$3.6m damages for copyright infringement?? Buzz off!

There is a lot of questionable content on there, but I am willing to admit it, I really like BuzzFeed. The site consists of posts on the most wide-ranging random content, usually containing videos, images and/or links - some of it very amusing. (You really need to have a look to appreciate...although maybe not on "work-time".)

It turns out that permission of the content creators is not always sought, before it is posted on the site. Now a photographer, whose photo was used in a BuzzFeed post without his consent, has taken a stand and filed a copyright infringement claim against the site.

Reports the Guardian:

The professional photographer, Kai Eiselein, filed a legal claim against Buzzfeed after finding his picture had been used without permission in a comic compilation of football mishaps. His picture of a grimacing player was removed from the article – now titled "The 29 Funniest Header Faces" – after he made an initial complaint in May 2011. 

But in a lawsuit filed in New York, Eiselein accused Buzzfeed of "direct and contributory infringement" and claims he is owed $3.6m after his work was shared widely across the web. 

He wants Buzzfeed to pay $150,000 in damages for each of the 23 sites that used his picture after the initial post, plus a further $150,000 for "contributory infringement" by another site, luuux.com. 

Eiselein confirmed he was taking legal action against the popular site and said: "It is time for creatives to stand up and say 'This is enough'. We work hard at our crafts and others should not be able to profit from our talents without compensating us." 

Asked why he is claiming such an inordinate sum in damages, he added: "In the suit I have asked for the maximum allowed by law. Ultimately it will be up to a judge and/or jury to decide the amount of damages, if any."

BuzzFeed founder Jonah Peretti has previously claimed, in a discussion with the Atlantic, that BuzzFeed’s use of photos are fair use under copyright law because they are transformative, which is the first of four factors considered by US judges in resolving fair use disputes.

If this claim makes it to court, it will open some very hot debates.

Read the claim here.

See the golden photo here.

What Peretti has said.

Source: The Guardian, 18 June 2013, The Atlantic, 30 April 2012

"Prominence Invites Creative Comment"

Warner Bros, maker of the latest Batman film, The Dark Knight Rises, very recently defeated a trademark infringement lawsuit brought by software company, Fortres Grand.  The gravamen of the case was the movie's depiction of a fictional software product called Clean Slate that allowed characters to erase records of their criminal past.  As it would happen, Fortres Grand is the real-life maker of a software product also called Clean Slate.  Fortres Grand filed the lawsuit alleging that the movie's use of the Clean Slate name raised a likelihood of consumer confusion, the judge however disagreed, holding that consumer confusion was unlikely, and further that the movie's use of the name was fair use.

Several months earlier another film, Flight, was involved in a trademark squabble for its depiction of real-life brands without approval of the owners.  In Flight, a pilot's substance abuse problems were portrayed by using many real alcoholic beverage brands such as Budweiser, resulting in a request by Anheuser-Busch InBev, owner of the Budweiser mark, that its brand names be obscured in the film.

These two disputes seem to present a mirror-image of each other.  One in which a fictional work accidentally uses the name of a real brand, and one in which a fictional work portrays a real brand in a manner that the owner of the trademark finds objectionable.  These scenarios may fuel allegations of trademark infringement, tarnishment, false association, or product defamation, but such claims are likely to fail due to the First Amendment rights of filmmakers.  Distilled, the issue is whether trademark law gives brand owners the ability to censor creative works, and the answer is most often no.  When weighed against each other, the property right in a trademark by and large does not prevail over the First Amendment protection of artistic expression.

I can't help but wonder what it is about film that causes brand owners to object so readily, even when their trademark-related claims are weak.  Perhaps licensing and product placement have conditioned viewers to accept, or assume, that brands appear in films at the will of the brand owner.  Does this situation thus make viewers experience brands in films in a way that is more "real," (or perhaps more confusing)?

Pondering this question, I set about researching trademark disputes related to literary works, wondering when, if ever, trademark owners brought similar claims related to the content of books.  After turning over many stones, I identified many disputes related to book titles, yet was unable to find any cases truly challenging use of brands in books.  The closest case I could find related to a series of books about the "Pee Wee Scouts."  Doubleday, publisher of the books, was sued in federal court in New York for allegedly infringing the trademarks of the Boy Scouts and Girl Scouts.  Citing the title "Pee Wee Scouts" as well as certain content of the books (such as scouts using handbooks or attending national conventions), plaintiffs alleged that consumers would be confused into thinking the books were created or sponsored by plaintiffs.  The court disagreed, dismissing the case on summary judgment, a result that was resoundingly affirmed on appeal.

In a 2006 interview with the Paris Review, Stephen King spoke candidly on his reasons for very frequently using brand names in his works, even when he received literary (non-trademark related) criticism for doing so.  His answer focused heavily on creating accurate cultural references, on enhancing the image a reader may perceive while reading the book (think Jack Torrance taking all that Excedrin in The Shining).  Still these reasons seem just as viable in the context of film.  Indeed, there should be no difference.  As the court provided in the Pee Wee Scouts case, "It is at once apparent, when we deal with the content of a book or motion picture, that we deal with no ordinary subject in commerce. . . . Their importance as an organ of public opinion is not lessened by the fact that they are designed to entertain as well as to inform; . . . books and motion pictures are a constitutionally protected form of expression notwithstanding that their production, distribution and exhibition is a large-scale business conducted for private profit."  Girl Scouts of the United States v. Bantam Doubleday Dell Publishing Group, Inc., 808 F. Supp. 1112, 1120 (S.D.N.Y. 1992) (internal citations and quotations omitted).



Hat tip to Bob Cumbow and the World Trademark Review.

Due regard for diligence

As a lawyer, due diligence is certainly one of my least favourite activities, but I accept that it can sometimes be crucial. This weekend, the Observer highlighted the importance of carrying out sufficient due diligence on potential art sales. It also emphasised the effectiveness of the Art Loss Register (ALR), which I discussed here back in 2010.

The Observer reports:

European auction houses, dealers and collectors are failing to make adequate checks to avoid handling stolen artworks, an art lawyer has warned after recovering from an Italian auction an old master painting taken from its British owner in a burglary more than 30 years ago.

Christopher A Marinello [the ALR's general counsel], who specialises in recovering stolen art and resolving title disputes, said: "We do find a lot of stolen and looted artwork in civil law countries such as Italy, France and Germany. Consigners of tainted works of art often try to hide behind the good-faith purchase laws of these countries while performing little or no due diligence."

He spoke to the Observer after negotiating the return from Italy of a landscape painting by Jan van Goyen, a 17th-century Dutch painter, which was stolen in 1979. Negotiations were particularly delicate because, under Italian law, if someone buys a stolen work in good faith the buyer is sometimes entitled to keep it. Marinello was able to prove to the Italian auctioneer that the painting was one of nine pictures stolen at night by criminals who broke into the home of Paul Mitchell, an antique picture frame specialist in London.

...
[Marinello said]: "The Italian auction house involved did not search the work with the ALR, but the dealer did. While losing out on a potential future sale, the [dealer] protected his reputation and saved himself significant sums in legal fees defending a case over title to the painting." Unless more dealers, collectors and auctioneers make such checks, he added, other stolen items will remain undetected. "It's the same concept as having a survey done prior to purchasing a home. Considering the values involved, why wouldn't you want to know if there were serious title issues before purchasing fine art?"

Source: The Observer, 1 June 2013

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.

The art of dodging

It appears that the law has finally caught up with a New York art dealer after a lengthy period of dodgy behaviour.

Glafira Rosales was charged this month with evading payment of millions of dollars in tax on income she earned from the sale of fake artworks.

A press release from the US Attorney's office for the Southern District of New York explains that:

[Rosales was arrested] for filing false tax returns and for failing to disclose a foreign bank account to the IRS. Rosales allegedly failed to report the receipt of at least $12.5 million in income from the sale of works purported to be by celebrated abstract expressionist artists. Most of the income was received in a bank account in Spain that Rosales hid from, and failed to disclose to, the IRS.

So not only did she manage to pull the wool over the IRS' eyes, but she managed to fool the art world with her forged artworks - and for a significant period of time. Indeed, Manhattan U.S. Attorney Preet Bharara said:

“As alleged, Glafira Rosales gave new meaning to the phrase ‘artful dodger’ by avoiding taxes on millions of dollars in income from dealing in fake artworks for fake clients...”

A painting sold by Rosales as an original Pollack

According to the Complaint:

Rosales began selling several never before exhibited and previously unknown paintings in the 1990s, which she claimed to be by some of the most famous artists of the twentieth century, such as Jackson Pollock, Mark Rothko, and Willem de Kooning. From 2006 through 2008, the proceeds of her sales of such paintings to two prominent Manhattan galleries were over $14 million. In selling most of the paintings to the two galleries, Rosales purported to represent a client who had inherited the paintings and wanted to sell them, but who also wished to remain anonymous. For the remainder of the paintings, she purported to represent a Spanish collector. Rosales further claimed that a portion of the price paid by the Manhattan galleries was a commission to her for selling the paintings, and that the remainder would be passed along to her clients. 

However, the investigation revealed that:

• experts in the fields of art, art history, and materials science concluded that at least several of the paintings sold by her are counterfeit;
• the client on whose behalf she purported to sell most of the paintings to the Manhattan galleries never existed;
• the Spanish collector on whose behalf she purported to sell the remainder of the paintings to the Manhattan galleries never owned the paintings;
• instead of passing along a substantial portion of the proceeds of the sale of the various paintings, she kept all or substantially all of the proceeds, and transferred substantial portions of the proceeds to an account maintained by her then-boyfriend; and
• Rosales then filed tax returns claiming that she had not kept all, or substantially all of the proceeds from the sale of the paintings. She also kept most of the proceeds in a foreign bank account that she hid from, and failed to report to, the IRS.

Unfortunately for Rosales, it seems the scheme was not fool proof after all. As IRS Special Agent-in-Charge Toni Weirauch explained: “The sale of a piece of art for profit is a taxable event and the seller is responsible for paying his or her fair share of tax, even if the art is counterfeit."

Rosales now faces some lengthy prison time if convicted on all counts.

See the full complaint here.

Mr Spoon reclaims Button Moon from ‘parody’ merchandise oblivion

This is an original button

Button Moon is a classic children’s TV show which ran throughout the 1980s in the UK. Its innocent characters recently became the subject of a UK copyright case (Allen v Redshaw).

Background 

In 2007, Mr Allen, the owner of the IP rights in the Button Moon series, refused to offer Mr Redshaw a licence to use the characters on various merchandise. Undeterred, shortly after this meeting Redshaw started to sell various items based on Button Moon. Redshaw mistakenly assumed that he could produce goods featuring the characters if he did not copy the original artwork or photographs. He sold a variety of mugs, T-shirts and sweatshirts bearing the Button Moon characters and distinguishing features such as the moon and rocket.

These sales eventually came to Allen’s attention and after several rounds of correspondence and an investigation from Trading Standards, legal proceedings were initiated in Norwich.  The case was subsequently transferred to the Patents County Court (PCC). Allen claimed for infringement of his artistic copyright and passing off.

Somewhat unusually, but appropriately given the value of the claim, liability, quantum and costs were all dealt with in the same judgment.

In relation to copyright infringement, Redshaw argued that:

• the mugs etc were intended to create a parody;
• they were his own drawings, not reproductions of original images;
• the fact that his drawing were 2D and the originals were 3D meant that there was only a passing resemblance;
• some features of Button Moon, such as the moon, were not original; and
• He didn’t copy Mr Spoon’s wooden spoons used as arms.

The recorder, Amanda Michaels, was having none of it.

Whether or not he intended to create a parody is irrelevant as this is not (currently) a defence under UK law.  Further, the fact that they were Redshaw’s own drawings and in 2D rather than 3D did not avoid the fact that they were clearly copies of the Button Moon artwork.  There was a low test for originality, which the moon passed, and the fact that the wooden spoons had not been copied did not avoid a finding that Redshaw had copied a substantial part of the Button Moon artwork.

Passing off

Redshaw claimed that he hadn’t used the name Button Moon so as not to mislead and that he had used a disclaimer.

Although the packaging did not refer to Button Moon, some of the online advertising, particularly on eBay, did refer to Button Moon and many third party resellers sold them as Button Moon merchandise so clearly there was a degree of confusion surrounding the issue.

In terms of the disclaimer, Michaels accepted that a disclaimer may prevent misrepresentation if it is sufficiently clear. In this case, the disclaimers were in small print and in many cases hard to read as it was written in black lettering and printed on a black background. She also held that whilst the words “100% unofficial” might prevent misrepresentation, this was offset by the reference to "produced from original artwork and photographs" which suggested some sort of link to the owner of the original artwork. The claim of passing off was therefore established.

Damages

Unfortunately, neither party filed evidence on damages.  In view of the costs and level of damages, the hearing was not postponed and Michaels was forced to assess the damages based on the limited information available. For the copyright infringement, based on the limited available evidence, Michaels awarded damages of £2,818 plus a further £3,250 to reflect the flagrancy of Redshaw’s use. She also awarded interest at an average of 1.5% for the 4 ½ years of use.

For the claim of passing off, Michaels could only make a nominal additional reward of £250 plus £16.87 interest as Allen could not substantiate his claim to have lost a licensing deal because of Redshaw’s sales of the infringing mugs. She noted that the items were not of such poor quality to have ‘significantly damaged [Allen’s] goodwill’.

Costs

Somewhat unusually, Mr Allen was also awarded his full costs of £3,421.88 (because they were low and well within the PCC costs cap).

Dark Days for Detroit

Many may be familiar with Detroit's financial woes which continue to spiral. Now, as the city stuggles to come to terms with its position, it has a new issue to grapple with.

It seems that the emergency financial manager for Detroit, Kevyn Orr, is contemplating compelling the Detroit Institute of Arts to sell some of its masterpieces to help pay down the city's massive debt.

USA Today reports:

"It is an existential drama of a kind that no city has ever faced, a combination of a high-stakes poker game and morality play in front of a worldwide audience. On the one hand, it has the potential to turn into a messy legal thicket with the courts ultimately deciding whether emergency manager Kevyn Orr can compel the museum to sell off some of its treasures to help pay the city's debts. On the other hand, many who oppose the suggestion to sell art see this as an emotional battle for the soul of the city.

Should Orr decide to move ahead on a sale of DIA artwork, these two fronts — the cultural and emotional on one hand and the legal side on the other — are likely to produce a clash that could take months or years to resolve. The toll could be monumental, permanently diminishing a museum widely recognized as one of the country's best. 

...

With the city of Detroit facing possible bankruptcy, Orr and his representatives have put the DIA on notice that its multibillion-dollar art collection is a city asset and could be sold as part of a broad-based resolution of the city's massive debt, estimated at $15 billion to $17 billion. The DIA has hired a bankruptcy lawyer to advise it. 

Nothing about the case is typical. The DIA is unusual among major civic museums in that the city retains ownership of the building and collection while daily operations and fund-raising are overseen by a nonprofit institution. The forced sale of art from a major American museum would be without precedent — and likely extraordinarily complicated and controversial. 

Orr has not yet decided whether to sell art, though a final decision is expected within weeks. The possibility that the DIA might be forced to liquidate treasures by van Gogh, Matisse, Bruegel or other masterpieces under its care has sent shock waves of disbelief among the museum's supporters and the wider art world."

It is a difficult time for the city, its residents and institutions. It is unlikely that Orr's decision, whatever it ultimately is, will satisfy anyone.


Source: USA Today, 26 May 2013

How much is a photograph worth? The UK courts give more guidance

A photograph which hasn't been litigated in the PCC

Photography cases have arguably occupied the revamped Patents County Court (PCC) more than any other type of case.  Recent examples include Temple Island v New English Teas (the red bus case, discussed extensively on this blog here, here and here), Hoffman v D.A.R.E (discussed here), Delves Broughton v House of Harlot (shamefully neglected by this blog…), Celebrity Pictures v B Hannah (discussed here) and now we have another example to add to this illustrious list – Sheldon v Daybrook.

This case is relatively unusual in the world of UK jurisprudence because it is a judgment on a preliminary issue – the quantum of damages. Further, it was a decision made on the papers (i.e. without oral evidence).  These were all sensible case management decisions which avoided the costs spiralling out of control in what should probably have been a small claims track case.

The facts 

Daybrook House Promotions Ltd used Jason Sheldon’s photograph of Ke$ha and LMFAO on its posters, website, facebook pages and flyers to promote a series of events at Rock City (a Nottingham music venue).  Daybrook downloaded the image from Tumblr and, because it was available online, assumed that it was free to use.  Sheldon became aware of some of the use of his photograph and wrote to Daybrook to stop using the image. He also asked for £1,351 based on the use he was aware of at the time.  Daybrook only offered £150 in compensation so Sheldon started a claim via Money Claim Online which was transferred to the PCC.

The case management conference (CMC) identified two issues in the case (1) extent of use of the image by Rock City and (2) the level of a reasonable licence for the image.

Extent of use 

There was very limited disclosure provided by Daybrook so it was difficult for Sheldon to ascertain the extent of use.  The issue of disclosure is a significant problem in the PCC (and even more so in the small claims track). The standard of reasonable or diligent search is arguably lower where the claim is lower value but, more significantly, it is difficult and expensive to show that full disclosure has not been provided.  Whilst search and seizure orders are possible in the PCC (see Suh v Ryu) they are expensive and subject to the costs cap so a large part of the legal costs are unlikely to be recoverable.

Without the benefit of any disclosure documents, Sheldon had to do quite a bit of independent research regarding what the extent of online use and had to estimate the numbers of posters produced based on information elicited in correspondence. The arguments regarding the appropriate level of licence fee can be summarised as follows.

Daybrook, the defendant, argued:

• Low quotations from other photographers they usually use based on the sort of image in dispute;
• Only local use around Nottingham; and
• It wouldn’t have paid more than £100.

Sheldon, the claimant, argued:

• Famous subjects; 
• Paid for exclusive access; and
• Based on the information available, there was extensive use by Daybrook, including online. 

HHJ Birss QC (as he then was) held:

• The fact Daybrook would not have paid more is not a critical issue.
• The famous subject matter was important in determining the appropriate licence fee. 
• The exclusive access was even more critical in increasing the value of the photograph. 
• The more detailed photography quotation (based on the actual use) was preferable to the defendant’s examples. 

In particular, he noted that it would not be worth obtaining exclusive access if only licence photo for a small amount of money.

Damages were awarded of £5,682.37 plus VAT and interest at 1%.

Sometimes, navigating the law can get a little prickly

The future of photography claims

All of the cases where quantum was decided came in at the current small claims cap (£10,000, for Hoffman v D.A.R.E) or significantly under.  All of these claims would, in theory, have been suitable for the small claims track.  This suggests that the large number of reported claims for infringement of artistic copyright in photographs in the PCC may well decrease as the PCC small claims track for becomes more established.  However, none of the photography cases has been completely straightforward and given the choice between negotiating the legal and procedural complexities of their claim without legal assistance or obtaining legal advice but not being able to recover the costs of that advice, photographers may prefer to use the regular PCC procedure.

Have any of our readers used the PCC, including the small claims track?  Would you consider using it?

Mandela, daughters -- and lawyers -- tussle over art collection

From the Sowetan Life, "Mandela daughters sue father" (here), it appears that iconic former South African President's Nelson Mandela's daughters are suing him "for the rights to his artworks and control of his millions". Citing The Star, Sowetan Live reports that

" Zenani and Makaziwe Mandela intend fighting an April 2004 Johannesburg High Court order which gave Mandela the right to instruct Ismail Ayob, his then lawyer, to stop managing his financial, personal and legal affairs. The court order barred Ayob from selling any of Mandela's artworks.

The Star reported that Mandela's current lawyer, Bally Chuene, filed an affidavit last week in response to a lawsuit brought by the sisters, who are represented by Ayob.

Last month the sisters filed papers asking for Chuene, George Bizos SC and Human Settlements Minister Tokyo Sexwale to remove themselves as directors and trustees of the Mandela Trust and as directors of Harmonieux and Magnifique (Pty) Ltd with immediate effect.

In his replying affidavit, Chuene reportedly said he, Bizos and Sexwale had, in 2011, refused to release the trust's money to the daughters without a legal justification.

The Star reported that Chuene was adamant Ayob was behind the women's court action".

The precise legal basis upon which the rights in the former President's artwork are contested is not spelled out, but a post on Public News Hub adds that

"The affidavit also exposes the fact that Ismail Ayob is yet to respond to the ailing leader’s request for complete information about his art collection. Madiba requested this information for the first time in 2004 but it has yet to land at his desk".

Art & Artifice hopes to report on this matter in greater detail when more information about the legal issues is available.

Art by Nelson Mandela here

A Dictionary of Intellectual Property Law (A review)

Peter Groves recently* published the Dictionary of Intellectual Property Law. This book is an extremely useful compendium of all the mysterious IP terms which are commonly used by lawyers, in contracts, in judgments and in government consultations in the UK, Europe and USA. Each concept has a pithy description including cross references to other terms where this would be useful.

The dictionary even covers things you might not, at first glance, associate with IP law such as AdWords and zoetropes. Naturally, the IPKat gets a special mention!

 If you want a second opinion here are some of the (publisher selected) comments on the book when it was first published:

‘Confused between community patent review and community patents? Lost in a thicket of dockets, rocket or otherwise? Let Peter Groves’ Dictionary of Intellectual Property Law be your guide. Filling almost 500 often lighthearted, occasionally acerbic, but invariably fact-packed pages, the book takes you from the ActionAid Chip and the Air Pirates case through BIRPI, Cognating, Dockets, Evergreening; Jepson, Pedrick’s cat and Simkins; PHOSITA, Trundlehumpers, the verb “to Uncopyright” and X-Patents, all the way to Zwart maken. Essential reading.’ – David Musker, Partner, RGC Jenkins & Co.

 ‘Do not be put off by the word “dictionary”. This is a fascinating, witty and erudite little volume, packed with interesting and useful information on the whole gamut of intellectual property. It leaves one (this one anyway) hungering for more and wanting to delve more deeply into fields that have nothing to do with earning one’s daily bread.’ – Tony McStea, Senior Patent Attorney, Global Patents, Givaudan Schweiz AG

If you bought the book and it’s missing a key term or the definition hasn't helped to untangle to confusion, fear not. New definitions are suggested and refined on the IP Dictionary blawg (www.dictionaryofiplaw.blogspot.co.uk) where users can even suggest new terms for inclusion in the next edition.

This book should be of use for everyone interested in the world of IP law from the aspiring student, to the lawyer. It is written so clearly and comprehensively that it is hopefully also useful for artists seeking to better understand and enforce their rights.

The paperback edition is available online for around £20. The author, Peter Groves, amongst many other things, writes for the Ipso Jure blog (www.ipsojure.co.uk).

 *OK, so not that recently, Feb 2011. But the paperback edition is much more recent!