Friday 26 October 2018

What is rarer than the unicorn? A dress protected by copyright?

Roy Halston, the creator of the Halston brand, is remembered by fashion historians for his use of ultrasuede fabric, a soft manmade fabric imitating suede which could be machine-washed, and for his simple, yet sophisticated designs. While his main line was designed and priced to attract high-income customers, he also designed a line for mass-retailer J.C. Penney. Roy Halston lost control of his brand before dying in 1990, but the Halston Heritage brand has made a comeback in recent years and still sells clothes and accessories, some of which are somewhat reminiscent of the original designs. 

On October 15, the Halston company filed a copyright infringement suit in the central district of California against G-III, which is the exclusive licensor for Calvin Klein. Defendant produces and sells women’s clothes and accessories under the Calvin Klein trademark.

At issue are three Halston dresses which were allegedly copied by Defendant. 
Plaintiff's Design A

First there is “Subject Design A” dress. The top of the dress is a simple sleeveless shift, with a round neckline, flaring asymmetrically below the waist, and revealing a bottom dress in contrasting color. The company has applied to register its copyright (good luck).

Defendant sold a dress which Plaintiff found to be a copy of Subject Design A, arguing in the complaint that “it is apparent that the elements, materials, place, movement, centering, composition, colors, arrangement, overlay, appearance and structure of the design [sic] are substantially and confusingly similar, if not identical.”

Plaintiff manufactured and sold another dress, ‘Subject Design B’, a belted sleeveless dress, with a round neckline, gently flaring out asymmetrically, revealing the lower part of the left thigh of the wearer and its contrasting lining. Defendant also manufactured and sold a belted sleeveless, with a round neckline gently flaring out asymmetrically, revealing the lower part of the left thigh of the wearer and its contrasting lining. Plaintiff does not indicate in the complaint that it is in the process of registering the copyright for Subject Design B, but repeats the substantially and confusingly similar claim.
Defendant's dress

There is also ‘Subject Design C,’a full length sleeveless dress with a deep V neck and double straps which opens high on the right thigh of the wearer. Defendant also manufactured and sold a full length dress with a deep V neck and double straps. However, Defendant’s dress does not have a slit, but a mermaid shape. However, Plaintiff also claims the two designs are “substantially similar, if not identical.”

Plaintiff is of course aware that a dress is a useful article and, as such, is not protected by copyright. In order to be able to claim copyright protection for Design A, Plaintiff argues that:

“[Design A] [w]ould qualify as a protectable pictorial, graphic, or sculptural works- either on its own or fixed in some other tangible medium of expression, despite having some utilitarian function, which is to facilitate conduct associated with the 70’s an area which Roy Halston Frowick is strongly identified [sic], and as described by Erica Jong as “the purest thing there is. And it is rarer than the unicorn.” Erica Jong, Fear of Flying (1973). See Star Athletica, L.L.C. v. Varsity Brands., 580 U.S.___, 137 S. Ct. 1002 (2017).”

The Supreme Court held that In Star Athletica that a feature incorporated into the design of a useful article can be protected by copyright if (1) it can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) if it would qualify as a protectable pictorial, graphic, or sculptural work, either on its own or fixed in some other tangible medium of expression, if it were imagined separately from the useful article.

The feature incorporated in the design of the useful dress is “an overlay to express movement, affixing fabric in a manner to affect the appearance, weight and asymmetrical flow of the design, including but not limited to incorporation of a gusset and tack in the flounce, and increasing the downward visual consistency and depth of the two colors used.”

Plaintiff seems to argue that the function of this feature, which can be protected as a work of art, is “to facilitate conduct associated with the 70’s an area which Roy Halston Frowick is strongly identified [sic], and as described by Erica Jong as “the purest thing there is. And it is rarer than the unicorn.”
I was puzzled by the Erica Jong reference and wondered if Erica Jong was referring in this quote to the 70’s or to Halston. Actually, she was referring to …well… Here is the quote: “The zipless fuck is the purest thing there is. And it is rarer than the unicorn.” I was still puzzled after finding the quote and I am looking forward to reading Defendant’s motion or answer to the complaint to find out what its attorneys made out of it.

Excluding Designs (and Shape Marks) - Where is the CJEU going?

Professor Uma Suthersanen (Queen Mary University of London) is giving a lecture at the City Law School on the 27th November, exploring the EU's design right jurisprudence

"The EU design regime adopted a new “market-based approach”, which protects both functional and aesthetic designs. Nevertheless, it is recognised that certain types of functional designs can give rise to unduly restrictive effects on legitimate competition, within certain product sectors. Accordingly, Art.8(1) Community Design Regulation expressly excludes "features of appearance of a product which are solely dictated by its technical function”; the paramount rationale being the protection of competitive innovation. The past decade has spawned three separate interpretations of the functionality exclusion, the most paradoxical being the linkage drawn between aesthetic considerations and functional presence. A further layer of analysis derives from the functionality exclusion within the Community Trademark Regulation. A final challenge to juridical coherence is the EU Court’s earlier Flos decision widening national copyright law to embrace all sorts of designs, and presumably functional designs. It is submitted that the CJEU's decision in Doceram (2018) is perhaps the right approach - whereby it rejects all three previous interpretations, but weaves one which marries them all. The approach is also logical if one accepts that the functionality exclusions within design, trade mark and copyright laws must be interpreted in pari materia within an increasingly-aligned EU IP law"

This is free, but you need tor register and you can SIGN UP HERE 

27th November 2018 at 15.00

City, University of London
Northampton Square


Wednesday 24 October 2018

EFF calls for reforms - to the reforms !

As the CopyKat reported earlier this week, the technology sectors are continuing their assault on planned reforms to EU Copyright law, and now the Electronic Frontiers Foundation has joined the likes of Google, YouTube and Facebook in criticising the planned copyright law reforms. In a letter the EFF say has been sent to everyone involved in the upcoming "Trilogues", the meetings held between representatives from European national governments, the European Commission, and the European Parliament, Cory Doctorow argues that the reforms contained in Articles 11 and 13 of the Copyright Directive are "ill considered and have no place in the Directive", concluding that instead of effecting some "piecemeal fixes to the most glaring problems", the Trilogue takes a simpler approach, and removes them from the Directive altogether. 

Having previously opined that the vote in the European Parliament that passed the draft Directive "brought the EU much closer to a system of universal mass censorship and surveillance, in the name of defending copyright" and that Articles 13 and 11 would create "upload filters" and the “link tax”, the EFF's views are perhaps unsurprising - you can make of the points raised as you will, as the letter is set out in full is below:

The Electronic Frontier Foundation is the leading nonprofit organization defending civil liberties in the digital world. Founded in 1990, EFF champions user privacy, free expression, and innovation through impact litigation, policy analysis, grassroots activism, and technology development. We work to ensure that rights and freedoms are enhanced and protected as our use of technology grows. We are supported by over 37,000 donating members around the world, including around three thousand within the European Union.

We believe that Articles 11 and 13 are ill-considered and should not be EU law, but even stipulating that systems like the ones contemplated by Articles 11 and 13 are desirable, the proposed text of the articles in both the Parliament and Council texts contain significant deficiencies that will subvert their stated purpose while endangering the fundamental human rights of Europeans to free expression, due process, and privacy.

It is our hope that the detailed enumeration of these flaws, below, will cause you to reconsider Articles 11 and 13's inclusion in the Directive altogether, but even in the unfortunate event that Articles 11 and 13 appear in the final language that is presented to the Plenary, we hope that you will take steps to mitigate these risks, which will substantially affect the transposition of the Directive in member states, and its resilience to challenges in the European courts .

Article 13: False copyright claims proliferate in the absence of clear evidentiary standards or consequences for inaccurate claims.

Based on EFF’s decades-long experience with notice-and-takedown regimes in the United States, and private copyright filters such as YouTube's ContentID, we know that the low evidentiary standards required for copyright complaints, coupled with the lack of consequences for false copyright claims, are a form of moral hazard that results in illegitimate acts of censorship from both knowing and inadvertent false copyright claims.

For example, rightsholders with access to YouTube's ContentID system systematically overclaim copyrights that they do not own. For instance, the workflow of news broadcasters will often include the automatic upload of each night's newscast to copyright filters without any human oversight, despite the fact that newscasts often include audiovisual materials whose copyrights do not belong to the broadcaster – public domain footage, material used under a limitation or exception to copyright, or material that is licensed from third parties. This carelessness has predictable consequences: others — including bona fide rightsholders — who are entitled to upload the materials claimed by the newscasters are blocked by YouTube and have a copyright strike recorded against them by the system, and can face removal of all of their materials. To pick one example, NASA's own Mars lander footage was broadcast by newscasters who carelessly claimed copyright on the video by dint of having included NASA's livestream in their newscasts which were then added to the ContentID database of copyrighted works. When NASA itself subsequently tried to upload its footage, YouTube blocked the upload and recorded a strike against NASA.

In other instances, rightsholders neglect the limitations and exceptions to copyright when seeking to remove content. For example, Universal Music Group insisted on removing a video uploaded by one of our clients, Stephanie Lenz, which featured incidental audio of a Prince song in the background. Even during the YouTube appeals process, UMG refused to acknowledge that Ms. Lenz’s incidental inclusion of the music was fair use – though this analysis was eventually confirmed by a US federal judge. Lenz's case took more than ten years to adjudicate, largely due to Universal's intransigence, and elements of the case still linger in the courts.

Finally, the low evidentiary standards for takedown and the lack of penalties for abuse have given rise to utterly predictable abuses. False copyright claims have been used to suppress whistleblower memos detailing flaws in election security, evidence of police brutality, and disputes over scientific publication.

Article 13 contemplates that platforms will create systems to allow for thousands of copyright claims at once, by all comers, without penalty for errors or false claims. This is a recipe for mischief and must be addressed.

Article 13 Recommendations

To limit abuse, Article 13 must, at a minimum, require strong proof of identity from those who seek to add works to an online service provider's database of claimed copyrighted works and make ongoing access to Article 13's liability regime contingent on maintaining a clean record regarding false copyright claims.

Rightsholders who wish to make copyright claims to online service providers should have to meet a high identification bar that establishes who they are and where they or their agent for service can be reached. This information should be available to people whose works are removed so that they can seek legal redress if they believe they have been wronged.

In the event that rightsholders repeatedly make false copyright claims, online service providers should be permitted to strike them off of their list of trusted claimants, such that these rightsholders must fall back to seeking court orders – with their higher evidentiary standard – to effect removal of materials.

This would require that online service providers be immunised from Article 13's liability regime for claims from struck off claimants. A rightsholder who abuses the system should not expect to be able to invoke it later to have their rights policed. This striking-off should pierce the veil of third parties deputised to effect takedowns on behalf of rightsholders ("rights enforcement companies"), with both the third party and the rightsholder on whose behalf they act being excluded from Article 13's privileges in the event that they are found to repeatedly abuse the system. Otherwise, bad actors ("copyright trolls") could hop from one rights enforcement company to another, using them as shields for repeated acts of bad-faith censorship.

Online service providers should be able to pre-emptively strike off a rightsholder who has been found to be abusive of Article 13 by another provider.

Statistics about Article 13 takedowns should be a matter of public record: who claimed which copyrights, who was found to have falsely claimed copyright, and how many times each copyright claim was used to remove a work.

Article 11: Links are not defined with sufficient granularity, and should contain harmonised limitations and exceptions.

The existing Article 11 language does not define when quotation amounts to a use that must be licensed, though proponents have argued that quoting more than a single word requires a license.

The final text must resolve that ambiguity by carving out a clear safe-harbor for users, and ensure that there’s a consistent set of Europe-wide exceptions and limitations to news media’s new pseudo-copyright that ensure they don’t overreach with their power.

Additionally, the text should safeguard against dominant players (Google, Facebook, the news giants) creating licensing agreements that exclude everyone else.

News sites should be permitted to opt out of requiring a license for inbound links (so that other services could confidently link to them without fear of being sued), but these opt-outs must be all-or-nothing, applying to all services, so that the law doesn’t add to Google or Facebook's market power by allowing them to negotiate an exclusive exemption from the link tax, while smaller competitors are saddled with license fees.

As part of the current negotiations, the text must be clarified to establish a clear definition of "noncommercial, personal linking," clarifying whether making links in a personal capacity from a for-profit blogging or social media platform requires a license, and establishing that (for example) a personal blog with ads or affiliate links to recoup hosting costs is "noncommercial."

In closing, we would like to reiterate that the flaws enumerated above are merely those elements of Articles 11 and 13 that are incoherent or not fit for purpose. At root, however, Articles 11 and 13 are bad ideas that have no place in the Directive. Instead of effecting some piecemeal fixes to the most glaring problems in these Articles, the Trilogue take a simpler approach, and cut them from the Directive altogether.

Thank you,

Cory Doctorow
Special Consultant to the Electronic Frontier Foundation

Proposal for a Directive of the European Parliament and of the Council on copyright in the Digital Single Market  COM(2016)593

Tuesday 23 October 2018


American Airlines has filed a legal action against the U.S. Copyright Office after it was denied the registration of American Airlines' logo.  American Airlines Group, Inc. merged with US Airways and introduced its new logo five years ago. The new logo features a diagonal blue and red line with a bird's head in the middle. The Fort Worth-based carrier applied to register the new logo, which it dubbed the Flight Symbol, in 2016. In a move that surprised American, the Copyright Office denied American's registration. At one point, the Copyright Office reportedly said about the logo: "While the bar for creativity is low, it does exist and the work cannot glide over even its low heights." American disagrees, arguing that its Flight Symbol "easily" meets the creativity threshold necessary to register for copyright protection. The airline said that in most cases the Copyright Office's decisions are consistent and well-reasoned - but filed the lawsuit as here the office’s refusal “arbitrary, capricious … and an abuse of discretion” More here

The Von Zobel family from Giebelstadt, C1770
The CJEU has backed the opinion of Advocate General, Maciej Szpunar in a German case that pitted a defendant (Michael Strotzer) who claimed he could not be liable for online infringement because he and his parents used the same internet connection, and the need to balance the (here) conflicting rights  of a right to family life against the right of a copyright owner to protect their rights. The conclusion?  The court have upheld the AG's opinion that  "The right to respect for family life, recognised in article seven of the Charter Of Fundamental Rights of the EU, cannot be interpreted in such a way as to deprive right holders of any real possibility of protecting their right to IP" and confirmed the AG's position that  Strotzer was "abusing the right to protection of family life by invoking that right, not in order to protect the members of his family against liability for the infringement of copyright with which they clearly have no connection, but solely in order to escape his own liability for that infringement" - whilst a fair balance has to be to be struck, an individual's right to a private and family life doesn't trump the right of a copyright owner who is seeking an effective remedy for an infringement.

For an opinionated but highly readable critique of the proposed reforms to South Africa's intellectual property laws - look not further that Sadulla Karjiker's article Shambolic Copyright Amendment Bill will favour Google and its ilk in Business Day:  "There is no point in mincing my words about the passage of the proposed Copyright Amendment Bill thus far: it has been shambolic and would embarrass a banana republic. The reason the portfolio committee arrogated to itself the responsibility of drafting the bill was because the draft bill produced by the department was so poorly drafted that it resulted in wide-ranging criticisms from various stakeholders. Well, the portfolio committee’s efforts have quite frankly not been much better. Not only has the technical drafting been poor, but the department, and now the portfolio committee, continue to try to railroad a particularly skewed agenda through parliament." There is more - and it's all here.

And more of the same - or similar:  The American Law Institute describes itself as the “leading independent organisation in the United States producing scholarly work to clarify, modernise and improve the law” and periodically the ALI issues what have generally been regarded as well reasoned, well researched and academically sound ‘Restatements Of The Law’. But now the record music and music publishing sectors in the USA have taken great exception to the ALI's latest Restatement, on copyright, claiming that far from being independent lawyers and academics - they are comprised of those who have pushed to restrict copyright, with one comment being the authors are "notoriously anti-creator copyleft irritators". The Recording Industry Association of America and the National Music Publishers Association have written a joint letter to the ALI, and NMPA boss David Israelite said a statement yesterday. “The American Law Institute’s so-called ‘Restatement Of Copyright Law ... was written by extremist anti-copyright lawyers in an attempt to redefine copyright law” - with the letter saying "in recent years copyright law for music has faced repeated tests and challenges, including for those who legislate and interpret the law, in large part due to the transformation of the music industry from physical to digital” and  “Important copyright law issues for music are before Congress, the courts and agencies”, they add. “Under these circumstances, attempting to ‘restate’ copyright law for music now is a difficult, if not an odd, exercise” and that  “copyright law is ill suited for restatement by ALI at this time, especially as envisioned by the [authors]".

And finally, an interesting read on copyright law reform in the Financial Times and the positive and negative sides of YouTube - with a quote from our very own John Enser! 

Money for nothing: copyright law, YouTube, and the future of music [Part II]

More here Money for nothing: copyright law, YouTube, and the future of music [Part II]. And YouTube certainly hasn't given up on trying to get rid of Article 13, with YouTube CEO Susan Wojcicki warning video makers about the "threat" of Article 13 in a blog post, urging them to "take action immediately" and protest the ruling with videos and social media posts - more here

Tuesday 16 October 2018

Is Richard Prince in a Jam?

We have often written on this blog about the appropriation artist Richard Prince, whose work was at the origin of several copyright infringement cases, including the Cariou v. Prince case (see here, here, here, and here). Copyright bloggers owe him a full bowl of da la jam gratitude. 
Prince is still embroiled in two copyright infringement suits following his New Portraits 2014 exhibition at Gagosian : a copyright infringement suit was filed by photographer Donald Graham (see here) and another by photographer Eric McNatt (see here), both in the Southern District of New York (SDNY). These two cases are Eric McNatt v. Richard Prince et al., 1:16-cv-08896 and Graham v. Prince et al., 1:15-cv-10160. Richard Prince filed last week his two memorandums of law in support of his motions for summary judgment in these two cases, see here and here.

Richard Prince is an appropriation artist. He explained in his motion to dismiss the McNatt case that the New Portraits “continue Prince over 40-year career of using found photos and objects in order to comment on society, through the use of text and recontextualisation.” The New Portraits, reproductions of Instagram posts complete with a Prince’s comment, are each approximatively 41 by 41 inches, as an homage to Andy Warhol who used this format for his portraits, as explained in the McNatt memo.

In the McNatt case, Prince used a photograph of Kim Gordon, taken by Eric McNatt, and which has been published on social media, to create one of his New Portraits works. In the Graham case, Prince used Graham’s photograph of a Rastafarian smoking a jointwhich already existed pervasively on the Internet, largely through Donald Graham’s own actions” according to Prince’s memorandum, to create Portrait of Rastajay92. This is a rather odd argument, as Graham, as the copyright holder, has the exclusive right to publish his work as he wished to do, including on the web. This action does not give carte blanche to third parties to copy and use the work without permission.

Did Donald Graham grant an implied license?

Prince argued that Donald Graham had published his work on his Facebook page on a public setting, thus granting Facebook a non-exclusive, transferable license to use the photograph. Prince also argued that Graham did not use any embedded watermarks on his work, had not set any privacy settings for viewing the work, and that he understood that once published on the web, it was forever published on the web.  

Prince argued that he “reasonably interpreted Graham’s conduct as permission to use the [p]hotograph in a new way” and had a “non-exclusive implied license” to use the work, citing the Field v. Google case from the Nevada district court. In this case, the court had found that Google had an implied license to display works protected by copyright in cached links, even though the copyright owner did not explicitly authorize such use. However, the court noted that Field could have used a tag directing Google not to archive the pages, but did not do so and thus had implicitly given Google a license to display his works.

Prince claimed in the McNatt case memo that Eric McNatt and Kim Gordon had posted the original work on their Instagram accounts, and that McNatt still features the photograph on his website without embedded watermarks. The original Graham work had been republished on Instagram by a third party, user Rastajay92, and it is this social media post which was reproduced by Prince, complete with his own comment: “Canal Zinian da lam jam,” an allusion to his Canal Zone show, or, as Prince puts it, a “self-referential allusio[n] to his own artistic biography.” I wrote “da lam jam” on the Google translate box: it detected Arabic as a language, and offered “it did not g” as a translation. Curiouser and curiouser!

Prince’s memorandum in the Graham case argues that his New Portraits exhibition was a “social commentary” and thus a “core fair use principle… expressed through a novel technological and sociological medium and context” and that the forfeiture of the works, as asked by Plaintiff Donald Graham, “would have a chilling effect on the progress of the arts, to the detriment of the public.”

An ode to social media

Prince argued that his use of Graham’s work was highly transformative, because he used what he described as “an austere description of a Rastafarian” and turned it into “an ode to social media.” Prince further argued that the fact that he did not add anything to the original work, unlike in his works in the Cariou case, enhances his fair use claim, not weakens it, because he needed to “authentically replicate in the physical world the virtual world of social media.

He used similar arguments in his motion to dismiss the McNatt case, that he “imbued what was once an austere depiction, documenting a female rocker in a defiant pose into part of an ode to social media.

It may be an ode to social media, but it is also copyright infringement. The defense is fair use.

Is this ode to social media fair use?

Prince argued that his New Portraits were a parody of the social media posts as a whole. So it is an ode to social media which is also a parody. A parody is indeed highly transformative, and a highly transformative work is likely to be considered by courts as a fair use of a protected work, under the first fair use factor.

Prince argued that he used the Kim Gordon photograph to comment on social media, about “the whole idea of putting up images on a new platform that was available to anyone, to an entire population” and that artistic purpose was “a world-away from McNatt’s purpose in making the [p]hotograph.”

For Prince, Graham’s sales of his works have not suffered because of Prince’s use and Graham’s notoriety has even been greatly enhanced by Prince’s use, and that thus the fourth fair use factor, the effect on the market, should weigh in Prince’s favor.

Prince also argued that Graham did not have the right to exploit the photograph, as the right of publicity of its subject is governed by Jamaican law, and that therefore any harm done by Prince’s use of the work would harm an “illegitimate market.” Prince used a similar argument in his McNatt memo, arguing that the photographer did not obtain Kim Gordon’s written authorization to use her image, as required by the New York right of publicity statute, other than for their original use, a publication in Paper magazine.

Prince also argued that the second fair use factor, the nature of the copyrighted work, should be in his favor, as the original Graham work was “more factual than creative.” As for the third factor, the amount and substantiality of the work used, in relation to the protected work as a whole, Prince cited the Bill Graham case, in both of his memos, where the Second Circuit held that the third factor can weigh in favor of the defendant even if the work is reproduced in its entirety.

Prince argued that the original Graham work has been cropped and that the remaining work was necessary to serve Prince’s purpose, commenting about social media. He argued in the McNatt memo that Prince used an entire Instagram post, complete with “colorized emojis” and thus drew the viewer’s attention around the image, thus “reducing the artistic or intellectual importance of the photographic image relative to its physical portion of the painting.”

This is quite a fair use battle royal. Copyrights enthusiasts will keep watching, and possibly, cheering.

Image is courtesy of Flickr user (vincent desjardins) under a CC BY 2.0 license.

Monday 15 October 2018

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

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

Here's what Akshat writes: 

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

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

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

Intention of the Legislature

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

Beneficial Construction

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

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

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

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

International Position

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

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

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