Mankowitz’s famous portrait of Jimi Hendrix is original and deserves copyright protection, says Paris Court of Appeal.

The original portrait by Mankowitz

Readers will remember that a couple of years ago this blog wrote that the Paris Tribunal de Grand Instance (TGI) had excluded that the well-known portrait of Jimi Hendrix realised by Gered Mankowitz would be eligible for copyright protection.

1709 Blog friend and University of East Anglia academic Sabine Jacques has an update to report, this being the rather different outcome of the appeal decision in this case earlier this week.

Here's what Sabine writes:

“After the surprising judgment of the TGI Paris, the Paris Court of Appeal reversed the first instance decision with a ruling delivered earlier this week.

In this case, an electronic cigarettes and accessories sales company had reproduced and altered the famous portrait of music legend Jimi Hendrix taken by Gered Mankowitz for commercial advertising purposes. The defendant depicted Jimi Hendrix smoking an electronic cigarette instead of a real cigarette to promote its products. Having been made aware of this unauthorised use, Gered Mankowitz and his assignees decided to sue the electronic cigarettes sales company for copyright infringement.

Let’s rewind back to May 2015…

The decision of the TGI created somewhat a seismic shock amongst practitioners and photographers as without expressly acknowledging it, the High Court seemed to have interpreted the originality criterion as being based upon artistic merits, thus going against Recital 16 Directive 2006/116/EC on the term of protection of copyright. Indeed, as the black & white portrait featured the artist front-facing, with his waist forward, exhaling smoke while bearing a half-smile and having his eyes half-closed, the TGI was not convinced that the resulting work stemmed from the choices made by the photographer instead of reflecting the artist’s own personality.

The TGI relied on both the Infopaq (Case C-5/08) and Painer (Case C-145/10) decisions. As a reminder, a work will be deemed original if it represents the author’s own intellectual creation (Infopaq at [35]; Painer at [88]). In relation to photographs, originality can be derived from the numerous choices made by the author such as the subject, subject’s posture, background, framing, lighting, time of the shooting, camera settings, development techniques, device used, editing techniques, etc which can all reveal the author’s own personality (Painer at [91]). Here, the TGI held that the description of the author’s contribution provided by the photographer was commonplace and could not be attributed to the photographer without doubt. Therefore, based on the evidence submitted, the TGI held that it could not appreciate originality, nor did it provide the opportunity for the defendant to dispute this point.

Fast forward to June 2017…

Reversing the TGI decision, the Paris Court of Appeal decided that the photograph was original and that, by using the altered copyright-protected work to commercially promote their products online and in two brick-and-mortar shops, the electronic cigarettes sales company had infringed copyright.

The Court of Appeal confirmed that the person claiming to have been copyright protection bears the burden of proof.  In other words, the photographer would need to demonstrate where the originality lies in the portrait. Mr Mankowitz therefore explained that he had organised the shooting in 1967 and directed the rock star in terms of position and angle. The use of a specific camera and lens was deliberate to create a wide-angle effect without distortion. Moreover, the lightning, background, framing and angle of capture all resulted from deliberate choices made by the photographer, embodying the expression of his own personality.

Additionally (and perhaps surprising for readers outside France), the Court of Appeal paid attention to the fact that the photographer was internationally famous. As Mankowitz’s photographs are equally well known, Jimi Hendrix’s portrait was deemed original.

Finally, in relation to the infringing acts, the Court of Appeal held that the unauthorised reproduction and alteration of the protected work for promotion purposes fell within the exclusive rights of the author (L. 122-4 French Intellectual Property Code).

Remarks

While the outcome reached by the Court of Appeal was expected, the litigation demonstrates that the originality criterion is still developing in copyright legislation. By requiring, the right kind of evidence to be submitted, French courts seem to demand that photographers deconstruct an image in a way which can be at odds with creative processes. However, the take home message for practitioners is perhaps to rely only on the deliberate choices made by a photographer for the purposes of satisfying the originality requirement in front of courts.  

Besides, this case is interesting insofar as the Court of Appeal took into consideration the reputation of the photographer to determine originality. It is not the first time that French courts consider the reputation of the original author relevant for the application of copyright law. While it is undeniable that the portrait of Jimi Hendrix is original, one might wonder whether French courts believe that well-known works are more deserving of copyright protection than others. As this blogger is currently turning her thesis on the parody exception into a monograph, some French decisions directly come into mind. For example, in Société Moulinsart, Mm Fanny R. c/ Eric J. (decision in French here), the TGI Paris refused the application of the parody exception where the defendant depicted the famous comic character Tintin in scenarios being the antithesis of the world created by its author, Hergé. Although attempting to refrain from assessing the work’s artistic merits, French courts seem less lenient where a parody comments a work considered to be part of the cultural heritage, even if the rules of the genre appeared to be respected.

Finally, the use of the Jimi Hendrix’s portrait was for commercial advertising purposes. Given the context and the captions joint to the reproduction of the work, consumers could have been led to believe that the use had been authorised or the products endorsed by the right-holders. Therefore, the Court of Appeal was correct in deciding that the use of works for commercial advertising purposes, even if these are altered, should require permission. And this, even if the use had been for a parodic purpose…”

Forgive my French: copyright ‘a la carte’ for photographic works

Mathilde Pavis
(is her picture sufficiently
original though?)

What is the approach to originality in French courts? 1709 Blog friend and PhD researcher, Mathilde Pavis (University of Exeter), explains.

Here's what Mathilde writes:

With the EU debating on the freedom of panorama [here, here and here] and the Paris Tribunal de Grande Instance denying copyright protection to Hendrix’s portrait [here and here], photographic works prove a hot topic of discussion in 2015. The latter decision in particular gives us an opportunity to assess the impact of the Infopaq/Painer jurisprudence on national disputes.  

In Painer, the Court of Justice of the European Union (CJEU) applied Infopaq interpretation of the originality requirement, i.e. that a work must be the author’s own intellectual creation and bear his/her own intellectual input, to photographic works. 

Five years later, Gered Mankowitz brought a claim before the Paris Court of First Instance which was very similar to the one that Ms Painer had brought in Austria, possibly hoping to receive the same treatment as she did. Against all odds, his motion was however denied. According to the French bench, his portrait of Jimi Hendrix was not sufficiently original. In particular, the photographer failed to demonstrate that he had put the necessary level of personal touch in portraying the famous musician. 

Natascha Kampusch
by Eva-Marie Painer

This interpretation of the law leads us to the paradoxical situation whereby a traditional head to shoulder portrait with a blue sky background is considered more original (for copyright purposes) than the less conventional photograph of a musician enjoying a cigarette in front of the camera.

This prompts the question whether the French court took note of the Painer decision following the Infopaq jurisprudence, or not.  Have French national judges realised that CJEU jurisprudence was not a mere confirmation of French copyright law but an attempt to harmonise the various national tests actoss the Union? Yes … and no. 

Reading the decision, the Paris bench did directly refer to Painer. Yet, comparing the outcomes of the cases to the portraits, we cannot help but be surprised by their divergence.  

So what happened?  Very simply, it seems as though France has not changed its position towards the originality requirement following the Painer case. The courts of the hexagon still enforce a slightly higher threshold of originality in general, and particularly so in the context of photographic works. 

Jimi Hendrix by Gered Mankowitz

They may now borrow the wording imposed by the CJEU but the essence of the test they apply is invariably of a higher standard than that of their EU superior. 

The Hendrix case is consistent with a series of decisions which distinguished between engaged creative photographers (i.e. worthy of copyright protection) and passive ones who are described as mere ‘button clickers’ (i.e. undeserving of copyright protection). A quick review of recent decisions on this issue may be useful to place this 2015 Hendrix decision in context and highlight the logic behind its reasoning.  

Paparazzi

Not an original photograph,
according to Paris Court of Appeal

In 2007, the Paris Court of Appeal (Paris, 4ème ch, 5 décembre 2007, n° 06/15937, SIPA Press : D. 2008 jurispr. P. 461 note Bruguière ; RTDCom. 2008 p. 300 obs. Pollaud-Dullian) rejected Sun’s copyright claim over pictures of William and Kate’s ‘love gateway’ in the French Alps. The court refused to see in the work of a paparazzo anything eligible for copyright protection. The fact that a paparazzo hides and waits for celebrities to show up to then take pictures of them does not make those photographs the expression of his/her own intellectual creation, or a display of his/her personality. Because this type of photographers holds a passive role in the composition of their pictures  which remain subject to chance and rather banal pictures of socialites’ everyday life, the threshold of originality is not met.

Sport photographs

The same 'passivity' was argued against the copyright claim of a photographer who sought to obtain protection over football pictures. In 2012, the Paris Court of Appeal found no originality in neither action nor team shots (Paris, 1ere ch., pole5, 14 novembre 2012, SARL Acces Photo c/ Tours FC, n° 11/03286: inédit). Again, in the eyes of the court there can be no originality in standing in a stadium and taking hundreds of pictures of game actions which are by no means controlled by the photographer.

This is déjà vu and therefore 

not protectable 

according to Paris Court of Appeal

However, controlling the action being photographed is not the only hurdle photographers must pass to obtain legal protection for their work. In the same decision, the court also rejected the photographer’s claim over team pictures for the making of which he had selected the background (the football pitch) and arranged the position of the players. In dismissing his claim, the court referred to the fact that such shots are highly banal and it requires no creativity to organise players by height in front of a background composed of grass and blue sky. 

The Court also rejected post-shooting edits as elements of intellectual input because such edits are now facilitated by computer programs. 

The message is clear: Photoshop-ing is not original and does not add any originality to a work.

One cannot help but wonder whether Natasha Kampusch’s portrait and the Tours Football Club team shots had not required the exact same amount of skills and intellectual input ... Yet again, similar facts received diametrically opposed treatment in French courts.

   

Calling the shots

Controlling both the set of the photograph and the position/expression of the subject portrayed seem thus crucial to obtain copyright protection over photographic works in France. 

In a 2008 decision, the Paris Court of Appeal drew a very fine line between protectable and non-protectable photographs taken during the same shooting session (Paris, 20 février 2008, n° 06/22330, SARL Les archives to 7eme Art c/ Stéphane Mirkine : Propr, Intell. 2008, p. 319 note Lucas (photographie de plateau)). 

Brigitte Bardot on the set of
... And God Created Woman

In that case, Leo M had been invited to take pictures on the set of the film ... And God Created Woman during its production. A series of pictures were taken but not all of them were deemed to bear the imprint of the author’s personality (i.e. intellectual input) despite the fact that all photographs shared the same lighting, angles, set and model (Brigitte Bardot). 

Between photographs deemed original and those which did not, only one element varied. In some pictures, the photographer let Bardot pose according to the role she was playing in the film whilst in others he directed her. Only the pictures where the actress had been directed by the photographer could be eligible for copyright protection. All the other shots were otherwise borrowing the atmosphere, mood and general feel of the film created by its director so much so that the photographer had no real input in the pictures.

Objects

When the matter photographed is inert, the threshold of originality appears slightly lower and more in line with the jurisprudence of other jurisdictions such as the United Kingdom. Choosing angles and lighting to photograph paintings (CA Dijon, 7 mai 1996 ; D. 1998, somm. 189, obs. Colombet), antique objects (Antiquesportfolio.com plc v Rodney Fitch & Co [2001] E.C.D.R. 5; [2001] E.B.L.R. 20; [2001] F.S.R. 23; [2000] Masons C.L.R. 51; (2000) 23(11) I.P.D. 23092; (2000) 97(30) L.S.G. 41; Times, July 21, 2000) or planes (Paris, 17 décembre 2008, n° 07/15882 (infringes the copyright vested in the photographs of planes the newspaper which uses it without the consent of the photographer)) is enough to satisfy the originality requirement.

Conclusion

The Hendrix decision is in line with a line of cases which has set a slightly higher threshold of originality for photographic works. 

This may be a vestige of the Law of Mach 1957 which  included those works as protectable ‘works of the mind’ subject to the condition that they evidenced an artistic or documentary nature. 

This additional condition of ‘artistic or documentary nature’ was dropped by the 1985 reform under the pressure of harmonisation driven by the EU which culminated in the 1993 Term Directive. 

Yet it seems as though the French judicature kept alive remnants of the 1957 statute despite the CJEU Infopaq and Painer rulings which de facto furthered the Directive’s harmonising agenda. 

Disparity between jurisdictions and inconsistency between cases are unlikely to smooth out, for at least two reasons. First, the assessment of originality in each case is highly fact-sensitive making outcomes of disputes rather volatile. Second, the finding of authorship is a point of fact which considerably limits its opportunity of appeal and augments judges’ discretion in confirming or dismissing copyright claims. All those factors put together contributes to drawing the profile of a French copyright as a legal framework a la carte designed by judges on an ad hoc basis and open to the idea of tailoring standards as the law and artistic practices evolve. 

Paris Court Denies Copyright Protection to Jimi Hendrix Photograph

Gered Mankowitz is a British photographer who photographed many famous musicians such as Mick Jagger and Annie Lennox. He took several photographs of Jimi Hendrix in 1967. One of these photographs represents the musician, wearing a military jacket, holding a cigarette and puffing a cloud of smoke while looking at the photographer. An original print recently sold at auction for £2,750.

This photograph was used without authorization in 2013 for an advertising campaign by Egotrade, a French electronic cigarette company. The ad showed Jimi Hendrix holding an electronic cigarette and the “Egotabaco” brand was printed on the ad. 

Gered Mankowitz and Bowstir Ltd, the company to which Mr. Mankowitz has assigned his patrimonial rights to the photography, filed suit in France. Bowstir claimed copyright infringement and Mr. Mankowitz claimed droit moral infringement. On May 21, the Paris Tribunal de Grande Instance (TGI), a court of first instance, ruled that the Jimi Hendrix photograph could not be protected by French intellectual property law, as it was not original.

Ceci n'est pas une oeuvre originale pour le TGI

French intellectual property law does not provide a definition of “originality.” Article L. 111-1 of the French Intellectual Property Code provides that “[t]he author of a work of the mind shall enjoy in that work, by the mere fact of its creation, an exclusive intangible property right enforceable against all. This right shall include attributes of intellectual and moral attributes as well as patrimonial attributes.” Article L. 112-1 specifies that the law “protects the rights of authors in all works of the mind, whatever their kind, form of expression, merit or purpose.”

The TGI cited the European Court of Justice (ECJ) Eva Maria Painer. v. Standard Verlags case, where the Court had discussed the originality of a picture taken by a school photographer. For the ECJ, which the TGI cited verbatim,

“[a]s stated in recital 17 in the preamble to Directive 93/98, an intellectual creation is an author’s own if it reflects the author’s personality. That is the case if the author was able to express his creative abilities in the production of the work by making free and creative choices. … As regards a portrait photograph, the photographer can make free and creative choices in several ways and at various points in its production. In the preparation phase, the photographer can choose the background, the subject’s pose and the lightening. When taking a portrait phoograph, he can choose the framing, the angle of view and the atmosphere created. Finally, when selecting the snapshot, the photographer may choose from a variety of developing techniques the ones he wishes to adopt or, where appropriate, use computer software. By making those various choices, the author of a portrait photograph can stamp the work created with his ‘personal touch’” (ECJ 88-92).

Indeed, Recital 17 of Directive 93/98/EEC states that a photograph is original “if it is the author’s own intellectual creation reflecting his personality, no other criteria such as merit or purpose being taken into account.” Article 6 of the same Directive states that photographs are original if “they are the author’s own intellectual creation.” This directive was repealed by Directive 2006/116/EC, of which Recital 16 reprises the same words than Recital 17.

The TGI then examined the Jimi Hendrix photograph. Gered Mankowitz had explained to the court that

“this photograph of Jimi Hendrix, as extraordinary as it is rare, succeeds in capturing a fleeting moment of time, the striking contrast between the lightness of the artist’s smile and the curl of smoke and the darkness and geometric rigor of the rest of the image, created particularly by the lines and angles of the torso and arms. The capture of this unique moment and its enhancement by light, contrasts and the narrow framing of the photograph on the torso and head of Jimi Hendrix reveal the ambivalence and contradictions of this music legend and make the photograph a fascinating work of great beauty which bears the stamp and talent of its author.”

This argument did not convince the TGI as Mr. Mankowitz,

“as doing so, satisfied himself by highlighting the aesthetic characteristics of the photography which are distinct from its originality which is indifferent to the merit of the work, and does not explain who the author of the choices made regarding the pose of the subject, his costume and his general attitude. Also, nothing [in this argument] allows the judge and the defendants to understand if these elements, which are essential criteria in assessing the original features claimed, that is, the framing, the use of black and white, the light decor meant to highlight the subject, and the lighting being themselves typical  fora portrait photography showing the subject facing, with his waist forward, are the fruit of the reflection of the author of the photograph or the subject, and if the work bears the imprint of the personality of Mr. Mankowitz or of Jimi Hendrix.”

Since the judges are therefore not able to appreciate whether this photograph is indeed original, the TGI ruled hat the photography lacked the originality necessary for its protection by French law, and that “the failure of the description of the characteristic elements of the alleged originality also constitutes a violation of the principle of defense rights.” The TGI thus concluded that Mr. Mankowitz had no intellectual property rights over the photograph.

By doing so, the TGI did not deny that this particular photography of Jimi Hendrix is not original. Rather, the court was not convinced that originality of the work was the result of choices made by Mr. Mankowitz. This case is less about what is an original work than how to prove that a work is indeed original.

As such, this ruling should give pause to French IP practitioners defending the rights of a photographer, as they must now prove why the author chose the different elements of a photograph and how these choices reflect his personality in such a way that the work is original. However, the case will be appealed, and so the debate on what is an original work, and how to prove, it is still ongoing in France.