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Intellectual Property Matters – June 2015

Intellectual Property Matters – June 2015

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15/06/2015

A touch sensitive issue: The Fall, their album producer and a copyright dispute

The Manchester rock band, The Fall, are the latest band to come before the courts […]

The Manchester rock band, The Fall, are the latest band to come before the courts for settlement of a dispute concerning ownership of copyright in one of their songs. We have written previously about disputes concerning artists as varied as Led Zeppelin and Jay-Z.

The song in question was “Touch sensitive”, first performed in 1998. The music was written by a band member, Julie Adamson, and the lyrics were written by the singer, Mark Smith. Mr Smith later assigned his rights in the song to the claimant, Minder Music. In 1999, Mr Smith and Ms Adamson agreed that rights in the song should be split one-third to Mr Smith and two-thirds to Ms Adamson.

The defendant in the proceedings, Steven Sharples, was engaged to produce the album version of the record. In doing so he made some changes to it. A dispute arose as to ownership and a settlement agreement was entered into between Ms Adamson and Mr Sharples, so that Ms Adamson, Mr Smith and Mr Sharples would each receive a one-third share of the royalties. Minder Music later objected, insisting that the original percentage split should remain as it was and it therefore issued proceedings seeking a declaration that it owned one-third and Ms Adamson two-thirds and that none of the copyright was owned by Mr Sharples.

The High Court considered [1] that there was no reason to set aside the settlement agreement. Whilst a one-third share for Mr Sharples was optimistic given the scale of his contribution, Ms Adamson had agreed to it voluntarily and there was no suggestion of fraud or undue influence.

In reaching its decision, the Court rejected the suggestion that Mr Sharples was a co-author of the music. The majority of the changes he made were only such as would be expected from a record producer. The introduction of a string section was a more significant contribution, which would properly have been reflected by a 20 per cent share in the copyright.

The case is useful in showing the point at which contributions by a music producer become sufficiently significant to afford the producer a share of the copyright ownership. The case also highlights the importance of documenting the share of copyright ownership in a record.

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[1] Minder Music Ltd & Another v Sharples [2015] EWHC 1454 (IPEC)

Instagram, copyright and the fair use

In a sure sign that there are people in the world with more money than […]

In a sure sign that there are people in the world with more money than sense, Richard Prince, a US artist, already notorious for pushing the boundaries of US copyright law, is taking other people’s Instagram photographs without their permission, altering them slightly, and selling the works for sums rising to around US $100,000 a piece. Prince presents the photograph as a screenshot, adding an additional nonsensical final comment underneath the “likes”. He exhibited the works in a gallery in New York last autumn to a mixture of acclaim, bewilderment and disgust.

At least one of the subjects of the photograph has said that she didn’t know anything about the appropriation of her “selfie”, that Prince never approached her for permission, that she was surprised to learn that it had sold for US $90,000 and that she did not know the identity of the picture’s new owner. Apparently, she has no plans to sue for copyright infringement.

Copyright in a photograph vests in the photographer. As such, they have the right to control the distribution of the photographs. There is in US law an exception to the exclusive rights conferred on a copyright owner called the “fair use” exception, similar to the fair dealing exception in the UK. This permits the use of a copyright-protected work without the consent of the copyright holder provided the use is fair. The legislation states that fair use includes use for purposes such as criticism, comment, news reporting, teaching scholarship, or research, none of which really apply in this case. It will also be relevant to determine whether the use is for commercial or non-profit-making purposes; again, this would seem to count against Prince in this case.

However, in a previous case involving Prince, he was able to rely on the fair use doctrine [1]. In the best know photograph in that case, Prince had taken a photograph of a Rastafarian and painted over his eyes, nose and mouth and pasted a photograph of an electric guitar into his hands. The Second Circuit found for Prince on the basis that the work was “transformative”, and, as such, covered by the fair use exception. It contrasted the serenity of the original image with the jarring and provocative nature of the Prince image.

It has been suggested that Prince is deliberately being provocative, seeing how far he can push the fair use exception. It is, at the very least, strongly arguable that adding a fatuous comment to the bottom of a selfie is not transformative and that the fair use exception will not avail him of a defence to copyright infringement in the apparently unlikely event that a claim will be brought. For its part, Instagram is not planning to take action against Prince.

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[1] Cariou v. Prince,11-1197-cv (2d Cir. April 25, 2013)

Italy drops opposition to the EU unitary patent

It has been reported that Italy has dropped its opposition to the EU unitary patent, […]

It has been reported that Italy has dropped its opposition to the EU unitary patent, leaving Spain as the sole Member State still opposing it.

The rationale for the EU unitary patent is to provide a single pan-European patent and a single court for litigating such patents. The unitary patent will sit alongside the “standard” European patents granted by the European Office, which take effect in Member States on a national basis. Under the unitary patent system, it will not be necessary for each unitary patent to be validated in individual Member States.

Italy, like Spain, had opposed the legislation behind the unitary patent on the basis that it contravened EU law. That challenge was rejected by the Court of Justice in 2013. Italy and Spain maintained that the requirement for unitary patent applications to be translated into English, French or German would create a barrier to trade and distort competition in their own countries. A further challenge – brought by Spain – to the language translation requirements was rejected by the Court of Justice last month, the Court ruling that they were an “appropriate and proportionate” response to the “legitimate objective” being pursued.

Following that last ruling, the Italian Government has said that it is no longer going to challenge the legal basis of the unitary patent and that it will press ahead with implementation. Indeed, it has described accession to the unitary patent as “a priority”.

If it feels like the process for establishing the EU unitary patent has been dragging on for years, that is because it has and we still do not know when it will come into force – 2017 seems the most likely candidate date at present although no-one would be surprised if there were further delays. We will keep you updated with developments.

Parody and theatrical copyright

Older readers may recall the US sitcom Three’s Company from the late-70’s/early-80s (based on the […]

Older readers may recall the US sitcom Three’s Company from the late-70’s/early-80s (based on the British sitcom Man about the House). The premise of the series was that two single women share a house with a man. The landlord is unhappy at what this might lead to so, in order to remain as a tenant, the man pretends to be gay, thus reassuring the landlord that there will be nothing untoward taking place in his property. The comedy was of the innuendo, Carry On variety and the series, considered to be avant-garde at the time, aired at prime time.

Some 30 years later, a play 3C was staged on Broadway. The play adopts the Three’s Company premise – two women sharing a house with a gay man – but in this case the emphasis is not on light-hearted slapstick but themes like homophobia, sexual assault and drug abuse. Critics used words like “existentialism” and “dysthymia” to describe it, not words readily associated with Three’s Company.

Copyright in Three’s Company is owned by DLT Entertainment. DLT threatened to institute proceedings against 3C’s playwright, David Adjmi, claiming, among other things, that the play would adversely impact the market for its own stage adaptation of Three’s Company. Adjmi sought a declaration for non-infringement in the Southern District Court of New York.

The judge ruled in favour of Adjmi, invoking the “fair use” exception to copyright infringement. A US court has a number of factors to consider when applying the “fair use” doctrine but in this case the various factors were overwhelmed by just one – the transformative nature of the allegedly infringing production. The judge accepted that there were many similarities between the two productions but that 3C was “clearly transformative”. In the judge’s words “DLT might not like the transformation, but it is a transformation nonetheless”. It was true that 3C copied extensively from Three’s Company but the play’s transformative nature outweighed what was taken.

The judge also considered that DLT was unlikely to suffer much harm from 3C, the two productions hardly being market substitutes for one another.

The lesson for playwrights is perhaps that if you are going to base your play on an existing work, you should look to subvert, ridicule and otherwise disparage the existing work rather than produce a tribute act.

Pre-action disclosure in patent cases

In the High Court case of Big Bus v Ticketogo [1] Big Bus, which operates […]

In the High Court case of Big Bus v Ticketogo [1] Big Bus, which operates open top bus sightseeing tours, successfully applied for pre-action disclosure against Ticketogo under the Civil Procedure Rules, namely CPR 31.16, to obtain patent licences previously granted by Ticketogo.

Ticketogo is the proprietor of a UK patent for a ticketing system, which it claimed Big Bus was infringing. In October 2012, Ticketogo’s solicitors wrote to Big Bus, alerting them to the existence of the patent and stating that it was prepared to enter into a licence with Big Bus as it had done with other companies. At the hearing, Ticketogo’s counsel stated that it had in fact granted over 60 licences of the patent and the evidence showed that Ticketogo conducts no business other than patent licensing.

Big Bus denied infringement or that it needed a licence; in response, Ticketogo name-dropped existing licensees presumably with the intention of encouraging Big Bus towards the licence. Ticketogo continued to insist upon Big Bus’ need for a licence and referenced other licences it had recently concluded. To help it evaluate the claim and perhaps find a way towards resolution of the dispute, Big Bus responded with an application for pre-action disclosure (i.e. disclosure before the commencement of legal proceedings) for copies of the licences as well as other documents. The judge granted the application.

In reaching his decision, the judge considered whether the applicant and respondent were likely to be the parties to any subsequent proceedings, whether the respondent’s duty of standard disclosure would extend to the documents or classes of documents subject to the pre-action application if proceedings had started, and whether disclosure would dispose fairly of the anticipated proceedings. The judge found all these threshold conditions to be met. The judge said that it was not necessary to obtain the consent of all the licensees for disclosure prior to granting the application – a simple letter notifying them of their right to object to disclosure of their licences would suffice.

This is a useful decision which could be deployed by potential litigants faced with unmerited claims from patent trolls to force the trolls to disclose licence terms. The decision helps to level the playing field between parties where one holds all the relevant information and the other none at all, or very little. The judge emphasised the importance of “transparency” in helping to achieve resolution of disputes without the need to institute proceedings. The courts will not be sympathetic where the application is in reality only a “fishing” expedition and the applicant will need to be specific about the category of documents it wishes to see.

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[1] [2015] EWHC 1094 (Pat)

Rihanna stopped by Batman (and Robin)?

The pop star Rihanna is no stranger to intellectual property disputes – in February this […]

The pop star Rihanna is no stranger to intellectual property disputes – in February this year we reported on her successful passing off claim against Topshop. This time she is fighting a caped crusader.

Rihanna has applied to the US Patent and Trademark Office for registration of the trade mark ROBYN. Rihanna’s real name is Robyn Rihanna Fenty. The application was made in respect of, among other things “on-line non-downloadable general feature magazines”. The application has now been opposed by DC Comics, owned by Warner Brothers, the proprietor of the trade mark “ROBIN”, Robin being of course, the side-kick of Batman. The registration covers, among other things, “comic books”.

DC Comics maintain that there is a likelihood of confusion between the marks and also that registration of the ROBYN mark would dilute their own mark, and would effectively trade off the substantial goodwill associated with the ROBIN name.

The ball is now back with Rihanna’s representatives to consider how to tackle the opposition. We will keep you updated.

Sky and Skype and the likelihood of confusion

The General Court has delivered a ruling in the long-running dispute between Sky and Skype, […]

The General Court has delivered a ruling in the long-running dispute between Sky and Skype, owned by Microsoft, concerning Skype’s Community trade mark application for the word mark SKYPE and the SKYPE device mark [1].

The applications were made in 2004 and were successfully opposed by Sky. Skype’s appeal to the Board of Appeal was unsuccessful from where Skype appealed to the General Court. The General Court agreed with the Board of Appeal that there was a visual, phonetic and conceptual similarity between the competing marks. It considered that the average consumer would not break the word SKYPE into two components and that the word SKY was the dominant element of the word. As the evidence showed that Sky enjoyed a “very wide and impressive reputation, and that the SKY brand is one of the most well-known brands in the United Kingdom and is regarded by consumers as being at the leading edge of digital media innovation” the General Court held that there was a likelihood of confusion.

The use of the cloud shape that surrounds the SKYPE mark had a merely decorative function, which was immaterial when considering the competing marks. If anything, its use militated against Skype as clouds are readily associated with the sky.

The Court also rejected Skype’s argument that the peaceful co-existence of the two signs was evidence of an absence of a likelihood of confusion.

Skype argued that its mark had achieved a “secondary meaning” through its extensive use but the General Court dismissed this argument as actually counter-productive to Skype’s case as it would mean the mark had become generic and therefore descriptive and, as such, incapable of registration.

Microsoft has indicated an intention to appeal to the Court of Justice of the European Union.

At first blush the decision might be surprising as surely no-one would confuse Sky and Skype? It is possible that Skype did not adduce sufficient evidence to support its position on confusion. However, it is also worth considering that the Skype applications were made in respect of a broad range of services and it is conceivable, with further convergence in technology, that Sky and Skype will compete in more areas than they currently do.

It is arguable as to how far the Skype mark has become generic. The word “skype” is certainly used as a verb but is this only the case when used in respect of Skype’s own service and not, for example, competing services such as FaceTime?

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[1] Skype Ultd v OHIM, Cases T-183/13, T-184/13 and T-423/12

The “fair use” exception in news reporting

The footage of the fatal shooting of an unarmed man, Walter Scott, in the back […]

The footage of the fatal shooting of an unarmed man, Walter Scott, in the back by a police officer in South Carolina quickly went viral. The story was upsetting and now it is reported that the man who shot the video, Feidin Santana, has instructed representatives to send cease and desist letters to news outlets demanding that they pay him for showing the footage. It is reported that Mr Santana is requesting $10,000 for permission to show the footage, although it is also reported that some news agencies are being asked for more and others for less.

Whilst the story might seem a little unedifying, it is only fair to say that this is by no means a first. A video of a mob attacking a man during the LA riots in 1992 made thousands of dollars for the man who shot the video and then sold the rights to it to broadcasters. Similarly, people who took videos of the child murder victim JonBenet Ramsey sold footage of her dancing, the broadcasters reportedly having shown the footage for months before they agreed to pay for it.

It may be unarguable that copyright in the footage is owned by Mr Santana so he may have the basis for a claim. The media organisations, should they be sued for copyright infringement, may seek to rely on the US “fair use doctrine”, which is similar to the “fair dealing” exception which applies in UK copyright law. The fair use doctrine is an exception to the exclusive right given to a copyright owner and permits limited use of copyright material without the copyright owner’s consent for the purposes of, for example, commentary, criticism, parody, research, teaching, library archiving – and news reporting.

Factors relevant under US law in considering what is fair include:

the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;
the nature of the copyright material;
the amount of the portion used in relation to the copyright material as a whole; and
the effect of the use upon the potential market for, or value of, the copyright material.

The fair use doctrine arguably has not kept pace with developments in technology, and, if the case does end up in court (and it is extremely early days), it will be very interesting to see how the judges apply it in a very modern context.

Contacts

Alan Harper, Senior Associate, Intellectual Property & Trade Marks at Walker Morris LLP

Alan Harper
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