Alex in La La land

This year's Sir Hugh Laddie Annual lecture at UCL's Institute of Brand and Innovation Law (IBIL) was given by the distinguished American judge Alex Kozinski, lately Chief Judge of the US Ninth Circuit. In an introduction given by Daniel Alexander QC (standing in for Sir Robin Jacob who had been delayed), we heard that the Ninth Circuit covers an enormous area stretching from Alaska to Arizona and to Hawaii and Guam with a population of 60 million people within its jurisdiction.

But as Judge Kozinski himself pointed out in his opening remarks, perhaps more significantly the Ninth Circuit includes those two power houses of American creativity and innovation, Hollywood and Silicon Valley. Not for nothing is it also known as the Hollywood Circuit. This means that a lot of important intellectual property cases have been decided by the Ninth Circuit, along with quite a few less worthy ones. The title of the lecture was IP and Advocacy, but it might have been subtitled "Keep it simple, stupid". In an amusing all singing (literally) lecture Judge Kozinski encouraged IP advocates to keep their pleadings and submissions simple, and preferably illustrated by means of helpful analogies which the bench could relate to. I suspect that Sir Richard Arnold who was sitting in the front row might have permitted himself a wry smile at this suggestion. Judge Kozinski then followed his own preaching with an example of what he meant. He cited the case of Galoob v Nintendo, in which Nintendo had alleged that Galoob's add-on software named Game Genie which alowed players to vary the way in which Nintendo's games could be played, infringed Nintendo's copyright. He quoted from the introductory paragraphs of Galoob's submission to the Appeal Court, which was couched in terms of a story about a young teenage girl who perfectly legally read the last page of her book before deciding to start from the beginning, once she was sure it had a happy ending; she subsequently watched a video, and fast-forwarded to the part where she had finished watching previously, and after this she plugged in the Nintendo game cassette along with the Game Genie software and was able to alter certain characteristics of the game, and also jump to a level she had not previously reached. None of these actions resulted in any alteration of Nintendo's code or made copies of it, just as reading the last page of the book or fast-forwarding the video had not infringed the respective copyright in those works. Judge Kozinski said that by means of these few simple sentences, Galoob's counsel had illustrated the futility of Nintendo's case, even though the submission then ran on for another 50 pages or so.

Further amusing examples were quoted, in which we were treated to such musical delights as Johnny Mathis singing When Sunny gets Blue (Fisher v Dees), and Aqua singing I'm a Barbie Girl. The latter was in the context of the case Mattel Inc v MCA Records in which Mattel who make the Barbie doll, sued MCA Records over the Aqua song, instead of realising this was excellent free publicity for their product. Or in the words of Judge Kozinski, they should have just sent over a bottle of Dom Pérignon to MCA. This was the famous case in which the Ninth Circuit court proffered the following advice within their opinion "the parties are advised to chill". Clearly Mattel's lawyers thought otherwise and petitioned the US Supreme Court although SCOTUS declined to hear the case. Judge Kozinski made the point that too often in IP cases the author of the work is too personally involved and affronted by the alleged infringement and so overlooks the bigger picture. He went on to develop the point by saying that seldom is it the case that the dire consequences which plaintiffs argue actually come to pass. From the time of Gutenberg, vested interests have opposed virtually all technological advances, but their fears have proved groundless. He didn't mention the RIAA and the major record labels but few in the audience can have been unaware of the unstated criticism.

Yet more examples were used to illustrate the point: Vestron v HBO on the futility of injunctions in some cases; Sony v Universal City Studios (the Betamax case) on the contention that disasters predicted by plaintiffs seldom turn out as bad as is first claimed - in that case the home theatre market proved to be a goldmine for the creative industry, not its nemesis.

And as I predicted elsewhere, Judge Kozinski then came to the Garcia v Google case. This has been extensively reported here on 1709 and on the IPKat blog and so I won't summarise the case here. However Judge Kozinski saw this as yet another instance where the dire things claimed in submissions never actually happened. This sounded a little like the judge rowing back from his own first appeal court decision to injunct YouTube over the Innocence of Muslims trailer. This was touched on in a question at the end, when the Judge was asked if there had ever been a decision he later changed his mind over. The response was that a court's opinion stands still and reflects the facts at the time, but person who makes the decision moves on and and may develop his views over time.

The lecturer then went on to discuss a couple of cases involving the Right of Publicity, of which the California Celebrities Rights Act is a more comprehensive example. Here the quoted cases were White v Samsung, Wendt v Host International and Douglas v Mattel. He then mentioned the case of New Kids on the Block v News America Publishing Inc in which the defendant ran a poll to find out which member of the group New Kids on the Block was the most popular. This led to News America being sued over issues of trade mark and false endorsement, to which the Ninth Circuit, in an opinion written by Judge Kozinski, developed the doctrine of 'nominative fair use'.

The lecture drew to a close with a brief analysis of when the law is not necessarily the answer. In particular Judge Kozinski highlighted the Streisand effect and also the effectiveness of a well-organised public backlash against an over-zealous litigant, who while he may have the law on his side, can do great damage to his brand by appearing to bully the little guy. In this context he mentioned the trade mark dispute between Vermonster beer and Monster energy drink, and the European case of Louis Vuitton v Plesner (reported here by the IPKat blog).

As perhaps befits a judge from the Hollywood circuit it was a most entertaining evening and a candid look at one face of the American IP legal machine at work.

Seeing stars! Some reflections on Audrey Hepburn v Caleffi

Here's a guest post from Valentina Torelli on a legal decision from Italy that has attracted a good deal of attention beyond that lovely country's borders. This is what she says:

A week ago, the IPKat reported a fascinating judgment of the Court of Milan concerning the infringement of Audrey Hepburn's publicity right by the Italian company Caleffi. As explained, the Court of Milan admitted Audrey Hepburn's heirs' claim that Caleffi pay compensatory damages and restore moral prejudice for having deployed Audrey Hepburn's image in Breakfast at Tiffany's on postcards and brochures, without authorisation, within the contest called “il diamante dei sogni” (the diamond of dreams). This advertising material featured on Caleffi's website and as part of an advertising insert of a well-known Italian magazine. 

In particular, Audrey Hepburn's heirs argued that her right of publicity was infringed under Article 96 of the Italian Copyright Law and Article 10 of the Italian Civil Code. The first provision establishes that a person's portrait cannot be displayed, reproduced or put in the market without the person's consent – or the heir's consent – unless the requirements of Article 97 are met: among others, the celebrity status of the person justifies the lack of consent when the image's reproduction refers to facts, events, ceremonies of public interest and when the reproduction of the image took place in public circumstances. 

In any event, the portrayal's display and commercialisation are forbidden when they hinder the reputation, the honour and the dignity of the person concerned. Likewise, Article 10 of the Italian Civil Code grants physical persons the right to ask for the cessation of the unlawful display or publication of their portrayal and for compensation in the form of damages, when such uses occurred outside the cases provided by the law or when the person's dignity and reputation are impaired. 

The Court of Milan first held that Article 96 and 97 of the Copyright Law could not resolve the dispute in that the alleged breach did not encompass Audrey Hepburn's real image. The Court then applied Article 10 of the Italian Civil Code, as the present case entailed the rearrangement of the famous window-shopping scene in Breakfast at Tiffany's where Holly (alias Audrey Hepburn) was looking at Tiffany's showcase. 

The photographer of the advertisement depicted, partially from behind, a model in a black dress, with lookalike Holly hairstyle, with black gloves and sparkling jewellery while posing in front of a shop showcase. All these circumstances were enough for the Court to find that there had been an undue association between the photography's narrative subject matter and Audrey Hepburn's image, although that image only evoked her ‘Holly’ character. In allowing the claim, the Court of Milan applied old settled case law dating back to 1984, 1992 and 1997, which had extended the physical person's right to portrayal to elements not directly connected to that person such as clothing, decoration, make-up. The Court however considered that the Hepburn/Holly persona was a public person in the audience's perception, this being an evocative reference which required a request for consent to use the person's image.

From a legal and photographic point of view, I am not completely sure that the Court of Milan got it right in this case in that, when I first read the judgment, I immediately wondered whether the judges had confused Audrey Hepburn's and Holly's images, despite how much the public may hold the actress performance in Breakfast at Tiffany's in high esteem. 

As regards the legal perspective, the Holly character originated from Truman Capote's creativity and it was later envisaged and adapted in an audiovisual work under Blake Edward's direction. Within the cinematographic conception of Holly a considerable degree of recognition should be accorded to Mr Hubert de Givenchy, the fashion designer who shaped Audrey Hepburn's image in and out of movie sets. Overall, Holly's features derive from the commitment of all these great professionals in the realisation of the Breakfast at Tiffany's masterpiece, produced by Jurow-Shepherd. 

That said, it would have been different if Audrey Hepburn's image had been used in Caleffi's advertisement, as happened in Ryanair's campaign in which one of Charles Prince of Wales' photographs had been used without authorisation to sponsor the suitability of its air fares. In its decision of 3 March 2004 the Advertising Standard Authority censured the advertisement in that it infringed the Prince's right to privacy because the Royal Family's permission to use the photograph had not been requested according to Article 13 of the Code of Advertising Practice. 

The Audrey Hepburn case was also different from that involving the legendary Italian songwriter Lucio Dalla, to which the Court of Milan referred. In Dalla the advertiser had used elements which delineated Dalla (left) by reference to symbols that typified him, namely a knitted hat skullcap and a pair of metal-framed spectacles. However, those features belonged to Dalla as a physical person who had also a public recognition and fame. 

In the Audrey Hepburn dispute, should there be any infringement of a right to the portrayal of Holly? Who is the holder of Holly character's image? Is there any right of portrayal available for fictional characters? Eventually, these questions could be answered by reference to the Italian Copyright Law, in particular to Article 46ff concerning copyright and related rights in cinematographic works. 

In relation to photography, there are a couple of consideration to highlight. First, it could be argued that the photographer's work in Caleffi's advertisement was an original photography and a piece of art on its own, since its suggestive subject matter did not conclusively deprive the image of copyright protection, the author's own creation could be found in the form of a minimum of reinterpretation of the window-shopping scene.
I have found the case-law on which the Court of Milan relied to assess the misuse of Audrey Hepburn's image quite outdated. All in all, I think that the way the people's image should be treated and protected should reflect the conditions of society today and that images should be treated in accordance with the role that society assigns to them. Since the judgments referred to in the present case were given, more than 20 years have passed and our society has evolved into one that recognises the wisdom of communication inspired and managed by images. 

We are driven to make our choices and to think about everything in terms of images and photographs, without stopping to think about what a photograph actually represents. Photography, advertising photography included, is more than a true and simple reproduction of someone or something: they are now often the means by which a story is told and sometimes they are also works of art on their own, like Elliott Erwitt's photography for example. 

Hubert de Givenchy hereLucio Dalla – Caruso hereRoland Barthe – Camera Lucida here