Tuesday, 11 September 2018


The European Parliament Will Vote on September 12th on the Future of the Copyright Directive

Later this week (Wednesday, September 12) the European Parliament will vote on the future of the proposed legislation of the Copyright in the Digital Single Market which aims to redress the imbalance between the creators and online platforms, requiring them to obtain licences for the works that they make available. In particular, Article 11 aims to protect the content of the newspapers from the ‘snippets’, where short extracts of the publications are used by tech companies. Whereas, Article 13 puts greater responsibility on websites and online platforms by requiring them to implement "effective and proportionate measures" to "prevent the availability of specific [unlicensed] works identified by rightsholders", act "expeditiously" to remove them, and take steps to prevent their reappearance.  The new provisions which have proven to be highly controversial, in effect will change the existing liability framework for the intermediaries and will remove the E-Commerce Directive exemptions.

Ahead of the vote both creators and technology industries have increased their lobbying and coverage either to voice their support for the current version of the proposal or to encourage Members of the European Parliament (MEP) to reject the text. Among supporters who back up, the changes are over 165 leading screenwriters and directors who signed the petition calling the European Parliament to adopt the latest version of Directive on Copyright in the Digital Single Market. In their view, the new law would introduce “an unwaivable right to proportionate remuneration for authors, collected directly from the on-demand platforms by the collective management organisations representing (…) the authors”. The reform of safe harbour has been also supported by the music industry, which believes that user-upload platforms have exploited the safe harbour provisions “in order to launch on-demand content platform without paying market rate royalties to content owners”.

The music industry has also been critical of the campaign launched before the previous vote in the European Parliament, accusing the tech sector of ‘astroturfing’, a term used to describe initiatives that arise from lobbying that are presented as if they are coming from individuals. The tech sector has been particularly active in articulating their dissatisfaction with the current version of the proposal as it challenges the current ‘safe harbour’ protections enjoyed by online platforms in the EU and leaves them with a possibility of being legally accountable for all copyright-infringing material appearing on their platforms. YouTube’s Chief Business Officer, Robert Kyncl, has said that “the ability for creators and artists to find fans and build a business online is now ‘at risk’”. He continued that the outcome of the new law would not only “stifle creative freedom” but it could also have “severe, negative consequences for the fans [and] communities” by undermining the creative economy. The requirement to implement strict upload filters would also result in increased spending on compliance expenditures. The tech industry believes that although the proposal mainly targets Big Tech, such as Google and Facebook which will be able to cover these costs, smaller internet companies will not be able to afford them. The recent amendment has seen narrowing of the category of service providers required to comply with Article 13, however, concerns still remain.

Apart from the tech sector, the proposal has also raised concern among advocates of privacy and free speech, since the provisions “pose a real threat to the fundamental right to free speech online”. Mike Morel from Open Rights Group in his blogpost wrote that “the proposals within Article 13 would change the way that the Internet works, from free and creative sharing to one where anything can be removed without warning, by computers. This is far too high a price to pay for copyright enforcement”.

With an intensive lobbying campaign from both sides, the outcome of the vote and the future of the EU’s approach towards copyright enforcement is hard to predict. The Commission has encouraged the Parliament to find a compromise since if the proposal would be rejected the whole package for the Digital Single Market may not be concluded before the elections to the European Parliament next May.

UPDATE: MEPs voted to pass Article 13 of the European Copyright Directive. The EU Copyright Directive will now go to trilogue with the European Union Council, Commission and Parliament to negotiate a final text for passage into law. UPDATE: Amended versions of Articles 11 and 13 were approved in the European Parliament. The final vote was 438 in favour and 226 against.  And the Directive still faces a final vote in January 2019. After that it will need to be implemented by individual EU member states, who could very well vary significantly in how they choose to interpret the Directive’s text. However, Robert Ashcroft, Chief Executive of PRS for Music, said: "The European Parliament today took a bold step forward to ensure a functioning and sustainable digital single market for creative content. "  Julia Reda of the Pirate Party described the outcome as “catastrophic.”   More on this here

US and Mexico Agree to Changes in Copyright Protection in the New Trade Deal

As we have covered previously in CopyKat, earlier this year the US, Mexico and Canada were trying to negotiate new terms of the NAFTA Agreement during several negotiation rounds. Now it appears that things will move ahead without Canada, which has not been happy with the several of the US proposals since the US and Mexico have confirmed that they had reached agreement on key elements of a new trade deal.

One of the issues on which the parties have agreed is an agreement to enforce against piracy and counterfeiting, and implementation of criminal measures against camcording in movie theaters, as well as cable and signal piracy. As written by the US Trade Representative, the parties also decided to “extend the minimum copyright term to 75 years for works like song performances and ensure that works such as digital music, movies, and books can be protected through current technologies such as technological protection measures and rights management information”. The statement, however, has caused confusion. Some entities understood that by this agreement the US Government has extended the current US term, which is author’s life + 70 years. TorrentFreak reports that “the USTR initially told reporters that it was indeed the plan to extend the copyright term to life plus 75 years, but according to Techdirt, this was later changed to a 75-year floor”. Therefore, 75 years is a minimum which includes the author’s life.

The parties have also negotiated the ‘safe harbour’ exemptions, which according to the content industry groups should be tightened, whereas in the view of internet law experts, the US safe harbour provisions should also be implemented in Mexico and Canada. The announcement of the US Trade Representative states that the safe harbour provisions are included and that the rightsholders will also be protected at the same time. However, no details were released yet. In response to the announcement, music industry players, including RIAA, BMI and ASCAP have issued a joint statement, in which they shared their concern “by the efforts of some to use the agreement to lock in flawed interpretations of pre-internet ‘safe harbors’ perpetuating the theft of American music, creating safe havens preventing successful enforcement efforts within our trading partner nations”.

Can an artist be sued for using a photo of him during his own concert? The answer is yes. Sir Rod Stewart has been sued by Julia McLellan for breach of copyright in the photo of him with his former girlfriend. The photo, taken in 1960s, was shown as a background on the screen during the BBC2's Live in Hyde Park: A Festival in a Day concert. Although the photo was taken by Christopher Southwood, Mrs McLellan claims she acquired the copyright in 2004. BBC reports that she has asserted that Mr Southwood gave Sir Rod a copy of the photograph as a keepsake but said: "That's very different from using it commercially." In response Sir Rod Stewart’s team has argued that the court should reject the claim calling it as ‘absurd’ and claiming that the level of damages of £9,999.99 is unreasonable “for a totally innocent, brief and incidental use by Sir Rod of a personal snapshot as part of another, more substantial, artistic work”. When the matter was sent to trial District Judge Stephen Hodges urged both parties to mediate as the case had "tears written all over it". However, as Mrs McLellan claims despite efforts to ask Sir Rod Stewart for a fee, such requests were repeatedly refused.

On the other side of the Atlantic, the U.S. Court of Appeals for the Ninth Circuit has upheld the decision to dismiss the case against the owner of the IP address for the copyright infringement. The case was brought by Cobbler Nevada who filed a suit against a John Doe defendant and identified an IP address. The IP address was owned by Mr Gonzales however it was accessible to residents and visitors of an adult care home operated by him. In its first claim, Cobbler Nevada has accused Mr Gonzales as a sole defendant for copyright infringement based on the fact that the IP address was used for infringing activities of downloading and distributing the movie and he has not responded to over 400 notices. The District Court in Oregon has dismissed the claim and held that there were no facts which would connect Mr Gonzales to the infringing activity and neither his failure to stops infringement would constitute active encouragement which is required for contributory infringement. While hearing the appeal, the Ninth Court found that the District Court has rightly decided to dismiss the case since the plaintiff has not shown that the defendant violated the plaintiff’s exclusive rights under the Copyright Act himself. On the element of contributory infringement, citing previous case law the Court held that such a claim requires intentional inducing or encouragement of direct infringement. Additionally, in its argument according to the Court, Cobbler Nevada would “effectively create an affirmative duty for private internet subscribers to actively monitor their internet service for infringement”. Imposition of such duty would put any individual who purchases internet service at high risk when he “shares access with a family member or roommate, or (…) is not technologically savvy enough to secure the connection to block access by a frugal neighbor.”

Disney has seen a success in its claim against the Redbox. A Federal Judge in California has granted a motion for a preliminary injunction that would require the operator of DVD rental kiosks to stop selling digital codes that consumers can redeem at online outlets to access copies of Black Panther and other movies. With an increasing number of customers using online streaming, as reported by Hollywood Reporter, Redbox in order to attract them disassembled Disney’s ‘Combo packs’ that included Blu-Ray, DVD and a digital code, offering consumers access to download the code at a lower price. The packaging has clearly stated that "Codes are not for sale or transfer”. In the first case related to Frozen and Star Wars, Judge Pergerson analysed the restrictive nature of the licence and the issue of first sale doctrine. The Judge having observed a problematic nature of such restriction ruled that it "implicates and conflicts with public policy enshrined in the Copyright Act, and constitutes copyright misuse”.

Following the decision Disney has changed the language of it terms changing the language that the redemption of the digital code requires prior acceptance of terms and conditions and that “the digital code contained in this package may not be sold separately”. The current wording constitutes now a ‘clickwrap’ agreement with required an affirmation from the buyer. In the view of Redbox, post-purchase restrictions are unenforceable.  Additionally, it has argued that it can only be liable for contributory infringement “if it had subjective intent to be a contributory infringer”. The Judge has disagreed with Redbox and held that “it is undisputed that Redbox has actual knowledge of the redemption sites’ clickwrap terms, which do appear to create a restrictive license”. Furthermore, Redbox did not obtain any ownership right to digital content when it purchased the combo packs. With the changes made by Disney, Judge Pergerson disagreed with Redbox’s defence of copyright misuse since now “downloaders no longer need affirm that they possess the physical discs, to which first sale rights would apply”. Redbox has interpreted that the injunction only applies to certain titles which contain the new terms, such as Black Panther and still asserts the right to sell the codes to the titles where the language has not been amended yet.

Monday, 10 September 2018

Icy Refusal to Copyright Frigidaire’s Logo

 The Review Board of the United States Copyright Office (the Board) did not warm up to Electrolux’s arguments that its “Frigidaire Stylized Logo” should be protected by copyright. On August 29, it affirmed the denial of registration.

A logo can be protected as a trademark and can also be protected by copyright, if it is original enough. Several corporate logos are protected by copyright and by trademark.

The Frigidaire logo consists of the word Frigidaire in blue capital letters. Only the “A” differs from the usual way to write the letter A, as it is drawn as a triangle filled with a smaller red triangle. Hardly the stuff Turner Prize dreams are made of.

But copyright laws are not snobbish and protect masterpieces and more humble works alike, as long as they are original enough.  

Is the word Frigidaire itself protected by copyright?

Frigidaire is a made-up word. The correct word to designate an electric ice box is a refrigerator. I may sound a little pompous writing this phrase, but it is because I am scolding my 15-year old self [make this my 20-year old self] who was stupefied discovering this fact. Of course, being French, I grew up calling the family refrigerator “Le Frigo.” But enough about moi.

Who remembers the copywriter who invented such a famous name. Anybody? We should, as Frigidaire quickly became part of the lexicon. I found a scientific 1932 article using it. Google Ngram’s viewer informs us that the word appeared in 1920, peaked in 1940, and then dropped steadily in use in English, in use in English fiction, in French, and Spanish, while the word was at its most popular in Italian in the Sixties.

It is a great word, an original word, more original that a logo using a triangle instead of the letter “A.” But my brain must have frozen, as I just remembered that a word cannot be protected by copyright, and I have thus let go the suggestion that the word Frigidaire should be protected by copyright..

Let’s talk a bit about trademark.

Frigidaire is a great word. It could even be some person’s favorite word. Poets and songwriters have used it.

When Nat King Cole sang “I have stopped my heart like an icy Frigidaire, for I need to care for no one, that's why I'm thru with love…” he (exquisitely) did what every trademark attorney dreads the most, he used a trademark as a generic term.

[Trivia question: which other famous song from the American song book used the then-trademark “cellophane” generically, as a compliment to a paramour to boot? Answer is here].

Frigidaire is such a great name for a refrigerator that it quickly got used for a refrigerator, instead of the generic name, thus becoming a generic trademark. It is now used indifferently, Frigidaire or refrigerator.  

“Frigidaire” was registered as a word trademark in 1920 by registrant Frigidaire Corporation of Michigan. This trademark is now dead, by genericide.

As Frigidaire can no longer be protected as a word mark, it can only be protected as a design mark. Indeed, the word Frigidaire in stylized letters in still protected by trademark, in several versions, also here.

Frigidaire, written FRIGIDΔIRE, was registered as a trademark last year. The mark “consists of "FRIGIDAIRE" with triangle "A". This logo can be a trademark, since what matters is that the logo can serve as an indicator of the origins of the goods. Trademark laws do not care about originality.

But copyright laws do, and this FRIGIDΔIRE logo is not original enough, according to the Board, to be protected by copyright.

The FrigidΔire logo is not original enough to be protected by copyright.

The Board reminded applicant that it does not make aesthetic judgments when assessing whether a work can be protected or not, citing the classic 1903 Bleistein case. But it is lack of originality which froze the application, not aesthetics.

The Board used many of the same arguments they used to deny copyright protection to Log Cabin Blank With Screw Eyes and Cafe Door. To resume the argument, Feist requires only a modicum of originality but the work must “embody some creative authorship.” The author can use material and forms which are not protected by copyright, but must do it in such a way that the selection and coordination of these elements “trigger[s] copyright.” As in the Log Cabin case, the board cited § 906 of the Compendium and the Atari case to assert that the combination of simple shapes is protected only if “combined in a distinctive manner indicating some ingenuity.” The Board found that the stylized “A” is a mere “trivial variation on a letter” and is thus not copyrightable, as it does not “possess more than a de minimis quantum of creativity”, quoting Feist.

Electrolux, which now owns the Frigidaire brand, has registered the logo at stake as a trademark, and also wanted to register it as a copyright. This is good practice, as intellectual property is valuable and it makes sense to protect it every way one can.

It argued that “the stylized letter “A” represent[ed] a design choice that was made to reflect the attributes of Electrolux home appliance products, including having an eye on the future and being innovative, grounded, and stylish.”

However, logos cannot be protected by copyright if they are not original enough, and the FrigidΔire case should serve as a warning to companies creating a logo: make sure it is original enough to be also protected by copyright.

Thursday, 30 August 2018

Can a Work of Art Created by AI be Protected by Copyright?

Eleonora explored last year on this blog the complicated relationship between AI and copyright, see here.

We now learn that auction house Christies will sell in October a work of art titled 𝒎𝒊𝒏 𝑮 𝒎𝒂𝒙 𝑫 𝔼𝒙 [𝒍𝒐𝒈 𝑫 (𝒙))] + 𝔼𝒛 [𝒍𝒐𝒈(𝟏𝑫(𝑮(𝒛)))], Portrait of Edmond de Belamy, from La Famille de Belamy, which was created using AI.

It is the work of a Paris-based collective, obvious art, founded by Pierre Fautrel, Gauthier Vernier and Hugo Caselles-Dupré. The work was created using Artificial Intelligence (AI) technology, more precisely the Generative Adversarial Networks technology invented in 2014 by Ian Goodfellow, which can create images. The name of the work, Edmond de Belamy, is an homage to Ian Goodfellow, whose last name can be translated in French as “Bel ami.”
Edmond de Belamy (source: Artnet)
Obvious art created a program, fed it with information about some 10,000 portraits from the 15th to the 19th Century, and Edmond de Belamy was printed. The whole process is explained on obvious art’s website and also here.

The portrait shows a man painted over a black and gray background from which he appears to emerge, dressed in black, with a white collar, in a fashion reminiscent of 17th century Dutch paintings. His features are not precisely lineated and one does not even see his nose. He is looking at us from an angle, and appears to have been painted by large brushstrokes.

The collective’s goal was to prove that machines can also be creative, just like humans (see this interview in French). It is an algorithm which created the work. Does that mean that Edmond de Belamy cannot be protected by copyright?

Is Edmond de Belamy the new Naruto?

Indeed, as mentioned by Eleonora, the Naruto case [see here] may give us some clues on how a US court would rule over the copyrightbility of a work created by AI.

Obvious art used the formula of the loss function of the original GAN model as the signature for the painting they created. If a program is the author of the work, then the work cannot be protected by copyright.

The U.S. Copyright Office clearly stated in its Compendium of U.S. Copyright Office Practices that a work must be created by a human being to be protected by copyright, and that“[t]he Office will not register works produced by nature, animals, or plants, giving as an example a work which cannot be protected by copyright a “photograph taken by a monkey.” It could now add “a painting created by AI.

This is not the first time that AI was used to create a painting. In 2016, a team fed a computer data about 346 Rembrandt paintings and the result was a 3-D printed portrait looking just like one Rembrandt could have painted, the “Next Rembrandt.” The fake (or next) Rembrandt was made out of some 148 million pixels and 150GB of rendered data.

Ron Augustus, director of SMB Markets for Microsoft, who was part of the “Next Rembrandt” project, said in a video interview (@1:00) that they “used technology and data like Rembrandt used his spades and his brushes to create something new.” This argument suggests that whomever used AI technology as a tool to create a work could be its author, just like Rembrandt. ‘Something new’ is original, and originality is required to be protected by copyright.

But even if we consider AI to be a mere tool, it is not a tool like a spade or a brush, as this tool had to be created and could be protected by copyright.

Computer programs can be protected by copyright and software, as it is a computer program, can be protected. A software is defined by the copyright Act as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result” and U.S. courts use an “abstraction-filtration-comparison test” [see here for example] to find out which elements of a computer program can be protected by copyright.

If the tool used to create a work is protected by copyright, does that mean that the work thus created is also protected? Not necessarily, as Section 721.6 of the Compendium specifies that “ownership of the copyright in a work is distinct from ownership of any material object that may be used to create that work. The fact that the author used a computer to write an article, short story, or other nondramatic literary work does not mean that the work is a computer program.”

Therefore Edmond de Belamy cannot be protected by copyright. But, wait, there could be another way.

AI and Conceptual Art

Edmond de Bellamy is not a lone figure, but has relatives, also created using GAN, in fact, he has a whole genealogical tree (see here, here and and here).

While Edmond de Belamy may not alone be protected by copyright, it could be argued that obvious art’s project, as an ensemble, could be protected as a work of art. Failing to do so would further jeopardize the complicated relationship between conceptual art and copyright.

The portraits created by AI formed a genealogical tree, a fake family complete with made-up names, and could be considered original enough to be protected under Feist as an original compilation. However, a sole portrait is not protected by copyright. Should wannabe buyers of the Bellamy portrait consider buying his whole family?

Saturday, 25 August 2018

The COPYKAT - all is fair in love and war

They say that "all is fair in love and war," but when it comes to copyrighted content, you need to respect the rules of the game. Today's CopyKat takes a look at Disney claiming fair use, lawyers behaving badly, copyright policy in trade agreements, Aerosmith v. Donald Trump, and a small claims track victory from one of our readers.

Disney: standing up against "Overzealous Copyright Holders"?

Disney has responded to the copyright lawsuit lodged earlier this year in California by the Estate of Michael Jackson (MJJ Productions (et al) v Walt Disney Company and ABC INC). In May, MJ’s Estate claimed that American TV network ABC News and its parent company Disney used copyright material owned by the estate without permission for their The Last Days of Michael Jackson documentary. Disney argues that ABC News should be permitted to use Jackson’s songs and videos in its documentary “without fear of liability from overzealous copyright holders.”

In its 18-page response, Disney is citing both the US Constitution’s First Amendment and the principle of fair use in its defense. The answer begins by acknowledging that Michael Jackson remains “one of the most iconic performers of the last century, and his music career, tumultuous personal life, and tragic passing continue to be enduring topics of public interest even today, nearly a decade after his passing.”

Disney admits that ABC used short excerpts of Jackson’s songs and videos within its documentary, but that doing so was to provide “historical context and explanation tracing the arc and aspects of Jackson’s life and career—precisely what is contemplated and permitted by the First Amendment.” Disney’s lawyers argue that the Estate’s lawsuit, “in violation of these legal principles, constitutes an attempt to exercise unfettered control over public commentary and opinion on Jackson’s life and career.”

As pointed out over at Above the Law, a common misconception about the fair use doctrine in copyright law is that it is reserved for academics, consumers and private individuals. However, anyone - including large corporations who themselves are proponents of strong intellectual property rights - may be entitled to assert fair use. American University’s Center for Media and Social Impact even has a page dedicated to “Examples of Successful Fair Use in Documentary Film” on its website.

Prenda Law's pornography honeypot lawyer (finally) pleads guilty

After nearly a decade of litigation, American lawyer Paul Hansmeier has pleaded guilty to charges of wire fraud and money laundering, and could be jailed for up to 10 years. The diagram shown below was adopted and used by Judge Wright in his 6 May 2013 ruling, showing the Court's best understanding of the convoluted scheme. What makes this case interesting for the Copykat is that Hansmeier’s criminal activity was part of a multi-million dollar fraud scheme to obtain payments from extortion victims to settle sham copyright infringement lawsuits.

Hansmeier’s “law firm” Prenda Law is believed to have made at least $6m (£4.7) from the scheme. In September 2010, Hansmeier and John Steele established the law firm Steele Hansmeier PLLC, later renamed Prenda Law. They began representing clients that owned copyrights to pornographic films, and monitored file-sharing websites to obtain the IP addresses of individuals who downloaded the movies. They then “copyright trolled” and threatened the infringers with lawsuits, which they would settle for about $4,000.

Although the scheme initially paid off for Prenda, the scam quickly unraveled as courts (and activists, including twitter user Fight Copyright Trolls) uncovered fake defendants, shell companies, forged documents, and honeypots. For example, as was later admitted in his plea agreement, Hansmeier admitted that his brother Peter uploaded porn movies to BitTorrent file-sharing websites, including Pirate Bay, to “entice people to download the movies and make it easier to catch those who attempted to obtain the movies.”

In his 2013 judgement issuing sanctions against Prenda Law, California U.S. District Judge Otis Wright stated that the Prenda attorneys had “discovered the nexus of antiquated copyright laws, paralyzing social stigma, and unaffordable defense costs. And they exploit this anomaly by accusing individuals of illegally downloading a single pornographic video.” Judge Wright also also referred Hansmeier for investigation on criminal, tax and professional-standards charges.

Finally, despite years of lengthy and convoluted denials by Hansmeier and Steele - including a 64-page submission in which Hansmeier argued “the entire justice system will collapse if he's convicted” - the trolling duo has finally been stopped.

South African copyright reforms: a shining example or bad for business?

Each year, the U.S. Trade Representative (USTR) conducts a review of country eligibility for trade benefits under the African Growth and Opportunity Act (AGOA). The purpose of this legislation, passed in 2000, is to assist the economies of sub-Saharan Africa, and to improve economic relations between the United States and the region.

Benefits of being an AGOA-approved country include certain trade preferences, including duty-free export of some goods into the United States. However, the US President must determine on an annual basis which countries qualify for AGOA status. According to the AGOA website, this process was established as a means to incentivise improved labor rights and movement toward a market-based economy.

In a recent filing with the USTR, the International Intellectual Property Alliance (IIPA) has argued that South Africa’s attempts to reform its 1978 copyright legislation could “place South Africa out of compliance with the AGOA eligibility criteria regarding intellectual property.” The Copyright Amendment Bill, which was proposed in May 2017, is currently under consideration by the National Assembly.

Speaking before the USTR panel, intellectual property and international trade lawyer Kevin Rosenbaum explained that “many provisions of the 2017 Bill lack clarity, create unnecessary burdens on rights holders, and/or fall short of needed reforms. Unfortunately, South Africa’s proposed copyright amendments are inconsistent with a healthy, sustainable and fair digital marketplace for creators, both domestic and foreign, and run afoul of the AGOA eligibility criteria to provide adequate and effective protection and enforcement of intellectual property.”

On the other hand, the folks over at TechDirt appear to disagree with the IIPA, arguing instead that “those drafting the text seem to have listened to the calls for intelligent fair use rights fit for the digital world.” TechDirt correctly predicts that the fair use proposal will come under heavy attack from big industry players and their lobbyists - including the IIPA.

“Objection!” to calling alleged infringement “theft” is overruled

Words are the primary and essential tools of any lawyer. Cases turn on the meaning that judges and juries ascribe to words, and lawyers must use the right words when carrying out the wishes of their clients. With this in mind, is it unduly prejudicial for a claimant to refer to copyright infringement as stealing, theft, or some other related term? American judge Liam O’Grady thinks not.

As discussed in depth on the 1709 Blog earlier this month, music publisher BMG Rights Management and Cox are gearing up for yet another chapter in their ongoing legal saga. Ahead of this new courtroom drama, both sides have been making various requests of Judge O’Grady.

BMG’s lawyer had previously stated in submissions that Cox had aided and abetted “stealing,” “illegal conduct,” and “illegal infringement.” On the belief that BMG’s counsel would engage in the “same improper practice” this time around, Cox therefore sought a preemptive order to ban “argumentative statements” such as “stealing” and “theft” which could prejudice Cox and risk confusing the jury.

Judge O’Grady refused Cox’s request. In the court order, he explained: the Court does not find it appropriate to bar BMG from referring to copyright infringement as stealing, theft, or some other related term, as such language is not unduly prejudicial to Cox. The Court anticipates that counsel for both parties can and will abide by the rules during opening statements. If a party has good cause to object to a specific comment made by opposing counsel, the party may do so at that time.

Aerial Photographer won't let Cardiff Steel fly away free with his image

Several years ago, the 1709 Blog featured the case of Mr Jonathan Webb and his triumph against copyright infringements of his professional aerial photography. Mr Webb has recently reached out to us again, to inform us another courtroom victory, which you can also read about on webbaviation.com. In total, Mr Webb was awarded £2,851.42, which was comprised of £1500.00 in damages, £306.72 interest, £285.00 in Court Fees and £759.70 for litigant's in person costs.

This case focused on the copyright infringement of an aerial photograph of Sophia Gardens Cricket Ground in Cardiff, pictured below. Mr Webb explained the defendants Cardiff Steel just “helped themselves to the photo from my website and added it to their website, with the only alteration being a size reduction.”

Mr Webb was awarded damages under s. 97(2) of the Copyright, Designs & Patent Act 1988. As Cardiff Steel “derived some commercial benefit from the use of the image over the years 2011/2-2017,” Mr Webb was awarded awarded £1500. He explained that this was an amount equal to approximately four times his normal licence fee.

The other interesting thing brought to our attention was Mr Webb’s award of additional costs pursuant to the Civil Procedure Rules part 27.14 (2)(g). The rule states that the Court may award “further costs as the court may assess by the summary procedure and order to be paid by a party who has behaved unreasonably.” 

We understand from Mr Webb that this is a relatively rare award to receive, and was attributable to the defendant “making very little effort to settle the case. They sent one short email and wrote a short written defence, both blaming their Web Designer.” The judge even mentioned this in the opening paragraph of his judgement, stating: I have had the benefit of considering Mr Webb’s claim form and particulars of claim, and also a helpful bundle of documentation and evidence prepared for his hearing, which includes a full witness statement. The defendant has only provided a short form defence.

In his correspondence with the CopyKat, Mr Webb stated that he “didn’t know why the defendant did not take the claim seriously but the most likely explanation could be they took advice from the many copyright infringement forums on the internet. The overwhelming advice from these forums is to ignore any copyright infringement claims, and this case illustrates the perils of ignoring legitimate claims. This was an important case for me as the type of company and nature of use were all very typical of infringement of my work.

“The UK has become somewhat of a Copyright Wild West in recent years and I estimate that 99% of users of my work are doing so unlawfully. The IPEC small Claims Track can be something of a two edged sword: for claimants like myself who are familiar with the way it works, it's great because I can pursue small cases which would not otherwise be possible. The downside is that many creatives find the whole process too complicated and difficult and so do not enforce their rights.

This has led to a collapse in the market for low-value intellectual property like photographs, which most users can now simply obtain through a search engine, rather than by actually licencing the works. I have found some of Britain's biggest businesses simply helping themselves to my work, and removing my name from the images.”

The CopyKat notes that the judge praised Mr Webb for preparing his case thoroughly and in detail. Copyright can be, as the judge rightly pointed out, a complicated area - and his thoroughness not only proved to be of assistance to the Court, but contributed to his award of damages in the end.

Livin' on the edge (You can't help yourself from infringin')

And finally, although the CopyKat doesn’t like to stray into politics, it’s worth noting that Donald Trump can now add “copyright violations” to his growing list of legal concerns. Aerosmith’s Steven Tyler argues that by playing the band’s 1993 hit "Livin' on the Edge" at a West Virginia rally, the President infringed the singer's copyright. You can see and hear a clip of the (alleged) infringement in question on twitter.

Tyler’s attorney Dina LaPolt cited the Lanham Act which, although the primary federal trademark legislation in the United States, also speaks to false advertising. In particular, Section 43 of the Act prohibits “any false designation or misleading description [which] is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person.” By playing the Aerosmith song in a public arena, LaPolt asserts that Trump is giving the false impression that Tyler is endorsing Trump’s presidency.

The letter, excerpts from which are available on Variety, goes on to explain that “Mr. Tyler’s voice is easily recognizable and central to his identity, and any use thereof wrongfully misappropriates his rights of publicity. Mr. Trump does not have any right to use the name, image, voice or likeness of our client, without his express written permission.”

Friday, 24 August 2018

Katy Perry sued for copyright infringement, is Marcus Grey the Dark Horse?

his update from Hayleigh Bosher writing on the IPKat

Following this Kat's post on the Ed Sheeran copyright infringement case relating to the song "Shape of You" (here), she came across another similar dispute going on over the pond!

This case, brought in the US District Court of California, is between Plaintiffs Marcus Gray, Chike Ojukwu, and Emanuel Lambert who are Christian rap/hip-hop artists and Defendants Katheryn Elizabeth Hudson (Katy Perry), Jordan Houston (Juicy J), Lukasz Gottwald (Dr Luke) as well as a number of other individuals and music publishers. 

The allegation was first filed on the 1st July 2014, which claimed that the song “Dark Horse” infringed upon the Plaintiffs’ copyright in the song “Joyful Noise.” On 25th June 2018 the defendants filed a motion for a summary judgement and the Court hearing took place on 13th August.

Kitty Perry - by Molly Marshall 
Joyful Noise” appears on Gray’s 2008 album titled Our World Redeemed. The album debuted at #5 on the Billboard Gospel Chart, #1 on the Christian Music Trade Association R&B/Hip-Hop Chart and was nominated for a number of awards. There are at least five videos of "Joyful Noise” online which have a collective total of 1,365,041 YouTube views, 1,531,856 plays on Moore’s Myspace page and 933,868 on Gray’s Myspace page. 

Dark Horse” was written by Walter, Gottwald, Sandberg, Perry, Hudson, and Houston in March 2013. The song charted at #1 in three countries, reached top 10 in almost 20 countries, and was nominated for Best Pop Duo/Group Performance at the 57th Annual Grammy Awards. The song sold 13.2 million units (combined sales and track-equivalent streams), becoming the second best-selling song worldwide in 2014.

Was there copying?

As in the UK, in order to establish copyright infringement, the plaintiffs must show (1) ownership of the copyright (not disputed in this case); and (2) that defendant copied protected elements of their work. 

The writers of “Dark Horse” claimed that they had never heard of any of the Plaintiffs or their music, including “Joyful Noise.” However, the Plaintiffs dispute the defendants’ claim and maintained that the defendants copied “Joyful Noise” when they wrote “Dark Horse.” Proof of infringement therefore required that (1) the defendant had ‘access’ to the plaintiff’s work and (2) that the two works are ‘substantially similar.’

1) Access

In order to prove access, the plaintiff must show a reasonable possibility, not merely a bare possibility, that an alleged infringer had the chance to view the protected work. Where there is no direct evidence of access, circumstantial evidence can be used to prove access either by (1) a particular chain of events between the plaintiffs’ work and the defendants’ access to that work (such as through dealings with a publisher or record company) or (2) showing that the plaintiffs’ work has been widely disseminated.

In this case the Plaintiffs’ focused on widespread dissemination. The Defendants argued that this required a high burned of proof, and that that the mere existence of copyrighted materials on YouTube and Myspace would not justify an inference of access. However the Court stated that at this stage all plaintiffs must do is set out specific facts showing a genuine issue for trial as to whether there is a reasonable possibility that defendants had the chance to view the protected work. It recognised that whilst the mere existence of YouTube and Myspace videos did not justify an inference of access, but the Court was persuaded that the plaintiffs demonstrated more than just mere posting of “Joyful Noise” on the internet. 

As a result of millions of views of “Joyful Noise” on YouTube and Myspace, and the success and popularity of “Joyful Noise” in the Christian hip-hop/rap industry, a reasonable jury could conclude that there is more than a “bare possibility” that defendants—who are experienced professional songwriters—had the opportunity to hear “Joyful Noise.” In addition, it did not matter that the song did not receive commercial success, since it did achieved critical success, including a Grammy nomination.

[On a side note, comparing this to the Sheeran v Switch case - Switch went for varying degrees of both approaches in that they argued the two had mutual friends and that the 'Oh Why' song was on several platforms, but his YouTube video only has 41,122 views and there's no Grammy nomination...]

But back to the matter at hand - having convinced the Court that there was a reasonable possibility that the writers had access to the work, the next question was whether or not the songs were substantially similar. 

2) Substantial Similarity

Kitty Kat performing on stage...
- Matt Buck
To determine, for purposes of summary judgement, whether two works are substantially similar, a two-part analysis is undertaken - an objective extrinsic test and a subjective intrinsic test. 

The Plaintiffs relied on a musicologist report, which stated that the “most obvious, pervasive, and substantial similarity” between the two songs is a “descending ostinato 8 figure which serves as the primary formal building block for both tracks.” It went on to say that the ostinatos in both songs are identical, both ostinatos are nearly identical in pitch content and melodic contour as is the mechanical style, and that the timbre of the upper and primary voice are remarkably similar.

However, the Defendants relied on the report of their own musicology expert who opined that “‘Dark Horse’ does not share any significant structural, harmonic, rhythmic, melodic, or lyrical similarities, individually or in combination, with ‘Joyful Noise.’” 

The Court found that the Plaintiff’s expert testimony was sufficient to raise a genuine issue of material fact as to substantial similarity, as it identified particular features of the works which, taken in combination, could support a finding of substantial similarity by a reasonable jury. 

As such, the Court concluded that the defendants’ motion for summary judgement was denied... and we wait to see how this one plays out! 

Wednesday, 22 August 2018

Traditions, Traditions, an Intellectual Property Perspective

The Agence France Presse posted a video on Twitter this month, which shows that the French fashion house Christian Dior had used traditional embroidery motifs in its pre-Fall 2017 collection  (see here too). The embroideries are originally from the Bihor area in Romania and adorn a traditional garment, the “cojoc binşenesc” (more about it here and here).

In this particular instance, the community reacted by taking advantage of this publicity and launched a website, Bihor Couture, which sells traditional Bihor garments and accessories.  As the 1709 Blog is a copyright blog, I will not comment much on the trademark issues which the choice of ‘Bihor Couture’ could raise, but here are my quick two cents. In the U.S., parody is a defense in a trademark infringement case. If you are interested in this topic, you can read about the recent My Other Bag Second Circuit case here and here. French trademark law does not have a parody exception, but courts have recognized such a defense, albeit sparingly, when parody was used as a social/political comment (see for instance this case, where the French Supreme Court held in 2008 that article 10 of the European Convention of Human Rights protects the right of non-profit Greenpeace to parody the Areva brand).
Can embroideries be protected by copyright?

Well yes they can, on both sides of the Atlantic, if they are original enough. Embroidery motifs may, however, be in the public domain, or not original enough to be protected by copyright.

In the U.S., embroideries can be considered fabric designs which are copyrightable. The mere fact that embroideries may adorn a piece of garment does not prevent them to be protected by U.S. copyright, even though a garment is an uncopyrightable useful article.

Since Star Athletica [see our comment on the case here], an artistic work applied on or incorporated into a garment  may be eligible for copyright protection if it: "(1) can be perceived as a two or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work-either on its own or fixed in some other tangible medium of expression-if it were imagined separately from the useful article into which it is incorporated."

In France, the concept of “Unité de l’Art” prevents French copyright law (droit d’auteur) to differentiate art from mere applied art (art appliqué) such as embroideries.

However, traditional embroideries may be in the public domain. The embroideries which inspired Dior may be in the public domain, or they could have been created recently enough to be protected by Romanian law. However, even traditional works in the public domain may soon be protected by intellectual property.

Protection of traditional works by moral rights

WIPO considers that traditional cultural expressions (TCEs), or "expressions of folklore," may include handicrafts, and may be protected by copyright if recently created. It also noted that “[i]n many countries and for many indigenous and local communities, the handicraft sector plays a vital social and cultural function and contributes significantly to communal, local and national economies.

WIPO’s Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore will hold its 37th session from August 27 to 31. The Committee published last month draft articles on the protection of traditional cultural expressions, which are part of the session’s agenda and which are aimed to become an international instrument directing member States to better protect TCEs.

One of the policy objectives of the instrument would be to “prevent the misappropriation and misuse/offensive and derogatory use/unauthorized use of their traditional cultural expressions.” This is of particular interest for communities which have created designs attracting the attention of fashion companies eager to satisfy the want of their customers for authenticity.  One may remember, for instance, that a U.K. fashion company used a traditional Inuit motif on a sweater.

One of the principles stated in the WIPO draft articles acknowledges that “traditional cultures and folklore constitute frameworks of innovation and creativity that benefit Indigenous [Peoples], [local communities] [and nations] / beneficiaries, as well as all humanity.

It also notes “the value of a vibrant public domain and the body of knowledge that is available for all to use, and which is essential for creativity and innovation, and the need to protect, preserve and enhance the public domain.” It would “secure/recognize rights already acquired by third parties and secure/provide for legal certainty and a rich and accessible public domain.

The instrument would direct “Member States [to] the economic and moral rights and interests of beneficiaries in secret and/or sacred traditional cultural expressions….as appropriate and in accordance with national law, and where applicable, customary laws.  In particular, beneficiaries shall enjoy the exclusive rights of authorizing the use of such traditional cultural expressions.” (my emphasis).

Therefore, even traditional cultural expressions which are in the public domain may be protected by moral rights, which are perpetual. This would be an interesting development for communities wishing to prevent the use of designs, which are in the public domain, but which they consider sacred.

This is certainly worthy of interest at a time when “cultural appropriation” is a hot topic, in many domains. Madonna has been recently criticized for wearing Berber clothes and a choreographer has been criticized for using in one of his works a traditional dance, with dancers in costumes looking like traditional costumes.

Could traditional works be one day perpetually protected by moral rights?

Image is courtesy of Flickr user storebukkebruse under a CC BY 2.0 license.