In 1709 (or was it 1710?) the Statute of Anne created the first purpose-built copyright law. This blog, founded just 300 short and unextended years later, is dedicated to all things copyright, warts and all. To contact the 1709 Blog, email Eleonora at eleonorarosati[at]gmail.com
Roy Halston, the creator of the Halston brand, is remembered by fashion
historians for his use of ultrasuede fabric, a soft manmade fabric imitating
suede which could be machine-washed, and for his simple, yet sophisticated
designs. While his main line was designed and priced to attract high-income
customers, he also designed a line for mass-retailer J.C. Penney. Roy Halston
lost control of his brand before
dying in 1990, but the Halston Heritage brand has made a comeback in
recent years and still sells clothes and accessories, some of which are somewhat
reminiscent of the original designs.
On October 15, the Halston company filed
a copyright infringement suit in the central district of California against
G-III, which is the exclusive licensor for Calvin Klein. Defendant produces and
sells women’s clothes and accessories under the Calvin Klein trademark.
At issue are three Halston dresses which
were allegedly copied by Defendant.
Plaintiff's Design A
First there is “Subject Design A” dress.
The top of the dress is a simple sleeveless shift, with a round neckline, flaring
asymmetrically below the waist, and revealing a bottom dress in contrasting
color. The company has applied to register its copyright (good luck).
Defendant sold a dress which Plaintiff
found to be a copy of Subject Design A, arguing in the complaint that “it is apparent that the elements, materials,
place, movement, centering, composition, colors, arrangement, overlay,
appearance and structure of the design [sic] are substantially and confusingly
similar, if not identical.”
Plaintiff manufactured and sold another
dress, ‘Subject Design B’, a belted sleeveless dress, with a round neckline,
gently flaring out asymmetrically, revealing the lower part of the left thigh
of the wearer and its contrasting lining. Defendant also manufactured and sold
a belted sleeveless, with a round neckline gently flaring out asymmetrically,
revealing the lower part of the left thigh of the wearer and its contrasting
lining. Plaintiff does not indicate in the complaint that it is in the process
of registering the copyright for Subject Design B, but repeats the
substantially and confusingly similar claim.
There is also ‘Subject Design C,’a full
length sleeveless dress with a deep V neck and double straps which opens high
on the right thigh of the wearer. Defendant also manufactured and sold a full length
dress with a deep V neck and double straps. However, Defendant’s dress does not
have a slit, but a mermaid shape. However, Plaintiff also claims the two
designs are “substantially similar, if
Plaintiff is of course aware that a dress is
a useful article and, as such, is not protected by copyright. In order to be
able to claim copyright protection for Design A, Plaintiff argues that:
“[Design A] [w]ould qualify as a
protectable pictorial, graphic, or sculptural works- either on its own or fixed
in some other tangible medium of expression, despite having some utilitarian
function, which is to facilitate conduct associated with the 70’s an area which
Roy Halston Frowick is strongly identified [sic], and as described by Erica
Jong as “the purest thing there is. And it is rarer than the unicorn.” Erica
Jong, Fear of Flying (1973). See Star
Athletica, L.L.C. v. Varsity Brands., 580 U.S.___, 137 S. Ct. 1002
The Supreme Court held that In Star Athletica that a feature
incorporated into the design of a useful article can be protected by copyright
if (1) it can be perceived as a two- or three-dimensional work of art separate
from the useful article, and (2) if it 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
The feature incorporated in the design of
the useful dress is “an overlay to
express movement, affixing fabric in a manner to affect the appearance, weight
and asymmetrical flow of the design, including but not limited to incorporation
of a gusset and tack in the flounce, and increasing the downward visual
consistency and depth of the two colors used.”
Plaintiff seems to argue that the function
of this feature, which can be protected as a work of art, is “to facilitate conduct associated with the 70’s
an area which Roy Halston Frowick is strongly identified [sic], and as
described by Erica Jong as “the purest thing there is. And it is rarer than the
I was puzzled by the Erica Jong reference and
wondered if Erica Jong was referring in this quote to the 70’s or to Halston.
Actually, she was referring to …well… Here
is the quote: “The zipless
fuck is the purest thing there is. And it is rarer than the unicorn.” I was
still puzzled after finding the quote and I am looking forward to reading
Defendant’s motion or answer to the complaint to find out what its attorneys
made out of it.
Professor Uma Suthersanen (Queen Mary University of London) is giving a lecture at the City Law School on the 27th November, exploring the EU's design right jurisprudence "The EU design regime adopted a new “market-based approach”, which protects both functional and aesthetic designs. Nevertheless, it is recognised that certain types of functional designs can give rise to unduly restrictive effects on legitimate competition, within certain product sectors. Accordingly, Art.8(1) Community Design Regulation expressly excludes "features of appearance of a product which are solely dictated by its technical function”; the paramount rationale being the protection of competitive innovation. The past decade has spawned three separate interpretations of the functionality exclusion, the most paradoxical being the linkage drawn between aesthetic considerations and functional presence. A further layer of analysis derives from the functionality exclusion within the Community Trademark Regulation. A final challenge to juridical coherence is the EU Court’s earlier Flos decision widening national copyright law to embrace all sorts of designs, and presumably functional designs. It is submitted that the CJEU's decision in Doceram (2018) is perhaps the right approach - whereby it rejects all three previous interpretations, but weaves one which marries them all. The approach is also logical if one accepts that the functionality exclusions within design, trade mark and copyright laws must be interpreted in pari materia within an increasingly-aligned EU IP law" This is free, but you need tor register and you can SIGN UP HERE 27th November 2018 at 15.00 R203 City, University of London Northampton Square London EC1V 0HB
As the CopyKat reported earlier this week, the technology sectors are continuing their assault on planned reforms to EU Copyright law, and now the Electronic Frontiers Foundation has joined the likes of Google, YouTube and Facebook in criticising the planned copyright law reforms. In a letter the EFF say has been sent to everyone involved in the upcoming "Trilogues", the meetings held between representatives from European national governments, the European Commission, and the European Parliament, Cory Doctorow argues that the reforms contained in Articles 11 and 13 of the Copyright Directive are "ill considered and have no place in the Directive", concluding that instead of effecting some "piecemeal fixes to the most glaring problems", the Trilogue takes a simpler approach, and removes them from the Directive altogether. Having previously opined that the vote in the European Parliament that passed the draft Directive "brought the EU much closer to a system of universal mass censorship and surveillance, in the name of defending copyright" and that Articles 13 and 11 would create "upload filters" and the “link tax”, the EFF's views are perhaps unsurprising - you can make of the points raised as you will, as the letter is set out in full is below: The Electronic Frontier Foundation is the leading nonprofit organization defending civil liberties in the digital world. Founded in 1990, EFF champions user privacy, free expression, and innovation through impact litigation, policy analysis, grassroots activism, and technology development. We work to ensure that rights and freedoms are enhanced and protected as our use of technology grows. We are supported by over 37,000 donating members around the world, including around three thousand within the European Union. We believe that Articles 11 and 13 are ill-considered and should not be EU law, but even stipulating that systems like the ones contemplated by Articles 11 and 13 are desirable, the proposed text of the articles in both the Parliament and Council texts contain significant deficiencies that will subvert their stated purpose while endangering the fundamental human rights of Europeans to free expression, due process, and privacy. It is our hope that the detailed enumeration of these flaws, below, will cause you to reconsider Articles 11 and 13's inclusion in the Directive altogether, but even in the unfortunate event that Articles 11 and 13 appear in the final language that is presented to the Plenary, we hope that you will take steps to mitigate these risks, which will substantially affect the transposition of the Directive in member states, and its resilience to challenges in the European courts . Article 13: False copyright claims proliferate in the absence of clear evidentiary standards or consequences for inaccurate claims. Based on EFF’s decades-long experience with notice-and-takedown regimes in the United States, and private copyright filters such as YouTube's ContentID, we know that the low evidentiary standards required for copyright complaints, coupled with the lack of consequences for false copyright claims, are a form of moral hazard that results in illegitimate acts of censorship from both knowing and inadvertent false copyright claims. For example, rightsholders with access to YouTube's ContentID system systematically overclaim copyrights that they do not own. For instance, the workflow of news broadcasters will often include the automatic upload of each night's newscast to copyright filters without any human oversight, despite the fact that newscasts often include audiovisual materials whose copyrights do not belong to the broadcaster – public domain footage, material used under a limitation or exception to copyright, or material that is licensed from third parties. This carelessness has predictable consequences: others — including bona fide rightsholders — who are entitled to upload the materials claimed by the newscasters are blocked by YouTube and have a copyright strike recorded against them by the system, and can face removal of all of their materials. To pick one example, NASA's own Mars lander footage was broadcast by newscasters who carelessly claimed copyright on the video by dint of having included NASA's livestream in their newscasts which were then added to the ContentID database of copyrighted works. When NASA itself subsequently tried to upload its footage, YouTube blocked the upload and recorded a strike against NASA. In other instances, rightsholders neglect the limitations and exceptions to copyright when seeking to remove content. For example, Universal Music Group insisted on removing a video uploaded by one of our clients, Stephanie Lenz, which featured incidental audio of a Prince song in the background. Even during the YouTube appeals process, UMG refused to acknowledge that Ms. Lenz’s incidental inclusion of the music was fair use – though this analysis was eventually confirmed by a US federal judge. Lenz's case took more than ten years to adjudicate, largely due to Universal's intransigence, and elements of the case still linger in the courts. Finally, the low evidentiary standards for takedown and the lack of penalties for abuse have given rise to utterly predictable abuses. False copyright claims have been used to suppress whistleblower memos detailing flaws in election security, evidence of police brutality, and disputes over scientific publication. Article 13 contemplates that platforms will create systems to allow for thousands of copyright claims at once, by all comers, without penalty for errors or false claims. This is a recipe for mischief and must be addressed.
Article 13 Recommendations To limit abuse, Article 13 must, at a minimum, require strong proof of identity from those who seek to add works to an online service provider's database of claimed copyrighted works and make ongoing access to Article 13's liability regime contingent on maintaining a clean record regarding false copyright claims. Rightsholders who wish to make copyright claims to online service providers should have to meet a high identification bar that establishes who they are and where they or their agent for service can be reached. This information should be available to people whose works are removed so that they can seek legal redress if they believe they have been wronged. In the event that rightsholders repeatedly make false copyright claims, online service providers should be permitted to strike them off of their list of trusted claimants, such that these rightsholders must fall back to seeking court orders – with their higher evidentiary standard – to effect removal of materials. This would require that online service providers be immunised from Article 13's liability regime for claims from struck off claimants. A rightsholder who abuses the system should not expect to be able to invoke it later to have their rights policed. This striking-off should pierce the veil of third parties deputised to effect takedowns on behalf of rightsholders ("rights enforcement companies"), with both the third party and the rightsholder on whose behalf they act being excluded from Article 13's privileges in the event that they are found to repeatedly abuse the system. Otherwise, bad actors ("copyright trolls") could hop from one rights enforcement company to another, using them as shields for repeated acts of bad-faith censorship. Online service providers should be able to pre-emptively strike off a rightsholder who has been found to be abusive of Article 13 by another provider. Statistics about Article 13 takedowns should be a matter of public record: who claimed which copyrights, who was found to have falsely claimed copyright, and how many times each copyright claim was used to remove a work. Article 11: Links are not defined with sufficient granularity, and should contain harmonised limitations and exceptions. The existing Article 11 language does not define when quotation amounts to a use that must be licensed, though proponents have argued that quoting more than a single word requires a license. The final text must resolve that ambiguity by carving out a clear safe-harbor for users, and ensure that there’s a consistent set of Europe-wide exceptions and limitations to news media’s new pseudo-copyright that ensure they don’t overreach with their power. Additionally, the text should safeguard against dominant players (Google, Facebook, the news giants) creating licensing agreements that exclude everyone else. News sites should be permitted to opt out of requiring a license for inbound links (so that other services could confidently link to them without fear of being sued), but these opt-outs must be all-or-nothing, applying to all services, so that the law doesn’t add to Google or Facebook's market power by allowing them to negotiate an exclusive exemption from the link tax, while smaller competitors are saddled with license fees. As part of the current negotiations, the text must be clarified to establish a clear definition of "noncommercial, personal linking," clarifying whether making links in a personal capacity from a for-profit blogging or social media platform requires a license, and establishing that (for example) a personal blog with ads or affiliate links to recoup hosting costs is "noncommercial." In closing, we would like to reiterate that the flaws enumerated above are merely those elements of Articles 11 and 13 that are incoherent or not fit for purpose. At root, however, Articles 11 and 13 are bad ideas that have no place in the Directive. Instead of effecting some piecemeal fixes to the most glaring problems in these Articles, the Trilogue take a simpler approach, and cut them from the Directive altogether. Thank you, Cory Doctorow Special Consultant to the Electronic Frontier Foundation https://www.eff.org/deeplinks/2018/10/whats-next-europes-internet-censorship-plan-0 Proposal for a Directive of the European Parliament and of the Council on copyright in the Digital Single MarketCOM(2016)593 https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:52016PC0593 http://the1709blog.blogspot.com/2018/06/whats-all-fuss-about-eu-copyright.html
American Airlines has filed a legal action against the U.S. Copyright Office after it was denied the registration of American Airlines' logo. American Airlines Group, Inc. merged with US Airways and introduced its new logo five years ago. The new logo features a diagonal blue and red line with a bird's head in the middle. The Fort Worth-based carrier applied to register the new logo, which it dubbed the Flight Symbol, in 2016. In a move that surprised American, the Copyright Office denied American's registration. At one point, the Copyright Office reportedly said about the logo: "While the bar for creativity is low, it does exist and the work cannot glide over even its low heights." American disagrees, arguing that its Flight Symbol "easily" meets the creativity threshold necessary to register for copyright protection. The airline said that in most cases the Copyright Office's decisions are consistent and well-reasoned - but filed the lawsuit as here the office’s refusal “arbitrary, capricious … and an abuse of discretion”More here.
The Von Zobel family from Giebelstadt, C1770
The CJEU has backed the opinion of Advocate General, Maciej Szpunar in a German case that pitted a defendant (Michael Strotzer) who claimed he could not be liable for online infringement because he and his parents used the same internet connection, and the need to balance the (here) conflicting rights of a right to family life against the right of a copyright owner to protect their rights. The conclusion? The court have upheld the AG's opinion that "The right to respect for family life, recognised in article seven of the Charter Of Fundamental Rights of the EU, cannot be interpreted in such a way as to deprive right holders of any real possibility of protecting their right to IP" and confirmed the AG's position that Strotzer was "abusing the right to protection of family life by invoking that right, not in order to protect the members of his family against liability for the infringement of copyright with which they clearly have no connection, but solely in order to escape his own liability for that infringement" - whilst a fair balance has to be to be struck, an individual's right to a private and family life doesn't trump the right of a copyright owner who is seeking an effective remedy for an infringement.
For an opinionated but highly readable critique of the proposed reforms to South Africa's intellectual property laws - look not further that Sadulla Karjiker's article Shambolic Copyright Amendment Bill will favour Google and its ilkin Business Day: "There is no point in mincing my words about the passage of the proposed Copyright Amendment Bill thus far: it has been shambolic and would embarrass a banana republic. The reason the portfolio committee arrogated to itself the responsibility of drafting the bill was because the draft bill produced by the department was so poorly drafted that it resulted in wide-ranging criticisms from various stakeholders. Well, the portfolio committee’s efforts have quite frankly not been much better. Not only has the technical drafting been poor, but the department, and now the portfolio committee, continue to try to railroad a particularly skewed agenda through parliament." There is more - and it's all here. And more of the same - or similar: The American Law Institute describes itself as the “leading independent organisation in the United States producing scholarly work to clarify, modernise and improve the law” and periodically the ALI issues what have generally been regarded as well reasoned, well researched and academically sound ‘Restatements Of The Law’. But now the record music and music publishing sectors in the USA have taken great exception to the ALI's latest Restatement, on copyright, claiming that far from being independent lawyers and academics - they are comprised of those who have pushed to restrict copyright, with one comment being the authors are "notoriously anti-creator copyleft irritators". The Recording Industry Association of America and the National Music Publishers Association have written a joint letter to the ALI, and NMPA boss David Israelite said a statement yesterday. “The American Law Institute’s so-called ‘Restatement Of Copyright Law ... was written by extremist anti-copyright lawyers in an attempt to redefine copyright law” - with the letter saying "in recent years copyright law for music has faced repeated tests and challenges, including for those who legislate and interpret the law, in large part due to the transformation of the music industry from physical to digital” and “Important copyright law issues for music are before Congress, the courts and agencies”, they add. “Under these circumstances, attempting to ‘restate’ copyright law for music now is a difficult, if not an odd, exercise” and that “copyright law is ill suited for restatement by ALI at this time, especially as envisioned by the [authors]". And finally, an interesting read on copyright law reform in the Financial Times and the positive and negative sides of YouTube - with a quote from our very own John Enser!
Money for nothing: copyright law, YouTube, and the future of music [Part II]
We have often written on this blog about
the appropriation artist Richard Prince, whose work was at the origin of
several copyright infringement cases, including the Cariou
v. Prince case (see here,
Copyright bloggers owe him a full bowl of da
Prince is still embroiled in two copyright
infringement suits following his New
Portraits 2014 exhibition at Gagosian
: a copyright infringement suit was filed by photographer Donald Graham (see here)
and another by photographer Eric McNatt (see here),
both in the Southern District of New York (SDNY). These two cases are Eric McNatt v. Richard Prince et al.,
1:16-cv-08896 and Graham v. Prince et al.,
1:15-cv-10160. Richard Prince filed last week his two memorandums of law in
support of his motions for summary judgment in these two cases, see here
Richard Prince is an appropriation artist.
He explained in his motion to dismiss the McNatt
case that the NewPortraits “continue Prince over 40-year
career of using found photos and objects in order to comment on society,
through the use of text and recontextualisation.” The New Portraits, reproductions of Instagram posts complete with a
Prince’s comment, are each approximatively 41 by 41 inches, as an homage to
Andy Warhol who used this format for his portraits, as explained in the McNatt memo.
In the McNatt
case, Prince used a photograph of Kim Gordon, taken by Eric McNatt, and which
has been published on social media, to create one of his New Portraits works. In the Graham
case, Prince used Graham’s photograph of a
Rastafarian smoking a joint “which
already existed pervasively on the Internet, largely through Donald Graham’s own
actions” according to Prince’s memorandum, to create Portrait of Rastajay92. This is a rather odd argument, as Graham,
as the copyright holder, has the exclusive right to publish his work as he wished
to do, including on the web. This action does not give carte blanche to third parties to copy and use the work without
Donald Graham grant an implied license?
Prince argued that Donald Graham had
published his work on his Facebook page on a public setting, thus granting
Facebook a non-exclusive, transferable license to use the photograph. Prince
also argued that Graham did not use any embedded watermarks on his work, had
not set any privacy settings for viewing the work, and that he understood that
once published on the web, it was forever published on the web.
Prince argued that he “reasonably interpreted Graham’s conduct as permission to use the [p]hotograph
in a new way” and had a “non-exclusiveimplied license” to use the work,
citing the Field
v. Google case from the Nevada district court. In this case, the
court had found that Google had an implied license to display works protected
by copyright in cached links, even though the copyright owner did not
explicitly authorize such use. However, the court noted that Field could have
used a tag directing Google not to archive the pages, but did not do so and
thus had implicitly given Google a license to display his works.
Prince claimed in the McNatt case memo that Eric McNatt and Kim Gordon had posted the
original work on their Instagram accounts, and that McNatt still features the photograph
on his website without embedded watermarks. The original Graham work had been
republished on Instagram by a third party, user Rastajay92, and it is this
social media post which was reproduced by Prince, complete with his own
comment: “Canal Zinian da lam jam,” an
allusion to his Canal
Zone show, or, as Prince puts it, a “self-referentialallusio[n] to
his own artistic biography.” I wrote “da
lam jam” on the Google translate box: it detected Arabic as a language, and
offered “it did not g” as a translation.
Curiouser and curiouser!
Prince’s memorandum in the Graham case argues that his New
Portraits exhibitionwas a “social commentary” and thus a “core
fair use principle… expressed through a novel technological and sociological
medium and context” and that the forfeiture of the works, as asked by
Plaintiff Donald Graham, “would have a
chilling effect on the progress of the arts, to the detriment of the public.”
ode to social media
Prince argued that his use of Graham’s work
was highly transformative, because he used what he described as “an austere description of a Rastafarian”
and turned it into “anode to social media.” Prince further
argued that the fact that he did not add anything to the original work, unlike
in his works in the Cariou case, enhances his fair use claim, not
weakens it, because he needed to “authentically
replicate in the physical world the virtual world of social media.”
He used similar arguments in his motion to
dismiss the McNatt case, that he “imbuedwhat was once an austere depiction, documenting a female rocker in a defiant
pose into part of an ode to social media.“
It may be an ode to social media, but it is
also copyright infringement. The defense is fair use.
this ode to social media fair use?
Prince argued that his New Portraits were a parody of the social media posts as a whole.
So it is an ode to social media which is also a parody. A parody is indeed
highly transformative, and a highly transformative work is likely to be
considered by courts as a fair use of a protected work, under the first fair use
Prince argued that he used the Kim Gordon
photograph to comment on social media, about “the whole idea of putting up images on a new platform that was
available to anyone, to an entire population” and that artistic purpose was
“a world-away from McNatt’s purposein making the [p]hotograph.”
For Prince, Graham’s sales of his works
have not suffered because of Prince’s use and Graham’s notoriety has even been
greatly enhanced by Prince’s use, and that thus the fourth fair use factor, the
effect on the market, should weigh in Prince’s favor.
Prince also argued that Graham did not have
the right to exploit the photograph, as the right of publicity of its subject
is governed by Jamaican law, and that therefore any harm done by Prince’s use
of the work would harm an “illegitimate
market.” Prince used a similar argument in his McNatt memo, arguing that the photographer did not obtain Kim
Gordon’s written authorization to use her image, as required by the New York
right of publicity statute, other than for their original use, a publication in
Prince also argued that the second
fair use factor, the nature of the copyrighted work, should be in
his favor, as the original Graham work was “more
factual than creative.” As for the third factor, the amount and
substantiality of the work used, in relation to the protected work as a whole,
Prince cited the Bill
Graham case, in both of his memos, where the Second Circuit held
that the third factor can weigh in favor of the defendant even if the work is
reproduced in its entirety.
Prince argued that the original Graham work
has been cropped and that the remaining work was necessary to serve Prince’s
purpose, commenting about social media. He argued in the McNatt memo that Prince used an entire Instagram post, complete
with “colorized emojis” and thus drew
the viewer’s attention around the image, thus “reducing the artistic or intellectual importance of the photographic
image relative to its physical portion of the painting.”
This is quite a fair use battle royal.
Copyrights enthusiasts will keep watching, and possibly, cheering.
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
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.
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.
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
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.