THE COPYKAT spins around the world of copyright

Alibaba.com, the massive Chinese e-commerce company that provides consumer-to-consumer, business-to-consumer and business-to-business sales services via web portals, has been hit with a class action lawsuit claiming that its network of e-commerce websites is home to rampant copyright infringement of visual artwork.The lawsuit has been brought at the instigation of professional Indiana artist Michel Keck who is seeking to certify a class of copyright holders who have seen their work copied and sold on Alibaba’s network of websites. The 81-page complaint, filed  in U.S. District Court for the Northern District of California, outines the frustration Keck faced as she attempted to get dozens of China-based sellers to stop selling cheap copies of her work, primarily modern abstract canvas prints that feature dog portraits and religious themes.Keck claims that she repeatedly filled out online forms to report the alleged infringement to Alibaba, only to run into error messages, requests for documentation, or messages in Chinese. Often, she claims, she simply received no response. Alibaba has just announced that it will invest more than $15 billion over the next three years in a global research and development programme.

The Ontario Court of Appeal has upheld a decision to dismiss a class action lawsuit against Teranet Inc., which is the company that manages the province’s electronic land registration system (ELRS). In Teresa Scassa, University of OttawaIn Keatley Surveying Ltd. v. Teranet Inc., 2007 ONCA 748, the court heard that the plaintiff, Keatley Surveying Ltd., had brought action in 2007 on behalf of all land surveyors in Ontario who registered their plans of survey in the provincial land registry offices. Keatley claimed that Teranet Inc., the defendant, infringed their rights. The plaintiff, representing the class of surveyors, objected to what it saw as Teranet profiting from the commercial reproduction and dissemination of their copyright-protected works. Finding against the surveyors, the appellate court said it agreed "with the motion judge that copyright in the registered or deposited plans of survey belong to the Province. ... In summary, I would hold that the extensive property-related rights bestowed on the Crown by the land registration scheme in Ontario compel the conclusion that the publishing of those plans, by making copies of the plans available to the public, is done under the “direction or control of Her Majesty.” Section 12 of the Copyright Act declares that the copyright in the registered or deposited plans of survey belongs to the Crown." Read more here Crown copyright alive and well in new decision from the Ontario Court of Appeal. 


In the US, it seems web blocking is now on the cards for copyright owners whose rights have been infringed, after Magistrate Judge John Anderson in the District Court for the Eastern District of Virginia recommended a ruling in favour of the American Chemical Society in their action against Sci-Hub (sometimes dubbed the “Pirate Bay of science” whom the ACS accused of copyright infringement for making available online copies of the former’s academic papers without licence. Sci-Hub lost its sci-hub.org domain during an earlier (and separate) legal action against the site by science publisher Elsevier. More on CMU Daily here


And continuing with acaedemia, and the same to claimants, and copyright alleged infringement: scholarly publishing giant Elsevier and the American Chemical Society (ACS) have filed a lawsuit in Germany against ResearchGate, a popular academic networking site, alleging copyright infringement on a mass scale. The move comes after a larger group of publishers became dissatisfied with ResearchGate’s response to a request to alter its article-sharing practices. Sciencemag explains that ResearchGate, a for-profit firm based in Berlin that was founded in 2008, is one of the largest social networking sites aimed at the academic community. It claims more than 13 million users, who can use their personal pages to upload and share a wide range of material, including published papers, book chapters, and meeting presentations. Science funders and investors have put substantial funds into the firm; it has raised more than $87 million from the Wellcome Trust charity, Goldman Sachs, and Bill Gates personally - but the claimants say that published papers now include copyrighted papers whch are usually accessible only behind subscription paywalls. Initially, the International Association of Scientific, Technical, and Medical Publishers wrote to ResearchGate on behalf of more than 140 publishers, expressing concerns about its article-sharing policies, and proposed that ResearchGate implement a “seamless and easy” automated system to stop their copyrighted works appearing on the site. This was rejected and a 'take down' system suggested by ReserachGate - which the publishers are not happy with, saying  hat the company’s “business model depends on the distribution of these in-copyright articles to generate traffic to its site, which is then commercialised through the sale of targeted advertising" Two coalition members, ACS and Elsevier, have now opted to go to court.


A small claims procedure for IP in the USA? Congressmen Hakeem Jeffries (D-NY) and Tom Marino (R-PA), along with Representatives Doug Collins (R-GA), Judy Chu (D-CA), Ted Lieu (D-CA), and Lamar Smith (R-TX)  have introduced a new bill in the House of Representatives that photographers and others involved in the visual atrts say will be a valuable tool to complement the current “ one-size-fits-all copyright system" which "leaves out most visual artists.” The Copyright Alternative in Small-Claims Enforcement (CASE) Act is intended to give creators a cost-effective way to enforce their rights. The idea of a copyright small-claims court, which has been discussed in Washington D.C. for several years, could make it easier for small companies and independent creators to enforce their rights,  And Billboard says it could be a game-changer for photographers and visual artists, especially where merchandise is concerned.


Nigeria has presented four key Copyright ratified Treaties to the Assembly of member states of the World Intellectual Property Organization in Geneva. The News Agency of Nigeria reports that the presentation was made at a 57th WIPO General Assembly meeting in Geneva.  Ambassador Audu Kadiri, Nigeria’s Permanent Representative to the United Nations Office in Geneva, whopresented the treaties to the Director General of WIPO, Dr. Francis Gurry said, Nigeria was committed to the implementation of the treaties in support of the country’s drive to revatilise its economy. The treaties were listed as the WIPO Copyright Treaty, the Performances and Phonograms Treaty, the Beijing Treaty on Audio Visual Performances, and the Marrakesh Treaty.

There has been another delay by the EU's Committee on Legal Affairs (JURI) on EU copyright reforms set out in the Draft Directive on Copyright in the Digital Single Market (COM 2016(593). It was anticipated that JURI would have its final vote on the amended wording on the 10th October 2017. However, the draft Copyright Directive had been removed from the agenda for that date. For now, it seems that we will all have to wait until JURI’s next session on 7th December 2017 to see how the bill progressing. Axel Voss assumed the role of the rapporteur in June this year. More on Lexology here.

Protecting cuisine in Italy: photographs of dishes and recipes in recent case law

Not an average risotto

The recent and growing obsession with food and food porn [see here for a collection of IPKat posts] has been raising not just anthropological questions about ourselves but also IP-related questions. 

Among other things, what kind of protection (if any) is available to photographs of dishes and recipes?

1709 Blog friends Margherita Bariè and Marco Annoni (Carnelutti Law Firm) provide an overview of recent Italian case law on this very point.

Here’s what they write:

“In recent years, the food & beverage industry has undeniably risen to an ever more determining role among professionals of the legal world for the issues that it presents daily and submits to the attention of courts and law experts.

We refer to an industrial field which involves a significant share of the domestic market and accordingly an extremely large number of businesses that operate every day by offering more and more diversified and innovative services which, consequently, draw attention to problems and topics that have not been faced ad discussed so far.

To quote some figures disclosed by Federalimentare – the Italian Association of the Food Industry – during the presentation of its annual accounts of 2014 and of the outlook for 2015, the Italian food industry is the second segment in Italy’s manufacturing industry with a turnover of 132 billion, more than 58,000 businesses, 385,000 direct workers and 850,000 employed in farm production, with a growth outlook in 2015 of (+0.3%) in terms of consumption, (+1.1%) in terms of output and (+5.5%) in exports. 

This performance was also and mostly achieved thanks to the positive trend generated by Expo 2015 and by the so-called “Italian sounding” effect which allows the Italian food industry to rank unquestionably among the world’s best.

The purpose of this post is to identify new legal developments facing cooking blogs, particularly with regard to photographs of dishes and culinary recipes.

Photographs of dishes

We believe that this kind of photographic works may receive protection as creative works, where they  display sufficient originality. In other words, as well-known court decisions established, “the photographer’s reproduction modality must convey an additional and different message than the material crystalised representation, thus rendering a personal interpretation capable of making one work stand out among others having the same subject matter” (Court of Roma, 2 August 2003 and Court of Milan, 7 July 2011, all available on www.darts-ip.com). 

Thus, “the requisite of the creativity of the photographic works subsists anytime authors did not merely reproduce reality but inserted his imagination, taste, or sensibility in the shot to convey their emotions” (Court of Milan, 6 March 2006, on AIDA, 2007, page 792, and Court of Milan, 7 July 2011, published on www.darts-ip.com).

Culinary recipes

The Court of Milan recently delivered a decision on the specific protection of cooking blogs (Court of Milan, 10 July 2013, n. 9763, published on www.darts-ip.com). 

The judgment of the Milan Court basically dealt with the uncommon issue of whether a kitchen recipe may be protected by copyright – specifically a homemade kind of preserved meat – posted on a cooking blog.

In fact, the topic under review did not concern essentially the contents of the recipe or the specific combination of ingredients to make a specific food, but rather the manner to post a preserved-meat recipe. 

The Court – and the authors of this article – regarded this form of expressive representation of the recipe as deserving protection as a creative work.

Specifically, according to the Court, protection afforded by copyright “is based, in fact, not on the contents of the recipes of the various kinds of preserved meats or of the instruction to the various preparation steps, but rather on the form of expression that needs to be regarded as relevant for the purposes of the requested protection.  It includes both the language and the exposition of the elements that make up the texts – albeit of simple construction – and the material result of the activity to search and select elements that are considered relevant and important. In the case under review, these form the most significant element of originality that reveals the subsistence of an albeit minor – as is standard practice in the field of copyright – personal contribution of the author, which is not restricted to the mere schematic exposition of elements that are already known and fully available to any party”.

The quoted decision could at first sight appear an isolated case of minor importance in the industry under review. However, it could potentially become a genuine precedent capable of opening the way to many judgments on similar cases.

Moreover, although this decision specifically concerns information on a cooking blog, it could be used as starting point for the protection of creative internet contents of many companies that operate in the food industry, for instance companies – nearly all today – that dedicate much of their internet pages to the description of their products, which will thus rely, not only on the protection against unfair competition, but also on the protection granted by provisions on copyright."

Photographs in focus as smudgers vent their fury at ERR

Beyonce by Denis O'Regan (c) Glastonbury Festivals Ltd 2011

Photographs are in the news in the UK as the snapper community in the UK digests the ramifications of the Enterprise and Regulatory Reform Bill which received Royal Assent last week. The Telegraph leads with the headline that the 'Instagram Act' could see 'social media users lose ownership of their own photos' comparing the provisions of the Act that relate to orphan works with Instagram's hastily withdrawn privacy  policy that caused such a stir back in December last. As many images available online have been stripped of all data, photographers fear that their images, however commercially valuable, will simply be deemed as orphan works when a 'diligent search' is made relating to the image by the new user uncovers no metadata. Dominic Young wrote that the UK had 'abolished copyright' saying that UK copyright owners no longer control the right to copy their work

Eleonora has just posted up a blog on the IPKat on the ramifications of the Act under the headline 'The end of copyright as we know it?' and it's well worth a read.

In other snapper news, and with a very dfferent approach to controlling images, Beyonce has reportedly banned professional photographers from her entire 'Mrs Carter Show' world tour, which began in Serbia earlier in April. Purportingto be taken from information for media outlets wishing to cover the shows, Facebook page Music Photographers has posted a paragraph of text saying: "There are no photo credentials for this show. Local news outlets, including print and online, will be given a link to download photos from every show. They will need to register to access the photos"  for media use. Those official photos are apparently all taken by one photographer, Frank Micelotta for Associated Press. The move seemingly stems from  the incident this year in which Buzzfeed posted, and then refused to take down, photographs from Beyonce's Super Bowl performance, which Beyonce’s PR team deemed to be "unflattering". The star has asked fans for no flash photography and not to post photos online either. The Huffington Post says that 'B' has failed here, with fans posting thousands of images on Instagram, Facebook and Twitter - and with fan shots possibly replacing snaps by professionals in the media - which may not quite be what was intended by Mrs Carter's minders ........

http://ipkitten.blogspot.co.uk/2013/04/the-end-of-copyright-as-we-know-it.html

Landmark decision on photos and social media?

In what has been hailed by the photography industry as a "landmark decision", District Judge Alison Nathan, sitting in the US District Court of New York, has held that it is an infringement of copyright to use someone else's photos which have been posted on Twitter (see the full decision here). Who would have thought?

Photojournalist Daniel Morel took several photographs of the earthquake which shook Haiti in 2010 which he posted to Twitter, saying that they were for sale. Note that at the time Twitter's Terms of Service made it clear that users retained copyright in their content, and indeed the Terms of Service today say: "You retain your rights to any Content you submit, post or display on or through the Services" (though you do grant Twitter a worldwide, royalty-free, non-exclusive licence to that content).

Morel's photographs were subsequently copied by an individual living in the Dominican Republic, who then sold them to Agence France-Presse (AFP), who then shared them with Getty images. David Morel received no attribution or remuneration for the subsequent use by many media organisations worldwide.

AFP argued that either its conduct must have been licensed or "the uncountable number of daily 're-tweets' on Twitter and in the media where Twitter/TwitPic posts are copied, reprinted, quoted, and rebroadcast by third parties, all could constitute copyright infringements." The District Court explained however that "a license for one use does not equate to a license for all uses".

The US District Court reasonably held that "Construing the Twitter TOS to provide an unrestrained, third-party license to remove content from Twitter and commercially license that content would be a gross expansion of the terms of the Twitter TOS." Therefore AFP and the other media organisations that had used Morel's photographs without permission were liable for copyright infringement and for damages.

Getty argued that it was a service provider and that it should therefore be able to rely on the safe harbor defence provided for in the DCMA. The judge dismissed this argument.

To this blogger it seems clear that poaching content from social media sites is a clear infringement of copyright. So why did AFP take the claim as far as it did? The answer to that question probably lies in the millions of dollars of statutory damages claimed by Morel, on the basis that each illegal reproduction of his photographs by all of Getty's and AFP's members was an individual infringement. The US District Court however held that AFP was liable only once for each alleged "violative act" rather than for every copy of Morel's photos, limiting Morel's damages to between US$ 20,000 and 200,000.

This blogger enjoyed ArsTechnica's analysis:

"At this point, AFP should see that it clearly isn't going to win this case; and Morel should be able to see that he isn't going to become a millionaire because of AFP's mistake. After both parties take a breath and reduce their expectations, they may be able to reach a settlement."

This clearly isn't the "landmark decision" that some are alleging, but is an interesting discussion of the rights attributed to content posted to a social media website.

Originality in photographs according to US Court of Appeals

To infringe or not to infringe?

What is original (and is thus protectable) and what is not in a photograph? Questions like these have troubled copyright lawyers (and possibly courts, too) since the invention of photography itself. 

As this blogger learnt from The Hollywood Reporter, the First Circuit Court of Appeals has just delivered a decision addressing this Hamlet's dilemma, in little more than 6,000 words. The case is Donald A Harney v Sony Pictures Television, Inc, and A&E Television Networks, LLC, a fascinating appeal from the US District Court for the District of Massachusetts with an even more intriguing factual background.

Background

On a sunny spring day in 2007, freelancer Donald Harney snapped a photograph of a blonde girl in a pink coat riding piggyback on her father's shoulders while leaving a Boston church on Palm Sunday. 

The picture became extremely well-known, especially when it was revealed that the father portrayed therein was a German citizen who had assumed, amongst the others, the name Clark Rockefeller (real name: Christian Gerhartsreiter). A "professional" imposter who had passed himself off as a member of the high profile Rockefeller family and whose previous false identities included descendant of British royalty, Wall Street investment advisor and rocket scientist, Gerhartsreiter abducted his daughter during a parental visit (more on this story on Vanity Fair here). Harney's photograph was thus used in a FBI "Wanted poster" and widely disseminated in the media.

In 2010, Sony produced a TV film based on Rockfeller's identity deception and entitled Who is Clark Rockfeller? (trailer available here). This included an image that resembled, as far as pose and composition were concerned, Harney's photograph, although a number of details was different.

Harney thought of bringing an action for copyright infringement against Sony, but the district court eventually dismissed it.

What the Court of Appeals said

According to Circuit Judge Lipez, Harney's photo and the image displayed in the film shared several important features. However, copying another's work does not invariably constitute copyright infringement, as it is permissible to mimic the elements which cannot be protected because unoriginal. 

The inquiry into substantial similarity embraces two different types of scrutiny:

1) a determination as to what the original expressive elements of a work and its unprotected content are (“dissection”).

2) a holistic comparison of the two works to determine if they are substantially similar. This requires giving weight only to the protected aspects of the plaintiff's work as determined through the dissection. Substantial similarity subsists if the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook the works at stake, and regard their aesthetic appeal as the same.

According to the court, application of this principles to news photography might prove challenging, since this seeks to document people and events accurately. 

In this case it was undisputed both that Harney owned a valid copyright in his photograph and that Sony had copied it. 

The framing of Gerhartsreiter and his daughter against the backdrop of the church reflected a distinctive aesthetic sensibility, and Harney's artistry was also reflected in the shadows and vibrant colors in the photo. Positioning the pair in the middle of the frame as they looked straight into the camera, and at a close distance, also involved aesthetic judgments that contributed to the impact of the photograph. However,

"Harney's creation consist[ed] primarily of subject matter -- "facts" -- that he had no role in creating, including the central element of the Photo: the daughter riding piggyback on her father's shoulders." 

The court found that almost none of the protectable aspects of Harney's photo had been reproduced by Sony. Without the Palm Sunday symbols, and without the church in the background - or any identifiable location - Sony's image had not recreated the original combination of the photograph. 

"Although the two photographs appear similar upon a first glance, that impression of similarity is due largely to the piggyback pose that was not Harney's creation and is arguably so common that it would not be protected even if Harney had placed Gerhartsreiter and [his daughter] in that position." 

An easy way to watermark photographs

This blogger was interested to read a post on the Guardian Photography Blog today by photojournalist John D McHugh about his new app, Marksta, which adds watermarks to photographs. Whilst adding a watermark to a photograph is nothing new, the beauty of this app is that it enables users to add a text watermark (e.g. a Twitter name or website address), a logo, or the copyright symbol to their photos directly from an iPhone, before sharing the picture. The intention behind the app is to work with technology: the speed with which photos are disseminated using Facebook, Twitter, Instagram etc, and then the ease with which they are copied and re-posted using the same technology, means that photographs are often used without the photographer's consent or even knowledge. This app enables the photo to be attributed to the photographer so that, as McHugh says:

"If somebody wants to use the image commercially without the watermark, then they know exactly who to contact to arrange permission and payment. If the picture is uploaded to social media and becomes a viral hit then Marksta will ensure the photographer gets the credit."

Of course this doesn't prevent internet users from using the photographs without paying the photographer, but at least it attributes the photographs to the right person which is a step in the right direction.

McHugh goes on to comment that:

"With the British government threatening to erode the rights of photographers with new copyright laws, and the risk that unidentified photographs can be deemed "orphan works" and used without payment or credit, it is more important than ever that photographers (professional and amateur) protect their work.

There are also very real concerns that social media sites intend to take users' photographs for their own promotion and profit with no regard for intellectual property rights. Instagram has already been embroiled in controversy over a proposed change in its terms & conditions, which was widely interpreted as a rights grab."

We hear lots about the music and film industries' fight against online piracy however the discussion rarely seems to touch on photography. Online piracy of photographs is difficult to monitor and individual photographers often do not have the time or resources. Consumers are increasingly aware that not all photographs posted online are free for them to use (Creative Commons licences and Google's advanced image search can help to find those that are); this app is an inexpensive and easy way for photographers to reinforce that view.

Blogging, posting, linking… infringing? Not in Canada

Current UK case law tells us that posting excerpts from an article published online infringes copyright in that article. Headlines are also protected, as they are deemed to form a substantial part of the article, and could in some cases be works in their own right  (NLA v Meltwater, reported here and here). The Court of Appeal has confirmed that the exception permitting fair dealing for the purpose of reporting current events does not apply to this type of copying. The question of whether the temporary copies defence applies is being appealed to the Supreme Court (see here).

Further, in a summary decision the UK courts have held that merely linking to a website that has published unlawful content could incur liability (McGrath v Dawkins).

 © owenwbrown

These issues form part of the current copyright consultation (a summary of the response is available here), but for the time being UK case law points firmly in favour of online copyright owners. The Canadian Federal Court has however recently decided a case which means much more freedom for bloggers and users of social media sites in Canada.

The case was brought by Free Dominion, "The Voice of Principled Conservatism". Free Dominion is a Canadian-based political news website on which users can post articles or link to online content for the purpose of political debate.

The Federal Court's decision relates to two works in which copyright was alleged to have been infringed. The first work was an 11-paragraph article published by the Toronto-based daily newspaper, the National Post. The article was initially reproduced in full on Free Dominion however it was reduced to a three and a half paragraph excerpt (including the headline) further to a complaint from the National Post. The second work in which copyright infringement was alleged was a photograph published on a photographer's website. The photograph was not reproduced on Free Dominion however a link to the photograph was posted.

© Rohan Kar

The Federal Court of Canada dismissed both claims. It held that three and a half paragraphs was not a "substantial part" of an article and that Free Dominion had therefore not infringed the National Post's copyright. It is interesting to note that whilst in Canada three and a half paragraphs, including a headline, is not deemed to be a "substantial part", in the UK an extract consisting of  265 characters can be a substantial part of an article for the purpose of copyright infringement.

Further, the Federal Court found that even if the copying was substantial, the article had been used for the purpose of news reporting and was therefore fair dealing. As noted above this defence is not available in this context in the UK, however in Canada the court held that fair dealing should be given a "large and liberal" interpretation therefore news reporting could include posting extracts from articles online.

As regards the provision of a link to a photograph, the Federal Court held that the link was not copyright infringement. The court found that the photographer had authorised the communication of the work by posting the photo online, and noted that the photographer could remove the photo if he wanted to prevent people from linking to it.

This blogger is not aware of the UK courts having directly considered this question, however as noted above, the High Court for England and Wales has summarily found that it is possible to be liable for linking to defamatory material. We have yet to hear the outcome of this case, in contrast however last year the Supreme Court of Canada ruled against attributing a defamation claim to online links.

It seems that the English and Canadian courts are taking very different approaches to online liability, however if the Free Dominion case is appealed (which seems likely) the lay of the land may yet change again. In the meantime this case provides reassurance for bloggers and users of social media sites in Canada that they may include short extracts from published material and may link to other sites without fear of reprisal.

Down, Beuys!

In as dispute between the heir of famous German artist Joseph Beuys and a museum (Schloss Moyland), the Regional Court of Dusseldorf (OLG Düsseldorf) held that the museum would have required permission from Beuys/his heir for an exhibition of photographs by Manfred Tischer showing a live performance by Joseph Beuys. The court held that Beuys’ live performance qualified as an artistic work (there’s no fixation requirement under German law) and the photographs constituted an unauthorised adaptation rather than free use. Please read Birgit’s excellent IPKat post (here) for all the details.

OLG Düsseldorf, 30 December 2011 – I 20 U 101/09, press release (in German) here

When Birss meets Bus: a study in Red and Gray

This weblog has received a note from Andy Johnstone on a recent copyright decision in which he reflects the concern of a number of recent correspondents.  Andy explains as follows:

"The week before last in the Patents County Court for England and Wales, His Honour Judge Birss QC gave judgment in Temple Island Collections Ltd v New English Teas Ltd & another [2012] EWPCC 1 which, while it is not binding on the High Court, nevertheless appears to represent a new and perhaps worrying development in copyright law. 

The case involved two photographs of a Routemaster London bus on Westminster Bridge with the House of Parliament in the background. Or perhaps that should read pseudo-photographs-- as both images were the result of varying degrees of post-production manipulation. However, nothing turned on that as the judge found that, even if they were collages, each potentially attracted copyright.

Looking at the two images, one is clearly not a faithful reproduction of the other. Yet the image on the right (the defendant's) was held to infringe the complainant's (above). It can be seen that they share a lot of the same 'look and feel' in the way the subject has been rendered -- but it has long been felt (see Laddie, Prescott & Vitoria paras 4.60 and 4.61) that the taking of two photographs of the same scene, especially where that scene is somehow iconic or distinctive, does not lead to infringement because each is original by virtue of to the creative input of the two photographers. In other words the 'idea' element assumes a lesser importance because it is obvious, and emphasis shifts to the 'fixing' of the idea. In this regard each photographer is independent of the other and so each has an equal claim to copyright in his or her respective work. 

Where this latest decision is of concern is that it seems to draw too heavily on the sort of analysis one might use to determine similarity in a trade mark. Judge Birss was clear that he had dismissed any suggestion that this case might have had overtones of passing-off, given that the two images were often to be found side-by-side on products aimed at tourists. But despite that he seems to have been persuaded to examine the 'idea' much more extensively than the way in which it was fixed. 

One factor which weighed against the defendant was the fact that he knew of the existence of the claimant's image before he created his own image. Indeed, he could hardly deny this since he  had lost an earlier action involving exactly the same claimant's image and another of his (the defendant's) which was very much more similar than the image in this case. Taking that as the starting point, the judge decided the case on the degree to which the second image used substantial elements from the claimant's image -- not in any mechanical sense of copying, but in the selection and emphasis of them. This is a long way from the argument in the American decision in Bridgeman Art Library v Corel, which involved the photographic reproduction of a painting, where it was held no copyright existed in the photograph because of a lack of originality. In the action before him, Judge Birss acknowledged the defendant's creative input by saying that his was a derivative work capable of copyright protection, but for the infringement which had been brought about by not having the permission of the owner of copyright in the underlying work. 

Another slightly surprising factor in this action was that several other examples of what might be termed 'prior art' were offered to the court, clearly indicating that there was nothing particularly novel about either the claimant's composition or rendition of his image. However the submission of this evidence did not alter the finding that the defendant used a substantial part of the claimant's work as the source for his own image. 

Most professional photographers are likely to find this decision worrying because it undermines the prevailing view of copyright within the industry".

If the learned judge's analysis, based on (among other things) the view of the Court of Justice in Case C-5/08 Infopaq as to what constitutes the protectable subject matter of an author's work, is correct, the advice which I have given law students since I first taught copyright in the 1970s is no longer reliable, that the photographer who recreates the effect of another's photograph of a public scene or monument is now a copyright infringer, and that there may now be a notion of copyright in an idea, a lay-out or a scheme for such a photograph.

I am also intrigued at the submission of evidence of 'prior art' in the form of a series of London bus-related photographs from Getty Images here, here, here, here, here, here and here. It seems to me that Corelli v Gray [1913] 29 T.L.R. 116 establishes that, once the claimant company has established that copyright exists in its work, that it owns the copyright and that  the defendant's work is similar, 'prior art' will avail the defendant if he can show that both he and the claimant copied from the same work -- and, by the same reasoning, Corelli v Gray should assist him if he can show that he infringed one of the Getty Images rather than the claimant's one. But wouldn't that be a case of jumping out of the frying-pan and straight  into the fire?

My love is your love. So is my copyright?

A shot from the Numéro 93 editorial

Two months after she settled a lawsuit for copyright infringement brought by photographer David LaChapelle for the video of her song S&M and faced another lawsuit from photographer Phillipp Paulus over a scene in the same video, pop idol Rihanna is back on the copyright scene.

As reported by The Huffington Post, her new Melina Matsoukas-directed video You da one (which was released last week) may result in another lawsuit being brought by Norwegian fashion photographer Sølve Sundsbø.

Sundsbø has worked for clients such as Chanel, Cartier, Dolce&Gabbana, Hermès, H&M, Levis, Nike and YSL and has created editorials for leading fashion magazines.

Rihanna as she looks in her new
hit video

Among the other things, the photographer is known for his work with shadows and manipulated light, such as the editorial Points a la Ligne, which he created in 2008 for Numéro 93 magazine. This is a series of shots in which Lithuanian model Edita Vilkeviciute is portrayed with the shadows of various shapes projected on to her body.

 It now seems that the video of You da one is somehow similar to Sundsbø's pictures.

 In the b/w video, the Bajan singer wears a number of outfits and wigs, which are said to be inspired by Kubrick's film A Clockwork Orange.

However, the scenes which show Rihanna in a bowl-cut wig while wearing a flesh coloured bodysuit, as shadows in the shape of stripes or dots create a pattern across her skin, may recall the images by Sundsbø.

We'll see what happens next. Stay tuned.

Copycat, copy Kate?

High-end US jewellery designer David Yurman was pretty upset when he found out that French competitor FRED's new ad campaign by Sonia Sieff featured supermodel Kate Moss, not for any particular reason except that Ms Moss had been featured in Yurman's campaign by Peter Lindbergh shortly before. Moreoever, the model appears portrayed there in a way which Yurman deems to be "embarrassingly similar" to his own ad campaign.

In particular, Mr Yurman claims that in one b/w ad from his Spring 2011 campaign Kate Moss holds up a watch on her right arm to her parted lips, simultaneously pulling at a few strands of hair near her face. A similar colour image to promote LVMH's FRED shows Moss wearing a set of rings on various fingers with two hands up to her mouth, also pulling at a few tousled strands of hair.

In another b/w photograph by Lindbergh Kate Moss is portrayed naked, lying on her stomach on a furry white rug, wearing Yurman bracelets on her left arm. FRED campaign includes a colour photograph of the model lying topless on her stomach on a black fluffy rug, wearing leather trousers and rings on her right hand, but with a similar expression to that of the Yurman image.

As far as we know, no legal action has been taken against FRED yet. However, readers of this Blog may be interested in discussing this case, as the alleged similarities between the two campaigns are certainly strengthened by the fact that both feature the same subject showing similar facial expressions ...

More on this story on The New York Post here

Painer: pain for the press?

On 1 December the Court of Justice delivered its 150-paragraph ruling in Case C-145/10 Eva-Maria Painer v Standard VerlagsGmbH, Axel Springer AG, Süddeutsche Zeitung GmbH, SPIEGEL-Verlag Rudolf AUGSTEIN GmbH & Co KG and Verlag M. DuMont Schauberg Expedition der Kölnischen Zeitung GmbH & Co KG (Opinion of AG Trstenjak noted by the IPKat back in April here).

As our readers may remember, this case was a reference for a preliminary ruling from the Handelsgericht Wien (Austria), in the context of proceedings for copyright infringement brought about by photographer Eva-Marie Painer against some Austrian and German newspaper and magazine publishers.

Ms Painer is a freelance photographer and took several photographs of Natascha Kampusch  designing the background, deciding the position and facial expression, and producing and developing them. Ms Painer sold the photographs which she produced, but without conferring on third parties any rights over them and without consenting to their publication. After Natascha Kampusch was abducted in 1998, the competent security authorities launched a search appeal in which the photographs by Ms Painer were used. Following Natascha’s escape from her abductor in 2006 and prior to her first public appearance, the defendants in the main proceedings published such photographs in newspapers, magazines and websites without, however, indicating the name of the photographer, or indicating a name other than Ms Painer’s as the photographer. They claimed that they had received the contested photographs from a news agency without Ms Painer’s name being mentioned or with a name other than Ms Painer’s name being indicated as the photographer’s. Several of those publications also featured a portrait, created by computer from the contested photographs, which, since there was no recent photograph of the girl until her first public appearance, was a photo-fit of Natascha.

In 2007, Ms Painer sought an order that the defendants in the main proceedings immediately cease the reproduction and/or distribution, without her consent and without indicating her as author, of the contested photographs and the contested photo-fit. The Oberster Gerichtshof held that the defendants in the main proceedings did not need Ms Painer’s consent to publish the contested photo-fit. Despite being the contested photograph which had been used as a template for the contested photo-fit a photographic work protected by copyright, the production and publication of the contested photo-fit was not an adaptation for which the consent of Ms Painer was needed. Anyway, the court decided to stay the proceedings and revert to the Court of Justice, seeking clarification of four questions:

(1) Is Article 6(1) of Regulation No 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters [aka Brussels I] to be interpreted as meaning that its application and therefore joint legal proceedings are not precluded where actions brought against several defendants for copyright infringements identical in substance are based on differing national legal grounds the essential elements of which are nevertheless identical in substance – such as applies to all European States in proceedings for a prohibitory injunction, not based on fault, in claims for reasonable remuneration for copyright infringements and in claims in damages for unlawful exploitation?

The Court held that Article 6(1) must be interpreted as not precluding its application solely because actions against several defendants for substantially identical copyright infringements are brought on national legal grounds which vary according to the Member States concerned. It is for the referring court to assess, in the light of all the elements of the case, whether there is a risk of irreconcilable judgments if those actions were determined separately.

(4) [which the Court deemed it appropriate to address after Question 1] Are Article 1(1) of Directive 2001/29 in conjunction with Article 5(5) thereof and Article 12 of the Berne Convention, particularly in the light of Article 1 of the First Additional Protocol to the European Convention for the Protection of Human Rights and Fundamental Freedoms and Article 17 of the Charter of Fundamental Rights of the European Union, to be interpreted as meaning that photographic works and/or photographs, particularly portrait photos, are afforded “weaker” copyright protection or no copyright protection at all against adaptations because, in view of their “realistic image”, the degree of formative freedom is too minor?

By referring to the ruling in Infopaq (noted in this Blog here), the Court first recalled that copyright is liable to apply only in relation to a subject-matter, such as a photograph, which is original in the sense that it is its author’s own intellectual creation, i.e. 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 (see, a contrario, Joined Cases C‑403/08 and C‑429/08 Football Association Premier League and Others [2011] ECR I‑0000, paragraph 98).

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 lighting. When taking a portrait photograph, 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 one 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’. Consequently, as regards a portrait photograph, the freedom available to the author to exercise his creative abilities will not necessarily be minor or even non-existent.

In view of the foregoing, a portrait photograph can be protected by copyright if – which it is for the national court to determine in each case – such photograph is an intellectual creation of the author reflecting his personality and expressing his free and creative choices in the production of that photograph.

Coming to the question whether such protection is inferior to that enjoyed by other works, particularly photographic works, the Court observed that nothing in Directive 2001/29 or in any other directive applicable in this field supports the view that the extent of such protection should depend on possible differences in the degree of creative freedom in the production of various categories of works. Therefore, as regards a portrait photograph, the protection conferred by Article 2(a) of Directive 2001/29 cannot be inferior to that enjoyed by other works, including other photographic works.

(3)(a) [which the Court decided to address next] Is Article 5(3)(e) of Directive 2001/29, in the light of Article 5(5) thereof, to be interpreted as meaning that in the interests of criminal justice in the context of public security its application requires a specific, current and express appeal for publication of the image on the part of the security authorities, i.e. that publication of the image must be officially ordered for search purposes, or otherwise an offence is committed?

(b)If the answer to question 3a should be in the negative: are the media permitted to rely on Article 5(3)(e) of [Directive 2001/29] even if, without such a search request being made by the authorities, they should decide, of their own volition, whether images should be published “in the interests of public security”?

(c)If the answer to question 3b should be in the affirmative: is it then sufficient for the media to assert after the event that publication of an image served to trace a person or is it always necessary for there to be a specific appeal to readers to assist in a search in the investigation of an offence, which must be directly linked to the publication of the photograph?

As a preliminary point, the Court observed that the provisions of Directive 2001/29 do not expressly address the circumstances in which the interests of public security can be invoked with a view to the use of a protected work, meaning that, though the Member States which decide to enact such an exception enjoy a broad discretion in that respect, such discretion must comply with the need for legal certainty for authors with regard to the protection of their works and, in any case, is limited by Article 5(5) of the Directive. The Court held that the media, such as, in this case, newspaper publishers, cannot be allowed to confer on themselves the protection of public security. Only States, whose competent authorities are provided with appropriate means and coordinated structures, can be regarded as appropriate and responsible for the fulfillment of that objective of general interest by appropriate measures including, for example, assistance with a search appeal. Such a publisher cannot, therefore, of its own volition, use a work protected by copyright by invoking an objective of public security. However, the Court added that it is conceivable that a newspaper publisher might, in specific cases, contribute to the fulfilment of such an objective by publishing a photograph of a person for whom a search has been launched. In any case, it should be required that such initiative is taken, first, within the framework of a decision or action taken by the competent national authorities to ensure public security and, second, by agreement and in coordination with those authorities, in order to avoid the risk of interfering with the measures taken by them, without, however, a specific, current and express appeal, on the part of the security authorities, for publication of a photograph for the purposes of an investigation being necessary.

(2)(a) Is Article 5(3)(d) of Directive 2001/29, in the light of Article 5(5) of that directive, to be interpreted as meaning that its application is not precluded where a press report quoting a work or other protected matter is not a literary work protected by copyright?

(b) Is Article 5(3)(d), in the light of Article 5(5) thereof, to be interpreted as meaning that its application is not precluded where the name of the author or performer is not attached to the work or other protected matter quoted?

The Court observed – inter alia - that Article 5(3)(d) of Directive 2001/29 sets out a series of conditions for its application which do not include a requirement that a work or other protected subject-matter must be quoted as part of a literary work protected by copyright. Therefore the proviso must be interpreted as not precluding its application where a press report quoting a work or other protected subject-matter is not a literary work protected by copyright. As a consequence, it must be interpreted as meaning that its application is subject to the obligation to indicate the source, including the name of the author or performer, of the work or other protected subject-matter quoted. However if, in applying Article 5(3)(e) of Directive 2001/29, that name was not indicated, that obligation must be regarded as having been fulfilled if the source alone is indicated.

The decision of the Court may lead the readers of this Blog to engage in reflections and comments upon the well-known tendency – at the level of EU judiciary – to tackle the concept of originality as a means to define the scope of protection. This case may also raise observations as to the related issue of copyright limitations …