Copyright

Copyright
May 2016
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• Counterfeiting avoidance • Image rights • Fashion trademarking • Trademarking hashtags
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THE COPYRIGHT
LAWYER
May 2016
Editor
Jessica Lilley
jessica@ctclegalmedia.com
Publishing Director
Chris Dooley
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CTC Legal Media
Editor’s
welcome
Welcome to the very first issue of The Copyright Lawyer, the sister publication to
The Patent Lawyer and The Trademark Lawyer. We’ve travelled internationally
over the last few years, attending conferences and meeting intellectual property
experts around the world. From our extensive travel, we’ve been lucky enough to gain feedback
from professionals, and apply our knowledge of how the industry is working to then develop
our magazines based on what is important to our subscribers, and what they want to read
about; the most recent addition to this is copyright law. Due to this feedback, alongside the
success of our sister magazines, we recognized the opportunity to release a copyright focused
magazine to further the knowledge of our client base. The copyright law industry is always
developing, with laws being adapted and created worldwide to keep up with their fast-paced
clientele.
The Copyright Lawyer has started better than we could ever have expected, with a diverse
array of articles from professionals all around the world. Keeping the magazine initially close
to home, we’ve prepared a knowledge share from an English law firm discussing copyright
laws, litigation, and management. This will be a regular feature for the magazine to help
inform our readers of different copyright laws worldwide, to attempt to simplify the complex
topic of copyright law that involves an array of different laws worldwide. The collection of
articles in this inaugural issue continues, and we believe their international nature makes the
magazine an informative and enjoyable read! With articles from the UK, the USA, Spain,
China, Mexico, Romania and so many more, there is something for everyone and we hope you
will gain significant knowledge from these prestigious international copyright professionals.
Your feedback is always greatly appreciated, and is considered even more important during
the preliminary stages of a magazine. Please email jessica@ctclegalmedia.com with any comments
you wish to give; I look forward to hearing from you!
Jessica Lilley, Editor
Mission statement
The Copyright Lawyer educates and informs professionals working in the industry
by disseminating and expanding knowledge globally. It features articles written
by people at the top of their fields of expertise, which contain not just the facts
but analysis and opinion. Important judgments are examined in case studies
and topical issues are reviewed in longer feature articles. All of this and the top
news stories are brought to your desk via the printed magazine or online via
our sister publication www.trademarklawyermagazine.com
EDITOR’S WELCOME
CTC Legal Media
THE COPYRIGHT LAWYER
3

Contents
May 2016
6 Meet the editorial board
Meet all 10 editorial board members who help determine
the direction of this magazine.
7 News
All the top news stories from the copyright industry,
including litigation cases from Led Zeppelin, Star Trek
and US cheerleaders.
9 (I can’t get no) jurisdiction: Online
copyright infringement and EU law
Giulia Cellerini, Trevisan & Cuonzo Avvocati, LL.M,
here discusses the ever increasing use of the internet in
copyright infringement, and suggests ways to protect
copyright owners.
12 What patent and trademark owners
should know about copyrights and
3D printing
Luis Schmidt, Olivares, investigates the fairly new topic
of 3D printing, and discusses how copyright laws differ
from other forms of intellectual property on the matter.
14 Don’t quote or parody me…
Margaret Briffa, Briffa Intellectual Property, looks into
fair usage in copyright infringement cases, calling on
specific examples to ponder the question: are we
moving towards a US-style fair use defense.
16 Does Big Data mean big copying?
Míchel Olmedo, IP & IT lawyer at Iuristech Abogados
2.0, investigates a selection of central copyright
questions that should be addressed when dealing with
Big Data.
18 Plagiarism turned political:
A hot topic in Romania
Alina Tugearu, Zamfirescu Racoti & Partners,
investigates Romanian copyright law, looking
specifically into political plagiarism.
21 Copyright update: Revocation of
s.52 CDPA 1988
Kitty Rosser, Birketts LLP, provides a brief recap of the
effect of section 52 of the CDPA, and the proposed
updates that could make the law more effective
for copyright owners, consumers, and artistic
creators.
24 How to prove copyright ownership
in China
Wei Nan Jie, Beijing San He Tong Chuang IP Agency
Ltd, discusses copyright laws in China and the process
that is undertaken to prove copyright ownership in the
jurisdiction.
9
12
7
4
THE COPYRIGHT LAWYER
CTC Legal Media

14
16
CONTENTS
360b / Shutterstock.com
27 The emergence of the transformative use
test in fair use analysis
Lawrence A. Stanley investigates a selection of infringement
cases that have used the transformative use test in their fair
use analysis.
30 Shakespeare and copyright:
Five things you should know
In celebration of Shakespeare400, the apogee of a worldwide
celebration of Shakespeare’s life on the 400th anniversary of
his death, here Dave Kluft from Foley Hoag LLP describes five
things you should know about the intersection of the Bard,
and copyright law.
32 3D printing and its implications on
copyright law
Victor Johnson, Dykema, looks into key features of copyright
law, and how people who are thinking of using 3D printing
could be affected by the laws.
34 The scope of the private copy in a
cloud-computing environment
Geert Somers, attorney-at-law, Brussels, Belgium, investigates
the legal challenges that arise when using digital lockers,
specifically looking into five significant questions concerning
these challenges.
37 Find and share the knowledge:
United Kingdom
William Miles and Margaret Briffa – from the UK law firm
Briffa – share their knowledge of copyright law in the United
Kingdom, specifically looking into copyright litigation,
registration and protection, among other topics.
27
18
21
37
CTC Legal Media
THE COPYRIGHT LAWYER
5

MEET THE EDITORIAL BOARD
Giulia Cellerini - Trevisan &
Cuonzo Avvocati , Italy
Giulia is an Italian qualified attorney who graduated
from the University of Florence. In 2015, she
completed an LL.M. degree in Intellectual Property
Law at the Queen Mary University of London,
with a focus on copyright, trademarks and unfair
competition. Her key area of practice is focused
on a broad range of IP litigation, including patent,
trademark, and copyright.
Nancy Wei - Beijing Crown
and Rights Law Firm, Beijing
Ms. Wei has more than ten years of litigation and
traditional IP service experience. Accredited as a
Chinese Lawyer and TM attorney, plus the rich
academic background with Master Degree in Civil
Law, Ms. Wei presents multinational clients various
from different aspects. Ms. Wei also provides high
level of strategic advice on trademark portfolio
management.
Victor Johnson –
Dykema, USA
Victor C. Johnson is a member of the Intellectual
Property Practice Group in the Dallas, Texas office of
Dykema. Mr. Johnson’s practice focuses on IP litigation
including patent, trademark, brand protection and
trade secret misappropriation, as well as domain name
disputes and other forms of unfair competition. He is
also experienced in all aspects of complex commercial
litigation and has significant experience in federal and
state false claims act litigation.
Míchel Olmedo -
Iuristech Abogados, Spain
Míchel is a Spanish lawyer with wide experience in
national and international copyright and trademarks
in Spain and the EU, having extensive knowledge of
the media and ICT industries. His work focuses on
IT operations, mostly concerned with software,
videogames and digital media, incorporating his
knowledge on collective management societies, music
and literary publishers as well to ensure the most
comprehensive advice to his clients.
Maria Peyman -
Birketts, UK
Maria is a senior associate in Birketts’ intellectual
property and technology team. She specialises in
contentious intellectual property and has advised
clients on matters including allegations of
infringement of copyright, trademarks, and design
rights, as well as passing off and breach of confidence.
She also advises clients on exploitation and
protection of intellectual property.
Lawrence Stanley –
WebTM, USA
Lawrence Stanley has have over 30 years of experience
in business and intellectual property litigation, and
in drafting and negotiating contracts pertaining to
trademarks, copyrights and trade secrets in a variety of
industries, including music, exercise modalities,
neutraceuticals, software and high technology. In 2000,
together with Gordon Troy and Robert Fogelnest, he
successfully defended a multi-party trademark
infringement lawsuit over use of the word “Pilates”.
Geert Somers -
time.lex, Brussels
Geert Somers is partner at time.lex, a niche law firm
specialized in information and technology law. He
mainly focuses on intellectual property rights in a
digital context, privacy and data protection. He
obtained his law degree at the K.U.Leuven, followed
by an LL.M. degree in European law at the Europa-
Institut in Saarbrücken and in intellectual property
law at the KU Brussels. He is regular speaker at
ICT-related events.
Alina Tugearu - Zamfirescu
Racoti & Partners, Romania
Alina Tugearu specializes in civil and commercial
litigation and focuses her practice on international
arbitration, administrative/contentious disputes and
intellectual property disputes. She presently
represents corporate clients in various national
disputes and has solid experience in trying
arbitration cases before national and international
arbitral panels. Alina is a member of the Bucharest
Bar since 2005 and holds a Master of Laws (LL.M.).
Margaret Briffa -
Briffa, UK
Margaret Briffa is a leading intellectual property lawyer
and founding partner of Briffa. She advises on all
aspects of intellectual property protection and
enforcement, with emphasis on dispute resolution. On
the copyright side, Margaret advises many media clients
as to fair dealing exceptions and works closely with
Focal International, the Industry body representing
archives and audio visual libraries, on proposed and
new legislation changing the law of copying.
Luis Schmidt -
Olivares, Mexico
Luis Schmidt possesses nearly 30 years of experience
in all areas of IP, and has an unparalleled knowledge
of digital media and related copyright law in Mexico,
representing the world’s leading companies. It can be
argued he is the most important IP lawyer in Mexico
working in the field of media and entertainment as
he is directly influencing the future of Mexico’s
copyright law.
The Copyright Lawyer Magazine is advised by a distinguished panel of
international patent experts.
Members of our editorial board are detailed on this page.
The Copyright Lawyer Magazine wishes to take this opportunity to thank
the editorial board for their time and support.
6 THE COPYRIGHT LAWYER CTC Legal Media

Copyright of Star Trek’s ‘Klingon’
language is in question
Heading NEWS
A LAWSUIT between CBS and Paramount,
and the makers of a fan-made ‘Star Trek’
film has just become a lot more
complicated. The lawsuit that looked to be
in favor of CBS and Paramount, could now
be working in the favor of the fans. A brief
has now been filed on the defendant’s
behalf, suggesting the language cannot be
copyrighted and therefore the fan-made
film is not infringing on copyright. The
bulk of the argument is that you cannot
copyright a language and therefore there is
no case.
Among the examples used by the
authors of the brief are the fact that MSN’s
search engine, Bing, has a built-in Klingon
translator and that the language is also
often used on shows unrelated to “Star
Trek,” including “The Big Bang Theory”
and “Frasier.”
The brief states “Copyright law protects
the means of expressing ideas or concepts,
but it does not give the copyright holder
the right to exclude others from making
use of the ideas or concepts themselves.”
The brief continues by saying “neither is
one permitted to register copyright in a
word.” To its point, the brief itself is littered
throughout with actual Klingon phrases
where appropriate
Paramount and CBS are suing producer
Alec Peters of Axanar Productions for
copyright infringement, with a suit filed in
December in California district court. The
suit concerns “Axanar” and the prequel
film “Prelude to Axanar,” collectively
referred to as “the ‘Axanar’ Works.”
“Axanar” raised $1.13 million in
crowdfunding, making it possibly the
biggest-budget fan film ever made. CBS
said they never “authorized, sanctioned or
licensed this project in any way, and this
has been communicated to those involved.”
However, Peters told TheWrap that he and
his team met with CBS prior to
production, and the network didn’t offer
any specific guidelines concerning what his
crew could and could not do, simply that
he couldn’t make money off the project.
“CBS has a long history of accepting fan
films,” Peters said back in August. “I think
‘Axanar’ has become so popular that CBS
realizes that we’re just making their brand
that much better.”
Led Zeppelin could settle
copyright lawsuit for just $1
catwalker / Shutterstock.com
ACCORDING TO THE PULSE
OF RADIO, LED ZEPPELIN
could stop their entire
copyright infringement lawsuit
over “Stairway to Heaven”
(1971) for just one single
dollar! Of course, there’s a
catch though. As it stands now,
ZEPPELIN will have to defend
themselves in a U.S. Federal
court jury trial after being sued
by Michael Skidmore, the
trustee of the Randy Craig
Wolfe Trust, on behalf of the
late SPIRIT guitarist who wrote “Taurus” and performed under the
name Randy California.
Bloomberg.com posted that for a one-dollar payment, the song’s
writers – Jimmy Page and Robert Plant – could bypass a high
profile and possibly very damaging lawsuit, reporting: “Robert
Plant and Jimmy Page would have to give dead rocker Randy
California a writing credit on… ‘Stairway To Heaven’. And that’s
probably worth a lot more than a buck. Such an agreement by Page
and Plant, the band’s guitarist and singer, respectively, would head
off a much anticipated copyright infringement trial scheduled for
May 10 in Los Angeles federal court...”
The performance and publishing worth of LED ZEPPELIN’s
“Stairway to Heaven” is estimated to be over $560 million.
The Pulse of Radio posted some of the restrictions for the
upcoming lawsuit that may act in Plant and Page’s favor:
1) The only version of “Taurus” that will be allowed to be played
during the trial will be those that were filed with the copyright
office in 1967. Other versions that the plaintiff’s lawyers wanted
to present that, presumably, showed the similarities between
guitars passages even better, are now off limits.
2) The expert’s written opinions that were to be submitted at trial
that were based on the disallowed recordings have been rejected.
The plaintiff’s lawyers have five days to submit new reports
based only on the allowed recordings.
3) All testimony on LED ZEPPELIN’s history of plagiarism is
barred. The only evidence that will be allowed will be two quotes
made by Jimmy Page, himself, in magazine articles on how he
wrote music.
4) There will be no testimony on the drinking or drug habits of the
members of LED ZEPPELIN.
5) There will be no testimony on the wealth of the members of the
group.
CTC Legal Media
THE COPYRIGHT LAWYER
7

NEWS
A tribute to Prince and his
contribution to copyright law!
THE POP MUSIC WORLD
suffered a huge loss with
the sudden death of Prince.
But in the legal arena,
Prince was known as
perhaps the recording
industry’s most tenacious
defender of copyright
protections. The artist and
music companies
representing him pushed
the boundaries of copyright law with disputes that set legal
precedents and polarized fans.
It was just last year when a federal appeals court in California
ruled in the famous “dancing baby” case that centered on a
29-second home video of a baby dancing to the Prince song
“Let’s Go Crazy.” The court ruled against Universal Music Corp.,
which enforced Prince’s copyrights, concluding that the company
failed to consider whether the content in the video qualifies as fair
use before trying to scrub the Internet of it.
Fin24 innocent of
copyright infringement
in 6 out of 7 articles
THE HIGH COURT in Johannesburg found that Fin24 infringed
copyright in only ONE of the seven articles that Moneyweb had
originally claimed.
It has also now been found that ‘Moneyweb’ were unable to
prove that four of the articles in question were original works;
the court also decided that two of the articles in question did
not qualify for protection under copyright law. The only single
article published by Fin24 that was successfully trialed and
found guiltily of infringement was entitled “Amplats CEO cites
JSE rules”.
After the hearing, the Court concluded that Moneyweb was
liable to pay 70% of Fin24 court and attorney costs, including the
costs of two counsel, due to such an extensive amount of false
claims.
Judge Daniel Berger stated that the amount of damages to be
paid by Fin24 for the one infringing article would stand for
determination in a damages inquiry.
Moneyweb took Naspers’s Media24 to court last year over seven
of its news reports that were aggregated by Media24’s business
news website Fin24.
Moneyweb claimed in its affidavit last year that Fin24 infringed
its copyright and this constituted unlawful competition,
suggesting they were committing “plagiarism on an industrial
scale”.
Fin24 argued that news reports taken primarily from press
releases, or what was said at press conferences, did not enjoy
copyright protection.
Michele Paccione / Shutterstock.com
“Prince believes it is wrong for YouTube, or any user-generated
site, to appropriate his music without his consent,” Universal said,
defending the takedown notice.
Prince was also one of the first major artists to hit Twitter with
takedown notices demanding the removal of Vine video clips,
which were no more than six seconds long. That earned him a
“Raspberry Beret Lifetime Agreement Award” from the Electronic
Frontier Foundation “for extraordinary abuses of the takedown
process in the name of silencing speech.”
More recently in 2014, Prince sued 22 anonymous online fans
for $1 million each for posting links to downloads of bootleg
concert videos. His lawyers voluntarily dropped the suit after the
links were removed.
“We recognize the fans craving for as much material as possible,
but we’d prefer they get it from us directly than from third parties
who are scalpers rather than real fans of our work,” Prince’s lawyer
told TMZ.
He may have filed a few cases which were slightly too loose to be
granted, but Prince was a star of pop and of the copyright law
world!
Can cheerleader costumes
be copyrighted? Supreme
Court will decide
THE U.S. SUPREME COURT has agreed to take on a case deciding
whether the stripes, zigzags, chevrons and colors on uniforms worn
by cheerleaders across the country can be copyrighted under
federal law.
The court will review an August 2015 ruling by the 6th U.S.
Circuit Court of Appeals in Cincinnati that revived a lawsuit by
Varsity Brands Inc, one of the largest U.S. makers of cheerleader
uniforms, accusing rival Star Athletica LLC of infringing on five of
its designs.
The appeals court entered a judgment in Varsity’s favor as to
whether its designs were “copyrightable pictorial, graphic or
sculptural works.”
It also revived several state law claims, including whether Star
violated Tennessee’s unfair competition law. That decision reversed
a March 2014 ruling in favor of Star by U.S. District Judge Robert
Cleland in Memphis, Tennessee.
Varsity, based in Memphis, holds copyrights for various
cheerleader uniform designs. It sued for copyright infringement
when Star sought to enter the market in 2010.
Under copyright law, a design feature is only subject to copyright
if it is substantially separate from the product to which it is
attached, whether it be clothing or other items such as furniture.
Star says the chevrons and other design embellishments are
essential elements of cheerleader uniforms and therefore cannot be
copyrighted.
The court is likely to hear arguments and decide the case in its
next term, which begins in October and ends in June 2017.
8 THE COPYRIGHT LAWYER CTC Legal Media

Giulia Cellerini
(I can’t get no) jurisdiction:
Online copyright
infringement and EU law
EU LAWS
Giulia Cellerini, Trevisan & Cuonzo Avvocati, LL.M, here
discusses the ever increasing use of the internet in copyright
infringement, and suggests ways to protect copyright owners.
With just a finger touch or a mouse click and
the internet can take you anywhere in the
world, transferring ideas and works instantly
in almost any remote corner of the planet with or without
the consent of copyright owners. Sharing, copying,
uploading and downloading of pictures, writings and
videos give rise to a swirling data stream where copyright
infringements surf through states and borders without
control.
In this context, single acts of infringement produce
broad and uncontrollable consequences where the damage
is scattered all over the world via the web: the broader the
spread of the work, the larger the damage suffered and the
harder the infringement to manage.
In a borderless world, where an infringement has an
origin but it is hard to find its destination, which court
shall rule upon the damages it caused? In other words,
which jurisdiction shall be competent?
The EU legal framework:
The “place where the harmful event
occurred or may occur”
As regards the European Union, the EU Regulation
1215/2012, so-called Bruxelles I bis, which replaced the
previous EU Regulation 44/2001 (Bruxelles I), establishes
two rules on jurisdiction.
The primary rule is the “defendant’s domicile” (article 4).
Résumé
Giulia Cellerini, Associate, Trevisan & Cuonzo Avvocati (Milan, Italy)
Giulia is an Italian qualified attorney who graduated from the University
of Florence. In 2015, she completed an LL.M. degree in Intellectual Property
Law at the Queen Mary University of London, with a focus on copyright,
trademarks and unfair competition.
Right after her LL.M., Giulia joined Trevisan & Cuonzo Avvocati, in
Milan. Her key area of practice is focused on a broad range of IP litigation,
including patent, trademark, and copyright; she is also involved in the customsmonitoring
program and assists clients in commercial transactions involving
IP rights.
Secondly, article 7 sets forth a series of linking factors, of
“special jurisdictions”, related to specific fields. Copyright
infringement falls within the umbrella of “torts, delict and
quasi-delict”, for which para. 2 assigns the competence to
the court for the “place where the harmful event occurred or
may occur” 1 .
But which is the “place where the event occurred” when
a copyright protected image is posted on a website? Where
can the “harmful event” be found, for instance, when a
song is illegally downloaded by billions of users all over
the planet? What role shall the potential damages the
victim could suffer (“may occur”) play?
Should we look at the place of the uploading, or at the
place (or, more realistically, the places) of the downloading?
Is the place of the server somehow relevant? How should
the user, or the users, be taken into consideration? Is a
single individual sitting at his desk and illegally downloading
videos sufficient to establish the jurisdiction, or is it
necessary to look at what users the website is targeted to?
Should the structure and the appearance of the website
be taken into account?
The ECJ tries to shed some light
During the last few years, the European Court of Justice
(ECJ), in the attempt of giving more precise boundaries
to the linking factor of the “place where the harmful event
occurred or may occur”, developed a series of interpretative
solutions. The lines of case-law can be summarised as
follows:
1. Intention to target criterion
Also known as “focalisation theory” (Pammer, Donner
and Football Dataco). The ECJ looked at the features and
the structure of the website in order to establish which
country it is targeted to: the targeted country shall be the
1
Art. 7, para. 2, corresponds to previous art. 5, para. 3, of
Bruxelles I, so that reference can be made indistinctly to both
of them. In this article, for the sake of simplicity, reference will
be made to the former, even regarding decisions issued when
old Bruxelles I was into force.
CTC Legal Media
THE COPYRIGHT LAWYER
9

EU LAWS
venue of the judicial proceedings. As stated in Pammer, the court
should take into account, for instance: the international nature of the
activity at issue (e.g. tourist activities), the mention of telephone numbers
with the international code, the use of a top-level domain name other
than that of the Member State in which the trader is established,
the description of itineraries from one or more other Member States
to the place where the service is provided; and the mention of an
international clientele composed of customers domiciled in various
Member States.
This criterion presents a significant advantage: compared to the
criteria that will be illustrated below, it reduces the number of possible
jurisdictions involved, and then the risk of forum shopping.
However, it has two main drawbacks.
1) the “multi-targeting”. i.e. the possibility that the website targets
more than one Member State, so that multiple competent jurisdictions
are established.
2) Subjective application. The ECJ has offered a non-exhaustive list
of elements, without pointing out how many of them shall be taken
into account and which of them shall prevail in case of conflict.
This implies quite a long and thorough analysis of the website
(or websites).
2. The accessibility criterion
According to this construction, it does not matter whom the website
is focusing on, but to whom the website is available: if the website is
accessible from one country, then its courts shall have jurisdiction.
Accessibility gets closer to the claimant: if it is assumed that the
alleged copyright infringer can be sued from whichever Member
State where the website can be visited, the claimant would have a
higher chance to attract the litigation to his place of residence.
However, it risks coinciding with the forum actoris, which the
Regulation is hostile to. Moreover, a strict interpretation of the
accessibility criterion gives way to the concrete possibility that more
than one proceeding is instigated contemporaneously in different
Member States, i.e. it increases the risk of forum shopping.
3. The causal event criterion
Under this construction, suggested by the Advocate General in Pez
Hejduk, the court of the State where the event which gives rise to the
alleged damage took place shall have jurisdiction.
Although this criterion diminishes the number of courts involved
(and thus the risk of forum shopping) the ECJ rejected it. Since the
event which gives rise to a possible copyright infringement lies in the
actions of the owner of the website, in many cases the act will be localized
at the place where the sued company has its seat. In other terms, the
causal event criterion risks doubling the general defendant’s domicile
criterion, rendering the purpose of the secondary rule under article
7(2) of no value.
As of today, these criteria have not been applied uniformly by the
ECJ. Hence, in the following paragraphs an attempt to suggest a
different approach will be made.
“
The fact that copyright
usually arises regardless of its
registration substantially prevents
from linking it to a jurisdiction in
particular, in the same way as for
patents and trademarks.
”
10 THE COPYRIGHT LAWYER CTC Legal Media

Beyond the veil of IPRs:
Where to find a solution?
Copyright infringement falls within the broad category of “torts,
delicts and quasi-delicts”, which encompasses several very different
forms of infringement, often of a different nature and structure. If
the nature of copyright and the peculiarities of its infringement –
especially via the internet – must be taken into consideration, it
might also be useful to take some inspiration from other kinds of
torts.
From a private international law point of view, copyright shall be
kept separate from the other IPRs. Indeed, the fact that copyright
usually arises regardless of its registration substantially prevents from
linking it to a jurisdiction in particular, in the same way as for patents
and trademarks.
At the same time, copyright law is still strictly connected to the
principle of territoriality. According to this principle, the Courts of
a Member State can deal with infringements of copyright only if, and
to the extent that, the territory in which they have jurisdiction is
concerned.
However, while territoriality seems to be a milestone of copyright
law, the internet knows – almost – no national borders. Territoriality
burdens, where existing, are often circumvented online (e.g. in case
of geo-blocking), so that the damages produced hardly fit with the
national borders.
Moreover, copyright involves both economic and moral aspects.
It seems difficult to overlook the harm caused to the most personal
aspects of the copyright, focusing on the economic harm produced
by the act of infringement. Copyright infringement also involves nonpecuniary,
non-economic interests that the criteria developed by the
ECJ can hardly take into account.
This said, would it be possible to rely on some concepts elaborated
within other areas of tort and non-contractual matters?
A path besides copyright, the possible
analogy with personality rights
Going beyond copyright, a solution may be sought in the field of
personality rights.
In this regard, two cases are worth mentioning. In Shevill – a case
regarding the damages caused by a defamatory newspaper article
published in several Member States – the ECJ stated that in order to
concentrate all proceedings before a single court, the court of the
place where the harmful event giving rise to the liability occurred or
“
Copyright infringement
also involves non-pecuniary, noneconomic
interests that the criteria
developed by the ECJ can hardly
take into account.
”
the court of the place where the defendant is domiciled shall be
competent (“mosaic principle”).
Secondly, and more importantly, in eDate Advertising, the Court
dealt with information and photographs published on the internet.
Given the impact that an online content can have on an individual’s
personality, the Court deemed the damage to be best assessed by the
court of the place where the alleged victim has his centre of interest.
The “centre of interest of the alleged victim”, the “centre of gravity
of the conflict”, is therefore the keystone in the field of personality
rights.
It has been argued that such criteria may double the forum actoris,
since the place where a person has the centre of his interests corresponds
in general to his habitual residence. Nevertheless, as stated by the ECJ,
the two may not overlap, every time a different factor (such as the
pursuit of a professional activity) establishes a close link with a State,
different from the claimant’s domicile. In other words, the two fora
may coincide, but not necessarily.
Such construction has significant advantages. It re-establishes the
link between the harm and the harmed person. It reduces the risk of
forum shopping, because the “centre of interest” generally leads to the
identification of a single jurisdiction. And, lastly, it “gets closer to the
claimant”, the injured person.
Hence, can the dualism between IPRs (that are subject to the
principle of territoriality) and personality rights be overcome? Can
the criteria of the “centre of interest” be applied also to cyber-delicts?
In my view, it is worth trying to focus more on the harm itself,
rather than on the way the event is produced. Trying to distinguish
local from overall damage in case of on-line copyright infringement
is misleading or, at least, difficult to manage at the judicial level.
Focusing on the injured person, as the centre where the damage
occurred, could reduce the number of possible fora.
In addition, similarly to the person whose right of image has been
breached, the copyright holder is – especially in the “wide world” of
the web – the weakest party of the relationship.
Since a single court shall only assess the damage produced in its
jurisdiction, it is necessary to get as close as possible to the right holder,
trying to consider a higher amount of damage. Quantify the overall
damages caused to a person, rather than in a determined territory,
might sometimes be easier.
The “centre of interest of the injured person”, as the place of business
or where the economic exploitation of the work takes place, moves
the attention to the victims and to the harm suffered by them, with
a quicker and simpler analysis. This way, a single competent jurisdiction
is more likely to be established.
In the absence of a clear guidance from the ECJ, it seems difficult
at this stage to follow such solution in the field of online copyright
infringement. However, it is also true that the ECJ has had limited
opportunities to deal with copyright infringement on the internet
yet, so it is hoped that more light is shed on these questions through
case-law going forward.
EU LAWS
CTC Legal Media
THE COPYRIGHT LAWYER
11

3D PRINTING
Luis Schmidt
What patent and
trademark owners should
know about copyrights
and 3D printing
Luis Schmidt, Olivares, investigates the fairly new topic of
3D Printing, and discusses how copyright laws differ from
other forms of intellectual property on the matter.
The advent of 3D printing presents new challenges
for intellectual property owners – particularly
in the realms of trademarks and patents. While
copyright law has evolved through the years to protect
copyrighted works from mass infringement on the Internet,
there has been less need for laws protecting patented
inventions and trademarked products online, as it has
been largely impossible to easily copy and disseminate
physical products. However, 3D printing is rapidly changing
this landscape.
How it works
The process of printing a 3D model is twofold: First,
designs are made or copied from sketches, plans or
drawings. Next, those plans or designs are fed to a 3D
printer via a computer program in order to produce the
final work or product. Designers can collaborate and
share ideas for designs on the Internet, while users can
customize the pre-designed objects obtained from the
Internet for 3D printing. Often, the printed products
originate from copyrighted works or products protected
by utility patents or industrial design registrations.
Computers and computer networks are key to 3D printing
– computer networks can disseminate these designs beyond
space and time limits.
Résumé
Luis Schmidt, Olivares
Luis possesses nearly 30 years of intellectual property experience in all
areas of IP, and has an unparalleled knowledge of digital media and related
copyright law in Mexico, representing the world’s leading companies.
Luis’ work in drafting a bill related to digital rights is changing the entire
ecosystem of digital rights management in Mexico, for both rights holders
and day to day internet users.
It can be argued he is the most important IP lawyer in Mexico working
in the field of media and entertainment as he is directly influencing the
future of Mexico’s copyright law.
The copyright comparison
Copyright law has faced an uphill battle in the digital
realm against users of works. Written, visual and audio
works traditionally have been the easiest to copy and
disseminate via computers, but with 3D printing, the
conflict has been extended to useful items protected by
patents or design law. Conflicts between patents and the
digital realm have not been common until now. From the
times of the printing press until today, copyright law has
dealt with challenging technologies, which has helped
to strengthen a legal regime around copyrighted works.
Technologies such as photocopiers, recording machines,
and computers have allowed ordinary people power to
copy or disseminate works. 3D printing expands that
power to new kinds of works by eliminating the burden
of shipping products from far away.
Copyright infringement is characterized by:
• Designing around, drawing around, scanning (copying
in general) works without authorization;
• Disseminating the copied works over the Internet (by
making available, transmitting, streaming or downloading
them);
• Making (by copying) from a sketch, plan or drawing,
any sculpture, applied art or building.
All of the above are copyright infringement, regardless
of whether:
• The sculpture is made by adding or subtracting materials.
• The applied art work is made under an industrial process,
or
• The architecture building is made under construction
techniques.
The medium is quite irrelevant for copyright law.
Infringement can be found whether the copying or
disseminating happens by employing traditional or
newer media, including 3D printing. Thus, patent and
trademark owners whose markets may be threatened
by 3D printing should seriously consider protecting
copyright-eligible elements of their products by securing
copyright protection.
12 THE COPYRIGHT LAWYER CTC Legal Media

3D PRINTING
Applying copyright principles to 3D printing
Over the past 20 years a fairly robust copyright enforcement system
has evolved to deal with websites that host works uploaded by users
(this applies to sites ranging from large scale to personal blogs). This
system can easily be employed to address 3D printing – the law does
not need to be rewritten.
The following are principles under the U.S. Digital Millennium
Copyright Act (DMCA), the European Directive or related systems:
• Hosting sites are not police or judges, and cannot be forced to find
infringement;
• Hosting sites enjoy immunity if acting as an impartial party between
uploaded content and rights holders;
• Anyone can upload a file to a site. Under notice and take down
rules: a) the copyright holder can object to the upload by virtue of
a notice; b) the hosting site removes the file; c) the uploader can
oppose the removal; d) the file then returns to the holders’ site;
and e) the copyright holder can initiate a court action claiming
infringement.
Although patents and trademarks are also IP rights, they stand on
different principles than copyright and their scope of protection is
also very different. Copyright includes the right of reproduction,
distribution, communication to the public/making available as well
as the right to transform into derivative works. Moreover, patent and
industrial design rights include the right to make, use, offer to sell,
and sell. A trademark right is essentially the right to use a mark as a
trade symbol, which is distinct from patents or copyrights.
Unlike copyrights, patent rights do not extend to the making (by
copying) of plans or drawings of products. Patent rights do also not
extend to dissemination of any copied plan or drawing, and even less
so to the products obtained via those plans and drawings. It has, until
now, been simply unthinkable that such products could be easily
disengaged from their physical manifestations and widely copied and
disseminated, as is possible with authored works.
CTC Legal Media
The road ahead
The above can be viewed as a serious threat to patented and trademarked
products on the Internet. In addition to reproduction rights, digital
IP needs rights of access, and in general, rights of communication to
the public. Without such rights, nothing could be done to protect
copyrighted works in digital networks. Before 3D printing, inventors
and companies did not require rights of access or communication to
the public, since products could not be easily copied as works. The
situation is changing rapidly though, and times will soon become
more challenging for patented and trademarked products.
The question has arisen whether patent and trademark laws need
to evolve so that: a) online dissemination of plans or drawings of
patented or trademarked products can be stopped by IP owners; and
b) a notice and take down regime similar to the DMCA can be adopted.
A third question is whether industrial designs should be afforded
copyright-like protection, instead of patent-like protection, as they
are used for works of applied arts. This could offer one solution to the
problem.
The future will surely provide answers to the questions technology
has raised today. In the meantime, patent and trademark owners
should, to the extent possible, consider taking advantage of the tools
available to them under the current copyright regime in order to help
protect against the risks posed by 3D printing.
“
A trademark right is essentially
the right to use a mark as a trade
symbol, which is distinct from patents
or copyrights.
” THE COPYRIGHT LAWYER 13

INFRINGEMENT
Margaret Briffa
Don’t quote or
parody me...
Margaret Briffa, Briffa Intellectual Property, looks into fair usage
in copyright infringement cases, calling on specific examples
to ponder the question: are we moving towards a US-style fair
use defense?
What is, and what is not, fair dealing with
copyright work has always been a thorny
issue that has created tension between
copyright owners and users. In the UK, what is fair dealing
is defined by specific exceptions set out in legislation
rather than by a general concept of ‘fair use’ which prevails
in the US. Until recently in the UK those exceptions were
limited broadly to use for the purpose of criticism and review,
reporting current events and for private study and research.
In terms of the detail, whether something is fair
dealing is an objective test established by the UK Courts
and involves deciding how a fair minded and honest
person would have dealt with the work. Relevant factors
include the amount of the copyright work that has been
used and whether that use affects the market for the
original, e.g. by competing with it.
By contrast the general principle of fair use in the US
is far more flexible. Any use may be fair as long as it is
deemed to be so judged against four factors which are:
(1) the purpose and character of the use,
(2) the nature of the copyrighted work,
(3) the amount and substantiality of the portion taken,
and
(4) the effect of the use upon the potential market.
In October 2014 the fair dealing exception for the
purpose of criticism and review was expanded to include,
among other things, use of a copyright work for the
purpose of ‘parody’ and ‘quotation’.
Résumé
Margaret Briffa
Margaret is a leading intellectual property lawyer and founding partner of
Briffa. She advises on all aspects of intellectual property protection and
enforcement, with particular emphasis on dispute resolution. Margaret
has acted for claimants in many copyright, design, patent and trademark
cases, a number of which are leading and reported cases in the field. On the
copyright side, Margaret advises many media clients as to fair dealing
exceptions and works closely with Focal International, the industry body
representing archives and audio visual libraries, on proposed and new
legislation changing the law of copying.
The new parody exception does not attempt to further
define caricature, parody or pastiche; the European Court
of Justice has provided some helpful guidance as to the
meaning of “parody”. In Deckmyn v Vandersteen (C-201/13)
where it was ruled that the only essential characteristics
of a parody are to evoke an existing work while being
noticeably different from it, and to constitute an expression
of humor or mockery.
Beyond that, as with all exceptions to copyright
infringement, the purpose is to strike a fair balance between
the interests of rights holders and those who want to use
copyright material. Notably, however, the court found that
if a parody conveys a discriminatory message, the holders
of rights in the parodied work may have a legitimate
interest in ensuring that their work is not associated with
that message. It will be for the national courts to perform
the necessary balancing act between copyright infringement
and freedom of expression in each case. From this, it can
be seen that the treatment of parodies in the UK is now
more similar to their treatment under US law, where
parodies may be permitted under the general ‘fair use’
doctrine and has been welcomed by many using video
parody, via social media or otherwise. It should not be
forgotten that the exception has no impact on either the
laws of defamation or the author’s moral right to object
to derogatory treatment of their work.
As with the new parody exception, the new quotation
exception does not define quotation but simply allows it,
subject to certain conditions. These are as follows: there
is sufficient acknowledgement of the copyright work, the
‘quotation’ uses no more than is required, and the original
work has been made available to the public.
The UK Intellectual Property Office’s guidance suggests
that short quotations of a copyright work in an academic
paper or history book are permitted under this exception,
but long extracts are not. Interestingly, however, it also
suggests that in exceptional circumstances, quoting a
photograph will be allowed, provided the use does not
conflict with the copyright owner’s normal exploitation
of it.
For a guide as to what a court may make of this new
exception the recent case of Sony/ATV v WPMC Ltd and
14 THE COPYRIGHT LAWYER CTC Legal Media

INFRINGEMENT
360b / Shutterstock.com
Lambic Media Ltd (2015) sheds some light. The case concerned a
dispute regarding the soundtrack to a documentary entitled The Beatles:
The Lost Concert. Sony sued in the UK where the documentary was
made, and in the US where its intended market was. The focus of the
case was whether WPMC could rely on discussions between the parties
that were ‘subject to contract’ to say that there was a collateral contract
to grant a synchronization license to WPMC to exploit the work.
WPMC conceded that if there was no contract then they infringed
copyright subject to it being fair.
The UK Court found that there was no contract in place, and went
on to look at the fair use - and did so by reference to the US doctrine
of fair dealing set out above. In addition, the court considered works
of a leading copyright academic who argues that in order to be fair
dealing the use must be ‘transformative’ of the original work.
The Court rejected Sony’s argument that to succeed in a fair use
defense, WPMC must show that no more has been taken of the
copyright work than is necessary for the transformative purpose.
According to the Court, “what the defendant must show is that the
amount taken is reasonable, and not excessive.”
The court accepted WPMC’s contention that “it can be fair use to
copy the whole of the copyright work where this is justified by the
transformative purpose particularly, but not exclusively, if the copy
is not a high quality one (e.g. where an image is reduced in size).”
In considering whether the use made of the copyright works could
amount to fair use, the Court held that the use was commercial and
partly transformative. With respect to the nature of the works, the
copyright works are fully expressive works falling within the core of
copyright protection.
With respect to the amount and substantiality of the work that has
been used, the documentary reproduced the entirety of each of the
copyright works. According to the Court, it found the following to be
true:
“The amount copied is clearly excessive. If the documentary had
merely used a number of excerpts from the concert video, and hence of
the copyright works, then that might well have been reasonable having
regard to the transformative purpose. As it is, however, the Documentary
CTC Legal Media
goes well beyond that. What WPMC are presenting amounts to a package
of the concert video with additional material. Furthermore, there is
substantial additional use of the copyright works as part of the soundtrack.
Not only does the usage exceed what is necessary to illustrate the nature
and effect of the Beatles' performances of the copyright works, it exceeds
what is reasonable for that purpose.”
Finally, with respect to the effect on the market or the impact on
the value of the work, the defendants failed to establish that the
documentary would not damage the market for, or potential value of,
the copyright works if permitted as fair use. On the contrary, the Court
found it “likely that this would damage the market for, or potential
value of, the copyright works.”
Therefore, under the circumstances outlined, the court concluded
that inclusion of the copyright works in the documentary did not
amount to fair use. Bearing in mind that what is a ‘quotation is not
defined’ and could have a very broad meaning, what is of interest
here therefore is the Court’s analysis along the lines of the US doctrine
of fair use. Through this decision the Court is suggesting that the
new quotation exception has brought our approach closer to the
doctrine of fair use in the US.
In light of this case, those using works without securing licenses
may do well to consider the US doctrine of fair use and whether the
use they propose would safely fall under it.
“
The general principle of
fair use in the US is far more
flexible. Any use may be fair as
long as it is deemed to be so
judged against four factors.
”
THE COPYRIGHT LAWYER 15

BIG DATA
Does Big Data
mean big copying?
Míchel Olmedo
Míchel Olmedo, IP & IT lawyer at Iuristech Abogados 2.0,
investigates a selection of central copyright questions that
should be addressed when dealing with Big Data.
Ever since Big Data became a part of the
technological vernacular in the latest years of
the twentieth century, almost every IP lawyer
has heard the term either from a client or in the press,
but it has mostly been regarded as a problem for patent
attorneys and privacy lawyers. Even though this is mostly
true, there are many aspects on which Copyright plays a
very important role.
What is “Big Data”?
As Professor Murray Gell-Mann rightly said over two
decades ago, “a scientist would rather use someone else’s
toothbrush than another scientist’s terminology”. 1 In this
sense, both scientists and lawyers are pretty alike and,
unless there is a statutory definition (and even so, us lawyers
tend to interpret those definitions), law professionals try to
shape their own definitions for every concept. Even though
there are many definitions to be used, for the sake of
comprehension, we will not use any technical, nor legal,
definition and rather highlight the key elements of Big Data.
On one side we have the “Data” part. For the purposes
of Big Data, it does not only comprise personal data, but
rather any kind of data, structured or unstructured, that
can be used to draw conclusions out of them. For example,
shoe size, geo-positioning data, and the rate of strokes
in a determinate neighborhood may seem unrelated and
unstructured, but, the use of Big Data analytics tools,
among other possibilities, allows the development of
predictive models that benefit consumers and companies
alike.
On the other side is the “Big” part. As it has been
highlighted many times in recent years, the amount of
data that has been produced since 2010s vastly outweighs
Résumé
Míchel Olmedo
Míchel is a Spanish lawyer with wide experience in national and international
copyright and trademarks in Spain and the EU, having extensive knowledge
of the media and ICT industries. His work focuses on IT operations, mostly
concerned with software, videogames and digital media, incorporating his
knowledge on collective management societies, music and literary publishers
as well to ensure the most comprehensive advice to his clients.
the amount of data that had been produced in the
history of mankind up to that point. 2 The easiest way to
illustrate this point is through the “4 V’s of Big Data”:
Volume, Velocity, Variety and Veracity. These are the
main characteristics that shape the concept and speak
clearly of how much of big is really behind Big Data.
What should I worry about?
From a purely copyright-focused perspective, the first
concern when advising a client with interests in the Big
Data industry should be for the legitimacy of the databases
that the company intends to exploit.
On the one hand, if the company intends to acquire
the data from another company, the legitimacy of those
datasets must be assessed prior to any data transfers.
Warranties must be in place to secure that all data being
transferred to the client is legitimate and does not infringe
the rights of other database authors or copyright owners,
depending if we are talking about a database protected
by sui generis database rights or copyright database rights.
On the other hand, if the intention of the company is
to produce their own database, then the main focus
should be on securing that all data that is harvested by
the company is done so while observing that the rights of
copyright owners are respected.
In a digital society the second concern when advising
a client should be raised in the issue of the content itself,
as there are some figures that pose legal problems in
order to assess the viability of a technological solutions.
An example of such could be the so called User Generated
Content (UGC). UGC refers to “content generated by a
non-professional user, without commercial purposes, direct
or indirect and made available to the public or published
through digital networks”. 3
1
Complex Adaptive Systems, in G.A. Cowan, D. Pines, and D.
Meltzer (eds.), Complexity: Metaphors, Models, and Reality,
Santa Fe Institute Studies in the Sciences of Complexity,
Proc. Vo. XIX (Reading, MA: Addison-Wesley, 1994), p. 17
2
For example, see A. Dragland, Big Data – for better of worse
(Sintef, 2013).
3
“El Futuro de los Derchos de Autor y los Contenidos
Generados por los Usuarios” (Rooter, 2011).
http://www.rooteranalysis.es/documents/futuro_derechos_
autor_contenidos_generados_usuarios_web_2.0.pdf
16 THE COPYRIGHT LAWYER CTC Legal Media

There are three kinds of works that could qualify under that
description: completely original and underived works (e.g. an original
tweet), adaptations and transformations of existing works (e.g. memes),
and those newly created works which incorporate previously existing
work (e.g. mashup remixes).
By these definitions, UGC applies to virtually everything that is
posted online. If the enforcement of IP rights based on the infringement
over UGC became customary practice, those courts specialized in
copyright law would be flooded with claims of infringement related
to virtually every single webpage. The reasons why this is not the case
at the moment are varied, and relate mostly to cultural perception
of the infringements, as well as legal exceptions that can be applied
in some jurisdictions.
BIG DATA
Is it the same everywhere?
In Europe, the relevance is minimal, as the majority of authors are
mostly unaware that all of these works are covered by copyright. Also,
there tends to be a perception that these works have no or minimal
economic significance, so a different approach is taken in most Common
Law countries (except for the UK, which is highly harmonized with
the rest of EU countries), where some of these conducts could be
covered under the fair use doctrine. According to the US law, “the
fair use of a copyrighted work, including such use by reproduction in
copies, or phone records, or by any other means specified by that
section, for purposes such as criticism, comment, news reporting,
teaching (including multiple copies for classroom use), scholarship,
or research, is not an infringement of copyright” (17 U.S. Code § 107).
This doctrine is construed as to have four factors that need to be
considered in order to determine if the fair use would be applicable:
• The purpose and character of the use, including whether such use
is of a commercial nature or is for non-profit educational purposes.
• The nature of the copyrighted work.
• The amount and substantiality of the portion used in relation to
the copyrighted work as a whole.
• The effect of the use upon the potential market for or value of the
copyrighted work.
So, is that all?
Sadly, no. Even though Big Data is mostly related with data, there are
other concerns that must be addressed in these kinds of relations.
For example, depending on the side our client sits, she could act as
the party that provides the software that is going to be used to
perform all data analytics, data gathering or data arranging tasks,
so it will be very important to define in the contract the extents and
uses that the other party will be entitled to, so it is to avoid possible
conflicts when exploiting the computer program. It will be vital to
secure, unless talking about custom made software, that no terms on
the contract suggest that any ownership is being transferred and that
“
The amount of data that
has been produced since 2010s
vastly outweighs the amount of
data that had been produced in
the history of mankind up to that
point.
”
CTC Legal Media
all rights remain with our client. If the contract is to have effect in the
EU, it will be very important as well to define concisely what role, if
any, will our client have in the storing and processing of the data, to
avoid unexpected responsibilities because of the handling of personal
data by the other party.
If, on the contrary, it is our client who is acquiring the software, or
a license over one, the first step will vary depending on the country
on which the deal is taking place. On the one hand, if the legislation
of said country accepts the possibility of software patents being
granted, due diligence will command the attorney to survey the
corresponding registry to ensure that no patents are being infringed,
no matter whether this computer program is subject to a patent or
not. Even though the contract shall include an indemnity clause from
actions brought up by third parties in relation to copyright and patent
infringements from the licensor, any successful cease and desist
action would exclude our client from the possibility of exploiting the
software in question unless a new agreement is reached with the
suing third party. As there is no warranty that these negotiations will
succeed and considering the enormity of Big Data related projects,
minimizing risks is mandatory when providing sound advice to our
clients.
On the other hand, even if software is not patentable on the
country in question, it will still be protected under the Berne
Convention as a literary work, which may not be as much as a patent,
but it provides sufficient protection as to ensure the integrity of the
work and possibility of defense in court. If this were the case, the
objective of a diligent lawyer would be focused on securing that the
indemnity clause ensures that our client will not be liable under any
circumstances for the infringement of copyrights from any third
party and that damages for an eventual unavailability of the software
could cover at least as to secure that operations would not be greatly
affected by this circumstance.
Conclusions
As can be seen from the words in the preceding paragraphs, Big Data
poses a technological revolution and opportunity for engineers and
lawyers alike. From the legal side, as it comprises aspects from IP law
as well as IT and Privacy law, it makes imperative for lawyers to adapt
elements from different but interrelated disciplines in order to
provide comprehensive advice to clients. A good assessment of the
situation will be imperative if the objective is to create a sustainable
and successful Big Data exploitation model, and much of it will rest
upon the shoulders of the lawyers.
THE COPYRIGHT LAWYER
17

ROMANIA
Alina Tugearu
Plagiarism turned
political: A hot
topic in Romania
Alina Tugearu, Zamfirescu Racoti & Partners, investigates
Romanian copyright law, looking specifically into political
plagiarism.
The end of 2015 was marked by the filing of a
lawsuit for hundreds of millions of dollars in
damages against Quentin Tarantino, who was
accused of stealing the plot of Django Unchained in a
Copyright Lawsuit. Oscar Colvin, Jr. and his son Torrance J.
Colvin claim that the famous director infringed on the
copyright of their screenplay, titled Freedom, claiming
similarities between their script and the movie. The Colvins
apparently argue that Django Unchained mimics the
plot of their script specifically in the decision to pair up
of Django (Jamie Foxx) with a white ally (Christoph Waltz).
“Returning to the hellish realm of the South to purchase
the freedom of his loved one(s) with the assistance of a
Caucasian in the South is the uniquely original beat that
links Django Unchained to Freedom,” the suit alleges.
Far away from the hustle and bustle of Hollywood, in
Romania, the past few years have turned plagiarism from
a subject of study and practice in IP law, to a political
Résumé
Alina Tugearu, Managing Associate, Zamfirescu Racoti & Partners
Alina specializes in civil and commercial litigation and focuses her practice
on international arbitration, administrative/contentious disputes and
intellectual property disputes.
She presently represents corporate clients in various national disputes
and has solid experience in trying arbitration cases before national and
international arbitral panels in arbitration proceedings held under the
auspices of the International Chamber of Commerce, the London Court
of International Arbitration, the Vienna International Arbitration Center,
the Court of International Commercial Arbitration (Bucharest) and under
the UNCITRAL arbitration rules in ad-hoc arbitration, in complex projects
involving construction disputes, including matters regarding FIDIC contracts,
post-privatization related disputes arisen following the exercise of a put
and call options and energy related disputes.
Alina is a member of the Bucharest Bar since 2005 and holds a Master
of Laws (LL.M.) degree from Sorbonne University.
maneuver (Note to readers: an impressive number of
politicians in Romania hold at least a PhD diploma).
Plagiarism, the practice of taking someone else’s work
or ideas and passing them off as one’s own, without
crediting the source, has always been a constant battle in
arts and literature (including academic literature), since
admiration always ends up working, at some point, against
the admired person - at least from an IP rights’ perspective.
But what happens when the traditionally IP related notion
turns from a subject of study in IP law into a political
maneuver, aimed at undermining the credibility of those
acting/aiming to act in politics? These past years, in a
broader context of raising public awareness on the harsh
reality behind politics, plagiarism has turned political in
Romania.
The first media scandal was generated over the PhD
thesis of former PM, Victor Viorel Ponta, who was accused
of having copied important chunks of his thesis from
various other authors, and was consequently requested
to resign from office and any other public functions. The
political context at the time proved that the entire scandal
was fueled for political reasons, but the basic IP issue
behind it all remained the same. The so-called problem
of the political context was perfectly captured by a wellknown
philosopher, essayist, journalist, literary and art
critic, and former foreign affairs minister Andrei Plesu in
an interview published on Hotnews.ro; he argued that,
“
The first media
scandal was generated over
the PhD thesis of former PM,
Victor Viorel Ponta.
”
18 THE COPYRIGHT LAWYER CTC Legal Media

irrespective of the political maneuver behind the whole scandal, the
basic question that remains to be answered was simply: is it or is it
not plagiarism?
From that moment on, in the context of a growing public
preoccupation for the settlement of concrete situations of infringement
of standards of quality, or of university ethics and professional
deontology, plagiarism became a sensitive topic on the agenda of
every university and political organization in Romania. Institutions
have been created, plagiarism detection software has been put into effect
and even legislative amendments have been enacted (Government
Ordinance no 2/2016 for the amendment of Law no 206/2004 on the
good conduct in scientific research, technological development and
innovation) in view of controlling and preventing any future similar
situations.
Furthermore, at the end of 2015 the National Council of the
National Liberal Party announced that plagiarism was amongst the
integrity criteria in course of elaboration for the selection of the
potential candidates for the local and parliamentary elections that
will take place in 2016. The political Decalogue places the issue of
plagiarism as number 9 on the 10-demand list – not to have been
established, following a final court decision, that he/she has obtained a
diploma or other titles through plagiarism.
In the meantime, the same party’s candidate for the Bucharest City
Hall has denied the plagiarism accusations filed against his doctoral
thesis and at the end of March 2016, after suspicion of plagiarism,
the interim general prosecutor has himself filed a request for his PhD
title’s withdrawal. The list could go on.
What is the applicable legal path from an IP perspective?
The claim against plagiarism
The moral right of the author to claim ownership of his work is provided
under Article 10 letter b) of the Law no 8/1996 on copyright and
neighboring rights. The law provides that the author of a work has
the moral right to claim acknowledgement of the authorship of the
work, and Article 11 first paragraph provides that the moral rights
cannot form the object of renunciation or alienation.
The claim against plagiarism has a personal character and can only
be filed by the author claiming that their work was plagiarized in view
of obtaining acknowledgement of their rights and ascertainment of
the breach of such rights and reparation of the damages caused
following such illicit conduct. The same claims can also be filed, in
the name and for the right holders, by the collective administration
bodies or by the associations for the fight against piracy. The legal
grounds for such claim can be found within the provisions of Article
139 of the Law no 8/1996, as it has been amended through Law no
76/2012 for the enactment of Law no 134/2010 regarding the [New]
Civil Procedure Code.
In establishing the due damages, the court takes into consideration
(i) either criteria as the negative economic consequences, especially
the unattained profit, the advantages unlawfully obtained by
the author and, if applicable, other elements besides the economic
factors, such as the moral damages caused to the holder of the
right or
(ii) the awarding of damages, representing triple the amount that
would have legally been owed for the type of utilization which
formed the object of the illicit deed, in case the criteria mentioned
in point (i) above cannot be applied.
Interim measures can be granted if the author can credibly prove
that their authorship rights are subject to an illicit deed (actual or
imminent), and that such actions risk to cause him/her damages
difficult to be repaired in the future. The court can mainly issue the
following orders:
CTC Legal Media
1) interdiction of the breach or temporary cease and desist;
2) taking of the necessary measures in view of the conservation of
evidence;
3) taking of the necessary measures in view of ensuring the
reparation of the damages (such as precautionary measures
regarding the movable and immovable assets of the person who
has allegedly infringed the IP rights, including garnishment of
the bank accounts);
4) removing and placing into the custody of the competent
authorities of the goods, with respect to which there are suspicions
regarding the breach of the copyright in view of preventing their
placing on the commercial market.
The holder of the copyright can also obtain the publishing in mass
media of the favorable court decision, acknowledging the copyrights
and breach thereof to the expense of the author of the illicit deed.
Unlike Tarantino (until present and from our knowledge), none
of the accused politicians have been called into court to have the
alleged breach acknowledged and to pay any damages that might
have been caused following the proved or alleged plagiarism deeds.
Thus, this actually proves that shouting PLAGIARISM is mainly a
political maneuver and that this association keeps being used in view
of the impact it generates, similar to the original beat claimed by the
Colvins generated by the association of escaped slave Django with
Caucasian Dr. Schultz.
“
The claim against
plagiarism has a personal
character and can only be filed by
the author claiming that their work
was plagiarized in view of
obtaining acknowledgement of
their rights.
” THE COPYRIGHT LAWYER 19
ROMANIA

Kitty Rosser
Copyright update:
Revocation of
s.52 CDPA 1988
COPYRIGHT PROTECTION
Kitty Rosser, Birketts LLP, provides a brief recap of the effect
of section 52 of the CDPA, and the proposed updates that
could make the law more effective for copyright owners,
consumers, and artistic creators.
Section 52 of the CDPA limits the term of
copyright protection for industrially exploited
artistic works to 25 years, running from the end
of the calendar year in which works are first marketed.
This has the effect of bringing the term of copyright
protection (for works falling within the scope of section
52) in line with the maximum term of registered design
protection afforded to the same works. Thus, representing
a significant limitation by comparison to the standard
protection period of the life of the creator plus 70 years
enjoyed by other artistic works.
Under The Copyright (Industrial Process and Excluded
Articles) (No.2) Order 1989 (the Order) an artistic work
is deemed to have been industrially exploited (and therefore
to fall within the section 52 limitation) if more than
50 articles are produced. The Order specifically excludes
“works of sculpture, other than casts or models used, or
intended to be used, as models or patterns to be multiplied
by any industrial process” from the scope of section 52.
Certain traditional uses of fine art, such as book jackets
and postcards, are also excluded. Whilst it is a relatively
simple matter to determine whether or not a work has
been industrially exploited, identifying an “artistic work”
for the purposes of section 52 is less clear cut. In practice,
the works caught by section 52 are most commonly
those described by section 4(1)(c) CDPA as “works of
artistic craftsmanship”; a term which remains largely
undefined by the UK courts (see box for further
commentary).
Résumé
Kitty Rosser
Kitty is an Associate at Birketts LLP. She advises a wide range of clients
on the identification, protection and exploitation of both registered and
unregistered intellectual property rights as well as advising on data protection
and IT matters.
What are “works of artistic
craftsmanship”?
In its response to the consultation, the Law Society
called for further guidance on the meaning of “works
of artistic craftsmanship” stating;
“The meaning of “a work of artistic craftsmanship”
is, in our view, unclear to the point of rendering the
law dysfunctional”.
The Law Society highlights the fact that only one
case concerning a work of artistic craftsmanship has
ever reached the Lords, and that each of the five Law
Lords came to a different conclusion as to the meaning
of the term. The IPO has also expressed concerns,
stating;
“[T]here is little clarity which items would be
protected by copyright once the changes in law take
effect, and it is impossible to predict how and when
case law will develop on which specific items will have
copyright protection.”
Whilst the Government has indicated that it will
provide guidance to assist in identifying works of
artistic craftsmanship, it is unclear how far such
guidance will go and it will, in any event, not carry
any statutory force. As the Law Society points out, the
leading case on the meaning of the term is a House of
Lords decision, and it is therefore unlikely that any
clear statement will be given until a case is litigated
to the Supreme Court. It is likely to be many years
before there is any genuine clarity as to the meaning
of “works of artistic craftsmanship”.
Reasons for repeal – the Flos case
Whilst the repeal is implemented by section 74 of the
Enterprise and Regulatory Reform Act 2013 (“ERRA”) it
is necessary to look to Europe in order to identify the
underlying reason for the statutory change. In 2011 the
CTC Legal Media
THE COPYRIGHT LAWYER
21

COPYRIGHT PROTECTION
Court of Justice of the European Union (CJEU) gave its ruling in the
case of Flos SpA v Semeraro Casa e Famiglia SpA (Case C-168/09).
This case concerned the importation from China and the subsequent
sale in Italy of lamps created to closely replicate the Castaglioni
brothers’ classic Arco lamp. The CJEU held that national legislation
precluding or limiting copyright protection for industrial designs
was contrary to EU legislation. In light of this decision, section 52
(by which the UK is one of only 3 EU member states to restrict the
term of copyright protection afforded to designs) was considered to
fall foul of the principal of the cumulating protection established by
Article 17 of Directive 98/71/EC (the “Designs Directive”).
The stated intention of the UK Government in repealing section 52
is to ensure compliance with EU law. and to prevent importers from
abusing the current legal position by using the UK as a staging post
to bring copycat products into the EU.
A number of academic critics have queried the decision to repeal
section 52 on the basis of the Flos decision, arguing that Article 17 of
the Designs Directive only requires that member states ensure that
registered designs are eligible for protection under national copyright
laws; the extent of such protection and the conditions subject to
which it is granted are matters of national law. The critics point to the
fact that the UK expressly raised the question of the compatibility of
section 52 during the passage of the Designs Directive, and secured
permission to retain the 25 year limitation.
Transitional troubles
Following an initial call for evidence in October 2013, a formal
consultation on the repeal of section 52 was launched in September
2014. At the time of launching its consultation, the Government’s
expressed preference was for a transitional period of 3 years with
repeal to take effect in 2018. However, reflecting feedback received
during the consultation, the Commencement Order - The Enterprise
and Regulatory Reform Act 2013 (Commencement No. 8 and Saving
Provisions) - Order 2015 (“the Order”) passed in March 2015,
provided for the repeal to take effect on 6 April 2020. The Order
further provided that whilst the production or acquisition of new
unlicensed items would not be permitted following the repeal, both
businesses and individuals acting in the course of trade would be
entitled to continue to deal freely with any articles produced or
acquired prior to repeal after the 6 April 2020.
In May 2015 a claim for judicial review was received, alleging that
the transitional period under the Order was excessive and incompatible
with EU law. Following further review, and taking into account the
guidance given in the Flos case, the Government accepted that a five
year transitional period was too long: the Order was revoked in July
2015. A further consultation was launched on 28 October 2015 with
the government now proposing the following:
• A significantly reduced transitional period of 6 months ending on
28 April 2016
• A six month depletion period ending on 28 October 2016 for the
sale of goods produced or acquired under a contract entered into
prior to 28 October 2015 only; goods produced or acquired under
a contract entered into after 28 October 2015 must be sold before
the repeal takes effect
• Sale of second hand goods purchased under section 52 will be
permissible following repeal provided that goods are not sold as
part of a business (guidance is to be issued on this point)
• Paragraph 6 of Schedule 1 DPA will be amended to provide that
artistic works made before 1 June 1957 which currently do not
receive copyright protection if they could also have been registered
as a design will now receive copyright protection if they were
protected by copyright in the EU as at 1 July 1995
• Regulation 24 of the Duration of Copyright and Rights in
Performances Regulations 1995 (which obliges the holder of a
revived copyright work to grant a compulsory licence allowing others
to use the work) will be repealed.
22 THE COPYRIGHT LAWYER CTC Legal Media

COPYRIGHT PROTECTION
The current position
At this time, no information has been released as to whether the
proposals and timelines outlined in the second consultation will be
adopted. A recent request for updated information addressed to the
IPO received the following response:
“The Government’s consultation on the transitional arrangements
for the repeal of Section 52 of the Copyright Designs and Patents Act
1988 closed on 23 December 2015. We had hoped to publish the
Government’s respond by the end of the month. However, we received
roughly three times more than for the last consultation – all of which
had to be thoroughly considered.
We know that you are keen to see the final version of the
transitional arrangements, and regret that the number of responses,
combined with the length and complexity of some has resulted in a
delay to publication. We now hope to publish next month.”
Whilst far from ideal, the best advice that can be offered to those
businesses that find themselves in limbo pending a final announcement
is to keep checking the gov.uk website for further updates.
The impact of repeal
Designers and rights holders of 3D artistic works will be the primary
beneficiaries from the change in law. Once the repeal comes into
effect, rights holders will be in a position to prevent manufacturing,
importation and sale of unauthorised replica goods and/or able to
generate additional revenue through licensing royalties. A number
of rights holders have claimed that they will benefit from reduced
competition once unlicensed copies are removed from the market,
although the Government has treated such claims with a degree of
scepticism pointing out that there are significant differences in the
market for licensed and unlicensed copies with little potential for
consumer cross over, and limited risks of consumer confusion. In the
long term, the Government is of the view that a lack of availability of
unlicensed copies of artistic works may drive the creation of new works
and cause consumers to consider original works by lesser known
designers.
Businesses that trade in replicas (whether as manufacturers, importers
or sellers), are likely to be the hardest hit with the risks exacerbated
by a lack of certainty as to what will be considered “works of artistic
craftsmanship”. Discussion has focused on the furniture and homewares
sectors but it likely that the impact of repeal will also be felt in other
sectors such as jewellery, toys and games and merchandise. Businesses
have estimated that it will take an average of 5 years to change their
product offerings. The costs of introducing new products are estimated
at £20,000 - £40,000 per product with only a fraction of new product
lines likely to be commercially successful. Licensing may be an option
for some but this carries its own costs and uncertainties. Those selling
popular replica lines may face significant competition as a high volume
of product is placed on the market during the limited depletion
period by businesses trying to sell off their stock at reduced rates in
favour of destroying it. Many businesses will also be left trying to
extract themselves from contractual commitments with the average
costs per firm over the proposed transition/depletion period estimated
at circa £97,000. The Government has acknowledged that some small
and micro business may simply not survive the changes and that others
may need to consider redundancies or other cost cutting measures.
Creators and users of 2D images of artistic works will also find
themselves affected, as a 2D image of a protected artistic work will,
unless authorised, be deemed an infringing copy post-repeal. Image
libraries will need to undertake a massive review exercise to establish
which of their images include artistic works. Likewise, publishers and
museums will have to review images contained in current and planned
works. In some cases it may be that existing exceptions, such as incidental
inclusion, will apply. In other cases it will be necessary to obtain licenses
or simply cease use of images containing artistic works. It is estimated
that on average the repeal will increase image licensing costs by
approximately £6,000 per title. In some image-driven editions, licensing
costs may result in titles being withdrawn.
The final group to be significantly affected by the repeal is the
consumer. There may be a limited short term benefit to the consumer
as high volumes of stock are placed on the market at heavily discounted
prices during the depletion period. In the medium term it is likely
that the consumer will experience a reduction in choice and, as a
result of reduced competition in the absence of unlicensed product,
potentially an increase in prices. It will remain to be seen whether
the repeal will result in a wider choice of original works in the longer
term.
CTC Legal Media
THE COPYRIGHT LAWYER
23

CHINA
Wei Nan Jie
How to prove
copyright ownership
in China
Wei Nan Jie, Beijing San He Tong Chuang IP Agency Ltd,
discusses copyright laws in China and the process that is
undertaken to prove copyright ownership in the jurisdiction.
Under the Chinese Copyright Law, the author
will be granted a copyright automatically as
soon as the work is completed. It is voluntary
for the author to apply to the copyright authorities for
the Copyright Registration Certificate. However, the
author is required to prove the copyright ownership when
alleging the copyright ownership in the lawsuits or other
legal proceedings.
There are some general legal provisions in relation to
the copyright ownership in the Chinese Copyright legal
systems. Under Section 1 of Article 11 of the Chinese
Copyright Law (effective on June 1, 1991, Second
Amendment thereof effective on April 1, 2010), it is
provided that “except where otherwise provided for in
this Law, the copyright in a work shall belong to its
author.” Section 4 of Article 11 further provides that “the
citizen, legal entity or other organization whose name is
mentioned in connection with a work shall, in the absence
of proof to the contrary, be deemed to be the author of
the work.” Under the Article 7 of Several Questions on
the Application of Law in Trial of Copyright Civil Dispute
Cases Interpretation promulgated by Supreme People’s
Court (effective on October 15, 2002), it provides
that “copyright-related manuscripts, original, lawful
publications, certificate of copyright registration furnished
by an interested party, proofs produced by a certifying
authority and contract under which a right is acquired
may be used as evidence.” Even though the foresaid rules
provide the general principle of how to prove the copyright
ownership, the way to prove the copyright ownership in
the legal practice is practical and technical. Let us
consider the following three different cases to seek for
the answer. The first case is about a dispute between the
copyright and trademark, the second case is a copyright
civil dispute and the last case is a software infringement.
HUANG Wei Dong (Individual) vs. Chinese Trademark
Review and Adjudication Board & NBA (Beijing High
People’s Court, 2013)
On March 15, 2005, HUANG Wei Dong filed a trademark
application for a Bull Device with the designation of the
goods on “tea, candy, confectionery etc.” in Class 30. NBA
filed the opposition within the time limit. The Chinese
Trademark Office made the decision upon the opposition
to reject the application filed by HUANG Wei Dong.
In the appeal for the opposition decision, the Chinese
TRAB held that the applied trademark violated the prior
copyright of the Bull Device owned by NBA based on
Résumé
Nancy Wei, Partner, Beijing Crown and Rights Law Firm/
Beijing San He Tong Chuang IP Agency Ltd
Ms. Wei has more than 10 years of litigation and traditional IP service
experience. Accredited as a Chinese lawyer and TM attorney, and with a
rich academic background with a Masters degree in civil law, Ms. Wei
represents multi-national clients in various different aspects. Her practice
consists of counseling clients in connection with creation, development
and protection of their IP. She attends trademark, copyright and unfair
competition litigations. Ms. Wei also provides high level of strategic advice
on trademark portfolio management, including issues relating to registering
non-traditional trademarks and combating bad faith trademark applications
in China.
“
The information
indicated in the trademark
documents can just prove
the trademark ownership,
therefore, can’t be used as
evidence to prove the
copyright.
”
24 THE COPYRIGHT LAWYER CTC Legal Media

the effective judgments of the precedents. In the appeal, NBA furnished
the Trademark Registration Certificates for its Bull device in China
to prove its copyright prior to the applied trademark of HUANG Wei
Dong. In the first instance judgment, Beijing First Intermediate People’s
Court ruled to maintain the appeal decision made by Chinese TRAB.
HUANG Wei Dong was dissatisfied with the ruling and appealed to
the Beijing High People’s Court. After reviewing and examining the
case, the Beijing High People’s Court dismissed the appeal and sustained
the original judgment.
In the opposition proceeding, NBA furnished two sets of evidence
to prove the prior copyright. The initial set of evidence is made up of
two decisions of the previous trademark opposition and trademark
appeal; the opposition decision was made by the Chinese Trademark
Office and the appeal decision was made by the Chinese Trademark
Review and Adjudication Board. Both precedent decisions judged
that NBA owned the copyright to the Bull Device. The other set of
evidence is the Trademark Registration Certificates in relation of
Bull Device. These two sets of evidence was accepted and cited by the
Chinese Trademark Office, the Chinese Trademark Review and
Adjudication Board and the Beijing First Intermediate People’s Court
in making the decision and ruling in favor of NBA in the dispute
between NBA and HUANG Wei Dong.
In the appellate decision, even though the Beijing High People’s
Court sustained the original judgment rejected the evidence in relation
to NBA’s copyright to the Bull Device. The Beijing High People’s Court
comments the evidence as follows below.
As for the evidence of two precedent decisions, the Beijing High
People’s Court held that the two precedent decisions on their own
can’t prove the prior copyright owned by NBA. The two precedent
decisions were made respectively by the Chinese Trademark Office
and the Chinese Trademark Review and Adjudication Board based
on the specific circumstances of the precedents. Both the Chinese
Trademark Office and the Chinese Trademark Review and Adjudication
are the administrative organization. Under the current legislation,
there are no laws or regulations which provide that the facts
demonstrated in the precedent decision made by the administrative
organizations are the legally demonstrated facts and therefore can be
accepted and cited directly in a later administrative case.
As for the evidence of the Trademark Registration Certificates
owned by NBA, the Beijing High People’s Court deemed that the
Trademark Registration Certificate, Trademark Gazette and other
trademark registration documents don’t fall into the signature acts
under the Copyright Law even though the information of the trademark
applicant or registrant will be indicated in the Trademark Registration
Certificate and Trademark Gazette. The information indicated in
the trademark documents can just prove the trademark ownership,
therefore, can’t be used as evidence to prove the copyright.
Even though the evidence in relation to copyright provide by NBA
was not accepted by the Beijing High People’s Court, the first instance
judgment is finally sustained due to the fact that the Bull Device
belongs to CHICAGO BULLS is well-known to the public.
“
The copyright of the
dictionary in Chinese version
should belong to ZHANG under the
Section 4 of Article 11.
”
CTC Legal Media
ZHANG Xin Wei (Individual) vs. Shanghai Foreign Language
Education Press (Fu Tian District Court of Shenzhen City, 2014)
In August of 2014, ZHANG Xin Wei sued Shanghai Foreign Language
Education Press (SFLEP) for copyright infringement. ZHANG Xin
Wei found out SFLEP published the Longman Active Study English-
Chinese Dictionary (Simplified Chinese version) in 2013. However,
even though in the title page of the dictionary it was printed ZHANG
Xin Win as the interpreter, the name of interpreter was not printed
in the cover page and copyright page. In additional, SFLEP didn’t pay
ZHANG Xin Wei the royalty. ZHANG Xin Wei alleged that SFLEP
has infringed its copyright because he owned the copyright to the
dictionary of Longman Active Study English-Chinese Dictionary,
which is a commissioned works. In the complaint, ZHANG alleged
that he was commissioned by LANGMAN Press Asia Limited in the
late 1980s to translate the dictionary Lexicon of Contemporary English
into Chinese. As a result, he should be the copyright owner of the
Chinese version of the dictionary Lexicon of Contemporary English,
which was published later in Chinese Mainland as Longman Active
Study English-Chinese Dictionary (Simplified Chinese version). In
response to the complaint, SFLEP furnished a statement from Pearson,
the succession to LANGMAN Press Asia Limited. In the statement,
Pearson argued that the dictionary of Longman Active Study English-
Chinese Dictionary should be a corporation work because the
Longman has paid the remunerations to ZHANG for his translation
work. However, both sides of the case are unable to provide the
written evidence such as the written agreement for which party should
be the copyright proprietor of the Chinese version of the dictionary.
The Fu Tian District Court of Shenzhen city held in the ruling that
the copyright of the dictionary in Chinese version should belong to
ZHANG under the Section 4 of Article 11 of the Chinese Copyright
Law, “the citizen, legal entity or other organization whose name is
mentioned in connection with a work shall, in the absence of proof
to the contrary, be deemed to be the author of the work.” In the title
page of the dictionary, ZHANG’s name was printed as author. Therefore,
the copyright of the dictionary in Chinese version should belong to
ZHANG. The appeal for the first instance judgment is still pending.
However, if there is a written agreement for the copyright ownership
of the translation of Lexicon of Contemporary Dictionary, it will be easy
to decide who should be the real copyright owner of the dictionary
Longman Active Study English-Chinese Dictionary.
Microsoft Corporation vs. Hua Shang Century Management
Consultant Limited (Fu Tian District Court of Shenzhen City, 2014)
Plaintiff Microsoft is the copyright owner of famous Microsoft office
software. Defendant Hua Shang Century was found out illegally copying,
installing and using the plaintiff’s office software in the computer
devices in his office location without plaintiff’s authorization. Plaintiff
therefore sued Hua Shang Century before the court.
The Fu Tian District Court of Shenzhen City judged that the plaintiff
should be the copyright owner of the Microsoft office software in
issue based on the evidence provided by the plaintiff.
In the litigation proceeding, the plaintiff provided the Copyright
Registration Certificate issued by the US Copyright Office to prove
its copyright. In accordance with the relevant regulation of the Berne
Convention and Chinese Computer Software Protection Regulations,
the software created by the foreigners should be legally protected in
accordance with the agreement signed by the original country of the
software author and China or the international treaty that both
countries join. Both China and the US are the member state of the Berne
Convention. Since the plaintiff has provided the relevant Copyright
Registration Certificate issued by the US copyright authorities, the
plaintiff’s software should be legally protected in China accordingly.
THE COPYRIGHT LAWYER
25
CHINA

Lawrence A. Stanley
The emergence of the
transformative use test
in fair use analysis
FAIR USE
Lawrence A. Stanley investigates a selection of infringement
cases that have used the transformative use test in their fair
use analysis.
In 1990, Judge Pierre Leval, then a district court judge,
published an article in the Harvard Law Journal,
entitled “Toward a Fair Use Standard” (103 Harv.
L.Rev. 1105). The article proposed a fresh look at the U.S.
Copyright Act’s “fair use” provisions – one aimed at
simplifying the test suggested (but not mandated) by
the Copyright Act (the “Act”) through a new analytical
framework known as “transformative use.” As applied, it
represents a meaningful expansion of the rights of the
public against the copyright owner.
Fair use
“Fair use”, for readers who might not be familiar with
the term, is the doctrine that permits the public to use
copyrighted works for certain purposes – e.g., “criticism,
comment, news reporting, teaching…, scholarship, or
research,” according to the Act – without permission from
the owner.
Although the origins of “fair use” stretch back several
centuries, it wasn’t incorporated into the law until 1976.
Section 107 of the Act doesn’t expressly define “fair use,”
but provides, in addition to the purposes mentioned above,
a set of four criteria, first suggested by Supreme Court
Justice Joseph Story in Folsom v. Marsh (1841). The criteria,
however, are only suggestive and may be weighed differently
in each case along with any other factors a court might
consider. The factors ask courts to consider “the purpose
and character of the use, including whether such use is of
Résumé
Lawrence Stanley
Lawrence has over 30 years of experience in business and intellectual
property litigation, and in drafting and negotiating contracts pertaining to
trademarks, copyrights and trade secrets in a variety of industries, including
music, exercise modalities, neutraceuticals, software and high technology.
In 2000, together with Gordon Troy and Robert Fogelnest, he successfully
defended a multi-party trademark infringement lawsuit over use of the
word “Pilates,” resulting in a cancellation of the plaintiff’s federally registered
“Pilates” trademarks and pushing the word into the public domain. Recently,
Mr. Stanley and Mr. Troy won a summary judgment motion in the United
States District Court of Colorado resulting in cancellation of a plaintiff’s
copyright on the basis that it was a “useful article” and thus uncopyrightable.
a commercial nature…;” “the nature of the copyrighted
work;” “the amount and substantiality of the portion
used in relation to the copyrighted work as a whole;” and
“the effect of the use upon the potential market for or
value of the copyrighted work.”
Section 107 makes no mention of the word
“transformative,” but Judge Leval seizes on Justice Story’s
ruling that a fair appropriation would be one that did
not “supersede” the original, and runs from there. As
Judge Leval wrote,
The use … must employ the quoted matter in a
different manner or for a different purpose from the
original. A quotation of copyrighted material that merely
repackages or republishes the original is unlikely to pass
the test… If, on the other hand, … the quoted matter
is used as raw material, transformed in the creation
of new information, new aesthetics, new insights and
understandings – this is the very type of activity that the
fair use doctrine intends to protect for the enrichment of
society.
Transformative uses may include criticizing the quoted
work, exposing the character of the original author,
proving a fact, or summarizing an idea argued in the
original in order to defend or rebut it. They also may
include parody, symbolism, aesthetic declarations, and
innumerable other uses.
Infringement examples
Four years later, Judge Leval’s test was cited by the U.S.
Supreme Court in Campbell v. Acuff-Rose Music, 510 U.S.
569 (1994), a case involving rap group 2 Live Crew’s
appropriation of Roy Orbison’s famous song, “Pretty
Woman.” Although the case involved parody, a category
traditionally considered to fall within fair use, the Court
suggested an expansion of the doctrine:
The central purpose of this investigation is to see,
in Justice Story’s words, whether the new work merely
‘supersede[s] the objects of the original creation … or
instead adds something new, with a further purpose or
different character, altering the first with new expression,
meaning, or message; it asks, in other words, whether
and to what extent the new work is ‘transformative.’ …
[T]he goal of copyright, to promote science and the arts, is
generally furthered by the creation of transformative works.
CTC Legal Media
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FAIR USE
Since Campbell, the transformative use test has been widely applied images are artistic works intended to inform and to engage the viewer
to electronic appropriations of entire works to create databases for in an aesthetic experience… Arriba’s use of Kelly’s images in the
internet searches. In Kelly v. Arriba Soft Corp., 336 F. 3d 811 (9th Cir., thumbnails is unrelated to any aesthetic purpose.
2003), the Ninth Circuit held that when dittosearch.com downloaded Similarly, in Perfect 10, Inc. v. Amazon. com, Inc., 508 F. 3d 1146
full-sized images from the internet, deleted them after generating (9 th Cir., 2007), the Ninth Circuit vacated a preliminary injunction by
thumbnail versions, and allowed search engine users to view those the district court prohibiting Google from displaying thumbnail images
thumbnails in search results, it was engaging in a transformative, i.e. in users’ search results. “Even assuming such automatic copying could
fair, use:
constitute direct infringement,” the Court found, Google’s use was
Although Arriba made exact replications of Kelly’s images, the transformative because
thumbnails were much smaller, lower-resolution images that served it is designed to enhance an individual’s computer use, not to
an entirely different function than Kelly’s original images. Kelly’s supersede the copyright holders’ exploitation of their works. Such
automatic background copying has … a considerable public benefit.
“
The same reasoning was applied by the Second Circuit to the creation
of full text search databases in Author’s Guild, Inc. v. HathiTrust, 755
F. 3d 87, 97 (2d Cir. 2014), and again in Author’s Guild, Inc. v. Google,
The transformative use
Inc., 804 F.3d 202 (2015), a decision by Judge Leval. After weighing
the Author’s Guild’s claims from every angle, Judge Leval ruled that
test has been widely applied to
Google’s “snippet view”
electronic appropriations of entire does not provide searchers with any meaningful experience of the
expressive content of the book. Its purpose is not to communicate
works to create databases for
copyrighted expression, but rather, by revealing to the searcher a tiny
internet searches.
”
segment surrounding the searched term, … to help the searcher learn
whether the book’s use of that term will be of interest to her.
For appropriations outside the search engine context, the
28 THE COPYRIGHT LAWYER CTC Legal Media

transformative use test is still in development, but its ascendancy
as an interpretative framework is clear.
The Ninth Circuit was the first federal circuit court purporting to
apply the test following Campbell, but it did so badly, confusing the
transformative use test with the test for parody. The book in question
in Dr. Seuss Enterprises v. Penguin Books USA, Inc., 109 F.3d 1394
(9th Cir. 1997), The Cat NOT In The Hat, was not a parody of Dr.
Seuss’s The Cat In The Hat, but a snarky send-up of the O.J. Simpson
case set to the meter of One Fish, Two Fish. Tellingly, the Ninth Circuit
found support for its decision in Rogers v. Koons, 960 F.2d 301, 310
(2d Cir. 1992), a pre-Campbell Second Circuit case in which the word
“transformative” is nowhere to be found.
Jump forward to Seltzer v. Green Day, Inc., 725 F.3d 1170 (9 th Cir.,
2013), where the Ninth Circuit provided a full-on “transformative
use” analysis to find that Green Day’s appropriation of a wall mural
was “fair use” because the original work was used
as “raw material” in the construction of the four-minute video
backdrop. It is not simply a quotation or a re-publication; although
[the original] is prominent, it remains only a component of what
is essentially a street-art focused music video about religion and
especially about Christianity (images of Jesus Christ appear – and
are defaced – several times during the course of the video).
Here the Ninth Circuit cited Judge Leval’s article and a string of
Second Circuit decisions applying the “transformative use” analysis
to the visual arts. The first of those decisions was Bill Graham Archives
v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006), in which the
defendant reproduced iconic Grateful Dead concert posters in its
book, Grateful Dead: The Illustrated Trip. The Court found the use
transformative because the reproductions were both tiny and used
for historical scholarship. Like the thumbnail images in Kelly v. Arriba
Soft Corp., their size, was “sufficient to permit readers to recognize the
historical significance of the posters,” but “inadequate to offer more
than a glimpse of their expressive value.”
The truly transformative case of “transformative use” cases came
six months later in Blanch v. Koons, 467 F. 3d 244 (2d Cir., 2006), when
the Second Circuit considered artwork by Jeff Koons and determined
that his alteration and re-purposing of an advertising photograph
constituted “fair use,” even though the use did not fall into any of the
traditional categories mentioned in the statute. The decision was
surprising given that the New York district court and Second Circuit
had ruled against Koons’ artwork in three previous cases (albeit all
prior to Campbell): Rogers v. Koons, 960 F.2d 301 (2d Cir.), (1992);
Campbell v. Koons, 1993 WL 97381 (S.D.N.Y., 1993); and United Feature
Syndicate v. Koons, 817 F.Supp. 370 (S.D.N.Y., 1993).
This time, things were different. First, the Second Circuit observed,
Koons’ image was not a verbatim reproduction of the original, which
was an advertisement depicting “a woman’s lower legs and feet, adorned
with bronze nail polish and glittery Gucci sandals, resting on a man’s
lap in what appears to be a first-class airplane cabin.” Koons scanned
the advertisement, cropped out everything but the legs and feet, and
inserted them into his work, entitled “Niagara,” with the legs pointing
downward rather than sideways as in the original. (Koons also added
a heel to one of the feet and modified the photograph’s coloring.)
Second, the Court looked to Koons’ intent. In the 1992 case, Rogers
v. Koons, the Second Circuit ordered Koons’ artwork destroyed (literally)
because it did not parody the original, but was merely intended “to
comment critically both on the incorporated object and the political
and economic system that created it.” In Blanch v. Koons, the Court
cited nearly identical statements of intent by Koons as the “crucial”
reason for finding fair use. Noting that Koons used the advertising
image “as fodder for his commentary on the social and aesthetic
consequences of mass media,” the Second Circuit concluded:
The test … is whether [Koons’ work] “merely supersedes … the
original creation, or instead adds something new, with a further
purpose or different character, altering the first with new expression,
meaning, or message.” … The test almost perfectly describes Koons’
adaptation of “Silk Sandals:” the use of a fashion photograph created
for publication in a glossy American “lifestyles” magazine – with
changes of its colors, the background against which it is portrayed,
the medium, the size of the objects pictured, the objects’ details and,
crucially, their entirely different purpose and meaning…
In 2013, in Cariou v. Prince, 714 F. 3d 694 (2d Cir., 2013), the
Second Circuit examined 30 large-scale paintings by artist Richard
Prince, who appropriated in each work, to varying degrees, Patrick
Cariou’s photographic portraits of Rastafarians and their surrounding
Jamaican environs. The Court first laid to rest the District Court’s
premise that “to qualify for a fair use defense, a secondary use must
‘comment on, relate to the historical context of, or critically refer back
to the original works.’“ Then the Court looked at Prince’s artistic
intent, ultimately ignoring it and holding that the work:
could be transformative even without commenting on Cariou’s work
or on culture, and even without Prince’s stated intention to do so.
Rather than confining our inquiry to Prince’s explanations of his
artworks, we instead examine how the artworks may “reasonably be
perceived” in order to assess their transformative nature.
Applying the “transformative” standard, i.e., whether the new work
adds “new expression, meaning or message” through a simple, visual
examination of the work, the Court found twenty-five of Prince’s
paintings to be transformative as a matter of law. The Court punted
on the remaining five paintings because their content was not sufficiently
different from Cariou’s photographs
for us confidently to make a determination about their transformative
nature as a matter of law. Although the minimal alterations that
Prince made in those instances moved the work in a different
direction from Cariou’s classical portraiture and landscape photos,
we cannot say with certainty at this point whether those artworks
present a “new expression, meaning, or message.”
The Cariou decision was criticized both for applying an imprecise
standard (“new expression, meaning and message”) and admitting
uncertainty. However, previous understandings of “fair use” failed to
appreciate, as Judge Leval wrote, that “Fair use is not a grudgingly
tolerated exception to the copyright owner’s rights of private property,
but a fundamental policy of copyright law.”
FAIR USE
CTC Legal Media
THE COPYRIGHT LAWYER
29

SHAKESPEARE
David Kluft
Shakespeare and
copyright: Five things
you should know
In celebration of Shakespeare400, the apogee of a worldwide
celebration of Shakespeare’s life on the 400th anniversary of
his death, here David Kluft from Foley Hoag LLP describes
five things you should know about the intersection of the Bard,
and copyright law.
There are few aspects of Western culture not
affected by William Shakespeare in one way or
another, with U.S. law being no exception.
Shakespeare has been cited by the United States Supreme
Court alone on over 60 occasions, twice as many times
as Charles Dickens, Mark Twain and Edgar Allen Poe
combined. Shakespeare’s relevance regarding law goes far
Résumé
David Kluft
David is a partner in Foley Hoag LLP’s Intellectual Property department
and a member of the Trademark, Copyright and Unfair Competition group;
the Business and Commercial Disputes group and the Advertising and
Marketing group. David has significant experience representing and counseling
clients with respect to copyright, trademark, contract and commercial disputes,
and false advertising and unfair competition.
In addition to representing clients in state and federal trial courts, David’s
practice also includes substantial appellate work. He has successfully argued
before the U.S. Court of Appeals for the First Circuit and the Massachusetts
Supreme Judicial Court. David is a contributing author to the Massachusetts
Continuing Legal Education Appellate Practice series, for which he writes
chapters on Further Appellate Review to the Supreme Judicial Court and
Petitions for Rehearing before the Appeals Court.
In 2013, David was appointed by Chief Justice Rodrick Ireland to the
Supreme Judicial Court’s Committee on Professional Responsibility for
Clerks of the Court. He served as a Law Clerk to Justice Judith Cowin of
the Supreme Judicial Court of Massachusetts (2003-2004) and has prosecuted
a variety of criminal trials as a Special Assistant District Attorney in Norfolk
County (2009-2010).
Before joining Foley Hoag, David had more than ten years of experience
as a film and television producer, film festival director and educator. He
was the founding Director of the NextFrame Film and Video Festival,
Program Coordinator for the Philadelphia Festival of World Cinema, and
an associate producer at PBS-affiliate WHYY in Philadelphia. David earned
his J.D. from Boston University School of Law, an M.F.A. in Film and
Media Arts from Temple University, and a B.A. from Brown University.
beyond the occasional apt quotation or analogy. Because
he is the world’s foremost author, his name is arguably
most often invoked in discussions about the law of
authorship, namely copyright.
1. Shakespeare was not incentivized by copyright
protection
Shakespeare’s connection to copyright actually precedes
copyright law. When London publishers and their lawyers
were casting about for arguments to justify the perpetual
printing monopolies that were the precursor to the 1710
Statute of Anne, they turned to Shakespeare, who quickly
became the poster-child for the copyright-incentivized
author. As discussed by Professor Liam O’Melinn in The
Recording Industry v. James Madison, the publishers argued
that copyright protection was not a recent invention by
business interests, but an extension of the “timeless moral”
right of an author to profit from his labor. If not for this
ancient right - the publishers argued - Shakespeare never
would have bothered putting pen to paper. Therefore,
the argument was that it made sense to grant strong
copyright protection to the business interests that stood
in the place of the authors: publishers and printers.
The academic assumption that Shakespeare required
some kind of incentivizing intellectual property protection
made the jump to American copyright law, most notably
in Alfred Pollard’s 1915 work, Shakespeare’s Fight with
the Pirates, and has persisted right up to the 21st century.
A 1959 Harvard Law Review article asserted that “progress
is promoted by granting to Shakespeare the exclusive rights
in Romeo and Juliet.” However, as Professor O’Melinn
put it, this “is an odd thing to say about a play that did
not enjoy copyright protection; that Shakespeare himself
never put into book form; and that was copied and printed
shortly after his death without payment to his estate.”
Therefore, “whatever Romeo and Juliet may show about
the need for copyright law, it does not support the incentive
argument.”
30 THE COPYRIGHT LAWYER CTC Legal Media

2. Shakespeare’s ideas are not protected
Shakespeare has been invoked more than any other author or artist
to explain the idea/expression dichotomy in U.S. copyright law, i.e.
the notion that ideas are not protected but the fixed expression of those
ideas may be. The great Second Circuit Judge Learned Hand (in a
decision joined by his cousin Augustus Hand) ignited this discussion
in his 1930 opinion in Nichols v. Universal Pictures Corp., a case
brought by the author of the 1922 play, Abie’s Irish Rose, against the
author of the 1926 film, The Cohens v. The Kellys. The works differed
from each other in many details, but both told the story of the racial
antagonism between an Irish family and a Jewish family whose children
fall in love with each other and are secretly married.
In one of the most eloquent opinions about the fair use doctrine
ever written, Judge Hand acknowledged that copyright law must extend
beyond the literal copying of a play in order to be effective, but it must
not overreach and purport to protect “the most general statement of
what the play is about.” This idea/expression dichotomy applied not
only to the plot, but also to individual characters. As Judge Hand
opined (nearly three decades before West Side Story):
“If Twelfth Night were copyrighted, it is quite possible that a second
comer might so closely imitate Sir Toby Belch or Malvolio as to infringe,
but it would not be enough that for one of his characters he cast a riotous
knight who kept wassail to the discomfort of the household, or a vain
and foppish steward who became amorous of his mistress. These would
be no more than Shakespeare’s “ideas” in the play, as little capable of
monopoly as Einstein’s Doctrine of Relativity, or Darwin’s theory of the
Origin of Species. It follows that the less developed the characters, the less
they can be copyrighted; that is the penalty an author must bear for
marking them too indistinctly.”
Judge Hand acknowledged a gray area in which “nobody has ever
been able to fix that boundary” between idea and expression, but
fortunately for the defendant this case did not reside in the gray area.
Judge Hand wrote:
We have no question on which side of the line this case falls. A comedy
based upon conflicts between Irish and Jews, into which the marriage of
their children enters, is no more susceptible of copyright than the outline
of Romeo and Juliet.
Burton and Liz Taylor, directed by Franco Zeffirelli, and giving extra
emphasis to two scenes that occur off-stage in the play. The defendants,
without crediting or compensating the plaintiff, took this idea and
ran with it. The result was the 1967 Academy Award-nominated adaption
of The Taming of the Shrew. The Superior Court of Los Angeles granted
summary judgment against the plaintiff, but the California Appeals
Court reversed, holding that even such conspicuously commonplace
ideas could be protectable and compensable if the circumstances gave
rise to an implied contractual obligation to pay for them.
4. Shakespeare having writer’s block is not a “Scénes à Faire”
In the 1999 case of Miller v. Miramax, two authors brought a copyright
infringement claim against the makers of Shakespeare in Love. The
authors alleged that the film infringed their screenplay, The Dark
Lady, which was also “about William Shakespeare writing a new play
and falling in love.” The defendants argued that the similarities
between the works were mere scénes à faire. In other words, they were
elements so typical of, or absolutely necessary to, the genre that they
were not original enough to be subject to copyright protection (for
example, a gladiator fight in a book about ancient Rome, or an Italian
mother character in a mafia film).
On the defendants’ motion for summary judgment, the Central
District of California agreed that certain historical characters and
locations were indeed scénes à faire in any work about Shakespeare.
However, the Court was also troubled by the many creative choices
that appeared in both works, and that each were neither necessary to,
nor necessarily typical of, depictions of Shakespeare. Both works
feature Shakespeare suffering from writer’s block while under pressure
to write a new play; burning the manuscript in frustration, meeting
a literate noble woman who knows his work by heart; having an affair
with her and being inspired by her to overcome his writer’s block;
and watching her star in the new play and then having his heart break
as she escapes to the New World. In other words, there were enough
similarities in protected expression to survive summary judgment.
Thus, Shakespeare having writer’s block might not be the most
original idea in the world, but neither is it an archetype of the genre.
The case settled before trial.
SHAKESPEARE
3. Your ideas about Shakespeare, on the other hand, may be
protected
Even though Shakespeare is so often used to illustrate the fact that
copyright law does not protect ideas, his work was also the vehicle
for one of the most high-profile cases involving U.S. copyright law’s
weird step-sister: the idea submission case. This doctrine was developed
almost exclusively in California and almost exclusively within the
confines of the entertainment industry. Ideas are not protected by
U.S. copyright law, but nevertheless they can be the subject of a
contract, so the California Courts have developed this quasi-contract
cause of action in order to protect the “rights of an idea discloser to
recover damages from an idea recipient under an express or implied
contract to pay for the idea in event the idea recipient uses such idea
after disclosure is discussed.”
So, for example, if you put your ideas up on your webpage, or
shout them out the window as you drive past MGM studios, this
cause of action isn’t going to help you. But, if you set up a meeting
through an agent to discuss an idea, in circumstances under which
others have been paid for ideas in the past, you may be able to state
a claim.
In Blaustein v. Burton, the plaintiff, a Hollywood Story editor, had
a series of meetings with the agent of actor Richard Burton. During
these meetings, the plaintiff shared a rather pedestrian idea, which
was to make a film based on a particular Shakespeare play, starring
5. Shakespeare was an inveterate plagiarist
So frequently has Shakespeare been trotted out as the example of an
author whose work needs copyright protection that it’s easy to forget
that his contemporaries covered up their laptop screens when
Shakespeare walked into the Stratford Starbucks. Some argue that
Shakespeare’s success was so dependent on stuff he stole from others
that even half-decent copyright protection would have ended his career
rather quickly. Fellow author Robert Greene accused Shakespeare of
being a rank plagiarist or, in his words, an “upstart crow, beautified
with our feathers.”
Greene has been conclusively drubbed by Shakespeare in the battle
for historical relevance, but perhaps he can take comfort in two things.
First, Greene might be happy to know that the earliest mention of
Shakespeare in a published U.S. copyright case was principally as a
plagiarist, not as a creator. In his 1845 opinion in Emerson v. Davies,
Massachusetts Justice Joseph Story used Shakespeare to illustrate that
copyright law protects not only authors who create works from scratch,
but also authors who compile and arrange components taken from
elsewhere. This included Shakespeare, who “gathered much from the
abundant stores of current knowledge” in his day. Second, Greene
may have been happy to learn that, 400 years later, when the BBC
needed a title for its sitcom about Shakespeare (premiering in 2016
and starring the brilliant David Mitchell…no, wait; the other brilliant
David Mitchell), it chose The Upstart Crow.
CTC Legal Media
THE COPYRIGHT LAWYER
31

3D PRINTING
Victor Johnson
3D printing and
its implications
on copyright law
Victor Johnson, Dykema, looks into key features of copyright
law, and how people who are thinking of using 3D printing
could be affected by the laws.
Anew era has begun with the availability of lowcost,
3D printers. Not so long ago it was
unimaginable that people could print for
themselves the products they need. Instead, they had to
go to the store or order them on the Internet. Today, with
3D printers becoming affordable and commonplace, a
fundamental shift in the way we obtain things is upon
us. 3D printers allow consumers to print at home threedimensional
objects, such as phone cases, to jewelry, to a
replica of that designer handbag - and this is just the
beginning! In China, a company named Winsun said it
built 10 3D printed houses in just one day at a reported
cost of $5,000 each. Cornell and MIT are developing 3D
printers made specifically to create edible products. This
shift in how we obtain things, however, may involve
several IP laws, including the Copyright Act.
What is 3D printing?
3D printing is the process of making a solid, threedimensional
object of any shape from a digital model.
Résumé
Victor C. Johnson
Victor is a member of the Intellectual Property Practice Group in the
Dallas, Texas office of Dykema. Mr. Johnson’s practice focuses on IP
litigation including patent, trademark, brand protection and trade secret
misappropriation, as well as domain name disputes and other forms of unfair
competition. He is also experienced in all aspects of complex commercial
litigation and has significant experience in federal and state false claims
act litigation. Mr. Johnson also has significant experience representing
clients in whistleblower actions. Mr. Johnson has been the lead attorney on
a wide variety of business litigation and intellectual property disputes for
companies ranging in size from start-ups to Fortune 500 companies.
Immediately prior to joining Dykema, Mr. Johnson was a principal at a
boutique litigation firm where he headed its IP Litigation and Brand Protection
Group. He also spent 11 years with a large national intellectual property firm.
The 3D printing process involves successive layers of
material laid down in different shapes. To create a 3D
copy of an object you just need two things: (1) an electronic
schematic of the object, and (2) a 3D printer.
3D printing is accomplished by one of several methods.
First, a user can print a work based on the result of the
individual’s own ideas and creativity. Second, a user
could print a work based on a plan created by someone
else and downloaded to the printer. Typically, this would
be the Internet where plans for a particular object can
be downloaded. Finally, a user could create a work from
an already existing commercial product. In this case, the
user would use a 3D scanner to scan the physical object
and transfer the resulting file to the 3D printer.
Each of these methods touch on important IP
rights of various individuals. Thus, the question arises
as to how 3D printing and IP rights protection can be
combined.
How is copyright law implicated?
A major concern with 3D printing and copyright law is
in the potential for widespread personal manufacturing of
copyrighted works independent of the owner’s established
markets. Much like the pirating of music and movies that
exploded via the Internet, 3D printing threatens to usher
in a new avenue of infringement that cannot be detected
or prohibited.
Copyright law protects original, artistic and nonuseful
works. To be copyrightable, an object must have a
modicum of creativity original to the author. In the U.S.,
copyright applies to common subjects of 3D printing such
as sculptural works or three dimensional representations
of protected two dimensional illustrations. The Copyright
Act grants the owner of a copyrighted work certain
exclusive rights. This includes, the right of reproduction,
the right to prepare derivative works, the right to distribute
copies, and the right of public display. 17 U.S.C. § 106
(1)-(3), (5).
32 THE COPYRIGHT LAWYER CTC Legal Media

A. The right of reproduction
The copyright owner has the exclusive right to recreate copies of the
work. 17 U.S.C. § 106(1) Copies constitute “material objects . . . in
which a work is fixed by any method now known or later developed,
and from which the work can be perceived, reproduced, or otherwise
communicated, either directly or with the aid of a machine or
device.” Id. § 101. A person using a 3D printer to recreate an object
that is based on a work owned by another (e.g., recreating that new
fabric pattern) runs the risk of infringing this right.
3D PRINTING
B. The right to prepare derivative works
A derivative work is based upon a preexisting work and can be in the
form of an “art reproduction . . . or any other form in which a work
may be recast, transformed, or adapted.” 17 U.S.C. § 101. An author
of a derivative work must be authorized by the original copyright
owner. Schrock v. Learning Curve, 586 F.3d 513, 523 (7th Cir. 2009).
Thus, simply changing the medium of the work does not avoid an
owner’s derivative work rights. Durham Indus., Inc. v. Tomy Corp.,
630 F.2d 905, 910 (2d Cir. 1980). A person using a 3D printer to
transform an existing work owned by another into a new object (e.g.,
using a fabric pattern to creating a new cell phone case) runs the risk
of infringing this right.
C. Right to distribute works
The owner of a copyright enjoys the exclusive right “to distribute
copies … of the copyrighted work to the public by sale or other
transfer of ownership, or by rental, lease, or lending.” 17 U.S.C. §
106(3). Distribution is “the distribution of copies…of a work to the
public by sale or other transfer of ownership.” § 101. Distribution
also includes offering to distribute a copy for the “purposes of further
distribution, public performance, or public display.” § 101. A person
selling an object printed from a 3D printer that was based on an
existing work owned by another runs the risk of infringing this right.
D. Right to publicly display works
The owner of a copyright enjoys the exclusive right “to display the
copyrighted work publicly.” 17 U.S.C. § 106(5). Displaying a work
encompasses showing “a copy of it, either directly by means of a film,
slide, television image, or any other device or process.” § 101. The
right to public display of a work also means to “display it at a place
open to the public or at any place where a substantial number of persons
outside of a normal circle of a family and its social acquaintances is
gathered . . . .” Id. Public display also includes the transmission or
communication of a display of the work “to the public, by means of
any device or process, whether the members of the public capable of
receiving the performance or display receive it in the same place or
in separate places and at the same time or at different times.” Id. This
concept of display is sufficiently broad to capture transmission of an
image through “any sort of information storage and retrieval system”
“
A major concern with 3D
printing and copyright law is in the
potential for widespread personal
manufacturing of copyrighted
works.
”
CTC Legal Media
such as a “computer system.” Playboy Enterprises, Inc. v. Frena,
839 F. Supp. 1552, 1556-57 (M.D. Fla. 1993). Consequently, filling a
computer screen with a copy of an “image fixed in the computer’s
memory” is a public display. Perfect 10, Inc. v. Amazon.com, Inc., 508
F.3d 1146, 1160 (9th Cir. 2007). A person uploading a YouTube video
of an object he created using a 3D based on an existing work owned
by another runs the risk of infringing this right.
E. Direct and secondary infringement
Direct copyright infringement occurs when an individual other than
the copyright holder violates one or more of the copyright holder’s
exclusive rights to a work. That is, there must be a direct infringement
by a person/organization of one of the exclusive rights. Secondary
infringement occurs when a person/organization facilitates another
person to infringe upon a copyright. Secondary liability has grown
from common law, meaning that it is not provided for by the statute
but rather was developed from case law. Secondary liability comes
in two forms: vicarious liability (derived from tort law when the
superior, such as an employer, is responsible for the actions of the
employee) or contributory liability (where a party intentionally induces
or encourages primary infringement and fails to exercise his/her
ability to stop the primary infringement).
Conclusions
3D printing runs the risk of implicating one or more of these at
different stages of the process. For example, if a company rents a 3D
printer knowing that the user is committing direct infringement, it
could be held liable for contributory infringement.
Similarly, a consumer who copies an existing work by printing the
object with a 3D printer is (technically) liable for copyright infringement
unless the consumer has permission from the copyright owner.
However, while 3D printing of copyrighted objects at home may
constitute an infringement, these copyright rights are likely to become
increasingly impractical or impossible to enforce. For example, how
does an owner of work learn about the home printing?
Like other technological advancements we have seen (for example
computers or the Internet), 3D printing may very well change, even
radically change, the environment in which we live and play. As with
every change we have seen before, these advancements run the risk of
having significant negative impact on rights holders. For example,
the invention of Internet file sharing programs and sites had serious
and negative consequences for music and movie copyrights owners.
Similarly, 3D printing technology may have similar implications for
artistic copyrights owners, design rights owners, and the owners of
trademarks and patents. It remains to be seen how 3D printers will
actually develop and how the legislation will deal with these upcoming
challenges.
THE COPYRIGHT LAWYER
33

DIGITAL COPYRIGHT LAW
Geert Somers
The scope of the
private copy in a cloudcomputing
environment
Geert Somers, attorney-at-law, Brussels, Belgium, investigates
the legal challenges that arise when using digital lockers,
specifically looking into five significant questions concerning
these challenges.
The rise of cloud computing technologies and
applications has caused a number of new legal
questions surrounding the private copy exemption
in European copyright systems (the equivalent of the fair
use exemption in the USA). Consumers no longer need
a device or carrier in their physical possession to keep
back-up copies of their multimedia content. They can
now easily, efficiently, and safely store such content in a
digital locker somewhere in the cloud and enjoy it in a
flexible manner whenever they want and where they want
by simply streaming it from the cloud. Theoretically,
there are no limits to the amount of stored items and the
duration of their storage, making it possible for consumers
to keep true online digital archives.
This very-user friendly technology solicits 5 important
questions:
1) To what extent does the private copy exemption cover
a private online archive?
2) Can the cloud provider implement efficient, singleinstance
storage mechanisms on behalf of all its users?
3) Can the streaming of content from a digital locker in
the cloud be considered a communication to the public?
4) Can users rip and download streamed content?
5) Should a levy be charged on cloud storage platforms
and digital lockers to grant a fair compensation to
rightholders?
Résumé
Geert Somers
Geert is partner at time.lex, a niche law firm specializing in information
and technology law. He mainly focuses on intellectual property rights in a
digital context, privacy and data protection. He previously worked at
Lawfort and Freshfields Bruckhaus Deringer. He obtained his law degree
at the K.U.Leuven, followed by an LL.M. degree in European law at the
Europa-Institut in Saarbrücken and in intellectual property law at the KU
Brussels. He started his career as an intern in DG Competition of the
European Commission and as a researcher at the Italian Constitutional
Court. He is regular speaker at ICT-related events.
Private online archives
Under most EU laws, the private copy exemption has
been laid down for many years. The scope is usually very
broad and allows the user to make a reproduction of every
copyrighted work obtained for use within the family
environment.
In addition, the copy must be made from a lawful
source. The European Court of Justice added this criterion
in its decision C-435/12 of 10 April 2014. The law
typically does not impose additional modalities, such as
the amount of works that can be copied, the number of
copies, the format of the copy (e.g. digital or analogue),
the medium used for storage (e.g. computer, tablet,
external hard disk, USB stick or a digital locker in the
cloud), or the time during which the copies are kept.
After all, the law should be technologically neutral and
the private copying exemption should not be technically
limited.
This means users can increasingly build online archives
which mainly differ from past recording technologies,
because the quality of the copy remains perfect at all
times.
As long as lawmakers don’t restrict the scope of the
private copy exemption, there seems little legal ground to
validly question unlimited private online archives by
legitimate users of the content. Neither would there be a
legal ground to limit access in time to such archives.
In the meantime, right holders will have to implement
technical protection measures to keep the balance between
their exclusive copying rights and the user’s large
freedom to make copies and create online archives. That
being said, technical protection measures should never
go as far as preventing consumers from making their
private copies in the first place. Some member states
implemented strong legal mechanisms to safeguard
the private copy exemption from being overruled by
technical or contractual restrictions. Thus, one can
expect the discussion to heat up when online digital
archives with easy streaming facilities become more
popular.
34 THE COPYRIGHT LAWYER CTC Legal Media

Efficient storage in the cloud
Most cloud providers apply compression technology to save server
space. Instead of storing multiple, separate, full individual copies per
user, they optimize storage by making a distinction between the
physical and logical copy. This means they keep a file with only one
copy of the multimedia content that is identical to a number of users
(redundant information), and a file with software pointers to such
copy containing the rights of the individual user to the content (userspecific
information). This way of working makes digital lockers
personal and individual, because users can only access and play
recordings stored at their own initiative, and they cannot share or
exchange such recordings. While lots of legal scholars are still struggling
with this concept, the Commercial Court of Antwerp, Belgium,
defended it in a decision of 4 November 2014:
“Although one single physical copy exists (consisting of a number
of segments), legally such copy cannot be considered as a master copy
used to stream content to users. The user-specific data are necessary
for the user to obtain access to the segments in order to have useful
data after their decryption.”
Hopefully such clear case law will take away doubt for service
providers who still hesitate to implement efficient storage in the
cloud. Within the boundaries of existing copyright legislation, now
being virtualized in the cloud, it really should be sufficient to keep
track of the ownership or use rights individuals have for content stored
in the cloud, and to make sure they can only access exactly that same
content. This is precisely the difference with a master copy held by the
service provider, and which has an independent economic value for
them. Therefore, it is also important for the service provider to keep
a passive, facilitating role only when offering cloud solutions to endusers.
Communication to the public
Some try to argue that the streaming from a personal digital locker
in the cloud cannot qualify as a private viewing: rather, should it be
equaled to a communication to the public? However, if a registered
user of a cloud service can only access and stream his legitimate copy
from the digital locker in unicast to himself, it is hard to see how this
can be qualified as communication to the public, i.e. an undetermined
amount of potential viewers. The careful reader already came to this
conclusion on the basis of the reasoning applied by the American
federal Court of Appeal in the Cartoon Network vs. Cablevision Case
on 4 August 2008. The Second Circuit Court was then of the opinion
that recordings by individual customers are “unique copies not
capable of receipt by the public”. Hence, one can logically conclude
that there can only be a communication to the public if the service
provider streams a copy he made himself to a multitude of viewers
who did not previously upload the same content to their digital locker.
Otherwise, the cloud service provider is by no means intervening
to enable receipt of original source content by the end user. Any
conclusion to the contrary would not be suited to the digital age.
“
Some try to argue that the
streaming from a personal digital
locker in the cloud cannot qualify
as a private viewing.
”
CTC Legal Media
Downloading streamed content
If users can record programs from their paid TV-subscription for
time-shifted viewing with their VCR, one could argue that the same
is true for downloading content from a paid streaming subscription.
In both cases, users capture content intended for private enjoyment
at the moment of its communication by the service provider or
operator. Thanks to recording technology, they can keep a copy and
enjoy the content at a later, more convenient moment in time. The
UK lawmaker made this impossible by explicitly providing that
private copies can only be made from content that was lawfully
acquired on a permanent basis. Also, the reasoning is likely to fall
when users circumvent technical measures implemented by the
service provider to protect the streamed content against ripping and
permanent storage. Especially when third parties appear, offering
services to download streamed content on a cloud server, a clash of
business models may give rise to legal battles.
In a decision of 25 April 2013, the regional court of Hamburg,
Germany granted an injunction against the provider of software that
made the ripping of protected streamed content possible. However, the
court did not issue a general ban on downloading streamed content.
A case-by-case assessment remains the only way to determine the
legitimacy of this practice. One could for example also argue that
making a copy of streamed content is different from a copy of a TV
programme when the streamed content is part of a subscription that
allows access to the content, as long as the subscription is paid for.
Downloading for time-shifted or format-shifted viewing can difficultly
be defended in that context.
Copyright levies on digital lockers
The private copy exemption has traditionally been compensated by
giving some kind of fair remuneration to right holders, in particular
through the collection of levies on blank, recordable media carriers
and devices used for copying purposes. Such levies are subsequently
distributed to the right holders to cover for the loss of royalties caused
by the use of these blank media. The question arises if, and to what
extent, such levy system should also apply to digital lockers.
Although more and more people enjoy multimedia content through
paid streaming subscriptions, consumers did not fully stop making
private copies in the cloud. They still download and store content in
digital lockers online. The European Parliament acknowledged this
in its resolution in 2014 on private copying levies. Consequently,
there are a lot of calls from the right holders’ industry to provide a
similar private copying compensation mechanism to server space
used for private recordings and storage in the cloud. With the cloud
being cross-border by definition, the implementation of such levy
system will not be easy in a European context, especially since not all
EU Member States apply levies (in the same way).
The European Court of Justice already called for more harmonization
in this field in its decision C-467/08 of 21 October 2010. At the same
time, the levy system is heavily criticized by others for being
ineffective, disproportional and not transparent. As a matter of fact,
the levy system makes consumers pay even when they do not use
the blank media to record copies of copyrighted content or when
the potential harm to the right holders is so minimal that it can be
neglected. The system also ignores that many authors do not actually
want to exploit for money and therefore are not asking to be
compensated through the levy system. The issue has been heavily
debated at the British political and High Court level since the
introduction of the private copy exemption under UK law. This
discussion is likely to continue as the cloud market further matures.
The levy system will probably disappear at some point, especially
when a valid alternative is found that keeps all the stakeholders happy.
THE COPYRIGHT LAWYER
35
DIGITAL COPYRIGHT LAW

William Miles
Margaret Briffa
Find and share
the knowledge:
United Kingdom
William Miles and Margaret Briffa – from the UK law firm
Briffa – share their knowledge of copyright law in the United
Kingdom, specifically looking into copyright litigation, registration
and protection, among other topics.
KNOWLEDGE SHARE – UNITED KINGDOM
1. What types of work can be protected by copyright?
Under section 1(1) of the Copyright Designs and Patents
Act 1988 (the “CDPA”) the following works can be protected
by copyright:
(a) Original literary, dramatic, musical or artistic
works (literary, dramatic or musical works must
be recorded in some way);
(b) Sound recordings, films or broadcasts; and
(c) The typographical arrangements of published
editions.
2. Can copyright be registered?
No, subject to falling within one of the above categories
and qualifying for protection, a work will benefit from
copyright protection without registration. The old adage
Résumés
William Miles
William is a senior intellectual property lawyer with Briffa. He advises on
a broad range of contentious and non-contentious matters with a particular
focus on copyright disputes, trademark proceedings and passing off claims.
His experience in copyright covers everything from the unauthorised
publication of photographs by the world’s media to complex disputes
addressing the unlawful copying of software code.
Margaret Briffa
Margaret is a leading intellectual property lawyer and founding partner of
Briffa. She advises on all aspects of intellectual property protection and
enforcement, with particular emphasis on dispute resolution. Margaret
has acted for claimants in many copyright, design, patent and trademark
cases, a number of which are leading and reported cases in the field. On the
copyright side, Margaret advises many media clients as to fair dealing
exceptions and works closely with Focal International, the industry body
representing archives and audio visual libraries, on proposed and new
legislation changing the law of copying.
was that copyright subsists “before the ink is dry on the
paper”.
3. How long will copyright last?
The term of protection will depend on the type of copyright
which you are dealing with.
(a) Literary, dramatic, musical or artistic works:
• 70 years from end of the calendar year in which
the author dies. If the work has been jointly authored
then the term of the copyright will run until 70 years
from the end of the calendar year in which the last
known author dies.
(b) Computer-generated literary, dramatic, musical
or artistic works:
• 50 years from the end of the calendar year in which
the work is made.
(c) Sound recordings:
• 50 years from the end of the calendar year in which
the recording is made unless:
(i) The recording is published in that 50 year
period. If this happens then the term will run
until 70 years from the end of the calendar
year in which the work was first published; or
(ii) The recording is played or communicated in
public in that 50 year period. If this happens
then the term will run until 70 years from the
end of the calendar year in which the work is
played or communicated to the public.
(d) Films:
• 70 years from the end of the calendar year in which
the death occurs of the last to die of the following
(known) persons:
(i) the principal director;
(ii) the author of the screenplay;
(iii) the author of the dialogue; or
(iv) the composer of music specially created for
and used in the film.
CTC Legal Media
THE COPYRIGHT LAWYER
37

KNOWLEDGE SHARE – UNITED KINGDOM
(e) Broadcasts:
• 50 years from the end of the calendar year in which the broadcast
is made.
(f) Typographical arrangement or published additions:
• 25 years from the end of the calendar year in which the edition
was first published.
Some of these timeframes will change in respect of works with an
unknown authorship.
4. What rights are available for 3D designs?
3D designs are largely removed from protection under copyright
unless they are artistic works. Even these are fairly limited although
some examples include; works of artistic craftsmanship, sculptures or
engravings.
5. Are there any works which are automatically deemed to be “in
the public domain”?
Generally speaking these would be works in which the copyright term
has expired or works which did not qualify for copyright protection
in the first place. There are also some government works which could
qualify under the heading “works in the public domain” from the
moment of creation.
6. What different types of rights are available?
Moral rights
• These rights apply to literary, dramatic, musical or artistic works
and films. They allow the owner of the rights (usually the author)
to:
(i)
Be identified as the author or director of a work, (sections
77 to 79, CDPA).
(ii) Object to derogatory treatment of a work (sections 80 to 83,
CDPA).
(iii) Not suffer false attribution of a work (section 84, CDPA).
(iv) Privacy, in relation to some photographs and films (section
85, CDPA).
Artist’s resale rights
• These rights enable artists (and their successors in title) to
claim a percentage of the sale price, net of tax, in works of art
are resold in transactions involving market professionals.
7. Who is the initial owner of a work?
The initial owner of a work is normally the author. However, this
would not be the case if, amongst other reasons, the author was an
employee and created the work in the course of his employment.
This can be a big problem for small business who do not want to
commit to the responsibility of a full time employee, and instead use
freelancers for a lot of their creative work. Without an agreement to
the contrary, the freelancer will own the copyright in the work as first
author and problems can frequently occur if relations between the
parties turn sour.
8. What acts are restricted in respect of a work protected by
copyright?
The following are considered acts of “primary infringement” under
section 16(1) of the CDPA:
• Making copies of a work.
• Issuing copies of a work to the public.
• Lending or renting the work to the public.
• Playing, preforming or playing a work to the public.
• Communicating the work to the public.
• Making an adaption of a work, or doing any of the acts listed
above in relation to an adaptation.
It would also amount to copyright infringement if you authorised
another person to do any of the above.
38 THE COPYRIGHT LAWYER CTC Legal Media

9. What proportion of a work must be copied in order to give rise to
an infringement claim?
Simply put, either the whole, or a substantial part of the work (section
16(3), CDPA). What constitutes a substantial part will vary on the
facts of a dispute. A good example can be found in HRH Prince of
Wales v Associated Newspapers Ltd [2006] EWHC 522 which concerned
the publication of extracts from the Prince of Wales’ journal. The court
in this instance applied the qualitative test and found that the parts
copied were the most interesting elements of the journal (at least to
the newspaper’s readers) and therefore a substantial part had been
copied.
10. What must a claimant prove in order to succeed in a copyright
infringement claim?
A claimant needs to show that copyright subsists and he/she is the
rightful owner (or exclusive licensee), given that it is not a registered
right the claimant will often rely on documents (e.g. drawings,
assignments etc) to prove this.
The claimant then needs to show that a restricted act has taken
place. Normally this comes down to simple copying but, as you might
expect, this carries the requirement for the claimant to prove that
the defendant actually had an opportunity to copy the work (e.g. by
being a former employee/business partner or having had an opportunity
to view to work as a result of some marketing).
11. What are the possible defenses to a copyright infringement claim?
An obvious defense to copying would be to show “independent
creation” of the work (if the work has been created independently
then there can’t be any copying). However if the work has been
copied completely an infringement claim can be avoided by using,
where applicable, one of the “fair dealing” defenses. These are as
follows:
• Research and private study (section 29 CDPA);
• Criticism or review (section 30(1) CDPA);
• Reporting current events (section 30(2) CDPA);
• Quotation (Article 5(3)(d) of the Copyright Directive 2001/29/EC);
or
• Parody, caricature, pastiche (The Copyright and Rights in
Performances (Quotation and Parody) Regulations 2014).
Please note, however, that these defenses require careful consideration
before they are relied upon as they each carry a number of pre-conditions.
12. What remedies are available in a copyright infringement claim?
The main civil remedies available to a claimant are:
• Damages or an account of profits.
• Interlocutory relief, this includes search orders, freezing orders
and interim injunctions.
• Orders for delivery up of the infringing goods/copies.
• Seizure of the infringing goods/copies.
• Forfeiture.
• Injunctions.
Various criminal penalties can also be handed down in infringement
actions, on the whole these are designed to prosecute “knowing
infringement”.
13. With regards to the protection of copyright in text, what is
minimum requirement in terms of the length of the text (i.e. number
of words)?
This very much depends on the facts but previous attempts to claim
copyright in a single word have failed (see “exxon” in Exxon Corp v
Exxon Insurance Consultants International Ltd [1982] RPC 69).
On the other hand, in the case of The Newspaper Licensing Agency
Ltd and others v Meltwater Holding BV and others [2010] EWHC 3099
(Ch) the High Court found the newspaper headlines may be sufficiently
long to qualify for copyright protection. In coming to this decision
the court referred to Infopaq International A/S v Danske Dagblades
Forening (Case C-5/08) which had previously examined an 11-word
extract from a newspaper article.
KNOWLEDGE SHARE – UNITED KINGDOM
14. What is the correct procedure for licensing copyright?
In order to avoid arguments over whether or not an implied license
exists, a written contract should be agreed between the parties setting
out the relevant terms of the license. At the very minimum this
should include, term, territory, the status on exclusivity and details of
the royalties payable.
15. Are there any changes to the law on the horizon?
The repeal of section 52 of the CDPA is probably the most significant
change in the near future. The current position is that artistic works
manufactured on an industrial scale are only protected for 25 years
from the date in which they first put on the market. The change
would mean that this term is extended to 70 years from the end of the
year in which the creator dies (in line with other artistic works).
These changes will bring us in line with other EU member states
and they are likely to be very good news for designers of classic
furniture, lighting or jewelry. Watch this space!
CTC Legal Media
THE COPYRIGHT LAWYER
39

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IT REALLY MATTERS
WHICH IP FIRM YOU CHOOSE
THIS YEAR OUR FIRM WILL BE REPRESENTED
AT THE INTA ANNUAL MEETING BY CLAUDIA SERRITELLI AND PAULA GALVAN