Monday, 15 October 2018

In favour of a retrospective application of the 2012 amendment to s39 of the Indian Copyright Act

In the wake of the adoption of the Music Modernization Act in the US, is the same outcome possible and desirable also in other jurisdictions? The 1709 Blog is happy to host the following reflections by Akshat Agrawal (Jindal Global Law School) with regard to the Indian context.

Here's what Akshat writes: 

In light of the enactment of the Music Modernization Act in the United States a few days ago (11 October 2018), this post focusses upon the intention and the importance of Title 2 of the act and proposes a similar position for the Indian Copyright jurisprudence and policy development.

Performers’ rights were introduced into the Indian Copyright Act under section 38 through an amendment to the act in 1994. These rights have been accorded to performers under the definition provided by Section 2(qq) i.e. a person delivering an acoustic or a visual presentation live. As per the Delhi High Court, ‘live’ under this section needs to be interpreted in a broader sense as to include every performance made in real time, regardless of it being before an audience (concert or a stage performance) or in a studio. This has also been recognised by Explanation 2 of Rule 68 provided in Copyright Rules enacted in 2013. These rights are completely independent of ownership of ‘works’ and are categorised as related rights, protecting the interests of legal entities and persons who contribute to making works available to the public. The creative intervention of such performers is deemed necessary and catalytic to give life to musical, dramatic and choreographic works and to facilitate their communication to the public.

Section 39 A of the Indian Copyright Act, introduced by the 2012 Amendment, provides for the application of Section 18 and 19 to performers as well, along with the authors of works. This incorporates provision of certain amount of royalties to the performers in case of assignment, usage and broadcasting of the qualifying performances for commercial purposes. A retrospective construction of this provision is imperative to include provision of royalties in performances as well as broadcasting acts done prior to the 2012 amendment. The intention is specifically to provide for adequate remuneration to singers who are not accorded authorial rights in musical works due to ownership being vested with the composers or lyricists of a song. The skill which is inputted by singers needs to be recognised in live concerts as well as live studio performances. Anyone using their performances for commercial communication to the public ought to principally owe royalties for all this labour invested. This is applicable to both cover/tribute bands performing songs originally performed by these singers (apart from transformative use or parody), as well as restaurants or bars broadcasting their recorded performances.

Intention of the Legislature

The Statement of Objects and Reasons (page 14)  of the Copyright Amendment Act, 2012 as mentioned in the Amendment Bill 2010, expressly states its purpose to be clarity of interpretation and compliance and conformity with certain international standards set by the World Intellectual Property Organisation in the WIPO Performances and Phonograms Treaty. A beneficial construction of the Amendment Act can sufficiently be implied on the reading of the Statement of Object and Reasons, that is the encouragement and acknowledgment of these performers as well as provision of moral and related rights accrued to them. It has been enacted for the imperative socio-economic welfare of the “performers” class as a whole, to promote creation of output through this much needed acknowledgment of the creative labour put in. It is an established principle of law that the Statement of Objects and Reasons do often furnish valuable material to ascertain the true intent and inducement of the legislature and are effective interpretational tools. Further, India recently acceded to the WIPO WPPT as well, which mandates such an interpretation.

Beneficial Construction

The inhibition against retrospective construction is not a rigid rule and must vary secundum materiam. It is applicable with less insistence in case of welfare legislations or a remedial statute. The objective of any rule is to provide a fair solution. Presumption against a retrospective construction can be overlooked by necessary implication. This necessity is implied when a new law is enacted to cure an acknowledged evil and provide for necessary compensation for mischief to a community or class suffering as a whole. It has been repeatedly held by the Supreme Court of India that an amended provision which is beneficial in nature, providing for benefits to a certain class of people, who accrue certain compensation due to a mischief that has been prevalent, shall be applicable to all such beneficiaries irrespective of the date and hence with a retrospective effect. In such cases, till it is expressly mentioned in the statute that there would be no retrospective construction, it cannot be implied. Hence to provide for such welfare, it is essential to be applied to cases and subject’s pre-amendment as well.

In a situation where it is provided that the intention of the legislature enacting the amendment is compliance with prevalent international standards, and this intent is ascertained by the experience gathered by the parliament after a previous enactment, realising a further need to provide for certain imperative benefits, then an application with retrospective effect is highly recommended. Further, when the amendment provides for an imperative benefit to a whole community, even in absence of an express provision, the competence of the legislature to intend it to be retrospective cannot be questioned.

As far as the 2012 amendment to Section 39 of the Copyright Act is concerned, the intent has already been established to provide for an imperative right of compensation to the performers upon exploitation of their performances because of it being a creative endeavour alongside involvement of specialised skill and labour. Hence certain provisions of the 2012 Copyright Amendment Act providing for imperative benefits for the welfare of the whole performer community and for conformity to the principal policies levied down by the WIPO, should apply retrospectively.

With respect to singers who aren’t given authorial rights in their work, this compensation is an effective tool for acknowledgment and integrity because the expression in the musical work is highly dependent on the creative capability of these singers. It takes an immense amount of labour and investment of time to hone the skills required to sing in musical works, and totally being denied of any royalties on the usage of their performance is highly unfair and disincentivising for singers. A lot of restaurants and music venues gain commercial benefit and have a huge customer base because of the kind of music which is played therein. This results in direct commercial benefit to these venues due to the skill and labour invested by the singers and performers of the musical work used, who are accorded no benefit for the usage and broadcast of their performance (no authorial rights accorded). Hence a beneficial construction of performers rights is a must to uphold the imperative rights of this community. This would necessarily imply a retrospective operation i.e. provision of royalties for the use of performances which took place before the 2012 amendment as well.

International Position

The United States has recently enacted the Music Modernization Act, 2018 which, under its Title -2, has mandated the provision of royalties for performances and recordings, which took place before the enactment of the Copyright Act as well. The rationale of retrospective protection on such a provision has been implemented in this jurisdiction by virtue of a legislative enactment. It has appropriately been named “Compensating Legacy Artists for Their Songs, Service, and Important Contributions to Society, or CLASSICS Act.’’ This clearly denotes the intention to expand the scope of benefit which is provided to musicians and performers. The enactment has taken place post many musicians expressing their concern regarding this issue, for instance Johnny Cash.

The High Court of England and Wales has also recognised the need for retrospective construction of performers rights against unauthorised exploitation, to be enjoyed by all performers of the work. This decision has confirmed that performances that took place decades before the introduction of performers rights are also covered under this provision and any unauthorised usage would lead to a compulsory provision of royalties. The equitable need for such an inclusive construction as a matter of principle can also be recognised by the express inclusion of such performances, as qualifying for provision of royalties, in the CDPA (Section 180 (3)). Therefore it is a viable policy consideration to immediately recognise this in India and apply Section 39 provisions to performances before the 2012 Amendment Act as well. Following the footsteps of UK, even Ireland and New Zealand have recognised this position.

The performers rights regime needs a purposive and beneficial construction to realise and implement the intent of the legislature. It is imperative to provide for an adequate remuneration mechanism to these performers as it not only acts as an effective incentivising tool, rather also facilitates acknowledgment of specialised labour and provides for much required integrity. Hence it is argued that Section 39 of the Indian Copyright Act should include performances originating prior to the enactment of the amendment as well.

Saturday, 13 October 2018


Gwen Stefani and Pharrell were hit with a copyright lawsuit last year regarding their 2014 track “Spark the Fire.” In the lawsuit, musician and former Stefani hairdresser Richard Morrill alleged that the song featured in Stefani’s track lifted it's chorus from Morrill’s 1996 song “Who’s Got My Lightah.” Morrill, who later re-recorded the song in 2009, claimed to have played it to Stefani in the ’90s in his salon, citing the way both song rhyme “lighter” and “fire” on both singles, as well as the two-syllable pronunciation of the word “fire.” Now, a California federal judge has ruled in favour of Stefani and Pharrell. Billboard reports that Judge Dolly M. Gee has determined that the similarity of vocal inflection isn’t enough to sustain a copyright claim, and that “the last word on beat four of a line often rhymes" adding “[P]ronouncing words that end in ‘er’ with an ‘ah’ sound is a common practice in African-American Vernacular English.” Based on this ruling, Morrill couldn’t present further evidence to keep the copyright claim alive.

Inside Higher Ed reports that the American Chemical Society and Elsevier are again suing academic the 'networking site' ResearchGate in an another attempt to block the wesbite from  posting copyrighted research paper. Berlin based ResearchGate  is facing increasing pressure from publishers to change the way it operates - this time with an action in Europe, following on from the action in the U.S. The publishers accuse ResearchGate of “massive infringement of peer-reviewed, published journal articles”  and they say that the networking site is illegally obtaining and distributing research papers protected by copyright law - and add for good measure that the site may be deliberately tricking researchers into uploading protected content saying “ResearchGate is not the passive host of a forum where infringement just happens to occur,” the publishers said in the court document. They suggest that not only is ResearchGate uploading and making copies of journal articles that it locates by scraping the internet, it is also tricking authors into uploading copyrighted content.

"I steal music and I'm not going away" - still true it seems!
More than one-third of global music listeners are still pirating music, according to a new report by the International Federation of the Phonographic Industry (IFPI). While the massive rise in legal streaming platforms such as Spotify, Apple Music and Tidal was thought to have stemmed illegal consumption, 38% of listeners continue to acquire at least some of their music through illegal means. The Guardian reports that the most popular form of copyright infringement is stream-ripping (32%), downloads through “cyberlocker” file hosting services or P2P software like BitTorrent came second (23%), with acquisition via search engines in third place (17%).

President Donald Trump has just taken the long-awaited step of signing the Music Modernization Act into US law.  The Oresident welcomed various artists to the White House for a signing ceremony, including Kid Rock, Kanye West, Beach Boys singer Mike Love and country singer Craig Morgan.The news comes after the bill was unanimously voted through both the US House of Representatives and the Senate. The Music Modernization Act reforms mechanical licensing through the creation of a Mechanical Licensing Collective (MLC), paid for by digital companies, which will offer digital streaming services a blanket license in return for improved payments to songwriters and copyright owners. "The Music Modernization Act closes loopholes in our digital royalties laws to ensure that songwriters, artists and producers receive fair payment for licensing music" President Trump said before signing the bill into law. Michael Huppe, CEO of US recording industry collecting society SoundExchange: "With today's signing of the Music Modernization Act, we mark a historic accomplishment. But more importantly, we mark what it means. For creators, it means getting paid more fairly. For those who recorded music before 1972, it means assurance you'll get paid for your work. For songwriters, publishers and producers it means making the digital economy work for you" but added "I urge you to stay active because there is much more work to be done before we can truly say all music creators are treated fairly".

And finally from the CopyKat, the Calcutta High Court has directed Vodafone Idea Ltd to deposit Rs 2.5 crore into the court registry as a result of India's music collection society Indian Performing Rights Society (IPRS) Ltd's copyright claim against the telecoms company's use of its songs for its value-added services such as caller ringback tones and mobile apps like Vodafone Play, Idea Music and Idea Movies & TV. The court has ordered both parties to submit affidavits in support of their respective positions. 

Thursday, 4 October 2018

UK Copyright if there’s no Brexit deal

The UK's Department for Business, Energy& Industrial Strategy has now published it's long awaited paper which offers guidance on what will happen with copyright if the UK leaves the European Union with 'no deal' outcome - an increasingly likely scenario (although the paper paints a more positive picture!).

The key points?

- The UK and other EU member states are already party to the main international treaties on copyright and related rights. Under the rules of these treaties, countries provide copyright protection for works originating in or made by nationals of other countries. These rules underpin the copyright legislation in all member states of the EU and do not depend on the UK’s membership of the EU.

There is also a body of EU law on copyright and related rights that goes beyond the provisions of the international treaties, including several cross-border copyright mechanisms. These mechanisms are unique to the EU and provide reciprocal protections and benefits between EU member states. They include:
  • Sui generis database rights. Under the Database Directive (Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases, extended to the EEA in paragraph 9a, Annex XVII of EEA Agreement), nationals, residents, and businesses of EEA member states are eligible for database rights in all EEA member states. These rights are unique to the EEA and do not arise in relation to databases created or owned by non-EEA citizens, residents, or businesses.
  • Portability of online content service. The Portability Regulation (Regulation (EU) 2017/1128 of the European Parliament and of the Council of 14 June 2017 on cross-border portability of online content services in the internal market) allows consumers to access their online content services when they are temporarily in an EU member state other than their home state.
  • Country-of-origin principle for copyright clearance in satellite broadcasting. The Satellite and Cable Directive (Council Directive 93/83/EEC of 27 September 1993 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission, extended to the EEA in paragraph 8, Annex XVII of the EEA Agreement) simplifies the clearance of rights for cross-border satellite broadcasting. Under the Directive, a satellite broadcaster can broadcast a work protected by copyright into any EEA member state after having cleared the copyright requirements for the member state in which the broadcast originates. Wider country-of-origin issues in relation to broadcasting are covered in Broadcasting and video on demand if there’s no Brexit deal.
  • Orphan works (works without documented owners) copyright exception. The Orphan Works Directive (Directive 2012/28/EU of the European Parliament and of the Council of 25 October 2012 on certain permitted uses of orphan works, extended to the EEA in paragraph 10, Annex XVII of the EEA Agreement) allows cultural heritage institutions established in the EEA to digitise orphan works in their collection and make them available online across the EEA without the permission of the right holder.
  • Collective management of copyright. The Collective Rights Management Directive (Directive 2014/26/EU of the European Parliament and of the Council of 26 February 2014 on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market, extended to the EEA in paragraph 11, Annex XVII of the EEA Agreement) places obligations on EEA Collective Management Organisations – bodies that manage the licensing of copyright works on behalf of right holders. Among these is a requirement that EEA Collective Management Organisations that offer multi-territorial licensing of online rights of musical works must represent on request the catalogues of EEA Collective Management Organisations that do not offer such licences.
  • Cross-border transfer of accessible format copies of copyright works. The Marrakesh Directive (Directive (EU) 2017/1564 of the European Parliament and of the Council of 13 September 2017 on certain permitted uses of certain works and other subject matter protected by copyright and related rights for the benefit of persons who are blind, visually impaired or otherwise print-disabled and amending Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society) and Regulation (Regulation (EU) 2017/1563 of the European Parliament and of the Council of 13 September 2017 on the cross-border exchange between the Union and third countries of accessible format copies of certain works and other subject matter protected by copyright and related rights for the benefit of persons who are blind, visually impaired or otherwise print-disabled) implement the Marrakesh Treaty (the Marrakesh VIP Treaty, previously the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled) in EU law and allow the cross-border transfer of accessible format copies of copyright works between EU member states and with other countries that have ratified the Treaty.
The Portability and Marrakesh Regulations take effect directly in the UK. The remainder of the cross-border mechanisms have been or will be implemented in UK legislation.
After March 2019 if there’s no deal
The UK’s continued membership of the main international treaties on copyright will ensure that the scope of protection for copyright works in the UK and for UK works abroad will remain largely unchanged.
The EU cross-border copyright mechanisms extend only to member states of the EU or EEA. On exit, the UK will be treated by the EU and EEA as a third country and the reciprocal element of these mechanisms will cease to apply to the UK.
The EU Directives and Regulations on copyright and related rights will be preserved in UK law as retained EU law under the powers in the EU Withdrawal Act 2018. The government will make adjustments under the powers of the Act to ensure the retained law can operate effectively.
In respect of the cross-border mechanisms, in a ‘no deal’ scenario for:
  • Sui generis database rights. There will be no obligation for EEA states to provide database rights to UK nationals, residents, and businesses. UK owners of UK database rights may find that their rights are unenforceable in the EEA.
  • Portability of online content service. The Portability Regulation will cease to apply to UK nationals when they travel to the EU. This means online content service providers will not be required or able to offer cross-border access to UK consumers under the EU Regulation. UK consumers may see restrictions to their online content services when they temporarily visit the EU.
  • Country-of-origin principle for copyright clearance in satellite broadcasting. UK-based satellite broadcasters that currently rely on the country-of-origin copyright clearance rule when broadcasting into the EEA may need to clear copyright in each member state to which they broadcast.
  • Orphan works copyright exception. UK-based Cultural Heritage Institutions that make works available online in the EEA under the exception may be infringing copyright.
  • Collective management of copyright. UK Collective Management Organisations will not be able to mandate EEA Collective Management Organisations to provide multi-territorial licensing of the online rights in their musical works.
  • Cross-border transfer of accessible format copies of copyright works. The UK intends to ratify the Marrakesh Treaty after exit but ratification will not have taken place before 29 March 2019. Between exit and the point of ratification, businesses, organisations or individuals transferring accessible format copies between the EU and UK may not be able to rely on the EU Regulation.
The above is taken from There is a FACT SHEET from the UK;s Intellectual Property Office  IP and BREXIT: The fact - Facts on the future of intellectual property laws following the decision that the UK will leave the EU. This can be found here and as well as copyright extends to trade marks, patents and other rights.

Wednesday, 3 October 2018

THE COPYKAT - the music industry celebrates copyright reforms

Will President Trump be taking the credit for 'saving the US music industry' or even 'saving the global music industry'? Well going on recent US press on the progress of the Music Modernization Act, he might well be! The Act has had rapid progress through both houses in the USA, with bi-partisan support, and apart from a couple instances of inter-industry wrangling, the Act has garnered widespread support for almost all of it's proposals. The Act comes hot on the heels of the European Parliament's approval of some major reforms to copyright law (see earlier posts on the new Copyright Directive) and means that on both sides of the Atlantic there are going to be some major changes to copyright law - most of which seem to favour the content industries rather than the tech giants, despite the later's strenuous efforts to lobby, influence, scare and befuddle legislators. Well some would say that!

As Artstechnica opined, "for the last decade, the Congressional debate over copyright law has been in a stalemate. Content companies have pushed for stronger protections, but their efforts have been stopped by a coalition of technology companies and digital rights groups" adding "the Senate unanimously passed the Music Modernization Act, a bill that creates a streamlined process for online services to license music and federalizes America's bizarre patchwork of state laws governing music recorded before 1972". 

The Act aims to establish a modern system for licensing mechanical rights and by reforming Section 115 of the US Copyright Act (hopefully) it will establish a new national database that will aim to cover all copyrighted music in the United States, and  this can offer streaming services and other users a "one stop shopping" - and a clear system for remitting royalties back to content owners. It also repeals Section 114(i) of the Act, and will change the way judges are assigned to decide ASCAP and BMI rate-setting cases.The Act will also give pre-1972 sound recording copyrights federal protection (the so called CLASSICS Act - Compensating Legacy Artists for their Songs, Service, & Important Contributions to Society Act), and finally The AMP Act (Allocation for Music Producers Act) adds producers and engineers of sound recordings, to U.S. copyright law, codifying into law the producer’s right to collect digital royalties and provides a consistent, permanent process for studio professionals to receive royalties for their contributions to the creation of music.

So it's on President Trump's desk now, with Mitch Glazier, President of the RIAA, saying: “With this final House vote, another chapter in the journey of this critical legislation comes to a close. As the Music Modernization Act goes to the President’s desk for signature, we have many Members to thank for their work to make this final House vote possible to improve the lives of countless artists, songwriters and producers.

The RIAA was less impressed with the current text of the revised North America Free Trade Agreement (now the  United-States-Mexico-Canada Agreement) with Glazier saying  "We understand the US Trade Representative and his team must navigate a complex trade landscape" and "And we appreciate the diligent work of Ambassador [Robert] Lighthizer and his staff over the past several months. Unfortunately, the agreement's proposed text does not advance adequate modern copyright protections for American creators. Instead, the proposal enshrines regulatory 20 year old 'safe harbour' provisions that do not comport with today's digital reality".  songwroters and music publishers might be a bit happier - Canada will bring its copyright term for songs in line with the US (and Europe) by extending it from the current 'life of the creator plus 50 years' to 'life of the creators plus 70 years'.

And in Canada - another call for reform - and this from a rock star turned photographer who wants to change just ONE word! Rocker Bryan Adams is lobbying to change the Canadian Copyright Act so authors can reclaim their copyrights after 25 years - even when they have been assigned away to third parties, with Adams arguing that many artists sign away their copyright generally as young entrants to an industry which can and will exploit them, and they are not in a position to push back against the record companies and music publishers who provide them with their first contracts, often allowing the rights owners to continue exploiting works long after they have recouped their initial cost of publishing the novel or giving a new singer an advance. Perhaps a new approach emulating the US copyright system of "reversion" which this allows creators apply to take back their copyrights after 35 years, even if they have entered into a "perpetual assignment of copyright" with a publisher, studio, label or other party (although that doesn't seem the easiest system to use!). The change in Canada?  A new right of reversion 25 years after assignment - rather than 25 years after the death of the author!

Damian Collins MP
M Magazine (UK collection society PRS for Music's own magazine, issue 69) has an interesting interview with Damian Collins MP, chair of  the Culture, media and Sport Select Committee has been commenting on fake news and the spread of misinformation on the web, but made some telling comments on how the tech giants respond when their disruptor business models are threatened, partially in the context of copyright, saying that when it comes to the tech companies, "we've learned that, unless you establish real legal liability,or there is a real threat of legislation, they won't act. They have to be compelled to do so". Telling.

U.S. District Judge Stephen V. Wilson in the Central District of California recently issued an order granting-in-part and denying-in-part a motion for summary judgment made by Detroit based automaker General Motors in a copyright case brought by a Swedish artist  Adrian Falkner who painted a street mural on a building that GM then used in its marketing materials for the 2016 campaign 'The Art of the Drive'. Although Judge Wilson granted summary judgment in favour of GM on the plaintiff’s Digital Millennium Copyright Act (DMCA) and punitive damages claims, the artist’s claim for copyright infringement have been allowed to proceed to trial. GM had argued that Falkner’s copyright claim failed as a matter of law because the artist’s mural was incorporated into a building; citing to the Ninth Circuit’s 2000 decision in Leicester v. Warner Bros., GM argued that reproducing photographs of a building including any artistic works that are part of the building is not copyright infringement pursuant to 17 U.S.C. § 120(a) - Judge Wilson distinguished Leicester and the case goes on.

And finally in this CopyKat, and with a slightly off the wall reference, but an interesting one - it's a report on the speech Europeana Executive Director Harry Verwayen gave at the EBU event "Cultural heritage for the future: the role of media innovation" - asking "Could AI and data mining technologies overcome issues in cultural heritage?" with his opinion that "Here is the issue: we have currently digitised around 10% of all our heritage. Of that 10% (which represents around 300 million objects), only about one third is available online, and of that, only 7% is available for reuse. At Europeana, we work very hard to improve this equation and as you can see almost 20% in Europeana can be shared, adapted (all within full respect of copyright of course) while the other 80% can at least be viewed online". It's worth a read.

Image: Neurones connecting, artwork, Stephen Magrath, Wellcome Collection, Public Domain

Licensing Like a Champion (Can it be an Afterthought?)

Fall is back, and, in the United States, that means pumpkin-flavored products and (American) football galore. If you have not yet eaten pumpkin-flavored pop-corn, drunk pumpkin-flavored coffee and watched at least one game of football, well, your neighbors probably consider you to be weird. 

So grab a pumpkin-flavored cookie and read this blog about a recent Second Circuit decision, Spinelli v. National Football League, No 17-0673 (HT Court House News for the link to the document). The case is about copyright licensing, retroactive and royalty-free licensing and a touch (down) of football.

Plaintiffs are seven sports photographers. Defendants are the Associated Press (AP), the National Football League (NFL) and the 32 NFL teams. If you do not know the names of the NFL teams, you can read their complete list in the document (The Falcons! The Steelers! The Forty Niners!)

The photographers filed a copyright infringement suit in 2013 against the NFL and AP in the Southern District of New York (SDNY), claiming that AP had granted the NFL a royalty-free license without permission from the authors of the photographs.

Plaintiffs also argued that the NFL and AP had conspired to restrain trade in the market for commercial licenses of NFL event photographs thus breaching antitrust laws (I will not write about this issue).

Defendants moved to dismiss and the SDNY granted their motion in 2015. Plaintiffs appealed. On September 11, 2018, the Second Circuit remanded the case which is now likely to go to trial.

In order to take and use photographs from an NFL event, one needs to secure a license from the NFL, as such photographs almost always contain NFL trademarks. Getty had the exclusive worldwide right to license NFL’s pictures from 2004 to 2009, and then AP became the NFL’s exclusive licensor.

Plaintiffs had entered into “contributor agreements” with AP which allowed them to access NFL events, and to obtain licenses for the intellectual property contained in the photographs they took at these events. Plaintiffs took thousands of NFL photographs, during games or practices. Some of these pictures feature NFL trademarks, but others did not.

The 2009-2012 NFL-AP agreement

The original agreement between the NFL and AP, which lasted from 2009 to 2012, had granted the NFL a royalty-free license to use “AP-owned” images, but had not extended this license to images taken by non-AP contributors. However a new agreement, entered into in 2012, extended the royalty-free license granted to the NFL to photographs taken by non-AP contributing photographers.

Plaintiffs had indeed provided AP a “perpetual, irrevocable transferable worldwide right and license to reproduce, edit, translate the caption of, prepare derivative works of, publicly perform, publicly display, load into computer memory, cache, store and otherwise use“ their works along with the right to "transfer or sublicense these rights to other entities." This agreement was lucrative for the Plaintiffs, as AP payed royalties when it licensed one of the works. At issue in this case was whether Plaintiffs had thus allowed AP to grant royalty-free licenses to the NFL.

For the SDNY, copyright law gives copyright owners and their exclusive licensees the right to freely grant a license "after the fact" as they see fit, quoting Wu v. Pearson, 2013 WL 145666, at 4: "[T]here is no legal prohibition to obtaining a retroactive license if it is authorized by the rights holder." Plaintiffs had argued instead that, citing the 2007 Davis v. Blige Second Circuit decision, that AP could not grant a retroactive license. In Davis, the Second Circuit had rejected retroactive copyright licensing as a way to cure past infringement.

In our case, the Second Circuit found that even though facts in our case were slightly different than the ones in Davis, the court had to come to the same conclusion. The Second Circuit reasoned that Plaintiffs had the right, before the execution of the 2012 AP-NFL agreement, to sue the NFL for copyright infringement. Therefore, if AP could grant a license to the NFL retroactively in 2012, that right would have thus been extinguished, and “[d]oing so was impermissible, irrespective of whether AP had the authority to issue a prospective license to the NFL starting in 2009.”
The case was kicked back to the lower court
The SDNY had dismissed their claim because the license Plaintiffs had provided AP was as broad as their own copyright in their photos, and “[n]othing in the license require[d] AP to issue only royalty-bearing sublicense.” For the SDNY, the language of the agreement made clear that the rights granted by Plaintiffs to AP, including the right to sublicense, were “broad and unlimited.”

However, the Second Circuit found the 2012 contract to be “ambiguous” and recognized that it could be interpreted as limiting the ways AP can sublicense Plaintiffs’ photographs to third parties. The court remanded the case to the lower court. Litigation is not a contact sport. But you must win the last game.

Tuesday, 2 October 2018

Fair use or plagiarism? A new appropriation dispute

Top: Hank Willis Thomas' photo 
Bottom: Graeme Williams’ work
Appropriation art and copyright have not always been best friends. Now, a new dispute may lie on the horizon, as Angela Saltarelli (Chiomenti) explains.

Here's what Angela writes:

South African photographer Graeme Williams was astounded to discover that a whited-out version of one of his famous photographs was recently exhibited during the last Johannesburg art fair by the Goodman Gallery.  

Hank Willis Thomas - an appropriation artist using images of advertising campaigns or of civil rights protests -  realized a black and white version of Williams’ coloured photograph taken in 1991, in Thokoza township in Johannesburg, without asking for any authorization to the author of said photograph.

The original photograph represents one of the symbol of the end of apartheid: a group of children were portrayed taunting some white policemen few weeks after the release from prison of Nelson Mandela, kicking up their legs in a playful adaptation of the toyi-toyi, the south African liberation movement march. The iconic nature of this photograph is recognized anywhere and was also used by Barack Obama during his 2008 political campaign.

Williams claims that Thomas’ derivative work constitutes plagiarism, as there are minimal differences between the two works: the new image is black and white, and the policemen are lightened so that they can be seen by the public only when standing directly in front of the work. Moreover, the new work would not have a different meaning compared to his photograph, the use would be only appropriative rather than transformative.

On the other side, Thomas has defended his piece raising questions on the ownership of Williams’ work, which was taken by the south African photographer without any authorization by the people depicted, implying that even these people were exploited by Williams without consent. Furthermore, Thomas said he was interested with this artwork in questioning how much an artist shall change a work to create a new original work of art and in exploring this grey area of copyright.

Finally, the Goodman Gallery has declared not to be able to determine whether the new work is sufficiently transformative or not. In any case, Thomas’ work was removed from display and the artist agreed not to show it any more in public, offering Williams to keep it for one year and to discuss about it after this period.

Williams refused to take Thomas’ work, finding all proposed amicable solutions unsatisfactory, considering that the price for Thomas’ piece was $36,000, whereas his photograph was never sold for more than $1,200.

If this dispute was brought to court, the outcome would be quite uncertain as the criteria on determining fair use were often subject to different interpretations by the courts as shown in recent cases as: Cariou vs Prince, Graham vs Prince or Bauret vs Koons.