Friday 30 January 2015

Zebra Stripes and Polka Dots May be Protected by U.S. Copyright

On January 12, 2015, the Eleventh Circuit affirmed a decision of the Southern District Court of Florida which had granted summary judgment to Washington Shoe, finding that Olem Shoe had infringed its copyright in several designs adorning rain boots, albeit not willfully. The case is Olem Shoe Corp. v. Washington Shoe Corp, No. 13-14728.

Washington Shoes designs and sells rain boots. In the fall of 2009, it sent a cease-and-desist letter to Olem Shoe Corporation, a shoe wholesale company, claiming that one of Olem’s rain boot models infringed Washington Shoe’s copyright in its “Ditsy Dots” design, a particular polka dot pattern.
Olem filed suit to have the copyright declared invalid. Washington Shoe counterclaimed, and sent another cease-and-desist letter in early 2010, claiming copyright infringement in its “Zebra Supreme” design. Both of the allegedly infringing Olem models had been sourced in China. Pictures of all these models can be found on p.31 of the case.
Birds May Not Have Rain Boots, But They Love Colorful Designs

Olem filed a motion to dismiss Washington Shoe’s counterclaim, asserting that Washington Shoe’s copyrights protected only the two-dimensional drawings filed with the Copyright Office, not the boots themselves. But the district court found in April 2010 that, while the utilitarian functions of boots could not be protected by copyright, the designs printed on their surface could be protected.
Washington Shoe then filed a motion for summary judgment. The district court granted it with respect to the copyright claim, but denied it with respect that the infringement was “willful.” Washington Shoe appealed to the Eleventh Circuit, Olem cross appealed, and the court affirmed.

Filing the Copyright Infringement Suit

The plaintiff in a copyright infringement suit must prove that he owns a valid copyright, meaning that the work is original and that plaintiff has obtained a registration certificate. The plaintiff must also prove that the defendant has copied elements of his work which are original.

Olem argued in front of the district court that the registered Ditsy Dots design was not original enough to be protected by copyright, as it was too generic to be sufficiently original. However, the district court found that the polka dots design was sufficiently original to be protected by copyright, relying on PrinceGroup, Inc. v. MTS Products, a 1997 Southern District of New York case, where the court had found that a particular polka-dots fabric pattern met the low threshold of creativity to be protected by copyright.

In our case, the district court found that “the particular arrangement of different sized dots at varying distances along vertical and horizontal planes… [was] an artistic decision that distinguishes Ditzy Dots from generic polka dots.” However, some irregularities in dot-shape could not be protected by copyright, as they “surely derive[d] from the process of stretching a two-dimensional design over a three-dimensional boot.”

Proving Copying of Constituent Elements of the Protected Work

Also, the district court was mindful to note that “only… the conceptually severable patterned designs on the face of the boots… not any utilitarian functions of the boots themselves” are protected by copyright. Indeed, U.S. Copyright law does not protect useful articles. However, §101 of the Copyright Act provides that “the design of a useful article… shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.The District Court found that Olem Shoe had copied constituent elements of the designs which were original.
Another Utilitarian Aspect of Rain Boots

As Washington Shoe could not prove copying, it had to establish access and substantial similarity with its designs. The district court found that Olem had “access” to the registered designs, as the boots bearing the protected designs were sold nationwide at Target, which has numerous stores in Florida, were Olem is located. The boots were also sold at Also, Washington Shoe had presented these boots in tradeshows which had been attended by Olem. For all of these reasons, Olem was found to have had access to the protected designs.

The district court also found the designs on Plaintiff and Defendant’s boots to be substantially similar, after having compared them from four different angles, and concluded that Olem had infringed Washington Shoe’s copyright. The Eleventh Circuit noted that two works essentially or virtually identical are strikingly similar, and that the copying elements of an infringement claim was satisfied in this case. The Eleventh Circuit found the polka dots and the zebra stripes designs virtually identical and thus strikingly similar, and affirmed the district court’s finding that Olem had copied Washington Shoe’s design.

No Independent Creation But No Willful Infringement Either

Olem had unsuccessfully argued in front of the district court that it had independently created its own design, submitting testimonies that the company had received these designs from a Chinese supplier, and then used them on its boots without knowing that they were protected by copyright.

While this was not sufficient to establish independent creation, the district court nevertheless took it into consideration to hold that Olem had not willfully infringed Washington Shoe’s copyrights. As the parties did not cite any Eleventh Circuit cases, nor did the District Court identify cases establishing willful infringement standards, the district court had adopted as definition of willful copyright infringement a Second Circuit definition, where courts examine “whether the defendant had knowledge that [its] product represented infringement or perhaps recklessly disregarded the possibility.”

The Eleventh Circuit noted that “[g]enerally, establishing a reckless state of mind in a copyright case requires a showing that the infringer possessed particular knowledge from which willfulness could be inferred, such as evidence that the infringer was given samples of the copyrighted work prior to producing the infringing work” (p. 13).

The Eleventh Circuit was not convinced by Washington Shoe’s argument that, merely because the designs were strikingly similar, Olem recklessly disregarded the likelihood that it infringed Washington Shoe’s copyright, reasoning that “striking similarity… says little about the state of mind of the copier” (p. 12).

Of the Importance of Sending Detailed Cease-and-Desist Letters

The Eleventh Circuit was not convinced either by Washington Shoe’s argument that the cease-and-desist letters sent to Olem prove that it knew that it was infringing protected copyright.

Indeed, Washington Shoe had sent Olem two cease-and-desist letters, but Olem could still “reasonably and in good faith have believed that there was no infringement,” according to the district court, as the letters did not include identifying information for the registration or a sample of the allegedly infringing work. Therefore, these letters were not probative evidence that Olem knew that it infringed Washington Shoe’s copyright, and the copyright infringement was thus not willful.

The Eleventh Circuit agreed with the district court on this point, noting that the letters, as sent, “provided nothing from which Olem could have determined that the claim was legitimate” (p.11). 

This should give pause to copyright practitioners when writing their next cease-and-desist letters. These documents should include enough information as to effectively put the receiver on notice that he does indeed infringe their client’s copyright.

Image of the birdhouse is courtesy of Flickr user JB Kilpatrick under a CC BY 2.0 license

Image of the boots is courtesy of Flickr user Ali Millteer under a CC BY-ND 2.0 license

No change (for now) for "2039" Unpublished Works

Yesterday, the IPO published the outcome of its consultation on changing the rules regarding so-called unpublished works subject to the so-called 2039 rule.  Broadly speaking, these are unpublished works which, under transitional provisions introduced at the time the CDPA 1988 came into force, will remain in copyright until 2039, even if (in some cases) they were written long ago by authors who cannot have survived until 1945 (i.e. 70 years ago)

Ben wrote about the original consultation on this blog here pointing out that the most vocal lobbying on the issue had come from CILIP, on behalf of libraries, museums and archives.

Those same lobbyists will no doubt be deeply disappointed that the consultation response decides to take no action for now, other than to undertake further discussions to deal with some of the difficult issues raised by various consultation respondees.

At least this is one issue ticked off the "to do" list at the IPO in what looks like being a busy year for copyright policy, led by the European agenda.

UK government speaks on copyright

This Blogger, having been out of the UK for a short time, has returned somewhat surprised by how much the outgoing UK government has had to say about copyright in the last few weeks and thought that a round-up might be worthwhile.

It started off with the first published speech by the new IP Minister, Baroness (Lucy) Neville-Rolfe at an event called the "Intellectual Property Annual Seminar Mentor Dinner" (no, me neither) on 8 January, which you can read in full here.  This is really a round up of all of the activities of the outgoing administration in the IP arena, with very little forward-looking vision, save that, the Baroness observed 
"So what are the challenges for the next 5 years? 
Our focus will continue on strengthening the UK IP framework to maximise support for business innovation and help drive growth.
There will be an increasing concentration on the European and international scene. 
We are working with the EU on the successful delivery of the unitary patent and the Unified Patent Court, with its pharmaceutical division to be based here in London.
And we will be making sure that proposed copyright reform and digital single market meets the interests and needs of the UK."

Building on this theme, it later emerged that on the very same day, David Cameron wrote to Commission President Juncker sending a document setting out the UK priorities for the reform of the Digital Single Market.  That document - which apparently in international relations terms is not a paper, but a "non-paper" was published last week.  You can experience it as a jazzy website here including an embedded version of Vince Cable's "Robert Schuman lecture" at the Lisbon Council on 20 January or download as more prosaic text here

This is a high-level vision piece, which it would be wrong to characterise as primarily about copyright, but it does have some interesting things to say on copyright topics, in particular:

Consumers should be able to buy a wide range of digital products and services and use them wherever they are in the EU, just as they can with physical products. Their online subscriptions to music or film should still be available when they travel and they should be able to buy [So - this is not just about free movement but an actual obligation to supply; outside of market power situations, it is rare for the EU to legislate to require companies to supply, indeed it is not clear where the Government thinks this power lies in the TFEU, or that this is an approach which one would expect from a libertarian centre-right government] online content not easily accessible from a home provider [who decides what is easily available?  does that mean I can have access to parts of Netflix France, but only the bits which have programmes not on Netflix UK?]: Europe’s creative output is one of its richest resources, and those who want to enjoy it should be able to pay to do so, even when it is only sold in another Member State [but not, apparently, if it is supplied other than for sale? such as ad supported VOD?]. At the same time, Europe needs to maintain choice and diversity by protecting intellectual property in a way that ensures a flourishing and innovative creative sector. Our enforcement of the intellectual property regime must have teeth. The Commission should ensure that consumers can access lawfully-available content on fair and reasonable terms across borders [again - no talk of removing barriers, but a positive obligation to ensure access].

 ...the EU should support copyright exceptions to allow research, education and text and data mining to take place across the market, and reject copyright levies in all forms [now there is a very direct statement of intent], providing a major boost to European innovation

In case anyone wonders what that means the Govt position is, yet another minister Ed V popped up earlier this week at an event called "Let's Go Connected" saying (according to Advanced TV Markets) that "the continued existence of the [audiovisual] sector depends on the ability of creatives to monetise their work ... and that requires a robust and properly-enforced copyright framework ... to ensure that creatives were fairly rewarded for their endeavour." 

InfoSoc Directive fair compensation claims and jurisdiction: your chance to influence things

The UK Intellectual Property Office (IPO) has just been reminding us of the forthcoming Court of Justice the European Union (CJEU) reference in Case C-572/14 Austro-Mechana. This is a request for a preliminary ruling from the Austrian Oberster Gerichtshof on the following question:
Does a claim for payment of ‘fair compensation’ under Article 5(2)(b) of Directive 2001/29 ... on the harmonisation of certain aspects of copyright and related rights in the information society which, in accordance with Austrian law, is directed against undertakings that are first to place recording material on the domestic market on a commercial basis and for consideration constitute a claim arising from ‘tort, delict or quasi-delict’ within the meaning of Article 5(3) of Council Regulation ... 44/2001 ... on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters?
If you would like to comment on this case please email by 9 February 2015. This will give the IPO a window of opportunity within which it will be able to consider whether the UK government should make submissions on this question or whether it should leave it to others. If you can't respond in time, don't panic:
We understand how difficult it is to provide detailed comments in the time available. The IPO has tight time limits in which to consider and provide advice to ministers on CJ cases. In order to help us provide the right advice, we just need a short email by the deadline stating whether you think the UK should intervene and some general points about how you think we should answer the questions. 
You are welcome to follow this email up with more detailed comments after the deadline, which can be taken into consideration if we have chosen to submit observations or if we decide to attend a hearing.
NOTE: since this piece was posted, our friend and reader Axel Paul Ringelhann has furnished us with his English translation of the referring court's decision.  Thanks so much!

Wednesday 28 January 2015

Be Mindful of Your Ability to Copy Street Art

Mark Anthony Miller is a Brooklyn street artist, known as CAM, whose works can be seen in Brooklyn’s DUMBO neighborhood. His work is often inspired by stained glasses, as could be seen last year in the Always be Mindful of your Ability to Fly exhibition at the DUMBO Art Festival.

On January 21, he filed a complaint in the Eastern District Court of New York for copyright infringement against Toll Brothers, Inc., a real estate development company, claiming that Defendant used without permission a reproduction of one of his works, a mural in DUMBO now destroyed. The case is Craig Anthony Miller v. Toll Brothers, Inc.,no. 1:15-cv-0032. Here is a link to the complaint, courtesy of New York attorney Mark Jaffe.

Plaintiff, as part of the 303 Collective, painted in 2009 a90-foot “elephant mural” on a warehouse located at Water Street in DUMBO. The owner of the wall had given the artists permission to paint it. The work was a striking piece, featuring lush vegetation, angels, and wild animals, including elephants, over a vivid orange background. As explained on his web site, CAM is inspired by the Hindu God Ganesh, who is represented as having the head of an elephant. The elephant mural was painted over in 2009, and the warehouse itself was eventually torn down for make way to, surprise, surprise, a luxury apartment development.
Gone, But Not Forgotten 

Plaintiff claims that Defendant used in 2012, without his permission, a photograph of the elephant mural in advertisements for its 205 Water Street in Brooklyn luxury condominium development. At the time, the mural had not yet been destroyed, and had, according to the complaint, “served as the backdrop for countless videos, weddings, engagements, fashion shoots, television and print advertisements” (p.2). Defendant’s advertisements were posted in the New York City subways, telephone booths and bus shelters, and also in the print and the online version of The New York Times.

The complaint states that Plaintiff contacted Defendant after learning about the advertisement and that they engaged in negotiations over possible compensation for this unauthorized use. However, while “Plaintiff produced work for [Defendant] for a number of months,… no projects ever materialized and no payment was ever made to Plaintiff for the  infringing use of the [elephant mural]”(p. 4).  

Plaintiff has registered the copyright for the mural, and he is claiming infringement of his exclusive rights. He is seeking either actual or statutory damages, as provided by §504 of the Copyright Act, attorney’s fees, as provided by §505 of the Copyright Act, and injunctive relief, under §502 of the Copyright Act, asking the Court to order Defendant to destroy all copies of the allegedly infringing advertisement.  

There have been several similar cases lately, where graffiti artists sued a company for infringement of their copyright (see here, here and here). It will be interesting to see when this trend will die down, signaling that corporate counsels are finally aware that street art is, well, art, and as such, original enough to be fully protected by U.S. copyright.

Image is courtesy of Flickr user dumbonyc under a CC BY-SA2.0 license.

New animal selfie ALERT!

a camera hogging koala
Last weekend staff at Edinburgh Zoo have managed to get a series of selfies from Koala bears which have surfaced online and in the press - and some other species also managed to get  in on the act with selfie's from f penguins, rhinos, wallabys, hippos and a binturong. The Scottish zookeepers decided to re-enact the celebrity selfie phenomenon by placing small RE cameras made by HTC smartphones in the animal's pens. The cameras were activated by a grip sensor and started shooting as soon as they were ‘picked up’ - or touched - by the animals  - "making it easy for the furry friends to get the hang of".

So can we expect another epic battle along the lines of the legal claim photographer David Slater instigated? It was Slater whose camera was seemingly stolen by a black macaque monkey. You will remember the monkey then took some selfies - but further use of the snaps prompted Slater to take on Wikipedia who published one photo without Slater's permission. 

Top snapper Mr Binturong
Interestingly the Edinburgh Zoo photos, posted on the Express website, seem to have a credit (possibly a copyright credit) on them, and are marked 'SWNS' - which I am guessing stands for South West News Service - the UK news agency that supplies editorial copy and pictures to national and international clients. The Express also has a link to a series of other animals selfies which contain the credit 'Marcus Bird/ Barcroft media'.  The SWNS website itself restricts re-use of material posted on that website but I couldn't find any koalas generated images there (although I did find plenty of other animals) nor were the zoo selfies apparent on the SWNS twitter feed -  so I suspect the pictures were sent out as a news feed. The zoo pictures can be found on the Scotsman - credited to 'Hemedia', Reveal had the copyright notices of '(c) HTC' on all the shots and the Irish Examiner marks them all 'Edinburgh Zoo'. 

Another copyright conundrum?  It seems the cameras were provided by HTC, and Ben Walsh from HTC told the Scotsman: “We know the most popular thing on the internet is funny pictures that owners take of their pets so at HTC were glad we’ve made a camera so brilliant and simple that animals can finally join us humans and start taking selfies too. With koalas taking the most pictures of themselves, expect to see their Instagram feeds full of koala selfies”. This statement, and the actions taken by the Zoo in releasing the photos, seem to indicate that the photos were freely distributed - and that they are currently free to use.  Jon-Paul Orsi, digital manager for the Royal Zoological Society of Scotland, is quoted in one article saying “We do a lot of our own photography on-site and these shots offer something completely different.

So, the zoo selfies (or 'zoofies') are currently being treated differently to the copyright in the case of the black macaque where Slater threatened legal  action. The koala snaps seems to be being treated more like the Ellen DeDegeris / Bradley Cooper 'Oscars' selfie which prompted much academic debate - much sharing, tweeting and publication - but as far as I know, resulted in no legal actions against those who subsequently used the shot. In fact I found the webpages of London PR Firm Hope & Glory who had this to say: "It’s been a day of formidable coverage for the HTC team here at Hope&Glory.Having come up with the idea a month or so ago of handing some HTC RE Cameras to the animals (and their handlers) at Edinburgh Zoo, we got our shots back last week and it’s been all systems go making sure that the shots were to be seen just about everywhere during today" adding "The fact that we decided to hold the story until Australia Day, knowing that we had a couple of Koala shots in our armoury, was also no coincidence." So whoever owns the shots - they WANT everyone to use them! But with all those conflicting copyright notices, I still wondered what (if any) 'copyright' restrictions had been put on the koala and penguin selfies.

Does Mrs Penguin get the credit?
But does it matter what 'permissions' have been given or withheld anyway?  Our own poll on the monkey snaps showed that 52%  of 1709 readers polled thought that "there is no copyright in works authored by animals: they are a gift to humanity which we can all use" a view seemingly shared by the US Copyright Office, although 30% thought that only humans are authors so the photographer owns the copyright as the nearest relevant human". Just 6% wanted to give copyright to the monkey. Opinions on ownership of the 'Oscars' selfie ranged from the copyright being owned by Bradley Cooper who pressed the button, to being owned by DeGeneris who assembled the photo (so perhaps DeGeneris was the person who made the arrangements necessary for the creation of the work), perhaps joint ownership by all of the featured stars, owned by Sponsor Samsung who provided the phone, or owned by the Academy of Motion Pictures Arts and Sciences who staged the event and could possibly claim ownership under contractual agreements and under the 'work for hire' doctrine.

But MIGHT there be more of a copyright claim on the facts here - well more than Mr Slater has or had? My own personal feeling is that the author has to be a person and that person still has to be a human (although there have been conflicting opinions on this blog). Maybe just maybe there might be a human involved in the issue of ownership of copyright here - but which human? The HTC cameras in the zoo were set up to be triggered by animal movement or touching - rather than the Macaque case where it seems the monkey actually took the photo by pressing a button and it appeared holding the camera (just like Bradley). Does HTC have a claim to ownership of copyright in the selfies? It also seems that some of the cameras were positioned to take certain shots at certain angles or with certain backgrounds in frame, and this might tend towards suggesting the person or persons who did the setting up might own a copyright. So perhaps the handlers have a claim? Or perhaps the Zoo can claim ownership as this was 'work for hire'? We also don't know about editing of any of the koala selfies (eg by cropping, colouring, re-positioning): if there has been editorial input, this might again pass a copyright to a human. Mr Slater belatedly let it be known that he had set up the camera the monkey used  - and had also amended the shots as he sought to establish ownership of the macaque snapped selfie. But so far, to no avail;  but maybe things are different here? So maybe here IF copyright became as issue it IS possible one or more persons might be the author. 

These conclusions may (or may not) not be agreeable to the 5% of our readers who felt that with the black macaque snap, "Whichever human gets to it first can keep it, just like any other bona vacantia" or those who commented on earlier blogs  - or the 4% who felt that "The United Nations should set up a special agency to own and control uses of all non-human works like this" or the aforementioned. And I have to disagree with the 6% of readers who felt "The monkey owns the copyright: she's the author, after all". It seems unlikely is that Mr Penguin or Mrs Koala will be an author in the United Kingdom anytime in the near future - and I am still of  the opinion that there is no copyright in works authored by animals and that "they are a gift to humanity which we can all use" although the efforts of the campaign group Nonhuman Rights Group, whilst unsuccessful in New York and Austria, were more successful in persuading  a court in Argentina to allow a claim for habeas corpus for Sumatran orang-utan Sandra - who had been born in captivity and was being held at Buenos Aires Zoo - finding she deserved the basic rights of a non human person. So maybe a monkey (and koala) copyright soon!

Binturongs are a species of, errrm, bearcat from South East Asia by the way -  but what you may ask is a 'Lert' ? Well, there I cannot help - I can't even discover what species it is. I need a nicely illustrated Wikipedia page to tell me. I live in hope.


Tuesday 27 January 2015

Zimmer in the frame over movie claim, Smith moves on with Stay With Me

Now there's that old saying isn't there - "where there's a hit - there's a writ" and whilst this blogger often spies claims of plagiarism, sampling and sometimes even downright copying which usually result in at least the threat of a lawsuit in the film, TV and music sectors, a claim in relation to the Oscar winning movie 12 Years a Slave has also thrown up claims violations of moral rights (under the copyright laws of Germany and France) - but in a US court. And elsewhere, a pop tune claim seems to have come to a sensible conclusion with at least the acknowledgement that an earlier Tom Petty work may have influenced the hit Stay With Me from the ever so soulful Sam Smith. 

The Hollywood Reporter lets us know that a U.S. civil lawsuit has been filed on behalf of composer Richard Friedman against composer Hans Zimmer, along with 20th Century Fox, Sony Music and various companies connected to the movie, for the alleged inclusion of a copyrighted music composition into the film's main musical theme.

According to the complaint, filed in a Californian federal court, the "Solomon Northup" theme in the movie can be traced to a 2004 Friedman composition titled "To Our Fallen," which allegedly was widely distributed as part of a music sample entitled "American Heart." The plaintiff says that the sound recording was embodied in a 2008 episode of the ABC series Desperate Housewives and that the string overdub portions of the music were recorded at the same recording facility used by Zimmer to create most of the musical score for 12 Years a SlaveFriedman is demanding monetary damages and an injunction.

The lawsuit's "quirkiest bit" is the assertion of the violation of Friedman's moral rights in the fourth and fifth claims for relief. The film, of course, had international distribution. The claim under (VII) relates to German law ('The German Copyright Statute of 1965') and refers to (in a translated form) the "right of recognition of authorship" and the author's right to prohibit "any distortion or mutilation of the work" before going on to apply the restricted acts in German law - here of reproduction, distribution and broadcast. The fifth claim under French law (VIII) is brought under 'The Republic of France the Code of Intellectual Property 1992' which seemingly provides that (in a translated form) L121.1  "an author shall enjoy the right to respect for his name, his authorship and his work" before going on the outline L121.2 (the author's right to divulge his work) and  L122.1 (the author's right of exploitation ... the right of performance and the right of reproduction) and the lawsuit asks for relief under the relevant French and German law.  This makes for uncomfortable reading when compared with the claim's choice of court for a jury trial in (II) Jurisdiction and Venue: the court selected is the District Court of the Central District of California Western Division and the claim is oddly silent on why French and German law claims are included, whilst also asserting that the District Court has "original and exclusive jurisdiction over the subject matter of this civil action under the Copyright Act 17 USC ss411 and 511", that the court has supplemental jurisdiction over a claim of unfair competition and that venue is the proper location as the defendants transact business within the District and can be found there and that many of the infringing acts were performed and occurred within the District. 

Rather handily TMZ has a comparison of the two works: One rather amusing comment goes "Oh puh-leeze! Mr. Zimmer also has two legs and is right-handed. Coincidence? At least in this excerpt, Mr. Friedman's piece is a very generic idea. They probably both ripped off me! And Beethoven. And Mozart. And. And. And....".

But in another songbook altogether  ....... When Sam Smith’s “Stay With Me” was released in April 2014, a number of commentators were quick to note the distinct resemblance to Tom Petty and the Heartbreakers’ 1989 classic tune “I Won’t Back Down”. Now details have emerged of a settlement on the split of song writing credits and a new split in the song's royalties. And remember it’s similarities in the song that this matter is about – NOT the sound recordings themselves – which this blogger feels are quite different. However, there is certainly an arguable similarity in some of the chord sequences so I am guessing that, and perhaps the presumption of 'casual connection' is why the claim was settled. The settlement reportedly included a 12.5% writing credit to both Petty and composer Jeff Lynne (of ELO fame) and the song’s credits on ASCAP (the collection society the American Society of Composers, Authors, and Publishers ) now lists Smith, Petty, Lynne, William Phillips and Jimmy Napes as the chief songwriters in what appears to be an amicable and sensible deal.  Again there's a handy 'compare for yourself' audio facility here. So you can make your own mind up! And more from Adam Ragusea in The Real Reason People Keep Plagiarizing Tom Petty here - another interesting opinion! and and for more on the UK's position on 'casual connection see Francis Day & Hunter v. Bron, [1963] Ch. 587

Marrakesh Treaty: now Paraguay makes six

The World Intellectual Property Organization has just issued a media release, Marrakesh Notification No. 6: Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled: Ratification by the Republic of Paraguay.

The event which this release records is the deposit by the Government of the Republic of Paraguay of its instrument of ratification of the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who are Blind, Visually Impaired or Otherwise Print Disabled. The date of entry into force of this Treaty will be three months from the date on which it secures the requisite number of 20 accessions or ratifications required under Article 18.  At present there are just six countries which have taken this step: three from Latin America, plus India, the United Arab Emirates and Mali. Things are a little silent in Europe, however ...

You can check additions to the list on the Treaty's Notifications page here.

Monday 26 January 2015

Sensory copyright: a forthcoming event

Talking scents? On Tuesday 24 February the IPKat weblog teams up with the British Literary and Artistic Copyright Association (BLACA) for the second year running to host an exciting meeting on sensory copyright. Topics under review include the scent of perfume, the taste of cheese and other sensory works of authorship that fall outside the classic foursome of literary, dramatic, musical and artistic works.  

Is it an aerial photo of the wilds of Canada? A close-up of a chunk of marble?
Or a shot of a distant planet? No -- it's the surface of a cheese ...
The venue is the London office of Reed Smith LLP at 20 Primrose Street (here) and IPKat/1709 Blog contributor Eleonora Rosati (University of Southampton) will present the case in favour of protection of sensory works. IP practitioner and academic Tobias Cohen Jehoram, who has litigated this very topic in his native Dutch courts, will be taking the contrary position.  IPKat/1709 Blog blogmeister Jeremy will be in the chair.

The order of ceremonies runs like this: doors open at 4.30 pm for a 5 pm start.  After the serious side of the programme there will be some sensory delights -- whether protected by copyright or not -- in the form of refreshments kindly provided by our hosts.  There is no admission fee. 

The venue only holds 100 people so if you are planning to come, do email Polly Taylor at to register your interest and be put on the guest list. It is likely that this event is going to be oversubscribed and we are unable to reserve places.  The seats will be allocated on a first-come first-serve basis on the day so do arrive early to ensure yourself a place.

Sunday 25 January 2015

The CopyKat - looking backwards, looking forwards

Jerry Fisher, a photographer in Sioux Falls South Dakota, was interested in 3D printing and 3D image capture. So he went and photographed two local bronze casts of Michelangelo statues, one of Moses which is on display at Augustana College and is co-owned by Augustana and the City of Sioux Falls, and another of David (yes, the really famous one!), which is in a local city park. He blogged about his efforts to take the photos and turn them into 3D printer plans but came up against Augustana College when he uploaded preliminary model of Moses onto socia media: Fisher was promptly asked to take the Moses model down by The College who felt they had propriety over the statues (and were 'uncomfortable' with this use) and (supposedly) that their legal depatrment was of the opinionn that the College owned copyright(s) in the statues, Now Public Knowledge has provided Fisher with the answer that he already suspected was true - the College does NOT own a copyright in a 16th century reproduction statue by Michelangelo (!) and Public Knowledge's Michael Weinberg explained "Let’s get one thing out of the way right now: Augustana College had no legal right or basis to threaten Fisher with the specter of infringement. There is no copyright protection for a sculpture that was created at the dawn of the 16th century by a sculptor who died 450 years ago. All of Michelangelo’s work is firmly in the public domain. If fact, copyright didn’t even exist during Michelangelo’s lifetime. From the moment he sculpted his Moses anyone could copy, remix, and build upon it for any reason, without having to ask permission."  More on here.

James Bond, 007, the iconic master spy, is now available for more dangerous assignments from Canadian writers, thanks to a copyright quirk that allows the writing and publication in Canada of original material based on Bond creator Ian Fleming’s work. The Canadian press have noted that as of January 1st this year, the original writings of Fleming, a former British naval intelligence agent who published 12 novels and nine stories featuring 007 between 1952 and 1966, have entered the public domain. That’s because Canada’s view of copyright is that it extends for 50 years after the death of a writer. Fleming died in 1964. More on the Globe & Mail here.

Silhouette comparisons of Jacobus Rentmeester's photo of Michael Jordan,
left, and Nike's Jumpman logo, right. Taken from court documents
Phortographer Jacobus Rentmeester is suing Nike in the federal court in Oregon for copyright infringement. Not only is he asking for profits associated with Nike's Jordan brand, which generated $3.2 billion in retail sales in 2014. He also is seeking to halt current sales and plans for the brand's future. Wow! Rentmeester says he staged and shot the picture of Michael Jordan in his Olympic warm-ups in 1984 for an issue of Life Magazine .As he was a freelancer, Rentmeester retained the rights to the copyright.  After it was published, Nike's Peter Moore, who designed the first Air Jordans, paid $150 for temporary use of Rentmeester's slides. Rentmeester says Nike then used his carefully choreographed picture using Jordan's left hand to 'slam dunk' the ball, to recreate the shot with Jordan in Bulls gear with the Chicago skyline in the background, but that it was essentially still his work and his suit says "Mr. Rentmeester created the pose, inspired by a ballet technique known as a 'grand jete,' a long horizontal jump during which a dancer performs splits in mid-air," the lawsuit says. "The pose, while conceived to make it appear that Mr. Jordan was in the process of a dunk, was not reflective of Mr. Jordan's natural jump or dunking style." This photo in turn was transfomed into a 'jumping' Jordan logo - and having threatened to sue Nike back in 1985 for the use of the Jordan logo based on his photo,  ESPN says thaRentmeester agreed Nike could use the logo for two years on billboards and posters in North America, for which he was paid $15,000. The Jumpman image also was featured as a tag on the Air Jordan I shoes, which sold for $65 a pair. In 2005 Nike withdrew an advert for its skateboard brand due to its similarity to artwork for a record by punk band Minor Threat.   This could be an interesting case - and reminds the CopyKat of the recent decision by Mr Justice Birss in Temple Island Collections Ltd v New English Teas Ltd & another [2012] EWPCC 1 where infringement was found, and the decision by a Korean appellate court that found that the 'recreation' of a photograph of a natural scene of pine trees on an island set against a skyline could not be infringement - although neither of those cases took 28 years to get to court ......

and to end ..... the 'pre-1972' story about copyright in sound recordings in the USA keeps on giving - and now Zenbu Magazines LLC,  the owner of recordings by Hot Tuna, New Riders of the Purple Sage and the Flying Burrito Brothers, is seeking class-action status for suits filed in U.S. District Court in Northern California, arguing that services such as Apple’s free iTunes Radio, and Sony’s Music Unlimited - which charge subscribers to access their service - have copied tens of thousands of  pre-1972 recordings onto their servers, transmitted them and performed them without seeking permission or paying performance royalties or licensing fees to the copyright owners. Rdio Inc and Google Play are also in the firing line.  Sound recordings weren’t brought under the protection of federal copyright law until 1972 so are protected by state laws and some services, notably SiriusXM, haven’t been paying performance royalties to artists to play these older works prompting claims from both artists (with Flo & Eddie from the Turtles leading the charge), record labels and collection society SoundExchange. More here.

Friday 23 January 2015

Hoist The Colours High: The Pirate Bay is Coming Back

Here's a guest piece by Thomas Dubuisson (@tdubuisson) on a subject that refuses to fade away: the fate of The Pirate Bay. Thomas writes:
This is the day you will always remember as the day you almost caught Captain Jack Sparrow”(Jack Sparrow, Pirates Of The Caribbean)

For many years, internet service providers (ISPs) have tried, and sometimes succeeded, to block access to The Pirate Bay (TPB), known as the world's largest illegal file-sharing site, in several countries around the world. However, this time, it’s “in real life” and not, as expected, on the internet, that domain was shut down.

Launched in September 2003, The Pirate Bay website has since been involved in a number of lawsuits, mainly accused of copyright infringement and of authorizing the infringement of its users. Eleven years later, on December 9, 2014, Swedish police carried out a raid at the Nacka Station data centre, in Stockholm, seizing a huge treasure: servers, computers, and other equipment. As a result, the site has been taken offline and dragged down several other popular BitTorrent services (i.e. open Internet application for content distribution) with it, such as EZTV, Zoink, Torrage.

As a consequence, many people have been looking for Pirate Bay alternatives. Following the raid, many Pirate Bay “copies” flourished. For instance, the, a de facto replacement of the original site that reached a settlement with MPAA stipulating $110 million reimbursement for damages in 2013, launched an to “save the Freedom of information on the Internet” and to “keep on sharing”. They also launched “The Open Bay” initiative, a new torrent landscape, allowing anyone to create a Pirate Bay copy on his/her own domain.

Are we getting closer to the end of “the day” Swedish police will always remember as the day they almost caught The Pirate Bay? New elements shared by The Pirate Bay crew seem to indicate the resurrection of the site. A few days after the Police raid, TPB installed a countdown timer on the homepage indicating that something is about to happen on February 1, 2015. Recently, the TPB included the site's familiar look with the site's search bar, categories, and navigation elements.

Pirate Bay users expect full recovery. Film-makers and distributors, television, and various creative industries combating online copyright infringement are however hoping that the phoenix will not rise anew from the ashes. However, with just a few days of the countdown timer left, the site is showing much more signs of life than ever before.

Online infringement actionable where damage occurs, irrespective of where it was intended to happen, says CJEU

In another preliminary ruling of yesterday's date, the Court of Justice of the European Union (CJEU) had to determine where a copyright owner can bring proceedings for infringement when a third party has made the work available online for viewing and downloading without consent. The decision is Case C‑441/13, Pez Hejduk v EnergieAgentur.NRW GmbH, a request for a preliminary ruling from the Handelsgericht Wien (Austria).

The facts are as follows. Pez Hejduk, a professional photographer of architecture, created photographic works depicting the buildings of the Austrian architect Georg W. Reinberg. As part of a conference organised by EnergieAgentur, Reinberg used Hejduk’s photographs in order to illustrate his buildings, with her permission.  Subsequently EnergieAgentur -- without Hejduk’s consent and without stating that she was the author -- made those photographs available on its website for viewing and downloading. Hejduk sued EnergieAgentur in the Handelsgericht Wien, seeking damages of over 4,000 euro plus permission to publish the judgment at EnergieAgentur's expense.

EnergieAgentur raised an objection that the Handelsgericht Wien lacked international and local jurisdiction, saying that its website was not directed at Austria and that the mere fact that a website may be accessed from Austria is insufficient to confer jurisdiction on that court. The Handelsgericht Wien therefore stayed the proceedings and asked the CJEU:
‘Is Article 5(3) of [Regulation 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters] to be interpreted as meaning that, in a dispute concerning an infringement of rights related to copyright which is alleged to have been committed by keeping a photograph accessible on a website, the website being operated under the top-level domain of a Member State other than that in which the proprietor of the right is domiciled, there is jurisdiction only

– in the Member State in which the alleged perpetrator of the infringement is established; and

– in the Member State(s) to which the website, according to its content, is directed?’
Yesterday the CJEU ruled as follows:
Article 5(3) ... must be interpreted as meaning that, in the event of an allegation of infringement of copyright and rights related to copyright guaranteed by the Member State of the court seised, that court has jurisdiction, on the basis of the place where the damage occurred, to hear an action for damages in respect of an infringement of those rights resulting from the placing of protected photographs online on a website accessible in its territorial jurisdiction. That court has jurisdiction only to rule on the damage caused in the Member State within which the court is situated.
While the jurisdictional side of the ruling has its upside, the notion that the court has jurisdiction only to rule on the damage caused in the Member State within which the court is situated is a pain if it potentially means separate litigation in each of 28 jurisdictions to recoup damages on a country-by-country basis, particularly if the aggregated damage is substantial but the per-country damage is rather less so.

Eleonora's Katpost, pointing out that the Advocate General's Opinion also took the view that damages rulings should not be so limited, can be read here.

Exhaustion of copyright and sale of altered products: CJEU rules in Allposters

The Court of Justice of the European Union ruled yesterday that the consent of a copyright holder does not cover the distribution of an object incorporating his work where that object has been altered after its initial marketing to such an extent that it constitutes a new reproduction of that work. The ruling is in Case C‑419/13, Art & Allposters International BV v Stichting Pictoright, a request for a preliminary ruling from the Hoge Raad der Nederlanden (the Supreme Court in The Netherlands).

The ruling deals with the exhaustion of the distribution right in copyright protected works under InfoSoc Directive 2001/29, Article 4 of which reads like this:
Distribution right

1. Member States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorise or prohibit any form of distribution to the public by sale or otherwise.

2. The distribution right shall not be exhausted within the Community in respect of the original or copies of the work, except where the first sale or other transfer of ownership in the Community of that object is made by the rightholder or with his consent.
Significantly, the InfoSoc Directive does not contain a proviso found in European trade mark legislation, notably in Article 7(2) of the Trade Mark Directive 2008/95, that exhaustion shall not apply
where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on  the market.
The facts of our case, in short, run like this:
Allposters, through its websites, markets posters and other reproductions depicting the works of famous painters, which are covered by the copyright exploited by Pictoright. Among other products, Allposters offers its clients reproductions in the form of posters, framed posters, posters on wood and images on canvases. In order to produce an image on canvas, a synthetic coating (laminate) is first applied [by Allposters] to a paper poster depicting the chosen work [for which the copyright is managed by Pictoright]. Next, the image on the poster is transferred from the paper to a canvas by means of a chemical process. Finally, that canvas is stretched over a wooden frame. The image of the work disappears from the paper backing during the process. 
The Hoge Raad der Nederlanden referred the following questions to the CJEU for a preliminary ruling:
‘(1) Does Article 4 of Directive 2001/29 govern the answer to the question whether the distribution right of the copyright holder may be exercised with regard to the reproduction of a copyright-protected work which has been sold and delivered within the [EEA] by or with the consent of the rightholder in the case where that reproduction had subsequently undergone an alteration in respect of its form and is again brought into circulation in that form?

(2) (a) If the answer to Question 1 is in the affirmative, does the fact that there has been an alteration as referred to in Question 1 have any bearing on the answer to the question whether exhaustion within the terms of Article 4(2) of [Directive 2001/29] is hindered or interrupted?

(b) If the answer to Question 2(a) is in the affirmative, what criteria should then be applied in order to determine whether an alteration exists in respect of the form of the reproduction which hinders or interrupts exhaustion within the terms of Article 4(2) of [Directive 2001/29]?

(c) Do those criteria leave room for the criterion developed in Netherlands national law to the effect that there is no longer any question of exhaustion on the sole ground that the reseller has given the reproductions a different form and has disseminated them among the public in that form (judgment of the Hoge Raad of 19 January 1979 in Poortvliet, NJ 1979/412)?’
Yesterday the CJEU answered this battery of questions with some brevity:
Article 4(2) of Directive 2001/29 ... must be interpreted as meaning that the rule of exhaustion of the distribution right set out in Article 4(2) of Directive 2001/29 does not apply in a situation where a reproduction of a protected work, after having been marketed in the European Union with the copyright holder’s consent, has undergone an alteration of its medium, such as the transfer of that reproduction from a paper poster onto a canvas, and is placed on the market again in its new form.
A rather fuller note on this decision by fellow blogger Eleonora, also summarising the not-yet-in-English Opinion of the Advocate General, can be found on the IPKat here (Eleonora has promised more to come ...).  Meanwhile, this blogger will confine himself to the observations that (i) the CJEU appears to have reached the same conclusion as would have been reached in an action for trade mark infringement, notwithstanding the absence of a specific provision along the lines of Article 7(2) of the Trade Mark Directive and that (ii) the term 'moral rights' appears just once, incidentally, in the ruling, while it seems that this ruling will be of particular use and interest to those seeking to resist the distribution of tangible products on the basis of infringement of the right to object to distortion or mutilation of their original works.

This case, whatever you may think of the decision, is another example of the CJEU's new, speedy approach to dealing with references for rulings from national courts.  The reference was only made in July 2013, so the whole issue has been turned round in 18 months. Only a few years ago it was rare for a ruling in an intellectual property case to be issued within 22 months.

Thursday 22 January 2015

Omega attempt to block resales falls foul of the first sale doctrine - and possibly copyright misuse too

In the U.S. the 9th Circuit Court of Appeals has ruled that watchmaker Omega's attempt to use copyright laws to block the sale of Omega watches at discounted prices Costco will just not work.

By way of background, Costco had bought a quantity of Omega watches intended for sale in Europe, not the US. Costco then imported those watches into the USA and put them on sale in its stores, discounting the prices Omega itself normally sells its watches at. Omega, in an attempt to block this, had inscribed a tiny globe on the back of the watch,  a copyrighteded image, and sued Costco for infringement.

The case was first fought on 'first sale' grounds, with the 9th Circuit originally siding with Omega, wo had argued that because the globe wasn't "lawfully made under this title" (because it was made in Europe, not under US law), "first sale" rights didn't apply. The case went up to the Supreme Court which ended in a 4-4 tie, because Justice Kagan didn't sit (as she had filed an amicus brief in the case while she was Solicitor General). The case then went back down to the District Court to determine whether or not it was still copyright misuse, even if first sale wasn't an issue.

The District Court agreed that it was a misuse of copyright.  Omega appealed (of course) and now the 9th Circuit has sided with the lower court, by revising its first sale opinion, thanks to the intervening Kirtsaeng ruling in the Supreme Court - which found that textbooks and other goods made and sold abroad could be re-sold online and in discount stores in America without violating U.S. copyright law.

In reviewing the current case, the 9th Circuit amended its original opinion,a nd followed Kirtsaeng, finding that Costco's actions fell within the First Sale doctrine:

It is clear, then, that Omega has no infringement cause of action against Costco. Omega’s only allegation is that Costco violated Omega’s copyright-based importation and distribution rights by selling gray market watches without a prior authorized first sale in the United States. Omega concedes that it authorized a first sale of the watches in a foreign jurisdiction. Omega’s right to control importation and distribution of its copyrighted Omega Globe expired after that authorized first sale, and Costco’s subsequent sale of the watches did not constitute copyright infringement. Kirtsaeng, 133 S. Ct. at 1366; 17 U.S.C. § 109(a). Thus, application of the first sale doctrine disposes of Omega’s claim, resolves this case in Costco’s favor, and conclusively reaffirms that copyright holders cannot use their rights to fix resale prices in the downstream market.

The copyright misuse claim did not really feature: However, in a concurring opinion, Judge Wardlaw said that copyright misuse would apply, even if the First Sale doctine didn't:

The district court correctly held that Omega misused its copyright “by leveraging its limited monopoly in being able to control the importation of [the Globe Design] to control the importation of its Seamaster watches.” The district court did not clearly err in finding that: (1) Omega copyrighted the Globe Design, at the advice of its legal department, to control the importation and distribution of Omega watches into the United States; and (2) Omega told its authorized distributors that the purpose of suing Costco was to “stem the tide of the grey market” and the “unauthorized importation of Omega watches into the U.S.” In other words, Omega attempted to use the copyrighted Globe Design to decrease competition in the U.S. importation and distribution of its watches by it and its authorized dealers—an obvious leveraging of a copyright to control an area outside its limited monopoly on the design. 

Omega argues that its anti-competitive motives are irrelevant to the issue of copyright misuse. According to Omega, our inquiry should instead focus on the copyright holder’s objective conduct or use. But Omega’s semantic hairsplitting is unpersuasive. By definition, “use” includes an inquiry into purpose.... However, we need not decide whether Omega’s motives are sufficient to establish copyright misuse. The undisputed record shows that before this lawsuit consumers were able to a buy a genuine Omega Seamaster watch from Costco for 35% less than Omega’s suggested retail price. This is no longer the case. Thus, at least one consequence of Omega’s lawsuit has been a reduction of intrabrand price competition for uncopyrightable Omega watches in the United States.

Later noting:

The Copyright Office granted Omega the exclusive right to control the importation and distribution of the Globe Design into the United States. It did not empower Omega to restrict competition from unauthorized retailers selling genuine, gray market Seamaster watches in the United States. Although the Globe Design engraved on the underside of the Seamaster watches was copyrighted, Omega misused its copyright when it used its intellectual property protection to obtain a copyright-like monopoly over uncopyrightable Seamaster watches.... Omega’s expansion of its copyrightlike monopoly eliminated competition from unauthorized watch retailers like Costco, thereby allowing Omega to control—through its exclusive distributor, Swatch U.S.A.—the retail pricing of Seamaster watches sold in the United States. If the copyright law allowed Omega to use its copyright to combat the importation and sale of all gray market watches that are stamped with the Globe Design, it would effectively grant Omega a copyright-like monopoly over the distribution and sale of Omega watches in the United States. Because such an outcome directly controverts the aims of copyright law, it is impermissible.

And, finally, it concludes:

“The limited scope of the copyright holder’s statutory monopoly, like the limited copyright duration required by the Constitution, reflects a balance of competing claims upon the public interest: Creative work is to be encouraged and rewarded, but private motivation must ultimately serve the cause of promoting broad public availability of literature, music, and the other arts.” Twentieth Century Music Corp., 422 U.S. at 156 [footnote omitted]. Omega’s attempt to expand the scope of its statutory monopoly by misusing its copyright in the Globe Design upset this balance. The watchmaker’s anticompetitive acts promoted neither the broad public availability of the arts nor the public welfare. Instead, they eliminated price competition in the retail market for Omega watches and deprived consumers of the opportunity to purchase discounted gray market Omega watches from Costco. Omega misused its copyright by engraving the Globe Design on the underside of its watches, and attempting to use copyright law to eliminate intrabrand competition from Costco in the retail watch market. Because the District Court correctly held that Omega misused its copyright in the Globe Design by attempting to leverage its limited monopoly over the design to control the importation and sale of Seamaster watches, I would affirm the District Court on the issue of copyright misuse.

Some would like to gave seen more on misuse: Writing on TechDirt,  Mike Masnick opines: "While I understand why the majority ruling just went with the easy out with First Sale, it's too bad that this concurring ruling isn't the majority ruling, as we could use more useful opinions like this one when it comes to copyright misuse. Either way, kudos to the court for properly recognizing that even if you buy a watch outside the US, you should actually own it, and that copyright law shouldn't be able to get in the way of those property rights."

And more on Gigaom here