Friday, 17 May 2019


(Common Law v. EU Law?)

For the first time there will be no live television broadcasts of Rugby World Cup games in New Zealand this year.  Telecommunications provider, Spark, has acquired the rights to ‘show’ the games (hosted in Japan) and they will be live streamed on its Spark Sport service.  Putting aside the problems of those who still do not and will not have adequate broadband connections by September, there will undoubtedly be many who will seek out pirate streams to avoid Spark’s subscriptions.  Because rugby is New Zealand’s most popular sport, streaming copyright issues are likely to multiply from current levels.

As in other countries New Zealand satellite broadcasters who have acquired licences to show content have been encountering a form of piracy by the parallel delivery of this content streamed over the internet from other jurisdictions free of charge.  Various technologies have been used, although Kodi programmed set top boxes are popular for viewing on a television screen.  There has been litigation. 

Current Case Law

In 2010 there was Munhwa Broadcasting Corporation v Young International which concerned Korean broadcasts being digitised and streamed online to NZ viewers to watch on their screens. The defendant argued that the transient copying that occurred in the buffers of the set top box and then by each picture frame momentarily appearing on a viewer’s screen were within the section 43A exception for transient reproduction.  Section 43A is equivalent to the Directive Article 5.1/UK section 28A exception for transient copying.  Potter J rejected this defence on the basis that these incidents of copying were not authorised by the rights owner. 

Then in 2018 two courts held in separate suits brought by Sky Network TV that (i) the sale of set top boxes with ‘add-ons’ providing access to pirated streams constitutes an infringing communication, (ii) the transient storage in the set top box memory of internet packets making up each video frame was copying, and (iii) the transient display of each frame on the viewer’s screen was also copying.  In each case Sky referred to the streaming of cricket matches live for which it had the sole rights to communicate within NZ.  The streams were generated from reception of a broadcast from Sky UK.  In one case, a District Court did not consider the section 43A exception to infringement for transient copying, while in the other case the High Court which did, rejected this defence on the basis that only the owner of copyright in the original broadcast could authorise the streaming in NZ and without such authorisation the use made by viewers could not be ‘a lawful use’

In the High Court decision it was accepted that the streaming of a live cricket match was a communication of a copyright work.  Since live sport cannot constitute a copyright work then it must have been the broadcast which was at issue.  That of course was not Sky NZ’s broadcast and the evidence did not show how and by whom Sky UK received its feed.

Comments on Current Case Law   

It is suggested the reasoning in all three decisions is at the least questionable, despite the fact that the primary cause of action in the two 2018 actions was breach of the Fair Trading Act based on allegations that the defendants in the advertising of their set top boxes had suggested purchasers would not be infringing copyright.  One issue of concern arises because CJEU statutory interpretation under the InfoSoc Directive seems to have been used rather than classic common law interpretation.  Further, the WIPO Copyright Treaty which gave rise to the right to communicate was totally forgotten about.  The ‘internet provisions’ in the NZ Copyright Act derive from the WCT, including the Article 8 right to communicate to the public’.  But, the NZ courts, like the CJEU, ignored or misinterpreted the Agreed Statement on Article 8, namely: ‘It is understood that the mere provision of physical facilities for enabling or making a communication does not itself amount to communication within the meaning of the Treaty …’. 

As to case law precedents, the CJEU decision in Strichting Brein v Jack Frederick Wullems was used in the two 2018 judgments to interpret breaches of the exclusive right to communicate a work to the public to include the sale of ‘tweaked’ set top boxes.  But for the s.43A defence the most applicable and persuasive authority for NZ, the UK Supreme Court judgment in Public Relations Consultants Association v The Newspaper Licensing Agency [2013] UKSC 18, (the Meltwater case) was not considered.

Statutory interpretation issues

Following the common law rules of interpretation, the right to communicate would have been given its literal meaning as there is no ambiguity in the way it is expressed in the restricted acts listed in s.16 of the NZ Act.  It would not be broadened beyond its literal meaning which is to transmit information.  It would not encompass the sale of individual pieces of apparatus for receiving or processing the information.  Under the old broadcast right, common law courts, including NZ, did not interpret that right to include the distribution of radio or television receivers.  In addition, the exception provided by way of the Agreed Statement on Article 8 would be given the same weight as the Article 8 right itself.  It should not be devalued on the argument used by the CJEU that the EU Directive was for the benefit of copyright owners.  The aim of the WCT was to bring copyright into the internet age in a balanced manner.      

In the section 43A transient reproduction exception, limbs (b)(i) and (ii) offer alternative defence components, and if either one is satisfied then section 43A provides a defence to transient copying.  But the Munhwa and Sky judgments seemed to conflate limbs b(i) and b(ii) and concluded that if viewers were receiving a communication which might infringe copyright, then the viewers’ transient reproduction could not be a ‘lawful use’ of the communicated work.  However, as was pointed out by Lord Sumption in the Meltwater case, ‘The use of material is not unlawful by reason only of the fact that it lacks authorisation of the copyright owner.’  ‘Lawful use extends to use which is “not restricted by the applicable legislation”’.  And copyright legislation does not make private viewing of content on a screen an infringing act any more than it makes reading a book an infringing act even if the book is a reprint made by an unlicensed third party.

The defence provided in s.43A for transient reproduction is not even necessary for the actual display of sport on a domestic television screen.  Copyright is not infringed by the private display of content on a screen. It never has been since the days of home film projectors being used to show bought or hired movies.  To suggest otherwise, as the courts did, is in direct conflict with the statutory limitation of the s.16(1)(e) exclusive right ‘to show the work’ to showings which are made in public.


In the litigation that will predictably arise as the Rugby World Cup draws closer it is to be hoped New Zealand’s copyright law will not be misconstrued to ensure licensees can obtain a remedy.  Until the legislation is changed to reflect a more comprehensive understanding of the digital technology used to supply content, instead of trying to use concepts more appropriate to content stored on physical media, licensees will be best served by seeking blocking orders against ISPs to block access to the IP addresses of pirate streamers.  NZ courts have plenty of persuasive precedents to follow in the form of Arnold J’s blocking orders in the UK.

As it happens, NZ has recently started a major (and no doubt lengthy) review of its Copyright Act and it is tempting to advocate introducing the US patent concept of ‘contributory infringement’ to render liable those who supply especially configured hardware to assist pirates.  And the cumbersome concept of infringing copyright by ‘authorising’ needs to be supplemented or totally replaced!     

Tuesday, 14 May 2019


COPYRIGHT IN GEORGIA’S LEGAL CODE: THE WAY FORWARD?  In 2018 The 11th Circuit had held that the statutory legal code of Georgia is not protected by copyright law. An important decision propagating the norm of open access to legal documents and rules was given by this court. The prime reason for this action of review is to reaffirm this ruling and set it as a binding precedent even beyond the precedential scope of 11th Circuit. As open records activist Carl Malamud said "Access to the law is a fundamental aspect of our system of democracy, an essential element of due process, equal protection, and access to justice". The Eleventh Circuit's ruling is persuasive authority, that could be used elsewhere, and this petition has been filed to convert it to a completely binding precedent by the hands of the US Supreme Court. The core reason for this action of review is to bring in efficiency in copyright implementation by ruling the 11th Circuit’s decision as the law of the land. The critical need for public’s access to law needs to be ultimately recognized. A meaningful access for the purpose of public accountability, learning, teaching etc, is imperative and copyrighting the same would involve inclusion of subscription and other commercial mechanisms to access the content of law. “An intrinsically public domain material, which belongs to the public” cannot be allowed to be curbed from open access. Analyzing another jurisdiction, it is worthy to be noted that the Indian Supreme Court has also gone on to hold that court Judgments and orders are public documents and the text thereof cannot be monopolized by the instrument of Copyright. 

BATISTE v. MACKLEMORE COPYRIGHT INFRINGEMENT SUIT DISMISSED. in another music industry plagiarism case,  Paul Batiste of the Batiste Brothers Band had, in 2017, filed an infringement suit against Macklemore and Lewis, arguing that a number of Macklemore’s songs lincluding “Can’t Hold Us”, “Same Love”, and “Thrift Shop”  had (and in an unauthorized manner) copied and sampled certain original elements of eleven of his songs. Now in Louisiana a Federal Judge has reached a decision on the matter which  reinforces the test for determining copyright infringement in musical works - whilst applying the same to the facts of this case and ruling against infringement (Judge Martin L.C. Feldman in a summary decision). Judge Feldman reiterated that there are three elements that need to be fulfilled to determine copyright infringement in a musical work. These are: (i) Ownership of a valid copyright, (ii) factual copying and (iii) substantial similarity. Factual copying needs to be established through circumstantial evidence, wherein the factor of “access” (reasonable opportunity to view) to original works can be claimed while proving such infringement. In the case at hand, neither factual striking similarity was established nor was access proven satisfactorily for an action of infringement to succeed. No evidence which could show that the defendants had even heard of Batiste was adduced before the court. Mere wide dissemination does not fulfill the threshold required to prove conclusive possibility of access.

NORA ROBERTS ALLEGES MULTI-PLAGARISM AGAINST A BRAZILIAN INDEPENDENT AUTHOR  A copyright infringement case has been filed in the Rio Court by Nora Roberts on the issue of plagiarism. She has reportedly claimed 3,000 times the value of the highest sale of the books alleged to infringe written by  Cristiane Serruya. The court filing alleges that the infringing books to convey practically identical 'emotions' to Nora’s books and that Serruya has committed “multi-plagiarism” on a “rare and scandalous” level. Nora has released a statement saying, “If you take my work, you will pay for it!” Further, Roberts has acknowledged the issue of funds to pursue such infringement litigation by writers who have their works plagiarized and profited upon.  The position of the defendant has constantly been that she is innocent of the allegations say8ng that  she uses ghostwriters for her books and further a plagiarism checker tool - to check against such unauthorized copying. The decision is pending.

FORTNITE SUED AGAIN!! And thus time it's for some signature “Phone It In” moves:  saxophonist Leo Pellegrino has alleged Fortnite to have misappropriated his likeness without permission involving a saxophone dance in the game. He has alleged that Epic (Fortnite developers) has, without permission, used certain moves which have become inseperable from his persona. The claim focuses on  the likeness of the character performing such moves in the game with Leo including the use of “outward pointing feet” used specifically by Pellegrino while playing the Saxophone and the striking similarity with the pose and the 'passion'. It must be noted that Fortnite has also been sued with respect to certain dance moves which has brought in the contentious issue of whether dance moves can be copyrighted. Another instance wherein Fortnite has been in news is the claim of royalties being brought in by the music industry against this inline gaming platform, wherein a virtual concert of DJ Marshmellow was shown. Post the EU Copyright Directive being signed, tech companies are to seek licenses from music industry before hosting any of their content online. Such digital royalty claims of usage of music in gaming platforms has been made possible post the signing of the new EU Copyright provisions.

LA LIGA SUCCESSFUL IN BLOCKING PIRATE CHANNELS IN DENMARK Spain's premier football league La Liga had brought a claim in Denmark to block certain channels which played and streamed its matches in a pirated format. This landmark decision  brings in protection to right holders in a market with suffers from ongoing and widespread piracy issues. Further, acknowledging the risk of getting malware infected due to such illegal streaming, the court, not only concerned its decision with the right holders but also the users of such services. La Liga’s audiovisual director was quoted commenting this to be an important step to fight the peril of broadcast piracy which is rampant around the world, and the commercial gain developed by such illegal advertising on these services, resulting in heavy earnings for those behind developing these unauthorized and illegal methods. He said: “Audio-visual Piracy is illegal and has significant consequences, not only for us, but for the league and the future of the game, so we are very happy that Rettigheds Alliancen has joined us in the fight. We know that Denmark is at the forefront of the development of digital tools to fight online piracy, and this is a big issue for us. We are now looking forward to seeing the effects of the blocking and hope that they can serve as an example for other countries, so that we can stand together in the fight against online piracy.”

INTERNET STREAMING, OUTSIDE THE PURVIEW OF STATUTORY LICENSING UNDER SECTION 31D OF THE COPYRIGHT ACT, IN INDIA. The Bombay High Court has reached an important decision that may well effect the development of the music streaming market in India - not least as Spotify seeks to expand in the Indian market. In the matter of Tips Industries Limited vs Wynk Music Ltd, the single bench of Justice S.J. Kathawalla in the Bombay High Court (judgement dated April 23, 2019) ruled upon many issues with respect to internet streaming on OTT platforms and its implications on the statutory licensing provided under Section 31D of the Indian Copyright Act. Section 31D of the Copyright provides for a statutory licensing scheme, as per which any ‘broadcasting organisation’ desirous of ‘communicating to the public’ any sound recording or its underlying works, may obtain a statutory license to do so, provided they pay the royalty rates to the copyright owners. The core highlight of the judgment includes the point that the services rendered by the Defendants through their download and purchase features amount to commercial rental / sale of the Plaintiff’s (Tips) copyrighted sound recordings. Since the right to commercially rent and sell a sound recording is a separate and distinct right as against the right to communicate the sound recording to the public, the Defendants cannot exercise a Statutory License under Section 31-D in respect of the download and purchase features provided by them. Had the Legislature intended for a statutory license under the said Section 31-D to encompass the sale and/or commercial rental as contemplated under Section 14(1)(e)(ii), The legislature would have employed express language to that effect in Section 31-D of the Act. The absence of such language or even mention of sale and/or commercial rental in Section 31-D of the Act makes the intention of the Legislature crystal clear to exclude the commercial rental/sale of sound recordings from the purview of Section 31-D. It is therefore evident that Section 31-D contemplates communication to the public by way of the broadcast of sound recordings only, and not their commercial rental and/or sale. The grant of Statutory The license under Section 31-D is only restricted to radio and television broadcasting organizations and the Defendants’ on-demand streaming services offered through the internet as an “internet broadcasting organization” do not fall within the purview of Section 31-D of the Act. More here

This update from the 1709 Blog intern Akshat Agrawal

Friday, 3 May 2019

Man fined for stealing sketches from Gerhard Richter's trash

A 49-year-old German man was recently found guilty of theft in relation to four artworks, which had been thrown in the garbage by world-famous artist Gerhard Richter in July 2016. 

Richter became aware of the scam when the Gerhard Richter Archive was contacted by the defendant with a request to issue certificates of authenticity, before selling the works at auction in Munich.

Dietmar Elger, the head of the Archive (which is now part of Dresden State Art Collection) became suspicious as the sketches – though authentic - were unusually unframed and unsigned. The man claimed to have received the sketches from a painter, who in turn would have obtained them directly from Richter. The Archive then informed the latter, who decided to file a complaint against the defendant, also requesting the destruction of the works. A few days ago, a judge of the Cologne District Court held that - although the works were discarded and thrown away – they still belonged to the artist, who decided to hand them over to a waste disposal facility for the purpose of disposal. The man was thus fined EUR 3,150 for theft and the works -valued at approximately EUR 60,000 – were seized.

Gerhard Richter, Yusuf, 2009
This case raises some interesting legal issues.

First, whether a work which is thrown away by an artist still belongs to the latter or, instead, shall be considered as an abandoned property, belonging to the first taker, who can subsequently sell it as an authentic work of art.

Second, and most importantly, it concerns the artist’s right to disown and request the destruction of authentic works, if they do not correspond any longer to their artistic feelings. In 2015, for instance, Richter decided to exclude some early works of his West German period from his catalogue raisonné to better shape his artistic legacy. The artist is known for editing his oeuvre and these artistic choices often bring criticism and uncertainty to the art world. The artist’s right to change their mind about the worth of their own artistic production often conflicts with the owner's right of the disowned works to dispose of them.

Monday, 29 April 2019


The Verge have published a new article on the role and implications of AI - artificial intelligence - in the 'authorship' of musical works - although the same thoughts must surely apply to artistic, literary and dramatic works . In 'WE’VE BEEN WARNED ABOUT AI AND MUSIC FOR OVER 50 YEARS, BUT NO ONE’S PREPARED' Dani Deahl asks some interesting questions - and find very few answers! As AI begins to reshape how music is made, how are our legal systems going to answer some messy questions regarding authorship. Do AI algorithms create their own work, or is it the humans behind them? What happens if AI software trained solely on Beyoncé creates a track that sounds just like her? Just a few of the thoughts in there!  Jonathan Bailey, CTO of audio tech company iZotope, seemed to most concisely sum up the issue “I won’t mince words,” he told The Verge. “This is a total legal clusterfuck.”

Bloomberg reports that a US photographer could lose some or all of a $450,000 jury award because he didn’t establish that the allegedly infringing business owner willfully infringed his copyrights by hiring a web developer who used unlicensed images. The U.S. Court of Appeals for the Ninth Circuit April 16 reversed part of a jury verdict in favor of photographer Jim Erickson in his 2013 lawsuit against Kraig Rudinger Kast holding that Erickson failed to show Kast financially benefited from the infringement or went beyond negligence into willfulness, remanding those issues back to the lower court: “Negligence is a less culpable mental state than actual knowledge, willful blindness, or recklessness, the three mental states that properly support a finding of willfulness”. And more on in a similar vein from the Second Circuit Court of Appeals in the case between BWP Media and e-commerce website Polyvore - digested by the New York Law Journal here

The US government has published its annual piracy report from the US Trade Representative which highlights where the US feels IP rights are most at risk. Both of America's closest neighbours, Canada and Mexico, appear on the list of countries that should be doing more to protect IP rights but special mention goes to Algeria, Argentina, Chile, China, India, Indonesia, Kuwait, Russia, Saudi Arabia, Ukraine and Venezuela. In a statement the UTSR said  "These trading partners will be the subject of increased bilateral engagement with USTR to address IP concerns. For such countries that fail to address US concerns, USTR will take appropriate actions". Drilling down into where the problems lie,The Pirate Bay gets a mention but the report acknowledges that other forms of piracy are now out-performing file-sharing. The report notes that "pirate streaming sites continue to gain popularity, overtaking pirate torrent and direct download sites for distribution of pirated content". The USTR says that the aim of its annual piracy bad boys list is "to motivate appropriate action by the private sector and governments to reduce piracy and counterfeiting".

A US federal appeals court has rejected a fair use ruling by a lower court in a case that focuses on what can and cannot be considered when applying the doctrine. The District Court in Brammer v. Violent Hues had found that the unauthorised use of a photograph qualified as fair use, even though it was a commercial use that did little to give any new meaning to the original photograph. At the time of the ruling US District Judge Claude M Hilton was widely criticised by legal observers and photographers’ trade groups who disagreed with his ruling that Violent Hues’s use of Brammer’s photo was “transformative” because Brammer had created the image for “promotional” purposes, while Violent Hues used it for “informational” purposes. The U.S. Court of Appeals for the Fourth Circuit has emphatically reversed the lower court’s ruling saying “What Violent Hues did was publish a tourism guide for a commercial event and include [Brammer’s] Photo to make the end product more visually interesting. Such a use would not constitute fair use when done in print, and it does not constitute fair use on the Internet” adding “If the ordinary commercial use of stock photography constituted fair use, professional photographers would have little financial incentive to produce their work” and that " “fair us is not designed to protect lazy appropriators". 

Friday, 26 April 2019

Photographer Claims Versace Removed CMI in Instagram Post of Jennifer Lopez

Photographer Robert Barbera has just filed a copyright infringement suit against Versace USA in the Southern District of New York, claiming that the fashion company did not have the right to publish, on its Instagram account, a photograph of Jennifer Lopez wearing Versace [see here]. [This is the second time in a row I am mentioning J-Lo in a blog post…]

Barbera registered the photograph with the Copyright Office. He did not license it to Versace.

Versace’s Instagram account is used to promote the brand and features many pictures of products and models, presumably taken as part of the company’s marketing and public relations strategy. The account is obviously used as a promotional tool. 
Is Versace in hot cappuccino? 

Copyright Management Information and Moral Rights  

Barbera claims copyright infringement and also alleges that Versace “intentionally and knowingly removed copyright management information identifying Plaintiff as the photographer of the Photograph,” thus violating 17 U.S.C. § 1202(b), which forbids to intentionally remove or alter any copyright management information without authorization of the copyright owner.

Copyright management information (CMI) includes, under Section 1202, the “title and other information identifying the work, including the information set forth on a notice of copyright… [t]he name of, and other identifying information about, the author of a work [and] [t]he name of, and other identifying information about, the copyright owner of the work, including the information set forth in a notice of copyright.”

This is an interesting claim as the Copyright Office has just published its study of attribution and integrity rights in the United States. It addresses the issue of CMI and notes (p.86) that “[i]t is common practice in the digital world for CMI to be stripped from works, disconnecting a work from its authorship and ownership information” and further notes that the provisions of section 1202 “provide a form of quasi-moral rights protection by effectively preserving the names of authors, owners, and other creators in connection with their works.”

In our case, Plaintiff claims that Versace removed the CMI “intentionally, knowingly and with the intent to induce, enable, facilitate, or conceal their infringement of Plaintiff’s copyright in the Photograph. Versace also knew, or should have known, that such falsification, alteration and/or removal of said copyright management information would induce, enable, facilitate, or conceal their infringement of Plaintiff’s copyright in the Photograph.”

Could First Amendment be a Defense?

What about originality? The photograph has been registered and thus was deemed original enough to be protected by copyright. Yet, the pose, the angle, the light, are all quite mundane. What is original in the picture is the striking pattern of the Versace outfit worn by Miss Lopez.

While fashion designs are not protected by copyright in the US, with a few rare exceptions, patterns are protected and the one adorning the cat suit outfit featured in the allegedly infringing photograph is certainly original enough to be protected by copyright. However, Versace could not claim infringement as the picture is protected by the First Amendment: it was taken at a public event, the 2018 MTV Video Music Awards, and Versace used #VMAs as a hashtag. Could posting the picture on its corporate account be protected by the First Amendment? It certainly could be argued.

What about J.Lo.? By thus appearing in the Versace account, dressed in a Versace outfit, her likeness is used for commercial purpose. If this use is unauthorized, she could file a right of publicity suit. However, Versace could then also use the First Amendment as a defense.

However, it is possible, even likely, that the famous singer and actress has an agreement with Versace and that therefore the use of her likeness is authorized. She is one of the #Versacecelebrities, another hashtag used in the post, and has been wearing the brand for years, making headlines sometimes doing so. She was recently nominated CFDA's 2019 Fashion Icon. I won’t write about her in my next blog post. 
Image is courtesy of Flickr user irene. under a CC BY-ND 2.0 license

Wednesday, 24 April 2019

Mr. Enjoy is Mr. Plaintiff (Was he the Boss in E*Trade’s Commercials as Well?)

Gianluca Vacchi is a social media influencer and DJ, who has more than 12 million followers on Instagram. He appeared last year in a commercial (do not watch while drinking) for the Bank of Georgia, Europe, which was so successful that “that many United States residents registered as clients of the bank” (because nothing gives you more confidence than a Santa Claus in an orange satin robe).

While Italian and living in Milan, Vacchi travels around the world to dance on roof tops, DJing, and generally having a good time. He chose Mr. Enjoy as his nickname. After all, as another Italian influencer, who also meddled a bit with music, urged us: “Godiam, la tazza e il cantico, La notte abbella e il riso. »

But Vacchi is not enjoying two of online investing company E*Trade’s commercials, [here is the other one] which were produced in mid-2017, where a middle-aged man, presented as “your boss,” is featured dancing with abandon (with who?)… with scantily dressed women.

Vacchi has just filed suit in the Southern District of New York against E*Trade, claiming “copyright infringement, as well as false endorsement and misappropriation of protectable character, protectable scenes, and image and persona of “the coolest man on Instagram.” Will he be successful? 
Grandpa was a social media influencer 
New York Right of Publicity

New York Civil Rights Law §§ 50 and 51 is the state of New York’s only right to privacy, which is not otherwise recognized by its common law. The statute makes it a misdemeanor to use the name, portrait or picture of a living person for advertising or trade purposes without prior written consent.

The E*Trade commercials are certainly “for advertising or trade purposes.” What is less certain, however, is whether the “name, portrait, or picture” of Vacchi has been used by Defendant.

Protecting the Persona?

In fact, even a simple Google search for “dancing millionaire” inevitably shows Plaintiff in the top results” (Complaint).

Plaintiff claims a use of his image and his persona.

New York courts have recognized that using a "lookalike" of a well-known personality for commercial purposes is a violation of New York Civil Rights Law §§ 50 and 51. In this case, a lookalike of Jacqueline Kennedy Onassis has been featured in a Dior ad. The court noted that “Plaintiff's name appears nowhere in the advertisement. Nevertheless, the picture of a well-known personality, used in an ad and instantly recognizable, will still serve as a badge of approval for that commercial product.” In our case, Vacchi’s name is not used in the commercial either.

Lindsay Lohan was not able to convince the courts last year either that Take-Two Interactive Software, the developer and distributor of the Grand Theft Auto V video game, had used her likeness and persona to create the character Lacey Jonas (see here and here). But the case was about a video game, not an advertisement, and the court in Onassis v. Dior distinguished artistic from commercial endeavors.

In our case, Plaintiff is a middle aged man, with trimmed grey beard and hair, a toned and tattooed body, and a propensity to take pictures of himself while bare chested.  This is his image, his likeness, his resemblance.

Plaintiff claims that Defendant used a “clone of Vacchi, dancing with women on a boat while DJ’ing: conduct that based upon numerous YouTube videos, photographs, and music videos created and published by Vacchi, has become synonymous with the image and persona,” and describes “the E*Trade Character [as] a heavily-tattooed male with bare torso dancing with a beautiful female companion.

Vacchi self-described persona is “the coolest man on Instagram,” and he very well may be if cool is defined by sunsets seen from high rise balconies, partying, the beaches, dancing around rooftop swimming pools, and leopard cushions. No coupon clipping for him.

So Plaintiff’s persona could be: man + middle-aged + toned and tattooed body + glasses + dancing + trim gray beard + exotic locales + women in teeny weeny bathing suits. This could also describe an aged James Bond after one too many stirred Martinis led him to the tattoo parlor, or Queequeg if Moby-Dick had shed some blubber and got a bikini wax.

The E*Trade character is a middle-aged  man, with glasses, bare chested, with tattoos, dancing with young women in bathing suits, on a yacht. He wears suspenders, as does Plaintiff sometimes.

It could be argued, as in the Onassis v. Dior case, that “plaintiff's identity was impermissibly misappropriated for the purposes of trade and advertising, and that it makes no difference if the picture used to establish that identity was genuine or counterfeit.” Plaintiff would still need to prove that Defendant used his image. Or maybe it meant to portray the Most Interesting Man in the World.

Copyright Infringement

Plaintiff also claims that Defendant’s videos are infringing derivative works  and that “E*Trade’s commercial is simply a rip-off of a number of videos created and published by Vacchi over the years.”

Plaintiff regularly posts short videos on his Instagram account, featuring him and other persons in exotic locales. He is seen doing less than mundane activities, such as tattooing a female doll (cringe alert on this one), or pedaling on a stationary bike in his private jet. 

Plaintiff did not obtain a registration for these videos before filing suit, because “Plaintiff is a foreign citizen and did not register all of his videos and photos in the United States.

This is too bad, as the U.S. Supreme Court held last month, in Fourth Estate Public Benefit Corp. v. LLC, that a plaintiff claiming copyright infringement must first register the work with the U.S. copyright Office before filing suit. 

Plaintiff’s Instagram videos are probably not original enough to be protected by copyright anyway. The Copyright Office appears to be less and less inclined these days [see here and here]  to register such works, because they are not original enough to be worthy of copyright protection.

The videos feature cliché images of sunsets on the beach, descending the steps of a private jet, big designer bags, having a manservant in livery, leopard cushions, party, party, party, and young women in bikinis. They look sometimes like a Michael Kors ad. Whether they are to be taken with a grain of salt is irrelevant, as they are unprotectable scènes à faire of a “Let’s live in a Jennifer Lopez video” lifestyle (I love that song).

The case will probably settle (alas, may I add, rather selfishly).

Monday, 15 April 2019


The 3rd U.S. Circuit Court of Appeals sitting in Philadelphia must be hoping not to slip up on the appeal being heard in the case between Kangaroo Manufacturing which is now the subject of an injunction issued by a federal trial judge preventing it making a banana costume that seemingly resembled that of costume-maker Rasta Imposta. Kangaroo are arguing that nothing makes the Rasta Imposta costume protectable by copyright as it lacks any distinctive features and resembles - well, a banana.  U.S. District Judge Noel Hillman used terms such as “bananafest” and “bananapalooza” at a hearing, and he then issued what the Times termed “a split decision” in favor of Rasta Imposta on two of the issues and in favor of Kangaroo Manufacturing on one.

Infowars' Alex Jones, who has been sued by Pepe the Frog artist Matt Furie for allegedly infringing Furie’s copyright on the cartoon frog by putting Pepe on a poster that Infowars was selling, has made a number of defences to his actions in a wide-ranging deposition, comparing his use of Pepe the Frog to artist Andy Warhol's paintings of Campbell’s soup can and saying “[Pepe the Frog] is a symbol of free speech” adding .“There’s now a movement to try to then control and own symbols that have entered the public domain and public use….and so now I see it as basically a tombstone of free speech and fair use in the Western world. So I see it for what it is, from the perspective of the corporate fascists.” Much more on Motherboard here

The EU Council has now  approved the European Copyright Directive, the last step in the EU legislative process - it is now up to each EU member state to implement the new copyright laws.  "It was a long road and we would like to thank everyone who contributed to the discussion" said Helen Smith, head of the pan-European independent record label group IMPALA. "As a result, we now have a balanced text that sets a precedent for the rest of the world to follow, by putting citizens and creators at the heart of the reform and introducing clear rules for online platforms".

A video in support of Donald Trump's 2020 re-election campaign has been removed from Twitter . The video uses music from the Warner Bros Batman film 'The Dark Knight Rises' and in a statement Warner Bros. confirmed it was taking action over the video: "The use of Warner Bros.’ score from The Dark Knight Rises in the campaign video was unauthorized," a spokesperson said. "We are working through the appropriate legal channels to have it removed.” The video in Trump's tweet had been replaced by a message that it was no longer available "in response to a report by the copyright owner." 

And finally, Chinese authorities have suspended country's largest stock images provider's website after it was found to have put its copyright mark on the first ever photo taken of a black hole. China Daily reported that Visual China Group (VCG) had published the black hole photo with a watermark to indicate ownership and that a fee was payable for use. The cyberspace affairs authority in Tianjin (North) to suspend its website. The incident led to the Chinese National Copyright Administration to say that it would launch a campaign to regulate the image copyright market, noting that firms should set up mechanisms to uphold copyright as per legal requirements, here that image from  the Event Horizon Telescope was available for use where it was properly attributed, a position commonly taken by the European Southern Observatory and the National Aeronautics and Space Administration (NASA). The black hole measures 40 billion km across - three million times the size of the Earth - and has been described by scientists as "a monster". It is 500 million trillion km away. And we are delighted to say this image is from the Event Horizon Telescope (EHT), a network of eight linked telescopes.

Wednesday, 10 April 2019

Are Marvel’s Arguments’ Iron Clad?

The Horizon Comics Productions v. Marvel Entertainment suit (Southern District of New York, 16-cv-2499) is still pending.

What is the case about?

Ben and Ray Lai are two brothers who own Horizon Comics Productions and created the comic book series Radix in 2001. Only a few books were published in 2001 and 2002.

Radix featured characters wearing “highly-detailed, futuristic, armored, and weaponized suits of body armor to fight enemies” (original complaint).

Marvel created the Avengers series, of which Iron Man is one of the superheroes. The character gets his superpowers from a powered armored suit.

Uh-oh, two power suits (not the eighties type with the big shoulder pads, the armored and weaponized type).  
Honk if you remember these
Marvel’s Iron Man character first appeared in 1963, but he did not have armor then. Plaintiffs alleged that he first wore a “spandex-like attire and minimal armor” and then wore a “fully mechanized suit of body armor” in the Marvel movies, and that this change occurred after Plaintiffs had submitted the Radix art to Defendants and were hired by Marvel as freelance artists.

Robert Downey Junior (RDJ) played Iron Man in several of Marvel’s movies. Iron Man 3  is at stake in this case, or rather, the promotional poster of the movie, which shows RDJ crouching in costume, the left knee on the floor, the right leg bended, the left hand on the floor, the right hand closed in a fist.

Plaintiffs claimed that the armored suit worn by Iron Man in the Iron Man and Avengers film was based on a suit worn by the hero of Radix and that the promotional poster copied a particular promotional piece for Radix (the Caliban Drawing).

Marvel had moved to dismiss claiming that elements of Plaintiff’s works which had allegedly been copied were not protectable as a matter of law and were not, in any event, substantially similar to Defendants’ works. In March 2017, Judge Paul Oetken granted the motion as to the armored suit’s claim, but allowed the complaint about the promotional posters to move forward.

Defendant recently filed a memorandum of law in support of its motion for summary judgment.

Parties in a copyright infringement suit sometimes struggle to prove how a particular work has been created. However, it is essential to be able to prove that the allegedly infringing work has been independently created. This is why Marvel’s memorandum of law is particularly interesting to read. 

Opportunity to copy

A plaintiff claiming copyright infringement must show that the defendant copied his work. If there is no direct evidence of actual copying, he must show access and probative similarity.

Marvel claims that that it hadn’t access to the Caliban Drawing. Plaintiffs claim that Ray Lai had provided his business card to several persons which listed a web site address where the Caliban Drawing could be found, and that the drawing was hung on a wall at a comic book convention in 2001.

Marvel denied it had access, as there was no evidence that anyone involved in the creation of the Iron Man 3 poster was at the comic book convention where the drawing was allegedly featured. They further argued that the mere fact that the drawing was allegedly   featured on Plaintiff’s website is not sufficient evidence, as “the existence of the plaintiff’s copyrighted materials on the Internet, even on a public and ‘user-friendly’ site, cannot by itself justify an inference that defendant accessed those materials.” Defendant noted that Plaintiff’s website had ceased to operate in 2003, which made it improbable that anyone involved in the making of the poster, even if they had indeed visited the site, would have saved a copy of the Caliban Drawing found on the site and then used it years later to create the Iron Man 3 promotional poster.

If Plaintiff is not able to prove access, then probative similarities are not sufficient to prove copying. Instead, plaintiff must prove that the two works are “strikingly similar,” which means that “two works are so nearly alike that the only reasonable explanation for such a great degree of similarity is that the latter was copied from the first.

Creative process

It is Marvel’s description of the independent creation of the Iron Man 3 Poster which is particularly interesting to read.

Even if a plaintiff provides evidence supporting a prima facie case of infringement, defendant can still prevail if can prove that he independently created the work.

Disney and Marvel had retained the service of a third party to create the poster. He testified he had never see the Caliban Drawing, but described his creative process.

He reviewed the Iron Man 3 script then developed inspiration boards using images from prior Iron Man movies and comics. He and his team then made black and white sketches, which were used as an inspiration for RDJ during a photo shoot.

Hundreds of photos were taken during the shoot. One of them shows the actor in the pose which was later chosen for the Iron Man 3 promotional poster. RDJ is shown looking down at the black and white sketches while posing.

Defendant was thus able to establish a chain of inspiration: inspiration board drawings of former Iron Man movies and comics, which inspire sketches, which in turn inspire the RDJ pose, which is then replicated in the poster.  Defendants claim this a “straightforward development process.

Defendants further explained that before the poster was finalized, the creative team had provided Marvel with “callout” documents “identifying, by source and serial number, every photographic and artistic element depicted in the Iron Man 3 poster, so that Marvel Studios’ legal team could “clear” any license rights needed for those materials.” Defendants argued that “the photos used for Iron Man’s head, shoulders, arms and fist” were all taken during the RDJ shoot.

Defendant concludes by stating that “[t]he claim that they would copy a drawing made some 10 years earlier by unknown artists, to promote an unheard-of comic book, depicting an anonymous character wearing a generic armored suit in a stock fighting pose is, candidly, ludicrous.” [Ouch]. 

Image of the "power suit" is courtesy of Flickr User (and Thrift Store Extraordinaire) Housing Works Thrift Shops, under a  CC BY-SA 2.0 license. C BY-SA 2.0