Copyright Infringement Permission

Under UK copyright law, owners of certain works prescribed in s.1(1) Copyright, Designs and Patents Act 1988 (hereafter “CDPA 1988”) are given a bundle of property rights. These rights include commercial rights of authorisation and distribution of the works. Liability for copyright infringement can arise where another person exercises the rights of the owner without permission. The key issues here concern whether the screenshot infringes copyright, whether Pocket Pictures could be liable for this infringement and possible complications over jurisdiction which may arise.

To be liable for infringement, a person, without the licence of the copyright owner, must commit or authorise another person to do any of the “acts restricted by the copyright” listed in s.16(1)CDPA 1988. These include the right to copy the work, issue copies of the work to the public, perform, show or play the work in public, to broadcast the work or include it in a cable programme service, to make an adaptation of the work or do any of the above in relation to an adaptation.

Twentieth Century Fox Home Entertainment, Inc own the copyright to Family Guy in the UK. However, it appears that a number of their exclusive rights (above) may have been violated: A section of the original film has been adapted into the form of a digital image and this adaptation could also be deemed to have been copied and distributed to the public. A qualification to the finding of infringement is that the rights violated by the infringer relate to a ‘substantial’ part of the original work. Although the screenshot is merely a single still frame, term ‘substantial’ relates to quality not the quantity of material which will be judged by reference to the reason that the work has been protected by copyright. Clearly here, the primary purpose of copyrighting of the “Family Guy” would be to protect the artistic creativity of the cartoon characters themselves.

In theory the simplest way to exclude liability would therefore be to seek the permission of Fox Home Entertainment to display the screenshot on the website. However, whether it would be practical to seek the permission of the owner of every potentially infringing image is questionable.

Assuming that no permission has (or will be) granted, the person who has created the screenshot will be liable as a ‘primary infringer’ since they have ‘directly’ violated the right to adapt the work. However, ICDC could also be liable for infringing these rights as a secondary infringer if they have ‘authorised’ the infringement. In the leading case of CBS Songs Ltd v Amstrad Consumer Electronics plc, the House of Lords held that ‘authorised’ was to be interpreted as meaning to “sanction approve and countenance” the primary infringer.

In recent years however, decisions elsewhere have dealt with secondary and intermediary liability, particularly regarding file-sharing software. Such decisions may be persuasive if “authorisation” was to be reconsidered by the English courts today. For example, in Sharman the Australian Supreme Court specifically applied the Australian precedent set out in Moorhouse, deciding that the critical factor was the degree of control exercised over the primary infringers. The Court found that Sharman had the power to prevent or reduce infringement but failed to do so.

In the U.S similar reasoning has been used to find “intermediaries” liable for the conduct of primary infringers. In Grokster, users were “induced” to infringe through slogans even though there was an attempt to avoid liability by purporting to prohibit infringement. Similarly in Grokster, no efforts were made to prevent infringement through the application of ‘filtering’ software and Grokster had a commercial interest in such infringements taking place.

Here the very fact that Pocket Pictures are seeking advice about a particular image suggests that they can choose which individual images are added to the website. This suggests that they are acting in an editorial role, and will therefore be satisfying the key element of “control” from the Grokster and Sharman. This may also mean that the “mere conduit” defence under the Electronic Commerce (EC Directive) Regulations 2002 would be unavailable since ICDC are taking an active role in deciding which content appears on the website.

However, the Sharman and Grokster cases can be distinguished from the position of Pocket Pictures since ICDC are a not-for-profit organisation and would not derive a financial benefit from any infringing content.

The Wikipedia extract refers to the “fair use” defence available under US law to a claim of copyright infringement which allows some copying and distribution without permission of the copyright, for purposes such as criticism, comment, news reporting, teaching, scholarship, or research. In the UK, the equivalent defence is the “fair dealing” defence, which permits individuals to make a single copy of a “reasonable proportion” of literary, dramatic, musical and artistic works for “research and private study” and “criticism, review and news reporting”. Clearly the reason for the uploading of the screenshot will be relevant: For example, if the screenshot was uploaded as part of a review of the television programme or as a critical analysis of the artistic merits of the cartoon characters then such a defence may apply. However, if it was uploaded in order to falsely gain credit for the image or for commercial gain then this would clearly fall outside the provisions. Nevertheless, even if the image is used for criticism, review or news reporting, Pocket Pictures must ensure that the screenshot is accompanied by a “sufficient acknowledgement” as to the true owner of the copyright.

A final issue raised by the screenshot is the fact that Fox Home Entertainment (the copyright owners) are based in the U.S rather than the UK. This raises the issue of jurisdiction since both the UK and US courts will wish to retain their sovereignty. Therefore it will be relevant that the actual infringement would have occurred in the UK and that damage would result in the UK and US.

Since intellectual property rights are territorial, Fox Entertainment must show that they own the copyright in the jurisdictions in which they wish to bring proceedings. The infringing act will be deemed to have occurred in the UK since this is where the owner’s exclusive rights have been breached. It is possible that damage could be deemed to have occurred in the U.S if the infringement was directed there. Under the Spiliada principle, it will then be for Fox to show that the UK courts are the appropriate forum to hear the dispute.

The actual damage, where the exclusivity of the owner’s rights will be undermined could occur wherever the copyright is owned. The US and UK courts could therefore hear the claim, but recovery for damages will be limited to the damage suffered in within those countries. If a claim were to be brought in US, the “Zippo” test would have to be overcome. This effectively distinguishes between “active” websites (doing business with US citizens) attracting jurisdiction; “passive” websites (where there is no direct dealing with US customers) which do not attract jurisdiction; and “interactive” websites (where information is exchanged) which may attract jurisdiction depending on the degree of interactivity. Here Pocket Pictures are likely to be considered “interactive” since users can upload and view content freely. This means that the U.S courts may well have jurisdiction to hear the dispute.

DOMAIN NAME

Domain name disputes can be problematic, since a memorable domain name can be a great source of business. In fact domain names are merely a ‘human convenience’ since they merely mask the ‘IP number’ which is actually used to communicate with the website. However, this creates issues over who has the right to own a particular phrase or word and whether abuse of the domain name registration process could be used to infringe the trademark or service mark of another. The main issues here are typical of a domain name dispute; whether dispute resolution procedures such as the UDRP and Nominet’s DRS apply; whether there are any common law remedies; and whether the issue of jurisdiction can be overcome.

The Uniform Dispute Resolution Procedure (UDRP) is a set of rules which reconcile the issue over who ought to own a particular domain name in the case of a dispute over ownership. It was originally conceived by ICANN to act as an exception to the “first come, first served” principle and enable trademark holders to transfer Internet domain names without having to go through lengthy and expensive court proceedings. The UDRP requires that three limbs must be established for a claim to succeed:

Firstly it must be shown that “www.pocket-pictures.ru” is identical or ‘confusingly similar’ to “http://pocketpictures.me.uk”. Here, the exact phrase (‘pocket pictures’) is used, albeit with a hyphen separating the . The additional hyphen in itself will clearly not prevent a domain from being considered confusingly similar, since these are of “no legal significance” in such a dispute.

Secondly it must be shown that the Estonian website owner has ‘no legitimate interests in respect of the domain name’. This is likely to be the most problematic element to satisfy and is not helped by the vagueness of its wording. The UDRP does, however, specify three grounds which are sufficient (but not exhaustive) to demonstrate legitimate interests in the domain name. For example, www.pocket-pictures.ru could have a defence as being “commonly known” by the domain name, if PP.ru has a long running reputation for its pornography services.

Finally, a claim would have to overcome the hurdle of showing that the domain is being used in ‘bad faith’. Although this term is not defined, the UDRP does list a number of grounds which will be sufficient to establish this element. Linking to the proposed website this may satisfy one of these grounds since this may demonstrate that they have tried to gain commercially by creating a ‘likelihood of confusion’ with pocketpictures.me.uk as to its “…source, sponsorship, affiliation, or endorsement..” of the website.

However, the UDRP generally only applies to gTLD’s (such as .com, .org and .net) and a limited number of ccTLD’s and would therefore be inapplicable in the situation described. In the UK, the Nominet ‘Dispute Resolution Service’ applies to the .uk ccTLD. The main differences are that the parties are offered informal mediation before the case is referred to an expert for determination and they can appeal if dissatisfied. However, even this would appear not to apply since disputes can only be brought concerning other .uk domains. This current system of dispute resolution therefore seems of little practicality in this kind of multi-jurisdiction scenario, which is unsatisfactory considering that the internet is widely regarded as a “borderless environment”.

Given the apparent inapplicability of the dispute resolution procedures, it would be advisable to pursue a common law action of “passing-off”. This tort protects the claimant’s goodwill and general trade reputation and has been used as a mechanism to domain name disputes such as ‘cybersquatting’. In order to succeed, three elements must be established:

Firstly, it must be shown that pocketpictures.me.uk’s services have acquired a goodwill or reputation in the market In order to establish this, it may be necessary to wait until the website has developed a reputation for its services and content.

Secondly there must be a misrepresentation by pocketpictures.ru leading (or likely to lead) the public to believe that goods or services offered by them are the services of pocketpictures.me.uk. By linking to pocketpictures.me.uk, it could well be argued that there is a misrepresentation by the Estonian website that the services offered by the UK website were associated. However if “pocket pictures” accurately described the business of www.pocketpictures.ru (for instance if the website offered ‘thumbnail’ adult pictures) then this will be strong evidence that no misrepresentation was intended.

Finally it must be shown that pocketpictures.me.uk has suffered, or is likely to suffer, damage as a result of the erroneous belief caused by the misrepresentation. Since the UK website is a non-profit website, it is questionable whether actual damage would occur, since there would be no loss of revenue.

The fact that the website owner is based in Estonia could be problematic. However, since both the UK and Estonia are Member States of the European Union, the ‘Brussels’ Convention applies. Whilst maintaining the general principle that defendants ought to bring a claims in the Member State in which they are domiciled, in relation to a tort the defendant can also be sued ‘… in the courts in the place where the harmful event occurred or may occur’. This means that the UK courts could indeed have jurisdiction if www.pocket-pictures.ru merely proposed to link to pocket-pictures.me.uk even though no damage had yet occurred. It is possible that the Estonian law may infact be more favourable, in which case the dispute could clearly be heard there.

TRADEMARK INFRINGEMENT

Coca cola own trade marks including the word “Coca-Cola”, its distinctive font style, the Dynamic Ribbon device (the white wavy line), the contour bottle, a number of slogans and the distinctive red and white colour scheme. As such, they are likely to be aggrieved that the red/white colour scheme has been mimicked, especially when it appears on an apparent soft drink. It is likely to be argued that association with illicit drugs is likely to damage their reputation, and therefore potentially sales of the Coca-Cola drink.

Trade mark law in the UK is governed by the Trade Marks Act 1994 (hereafter TMA 1994). A registered trade mark is infringed if, without consent, a person “uses in the course of trade”; an identical sign in relation to identical goods or services; or an identical or similar trade mark in relation to similar goods and services where there exists a “likelihood of confusion” ; or an identical or similar sign which “takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark”.

To be liable for infringement, the first issue to overcome is whether or not the image is “similar or identical” to Coca-Cola’s trademark. The white writing on a red background connected with a soft drink will be likely to be considered similar to Coca-Cola’s mark. However, it could conversely be argued that there is no script-style font, nor the ‘Dynamic Ribbon device’ which are equally as recognisable.

Secondly, it must be shown that the trademark has been used. If the images are affixed to actual real canned drinks then this will constitute use, as will the image being intended to advertise such goods. Conversely, if the image is merely a satirical take-off of the Coca-Cola mark, then it appears that there will be no ‘use’ for the purposes of infringement under the Act.

The most likely method of infringement to be pursued is likely to be that the image is detrimental to the character or repute of Coca-Cola’s trademark. As mentioned above, association of the brand with illicit drugs may damage the reputation and character of the corporation.

In relation to all of the above, it is unclear whether the display of the image on the Pocket Pictures website would be considered as being “in the course of trade” since Pocket Pictures is a non-profit website. The motive behind the image will therefore be of crucial importance: For example, if the image were uploaded by an individual who wished to advertise or offer for sale a soft drink called “cocaine” then this is likely to be deemed as being in the course of trade. However, if the image was merely uploaded as a satirical image or work of art without an intention to gain commercially, then this is unlikely qualify as being in the course of trade.

Alternatively Pocket Pictures could be liable for “passing off” (see above for criteria to be satisfied). If the image does indeed refer to an actual soft drink called “Cocaine” which viewers of Pocket Pictures may mistakenly believe that are associated with or approved by Coca-Cola, resulting in actual or potential loss of business (for example by the diversion of customers) or damage to reputation from the implication of a connection to illegal drugs.

Under U.S law, Pocket Pictures could also face the possibility of being liable for trademark dilution. The Federal Trademark Dilution Act of 1995 defines the term “dilution” as “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of competition between the owner of the famous mark and other parties, or likelihood of confusion, mistake, or deception.” In Coca-Cola Co. v. Gemini Rising Inc. the defendant produced and sold a poster resembling the Coca-Cola trademark and its distinctive white font on a red background, but with the “Enjoy Cocaine” substituted for “Enjoy Coca-Cola”. The defendants were held liable for diluting the Coca-Cola trademark since the posters offensively associated the plaintiff’s product with an illegal drug. It would therefore be extremely likely that Pocket Pictures would be liable under U.S law if the image were to be uploaded.

As discussed earlier, Coca-Cola would have to overcome the issue of jurisdiction (see above for principles relating to UK/US intellectual property dispute). If this is done, it is submitted that although liability may not arise under UK law, liability for trademark dilution under U.S law is extremely likely.