Wednesday, 14 August 2019

Copyright make-up tips - How to make a lasting impression

The 1709 Blog is happy to host this guest contribution by former 1709 Blog team member Hugo Cox (Hamlins LLP) on a recent decision of the High Court of England and Wales concerning copyright and make-up.

Here's what Hugo writes:

Copyright make-up tips - How to make a lasting impression
by Hugo Cox

One of the basic requirements for copyright protection in the UK is ‘fixation’ – the work has to have material form.

But what happens if the work loses its material form? Does the copyright protection disappear too? This question is of some significance to those who create things that do not last, whether they are disposed of, eaten or otherwise annihilated…

The question has now been decided in Islestarr Holdings Ltd v Aldi Stores Ltd, a judgment delivered on 17 June concerning the make-up powder palettes below:

Islestarr had been selling its Filmstar Palette since 2013, retailing for about £49 and clocking sales to date of £12.9m. When Aldi began selling its palette for £6.99 (reduced to £4.99), Islestarr sued for copyright infringement, pointing to Aldi’s slogan ‘Like brands, only cheaper’.

Aldi resisted the claim arguing, among other things, copyright could not subsist ‘in such a transitory medium as the top surface of a powder as the purported copyright work is not thereby fixed.’

The judge took a different view:
I am in no doubt that the design embossed into the powders can be subject to copyright protection in principle. Otherwise, artistic works by, for example, persons who make sculptures out of sand at low water on a tidal beach, which are then washed away, could have no claim to copyright in, say, a pre-construction sketch or photograph of the completed work. Likewise, I can see no reason why the creator of a bespoke wedding cake could not claim copyright in his or her work. The fact that the design in the powders disappears by being rubbed away by the user, does not, in my judgment, affect or remove the copyright protection to which such an artistic work is entitled, as that is as set out as a visual record in Annex 4. In other words, the powders are a three-dimensional reproduction of the two-dimensional object, namely the drawing.
Certainly, this conclusion is aligned with the CJEU’s recent ruling in Levola Hengelo on whether the taste of cheese can be protected by copyright. The CJEU reasoned:
Accordingly, for there to be a “work” as referred to in Directive 2001/29, the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.
The judge in our case then determined:

  • Though copyright does not protect individual words (such as the words SCULPT and HIGHLIGHT embossed on the powder), copyright did subsist in the presence of the words as part of the overall artistic work.
  • Though Art Deco has inspired the Islestarr designs and Fabergé and others had manufactured objects decorated with sun rays and diamonds, Islestarr had made their own intellectual choices in creating their designs.
  • Aldi had admitted being aware of Islestarr’s packaging, there were substantial similarities between the designs and Aldi failed to persuade the judge those similarities did not result from copying.

He therefore decided to award summary judgment against Aldi.

Transient creations are not, it seems, at least in the eyes of UK copyright law, so transient after all.

Monday, 12 August 2019

THE COPYKAT - in the wake of "Blurred Lines" - more blurred lines

There have been two major US decisions in the word of music and sound recordings with a win for Kraftwerk and a loss for Katy Perry, and in the background a third (the Led Zepplin "Stairway to Heaven" case waits for an upcoming an en banc appeal in the Ninth Circuit, and a fourth involving Ed Sheerhan in turn waiting for that decision (Sheerhan v Townsend) with Judge Louis L Stanton acknowledging that as the appeal judges will be considering some copyright technicalities that are very relevant to the 'Thinking Out Loud' action, even if not binding, to proceed with Sheerhan case in "wilful ignorance" of their conclusions would be "folly". 

First off - sampling: The European Court of Justice sided with German electronic music pioneers Kraftwerk, ruling that unauthorised sampling of even brief clips of a sound recording can constitute copyright infringement as long as they are recognisable, in a long running case that has added some clarity to how sampling should be treated in the European Union. Kraftwerk brought the action against hip-hop producers Moses Pelham and Martin Haas in 1999 over the Sabrina Setlur track “Nur Mir”, which revolves around a two-second snippet of Kratfwerk's “Metall auf Metall” used as a loop.

In 2012, Germany's Federal Court Of Justice found in favour of Kraftwerk, in part on the basis that Pelham could have easily recreated the sound he sampled, so clipping the snippet out of 'Metal On Metal' was just laziness. Four years later the German Constitutional Court overturned that judgement, deciding Pelham's "artistic freedom" had to be considered - and that the negative impact on Kraftwerk caused by the uncleared sample wasn't sufficient to outweigh the sampler's artistic rights. The case was then referred to the CJEU.

Making clear the difference between sampling a recording and copying part (or all) of a song, Advocate General Maciej Szpunar wrote in his opinion "A phonogram is not an intellectual creation consisting of a composition of elements such as words, sounds, colours etc. A phonogram is a fixation of sounds which is protected, not by virtue of the arrangement of those sounds, but rather on account of the fixation itself" adding "Consequently, although, in the case of [other creative works], it is possible to distinguish the elements which may not be protected, such as words, sounds, colours etc, from the subject-matter which may be protected in the form of the original arrangement of those elements, such a distinction is not, however, possible in the case of a phonogram".

In the second major case, a jury has now ruled that the Katy Perry song Dark Horse does plagiarise a Christian rap songAfter two days of deliberations, the jurors concluded that Perry's team had likely heard 2008 release 'Joyful Noise' before writing 'Dark Horse', and that the latter was sufficiently similar to the former to constitute copyright infringement.

Both producer Dr Luke, a co-writer on Perry's hit and Perry herself said they had never heard of 'Joyful Noise' nor heard of the artist behind it, the rapper Flame, real name Marcus Gray - before they started work on their song and recording. Gray's team argued that there had been many opportunities for Perry and her co-writers to to have heard 'Joyful Noise' and argued that whilst the copying may not have been deliberate,  her team had subconsciously infringed the earlier work. Gray's legal team also also pointed to the similarities between the two songs - each share a distinct musical phrase consisting of four C notes followed by two B notes. Perry's legal team argued that this was a very common musical phrase that couldn't possibly be protected by copyright. Luke added that if the court did indeed decide that a musical phrase of this kind enjoyed copyright protection, it could set a dangerous precedent that would impede the music making process.

They're trying to own basic building blocks of music, the alphabet of music that should be available to everyone," said Katy's lawyer Christine Lepera during her closing arguments in court last week, but the jury has accepted that this was copyright infringement. The case now goes to a penalty phase, where the jury will decide how much Perry and other defendants owe for copyright infringement.  Jurors found all six songwriters and all four corporations that released and distributed the songs were liable, including Perry and Sarah Hudson, who wrote the song’s words, Juicy J, who wrote the rap he provided for the song. Other defendants found liable included Capitol Records as well as Perry’s producers: Dr. Luke, Max Martin and Cirkut, who came up with the song’s beat.

A wide array of artists – including Korn, Tool, Sean Lennon, Linkin Park and  Jason Mraz have joined the amicus brief submitted in the ongoing ‘Stairway To Heaven’ case, supporting the British rock band in their arguments and calling on the judges in the Ninth Circuit appeals court to uphold the earlier ruling that Led Zeppelin did copy ‘Taurus’ when they wrote their 1971 classic. In total 123 artists support the amicus brief saying that if the original ruling in the ‘Stairway to Heaven’ case is overturned it could create a dangerous precedent that would be hugely detrimental to songwriting and an assumption that “trivial and commonplace similarities between two songs could be considered to constitute the basis for a finding of infringement” and that this would confuse artists, stifle creativity, and result in “excessive and unwarranted” litigation by artists and lawyers seeking to profit from ambiguities in the law.

Rolling Stone magazine published the article Why All Your Favorite Songs Are Suddenly Being Sued? asking asking why is so much music being hit with lawsuits, in a trend a trend that shows no sign of slowing. You can find that here and more comment and analysis here (from Professor Edward Lee in the Washington Post

Major US broadcasters ABC, CBS, Fox and NBC Universal have filed a lawsuit against an upstart online TV service offering free over-the-air digital TV service. The suit filed in U.S. District Court in New York alleges Locast owner, New York-based non-profit advocacy group Sports Fans Coalition violates broadcaster copyrights streaming content to users for free. The suit is similar to 2013 litigation brought by studios against Aereo, the defunct OTT service that transmitted digital signals to subscribers via over-the-air antennas. The litigation also pits broadcasters against AT&T, which owns and operates WarnerMedia — although the telecom is not party to the lawsuit. More here and here

And more from the US: Bloomberg Law reports that a battle over banana costumes continues in federal court with one manufacturer under order to stop selling full-body banana suits because they likely infringe another’s valid copyright.  The U.S. Court of Appeals for the Third Circuit affirmed a lower court’s order stopping Kangaroo Manufacturing Inc. from selling banana costumes that are confusingly similar to plaintiff Rasta Imposta’s copyrighted design. Rasta’s copyright is valid because it didn’t “monopolize the underlying idea” of a banana, the court said. More here

And finally - copyright notices - serious business yes? It seems not always! Techdirt have been doing some digging and have found some very amusing notices that certainly do not fit in with the prescribed formats: How about ""No part of this publication may be reproduced, stored in a retrieval system, cookie jar or spare room... Unless you want to write the whole thing out in green crayon, in which case feel free." and "This book is sold subject to the condition that it shall not, by way of trade or otherwise, be lent, re-sold, hired out, carried across the country by relay, fired into space, turned upside down, eaten... On pain of death."

Thursday, 8 August 2019

BOOK REVIEW: Copyright and the Court of Justice of the European Union by Eleonora Rosati

Copyright and the Court of Justice of the European Union by Eleonora Rosati [Oxford University Press, 2019, ISBN: 9780198837176, #pp273, £70.00, h/bk]

This title focuses on the Court of Justice of the European Union (CJEU), primarily its role, action, and its legacy in the area of copyright law. In light of the fact that copyright policy and legislative initiatives have intensified over the past few years, the book provides a thorough overview of the existing copyright framework, together with an exclusive survey that covers two decades of CJEU decisions in this area of the law – up to August 2018. In doing so, it explores all the key and controversial issues in EU copyright from EU reform proposals (value gap, press publishers' right, fair compensation for private copying, and out-of-commerce works) to the impact of Brexit. 


As such, the book is presented in three main parts. The first part is looks at the role of the CJEU as an EU institution, the second considers the action of the CJEU and the third part focuses on the CJEU legacy. 

A. Part One: EU harmonization and the functioning of the CJEU 

Chapter one provides an overview of the history of EU harmonisation from the adoption of the 1991 Software Directive and explains the structure, composition and work of the CJEU. It also looks at the references for preliminary ruling, including data on areas of the cases referred to, the referring Member State Courts, intervening Member States, Judges-Rapporteur and Attorney Generals (AG). The research demonstrates the expansive approach to copyright protection, whereby the CJEU tended to agree with the AG opinion when it favoured copyright holders. 

Chapter two focuses on the standards consistently applied in copyright rulings using a data-based case law analysis to demonstrate the principles and policies the CJEU have utilised in the development of EU copyright law. The second part of this chapter provides novel statistical analysis that illustrates the relations between such standards. 

B. Part Two: CJEU Action 

The second part looks at how the underlying principles discussed in Part One play out in specific cases relation to: 1) the construction of economic rights [chapter four], 2) limitations and exceptions [chapter five], 3) enforcement [chapter six]. It delves into the question of whether the CJEU action, which has decreased flexibility at national level and expanded harmonisation, exceeds its competence as an interpreter of EU copyright law. 

This part is made up of four chapters. Chapter three demonstrates the CJEU activity that has extended the boundaries of harmonisation further than the legislation alone, building substantially those areas of law beyond the legislative framework. The conclusions drawn show the common patterns of the CJEU in constructing a copyright system based on high-protection, harmonisation and the development of the internal-market. 

C. Part Three: The Legacy of the CJEU 

The third part focuses on the legacy of the CJEU, specifically from the perspective of the impact on national copyright laws [chapter seven] and of existing case law in the context of current policy discourse around EU copyright reform [chapter eight].

Chapter seven considers the legacy of the CJEU in view of Brexit, tackling the consequences of leaving the EU and EEA. It argues that even in the event of complete departure, the impact of the CJEU case law would remain relevant, highlighted by the reliance of the UK Courts on the EU Courts and amending domestic concepts accordingly. 

Part three concludes with chapter eight highlighting the polarization of the discourse around EU copyright reform. It argues, for example, that the proposals made in the Digital Single Market Directive went against the legislative framework and the interpretations of the CJEU, which need to be taken into account in the discourse of EU copyright reform. 


The goal of the book is to provide readers with a sense of direction of EU copyright cases by rationalising the large number of references to the CJEU and portray an underlying CJEU action in copyright. This is achieved with robust and novel research that sets out the power of the CJEU in shaping EU copyright law to a degree of harmonisation, impact and significance of the decisions. Importantly, it is convincingly argued that harmonisation as and end is not the guiding force of CJEU action, instead it has developed a principle approach to copyright protection. The guarantee of a high level of protection for copyright has allowed the CJEU to develop an expansive protection for copyright and a narrow scope for exceptions and limitations. The need for a fair balance between conflicting interests has also guided the Court to rely on standards such as proportionality and effectiveness, as well as the EU Charter playing an increasingly prevalent role. 

A. Appeal and Audience 

This book makes an important contribution to the literature, as Advocate General Maciej Szpunar (CJEU) explains in the forward: ‘This extremely profound analysis by Professor Rosati of EU copyright protection and relevant Court of Justice decisions constitute uncharted territory, unveiling new information, perhaps never considered, event by members of the Court like myself.’ As such, this book would appeal to anyone interested in European Copyright law, including practitioners, judges, policy makers, academics, researchers and students. The writing style enables the complexities of EU Copyright issues to be understood, providing clarity to a challenging area of law with rigour and ease. 

THERE IS A 20% DISCOUNT AVAILABLE for individual purchases from the OUP website - Quote promotional code ALFLY5F to claim your 20% discount and with the price of this book discounted to £56 (terms apply). 

Reviewed by Hayleigh Bosher