Friday, 18 August 2017

Tattoo Copyright Infringement Suit Dribbles On

Readers of this blog may remember that Solid Oaks Sketches filed a copyright infringement suit against Take-2 Software, the maker of the NBA 2K video game, claiming that its reproduction of several tattoos worn by famous basketball players was copyright infringement. The case is still ongoing in the Southern District of New York, and defendants filed this month a motion for judgment on the pleadings, where they argue that the use was fair use. HT to the Hollywood Reporter.

Solid Oaks bought the copyright for the tattoos of Eric Bledsoe, Lebron James, and Kenyon Martin, which were created by several tattoo artists. These players appear in the NBA 2K game, complete with their tattoos. Solid Oaks claims this is copyright infringement. Take-2 argues that the use is de minimis and fair use.
A real-life depiction

The tattoos “only appear on the players on which they were inked in real life, not other real-world players or fictional characters” (p. 13). Indeed, the NBA 2K game, which is updated every year, depicts over 400 current and retired NBA players “realistically. …These depictions have realistic facial and physical features… They wear jerseys and sportswear with the numbers, colors and logos of their teams. The game even depicts NBA-branded socks” (p.9).

The tattoos at stake were each created specifically for the players. As explained in the motion, “[e]ach tattoo was created as a custom tattoo intended only for the player on which it was inked… Thus, they are imbued with special meaning for the players. For instance, Solid Oak admits that “Child Portrait Tattoo Artwork” depicts LeBron James’s son… Similarly, “330 and Flames Tattoo Artwork” depicts the number 330, which is the area code for Mr. James’s hometown” (p. 12).

Defendant argues that Plaintiffs “seek to hinder the ability to depict people as they appear in real life” (p.6), and that Plaintiff is contending that these famous basketball players must now seek its permission each time they appear in public, in films, or when being photographed.

Use is de minimis

Defendant is arguing that the use of the protected work is de minimis. “[T}rivial copying does not constitute actionable infringement” Newton v. Diamond, 388 F.3d 1189, 1193.

There are 400 players available in the video game, and so the tattoos only appear when the three players featuring the tattoos which copyright is owned by plaintiff appear in the game. Also, the tattoos appear very small in the game and thus are very difficult to see. For Defendant’s the tattoos “are just one of the myriad of elements that makeup NBA 2K” (p.13).

Use is fair use

Defendant is also arguing that it “is not a rival tattooist that has replicated a creative design and inked it on a new person. Rather, its use is completely different in a massive, highly creative video game featuring a virtual world that only uses player tattoos to realistically capture how the players actually look. Each of the factors that courts consider supports a finding of fair use.”

Defendant reviewed each of the four fair use factors and argued that each of the factors is in its favor.

The first factor, the purpose and character of the use, is in Take-Two’s favor because it “uses the Tattoos for a different purpose than that for which they were originally created. While the Tattoos originally were created as the NBA players’ self-expression, Take-Two uses them merely to replicate how the players appear in real life.”

The second factor, the nature of the copyrighted work, should also be in Defendant’s favor because “Take-Two uses them to depict the world accurately.”

The third factor, the amount and substantiality of the portion used, should be in Defendant’s favor because the “use was reasonable given that its purpose was to depict real life accurately, and using any less of the Tattoos would defeat that purpose.”

The fourth fair use factor, the effect of the use upon the potential market, should be in Defendant’s favor because Plaintiff “admitted that it is contractually prohibited from inking the Tattoos on other people, meaning that Take-Two’s use cannot harm that market.”

What about right of publicity?

This is a copyright infringement suit and the players are not parties in the suit. However, one could imagine that they could file a suit against the owner of the copyright of their tattoos for tortious interference in contractual relations, if not owning the copyright of their tattoos would prevent them from licensing their likeness. On the other hand, one can argue that the owner of the copyright has the right to be financially compensated if the work is reproduced, especially for in a commercial venture.

These players are celebrities, but our likeness is more and more used for marketing purposes. A few thousand followers on social media may land us all a lucrative marketing deal. If we sports tattoos but do not own their copyright, should we secure a license before posting selfies? As Jack London once said [on Twitter]: Show me a man with a tattoo and I'll show you a man with an interesting copyright license.

Wednesday, 16 August 2017

The CopyKat - mid August musings for copyright monkeys

For years in the USA, there's been ample debate and scholarly literature over whether there really exists a crime for secondary copyright infringement. On Friday, a federal judge in Illinois probably made the day for big copyright holders by ruling that the U.S. Government has properly indicted Artem Vaulin, the alleged founder of KickassTorrents. A copy of the judgment can be viewed in full here.
Vaulin is currently in a jail cell in Poland after the 31-year-old was charged last year by U.S. authorities with running one of the world's most popular places to illegally obtain movies, television shows, songs and video games.
Judge John Lee takes up the issue of whether secondary liability for copyright infringement can be extended from the civil realm to the criminal one. In his decision the judge says that Vaulin is basically missing the big picture.
"[A]s should be clear by now, the indictment does not charge Vaulin with common law secondary liability... Rather, the indictment relies on the text of the congressionally enacted conspiracy and aiding and abetting statutes... Thus, the indictment charges Vaulin not with crimes based upon common law theories, but for conduct made unlawful under unambiguous statutes."
Dawn of Planet of the Apes Halted as Peta call time on Monkey Selfie Case

Naruto, via his self-appointed lawyers from the People for the Ethical Treatment of Animals, is in the process of dropping his lawsuit over the now infamous monkey selfies. That's according to a Friday legal filing with the San Francisco-based 9th US Circuit Court of Appeals, which is being asked to hold off on issuing a ruling that everybody believes is going to go against Naruto.
Nobody would say publicly what the deal is, or why this is happening. However, during oral arguments in the case last month, a three-judge panel of the court of appeals eviscerated Naruto's arguments.

On the positive side though, PETA's lawsuit has prompted public discourse about the idea of animals owning property. And that's why this lawsuit may have been about nothing more than monkey business all along.

Sony is being sued for using a song by glam rock band T. Rex in summer blockbuster Baby Driver "without permission".
The son of late frontman Marc Bolan has filed a lawsuit accusing the studio of copyright infringement over the use of the band's hit Debora. A full copy of the suit can be viewed here.
Feld Bolan won the rights to the works of his father's band three years ago and is seeking punitive damages.
"Inexplicably, defendants failed to obtain - or even seek - the permission of the composition's US copyright holder Rolan Feld," said the complaint filed in Los Angeles federal court.
Feld was made aware of the use of 'Debora' when a Sony Music representative contacted his lawyer to request a licence to use the track on the movie's soundtrack release. The complaint claims that Feld then let Sony know that use of the song in the movie was "unauthorised", but Sony is said to have responded with "conflicting explanations", and Feld says they have now ceased communications.

Cards Against Humanity owns copyright number TX0007492177 at the US Copyright Office for its “base” set and numerous other copyright for its expansion packs.

The company has used the trademark ‘Cards Against Humanity’ since 2009, along with the tagline “A party game for horrible people”, its trade dress, which consists of white lettering on a black background with vertically aligned text, and a three-card design.

Cards Against Humanity is sold to US consumers through Amazon, its own website, eBay and, since 2014, various selected retail stores. A US judge has granted the owners of card game Cards Against Humanity an injunction against Skkye Enterprises, a company accused of selling counterfeit versions of the game. 

Cards Against Humanity filed a copyright and trademark infringement claim(pdf) against Skyye in September 2016 at the US District Court for the Eastern District of Missouri.
District Judge Audrey Fleissig granted (pdf) a permanent injunction and default judgment on Wednesday, August 9.On copyright infringement, Fleissig said that an award of $12,000 per infringement, totalling $60,000—or three times the highest estimated sales of defendants’ infringing game—in combination with the other damages, is a “just and suitably deterrent outcome”.The court awarded $20,000 per trademark infringement, for a total award of $60,000, which Fleissig said “compensates plaintiff in a fashion consistent with the purposes of the Lanham Act and case law”.

Cards Against Humanity was also granted an injunction against Skkye, along with an order for destruction of infringing goods.It was also awarded attorneys’ fees, subject to a further submission to the court on their reasonableness.

This CopyKat from Matthew Lingard

Saturday, 5 August 2017

Former Professional Wrestler Sues Van Morrison for Using his Likeness without Authorization

Billy Two Rivers, a former professional wrestler, is suing musician Van Morrison and his record label company, claiming that, by using his likeness on the cover of the upcoming Roll With the Punches album, they infringed his right of publicity, as protected by New York State’s statutory right to publicity, New York Civil Rights Law §§ 50 and 51, and false endorsement under the Trademark act. The case is Two Rivers v. Morrison, 1-17-cv-05720 (Southern District of New York).

To say that Plaintiff has had an interesting life is an understatement, as he was a professional wrestler from 1953 to 1977, competing in Canada, the U.S. and abroad. He appeared in ten films and television programs. After retiring, he was for 20 years a leader of the Mohawk nation on the Kahnawake reservation, as an elder and a counselor. He is still recognized as an elder and advisor to the First Nations people. The British band The Dogs D’Amour named a song after him in 1988, and Pulitzer Prize-winner Paul Muldoon wrote a poem, “My Father and I and Billy Two Rivers”, about watching Plaintiff competing in a wrestling match. A British racing horse was named after him, with Plaintiff’s consent. 

Roll With the Punches will be Van Morrison’s 37th studio album and is set for release on September 22, 2017. Its cover features a black and white photo of Plaintiff engaged in a wrestling match. The cover of the album was used to promote Van Morrison’s tour, and generally to promote the sale of the album, both online and off-line. Plaintiff claims he did not authorize the use of this photo for the album cover. The complaint alleges that he was not even contacted by Defendants.

New York Civil Rights Law § 50, enacted in 1903, makes it a misdemeanor for “[a] person, firm or corporation [to use] for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person, or if a minor of his or her parent or guardian...” We saw in a former post that the New York Legislature is actively trying to expand the scope of the law. However, Plaintiff does not need such expansion to file his suit. If the fact alleged in the complaint can be proven, it is a clear case of unauthorized use of likeness for commercial purposes.

Plaintiff is asking the court to enjoin any further use or dissemination of the cover, and to permanently dispose of the albums already produced. He is also asking the court to award him punitive damages.  The case just settled out of court.

Thursday, 3 August 2017


Linns Stamp News tell us that a federal judge has ordered a dispute over the "Lady Liberty" stamp that the United States Postal Service mistakenly produced in 2010 to go to trial in September. Federal Claims Court Judge Eric G. Bruggink rejected motions by both the Postal Service and sculptor Robert S. Davidson that would have effectively ended a four-year-old lawsuit over a stamp that was based on a replica of the Statue of Liberty. Davidson created the Lady Liberty replica, which stands outside the New York, New York Hotel & Casino in Las Vegas. The postal official who oversaw stamp designs later said he would have never selected that image if he had realised it featured a replica - which also would have protection as a  “sculptural work”  under the US Copyright Act with the Judge noting “There is no question that plaintiff was invoking the Statue of Liberty, in his replica, but he argues that his intent was not merely to copy and that the replica is unique.” The error was identified by Sunipix, a stock photo agency in Texas. Wikipedia says ten and a half billion of the stamps were produced.

A photographer is suing consumer products giant Procter & Gamble in the US, accusing the corporation and the world’s largest advertiser of not paying her for photos that have appeared on Olay packaging and marketing materials used around the world. The Cincinnati Enquirer reports that 46-year-old Annette Navarro has spent over a decade photographing models who have graced the packaging of a number of notable consumer products. Her photos have also been used by P&G $2 billion Olay skin care brand for 14 years. Navarro is accusing P&G of using her photos beyond the scope of her license, which limited usage to within North American and a 3 year period. 

And more photography: US District Judge Sidney H. Stein has just ruled that the case between photographer Donald Graham and 'appropriation artist' Richard Prince can proceed. Graham took issue with Prince for using his images in an exhibition of re-appropriated Instagram images at the Gagosian Gallery in NYC - and Graham never gave any permission for his image titled “Rastafarian Smoking a Joint” to be used. Many comment that any 'transformation' is minimal (at best), being little more than enlarged Instagram screenshots. Judge Stein said “The primary image in both works is the photograph itself. Prince has not materially altered the composition, presentation, scale, color palette and media originally used by Graham.” Prince escaped relatively unscathed in his last battle, Cariou v Prince, with the appellate court saying "Here, our observation of Prince's artworks themselves convinces us of the transformative nature of all but five".

And finally on photography, a New York federal court judge handed a photographer a mixed result when the court dismissed her copyright infringement claim but allowed her Digital Millennium Copyright Act (DMCA) allegations to move forward in a dispute that began on Instagram. The case involves photojournalist Matilde Gattoni, based in Italy, who photographed a colourful building in Essaouira, Morocco, that included the figure of a woman in a long dress walking down an empty street. In August 2016, she placed the photograph—which has a pending copyright registration in the United States—on her Instagram page, accompanied by a copyright notice. Gattoni claims that one month later, clothing retailer Tibi copied and cropped the photograph (removing the woman) and placed this image on the company’s social media page without licensing the image or obtaining her consent to use it. But US copyright had only been applied for, not registered, so could there actually be an infringement?  There's an excellent article from Jesse M. Brody of Manatt Phelps & Phillips LLP here on Lexology that analyses this and the DMCA claim. Well worth a read.

A New York judge has dismissed a lawsuit brought the estate of promoter Sid Bernstein, who staged the Beatles’ legendary 1965 show at Shea Stadium. The Estate had argued that band’s Apple Corps had infringed on the copyright of Sid Bernstein Presents by including footage from the concert in Ron Howard's  documentary film Eight Days a Week - the Touring Years which was released in September 2016.  The Estate's action sought ownership (or joint ownership) of the master tapes and copyright by Bernstein’s company, Sid Bernstein Presents, arguing that, “[w]ithout Sid, the mastermind of the event, this film would never have been made”. In a ruling on the 26th July, Judge George B. Daniels, in the US District Court for Southern New York, said the company could not claim ownership of the footage as Bernstein did not himself film the concert, instead signing over the rights to do so to Nems. Judge Daniels held:  “The relevant legal question is not the extent to which Bernstein contributed to or financed the 1965 concert .... [R]ather, it is the extent to which he ‘provided the impetus for’ and invested in a copyrightable work" and “The complaint and relevant contracts clearly refute any such claim by Bernstein. By the express terms of the Nems-Bernstein contract, Bernstein had no control over the filming of the concert” and that the contract signed in 1965 “reserves no rights whatsoever for Bernstein in any filming or recording of the concert.”

Billboard reports that Beyonce's legal team is going to have to work a little harder to defeat a copyright infringement lawsuit over her hit "Formation." Spoken word from the late Anthony Barre (also known as Messy Mya) features on the song, and his estate sued in February for copyright infringement, (there are other claims). Barre's voice is heard saying “What happened at the New Orleans,” “Bitch, I’m back by popular demand” and "Oh yeah baby. I like that.” His sister, Angel Barre, claims the samples infringe the rights in two works of her brother's performance art, "A 27 Piece Huh?" and "Booking the Hoes from New Wildings." Louisiana federal judge Judge Nannette Jolivette Brownon denied Beyonce's motion to dismiss the copyright claim on fair use grounds and noted that Barre had made a case that Beyonce's use of the clips was not transformative and that, although the samples were short, it was a "qualitatively significant" use". Judge Nannette Jolivette didn't t agree with Barre's argument that the fair use doctrine doesn't apply to the digital sampling of a sound recording. Judge Brown also denied the motion to dismiss Barre's false endorsement and Louisiana Unfair Trade Practices Act claims, but did dismiss a claim for unjust enrichment.

Tuesday, 1 August 2017

Cabin Fever: Is Reconstructing a Work to Preserve It Copyright Infringement?

Lolita wrote about this copyright infringement suit on last week’s CopyKat. It deserves a second glance.

Artist Cady Noland created her Log Cabin sculpture in the nineties, which is made out of wood and resembles the façade of a log cabin, along with two U.S. flags which are “an integral part of the sculpture.” The work is approximatively 12 feet high, 18 feet long, and a little less than 6 feet wide.

Art collector Wilhelm Schurmann bought the work in the nineties. He loaned it to a museum which exhibited it outside for ten years. Log Cabin was then exhibited at the Michael Janssen Gallery. However, it had deteriorated over time, and an art conservator recommended in 2010 to reconstruct it entirely with new materials and new logs. The complaint alleges that Cady Noland was not informed about this decision at the time but instead learned for the first time in 2014 that the work had deteriorated, had been reconstructed, and the decayed material thrown away.

Cady Noland has taken the position that her work has thus been destroyed, and filed a copyright infringement suit in the Southern District of New York against the Michael Janssen gallery, Michael Janssen, and Wilhelm Schurmann, claiming that rebuilding Log Cabin was copyright infringement, and that its destruction had violated her moral rights under the Federal Visual Artists Rights Act of 1990 (VARA), 17 USC § 106A.
This is not the first time Log Cabin is at the origin of a law suit. The Michael Janssen Gallery had found a buyer for the work in 2014, but Candy Nolan disowned it after discovering it had been rebuilt. The deal fell through, as the purchase agreement had a clause which directed the gallery to buy back the work if the author disowned it. The buyer then sued the gallery claiming he was owed money, but lost.

Disowning a work

VARA, 17 USCA § 106A(a)(2),  gives the authors of some works of visual arts the right “to prevent the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation. . . ." Cady Nolan used her right under VARA for Log Cabin. She also disowned her Cowboys Milking work, and was then sued in 2012 by the art dealer who had consigned it to Sotheby’s, which had to take it down from sale following the disownment. The owner of the work then sued the artist and the auction house, but lost.

A little bit of comparative law… Article L. 121-4 of the French Intellectual Property Code gives authors the right to disown their work, provided that they financially compensate the owner of the work.

Is Log Cabin protected by copyright?

The complaint in our case informs that Log Cabin is not registered with the Copyright Office, as copyright registration has been refused. Plaintiff is seeking to have her ownership of Log Cabin’s copyright recognized by a declaratory judgment. 

Since Cady Noland has disowned her work, should her request be interpreted as asking the court to declare that she owned the copyright in the original Log Cabin, now destroyed? Or is Cady Nolan only, or also, asking the court to declare that she owns the copyright in Log Cabin, in its current state?

For the sake of discussion, let’s assume that Cady Noland owns Log Cabin’s copyright.

Is rebuilding Log Cabin copyright infringement?

Section 106 of the Copyright Act grants several exclusive rights to an owner, among them the right to reproduce the work: “the owner of copyright under this title has the exclusive rights to … reproduce the copyrighted work in copies or phonorecords.” If Log Cabin is indeed protected by copyright, and if Cady Nolan owns that copyright, only she has the right to reproduce it. Cady Nolan considers the reconstructed Log Cabin an unauthorized copy, not an act of preservation.

VARA gives authors of a work of visual arts the right “to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation, and any intentional distortion, mutilation, or modification of that work is a violation of that right, and… to prevent any destruction of a work of recognized stature, and any intentional or grossly negligent destruction of that work is a violation of that right.”

Does the owner of a work protected by copyright have a duty to preserve it?

Cady Nolan also claims that Wilhelm Schurmann was negligent or indifferent in preserving the work, which led to its deterioration, and thus its destruction, leading to the violation of Plaintiff’s copyright and moral rights. 

The case is an Art Law professor’s dream come true…

Monday, 31 July 2017

So farewell then Section 73 CDPA...

Section 73 of the Copyright, Designs and Patents Act 1988 (CDPA) is repealed with effect from today, 31 July, as a result of the coming into force of section 34 of the Digital Economy Act 2017 (DEA).

Section 73, commonly known as ‘the cable retransmission defence’, provides that the copyright in broadcasts of public service broadcast (PSB) channels is not infringed by retransmission via cable in the area where the broadcast is receivable. The section was,
according to DCMS, intended to encourage the rollout of cable services and ensure the provision of PSB channels across the UK by facilitating their retransmission in areas where aerial reception was poor. In effect, it allows cable platforms to retransmit PSB channels in the UK without paying fees.

A number of factors led to the demise of section 73. First, the Government considered that the objective of ensuring the availability of PSB channels throughout the UK had already been achieved, given the proliferation of platforms and the increase in cable networks’ capacity.

Second, concerns were raised about the ‘internet loophole’ opened by the defence. Relying on section 73, internet-based live streaming services argued that they were able to retransmit the content of PSB channels online without seeking permission or paying copyright fees. Thus, they could generate advertising revenues without transferring any benefit back to the public service broadcasters (PSBs), effectively exploiting the public funding granted to PSBs and directing legitimate commercial revenues away from the PSBs. There was cross-party agreement during the passage of the Digital Economy Bill that section 73 was never intended to be used in this way and the loophole it had created was liable to ‘fuel a vicious cycle of under-funding’.

Although not directly linked to its repeal, section 73 has also been declared incompatible with EU law, in the second ITV v TV CatchUp case, discussed by the IPKat here.

The repeal is expected to create what DCMS described as ‘a new market in copyright where one did not exist before’.  Or, as the Telegraph put it more bluntly last week "ITV readies hefty bill for Virgin Media".

The repeal of section 73 will also have the welcomed effect closing the loophole internet-based live streaming services had exploited. PSBs and underlying right holders may benefit from seeking retransmission fees from online service providers. The monetary value of their rights is yet to be ascertained but will this be the final chapter for TV CatchUp?  

Tuesday, 25 July 2017

THE COPYKAT - A copyright infringement oriented week!

This CopyKat by Lolita Huber-Froment

Let’s start with a videogame, shall we?

Many of you have already heard about League of Legends, a MOBA (Multiplayer Online Battle Arena) extremely famous in the videogame world. A lot of tournaments based on this game are organised each year, and its reputation spans America. And who says fame, says copyright infringement. 

A Chinese video game studio is currently accused of making a very similar version of League of Legends!

From the characters to the map, everything is very similar! A report took an example of one of the most prominent figure of the game, the young girl “Annie”. And as you see below, well, it seems very clear doesn’t it?

The owner of League of Legends, Riot Games, has sued the Chinese company in the federal court in Los Angeles for copyright and trademark infringement. And soon we will see how this battle is going to end!

Forever 21, again and again!

Forever 21 is once again being sued by Mara Hoffman for copying one of her original prints. According to it’s complaint, Forever 21 infringed her copyright-protected “Leaf” fabric print.

The complaint is as follow: according to Mara Hoffman, Forever 21 ““infringed [its] copyright by manufacturing, importing, displaying, distributing, selling, offering for sale, promoting and advertising women’s swimwear which exploit, use or otherwise incorporate a design unlawfully taken from Mara Hoffman’s copyrighted work.”

And apparently, it’s not the first time! Mara Hoffman said that she has been the target of Forever 21 in the past: in 2012 and in 2013.

She is seeking for monetary damages in connection with the alleged copyright infringement.

The case: Mara Hoffman, Inc. v. Forever 21, Inc., 1:17-cv-05393 (SDNY). 

“Reproduction” of an original work

A lawsuit filed in New York this week has at heart a quite complicated question: how much can you conserve an artwork before it becomes something entirely different?

Cady Noland claims that a conservator has been paid to repair her sculpture Log Cabin without consulting her. By “repair”, she claims that it was way beyond the bounds of normal conservation.

According to her, this reparation is so different from the original work that it became a copy of her work. For her, the conservator destroyed the original work and created an unauthorized reproduction. According to the law, this is copyright infringement – yes, again!

Key Ingredient in Ethiopian Cookbook Copyright Infringement Claim Found Missing by Federal Judge

District Judge Brian M. Cogan from the Eastern District of New York granted on July 19 the motion to dismiss of the author of an Ethiopian cookbook, who had been sued for copyright infringement by the author of another Ethiopian cookbook. The case is Schleifer v. Berns, 1:17-cv-01649.

Plaintiff had published in 2007 a cookbook of vegetarian Ethiopian recipes. A second edition was published in 2016. Plaintiff registered the work with the Copyright Office in December 2016. The two editions of the book, however, are not similar, as the book published in 2007 was done using a word processing program and its binding was a plastic spiral. Judge Cogan even found that it “is hardly even a book; it is closer to a pamphlet.” The book published in 2016 is done in a more professional way, but the two books are different in number of pages and recipes. Plaintiff claims the two versions are identical.  

Defendant published a cookbook of vegan Ethiopian recipes in 2015. Plaintiff filed a copyright infringement suit against her, who moved to dismiss.
No substantial similarities between the two works

The elements of a copyright infringement claim are (1) ownership of a valid copyright and (2) copying of constituent elements of the work that are original, Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., at 361. If plaintiff is not able to provide direct evidence of copying, he must show that defendant had access to the original work and that there are substantial similarities of material which can be protected by copyright in the two works. Ideas are not protected by copyright and so copying an idea is not copyright infringement.

Judge Cogan evaluated whether there was substantial similarities between the two cookbooks, as such a review is allowed at the pleadings stage on a motion to dismiss. In the Second Circuit, the standard test for substantial similarity between two works is “whether an ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal as the same,” Yurman Design, Inc. v. PAJ, Inc., at 111.

However, if the original work incorporates elements which are in the public domain, then the court must undertake “a more refined analysis” and look for “substantial similarity between those elements, and only those elements, that provide copyrightability to the allegedly infringed [work],” Boisson v. Banian, Ltd., at 272.

In our case, Plaintiff failed to show that there were such substantial similarities. Judge Cogan used a table to compare elements of both works (see p. 7). He found that the common words used in both books to describe Ethiopian foods, ingredients, or culinary traditions were not protectable by copyright.

“To the extent the two works have general similarities – including the fact that both are about vegetarian or vegan Ethiopian cuisine, the inclusion of illustrations of prepared dishes, and descriptions of foods as spicy, spongy, or the like – these elements simply do not amount to a claim for copyright violation.  Instead, they are “scènes à faire,” or “unprotectible elements that follow naturally from [the] work’s theme rather than from [the] author’s creativity.”  MyWebGrocer, LLC v. Hometown Info, Inc., 375 F.3d 190, 194 (2d Cir. 2004).”
Not an original compilation either

A compilation of facts which are not protected by copyright can by protected “if it features an original selection or arrangement of facts, so that the selection or arrangement possesses at least some minimal degree of creativity,MyWebGrocer at 193.  

However, Judge Cogan found both books to be “substantially dissimilar.” He noted that Defendant’s cookbook contained “ more than 185 pages of content, including cultural history, ingredients lists, shopping lists, over 140 recipes, and over two-dozen pages of photographs and illustrations” while Plaintiff’s 2007 cookbook contained “ only 46 numbered pages, including 12 recipes, six pages of commentary, a three-page interview, and nine pages of black-and-white photographs.”

Judge Cogan also found the “total concept and feel” of the two books to be distinct. As “the abstract similarities that “follow naturally” from the works’ common theme of vegetarian Ethiopian cooking are not protectable” (Lapine v. Seinfeld, at 83 (2d Cir. 2010)), the two works were not similar. In Lapine, the two books were explaining how to incorporate pureed vegetables into recipes.
Image is courtesy of Flickr user Jackie Finn-Irwin under a CC BY 2.0 license.

Sunday, 23 July 2017

What can the possible implications of the CJEU Pirate Bay decision be? A new paper

[Apologies for the cross-posting to those readers who also subscribe to The IPKat, where this post was originally published on 22 July 2017]

As reported, on 14 June last the Court of Justice of the European Union (CJEU) issued its much-awaited judgment in Stichting Brein v Ziggo BV and XS4All Internet BV, C-610/15 (the Pirate Bay’ case).

There, the Court developed further its construction of the right of communication to the public within Article 3(1) of the InfoSoc Directive, and clarified under what conditions the operators of an unlicensed online file-sharing platform are liable for copyright infringement.

The CJEU judgment builds upon the earlier Opinion of Advocate General (AG) Szpunar in the same case [reported here], yet goes beyond it. This is notably so with regard to the consideration of the subjective element (knowledge) of the operators of an online platform making available copyright content. Unlike AG Szpunar, the Court did not refer liability only to situations in which the operators of an online platform have acquired actual knowledge of third-party infringements, but also included situations of constructive knowledge (‘could not be unaware’) and, possibly, even more.

Overall, the CJEU decision is not limited to egregious scenarios like the one of The Pirate Bay: the Court’s findings are applicable to different types of online platforms, as well as operators with different degrees of knowledge of infringements committed by users of their services.

In my view the judgment is expected to have substantial implications for future cases (including at the level of individual Member States), and overall prompts a broader reflection on issues such as the interplay between primary and secondary liability for copyright infringement, applicability of the safe harbour regime within the E-Commerce Directive, as well as the current EU copyright reform debate, notably the so called value gap proposal within Article 13 of the draft Directive on Copyright in the Digital Single Market.

Further to a request of the International Federation of the Phonographic Industry (IFPI), I prepared a paper that would explore the possible implications of the judgment. The paper is going to be published as an article in the European Intellectual Property Review later this year. In the meantime, you can find a pre-edited version here.

Wednesday, 19 July 2017

Donald Graham’s Copyright Infringement Suit against Richard Prince Allowed to Go Forward

People interested in the U.S. fair use doctrine owe appropriation artist Richard Prince gratitude for providing several interesting fair use cases to monitor and comment about.

Prince has been the defendant in several high profile cases in the Second Circuit (see here and here). He famously won the Second Circuit Cariou v. Prince case (see here), where the Court of Appeals found that Prince’s use of Patrick Cariou’s photographs to create his thirty paintings and collages featured in his Canal Zone exhibition was fair use, as it was transformative.

Photographer Donald Graham filed a copyright infringement suit against Prince in 2016 (see here and here), claiming that Prince’s use without permission of Graham’s Rastafarian Smoking a Joint photograph, to create an Untitled (Portrait) featured in Prince’s New Portraits exhibition, was copyright infringement. Prince claims it is fair use.

On July 18, U.S. District Judge Sidney H. Stein from the Southern District of New York allowed the case to go forward, as, while granting Prince’s request to dismiss Graham’s demand for punitive damages, he denied Prince’s motion to dismiss the case. The case is Graham v. Prince, 1:15-cv-10160.

Judge Stein noted that, because the fair use defense is fact-related, discovery will be necessary to conduct the fair use inquiry. Therefore, the case cannot be dismissed and will have to go forward. Judge Stein quoted the Second Circuit in Cariou v. Prince, which stated that finding whether a particular use is fair or not requires “an open-ended and context-sensitive inquiry.”
Is this a dead end? 
Prince used Graham’s work almost in its entirety, when he printed and exhibited the original work as originally cropped and posted on Instagram, without Graham’s permission, by another Instagram user, then reposted by yet another user and finally reposted by Prince on his own Instagram account. Prince added the nonsensical comment “ReCanal Zinian da lam jam,” followed by an emoji. Is this add-on enough to make Prince’s work transformative enough to be found fair use?

Prince argued that the use was transformative as it added new messages such as “a commentary on the power of social media to broadly disseminate others’ work,” an endorsement of social media’s ability to “generate[ ] discussion of art,” or a “condemnation of the vanity of social media.” 

Judge Stein was not convinced, finding “evident” that Prince’s work is not “so aesthetically different” from the original work and thus not transformative enough. Untitled (Portrait) does not manifest “an entirely different aesthetic” from the original work, as required under Cariou. Unlike the works featured in the Canal Zone exhibition, Untitled (Portrait) does not render the original work, according to Judge Stein, “barely recognizable” as Princes works did in Cariou.  Instead,

“[t]he primary image in both works is the photograph itself… Untitled simply reproduces the entirety of Graham’s photograph – with some de minimis cropping – in the frame of an Instagram post, along with a cryptic comment written by PrinceThere is no question that, notwithstanding Prince’s additions, Graham’s unobstructed and unaltered photograph is the dominant image in Untitled.”

Judge Stein concluded that “[b]ecause Prince’s Untitled is not transformative as a matter of law, the Court cannot determine on a motion to dismiss that a “reasonable viewer” would conclude that Prince’s alterations imbued the original work “with new expression, meaning, or message,” quoting the U.S. Supreme Court Campbell v. Acuff-Rose Music 1994 case.

“Given Prince’s use of essentially the entirety of Graham’s photograph, defendants will not be able to establish that Untitled is a transformative work without substantial evidentiary support.  This evidence may include art criticism, such as the articles accompanying defendants’ briefing, which the Court may not consider in the context of this motion.”

Judge Stein called Cariou v. Prince a “prequel to this action.” However, his fair use analysis does not bode well for Prince, who may this time be found to have appropriated a bit too much. To be continued…


Two influential committees in the European Parliament have now voted on their respective responses to the draft European Copyright Directive, and in particular the position the EU will take on 'safe harbour' in the future, and the music industry has generally welcomed those responses. The Consumer Rights Committee had already responded, and now both the Culture (Committee on Culture and Education - CULT) and Industry (Industry, Research and Energy - ITRE) Committees have now had their say, and with regard to safe harbour, both committees resisted calls to abandon or weaken article thirteen, instead seeking to reinforce and further clarify the draft article and the new obligations of safe harbour dwelling services of the YouTube variety. They also responded to a proposal, put forward by the Consumer Rights Committee, which would provide an exception for user-generated content - and which many in the music industry have now said could have a profound impact on the creative community with rights holders having to initiate expensive legal proceedings to establish the actual boundaries of such an exception". In relation to that proposal, yesterday's committees voted (a) against the idea entirely, or (b) to leave such matters to national law within the EU, rejecting the idea that European law-makers should make such an exception compulsory for member states. Helen Smith from the independent label's IMPALA organisation said: "It makes complete sense to narrow the value gap and the parliament has sent a strong message this morning. That's very good news - recalibrating the digital market in this way is necessary to stop creators, start-ups and citizens being dominated by abusive practices of big platforms who don't pay fair or play fair". The important Legal Committee will lead the final round of responding after the summer break. The EFF have a very different take on this. 

Freelance photographer David Slater, who facilitated the now famous 'monkey selfie' taken by black macaque Naruto is now in a dire financial situation as the appellate proceedings regarding the now famous “monkey selfie” photos continue in the United States courts. Slater had to settle for watching a live stream of the proceedings from his United Kingdom home because he can’t afford the flight to the USA, and is also not able to pay for the lawyer representing him, according to The Guardian. In a slightly more surreal intervention, the Chepstow based photographer now says that PETA (People for the Ethical Treatment of Animals - the animal rights organisation) is representing the wrong monkey in court with Slater saying “They definitely have the wrong monkey, and I can guarantee that. My lawyers can confirm it too" adding “The American court system doesn’t seem to care about that, which is baffling.”

A new study carried out by PRS for Music and the Intellectual Property Office (IPO), has found that stream-ripping is now the most prevalent and fastest growing form of music piracy in the UK, with nearly 70% of music-specific infringement dominated by the illegal online activity. Research revealed that the use of stream-ripping websites, which allow users to illegally create permanent offline copies of audio or video streams from sites such as YouTube, increased by 141.3% between 2014 and 2016, overwhelmingly overshadowing all other illegal music services.

There has been a big 'fair use' ('fair dealing)' case in Canada which pitted content owners against Canadian Universities, with the latter's copying Guidelines under the microscope. And in Access Copyright v. York University, the Honourable Michael L. Phelan of the Federal Court of Canada came down on the side of Access Copyright, which exists to collect royalties on behalf of creators and publishers. Access had suffered a catastrophic decline in revenues after the Guidelines were adopted by York and other educational institutions, and sued York. York’s copying was for a permitted purpose, namely education, but Justice Phelan found that York’s dealing was unfair, or grossly unfair, on several of the six factors used to assess fair dealing (purpose of the dealing; the character of the dealing; the amount of the dealing (amount of copying); the available alternatives to the dealing; the nature of the work; and the effect of the dealing on the work. The court also found York’s guidelines to be unfair, poorly conceived and arbitrary, and that York made no effort to see that they were followed. There is more on the Financial Post here.


The MPA (Motion Picture Association) EMEA policy team is offering a full-time internship at its offices in Brussels for 6 months. The intern will receive financial compensation. The selected candidate will work closely with the MPA EMEA Policy Department and will primarily focus on supporting the team in implementing the EMEA Policy Strategy. More here

Tuesday, 11 July 2017

New York State Fails to Extend the Scope of its Right of Publicity Statute

New York State has a statutory right to publicity, New York Civil Rights Law §§ 50 and 51. It protects the right of publicity of a “person, firm or corporation” in order to prevent “uses for advertising purposes, or for the purposes of trade” of the “the name, portrait or picture of any living person without having first obtained the written consent of such person.

The New York legislature recently tried to expand this right, but this attempt was so far unsuccessful, and the legislature is now in recess.

Assembly Bill A08155, introduced on May 31, 2017, proposed to establish a right of publicity for both living and deceased individuals. It also proposed that an individual's name, voice, signature and likeness would be a freely transferable and descendible personal property, making the right of publicity a property right more than a privacy right, as it is now.
If one of our readers know Japanese, please let us know what it says!
An expansion of the scope of the law

Readers of the blog may remember that Lindsay Lohan claimed that flashing the V sign was part of her persona and was thus protected by New York right of publicity law. She was unsuccessful as the scope of New York’s right of publicity law is narrow.

The bill would have considerably expanded the scope of the law, as it would have also have protected the “likeness” of an individual, which it defined as “an image, digital replica, photograph, painting, sketching, model, diagram, or other recognizable representation of an individual's face or body, and includes a characteristic.”

The bill defined the “characteristic" of an individual as “a distinctive appearance, gesture or manner.” So, Lindsay Lohan’s V sign could arguably be protected would the bill been enacted.

The geographic scope of the statute would also have been considerably extended. The bill would have protected the right of publicity of a deceased individual, for forty years after the death of the individual, and this, “regardless of whether the law of the domicile, residence or citizenship of the individual at the time of death or otherwise recognizes a similar or identical property right.” This could be interpreted as meaning that the law would have applied to virtually anyone in the world…

A right of publicity transferable and descendible

The bill considered the likeness to be personal property, freely transferable:

A living or deceased individual's name, voice, signature and likeness, individually and collectively known as his or her right of publicity, is personal property, freely transferable or descendible, in whole or in part, by contract or by means of any trust or testamentary instrument…”

If an individual would have transferred his right of publicity, there could have been a risk of losing control over the use of one’s likeness, even for unsavory use, unless the contract transferring such rights would have been carefully written to protect the individual against such occurrence. One can imagine that a young, talented and beautiful, but nevertheless impecunious individual could have signed up his right of publicity in exchange for money badly needed at the time.  

New York State, unlike California, does not recognize that deceased individuals have a right to publicity and the bill would have provided such right. The bill detailed at length how such right would have vested to the heirs, whether by will or, in the absence of a will, under the laws of intestate succession. The bill also specified that the rights thus inherited could have been “freely transferable or descendible by any subsequent owner of the deceased individual's right to publicity…”

The right of publicity would have terminated at the death of the individual who would not have transferred it by contract, license, gift, trust or by will, and if he had no heirs who could have inherited it under the laws of intestate succession.

Such rights would not have “render[d] invalid or unenforceable any contract entered into by a deceased individual during his or her lifetime by which the deceased individual assigned the rights, in whole or in part, to use his or her right of publicity…”

First Amendment defense

The bill would have provided a First Amendment defense. It would not have been necessary to secure the consent of the individual for using her right of publicity if such right would have been

used in connection with… news, public affairs or sports broadcast, including the promotion of and advertising for a public affairs or sports broadcast, an account of public interest or a political campaign;… a play, book, magazine, newspaper, musical composition, visual work, work of art, audiovisual work, radio or television program if it is fictional or nonfictional entertainment, or a dramatic, literary or musical work;… a work of political, public interest or newsworthy value including a comment, criticism, parody, satire or a transformative creation of a work of authorship; or an advertisement or commercial announcement for any [news, public affairs or sports broadcast, including the promotion of and advertising for a public affairs or sports broadcast, an account of public interest or a political campaign].

These exceptions are quite broad, and so, while the bill expanded the scope of the New York right of publicity, it also expanded the scope of the exceptions to this right.

The Authors Guild expressed its “grave concerns” about the bill, in a letter to three members of the New York legislature, as it “has the potential to cause great harm to our society’s knowledge-base and to stifle speech,” as it would make it difficult for authors “to write without restraint about public figures,” who may threaten to file a right of publicity suit to stifle speech critical of them.
A well-managed right of publicity is a golden egg
The law is not clear enough

A work thus exempted “that includes a commercial use and replicates the professional performance or activities rendered by an individual” would not have been exempt “where the replication is inextricably intertwined with the right of publicity of such individual,” subject, however, to the First Amendment and section eight of article one of the New York state constitution protecting freedom of expression. What does “inextricably intertwined” mean? Your guess is as good as mine…

Owners or employees of any medium used for advertising which would have published or disseminated an individual's right of publicity would not have been liable unless established that “they knew the unauthorized use was prohibited by [the New York statutory right of publicity]. Would owners and employees only benefited from this immunity if they did not know the use to be unauthorized and that such unauthorized use was prohibited by law, or would the knowledge that the use was unauthorized been enough? It is difficult to say.

Let’s hope that the bill will be written again in a more precise way, and that its scope will be narrowed. We’ll keep you posted.

Image of Japanese building courtesy of Flickr user antjeverena under a CC BY-SA 2.0 license.
Image of eggs is courtesy of Flickr user Karen Roe under a  CC BY 2.0 license.