Is copyright in a 1980s Michael Jordan photo infringed by the Jumpman logo?

In the run up to the 1984 Olympic Games, Jacobus Rentmeester took various photographs of Michael Jordan for LIFE magazine. The iconic image which he ultimately produced involved a jump which Rentmeester asked Jordan against a plain skyline with freshly cut grass. The photograph that he took is below.

What happened? 

According to Rentmeester's complaint, following publication of his photograph in LIFE magazine, Nike paid Rentmeester $150 for temporary use of two 35mm colour transparencies. The invoice stated that this was “for slide presentation only, no layouts or any other duplication”.

Rentmeester alleges that following receipt of the transparencies, the below photograph was produced and used by Nike as part of an advertising campaign for Air Jordan shoes:

Mr Rentmeester apparently complained about Nike's use of his photograph to create the above image and in 1985 he reached a settlement with Nike whereby, in return for $15,000, he agreed that Nike could use the photograph on posters, billboards etc in North America only for two years.

Rentmeester is now complaining that Nike continued to use the photograph beyond both the term and the territorial restrictions imposed by the 1985 agreement. Significantly, Rentmeester is claiming that Nike's use includes the famous Jumpman logo.  For those unfamiliar with the logo, the complaint includes the following handy comparison of the silhouette of Michael Jordan in the Rentmeester photograph (left) with the Jumpman logo (right).

The complaint goes into a lot of detail regarding the creative decisions that Rentmeester made when creating the photograph:

"Mr. Rentmeester wanted to maximize visual attention on an isolated figure of Mr. Jordan, and so the photograph needed to be taken outside, with a background of sky rather than the interior of an auditorium. Mr. Jordan would be depicted in away to express his tremendous athletic ability: he would leap through the sky and appear to soar elegantly. Mr. Rentmeester created the pose, inspired by a ballet technique known as a “grand jeté,” a long horizontal jump during which a dancer performs splits in mid-air.  The pose, while conceived to make it appear that Mr. Jordan was in the process of a dunk, was not reflective of Mr. Jordan’s natural jump or his dunking style.

Mr. Rentmeester further planned that Mr. Jordan would leap with his left leg forward and his right leg behind, and his left hand extended while holding the basketball, so that the basketball would appear to be perched on top of his fingertips, his body open and facing the camera, his limbs extended outward, and his right hand open, showing his fingers."

Given that level of input into the creative process, following Infopaq and Painer, the photograph would be protected in the EU as Rentmeester's own intellectual creation.  Presumably the position is the same in the USA.

Why now? 

The cause of action arose in 1987 – when the licence expired (or possibly sooner if Nike used the photograph/Jumpman logo outside of North America before then). So, why has Rentmeester waited?

The cause of the delay is anyone’s guess – lack of money, time or inclination to do anything about it in the late 1980s, perhaps. However, the reason why he is pursuing the claim now is thanks to Raging Bull, or more precisely, the US Supreme Court’s decision in Petrella v MGM which was decided in May 2014.

The US Supreme Court found that because the US Copyright Act limits retrospective relief to three years before the date of claim, laches does not apply.  Laches is the equitable doctrine that states you cannot pursue a claim if you have unreasonably delayed in bringing a claim - 30 years would likely have constituted an 'unreasonable delay'.   Moreover, the court decided that ‘when a defendant commits successive violations, the statute of limitations runs separately from each violation.’ In other words, every time that Raging Bull is distributed (or Nike sells a pair of Jumpman branded goods) a new three year limitation period starts to run.

It is worth noting that it follows from this that there is no benefit to Mr Rentmeester in waiting until now. If he had pursued Nike sooner, he could have recovered losses based on past infringment and obtained a licence covering future use. As it is, the best Mr Rentmeester can expect is damages for the three years prior to issuing his claim and a licence for use going forward.

Does Rentmeester have a claim? 

At first glance, it is easy to see why many people online are dismissing this as another example of IP law gone crazy.   “It’s Michael Jordan who posed not the photographer” is typical of the general sentiment behind these posts.  However, I’m not sure it is quite so simple.  The pose in the photograph is not a natural one, it was deliberately selected by Mr Rentmeester (together with the plain background which makes the pose stand out even more).  Further, although I am no expert(!) it does not appear that Michael Jordan ever employed this balletic pose when actually playing basketball.  Further, Nike obviously thought that it required a licence when it settled with Mr Rentmeester in 1985.

Should Rentmeester's rights in the photograph extend to the logo? 

The copy of the Rentmeester photograph does appear to have been used since 1987 but it is the translation of the Nike photograph into the Jumpman logo which is where the money (and hence the battleground) lies.  Is this translation into a logo a ‘transformative use’?  Prior to Cariou and Prince, the answer would have been a definite "no".  But now the situation is less clear.  Indeed there is an argument that if Cariou lost to Prince, surely it follows that Rentmeester must lose to Nike.

Does it make a difference if the ‘fair use’ is not to create another artwork but to create a global brand?  Surely this sort of commercial use is sufficiently far from being an art work for transformative use to not apply?  We shall see...

This promises to be a very interesting case and one which I look forward to following – assuming it doesn’t settle…

Postscript: Michael Jordan and the wonderful world of IP 

Whilst researching this post, I found out that Michael Jordan is no stranger to IP litigation. He has had a long running dispute with a Chinese sportswear company, Qiaodan (the transliteration of “Jordan” in Chinese).

Jordan claimed that Qiaodan mislead customers into believing that he has authorised the use of his name (and his children’s names – which Qiaodan has applied to register as Chinese trade marks). Meanwhile Qiaodan sued Michael Jordan for $8million in retaliation claiming that his allegations had prevented the company from pursuing an IPO.

Interestingly, Qiaodan chose to use a logo which was more akin to Jordan’s traditional basketball movements (see below).

You can read Rentmeester’s complaint here.   Note: I could not find Nike’s response online - if anyone has a copy (or knows when it will be filed) please let me know.

Sources: NBA and Financial Times

Wrangling over Rothko

Mark Rothko, Untitled (1961)

At least four years of legal wranglings over the sale of this Mark Rothko painting appear to have come to an end with little to show except substantial legal costs for all parties.

At the heart of the dispute, a confidentiality clause, which is now anything but.

By way of background, back in 2007, Marguerite Hoffman (the Plaintiff) sold this Rothko painting for $17.6 million to David Martinez (Second Defendant), via his company Studio Capital, Inc. (Third Defendant), under the terms of a letter agreement.

The agreement was signed by now defunct New York gallery L&M Arts (First Defendant) acting on behalf of Studio Capital. The relevant clause of the agreement provided that: “[a]ll parties agree to make maximum effort to keep all aspects of this transaction confidential indefinitely. In addition, the buyer agrees not to hang or display the work for six months following receipt of the painting.”

Following the 2007 sale, Studio Capital kept the painting in storage, eventually consigning it to Sotheby’s for sale in 2010. Sotheby’s auctioned the painting on 12 May 2010, and sold it for over $31 million.

Not long after, Hoffman sued L&M, Martinez and Studio Capital for damages for breach of the confidentiality clause of the letter agreement, on the basis that when she sold the Rothko painting privately, she had done so at a substantial discount in exchange for the promise of strict confidentiality, forfeiting the additional millions of dollars that the painting would have brought if sold at public auction.

Earlier this year, a Dallas jury decided that Hoffman had proved her breach of contract claim against L&M, Martinez, and Studio Capital, and awarded compensatory damages of $500,000 – far below the $22.4 million claimed by Hoffman – which the court subsequently slightly increased to $1.2 million.

As a result, the defendants filed motions for judgment as a matter of law. This is a US cause of action which argues that the evidence used to support an issue is legally insufficient and no reasonable jury could find for a party on that issue. [US lawyers: please feel free to correct this very basic summary.] 

Essentially, the court was asked whether:

(i) a reasonable jury could have found that L&M was acting as agent for Studio Capital and Martinez when it entered into the letter agreement, and that, accordingly, Studio Capital and Martinez were bound by the letter agreement;
(ii) a reasonable jury could have found that L&M breached the letter agreement;
(iii) a jury could reasonably have found that L&M’s breach of the confidentiality clause caused Hoffman damages; and
(iv) the damages Hoffman had elected to recover were legally barred under Texas law.

In respect of the first point, Studio Capital and Martinez claimed that there was no evidence that they ever communicated to L&M or to Hoffman any intent to confer any authority on L&M to enter into the letter agreement on their behalf, and that the undisputed evidence was that this did not occur. (Rather, Studio Capital and Martinez argued, L&M did not act as their agent, but, consistent with art industry practice, as an intermediary, purchasing the Rothko painting from Hoffman and then reselling it to them.)

On the second point, L&M argued that no reasonable jury could have found that the goal of the confidentiality clause was not met. And, on the third, L&M maintained that a reasonable jury could not have found that Hoffman suffered any damages as a result of their breach of the confidentiality clause because she had failed to adduce sufficient evidence of causation.

The final point was [from my point of view!] a complicated issue of the type of damages allowed for the breach of a contract under Texas law.

Earlier this month, the US District Court for the Northern District of Texas (Dallas Division) handed down its ruling on the motions.

Unfortunately for Hoffman, the court agreed with Studio Capital and Martinez. It found that there wasn't legally sufficient evidence for a reasonable jury to have found that Studio Capital or Martinez conferred any actual or apparent authority on L&M to enter into the letter agreement on their behalf. The court, therefore, went on to dismiss the action against them with prejudice.

The court did find that a reasonable jury could have found that L&M breached the confidentiality clause, and, further, that L&M’s breach of the confidentiality clause caused Hoffman's damages in the form of the lost benefit of her bargain. However, as a further blow to Hoffman, even though the jury had offered Hoffman two measures of damages and the judge had ultimately decided the appropriate sum of damages to be awarded, the court held that she was not entitled to recover under the measure of damages that she had elected.

The result of this ruling is that the Hoffman's claim against Studio Capital and Martinez is effectively over and she is barred from filing another case against them on the same claim. Moreover, Hoffman must file a new motion against L&M to alter or amend the judgment in order for the court to award her damages under an alternative measure of damages.

Four year of litigation and no additional millions to show for it....distressing.

"Girls" Parody or Just Infringement?

Some of our readers may be familiar with this video by San Francisco start up toymaker, GoldieBlox, which recently went viral.  The company develops science and engineering-related toys for girls.  In the video several young girls build a Rube Goldberg machine to turn off a television.  The soundtrack is a version of the Beastie Boys song "Girls," but with new, female-positive lyrics.  The Beastie Boys were not pleased about the use of their song.  When the band attempted to confront GoldieBlox about use of the song, GoldieBlox rapidly filed a lawsuit in U.S. District Court for the Northern District of California seeking declaratory judgment that their use of the Beastie Boys song was parody, and accordingly fair use, not copyright infringement.

In an open letter to GoldieBlox, which the Beastie Boys shared with the New York Times on Monday, the group maintains that they support the work and the message of the start up, but are committed to keeping their music out of advertisements. The band argues that the video was designed to advertise and sell GoldieBlox toys and that using the new version of the song is copyright infringement.

GoldieBlox maintains that their version of the song is not just devised for selling toys, but intended to comment on the original while empowering young girls.  As the complaint states:

In the lyrics of the Beastie Boys’ original song, girls are limited (at best) to household chores, and are presented as useful only to the extent they fulfill the wishes of the male singers. The girls are objects. The GoldieBlox Girls Parody Video takes direct aim at the song both visually and with a revised set of lyrics celebrating the many capabilities of girls. Set to the tune of Girls by the Beastie Boys but with a new recording of the music and new lyrics, girls are heard singing an anthem celebrating their broad set of capabilities—exactly the opposite of the message of the original. GoldieBlox Girls are the subjects; they are the actors taking charge of their environment.

Under U.S. copyright law, fair use of a copyright-protected work is determined by examining the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used, and the effect of the use upon the potential market for or value of the copyrighted work.  In the case of parody, the threshold question is whether a parodic character may reasonably be perceived.  In examining parody one must consider the critical bearing on the substance or style of the original.  Undoubtedly, the original version of the song, recorded in 1986, is degrading to women, referencing the desire for "girls" to do the dishes and the laundry.  The song featured in the GoldieBlox video substitutes new lyrics about girls building spaceships, writing code, and engineering that would seem to bear rather directly on the demeaning character of the original.  

The complaint was filed late last week, and attorneys for the Beastie Boys have yet to appear.  As the band has become far more socially and politically conscious over its long existence these would seem particularly difficult public relations to navigate, and it will be interesting to see how this lawsuit unfolds, if at all.

Another Big Win for Photographers: Jury Awards Maximum Damages in AFP v. Morel

Following on the heels of my entry regarding Leonard v. Stemtech, another American photographer has received another major jury award for copyright infringement.  Earlier this year I wrote about AFP v. Morel, a case in which Getty and Associated French Presse (AFP) were found to have used photographer Daniel Morel's photographs of the aftermath of the Haiti earthquakes without permission.  Morel originally shared the photos on Twitter, where another photographer found them and attempted to pass them off as his own.  Eventually the photos ended up in the hands of Getty and AFP, and the agencies used and licensed the images without Morel's permission.  One of AFP's more creative defenses in this case was that Morel's sharing of the images on Twitter had resulted in a broad license allowing AFP to use the images based on Twitter's terms of service.  The court rejected that argument at the summary judgment phase.

Although Morel already prevailed on summary judgment as to direct copyright infringement, because he sought elevated statutory damages for willful infringement, a jury was left to resolve the intent of Getty and AFP in using Morel's images.

On November 22, 2013, the jury's verdict was announced.  Holding that the infringement was willful, the jury awarded Morel the maximum in statutory damages allowed for the eight infringed images, $150,000 per image, for a total damages award of $1.2 million.

Extensive coverage of the trial is available on EPUK.

Exploring "Orderly Form" Requirements for U.S. Copyright Registrations

Again underscoring the importance of not just obtaining copyright registrations, but doing so correctly, the U.S. Court of Appeals for the Seventh Circuit recently explored the "orderly form" requirement for copyright registrations covering collections of works.

The plaintiff, sculptor Quincy Neri, sued the defendants for copyright infringement after they posted photographs online that included her sculpture.  The parties engaged in a joint project remodeling a home by installing a vaulted ceiling and Neri's glass sculpture.  The architecture company, a named defendant in the case, took photographs documenting the progress of the space, and two of these photos included Neri's sculpture.  The photos were shared online by the company as well as the home owner.  Based on these facts, Neri then sued the architectural company, the home owner, and others for copyright infringement.

Under U.S. copyright law, a copyright arises when an original work of authorship becomes fixed in a tangible medium, however litigation to enforce a copyright requires that the plaintiff have obtained a copyright registration.  In this case, Neri asserted that she had a copyright registration for the sculpture at issue, but the registration covered multiple works in a collection.  The district court found the copyright invalid on this basis and dismissed the case.  On appeal, the Seventh Circuit held otherwise.

To obtain her copyright registration, Neri submitted a booklet of works as well as a selection of numbered photographs to the U.S. Copyright Office claiming that the works were part of a single collection called "Artwork of Q."  Defendants attacked the validity of the copyright registration and alternatively alleged that the registration did not in fact cover the sculpture that appeared in the remodel photographs.  Relying upon the administrative rules governing copyright registration of a collection, the Seventh Circuit held that the case been wrongly dismissed since the lower court judge had not actually evaluated the materials submitted to the copyright office, and instead had only reviewed deposition testimony of their nature.  Neither party had placed the deposit materials for the copyright registration on the record.  Neri thus benefited from the registration's entitlement to the presumption of validity.  The court, left grappling with the "orderly form" requirement for materials submitted for copyright registration of a collection concluded, "the key question must be whether the submission is organized well enough to permit users and courts to pin down the 'information' on which copyright enforcement depends."  And further, "Any organization that enables a court to associate a work underlying the suit with a work covered by a registration ought to do the trick."  

Ultimately, the case was remanded with instructions for the district court to reconsider its conclusions on the validity of the copyright registration and further to consider other previously overlooked issues such as joint authorship of the sculpture because the home owner and architectural company may have made creative contributions in determining the color and arrangement of the sixty glass pieces that comprised the finished sculpture.  The court further opined that sharing the pictures online may constitute fair use.

The court's full opinion may be accessed here.

Copyright litigation in the PCC

The PCC has been making a splash,
particularly when it comes to copyright litigation

I have written a lot about the artistic copyright cases in the PCC, particularly those surrounding photographs (most recently here).  If you want to find out about copyright litigation in the PCC more generally, look no further than a recent article I wrote on that very subject, available here.

As always, thoughts, comments and suggestions for future blog posts are very welcome.

A Win for Photographers: Developments in AFP v. Morel

On 12 January 2010, Haiti was struck by a severe earthquake, and photographer, Daniel Morel, was there capturing the devastation with his camera.  Later that day, Morel posted his images on Twitter.  The images were then shared (or more aptly--retweeted--by other users), and at least one user falsely claimed ownership of Morel’s images.  The Director of Photography for North and South America at Agence France Presse (AFP) located Morel’s photos on Twitter on another user’s account and then sent them into AFP’s system for captioning and distribution on AFP’s newswire.  Once in AFP’s system the images also became part of Getty Images’ library, through its reciprocal license with AFP.  When Getty first received the images they were improperly credited to another Twitter user.  Eventually, the error was corrected and the images were properly attributed to Morel.  The images were picked up by several publications, including the Washington Post.  Morel’s counsel as well as counsel for Corbis, another image licensing company that had an exclusivity agreement with Morel, contacted the organizations regarding use of Morel’s images.  Although the photos were eventually removed from AFP’s database as well as Getty’s due to copyright issues, infringing images remained on the Washington Post’s website.

On March 26, 2010, AFP sued Morel in U.S. District Court for the Southern District of New York for a declaratory judgment stating that it had not infringed on Morel’s copyrights and alleging commercial defamation.  In response, Morel filed counterclaims against AFP, Getty, and the Washington Post for copyright infringement and violation of the Digital Millennium Copyright Act (DMCA).  This month, the court addressed the parties’ competing summary judgment motions, conclusively ruling on some issues presented by the case.

With respect to Morel’s claim for direct liability for copyright infringement, AFP argued that the Twitter user license (which applied to the images when they were first posted by Morel), allowed AFP to use and license the images.  After evaluating Twitter’s terms of service, the court disagreed, finding that the user agreement provided a limited license, but did not give permission for AFP to engage in the conduct at issue.  As the court provided, “Indeed, this is the fatal flaw in AFP's argument: it fails to recognize that even if some re-uses of content posted on Twitter may be permissible, this does not necessarily require a general license to use this content as AFP has.” 

Getty also asserted an affirmative defense under the DMCA, arguing that it was not liable for infringement because it qualified for the safe-harbor provision of the law, which was intended to protect service providers from liability for copyright infringement when unwittingly hosting infringing materials or engaging in certain other passive activities.  The court declined to find on summary judgment that Getty qualified for the safe harbor, noting that a jury could infer that Getty took affirmative acts to distribute the Morel’s photos, such as entering a license agreement with AFP, actively licensing the photos, and setting a price for the photos.

Morel also sought elevated statutory damages from AFP, Getty, and the Washington Post, asserting that each party had acted willfully in infringing on his copyrights.  The court declined to rule on this issue as well, leaving it for a jury to determine whether the conduct at issue was willful.

Ultimately, the court granted Morel’s motion for summary judgment that AFP and the Washington Post were liable for copyright infringement, but rejected Morel’s arguments regarding the scope of statutory damages available under the Copyright Act and the DMCA.  The court otherwise denied the parties’ cross-motions for summary judgment.  The case, which has been in litigation since 2010, is scheduled to go to trial on the remaining issues with all trial materials due to the court in late March.

Government of Taiwan Sued for Allegedly Breaching Contract with Artist

The president of Taiwan as well as another local official for Kinmen County, have been sued by an expatriate Chinese artist for breach of contract.  The complaint also names an unknown number of John and Jane Does.  The case was filed in U.S. District Court for the Southern District of New York.  Artist Weiming Chen, now a resident of the United States, claims that the President of Taiwan succumbed to political pressures from mainland China that caused the Taiwanese government to breach its contract with Chen.  The artist alleges that on January 17, 2012, he entered into a contract with the government of Taiwan to create a 32-meter tall sculpture on Kinmen island, a few miles off mainland China.  The island was under military administration for many years and is historically significant as the site of intense battles between Taiwan and mainland forces.  The statue was to face the mainland and was to echo the spirit of New York's Statue of Liberty as well as the Goddess of Democracy statue formerly situated in Tiananmen Square in Beijing.  The original Goddess was fabricated out of foam and papier-mâché by students during the protests which took place in the spring of 1989 and was demolished by the military during the infamous suppression on June 4, 1989.  Replicas of the Goddess are now situated around the world.

The colorfully-worded complaint was filed on July 5, 2012 and requests millions of dollars in punitive damages for civil conspiracy, breach of contract, and interference with business relations.  The artist also seeks the right to build the statue.  The Taiwanese government has yet to respond to the artist's allegations.

Collector Sues over new Eggleston “Limited Editions” entering the market

Will Sobel's claim end up on ice?
William Eggleston, Freezer

Can you stop a photographer from making more prints in the future when you bought an original print on the basis that it was a “limited edition”? Does it matter what medium is used for the reprints (i.e. digital or dye-transfer)? Does the print size matter?

Jonathan Sobel, a photograph collector recently issued proceedings against William Eggleston, the photographer widely credited with popularising colour photography.

As the writ explains, “The gravamen of [Sobel’s] Complaint centers on the sale of eight photographic images …the reprints are identical in image to original photographs which Eggleston had earlier created and designated as individually numbered limited edition works… A principal factor in Sobel’s decision to purchase photographs ... was that these photographs were, in fact, limited editions.”

Whilst Sobel owns a number of physical prints, clearly the copyright in the prints remains with Eggleston as the “author”. Therefore, from a copyright perspective, at least, there is nothing to stop Eggleston from making further prints.

As a result, the writ is based on the following causes of action (notably, not breach of contract):

(1) Violation of New York Arts and Cultural Affairs Law Section 11.01(1) [this section defines a “limited edition” as “works of art produced from a maser, all of which are the same image and bear numbers or other markings to denote the limited production thereof to a stated maximum number…”];
(2) Fraudulent misrepresentation [Yes, really!];
(3) Negligent misrepresentation [on the basis of a “special or privity-like relationship … between Sobel and the defendants, imposing … a duty to impart to Sobel … true and correct information pertaining to the edition size of these works"];
(4) Unjust enrichment;
(5) Promissory estoppel [i.e. Sobel relied on the “clear and unambiguous promise” that the photographs were in fact limited editions when he purchased them and this promise was “false”.]

Whilst I do not pretend to be an expert in American law, it looks like a stretch for Sobel to succeed in any of these claims.

Eggleston's, untitled woman in colour 
from Los Alamos 1966-74.
She doesn't look convinced by the claims

According to the NY Times, Eggleston’s lawyer told the Wall Street Journal that the “lawsuit had no merit and that printing vintage works in new formats falls within [Eggleston’s] creative rights”. Whilst this is an unsurprising position for Eggleston’s lawyer to take, it appears unusually warranted in the circumstances.

I am unfamiliar with the laws surrounding limited editions, however, as Daniel Grant’s blog on the Huffington Post eloquently explains, “important exceptions [to various state laws on limited editions] are made for earlier limited editions that are of different sizes (a 10" x 8" photograph produced in a 5" x 4" format), different production techniques (a gelatin silver print produced as a platinum print or a photogravure) or different numbering (Arabic numbers on one edition, Roman numerals on another).” In other words, limited editions are only limited by the number of a particular type of print and the sale of a limited edition dye-transfer print does not provide the purchaser with a right to prevent the artist making further prints of his work (in a different medium) in the future.  Had further dye-transfer prints in the same size etc been made Sobel might well have a cause of action but as it stands...

Even if it is ok to make new prints from a legal perspective, is it worth potentially alienating your market by bringing out new editions on a regular basis? Clearly if an artist regularly brings out new “limited editions” he or she will ultimately erode the value in all previous works and reduce the likelihood of purchasers continuing to buy the work.

Or will they? For a business/art world insight on the case, see Felix Salmon’s Reuters blog on the case. He notes that “[i]n reality ... Sobel’s prints have probably gone up in value, not down, as a result of Eggleston’s splashy reintroduction to the contemporary art market, in the form of a Christie’s sale which raised $5.9 million and set a new record price for the artist.” So Sobel does not appear to have a cause of action and, even if he did, may not even be able prove damage. Why has he brought the claim then? Is this just the result of poor legal advice or is this the start of some groundbreaking changes to the art world? It is worth noting that Sobel has requested a jury trial. If a jury is indeed appointed (which I understand is no longer a foregone conclusion in US civil proceedings) they may well decide the case against all expectations - there is no such thing as a foregone conclusion in litigation.

Eggleston, The Red Ceiling

Would Eggleston have felt the need to make new prints if there was an artist’s resale right across all States (and one which was adequately enforced)? All the large price tags have been in relation to recent sales of old prints (none of which, as I understand it, were still in the artist’s possession although one was purchased from Willliam Eggleston III).

Red bus suggests copyright law is not black and white

A recent case in the Patents County Court for England and Wales concerned the nature and scope of copyright protection for a computer manipulated monochrome photograph of a bright red bus going over Westminster Bridge. The photograph may be of a specific subject matter but the case has much wider implications for the worlds of photography and graphic design.

Photo 1

The court considered two main questions (1) is Photo 1 a copyright protectable work and (2) if so, has a substantial part of Photo 1 been copied to make Photo 2.

Has Photo 2 (on the right) copied a "substantial part" of photo 1 (on the left)? 

Is photo 1 a copyright work?

Although a photograph is one form of artistic work which is protected under the Copyrights Designs and Patents Act (CDPA), not every photograph is an artistic work. Following the European cases of Infopaq and Painer, for copyright to subsist in a photograph it must be the “author’s own intellectual creation”. Painer went into considerable detail as to what did and did not constitute the “author’s own intellectual creation” but it effectively means that not every snapshot that you take on e.g. your smart phone has copyright protection.

By way of example, the judgment refers to an Austrian decision (O (Peter) v F KG) which related to photos of grape varieties. This found that “what is decisive is that … the [photographer’s] personality is reflected by the arrangements (motif, visual angle, illumination etc).” It is hard to avoid an aesthetic judgment being made under this approach (even though the CDPA explicitly says that '“artistic work” means ... [a] photograph ... irrespective of artistic quality' (s. 4(1)(a)).

The judgment noted that composition is affected by the angle of the shot, the field of view, and computer manipulations which are made in post processing. It ultimately held that Photo 1 is an artistic work as either a photograph or a collage (on the basis that the sky was digitally removed and replaced with white and therefore the image could be an electronic collage).

Does photo 2 infringe the copyright in photo 1?
Answering question 2 isn’t as straightforward as it may sound. It is not a case of what are the differences between photo 1 and photo 2. As the judge notes, it is possible to “reproduce a substantial part without necessarily producing something that looks similar”.

It is a matter of “quality not quantity” i.e. have the features which give photo 1 its artistic quality been copied by photo 2. The judge analysed this quality based on composition and visual contrast.

Although the “images undoubtedly differ in their composition”, the type of bus, direction of travel, presence of people, lack of traffic and amount of sky were identified as both copied and qualitatively important. In terms of visual contrast, the red bus against the monochrome background was clearly copied but the blank white sky was also identified as significant.

Together the composition and visual contrast features were found to be a “substantial part” of photo 1 and to have been copied by photo 2.  Although the analysis is quite detailed it is very hard to see how a photo taken at a different angle, with a different foreground, exposure level and perspective could infringe. Arguably all that is really copied is that idea of a black and white photo of the Houses of Parliament with a red bus in the foreground.

The judge noted that “the whole point of this case is that [the defendant wants] lawfully to produce an image which does bear some resemblance to the claimant’s work". This is the heart of the problem. Based on the judgment, there appears to be an attempt by the tea company (defendants) to sell more tea through an association with a popular photograph of a London landscape (photo 1). However, whether that association is legitimate is not a question for copyright law which should only be concerned with considering whether a substantial part of the original photograph has been taken. It is my personal view that a substantial part has not been taken.

Whilst it is clear that not every photo of Westminster Bridge would infringe photo 1. The line as to what inspiration photographers (and other artists) can and cannot take from previous works has become (more) blurred.

Postscript

Photo 3
(a portrait version of the defendant's photo 2)

The court was, post-trial, asked to consider whether the portrait version of photo 2 (photo 3 above) could infringe photo 1. Photo 3 has been substantially cropped so that the bus is even more prominent together with Big Ben.

Again, somewhat surprisingly, the court found that “The cropping has been carried out to discard only the most insignificant parts of the original” and therefore “the cropped portrait version does reproduce a substantial part of the claimant’s work”.

What do you think? This case has aroused a fair amount of controversy in legal circles. We would love to know where would you draw the line.