to make it as complicated and difficult to access as possible by instituting a “trip wire”, a requirement for registration in order to obtain benefit of the additional twenty years. No other country has done this, and it is arguably in violation of the Berne Convention (to which Canada is a signatory). Berne requires an author’s copyright to be awarded automatically upon creation of a qualified work, with no additional registration requirement. Berne also establishes a minimum period of protection but has no restrictions on adding extending the period of protection beyond the Convention minimum.

Earlier this year the Department of Innovation, Science and Economic Development (the arm of the federal government with statutory responsibility for the Copyright Act) issued a consultation paper on issues relating to term extension. As I wrote at the time (“Canada’s Copyright Term Extension Consultation: Why all the Tinkering Around the Edges?”), the focus was not so much on the registration issue as on other tangential questions mostly of interest to the library community, such as orphan and out of commerce works. This will not stop copyright minimalists from attacking term extension as being an economic drain on Canada through an outflow of royalties, a conclusion unsubstantiated by facts, nor those advocating for the additional registration requirement in order to frustrate as much as possible the implementation of the CUSMA commitment. The full list of respondents to the consultation paper is available here. It is widely supported by the creative community.

Then There was the Super Bowl

Term extension was perhaps the broadest copyright-related issue dealt with by USMCA/CUSMA. The most targeted and specific, however, was Annex 15-D of the Agreement, dealing with Super Bowl ads. Yes, you read that right. Super Bowl ads. Hardly the substance of an international trade agreement, but hey, if you can achieve your goals through the leverage of a trade agreement when you can’t get it by other means, go for it. The issue was pushed by the NFL and supported by Bell Media, which licenses the Super Bowl broadcast in Canada. It’s all a bit complicated and will be a mystery to US readers. Essentially Annex 15-D removes an exception that the Canadian broadcast regulator, the CRTC, had permitted whereby Bell Media could not require Canadian cable and satellite platforms to substitute Canadian ads (i.e. Bell’s ads) for the US ads when Canadians watched the game in Canada on the original NBC feed.

What is “Simsub” Anyway?

The situation arises because the major US networks are available on Canadian cable systems under a compulsory licence issued by the CRTC. In addition, the CRTC allows Canadian broadcasters who have acquired the rights to US programming also being shown on US television to require that the Canadian cable and satellite distribution systems substitute the ads carried by the Canadian station into the US feed shown in Canada, as long as the programming is being shown simultaneously in both Canada and the US. This is known as simultaneous substitution or “simsub”. In most case simsub is not a big deal for Canadian viewers because an ad is an ad and arguably local ads are more relevant. But when it comes to the Super Bowl where the ads are considered by many as an integral part of the programming, many Canadian viewers want to watch the game with the original ads.

More Business for Border Bars

In 2016 the CRTC issued a decision allowing this if Canadians chose to watch the game on the US feed. Bell appealed but wasn’t sure it would prevail. Given the length of the appeal, in both 2017 and 2018 the CRTC decision prevailed resulting in a reported $10 million dollar loss in ad revenues each year for Bell (and by extension threatening the value of the NFL’s contract with Bell), because Canadian advertisers could not be assured of reaching the full Canadian audience. Although in the end Bell’s appeal was upheld by the Supreme Court of Canada, by then both Bell and the NFL had lobbied the US government to make repeal of the simsubexception a key demand. Remarkably, they were successful and the USMCA now includes a requirement that Canada cannot remove simsubfor individual programs unless it ends the practice for all programming. As a result, if Canadians want to watch the Super Bowl with the US ads in 2022 they will have to hit the bars of Blaine WA, Buffalo NY or other border drinking establishments—assuming the border is open by then. At least the USMCA will improve cross-border services trade.

The Canadian Cultural Exception

If Super Bowl ads are an example of how “down in the weeds” trade negotiators can get, the Canadian cultural exception (Article 32.6) is one of the loftier goals. Canada insisted that it had to maintain the cultural exception, a provision that dated back to the original Canada-US FTA in 1988. Under this provision, Canada could take exceptional measures to override commitments in the Agreement to preserve and protect Canadian culture. Culture is defined in the USMCA/CUSMA by reference to a long list of content related industries (film, publishing, newspapers, music, broadcasting). The catch is that if Canada invokes this clause, the other parties to the Agreement are entitled to take retaliatory measures of equivalent commercial effect against any other sector. This is obviously designed to discourage Canadian policy makers from using discriminatory measures to support Canadian culture at the expense of US content producers.  For example, if Canada were to decree that cinemas had to charge an extra fee to consumers to watch US as opposed to Canadian films, in a (misguided) effort to promote Canadian film production, this would be a discriminatory measure against which retaliation would be allowed within the terms of the Agreement. However, if Canada put a tax on all cinema goers, and used the tax revenues to subsidize Canadian film production, that would not be inconsistent with the Agreement and would not justify retaliation.

Does CUSMA Stop Canada from Passing Legislation affecting Internet Platforms?

Recently the cultural exception has been highlighted as one means that Canada could use to defend (proposed) legislation that would require major internet platforms like Google and Facebook (which of course happen to be US companies) to pay news content providers for use of news content on the platforms, similar to the requirements introduced in Australia. Critics of the proposal have argued that such an action would be contrary to the USMCA, but for the cultural exception clause, which they argue would not be used because of the threat of US financial retaliation against non-cultural sectors. This is a red herring. Canada does not need to invoke Article 32.6 to defend actions to require internet platforms to reach content compensations deals with dominant internet platforms, nor, for that matter, to subject the platforms to oversight requirements relating to distribution of harmful content online. There are plenty of provisions of general application in the Agreement that can be used. One also has to consider to what extent the US government would be prepared to champion Google and Facebook, digital giants that are already under close scrutiny in the US for anti-competitive practices.

….Or Holding Platforms Responsible for Harmful Content?

In the digital chapter, the CUSMA includes a particularly controversial provision, Article 19.17 that provides internet platforms with limited immunity from civil liability for content posted by users. This article is based on Section 230 of late 1990s US legislation, the Consumer Decency Act. The misuse of this provision to shield internet platforms from any civil liability or to hold them accountable for harmful or illegal user content distributed (and monetized) by them has led to widespread demands for reform in the US. It almost did not make it into the USMCA given push-back from Democrats, and should never have been includedin a trade agreement. It’s not as bad as it could have been, however. The USMCA commitments left sufficient room for the continued application of existing Canadian law without any requirement to enact legislation to create new civil liability immunities for the internet platforms. As I pointed out in an earlier blog on this topic (“Did Canada Get Section 230 Shoved Down its Throat in the USMCA?”), the Parties to the Agreement have the freedom to implement Article 19.17 in various ways including through ongoing application of common law. Existing secondary liability doctrine and precedents will continue to apply in Canada.

The USMCA One Year Later

The fact that the first anniversary of the USMCA/CUSMA passed without much brouhaha is a good sign that things are generally working well. The COVID pandemic has of course challenged global trade patterns, including those in North America but considering that the Canada-US border has been closed for almost a year and a half now except for essential traffic—hopefully it will reopen very soon—two way trade and services have continued to flow with few new trade disruptions,  although volumes were down quite significantly (Canadian exports to the US declined by 15%; imports declined by 11%). Without the security of the established rules and practices enshrined in the USMCA/CUSMA, the situation could have been far worse.

The two countries are intertwined economically in many sectors, including copyright, cultural and content industries. The “new NAFTA” has helped to maintain a mutually beneficial relationship in these areas and laid the foundation for further work.

This article was originally published on Hugh Stephens Blog.

Categories
Copyright

Copyright Enforcement In A Digital Era


Mr. Thomas Dillon is Legal Counsellor in the Building Respect for Intellectual Property Division of the World Intellectual Property Organization (WIPO), Geneva.

In an engaging conversation with Mr. Ameet Datta, Partner, Saikrishna & Associates, Mr. Dillon highlighted WIPO’s role and various initiatives to support enforcement of copyright and protection and promotion of creative industries.

Mr. Dillon stated that WIPO, in conformance with its mission of enhancing protection of intellectual property through international co-operation, primarily functions as a forum that enables the international community to develop rules for the protection of intellectual property. He spoke about the role of the Building Respect for Intellectual Property Division (BRIP), which is broadly concerned with two activities: enforcement and awareness. The BRIP division also provides legislative advice on enforcement related aspects such as injunctions and damages to countries seeking to reform their copyright law.

On WIPO’s engagement with stakeholders on the promotion and enforcement of copyright, Mr. Dillon remarked that WIPO mainly deals with the copyright and intellectual property offices of Member States and other intergovernmental organizations.

Acknowledging the fact that there was a reasonable consensus on the usefulness of site blocking, he alluded to an opinion expressed by an economist who, in an address to the WIPO’s Advisory Committee on Enforcement, observed that as long as site blocking was done on a broad spectrum of a large number of leading pirate sites, not only would piracy be reduced, but legal sales would also be fostered.

On the subject of how site blocking remedies have worked around the world, Mr. Dillon stated that the development of site blocking remedies was closely linked to the legal traditions of the countries that had adopted them. Most of the major economies in Europe already have site blocking regimes. This is mainly due to the existence of a Directive of 2001 which effectively mandates site blocking as a remedy. The method of site blocking, however, is to be determined by each country. Individual countries remain free to follow their own approach.

 

 

Assessing the possibility of administrative frameworks for site blocking as opposed to purely judicial interventions, Mr. Dillon commented that this was a matter to be decided by Member States. The classic common law approach, as seen in countries like India and Australia, shows that site blocking completely comes under the ambit of the courts. On the other hand, a country like Italy has opted for an administrative approach with the country’s telecommunications regulator operating the site blocking regime, with the option of judicial review if it is applied for. There are also jurisdictions which have a mixed approach such in Russia, where the telecom regulator plays an active role in site blocking, but its decisions are validated by the Moscow city court. This approach has been emulated by Lithuania as well. It is not for WIPO to advocate any particular approach.

 

 

On the topic of the WIPO Alert Project, Mr. Dillon described WIPO Alert as a “database of databases”. It is  a secured platform operated by WIPO where Member States voluntarily submit lists of websites identified by them to be infringing. This list of infringing websites that forms the WIPO Alert database is then shared with the advertising industry. Potential advertisers can refer to the database and refrain from placing advertisements on pirate websites. The project drew inspiration from the Police Intellectual Property Crime Unit of the City of London Police, which maintains a secured list of pirate websites to be shared with the advertising industry.

The WIPO Alert database is thus basically a technical service offered to the advertising industry, which is supported by a group of Member States. While Italy and the Republic of Korea were founding members of the WIPO Alert project, it has also been joined by Brazil, Spain, Japan, Peru, Russia, Ecuador, Ukraine, Mexico and Lithuania. The number of users is also around the same mark. At present, there are around 6400 domains on the WIPO Alert system. WIPO is presently focussed on getting new users to the platform. Mr. Dillon highlighted that WIPO Alert is a free service, which could be useful for advertisers and technical intermediaries.

Mr. Dillon stated that WIPO does not dictate to member states about due diligence requirements regarding the process of getting websites onto the list of infringing websites, but in the interests of transparency, member states are asked to explain their approach to listing websites in a public document. This document detailing the approach, is then made available on the WIPO website, where it is publicly accessible. The WIPO Alert database itself is secured and not accessible by the public. It was further highlighted that WIPO does not propose any kind of mandatory arrangement. The WIPO Alert project is entirely voluntary.

As far as Indian participation in the WIPO Alert  project was concerned,  discussions have been held with the Indian Government and participation by India either at the national or State level would be very welcome.

On the question of new dimensions of copyright enforcement emerging due to the impact of the lockdown due to the pandemic, Mr. Dillon was of the opinion that there is likely to be more sophistication in the injunctions regime. For example, the Korean Copyright Agency already employs Artificial Intelligence (AI) while searching for infringing websites. There have also been technical innovations such as more sophisticated watermarking. He noted however, that while various tools for copyright enforcement have been available for the last 15 years, the real concern remains the formulation of an institutional framework for their use. There will also undoubtedly be new forms of piracy and dealing with those would be an area of concern. A big unresolved problem remains the sale of generic streaming devices and it is difficult to formulate an ex-post legal remedy to reduce the use of those devices for piracy. Therefore, it is uncertain what the future holds, and the outline of a solution is yet to be reached.

In the context of the intersection between copyright infringement and cybercrime, Mr. Dillon drew attention to the draft anti cybercrime treaty that is presently under discussion in the United Nations (UN). This is relevant because as the existing Budapest Convention on Cybercrime (which is a European treaty) already recognizes, copyright crime committed with a computer is cybercrime. While countries have tools to deal with copyright piracy at the national level, it is when copyright piracy crosses borders that enforcement becomes more difficult. WIPO therefore intends to closely monitor the developments regarding the treaty being drafted at the UN.

As an assessment on WIPO’s role, Mr. Dillon noted that the work done at WIPO is governed by the WIPO Development Agenda, agreed upon by its members in 2007, which requires WIPO to focus on the development aspect. WIPO’s role is to facilitate discussions among member states and provide them with information to enable them to chart their own course. WIPO endeavours to help member states balance enforcement of copyright with respect for rights such as the right of defense. WIPO’s role is that of a facilitator. As WIPO is a diplomatic organization, its 193 members have the ultimate decision as to its activities.