Below is the text of a paper I gave at an event held in the Law Society yesterday, October 21st, designed to facilitate the work of the Copyright Review Committee. It was a lively event – hats off to TJ McIntyre for pulling together such an excellent line-up. Amsterdam academic Martin Senftleben showed how new space could be created for more flexible national laws, both inside and outside the Information Society Directive. He pointed to some nooks and crannies of the Directive I had never spotted, such as a “such as” or two that could make all the difference… Peter Jaszi of the American University of Washington talked about fair use. He believes that the addition of the transformative use filter, in diluting the importance of the “fourth factor” in fair use (economic harm to the right holder) has enabled the cultural to trump the economic in fair use decisions…. Cambridge Professor Lionel Bentley and Stephen Rowan of the UK Intellectual Property Office charted the crowded path of policy development in the UK. The messages included “Way too much talk and not enough action” and “I wouldn’t start from here”. I think we’d be delighted to have all that talk and not unhappy to be starting from there. But given that Lionel Bentley expressed some admiration for the Irish Act, there seemed to be a touch of faraway hills being greener on both sides…… Irish Solicitor for the music majors Helen Sheehy gave a passionate anti- piracy presentation….. and my brief was to give a practical practitioner perspective on working with the current legislation. Eoin O’Dell seemed to be listening closely to everything and giving nothing away. The Consultation Paper will probably not be available for several weeks yet.
INNOVATION, INFORMATION AND THE INTERNET: Modernising Copyright Law
A Practitioner Perspective
21st October 2011
Introduction
Innovation is a broad term. Certainly enterprises using digital technology to produce new products and services are seen as innovators. Many of these use the internet to disseminate those products and services. For many the internet is their business. And a number are making an important contribution to the Irish economy. They need fertile legal ground to develop their enterprises.
The need for a piece of primary legislation
The first point to be made is that Ireland needs a new piece of primary or substantive copyright legislation. The Copyright and Related Rights Act was a decade old on 1st January this year. Producing it was quite a challenge as it had to reflect 38 years of technological change as well as accommodating a number of international treaties and European Directives. It also, importantly, was finalised about a year before the finalisation of the EU Information Society Directive and had to try to anticipate the final version of that Directive.
Since the Act there have been two pieces of primary legislation amending it – in 2004 and 2007, to correct errors in the Act. There have also been at least 15 pieces of secondary legislation, by which I mean Orders or Regulations or Statutory Instruments made by the responsible Minister. Many of these relate to procedural or technical matters but a number relate to substantive matters, including for example Regulations made to implement parts of the Enforcement Directive and the Artist Resale Right Directive.
It is worth noting the tendency that developed in recent years to rely on secondary legislation to implement European Directives. This practice by-passes the primary legislative process. I believe it is a reason why the copyright constituency has felt increasingly side-lined by the absence of the kind of public debate that accompanies the legislative process. Another point about this practice is that there are rules about what you can and cannot do by secondary legislation. The Supreme Court has laid down guidelines in relation to what can be done when implementing European Directives.If the Minister in question wants to avoid primary legislation to implement a Directive, he or she must ensure that the secondary instrument is an exercise in minimal transposition of the Directive. If any discretion is exercised by the Minister, then it is a matter for the legislature. If you try to squeeze the feet of a Directive into this tight shoe, the result can be uncomfortable. For example, the Artist’s Resale Right was implemented in a form which was strongly influenced by the need to avoid exercising any discretion, including as to the threshold above which the royalty is payable. Artists have felt very short-changed by these Regulations.
However the principal reason for a primary piece of legislation is that it has been demonstrated that there are problems with the Act. And the number and nature of them make it impossible to cure these problems without primary legislation.
As mentioned, the Amendment Acts of 2004 and 2007 were needed to correct errors identified in the Act. A further error was exposed last year by litigation instigated by the music industry against the internet intermediary UPC, in which the court found that we fhad ailed to adequately provide for injunctions against intermediaries whose services are used to infringe copyright, as required by Article 8(3) of the Information Society Directive. And yet a further problem with transposition of the Information Society Directive has been exposed by a case taken by Phonographic Performance Ireland, which is the subject of a reference to the Court of Justice of the EU. The Opinion of the Advocate General given in June is that an exemption in the Act for the playing of music and broadcasts in hotels and certain other establishments over-reaches what is permitted by the Directive.
These problems have come to the surface in a public way. But beneath the surface practitioners are grappling with a wide range of interpretative challenges, possible errors and inconsistencies relating to issues that have not been litigated. I’ll give you a couple ofexamples:
Unpublished material
Prior to the introduction of the Act, copyright protection in material which was unpublished at the author’s death was potentially perpetual. This arose because the term of protection was calculated from the date of publication. If publication never took place, the copyright would not expire. The Act appeared clearly to abolish this problematic possibility.
What was not at all obvious was that buried in the transitional provisions was a section saying that the duration of copyright in works existing at the commencement of the Act continues to be determined in accordance with a set of Regulations implementing the EU Term Directive, even though those regulations were revoked. When you follow the trail into those Regulations you find you have go deeper into the Duration Directive and back further still to the 1963 Act, and when you have completed the exercise it seems impossible to avoid the conclusion that the status quo was unchanged, and that copyright in works unpublished at the authors death is still potentially perpetual. This is not a purely academic point. It concerns the ability to make new uses of unseen material in some cases by well-known authors and artists. In an article in the Irish Times earlier in the summer, a US copyright lawyer, who is also an expert on Joyce and a member of the board of the National Library of Ireland referred to the fact that this problem affects valuable unpublished Joycean material held by the National Library. Joyce’s published works go out of copyright on 1st January next and will be free for all to use. His unpublished works, in many ways all the more valuable because they are unpublished, probably do not.
If this interpretation is correct, then there is a substantial body of unpublished material which may never see the light of day. Was this the intended purpose of the legislature? I think not.
Fair dealing
A second example touches closely on the current debate. Before the CRRA we knew (or thought we knew) the meaning of “fair dealing”. It meant use for one of the three purposes: research & private study, reporting current events or criticism or review, and which was also “fair”. The legislative provisions in Ireland were identical to those in the UK, the Irish Act of 1963 having been based on the UK Act of 1956. The meaning of “fair” had historically been left to the courts to develop, indeed the legislative provisions had grown out of court decisions. Over time, case law elaborated this“fairness” aspect of the defence. As the provisions were the same, we relied heavily on UK decisions. In a well known case of 1972, Lord Denning explained the relevant considerations in deciding on the element of fairness. He said they included: the amount and proportion of the work that had been used; the purpose of the use and whether it competed with the original work; but importantly he did not seek to tie down the defence. He said that “other considerations may come to mind also” and that “after all is said and done, it must be a matter of impression”.
Since 1972, many other cases have developed the defence. As Lionel Bentley points out in his book Intellectual Property Law, the courts have construed the specified purposes liberally, so that the first hurdle is relatively easy to overcome. In relation to the second, the requirement of fairness, the UK courts have continued to develop the concept, being influenced in some cases by new factors, to take one example, the motive of the infringing party, a factor which is also considered relevant in the US for the purposes of fair use.
This was the framework around fair dealing that practitioners were familiar with. The element of flexibility around the meaning of “fairness” was not problematic as long as its meaning was well signalled by case law.
In drafting the CRRA, a decision was made to depart from the UK framework. Instead of continuing to rely on the development of fair dealing by the courts, the Act set out to define “fair dealing”, in this way:
“fair dealing” means the making use of a [published] [work] … for a purpose and to an extent which will not unreasonably prejudice the interests of the owner of the copyright”
This made an important change. It removed the connection with prior law and the case law developed in the UK. Our law now diverges from that in the UK. Our courts do not have the flexibility enjoyed in the UK to decide the factors relevant to the consideration of what is or is not fair. They are tied to the specific consideration of whether or not the use is for a purpose and to an extent that will not prejudice the interests of the copyright owner. While it looks as though it favours the right owner, this is not necessarily the case. The court would not appear to be free, for example, to be influenced by the motive of the user, something which is relevant under both UK and US law.
The biggest difficulty in this for a practitioner is what to make of the new provision. The words “for a purpose and to an extent that will not prejudice the interests of the copyright owner” have not been interpreted by an Irish court. The phrase calls to mind part of the international three step test, and to that extent it may be possible to look to interpretations of the test in other jurisdictions. We have seen however in case law in other European countries that the three step test is capable of being interpreted both very widely and very narrowly, and to that extent appears to be an unpredictable post to which to tether the fairly dealing exemption.
These are just two examples of difficulties with the CRRA. There are many others.
I have made the point about the need for primary legislation because a sense has pervaded the establishment of the Copyright Review Committee and the publication of its terms of reference that a broad review of the legislation should be avoided. In order to the cure the deficit exposed in the UPC case, the Department proposes a statutory instrument. It is emphasised in the consultation terms of reference that it is not intended to consider a broad piece of legislation similar to either the UK Digital Economy Act or the French HADOPI system.
Of course the Department of Jobs Enterprise and Innovation, as with all Government Departments, is suffering from a reduction in resources and may not relish the task of re-writing parts of the Act. In fact they may not be alone in this. Many right holders, embattled by the internet war, believe that they can only lose by a broad review of the legislation. And even users may believe that they benefit more from the present legal lacuna regarding enforcement in the online environment than they would under a new piece of legislation. So you could conjecture that there is a considerable number of stakeholders sitting tight together on top of what they perceive to be a Pandora’s box.
What kind of legislation?
But assuming that it is necessary to open the box, it is appropriate to ask what kind of legislation is appropriate.
The debate (in so far as there has been any real debate between stakeholders) has so far been characterised by a polarisation of right holder and user, with right holders pushing for better enforcement in the online environment and users seeking liberalisation of exemptions.
I’d like to make a couple of points about each.
Enforcement
The first thing is that in many respects the Irish legislation on enforcement is very favourable to right holders. While doubts hang over compliance with the Information Society Directive, we certainly have the full range of sanctions and remedies specified by Berne, the TRIPs agreement, the Enforcement Directive, and more.
Examples of what I mean by “more” are that in court proceedings, both civil and criminal there are presumptions in favour of the right holder including that copyright subsists in a work and that the Plaintiff is the copyright owner. Hearsay evidence is permitted in an infringement action and evidence may be given on affidavit. These things are by no means standard in copyright law and were controversial in 2000 in the extent to which they favoured the right holder.
However, there are problems:
The most immediate and obvious problem concerns enforcement in the online environment. It is a very difficult time to be trying to frame legislation to deal with this problem. Across Europe various attempts to force ISPs to block access to infringing services, to filter traffic for infringements, to participate in a “three strikes” or “graduated response” procedure have met with varying degrees of success or failure. The same can be said of actions against right holders. It is a war of attrition for right holders. Various European legislatures have grasped the nettle, most prominently in the UK with the DEA and in France with its HADOPI legislation. The approaches are quite different. So it is not clear what approach is the best or is most likely to succeed.
In Ireland however it is not possible to do nothing at this juncture.
The gap in relation to Article 8(3), having exposed by the UPC case, has to be closed. There is no option in this regard. It leaves the State potentially exposed to right holders for failure to adequately transpose the Directive. The Department has proposed a Statutory Instrument to barely implement Article 8(3) by reiterating its wording. I don’t disagree that this should be done because it can be done within the Supreme Court guidelines for secondary legislation and it can be done quickly. There is no merit in leaving our law obviously out of kilter with the Information Society Directive for any longer than is absolutely necessary.
The question does arise however whether this will be enough.
I say this because I believe that the Information Society Directive, in saying in Recital 59 that the “conditions and modalities” relating to the injunctions envisaged by Article 8(3) “should be left to national law” can be interpreted as meaning that conditions and modalities ought to be articulated in national legislation.
I also believe that it may be beyond the scope of an injunction to devise the sort of complex procedures that are necessary to compel an ISP to cooperate with right holders to implement solutions which, in the words of the Framework Directive, must “respect fundamental rights and freedoms…. which are appropriate proportionate and necessary and subject to adequate procedural safeguards .. including effective judicial protection and due process”.
And finally, reading Charleton’s judgment in the UPC case it is hard to conclude other than that he was calling for detailed legislation to provide the court with the capacity grant injunctions against internet intermediaries, and that he did not have in mind a simple re-iteration of Article 8(3) and a Statutory Instrument.
I note that in the most recent Newzbin decision in the UK, S 97A of the Copyright Designs and Patents Act was used as the legal basis for the decision to grant a blocking injunctionto oblige BT Telecom to block access to the Newsbin site. That section provides the court with the power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright. It is quite bare. Apart from the enabling statement, there is some elaboration of what is meant by actual knowledge, but no more. Although there is therefore some reference to conditions and modalities, it is minimal. This decision could be regarded as a positive reference point for right owners who want to believe that the proposed Statutory Instrument will be enough. However while it might, on this basis of this precedent be enough to ground an injunction to block access to a stubbornly infringing site such as Pirate Bay, I find it hard to believe that it could take right owners any further than that.
It is also the case that Article 8(3) deals only with remedies against the ISP. We should not overlook the fact that we also need a remedy by the right holder against the online infringer and the question arises as to whether the CRRA provides that. I believe that in bringing a case for online infringement there must at very least be the potential for evidentiary problems, relating for example to proof of the infringement, where a computer may be used by many different people living or working in the same premises. In France this has been dealt with by placing certain positive duties on the subscriber to an internet service. We need to examine the CRRA to establish the extent to which it needs to be supplemented, and how this might be done. Again it seems to be impossible to avoid a piece of legislation that is bound to be controversial.
There is another problem relating to enforcement which concerns not so much the legislation as the wider enforcement framework. Owing to the very high cost of litigating in the Irish courts very few right owners or users can afford to litigate. The Commercial Court provides speedy resolution of IP disputes, but litigating in the Commercial Court is extremely expensive. Many copyright disputes are of low monetary value and the appropriate court will be one of the lower courts. But even in the lower courts litigation is too expensive for many copyright litigants and disproportionate to the value of the claim. Moreover, litigating IP before the lower courts is problematic because there is a marked shortage of judicial expertise in IP matters.
In consequence enforcement is marked by its absence at a practical level. Many infringements are not pursued. The expenses associated with the risk of losing deter many potential litigants, even those with what appear to be strong cases. This situation gives unfair advantage to the litigant with the deepest pockets. It also means that the practitioner has a very impoverished precedent bank to call on for interpretation of the CRRA.
These things are needed:
- Specialised expertise in the court system for the hearing of IP claims.
- A small claims track for claims of low monetary value.
- A framework for alternative dispute resolution. A structure such as that provided by the IPO in the UK, would encourage alternative dispute resolution.
Liberalisation of exceptions
The Hargreaves Review in the UK concluded that in some respects IP law is obstructing economic growth. It has fallen behind and needs to adapt to new forms of innovation, creativity and technology. The need is particularly marked in relation to copyright.
The UK Government has accepted the following recommendations of Hargreaves in relation to exemptions:
- A limited private copying exception
- Widen the exception for non-commercial research, including text and data mining
- Widen exception for library archiving
- An exception for parody
All of these things can be done within the framework of existing EU law.
The Hargreaves document helps to shape the debate here on exceptions and I have no doubt will be reflected in the submissions to the Review. As to how his recommendations might be received in Ireland:
1. Limited private copying exemption
In most European countries private copying is permitted, and remunerated by way of levies on the equipment used to generate or carry the copies. Hargeaves is not advocating the introduction of a levy, but a type of format shifting exemption to allow individuals to make copies for their own and immediate family’s use on different media. Depending on how it was framed, this type of exemption might not be controversial in Ireland, legitimising a situation that right holders already accept. They may have concerns such as the possibility that material moved to a cyberlocker might then be too easily be exchanged with other users, and such concerns would need to be addressed.
2. Widen exception for commercial research, including by data and text mining.
We already have a fair dealing exemption that does not preclude commercial use. Our exemption permits fair dealing for “research and private study”. This is not the case in the UK, where the fair dealing exemption was amended to confine the exemption to commercial research, as appears to be required by the Information Society Directive. This is another respect in which the Irish Act is out of kilter with the Directive. It will be interesting to see how this proposal develops in the UK and the extent to which it is possible to draft proposals which do not over reach the Information Society Directive. As to data and text mining, this looks like the sort of new technology-enabled use that might fit well into fair dealing, but while I understand how, as explained by Hargreaves, it can facilitate valuable medical and other research, its other potential uses – and possible abuses – would need to be understood.
3. Widen exception for library archiving.
Currently the CRRA provides a set of exemptions for libraries and archives. They are closely based on the exceptions in the UK Act of 1988 and are impossible to interpret confidently except in the context of analogue uses. It is clear that mass digitization of library holdings for purposes such as preservation and archiving are not exempt, something which is specifically authorised by the Information Society Directive. I very much doubt that any right holder would object to the use of modern technology to support the internal curatorial activities of cultural institutions and that such an exemption would be uncontroversial.
A related exemption permissible under the Information Society Directive is the display of works on a closed intranet on the premises of a library archive or museum. This would enhance the access to material in cultural institutions, especially as many of them are unable to show more than a portion of their holdings due to space restrictions. Again cannot imagine that right holders would object.
4. Exception for parody
The Information Society Directive permits exemptions for “caricature, parody or pastiche”. It has always been possible to use the fair dealing exemption for criticism or review to construct a defence akin to parody and in many ways it is surprising that such a defence has not been established within the fair dealing exception before now. It is something that I know a number of right holders who are also users actively support, but provided it occurs within the framework of fair dealing.
Fair use.
This is mentioned specifically in the terms of reference of the Copyright Review. In the UK, the adoption of a US style fair use exemption has been discounted by Hargreaves. He points out that the UK cannot introduce such an exemption within the framework of EU law.
A couple of things puzzle me about the proposition that European countries should adopt a US style fair use defence.
The first is to understand exactly what it is that is sought. My understanding is that the main attraction of US fair use lies in the fact that US law is perceived to be more flexible than laws in Europe. This flexibility arises because the court is capable of finding fair use for purposes other than those enumerated in the Copyright Act 1976. Section 107 says
The fair use of a copyright work… for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use) scholarship or research is not an infringement of copyright”
It is the use of “such as” that gives the court its flexibility. Fair use is not tethered, as is fair dealing to a specific set of defined uses.
And the second attraction is that court has used the flexibility in the US legislation to exempt in particular uses that are transformative. This includes, for example, the use by a search engine of thumbnail size copies of protected images.
The belief appears to be that fair use enables the US court to examine new types of technology-enabled uses and find them exempt under the fair use provisions.
And if you look at it from a different angle and say that those who want fair use want the right to use protected material online in a different context to the original use, then you see the connection with “user generated content.”
But what is sought is not clear and it is not helpful to simply propose adoption of a fair use exemption. Fair use originated in the common law fair dealing exemption and migrated to the US. But it has developed in the US within the immediate legal framework of the US Copyright Act aand the wider framework of Article 1 of the US Constitution, which specifically refers to the balance beterrn the rights of authors and the public interest.
I think a framework is needed for this discussion and it seems to me that simply pointing to fair use as being desirable is not a sufficient or appropriate framework for that discussion. Specific proposals need to be put on the table.
But this debate will have to play out in Europe. And of course we should, as the UK Government has undertaken to do, play a proactive role in the debate.
At home we need to work on the legislation; we need to improve the infrastructure, we need to devote enhanced resources at Department level and at the Patent Office to offer improved services. There are studies to be done and reports to be produced. The question of resources is an important one. If the Government is serious about providing real support for innovative enterprises, then it will have to prioritise the resources needed. The job ahead cannot be done on the basis of stakeholder consultation alone, welcome though that is.
And finally, I was amused at former Appeals Court Judge Sir Robin Jacob’s reported response to the Hargreaves Report “It is not possible” he said “to do the whole of IP in six months”. This may be so but certainly let’s hope the Copyright Review will help us to make a decent start on it.
