Scientia potentia est: Making threats of copyright infringement

Abstract

There has been much debate in the UK as to whether copyright law should have an unjustified threats provision similar to that found in UK patent, trade mark, and registered design law. Unjustified threats provisions for copyright law exist in other commonwealth jurisdictions, such as Australia and India. We argue that all of the existing unjustified threats provisions in the UK are too narrow in their scope. Threats more generally have played a significant role in the development of copyright law, and a provision aimed at ‘unjustified’ threats may paradoxically restrict discourse about the scope of copyrights. We therefore suggest that the best way to proceed is not just to introduce an unjustified threats provision but instead to make clearer what is, and is not, protected by copyright.

Keywords:

• copyright
• threats
• power
• reform
• digital

Acknowledgements

We are grateful to Dr Subhajit Basu and the anonymous referees for their valuable comments on earlier drafts of this article. We remain responsible for any errors or omissions.

Notes

1. s.21 TMA 1994, s70 PA 1977, s.253 CDPA 1988, s.26 RDA 1949.

2. Note that Foucault has particular views over the meaning of power and this is what is used as the basis of our analysis here. For further reading see Foucault (2008). See also discussion of similar concepts in Giddens (1984), Weber (1978).

3. For instance, abuse of process, barratry, franchise fraud, frivolous litigation, malicious prosecution, strategic lawsuit against public participation, defamation, and vexatious litigation.

4. Supra 1.

5. See for instance discussion in the 1709 blog – Phillips (2011).

6. Fiveash, K. ‘Judge mulls “wasted costs” as ACS: Law cases close,’ The Register, available at http://www.theregister.co.uk/2011/03/17/acs_law_cases_closed_judge_considers_costs/ (last accessed 6 November 2012), C. Williams, ‘Anti-piracy lawyers 'knowingly targeted the innocent', says law body,’ The Register, available at http://www.theregister.co.uk/2010/11/19/davenport_lyons_sra/ (last accessed 6 November 2012).

7. See, http://www.guardian.co.uk/technology/2011/mar/17/acs-law-file-sharing

8. For some discussion of those issues see Fisher (2004, ch. 1). For the underlying notions see Barlow (1996).

9. In the same way that Foucault (1969) discussed how authorship is shaped both by the actions of the author and the audience who utilise authorship as a form of categorisation.

10. See Grokster v MGM 518 F.Supp.2d 1197 (CD Cal, 2007) and Jones (1999).

11. See use of technologies such as Digimarc – www.digimarc.com (last accessed 15 May 2013).

12. For example, in the UK – s.4 Digital Economy Act 2010 c.24, and in France – Décret n° 2009-1773 du 29 décembre 2009 relatif à l'organisation de la Haute Autorité pour la diffusion des œuvres et la protection des droits sur internet.

13. Digital Economy Act 2010, c.24.

14. Haute Autorité pour la diffusion des œuvres et la protection des droits sur internet

15. For discussion see http://www.bbc.co.uk/news/technology-19767970 (last accessed 15 May 2013).

16. The Copyright Alert System – for details see http://www.copyrightinformation.org/alerts (last accessed 15 May 2013).

17. See infra pp. 5–10.

18. Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005) cf to 230 F. Supp. 2d 830 (M.D.Tenn. 2002).

19. 17 USC 1201(a)(1)(A).

20. Chamberlain Group, Inc. v Skylink Technologies, Inc., 381 F.3d 1178 (Fed. Cir. 2004).

21. MDY Indus., LLC v Blizzard Entm't, Inc., 629 F.3d 928, 937 (9th Cir. 2010).

22. For details of the new procedure see http://www.ipo.gov.uk/about/press/press-release/press-release-2012/press-release-20121001.htm (last accessed 30 April 2013) and see http://www.justice.gov.uk/downloads/courts/patents-court/patents-court-small-claims.pdf (last accessed 30 April 2013).

23. It is worth noting that the IPO press release (see Note 22) refers to a comment by Business Minister Fallon which focus on claims brought by ‘small firms’, further, actions are naturally more likely to be brought by someone already aware of the IP system than by someone who is not.

24. Infra p. 10.

25. See Walter v Lane [1900] AC 539; University of London Press v University Tutorial Press [1916] 2 Ch. 601. For discussion of alternate approaches for subsistence on this point see Ladbroke v William Hill [1964] 1 WLR 273 and C-5/08 Infopaq International A/S v Danske Dagblades Forenung [2009] ECDR 16 (ECJ).

26. Best Buy Co Inc v Worldwide Sales Corp Espana SL [2011] FSR 30 at 750-751 (a trademarks case). During the middle of the nineteenth century, persons, often large companies, who claimed to be actual or potential patentees, would threaten, often without any justification, to initiate infringement proceedings against actual or potential customers of rivals in order to deter them from dealing with those rivals. In the absence of a statutory provision to the contrary, it would have been difficult for the rival or the customer to bring any claim based on such a threat, even if it caused them serious loss. Accordingly, s.32 of the Patents, Designs and Trade Marks Act 1883, albeit now in modified form, s.70 of the Patents Act 1977, was enacted so as to provide an aggrieved person with a remedy for groundless threats of patent infringement proceedings.

27. Prince v Prince [1998] FSR 21.

28. s. 12 Patents Act 2004.

(1) (2A) If the defendant or defender proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of a patent–

(a) the claimant or pursuer shall be entitled to the relief claimed only if he shows that the patent alleged to be infringed is invalid in a relevant respect;

(b) even if the claimant or pursuer does show that the patent is invalid in a relevant respect, he shall not be entitled to the relief claimed if the defendant or defender proves that at the time of making the threats he did not know, and had no reason to suspect, that the patent was invalid in that respect.

29. Note also:

(5) .. he merely–

(a) provides factual information about the patent,

(b) makes enquiries of the other person for the sole purpose of discovering whether, or by whom, the patent has been infringed as mentioned in subsection (4)(a) above, or

(c) makes an assertion about the patent for the purpose of any enquiries so made.”

30. s.26(1) Registered Designs Act 1949, s.253(1) CDPA 1988.

31. s.70(1) Patents Act 1970; s.21(1) Trade Marks Act 1994; s.26(1) Registered Designs Act 1949, s.253(1) CDPA 1988.

32. Patrick John Brain v Ingledew Brown Bennison and Garrett (A Firm) and Another (No. 3) [1997] FSR 511 at 519.

33. Halsey v Brotherhood (1880) 15 Ch D 514

34. See inter alia Gyles v Wilcox Barn C 368 (1741) at 368 and comments by Lord Camden in The Hansard Report of Donaldson v Beckett, reported as ‘Proceedings in the Lords on the Question of Literary Property’, 14 Geo III 1st Ser. 17 950 (1774) at 999; note also the long title of the Statute of Anne 1710, 8 Anne Ch 19, which is ‘An Act for the Encouragement of Learning, by vesting the Copies of Printed Books in the Authors or purchasers of such Copies, during the Times therein mentioned’.

35. Infra pp. 5–6, Specifically, this is a reference to Foucault's discussion of Nietzsche – see Foucault (1973, 7–9); on p. 8 he references aphorism 109 in Nietzsche (1887) but equally relevant material is in aphorisms 108–110.

36. s.12(2) Patents Act 2004 implemented into s.70(2A) Patents Act 1977.

37. s. 70 Patents Act 1977.

38. Point Solutions Limited v Focus Business Solutions Limited and another [2007] EWCA Civ 17; Wyko Group Plc v Cooper Roller Bearings Co Ltd [1996] F.S.R. 126 in reference to Rules of the Supreme Court (Revision) 1965/1776 Schedule 1, Part 2 Commencement and progress of proceedings, (order 18) pleadings r.19.

39. Point Solutions Limited v Focus Business Solutions Limited and another [2007] EWCA Civ 17, Transcript, para. 29.

40. Point v Focus [2007] ibid., para 45.

41. Leco Instruments v Land Pyrometers Ltd [1981] FSR 325 at 328 ‘It is well known to all of those who practise in this branch of the law that a great deal of damage can be done by letting rumours circulate in a trade to the effect that, for instance, a patent or registered design is infringed.’

42. See discussion above, infra pp. 5–7.

43. Digital Millennium Copyright Act 1998 Pub. L. No. 105-304, 112 Stat. 2860.

44. Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society. Official Journal L 167, 22/06/2001 P. 0010 – 0019.

45. Digital Economy Act 2010, c.24.

46. H.R.3261 – Stop Online Piracy Act; House Judiciary Committee; October 26, 2011.

47. S. 968: Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011, 112th Congress, 2011–2012.

48. Thus we are extending Foucault's (1973) arguments to the digital realm.

49. Griffin, J. 2013. “Copyright Evolution: Creation, Regulation and the Decline of Substantively Rational Copyright Law” [2013] IPQ (forthcoming).

50. For instance, VPNs, and the TOR Network.

51. See for instance discussion in the 1709 blog – Phillips (2011).

52. Practice Direction – Pre Action Conduct, The White Book 2012 at C1-001.

53. ‘Groundless threats of legal proceedings in relation to copyright infringement

(1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding in respect of an infringement of copyright, then, whether the person making the threats is or is not the owner of the copyright or an exclusive licensee, a person aggrieved may bring an action against the first-mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats, and may recover such damages (if any) as he or she has sustained, unless the first-mentioned person satisfies the court that the acts in respect of which the action or proceeding was threatened constituted, or, if done, would constitute, an infringement of copyright.

(2) The mere notification of the existence of a copyright does not constitute a threat of an action or proceeding within the meaning of this section.

(3) Nothing in this section renders a barrister or solicitor of the High Court, or of the Supreme Court of a State or Territory, liable to an action under this section in respect of an act done by him or her in his or her professional capacity on behalf of a client.

(4) The defendant in an action under this section may apply, by way of counterclaim, for relief to which he or she would be entitled in a separate action in respect of an infringement by the plaintiff of the copyright to which the threats relate and, in any such case, the provisions of this Act with respect to an action for infringement of a copyright are, mutatis mutandis, applicable in relation to the action.

(5) A reference in this section to an action in respect of an infringement of copyright shall be read as including a reference to an action in respect of the conversion or detention of an infringing copy or of a device used or intended to be used for making infringing copies.’

54. Bell v Steele No 1 [2011] FCA 1390; Bell v Steele No 3 [2012] FCA 246.

55. Bell v Steele No 1 [2011] FCA 1390.

56. Bell v Steele No 1 [2011] FCA 1390; Bell v Steele No 3 [2012] FCA 246.

57. Bell v Steele (No 3) [2012] FCA 246 at §17, quoting Ricketson and Creswell (2001).

58. Bell v Steele (No 3) [2012] FCA 246 at §18.

59. Ungar v Sugg (1892) 9 RPC 113.

60. Townsend Controls v Gideon Gilead [1990] FCA 250.

61. Bell v Steele (No 3) [2012] FCA 246 at §18.

62. Copyright Act 1957 (Act No. 14 of 1957): ‘s.60. Remedy of the case of groundless threat of legal proceedings. Where any person claiming to be the owner of copyright in any work, by circulars, advertisements or otherwise, threatens any other person with any legal proceedings or liability in respect of an alleged infringement of the copyright, any person aggrieved thereby may, notwithstanding anything contained in section 34 of the Specific Relief Act, 1963 institute a declaratory suit that the alleged infringement to which the threats related was not in fact an infringement of any legal rights of the person making such threats and may in any such suit-

(a) obtain an injunction against the continuance of such threats; and

(b) recover such damages, if any, as he has sustained by reason of such threats: Provided that this section shall not apply if the person making such threats, with due diligence, commences and prosecutes an action for infringement of the copyright claimed by him.’

63. s.200(1) Copyright Act (Cap. 63, 2006 Rev Ed). See also Record TV Pte Ltd v Mediacorp TV Singapore Pte Ltd and Others [2009] SGHC 287. http://www.sslawcorp.com/legalupdates/Legal%20Update%20-%20RecordTV%20Pte%20Ltd%20V%20Mediacorp%20TV%20Singapore%20Pte%20Ltd%20and%20others.pdf http://www.managingip.com/Article/2897206/Trade-mark-Infringement-Tackling-groundless-threats.html

64. s187 Hong Kong CO 528.

65. See infra p. 4.

66. For example, ‘Other Torts’ in Fysh et al. (2010), Thorley et al. (2006), Kitchin et al. (2001).

67. Johnson v Gore Wood & Co. [2000] UKHL 65; [2001] 1 All ER 481.

68. Abolished in the UK with the Criminal Reform Act 1967 but lives on in certain US jurisdictions, e.g. People v Sanford, 202 Cal. App. Supp. 1 (App. Dept. Sup. Ct 1988); 18 Pa.C.S. 5109 and Texas Penal Code section 38.12.

69. FTC Franchise Rule 15544–155715 available at http://www.ftc.gov/os/fedreg/2007/march/070330franchiserulefrnotice.pdf#page=102 (last accessed 14 May 2013).

70. United States Rule 11 of the Federal Rules of Civil Procedure require that an attorney perform a due diligence investigation concerning the factual basis for any claim or defence.

71. Austin v Dowling (1870) 5 LRCP 534; Amin v Bannerjee [1947] AC 322 Cf. Hunt v AB [2009] EWCA Civ 1092.

72. Nazanin Rafsanjani (Friday, April 02, 2010). ‘SLAPP Back: Transcript’. ON THE MEDIA (onthemedia.org). WNYC (National Public Radio, PBS).

73. Inter alia Simpson, Dugdale, and Jones (2010).

74. Civil Procedure Rules, Practice Direction to Pt.3 3CPD.2.1.

75. http://www.harbottle.com/hnl/pages/article_view_hnl/5538.php (last accessed 25 February 2013).

76. http://creativecommons.org/ (last accessed 11 December 2012).

77. http://www.cla.co.uk/about/news/article/?article_id=122&subject=THE+COPYRIGHT+LICENSING+AGENCY+%28CLA%29+ANNOUNCE+LAUNCH+OF+NEW%2C+INDUSTRY-STANDARD+ONLINE+COPYRIGHT+ICON+ (last accessed 1 May 2013).

78. Infra pp. 3–4.

79. Infra p. 12.

80. Note that the such a licence would be in conformity with s.28 CDPA 1988.

81. Art 13 TRIPS reads: ‘Members shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder.’ Agreement on Trade-Related Aspects of Intellectual Property Rights, including Trade in Counterfeit Goods, 15 December 1993, 33 ILM 81 (1994). Art 9(2) Berne Convention for the Protection of Literary and Artistic Works, Sept. 9, 1886, as revised in Paris on July 24, 1971 and amended in 1979, S. Treaty Doc. No. 99-27 (1986) [The 1979 amended version does not appear in UNTS or ILM, but the 1971 Paris revision is available at 1161 UNTS 30 (1971)].

82. For discussion see infra p. 10; for a similar licence see in the US Jacobsen v Katzer 535 F.3d 1373 (Court of Appeals, Federal Circuit, 2008); for the EU/UK see Atkins (2009) and Griffin (2011).

83. NLA Ltd v Meltwater Holding BV [2011] RPC 7; [2012] RPC 1; and PRCA Ltd v NLA [2013] UKSC 18.

84. Directive 2001/29 of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, OJ L 167/10.

85. See discussion above, infra pp. 1–2, 5–6.

86. See discussion above, infra p. 10.