Paris Court of Appeal confirms that Koons’s 'Naked' sculpture infringes copyright in 'Enfants' photograph, rejecting freedom of the arts and parody defences

Paris Court of Appeal confirms that Koons’s 'Naked' sculpture infringes copyright in 'Enfants' photograph, rejecting freedom of the arts and parody defences

By Eleonora Rosati writing for the IPKat and first published on the IPKat here 

Last week, the Paris Court Appeal ruled (decision No 152/2019) in favour of the estate of late French photographer Jean-François Bauret in proceedings brought against, inter alia, US artist Jeff Koons (an artist who, as readers will know, has been sued a few times for copyright infringement: see, eg, here, here, and here). 

The action related to the unauthorized reproduction of a photograph (Bauret’s ‘Enfants’, shown below on the left hand side) in a sculpture (Koons's ‘Naked’, below on the right hand side). 

'Enfants' (L) and 'Naked' (R)

The defendants had advanced a number of arguments, including that: 

- ‘Enfants’ is not original; 

- even if it was, ‘Naked’, would not incorporate any original elements thereof; 

- even if prima facie infringement was established, freedom of the arts and parody would prevail over copyright.

The court rejected them all. Let’s see what happened in greater detail. 

Background 

In 1970, Bauret realized a black-and-white photograph titled ‘Enfants’. No print of the photograph was sold, but in 1975 the photographer authorized the making of postcards carrying the image of the work. 

In 2014, the Bauret estate found out that Jeff Koons had realized a porcelain sculpture, ‘Naked’, which was similar to the ‘Enfants’ photograph. Koons’s work had been made in 1988 in 4 copies as part of the Banality series, a readymade collection of artworks that contains a mix of pop art and kitsch. 

The sculpture was never exhibited in France, though in 2015 it should have been on display in an exhibition at the Centre Pompidou in Paris. 

The Bauret estate sent a warning letter to both Koons and the museum. For reasons linked to damage during transportation, ‘Naked’ was not included in the exhibition in the end. The museum subsequently also removed the image of the sculpture from the exhibition catalogue. 

A lawsuit followed and, in 2017, the TGI Paris partly ruled in favour of the photographer’s estate. Both parties appealed. 

Aside from issues concerning the personal liability of Koons, the judgment is particularly interesting as far as substantive issues of copyright subsistence and infringement are concerned. 

Originality of ‘Enfants’

As regards the protectability of the photograph, the defendants had submitted that Bauret had failed to express his own personal touch. The choices made were not sufficient for the work to be considered his own intellectual creation, in that the photograph represented a ‘spontaneous pose’ assumed by the two children and the estate had failed to demonstrated where the originality of such creation would lie. 

The court disagreed, and held that Bauret’s work revealed a new concept of nude, which is raw and devoid of any sexual connotation, and such as to disclose the personality of the author. Among other things, the particular use of the light was meant to confer some ‘sculptural’ character to the photograph and the overall composition (including the pose and expression of the children) served to add a ‘geometric’ dimension to the work. According to the court, the latter in particular served to dispel any idea that the pose of the children would be spontaneous: rather, they had been directed by the photographer to assume a certain pose and expression. 

In light of all this, like at first instance, the photograph was found to be original and protectable. 

Prima facie infringement

The claimants pointed to the several similarities between the photograph and challenged the relevance of the argument, made by the defendants, that the different character (real vs fictional) and message (children’s innocence vs Adam & Eve) conveyed by, respectively, the photograph and the sculpture would exclude the recognizability of the former in the latter (it should be noted, however, that Koons never denied that he had had access to the photograph). 

The defendants submitted that the sculpture had not reproduced anything that would confer originality to the photograph, and highlighted the differences between these two, including the colour, dimensions (a 2D photo vs a 3D sculpture) and size ('Naked''s height is 1m), as well as other differences (hair colour, navel, children’s gaze, position of the hands, background, elements in the composition). 

The court disagreed, and found that the sculpture had actually incorporated the “essential features” of the photograph, which constituted its original character. 

Defences 

Copyright and freedom of expression 

The court also considered an important point: to what extent can freedom of expression – including freedom of artistic expression – restrict or even trump copyright protection? 

To answer this, the court followed a similar approach to the one indicated (correctly) by the Court of Justice of the European Union (CJEU) in its recent Grand Chamber rulings in Funke Medien, Spiegel Online, and Pelham [Katposts here, here,  and here] notably that only available copyright exceptions and limitations can be relied upon in an infringement action, and that it is not possible to invoke directly fundamental rights and freedoms or a ‘fair use’ of a work to trump the application of copyright's exclusive rights. 

In this sense, like the CJEU, the Paris court confirmed that the balance between different rights and freedoms is internal to the copyright system, and has been undertaken by legislature when envisaging available copyright exceptions and limitations. 

In all this, the court also considered that the unlicensed use of the photograph by Koons was not “necessary” for the exercise of his own freedom of expression. 

Parody 

The defendant had also raised an argument that the use at issue could qualify as parody. The court referred to the 2014 CJEU Deckmyn decision [Katposts here] and the requirements that, for a work to be considered a parody, first, it must evoke an existing work while being noticeably different from it and, second, it must constitute an expression of humour or mockery. 

The court considered that neither requirement would be fulfilled in the case at issue. 

'Chats', by Merpel

Comment 

The decision appears correct from a substantial standpoint and is also compliant with case law of the CJEU. The court correctly applied the Painer test (though it did not expressly refer to that decision) for determining originality of a photograph, by considering the ‘free and creative choices’ that the photographer had made in the pre-shooting phase, when taking the photograph, and in the post-production phase.

It also appropriately applied (again, without mentioning them expressly), the CJEU holdings in Funke Medien, Spiegel Online, and Pelham. 

In all this, the most interesting aspect of the decision probably relates to the application of the CJEU Deckmyn decision. As mentioned, one of the characteristics of a parody is that it must constitute an expression of humour or mockery. The CJEU did not clarify whether this requirement is fulfilled when an alleged parody pursues a humorous intent, or whether it is also required that it achieves it (as the Advocate General had suggested in his Opinion). 

If the test was ‘intent’, then the exception under Article 5(3)(k) of the InfoSoc Directive would be broader than if a humorous ‘effect’ was also required. Above all, requiring just intent would be better compliant with the need to safeguard parody as a means to exercise freedom of expression. As I discus at greater length here, the difficulties that might arise should a humorous effect be required, lead to the conclusion the correct test under Deckmyn is that of a humorous ‘intent’. 

In its decision the Paris Court of Appeal suggested that both intent and effect might fall within the concept of ‘expression of humour or mockery’ when it stated that: “La parodie doit aussi présenter un caractère humoristique, faire oeuvre de raillerie ou provoquer le rire” (“The parody must also have a humorous character, make fun of or provoke laughter”). So, an acceptable parody might perhaps be both one that makes fun without necessarily provoking laughter and one that provokes laughter without necessarily making fun. This might be an interesting take worth elaborating further in future case law. In all this, however, neither was the case of ‘Naked’.

The IPKat thanked Stéphanie Legrand, who represented the Bauret estate in the proceedings, for kindly providing a copy of the decision of the Paris Court of Appeal

Artwork cannot be cut up to realize watch faces, Danish court rules

Paris Chic, Tal R, 2017

Copenhagen's maritime and commercial court was recently asked to decide whether Dann Thorleifsson and Arne Leivsgard - a duo of Faroese art provocateurs and founders of Kankse and Letho watch brands - could cut up Tal R's artwork "Paris chic", which the duo had purchased last August for 70,000 £ at the Victoria Miro Gallery in London. The duo wanted the painting fragments to decorate the faces of their latest watches, each of which they planned to sell for at least DK 10,000. 

The Danish court issued a ruling yesterday in favor of the Danish artist. Consequently, the two watch designers cannot use Tal R's painting as a raw material and have to pay DK 31,550 in legal costs.

The Danish court awarded an injunction under the Danish Act on Copyright, protecting copyrights and moral rights. Indeed, the Court accepted Tal R's argument that the duo's project would have been an illicit alteration of the artist's work rather than a destruction of same, as contrarily argued by the duo's lawyers. Tal R's lawyer alleged that the watch brand planned to market the watches as fragments of a Tal R's work. The artist's lawyer also argued that whilst the purchasers of Tal R's art could sell it or even destroy it, they could not alter it, as to do so would infringe Danish copyright law. 

While the duo is still considering whether to appeal the ruling or to reach a settlement, this case questions again the boundaries of  copyright and ownership of artworks, and namely whether a work of art can be freely destroyed by its owner. In this last regard, the answer seems to differ from country to country: in Denmark, for instance, is considered permissible. 

THE COPYKAT

Kylie Minogue’s fashion range loses copyright It claim

Australian pop star Kylie Minogue is associated with a range of interior design and bed linen products, produced by Ashley Wilde. In a recent action, this design company went on to sue BCPL, a brand which sells bed linen products, primarily owned by another well-known model and TV star Caprice Bourret. The subject of the litigation was with respect to a duvet cover (the cotton shell which covers a comforter) and a matching runner. The allegations of similarity were concerned with the following factual determinations (as reported in the IPKat):

- The choice of a the pattern of scallop-style pleats in repeating horizontal rows; 
- The relative size of each pleat; 
- The relative spacing between each pleat; and
- The relative spacing between each horizontal row. 

Justice Melissa Clarke firstly went on to establish that a presumption of copying will exist if the works are primarily substantially similar and there is proof of access to the prior work. However, she then went on to reiterate the rule that the question of copying concerns with the quality of the work, and not merely the quantity taken, and whether the intellectual expression and creation of the author is appropriated or not. It is not just the similarities but also the differences which need to be looked at, and the copyright needs to be determined as a whole. The differences cannot be downplayed, as was done in the case at hand.

These jurisprudential notes in combination with the determination that scallop-style pleats were relatively commonplace in the fashion industry and could not be monopolized due to it being a concept (Idea-Expression dichotomy), led the court to reject a finding of presumption of copying. Apart from this, the court found that the expression of such scallop-style pleats in the conflicting designs, in fact, encompassed sufficient differences and were not in any case substantially or extensively similar to bring in a case for the presumption of copying. The differences in the method of pleating the scallops, the number of pleats in the pleated scallops, the size of the pleated scallops and the shape of the pleated scallops, the number of repeated scallop motifs were rendered to be sufficient to avoid a claim for infringement and to establish an original distinct expression of a design made out of the concept of a scallop-styled pleat. In lieu of the same, the court rejected a finding of copyright infringement and Ashley Wilde was unsuccessful in the action.

Interestingly, this case reinforces the importance of factual evaluation and the fine line between inspiration and infringement especially in the fashion industry, to recognize the multitude of possibilities of expression in a copyrightable design and its dominion, and balance the interests of the copyright holder and the general public (other designers in the fashion industry) accordingly. It reinforces the principle of creative freedom and the leeway of experimentation on similar ideas, provided in copyright, to account for designs, which may prima facie seem similar intuitively, but are much more detailed and different when such details are analyzed. The judgment can be found here.

Versace sues Fashion Nova for infringement of the gold “Barocco” print

In yet another infringement action concerning the Fashion industry, Italian brand Versace has sued Fashion Nova to seek a remedy and redress with respect to the copyright infringement of its apparel involving the black and gold “Barocco-57” print, pop-hearts design the “Jungle print dress” that was worn by Jennifer Lopez in the Grammy Award functions. This case has been lodged in the US District Court for the Central District of California, as reported by the World IP review. The claim of Versace revolves around the principle of Fashion Nova deliberately riding on the popularity and renown of Versace’s signature designs and its valuable goodwill and business reputation, to make profits. (Trademark logic?) The use has been alleged to be within the content, text, and meta-tags of the Fashion Nova website, as well as on social media websites, wherein “Fashion Nova” results pop-up upon a search of Versace products, due to this infringing action, resulting in alleged misdirection of consumers. A notice has already served and despite the same, Fashion Nova has not allegedly taken down these infringing designs which are substantially similar to Versace’s copyrights, from its web-portal. Interestingly Kim Kardashian took to twitter to address this claim by tweeting: “ It’s devastating to see these fashion companies rip off designs that have taken the blood, sweat, and tears of true designers who have put their all into their own original ideas.”

David Gilmour involved in a legal battle for the 2015 solo-single “Rattle That Lock”.

In a suit for copyright infringement, Pink Floyd’s iconic guitarist David Gilmour has been sued by French jingle composer Michaël Boumendil, over a four-note jingle, which Gilmour was first exposed to at a French train station and was instantly charmed. According to reports, he had approached Boumendil to seek a license to use the music in a song, wherein the agreement stipulated co-authorship for the resultant song.  In a suit filed by Boumendil it is alleged alleged that instead of replaying the notes (as was stipulated in the licensing contract), Gilmour went on to interpolate the exact recorded notes. The claimant sought damages worth 450,000 Euros. When the court had to decide upon this, it was noted by the court that this infringement suit was a year after the stipulated release of the song, and hence was time-barred. But Boumendil has now more recently appealed this decision and is seeking damages for the alleged unlicensed use of this jingle, and a breach of the contract between the parties.

Jay-Z sues Australian retailer over lyrics

American rapper Jay-Z (Shawn Carter) has filed a copyright infringement lawsuit against Australian Jessica Chiha and her business “The Little Homie”, which sells hip-hop inspired clothing and apparel. The subject matter of infringement refers to the book “AB to Jay-Z” which has been created by this online retail business, to teach kids alphabets in terms of names and pictures of rappers. Since then, their imagery and names have been expended to use in a coloring book as well as clothing retail options. After being served with a legal notice, the company has maintained its defence of transformative use and fair use and has resisted the claim, which has consequently landed them in court. As far as the claim over lyrics is concerned, the lawsuit refers to the famous quote by Jay- Z: “If you’re having girl problems, I feel bad for you son, I got 99 problems but a bitch ain’t one”, which has allegedly been appropriated by the Children’s book, as it displays on its front page a quote on the same lines, which states: “If you’re having alphabet problems, I feel bad for son, I got 99 problems but my ABC’s ain’t one.”

These actions and use of the image, likeness, and quotes purported by Jay-Z have been alleged to be “a deliberate attempt to trade-off the reputation and goodwill of Jay-Z for own commercial gain”. As reported by Pitchfork, there have been multiple cease and desist notices sent to Chiha, however this retail business is adamant of this use being fair.

Can a claim of fair and transformative use subsist on the facts? It seems so - however, the main issue before the court would be the task to balance the transformative use factor with the commercial advantage factor of fair use and the acknowledgment of a violation of the publicity rights of Jay-Z. Use in clothing, unauthoriasedly, raises a direct claim under violation of Publicity rights, but as far as the use of likeness in the Children’s book is concerned, there is no direct commercial benefit accruing out of the use of the likeness of Jay-Z and it can be argued to be merely incidental and a transformative use of his identity. It will be interesting to see how this case shapes up in court.

Indian Production House Yash Raj Films booked for an alleged failure of royalty payments to the tune of 100 Crores to Authors

The Indian Performing Rights Society, which represents composers, lyricists and music producers has accused Bollywood production house YRF of unauthorisedly collecting and not distributing royalties worth 100 crores, legitimately belonging to authors  as reported by the IPRMENT law blog. A First Information Report has been filed before the Mumbai Police Economic Offences Wing. Further, an allegation of pressurising artists to enter into signing illegal agreements has also been raised. The FIR claims that while YRF managed to extract royalties from TV broadcast platforms, it hasn’t been able to collect the same from telecoms, radio stations and music streaming platforms to pay up. The core issue involved here is the non-membership of YRF in the IPRS collecting society, which is one of the major copyright societies indulging in revenue distribution. The lacunae is primarily because of the Indian Copyright Act as although it intends that royalties must be paid to the authors via a copyright society, it does not explicitly state so. The Copyright Act does not take into account the following questions, as reported in the IPRMENT law blog:

Who is supposed to pay these non-assignable and non-waivable royalties?
Who is supposed to collect these royalties?
Are authors and the assignee of their works compulsorily required to become members of a registered copyright society to claim royalties or can they continue dealing in their own works without becoming members 

Hence, due to no statutory compulsion to act through a copyright society, such dubious practices are being entered into by the Production houses, which have allegedly denied authors their claim to royalty. Recently, music composer/singer duo Salim-Sulaiman came forward in a journalistic report to state that they haven’t indulged in a work-based relationship with YRF in the last 4 years due to continuous non-payment of royalties, in spite of having allegedly collected the same. Such practices deny the authors their inalienable right to reproduction and right to receive royalty, on such assignments and the prime reason for the same is the lacunae and vagueness in the drafting of the Copyright Act of India.

 $1 Billion Lawsuit on Spotify by PRO Music Rights and Sosa Entertainment

A law suit has been filed by PRO Music Rights, LLC and SOSA Entertainment, LLC alleging that Spotify failed to pay royalties on over 550,000,000 streams. Pro music rights intends to ask a Florida based jury at the trial to hold Spotify responsible for its conduct and alleged infringement, and unfair and deceptive trade practices. The case was filed on 25th November at the United States District Court for the Middle District of Florida. The suit involves an allegation of removal of content for anti-competitive reasons, engaging in unfair deceptive and business practices and inter alia refusing to pay royalties - and publicly performing songs without a licence. According to the petition, Spotify removed the Plaintiff's profile without an advance notice without ever informing the claimant why these songs were removed. The Plaintiff's songs had genuine 550,000,000 streams before being removed an  was one of the most popular playlists. The petition further states:

“As it knows and claims to do, Spotify is required to remit royalty payments to Plaintiffs for the streams of their songs and to obtain public performance licenses for the public performance of songs on its platform. To date, however, Spotify has not paid full royalties for the 550,000,000+ streams of Plaintiffs’ songs on Spotify’s service”

It has also been alleged that the motive for removal of all these songs is linked with its equity deal with Music and Entertainments Rights Licensing Independent Network in order to pressurize MERLIN to terminate its contract with SOSA, as high stream counts from unknown independent acts do not generate close to the same revenue for Spotify from advertisements, as compared to mainstream acts, and do not offset the royalties owed. Further, it was alleged that 99% of the users responsible for the 550,000,000 streams of Sosa’s songs were ad-supported users rather that subscription users. Is this as a result of such discrimination on the part of Spotify against less established artists?  the Plaintiff thinks so and says it's musicians have suffered economic loss. This has been alleged to be an anti-competitive practice to oust independent musicians from the music market, merely due to less revenue for streaming services. In continuation, Sosa has also alleged that”

“Spotify continues to unilaterally profit from Plaintiffs’ music; despite purporting to remove Plaintiffs’ content, some of the Plaintiffs’ music continues to stream without license via Spotify-generated playlist(s), and without any compensation made to copyright holders, in blatant disregard of the Copyright Act. Spotify is legally obligated to pay royalties for streaming music.”

This battle will be interesting for the survival and growth of the Independent music circuit. The math can be done here:

1)    Mainstream artists are targeted by companies with a higher marketing budget, due  to the expectation of more number of streams and popularity, resulting in more consequent advertisements (of the company). These companies offer large sums to Spotify, in lieu of the advertisements – which gives Spotify its revenue 

2)    Independent Artists and non-mainstream music artists have a low budget advertisement attached to them, which provides less money per stream for Spotify, due to budget advertisement companies being associated therein (less revenue per stream as compared to mainstream songs).

3)   Royalties to be paid in lieu of streaming is equal because of it being a statutory amount and does not in any way vary upon the artist being mainstream or not. 

4)  This leads Spotify to a situation that with  the enhanced popularity and number of streams of non-mainstream and indie music as well (550,000,000), they get less revenue for a large number of streams (as compared to what they would have gotten, had the streams been on mainstream songs), and they have to pay equivalent royalties to both mainstream as well as indie artists.

5)  The ultimate conclusion out of this analysis is the low earning on the part of Spotify through indie artists, and equal royalties to be paid, which has led them to oust them from the market, in order to attract more streams for mainstream artists only which would lead to a higher ad revenue per stream for Spotify (when balanced with the amount of royalty to be paid, which remains constant).

At the core of this is the allegation that Spotify is contributing to the already persisting anti-competitive and unequal structure of distribution of music, wherein mainstream artists who have more funds to produce and market the music and are signed to a bigger record label are able to flourish, whereas independent artists are left marginalised - and fail to get fair compensation - or reach.

From the point of view of a musician, this is a sad state of affairs, where mere economic benefit is being preferred on the cost of access of more genuine and original content to the public, which was, in fact, the goal of copyright in the first place. This arguably de-incentives the musicians (especially independent ones) from creating music (to some extent),  due to the lack of marketing capability (although money is not the sole incentive), and is not competitive or ethical practice. True or not - does that matter in a court of law?

It will be interesting to see how the court approaches this and if it enters into this socio-economic aspect of survival of musicians who do not have much access to funds to market their music and content.

Plaintiff’s petition can be read here.

This Copykat by Akshat Agrawal

THE COPYKAT

USPTO brings in the all-important question of whether AI can create or infringe Copyrighted “Works”

Artificial Intelligence is a well discussed and debated topic in the realms of Copyright - since the advent of the concept of “Computer-generated works”, but with the recent advancement in the role of AI in curation of art-based copyrightable works, this debate has gained even more importance and is now the  subject of a number of major academic conferences and seminars, with the question surrounding the most appropriate path to be taken by lawmakers and courts.

The US Patent and Trademark Office has now launched a public consultation in this matter and The USPTO has issued a request for comments on IP protection of AI based innovation, on or before 16^th December. The notice reads: “Artificial Intelligence (AI) technologies are increasingly becoming important across a diverse spectrum of technologies and businesses. AI poses unique challenges in the sphere of intellectual property law. At a January 31, 2019 conference on ‘‘Artificial Intelligence: Intellectual Property Policy Considerations,’’ USPTO explored a number of those challenges. On August 27, 2019, the USPTO published a request for comment regarding AI’s impacts on patent law and policy. As a continuation of this work, the USPTO is also considering the impact of AI on other intellectual property rights.” 

In lieu of the same, 13 specific question have been posed by the USPTO including concerns around a work produced by an AI, without the involvement of a natural person contribution expression, constituting a protectable work of authorship or not, kind of involvement of human which would be regarded as authorial, state of existing law in lieu of evolving AI technology, AI getting authorship as a separate legal entity or not etc. The whole list of questions posed can be found herein. Even in the UK, while evaluating a claim to inventorship, and identifying an inventor, the UK government has herein gone on to specify that “An AI inventor is not acceptable as this does not identify a “person” which is required by law.” Further, and importantly, as reported by the IPKAT, even in China, the Beijing internet Court in its decision in th case of Feilin v. Baidu has gone on to hold that for it to be a copyrightable “work”, it must be created by a natural person, which is a fundamental tenet of Copyright law. The court even held that neither the software developer nor the user and not even the software could be the Author of the work. The court further pointed towards the establishment of a sui generis right system (although indirectly) to protect the investment in the generation of the production. This is a core academic debate, and will be interesting to see how it takes shape in other jurisdictions.

Musicians urge for a similar regime to the EU Copyright Directive in the United States, to protect them against digital exploitation

CISAC recently saluted the EU Copyright system for its reform and fight against digital upload based services and has urged other jurisdictions including the United States to follow its example. With the digital market taking over the means of “communication” of content, the CISAC has urged for fairer norms, in light of a higher contribution of the digital market to these authorial royalties and revenues. The income from digital sources has substantially increased and is EUR 653 million more in 2018 than in 2014. Of course the International Confederation of Societies of Authors and Composers has at its core the aim to protect the rights and promote the interests of creators worldwide and is a known advocate for strong legal protection of copyright and authors' rights.  The EU Copyright Directive offers a stronger negotiating position for authors and composers against these distributing agencies and tech giants which display content and further holds them completely responsible for the content uploaded on their platform, in order to rapidly curb piracy. As reported by CISAC newsroom, Jean-Michel Jarre, CISAC President, said: “Digital is our future and revenues to creators are rising fast, but there is a dark side to digital, and it is caused by a fundamental flaw in the legal environment that continues to devalue creators and their works. That is why the European Copyright Directive is so momentous for creators everywhere. The Directive has sent an amazing, positive signal around the world, building a fairer balance between creators and the tech platforms.” A few highlights of this report as well as the full report released by CISAC can be accessed here. But a number of major tech companies, including Google, Facebook and Twitter are concerned about harmful copyright legislation being created around the world. 

Meanwhile TechDirt reports that tech industry groups are warning that these developments, including the EU Copyright Directive, will harm the interests of US companies, while conflicting with various free trade agreement. The Computer & Communications Industry Association (CCIA) and Internet Association have registered their unhappiness in submissions to the US Trade Representative in response to a call for opinions on foreign trade barriers. According to the CCIA, whose members include Amazon, Facebook, Google, Netflix, Pandora and Samsung, the EU’s directive “poses an immediate threat to Internet services and the obligations set out in the final text depart significantly from global norms”.

Important question of Jurisdiction in Copyright Infringement cases, resolved by the US Court of Appeals for the 6^th Circuit

In a lawsuit involving a lack of proximity or territorial nexus of the infringing action to the venue wherein the suit was instituted, the court in the US dismissed a claim of Copyright infringement, This is the case of Parker v. Winwood (6^th Circuit Sept. 17, 2019). The main question is this case was around the taking of a bass line from the plaintiff’s song “(Aint that) A lot of love” in their song “Gimme Some Lovin’” Due to Mervyn Winwood’s residence in the UK and his conduct of the subject matter of the suit (and the alleged infringement) taking place in the UK, the sixth circuit relying on the Supreme Court decision in Walden v Fiore where the forum of the act was given prominence, held that there is no personal jurisdiction to bring in the suit at Tennessee. Further, due to lack of evidence showing distribution of the infringing work in Tennessee, the steam of commerce argument was also rejected.  In the dissenting opinion however, justice Donald stated that “Plaintiffs could not properly assert personal jurisdiction over Mervyn because Plaintiffs did not set forth evidence or affidavits establishing jurisdiction . . . is incorrect, as Plaintiffs have submitted evidence supporting the district court’s ability to exercise personal jurisdiction over Mervyn.” Further, an evidence related to a nationwide distribution agreement was also accounted for, in support of personal jurisdiction, however the majority rejected the same. This judgment seems fallacious in relying on Walden v Fiore as this judgment doesn’t cover situations where the defendant has minimum contacts with the United States and any of the states within itself.  Read more here. The judgment can be accessed here.

Nigeria declares no tolerance policy on issues surrounding acts of Piracy

The West African Country has emphasized, via its Copyright Commission, a will to stamp out Piracy in totality. In a declaration by Vincent Oyefeso, the commision’s director of public affairs, as reported by Music in Africa. the Director said:

"The NCC is not just a compliance agency, it has the power to arrest and prosecute anybody caught pirating other people’s intellectual properties.” and “Copyright owners could institute civil suit against copyright offenders, apart from the criminal suit the commission normally institutes against such offenders.”

Further, there has also been a call to update Nigerian Copyright laws to come in line with the digital era. And to combat piracy, the commission has adopted surveillance, inspections, raids, investigations and diligent prosecutions of alleged and suspected offenders and infringers. This is all the more keeping in mind the agenda to bolster economic growth through the creative industries.

Even in South Africa, there have been concerns around the amendments surrounding authors and performers rights and the impact of the bill on rights of creators. There has been a formulation of a tribunal to address these issues concerning the same. The general consensus as reported by Music in Africa, is that the amendment bill supports users and multinational streaming company by providing them free content and going against the economic concerns of the rightful authors and composers including performers.  There is no punitive clause which provides for a remedy against infringing use. Read more here.

Claim against the Constitutionality of the Copyright Remedy Clarification Act, 1990 (United States), being heard in the Supreme Court

The case of Allen v. Cooper where the US Supreme Court is looking at a modern-day dispute involving the pirate Blackbeard's ship that went down off North Carolina's coast more than 300 years ago discusses the question of whether a limitation on state sovereign immunity in copyright claims via a statute (CRTA,1990) is constitutional. This case highlights the statute which abrogates sovereign immunity in claims of copyright infringement. The Supreme Court, in a similar claim to unconstitutionality concerning Sovereign Immunity being abrogated in Patent and Trademark cases, has already held it to be unconstitutional (Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank), which is generally used as a precedent by the lower courts even in Copyright Cases (concerning CRTA) to hold sovereign immunity applicable. 

The SC has peculiarly started hearing these claims with respect to this particular act since November 5, 2019, as reported by the Disruptive Competition Project. The core issue is whether there can be a distinction drawn from the treatment of this act with respect to the other ones which have already been held to be unconstitutional. In the Florida case, the core reasoning against such immunity being removed was that there needs to be a pattern of cases showing infringement by the State or constitutional violations, which weren’t established. The focus of the plaintiff in this case is on distinguishing the factual scenario and establishing that infringement by states is a growing problem which has also been identified in the study by the Copyright office and in the amicus brief filed by Ralph Oman, ex registrar of Copyrights, in favour of the plaintiff, .North Carolina-based Nautilus Productions who had for nearly two decades documented the ship's salvage. In the process, the company copyrighted photos and videos - which were then published by the state.  Nautilus sued in federal court, but the federal appeals court in Richmond, Virginia, ruled North Carolina could not be sued despite using the materials without permission. 

The plaintiff has also relied upon the dissenting opinions of Justice Ginsburg and Breyer and has firstly argued to overturn the Florida Prepaid case, but later in a second argument has also gone on to establish as to how the Florida prepaid case is not a valid precedent for the CRTA. States generally are protected from lawsuits in federal courts, and the justices in 1999 ruled out federal court cases against states over patent infringements. Patent and copyright protections come from the same constitutional provision that outlines Congress' powers.

As reported by Disruptive Competition Project, Justices Alito and Kagan questioned the adequacy of the evidence of widespread copyright infringement when Congress adopted the CRCA. Florida Prepaid found the eight instances of patent infringement considered by Congress to be insufficient. Here, the Copyright Office study had identified sixteen instances of copyright infringement by state entities. So are sixteen infringements by 50 states enough to constitute a widespread pattern of constitutional harm, while eight are not?  Read more on this case here. 

"All that would be very persuasive if we didn't have the patent decision" Justice Ruth Bader Ginsburg said during the legal arguments.  Ginsburg dissented in the patent case.

This CopyKat from Akshat Agrawal 

[Guest post] When creative collaboration goes wrong

The 1709 Blog is happy to host the following contribution by Hugo Cox (Hamlins), concerning the recent joint authorship decision of the Court of Appeal of England and Wales in Kogan v Martin [see also IPKat here].

Here's what Hugo writes:

When creative collaboration goes wrong

One of the most distinctively European contributions of European law to UK copyright law has been its test for originality (being one of the requirements for copyright protection). Previously UK courts had looked for the prosaic inputs of labour, skill or judgment. Now they ask whether the work is the author’s ‘intellectual creation’, looking to see if it reflects the author’s personality, expressing free and creative choices – there must be a certain … je ne sais quoi, you might say.

There is some doubt as to whether this new test has made much difference in deciding which works do or do not acquire copyright protection. However, in the law of joint authorship, a change seems unmistakable. In the past, English courts have required a contributor to input significant skill and labour to earn the title and rights of a joint author. So, for example, an attractive 16-bar saxophone solo did not meet the threshold. Now the Court of Appeal has affirmed the ‘relatively undemanding’ requirement is, once again, to contribute elements which express the contributor’s own intellectual creation. We know from the CJEU’s Infopaq judgment that this can be achieved in just eleven words.

Kogan v Martin

This conclusion of the Court of Appeal was arrived at in its judgment of 9 October in Kogan v Martin, a case concerning the screenplay for Florence Foster Jenkins, a film which starred Meryl Streep and Hugh Grant. The question was whether it had been written solely by Nicholas Martin, as had been decided in the Intellectual Property Enterprise Court in 2017, or whether Julia Kogan was joint author. The Court of Appeal was not content with the reasoning of the lower court and ordered a retrial.

It seemed Martin had held the pen and Kogan had contributed only to the first drafts. However, the Court emphasized a joint author can be someone who only offers suggestions to the writer  – she does not necessarily have to put pen to paper or have the last word on what goes into the script. Contributions to plot ideas or inventing characters are on an equal footing with contributions to the execution of a work. And if a work has been created through a series of drafts, inputs into the earlier drafts count.

Complex relationships, complex law

The Court set exacting standards for the assessment of the complex evidence of creative collaboration. The fact witnesses’ recollections may be imperfect does not absolve the judge of his duty to take those recollections into account alongside any documentary evidence and to come to a conclusion about the nature of the interaction between the parties and their contributions. Were Julia Kogan’s contributions akin to those of a researcher, or was there a joint creative process? The assessment is highly fact-specific and difficult, but must be undertaken.

Though it seems the quantitative threshold for joint authorship has been lowered, the overall assessment of the evidence has become ever more complex, subtle and exacting. And the legal concepts are slippery. Joint authors must be engaging in a ‘common design’ – according to the Court of Appeal this is not something Ezra Pound was doing when he made extensive revisions to Eliot’s The Waste Land. The Court explained, perhaps less than helpfully: ‘he was acting as a friend and critic and not a collaborator in a common design’. And appealing though the European ‘intellectual creation’ test is, can you necessarily spot someone’s personality in their output and when exactly are choices free and creative?

We live in a time when creative collaboration is widespread – from pop bands to sitcom writers’ rooms to the interactive world of the internet. It’s a complex picture, and one which the law should try to avoid complicating further.