Tuesday, 18 December 2018

A Painting Given to Eric Clapton Cannot be Used on Album Cover Rules French Supreme Court

The French civil Supreme Court held on October 10, 2018 that the right to first publish a work belongs only to the author or his heirs, and that, therefore, a painting given in 1970 to famous musician Eric Clapton, and subsequently used on the cover of one of his most famous albums had not been published by the author.

During the Summer of 1970, Eric Clapton and his then music group 'Derek and the Dominos' stayed in Valbonne, in the South of France, at the home of Emile de La Tour Saint Ygest, who was living alone at the time in the house of his illegitimate father, French-Danish painter Émile Théodore Frandsen.

During this stay. Emile de La Tour Saint Ygest gave La Jeune Fille au Bouquet to Eric Clapton, who used it on the cover of his Layla and Other Assorted Love Songs album, published by Polydor. 
The painting was thus featured for more than 40 years without any issues. In November 2009 Polydor published a collector’s box featuring the original cover of Layla to celebrate the 40th anniversary of the album.

The box featured a ‘Pop-up 3D Artwork,' a 3-D representation of La Jeune Fille au Bouquet as a folding cardboard. The box also featured an 'art guitar scratch-plate sticker,' a sticker reproducing the painting which could be put on a guitar, and also the reproduction of the cover on cardboard in the shape and format of a LP.  

Monique Frandsen de Schomberg, a legitimate daughter of the painter, filed a copyright infringement suit in 2013 in Paris, claiming that the use of the painting on the cover of the album and on the box infringed her father’s patrimonial and moral rights.

This original complaint did not prosper as the court ruled it to be invalid because the authorization of all of Mr. Frandsen’s heirs had not been secured. Monique Frandsen de Schomberg then filed another complaint, claiming only violation of moral rights.

The court of first instance, the Tribunal de Grande Instance de Paris, ruled in her favor in January 2016. Defendants Eric Clapton and Polydor appealed. The Paris Court of Appeals confirmed the judgment in March 2017.

Two moral rights: the right of integrity and the right to first publish

Article L 121-1 of the French Intellectual Property Code provides a perpetual and inalienable moral right to the author of the work:

An author shall enjoy the right to respect for his name, his authorship and his work. This right shall attach to his person. It shall be perpetual, inalienable and imprescriptible. It may be transmitted mortis causa to the heirs of the author. Exercise may be conferred on another person under the provisions of a will.” (A complete, but not updated translation of the French Intellectual Property Code is available on this page).

Monique Frandsen de Schomberg argued on appeal and at the Cour de cassation that defendants had violated the right of the author to first publish the work (droit de divulgation) and also that they had denatured the work.

Moral Right: right of integrity

The Court of appeals had not found that the use of the painting on the original album cover was a violation of moral rights, because the painting had not been truncated or otherwise altered, and the signature of the painter was clearly featured.

The Cour de cassation confirmed this reasoning, as the work had been used to illustrate the cover of the album, but not as advertising.

The Court of appeals had found however that the use of the painting on the cover in the collector’s box violated the moral right of the author as it distorted the work (dénaturer l’oeuvre.)

It is worth noting that the Court of appeals took the view that its jurisdiction in this case did not extend beyond the French borders, as none of the Defendants were established in France. Therefore, it could only award damages as they had occurred in France. Polydor had sold, from 2009 to 2005, 7,407 Layla albums and collector boxes  The Court of Appeals approved the Court of first instance for having granted 15,000 euros to the plaintiff in damages.

Moral Right: right to publish the work

The Paris Court of Appeals had also ruled that, because the right to first publish the work is exhausted when first exercised, and it had been, in this case, when given to Eric Clapton in 1970.  

The Cour de cassation disagreed on this point, and sent the case back to the Versailles court of appeals on remand.

France’s highest Court cited article L11-3 of the French Intellectual Property Code, stating that owning a protected work does not grant the intellectual property rights assigned to its author, and article L121-2 of the same Code, which gives to the author the exclusive right to publish her work.

For the Cour de cassation, giving the “material support of the work” (support matériel de l'œuvre) to a third party is not enough to establish that the author or his heir has exercised the exclusive right to publish the work. The Court concluded that therefore the Court of appeals had erred when ruling that the right to first publish the work had been exhausted in 1970.

Monique Frandsen de Schomberg had argued in front of the Cour de cassation that Emile de La Tour Saint Ygest had not been recognized by Emile Frandsen, that he was not his heir, as the estate had been devolved exclusively to her brother and herself, and that therefore handing over the painting to Eric Clapton was not publishing the work.

The Versailles Court of appeals will now have to decide whether this right has indeed been exercised by the author or his heirs. It is likely to spur a legal fight over whether plaintiff truly has the right to defend Frandsen‘s moral rights.

Friday, 14 December 2018

THE COPYKAT is dancing and singing at the copyright hop

The Board of CISAC (the International Confederation of Societies of Authors and Composers) has decided to implement its sanctions process against SGAE, which could result in the Spanish collection society’s expulsion. SGAE (Sociedad General de Autores y Editores) has been repeatedly in the news since June 2017, when police raided its offices in search of documentation relating to an alleged scam dubbed ‘the Wheel’ (‘la Rueda’), in which a small number of SGAE members and TV execs allegedly conspired to create “low-quality music” – often reworked versions of songs in the public domain – then broadcast on late-night TV, generating performance royalties collected by SGAE. In a 65-page report published in May, CISAC found “serious concerns” relating to “distorted and inequitable distribution of royalties” at SGAE, and ordered the society to overhaul the way it does business. In July, four major music publishers - Warner/Chappell, Sony/ATV, Universal Music Publishing and BMG along with Peermusic, wrote to the society requesting to pull their international catalogues.

Rapper 2 Milly has filed a US copyright infringement and right of publicity lawsuit against the makers of the Fortnite video game claiming that they are violating his rights to a dance move that he created in the very popular video game. The Brooklyn-based rapper, whose real name is Terrence Ferguson, alleges that Fortnite-maker Epic Games is misappropriating his dance moves without permission, compensation, or credit. The dance move at the centre of the controversy was featured in 2 Milly’s 2014 music video for 'Milly Rock' and is "a simple, two-step dance in which the arms circle while the hips swing from side to side".The video for the song had widespread attention, and many other celebrities including Rihanna, Chris Brown, and Wiz Khalifa posted videos on social media of themselves performing the dance. “I don’t feel it’s appropriate that my art (dance), which is a big part of culture, is basically stolen," 2 Milly told the video game news site Kotaku. "The appropriate thing to do is compensate me with a fair amount for my addition to the game.” More on Lexology here and Wired hereThe dance is here

According to China.org.cn, Blockchain technology will be integral to protecting works circulating online - and evidence based on blockchain will be able to be used as evidence in courts in China if necessary. Previously, writers had to rely on screenshots and downloaded content as evidence. Wang Jiangqiao, a judge at the Hangzhou Internet Court said  that the court “behave[s] as an ‘incubator’ for Internet space governance, a ‘test field’ for Internet judicial rules, a ‘leader’ for diversified Internet disputes, and a ‘first mover’ for the transformation of Internet trials” with China having “set up three Internet courts in Hangzhou, Beijing and Guangzhou.” The Internet Courts are considered a normal court with the only difference being that it only handles cases relating to the internet. Additionally, it allows cases to be filed through the internet.

Too busy licking his paws after a delicious lunch, the CopyKat almost missed this (well spotted CMU Daily) The European Commission has published its first Counterfeit And Piracy Watch List, which aims to highlight all those naughty boys and girls out there in the  ether who have their wicked cyberlockers, stream-ripping sites, P2P services, unlicensed download stores and illegal streaming sites - and which looks suspiciously like the the existing US Notorious Markets list, which is published annually. Its not a copy as its got a different name so that's OK then. 

The 'Blurred Lines' saga has drawn to a close after the deadline passed for Pharrell Williams and Robin Thicke to take the case to US Supreme Court. With the 9th Court of Appeal having declined to re-hear the case 'en-banc' that seems to be it to the case that saw a victory for the Marvin Gaye Estate who will now be paid some $5 million in damages for the somewhat jury decision that found the infringement of Gaye's 'Got to Give It Up'  and the Estate will also receive 50% of any future royalties generated by the song.

Advocate General Maciej Szpunar has issued an opinion for the European Union's Court Of Justice in long running legal battle between Kraftwerk and rapper Moses Pelham that concludes that using a two second sample of a sound recording without permission does indeed constitute copyright infringement. Kraftwerk's Ralf Hutter sued Pelham in the early 2000s over a 1990s track that the latter had made with the rapper Sabrina Setlur called 'Nur Mir' which used a short sample from Kraftwerk's track 'Metal On Metal' on a loop. Germany's Federal Court found for Kraftwerk, in part on the basis that Pelham could have easily recreated the sound he sampled but  four years later the German Constitutional Court overturned that judgement, finding that Pelham's "artistic freedom". outweighed Kraftwerk's copyright claim. As each sound recording is fixed in a particular form - there seems to be no room for manoeuvre for samplers - although of course they can always make their own sound recording. In the UDS the rule seemed clear for a while - if you want to sample a sound recording - how ever briefly - get a licence. This has been watered down of late but Szpunar has taken a hardline approach more consistent with the US 2004 case of  Westbound Records and Bridgeport Music v No Limit Films and Szpunar writes: "Artists must be particularly aware of the limits and restrictions that life imposes on creative freedom where they concern the rights and fundamental freedoms of others, in particular their right to property, including intellectual property. In such cases, the balancing of different rights and interests is a particularly complex exercise and there is rarely a 'one size fits all' solution". He adds "That balancing exercise must, in a democratic society, be undertaken first of all by the legislature, which embodies the general interest". The nub of it this:  "taking an extract of a phonogram for the purpose of using it in another phonogram (sampling) infringes the exclusive right of the producer of the first phonogram", and that "the exclusive right of phonogram producers ... to authorise or prohibit reproduction, in part, of their phonogram in the event of its use for sampling purposes is not contrary to the freedom of the arts as enshrined in article thirteen of the Charter Of Fundamental Rights Of The European Union".

And finally - it's back to the planned reforms to EU Copyright law and in particular that pesky Article 13 which if implemented as it stands would mean user upload platforms might be liable for infringements by their users in a change to safe harbour provisions. Notably YouTube and Google are up in arms about this. Now in the trilogue phase between the  EU Council, European Parliament and the European Commission, it seems the tech sectors constant lobbying might have paid off not least as the proposed final draft of the new European Copyright Directive has failed to find agreement, with each of the three constituents having it's own version - with the European Parliament's closest to what Google wants  and the Commission offering a compromise - and so this will now be pushed back into January 2019. A consortium of companies and trade groups speaking for the copyright industries has now published an open letter expressing concerns about any Article 13 compromise saying "As we reach the very final stages of this process, and negotiators seek to finalise a compromise text, we urge you to remember that the overall aim of the original European Commission proposal was to correct the distortion of the digital market place caused by user-upload content services, which enable users to upload content onto their sites and then profit from the availability of creative content without returning fair revenues to rightsholders, who create and invest in such content" and that only the safe harbour restrictions outlined in existing drafts of the directive will "meaningfully address" this issue. In the US, America's Computer & Communications Industry Association has taken u the tech sectors baton when responding to a call for submissions by the US Trade Representative on the latest round of talks about a possible trade agreement between the US and the EU,  again criticising Article 13 saying "The proposed copyright directive disrupts settled law protecting [internet] intermediaries by weakening established protections ... and by imposing an unworkable filtering mandate on hosting providers that would require automated 'notice-and-stay-down' for a wide variety of copyrighted works. If adopted, the directive would dramatically weaken these long-standing liability protections which suggests that most modern service providers may be ineligible for its protections".

Thursday, 13 December 2018

Tara Reid Files a Right of Publicity Suit Over Use of Likeness on Beer Cans and Slot Machines

Actress Tara Reid has filed a right of publicity suit in the Central District Court of California. The case is Reid v. Asylum Entertainment, LLC (2:18-cv-10171).

The actress is seeking preliminary and permanent injunctive relief and damages as she alleges that Defendants Asylym and SyFy Media have misappropriated her likeness and image for commercial purpose without her consent by licensing the rights to use the actress’s likeness to manufacturers of slot machines, gambling products, and beer makers.

Tara Reid starred in the Sharknado series which was broadcast in the U.S. on the SyFy channel. Sharknado 1 led to Sharknado 2, 3, 4, 5, and, recently, 6, which you can all watch to see if reindeer sharks really know how to fly. The series has a cult following. I guess you can say it jumped the shark from the beginning. 
Defendant Aristocrat manufactures Sharknado slot machines and video gambling products (see one of such machines in action here). The likeness of Tara Reid is used in the play, as you may see in the first seconds (mercifully) of this video. Tara Reid also alleges that Defendants Asylum and Syfy entered into marketing and/or licensing agreements with a British brewer to produce Sharknado beer. The actress appears in her Sharknado character on some cans. 
According to the complaint, Tara Reid had not authorized these uses of her likeness, as her contracts expressly requested her written consent should her likeness be used on products associated with alcohol, tobacco, gambling, hygiene and sexuality.

Section 43(a) claim, false endorsement

The actress claims that Defendants have thus breached her right under Section 43(a) of the Lanham Act, the U.S. Trademark Act, which forbids false endorsement and misappropriation of likeness. She argues that use of her likeness on the slot machines and beer cans is deceptive and likely to cause consumer confusion as to the sponsorship or affiliation between those products and herself, who did not and would not endorse such products. 

California common law claim

The actress also alleges that this use of her likeness breaches California common law on wrongful appropriation of likeness and she alleges “that the wrongful appropriation of her likeness and identity was intentional and with the objective of exploiting herAs such, the actions of the Defendants were malicious and oppressive and justify an award of punitive and exemplary damages in an amount sufficiently large to set a public example of deterrence, and in an amount no less than $100,000,000.00.”

California statutory claim

Tara Reid also claims that Defendant’s actions breached California common law of unfair competition, and California statutory right of publicity, section 3344 of California civil Code, and claims she is entitled, under that law, to recover all profits realized by Defendants” in an amount that will be shown at time of trial together with attorney fees, and punitive damages, in an amount sufficiently large to set a public example of deterrence and in an amount no less than $100,000,000.00.”

The contracts

Plaintiff also claim Defendants breached their contractual obligations. Tara Reid had entered into an agreement with Defendants in 2016 to act in the 5th Sharknado movie. Paragraph 11 of the agreement gave producers the right to use Tara Reid’s likeness in merchandise, albeit “in-character” only, but also provided that “… in no event shall Performer’s likeness be used for any merchandising in association with alcohol, tobacco, gambling, hygiene, or sexual products without Performer’s prior written approval.” Tara Reid alleges that she never approved the use of her likeness on the Sharknado slot machines, nor did Defendants ever request such approval.

Tara Reid entered into a similar agreement in January 2018 to act in the 6th Sharknado movie, which she argues is voidable as one of the parties allegedly did not have the capacity to enter into the agreement. This issue aside, the January 2018 agreement had a Paragraph 11 similar to Paragraph 11 in the 2016 agreement.

 A morality clause

Attorneys negotiating right of publicity contracts and performer’s contracts should keep such “morality” clauses in mind.

The California Court of appeals for the 4th District explained in Miller v. Collectors Universe that a plaintiff in a statutory right of publicity case had suffered a type of harm which section 3344(a)'s minimum statutory damages were intended to remedy. This harm  was described by the court as “the alleged injury to his mental feelings and peace of mind.”

The Court further explained that “misappropriation [of likeness] has two aspects: (1) the right of publicity protecting the commercial value of celebrities' names and likenesses, and (2) the appropriation of the name and likeness that brings injury to the feelings, that concerns one's own peace of mind, and that is mental and subjective."

So California law recognizes a sort of “moral right” in one’s likeness…

$100,000,000.00 in damages?

In our case, Tara Reid could very well be able to prove that the use of her likeness on cans of bear and gambling machines injured her feelings. Is it $100,000,000.00 worth of feelings? We may never know, as the parties are likely to settle out of court.

Friday, 7 December 2018

THE COPYKAT backs Schrödinger's cat

Some strong words in a letter from Lord Michael Grade on YouTube's position on Article 13 and EU copyright law reform in the Financial Times, with a touch of Brexit to spice it all up. Noting that creativity is something Britain does particularly well at, "and, with the uncertainties of Brexit ahead, is of greater importance as a growing sector of our economy" Lord Grade comments, adding "After years of scrutiny the European Commission, Council and Parliament have concluded YouTube must take some responsibility for the content it publishes. The platform remains in denial, abetted by those who join in its scaremongering" and "The EU is at a crucial stage of considering measures that will end this injustice. The present, and the future is online. Rules need to apply. Netflix pays for its content, why shouldn’t YouTube? If you want to run a TV channel or a music service, then you need to pay for the content you use — content other people have financed. Reform will end this freeloading and level the playing field, which has to be good news for consumers too."

If you want to know what YouTube and Google think - there is a Google sponsored piece on politco.eu here titled "EU’s copyright directive and its unintended consequences" written by 'YouTube for Creators".  Others from the tech world working up are fury (or perhaps 'in denial' or even  'scaremongering' ?) are Gizmodo "Tech Giants Wake Up to EU Copyright Plan That Threatens to Nuke the Web" and BoingBoing which goes with "Poland rejects the EU's copyright censorship plans, calls it #ACTA2" whilst Twitch has sent a letter to the Twitch creators' community

The Australian Government has also rejected loud appeals from the tech community and the tech giants who argue that proposed reforms to copyright law will diminish the internet's primary role as a communications tool and allow corporate interests to 'censor' the internet to the detriment of the common citizen, with TechDirt saying the new system would be 'begging for abuse'. What's all the fus about? Updating its copyright law from one which provides for site-blocking of infringing sites with judicial oversight to one which does website site-blocking of infringing sites, and mirror-blocking without judicial oversight, search results blocking, and expands the definition of the types of sites to be blocked from those with the primary "purpose" of infringement to those with the primary "effect" of infringement: The Australian Parliament passed the new law to beef up web-blocking rules as part of the The Copyright Amendment (Online Infringement) Act 2018 which was passed by the House Of Representatives last month and now by the Senate. The Federal Senate’s Environment and Communications Legislation Committee commented  “The Committee is of the view that the amendments proposed by the bill are likely to improve the operation of the injunctive scheme in section 115A [of the Act], and represent a measured and proportionate response to concerns identified by stakeholders in relation to the operation of that scheme” and “In this respect, the committee also notes that the majority of submissions received by the committee supported the bill and recommended that it be passed unamended.” Welcoming the passing of the amendments, Australia's Minister For Communications, Mitch Fifield said "The government has zero tolerance for online piracy. It is theft and damaging to our creative economy and local creators. We are committed to protecting Australia's creative industries and the world-class content we produce every year. The passage of our legislation today sends a strong message to online pirates that Australia does not tolerate online theft".

Banksy may have pulled off the art world's 'stunt' of the decade at Sotheby's in October when one of his paintings, which had just sold for £1.4 million in October, self shredded as soon as the hammer went down, but now his own YouTube post on the prank have also been 'shredded' - this time it seems by French media giant Canal+ who have successfully argued that the footage of the stunt is theirs, and asked YouTube to remove the original, which it did: "Video unavailable This video contains content from Canal Plus, who has blocked it on copyright grounds,” a message now reads instead.

CMU Daily reports that the estate of late Pantera guitarist ‘Dimebag’ Darrell Abbott has fought off a copyright infringement lawsuit over the sale of replicas of his signature guitar, which features a distinctive lightning bolt design (known as the 'Dean From Hell'). The  US judge in the case has told designer Buddy ‘Blaze’ Webster, who created the artwork in the 1980s, that the time period for him to bring his case to court had now (long) passed. Webster had said that the delay was due to stalled negotiations with Dean Guitars and that he had waited to file his case out of respect for the musician’s mourning family, as well as personal issues of his own. Whilst the judge said that some of these reasons were “admirable”, they did not warrant allowing the delayed case to proceed.

The British artist Anish Kapoor released a statement declaring “victory over the NRA,” in reference to his months-long battle with the National Rifle Association over the organisation’s unauthorised use of an image of his bean-shaped reflective sculpture Cloud Gate (2006) in Chicago’s Millennium Park. Kapoor’s said the NRA has complied with his demands to remove the image from what he called its “abhorrent video” The Violence of Lies, which attacks the mainstream media with inflammatory rhetoric as images (including one of Cloud Gate) flash across the screen. “Their bullying and intimidation [have] not succeeded,” Kapoor’s statement reads. “This is a victory not just in defence of the copyright of my work, but it is also a declaration that we stand with those who oppose gun violence in America and elsewhere.” More on Art News here.

Core copyright industries have contributed more than $1.3 trillion to US gross domestic product (GDP) in 2017, and accounted for 6.85% of the US economy. They employed nearly 5.7 million workers in 2017, accounting for 3.85% of the entire US workforce, or 4.54% of total private employment in the United States, according to the International Intellectual Property Alliance (IIPA)’s “Copyright Industries in the U.S. Economy: The 2018 Report - which is available but only for subscribers to IP-Watch. More details here

And finally, an entertaining article on rabble.ca titled "The Schrödinger's cat of copyright: What's an 'orphan work'?" written from a Canadian perspective, and well worth a read. 

Thursday, 29 November 2018

Big Freedia, Bouncing, and Copyright

Freddie Ross, Jr., aka Big Freedia, aka the Queen of Bounce, filed a copyright infringement suit last week against Wilberto Dejarnetti in the Eastern District court of Louisiana. The case is Ross v. Dejarnetti, 2:18-cv-11277
According to the complaint, Plaintiff met Defendant in 2014 and hired him to help with staging and choreographing Plaintiff’s performances. Plaintiff and his dancers worked with Defendant to create new stage choreography for several songs, including “Shake Session Medley” “Explode,” and “Best Beeleevah” (the Choreographic Works).

Plaintiff stopped working with Defendant in late 2017. Defendant then asked Plaintiff to credit him as a co-author and producer of several songs (the Musical Works), and also to pay him a monthly fee of $500 to use the Choreographic Works.

Failure to find an amicable solution led to the filing of this copyright infringement suit.

Joint authorship

Plaintiff is seeking a declaration from the court of his rights in the musical Works, arguing that Defendant’s “mere presence in the recording studio during the creation of the Musical Works is not sufficient to confer authorship rights,” that he had not made “any copyrightable contributions to the Musical Works and [that] the true creators of the Musical Works never intended [Defendant] to be a joint author.

As we do not know yet what Defendant’s arguments are, it is difficult to comment beyond an explanation of what is joint authorship under U.S. copyright law.

Section 201(a) of the Copyright Act explains that the authors of a joint work co-own the copyright in the work and Section 101 of the Copyright Act defines a joint work as “a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.”

So the crux of the issue is whether Plaintiff and Defendant’s contributions intended their participation in creating the songs to be merged into a whole.

If the two parties are indeed joint authors, then either of them needs the permission of the other to exploit the work, unless they would have agreed differently in writing. However, the written consent of all the joint authors is needed when granting an exclusive license.

In our case, Big Freedia is arguing that Defendant did not make any copyrightable contributions to the songs. He could well have made some contributions, but the argument is that theywere not original enough to be protected by copyright. Indeed, mere ideas and concepts are not copyrightable, and this argument is often used when denying joint authorship.

Authorship is generally a question of fact for the jury, but the parties will probably settle before that phase of the trial and so we may never know.

Copyright and choreographic works

Plaintiff states however that Plaintiff and Defendant are joint authors of the Choreographic Works, as their respective contributions “were merged into inseparable or interdependent parts of a unitary whole.

Choreographic works can be protected by copyright if they are fixed, for instance, by a video recording, or by a written and precise notation. But the choreography must be original enough to be protected. It is surprising that Plaintiff states in the complaint that the Choreographic Works “were largely based on and derivative of traditional “bounce” dance movements and other routines [Plaintiff] and his dancers had been employing for years.” Plaintiff seems thus to deny the moves were original enough to be protected by copyright…

The complaint alleges that Defendant is asking Plaintiff to stop using the Choreographic Works claiming that he is their sole author. Plaintiff is asking the court to find that they are jointly authors, or, alternatively, to rule that Plaintiff can use these choreographies without compensation through an implied license.

An implied license can be granted without knowledge. For instance, the Ninth Circuit explained in Effects Associates, Inc. v. Cohen that a plaintiff which had “created a work at defendant's request and handed it over, intending that defendant copy and distribute it had thus impliedly granted nonexclusive licenses to [the defendant].” In Hunn v. Dan Wilson Homes, Inc, the Fifth Circuit Court of Appeals found that Plaintiff in a copyright infringement suit had created an implied nonexclusive license when he had delivered, through his agent, the plans for the four custom homes without any "written or orally communicated restrictions about limits on [Defendant’s] ability to use the delivered drawings."

This case is yet another example of why it is good practice for an artist to sign agreements with every single person who is collaborating with him or her.

Tuesday, 27 November 2018


Internet service provider Cox Communications efforts to move the copyright infringement case it is facing from the American recorded music sector looks like it has failed after the judge in the case published a written statement explaining why he has resisted the shift. The case was filed in the Virginian court that had already heard the partially successful case brought by BMG Rights Management against Cox: BMG argued that Cox should be held liable for the copyright infringement of its customers, because it only paid lip service to its obligations under the Digital Millennium Copyright Act to be able to benefit from safe harbour protection. BMG prevailed at first instance and and whilst that ruling was set aside on appeal many felt the comments of the appellate court were more than useful to rights owners. Cox subsequently settled with BMG. Judge Liam O'Grady has declined to give the case up saying that it makes sense to hear the new action in the court where the BMG dispute was argued out, as many of the issues will be the same saying "Although defendants claim this court's ruling on the DMCA's safe harbour provision will not be relevant to this case, this court's prior ruling will at the very least touch on the issues presented here. The considerable judicial resources this court expended on reaching this ruling on an issue of first impression - a ruling that was upheld by the [appeals court] - cannot be ignored".  The 4th Circuit Court of Appeal said that the DMCA provides a degree of protection to ISPS and other platforms that respond expeditiously to takedown requests. But one of the requirements is that the ISP and other intermediaries to have "adopted and reasonably implemented … a policy that provides for the termination in appropriate circumstances of subscribers … who are repeat infringers" abd Cox wasn't entitled to rely on safe harbor because it did very little if anything even when told about repeat offenders.

Internet services company Cloudflare is also on the receiving end of another lawsuit in the US which could again test the liabilities of the net firm when it provides services to piracy websites - this suit from wedding dress makers Mon Cheri Bridals and Maggie Sottero Designs who are suing the net firm for contributory infringement because it allegedly provides services to websites based out of China that sell copies of the two companies' bridal wear to customers back in the US - and which uses pictures from the plaintiff's own websites to promote the counterfeit copies. The Recording Industry Association of America had previously accused Cloudflare of contributory copyright infringement and in a submission to a US government report on piracy, the RIAA states that: "[Piracy] sites are increasingly turning to Cloudflare, because routing their site through Cloudflare obfuscates the IP address of the actual hosting provider, masking the location of the site".

Universal Music has taken legal action over podcasts published by a global website for poker fans - PokerNews - which they say infringes their copyrights by including tracks controlled by the major label without permission. The major has sued PokerNews owner iBus Media (actually incorporated in the Isle of Man, a self-governing British Crown dependency in the Irish Sea between Great Britain and Ireland) for wilful copyright infringement in the Californian courts. The lawsuit states that: "Among the content made available by iBus Media on PokerNews, and through other forums, are hundreds of podcasts that intentionally incorporate significant portions of plaintiffs' copyrighted musical works". On the Pokernews website it does say “All Content published by PokerNews on the Site (apart from User-submitted Content), including, without limitation, images, photographs, graphics, animations, videos, audio and text . . . are owned by PokerNews and/or its licensors and is protected by copyright and other intellectual property or other proprietary rights.”  UMG clearly disagrees!

New Zealand's Minister of Commerce and Consumer Affairs Hon Kris Faafoi, has released an issues paper marking the first stage of public consultation on changes to the Copyright Act 1994, saying all Kiwis should consider taking part. “Copyright affects all New Zealanders. We create copyright works when we take a photograph, record a video, or write an email, and we use copyright works by watching a sports broadcast, streaming a movie, listening to music, or reading a book,” says the minister.

A group of Satanists who sued Netflix and Warner Bros for $50 million (£38 million) in a copyright row over the TV drama series Sabrina have "amicably" settled the lawsuit. The Satanic Temple claimed the entertainment giants copied its depiction of goat-headed deity Baphomet in The Chilling Adventures Of Sabrina. The only publicly released terms was that "The unique elements of the Satanic Temple's Baphomet statue have been acknowledged in the credits of episodes which have already been filmed."

MBW reports that  YouTube’s Global Head of Music, Lyor Cohen has called the implications of 'Article 13' into question within a monthly newsletter sent to a large group of industry executives as YouTube and Google continue to fight back against the planned copyright reforms in the EU. Cohen warned of what he sees as dangers surrounding the passage of the new European Copyright Directive – including provision Article 13, which would see platforms like YouTube become legally liable for copyright-infringing content uploaded by its users saying "“we believe that the current proposal will create severe unintended consequences for the whole industry. We still have a couple of weeks to work together towards a better final version of the law concluding that songwriters and recording artists might earn LESS money in the future if the reforms are implemented without change. In reply five major European music-industry trade organisations including the IFPI, the  ECSA  and IMPALA  fired off a strongly worded collective response titled “YouTube’s Fact Free Fear-Mongering" saying "“YouTube’s campaign against Article 13 of the Copyright Directive shows a lack of respect for the EU democratic process of law making ....[T]he revisions to the Directive have been under discussion for over four years already and the three main institutions of the European Union have all given their position. The Commission, Council and Parliament have all reached the same conclusion, that there is a value gap, also referred to as a transfer of value, where user upload services are making vast sums of money on creators’ content uploaded by their users, but not paying the right holders who own that content fairly. The result is a serious distortion in the European digital market place which harms right holders, other digital services and citizens. To correct that situation, platforms like YouTube should have to take responsibility for the content they use and monetize, by fairly remunerating their creators and right holders."  

One thing to add would be that even if YouTube were paying over a 'fair share' to the recorded music sector - are they in turn paying over a 'fair' share to the actual creators - the recording artistes? Many would say they receive a pittance and a tiny tiny share of digital revenues and little improvement has been made. Much still to think about! And does 'Big Content' need YouTube more than YouTube needs Big Content? More on this and the EU reforms from a BoingBoing perspective here .

A judge in the U.S. has issued a somewhat scathing opinion in connection with the activities of an alleged 'copyright troll'. In response to an early discovery request by Strike 3 Holdings, Judge Royce C. Lamberth describes the plaintiff as a "cut-and-paste" serial litigant whose lawsuits "smack of extortion". The company runs away at the first sign of a defense, he added, while noting his court is being used "as an ATM". TorrentFreak says that Strike 3 Holdings is one of the most active copyright trolls in the United States, filing more than 1,800 copyright infringement cases in the past 13 months. “Its feigned desire for legal process masks what it really seeks: for the Court to oversee this high-tech shakedown. This Court declines,” the Judge concludes.

AND finally....If you watch YouTube videos without a YouTube Premium subscription, you might have seen a recent pop up advert warning about article 13! And not to be left out of a strong reaction to the planned reforms,  and specifically Article 11, Google is threatening to (possibly) shut down Google News once news aggregators were subject to the 'link tax'.

Thursday, 15 November 2018

A tasty decision for cheese lovers

The CJEU has  rejected a controversial attempt to use copyright law to protect the distinct taste of a food product, in this case a Dutch cheese. The court explained that taste is too subjective to allow a work to be uniquely identified, even using science, and so cannot be protected.

The Court of Justice concurred with the Advocate General's opinion that an artistic work must be capable of being seen and heard. It's the first time the court has been asked to decide whether copyright applies to taste on an artistic work not defined by the InfoSec Directive (Directive 2001/29/EC)

The case was originally filed in the Dutch courts by the owner of the cream cheese brand Heks'nkaas (witches' cheese), Levola Hengelo. Their product is a spreadable cheese with herbs. It objected to a cream cheese, made by rival manufacturer Smilde Foods since 2014 called "Witte Wievenkaas" (wise-women's cheese), which it claimed "infringed" the flavour of Heks'nkaas. Smilde’s herbed cheese dip contains many of the same ingredients. Witte Wievenkaas is now sold under the name Wilde Wietze Dip.

Levola argued that the taste of food, like literary, scientific or artistic works, could be copyrighted, citing the 2006 case involving Lancôme, the cosmetics company, that had accepted in principle that the scent of a perfume could be eligible for copyright protection. Smilde responded that taste is subjective.

The case went on to the appellate court in Arnhem-Leeuwarden which in turn referred the matter to the CJEU for a preliminary ruling.

The upshot of this is the CJEU have found that the taste of a food product is not eligible for copyright protection and the taste of a food product cannot be classified as a ‘work’. In the judgment the Court makes clear that in order to be protected by copyright under the Directive, the taste of a food product must be capable of being classified as a ‘work’ within the meaning of the Directive. Classification as a ‘work’ requires (a) that the subject matter concerned is an original intellectual creation and(b) there must be an ‘expression’ of that original intellectual creation.

In accordance with the Agreement on Trade-Related Aspects of Intellectual Property Rights, which was adopted in the framework of the World Trade Organisation and to which the EU has acceded and with the WIPO Copyright Treaty to which the EU is a party, copyright protection may be granted to expressions, but not to ideas, procedures, methods of operation or mathematical concepts as such. Accordingly, for there to be a ‘work’ as referred to in the Directive, the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity.

In that regard, the Court found that the taste of a food product cannot be identified with precision and objectivity (unlike say a literary, pictorial, cinematographic or musical work, which is a precise and objective expression).: the taste of a food product will be identified essentially on the basis of taste sensations and experiences, which are subjective and variable. They depend on, amongst other things, factors particular to the person tasting the product concerned, such as age, food preferences and consumption habits, as well as on the environment or context in which the product is consumed.

Moreover, it is not possible in the current state of scientific development to achieve by technical means a precise and objective identification of the taste of a food product which enables it to be distinguished from the taste of other products of the same kind.

Accordingly, the Court concludes that the taste of a food product cannot be classified as a ‘work’ and consequently is not eligible for copyright protection under the Directive.

C-310/17 Levola Hengelo BV v Smilde Foods BV



Readers might want to compare this decision with the European Court of Justice's decision in  which held that a sound can be registered as a trade mark if it is capable of being represented graphically in a clear and easily accessible way - Shield Mark BV v Joost Kist h.o.d.n. Memex (2003). In Sieckmann the ECJ (on appeal from the German Trademark authority) held that a smell could not be registered either by registering the formulae or depositing a sample. The Sieckmann Criteria, a seven part test that goes some way to explaining the ECJ's then reasoning on what might be needed to secure protection and the use of words such as 'clear', 'precise', 'self-contained', 'easily accessible', 'intelligible', 'durable' and 'consistent' - and tested on an objective basis.

Tuesday, 13 November 2018

Looking Further Under the Airbrushed Hoodie

You may have read on this blog a few weeks ago that Balenciaga America is being sued in the Southern District of New York for having allegedly copied the designs of a New York souvenir manufacturer.

Defendant, Balenciaga USA, had allegedly featured Plaintiff’s designs, a stylized New York City skyline, on a hoodie, a tote bag, pouches and skirts. These luxury models had been designed and produced in France by Balenciaga for its 2017 ‘Balenciaga NYC Tourist Collection,’ whereas Plaintiff’s goods are sold in souvenir shops and airports around New York. 

The case is following its course, and Balenciaga America moved last month to oppose Plaintiff’s motion for a preliminary injunction and an order of seizure. Plaintiff claims that Balenciaga America will be transferring the allegedly infringing merchandise out of the United States and has requested an injunction from the court.

The French fashion house detailed its arguments in a memorandum filed on October 18. It claims that it is holding the 36 products at stake in inventory in the U.S., with no intention to export them, and that the preliminary motion is thus unnecessary. It then goes on presenting its defense to the copyright infringement claim.

The legal standard for preliminary injunction

Section 502 of the Copyright Act gives courts the power to grant temporary and final injunctions in copyright infringement suits.

Before the eBay v. MercExchange Supreme Court patent case in 2006, plaintiffs did not have to show irreparable harm to be awarded injunctive relief, but only needed to establish the likelihood of success of the lawsuit. That changed after eBay v. MercExchange, as the Supreme Court held that a Plaintiff seeking a permanent injunction must show he has suffered an irreparable injury. The Supreme Court further explained in Winter v. Natural Resources Defense Council, Inc. that a plaintiff seeking a preliminary injunction must establish: (1) that he is likely to succeed on the merits; (2) that he is likely to suffer irreparable harm in the absence of preliminary relief; (3) that the balance of equities tip in his favors, and (4) that an injunction is in the public interest.

Plaintiff claims that transferring the products at stake outside of the country would make it more difficult to recover damages for illegal overseas sales. Defendant claims Plaintiff has not showed irreparable harm, and it was merely the importer of the goods in the U.S.  

Defendant quotes Music Sales Ltd. V. Charles Dumont & Son, a 2009 case from the District Court of New Jersey to posit that exporting goods to the U.S. is not infringement under the Copyright Act, unless a predicate act has occurred in the U.S. that is itself infringement under the Copyright Act. Defendant also cited a Second Circuit case, Update Art Inc. v. Modiin Publ’g Ltd., where the court noted that it is “well established that copyright laws generally do not have extraterritorial application.”

Plaintiff does not quote the next phrase in Update Art, which states the exception to the rule, ”when the type of infringement permits further reproduction abroad — such as the unauthorized manufacture of copyrighted material in the United States.” This does not appear, however, to be the case here, as the allegedly infringing designs have been originally designed and produced in France. Selling them in the U.S. does facilitate further reproduction abroad, especially since Defendant wisely pulled these products from the stores.

The copyright infringement defenses

Balenciaga America claims that Plaintiff’s original design is a mere “collage of some of the most well-known landmarks in the New York City skyline” and are not protected by copyright.

These “unprotectible elements” are arranged in a different way than the way they have been arranged by Plaintiff. Balenciaga admits that there may be some similarity in the “look and feel “of both works, but that is because they are both done “in a style that has long been associated with hot rods, graffiti art, and hip hop, a style that is decidedly not original to Plaintiff.” Indeed, hot rod cars are often airbrushed, and both designs mimic this technique. 

As the works at stake contain both protectable and non-protectable elements, Defendant argue that the court must not use the “ordinary observer test,”used by the Second Circuit courts to assess copyright infringement, which asks “whether the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal the same,” but the “discerning ordinary observer test.” This test dos not call for “a piecemeal comparison of each of the protectible elements with its putative imitation, but rather a careful assessment of the "total concept and feel" of the works at issue, after the non-protectible elements have been eliminated from consideration,Silberstein v. Fox Entertainment Group, Inc.

Defendant argues that both style of the designs are similar only as they “both pay homage to hot rod and graffiti-style airbrushed styles, which belongs to no one (and everyone).” This argument is a bit farfetched, as validating it would mean that no graffiti artists can claim copyright protection for his or her work as the style belongs to no one.

For Defendants, the New York City landmarks must necessarily be used to evoke the city’s skyline and are thus scènes à faire, as “[d]epictions of New York City landmarks and the words “New York City” are stock images and phrases standard in tourist souvenirs.”

Defendant claimed that it arranged these unprotectible elements in a different way than Plaintiff did in its own works, and that when these elements are filtered out the only copyrightable element left is the arrangement of the building, which is different in Plaintiff’s works and Defendant’s works.  

Plaintiff argued in its reply that Balenciaga “had offered no evidence of unoriginality,” quoting Yurman Design Inc. v. PAJ Inc., where the Second Circuit wrote that "[c]opyright law may protect a combination of elements that are unoriginal in themselves.”

Indeed, as explained by the Supreme Court in Feist, “[f]actual compilations… may possess the requisite originality [to be protected by copyright]. The compilation author typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original [to be protected by copyright].”

 Fair use

The first of the four fair use factors of Section 107 of the Copyright Act, the purpose and the character of the use, focuses on whether the use is transformative.

Balenciaga America claims that the designs are transformative, as they offer “as subversive, tongue-in-cheek commentary on fusty notions of propriety in fashion, and emphasizing the beauty in the ordinary.” It explains that the design were inspired by ordinary objects, comparing the process to Marcel Duchamp using an urinal to create Fountain and Andy Warhol painting cans of Campbell soup (he even declared tomato to be his favorite flavor, although this has been debunked).

Defendant argues that the second factor, whether the protected work is factual or expressive, also plays in its favor as Plaintiff’s work merely depicts New York’s trademark. The third factor should be in its favor as well as it only tool, if indeed it took anything, unprotectible elements. As for the fourth factor, the effect on the potential market, Defendant notes that “it is not unreasonable to think that Plaintiff’s sales have increased from the publicity around this case.”

I must admit that Plaintiff’s products must be on every fashionable copyright attorney or scholar’s wish list now. See you at JFK’s gift shop!

Image of the Empire State Building, U.S. Government Work.

Poster from the Hot Rod Girl movie (1956).