Sunday, 18 June 2017

Mankowitz’s famous portrait of Jimi Hendrix is original and deserves copyright protection, says Paris Court of Appeal.

The original portrait by Mankowitz
Readers will remember that a couple of years ago this blog wrote that the Paris Tribunal de Grand Instance (TGI) had excluded that the well-known portrait of Jimi Hendrix realised by Gered Mankowitz would be eligible for copyright protection.

1709 Blog friend and University of East Anglia academic Sabine Jacques has an update to report, this being the rather different outcome of the appeal decision in this case earlier this week.

Here's what Sabine writes:

“After the surprising judgment of the TGI Paris, the Paris Court of Appeal reversed the first instance decision with a ruling delivered earlier this week.

In this case, an electronic cigarettes and accessories sales company had reproduced and altered the famous portrait of music legend Jimi Hendrix taken by Gered Mankowitz for commercial advertising purposes. The defendant depicted Jimi Hendrix smoking an electronic cigarette instead of a real cigarette to promote its products. Having been made aware of this unauthorised use, Gered Mankowitz and his assignees decided to sue the electronic cigarettes sales company for copyright infringement.

Let’s rewind back to May 2015…

The decision of the TGI created somewhat a seismic shock amongst practitioners and photographers as without expressly acknowledging it, the High Court seemed to have interpreted the originality criterion as being based upon artistic merits, thus going against Recital 16 Directive 2006/116/EC on the term of protection of copyright. Indeed, as the black & white portrait featured the artist front-facing, with his waist forward, exhaling smoke while bearing a half-smile and having his eyes half-closed, the TGI was not convinced that the resulting work stemmed from the choices made by the photographer instead of reflecting the artist’s own personality.

The TGI relied on both the Infopaq (Case C-5/08) and Painer (Case C-145/10) decisions. As a reminder, a work will be deemed original if it represents the author’s own intellectual creation (Infopaq at [35]; Painer at [88]). In relation to photographs, originality can be derived from the numerous choices made by the author such as the subject, subject’s posture, background, framing, lighting, time of the shooting, camera settings, development techniques, device used, editing techniques, etc which can all reveal the author’s own personality (Painer at [91]). Here, the TGI held that the description of the author’s contribution provided by the photographer was commonplace and could not be attributed to the photographer without doubt. Therefore, based on the evidence submitted, the TGI held that it could not appreciate originality, nor did it provide the opportunity for the defendant to dispute this point.

Fast forward to June 2017…

Reversing the TGI decision, the Paris Court of Appeal decided that the photograph was original and that, by using the altered copyright-protected work to commercially promote their products online and in two brick-and-mortar shops, the electronic cigarettes sales company had infringed copyright.

The Court of Appeal confirmed that the person claiming to have been copyright protection bears the burden of proof.  In other words, the photographer would need to demonstrate where the originality lies in the portrait. Mr Mankowitz therefore explained that he had organised the shooting in 1967 and directed the rock star in terms of position and angle. The use of a specific camera and lens was deliberate to create a wide-angle effect without distortion. Moreover, the lightning, background, framing and angle of capture all resulted from deliberate choices made by the photographer, embodying the expression of his own personality.

Additionally (and perhaps surprising for readers outside France), the Court of Appeal paid attention to the fact that the photographer was internationally famous. As Mankowitz’s photographs are equally well known, Jimi Hendrix’s portrait was deemed original.

Finally, in relation to the infringing acts, the Court of Appeal held that the unauthorised reproduction and alteration of the protected work for promotion purposes fell within the exclusive rights of the author (L. 122-4 French Intellectual Property Code).


While the outcome reached by the Court of Appeal was expected, the litigation demonstrates that the originality criterion is still developing in copyright legislation. By requiring, the right kind of evidence to be submitted, French courts seem to demand that photographers deconstruct an image in a way which can be at odds with creative processes. However, the take home message for practitioners is perhaps to rely only on the deliberate choices made by a photographer for the purposes of satisfying the originality requirement in front of courts.  

Besides, this case is interesting insofar as the Court of Appeal took into consideration the reputation of the photographer to determine originality. It is not the first time that French courts consider the reputation of the original author relevant for the application of copyright law. While it is undeniable that the portrait of Jimi Hendrix is original, one might wonder whether French courts believe that well-known works are more deserving of copyright protection than others. As this blogger is currently turning her thesis on the parody exception into a monograph, some French decisions directly come into mind. For example, in Société Moulinsart, Mm Fanny R. c/ Eric J. (decision in French here), the TGI Paris refused the application of the parody exception where the defendant depicted the famous comic character Tintin in scenarios being the antithesis of the world created by its author, Hergé. Although attempting to refrain from assessing the work’s artistic merits, French courts seem less lenient where a parody comments a work considered to be part of the cultural heritage, even if the rules of the genre appeared to be respected.

Finally, the use of the Jimi Hendrix’s portrait was for commercial advertising purposes. Given the context and the captions joint to the reproduction of the work, consumers could have been led to believe that the use had been authorised or the products endorsed by the right-holders. Therefore, the Court of Appeal was correct in deciding that the use of works for commercial advertising purposes, even if these are altered, should require permission. And this, even if the use had been for a parodic purpose…

Wednesday, 14 June 2017

Drake's transformation prevails in plagiarism claim

Drake, along with his record labels and music publishers, have won a difficult lawsuit that had claimed his song “Pound Cake/Paris Morton Music 2” which featured on the 2013 album “Nothing Was the Same” sampled a 1982 spoken-word recording titled the “Jimmy Smith Rap.

The use complained of is where Deake used a cut down version of lyrics spoken by jazz musician James Oscar Smith which originally read “Jazz is the only real music that’s gonna last ..... All that other bulls**t is here today and gone tomorrow. But jazz was, is and always will be.” Drake's version is “Only real music’s gonna last .... All that other bulls**t is here today and gone tomorrow.”

Drake's record label engaged  a music licensing company to obtain all necessary licenses. They obtained a license for the  use of the sound recording of “Jimmy Smith Rap” but clearing the composition became problematic. The Estate maintained it would not have granted a license for the composition because JSmith “wasn’t a fan of hip hop.”

District Court judge William H. Pauley III has now isssued a summary judgment for the defendants and against the Estate of James Oscar Smith, and found that there is no liability for copyright infringement.  Judge Pauley found that the key phrase in Smith’s song “is an unequivocal statement on the primacy of jazz over all other forms of popular music” and that Drake’s use (by contrast) “transforms Jimmy Smith’s brazen dismissal of all non-jazz music into a statement that ‘real music’ with no qualifiers, is ‘the only thing that’s gonna last.'” Thus the judge adds, the purpose is “sharply different” from the original artist’s and is transformative, and “This is precisely the type of use that ‘adds something new, with a further purpose or different character, altering the first [work] with new expression, meaning or message”.

Judge Pauley also noted that whilst in many cases of parody the average observer would need to identify the target of derision, it’s not a universal prerequisite for a finding of transformative use,  commenting that Drake used Smith’s work as “raw material” for new work. The judge also comments that the use of “Jimmy Smith Rap” was transformative regardless of whether the average listener would identify the source and comprehend Drake’s purpose.

Original work here

See also Abilene Music, Inc. v. Sony Music Entertainment, Inc., 320 F. Supp. 2d 84 (The 'Wondeful World' case )

and Acuff Rose Music v Campbell (1994),_Inc.  (the Pretty Woman case)

CJEU says that site like The Pirate Bay makes acts of communication to the public

First published by Eleonora Rosati on the IPKat 

Is there a communication to the public within the meaning of Article 3(1) of the InfoSoc Directive by the operator of a website [The Pirate Bay, TPB], if no protected works are available on that website, but there is a system therein by means of which metadata on protected works is indexed and categorised for users, so that these can trace and upload and download the protected works? Does Article 8(3) of the InfoSoc Directive allow the issuing of an injunction against an ISP ordering it to block access for its users to an indexing site like The Pirate Bay?

These were the important questions that the Dutch Supreme Court (Hoge Raad der Nederlanden) had referred to the Court of Justice of the European Union (CJEU) in Stichting Brein v Ziggo, C-610/15 (also known as The Pirate Bay case).

The AG Opinion

In his Opinion in February last 
[commented herehere, and to some extent here] Advocate General (AG) Szpunar answered both questions in the affirmative. 

With particular regard to the first question the AG, while holding the view that the present case would be different from the (at the time) most immediate 'precedent' 
[formally, there is no system of precedent at the CJEU level], ie GS Media [Katposts here], also appeared to embrace a broader understanding of what amounts to an act of communication to the public. 

In particular, in line with the December 2016 
Opinion of AG Campos Sánchez-Bordona [here] in Filmspeler, C-527/15 [subsequently confirmed by the CJEU: here and here], AG Szpunar construed Article 3(1) of the InfoSoc Directive in a broader way than what, for instance, both AG Wathelet and the CJEU had done in GS Media

In fact - similarly to AG Campos Sánchez-Bordona in Filmspeler - AG Szpunar moved away from a (strict) requirement of 'indispensable intervention' towards an idea of communication to the public as 'facilitation'. Not only those whose intervention to make copyright works available to the public is indispensable could be regarded as making an act of communication the public, but also those whose intervention merely facilitates the finding of such works.

From this 'relaxation' of the notion of who can be regarded as making an act of communication to the public, the AG reached the conclusion that TPB operators would indeed facilitate the finding of copyright works unlawfully made available by third parties. Their acts would therefore fall within the scope of Article 3(1) of the InfoSoc Directive. From the point of view of a national court, TPB operators would be thus primarily liable for copyright infringement.

[For a more detailed discussion of the relationship between GS Media, and the AG Opinions in Filmspeler and Ziggo as regards the construction of the right of communication to the public, see this longer contribution of mine here]

The CJEU decision

This morning the CJEU held the making available and managing an online platform for sharing copyright-protected works may constitute an infringement of copyright. Even if the works in question are placed online by the users of the online sharing platform, the operators of that platform play an essential role in making those works available.

The decision is not yet available on the Curia website, but according to the press release:

“In today’s judgment, the Court holds that the making available and management of an online sharing platform must be considered to be an act of communication for the purposes of the directive.

The Court first draws attention to its previous case-law from which it can be inferred that, as a rule, any act by which a user, with full knowledge of the relevant facts, provides its clients with access to protected works is liable to constitute an ‘act of communication’ for the purposes of the directive.

In the present case it is common ground that copyright-protected works are, through ‘The Pirate Bay’, made available to the users of that platform in such a way that they may access those works from wherever and whenever they individually choose.

Whilst it accepts that the works in question are placed online by the users, the Court highlights the fact that the operators of the platform play an essential role in making those works available. In that context, the Court notes that the operators of the platform index the torrent files so that the works to which those files refer can be easily located and downloaded by users. ‘The Pirate Bay’ also offers — in addition to a search engine — categories based on the type of the works, their genre or their popularity. Furthermore, the operators delete obsolete or faulty torrent files and actively filter some content.

The Court also highlights that the protected works in question are in fact communicated to a public.

Indeed, a large number of Ziggo’s and XS4ALL’s subscribers have downloaded media files using ‘The Pirate Bay’. It is also clear from the observations submitted to the Court that the platform is used by a significant number of persons (reference is made on the online sharing platform to several tens of millions of users).

Moreover, the operators of ‘The Pirate Bay’ have been informed that their platform provides access to copyright-protected works published without the authorisation of the rightholders. In addition, the same operators expressly display, on blogs and forums accessible on that platform, their intention of making protected works available to users, and encourage the latter to make copies of those works. In any event, it is clear from the Hoge Raad’s decision that the operators of ‘The Pirate Bay’ cannot be unaware that this platform provides access to works published without the consent of  therightholders.

Lastly, the making available and management of an online sharing platform, such as ‘The Pirate Bay’, is carried out with the purpose of obtaining a profit, it being clear from the observations submitted to the Court that that platform generates considerable advertising revenues.”

A more detailed analysis will be provided when the text of the judgment becomes available: stay tuned!

Thursday, 1 June 2017

German courts make two (very important) copyright references to the CJEU

Eleonora Rosati writing on the IPKat

This morning the Bundesgerichtshof (BGH, the German Federal Court of Justice) has referred not one - but two - copyright cases to the Court of Justice of the European Union (CJEU) for guidance, respectively, on:
  • To what extent EU copyright allows sampling, ie the taking of part of a sound recording for re-use as an instrument or sound recording in a different song or piece [readers with an interest in hip-hop will know that sampling in this genre is very frequent and in the US has caused quite a few IP-related headaches to the likes of Kanye West and Jay Z]; and
  • What role fundamental rights play in the copyright sphere. More specifically, what is the relationship between copyright protection, freedom of the press, and freedom of information?
    WARNING: I do not speak German, and have tried to make a sense of these new cases by reading the relevant press releases; please let me know if I have misunderstood anything.

    Sampling, free use, a 'right' to quote, and fundamental rights

    The first reference (I ZR 115/16 - Metal auf metal III) has been made in the context the longstanding and complex [at some point the case even ended up in front of the German Constitutional Court] Metall auf Metall litigation concerning the unauthorised sampling by music producer Moses Pelham of a 2-second rhythmic sequence from Kraftwerk's 1977 song 'Metall auf Metall' for use in his own 1997 'Nur Mir'. The sample features in 'Nur Mir' (performed by Sabrina Setlur) as a continuous background loop.

    Following a number of lower courts' decisions [the first one was issued in 2004], as well as the already mentioned instalment before the Constitutional Court, the case is now pending before the BGH.

    Today, this court decided to stay the proceedings and seek guidance from the CJEU on the correct interpretation of EU law. More specifically - and as explained in the relevant press release - the BGH is asking:
    • Guidance on the notion of reproduction in part in relation to phonograms as per Article 2(c) of the InfoSoc Directive [readers will recall that the CJEU has already interpreted generously the notion of 'reproduction in part' in its seminal decision in Infopaq] in order to determine whether a 2-second sample may fall within the scope of the right of reproduction; and 
    • whether a phonogram sampling an earlier phonogram is a copy of it within the meaning of Article 9(1)(b) of the Rental and Lending Rights Directive.

    Moses Pelham
    Should the answer be in the affirmative, then the BGH is asking:
    • Whether the widely discussed German 'free use' exception within Section 24(1) of the German Copyright Act ("An independent work, created in the free use of the work of another person, may be published and exploited without the consent of the author of the work used.") is compatible with EU law; 
    • Should the defendants be unable to rely on the 'free use' exception, whether the quotation exception within Article 5(3)(d) of the InfoSoc Directive might nonetheless shield them from liability [readers with an interest in this defence will be aware that there is hardly an EU quotation exception, as different Member States have transposed Article 5(3)(d) in very different ways: see for instance this discussion of whether GIFs could be regarded as quotations]. In particular, the defendants in the national proceedings are arguing that quotation is a 'right', rather than just an exception. Although I am only relying on the press release, I suspect that the defendants' argument might be also based on the language of Article 10(1) of the Berne Convention, which - especially in its French version - seems to suggest a mandatory quotation exception [see further here, pp 19 ff];
    • What role the rights granted by the Charter of Fundamental Rights of the European Union plays: in particular, what is the relationship between copyright protection (Article 17(2)) and freedom of the arts (Article 13)? 

    Can freedom of the press and freedom of information trump copyright protection?

    The second reference (I ZR 139/15 - Afghanistan Papiere) has been made in the context of litigation between the German Government and German newspaper WAZ over the unauthorised publication by the latter of the so called 'Afghanistan Papers', ie confidential military reports on the operations of the Germany armed forces in the region in the period 2005-2012.

    According to the relevant press release, the BGH has stayed the proceedings and asked the CJEU to clarify whether and to what extent the assessment of prima facie copyright infringement and the applicability of the exceptions in favour of the press (Article 5(3)(c) of the InfoSoc Directive) and for quotation (Article 5(3)(d) of the same directive) is informed by a fundamental rights analysis. 

    In particular, can copyright protection bet trumped by the need to safeguard freedom of the press and freedom of information? Or can fundamental rights be even directly invoked to prevent enforcement of copyright?

    There is probably no need to note that this question goes to the very heart of copyright protection, and will revive the longstanding discussion around the scope of protection. 

    Posted By Eleonora Rosati to The IPKat on 6/01/2017 02:11:00 pm. Background can be found here: