Thursday 29 November 2018

Big Freedia, Bouncing, and Copyright

Freddie Ross, Jr., aka Big Freedia, aka the Queen of Bounce, filed a copyright infringement suit last week against Wilberto Dejarnetti in the Eastern District court of Louisiana. The case is Ross v. Dejarnetti, 2:18-cv-11277
According to the complaint, Plaintiff met Defendant in 2014 and hired him to help with staging and choreographing Plaintiff’s performances. Plaintiff and his dancers worked with Defendant to create new stage choreography for several songs, including “Shake Session Medley” “Explode,” and “Best Beeleevah” (the Choreographic Works).

Plaintiff stopped working with Defendant in late 2017. Defendant then asked Plaintiff to credit him as a co-author and producer of several songs (the Musical Works), and also to pay him a monthly fee of $500 to use the Choreographic Works.

Failure to find an amicable solution led to the filing of this copyright infringement suit.

Joint authorship

Plaintiff is seeking a declaration from the court of his rights in the musical Works, arguing that Defendant’s “mere presence in the recording studio during the creation of the Musical Works is not sufficient to confer authorship rights,” that he had not made “any copyrightable contributions to the Musical Works and [that] the true creators of the Musical Works never intended [Defendant] to be a joint author.

As we do not know yet what Defendant’s arguments are, it is difficult to comment beyond an explanation of what is joint authorship under U.S. copyright law.

Section 201(a) of the Copyright Act explains that the authors of a joint work co-own the copyright in the work and Section 101 of the Copyright Act defines a joint work as “a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.”

So the crux of the issue is whether Plaintiff and Defendant’s contributions intended their participation in creating the songs to be merged into a whole.

If the two parties are indeed joint authors, then either of them needs the permission of the other to exploit the work, unless they would have agreed differently in writing. However, the written consent of all the joint authors is needed when granting an exclusive license.

In our case, Big Freedia is arguing that Defendant did not make any copyrightable contributions to the songs. He could well have made some contributions, but the argument is that theywere not original enough to be protected by copyright. Indeed, mere ideas and concepts are not copyrightable, and this argument is often used when denying joint authorship.

Authorship is generally a question of fact for the jury, but the parties will probably settle before that phase of the trial and so we may never know.

Copyright and choreographic works

Plaintiff states however that Plaintiff and Defendant are joint authors of the Choreographic Works, as their respective contributions “were merged into inseparable or interdependent parts of a unitary whole.

Choreographic works can be protected by copyright if they are fixed, for instance, by a video recording, or by a written and precise notation. But the choreography must be original enough to be protected. It is surprising that Plaintiff states in the complaint that the Choreographic Works “were largely based on and derivative of traditional “bounce” dance movements and other routines [Plaintiff] and his dancers had been employing for years.” Plaintiff seems thus to deny the moves were original enough to be protected by copyright…

The complaint alleges that Defendant is asking Plaintiff to stop using the Choreographic Works claiming that he is their sole author. Plaintiff is asking the court to find that they are jointly authors, or, alternatively, to rule that Plaintiff can use these choreographies without compensation through an implied license.

An implied license can be granted without knowledge. For instance, the Ninth Circuit explained in Effects Associates, Inc. v. Cohen that a plaintiff which had “created a work at defendant's request and handed it over, intending that defendant copy and distribute it had thus impliedly granted nonexclusive licenses to [the defendant].” In Hunn v. Dan Wilson Homes, Inc, the Fifth Circuit Court of Appeals found that Plaintiff in a copyright infringement suit had created an implied nonexclusive license when he had delivered, through his agent, the plans for the four custom homes without any "written or orally communicated restrictions about limits on [Defendant’s] ability to use the delivered drawings."

This case is yet another example of why it is good practice for an artist to sign agreements with every single person who is collaborating with him or her.

Tuesday 27 November 2018


Internet service provider Cox Communications efforts to move the copyright infringement case it is facing from the American recorded music sector looks like it has failed after the judge in the case published a written statement explaining why he has resisted the shift. The case was filed in the Virginian court that had already heard the partially successful case brought by BMG Rights Management against Cox: BMG argued that Cox should be held liable for the copyright infringement of its customers, because it only paid lip service to its obligations under the Digital Millennium Copyright Act to be able to benefit from safe harbour protection. BMG prevailed at first instance and and whilst that ruling was set aside on appeal many felt the comments of the appellate court were more than useful to rights owners. Cox subsequently settled with BMG. Judge Liam O'Grady has declined to give the case up saying that it makes sense to hear the new action in the court where the BMG dispute was argued out, as many of the issues will be the same saying "Although defendants claim this court's ruling on the DMCA's safe harbour provision will not be relevant to this case, this court's prior ruling will at the very least touch on the issues presented here. The considerable judicial resources this court expended on reaching this ruling on an issue of first impression - a ruling that was upheld by the [appeals court] - cannot be ignored".  The 4th Circuit Court of Appeal said that the DMCA provides a degree of protection to ISPS and other platforms that respond expeditiously to takedown requests. But one of the requirements is that the ISP and other intermediaries to have "adopted and reasonably implemented … a policy that provides for the termination in appropriate circumstances of subscribers … who are repeat infringers" abd Cox wasn't entitled to rely on safe harbor because it did very little if anything even when told about repeat offenders.

Internet services company Cloudflare is also on the receiving end of another lawsuit in the US which could again test the liabilities of the net firm when it provides services to piracy websites - this suit from wedding dress makers Mon Cheri Bridals and Maggie Sottero Designs who are suing the net firm for contributory infringement because it allegedly provides services to websites based out of China that sell copies of the two companies' bridal wear to customers back in the US - and which uses pictures from the plaintiff's own websites to promote the counterfeit copies. The Recording Industry Association of America had previously accused Cloudflare of contributory copyright infringement and in a submission to a US government report on piracy, the RIAA states that: "[Piracy] sites are increasingly turning to Cloudflare, because routing their site through Cloudflare obfuscates the IP address of the actual hosting provider, masking the location of the site".

Universal Music has taken legal action over podcasts published by a global website for poker fans - PokerNews - which they say infringes their copyrights by including tracks controlled by the major label without permission. The major has sued PokerNews owner iBus Media (actually incorporated in the Isle of Man, a self-governing British Crown dependency in the Irish Sea between Great Britain and Ireland) for wilful copyright infringement in the Californian courts. The lawsuit states that: "Among the content made available by iBus Media on PokerNews, and through other forums, are hundreds of podcasts that intentionally incorporate significant portions of plaintiffs' copyrighted musical works". On the Pokernews website it does say “All Content published by PokerNews on the Site (apart from User-submitted Content), including, without limitation, images, photographs, graphics, animations, videos, audio and text . . . are owned by PokerNews and/or its licensors and is protected by copyright and other intellectual property or other proprietary rights.”  UMG clearly disagrees!

New Zealand's Minister of Commerce and Consumer Affairs Hon Kris Faafoi, has released an issues paper marking the first stage of public consultation on changes to the Copyright Act 1994, saying all Kiwis should consider taking part. “Copyright affects all New Zealanders. We create copyright works when we take a photograph, record a video, or write an email, and we use copyright works by watching a sports broadcast, streaming a movie, listening to music, or reading a book,” says the minister.

A group of Satanists who sued Netflix and Warner Bros for $50 million (£38 million) in a copyright row over the TV drama series Sabrina have "amicably" settled the lawsuit. The Satanic Temple claimed the entertainment giants copied its depiction of goat-headed deity Baphomet in The Chilling Adventures Of Sabrina. The only publicly released terms was that "The unique elements of the Satanic Temple's Baphomet statue have been acknowledged in the credits of episodes which have already been filmed."

MBW reports that  YouTube’s Global Head of Music, Lyor Cohen has called the implications of 'Article 13' into question within a monthly newsletter sent to a large group of industry executives as YouTube and Google continue to fight back against the planned copyright reforms in the EU. Cohen warned of what he sees as dangers surrounding the passage of the new European Copyright Directive – including provision Article 13, which would see platforms like YouTube become legally liable for copyright-infringing content uploaded by its users saying "“we believe that the current proposal will create severe unintended consequences for the whole industry. We still have a couple of weeks to work together towards a better final version of the law concluding that songwriters and recording artists might earn LESS money in the future if the reforms are implemented without change. In reply five major European music-industry trade organisations including the IFPI, the  ECSA  and IMPALA  fired off a strongly worded collective response titled “YouTube’s Fact Free Fear-Mongering" saying "“YouTube’s campaign against Article 13 of the Copyright Directive shows a lack of respect for the EU democratic process of law making ....[T]he revisions to the Directive have been under discussion for over four years already and the three main institutions of the European Union have all given their position. The Commission, Council and Parliament have all reached the same conclusion, that there is a value gap, also referred to as a transfer of value, where user upload services are making vast sums of money on creators’ content uploaded by their users, but not paying the right holders who own that content fairly. The result is a serious distortion in the European digital market place which harms right holders, other digital services and citizens. To correct that situation, platforms like YouTube should have to take responsibility for the content they use and monetize, by fairly remunerating their creators and right holders."  

One thing to add would be that even if YouTube were paying over a 'fair share' to the recorded music sector - are they in turn paying over a 'fair' share to the actual creators - the recording artistes? Many would say they receive a pittance and a tiny tiny share of digital revenues and little improvement has been made. Much still to think about! And does 'Big Content' need YouTube more than YouTube needs Big Content? More on this and the EU reforms from a BoingBoing perspective here .

A judge in the U.S. has issued a somewhat scathing opinion in connection with the activities of an alleged 'copyright troll'. In response to an early discovery request by Strike 3 Holdings, Judge Royce C. Lamberth describes the plaintiff as a "cut-and-paste" serial litigant whose lawsuits "smack of extortion". The company runs away at the first sign of a defense, he added, while noting his court is being used "as an ATM". TorrentFreak says that Strike 3 Holdings is one of the most active copyright trolls in the United States, filing more than 1,800 copyright infringement cases in the past 13 months. “Its feigned desire for legal process masks what it really seeks: for the Court to oversee this high-tech shakedown. This Court declines,” the Judge concludes.

AND finally....If you watch YouTube videos without a YouTube Premium subscription, you might have seen a recent pop up advert warning about article 13! And not to be left out of a strong reaction to the planned reforms,  and specifically Article 11, Google is threatening to (possibly) shut down Google News once news aggregators were subject to the 'link tax'.

Thursday 15 November 2018

A tasty decision for cheese lovers

The CJEU has  rejected a controversial attempt to use copyright law to protect the distinct taste of a food product, in this case a Dutch cheese. The court explained that taste is too subjective to allow a work to be uniquely identified, even using science, and so cannot be protected.

The Court of Justice concurred with the Advocate General's opinion that an artistic work must be capable of being seen and heard. It's the first time the court has been asked to decide whether copyright applies to taste on an artistic work not defined by the InfoSec Directive (Directive 2001/29/EC)

The case was originally filed in the Dutch courts by the owner of the cream cheese brand Heks'nkaas (witches' cheese), Levola Hengelo. Their product is a spreadable cheese with herbs. It objected to a cream cheese, made by rival manufacturer Smilde Foods since 2014 called "Witte Wievenkaas" (wise-women's cheese), which it claimed "infringed" the flavour of Heks'nkaas. Smilde’s herbed cheese dip contains many of the same ingredients. Witte Wievenkaas is now sold under the name Wilde Wietze Dip.

Levola argued that the taste of food, like literary, scientific or artistic works, could be copyrighted, citing the 2006 case involving Lancôme, the cosmetics company, that had accepted in principle that the scent of a perfume could be eligible for copyright protection. Smilde responded that taste is subjective.

The case went on to the appellate court in Arnhem-Leeuwarden which in turn referred the matter to the CJEU for a preliminary ruling.

The upshot of this is the CJEU have found that the taste of a food product is not eligible for copyright protection and the taste of a food product cannot be classified as a ‘work’. In the judgment the Court makes clear that in order to be protected by copyright under the Directive, the taste of a food product must be capable of being classified as a ‘work’ within the meaning of the Directive. Classification as a ‘work’ requires (a) that the subject matter concerned is an original intellectual creation and(b) there must be an ‘expression’ of that original intellectual creation.

In accordance with the Agreement on Trade-Related Aspects of Intellectual Property Rights, which was adopted in the framework of the World Trade Organisation and to which the EU has acceded and with the WIPO Copyright Treaty to which the EU is a party, copyright protection may be granted to expressions, but not to ideas, procedures, methods of operation or mathematical concepts as such. Accordingly, for there to be a ‘work’ as referred to in the Directive, the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity.

In that regard, the Court found that the taste of a food product cannot be identified with precision and objectivity (unlike say a literary, pictorial, cinematographic or musical work, which is a precise and objective expression).: the taste of a food product will be identified essentially on the basis of taste sensations and experiences, which are subjective and variable. They depend on, amongst other things, factors particular to the person tasting the product concerned, such as age, food preferences and consumption habits, as well as on the environment or context in which the product is consumed.

Moreover, it is not possible in the current state of scientific development to achieve by technical means a precise and objective identification of the taste of a food product which enables it to be distinguished from the taste of other products of the same kind.

Accordingly, the Court concludes that the taste of a food product cannot be classified as a ‘work’ and consequently is not eligible for copyright protection under the Directive.

C-310/17 Levola Hengelo BV v Smilde Foods BV

Readers might want to compare this decision with the European Court of Justice's decision in  which held that a sound can be registered as a trade mark if it is capable of being represented graphically in a clear and easily accessible way - Shield Mark BV v Joost Kist h.o.d.n. Memex (2003). In Sieckmann the ECJ (on appeal from the German Trademark authority) held that a smell could not be registered either by registering the formulae or depositing a sample. The Sieckmann Criteria, a seven part test that goes some way to explaining the ECJ's then reasoning on what might be needed to secure protection and the use of words such as 'clear', 'precise', 'self-contained', 'easily accessible', 'intelligible', 'durable' and 'consistent' - and tested on an objective basis.

Tuesday 13 November 2018

Looking Further Under the Airbrushed Hoodie

You may have read on this blog a few weeks ago that Balenciaga America is being sued in the Southern District of New York for having allegedly copied the designs of a New York souvenir manufacturer.

Defendant, Balenciaga USA, had allegedly featured Plaintiff’s designs, a stylized New York City skyline, on a hoodie, a tote bag, pouches and skirts. These luxury models had been designed and produced in France by Balenciaga for its 2017 ‘Balenciaga NYC Tourist Collection,’ whereas Plaintiff’s goods are sold in souvenir shops and airports around New York. 

The case is following its course, and Balenciaga America moved last month to oppose Plaintiff’s motion for a preliminary injunction and an order of seizure. Plaintiff claims that Balenciaga America will be transferring the allegedly infringing merchandise out of the United States and has requested an injunction from the court.

The French fashion house detailed its arguments in a memorandum filed on October 18. It claims that it is holding the 36 products at stake in inventory in the U.S., with no intention to export them, and that the preliminary motion is thus unnecessary. It then goes on presenting its defense to the copyright infringement claim.

The legal standard for preliminary injunction

Section 502 of the Copyright Act gives courts the power to grant temporary and final injunctions in copyright infringement suits.

Before the eBay v. MercExchange Supreme Court patent case in 2006, plaintiffs did not have to show irreparable harm to be awarded injunctive relief, but only needed to establish the likelihood of success of the lawsuit. That changed after eBay v. MercExchange, as the Supreme Court held that a Plaintiff seeking a permanent injunction must show he has suffered an irreparable injury. The Supreme Court further explained in Winter v. Natural Resources Defense Council, Inc. that a plaintiff seeking a preliminary injunction must establish: (1) that he is likely to succeed on the merits; (2) that he is likely to suffer irreparable harm in the absence of preliminary relief; (3) that the balance of equities tip in his favors, and (4) that an injunction is in the public interest.

Plaintiff claims that transferring the products at stake outside of the country would make it more difficult to recover damages for illegal overseas sales. Defendant claims Plaintiff has not showed irreparable harm, and it was merely the importer of the goods in the U.S.  

Defendant quotes Music Sales Ltd. V. Charles Dumont & Son, a 2009 case from the District Court of New Jersey to posit that exporting goods to the U.S. is not infringement under the Copyright Act, unless a predicate act has occurred in the U.S. that is itself infringement under the Copyright Act. Defendant also cited a Second Circuit case, Update Art Inc. v. Modiin Publ’g Ltd., where the court noted that it is “well established that copyright laws generally do not have extraterritorial application.”

Plaintiff does not quote the next phrase in Update Art, which states the exception to the rule, ”when the type of infringement permits further reproduction abroad — such as the unauthorized manufacture of copyrighted material in the United States.” This does not appear, however, to be the case here, as the allegedly infringing designs have been originally designed and produced in France. Selling them in the U.S. does facilitate further reproduction abroad, especially since Defendant wisely pulled these products from the stores.

The copyright infringement defenses

Balenciaga America claims that Plaintiff’s original design is a mere “collage of some of the most well-known landmarks in the New York City skyline” and are not protected by copyright.

These “unprotectible elements” are arranged in a different way than the way they have been arranged by Plaintiff. Balenciaga admits that there may be some similarity in the “look and feel “of both works, but that is because they are both done “in a style that has long been associated with hot rods, graffiti art, and hip hop, a style that is decidedly not original to Plaintiff.” Indeed, hot rod cars are often airbrushed, and both designs mimic this technique. 

As the works at stake contain both protectable and non-protectable elements, Defendant argue that the court must not use the “ordinary observer test,”used by the Second Circuit courts to assess copyright infringement, which asks “whether the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal the same,” but the “discerning ordinary observer test.” This test dos not call for “a piecemeal comparison of each of the protectible elements with its putative imitation, but rather a careful assessment of the "total concept and feel" of the works at issue, after the non-protectible elements have been eliminated from consideration,Silberstein v. Fox Entertainment Group, Inc.

Defendant argues that both style of the designs are similar only as they “both pay homage to hot rod and graffiti-style airbrushed styles, which belongs to no one (and everyone).” This argument is a bit farfetched, as validating it would mean that no graffiti artists can claim copyright protection for his or her work as the style belongs to no one.

For Defendants, the New York City landmarks must necessarily be used to evoke the city’s skyline and are thus scènes à faire, as “[d]epictions of New York City landmarks and the words “New York City” are stock images and phrases standard in tourist souvenirs.”

Defendant claimed that it arranged these unprotectible elements in a different way than Plaintiff did in its own works, and that when these elements are filtered out the only copyrightable element left is the arrangement of the building, which is different in Plaintiff’s works and Defendant’s works.  

Plaintiff argued in its reply that Balenciaga “had offered no evidence of unoriginality,” quoting Yurman Design Inc. v. PAJ Inc., where the Second Circuit wrote that "[c]opyright law may protect a combination of elements that are unoriginal in themselves.”

Indeed, as explained by the Supreme Court in Feist, “[f]actual compilations… may possess the requisite originality [to be protected by copyright]. The compilation author typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original [to be protected by copyright].”

 Fair use

The first of the four fair use factors of Section 107 of the Copyright Act, the purpose and the character of the use, focuses on whether the use is transformative.

Balenciaga America claims that the designs are transformative, as they offer “as subversive, tongue-in-cheek commentary on fusty notions of propriety in fashion, and emphasizing the beauty in the ordinary.” It explains that the design were inspired by ordinary objects, comparing the process to Marcel Duchamp using an urinal to create Fountain and Andy Warhol painting cans of Campbell soup (he even declared tomato to be his favorite flavor, although this has been debunked).

Defendant argues that the second factor, whether the protected work is factual or expressive, also plays in its favor as Plaintiff’s work merely depicts New York’s trademark. The third factor should be in its favor as well as it only tool, if indeed it took anything, unprotectible elements. As for the fourth factor, the effect on the potential market, Defendant notes that “it is not unreasonable to think that Plaintiff’s sales have increased from the publicity around this case.”

I must admit that Plaintiff’s products must be on every fashionable copyright attorney or scholar’s wish list now. See you at JFK’s gift shop!

Image of the Empire State Building, U.S. Government Work.

Poster from the Hot Rod Girl movie (1956).

Monday 5 November 2018


The UK's Intellectual Property Office has said it has plans to simplify the way websites which contain copyright infringing material are blocked - currently the system is based on injunctive relief that must be obtained from a court - giving orders are often easy to circumvent. In a statement the IPO confirmed that the UK government was now considering "the evidence for and potential impact of administrative site blocking - as opposed to requiring a high court injunction in every case - as well as identifying the mechanisms through which administrative site blocking could be introduced". The IPO's announcement also covered their position on devices that came pre-loaded with apps that can be used to easily access infringing streaming and other content - something of real concern to the entertainment and sports sectors. The government's IP Minister, Sam Gyimah, said that recent criminal prosecutions of individuals concerned with the distribution of devices that enable infringement showed the  current law to be working, but he said that education of the public and the involvement of Trading Standards officers would be followed up, as would new new anti-piracy measures such as administrative site blocking.

As of the end of October, six of the eleven “Trans Pacific Partnership" member states had ratified the Trans Pacific Partnership 11 Agreement.  The agreement will go into effect in two months’ time on December 30 this year. The amendment of Japan's copyright law will be effective on the same day, and the statutory term will be extended to life + 70 years from January 2019, including for those creators whose copyrights would have expired on December 31, 2018. The Diet's Upper House approved the move to match US (and EU) law, and the provision has been retained even though the United States government has withdrawn from the TPP agreement (at least for now).  What is interesting is how the "war extension" in copyright law might (or might not) be accommodated. 

Lucien Greaves, spokesmen and co-founder of The Satanic Temple ("TST"), has tweeted that the Temple is taking legal action against Netflix in connection with the "Chilling Adventures of Sabrina". TST has decided to take this route because of what Greaves claims is copyright infringement. He claims the statue of Baphomet in the hall of the school depicted in the show is a copy of TST’s deity.

From Hell to Heaven? Led Zeppelin have asked the Ninth Circuit appeals court to reconsider its recent ruling in the "Stairway To Heaven" copyright lawsuit 'en banc' to determine the law in the case that involves allegations that the 1971 classic is rip-off of the 1968 instrumental song "Taurus" recorded by Spirit and written by Randy "California" Wolfe's whose estate brought the claim. The group's representatives argue that by overturning the original judgement, the appeals court could "cause jurors to find infringement just because the same unprotected elements are present, upsetting the 'delicate balance'" between copyright protection and the freedom of music creators to employ common techniques and musical elements when composing music" and "if uncorrected," the Ninth Circuit's recent conclusion will "allow a jury to find infringement based on very different uses of public domain material" which, it then argues, "will cause widespread confusion in copyright cases in this circuit."  You can compare the two recordings here and a very interesting analysis by TJR here.  'Top 10 Sound Alike Songs' here

Seven sports photographers have been given another chance to pursue copyright allegations against the National Football League (NFL) in the U.S. The World Intellectual Property Review reports that the NFL had asked that the US Court of Appeals for the Second Circuit hold an en banc rehearing of the matter, which was decided against the NFL last month - this has been denied. The 2013 complain relates to claims by the photographers against 
against the NFL, all 32 NFL teams, the Associated Press (AP), and image companies Replay Photos and Getty Images that the defendants exceeded the terms of original licence agreements that granted limited use of certain images. The case was filed in the US District Court for the Southern District of New York (image: C Watts). 

And finally, Lyor Cohen is the latest YouTube executive to take aim at the planned reforms to EU Copyright Law, and in particular Article 13. An ex-record label man himself, Cohen is now YouTube’s global head of music and he posted a warning about the new Copyright Directive saying “Let me be clear: we understand and support the intent of Article 13. We need effective ways for copyright holders to protect their content” adding “But we believe that the current proposal will create severe unintended consequences for the whole industry. We still have a couple of weeks to work together towards a better final version of the law. The music industry should really pay attention to these unintended consequences - the system that largely contributes to their success is at risk of major change in the European Union”, opining that "Remixes and covers, tutorials, fan tributes, parodies" were all at risk, and that "these are such powerful promotional tools for the industry". More on the Verge here.