Art and Copyright 9781474200363, 9781849461627

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Preface This book is an updated and revised version of the first edition, published some ten or so years ago. At least one reviewer of the first edition commented that it would be helpful to have images in the book, though it is not common in law texts. Images are not included in the second edition, not least to keep the price of the book down, but searches on the Internet will provide access to a number of the cases and related images discussed in this book. The author’s website (http:// www.artcopyright.org.uk) has links to selected cases, images and related legislation, and it is planned to update the website to highlight significant developments. Appendix B to the book also provides details of some sources of further information. The acknowledgements in respect of the first edition still stand, and these are noted overleaf. For the second edition I am grateful to Richard Hart and the team at Hart Publishing for taking the book on in the first place and encouraging a second edition. I am also grateful for the assistance of Blake Lapthorn’s Information Services team, in particular Helen Gwinn, and to the reviewers of the first edition, some of whose helpful comments I have tried to address in this edition. Thanks are also due to my colleagues Andrea Hayes and Lucy Morris, who helped with the manuscript and Appendix A respectively. Simon Stokes Clerkenwell 12 November 2011

Acknowledgments (in respect of the First Edition) This book draws on my work with the Institute of Art and Law in

Leicester since 1996. I would like to thank the Institute’s Director, Ruth Redmond-Cooper, for giving me the opportunity to deepen my interest in art and copyright. Tarlo Lyons has provided much needed support on occasion. My secretaries in the last year, Natalie Reynolds and Helen Barnes, helped with the typing of the manuscript. Lucy Awad, trainee solicitor, checked the footnotes and helped with proofreading. Helen Dewar, the firm’s librarian, tracked down a large number of cases and press cuttings. Jonathan DC Turner, Barrister, of 4 Field Court provided updates on the progress of two copyright cases in which he was Counsel and which are discussed in this book: Designers Guild and Antiquesportfolio. Simon Martin, Partner, Bell Gully, Auckland, provided assistance with some New Zealand materials. I owe my interest in art to my parents, in particular to my father Roger Smith, an artist, and childhood visits to the Walker Art Gallery. The greatest debts are to my wife, for her encouragement and support in a project of (seemingly) ever increasing scope, and to my daughter Hannah, for her generally cheerful disposition throughout. Simon Stokes Clerkenwell 29 January 2001

Frequently Cited Material I. Books and Articles Adeney

Angelopoulos

Barron (2002) Barron (2004) Bently

Bently and Sherman Blakeney

Booton Bowrey

E Adeney, The Moral Rights of Authors and Performers: An International and Comparative Analysis (Oxford, Oxford University Press, 2006) C J Angelopoulos, ‘Freedom of Expression and Copyright: The Double Balancing Act’ (2008) 3 Intellectual Property Quarterly 328–53 A Barron, ‘Copyright Law and the Claims of Art’ (2002) 4 Intellectual Property Quarterly 368–401 A Barron, ‘The Legal Properties of Film’ (2004) 67(2) Modern Law Review 177–208 L Bently, ‘Art and the Making of Modern Copyright Law’ in D McClean and K Schubert (eds), Dear Images Art, Copyright and Culture (London, Ridinghouse/ICA, 2002) L Bently and B Sherman, ‘Copyright Aspects of Art Loans’ in N Palmer (ed), Art Loans (London, Kluwer, 1996) M Blakeney, ‘The Protection of Traditional Knowledge under Intellectual Property Law’ (2000) 6 European Intellectual Property Review 251–61 D Booton, ‘Framing Pictures: Defining Art in UK Copyright Law’ (2003) 1 Intellectual Property Quarterly 38–68 K Bowrey, ‘Who’s Writing Copyright’s History?’ (1996) 6 European Intellectual Property Review 322

xvi  Frequently Cited Material Coombes Copinger

Cornish

Demarsin et al Dietz

Dreier and Hugenholz DuBoff and King Dworkin and Taylor

Edwards and Waelde

Françon

R Coombes, The Cultural Life of Intellectual Properties (Durham, NC, Duke University Press, 1998) K Garnett et al, Copinger and Skone James on Copyright [Current edition is the 16th edn (London, Sweet & Maxwell, 2011); unless otherwise noted, all references herein are to the 14th edn (London, Sweet & Maxwell, 1999)] WR Cornish, Intellectual Property [Current edition is the 7th edn by Cornish, Llewelyn and Aplin (London, Sweet & Maxwell, 2010); unless otherwise noted, all references herein are to the 4th edn (London, Sweet & Maxwell, 1999)] B Demarsin et al (eds), Art & Law (Brugge, die Keure, 2008) A Dietz, ‘Term of Protection in Copyright Law and Paying Public Domain: A New German Initiative’ (2000) European Intellectual Property Review 506 T Dreier and B Hugenholz (eds), Concise European Copyright Law (Alphen aan den Rijn, Kluwer Law International, 2006) LD DuBoff and CO King, Art Law in a Nutshell, 3rd edn (St Paul, MN, West Group, 2000) G Dworkin and R Taylor, Blackstone’s Guide to the Copyright, Designs and Patents Act 1988 (London, Blackstone Press, 1989) L Edwards and C Waelde (eds), Law and the Internet [Current edition is the 3rd edn (Oxford, Hart Publishing, 2009); unless otherwise noted, references herein are to the 2nd edn (Oxford, Hart Publishing, 2000)] A Françon, ‘Protection of Artists’ Moral Rights on the Internet’ in Pollaud-Dulian (below)

Frequently Cited Material   xvii Ginsburg JC Ginsburg, ‘How Copyright Got a Bad Name for Itself’ Research Paper Number 02-46, Columbia Law School Public Law & Legal Theory Research Paper Group (18 October 2002), available at SSRN (abstract id 342182) and published in (2002) 26(1) Columbia Journal of Law and the Arts 61–73 Golvan C Golvan, ‘Aboriginal Art and Copyright: An Overview and Commentary Concerning Recent Developments’ (1999) European Intellectual Property Review 599 Gordon (1993) WJ Gordon, ‘A Property Right in Self Expression: Equality and Individualism in the Natural Law of Intellectual Property’ (1993) 102 Yale Law Journal 1533 Gordon (1999) WJ Gordon, ‘Touring the Certainties of Property and Restitution : A Journey to Copyright and Parody’ (Oct 1999) Oxford Electronic Journal of Intellectual Property Rights Gredley and Maniatis E Gredley and S Maniatis, ‘Parody: A Fatal Attraction? Part 1: The Nature of Parody and its Treatment in Copyright’ (1997) 7 European Intellectual Property Review 339 Gringras C Gringras, The Laws of the Internet (London, Butterworths, 1997) Hansen HC Hansen, ‘International Copyright: An Unorthodox Analysis’ (1996) 29 Vanderbilt Journal of Transnational Law 579 Hansmann and Santilli H Hansmann and M Santilli, ‘Authors’ and Artists’ Moral Rights: A Comparative Legal and Economic Analysis’ (1997) 26 Journal of Legal Studies 95 Hargreaves Review I Hargreaves, Digital Opportunity: A Review of Intellectual Property and Growth (UK Intellectual Property Office, May 2011)

xviii  Frequently Cited Material Heath and Kamperman C Heath and A Kamperman Sanders Sanders (eds), New Frontiers of Intellectual Property Law: IP and Cultural Heritage, IIC Studies in Industrial Property and Copyright Law Volume 25 (Oxford, Hart Publishing, 2005) Hettinger EC Hettinger, ‘Justifying Intellectual Property’ (1989) 18 Philosophy & Public Affairs 31 Hughes J Hughes, ‘The Philosophy of Intellectual Property’ (1988) 77 Georgetown Law Journal 287 Hutcheon L Hutcheon, A Theory of Parody: The Teaching of Twentieth-Century Art Forms (London, Methuen, 1985) Isaac B Isaac, Brand Protection Matters (London, Sweet & Maxwell, 2000) Jaszi P Jaszi, ‘Toward a Theory of Copyright: The Metamorphoses of “Authorship”’ (1991) 42 Duke Law Journal 455 Johnson E Johnson, ‘Intellectual Property and the Incentive Fallacy’ Florida State University Law Review (forthcoming); draft dated 4 May 2011 available at SSRN, id 1746343 Joyce C Joyce, W Patry, M Leaffer and P Jaszi, Copyright Law, 5th edn (New York, LEXIS, 2000) Karlen P Karlen, ‘Intellectual Property in Intellectual Creations’ (Apr 1999) Copyright World 14 Kearns P Kearns, The Legal Concept of Art (Oxford, Hart Publishing, 1998) Kerly D Kitchin et al, Kerly’s Law of Trade Marks and Trade Names, 13th edn (London, Sweet & Maxwell, 2001) Laddie (1996) HIL Laddie, ‘Copyright: Over-Strength, Over-Regulated, Over-Rated?’ (1996) 5 European Intellectual Property Review 253 Laddie HIL Laddie, P Prescott, M Vitoria et al, The Modern Law of Copyright and

Frequently Cited Material   xix

Lai Lea Merryman and Elsen McClean and Schubert Millinger Nimmer Ong

Pila Polakovic

Pollaud-Dulian Rahmatian

Designs, 3rd edn (London, Butterworths, 2000) S Lai, The Copyright Protection of Computer Software in the United Kingdom (Oxford, Hart Publishing, 2000) G Lea, ‘Moral Rights and the Internet: Some Thoughts from a Common Law Perspective’ in Pollaud-Dulian (below) JH Merryman and AE Elsen, Law, Ethics and the Visual Arts, 4th edn (The Hague, Kluwer Law International, 2002) D McClean and K Schubert (eds), Dear Images Art, Copyright and Culture (London, Ridinghouse/ICA, 2002) DM Millinger, ‘Copyright and the Fine Arts’ (1980) 48 George Washington Law Review 354 MB Nimmer and D Nimmer, Nimmer on Copyright (New York, M Bender, 1998) B Ong, ‘Originality from Copying: Fitting Recreative Works into the Copyright Universe’ (2010) 2 Intellectual Property Quarterly 165–91 J Pila, ‘An Intentional View of the Copyright Work’ (2008) 71(4) Modern Law Review 535–58 RM Polakovic, ‘Should the Bauhaus be in the Copyright Doghouse? Rethinking Conceptual Separability’ (1993) 64 University of Colorado Law Review 871 F Pollaud-Dulian (ed), The Internet and Authors’ Rights (London, Sweet & Maxwell, 1999) A Rahmatian, ‘Non-assignability of Authors’ Rights in Austria and Germany and Its Relation to the Concept of Creativity in Civil Law Jurisdictions Generally: A Comparison with UK Copyright Law’ (2000) 5 Entertainment Law Review 95

xx  Frequently Cited Material Ricketson

S Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886–1986 (London, Kluwer, 1987) Rose M Rose, Authors and Owners (Cambridge, MA, Harvard University Press, 1993) Rosenmeier and Teilmann M Rosenmeier and S Teilmann (eds), Art and Law: The Copyright Debate (Copenhagen, DJØF Publishing, 2005) Rushton M Rushton, ‘Economics and Copyright in Works of Artistic Craftsmanship’, presented at the Shepherd and Wedderburn Centre for Research into Intellectual Property and Technology (SCRIPT) at the University of Edinburgh (30 October 2000), available at http://www.law.ed.ac.uk/‌script/newscript/‌ rushton.htm (accessed 13 July 2011) Russell-Clarke M Howe QC, Russell-Clarke on Industrial Designs [Current (8th) edition is now called Russell-Clarke and Howe on Industrial Designs (London, Sweet & Maxwell, 2010); unless otherwise noted, references herein are to the 6th edition (London, Sweet & Maxwell, 1998)] Saunders D Saunders, Authorship and Copyright (London, Routledge, 1992) Sherman (1994) B Sherman, ‘From the Non-original to the Ab-original: A History’ in Sherman and Strowel (below) Sherman (1995) B Sherman, ‘Appropriating the Postmodern: Copyright and the Challenge of the New’ (1995) 4 Social & Legal Studies 31 Sherman and Strowel B Sherman and A Strowel (eds), Of Authors and Origins (Oxford, Clarendon Press, 1994) Spence (1996) M Spence, ‘Passing Off and the Misappropriation of Valuable Intangibles’ (1996) 112 Law Quarterly Review 472 Spence (1998) M Spence, ‘Intellectual Property and the Problem of Parody’ (1998) 114 Law Quarterly Review 594

Frequently Cited Material   xxi Spence (2007)

M Spence, Intellectual Property (Oxford, Oxford University Press, 2007) Stamatoudi and Torremans IA Stamatoudi and PLC Torremans (eds), Copyright in the New Digital Environment, Volume 8 in the Perspectives on Intellectual Property series (London, Sweet & Maxwell, 2000) Sterling JAL Sterling, World Copyright Law (London, Sweet & Maxwell, 1999) Stokes (2006) S Stokes, Artist’s Resale Right: Law and Practice (Leicester, Institute of Art and Law, 2006) Stokes (2009) S Stokes, Digital Copyright: Law and Practice, 3rd edn (Oxford, Hart Publishing, 2009) Teilmann-Lock S Teilmann-Lock, British and French Copyright: A Historical Study of Aesthetic Implications (Copenhagen, DJØF Publishing, 2009) Thomas D Thomas, Copyright and the Creative Artist (London, Institute of Economic Affairs, 1968) Vaver D Vaver, ‘Intellectual Property: The State of the Art’ (2000) 116 Law Quarterly Review 621 von Lewinski S von Lewinski, International Copyright Law and Policy (Oxford, Oxford University Press, 2008) Yen AC Yen, ‘The Interdisciplinary Future of Copyright Theory’ in M Woodmansee and P Jaszi (eds), The Construction of Authorship (Durham, NC, Duke University Press, 1994) Zemer L Zemer, The Idea of Authorship in Copyright (Aldershot, Ashgate, 2007)

xxii  Frequently Cited Material II.  Journals/Information Resources ARTL EIPR ENT LR RIDA SSRN

Art, Antiquity and Law (Institute of Art and Law, Leicester/Kluwer) European Intellectual Property Review (Sweet & Maxwell) Entertainment Law Review (Sweet & Maxwell) Revue Internationale du Droit d’Auteur Social Science Research Network electronic library

III.  UK and European Intellectual Property Law Reports FSR ECDR EMLR RPC

Fleet Street Reports European Copyright and Designs Reports Entertainment and Media Law Reports Reports of Patent Cases

IV.  EU Directives Designs Directive Electronic Commerce Directive Information Society Directive Resale Right Directive

Directive on the legal protection of designs (Directive 98/71/EC) Directive on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (Directive 2000/31/EC) Directive on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society (Directive 2001/29/EC) Directive on the Resale Right for the benefit of the Author of an Original Work of Art (Directive 2001/84/EC)

V.  UK Statutes CDPA

Copyright, Designs and Patents Act 1988

Table of Cases European and International Cases European Court of Human Rights Reklos v Greece, case 1234/05 [2009] ECHR 200 (15 January 2009)..........................................................................................225 Von Hannover v Germany (App no 59320) (24 June 2004), (2005) 40 EHRR 1............................................................................224–5 European Union Bezpečnostní softwarová asociace - Svaz softwarové ochrany v Ministerstvo kultury, Case C-393/09...........................................111 Fundación Gala-Salvador Dalí and Visual Entidad de Gestión de Artistas Plásticos (VEGAP) v Société des auteurs dans les arts graphiques et plastiques (ADAGP) and Others, Case C-518/08.....104 Google France & Google Inc v Louis Vuitton, Case C-236/08..........155 Infopaq International v Danske Dagblades Forening, Case C-5/08.............................................................................. 24, 183–5 Phil Collins and Others, Joined Cases C-92/92 and C-326/92..... 26, 101 Sociedad General de Autores y Editores de España (SGAE) v Rafael Hoteles SA, Case C-306/05....................................... 157, 183 WIPO Gallerina v Mark Wilmshurst (WIPO Case No. D2000-0730)..........221 Roberts v Boyd (WIPO Case No D2000-0120).................................220 Winterson v Hogarth (WIPO Case No D2000-0235).......................220 National Cases Common Law Jurisdictions AG Spalding & Brothers v AW Gamage Ltd (1915) 32 RPC 273 (HL)..........................................................................................216

xxiv  Table of Cases AG v Guardian (No 2) [1988] 3 All ER 640...................................... 33 Agnew & Co v Day (1916) 32 TLR 349........................................5, 23 AMP Inc v Utilux Pty Ltd [1971] FSR 572........................................ 74 Anacon Corporation Limited and Another v Environmental Research Technology Limited and Another [1994] FSR 659.....34, 36 Antiquesportfolio.com plc v Rodney Fitch and Co Ltd, The Times (21 July 2000) (ChD)...........................128–9, 138–9, 150, 152 Artnews, LLC v Ecorp.com (2000), Claim No FA0007000095231 (National Arbitration Forum) (22 August 2000)...........................221 Ash and Another v McKennitt and Others [2006] EWCA Civ 1714 (14 December 2006)......................................................223 Ashdown v Telegraph Group Ltd [2001] EWCA Civ 1142; [2002] RPC 5........................................... 65, 151, 153, 177, 210, 232 Associated Newspapers Ltd v HRH Prince of Wales [2006] EWCA Civ 1776 (21 December 2006)..........................................211 Aubrey Max Sandman v Panasonic U.K. Ltd & Matsushita Electric Industrial Co Ltd [1998] FSR 651.................................... 34 Austin v Columbia Gramaphone Co [1917-23] MCC 398................... 6 Autospin (Oil Seals) Ltd v Beehive Spinning (A Firm) [1995] RPC 683...............................................................16, 21, 51, 64, 231 Baigent & Another v The Random House Group Ltd [2007] EWCA Civ 247 (28 March 2007).................................................. 60 Barrett v Universal-Island Records Ltd and Others [2006] EWHC 1009 (Ch) (15 May 2006)................................................153 Bauman v Fussell [1978] RPC 485 (CA)........................................... 57 BBC Worldwide Ltd v Pally [1998] FSR 665..................................72–3 Billhöfer Maschinenfabrik GmbH v TH Dixon & Co Ltd [1990] FSR 105...................................................................................... 36 Blake A Field v Google Inc, 412 F.Supp.2d 1106 (D Nev 2006).........154 Bleistein v Donaldson Lithographing Co 188 US 239 (1903)............. 32 Bonz Group (Pty) Ltd v Cooke [1994] 3 NZLR 216.......................47–8 Bookmakers’ Afternoon Greyhound Services Ltd v Wilf Gilbert (Staffordshire) Limited [1994] FSR 723.................................. 57, 115 Brabourne v Hough [1981] FSR 79.................................................214 Bradbury, Agnew & Co v Day (1916) 32 TLR 349.........................5, 23 Bradbury v Hotten (1872) LR 8 Exch 1.........................................65–6 Brandir International v Cascade Pacific Lumber 834 F.2d 1142, 1145 (2d Cir 1987)....................................................................... 71 Breville Europe Ltd v Thorn EMI Domestic Appliances Ltd [1995] FSR 77.............................................................................. 40

Table of Cases   xxv Bridgeman Art Library Ltd v Corel Corp, 25 FSupp 2d 421 (SDNY 1998); (2000) 5 Entertainment Law Review 104........ 127–30, 135–40, 157, 159, 167, 201 Brighton v Jones [2005] FSR 16....................................................... 59 Brigid Foley Ltd v Elliott [1982] RPC 433......................................... 64 Bristol Conservatories Ltd v Conservatories Custom Built Ltd [1989] RPC 455 (CA)..................................................................212 Britain v Hanks (1902) 86 LT 765.................................................... 44 British Horseracing Board v William Hill [2005] EWCA Civ 863.....106 British Leyland v Armstrong [1986] AC 577; [1986] RPC 279.... 72, 153 British Northrop Ltd v Texteam Blackburn Ltd [1974] RPC 57...36, 52 British Telecommunications and Others v One in a Million and Others [1999] 4 All ER 476...................................................219 Brooklyn Institute of Arts and Sciences v Fantastic Sites Inc, Claim No FA0009000095560 (National Arbitration Forum) (2 November 2000).....................................................................222 Brown v Mcasso Music Production Ltd [2006] EMLR 3..................163 Bulun Bulun and Another v R&T Textiles Pty Ltd [1998] 1082 FCA.......................................................................................188–9 Bulun Bulun v Neljam (1988) (unreported).....................................186 Burge v Swarbrick (2007) 232 CLR 336............................................ 48 Burke and Margot Burke Limited v Spicers Dress Designs [1936] Ch 400........................................................................................ 47 Burrow-Giles Lithographic Co v Sarony 111 US 53 (1884)...............132 Campbell v Acuff-Rose Music (1994) 510 US 569............. 144–5, 176–7 Campbell v MGN Ltd [2004] UKHL 22 (6 May 2004).....................224 Canon Kabushiki Kaisha v Green Cartridge Co (Hong Kong) Ltd [1997] AC 728......................................................................153 Carlton Illustrators v Coleman [1911] KB 771.................................. 89 Carol Barnhart Inc v Economy Cover Corp (1985) 773 F.2d 411 (2d Cir)....................................................................................... 71 Carter v Helmsley-Spear, Inc, 861 F Supp 303 (SDNY 1994); 71 F.3d 77 (2nd Cir 1995)............................................................. 96 CBS Songs Ltd and Others v Amstrad Consumer Electronics plc [1988] 1 AC 1013............................................................. 57, 161 Christoffer v Poseidon Film Distributors Ltd [2000] EIPR N-34...............................................................................51–2 Cie Generale des Establissements Micheline-Michelin & Cie v CAW-Canada, 71 CPR 3d 348.....................................................176 Clark v Associated Newspapers [1998] RPC 261..................174–5, 212

xxvi  Table of Cases Coca-Cola Co v Gemini Rising Inc, 346 F.Supp 1183, 1193 (EDNY 1972).............................................................................173 Coco v AN Clark (Engineers) Ltd [1969] RPC 41............................210 Confetti Records v Warner Music [2003] EWCH 1274..................93–4 Consorzio Del Prosciutto di Parma v Marks & Spencer plc [1991] RPC 351..........................................................................211 Coogi Australia v Hysport International [1998] FCA 1059............... 48 Copyright Collecting Society, Re, Supreme Court, 23 November 1999, [2000] EIPR N-63............................................................... 80 Creation Records v News Group Newspapers, 16 Tr L544, The Times (29 April 1997); [1997] EMLR 444........... 40–2, 46–7, 54, 165–6, 210, 228–9 Crocker v Papunya Tula Artists Pty Ltd (1983-85) 5 IPR 426............. 89 Crosstown Music Company 1, LLC v Rive Droite Music Ltd & Others [2010] EWCA Civ 1222 (2 November 2010.......................235 Cuisenaire v Reed [1963] VR 719................................................45, 47 Cuisenaire v SW Imports Ltd [1968] 1 Ex CR 493............................ 45 Davis (J&S) (Holdings) Ltd v Wright Health Group Ltd [1988] RPC 403..........................................................................35, 54, 229 De Maudsley v Palumbo [1996] FSR 447.........................................211 Designers Guild v Russell Williams (Textiles) Ltd [1998] FSR 803 (ChD), [2000] FSR 121 (CA), [2000] 1 WLR 2416 (HL)....................................................... 5–6, 17, 59–64, 106, 230–2 Diana, Princess of Wales Trade Mark Application [2001] ETMR 25...................................................................................217 Dicks v Yates (1881) 18 Ch D 76 (CA).............................................. 24 Donaldson v Becket (1774) 2 Bro PC 129; (1774) 4 Burr 2408.......18, 27 Douglas and Others v Hello Ltd and Others [2005] EWCA Civ 595 (18 May 2005)................................................................223 Du Boulay v Du Boulay [1869] LR 2PC 430 [1999] RPC 567............216 Durand v Molino & Another [2000] ECDR 320........................ 57, 200 Dyson Ltd v Qualtex (UK) Ltd [2004] EWHC 2981 (Ch), [2006] EWCA Civ 166................................................................. 75 Eden v Whistler, (1898) DP 1900 I 497............................................. 86 Edmund Irvine Tidswell Ltd v Talksport Ltd [2002] EWHC 367 (13 March 2002)...................................................................215 Electronic Techniques (Anglia) Ltd v Critchley Components Ltd [1997] FSR 401.................................................................34, 58 Elvis Presley Trade Marks, Re [1997] RPC 543................... 216–18, 223 ENTEC (Pollution Control) Ltd v Abacus Mouldings [1992] FSR 332..... 5

Table of Cases   xxvii Esquire Inc v Ringer (1978) 591 F.2d 796.......................................... 71 Explorologist Ltd v Brian Sapient, aka Brian J Cutler, NDCA Case No. 3:07-cv-02478-BZ........................................................161 Express Newspapers plc v Liverpool Daily Post & Echo [1985] 1 WLR 1089...............................................................................114 Express Newspapers plc v News(UK) Ltd [1990] 1 WLR 1320.........138 Exxon v Exxon Insurance [1982] RPC 69................................ 167, 184 Farmers Build Ltd v Carier Bulb Materials Handling Ltd [1999] RPC 461 (CA)............................................................................. 75 Feist Publications v Rural Telephone Service Co 499 US 340 (1991) 113 L Ed 358 (1991) (Sup Ct)........................... 5, 51, 133, 159 Fisher v Brooker [2007] FSR 12, [2008] FSR 26 (CA).......................163 Flashing Badge Co Ltd v Groves [2007] FSR 36................................ 77 Football Association Premier League Ltd v Panini UK Ltd [2004] FSR 1.......................................................................................... 68 Football Association Premier League Ltd v QC Leisure (No 2) [2008] FSR 32.............................................................. 35, 57–8, 115 Football Dataco Ltd & Others v Sportradar GmbH & Another [2010] EWHC 2911 (Ch) ; [2011] EWCA Civ 330........................161 Foster v Mountford (1976-78) 29 FLR 233...................................185–6 Fournet v Pearson Ltd (1897) 14 TLR 82 (CA)................................. 37 Francis Day & Hunter v 20th Century Fox [1940] AC 112...............184 Fraser v Thames Television [1984] QB 44........................................211 Fraser-Woodward Ltd v British Broadcasting Corporation Brighter Pictures Ltd [2005] EWHC 472 (Ch).......................................66, 68 Frost and Reed v The Olive Series Publishing Company (1908) 24 TLR 649................................................................................. 57 Galerie Furstenberg v Caffaro 697 FSupp 1282 (SDNY 1988).................................................................................. 214, 221 Gambart v Ball, 14 CB (NS) 306, 143 ER 463 (1863)......................... 28 George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1975] RPC 31; [1976] AC64........................................ 45–9, 54, 71, 77, 213 George Ward (Moxley) Ltd v Richard Sankey Ltd and Another [1988] FSR 66................................................................................ 5 Glyn v Weston Feature Film Company [1916] 1 Ch 261............. 33, 177 Gordon Fraser Gallery Ltd v Tatt [1966] RPC 505...........................213 Graves’ Case (1869) LR 4 QB 715................................. 39, 113, 127–9, 131, 134–5, 137–9 Green v Broadcasting Corporation of New Zealand [1989] 2 All ER 1056; [1989] RPC 700............................................. 53, 171

xxviii  Table of Cases Greenfield Products Pty Ltd v Rover-Scott Bonnar Ltd (1990) 17 IPR 417 (Fed Ct)..................................................................... 38 Haelan Laboratories v Topps Chewing Gum Inc (1953) 202 F 2d 866.........................................................................................222–3 Hanfstaengl v Baines & Co [1895] AC 20........................................ 23 Hanfstaengl v Empire Palace [1894] 2 Ch 1 (CA).............................. 23 Harris v Warren and Phillips [1918] 35 RPC 217.............................. 49 Hearn v Meyer, 664 F Supp 832 (SDNY 1987).................................133 Hi-Tech Autoparts Ltd v Towergate Two Ltd [2002] FSR 15 & 16 (Patents County Court)...................................................38, 73, 230 Hourahine v Everdell & Mitchard (Unreported).............................. 47 HRH Prince of Wales v Associated Newspapers Ltd [2008] EMLR 3, [2008] EMLR 4 (CA).................................................... 66 Hubbard v Vosper [1972] 2QB 84 (CA)............................................ 66 Hughes v Design Look Inc 693 FSupp 1500 (SDNY 1988)...............214 Hyde Park Residence Ltd v David Yelland and Others [2000] ENT L R N-77, [1999] RPC 655, [2000] 3 WLR 215...... 33, 65, 151, 153 Hyperion Records Ltd v Sawkins [2005] EWCA Civ 565 (19 May 2005)............................................................................137 Interlego AG v Tyco Industries Inc [1987] FSR 409; [1988] 3 All ER 949; [1988] RPC 343; [1989] AC 217.......37–8, 51, 64, 135–8, 167 International News Service v Associated Press (1918) 248 US 215 (SC)...................................................................................... 16 IPC Magazines Ltd v MGN Ltd [1998] FSR 431............................... 68 IPC Media Ltd v Highbury-Leisure Publishing Ltd [2005] FSR 20..... 34 Irvine v Talksport EWCA Civ 423 [2003]................................ 215, 223 ITV Broadcasting Ltd & Others v TV Catch Up Ltd [2010] EWHC 3063 (Ch) (25 November 2010)............................... 157, 183 J & S Davis (Holdings) Limited v Wright Health Group Limited [1988] RPC 403........................................................................... 40 J Paul Getty Trust v Domain 4 Sale & Company, Claim No FA0007000095262 (National Arbitration Forum) (7 September 2000).....................................................................222 James Arnold and Co Limited v Miafern and Others [1980] RPC 397...................................................................................... 37 Jane Austen Trade Mark [2000] RPC 879.................................. 216–17 Jo-Y-Jo Ltd v Matalan Ltd (unreported, 31 March 1999).................. 77 John Mullere & Co v New York Arrows Soccer Team, 802 F.2d 989 (8th Cir 1986).........................................................168 KARO STEP Trade Mark [1977] RPC 255....................................... 37

Table of Cases   xxix Kaye v Robertson [1991] FSR 62.....................................................214 Kelly, Leslie A v Arriba Soft, US District Court, Central District of Southern CA, Case No SA CV 99-560 GLT [JW], 15 Dec 1999; 280 F.3d 934 (9th Cir 2002); 336 F.3d 811 (9th Cir 2003); US District Court, Central District of CA, 18 Mar 2004....141–51, 155 Kenrick v Lawrence (1890) 25 QBD 93......................... 36, 64, 168, 230 Kleeneze Ltd v DRG (UK) Ltd [1984] FSR 399................................. 64 Komesaroff v Mickle and Others [1988] RPC 204.......................45, 54 Krisarts v Briarfine [1977] FSR 577.................................................. 57 Ladbroke Ltd v William Hill Ltd [1964] 1 All ER 465, [1964] 1 WLR 273.................................................................. 16–18, 57, 63 Lakedreax v Taylor, 932 F2d 1103, 1108 (5th Cir 1991)................133–4 Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd and Another [2004] EWCA Civ 886............................................................75, 77 Laugh It Off Promotions CC v South African Breweries International (Finance) BV t/a Sabmark International and Another (CCT42/04) [2005] ZACC 7, 2006 (1) SA 144 (CC), 2005 (8) BCLR 743 (CC) (27 May 2005)............................................................................174 LB (Plastics) Limited v Swish Products Limited [1979] RPC 551......... 6 Leibovitz v Paramount Pictures Corp, 137 F 3d 109, 116 (2d Cir, 1998)..........................................................................................133 Leigh v Warner Bros 10 FSupp 2d 1371 (SD Ga 1998)......................214 Lerose Limited and Another v Hawick Jersey International Limited [1974] RPC 42............................................................................. 37 Lucasfilm v Andrew Ainsworth [2008] EWHC 118......35, 42–3, 73, 228 Lucasfilm v Andrew Ainsworth [2009] EWCA Civ 1328; [2011] UKSC 39..........................1, 32, 38, 40–1, 43, 48, 73–4, 165, 210, 214 Mabo v Queensland (1992) 175 CLR 1...........................................186 Mackie Designs Inc v Behringer [1999] RPC 717.............................. 34 Magill [1995] FSR 530..................................................................... 26 Marengo v Daily Sketch and Daily Graphic Limited [1992] FSR 1 (CA)................................................................................212 Mark Wilkinson Furniture Limited v Woodcraft Designs (Radcliffe) Limited [1998] FSR 65................................................ 75 Mars UK Ltd v Teknowledge Ltd [2000] FSR 138............................153 Martin v City of Indianopolis, US Court of Appeals, 7th Cir 192 F.3d 608 (1999)...................................................................... 96 Martin v Polyplas [1969] NZLR 1046.............................................138 Massine v de Basil [1936-45] Mac CC 223.......................................200 Mazer v Stein 347 US 201 (1954), 74 SCt 460, 98 LEd 630 (1954)....13, 15

xxx  Table of Cases Meikle v Maufe [1941] 3 All ER 144................................................ 49 Merchandising Corp v Harpbond (1983) FSR 32............ 36, 52, 213–14 Merlet v Mothercare [1986] RPC 129...................................46, 48, 165 Metix (UK) Limited and Another v GH Maughen (Plastics) Limited and Another [1997] FSR 718.............. 35, 41, 54, 165, 228–9 Millar & Lang Ltd v Polak [1908] 1 Ch 433..................................... 50 Millar v Taylor (1769) 4 Burr 2303; 98 ER 252............................18–19 Milpurrurru and Others v Indofurn Pty Ltd and Others (1994) 130 ALR 659...................................................................171, 186–8 Morrison Leahy Music and Another v Lightbond Limited and Others (1991) EMLR 144........................................................90, 92 Mosley v News Group Newspapers Ltd [2008] EWHC 1777 (QB)......................................................................................223–5 Murray v Big Pictures (UK) Ltd [2008] EWCA Civ 446 (7 May 2008)..............................................................................224 Navitaire v Easyjet Airline Co and Anor [2004] EWHC 1725 (Ch).... 112 Newspaper Licensing Agency Ltd & Others v Meltwater Holding BV & Others [2010] EWHC 3099 (Ch); [2011] EWCA Civ 890...........................................................................183–4, 230 Newspaper Licensing Agency Ltd v Marks and Spencer PLC [2000] 4 All ER 239................................................................35, 58 Newton v Cowie and Another [1827] 4 Bing 234, 130 ER 759......................................................................... 128, 138 Nichols v Universal Pictures Corporation 45 F 2d 119 (1930)............ 60 Norowzian v Arks Limited and Others (No 2) [1998] FSR 394; [1999] FSR 79; [2000] FSR 363 (CA)......... 168–72, 179, 213, 228, 232 Nova Productions Ltd v Mazooma Games Ltd [2007] EWCA Civ 219.............................................................................. 112, 184 Pasterfield v Denham and Another [1999] FSR 168................ 92–4, 152 Perfect 10 v Google, Inc, US District Court, Central District of CA, CV 04-9484 AHM (SHx), 26 February 2006; US District Court, Central District of CA, General Case No Cv 04-9484 Ahm (shx), 26 July 2010....................................................... 148–51 Peter Pan Fabrics, Inc v Martin Weiner Corp 274 F.2d 487 (2d Cir 1960)............................................................................... 58 Preston v Raphael Tuck [1926] 1 Ch 667.......................................... 89 Prince Albert v Strange (1849) 2 De Gex & Sm 652, 64 ER 293 (on appeal) (1849) 1 Mac & G25, 41 ER 1171.............................210 Pro Sieben Media AG v Carlton UK TV Ltd [1999] FSR 160; TLR 7.1.99.................................................................................. 66

Table of Cases   xxxi Pushman v New York Graphic Society Inc 287 NY 302, 39 NE 2d, 249 (1942)..................................................................... 6 R Griggs Group Ltd & Others v Evans and Others [2005] EWCA Civ 11.............................................................................200 R v Gibson [1990] 2 QB 619............................................................ 33 Radley Gowns Ltd v Costas Spyrou [1975] FSR 455.................. 47, 229 Ray v Classic FM plc [1998] FSR 622...................................152–3, 200 Reckitt & Coleman Products Inc v Borden Inc [1990] 1 WLR 491....211 Reject Shop v Manners [1995] FSR 870..................................... 52, 113 Rogers v Koons, 960 F.2d 301, 307 (2d Cir), 506 US 934 (1992)......................................................................133, 166–7, 176 Romm Art Creations Ltd v Simcha International Ltd 786 FSupp 1126 EDNY (1992).....................................................................214 Roper v Streeter, [1672] Skinner 233 90 ER 107................................ 14 Salinger v Random House Inc (1987) 811 F 2d 90 (CA 2, 1987)......... 23 Saltman Engineering Co Ltd v Campbell Engineering Co Ltd [1948] RPC 203..........................................................................211 Sam Francis Estate v Magdison Fine Art Inc, Case No D2000-0673 (WIPO Arbitration and Mediation Center) (27 September 2000)...............................................................................215, 220–1 Sanchez v Stein No 80CV1208 (1980)..............................................212 Saphena Computing Ltd v Allied Collection Agencies Ltd [1995] FSR 616.....................................................................................200 SAS Institute Inc v World Programming Ltd [2010] EWHC 1829...... 29 Sawkins v Hyperion Records Ltd [2005] 3 All ER 636..... 88, 137, 140–1 Schweppes Limited and Others v Wellingtons Limited [1984] FSR 210.................................................................................173–4 Sega Enterprises Ltd v Galaxy Electronics Pty Ltd (1997) 145 ALR 21......................................................................................180 Shelley Films Ltd v Rex Features Ltd [1994] EMLR 134............................................................................ 46–7, 211, 229 Shirin Guild v Eskander Limited [2001] FSR 38................................ 48 Smith v Montoro 648 F.2d 602 (9th Cir, 1981).................................212 Snow v The Eaton Centre [1982] 70 CPR (2d) 105............................ 91 SPE International Ltd v Professional Preparation Contractors (UK) Ltd [2000] EIPR N-19.............................................32, 51, 168 Specht v Netscape Communications 306 F 17 (2d Cir. 2002)............159 Stephenson, Blake & Co v Grant, Legros & Co Ltd [1916] 33 RPC 406................................................................................. 50 Svanberg v Eriksson (1979) EIPR D-93........................................175–6

xxxii  Table of Cases TARZAN Trade Mark [1970] RPC 450..........................................218 Tate v Fullbrook [1908] 1 KB 821............................................. 53, 229 Taverner Rutledge v Specters [1959] RPC 355 (CA).......................... 37 Tech Autoparts Ltd v Towergate Two Ltd [2002] FSR 15 & 16 (Patents County Court)............................................................... 38 Thames & Hudson Limited v Design and Artists Copyright Society Ltd and Others [1995] FSR 153........................................ 56 Théberge v Galerie d’Art du Petit Champlain Inc (2002) SCC 34 (Supreme Court, 28 March 2002)................................................. 57 Tidy v Trustees of the Natural History Museum and Another (1995) 39 IPR 501; [1996] 3 EIPR D-81......................... 91–2, 94, 152 Time Warner Entertainments Company LP v Channel Four Television Corporation Plc and Another (CA) [1994] EMLR 1..... 66 Twentieth Century Fox Film Corporation & Another v Newzbin Ltd [2010] EWHC 608 (Ch) (29 March 2010)........ 157, 161, 183, 203 United Pacific Industries v Madison Sports [1998] FCA 614............. 48 University of London Press v University Tutorial Press [1916] 2 Ch 601................................................................. 16, 50, 186, 231 USP Plc v London General Holdings Ltd [2006] FSR 6..................... 59 Vane v Famous Players Film Co Ltd [1923-28] MCC 374.................... 6 Vermaat v Boncrest Ltd, The Times (23 June 2000), [2001] FSR 5, [2000] EIPR N-151, (July 2000) 3 Intellectual Property Lawyer.................................................................37, 47, 51, 229–30 Viacom International Inc v YouTube Inc, No 07 Civ 2103...............162 Visual Arts and Galleries Association v Various John Does (Picasso Case) 80 Civ 4487 (1980)...............................................215 Walker v British Picker [1961] RPC 57............................................. 37 Walter v Lane [1900] AC 539.................................................... 24, 138 Warner v Gestetner Ltd (unreported)..............................................200 Warnink v Townend [1980] RPC 31................................................212 Watts v Lord Aldington [1999] LTR 578.........................................152 Wham-O Manufacturing Co v Lincoln Industries Ltd [1985] RPC 127 (CA)........................................................................38, 40 White v Mellin [1895] AC 154 (HL) 165........................................... 49 Wildash v Klein (2004) 61 IPR 324................................................... 44 Williams v Settle (1960) 1 WLR 1072..........................................188–9 Williamson Music Ltd v Pearson Partnership Ltd [1987] FSR 97............................................................................174, 176–7 Yumbulul v Reserve Bank of Australia (1991) IPR 481.....................187

Table of Cases   xxxiii Other Jurisdictions Austria C Villas, Oberster Gerichtshof OGH (Austrian Supreme Court), 10 July 2001, GRUR Int 2002, 452, IIC 2003, 223.........................120–1 Belgium Copiepresse v Google, 06/10.928/C, Court of First Instance in Brussels (13 January 2007); Cour d’Appel de Bruxelles (6 May 2011)........154 France Bernard Buffet (1962)...................................................................... 87 Bezombes (1980)............................................................................. 87 Bouvier v Cassigneul (1995)............................................................ 86 Hong v Saltpetriere Chapel Assn (1995)........................................... 87 Huston v Turner Entertainment (1991–1994)............................ 92, 122 Renault v Dubuffet (1983)............................................................... 86 Vlaminck (1961)............................................................................. 86 Germany Alcolix (1994)................................................................................177 Google (2010)................................................................................153 Joseph Beuys (1991)................................................................. 97, 101 Oberammergauer Passionspiele (1986)............................................. 33

Table of Legal Instruments European Union Directive 91/250/EEC (Software Directive)....................29, 111–12, 125   Art 1(2)......................................................................................112   Art 4(a)......................................................................................184   Art 9(1)(2)..................................................................................124 Directive 92/100/EC (Rental and Lending Right Directive)................ 79   Recital 13...............................................................................79–80 Directive 93/83/EC (Satellite and Cable Directive)   Art 1..........................................................................................161 Directive 93/98/EEC (Term Directive).............................. 51, 54, 78, 82   Recital 17.................................................................................... 51   Art 1..........................................................................................105   Art 4........................................................................................... 78   Art 6........................................................................................... 51   Art 11........................................................................................105 Directive 96/9/EC (Database Directive)................................54, 78, 120   Art 15........................................................................................124 Directive 98/71/EC (Designs Directive).................................. 69, 74, 76   Art 17....................................................................................69, 77 Directive 2000/31/EC (Electronic Commerce Directive)............................................................. 118, 125, 154, 232   Recital 18...................................................................................118   Art 12........................................................................................154   Arts 12-15..................................................................................154   Art 13........................................................................................154   Art 14.............................................................................118, 154–5   Art 21........................................................................................154 Directive 2001/29/EC (Information Society Directive).............................. 29, 119, 123–5, 155, 161, 178, 183, 232   Recital 23........................................................................... 157, 183   Recital 45...................................................................................124   Art 2......................................................................57, 115, 123, 183   Art 3........................................................................... 119, 124, 183

xxxvi  Table of Legal Instruments   Art 5..........................................................................................123   Art 5(1).............................................................................. 123, 155   Art 5(2)-(5)................................................................................123   Art 5(3)(j)................................................................................... 67   Art 5(4)....................................................................................... 67   Art 6(4)..................................................................................123–4   Art 7..........................................................................................181   Art 9..........................................................................................124   Ch III.........................................................................................124 Directive 2001/84/EC (Artist’s Resale Right Directive)......................................................101–2, 105–9, 201, 204   Recital 7.....................................................................................109   Recital 17...................................................................................102   Recital 18...............................................................................102–3   Recital 21...................................................................................102   Recital 23...................................................................................102   Recital 27...................................................................................104   Recital 28...................................................................................104   Recitals 1-3................................................................................103   Art 1(1)......................................................................................103    Art 1(1) and (2)..........................................................................102   Art 1(2)......................................................................................103   Art 1(3)......................................................................................103   Art 1(4)......................................................................................104   Art 2.................................................................................. 103, 227   Art 2(1).............................................................................. 103, 204   Art 2(2)......................................................................................204   Art 6..........................................................................................104   Art 6(1)......................................................................................104   Art 6(2)......................................................................................104   Art 7..........................................................................................105   Art 8..........................................................................................105   Art 9.................................................................................. 105, 207   Art 11........................................................................................105   Art 12....................................................................................105–6   Arts 3-5......................................................................................104   Ch III.........................................................................................105 EC Treaty   Art 81......................................................................................... 26   Art 82......................................................................................... 26

Table of Legal Instruments   xxxvii Regulation 6/2002/EC (Designs Regulation)................................74, 76   Recital 14.................................................................................... 77   Art 1........................................................................................... 77   Art 7........................................................................................... 77   Art 96......................................................................................... 77 International Berne Convention for the Protection of Literary and Artistic Works 1886.................................................................. 5, 28, 54, 69, 80, 85, 93–4, 96, 122, 124, 131–2, 164   Art 2........................................................................................... 31   Art 2(1)....................................................................................... 69   Art 2(7)....................................................................................... 69   Art 3(3)....................................................................................... 78   Art 5(2)....................................................................................... 55    Art 6 bis........................................................................... 85, 87, 94   Art 9(2)......................................................................................123    Art 14 bis...................................................................................171    Art 14 ter.................................................................... 100, 105, 109 European Convention on Human Rights (ECHR)............ 210, 223, 225   Art 8...............................................................................210, 223–4   Art 10....................................................................................223–4 United Nations    Convention on Biological Diversity.............................................191 Universal Copyright Convention (UCC) 1952......................28, 55, 131   Art III(1)..................................................................................... 55 World Intellectual Property Organization (WIPO)    Copyright Treaty 1996................................................. 119, 123, 125     Art 8......................................................................................119 Performances and Phonograms Treaty (WPPT) 1996..........89, 123, 125 World Trade Organization (WTO)    Agreement on the Trade-Related Aspects of Intellectual Property (TRIPS) 1994................................................................... 5, 54, 191     Art 9.2...................................................................................... 6     Art 22....................................................................................190     Art 23....................................................................................190     Art 24....................................................................................190

xxxviii  Table of Legal Instruments National Australia Copyright Act 1968   s 35(2)........................................................................................189 Resale Royalty Right for Visual Artists Act 2009.............................109 Canada Copyright Act, RSC 1970   s 12(7)......................................................................................... 91 Copyright Act, RSC 1985   s 3(1)(g)...................................................................................... 81 France Intellectual Property Code    Art L 121-2................................................................................. 86    Art L 121-4................................................................................. 86    Art L 121-5................................................................................. 80 Switzerland Federal Law on Copyright   Art 15......................................................................................... 87 United Kingdom Artist’s Resale Right (Amendment) Regulations 2009 (SI 2009/2792)............................................................................107 Artist’s Resale Right Regulations 2006 (SI 2006/346).................................................106, 201–2, 204, 206–7   Reg 3(1).....................................................................................107   Reg 3(3).....................................................................................106   Reg 3(4).....................................................................................204   Reg 3(5).....................................................................................108   Reg 9(1).....................................................................................107   Reg 10........................................................................................205   Reg 12(3)....................................................................................106   Reg 12(4)....................................................................................106   Reg 13(3)....................................................................................204

Table of Legal Instruments   xxxix   Reg 14........................................................................................107   Reg 14(1)....................................................................................202   Reg 14(3)....................................................................................202   Reg 16........................................................................................107   Reg 17........................................................................................107   Sch 1..........................................................................................106   Sch 2.................................................................................. 107, 203 Charities Act 1993   s96(1).........................................................................................107 Charities Act (Northern Ireland) 1964   s 35............................................................................................107 Computer Misuse Act 1990............................................................243 Contracts (Rights of Third Parties) Act 1999..................................244 Copyright Act 1911.............................................. 27–9, 45, 49–50, 200   s 1(2)........................................................................................... 23 Copyright Act 1956....................................................................29, 56   s 3............................................................................................... 37   s 3(1)(a)...................................................................................... 36   s 3(1)(c)....................................................................................... 45   s 4(3)..........................................................................................200   s 43............................................................................................. 87   s 48(1)......................................................................................... 40 Copyright and Related Rights Regulations 1996 (SI 1996/2967)............................................................................. 77 Copyright and Related Rights Regulations 2003 (SI 2003/2498)............................................................................119 Copyright and Rights in Databases Regulations 1997 (SI 1997/3032)...................................................................... 78, 120   Reg 6.........................................................................................120   Reg 13(1)..................................................................................... 79   Reg 14......................................................................................... 78   Reg 14(2)..................................................................................... 79   Reg 15......................................................................................... 79   Reg 16.................................................................................. 79, 158   Reg 17......................................................................................... 79   Reg 17(3)..................................................................................... 79   Reg 18......................................................................................... 79   Reg 20......................................................................................... 79   Reg 29......................................................................................... 79   Reg 30......................................................................................... 79

xl  Table of Legal Instruments Copyright, Designs and Patents Act (CDPA) 1988........... 2–3, 29, 33–4, 36, 39–40, 42, 50, 52, 55, 58, 61, 65, 67, 72–3, 75–7, 79, 87–8, 90–1, 93–4, 112, 114–15, 119, 150–2, 164–6, 171, 175, 179–80, 195, 200, 228, 230, 235   Ch III................................................................................... 65, 231   Ch IV.......................................................................................4, 87   Ch VI.......................................................................................... 57   Pt III........................................................................................... 75   s 1........................................................................................ 34, 179   s 1(1)(a)...................................................................................... 51   s 1(1)(b).....................................................................................170   s 2............................................................................................... 70   s 3............................................................................................... 34   s 3(1)........................................................................................... 79   s 3(2).................................................................................... 53, 171   s 3A(1)........................................................................................ 79   s 3A(2)........................................................................................ 79   s 4.................................................................34, 42, 50, 73, 178, 228   s 4(1)..........................................................................................228   s 4(1)(a)...................................................................................... 51   s 4(1)(c)..................................................................................49, 77   s 4(2).............................................................. 34, 36, 39–40, 112–13   s 4(a)........................................................................................... 43   s 5B............................................................................................179   s 8................................................................................................. 4   s 9..............................................................................................179   s 9(1).................................................................................... 52, 230   s 10............................................................................................. 52   s 10(1)........................................................................................163   s 11............................................................................................200   s 11(2)........................................................................................200   s 13(3)......................................................................................... 58   s 16.............................................................3, 56, 115, 150, 157, 174   s 16(2).................................................................................. 57, 157   s 16(3).................................................................................. 57, 231   s 16(3)(a)....................................................................................184   s 17(1)........................................................................................179   s 17(2)...........................................................................56, 115, 150   s 17(4)........................................................................................179   s 17(6)...........................................................................57, 115, 151

Table of Legal Instruments   xli   s 18............................................................................................. 79    s 18A (3)(b)................................................................................. 80   s 20............................................................................................151   s 20(2)................................................................................ 157, 183   s 23(c)......................................................................................... 80   s 29.................................................................................... 151, 231   ss 29-30....................................................................................... 66   s 30...............................................................................66, 151, 231   s 30(1)........................................................................................174   s 31...................................................................................... 67, 176   s 51.................................................................................... 72–3, 77   s 51(3)......................................................................................72–3   s 52............................................................................................. 73   ss 54-55....................................................................................... 50   s 57.................................................................................... 182, 187   s 62........................................................................................49, 67   s 63............................................................................................. 67   s 63(2)......................................................................................... 67   s 64............................................................................................. 67   s 65............................................................................................. 49   s 77........................................................................88, 151, 240, 246   s 77(4)(a)....................................................................................151   s 78............................................................................................. 88   s 78(4)......................................................................................... 88   s 79(6)........................................................................................152   s 80...............................................................................89, 151, 240   s 80(2)......................................................................................... 90   s 80(2)(a)..................................................................................... 90   s 80(2)(b).............................................................................. 90, 151   s 81(4)........................................................................................152   s 84............................................................................................240   s 84(1)........................................................................................174   s 84(6)......................................................................................... 89   s 85............................................................................................240   s 86............................................................................................. 88   s 87............................................................................................. 87   s 90(1)........................................................................................236   s 90(2)........................................................................................236   s 90(3)....................................................................................6, 236   s 92.................................................................................... 195, 236

xlii  Table of Legal Instruments   s 92(1)........................................................................................236   s 93............................................................................................... 7   s 97(2)......................................................................................... 57   s 101..........................................................................................236   ss 153-156................................................................................... 55   s 154(4)....................................................................................... 55   s 173(2)......................................................................................163   s 175........................................................................................... 55   s 175(1)(b)..................................................................................121   s 175(4)(a)(ii)..............................................................................121   s 175(4)(b)................................................................................... 55   s 175(4)(b)(iv).............................................................................121   s 178...............................................................................34, 50, 114   s 180(2)......................................................................................180   s 182(2)......................................................................................180   s 213........................................................................................... 75   s 226........................................................................................... 76   s 236........................................................................................... 76   s 296ZA(1).................................................................................158   s 296ZE......................................................................................124   Sch 1........................................................................................... 29   Sch I............................................................................................ 88 Copyright, etc and Trade Marks (Offences and Enforcement) Act 2002...................................................................................... 57 Copyright (Industrial Process and Excluded Articles) (No 2) Order 1989 (SI 1989-1070)........................................................... 73   Art 3........................................................................................... 73 Data Protection Act 1998...............................................................224 Digital Economy Act 2010..............................................................125 Duration of Copyright and Rights in Performances Regulations 1995 (SI 1995/3297)..................................................................... 55 Engraving Copyright Act 1734 Stat 8 Geo II, c 13............................. 27 Fine Arts Copyright Act 1862................................................... 84, 128   s 1..............................................................................................128   s 7............................................................................................... 89 Human Rights Act 1998.................................................................153   s 171(3)......................................................................................153 International Copyright Act 1852, Stat 15 & 16 Vict c 12   s 14............................................................................................. 28 Law of Property Act 1925..............................................................235

Table of Legal Instruments   xliii Registered Designs Act 1949............................................................ 76   s 1............................................................................................... 74 Stat 6 Geo III 1766, c 38.................................................................. 28   s 2............................................................................................... 27 Stat 17 Geo III 1777, c 57..............................................................27–8 Stat 27 Geo III 1787, c 38................................................................. 28 Stat 38 Geo III 1798, c 71................................................................. 28 Stat 54 Geo III 1814, c 56................................................................. 28 Statute of Anne 8 1709................................................ 11, 14, 18, 27–8 Trade Marks Act (TMA) 1938.................................................. 216–17 Trade Marks Act (TMA) 1994.................................................. 216–17   s 1(1)..........................................................................................216   s 3..............................................................................................216   s 5..............................................................................................216   s 10(3)........................................................................................173 Unfair Contract Terms Act 1977.....................................................243 United States 17 USC   § 106(1)......................................................................................143   § 107..........................................................................................143   § 512(b)......................................................................................149   § 512(c)......................................................................................149   § 512(d)......................................................................................149 Anti-cybersquatting Consumer Protection Act 2000........................219 Berne Convention Implementation Act (BCIA) 1988...................131–2 Constitution    Art 1, para 8, cl 8.............................................................. 13, 131–2 Copyright Act 1976....................................................................132–3   s 101........................................................................... 31, 53, 71, 96   s 102........................................................................................... 53   s 102(a)................................................................................ 31, 132   s 102(b)....................................................................................... 59   s 106A......................................................................................... 95   s 107..........................................................................................182   s 202............................................................................................. 6   s 504..........................................................................................182 Digital Millennium Copyright Act (DMCA) 1998.................. 125, 143, 147, 149–50

xliv  Table of Legal Instruments   s 1202(b)....................................................................................147 Visual Artists Rights Act (VARA) 1990................................... 95–7, 99

1

Introduction 1.1 

T

background and scope 1

the increasing commercial activities of museums and galleries mean that copyright has gained increasing importance in the art world. Artist’s resale right (droit de suite), a branch of copyright, has also now been harmonised across Europe and is in effect in the United Kingdom, bringing into copyright’s ambit those who deal in, buy or sell works of art. Artists are becoming more and more aware of their rights, and arguments about the appropriation of artists’ works by others are arising more frequently.2 There is also a growing debate about the extent to which existing law protects innovative works of modern art and the works of traditional cultures. At the same time, the law of cultural property is now an established legal discipline, as increasingly is art law.3 he internet and

1  It has been endeavoured to state the law relating to the UK as at 1 April 2011, although where possible, significant developments up to 23 June 2011 have been included, as has the judgment of the Supreme Court in Lucasfilm Limited v Ainsworth (27 July 2011). 2  For example, in the UK the copyright infringement arguments surrounding the Turner Prize entry ‘The Loves of Shepherds 2000’ (discussed below in ch 6) hit the headlines late in 2000 and brought the issue of art and copyright to the fore; and in the USA, street artist Shephard Fairey recently faced high-profile allegations of copyright infringement over his iconic painting, entitled ‘Hope’, of then US presidential candidate Barack Obama. The painting allegedly infringed an Associated Press (AP) photograph taken in April 2006 by Mannie Garcia, on assignment for the AP at the National Press Club in Washington: see Huffington Post (4 February 2009), http://www.huffingtonpost. com/2009/02/04/ap-accuses-shepard-fairey_n_164045.html (accessed 23 June 2011). The case was reported as settled in January 2011: ‘Associated Press and Artist Settle Copyright Infringement Claims over Obama “Hope” Image’, reported by Associated Press (12 January 2011). 3   Art law is already an established legal discipline in the USA, and the first holistic treatment of art law in the UK by Paul Kearns was published in 1998: P Kearns, The Legal Concept of Art (Oxford, Hart Publishing, 1998). The Institute of Art and Law in the UK was founded in 1995.

2  Art and Copyright This book, first published in 2001, aimed to explore the UK law of copyright and related rights as applied to art as broadly defined4, with a stress on the ‘fine arts’.5 The protection of utilitarian or massproduced items, except to the extent these comprise art—‘readymades’, for example—was not considered in detail.6 Nor were works of architecture. The law of industrial design, for example, already had received detailed treatment in a number of works.7 So it was felt that the growing relationship between the ‘fine arts’ and copyright, including the development of artists’ moral rights, the permitted scope of appropriation in copyright law, the copyright protection of modern art and the challenges of digitisation and the Internet, pointed to the need for a UK text exploring this area. Although the book was not specifically concerned with the law of jurisdictions other than the United Kingdom, the international nature of the area meant that it was often helpful to note the approach taken 4   No other attempt is made to define ‘art’ for the purposes of this book. It will be clear in any event from the discussion of the law that follows that the legislature and the UK courts define ‘art’ for the purposes of copyright protection in various ways, the category of ‘artistic works’ in the Copyright, Designs and Patents Act (CDPA) 1988 being crucial. For an early and very useful discussion of the legal protection of ‘art’ under UK law, see PH Karlen, ‘What is Art? A Sketch for a Legal Definition’ (1978) 94 Law Quarterly Review 383. See also Kearns (ibid). Photographs, given their importance in modern art and their categorisation as ‘artistic works’ in the CDPA, are included for the purposes of this book. Films and video works do not receive extensive treatment but nevertheless are specifically discussed in ch 6, s 6.4. 5  The Concise Oxford English Dictionary 8th edn, (Oxford, Oxford University Press, 1990) defines the ‘fine arts’ as those ‘appealing to the mind or to the sense of beauty . . . especially painting, sculpture and architecture’. In fact, with limited exceptions, UK copyright law now makes no express distinction between works of fine art and other artistic works in affording copyright protection but imposes limits on the copyright protection for industrial/utilitarian designs. But historically, a distinction between the fine arts and the applied arts was maintained, at least in the classes of work protected: see L Bently and B Sherman, The Making of Modern Intellectual Property Law (Cambridge, Cambridge University Press, 1999). Other jurisdictions also have made or do make such distinctions. For example, early French (revolutionary) copyright law limited protection to the fine arts, but in 1902 protection was extended to sculptors and decorative designers, irrespective of the merit of their work. The quality of the work can also be relevant in US law: see, eg, L Bently and B Sherman, ‘Copyright Aspects of Art Loans’ in N Palmer (ed), Art Loans (London, Kluwer, 1996). In particular, as discussed below in ch 4, it is an issue in the US approach to moral rights. 6   ‘Ready-made’ is the name given by Marcel Duchamp to a type of work he created that consists of a mass-produced article isolated from its functional context and displayed as a work of art: I Chilvers, A Dictionary of Twentieth-Century Art (Oxford, Oxford University Press, 1999). See also generally below ch 6, s 6.4.1. 7  Eg, C Fellner, Industrial Design Law (London, Sweet & Maxwell, 1995); U Suthersanen, Design Law in Europe (London, Sweet & Maxwell, 2000); and M Howe QC, Russell-Clarke on Industrial Designs (London, Sweet & Maxwell, 1998).

Introduction  3 in other major jurisdictions. In particular, a number of cases from other common law jurisdictions were noted, especially those from the United States, where there was already a considerable amount of case law and scholarship in this field. Also in light of the attempts to harmonise copyright law in the European Union and the long tradition of moral rights protection in continental Europe, these areas were also considered in some detail. Ten years or so on, the opportunity has been taken to update the book, primarily from a UK perspective, and also to try to address some of the comments made by reviewers of the first edition. The second edition is not a wholesale rewriting of the first edition (nor of the revised paperback edition of 2003), as much of the original text retains its relevance. But the law has of course developed further, and to ensure the book remains of practical use, UK cases and statutes have been updated where considered helpful. Moreover, in a number of areas—including the relationship between art and design law, artist’s resale right, the impact of European jurisprudence on UK copyright, online issues, and the protection of video, film and ‘new media’ works—additional revisions have been made. In addition, some precedent material has been added. The intention has been to try to keep the work an overview of the area, a place where the reader can be led to avenues to explore and routes to take across the artistic copyright landscape, but also to have the work retain its practical value as a resource for those who create, deal in or exploit art and reproductions of art or who are otherwise looking for guidance on artistic copyright.

1.2 

copyright and art

Artists, like other ‘authors’, may be entitled to the protection of their works under the law of copyright and related rights. Most legal systems recognise two elements to such protection: economic rights, which are also generally referred to as ‘copyright’ or ‘copyrights’, and moral rights. In the United Kingdom, the economic rights include the rights to control copying (reproduction), the issuing of copies to the public, renting or lending the work, performance, communication to the public and adaptation;8 the moral rights include the right to be identified as   S 16, Copyright, Designs and Patents Act (CDPA) 1988.

8

4  Art and Copyright ‘author’, to object to derogatory treatment of a work, the right to object to false attribution and the right to privacy of certain photographs and films.9 Living artists and the estates of recently deceased artists are likely to benefit from moral rights, which only an artist or that person’s estate can exercise. This is in distinction to the economic rights, which can be freely transferred in whole or part by way of assignment.10 In this sense, copyright is an intangible property right like other intellectual property rights (patents, registered designs, trade marks, rights in confidential information and so on) but with the added dimension that the creator, the author/artist, retains moral rights in the work irrespective of who owns the actual copyright. It is important to note that copyright is a purely negative right: it is primarily a right to stop others copying a work in which copyright subsists. But it does not prevent someone else independently creating a similar work,11 nor does it necessarily mean that copyright owners have the right to exploit their work themselves.12 Copyright and related rights are national rights—there is of course no universal law of copyright. In particular, the Anglo-American system of copyright law has tended to stress the economic aspects of copyright, whereas Continental civil laws, which stress ‘authors’ rights’ (droit d’auteur), have generally afforded greater protection to artists/ authors, especially in the context of moral rights.13 However, from the nineteenth century onwards, there has been a series of attempts to protect works internationally, the most important being the Berne 9   Ch IV, CDPA. How artist’s resale right/droit de suite should be characterised can be debated, as it has elements of both copyright (it is an economic right) and moral rights (it is inalienable). See below ch 4. 10   At least in the UK: the position may well be different in civil law jurisdictions. See A Rahmatian, ‘Non-Assignability of Authors’ Rights in Austria and Germany and Its Relation to the Concept of Creativity in Civil Law Jurisdictions Generally: A Comparison with UK Copyright Law’ (2000) 5 Entertainment Law Review 95. 11   However, absolute monopoly rights such as patents and registered designs can protect against this. 12   For example, take the publication of an illustrated book. The publisher will own the copyright in the printed edition (see, eg, s 8, CDPA); but the author may retain the literary copyright in the text, and the illustrator the artistic copyright in the illustrations. To exploit the book, the publisher needs the consent (‘license’) of both the author and the illustrator, although once the book is published, the publisher will be able to enforce the copyright in the printed edition and any other copyright it may have in the work against pirates. 13  Von Lewinski usefully sets out the main differences between the copyright and author’s rights systems, noting that many countries now have elements of both systems in their laws: S von Lewinski, International Copyright Law and Policy (Oxford, Oxford University Press, 2008) para 3.20.

Introduction  5 Convention for the Protection of Literary and Artistic Works, which dates back to 1886. In recent years, the European Commission has devoted considerable effort to harmonising and strengthening the law of copyright across the European Union, and this has generated an increasing amount of legislation. It has also meant that UK copyright law must increasingly address copyright concepts imported from authors’ rights systems.14 Broadly speaking, common law ‘copyright’ systems have tended to emphasise the protection of the ‘work’, allowing the ‘author’ of such a work to be either an individual or a legal entity, such as a limited company; in contrast, civil law ‘authors’ rights’ systems have tended to emphasise the individual creator of the work and do not as a rule consider legal entities to be eligible as ‘authors’—only an individual can be an author of a ‘work’, as the work is an emanation of that person’s personality.15 Another distinction between authors’ rights systems and the UK law of copyright is the concept of originality. In general, in both systems copyright is afforded only to ‘original’ works: in UK law, skill and labour alone (‘sweat of the brow’) will, with limited exceptions, confer ‘originality’, whereas under authors’ rights systems there must be creativity, on the basis a work reflects the personality of its creator. In fact, following the landmark Supreme Court Feist case,16 US law now also requires ‘some minimal degree of creativity’.17 It is also important to be aware from the outset of the so-called ‘idea/ expression dichotomy’ in copyright law.18 Simply put, copyright does   This is discussed below in ch 6, s 6.6.   K Garnett et al, Copinger and Skone James on Copyright, 14th edn (London, Sweet & Maxwell, 1999) [hereafter ‘Copinger’] para 1-05. The ‘personality theory’ approach to copyright is discussed in ch 2. 16   Feist Publications v Rural Telephone Service Co 499 US 340 (1991) 113 L Ed 358 (1991) (Sup Ct) at 369. 17   Note that the concept of ‘originality’ under UK and EU law is considered further in ch 3 and ch 6, s 6.6. 18   Not all authors have admitted the existence of such a ‘dichotomy’ in UK law, which has no express statutory basis. The late Professor Sir Hugh Laddie called it the ‘idea/ expression fallacy’: HIL Laddie, P Prescott, M Vitoria et al, The Modern Law of Copyright and Designs, 3rd edn (London, Butterworths, 2000) [hereafter ‘Laddie’] 3.74; but it nevertheless appears in copyright cases on a regular basis. A few examples include ENTEC (Pollution Control) Ltd v Abacus Mouldings [1992] FSR 332 (per Nichols LJ); George Ward (Moxley) Ltd v Richard Sankey Ltd and Another [1988] FSR 66; and Bradbury, Agnew & Co v Day (1916) 32 TLR 349. See also the cases cited below and also n 19 below. In any event, as Lord Hoffmann more recently observed in Designers Guild v Russell Williams [2000] 1 WLR 2416 (HL), 2422, the distinction does find a place in the Agreement on the Trade-Related Aspects of Intellectual Property (TRIPS) (OJ 1994 14 15

6  Art and Copyright not protect ideas, only the form in which they are expressed. As Lord Salmon once put it, ‘It is trite law that there can be no copyright in an idea.’19 So for example, no one could copyright pointillism as an artistic style, but Seurat’s paintings (if in copyright) would themselves be protected from copying, as they are original artistic works. This dichotomy appears in copyright infringement cases from time to time where the style, technique or other elements of a design or painting have been reproduced, but there has been no literal copying.20 It is then frequently necessary to determine whether what has been copied is (protected) expression or merely an idea not capable of copyright protection. Finally, copyright and related rights are distinct from the ownership (ie, personal property) rights in a work of art or other work, such as a literary manuscript, which may benefit from copyright protection.21 Indeed, the US Copyright Act makes this expressly clear.22 The sale or even the commissioning of a work of art will not necessarily transfer the copyright in the artwork to the buyer/commissioner.23 This, of L336, 213), to which the UK is a party (in Art 9.2). It is therefore submitted that this distinction is a useful and necessary starting point when considering if there has been infringement of an artistic work. Certainly it must be used with care; as Lord Hailsham commented (citing Professor Joad of ‘Brains Trust’ fame), ‘it all depends on what you mean by ideas’: LB (Plastics) Limited v Swish Products Limited [1979] RPC 551 (HL), 629. Lord Hoffmann also referred to this in Designers Guild (at 2422)). Laddie in any event was prepared to restate the principle on the basis that whilst there is no copyright in general ideas, an original combination of ideas may constitute a substantial part of a copyright work (at 4.43), citing Lord Hailsham in Swish Products (above) (at 629) and Astbury J in Austin v Columbia Gramaphone Co [1917–23] MCC 398, 408 and again in Vane v Famous Players Film Co Ltd [1923–28] MCC 374, 398. The dichotomy is discussed in more detail below in ch 3. 19   LB (Plastics) Limited v Swish Products Limited [1979] RPC 551 (HL), 633. For a discussion of how the UK and USA have developed and applied this principle with emphasis on software copyright, see S Lai, The Copyright Protection of Computer Software in the United Kingdom (Oxford, Hart Publishing, 2000). 20   See for example, Designers Guild v Russell Williams (above n 18) (per Morritt LJ and Lord Hoffmann), discussed below in ch 3. 21   There are limited exceptions to this rule: eg, pre-CDPA photographs. See Copinger (above n 15) para 5-02. 22   S 202: ‘Ownership of a copyright . . . is distinct from ownership of any material object in which the work is embodied.’ This section was introduced following Pushman v New York Graphic Society Inc 287 NY 302, 308, 39 NE 2d, 249, 251 (1942), which held that transfer of ownership of an unpublished work transferred the common law copyright in the work as well. See DM Millinger, ‘Copyright and the Fine Arts’ (1980) 48 George Washington Law Review 354, 365. 23  If such an assignment of copyright is sought, this should be agreed in writing. Copyright (as opposed to moral rights) is transferable by assignment—this must be in writing (s 90(3), CDPA) and signed by the owner. Copyright is also transmissible on death by testamentary disposition. Note that the bequest of ‘an original document or

Introduction  7 course, is of particular relevance to art loans, where the borrower may well wish to benefit from the economic rights in the work by producing cards, catalogues and merchandise and may accordingly need to seek permission from the copyright owner.24 Whether the work is protected by copyright, and who owns the copyright, may be difficult questions to answer. For example, when Churchill College, Cambridge acquired some of Sir Winston Churchill’s personal papers a number of years ago with a controversial £12 million grant from the National Lottery,25 they acquired physical title to the papers but not the copyright: copyright in Churchill’s personal papers was kept by the Churchill trustees; copyright in the State papers (which were also given to the College by the Government at the same time) was kept by the Crown. For many years copyright was the Cinderella of intellectual property law, overshadowed in importance by patents and trade marks. However, the advent of digital technology means copyright now has centre stage— those seeking to protect and exploit their works on CD-ROM, DVD, other new media and the Internet increasingly need to rely on copyright. There is a continuing debate about whether the economic rights need to be broadened to cope with the challenges of the new digital technologies. This also brings to the fore another aspect of copyright: the conflicting relationship between owners who wish to control the economic rights to their commercial benefit, on the one hand, and users who claim the benefit of what is called ‘fair use’ in the United States and ‘fair dealing’ in the United Kingdom. Users wish to be able, free of charge, to publish and reproduce works in connection with non-commercial purposes (such as study or research) or for public interest purposes (such as reporting current events). These and other issues are explored in chapters three and six. Artists, museums, galleries and publishers are also increasingly looking to other intellectual property laws for protection as well as copyright. This area is considered in chapter eight. other material thing’ recording or embodying an unpublished artistic or other work shall include the copyright in the work unless the contrary is indicated in the testator’s will or codicil, insofar as the testator was the owner of the copyright immediately before his or her death (s 93, CDPA). Commissioned artistic works are considered below in ch 7. 24   Note also that once an artist has sold his or her work and transferred possession of it to a third party, he/she has no right under English law (absent a contractual right of access) to, eg, gain access to the work to photograph it or otherwise copy it, despite the fact he/she still retains the copyright in it. The position appears similar in the US: Millinger (above n 22) 363–64. 25   To be more correct, the National Heritage Memorial Fund purchased the papers using monies generated by the National Lottery.

8  Art and Copyright Finally, in discussing art and copyright it is important to keep in mind the range of disciplines and perspectives now being brought to bear on the study of copyright law. The approach taken in this book follows in the main the ‘self-contained’ legal approach to copyright law—readers interested in detailed consideration of recent economic and sociological approaches to ‘authorship’ and the cultural aspects of intellectual property are referred elsewhere.26 Having said this, it will become apparent as this book progresses that notions of authorship and varying assumptions about the function of copyright remain important currents, albeit not always stated ones, in copyright law.27 So 26   Professor Sterling speaks of the ‘self-contained’ approach in his World Copyright Law (London, Sweet & Maxwell, 1999) 39. For a consideration of copyright and ‘authorship’, see for example, B Sherman and A Strowel (eds), Of Authors and Origins (Oxford, Clarendon Press, 1994). In particular, Brad Sherman, in his paper in Sherman and Strowel (eds) (above), ‘From the Non-original to the Ab-original: A History’, criticises the ‘increasingly self-referential nature of copyright law’ (114). He is of the view that in order to understand and explain copyright law, not only must the rules and principles underlying the law be examined, but also it is necessary ‘to engage in more abstract, relexive, and historical examinations of the subject’ (129). See also P Jaszi, ‘Toward a Theory of Copyright: The Metamorphoses of “Authorship” ’ (1991) 42 Duke Law Journal 455 for an exploration of the extent to which copyright has received a constructed idea of ‘authorship’ from literary and artistic culture and how this ‘authorship construct’ has been mobilised in legal discourse. For a discussion of the two main theories underpinning copyright law (copyright as an economic incentive that advances social welfare versus the legal vindication of a person’s right to property in the fruit of his or her labour (natural law theory)), both of which are discussed below in ch 2, and the need for an interdisciplinary approach to the subject that gives due weight to the natural law theory, see AC Yen, ‘The Interdisciplinary Future of Copyright Theory’ in M Woodmansee and P Jaszi (eds), The Construction of Authorship (Durham, NC, Duke University Press, 1994). Finally, an introduction to the various perspectives from which copyright has been approached (eg, by legal historians, historians of publishing and a variety of scholars with various perspectives on authorship) is K Bowrey, ‘Who’s Writing Copyright’s History?’ (1996) 6 European Intellectual Property Review 322. She comments on: (1) B Edelman, Ownership of the Image: Elements for a Marxist Theory of the Law, E Kingdom (trans) (London, Routledge and Kegan Paul, 1979) (a Marxist perspective), which is discussed by Kearns (above n 3) in ch 3; (2) others such as Mark Rose who are influenced by Foucault’s writings on authors, publishers and copyright; and (3) commentators from cultural studies and legal perspectives, including J Gaines, who is author of Contested Culture: The Image, the Voice and the Law (Chapel Hill, University of North Carolina Press, 1991) and Rosemary Coombes, a legal scholar and anthropologist who takes an interdisciplinary approach, particular in her book The Cultural Life of Intellectual Properties (Durham, NC, Duke University Press, 1998). 27   For example, Peter Jaszi has argued that the Romantic conception of authorship (which he describes as ‘the Wordsworthian vision of the “author-genius” with privileged access to the numinous’: Jaszi (ibid) 459, referring to M Woodmansee, ‘The Genius and the Copyright: Economic and Legal Conditions of the Emergence of the “Author”’ (1983–84) 17 Eighteenth-Century Studies 425, which continues to have an abiding influence. Jaszi cites the example of computer software copyright as being often justified on the grounds that programs are no less inspired than poems and that the imaginative

Introduction  9 whilst this book primarily approaches art and copyright from the perspective of a practising lawyer, the author has endeavoured to alert readers to examples of writing on this area from a range of viewpoints, not just those of a practitioner. As will become clear, copyright is too important a matter to be left to practitioners alone.

processes of programmers is fundamentally akin to that of a conventional author (463). For a critical view of the relationship between copyright and art that challenges the Romantic conception of authorship, as well as of the law’s focus on categories of artistic works (‘its taxonomic approach’) and of the law’s commitment to the genus rather than the genius (ie, to categorising works rather than having a broader category of ‘art’ that is protected), see A Barron, ‘Copyright Law and the Claims of Art’ (2002) 4 Intellectual Property Quarterly 368: ‘Copyright law in the UK has no category of “art”, and it does not demand of the objects it protects that they elicit an aesthetic response. Copyright law therefore cannot recognise whole swathes of contemporary practice in the visual arts as having any claim to legal protection as such’ (372). For a critical look at authorship, see L Zemer, The Idea of Authorship in Copyright (Aldershot, Ashgate, 2007).

2

The Copyright System: Justification and History 2.1 

B

introduction

a detailed analysis of how copyright protects artistic works, it is worthwhile looking at both the justifications for copyright and the history of copyright law. In order to understand the current law it is necessary to have some background on how copyright has evolved. It has been argued that copyright law initially developed in the United Kingdom without much recourse to philosophical or other justifications.1 Indeed, Lyman Ray Patterson, a leading copyright historian, once categorised the historical development of copyright law as the development of a series of fragmented rules rather than principles: ‘There is no set of clearly defined principles for copyright.’2 Nevertheless, an understanding of some of the main justifications for and principles underlying copyright is necessary to understand current debates about the scope of copyright, including its application to new situations, such as the protection of aboriginal art, digitisation and certain aspects of contemporary art discussed later in this book.3 Intellectual property rights such as copyright affect what people do, say efore setting out

1   See M Rose, Authors and Owners (Cambridge, MA, Harvard University Press, 1993) ch 3, who discusses the genesis of the first UK copyright statute, the Statute of Anne: ‘Probably the truth is that the exact status of authorial property was not something to which anyone had given a great deal of thought prior to the parliamentary consideration of [the Statute of Anne]—and it is unlikely that the matter was examined in any great detail during the deliberations over the statute’ (48). 2   LR Patterson, Copyright in Historical Perspective (Nashville, Vanderbilt University Press, 1968) 222. 3   For a general discussion of the justifications for intellectual property in the much discussed and controversial area of intellectual property protection for brands, see B Isaac, Brand Protection Matters (London, Sweet & Maxwell, 2000) ch 8.

12  Art and Copyright and how they earn a living. So the introduction, continuation and expansion of copyright clearly require considerable justification.4

2.2 

justifications for copyright 5

There are a number of different theories of copyright—at least ten according to one commentator6—but the main justifications for copyright fall into three broad areas. The first is on the basis of economics; the second is on the basis of public policy (the cultural argument for copyright); and the third is on the basis of moral rights (or natural rights).7 None of these justifications, in Michael Spence’s words, offer a ‘knock-down’ justification for the law of copyright in any particular form, but it is submitted they have rhetorical force in the arguments 4   See J Waldron, ‘From Authors to Copiers: Individual Rights and Social Values in Intellectual Property Law’ (1993) 68 Chicago-Kent Law Review 841, 887, as discussed in M Spence, ‘Passing Off and the Misappropriation of Valuable Intangibles’ (1996) 112 Law Quarterly Review 472 [hereafter ‘Spence (1996)’] 479. 5   One way to try to make sense of the various ‘justifications’ for copyright is to view them as ‘rhetorics’. The shape of copyright law can on one analysis be seen as the outcome of interest group politics operating through the institutions of the law—the chief ‘actors’ being: consumers of copyright ‘goods’; the distributors of copyright ‘goods’ (publishers, booksellers, etc), who frequently will take the economic, entrepreneurial risk; and the creators of copyright ‘goods’. These actors employ various ‘rhetorics’ at various times to support their interests, and these in turn ‘can take on lives of their own and become independent factors in the development of intellectual property law’: C Joyce, W Patry, M Leaffer and P Jaszi, Copyright Law, 5th edn (New York, LEXIS Publishing, 2000) [hereafter ‘Joyce’] 61. Another approach is to look at the ‘norms’ at work in copyright laws—the ‘principles that lead to rules of action in concrete cases’: PE Geller, ‘Must Copyright Be Forever Caught between Marketplace and Authorship Norms?’ in B Sherman and A Strowel (eds), Of Authors and Origins (Oxford, Clarendon Press, 1994) 159. Geller categorises these norms as marketplace norms (which reflect the economic/utilitarian preoccupations of Anglo-American copyright law (see below)) and authorship norms (which ‘dictate rules to empower authors to control the use by others of their self-expression’ (159) and which are historically prevalent in droit d’auteur copyright systems. See also below. 6  The commentator is Francis J Kase: see S Teilmann-Lock, British and French Copyright: A Historical Study of Aesthetic Implications (Copenhagen, DJØF Publishing, 2009) 39. 7   For an overview, see K Garnett et al, Copinger and Skone James on Copyright, 14th edn (London, Sweet & Maxwell, 1999) [hereafter ‘Copinger’] para 2-04; and TeilmannLock (ibid) 39–56. Copinger distinguishes four major principles underpinning the copyright system: natural law; just reward for labour; stimulus to creativity; and social requirements. In the author’s view, two of these principles merge together, ‘natural law’ and ‘just reward for labour’ being both classed as ‘moral rights’ arguments.

The Copyright System: Justification and History   13 between stakeholders (authors, producers/distributors/publishers and users) that have shaped modern copyright law.8 2.2.1  The Economic/Utilitarian Justifications for Copyright In Anglo-American copyright law, economic arguments have been prevalent. It has been strongly argued, for example, that ‘the purpose of copyright is basically to ensure a continuing profit to the originator or creator of a copyrighted work’.9 Therefore the grant of exclusive rights to an author is an incentive for the author to create. It is also a very significant incentive to entrepreneurs such as publishers, who rely on the copyright protection afforded to authors. Economic and public policy arguments are also embodied in the copyright clause of the US Constitution: this grants the federal government the right ‘to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their Writings and Discoveries’.10 Putting it another way, the economic rationale for copyright has both a ‘static’ and ‘dynamic’ element: ‘static’ in that the owner has a positive benefit as a result of ownership of the property right, and ‘dynamic’ in that it acts as an incentive to invest in creating the work on the basis that only the author or his/her assigns can exploit it.11 To quote Anthony Trollope, ‘Take away from English authors their copyrights, and you would very soon take away from England her authors.’12 8   See M Spence, ‘Justifying Copyright’ in D McClean and K Schubert (eds), Dear Images Art, Copyright and Culture (London, Ridinghouse/ICA, 2002) 402–3. 9  D Thomas, Copyright and the Creative Artist (London, Institute of Economic Affairs, 1968) 27. 10   Art 1, para 8, cl 8. See for example the comments of the Supreme Court in Mazer v Stein 347 US 201 (1954), 74 SCt 460, 98 LEd 630 (1954): ‘The economic philosophy behind the clause . . . is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors in “Science and useful Arts.” Sacrificial days devoted to such creative activities deserve rewards commensurate with the services rendered.’ 11   This analysis has been developed by W Landes and R Posner. See in particular the much cited W Landes and R Posner, ‘Trademark Law: An Economic Perspective’ (1987) 30 Journal of Law & Economics 265, discussed, for example, in Isaac (above n 3) 219. See also W Landes and R Posner, ‘An Economic Analysis of Copyright Law’ (1989) 18 Journal of Legal Studies 325. In fact, the approach of neoclassical economists such as Landes and Posner is somewhat different from earlier ‘classical’ economic approaches: it is much more heavily free-market-based and sees far less scope for ‘fair use’ type doctrines, except where there is market failure. See Joyce (above n 5) 68–69. 12   See Trollope’s Autobiography, quoted in Copinger (above n 7) para.2-04.

14  Art and Copyright Of course it can be debated whether in the fine arts the economic basis of copyright has much relevance: it is trite to say that Picasso, for example, would doubtless still have created his works regardless of the existence or otherwise of copyright. It is originals of his works (as opposed to (unsigned) copies) that command enormous prices, and Picasso was able to exploit the market for his works in his lifetime. However, in the applied arts and areas such as lithography, photography, online exploitation and engravings, where the copy (as opposed to the original) has economic value in its own right, the economic justification has greater force. Denis Thomas stated some years ago: It has been suggested that copyright has no effect on true artistic creativity. However, it is presumably a factor in the world of the popular arts, with its chance of quick returns for the entrepreneur alert for changes of mood and fashion, especially among the young. Nor can it be assumed that serious works of art would be entirely unaffected: though artists would continue to express themselves, as they have done throughout history, under all kinds of economic and social constraints, the publishers, impresarios and galleries needed to bring their own works before the public might be less inclined than under copyright protection to take the financial risk.13

In fact, the economic argument for copyright protection, in one guise or another, has a long history in English law. For example, according to David Saunders, in the seventeenth-century case Roper v Streeter,14 the court ‘recognised investment and expense as justifying a claim to a property [right] in copyright’.15 2.2.2  Public Policy Arguments It is generally regarded as being in the public good that authors should be encouraged to publish their works to ensure as wide a dissemination of knowledge and culture as possible. The existence of copyright encourages this and in economic terms can help make such dissemination viable—indeed, the first British copyright act, the Statute of Anne,16 was entitled ‘An Act for the Encouragement of Learning’.17 However, copyright protection raises conflicts here: it is one thing to   Thomas (above n 9) 27.   (1672) Skinner 233, 90 ER 107. 15   D Saunders, Authorship and Copyright (London, Routledge, 1992) 29. 16   (1709) Anne c 19. 17   Teilmann-Lock (above n 6) 50–54. 13 14

The Copyright System: Justification and History   15 encourage the production of copyright works, but if unregulated, copy­right might act as a fetter on those who need to copy the works for desirable purposes, such as private study or research, or for critical comment. So arguments for exceptions to copyright protection on the basis of ‘fair use’ or ‘fair dealing’ also come to the fore in this regard. These are discussed in chapters three and six. 2.2.3  Moral Rights There are two major theories underpinning arguments that authors have an intrinsic, just or moral right to their creative efforts. These are based on the idea of a ‘just reward’ for labour, and that under natural law authors have an exclusive right of property in their labours. Just Reward Theory At its most basic this theory can be summed up by Jesus’ injunction: ‘For the labourer is worth his hire.’18 A variant of this is the desert theory, or as it is sometimes called, the ‘value-added’ labour theory.19 According to Becker (as summarised by Isaac), ‘this is a moral theory which seeks to justify the grant of a proprietary right to the creator of intellectual property on the basis that the “effort” in creating the thing “deserves” to be recognised and rewarded such that the creator can prevent imitation of his work.’20 Also, it is argued that as the author will have created something of benefit to society he or she is entitled to receive in return a benefit from society, namely a property right.21 Certainly the desert argument is to be distinguished from the natural law argument discussed below. However, it has also been pointed out that the difficulty with the desert theory is in determining what sort of efforts are worthy of   Luke 10:7 (Authorised Version). See Isaac (above n 3) 222–23.  For example, by J Hughes, ‘The Philosophy of Intellectual Property’ (1988) 77 Georgetown Law Journal 287. 20   Isaac (above n 3) 223, citing LC Becker, ‘Deserving to Own Intellectual Property’ (1993) 68 Chicago-Kent Law Review 609. 21   Isaac (above n 3) 223, again citing Becker (ibid). For example, in the US case of Mazer v Stein (1954), it has been argued by Hughes (above n 19) that the Supreme Court was saying that the enhancement of the public good through the efforts of intellectual labour made the creators worthy of their reward. (See the comments of the Supreme Court noted above.) 18 19

16  Art and Copyright protection and what protection is given.22 For example, ‘[m]any of the best value intangibles are the results of moments of inspiration that involve little or no apparent effort on the part of the person claiming the intangible. The work of the perspiring, but not the inspired, “creator” would be protected by law.’23 Thus the desert principle is not without its problems: in terms of effort, the labours of the artisan might outweigh those of the inspired artistic genius. It can be argued that a variant of the desert theory is the ‘reap/sow’ principle, or ‘unjust enrichment’ argument as it is also called (ie, that it is unjust to reap where you have not sown), although this also has utilitarian aspects.24 This has been used as a basis to prevent misappropriation or unfair competition. A well-known example of this principle is the US case of International News Service v Associated Press.25 This principle also appears in UK copyright law from time to time, and it is also the basis of the famous copyright maxim ‘what is worth copying is . . . worth protecting’.26 In 1964 Lord Devlin stated: 22   Isaac (above n 3) 223. See also EC Hettinger, ‘Justifying Intellectual Property’ (1989) 18 Philosophy & Public Affairs 31: ‘Although intellectual laborers often deserve rewards for their labor, copyrights, patents and trade secrets may give the laborer much more or much less than is deserved.’ 23   Spence (1996) (above n 4) 487. Spence gives other arguments against the desert theory as well (487–89). Given these difficulties, Spence sees it as the least important theory in the discussion of intellectual property rights generally (488–89). 24   The ‘rhetoric’ of misappropriation has roots in the longstanding legal doctrines of quasi-contract and restitution: see Joyce (above n 5) 67. 25   (1918) 248 US 215 (SC). In this case the court held that the defendant could be enjoined from using the plaintiff’s wire service news items during the period the information constituted ‘hot’ news and had commercial value: strictly speaking, what was restricted here was not copying but the use of information to the extent necessary ‘to prevent that competitor from reaping the fruits’ of the plaintiff’s efforts. See AR Miller and MH Davis, Intellectual Property, 2nd edn (St Paul, MN, West Publishing, 1990) 418; and Isaac (above n 3) 227. 26   University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch (per Peterson J) 610, cited with approval by Lord Reid in Ladbroke Ltd v William Hill Ltd [1964] 1 All ER 465 at 471). Laddie J in Autospin (Oil Seals) Ltd v Beehive Spinning (A Firm) [1995] RPC 683 spoke of the ‘almost evangelical fervour’ of the UK courts to apply the commandment ‘thou shalt not steal’ [the results of the plaintiff’s labours]: ‘If that has necessitated pushing the boundaries of copyright protection further out, then that has been done. This has resulted in a body of case law on copyright which, in some of its further reaches, would come as a surprise to the draughtsmen of the legislation to which it is supposed to give effect.’ Indeed, this comment of the late Mr Justice Laddie highlights a major difficulty with the misappropriation justification: there are no inherent checks and balances in its application (unlike the utilitarian argument whereby the incentive to create is balanced by granting copyright for a limited term and the development of fair use and other limiting doctrines such as the idea/expression dichotomy, and the natural law argument whereby a public domain element needs to be preserved on the basis of Locke’s famous proviso). See Joyce (above n 5) 67; and below n 30.

The Copyright System: Justification and History   17 Free trade does not require that one should be allowed to appropriate the fruits of another’s labour, whether they are tangible or intangible. The law has not found it possible to give full protection to the intangible. But it can protect the intangible in certain states, and one of them is when it is expressed in words or print. The fact that that protection is of necessity limited is no argument for diminishing it further, and it is nothing to the point to say that either side of the protective limits a man can obtain gratis whatever his ideas of honesty permit him to pick up.27

Indeed, it was referred to by the House of Lords in a relatively recent case involving artistic works, Designers Guild Limited v Russell Williams (Textiles) Limited:28 The law of copyright rests on a very clear principle: that anyone who by his or her own skill and labour creates an original work of whatever character shall, for a limited period, enjoy an exclusive right to copy that work. No one else may for a season reap what the copyright owner has sown.29

Natural Law/Personality Bases These bases are the ones most often raised by those seeking to protect authors’ rights, as opposed to those exploiting creative works for profit. They have a number of aspects. One is the often-cited statement about property by John Locke in his Second Treatise of Civil Government (1690): [E]very man has a Property in his own Person. This no Body has any Right to but himself. The Labour of his Body and the Work of his Hands, we may say, are properly his. Whatsoever then he removes out of the State that Nature hath provided, and left in, he hath mixed his Labour with, and joyned to it something that is his own, and thereby makes it his Property.30 27   Ladbroke v Hill [1964] 1 WLR 273, 291 (per Lord Devlin). See WR Cornish, Intellectual Property, 4th edn (London, Sweet & Maxwell, 1999) 363. 28   [2000] 1 WLR 2416. 29   Designers Guild (ibid) 2418A (per Lord Bingham of Cornhill). Of course the unthinking use of phrases like ‘reap/sow’ and ‘the fruits of another’s labour’ as metaphors can have a strong conservative power in strengthening the rights of owners/creators at the expense of users. ‘Metaphor in legal discourse can . . . help to lock us into the internal logic of an image or set of images, structure our thinking in a way that may weaken or distort our rational decision-making capacities’: P Loughlan, ‘Pirates, Parasites, Reapers, Sowers, Fruits, Foxes: The Metaphors of Intellectual Property’ (2006) 28 Sydney Law Review 211, 226. ‘Piracy’ is another metaphor that Loughlin criticises. 30   As quoted in Rose (above n 1) 5. It is important to note, however, Locke’s famous proviso—‘Labour being the unquestionable Property of the Labourer, no Man but he can have a right to what that is joyned to, at least where there is enough and as good left in

18  Art and Copyright Thus through labour an individual converts the raw material of nature into private property, whether tangible or intangible. This argument features in the key eighteenth-century literary property cases between booksellers:31 Extended into the realm of literary production, [this] theory of property produced the notion put forward by the London booksellers of a property founded on the author’s labour, one the author could sell to the bookseller. Though immaterial, this property was no less real and permanent, they argued, than any other kind of estate.32

It has been argued that Locke’s theory of a right of property deriving from personal labour was from the start embedded in American copyright law33 and that ‘the concept of English copyright law is a true picture of Locke’s theory up to the present day. Copyright subsists in a literary, dramatic, musical or artistic work if some, albeit limited, work or effort has gone into the creation of the work.’34 Certainly in English law there was early judicial acknowledgement that it was just to grant copyright to authors of literary works and also that authors had what we now call ‘moral rights’, as Lord Mansfield made clear in Millar v Taylor: It is just, that an author should reap the pecuniary profits of his own ingenuity and labour. It is just, that he should judge when to publish. It is fit he should not only choose the time, but the manner of publication. . .35 common for others’ (para 27, Second Treatise, emphasis added). Gordon has restated the proviso as follows: ‘Creators should have property in their original works, only provided that such grant of property does no harm to other persons’ equal abilities to create or to draw upon the pre-existing cultural matrix and scientific heritage. All persons are equal and have an equal right to the common’: WJ Gordon, ‘A Property Right in Self Expression: Equality and Individualism in the Natural Law of Intellectual Property’ (1993) 102 Yale Law Journal 1533, 1563–64. 31   Such as Millar v Taylor (1769) in which the Court of King’s Bench ruled that literary property was a common law right and that copyright was perpetual; and the House of Lords in Donaldson v Becket (1774) 2 Bro PC 129; (1774) 4 Burr 2408; 17 Cobbett P Hist 954, which reversed Millar v Taylor and declared that copyright was limited in term in accordance with the Statute of Anne. See Rose (above n 1) 5 and generally. 32   Rose (above n 1) 6. 33   Saunders (above n 15) 243, citing AC Yen, ‘Restoring the Natural Law: Copyright as Labor and Possession’ (1990) 51 Ohio State Law Journal 517. 34   A Rahmatian, ‘Non-Assignability of Authors’ Rights in Austria and Germany and Its Relation to the Concept of Creativity in Civil Law Jurisdictions Generally: A Comparison with UK Copyright Law’ (2000) 5 Entertainment Law Review 95, 96. Rahmatian cites the test of originality for works to benefit from copyright under English law, which depends on some, albeit a limited amount, of skill, labour and judgement being applied. See, eg, the House of Lords in Ladbroke Ltd v William Hill Ltd [1964] 1 All ER 465; and below ch 3. 35   (1769) 4 Burr 2303; 98 ER 252.

The Copyright System: Justification and History   19 However, in addition to the Lockean natural law strand, AngloAmerican copyright law also lays particular stress on the economic basis for copyright protection—the distinctiveness, artistic merit or originality of expression are less relevant than protecting the economic value of the author’s labour.36 Another theory underpinning copyright centres on the idea that an artist’s work is nothing less than an extension of the artist’s personality—the so-called ‘personality’ theory. Kant defended copyright on this basis,37 as did Hegel. It has been argued that the personality justification is the one best applied to the arts.38 The now unfashionable philosopher Herbert Spencer also argued in support of an argument for the peculiarly personal nature of an artist’s work: ‘a production of mental labour may be regarded as property in a fuller sense than may be a product of bodily labour; since that which constitutes its value is exclusively created by the worker.’39 Indeed, the link between copyright and the artist’s personality is regarded as the basis for copyright protection in civil law (or droit d’auteur (‘authors’ rights’)) jurisdictions: [I]n the civil law countries, the justification for the protection of a person’s creation is not the potential economic value of the labour and effort which have gone into the work, but the fact that every person can claim protection for his/her personality and anything that flows from it.40

Indeed, the first French authors’ rights laws (13–19 January 1791 and 19 July 1793) reflected this principle, and Le Chapelier, when presenting one of these early French revolutionary laws, stated: ‘La plus sacrée, la plus personnelle de toutes les propriétés est la fruit de a la pensée 36   See, for example, Rahmatian (above n 34) 97. It can be argued that Lord Mansfield’s judgment in Millar v Taylor mingles both the economic and personal rights of the author: ‘In his presentation, the claims of propriety and property reinforced and validated each other: the personal interests moralised the economic claim, while the property claim gave legal weight to the personal interests’: Rose (above n 1) 82. 37  See JAL Sterling, World Copyright Law (London, Sweet & Maxwell, 1999) 43. Teilmann-Lock (above n 6) discusses the influence of Edward Young and Denis Diderot, as well as Kant and Hegel, on this theory that copyright is not a right of property but a personality right (45–50). 38   See Hughes (above n 19) 287. 39   Thomas (above n 9) 26, citing H Spencer, The Principles of Ethics, Vol II [1897]. 40   Rahmatian (above n 34) 97. According to Sterling (above n 37), in French law the test for subsistence of copyright is whether the work shows ‘the mark of the author’s personality’, and in German law the subsistence of the author’s right relates to the personal act of creation by the author (43).

20  Art and Copyright d’un ecrivain.’41 These laws were of broad scope (granting a property right protecting the works of authors, composers, painters and engravers for their entire lives) and exerted a great influence on the laws of France’s neighbours.42 Nevertheless, the laws did recognise the public domain: once a work was published (as opposed to unpublished works, to which Le Chapelier’s famous quotation above applies), the public was made a party to the author’s property, and protection only extended for a limited period after the author’s death. Indeed, after that period, according to Le Chapelier, ‘everybody should be able to print and publish the works which have helped to enlighten the human spirit.’43 The use of natural law arguments to justify intellectual property rights is not without its critics: if all labour or creative effort resulted in a grant of property rights, would this not prevent others from drawing on the common pool or public domain of works and ideas?44 Also, it has been argued that the Lockean theory fails to properly explain why property ought to be created in the item created: simply because a book is an author’s creation is this a sufficient reason to make it the author’s property?45 What of creations which are 99 per cent inspiration and 1 per cent perspiration, for example—ie, where little labour is expended?46 Other objections have also been raised.47 A strong argument against over-reliance on natural rights justifications for copyright is the nature of artistic works. In reality, ‘authorship’ is not a solitary activity in which one person creates an entire work from imagination alone. As Bard and Kurlantzick have argued, all 41   Rahmatian (above n 34) 98. This point is also made by Sam Ricketson: ‘There was a conscious philosophical basis to the French laws that saw the rights protected as being embodied in natural law’: S Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886–1986 (London, Centre for Commercial Law Studies, Queen Mary College/Kluwer, 1987) 5. 42   See Ricketson (ibid) 6. 43   See the discussion in Teilmann-Lock (above n 6) 32–39 and 66–68. 44   Nevertheless, Locke’s theory continues to be a fertile basis for analysis, especially in the context of copyright. For example, Gordon (above n 30), in applying a Lockean natural law analysis to the idea/expression dichotomy, has stated that Locke’s ‘proviso’ ‘prohibits a creator from owning abstract ideas because such ownership harms later creators’ (1581). For discussion of the ‘proviso’, see above n 30. 45  S Breyer, ‘The Uneasy Case for Copyright: A Study of Copyright in Books, Photocopies and Computer Programmes’ (1970) 84 Harvard Law Review 281, 289, cited in Saunders (above n 15). 46   ‘The labor justification cannot account for the idea whose inception does not seem to have involved labor’: Hughes (above n 19). 47   See, eg, Sterling (above n 37) 41–42, where various difficulties in applying Locke’s property theory to copyright are explored. See also Hettinger (above n 22) 31 for a critique of the Lockean and desert theories, among others.

The Copyright System: Justification and History   21 artists are part of artistic communities that shape their vision: an artistic work does not just reflect the artist’s personality; it embodies a mixture of his or her personality, the influence of contemporary society and the works of other artists (living and dead). Indeed, this fact argues strongly for the recognition of a strong public domain element to copyright.48 2.2.4  Copyright Scepticism It is perhaps surprising the extent to which copyright, based on any or all of the above justifications, is viewed as necessarily desirable.49 Certainly there are continuing debates about the appropriate duration of copyright protection. Indeed, many of these are conducted on strictly economic grounds: what is the optimal duration to stimulate creativity without stifling the rights of others to create derivative works? At what point do the marginal benefits from increasing the term or scope of copyright protection (such as the additional revenues generated that help to encourage more works) equal the marginal costs incurred from increasing the protection (such as the cost of creating works, the possibility of restricted public access to works and the increased administrative costs of administering and enforcing copyright protection)?50 However, there are also those who actively challenge the application of copyright law of whatever duration, especially to utilitarian works. As noted above, although the ‘public domain’ is not a defined term in UK copyright law, a strong public domain is important in allowing the

48   RL Bard and L Kurlantzick, Copyright Duration: Duration, Term Extension, the European Union and the Making of Copyright Policy (San Francisco, Austin & Winfield Publishers, 1999). 49   The 1996 article by the late Mr Justice Laddie, ‘Copyright: Over-Strength, OverRegulated, Over-Rated?’ (1996) 5 European Intellectual Property Review 253 (the revised text of a Memorial Lecture in honour of the distinguished copyright lawyer Stephen Stewart QC) [hereafter ‘Laddie (1996)’] remains a trenchant critique of modern copyright law. See also his conclusion in Autospin (Oil Seals) Ltd v Beehive Spinning (A Firm) [1995] RPC 683 for some similar criticisms. 50  This is the classic, albeit simplified, benefit–cost analysis in economics: see M Rushton, ‘Economics and Copyright in Works of Artistic Craftsmanship’, presented at the Shepherd and Wedderburn Centre for Research into Intellectual Property and Technology (SCRIPT), University of Edinburgh (30 October 2000), available at http:// www.law.ed.ac.uk/‌‌‌script/newscript/rushton.htm (accessed 21 Sept 2011).

22  Art and Copyright ‘inspiration’ so important to artistic success to flourish.51 On this understanding, a work within the public domain is not protected by copyright at all (eg, it falls into the ‘idea’ side of the idea/expression dichotomy), or copyright in it has expired. The public domain creates space for creativity to develop and flourish. Indeed, Hugh Hansen, in a witty and original article, has spoken of the players on the copyright stage: first, the secular priesthood of copyright lawyers, all firmly believing that creators are entitled to copyright in their works; second, the ‘agnostics and atheists’, ‘imbued with the culture of the public domain’.52 Certainly, Rushton and others have argued that copyright protection for certain works—in particular, ‘works of artistic craftsmanship’—is not justified by economic analysis. This is on the basis that law ought to help promote economic efficiency—thus the law should be wary in creating property rights for every conceivable creative work.53 Rushton sees works of artistic craftsmanship as less deserving of copyright protection than works of fine art.54 Others see the continuing expansion of intellectual property law into areas such as the protection of functional designs, the patenting of computer software and micro-organisms as indicating that intellectual property has come to be more of an end in itself than as a means to promote innovation.55 Whenever a new intellectual property right is 51   To quote Mr Justice Laddie, ‘The whole of human development is derivative. We stand on the shoulders of the scientists, artists and craftsmen who preceded us. We borrow and develop what they have done; not necessarily as parasites, but simply as the next generation. It is at the heart of what we know as progress’: Laddie (1996) (above n 49) 259. The limits of appropriation, in the context of parody and other uses of someone else’s work, are discussed later in this book. 52  HC Hansen, ‘International Copyright: An Unorthodox Analysis’ (1996) 29 Vanderbilt Journal of Transnational Law 579. 53   Rushton (above n 50) 15. 54   For example, according to Rushton (above n 50), such works inevitably have functional aspects (which ought not to be protected by copyright); they are attractive to consumers for a number of reasons not least often because of their attribution to a particular ‘artist-craftsman’ (so granting copyright to such works will not necessarily stimulate the creation of new works at all); a strong ‘public domain’ or ‘tradition’ is important for creativity in the applied arts; it will often be expensive for copiers to succeed in making acceptable copies of a work of artistic copyright (and hence on economic grounds copyright protection is not required); and moral rights in the applied arts are less important: the law of passing off should suffice (12–14). 55   D Vaver, ‘Intellectual Property: The State of the Art’ (2000) 116 Law Quarterly Review 621 [hereafter ‘Vaver (2000)’] 636. See also D Vaver, ‘Intellectual Property Today: Of Myths and Paradoxes’ (1990) 69 Canadian Bar Review 98 [hereafter ‘Vaver (1990)’], in which the author argued that copyright, with its minimal standards for eligibility, is less concerned with authors, art and literature than with protecting the mass media: ‘art and literature [in comparison to the ‘army of standardized industrial products—fungible

The Copyright System: Justification and History   23 argued for (such as sui generis database rights discussed in chapter three) or the expansion of an existing right is called for (such as extending the exclusive rights granted to copyright owners to include ‘transmission right’ to protect the exploitation of works on the Internet, as discussed in chapter five), then at the very least some attempt at a cost– benefit analysis ought to be undertaken. Nor should intellectual property be treated as an absolute value; ranged against it are values of at least equal importance including, as Professor David Vaver has argued, ‘the right of people to imitate others, to work, to compete, talk, and write freely, and to nurture common cultures’.56 The way intellectual property should be reconciled with these societal values has changed and will continue to change over time. Vaver goes on: ‘[Such] adjustments occur for social and economic reasons; they are not ordained by natural law. Where a particular line should be drawn can certainly not be answered by circularities like “Intellectual property is property”.’57 Certainly, it should be noted, as Professor Vaver does, the historical trend has been for intellectual property rights to become more intense and all encompassing. In its early years, for example, copyright law simply prevented literal copying:58 so for example, when the copyright owner of a painting complained that tableaux vivants mimicking it were being staged in London without his permission, a claim of copyright infringement failed.59 This has now changed.60 Likewise, it has been argued that the concept of ‘originality’ as the basis for protection in copyright law has mutated from an understanding that ‘original’ should embody an element of novelty akin to patent law to simply that it involves some independent skill and labour on the part of the pop records, soap operas, formula films, pulp books. . .’] occupy so small a field that it is hard to see how copyright law significantly encourages their creation’ (109) and can even be used as a tool of censorship. Vaver cites, eg, the US case in which JD Salinger was able to prevent a biographer from using letters of his available to the public in an archive: Salinger v Random House Inc (1987) 811 F 2d 90 (CA 2, 1987). 56   See Vaver (2000) (ibid) 636, citing D Vaver, Intellectual Property: Copyright, Patents, Trade-marks (Concord, Ontario, Irwin Law, 1997) 5–6. 57  Ibid. 58   Ibid, 625–26. 59   Hanfstaengl v Empire Palace [1894] 2 Ch 1 (CA), affirmed sub nom Hanfstaengl v Baines & Co [1895] AC 20, discussed in Vaver (2000) (above n 55) 625. Stina TeilmannLock comes to the same conclusion in her study of British copyright cases from 1769 to 2001: Teilmann-Lock (above n 6) 235–38. 60  See Bradbury, Agnew & Co v Day (1916) 32 TLR 349, which held that the earlier cases were no longer good law in light of s 1(2) of the Copyright Act 1911: ‘ “Copyright” means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatsoever.’

24  Art and Copyright author.61 So as we will see later in this book, copyright law protects equally a simple engineering drawing or ‘logo’, a photograph of a work of art and a painting by an accomplished artist such as John Piper. Whether this is in the interests of society as a whole is another matter—as Mr Justice Laddie once memorably put it, ‘You can have too much of a good thing, and I suggest we have got too much copyright.’62 Another approach is that of Marxist historians, who have argued that the emergence of copyright and notions of originality were a conversion of ideas into things: property. Art became property, and this basis was reinforced by stressing the creative genius of the artist and hence introducing a moral (rights) basis to plagiarism as equivalent to theft.63 Nevertheless, artists fail to benefit from the copyright system as an artist’s rights are frequently transferred to business interests—to ‘Capital’—either by virtue of the artist’s employment or by assignment: it is Capital not Labour that ultimately benefits from copyright, albeit that copyright is dressed up in the language of authors’ rights.64 Also, there are those like John Perry Barlow who, in the light of the rapid growth of the Internet and digitisation and the difficulties of preventing the digital piracy of works, see the very notion of copyright as outdated: ‘intellectual property law cannot be patched, retrofitted or 61   See for example Dicks v Yates (1881) 18 Ch D 76 (CA) (per Lush LJ): ‘I take it to be established law that to be the subject of copyright the matter must be original, it must be a composition of the author, something which has grown up in his mind, the product of something which if it were applied to patent rights would be called invention.’ This is in distinction to the House of Lords in Walter v Lane [1900] AC 539, where simply the original effort in transcribing the notes of a speech done by a shorthand writer was sufficient to justify copyright protection. Both these cases are discussed by Laddie (1996) (above n 49) 259–60. Note, however, that this widely held view of how English law treats originality is now under challenge from the European Court of Justice. See the comments of Estelle Derclaye on the 2009 Infopaq decision (Case C-5/08) of the ECJ (discussed below in ch 6, s 6.6): E Derclaye, ‘Infopaq International A/S v Danske Dagblades Forening (C-5/08): Wonderful or Worrisome? The Impact of the ECJ Ruling in Infopaq on UK Copyright Law’ (2010) European Intellectual Property Review 247. 62   Laddie (1996) (above n 49) 260. But for a measured view of the recent debate from a US perspective, see also JC Ginsburg, ‘Essay: How Copyright Got a Bad Name for Itself’, Research Paper 02-46 (Columbia Law School Public Law & Legal Theory Research Paper Group, 18 October 2002), available at SSRN (abstract id=342182) and published in (2002) 26(1) Columbia Journal of Law and the Arts. 63   See AB Kernan, ‘Art and Law’ Princeton Alumni Weekly (12 October 1998) 34, 69, cited by Vaver (1990) (above n 55). 64   This is admittedly a gross oversimplification of the Marxist analysis; for a more detailed discussion, see, eg, K Bowrey, ‘Who’s Writing Copyright’s History?’ (1996) 6 European Intellectual Property Review 322, 325, citing B Edelman, Ownership of the Image: Elements for a Marxist Theory of the Law, E Kingdom (trans) (London, Routledge and Kegan Paul, 1979).

The Copyright System: Justification and History   25 expanded to contain digitized expression any more than real estate law might be revised to cover the allocation of the broadcasting spectrum.’65 He sees encryption as the technical solution for most intellectual property protection. Finally, in light of the growth of creative communities (often online) that appear to encourage the creation of copyright works without the need for economic incentives (eg, YouTube, Flickr, open source software), there has been recent debate as to whether the classic economic argument for the existence of copyright is still a credible one. Should the ‘incentives argument’ be jettisoned completely?66 Or should the focus be on not just the economic incentives that might motivate creators but also the ‘expressive incentives’ that underlie copyright law? In other words, perhaps there should be a focus on ‘incentives that express solicitude for and protect a creator’s strong personhood and labor interests’ (for example, giving authors attribution, linking the copyright term to the author’s lifetime and generally the importance of moral rights to authors).67 Either way, copyright is clearly here to stay. But it does seem right to question whether the classic economic incentive argument for copyright is really still valid in all cases, especially in the context of ‘open innovation communities’ (eg, the open source software movement), where information is shared with little if any concerns for intellectual property protection, and indeed, in a legal environment where attempts to privatise creative endeavours are discouraged through ‘Copyleft’ licensing models.68 65  JP Barlow, ‘The Economy of Ideas: Everything You Know about Intellectual Property is Wrong’ Wired (March 1994). 66   This is argued by E Johnson, ‘Intellectual Property and the Incentive Fallacy’ (forthcoming) Florida State University Law Review (draft dated 4 May 2011 available at SSRN, abstract id=1746343). 67   See JC Fromer, ‘Expressive Incentives in Intellectual Property’ (forthcoming 2012) 98 Virginia Law Review. 68   For a stimulating discussion of this area, see R Cooper Dreyfuss, ‘Does IP Need IP? Accommodating Intellectual Production outside the Intellectual Property Paradigm’, New York University School of Law Research Paper (August 2010), available at SSRN, abstract ID=163950; published in (2010) 31(5) Cardozo Law Review 1437–73. On the origins of ‘copyleft’, see ‘Proprietary software developers use copyright to take away the users’ freedom; we use copyright to guarantee their freedom. That’s why we reverse the name, changing “copyright” into “copyleft”’: ‘What is Copyleft?’, available at http:// www.gnu.org/copyleft/ (accessed 7 July 2011). Outside the field of software, Creative Commons is probably the best known example of taking open-source licensing concepts and modifying them so that they can apply to other types of copyright work where attribution of the author is paramount. See discussion below in ch 6, s 6.3.2, esp n 113.

26  Art and Copyright 2.2.5  Some Conclusions There are a variety of justifications for copyright. No one argument is likely to prevail in any jurisdiction or at any particular time: the justifications are, in the words of the leading English copyright text Copinger, ‘cumulative and interdependent . . . although different countries give varying emphasis to each of them’.69 However, the general view is that in the development of modern copyright laws, the economic and public policy justifications are given greater weight in Anglo-American laws, whilst in civil law and especially Continental jurisdictions, moral rights arguments are given primacy.70 In fact, the European Court of Justice in Phil Collins71 has defined the specific subject matter of copyright and performers’ rights as being to ensure the protection of the moral and economic rights of their holders.72 Also, the perceived difficulty of adequately protecting works on the fringes of or outside traditional concepts of copyright or property rights—for example, databases or ‘semiconductor topographies’—has led to the growth in so-called sui generis rights: rights ‘of their own nature’, not linked juridically to other specific rights. Indeed, it has been suggested that authors’ rights generally should be classified as sui generis. But this has not found much favour, except in very limited circumstances.73

69   Copinger (above n 7) para.2-04. Laddie, for example, simply sees three ‘sacred’ principles as justifying the existence of copyright: (i) the Eighth Commandment (‘Thou shalt not steal’); (ii) that matter created by the brain should be treated as property; and finally, (iii) the principle of reward (copyright serves as an incentive to allow and encourage artists and the like to spend time in creative activities as their ‘investment’ of time and money will be protected at law, and this is in the public good): Laddie (1996) (above n 49) 253–54. 70   Saunders speaks of the ‘great divide’ between the traditions of ‘copyright’ as developed in English law and the droit moral in droit d’auteur systems of author’s right protection: Saunders (above n 15) 236–37. See also Copinger (above n 7) para.2-04. 71   Joined Cases C-92/92 and C-326/92 (20 October 1993). 72   Para 20 (emphasis added). Although outside the scope of the present work, it is worth noting that Phil Collins made clear that copyright and moral rights potentially affect trade in goods and services and also competitive relationships within the European Community; hence, although governed by national law, such rights are subject to the requirements of the EC Treaty and fall within its scope of application (para 22). In particular, the exercise of copyright in an anti-competitive manner could fall foul of Arts 81 and 82 of the EC Treaty: see, for example, Magill [1995] FSR 530. 73  See Sterling (above n 37) 44 for a discussion of various theories (eg, of Picard, Roubier and Dabin) in this regard.

The Copyright System: Justification and History   27 2.3 

the history of copyright

74

Copyright arose out of monopoly privileges granted by the Crown to printers from the fifteenth century onwards. Alongside such printing privileges (‘patents’) direct from the Crown under the royal prerogative, the printing trade also developed its own system of regulation through the Stationers’ Company in London (which in turn derived its authority from the Crown). The modern notion of the creator-authors owning exclusive rights to print and publish their works played no part in the early years of copyright. It was not until the first copyright statute in the world, the 1709 Statute of Anne75 that authors of books or other writings (not works of art) and their assigns were granted a limited fourteen-year period of protection in the first instance.76 In the eighteenth century, it was disputed as to whether literary copyright existed at common law independently from the 1709 statute: in the landmark case of Donaldson v Beckett (1774),77 the House of Lords held that upon publication of a work, it did not. From then on, the law of copyright became the sole creature of statute.78 Works of art were given protection later on, first by a series of statutes beginning in 1735 in favour of engravings.79 The first of these, the Engraving Copyright Act of 1734,80 was the first statute to give legislative protection to artistic works, granting a fourteen-year term of protection for only works both designed and engraved by the artist. This was because the force behind the Act, the celebrated artist and engraver William Hogarth, was invariably the designer as well as the engraver of his well-known works, which were widely pirated.81 Indeed, in distinction to 74   See JH Baker, An Introduction to Legal History, 3rd edn (London, Butterworths, 1990) 348–50; Cornish (above n 27) ch 9; and Copinger (above n 7) ch 2. 75   8 Anne, c 19. 76   For a recent, challenging and fresh look at the background to the Statute of Anne and its aftermath, see R Deazley, On the Origin of the Right to Copy: Charting the Movement of Copyright Law in Eighteenth-Century Britain, 1695–1775 (Oxford, Hart Publishing, 2004). See also more generally, R Deazley, Rethinking Copyright: History, Theory, Language (Cheltenham, Edward Elgar, 2006). 77   4 Burr 2408; 2 Bro PC 129. 78   Common law copyright did survive for unpublished works, but this was abolished by the Copyright Act 1911. 79   Stat 8 Geo II, c 13; enlarged by 6 Geo III, c 38, s 2; 17 Geo III, c 57. 80   Stat 8 Geo II, c 13. 81   See generally Copinger (above n 7) para 2-19. In particular, Hogarth’s ‘A Harlot’s Progress’ was widely pirated. The Act became law on 25 June 1735, and so Hogarth

28  Art and Copyright literary property and the genesis of the Statute of Anne (where the book trade, as opposed to authors, were primarily seeking protection), artists, not printers and print-sellers, sought legislative protection against piracy.82 The later Act of 176683 redressed the position and allowed engravers who engraved to the designs of others to themselves benefit from copyright protection. Prints taken by lithography or other mechanical process then gained protection through the International Copyright Act of 1852.84 Further statutes beginning in 1787 gave very limited protection to fabric designs.85 Sculptures were granted protection by statutes of 1798 and 1814.86 Perhaps surprisingly, it was not until 1862 that copyright was extended to paintings, drawings and photographs.87 Prior to this date, case law protected by copyright the photography of an engraving through engraving copyright (which treated the photograph as an unlawful copy of an engraving under the 1777 Act88) but not the photography or other reproduction of a painting (and indeed the making of an engraving from a painting). The first comprehensive, modern statute and unified copyright code was the Copyright Act 1911, which took account of the Berne Convention of 188689 and technological developments such as sound delayed publication of the even better known ‘The Rake’s Progress’ until that date: D Bindman, Hogarth (London, Thames and Hudson, 1981) 61. Hogarth himself commented, ‘After having had my first plates Pirated on all sides and manner, I applied to parliament for redress which not only has so effectually done my business but has made prints a considerable article and trade in this country, there being more business of that kind done in this Town than in Paris or anywhere else’ (quoted in S Shesgreen (ed), Engravings by Hogarth (New York, Dover Publications, 1973) xxvi). 82   J Feather, Publishing, Piracy and Politics (London, Mansell, 1994) 70. Feather notes that in the 1735 petition by Hogarth, George Vertue and other artists and engravers for protection against unauthorised copying of their engraved prints, they sought similar protection to that already afforded to others ‘as the Laws now in being have preserved the Properties of the Authors of Books’ (70). 83   Stat 6 Geo III, c 38. 84   Stat 15 & 16 Vict c 12, s 14. Lionel Bently discusses the background to this Act and its importance as the first modern copyright statute in L Bently, ‘Art and the Making of Modern Copyright Law’ in McClean and Schubert (eds) (above n 8) 331–51. 85   Stat 27 Geo III, c 38. 86   Stat 38 Geo III, c 71 (busts or statues of humans or animals); and 54 Geo III, c 56. The term of protection in the first instance was 14 years from publication. 87   Stat 25 & 26 Vict, c 68. The term was the author’s life plus seven years. 88   Stat 17 Geo III, c 57; the case was Gambart v Ball, 14 CB (NS) 306, 143 ER 463 (1863). This case is discussed in Bently (above n 84). 89  This has been revised on numerous occasions and, along with the Universal Copyright Convention (UCC) of 1952, is one of the two main international copyright conventions. The Berne Convention ensured equality of protection between member states under which either the personal connection of the author with a member state, or

The Copyright System: Justification and History   29 recordings. Under this Act, the period of protection for most types of work was made at least the author’s life plus 50 years.90 The Copyright Act 1956 took account of further technological developments and added three new forms of entrepreneurial copyright: in cinematograph films, broadcasts and the typographical format of published editions. By the 1970s there was a consensus that further changes to the law were required to take account of photocopying, audio- and videotaping and computing. The use of copyright to protect industrial designs was also being reassessed. The United Kingdom also decided to adopt fully the Continental concept of moral rights, and the copyright protection for unpublished works was set at life plus 50 years;91 other changes were also considered desirable. The result is the current copyright statute, the Copyright, Designs and Patents Act (CDPA) 1988, which repealed the 1956 Act (which in turn repealed the 1911 Act).92 The CDPA itself has been revised on a number of occasions to take account of a stream of European copyright Directives. This has been done through Regulations (ie, by statutory instrument) rather than by a new Act. The influence of the harmonisation programme of the European Commission has been and will be increasingly reaching. Elements of the civil law authors’ rights approach are now finding their way into UK law.93 first publication in a member state, was enough to secure copyright in any other member state, on the terms afforded by that state to its own authors (the so-called principle of national treatment). This is discussed further below in ch3; and see generally, Ricketson (above n 41). 90   This remained the position in the UK until 1996, when, in response to a European Directive harmonising the term of copyright, it was made life plus 70 years. 91   Under the 1911 and 1956 Acts, so long as a literary, dramatic or musical work, and certain artistic works remained ‘unpublished’ after the author’s death, the 50-year term did not begin to run. 92   The earlier Acts are still relevant in certain cases, eg, to determine subsistence of copyright in a pre-CDPA work, etc. See the transitional provisions in the CDPA (esp Schedule 1). 93  See Copinger (above n 7) para 1-05 and 25-66 et seq. Laddie in 2000 criticised the way a number of EC copyright directives have been implemented into UK law and pointed out some of the difficulties this potentially raises: see HIL Laddie, P Prescott, M Vitoria et al, The Modern Law of Copyright and Designs, 3rd edn (London, Butterworths, 2000) ch 2 (‘Invalid Legislation’). But eleven or so years later, the English courts seem perfectly happy to sidestep any implementing Regulations and focus on what a copyright Directive says, not on what the UK legislator has done in implementing it: see, eg, the approach of Arnold J to issues of interpretation of the Software Directive (Council Directive 91/250/EEC) and the Information Society Directive (Directive 2001/29/EC) in SAS Institute Inc v World Programming Ltd [2010] EWHC 1829 (Ch). As discussed below in ch 3 and ch 6, s 6.6, the Directives introduced since 1991 to harmonise EU/EEA copyright law are now beginning to have a significant impact on UK copyright law.

3

The Modern Law of Copyright 3.1 

T

background

expressly recognises that artistic works are to be given protection in member states of the Berne Copyright Union. Article 2 of the Berne Convention states: he berne convention

[T]he expression ‘literary and artistic works’ shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as . . . cinematographic works . . . works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works . . . works of applied art . . .

In US law artistic works are protected by copyright and fall within the definition of ‘pictorial, graphic and sculptural works’.1 When granting copyright protection, most states do not discriminate between ‘good’ and ‘bad’ artistic works. So a work has to merely be an ‘artistic work’ rather than be above a particular threshold of quality. Indeed, in the United Kingdom, as we will see below, artistic works are protected irrespective of their artistic quality. The exception to this rule is works of ‘artistic craftsmanship’. It is not surprising that the legislature and the judiciary have tended to shy away from making artistic copyright subject to the artistic merit 1   S 102(a), Copyright Act 1976. These are defined to include ‘two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article’ (s 101). ‘Useful article’ is further defined as ‘an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a “useful article” ’ (s 101).

32  Art and Copyright of the work in question. The matter was very well put by Oliver Wendell Holmes (as Justice of the US Supreme Court) in Bleistein v Donaldson Lithographing Co (1903),2 which affirmed copyright protection for a circus advertising poster depicting acrobats performing on bicycles: It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits. At one extreme some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke. It may be more than doubted, for instance, whether the etchings of Goya or the paintings of Manet would have been sure of protection when seen for the first time.3

Also, as Rose has argued, ‘the prestige of items of “high art” . . . is also invoked to legitimate the protection of humbler products.’4 It therefore can be argued that for art to flourish, those who seek to be artists must receive the same treatment in copyright law as those who succeed as artists.5 Moreover, even a modest work of art deserves protection because it will have the stamp of the artist’s personality on it. To quote Justice Holmes in Bleistein again, Personality always contains something unique. It expresses its singularity even in handwriting, and a very modest grade of art has in it something irreducible, which is one man’s alone. That something he may copyright.6

However, it is worth noting that in countries where copyright is based on the authors’ rights system,7 the requirement of ‘creativity’ for a   (1903) 188 US 239.   Bleistein (ibid) 251. See also, for example, the UK Supreme Court: ‘[I]t is common ground that in copyright cases the court is not concerned with passing judgment on the merits of either literary or artistic works’ (Lucasfilm Limited v Ainsworth [2011] UKSC 39, 26). 4   M Rose, Authors and Owners (Cambridge, MA, Harvard University Press, 1993) 137. See, for example, SPE International Ltd v Professional Preparation Contractors (UK) Ltd [2000] EIPR N-19 (per Rimer J), where the originality of drawings for a mobile blast cleaning machine is discussed in the same context as a picture by Mondrian. See also below ch 6, s 6.4.3. 5   Paraphrasing P Goldstein, ‘Copyright’ (1991) 38 Journal of the Copyright Society of the USA 109, 115–16: ‘[F]or authorship to flourish, those who seek to be authors must receive the same welcome as those who succeed as authors.’ 6   Bleistein (above n 2) 299–300. This echoes the ‘personality’ basis for copyright discussed above in ch 2. 7   As noted above ch 1, in droit d’auteur/authors’ rights systems, creativity that reflects the author’s personality is required: a copyright work must be the author’s own intellectual creation. 2 3

The Modern Law of Copyright   33 work to benefit from copyright protection can sometimes pose problems for the protection of artistic works. For example, in Germany, objets trouvés and ready-mades have been denied copyright protection.8 It is further worth noting that in UK law, if a work is blasphemous, offensive or immoral, copyright protection may not be granted, or at the very least, the courts may not enforce copyright.9 Andres Serrano’s highly controversial work ‘Piss Christ’ and other works made out of once living human matter, such as the freeze-dried foetus earrings that were the subject of a prosecution inter alia for outraging public decency in 1989,10 have been suggested in this regard.11

3.2 

uk law

In setting out the modern law of copyright in the United Kingdom under the Copyright, Designs and Patents Act (CDPA) 1988, it is necessary to consider: 1) the classes of work protected by copyright (ie, the ‘subjectmatter’ of copyright); 2) criteria for protection (ie, that they be original); 3) the identity of the author; 4) the need for fixation/permanence of the work; 8  BGH GRUR 1986, 458, Oberammergauer Passionspiele. See L Bently and B Sherman, ‘Copyright Aspects of Art Loans’ in N Palmer (ed), Art Loans (London, Kluwer, 1996) 249 and 257. 9   Glyn v Weston Feature Film (1916) 1 Ch 261; AG v Guardian (No 2) [1988] 3 All ER 640. See also the Court of Appeal judgment in Hyde Park Residence Ltd v David Yelland and Others [2000] 3 WLR 215 in which Aldous LJ gave examples of situations when the Court would be entitled to refuse to enforce copyright as including work that is immoral, scandalous or contrary to family life, or injurious to public life, public health and safety or the administration of justice, or work that incites or encourages others to act in this manner. See RA Browes, ‘Copyright: Court of Appeal Considers Fair Dealing Defence and Rejects Common Law Defence of Public Interest’ (2000) European Intellectual Property Review 289, 291. 10   R v Gibson [1990] 2 QB 619, as discussed at length in P Kearns, The Legal Concept of Art (Oxford, Hart Publishing, 1998) 29–35. 11   See Bently and Sherman (above n 8) 246–47. Kearns (ibid) also gives the example of Leonard McComb’s statue of a naked youth, ‘Portrait of a Young Man’, which was withdrawn from an exhibition in Lincoln Cathedral in 1990 after complaints it was indecent for a place of worship, in a discussion of the application of the law of blasphemous libel to works of art (25–26).

34  Art and Copyright 5) 6) 7) 8)

qualifying factors for protection; the duration of protection; the identity of the first owner of the copyright; the scope of the copyright monopoly (ie, the economic rights); and 9) other rights analogous to copyright. 3.2.1  The Classes of Work Protected by Copyright Copyright can subsist only in certain classes of works,12 exhaustively defined by section 1 (and related sections) of the CDPA as: 1) ‘original’13 literary works (any written works, including computer programs),14 dramatic works and musical works; 2) ‘original’ artistic works:15 graphic work (which includes (a) any painting, drawing, diagram, map, chart or plan, and (b) any engraving, etching, lithograph, woodcut or similar work),16 photograph, sculpture or collage, in each case irrespective of artistic quality; work of artistic craftsmanship; work of architecture (ie, a building or a model for a building); 12   It is an unresolved point as to whether only one ‘copyright’ can subsist in a given work. This issue arises from time to time, primarily in engineering drawings and designs, which often contain both diagrams and notation. For example, in Anacon Corporation v Environmental Research Rechnology Ltd [1994] FSR 659, Jacob J held that a circuit diagram for a piece of electronics could be both an artistic work and a literary work (ie, a list of components together with special notation for their interconnection), as under s 178 of the CDPA, ‘writing’ includes any form of notation or code. This finding was criticised by Laddie J in Electronic Techniques (Anglia) Ltd v Critchley Components Ltd [1997] FSR 401, 412–13: either the information concerned is communicated graphically or by words. However, the matter can be debated: see also Aubrey Max Sandman v Panasonic U.K. Ltd & Matsushita Electric Industrial Co Ltd [1998] FSR 651; and Mackie Designs Inc v Behringer [1999] RPC 717. For a critical commentary, see D Booton, ‘Framing Pictures: Defining Art in UK Copyright Law’ (2003) 1 Intellectual Property Quarterly 41–46. Including by reference maps, which are defined as artistic works in the CDPA but also contain text and narrative, see B Bandey, ‘Over-Categorisation in Copyright Law: Computer and Internet Programming Perspectives’ (2007) 29(11) European Intellectual Property Review 461–65. Note also that when an author creates a discrete new drawing, painting or other artistic work, it is protected by its own copyright, even if based on preceding works, as long as sufficient relevant skill and labour have gone in to creating it: see IPC Media Ltd v Highbury-Leisure Publishing Ltd [2005] FSR 20, para 5, which concerned magazine cover designs. 13   The issue of originality is considered below. 14   S 3 CDPA deals with literary works. 15   S 4 CDPA deals with artistic works. 16   S 4(2) CDPA.

The Modern Law of Copyright   35 3) sound recordings, films17 and broadcasts; and 4) the typographical arrangement of published editions.18 Of primary relevance to this book are ‘artistic works’. It is important to note that UK law is quite specific in the categories of artistic works that are protected by copyright. If a work does not fall into one of these categories, it will not be protected by copyright.19 This may appear surprising, for the use of categories of work means that contemporary art works such as ‘ready-mades’ and some other types of modern art do not easily fall into any specific category.20 Indeed, this pigeonholing of art into categories of work, some of which are protected, some of which are not, can be criticised as failing to incentivise modern artists to create such works, thus failing at least one of the rationales for copyright protection discussed in the preceding chapter.21 Nevertheless, as Anne Barron has forcefully spelt out, this is hardly surprising, as ‘the work concept has actually been generated by the copyright system’s . . . fundamental commitment to the logic of property’: 17   Film copyright protects a film as a whole, so reproducing a small number of frames of a film (eg, in a satellite decoder box) would not constitute the reproduction of a substantial part of a film: see Football Association Premier League Ltd v QC Leisure (No 2) [2008] FSR 32, paras 215–36. In this case, the frames of the film were also held not to be photographs in their own right (para 225). Films are discussed below in ch 6, ss 6.4.4 and 6.4.7. 18   This rather narrow copyright serves to protect the ‘image on the page’ and protects the publisher (who is the owner of this right) who has incurred the costs of typesetting, etc from exact copying by photo-lithography or similar means: it protects the entire edition, whether it contains a number of separate literary works or not. See The Newspaper Licensing Agency Ltd v Marks and Spencer PLC [2000] 4 All ER 239, para 23 (per Peter Gibson LJ). Designs for typefaces themselves are protected by artistic copyright: see below. 19   In practice, as one leading copyright judge put it, the law has been ‘bedevilled’ by attempts to extend the scope of these definitions (Laddie J in Metix (UK) Limited and Another v GH Maughen (Plastics) Limited and Another [1997] FSR 718); and this is a feature of the lack of a developed law of unfair competition in the UK, according to another judge (Whitford J in Davis (J&S) (Holdings) Ltd v Wright Health Group Ltd [1988] RPC 403). The need to fall within the specified categories/descriptions with no distinction between their aesthetic merits and appeal and their functionality in order to claim artistic copyright protection was recently noted by the Court of Appeal: Lucasfilm Limited v Andrew Ainsworth [2009] EWCA Civ 1328, para 43. 20   As discussed in Bently and Sherman (above n 8) 248–49. Bently and Sherman are of the view that the case for artistic copyright protection for ready-mades is stronger when the works are made with an artistic purpose in mind rather than when the work is simply ‘found’ and ‘relocated with artistic meaning’, as in Duchamp’s Readymades. This issue is given greater consideration below and in ch 6 in particular. 21  See also F Macmillan, ‘Artistic Practice and the Integrity of Copyright Law’ in M Rosenmeier and S Teilmann (eds), Art and Law: The Copyright Debate (Copenhagen, DJØF Publishing, 2005) 71–73.

36  Art and Copyright Copyright law is a branch of property law, and the chief function of property law is to define the things which may be objects of exclusive private control and identify the persons in whom those rights of control may be vested. Because of their amorphous character, intellectual objects pose particular difficulties of identification and attribution, and the concept of the work is a response to those difficulties. . .22

So the categories of artistic work under the CDPA and what is likely to fall within the relevant category are subjects needing detailed consideration, in particular given the way contemporary art is developing. This, along with the issues surrounding the originality of such works, is considered below in chapter six. Graphic Works: Paintings, Drawings, Engravings, etc23 Painting has its ordinary usage for the purposes of copyright, and it is a question of fact in any particular case whether what is being considered is or is not a painting.24 Drawing also has its ordinary usage, and no particular artistic merit is required for graphic works: in Kenrick v Lawrence25 it was held that there could be copyright in a simple drawing of a hand for a voting card, but the scope of the copyright protection was very limited (to the exact reproduction of that drawing), as no one could monopolise the drawing of a hand in general. Another often cited case illustrating that quite simple artistic works will qualify for copyright protection is British Northrop Ltd v Texteam Blackburn Ltd,26 in which copyright was held to subsist in drawings for rivets, 22   A Barron, ‘Copyright, Art and Objecthood’ in D McClean and K Schubert (eds), Dear Images Art, Copyright and Culture (London, Ridinghouse/ICA, 2002) 291–92. 23   The term ‘graphic work’ was new to the CDPA (s 4(2)) (but included paintings, drawings and engravings defined in s 3(1)(a) of the Copyright Act 1956 as artistic works); and graphic work is defined to include (a) any painting, drawing, diagram, map, chart or plan; and (b) any engraving, etching, lithograph, woodcut or similar work. In Anacon Corporation Limited and Another v Environmental Research Technology Limited and Another [1994] FSR 659, Jacob J said that the essential nature of a graphic work was that it was a thing to be looked at in some manner or other: ‘It is to be looked at in itself’ (662). Here circuit diagrams were held to be artistic works and also literary works. As discussed in this case, the visual significance of artistic works is important both in assessing their originality and also where a case of copyright infringement arises. See also Billhöfer Maschinenfabrik GmbH v TH Dixon & Co Ltd [1990] FSR 105; and below. 24   Merchandising Corporation v Harpbond (1983) FSR 32: the facial make-up of the 80’s pop star Adam Ant was not a ‘painting’, as a painting has to be on a surface of some kind. 25   (1890) 25 QBD 93. 26   [1974] RPC 57.

The Modern Law of Copyright   37 screws, bolts, etc. Other cases have afforded copyright protection to the label design for a sweet tin,27 a signature,28 the arrangement of a few decorative lines on a parcel label29 and colour charts containing numbers used to produce patchwork bedspreads and cushion covers.30 A trade mark (a ‘device mark’) has also been held to be an artistic work (a drawing).31 It is worth speculating whether a random series of marks, say where an artist throws a pot of paint at a canvas, qualifies as a painting. If there is some order or selection behind the creation of the work (eg, through the selection of paint, canvas, etc), there would appear no reason why not.32 However, there is old authority for refusing copyright protection where what is produced is ‘meaningless’.33 Rubber stereos for producing designs on transfer paper have been held to be ‘engravings’,34 an engraving being held to include both the images made from the engraved plate and the engraved plate used to   Taverner Rutledge v Specters [1959] RPC 355 (CA).   According to an unreported decision cited in K Garnett et al, Copinger and Skone James on Copyright, 14th edn (London, Sweet & Maxwell, 1999) [hereafter ‘Copinger’] para 2-23. 29   Walker v British Picker [1961] RPC 57. See WR Cornish, Intellectual Property, 4th edn (London, Sweet & Maxwell, 1999) [hereafter ‘Cornish, 4th edn’] 389. 30   Vermaat v Boncrest Ltd, The Times (23 June 2000), [2000] EIPR N-151, (June 2000) 3 Intellectual Property Lawyer 10. It was held that artistic copyright (as a graphic work) could potentially subsist in a drawing accompanied by words and figures that provided instructions to create an artistic work (on the basis of Lerose Limited and Another v Hawick Jersey International Limited [1974] RPC 42, which held that ‘point patterns’ for knitting machines were artistic works—‘drawings’ under s 3 of the 1956 Act), Interlego AG v Tyco Industries Inc [1989] AC 217 distinguished. So clearly, literary elements of a design can form part of an artistic work: see also the cases on circuit diagrams discussed above. 31   The mark consisted of the words ‘Karo Step’ surrounded by a circle within four arcs of circles that met to form the four points, which were filled in to give it the character of a star: KARO STEP Trade Mark [1977] RPC 255. Whitford J did, however, comment that a drawing could be so simple that it failed to be a ‘work’ for copyright purposes (eg, a straight line or a circle), for ‘work’ carried with it the idea of the exercise of some degree of skill and labour (273). 32   ‘Originality’ ought not to be an issue, as some skill and labour would be involved in selecting the materials and creating the work. 33   Fournet v Pearson Ltd (1897) 14 TLR 82 (CA) (unintelligible drunken scrawl): see JAL Sterling, World Copyright Law (London, Sweet & Maxwell, 1999) 189. However, the authority of this case must be doubted. It concerned an alleged literary work written by a drunk optician and published after the event ‘for scientific purposes’; the test for a literary work was held by the judge at trial to be whether ‘it was something of enduring benefit to mankind’. The Court of Appeal gave no consideration to the question of subsistence of copyright. 34   James Arnold and Co Limited v Miafern and Others [1980] RPC 397. 27 28

38  Art and Copyright produce the engravings.35 Non-slip rubber floor mats for cars have also been protected as engravings: both the metal plate used to produce the mat, as well as the mats themselves (ie, the ‘print’ produced from the engraved metal plate), the judge considering the process involved in the production of the plate as key, being an act of engraving.36 Certainly what is meant by the terms ‘engravings, etchings, lithographs, and woodcuts’ depends upon how the processes concerned (engraving, etching, etc) are defined, but one would have thought that it is straining the English language to call industrial moulds/plates and their output ‘engravings’ in the sense of artistic works.37 Otherwise, one ends up with protecting dies or moulds for mass-produced items as ‘engravings’ simply because the die or mould in question may be cut out of a metal (as is the plate used to create engravings). By focusing on the process of creation, the courts are trying to avoid making any artistic judgement as to what an engraving is, but the result can be a bit surprising, as the cases discussed earlier indicate—so surely questions of what is art (ie, an engraving) have to be considered as well. In any event, the decision of the Court of Appeal in Lucasfilm Limited v Andrew Ainsworth (affirmed by the Supreme Court),38 which is discussed below, suggests the courts are now unlikely to take the approach of just looking at the process used to create a work in determining the question—applying similar principles used by the High Court in that case for what is a ‘sculpture’, an engraving should be given its normal meaning, and there should be some assessment of the author’s purpose in creating the engraving and its visual appeal.

35   Ibid, 403. Paul Baker QC was also of the view that an engraving need not just be made by an engraving process (ie, cutting into wood, metal or other material) (403). However, Copinger (above n 28) queries whether a mould or die as such would be an ‘engraving’ (3-37), and this was also doubted by the Hong Kong Court of Appeal in Interlego AG v Tyco Industries Inc [1987] FSR 409, 453 (per Fuad JA), commenting on a New Zealand case in which ‘engraving’ included the mould to make a ‘Frisbee’: Wham-O Manufacturing Co v Lincoln Industries Ltd [1985] RPC 127 (CA). In any event, where a mould is used, a sculpture might be the result (but see the discussion about sculptures below). 36   Hi-Tech Autoparts Ltd v Towergate Two Ltd [2002] FSR 15 & 16 (Patents County Court). The judge cited Wham-O (ibid) 153. 37  See generally Copinger (above n 28) 3–37. An Australian case makes this point, denying protection to the moulds of a lawnmower engine: Greenfield Products Pty Ltd v Rover-Scott Bonnar Ltd (1990) 17 IPR 417 (Fed Ct). 38   Above nn 19 and 3 respectively.

The Modern Law of Copyright   39 Photographs ‘Photograph’ is defined under section 4(2) of the CDPA as ‘a recording of light or other radiation on any medium on which an image is produced or from which an image may by any means be produced, and which is not part of a film’. Photography is a problem area for copyright law, as in a sense every photograph is a copy of something; and unlike drawing or painting, the actual recording of the image can require no skill or labour beyond the mere mechanical operation of a ‘point-and-shoot’ camera. Hence can photographs be ‘original’ in order to qualify for copyright protection? Certainly, UK law is more generous in its protection of photographs than the droit d’auteur (authors’ rights) systems, which according to Professor Cornish ‘tend only to give copyright to “photographic works”, that is the results of careful and distinctive arrangement (scene setting, lighting, angle, etc), involving an element of aesthetic judgement which is personal to the photographer’.39 So unlike UK law, such systems will exclude both snapshots and press photographs.40 However, in the United Kingdom, ‘the work of the humble snapshot-taker stands in the same category as Beaton and Cartier-Bresson.’41 In any event, in UK law there is still scope for originality in a photograph: for example, the use of specialised techniques such as angle of shot, exposure and use of filters; the creation of a specific scene or style of subject; and merely being in the right place at the right time. These factors all contribute to the creation of an original work. Also, only a low level of originality is required in UK law: that some, albeit limited work or effort has gone into the creation of the work is enough. A photograph of an engraving from a picture, for example, has been held to be an ‘original’ photograph worthy of copyright protection.42

  Cornish, 4th edn (above n 29) 390.   Ibid. See also Kearns (above n 10) 69–71. 41   Cornish, 4th edn (above n 29) 407. 42   Graves’ Case (1869) LR 4 QB 715 is the authority for this. This case is not without its critics, and the matter is given further consideration below in ch 6. For arguments why photographs should not be treated as ‘artistic works’ under the CDPA but instead (like films, broadcasts and sound recordings) be treated as ‘medium or signal copyrights’, which do not need to be ‘original’, see R Arnold, ‘Copyright in Photographs: A Case for Reform’ (2005) 27(9) European Intellectual Property Review 303–5. 39 40

40  Art and Copyright Sculptures/Ready-Mades/Collages ‘Sculpture’ is not defined by the CDPA, except that it includes ‘any cast or model made for the purposes of sculpture’.43 So a sculpture, for the purposes of the CDPA, is a sculpture in the ordinary sense of the term, as well as any cast or model made for the purposes of sculpture. Can ready-mades—works of art that are found or manufactured objects presented as art, eg, Marcel Duchamp’s urinal entitled ‘Fountain’ (1917)—be sculptures? It appears accepted that objects other than what one would traditionally class as such may be sculptures for the purpose of copyright protection: in a New Zealand case, a carved wooden model of the Frisbee was held to be a sculpture, but the manufactured plastic flying discs themselves were considered utilitarian objects, lacking ‘any expressive form of the creator and any idea which the creator seeks to convey’.44 According to the judge, ‘sculpture should in threedimensional form express the idea of the sculptor.’45 However, in a later case, models and casts for dental impression trays were held not to be sculptures, as they were not made for the purposes of sculpture but were merely steps in the production process, and it was never intended that they have any continuing existence.46 The extension of ‘sculpture’ to include what are properly industrial designs (eg, in Breville Europe Ltd v Thorn EMI Domestic Appliances Ltd47) definitely appears to be receding.48 Current case law certainly   S 4(2) CDPA.   Wham-O Manufacturing Co v Lincoln Industries Ltd [1985] RPC 127, 157 (per Davison CJ) 45  Ibid. 46   J & S Davis (Holdings) Limited v Wright Health Group Limited [1988] RPC 403. 47   [1995] FSR 77 (a case in fact decided by Falconer J in 1985): plaster shapes made to produce die-casting moulds for the heating plates of a sandwich toaster were held to be a sculptures. The manner in which the work was made was held to be important; eg, carving, modelling or casting are all part of the process of making a sculpture based on the ordinary dictionary meaning of sculpture (from the Concise Oxford English Dictionary), as extended by s 48(1) of the 1956 Act (which extended sculpture to include ‘any cast or model made for the purposes of sculpture’) (94). This approach was followed by Lloyd J in Creation Records v News Group Newspapers, The Times (29 April 1997); [1997] EMLR 445, who stated that the assembly of objets trouvés in that case could not be a sculpture on this basis. 48   ‘No ordinary citizen—indeed no ordinary lawyer—would regard a sandwich toaster or any part of it as a work of sculpture—even if it did produce ‘scalloped’ sandwiches. So why should a copyright lawyer take a different view? A total or almost total emphasis on the manner of creation, as in Breville and Wham-O, produces a result which offends common sense and in our view is wrong. There must be [as the trial judge said] be some element of artistic expression however unsuccessful’: Lucasfilm [2009] (above n 19) 66. 43 44

The Modern Law of Copyright   41 suggests that the courts will tend to interpret ‘sculpture’ in its ordinary sense: ‘a three dimensional work made by an artist’s hand’.49 Having said that, the Court of Appeal has recently reviewed the case law in this area and, in rejecting prototype Star Wars helmets and armour and also toy Stormtroopers as sculptures, concluded that no one test can be applied and considered that a multi-factorial approach (which the judge applied at first instance) can be justified: The result of this analysis is that it is not possible or wise to attempt to devise a comprehensive or exclusive definition of ‘sculpture’ sufficient to determine the issue in any given case. Although this may be close to adopting the elephant test of knowing one when you see one, it is almost inevitable in this field.50

In another relatively recent case, Creation Records Ltd and Others v News Group Newspapers Ltd,51 it was argued that the scene of assembled objects in a swimming pool together with the members of the Oasis pop group, which was to form the subject matter of an album cover photograph, was itself an artistic work, either a sculpture, collage or work of artistic craftsmanship. The judge, citing Breville, gave short shrift to it being a sculpture or a work of artistic craftsmanship, as no element in the composition had been carved, modelled or made

49   Metix (above n 19) (per Laddie J). The case concerned inter alia moulds for making cartridges (used to mix chemicals), which the plaintiffs claimed copyright in as works of sculpture. This was firmly rejected by the judge, on the basis that although it was not possible to say with precision what is and what is not a sculpture, the persons making the moulds did not appear to consider themselves (nor were they considered by anyone else) to be artists when they designed the moulds, and their only consideration in making the moulds was to achieve a precise functional effect rather than any aesthetic appeal. To describe the moulds as sculptures would be to go far beyond the meaning that the word ‘sculpture’ has to ordinary members of the public, notwithstanding the frequent attempts made to widen the field covered by the Copyright Acts. 50  Jacob LJ, judgment of the court, in Lucasfilm [2009] (above n 19) para 77. The Supreme Court upheld the judgments at first instance and in the Court of Appeal but ‘at the risk of appearing humourless’, was not enthusiastic about the ‘elephant test’: ‘[a]ny zoologist has no difficulty in recognising an elephant on sight, and most could no doubt also give a clear and accurate description of its essential identifying features. By contrast a judge, even one very experienced in intellectual property matters, does not have some special power of divination which leads instantly to an infallible conclusion, and no judge would claim to have such a power. The judge reads and hears the evidence (often including expert evidence), reads and listens to the advocates’ submissions, and takes what the Court of Appeal rightly called a multi-factorial approach. Moreover the judge has to give reasons to explain his or her conclusions’: Lucasfilm [2011] (above n 3) 47. 51   Above n 47.

42  Art and Copyright in any of the other ways in which sculpture is made.52 Nor did it appear to involve the exercise of any craftsmanship.53 However, the judge in Creation Records did discuss at greater length the possible meaning of ‘collage’ under the CDPA. ‘Collage’ was introduced into the CDPA in 1988 as a new category of artistic work. According to Lloyd J, the traditional understanding of that word is that it involves the use of glue or some other adhesive in the process of making a work of visual art, being derived from the French, although the Concise Oxford English Dictionary (ninth edition) also defined it as ‘a collection of unrelated things’. Lloyd J was firmly of the view that an essential element of a collage is the sticking of two or more things together; the collocation of random, unfixed elements (as in the photograph) was not a collage, even if done with artistic intent.54 The judge’s discussion of whether the composition in question was a ‘collage’ is worth reading. Counsel for the plaintiffs had argued that section 4 of the CDPA ought not to be construed to deny copyright protection to novel works of art. So Lloyd J considered in passing the possible copyright treatment of a number of contemporary artworks that are difficult to categorise within the existing definitions of works protected by copyright. These included Carl Andre’s bricks; the stone circles created by Richard Long; Rachel Whiteread’s house; the living sculptures of Gilbert and George; and installation art generally.55 In the end, he did not find it necessary or appropriate to determine the matter. However, he did distinguish the record cover ‘compilation’ or assembled scene from such works of art, on the basis that the ‘compilation’ was merely—indeed intrinsically—ephemeral and was materially different from such works of art.56 52   As noted above, this test—the method of creation—is no longer in favour, at least on its own. ‘The process of fabrication is relevant but not determinative. I do not see why a purely functional item, not intended to be at all decorative, should be treated as a sculpture simply because it is (for example) carved out of wood or stone’: Mann J in Lucasfilm Limited v Andrew Ainsworth [2008] EWHC 118, ix. 53   Creation Records (above n 47) 448–49. 54   Ibid, 450. 55   Carl Andre’s bricks and similar works continue to inspire judicial comment. For example, Mann J commented on the definition of sculpture under the CDPA: ‘A pile of bricks, temporarily on display at the Tate Modern for two weeks, is plainly capable of being a sculpture. The identical pile of bricks dumped at the end of my driveway for two weeks preparatory to a building project is equally plainly not. One asks why there is that difference, and the answer lies, in my view, in having regard to its purpose. One is created by the hand of an artist, for artistic purposes, and the other is created by a builder, for building purposes’: Lucasfilm [2008] (above n 52) 118 (viii). 56   Creation Records (above n 47) 449–50. Nor was it a ‘dramatic work’, as it was inherently static, having no movement, story or action (448). The judge in fact rejected all

The Modern Law of Copyright   43 In conclusion, the courts have been unable to define precisely what comprises a sculpture, despite it being the term used in section 4(a) of the CDPA: ‘a . . . sculpture . . . irrespective of artistic quality’. For one thing, the elimination of ‘artistic quality’ from the definition has tempted some judges to focus on how the work is made, in an attempt to avoid judging artistic merit. But to do so leads to sandwich toaster moulds and wooden Frisbee models to be protected as sculptures, a result that offends common sense—even that of a copyright lawyer. So any definition has to include within it a consideration of the purpose for which the object in question is made, although any artistic merit is to be rejected—in other words, is it made to be enjoyed as a visual thing? So the best guidance we currently have revolves around the guidance factors enumerated by Mann J in Lucasfilm,57 which can be summarised as follows: 1) Some regard has to be had to the normal use of the word ‘sculpture’. 2) Nevertheless, the concept can be applicable to things going beyond what one would normally expect to be art in the sense of the sort of things that one would expect to find in art galleries. 3) It is inappropriate to stray too far from what would normally be regarded as sculpture. 4) No judgement is to be made about artistic worth. 5) Not every three-dimensional representation of a concept can be regarded as a sculpture. Otherwise every three-dimensional attempts to claim that the ‘composition’ assembled for the photograph was a work protected by copyright. However, he did consider that there was an arguable case that the taking of the photograph and its publication were in breach of confidence (the composition having been made at a hotel under conditions of security and limited access). A similar circumstance might be if an artist kept his studio private, and photographs of his works were taken without his permission: in addition to a copyright infringement action (assuming the works were protected by copyright), there might be an action for breach of confidence. This area is discussed in more detail below in ch 8. 57   Lucasfilm [2008] (above n 52) para 118. On appeal, the Court of Appeal (above n 19) agreed with Mann J’s approach (para 77). The Supreme Court (above n 3) was also in agreement: ‘we would uphold the judgments below very largely for the reasons that they give’ (47). What was highlighted by the Supreme Court in its judgment was the utilitarian purpose behind the Imperial Stormtrooper helmet at issue—it was a mixture of costume and prop, an element in the process of production of the film and so not sculpture’ (42– 47). The Supreme Court also stressed the policy considerations underlying the law in this area (48). These are noted below s 3.2.9. See also C de Mauny, ‘Lucasfilm Ltd v Ainsworth: Star Wars Episode VIII, The Sculpture Wars’ (2010) 32(5) European Intellectual Property Review 251–54.

44  Art and Copyright

6)

7) 8) 9)

construction or fabrication would be a sculpture, and that cannot be right. It is of the essence of a sculpture that it should have, as part of its purpose, a visual appeal in the sense that it might be enjoyed for that purpose alone, whether or not it might have another purpose as well. The purpose is that of the creator. The fact that the object has some other use does not necessarily disqualify it from being a sculpture, but it still has to have the intrinsic quality of being intended to be enjoyed as a visual thing. It is created for artistic purposes (the example of Carl Andre’s pile of bricks (as opposed to bricks dumped in a driveway for building purposes) was discussed). The process of fabrication is relevant but not determinative.

Yet this approach too is not without its problems when it comes to works that either can be mass produced or have utility as well as aesthetic appeal: in an Australian case, three-dimensional depictions of animals made out of wire incorporating a candle holder were held to be sculptures, as well as works of artistic craftsmanship,58 suggesting that these definitions potentially overlap. It is to works of artistic craftsmanship we now turn. Works of Artistic Craftsmanship The courts also have had difficulty defining this category of work, which expressly includes ‘artistic’ in its definition. Its introduction into 58   Wildash v Klein (2004) 61 IPR 324. ‘I am satisfied that the works in question are “sculptures”. They are three dimensional craft pieces hand made with a degree of skill in the medium employed which are designed to have aesthetic appeal to potential purchasers. That some of the works . . . are also functional . . . does not prevent them from being “sculptures” within the meaning of that term in the Act’: para 12 (per Angel J). They were also held to be works of artistic craftsmanship: ‘The present handicraft works in issue are “works of artistic craftsmanship”. They demonstrate the requisite artistic quality and are the product of the requisite craftsmanship. Each is made by hand and has artistic character that is likely to be valued or appreciated by its owner’ (para 13). In Lucasfilm, there was a discussion of the copyright protection of toy soldiers (toy Imperial Stormtroopers). Highly accurate and artistic reproductions of soldiers could qualify as sculptures, even if children might play with them (citing Britain v Hanks (1902) 86 LT 765—a model soldier cast in metal was a sculpture under the 1814 Act), but in most modern cases, toy soldiers real or fictional will not be works of art, being mass produced toys, not collectables, whose only purpose is play and not to be admired for their own visual sake: Lucasfilm, High Court (above n 52) (para 123); and Court of Appeal (above n 19) (paras 81–82). This was the case for the toy Stormtroopers in Lucasfilm.

The Modern Law of Copyright   45 English copyright law in the Copyright Act 191159 was a response to the Arts and Crafts Movement. The term would appear to cover the work of artist-craftsmen and include such items as hand-painted tiles, stained-glass windows, wrought-iron gates and certain pieces of furniture.60 As nine separate approaches to the definition of ‘work of artistic craftsmanship’ are discernible from the leading case, Hensher v Restawile Upholstery,61 the law is, to say the least, uncertain. In Hensher, Lords Simon and Kilbrandon considered that the intention of the maker to create a work of art was highly significant.62 Lord Reid, however, whilst regarding the intention of the designer as important, did not consider this conclusive, nor was the utility of the work a bar to protection. The work must clearly be made by craftsmanship,63 and in determining whether it is ‘artistic’, it is important to avoid   S 35.  See George Hensher Ltd v Restawile Upholstery (Lancs) Ltd (1975) RPC 31, the leading case, in which the House of Lords considered the availability of copyright protection for the prototype model of a drawing room furniture suite comprising two chairs and a settee. The House of Lords unanimously determined that the prototype furniture did not fall within the definition of a ‘work of artistic craftsmanship’ within s 3(1)(c) of the Copyright Act 1956. This case has been the subject of much comment. See, for example, D Booton, ‘Art in the Law of Copyright: Legal Determinations of Artistic Merit under United Kingdom Copyright Law’ (1996) 1 Art, Antiquity and Law 125; and Kearns (above n 10) ch 3. 61  Ibid. 62  In Hensher (above n 60) Lord Simon was also of the view that ‘works of artistic craftsmanship’ must be construed as a whole (and artistic and craftsman not construed in isolation (69)); furthermore, it could not be properly construed without bearing in mind the aims and achievements of the Arts and Crafts Movement, with its emphasis on the applied or decorative (as opposed to the fine) arts. However, craftsmanship is not limited to handicraft, nor is ‘artistic’ incompatible with machine production (66); it does, however, presuppose special training, skill and knowledge for its production (66): Lord Simon cited Cuisenaire v Reed [1963] VR 719; and Cuisenaire v SW Imports Ltd [1968] 1 Ex CR 493, 514. Ultimately, what was important was: is the work by someone who in this respect was an artist-craftsman (69); and given the presence of craftsmanship, what was the intent of the creator and the result of their work (70)? ‘[A]rtists have vocationally an aim and impact which differ from those of the ordinary run of humankind’ (70). See also the later Australian case of Komesaroff v Mickle and Others [1988] RPC 204 in which a product for creating moving sand pictures was held not to be a work of artistic craftsmanship, as no craftsmanship on the part of the creator was employed in creating the product—Cuisenaire v Reed was also applied, although Hensher was not cited. Lord Kilbrandon was also of the view that the conscious intention of the craftsman was the primary test of whether his product is artistic or not: ‘the fact that many of us like looking at a piece of honest work, especially in the traditional trades, is not enough to make it a work of art’ (Hensher (above n 60) 71). 63   Hensher (above n 60) 53. Lord Reid was of the view this suggests a durable handmade object and not something, for example, to be used merely as a step in a commercial operation that has no value in itself. 59 60

46  Art and Copyright philosophical concerns of aesthetics, not least as those ignorant about philosophy are entitled to have opinions about what is artistic.64 Lord Reid was also of the view that a work was ‘artistic’ if a substantial section of the public genuinely admires and values it for its appearance and gets pleasure or satisfaction, whether emotional or intellectual, from looking at it—whether or not others consider it vulgar or common or meaningless.65 Lord Morris said that to decide whether a work fell within the definition, the work must itself be assessed in a detached and objective way to determine whether it has the character or virtue of being artistic, without giving decisive weight to the author’s intention (although this was a possible pointer); it was a question of fact upon which the court should pay heed to the evidence adduced.66 Viscount Dilhorne was also of the view that the functional appeal of a work was not a bar to protection: for him it was simply a question of fact for the judge, and ‘works of artistic craftsmanship’ must be given its ordinary and natural meaning.67 Subsequent cases to Hensher do little to clarify things. In Merlet v Mothercare68 Walton J denied protection to a baby raincosy, as the creator, Mme Merlet, had designed it without any artistic consideration in mind but rather to protect her baby on a visit to Scotland from ‘the assumed rigours of a Highland summer’.69 Also, following Lord Reid and others in Hensher, he noted that onlookers gained no aesthetic satisfaction from contemplating the garment, and this was relevant.70 In Shelley Films Limited v Rex Features Limited,71 Merlet was distinguished, and it was held to be arguable that copyright could subsist in a film set as a work of artistic craftsmanship.72 Creation Records Limited and Others v News Group Newspapers Limited73 also considered   Ibid, 54.  Ibid. 66   Ibid, 57. 67   Ibid, 62. Like Lord Reid, he was also of the view that a work of craftsmanship is something made by hand and not mass produced (60). Note, however, that in light of the development of the Arts and Crafts Movement, Lord Simon was of the view that ‘craftsmanship’ was not limited to handicraft (but did presuppose special training, skill and knowledge for its production), nor was ‘artistic’ incompatible with machine production (66). 68   [1986] RPC 115. 69   Ibid, 126–27. 70  Ibid, 124. It was not permissible to consider the article in its intended use (ie, mother, baby and raincosy together as an ensemble); to determine the question, the article must be judged on its own merits (124). 71   [1994] EMLR 134 (application for interlocutory relief ). 72   If the set were imaginatively conceived and implemented overall, and the overall effect and intent was artistic: Shelley Films (ibid) 143. 73   [1997] EMLR 444 (another application for an interlocutory injunction). 64 65

The Modern Law of Copyright   47 Shelley Films: the assembly of ‘objets trouvés’ photographed in Creation Records was held not to be a work of ‘artistic craftsmanship’—it was not the subject of or result of the exercise of any craftsmanship,74 and it could be distinguished from a film set (as in Shelley Films), which clearly does involve craftsmanship in its creation. In the New Zealand case Bonz Group (Pty) Ltd v Cooke,75 Tipping J had to consider whether hand-knitted woollen sweaters and cardigans designed and knitted by different persons depicting among other things dancing lambs and golfing kiwis were entitled to protection as works of artistic craftsmanship: the Judge held they were.76 Bonz was applied in the United Kingdom in Vermaat v Boncrest Ltd,77 which concerned sample patchwork bedspreads, which were held not to be works of artistic craftsmanship: following Bonz, it was necessary to consider whether they could fairly be said to be the work of both a craftsman and an artist, and in this case the bedspreads could not be viewed as artistic or creative enough to fall within the definition of a work of artistic craftsmanship.78 The court did not consider the talents and intentions of the designer.79 Since this case, an attempt in the UK courts   See especially Lord Simon in Hensher (above n 60).   [1994] 3 NZLR 216. 76   Consideration was given to Hensher (above n 60), Merlet (above n 68), Cuisenaire v Reed (above n 62) and the earlier dress design case of Burke and Margot Burke Limited v Spicers Dress Designs [1936] Ch 400 (which denied protection to a woman’s dress on the basis it was a work of artistic craftsmanship). (Skilled dressmakers had derived their ideas from a design sketch made by a director of the plaintiff, but this case was doubted by Oliver J in Radley Gowns Ltd v Costas Spyrou [1975] FSR 455, where it was found to be arguable that the original dress was a work of artistic craftsmanship.) Tipping J in Bonz had difficulty with making the intention of the designer the determinative test: there had to be an objective element, or there must be some artistic quality present. What was important was that the author was both a craftsman and an artist: a craftsman makes something in a skilful way and takes justified pride in his workmanship; an artist has creative ability and produces something with creative appeal. The idea of craftsmanship relates more to the execution of a work than its design, but ‘artistic’ relates more to the design; and it did not matter that the designer and craftsman were different persons (Bonz (above n 75) 224). 77   The Times (23 June 2000) (Ch D) (per Evans-Lombe J); [2000] EIPR N-151; Intellectual Property Lawyer (July 2000) Issue 3. Hensher (above n 60) was considered by Evans-Lombe J, but the approach of Tipping J in Bonz (above n 75) was the one he actually applied. 78   As the works were made by seamstresses in India (to the designs of designers in England), they were held to be works of craftsmanship; but, although pleasing to the eye, the works did not have sufficient artistry or creativity to qualify as ‘artistic’. 79   To add even further confusion, U Suthersanen, Design Law in Europe (London, Sweet & Maxwell, 2000) 16-050 refers to an unreported case, Hourahine v Everdell & Mitchard, which concerned pop-up greetings cards. These were held to be works of craftsmanship (on the basis of the effort put into constructing the card) but were not artistic—notwithstanding criticism of the Court of Appeal, eg, by Lord Reid (55), the 74 75

48  Art and Copyright to protect machine-made prototype garments intended for mass production failed. Applying Merlet v Mothercare, the judge in Shirin Guild v Eskander Limited80 said the test was twofold: first, did their creation manifest an exercise of craftsmanship; and second, were they works of art? The latter was a matter of evidence; a primary consideration but not necessarily the only one was whether the maker had the conscious purpose of creating a work of art, and if he did and did not manifestly fail in this regard, it would be a work of art. In this case, prototype machine-made garments intended for mass production were neither craftsmanship, nor did Mrs Guild intend creating a work of art or even regard herself as an artist.81 More recently, an attempt to argue that prototype Star Wars Stormtrooper helmets and armour were works of artistic craftsmanship also failed. The judge found the decision in Bonz helpful, citing Tipping J that the author had to be both a craftsman and an artist.82 The author here was certainly a craftsman but, for this purpose, not an artist—the purpose in creating the items was not to appeal to the aesthetic but to give a particular impression in a film: ‘it was no part of their purpose that it should in any way appeal as a piece of art; or that it should be admired for any aspect of its appearance as such.’83 Court of Appeal in Hensher was nevertheless relied on to the effect that for a work to qualify as a work of artistic craftsmanship, its utilitarian or functional appeal should not be the primary inducement to its acquisition or retention (per Russell LJ at 49), and the functional aspect predominated in this case. 80   [2001] FSR 38. 81   Note, however, the approach in an Australian case in which the stitch structure of a fabric used in mass-produced designs and created by using a computer was held to be a work of artistic craftsmanship, the judge following the approach of Lord Simon in Hensher (a work of artistic craftsmanship had to have both craftsmanship, which could include the use of computer-controlled machinery, and aesthetic quality): Coogi Australia v Hysport International [1998] FCA 1059. See also United Pacific Industries v Madison Sports [1998] FCA 614. 82   Lucasfilm Limited v Andrew Ainsworth [2008] EWHC 1878 (Ch), paras 124–35. Note also that whilst certain other aspects of this case were appealed (in particular, a finding that the works in question were not sculptures), the determination that they were not works of artistic craftsmanship was not appealed: Lucasfilm [2009] (above n 19). In a recent Australian case the Court focused on artistic quality—whether a work has that quality depended on whether it is a work of craftsmanship, the artistic form of expression of which is sufficiently ‘unconstrained by functional considerations’: Burge v Swarbrick (2007) 232 CLR 336. See also a discussion of the case by J Pila, ‘Works of Artistic Craftsmanship in the High Court of Australia: The Exception as Paradigm Copyright Work’ (2009) 36(3) Federal Law Review 365–81. 83   Lucasfilm, High Court (ibid) para 134. The judge (Mann J) also considered whether the objects in question would have been recognised by William Morris as products of the Arts and Crafts movement—not as a general test, but to make his point (para 134).

The Modern Law of Copyright   49 It has been suggested that possibly because of the lack of clear guidance in Hensher, few claims to works of artistic craftsmanship have been raised in the courts.84 A leading text strongly rejects any test that may involve a question of taste, subjective quality or personal opinion, as to adjudicate on these matters would exceed the functions of a court of law.85 To overcome this, Laddie proposes a test essentially similar to that of Lord Reid in Hensher.86 Works of Architecture and Typefaces Although not the subject of detailed consideration in this book, it should be noted that for copyright purposes, ‘artistic works’ also include works of architecture, being buildings or models for buildings.87 This is in distinction to any plans, drawings and sketches for such works, which are eligible for protection as artistic works in their own right (as graphic works).88

84  HIL Laddie, P Prescott, M Vitoria et al, The Modern Law of Copyright and Designs, 3rd edn (London, Butterworths, 2000) (hereafter ‘Laddie’) 4.31. 85   Ibid, 4.30, citing a number of cases in which the courts have refused to adjudicate on questions that are not susceptible of judicial determination, including White v Mellin [1895] AC 154 (HL) 165 (per Lord Herschell) (whether one trader’s product was ‘better’ than another); and Harris v Warren and Phillips [1918] 35 RPC 217, 221–22 (per Eve J) (relative merits of musical compositions and whether they constitute the mature art of their composers). 86   Craftsmanship is seen as the working of materials by manual dexterity to produce the work, and ‘artistic’ relates to the visual appearance of the work, which must be significant in that persons wish to acquire and keep the work on especial account of its appearance: Laddie (above n 84) 4.30. Laddie sees such a two-part test as the only one actually workable. 87   S 4(1)(c) CDPA. ‘Building’ includes any fixed structure, and a part of a building or fixed structure (s 4(2)). Copinger (above n 28) argues that based on the Copyright Act 1911, a work of architecture needs to have an artistic character or design to benefit from copyright protection (3-44). 88   So it is possible to infringe copyright in a building (as distinct from its plans) by, eg, copying the original building in an extension to a building—as in Meikle v Maufe [1941] 3 All ER 144, which involved an extension to the Heal’s building in Tottenham Court Road, London. At the time (the middle of the Second World War), this case generated much controversy because in the past architects had tended to view such copying as a compliment rather than insisting on their legal rights and also because of the context of the immense amount of rebuilding (and hence ‘copying’) foreseen after the war. In any event, there are a number of specific exceptions to copyright infringement for buildings and models for buildings—eg, s 62 CDPA (photographing, filming or drawing a building, etc); and s 65 CDPA (reconstructing a building).

50  Art and Copyright The CDPA assumes that typefaces are protected as ‘artistic works’, although they are not expressly included in this category by section 4 of the CDPA.89 Films, Video Works and Animation Films as artistic works (in a broad sense) are considered below in chapter six, sections 6.4.4 and 6.4.7. 3.2.2  Criteria for Protection: Work Must be ‘Original’ The standard required for a work to qualify as ‘original’ is very low. An often cited case is University of London Press Limited v University Tutorial Press Limited,90 which considered what was meant by ‘original’ in the context of a literary work. According to the judge, The word ‘original’ does not in this connection mean that the work must be the expression of original or inventive thought. Copyright acts are not concerned with the originality of ideas but with the expression of thought, and, in the case of a ‘literary work’, with the expression of thought in print or writing. The originality which is required relates to the expression of the thought. But the [Copyright Act 1911] does not require that the expression must be in an original or novel form, but that the work must not be copied from another work—that it should originate from the author.91

Sherman92 has pointed out that this case highlights that in copyright law, ‘originality’ centres on the relationship between a work created and its creator. In other words, the source of the work must be the individual involved; there must be something in the work that can be said to be distinctively the ‘author’s’. Given that all artistic works emanate from some sort of tradition (and therefore will inevitably draw on ideas or indeed expression from other works), Sherman sees copyright draw89   See s 178 and ss 54–55 CDPA. Cases under the Copyright Act 1911 held that both individual letters and fonts were artistic works: Millar & Lang Ltd v Polak [1908] 1 Ch 433; and Stephenson, Blake & Co v Grant, Legros & Co Ltd [1916] 33 RPC 406. 90   [1916] 2 Ch 601. 91   University of London Press Limited v University Tutorial Press (ibid) 608–9 (per Peterson J). The judgment also appears to acknowledge what is often called the idea/ expression dichotomy in copyright: copyright does not protect ideas as such but only their expression. See below s 3.2.8; and above ch 1. 92   B Sherman, ‘From the Non-original to the Ab-original: A History’ in B Sherman and A Strowel (eds), Of Authors and Origins (Oxford, Clarendon Press, 1994) 118–20.

The Modern Law of Copyright   51 ing as ‘a line demarcating the acceptable (original) works from those in which the external influences become so great that the effort of the subject is overshadowed or eclipsed’.93 In any event, it remains the case that some degree of skill and labour on the part of the author is required to qualify a work as ‘original’,94 but no more than trivial effort and skill are required for these purposes.95 Also, what counts in the context of artistic works is whether the skill and labour applied to a new work pertains to that which is visually significant: this is particularly important when a work is derived from another work—mere ‘slavish’ copying, even if it involves considerable skill, labour or judgement, cannot confer originality.96 In cases of copying from another work, there needs to be some element of material alteration or embellishment that suffices to make the totality of the work an original work.97 Indeed, the audience to which the artistic work is addressed appears relevant. Certainly in cases involving 93   Ibid, 120, fn 33 (emphasis added). For the importance of ‘authorship’, see Vermaat v Boncrest (above n 30) 10 (discussed earlier), in which some sketches for textile product designs were held not to be graphic works under s 4(1)(a) CDPA as they were insufficiently precise and lacked the requirement of originality under s 1(1)(a) CDPA because they did not depict the design pattern specified by the second claimant, which would differentiate them from other similar textile products: as the sketches could not be differentiated from the work of others, then there was no proof of authorship. See ‘Comment’ by Jeremy Phillips in Intellectual Property Lawyer (July 2000) Issue 3. 94   Interlego v Tyco [1989] (above n 30) 262H. 95   Autospin (Oil Seals) v Beehive Spinning (a Firm) [1995] RPC 683 at 694, cited in SPE International v Professional Preparation Contractors (above n 4). Certainly the level of originality in the UK appears lower than that required in the USA, where, as noted earlier, following the Supreme Court in Feist Publications v Rural Telephone Service Co 499 US 340 (1991) 113 L Ed 358 (1991), a work must possess at least some minimal degree of creativity (369). In Europe the position is different still: not only must origination be present, but the author’s own personality must find its expression in the work. Attempts at harmonisation by the European Commission (eg, in the context of the Term Directive (93/98/EEC of 29 October 1993, OJ L 290/9 (24 November 1993)), where the concept of originality is applied to computer programs, databases and photographs) speak of ‘the author’s own intellectual creation reflecting his personality’ as the criterion for protection. See Art 6 and Recital 17 of the Term Directive. See generally S Lai, The Copyright Protection of Computer Software in the United Kingdom (Oxford, Hart Publishing, 2000) 2.6–2.14; and below ch 6, s 6.6. 96   Interlego v Tyco [1989] (above n 30) 262H, as cited in, eg, SPE International v Professional Preparation Contractors (above n 4) Chancery Division, High Court, 15 July 1999 (per Rimer J); [2000] EIPR N-19. 97   Interlego v Tyco (above n 30) 263C. It must be stressed that using existing material as the basis for a new work will not necessarily prevent the new work benefiting from copyright protection. Original thought is not required for ‘originality’, although the law will protect against plagiarism of a work in copyright: eg, Andrew Christoffer v Poseidon Film Distributors Ltd [2000] EIPR N-34 (in which the source of the copyright work was Homer’s Odyssey). See also the more detailed discussion of this area below ch 6, s 6.1.

52  Art and Copyright engineering drawings, what counts is whether the new work is visually significant to an engineer, not a layman.98 Given the low standard required for originality, this hurdle to copyright protection in the United Kingdom is likely to be satisfied for most artistic works, including such relatively ‘unoriginal’ works as photographs of paintings or objects in a gallery’s collection.99 Nevertheless, as discussed above, mere mechanical copying will not be sufficient to confer ‘originality’: in The Reject Shop plc v Manners,100 the Court of Appeal rejected an argument that a slightly enlarged image produced using a photocopier was itself an original artistic work: there was no skill and labour involved in the copying sufficient to confer ‘originality of an artistic character’.101 However, problems may nevertheless arise in certain areas (for example, in the context of appropriation art, ready-mades, minimalist art and photographs), and these are discussed further in chapter six.102 3.2.3  Who is the Author? For artistic and literary works, the ‘author’ for copyright purposes is the creator of the work in question.103 ‘Author’ is a term of art used throughout the CDPA. The CDPA also recognises works of ‘joint authorship’—works produced by the collaboration of two or more authors in which the contribution of each author is not distinct from that of the other author or authors.104 The rise of user-generated content (eg, through Wikipedia and similar web 2.0 sites and services) and online artistic collaboration may be challenging the rather fixed concept of the ‘author’ in UK copyright law, but the concept is so fun  Billhöfer Maschinenfabrik (above n 23).   See below ch 6. 100   [1995] FSR 870. 101   Ibid, 876 (per Legatt LJ). 102   Note, for example, that in Merchandising Corp v Harpbond (above n 24) Lawton LJ was of the view that two straight lines drawn with grease-paint with another line in between them drawn with other colouring by itself could not attract copyright, as it had no originality (47). However, the main issue in this case was whether facial make up could be a ‘painting’ for copyright purposes. Contrast Megarry J in British Northrop (above n 26) 68: a single straight line drawn with the aid of a ruler was an artistic work. 103   S 9(1) CDPA. The rule is different for sound recordings, films, broadcasts and published editions (in respect of protection for typographical arrangements). 104   S 10 CDPA. For a detailed discussion of joint authorship, see L Zemer, The Idea of Authorship in Copyright (Aldershot, Ashgate, 2007) ch 7. He presents a collectivist model of intellectual property rights. See also below ch 9. 98 99

The Modern Law of Copyright   53 damental both in UK and international copyright law that it will remain for the foreseeable future.105 3.2.4  The Need for Fixation/Permanence of the Work In the case of a literary, dramatic or musical work, copyright will subsist in the work only if it is recorded in writing or otherwise.106 There are no equivalent provisions for artistic works, although Bently and Sherman argue that a similar requirement may be demanded by the courts for artistic works.107 Indeed, on public policy grounds it has been argued that as copyright is in the nature of a monopoly, there must be certainty in its subject matter to avoid injustice.108 Certainly some element of fixation has on occasion been found necessary for artistic works in UK law.109 For example, in addition to the ‘Adam Ant case’ 105  See S Stokes, Digital Copyright: Law and Practice, 3rd edn (Oxford, Hart Publishing, 2009) for a discussion of web 2.0, authorship and related issues; and the discussions below ch 6, s 6.3 and ch 9. 106   S 3(2) CDPA. Note that in the US there is a general fixation requirement (s 101 of the 1976 Copyright Act) which appears to contemplate there being an embodiment that is ‘sufficiently permanent or stable to allow the work to be perceived, reproduced or otherwise communicated for a period of more than transitory duration’: House Report accompanying the 1976 Copyright Act, quoted in JH Merryman and AE Elsen, Law, Ethics and the Visual Arts, 4th edn (The Hague, Kluwer Law International, 2002) 413. However, commentators have suggested that with the proliferation of computer games, US courts will relax the tangible fixation requirement: Merryman and Elsen (above) 413–14. 107   They cite the Merchandising Corp ‘Adam Ant’ case (above n 24) in which Lawton LJ said that a painting could not be an idea: it was an ‘object’. See Bently and Sherman (above n 8) 46. 108  Farwell LJ in Tate v Fullbrook [1908] 1 KB 821, 822–33. This case concerned infringement of a dramatic work (music hall ‘dramatic sketch’). The question arose whether scenic effects, stage ‘business’ and the make-up of actors were protected by copyright. They were held not to be, as they could not be the subject of printing and publication, and in any event the scope of the monopoly granted by copyright had to be clear. Farwell LJ’s dictum was approved by the Privy Council in Green v Broadcasting Corporation of New Zealand [1989] 2 All ER 1056, 1058 (in which the dramatic ‘format’ of the TV show Opportunity Knocks inter alia was determined not certain enough to be protected by copyright because, eg, the identity of performers would change from show to show and the material presented would change; nor was it a dramatic work, as the format lacked the essential characteristic of having sufficient unity to be capable of performance). See also Laddie (above n 84) 3.33. 109   US law requires fixation of original works of authorship ‘in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device’ (s 102 Copyright Act 1976). Millinger is of the view that the US requirements appear to deny copyright protection to conceptual art works of a temporary nature (for example, Christo’s ‘Running Fence’ and ‘Wrapped Buildings’, which last only a few days or weeks):

54  Art and Copyright that Bently and Sherman cite, in the Australian case Komesaroff v Mickle and Others,110 works of ‘kinetic art’ (‘sand pictures’) were found to lack sufficient permanence to be classed as works of artistic craftsmanship because no sand picture was static for any length of time.111 In Davis v Wright Health Group,112 Whitford J held that the models and casts in that case were not sculptures as, inter alia, it was never intended they should have any continuing existence.113 In Creation Records (discussed above in the context of collages), an assembly of objets trouvés was, inter alia, not a collage, as it was intrinsically ephemeral, existing for only a few hours.114 However, the general proposition that something which has a mere transient existence cannot be a ‘work of sculpture’ was rejected by Laddie J in Metix v GH Maughan (Plastics).115 So the position is unclear. 3.2.5  Qualifying Factors for Protection It is important to note that the basis behind the international copyright system enshrined in the Berne Convention is the principle of ‘national treatment’. This in effect means that in the United Kingdom, for example, a work originating in a foreign country will, in the vast majority of cases, be given the same protection as a work created in the United Kingdom.116 DM Millinger, ‘Copyright and the Fine Arts’ (1980) 48 George Washington Law Review 354 359. 110   Above n 62. 111   Komesaroff (above n 62) 210. 112   [1988] RPC 403. 113   This case concerned plastic dental impression plates; the items in question were stages in producing these items, rather than independent artistic works, so Whitford J’s decision at 410–12 is not surprising. See also comments of Lord Simon in Hensher (above n 60). 114   Creation Records (above n 47). Whether or not there was artistic intent in the creation of the assembly was held to be irrelevant. 115   Above n 19. It was accepted in argument before Laddie J that a sculpture made from ice is no less a sculpture because it may melt as soon as the temperature rises. 116   Set against ‘national treatment’ is the argument for reciprocity in copyright protection—ie, that in the UK a work of foreign origin will be given only the protection to which that work is entitled in its country of origin. In recent years ‘reciprocity’ provisions in intellectual property legislation have become more common, especially in the EU (where non-EU states must offer a similar level of protection for their authors to benefit from EU protection). See for example the Database Directive (96/9 [1996] OJ L077/20) and the copyright Term Directive (93/98 [1993] OJ L290/9). But the TRIPS Agreement requires national treatment (as does the Berne Convention with a few exceptions): see HC Hansen, ‘International Copyright: An Unorthodox Analysis’ (1996) 29 Vanderbilt Journal of Transnational Law 579.

The Modern Law of Copyright   55 In other words, in the United Kingdom a work will generally be protected by copyright provided either: (a) the author is at the material time117 a ‘qualifying person’ (ie, a British national or resident or domiciled in one of the countries of the Berne Union or a country that is a party to the Universal Copyright Convention); or (b) the work was first ‘published’118 in one of these countries.119 There is no requirement to register the work with the Stationers’ Company or the UK Patent Office: no such formalities are necessary to secure copyright in the United Kingdom.120 However, it is desirable for international protection and also to help enforce the owner’s rights to include a copyright notice on copies of a work, along the lines of © [name of copyright owner], year of first publication.121 3.2.6  The Duration of Protection From 1 January 1996, copyright in new and existing literary and artistic works was extended as a result of EU harmonisation, and it in general now lasts for the life of the author and expires at the end of the period 70 years from the end of the calendar year in which the author dies. This is the so-called 70-year post mortem auctoris rule. (Until 1 January 1996 the term was 50-year post mortem auctoris.122) Furthermore, the introduction on 1 January 1996 of the new copyright 117   For literary, dramatic, musical and artistic works, this is (in the case of unpublished works) when the work was made or, if the making of it extended over a period, a substantial part of that period, and (in the case of a published work), when the work was first published or, if the author had died before that time, immediately before his death (s 154(4) CDPA). See below for a discussion of what constitutes ‘publication’. 118   S 175 of the CDPA states that ‘publication’ means the issue of copies to the public and includes, in the case of a literary, dramatic, musical or artistic work, making it available to the public by means of an electronic retrieval system. The exhibition of an artistic work does not constitute publication (s 175(4)(b)), and there are other specific rules for buildings and works incorporated in them and other works generally. Thus in general, ‘publication’ is only relevant to copies of an artistic work, not the work itself. 119  Ss 153–56 CDPA. The rules for foreign authors are potentially complex: see G Dworkin and R Taylor, Blackstone’s Guide to the Copyright, Designs and Patents Act 1988 (London, Blackstone, 1989) 11–13. 120   Indeed, Art 5(2) of the Berne Convention provides that the enjoyment and exercise of authors’ rights shall not be subject to any formality. 121  See Art III(1) of the Universal Copyright Convention (UCC). This will help to secure protection in UCC countries that are not part of the Berne Union. 122  See Duration of Copyright and Rights in Performances Regulations 1995 (SI 1995/3297). There are different rules for works of unknown authorship/anonymous works such as folklore and indigenous art.

56  Art and Copyright term has ‘revived’ copyright in works previously out of copyright in the United Kingdom but which on 1 July 1995 were protected under the copyright legislation of any other state in the EEA.123 The effect of this is potentially to revive copyright in works by, for example, Paul Klee (d 1940) and Lucien Pisarro (d 1944). 3.2.7  The First Owner of the Copyright Under UK law, unless an artistic work is created in the course of employment, the copyright will automatically vest in the author. Thus even if a work is commissioned, copyright in general will vest with the artist, photographer, etc, unless a written assignment of copyright is executed by the author.124 Authors may allow a copyright and collecting society such as DACS (Design and Artists Copyright Society) to administer and protect their copyrights on their behalf.125 3.2.8  The Scope of the Copyright Monopoly: Economic Rights, the Idea/Expression Dichotomy and Exceptions to Copyright Under English law a copyright owner has a bundle of exclusive rights which he can prevent others from exercising. These so-called ‘restricted acts’126 include: 1) the right to copy127 the work (including, in respect of an artistic work, making a two-dimensional copy of a three-dimensional work, and vice versa); 123   The EEA means the European Economic Area—ie, as of June 2011 the current 27 EU Member States plus certain neighbouring states (Norway, Liechtenstein, Iceland). Germany already has a 70-year post mortem auctoris term. The ‘transitional’ provisions in the 1995 Regulations dealing with the ownership and exploitation of ‘revived’ copyright are complex. 124   Under the 1956 Copyright Act, the commissioner of, for example, a portrait for money or money’s worth is the first owner of the copyright, subject to agreement to the contrary. In the case of a commission, ownership by the commissioner in equity may in limited cases result from the circumstances. This is discussed further below ch 7. 125   DACS is not the owner by assignment of the copyright; it acts on behalf of the owner-artists it represents. It has not been afraid to commence criminal proceedings for breach of copyright: see Thames & Hudson Limited v Design and Artists Copyright Society Ltd and Others [1995] FSR 153. 126   S 16 CDPA. Other restricted acts in addition to those listed include rental or lending, public performance and making an adaptation. 127   Copying in relation to a work means reproducing the work in any material form. This includes storing the work in any medium by electronic means (s 17(2)) and also

The Modern Law of Copyright   57 2) the right to issue copies to the public; and 3) the right to communicate the work to the public (eg, by broadcasting or on-demand access, including uploading to a website available for access via the Internet). Copyright in a work will be infringed by a person who, without the licence of the copyright owner, does or authorises another to do any of the acts restricted by copyright.128 Thus, a museum would infringe copyright if, in relation to a painting in its possession but in which it did not own the copyright, it took photographs of the work or allowed (ie, authorised129) others to do so without the licence of the artist/copyright includes transient/temporary copies (s 17(6) and Art 2 of the Information Society Directive) so even displaying an image on a TV or computer monitor can amount to copying by reproduction in material form: see Bookmakers’ Afternoon Greyhound Services Ltd v Wilf Gilbert (Staffordshire) Limited [1994] FSR 723; and Premier League v QC Leisure (No 2) (above n 17) paras 231–32. Under UK law, reproduction (ie, the multiplication of copies) is key. For example, framing an engraving taken from a pamphlet but not copying it would not be reproduction: Frost and Reed v The Olive Series Publishing Company (1908) 24 TLR 649. See also the Canadian case Théberge v Galerie d’Art du Petit Champlain Inc (2002) SCC 34 (Supreme Court, 28 March 2002), where the physical transfer of a work from a lawfully acquired poster onto canvas was not held to involve reproduction as there was no multiplication of copies of the work. If there were remedies here, these were more properly in the sphere of moral rights: see S Stokes, ‘Copyright and the Reproduction of Artistic Works’ (2003) 25(10) European Intellectual Property Review 486–88. 128   S 16(2) CDPA. However, to infringe, the act must be in respect of the work as a whole or a substantial part of it (s 16(3)). The test of ‘substantial’ is of quality, not quantity: Ladbroke (Football) v Hill (William) (Football) [1964] 1 WLR 273; and see below. See also Bauman v Fussell [1978] RPC 485 (CA), in which a painting derived from a photograph did not infringe the photograph—see in particular the dissenting judgment of Romer LJ; and Krisarts v Briarfine [1977] FSR 577 (interlocutory judgment: plaintiffs had an arguable case of copyright infringement where the defendants used paintings in which the plaintiffs held copyright to assist them in producing their own paintings of wellknown views of London which were not slavish copies of the plaintiffs’ copyright works). These cases provide some specific examples of how the courts have dealt with the copying of art. Infringing copyright may give rise to a civil liability (including payment of damages or an account of profits to the aggrieved copyright owner, granting of an injunction and delivery up to prevent the infringement), as well as a possible criminal liability: see Chapter VI CDPA; and, eg, the Copyright, etc and Trade Marks (Offences and Enforcement) Act 2002. For flagrant breaches of copyright, additional statutory damages are available (s 97(2) CDPA). In recent years there has been a tendency to introduce stiffer criminal penalties and more stringent powers to deal with what is termed ‘copyright theft’. 129   Thus museums should be cautious about allowing photography or filming of their collections. However, in the light of Durand v Molino [2000] ECDR 320 (which referred to CBS Songs Ltd v Amstrad Consumer Electronics Plc [1988] AC 1013 (HL), where ‘authorise’ was held to mean to grant or purport to grant expressly or by implication the right to do the act complained of (1054, per Lord Templeman), museums and galleries can take comfort that some degree of encouragement or actual authorisation or approval

58  Art and Copyright owner. Likewise, in the case of the Churchill papers referred to in chapter one, for example, their reproduction would require the consent (ie, licence) of the relevant copyright owner and not of Churchill College, Cambridge. It is important to note that for the purposes of copyright infringement, copying involves the copying of the work as a whole or a substantial part of it, and either directly or indirectly.130 The definition of what is meant by ‘a substantial part’ is not a precise one: as we shall see later when considering the ‘idea/expression dichotomy’, there is no one test, and the phrase is susceptible to a number of meanings.131 An attempt to define what ‘substantial’ means in the context of the CDPA was made in Newspaper Licensing Agency v Marks and Spencer Plc,132 where Peter Gibson LJ was of the view that the word described something more than de minimis, something considerable in amount, sufficient to make it worthy of consideration.133 Anglo-American copyright law generally looks to ‘substantial similarity’ to prove infringement. In the case of artistic works, it is the visual similarity of the original and the copy that is important. The often cited US Judge Learned Hand said that the plaintiff must show that ‘the ordinary observer, unless he set out to detect the disparities [between the two works], would be disposed to overlook them, and regard their aesthetic appeal as the same.”134 Indeed, it has been argued by Peter Karlen, in a critique of the application of the idea/expression dichotomy, that the copyright protection afforded to art enables artists to restrain plagiarists from using the material world to recreate in the audience the imaginative experiences first created by their work. So for example, the owner of copyright in a sculpture can prevent others who

is required; merely ‘standing by’ whilst the infringement takes place is not enough to constitute ‘authorisation’ for copyright infringement purposes. The use of ‘no photography’ notices ought to be sufficient. 130   S 13(3) CDPA. 131   Note also that whether there can be infringement by the reproduction of small parts of copyright works on a regular basis (none of which by itself amounts to taking a substantial part) is problematic: see Electronic Techniques v Critchley Components (above n 12) 407–11; and see the discussion in Premier League v QC Leisure (No 2) (above n 17) para 227. 132   [2000] 3 WLR 1256. 133   Newspaper Licensing Agency v Marks and Spencer (ibid) 1265G. 134   Peter Pan Fabrics, Inc v Martin Weiner Corp 274 F.2d 487, 489 (2d Cir 1960). For the US position generally, see P Karlen, ‘Intellectual Property in Intellectual Creations’ (April 1999) Copyright World 14.

The Modern Law of Copyright   59 have seen the work from ‘shaping any part of the universe, using any materials, to simulate the sculpture’.135 Leaving aside Peter Karlen’s view of the scope and rationale for copyright protection, to better understand the scope of the copyright monopoly in UK law, it is necessary to analyse how the UK courts have applied the idea/expression dichotomy, given that the concept has no statutory basis in the United Kingdom. The Idea/Expression Dichotomy in UK Law: Designers Guild (1998–2000) Although there is no statutory basis for the idea/expression dichotomy in the United Kingdom (unlike in the United States136), the often cited fact that copyright does not protect ideas as such but only their expression receives judicial consideration and guarded support from time to time in UK law.137 Indeed, it has been used to help determine whether   Karlen (ibid) 17 and 18   See s 102(b) Copyright Act 1976: in no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle or discovery, regardless of the form in which it is described, explained, illustrated or embodied in such work. See discussion in ch 1 and above. 137   See above ch 1. According to WJ Gordon, ‘Touring the Certainties of Property and Restitution : A Journey to Copyright and Parody’ (Oct 1999) Oxford Electronic Journal of Intellectual Property Rights (also to be published as part of the University of Montreal volume on certainty and the law, Des Certitudes du Droit (Montreal, Editions Themis, 1999), because no firm definition has ever evolved of what constitutes an ‘idea’, the idea/ expression dichotomy depends on how a judge determines what constitutes an idea: ‘By characterising something as an “idea”, a judge is essentially ruling that it is something that cannot be commodified for purposes of private ownership, but rather should be commonly shared. No certain rule can capture this enquiry’ (21–22). For literary works, what is protected according to one recent case is the unauthorised use of the actual text of the document; it does not consist in pirating the ideas or idea to be found in the text: USP Plc v London General Holdings Ltd [2006] FSR 6, 29 (per Laws LJ). Note though that this cannot be a hard and fast rule for all literary works [in the case the work in question was a template commercial agreement], as non-literal copying is an established principle (eg, copying a plot (not using the same words) can be copyright infringement). See Brighton v Jones [2005] FSR 16, 32: ‘Although there is no copyright in an idea . . . it is perfectly possible for a work to be copied for the purposes of copyright law even if not a single sentence from the original work survives’ (per Park J). See also the literary copyright case involving the claim that Dan Brown’s book The Da Vinci Code was copied from The Holy Blood and the Holy Grail. In this case (where the claim failed), Mummery LJ commented on the idea/expression dichotomy as follows: ‘The decided cases help in identifying the relevant necessary and sufficient conditions for substantiality. Thus, it is not necessary for the actual language of the copyright work to be copied or even for similar words to be used tracking, like a translation, the language of the copyright work. It is sufficient to establish that there has been substantial copying of the original collection, selection, arrangement, and structure of literary material, even of material that is 135 136

60  Art and Copyright there has been copying of a ‘substantial part’ of a copyright work. One of the more recent cases to consider the scope of copyright protection for aesthetic, artistic designs, Designers Guild Ltd v Russell Williams (Textiles) Ltd,138 gave express consideration to the idea/expression dichotomy. This case concerned the copying of fabric designs (derived from an original artistic work) in which the copying involved was not literal or exact: the style, technique and ideas behind the plaintiff’s work were copied. The plaintiff succeeded at first instance, lost in the Court of Appeal and then had the trial judge’s order restored in the House of Lords. Morritt LJ in the Court of Appeal expressly referred to the idea/ expression dichotomy: ‘copyright subsists, not in ideas, but in the form in which the ideas are expressed.’139 For there to be copyright infringement in his view, the expression of an idea rather than the idea itself must be copied. He later went on to cite an observation by Professor Cornish that there is no clear boundary between what amounts to a substantial part of a copyright work and what does not.140 Nevertheless, according to Professor Cornish, the idea/expression dichotomy is a useful and necessary concept, albeit that it was too vague a distinction to offer more by way of general guidance.141 To quote Professor Cornish,

not in itself the subject of copyright. It is not, however, sufficient for the alleged infringing work simply to replicate or use items of information, facts, ideas, theories, arguments, themes and so on derived from the original copyright work. I agree with Lloyd LJ that no clear principle can be laid down on how or where to draw the line between the legitimate use of the ideas expressed and the unlawful copying of their expression’: Baigent & Anor v The Random House Group Ltd [2007] EWCA Civ 247 (28 March 2007), paras 143–46. 138   [1998] FSR 803 (ChD), [2000] FSR 121 (CA), [2000] 1 WLR 2416 (HL). 139   Designers Guild v Russell Williams CA judgment (ibid) 128 (per Morritt LJ). 140   A well-known dictum in this regard by Judge Learned Hand in the US case Nichols v Universal Pictures Corporation 45 F 2d 119 (1930) (in the context of a play) (quoted by Morritt LJ (ibid) 130) was cited by Professor Cornish in support (and is also discussed by Laddie (above n 84) in an analysis of the distinction between a work protected by copyright and a general idea which is not (4.45)): ‘upon any work . . . a great number of increasing patterns of increasing generality will fit equally well, as more and more incident is left out. The last may perhaps be no more than the most general statement of what the [work] is about, and may at times consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the [author] could prevent the use of his “ideas”, to which, apart from their expression, his property never extended. . . Nobody has ever been able to fix that boundary, and nobody ever can’ (Cornish, 4th edn (above n 29) 121). 141   Designers Guild v Russell Williams CA judgment (above n 138) 130, citing Cornish, 3rd edn (London, Sweet & Maxwell, 1996) para 11-06 et seq.

The Modern Law of Copyright   61 ‘the answer in a particular case can only lie in the tribunal’s innate sense of fairness.’142 As Designers Guild is a relatively recent and significant House of Lords (Supreme Court) artistic copyright infringement case, and it gives express consideration to the idea/expression dichotomy, it will be considered in more detail below. Facts The plaintiff, the Designers Guild, is a designer and manufacturer of wallpapers and fabrics. In September 1995 it launched a new range of fabric designs under the name ‘Orientalis’. One of those designs, ‘Ixia’, was a striped pattern with flowers scattered over it in a somewhat impressionistic style. It was a successful design, achieving sales of £171,000 in its first year. The Ixia fabric design was produced from a design painted by Helen Burke, a designer employed by the plaintiff. It was inspired by the ‘handwriting and feel’ of Matisse. In September 1996 the defendant, Russell Williams (Textiles) Ltd, exhibited at trade fairs in Belgium and the Netherlands a striped design, ‘Marguerite’, with scattered flowers, also in a somewhat impressionistic style. The plaintiff took the view that the defendant’s design Marguerite had been copied from Ixia and commenced proceedings on 24 December 1996. The defendant accepted subsistence and ownership of copyright in the painting but denied infringement. The issue at trial was therefore whether for the purposes of sections 16 and 17 of the CDPA the defendant had copied from the Ixia design and thereby indirectly copied a substantial part of the painting. The High Court The judge found that there was copying by the defendant. Furthermore, there was copying of a substantial part of Ixia. Looking at Ixia as a whole, the judge found that the defendant had adopted the ‘essential features and substance’ of the original.143

  Cornish, 3rd edn (ibid).   Designers Guild (above n 138) 828. This test is referred to in Copinger (above n 28) 7-82. 142 143

62  Art and Copyright The Court of Appeal The judge at first instance gave greater consideration as to whether there was copying than to whether what was copied was protectable expression—ie, whether a substantial part of Ixia was copied. The Court of Appeal concentrated on the latter point.144 Although the Court found that the designers of Marguerite copied the idea of Ixia and adopted the same techniques, they did not copy a substantial part of the expression of the idea.145 When Morritt LJ analysed the similarities between the two works he found that Marguerite adopted the same idea as Ixia (a combination of flowers and stripes) and in three respects the same techniques (brushwork, formation of the design and the resist effect used); nevertheless, the same techniques produced ‘different visual effects’ in Marguerite, and the subject matters of their use (stripes and flowers) were not copied from Ixia into Marguerite.146 The House of Lords The House of Lords were unanimous in overturning the Court of Appeal decision. In particular, the approach of Morritt LJ in analysing individual features of the two works to determine substantial copying rather than comparing the two works as a whole was criticised.147 The question was ‘Did Marguerite incorporate a substantial part of the

144   For example, Morritt LJ (131) gave six pointers for assessing whether a substantial part has been copied: (1) the part to be considered is the part of the work which has been copied; (2) the copying which is relevant is the copying, not of the idea, but of the expression of the idea [emphasis added]; (3) substantiality is a qualitative not a quantitative test; (4) the antithesis of ‘substantial’ is ‘insignificant’; (5) no weight is to be attributed to that which is commonplace or well-known or derived from some other source when considering whether the part which has been copied is ‘substantial’; and (6) the object of the law of copyright is to protect the product of the skill and labour of the maker not to confer on him a monopoly in the idea it may express [emphasis added]. 145   Designers Guild (above n 138) 135. Morritt LJ stressed that what the law was seeking to protect here was the product of the skill and labour of the designer—in this case, to allow a finding of copyright infringement would be to cast the net of copyright protection too wide and to create a monopoly in ideas. 146   Ibid, 134. 147   Morritt LJ was of the view that some dissection of the work allegedly copied was necessary in order to focus on the relevant aspects of the work that had been copied (131). This approach was rejected by the House of Lords: eg, 2434 (per Lord Scott of Foscote), 2421–22 (per Lord Hoffmann) and 2418 (per Lord Bingham of Cornhill).

The Modern Law of Copyright   63 skill and labour expended by the designer of Ixia in producing Ixia?’148 Also the Court of Appeal’s attempt to approach the issue of substantiality afresh, even though the trial judge had not misdirected himself, was also criticised. Lord Hoffman gave detailed consideration to the application of the idea/expression dichotomy in UK law, which he felt must be handled with care.149 In particular, he stressed that every element in the expression of an artistic work, ‘unless it got there by accident or compulsion’, would in fact be the expression of an idea on the part of the artist: ‘It was the artist’s choice to paint stripes rather than polka dots, flowers rather than tadpoles, use one colour and brush technique rather than another, etc.’150 The expression of these ideas was clearly protected by copyright, both as a cumulative whole and also to the extent to which they form a ‘substantial part’ of the work. Substantiality depended upon quality rather than quantity.151 In his view, there were numerous authorities for the proposition that the ‘part’ which is regarded as substantial can be a feature or combination of features of the work, abstracted from it rather than forming a discrete part of it. For example, the original elements in the plot of a literary work such as a play may be a substantial part or the work, so that copyright may be infringed by a work that fails to reproduce a single sentence of the original. If one were to ask what is being protected in such a case, it would be difficult to give any answer except that it is an idea expressed in the copyright work. Based upon an analysis of the cases applying the idea/expression dichotomy, Lord Hoffman discerned two distinct propositions. The first was that a copyright work can express certain ideas that are not protected because they have no connection with the literary, dramatic, musical or artistic nature of the work.152 The other proposition was 148   Designers Guild (above n 138), per Lord Scott of Foscote, who spoke approvingly of the test proposed in the second edition of Laddie (above n 84) (92–93, para 2-108), where infringement of copyright by an altered copy is concerned (this was the case here): ‘Has the infringer incorporated a substantial part of the independent skill, labour etc contributed by the original author in creating the copyright work?’ Lord Scott considered this a useful test, ‘based as it is on an underlying principle of copyright law, namely, that a copier is not at liberty to appropriate the benefit of another’s skill and labour’ (2431G). 149   Designers Guild (above n 138) 2422D–2423E. 150   Ibid, 2422F. 151  Citing Ladbroke (Football) (above n 127) 276 (per Lord Reid), 283 (per Lord Evershed), 288 (per Lord Hodson) and 293 (per Lord Pearce). 152   He cited as an example the fact that although a literary work may describe a system or invention, this does not entitle the author to claim protection for his system or invention as such. The same was true of an inventive concept expressed in an artistic work:

64  Art and Copyright that certain of the ideas expressed by a copyright work may not be protected because, although they may be ideas of a literary, dramatic or artistic nature, they are not original or are so commonplace as not to form a substantial part of the work.153 In conclusion, in cases of artistic copyright, the more abstract and simple the copied idea, the less likely it is to constitute a substantial part of a copyright work. According to Lord Hoffmann, originality, in the copyright sense of the contribution of the author’s skill and labour, tends to lie in the detail with which the basic idea is presented: ‘copyright law protects foxes better than hedgehogs.’154 Designers Guild: Comment Designers Guild is a difficult copyright infringement case. In a straw poll of the author’s office at the time, the vast majority agreed with Morritt LJ that the designs in question did not look, in his words, ‘sufficiently similar’ for there to be copyright infringement.155 The judgKleeneze Ltd v DRG (UK) Ltd [1984] FSR 399 was cited by Lord Hoffman in support. This case involved the copying of the concept of a letterbox draught excluder, which was held not to be infringement. But what of a literary work that describes an artistic work in sufficient detail to allow someone else to reproduce it in two or three dimensions? Does the same analysis apply? When considering some previous authorities, it is submitted arguably not, on the basis it is the function of copyright to protect the skill and labour of the writer, which is then copied in creating the artistic work: see Laddie J in Autospin v Beehive Spinning (above n 95), who doubted the obiter statement of Lord Oliver in Interlego AG v Tyco Industries Inc [1988] RPC 343, 373: ‘infringement of copyright by three dimensional copying is restricted to artistic copyright. To produce an article by following written instructions may be a breach of confidence or an infringement of patent, but it does not infringe the author’s copyright in his instructions.’ Laddie J also doubted Brigid Foley Ltd v Elliott [1982] RPC 433, which concerned a (failed) allegation that a knitting guide was infringed by making knitted garments to its instructions. Both these cases concerned instructions in artistic works as opposed to literary works being copied, according to Laddie J, and therefore were not relevant when infringement of a literary work was considered. 153   Lord Hoffman cited Kenrick & Co v Lawrence & Co (1890) 25 QBD 99 (see above ch 3). So applying this to Designers Guild, the mere notion of combining stripes and flowers was not a substantial part of the plaintiff’s work: ‘At that level of abstraction, the idea, though expressed in the design, would not have represented sufficient of the author’s skill and labour as to attract copyright protection’ (Designers Guild (above n 138) 2423D). 154   Designers Guild (above n 138) 2423E. Lord Hoffman was of the view that here the elements copied went well beyond the banal and that the trial judge was justified in deciding that they formed a substantial part of the originality of the work. 155   Ibid, 133. Morritt LJ of course did not reach a concluded view on ‘so subjective and unanalytical approach alone’ (133). He went on to conduct the analysis of the designs referred to earlier.

The Modern Law of Copyright   65 ment of Lord Hoffmann may be helpful in clarifying the current application of the idea/expression dichotomy in UK law, but it should be noted that their Lordships all took different approaches to the issue of ‘substantiality’. The common thread was that the works should be compared as a whole in assessing copying of a substantial part, and all (apart from Lord Millett) stressed that what copyright protects is the skill and labour of the original designer.156 Defences to Copyright Infringement There are certain limited exceptions/defences to copyright infringement set out in Chapter III of the CDPA.157 Whilst the list below is 156   For a critique of the case and proposals for a clearer test for copyright infringement, see M Spence and T Endicott, ‘Vagueness in the Scope of Copyright’ (2005) 121 Law Quarterly Review 657. 157   It should be noted that the rationale for these defences stems from a not always recognised desire to preserve some element of the ‘public domain’. Copying is not necessarily wrongful; it is how we learn and develop new creative works, and it is the essence of a common culture. ‘The trick is to find some means to distinguish wrongful from fair copying. Some of those means are case-by-case, like “substantial similarity” and “fair use”. Some are system-wide rules, like the provisions limiting the duration of copyrights and patents’ (Gordon (above n 137) 29). Unlike US law, there is no general ‘fair use’ defence in UK law, nor (it has been argued) a general ‘public interest defence’; a specific statutory exception in Chapter III of Part I of the CDPA must be relied on, as these set out what is and is not permitted. They set out in detail the extent to which the public interest overrides copyright. See, eg, Aldous LJ in Hyde Park Residence Ltd v Yelland (CA) 228H. Yelland has been criticised: eg, R Burrell, ‘Defending the Public Interest’ (2000) 9 European Intellectual Property Review 394; and see also Lord Phillips in Ashdown v Telegraph Group Ltd [2001] EWCA Civ 1142 (18 July 2001), where the Court of Appeal in a later case opened the door to a public interest defence, even if only in rare circumstances. However, Laddie (above n 84) still sees a limited role for fair use as developed in the nineteenth century as a factor a court may take into account when determining whether a substantial part of a copyright work has been taken in assessing infringement in borderline cases, especially when the defendant’s work was not competing with the plaintiff’s but rather was to ‘enlighten the public’ (4.54), suggesting that the concept of ‘fair use’ may fall within the exercise of a rule of reason or proportionality by the courts. However, Laddie (above n 84) notes, ‘The fair use doctrine seldom applied to artistic works because it would not often be the case that there was any countervailing benefit of public enlightenment to be gained by permitting copying of works of that kind’ (4.54). See Bradbury v Hotten (1872) LR 8 Exch 1, 5 and 7, in which the defendant introduced nine pictures from Punch owned by the plaintiffs into his ‘comic life of Napoleon III’, which was held to be an infringement. Kelly CB put the matter thus: ‘Where one man for his own profit puts into his work an essential part of another man’s work, from which that other may still derive profit, or from which, but for the act of the first, he might have derived profit, there is evidence of a piracy upon which a jury should act’ (6). For a more detailed discussion, see Stokes, Digital Copyright: Law and Practice (above n 105) s 2.4.

66  Art and Copyright not exhaustive—there are additional provisions dealing with visual impairment, education, libraries and archives and so on—in practice, these are some of the more important exceptions (ie, certain acts that the law permits that would otherwise infringe copyright): 1) Fair dealing with a work for the purposes of private study, fair dealing with a work for the purposes of research for a noncommercial purpose and fair dealing with a work for criticism or review (of that or another work or a performance of a work) or (other than a photograph) reporting current events (provided in each case other than the first there is sufficient acknowledgement158) does not infringe copyright.159 2) In the case of buildings, sculptures, models for buildings and works of artistic craftsmanship permanently situated in public places or in premises open to the public, the copyright in such work is not infringed by inter alia making a graphic work repre158  See Fraser-Woodward Ltd v British Broadcasting Corporation Brighter Pictures Ltd [2005] EWHC 472 (Ch) (23 March 2005) paras 70–77. 159   Ss 29–30 CDPA. The general view is that to benefit from a fair dealing defence, the copying must be ‘fair’; and in assessing fairness, the amount, importance or proportion of the work copied will be important, as will be whether usage competes with the copyright owner. See Dworkin and Taylor (above n 119) 76; Hubbard v Vosper [1972] 2QB 84 (CA); and HRH Prince of Wales v Associated Newspapers Ltd [2008] EMLR 3, [2008] EMLR 4 (CA). The latter case stressed that in the context of reporting current events, the most important factor was whether there was commercial competition with the owner’s rights. The lawfulness of the method by which the copyright material was obtained (eg, in the case of unpublished works not made available to the public) will also be highly relevant (and fatal to fair dealing for criticism or review—see s 30 CDPA) but is generally irrelevant once the work in question is in the public domain: Time Warner Entertainments Company LP v Channel Four Television Corporation Plc and Another (CA) [1994] EMLR 1. By way of example, in a case in which the defendants, Carlton TV, used in a programme criticising chequebook journalism a 30-second extract from a programme broadcast by the plaintiff in Germany that featured an exclusive interview with Mandy Allwood and her boyfriend Paul Hudson, such use was considered by the Court of Appeal to be fair dealing for the purposes of criticism or review. According to the Court of Appeal in this case, the test of whether an extract from a copyright work had been used by another ‘for the purposes of criticism or review’ was an objective one; but the user’s subjective intentions or motives were relevant to whether the material’s use satisfied the test of fair dealing on which that defence also depended: Pro Sieben Media AG v Carlton UK Television Ltd and Another, TLR 7.1.99. Note that in Pro Sieben, Robert Walker LJ commented: ‘“Criticism or review” and “reporting current events” are expressions of wide and indefinite scope. Any attempt to plot their precise boundaries is doomed to failure. They should be interpreted liberally’ (Pro Sieben Media AG v Carlton UK TV Ltd [1999] FSR 160, 620). He also noted that ‘Criticism of a work need not be limited to criticism of style. It may also extend to the ideas to be found in a work and its social or moral implications’ (621).

The Modern Law of Copyright   67 senting it or making a photograph or film of it, but a threedimensional reproduction would amount to an infringement.160 3) To copy an artistic work for the purpose of advertising the sale of it does not infringe copyright. This is clearly of importance to auction houses and art dealers.161 4) Where the author of an artistic work is not the copyright owner, he does not infringe the copyright by copying the work in making another artistic work, provided he does not repeat or imitate the main design of the earlier work.162 5) The incidental inclusion of a work protected by copyright in an artistic work, sound recording, film or broadcast does not infringe copyright.163 160   S 62 CDPA. This exception is clearly important where works of sculpture or artistic craftsmanship are permanently on public display. However, there is nothing to stop an exhibition organiser/gallery owner from restricting such copying as a term of condition of entry to the art gallery where the works are on public display. 161   S 63 CDPA. Note that DACS in their current guidance (January 2010) interpret s 63 (as revised in 2003) as distinguishing between print reproductions, which benefit from s 63 CDPA, and online reproductions, which appear not to and for which DACS charge a digital use price. See http://www.dacs.org.uk/‌‌‌/auction%20houses%20NEW.pdf (accessed 20 June 2011). This is also the view of the latest edition of Copinger (above n 28) 16th edn (London, Sweet & Maxwell, 2011) [hereafter ‘Copinger, 16th edn’] 9-191, on the basis website use infringes the communication to the public right unless licensed, and this is not dealt with in s 63. However, this interpretation—which in the author’s view creates a rather absurd distinction between print (including an offline electronic catalogue) and online use for the same purpose (to advertise the sale of the work)—goes against how s 63 was interpreted before it was revised in 2003. See, eg, the previous edition of this book. It can certainly be queried if it was Parliament’s intention to take online advertisements outside the existing exception in 2003, when s 63 was revised by Statutory Instrument. The Government Conclusions on the Patent Office’s Consultation Paper of 7 August 2002, para 5.11 are ambiguous. In the author’s view, one reading of para 5.11 and the revisions made to s 63(2) is that it was intended that a communication to the public for the purpose of advertising the sale of a work should be covered by the exception. Note also that in the 2002 Consultation (by the Patent Office) it was stated: ‘The Government’s basic approach during negotiations on the [Information Society] Directive was always to seek to maintain existing UK exceptions as far as possible. It is now proposed only to amend these where required to comply with the Directive’ (9). Given that the Information Society Directive permits such an exception (Arts 5(3)(j) and (4)), it can therefore be argued it was not the Government’s intention to take online advertising outside the exception, as this would be to narrow a current exception where this was not required by the Directive. Ultimately, however, this is now a matter of statutory interpretation which the courts may be asked to rule on in future. 162   S 64 CDPA. 163   S 31 CDPA. By way of example, should Sister Wendy Beckett or some other art critic be filmed walking through the Tate with the odd incidental shot of works still in copyright, this would appear to be incidental inclusion. However, if she was then filmed in front of a work whilst commenting on it, this would clearly not be incidental inclusion, though it is likely to be fair dealing for the purposes of criticism or review. See also

68  Art and Copyright The fair dealing defence is given further consideration below in chapter seven, where the use of artistic works to illustrate books is considered. 3.2.9  Other Rights Analogous or Related to Copyright (excluding Moral Rights but including Designs) Copyright, more than any other intellectual property right, has been expanded in the United Kingdom to cover a wide range of objects and activities, and to protect both economic and moral interests, adding to the complexity of the subject. Moral rights and droit de suite are dealt with separately below in chapter four, and what follows is a discussion of certain other aspects of copyright—domestic and foreign—of relevance to artists, publishers and galleries. Industrial Designs Artistic Copyright and Industrial Design The relationship between copyright and designs reproduced by a manufacturing process or otherwise ‘industrially’ applied to a product is a difficult one and varies from country to country.164 It is possible to disIPC Magazines Ltd v MGN Ltd [1998] FSR 431, 441, where incidental inclusion was considered to mean that the inclusion was casual, inessential, subordinate or merely background. The current law here was summarised by Mann J in Fraser-Woodward v BBC Brighter Pictures (above n 158) para 82: ‘Guidance as to the law as to incidental inclusion can be found in Football Association Premier League Ltd v Panini UK Ltd [2004] FSR 1. In that case the defendants had published photographs of Premier League footballers in their club strip, which included Premier League or club logos; the League and clubs claimed copyright in their logos. The defendants relied on the defence of incidental inclusion, and it was rejected on the facts of the case. Chadwick LJ said that the question of whether there was incidental inclusion: “is to be answered by considering the circumstances in which the relevant artistic work—the image of the player as it appears on the sticker or in the album—was created” And whether or not the inclusion is incidental “turns on the question: why—having regard to the circumstances in which the [allegedly infringing work] was created—has [the original copyright work] been included in [the former]’ (12). He went on to hold that commercial as well as aesthetic considerations came into play in that consideration. Mummery LJ observed that ‘incidental is an ordinary descriptive English word. . . The range of circumstances in which the word “incidental” is commonly used to describe a state of affairs is sufficiently clear to enable the courts to apply it to the ascertainable objective context of the particular infringing act in question’ (15). 164   Detailed consideration of this area is outside the scope of this book. For more information, the following works are recommended: U Suthersanen, Design Law in Europe (London, Sweet & Maxwell, 2000); M Howe QC, Russell-Clarke and Howe on

The Modern Law of Copyright   69 tinguish between two extremes. At one end, works of ‘pure’ or fine art (such as paintings, drawings or sculptures) are applied to or incorporated as part of useful or utilitarian objects (eg, wallpaper, fabric, etc). At the other end, everyday objects (such as furniture or consumer products) display some ‘artistic’ element in their shape or appearance. In practice, many designs (of, eg, jewellery, clothing, children’s toys, etc) will fall within a continuum between these two extremes. The unease about protecting such objects as ‘artistic works’ under copyright law derives from their utility.165 Indeed, international attempts to bring all industrial designs under the umbrella of artistic copyright have not succeeded. Currently, the Berne Convention effectively allows Berne Union countries to have their own laws on designs in addition to any artistic copyright protection they decide to grant—design laws (as opposed to copyright) typically requiring the registration or deposit of the design, levels of novelty and originality and limited terms of protection.166 So in many countries design laws and copyright are not mutually exclusive (which is the position in Europe under the Designs Directive).167 There is of course considerable commercial interest in the position. If a design is protected by copyright, then protection can potentially last until 70 years after the death of the designer under the usual copyright principles; if a design is instead protected by design right/registered design or similar protection, then this will be for a much lesser period. However, trade mark protection (potentially of unlimited duration, as long as renewal fees are paid) is also available for designs, whether in 2D or 3D, as is the law of unfair competition or similar laws Industrial Designs, 8th edn (London, Sweet & Maxwell, 2010) [hereafter ‘RussellClarke’]; and, for a practical overview, C Thorne and S Bennett, A User’s Guide to Design Law (Haywards Heath, Bloomsbury Professional, 2010). See also DC Musker, Community Design Law: Principles and Practice (London, Sweet & Maxwell, 2002). Standard IP texts, including Copinger (above n 28), Laddie (above n 84) and Cornish (above n 29), also contain useful discussions of this area and the relationship between copyright and the law of industrial design. 165  S Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886–1986 (London, Kluwer, 1987) sets out this analysis at para 6.44. 166   See Arts 2(1) and 2(7) of the Berne Convention as discussed in detail in Ricketson (ibid) paras 6.44–6.54. Note that for designs, the Paris Convention for the Protection of Intellectual Property (which requires member countries to protect industrial designs— Article 5quinquies) runs in parallel with the Berne Convention for many countries: Ricketson (ibid) para 6.54. 167   Directive on the legal protection of designs (98/71/EC) Art 17 states that copyright protection shall continue to apply to designs to the extent determined (including as to originality) by the Member State in question.

70  Art and Copyright in a number of countries (eg, the UK law of passing off). In addition, the scope of protection varies between the rights that potentially apply. Trade marks and the law of passing off are dealt with elsewhere in this book. But design protection through copyright, design right and other specific ‘designs’ laws will be considered here, although only in overview as regards design protection as opposed to copyright. As noted earlier in this chapter, in the United Kingdom, artistic copyright extends to sculptures, works of artistic craftsmanship, engravings and other artistic works covered by section 2 of the CDPA. When looking at the copyright protection afforded to designs/applied art in the United Kingdom and elsewhere, there is no uniform treatment, and indeed, nearly all jurisdictions seem to struggle with this area. The crux of the matter is the assumption that what copyright should protect are ‘creative’, original works, but it is dangerous for copyright to tread too far into protecting designs that are technical in nature or are otherwise ‘functional’ or mass-produced. This is because such designs are either not worthy of the exalted benefit of copyright, or more mundanely because to grant copyright protection would restrict technical progress, so a much more limited period of protection than the long copyright term ought to apply, particularly for functional items rather than those to be looked at and enjoyed. These boundaries are of course difficult to draw. A good example are the chairs designed by the architect Le Corbusier, the subject of litigation in a number of European jurisdictions. A chair of course is a functional item, but it can also be a thing of beauty or at least have aesthetic appeal. Le Corbusier’s chairs are modernist design icons. Should they be protected by artistic copyright (so giving Le Corbusier and then his heirs/assigns protection, potentially up to 70 years after his death)? Or are they more properly the subject of laws protecting industrial designs—laws that tend to rely on a registration process and offer more limited protection? Courts in Germany, Switzerland and Austria say they should be protected by copyright; other jurisdictions, including Italy and the United Kingdom, take a different view. France generously protects works of applied art through both copyright and design protection—the so-called doctrine of the ‘unity of art’, which is in some ways a logical view, for is it really possible for the courts to distinguish between ‘major art’ and ‘minor art’, a boundary impossible to fix with precision?168   See Ricketson (above n 165) para 6.45.

168

The Modern Law of Copyright   71 In the United States, section 101 of the Copyright Act excludes ‘useful’ articles from copyright protection. These are defined as articles ‘having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally part of a useful article is considered a “useful article”.’ Needless to say, this definition is not an easy one to apply in practice. One approach to decide the issue taken by the US courts is that of ‘conceptual separability’: if the aesthetic or artistic features can be separated from the utilitarian aspects, then they can be protected by copyright: If design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements. Conversely, where design elements can be identified as reflecting the designer’s artistic judgement exercised independently of functional influences, conceptual separability exists.169

In his overview of the relationship between copyright and designs, Christopher Heath notes at least four approaches to the protection of applied art under copyright law, which can be summarised as:170 169   Brandir International v Cascade Pacific Lumber 834 F.2d 1142, 1145 (2d Cir 1987). The case involved the ‘RIBBON Rack’, a bicycle rack made of bent tubing that was said to have originated from a wire sculpture. The judge applied Professor Denicola’s test of ‘conceptual separability’ (see below) and found the article was not protected by copyright: ‘Applying Professor Denicola’s test to the RIBBON Rack, we find that the rack is not copyrightable. It seems clear that the form of the rack is influenced in significant measure by utilitarian concerns and thus any aesthetic elements cannot be said to be conceptually separable from the utilitarian elements.’ See R Denicola, ‘Applied Art and Industrial Design: A Suggested Approach to Copyright in Useful Articles’ (1983) 67 Minnesota Law Review 707. Denicola argues that rather than concentrating exclusively on the results of the creative effort expended, it is the process of creation that distinguishes industrial from applied art: the intention of the artist to create art as opposed to industrial design is paramount. See generally RM Polakovic, ‘Should the Bauhaus be in the Copyright Doghouse? Rethinking Conceptual Separability’ (1993) 64 University of Colorado Law Review 871 for a discussion and critique of Denicola’s approach as well as a suggestion for a two-step test for conceptual severability. The US courts have had particular difficulty with designs in the ‘Bauhaus tradition’, wherein industrial design and art merge. See Esquire Inc v Ringer (1978) 591 F.2d 796 in which a light fitting exemplifying modern abstract sculpture was denied copyright protection: see Polakovic (above) 873–74. The test for ‘conceptual seperability’ is clearly a difficult one to apply in practice. Reading the US cases and analysis, one is reminded of the differing approaches taken by the House of Lords in the UK to works of artistic craftsmanship in Hensher (above n 60). For example, in a dissenting judgment in Carol Barnhart Inc v Economy Cover Corp (1985) 773 F.2d 411 (2d Cir), Judge Newman stated, ‘For the design features to be “conceptually separable” from the utilitarian aspects of the useful article that embodies the design, the article must stimulate in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function’—the so-called ‘temporal displacement test’. 170   See C Heath, ‘The Protection of Aesthetic Creations as Three-Dimensional Marks, Designs, Copyright or Under Unfair Competition’ in C Heath and A Kamperman

72  Art and Copyright 1) Copyright protection is excluded from designs where the copyright work has been copied more than a certain number of times, so confirming its industrial application (as is the case in India and the United Kingdom). 2) Copyright protects any work that could be registered as a design. (France in particular takes this very generous approach under the ‘unity of art’ doctrine noted earlier.) 3) Copyright and design laws are applied concurrently, with a higher threshold of originality required for copyright protection (eg, Germany, Austria, Switzerland, Japan). 4) Copyright protects only designs that are incorporated into works of art distinguishable from any utilitarian function (eg, Italy, the United States and the United Kingdom). The UK Position Having given an overview of the issues, how does UK law address them? a. Copyright The protection of utilitarian or mass-produced items by copyright was an important and controversial feature of UK copyright law until the CDPA. In particular, as copyright protected engineering drawings of product designs as graphic works, this copyright would protect against indirect copying of the drawings through copying the products in question.171 The effect of the CDPA was to exclude the vast majority of industrial designs from copyright protection.172 This was done by effectively removing copyright protection from designs other than for artistic works and typefaces,173 and limiting the term of copyright protection Sanders (eds), New Frontiers of Intellectual Property Law: IP and Cultural Heritage, IIC Studies in Industrial Property and Copyright Law Volume 25 (Oxford, Hart Publishing, 2005). 171   The ‘high watermark’ was British Leyland Motor Corp v Armstrong Patents Co Ltd [1986] RPC 279 (HL), which upheld that copying of functional industrial articles constituted infringement of artistic copyright in their design drawings by (indirectly) reproducing those drawings in three dimensions. 172   ‘It was clearly the intention of the framers of the CDPA that copyright protection was no longer to be available to what can compendiously be described as ordinary functional commercial articles’: Mackie Designs (above n 12) 723 (per Pumfrey J). 173   S 51 CDPA, which states, ‘It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design.’ For these purposes, ‘design’ means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article, other than surface decoration (s 51(3)). S 51 was considered in BBC Worldwide Ltd v Pally

The Modern Law of Copyright   73 for designs ‘made by an industrial process’ and derived from an artistic work to 25 years from first marketing.174 In short, the intention behind the CDPA was to leave copyright as the preserve of what might properly be called artistic works.175 A concern frequently raised against copyright protection for ‘useful’ articles is that the designer will receive protection that will exceed any expression of its aesthetic elements and encompass the technological applications of the utilitarian article. This may foreclose competitors Screen Printing Ltd [1998] FSR 665, which highlights some of the difficulties of the relationship between copyright and design protection. On an application for summary judgment, the copying of the Teletubbies TV characters to make T-shirts and other clothing benefited from a defence under s 51. In particular, there was no evidence that the three-dimensional Teletubby characters were artistic works; had this been proven, then the case would have been decided differently. A claim in passing off (to the effect that members of the public would regard the defendant’s products as those of the plaintiff or in some way associated with them and therefore there was deception) failed as well. (See also below ch 8.) Also, in Lucasfilm [2009] (above n 19), paintings and drawings used to create Star Wars Stormtrooper helmets and armour were held to be design documents for works [the helmets and armour] that were not artistic works (ie, they were not sculptures or works of artistic craftsmanship), so there was no copyright infringement of the underlying paintings and drawings in this case (paras 83–87). 174   S 52 CDPA. This effectively limits copyright protection for the articles in question (being articles made by an industrial process which are copies of the underlying artistic work) to 25 years from the end of the calendar year in which the articles were first marketed. Under The Copyright (Industrial Process and Excluded Articles) (No 2) Order 1989 (SI 1989-1070), an article will essentially fall within s 52 as ‘made by an industrial process’ if (a) it is one of more than 50 such articles, or (b) it consists of goods manufactured in lengths or pieces, not being handmade goods. Also, Art 3 of these Regulations provide that s 52 does not, however, apply to works of sculpture (other than casts or models used or intended to be used as models or patterns to be multiplied by any industrial process); wall plaques, medals and medallions; and printed matter primarily of a literary or artistic character (listed to include among other things book jackets, dressmaking patterns, greetings cards, labels, maps, plans, and playing cards). So for example, a fabric design (being an artistic design) that is industrially applied (eg, to curtains) will only benefit from 25 years’ protection in the UK. The application of s 52 was also recently discussed in Lucasfilm [2008] (above n 82) paras 143–69; and Lucasfilm [2009] (above n 19) paras 88–98. 175   Copinger (above n 28) 13-29, citing Hansard HL vol 491, cols 185–86. Copinger distinguishes a work of fine art (such as a painting) from an ‘industrial’ design, on the basis a work of fine art performs no particular function other than to be enjoyed as an object in itself (13-02). The result of this has been attempts by litigants to expand the scope of artistic copyright protection under the categories of artistic work in s 4 CDPA to applied art. To take just two examples, that non-slip rubber floor mats for cars are ‘engravings’ (Hi-Tech Autoparts Ltd v Towergate Two Limited [2002] FSR 15 & 16); and more recently, that prototype Star Wars Stormtrooper helmets are either works of artistic craftsmanship or sculptures (Lucasfilm [2008] (above n 82); and Lucasfilm [2009] (above n 19)). This area and these cases are discussed above s 3.2.1.

74  Art and Copyright from using designs of general application, and if a monopoly should be granted, this ought to be patent protection.176 In Lucasfilm v Ainsworth, the Supreme Court recently summarised the policy considerations underlying the complex UK copyright and design protection regime with regard to ‘three-dimensional artefacts’ and why the courts should be slow to allow the boundaries of full copyright protection (at present only applying to sculptures and works of artistic craftsmanship) to ‘creep outwards’: It is possible to recognise an emerging legislative purpose (though the process has been slow and laborious) of protecting three-dimensional objects in a graduated way, quite unlike the protection afforded by the indiscriminate protection of literary copyright. Different periods of protection are accorded to different classes of work. Artistic works of art (sculpture and works of artistic craftsmanship) have the fullest protection; then come works with ‘eye appeal’ (AMP Inc v Utilux Pty Ltd [1971] FSR 572);177 and under Part III of the 1988 Act178 a modest level of protection has been extended to purely functional objects (the exhaust system of a motor car being the familiar example). Although the periods of protection accorded to the less privileged types have been progressively extended, copyright protection has always been much more generous. There are good policy reasons for the differences in the periods of protection, and the Court should not, in our view, encourage the boundaries of full copyright protection to creep outwards.179

b.  Design Protection in the United Kingdom: Overview Although copyright law’s application to industrial designs is limited in the United Kingdom, there remain a number of other forms of protection—a confusing array of rights that either need to be applied for or do not require registration. Registered rights (harmonised across the EU by the Designs Directive180) are dealt with last, together with the Community-wide scheme for the protection of designs through a registered (and unregistered) right under the Designs Regulation,181 which   See Polakovic (above n 169) 889.   Ie, registered designs, which will not be protected to the extent the features of the product are solely dictated by their technical function. Note that ‘eye appeal’ was a feature of registered designs law prior to 2001 and still applies to pre-2001 designs, but it is no longer part of the statute—s 1 Registered Designs Act 1949, following EU harmonisation under the Designs Directive. See Russell-Clarke (above n 164) ch 3. 178   Ie, unregistered design right. See below. 179   Lucasfilm [2011] (above n 3) 48. 180   Directive of 13 October 1998 on the legal protection of designs 98/71/EC (OJ L289, 28.10.98) (‘Designs Directive’) 28. 181   Council Regulation of 12 December 2001 on Community Designs (6/2002/EC) (OJ L3, 5.1.2002) (‘Designs Regulation’) 1. 176 177

The Modern Law of Copyright   75 has thereby established a ‘Community design’ across the European Union. c.  Design Right under the CDPA The design right was a new right introduced by Part III of the CDPA to protect functional designs. (As noted above, the previous generous copyright protection for such designs was removed under the CDPA.) It is best categorised as a right in the nature of copyright, as it confers a right against copying the design rather than an absolute monopoly, which would restrict even the independent creation of a registered design. The purpose of the right, in the words of the Court of Appeal, is not to protect the ‘novelty’ of a work against all competition (as registered design protection would) but, like copyright, to ‘provide limited protection against unfair misappropriation of the time, skill and effort expended by the author of the design on the creation of his work’.182 Design right is a property right that arises automatically in an ‘original design’ that comprises ‘any aspect of the shape or configuration (whether internal or external) of the whole or part of an article’. ‘Originality here means not commonplace in the design field in question at the time of its creation. Section 213 of the CDPA clarifies that the article of which the ‘original design’ is an aspect must be: • not a method or principle of construction; • not features of shape or configuration of an article that (i) enable it to be connected to or placed in, around or against another article so that either article may perform its function, or (ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part; or • ‘surface decoration’. Hence surface decoration is properly the subject of copyright (or registered design protection) and can include both decoration lying on the surface (eg, a painted finish) and decorative features of the surface (eg, beading or engraving), and it can serve a functional as well as decorative purpose.183   Farmers Build Ltd v Carier Bulb Materials Handling Ltd [1999] RPC 461 (CA),

182

481.

183  See Mark Wilkinson Furniture Limited v Woodcraft Designs (Radcliffe) Limited [1998] FSR 65, 72–73; and Russell-Clarke (above n 164) 4.30. But see also Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd and Another [2004] EWCA Civ 886; and Dyson Ltd v Qualtex (UK) Ltd [2004] EWHC 2981 (Ch), [2006] EWCA Civ 166 (any functional purpose to a surface decoration must be subsidiary to any decorative purpose).

76  Art and Copyright Where a design (eg, a work of artistic craftsmanship) can benefit from both design right and copyright, copyright takes precedence (section 236 CDPA). The exclusive (ie, economic) right of the design right owner is to reproduce the design for commercial purposes by making articles to the design or making a design document recording the design for the purpose of enabling such articles to be made (section 226 CDPA). Reproduction is defined more narrowly than for copyright: it means copying the design so as to produce articles exactly or substantially to that design.184 Thus, taking a photograph of a design that is not an artistic work would not infringe copyright or design right. The design right is limited in duration in most cases to ten years (section 216 CDPA). d.  Registered Design Protection In the United Kingdom, there are two forms of registered designs available: registration at the UK Intellectual Property Office for a UK registered design (under the Registered Designs Act 1949 (as amended)); or registration at the Office for Harmonization in the Internal Market (OHIM) in Alicante for a Community Design under the Designs Regulation, which gives protection as a unitary right across the European Union. As the substantive law is now the same here for both registered rights (due to the Designs Directive harmonising UK law so that in effect it is also in line with the Designs Regulation), the registered rights in designs under the 1949 Act and the Designs Regulation will be considered together. Note that unregistered Community design protects designs capable of registration under the Designs Regulation— whether or not applied for—from being copied for three years from the date on which a design was first made available to the public within the Community. Registered designs, however, can last for up to 25 years from filing and confer exclusive monopoly rights. A design is capable of protection by a ‘design right’ (ie, a Community design—through registration as a ‘registered Community design’ or through unregistered Community design) to the extent it is new (ie, no identical design has been made available to the public) and has individual character.185 ‘Design’ means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation (Article 1 of the Designs Directive). ‘Product’ means any industrial or handicraft item, including inter alia parts   S 226 CDPA.   This in effect is a test for originality but not the same test as for copyright.

184 185

The Modern Law of Copyright   77 intended to be assembled into a complex product (ie, a product composed of multiple components that can be replaced, permitting disassembly and reassembly of the product), packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs (Article 1). Design right does not subsist in features of appearance of a product that are solely dictated by its technical function or are necessary for interconnection purposes (Article 7)—although this does not mean the design must have an aesthetic quality (Recital 14). Based on these definitions, which include references to ‘handicraft’, there appears to be a potential overlap between ‘design right’ under the Designs Directive/Designs Regulation and works of artistic crafts­ manship under section 4(1)(c) of the CDPA and possibly other artistic works under UK law (depending upon how ‘handicraft item’ is interpreted).186 Registered design protection can in any event freely overlap with copyright and unregistered design right (Article 17 of the Designs Directive; Article 96 of the Designs Regulation). By way of example, unless they are works of artistic craftsmanship, clothing designs will typically fall within design protection, as opposed to copyright protection (except for any surface decoration aspects of the design).187 Likewise for furniture created by a designer (unless it can be considered to be a sculpture or work of artistic craftsmanship, which is unlikely188). However, using an artistic work (eg, a drawing) on the face of an item as surface decoration (eg, on a badge) is protected by copyright, as section 51 of the CDPA does not apply.189 Publication and Database Rights Two relatively recent additions to UK copyright law that have resulted from European Directives, namely publication right and database rights, are also of relevance to the protection of artistic works. From 1 December 1996 a new right, ‘publication right’, was introduced into the CDPA.190 The publication right is equivalent to copyright 186   A number of the Law Lords in Hensher considered that a work of craftsmanship was one involving ‘handicraft’. 187  See Jo-Y-Jo Ltd v Matalan Ltd (unreported, 31 March 1999) (Rattee J): S Clark, ‘Jo-Y-Jo Ltd v Matalan Retail Ltd: Threadbare Protection for Clothing Designs?’ (1999) 12 European Intellectual Property Review 627. 188   See above s 3.2.1. 189   Flashing Badge Co Ltd v Groves [2007] FSR 36, distinguishing Lambretta Clothing v Teddy Smith (UK) Ltd EWCA Civ 886. 190  See the Copyright and Related Rights Regulations 1996 (SI 1996/2967) (‘Regulations’).

78  Art and Copyright (but excludes moral rights protection) by protecting unpublished literary, artistic and other works in which copyright has expired.191 The first owner of the publication right is the national of an EEA state who ‘publishes’ such a work for the first time within the European Economic Area (EEA).192 The right lasts for 25 years from the end of the calendar year in which the work was first published. Those with historic collections of artistic works, such as museums, galleries and private collectors, need to bear this right in mind and exercise caution when allowing others to ‘publish’ their unpublished works—for example, by exhibiting them in public or allowing photography—lest they lose the publication right.193 Database rights came into force on 1 January 1998.194 In addition to 191   Of course the fact that copyright must have expired means that works that never benefited from copyright protection in the first place cannot then benefit from this publication right. The purpose behind Council Directive 93/98/EEC (the ‘Term Directive’) was to harmonise this area, as a number of countries had a publication right—in particular, the editio princeps of Germany on which the Directive is mainly based. See Copinger (above n 28) 17-02. 192   ‘Publication’ is defined to include any communication to the public and includes exhibiting or showing the work in public or other communication to the public, as well as more traditional means of publication (eg, issuing copies to the public): Reg 16(2). The Regulations therefore appear to envisage that an unpublished work will cease to be ‘unpublished’ once it is exhibited in public, for example. However, the EC Directive upon which the Regulations are based (ie, Art 4 of Council Directive 93/98/EEC (the Term Directive)) can be interpreted differently so that ‘publication’ (in the context of an unpublished work) simply means issuing copies to the public, as opposed to exhibiting the work. See, eg, Art 3(3) of the Berne Convention; and Laddie (above n 84) 11.26– 11.30. Copinger (above n 28) also acknowledges this possibility (see 7-04 fn 22) but relies on the strict language of the Regulations rather than the Directive in its analysis), so it is submitted the matter remains unclear. Laddie (above n 84) 11-32 and ch 2 discusses how a Court would treat the Regulations given their view that they fail to properly implement the Directive and therefore may be ultra vires and to that extent invalid: in their view a Court could treat them as amended in order to properly reflect the Directive. 193   For a detailed consideration of publication right, see H Simpson and D Booton, ‘The New Publication Right: How it will affect Museums, and Galleries’ (1997) 2 Art, Antiquity and Law 283. See also Copinger (above n 28) ch 17; and Laddie (above n 84) ch 11. 194  Under the Copyright and Rights in Databases Regulations 1997 (SI 1997/3032) implementing Directive 96/9/EC on the legal protection of databases. The intention was to harmonise the law across the EC protecting compilations of mere data or factual information; and the right is economic in origin. For example, the ‘maker of the database’ (a crucial definition for ownership and hence enforcement) is in general the person who takes the initiative in obtaining, verifying or presenting the contents of a database and assumes the risk of investing in that obtaining, verification or presentation (Reg 14). For a discussion of database right and copyright generally, see Laddie (above n 84) ch 30; and Copinger (above n 28) ch 18.

The Modern Law of Copyright   79 gaining possible copyright protection,195 databases196 gained the benefit of a sui generis database right protection.197 There are no formalities for database right protection, but the maker of a database must have a connection with an EEA state.198 The fair dealing and moral rights provisions in the CDPA do not apply to database right.199 Database right protection is most likely to be encountered in the context of artistic works, for example, where the intellectual property protection of CD-ROMS or websites is concerned. This area is further discussed below in chapter five. Rental and Lending Rights Another recent innovation is the extension to artistic works of the rental and lending rights in section 18 of the CDPA (ie, the right to restrict the rental and lending of copies of a work to the public). This is a consequence of the 1992 EC Directive on Rental and Lending Right.200 On first glance, the Directive would appear to restrict the lending of original artistic works as well as copies. But the Council Working Group involved in the Directive wanted to avoid this result, and so Recital 13 was included: 195   Copyright protection for a database as an original literary work is still available on the basis the selection or arrangement of the contents of the database constitutes the author’s own intellectual creation (a higher originality requirement than previously the case: see s 3A(2) CDPA). ‘Old’ (pre-28 March 1996 databases) that were in copyright on 1 January 1998 continue to enjoy copyright, even if they fail to satisfy the new originality requirement (Reg 29 Copyright and Rights in Database Regulations 1997 (ibid)). 196   A ‘database’ is a collection of independent works, data or other materials that (a) are arranged in a systematic or methodical way and (b) are individually accessible by electronic or other means (s 3(1) and s 3A(1) CDPA). So for example, a ‘virtual art gallery’ on a website or on CD-ROM could qualify for database right protection, regardless of the copyright position of the individual images/pictures in the gallery (which could be owned by persons other than the database right owner). See below ch 5 for a fuller discussion. 197   For 15 years from the making of the database or making it available to the public, whichever is longer, the owner of the database right can prevent the extraction or reutilisation of all or a substantial part of the contents of the database (Regs 16 and 17, subject to the transitional provisions in Reg 30 Copyright and Rights in Database Regulations 1997); a substantial change to the contents of a database (eg, updating) can in certain circumstances effectively extend the term of protection to a further fifteen years from the date of the change (Reg 17(3)). Absent agreement otherwise or except in the case of works created during the course of employment, the first owner of database right will be the maker of the database (Regs 14(2) and 15). To benefit from database right protection there must have been a substantial investment in obtaining, verifying or presenting the contents of the database (Reg 13(1)). 198   Reg 18 Copyright and Rights in Database Regulations 1997 (above n 194). 199   There are more limited ‘fair dealing’ type restrictions on database right in Reg 20 Copyright and Rights in Database Regulations 1997. 200   Directive 92/100 (OJ 1992 L 346/61).

80  Art and Copyright Whereas it is desirable . . . to exclude from rental and lending . . . certain forms of making available as for instance . . . making available for exhibition. . . ; whereas lending within the meaning of this Directive does not include making available between establishments which are accessible to the public. . .

So the better view is that the Directive does not apply to the renting or lending of artistic works for the purposes of exhibition.201 However, an Austrian case suggests that this is without prejudice to any national rights that expressly provide for the payment of royalties if works are exhibited.202 In this case, the defendant, a non-profit organisation, organised an exhibition of artistic works of members of the plaintiff (a copyright collecting society) that was sponsored by the Bank of Austria. This was held to be a ‘for-profit’ exhibition, for which royalties were payable by the defendant. In any event, when implementing the Directive, the UK government expressly excluded from rental and lending rights the making available of a work for the purpose of exhibition in public.203 Exhibition/Display Right204 The Berne Convention does not contain any requirement of a right to display artistic works in public, although the exhibition of a work of art in an inappropriate place might infringe the moral right of integrity.205 So for example, under UK law, whilst the public performance of a film without consent can infringe copyright, exhibiting an original work of art or indeed a lawful copy in public will not do so.206 Few countries have such a right. In France the better view is that there is such a right (as part of the general right to control the public presentation of a work).207 In the United States and Germany, copyright owners appear to have an exhibition right, but it has been generally   See generally Bently and Sherman (above n 8) 273–74.   Re Copyright Collecting Society, Supreme Court, 23 November 1999, [2000] EIPR N-63. 203   S 18A (3)(b) CDPA. 204   See Bently and Sherman (above n 8) 274–76. 205   Ricketson (above n 165) 470. See generally below ch 4. 206   So in the UK (absent any breach of confidence—see below ch 8), the copyright owner has no control over the exhibition of her work as long as her moral rights are respected—see below ch 4. But she can control the exhibition of an infringing copy of her work (s 23(c) CDPA). See generally Copinger, 16th edn (above n 161) 11–13. 207  E Adeney, The Moral Rights of Authors and Performers: An International and Comparative Analysis (Oxford, Oxford University Press, 2006) 192–94 takes this view (right of disclosure under Art L121-5, Intellectual Property Code). 201 202

The Modern Law of Copyright   81 understood it cannot be exercised where the work is exhibited with the permission of the owner of an art work.208 Nevertheless, the German government still pays royalties to artists when their works are exhibited in public galleries.209 In Canada, there is a well-developed exhibition right (there being no moral right of disclosure).210 Owners of copyright in artistic works have the right ‘to present at a public exhibition, for a purpose other than sale or hire, an artistic work created after June 7, 1988, other than a map, chart or plan’.211 Although overshadowed by droit de suite in Europe, some have argued for the development of display right as a means of providing financial incentives for visual artists. But this development appears unlikely in the near future, if at all.212 Droit de Suite/Domaine Public Payant The recent harmonisation of droit de suite (right of an artist or his estate to a share in the resale price of his works) across Europe is discussed below in chapter four. But the introduction across Europe of a domaine public payant system (‘paying public domain’) has so far received little support.213 Under this system, when a work is exploited 208   In the US it appears there is a right of public display, but the owner of a work is entitled to display it without the authority of the copyright owner; but if the work is loaned by the copyright owner rather than sold, then the copyright owner can control the right. See Merryman and Elsen (above n 106) 431–32. 209   JL Duchemin, ‘Thoughts on the Exhibition Right’ (1993) 156 Revue Internationale du Droit d’Auteur 14, 48. This was the position as of the date of Duchemin’s article. Note, however, the recent German case in which the estate of Joseph Beuys was able to prevent the exhibition of photographs of a Beuys performance work (although the legal grounds appear to include what in the UK would be copyright infringement): J von Perfall, ‘Images of Beuys Performance Banned: German Court Rules Museum Breached Artist’s Copyright by Displaying Photographs of 1964 Happening’ (Nov 2010) 218 Art Newspaper; and D Maclean, ‘Artist’s Copyright Versus Curator’s Freedom of Expression: Wider Significance of Beuys Case’ (Nov 2010) 218 Art Newspaper. 210   Adeney (ibid) 357. 211   S 3(1)(g) Copyright Act, RSC, 1985 c C-42. 212  See H Hansmann and M Santilli, ‘Authors’ and Artists’ Moral Rights: A Comparative Legal and Economic Analysis’ (1997) 26 Journal of Legal Studies 95 117. See also Note, ‘Copyright Royalties for Visual Artists: A Display-Based Alternative to the Droit de Suite’ (1991) 76 Cornell Law Review 510. 213   It is understood that Italy has an established domaine public payant; France has engaged in a number of experiments; Germany extended its copyright period to the author’s life plus 70 years rather than confer such a right: see Cornish (above n 29) 365. Indeed, an attempt to ‘fill the gap’ between the 50-year and 70-year post mortem auctoris periods by a special version of paying public domain—that the last 20 years of protection post mortem auctoris should not profit authors’ heirs but should be established as an

82  Art and Copyright after its copyright has expired, royalties are paid into a joint fund to benefit needy authors or to promote the arts in general. Yet there remain advocates of paying public domain, such as the German Writers Union, who have proposed a modernised form of paying public domain.214 This is on the basis that earlier authors, whose works are often successful only long after their death, should help finance the creative activities of current, living authors.215 Indeed, it has been argued that droit de suite and domaine public payant ought to operate in tandem, as droit de suite generally favours artists’ heirs rather than living artists.216 The argument for domaine public payant is certainly challenging for countries such as the United Kingdom that have a chequered history of state funding for the arts and communal funds for artists. The principle behind the introduction of such a system is that artists should be viewed as members of an artistic community spanning both the past and present. Artists whose works are successful only long after their death will, by way of a (fictitious in legal terms) ‘testament’, effectively contribute to the financing and development of the creativity of later living artists. These living artists are in effect paid in advance and will make payment back in due course through income from their works after their death.217 So in a sense, the dead care for the living.

authentic right of the community of the living generation of authors—failed during the run-up to the adoption of the so-called Term Directive (Council Directive 93/98 of 29 October 1993 harmonising the term of protection of copyright and certain related rights [1993] OJ L290/9). See A Dietz, ‘Term of Protection in Copyright Law and Paying Public Domain: A New German Initiative’ (2000) European Intellectual Property Review 506, 507. 214   See Dietz (ibid). 215   Ibid, 510. 216   Indeed, the introduction of droit de suite is often criticised on this ground: ibid, 508. See also the highly publicised opposition of various artists to the proposed introduction of droit de suite across Europe, ‘Artists against droit de suite’. The group included David Hockney, Sir Anthony Caro, Georg Baselitz and others and protested on the grounds its introduction is likely to negatively affect the first price an artist gets for his or her works by handicapping the primary (ie, first-sale) market; and it is also seen as violating artists’ human rights because it cannot be waived and is to be imposed at a fixed rate. See ‘Artists Enter the Fray’ The Art Newspaper (December 2000) 75. 217   Dietz (above n 213) 507.

4

Moral Rights and Droit de Suite 4.1

MORAL RIGHTS 1

A

chapter one, the cultural value of authorship is embedded in the development of both the Anglo-American and authors’ rights (droit d’auteur) copyright systems. In copyright systems based on authors’ rights, it has long been the case that the personality of artists as expressed in their creations benefits from protection as a proprietary right alongside the economic interests in their exploitation. The argument is that any author, whatever he creates, embodies some part of himself in his works, and this gives rise to an interest that deserves protection, in the same manner as other personal rights such as reputation and confidences.2 To mistreat a work of art is to mistreat the artist, to invade his privacy and impair his personality.3 Another argument advanced in support of moral rights is the belief that ‘authors’ are ‘almighty creators who pour particular meanings into S DISCUSSED IN

For a comparative legal and economic analysis of moral rights, see H Hansmann and M Santilli, ‘Authors’ and Artists’ Moral Rights: A Comparative Legal and Economic Analysis’ (1997) 26 Journal of Legal Studies 95. See also E Adeney, The Moral Rights of Authors and Performers: An International and Comparative Analysis (Oxford, Oxford University Press, 2006). For a recent critical survey see, P Masiyakurima, ‘The Trouble with Moral Rights’ (2005) 68(3) Modern Law Review 411–34. The author comments, ‘moral rights are plagued by serious internal inconsistencies which may be made more glaring by technological advances’ (434). 2 S Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886–986 (London, Kluwer, 1987) 456. See also Adeney (ibid) 3, who stresses that moral rights protect a range of interests beyond just personality (albeit this has been the European approach to their development), including offering some modicum of power to performers (who have limited moral rights protection now), upholding human rights, addressing concerns about the ethical treatment of creators, safeguarding the standing of creators and so on. 3 P Jaszi, ‘Toward a Theory of Copyright: The Metamorphoses of “Authorship” ’ (1991) 42 Duke Law Journal 455, 497, citing J Merryman and A Elsen, Law, Ethics, and the Visual Arts, 2nd edn (The Hague, Kluwer Law International, 1987) 145. 1

84 Art and Copyright their creations and therefore inherently have undisputed authority over the uses and interpretations of those creations’.4 The general justifications for moral rights are based on the natural rights/personality theories that were discussed in chapter two. Moral rights can also be justified on economic and public policy grounds. The European Commission, for example, has stated that by protecting the authorship and authenticity of a work, moral rights also serve consumer interests, as they can assist consumers in verifying they have received the authentic product they are seeking and not any different or pirated goods.5 Hansmann and Santilli have also argued that moral rights have economic implications: a work of art will sell for more if it can be attributed to the artist (hence the value of the right of paternity); furthermore, the reputation of an artist is based on the entire corpus of his work, so the right of integrity is important in helping preserve the artist’s reputation (and so preserving the value of the artist’s work).6 These are variants of an argument often advanced to justify trade mark rights.7 The first country to protect moral rights was France, although it was not until the early part of the last century that the French courts began to speak about a droit moral or moral right as such.8 Because of their traditional stress on the economic aspects of copyright, the common law systems traditionally viewed moral rights as quite alien.9 Professor Cornish has pointed out that the separate ‘moral rights’ element of copyright has been progressively enhanced on the Continent LA Beyer, ‘Intentionalism, Art and the Suppression of Innovation: Film Colorization and the Philosophy of Moral Rights’ (1988) 82 Northwestern University Law Review 1011, 1027 (as discussed in Jaszi (ibid) 497). 5 See ‘Follow-Up to the Green Paper on Copyright and Related Rights in the Information Society’, COM(96), 568 final (20 November 1996) 27. 6 Hansmann and Santilli (above n 1) 108–9. 7 Trade mark rights operate in the public interest by protecting consumers against confusion, and in economic terms they help lower the search costs for consumers and encourage quality control by trade mark owners. See for example, WM Landes and RA Posner, ‘The Economics of Trademark Law’ (1988) 78 Trademark Reporter 276–77; WM Landes and RA Posner, ‘Trademark Law: An Economic Perspective’ (1987) 30 Journal of Law & Economics 265; and NJ Wilkof, ‘Trade Marks and the Public Domain: Generic Marks and Generic Domain Names’ (2000) 12 European Intellectual Property Review 571. 8 Ricketson (above n 2) 457–59. 9 Ibid, 459. That is not to say there was no equivalent protection. There was the possibility of common law actions in defamation and passing off, and the Fine Arts Copyright Act 1862 afforded a limited form of protection in respect of unauthorised changes and alterations of artistic works: Ricketson (above n 2) 459. 4

Moral Rights and Droit de Suite 85 over the past century or so.10 In particular, both France and Germany give at least equal recognition to moral rights and economic rights, although the basic assumptions in each system are different. French law renders moral rights perpetual as well as (in some sense) inalienable; German law gives both moral rights and economic rights the same duration.11 Following the Paris text of the Berne Convention,12 moral rights are generally considered to include the right to be identified as author (right of paternity—sometimes also termed ‘right to attribution’13) and to object to certain types of derogatory acts in relation to one’s work (right of integrity): 1.

2.

3.

10

444.

Independently of the author’s economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honour or reputation. The rights granted to the author in accordance with the preceding paragraph shall, after his death, be maintained, at least until the expiry of the economic rights, and shall be exercisable by the persons or institutions authorised by the legislation of the country where protection is claimed. However, those countries whose legislation, at the moment of their ratification of or accession to this Act, does not provide for the protection after the death of the author of all the rights set out in the preceding paragraph may provide that some of these rights may, after his death, cease to be maintained. The means of redress for safeguarding the rights granted by this Article shall be governed by the legislation of the country where protection is claimed.14

WR Cornish, Intellectual Property, 4th edn (London, Sweet & Maxwell, 1999)

The German position, according to Professor Cornish, is due to ‘the Hegelian perception of the work as the fulfilled expression of the author’s personality’: Cornish (ibid) 444. According to Ricketson, there are two major approaches to the nature of moral rights: the monist approach and the dualist approach. The monist approach prevails in Austrian and German law: the economic and moral rights are inextricably linked and interdependent and therefore should be of the same duration. The dualist approach, which is followed in France and similar legal systems, views such rights as separate and distinct. See Ricketson (above n 2) 458. See also Adeney (above n 1) ch 8 (for France) and ch 9 (for Germany). 12 Art 6 bis Berne Convention. 13 Eg, LD DuBoff and CO King, Art Law in a Nutshell, 3rd edn (St Paul, MN, West Group, 2000) 204 and 208–11, discussing the US law in this area. 14 Art 6 bis Berne Convention. 11

86 Art and Copyright In fact, authors’ rights countries tend to go further, and in addition to these two rights, moral rights in such countries may well include some or all of the following:15 s 4HERIGHTTODECIDEUPONlRSTPUBLICATIONOROTHERRELEASETHESO called ‘right of disclosure’ in French law16), including the right to refuse to supply the original In an early French case, the artist Whistler was held entitled not to deliver a portrait with which he was dissatisfied to the commissioner, even after exhibiting it.17 In a later case, an artist was able to prevent the publication of his youthful works after having stored them away.18 s 4HE RIGHT OF THE AUTHOR TO INSIST ON COMPLETION OF THE ORIGINAL where that depends on the execution of others This is a rather extreme sanction, and the French case of Renault v Dubuffet,19 which concerned a sculpture that Renault had to complete once execution had begun, has been much criticised.20 s 4HERIGHTTOCORRECTORWITHDRAWWORKSOFWHICHTHEAUTHORNO longer approves (the right of withdrawal or repentance) French law, for example, recognises this right, but it is subject to the author indemnifying the publisher against loss; and so according to Professor Cornish, it appears to be exercised rarely.21 However, it should be noted that this right seems available only to authors of published works, not to visual artists.22 s 4HERIGHTTOOBJECTTOTHEDESTRUCTIONORREMOVALOFTHEORIGINAL To some extent, this overlaps with the right of integrity—as was the case with the famous refrigerator decorated on all its See Cornish (above n 10) 444 and 452–53. Art L 121-2 CPI [Intellectual Property Code]. 17 Eden v Whistler, DP 1900 I 497. According to Cornish (above n 10), the artist had to return his fee and undertake not to [further] exhibit the portrait himself (452). 18 Bouvier v Cassigneul, Cass Crim (13 Dec 1995), (1996) RIDA 306. 19 [1983] ECC 453. 20 Cornish (above n 10) 452 cites the criticism of the leading authors Françon and Ginsburg (1985) 9 Col-VLA JLA 381: taking the right to its logical conclusion, it could in theory mean the commissioner would have to maintain the work once executed. 21 Intellectual Property Code L 121-4; and Cornish (above n 10) 452. In French law the right is termed that of ‘withdrawal and repentance’: see A Françon, ‘Protection of Artists’ Moral Rights and the Internet’ in F Pollaud-Dulian (ed), The Internet and Authors’ Rights (London, Sweet & Maxwell, 1999). 22 See Cour de Paris, judgment of 19 April 1961, JCP 111N 12183 (1961), a French case denying right of withdrawal to Vlaminck. See also Hansmann and Santilli (above n 1) 139. Adeney (above n 1) 195 also notes that the right cannot be exercised in relation to a work of visual art, the embodiment of which has been sold. 15 16

Moral Rights and Droit de Suite 87 panels by Bernard Buffet; its owner was prevented from breaking it up in order to sell it.23 Nevertheless, according to Professor Cornish, even French law is unclear about whether the right extends to prevent destruction.24 In addition to Bernard Buffet, there have been other cases in which the French courts have objected, for example, to the destruction of a church sculpture considered blasphemous25 or to the dismantling of a work of art where the organisers of the exhibition considered the work unsuitable for its (again, religious) setting.26 This goes further than Article 6 bis of the Berne Convention, where the general view is that the right of integrity does not extend to the destruction of works.27 Until 1 August 1989 when the Copyright, Designs and Patents Act (CDPA) 1988 came into force, moral rights as such were not expressly recognised by UK copyright law, although limited protection was afforded by the laws of defamation, passing off, contract and section 43 of the Copyright Act 1956 (false attribution of authorship)).28 The CDPA incorporates the rights of paternity and integrity into English law, and also added the right to object to false attribution and the right to privacy of certain photographs and films.29 However, in distinction to the droit d’ auteur systems, under UK law, authors can waive their moral rights; and this is standard practice in many publishing contracts.30 Judgment of 6 July 1962 (l’affaire Bernard Buffet, Cour d’Appel, Paris, Recuil Dalloz) D 1962 570. 24 See also Adeney (above n 1) 186, noting that ‘neither doctrine nor jurisprudence is entirely consistent’. 25 ‘Bezombes’ CA Paris (25 November 1980), (1981) 108 RIDA 162. 26 Hong v Saltpetriere Chapel Assn, CA Paris, 1 Ch (10 April 1995), (1995) 166 RIDA 316. 27 Ricketson (above n 2) 470. Stina Teilmann has argued that the right of integrity ought to include the right to prevent the destruction of an original work of art, even if in countries such as the UK it does not—an artwork ‘exists materially, and is an end in itself’. Surely if copies can be protected against derogatory treatment, why shouldn’t the original be protected from the ultimate act against its integrity as a work of art? Teilmann cites Art 15 of the Swiss Federal Law on Copyright, which includes a right to ‘protection against destruction’: S Teilmann, ‘Framing the Law: The Right of Integrity in Britain’ (2005) 27(1) European Intellectual Property Review 19, 23. 28 HIL Laddie, P Prescott, and M Vitoria The Modern Law of Copyright and Designs, 2nd edn (London, Butterworths, 1995) [hereafter ‘Laddie, 2nd edn’] 1007. 29 Chapter IV CDPA: breach of moral rights is actionable as a breach of statutory duty. See Laddie, 2nd edn (ibid) 1008. 30 S 87 CDPA. 23

88 Art and Copyright Unlike copyright, moral rights cannot be assigned by an author, but as noted above, they may be waived by an instrument in writing signed by the person giving up the right. However, infringements of the moral right of paternity can arise only after the right has been ‘asserted’ by the author. This is a controversial requirement: in order to exercise their moral rights, authors should not only assert their rights in contracts with publishers/art dealers but also, to ensure that third parties are bound by the rights, include on all copies of their work an express statement asserting the right of paternity. There is a special provision as regards the public exhibition of artistic works: the name of the author on the original, the authorised copy or the frame of the work is usually sufficient to assert the right.31 All the moral rights, bar that of false attribution, continue to subsist for as long as copyright subsists in the work; the right in relation to false attribution subsists for 20 years after a person’s death.32 However, no moral rights apply if the author died before 1 August 1989 (the date of commencement of the CDPA 1988).33 The right of paternity means that the author of an artistic work has the right to be identified whenever the work is, inter alia, published commercially, communicated to the public or exhibited in public.34 The right to object to derogatory treatment of a work arises where the treatment amounts to distortion or mutilation of the work or is otherwise prejudicial to the honour or reputation of the author or director; and in the case of an artistic work, the right is infringed by a person who, inter alia, exhibits in public a derogatory treatment of the work So that, for example, the artist’s signature on a painting or his name on the original frame would amount to an assertion of the author’s right of paternity in connection with the public exhibition of that painting: s 78 CDPA. Indeed, even if subsequently the identification of the artist is removed or obscured, the moral rights remain asserted: s 78(4) (c). Laddie, 2nd edn (above n 28) 1012 recommends that a purchaser of a work of art should require a warranty (coupled with an appropriate indemnity) that there was no such identification (if there is none apparent). 32 S 86 CDPA. 33 Sch I, para 23 CDPA. Also, the paternity and integrity rights do not apply to anything done before 1 August 1989, nor (in respect of ‘existing’ works—ie, works made before 1 August 1989) to anything done after that date by or with the licence of the copyright owner (Sch I para 23(3)(b) where the author was not the first owner), nor to anything which by virtue of an assignment or licence granted before 1 August 1989 could be done without infringing copyright (Sch I, para 23(3)(a)). Laddie, 2nd edn (above n 28) 1009 sees this provision as enabling the assignee or licensee to fully exploit the work without any curtailment due to moral rights. 34 S 77 CDPA. This needs to be identification as the ‘author’ or ‘director’, not merely a thank-you to the person concerned: Sawkins v Hyperion Records Ltd [2005] 3 All ER 636, 651. 31

Moral Rights and Droit de Suite 89 or communicates to the public a visual image of a derogatory treatment of the work.35 The right not to have a work falsely attributed to a person as author would, inter alia, be infringed if a person were to exhibit in public or to issue copies to the public of an artistic work on which there is a false attribution. It can also be infringed by dealing with an altered artistic work as if it were unaltered.36 It should be noted that since 1 February 2006 performers have had moral rights of attribution (ie, to be identified as the performer) and integrity (ie, the right to object to derogatory treatment), based on the World Intellectual Property Organization (WIPO) Performances and Phonograms Treaty (WPPT) 1996.37 However, these rights are of limited application to the visual arts as such: audio-visual performances are not covered.38 Attempts to introduce such rights at international level have so far failed, due at least in part to opposition from the US film industry.39 Nevertheless, to avoid the possibility of future disputes, those creating performance works or other works involving performers would be well advised to ensure: that all performers consent in writing to the performances and recordings of their performances where relevant; that moral rights waivers are obtained where appropriate; that all performers are properly identified (eg, in any credits or programmes); and that any commercial terms are documented and agreed.

4.2

IMPLICATIONS OF MORAL RIGHTS

Clearly, it is possible for the owner of a work of art to fall foul of the author’s moral rights. In particular, if reproductions of the work are made, it is sensible to identify the artist on such reproductions. Also, when acquiring a work of art, thought must be given as to whether the S 80 CDPA. S 84(6) is similar to the corresponding provision in s 7 of the Fine Art Copyright Act 1862, under which there were several cases dealing with this area: Carlton Illustrators v Coleman [1911] KB 771; Preston v Raphael Tuck [1926] Ch 667; and Crocker v Papunya Tula Artists Pty Ltd (1983–85) 5 IPR 426. See Laddie, 2nd edn (above n 28) 1024–25. 37 Adeney (above n 1) para 14.138. See Performances (Moral Rights, etc) Regulations 2006 (SI 2006/18). 38 They apply to any type of live performance, to live broadcasts of the performance and to sound recordings, but not to fixations of audio-visual performances (eg, films): S Stokes, Digital Copyright: Law and Practice, 3rd edn (Oxford, Hart Publishing, 2009) 77–79. 39 Adeney (above n 1) 157–59. 35 36

90 Art and Copyright artist’s moral rights have been asserted. A buyer may wish to put appropriate warranties and indemnities in the sale contract (likewise, generally, for copyright).40 It may even be possible for restorers and those involved in conserving works to fall foul of moral rights.41 Moral rights also pose particular challenges for the Internet, as discussed below in chapter five. Finally, difficult questions arise in connection with what might be derogatory treatment. There are few reported cases dealing with moral rights in the United Kingdom. These in the main deal with what might be considered ‘derogatory treatment’ within section 80(2) of the CDPA and are discussed below. 4.2.1 Morrison Leahy Music and Another v Lightbond Limited and Others (1991)42 The defendants in Morrison Leahy had produced a sound recording that was a medley or ‘megamix’ of words and music from five compositions, of which the second plaintiff (the singer and composer George Michael) was author and the first plaintiff copyright owner. These were interspersed with fill-in music composed by others. The defendants claimed they were permitted to do this pursuant to a copyright clearance they had obtained from the Mechanical Copyright Protection Society, of which the first plaintiff was a member. The plaintiffs denied that any clearance applied to the defendants’ actions, and as well as suing for infringement of copyright, they claimed that the defendants’ actions infringed their moral rights under section 80(2) of the CDPA. Morritt J held that what the defendants had done clearly amounted to treatment within the meaning of section 80(2)(a) of the CDPA; it was also arguable that such treatment amounted to distortion or mutilation within section 80(2)(b). However, this was an interlocutory decision for an injunction pending full trial, so the matter as to whether there was in fact derogatory treatment was left by the judge as a question of fact at trial.

See also below ch 7. Peter Karlen refers to Californian moral rights legislation as holding restorers and conservators liable for grossly negligent injury to a work: P Karlen, ‘Moral Rights and Collectors’ Art Law (January 2000). 42 [1993] EMLR 144. 40 41

Moral Rights and Droit de Suite 91 4.2.2 Tidy v The Trustees of the Natural History Museum and Another (1996)43 In Tidy—an application for summary judgment rather than a full trial—Bill Tidy, the well-known cartoonist, had drawn some cartoons of dinosaurs to be displayed at the Natural History Museum. In May 1993, a book was published that reproduced Tidy’s drawings in smaller dimensions (from 420 mm by 297 mm to 67 mm by 42 mm). Tidy made an application for summary judgment on the grounds that the reduced size amounted to a distortion (as opposed to a mutilation) of the drawings or was in any event prejudicial to his honour or reputation— ie, it was derogatory treatment under section 80 of the CDPA. The plaintiff contended that the reduction in size detracted from the visual impact of the cartoons; it would also lead people to believe he could not be bothered to re-draw the cartoons for the book, especially since he was given credit in the book for the drawings. In fact, the judge (Rattee J) was not prepared to grant summary judgment in Tidy’s favour in the absence of evidence as to whether the public considered the reproduction as affecting Tidy’s reputation. Nor was it clear beyond argument that the reduction in size was distortion of the original drawings. Counsel for Tidy referred to the Canadian Ontario High Court decision Snow v The Eaton Centre.44 In that case, legislative language comparable to the CDPA was considered, and the judge in that case held that the words ‘prejudicial to his honour or reputation’ involved a ‘certain subjective element or judgement on the part of the author so long as it is reasonably arrived at’. Rattee J held in Tidy that even if he accepted the Canadian principle, he would still have to be satisfied that the view held by the artist was a reasonable one; this inevitably involved applying an objective test of reasonableness. So evidence from the public as to how the reproduction affected Tidy’s reputation in their minds was required.

Ch D, Rattee J (29 March 1995), [1996] 3 EIPR D-81. 70 CPR (2d) 105: an injunction was granted to an artist to require the removal of ribbons from a sculpture of 60 geese known as ‘Flight Stop’. The sculpture was used by the defendants as part of a Christmas display. S 12(7) of the (Canadian) Copyright Act RSC 1970 provides that an author has the right to restrain any distortion or modification of his work prejudicial to his honour or reputation. 43 44

92 Art and Copyright 4.2.3 Pasterfield v Denham and Another (1999)45 Pasterfield was an action for infringement of copyright and of moral rights, and passing off, brought by two designers. In 1988 they had been commissioned to design two leaflets and a brochure by Plymouth City Council, the second defendant, to be used to promote the Plymouth Dome, a tourist attraction. They had designed pictures of a satellite, a formation of German bombers and a detailed cut-away drawing of the interior of the Dome with accompanying text. The leaflets and brochure were used by the second defendant between 1989 and 1993. In 1994 the second defendant commissioned the first defendant, Mr Denham, to update one of the leaflets used to promote the Dome. This new leaflet still contained copies of the satellite and bomber formation, as well as a smaller version of the cut-away drawing, with a number of alterations, including the omission of a number of features around the edges of the original drawing and a variation to the colouring of the artwork. Also added alongside the cut-away drawing were the words ‘Designed and Produced by Denham Design 0752 671787’. Around one million copies of this leaflet were produced and distributed by the City Council in 1994 and 1995. The plaintiffs’ claim for copyright infringement failed, as the judge held that the commission to design the drawings passed equitable title to the City Council, and even if this were not the case, there was an implied licence to allow the City Council to use the drawings to promote the Dome. Also, the passing off claim failed, as substantial numbers of the public were unlikely to be confused as to the origins of the drawings in the new leaflet produced by Mr Denham. The plaintiffs’ infringement of moral rights claim also failed. The judgment contained a discussion of the law here, citing the same Canadian case that was cited in Tidy and also the earlier English case Morrison v Lightbond. Also cited was the French Supreme Court (Cour de Cassation) case of Huston v Turner Entertainment (1991),46 in which the Court had held that colourising a black-and-white John Huston film, Asphalt Jungle, was a breach of the droit moral. But Tidy was not cited. The judge in Pasterfield held that for an infringement of the moral right of integrity, the artist must establish that the treatment accorded Plymouth County Court, His Honour Judge Overend (9–10 March 1998), [1999] FSR 168. 46 IIC Vol 23, 702. 45

Moral Rights and Droit de Suite 93 to his work is either a distortion or a mutilation that prejudices his honour or reputation as an artist. It is not sufficient that the artist is himself aggrieved by what has occurred. Nor is distortion or mutilation alone enough—it must be prejudicial to the artist’s honour or reputation.47 Considering the facts, the judge found that the variations in colour did not affect the honour or reputation of the plaintiff, Mr Pasterfield, as an artist: often there are colour variations when artwork is reproduced. In this case, they did not come anywhere near what the judge perceived to be the gross difference between a black-and-white film and a colourised version of the same film. Nor did any of the other differences, omissions and alterations amount to derogatory treatment. Indeed, the judge was critical of the plaintiffs’ expert, considering his evidence ‘seriously flawed’. 48

4.2.4 Confetti Records v Warner Music (2003)

Confetti Records involved music copyright and sound recordings; the treatment at issue involved adding a rap line and additional parts of another track to an existing recording. In considering the wording of section 80 of the CDPA and Article 6 bis of the Berne Convention, the judge came to the conclusion that in Article 6 bis, the author can object to distortion, mutilation or modification of his work only if it is prejudicial to his honour or reputation. He did not believe that the framers of the 1988 Act meant to alter the scope of the author’s moral rights in this respect, so he held that the mere fact that a work has been distorted or mutilated gives rise to no claim, unless the distortion or mutilation prejudices the author’s honour or reputation.49 In this case, there was no evidence relating to prejudice to the author’s honour or reputation, so on the facts, applying what appeared to be an objective test, the judge did not find any derogatory treatment.50

The judge quoted the second edition of Laddie (above n 28) as authority for this interpretation of s 80(2) in the absence (at that time) of a UK decision after full trial on what is meant by ‘derogatory treatment’. 48 [2003] EWCH 1274 (Ch). 49 Ibid, para 150 (per Lewison J). 50 Ibid, paras 145–62. 47

94 Art and Copyright 4.2.5 Conclusion: Derogatory Treatment in UK Law In the absence of a clear decision on the point in the High Court after full trial or indeed in the higher courts at all, there remains uncertainty as to what might amount to derogatory treatment—although it is clear there must be prejudice to the author’s honour or reputation. The textbook by Laddie et al is of the view that ‘the concept the Act appears to be aiming at is akin to libel but where the harmful act is not the speaking or publishing of untrue words but the derogatory treatment of the author’s or director’s work.’51 Applying the test in defamation law, the question becomes ‘Would right thinking members of the public think less of the author?’ Certainly, Tidy, Pasterfield and Confetti Records appear to stress an objective rather than subjective test. But the scope of derogatory treatment remains uncertain in UK law. For example, it has been argued that the destruction of a work of art is unlikely to infringe the right of integrity under the CDPA.52 Nor would the siting of a work of art in an unsuitable setting.53 If the interpretation of Article 6 bis of the Berne Convention is also considered, the stress is on derogatory action that would be prejudicial to the artist’s honour or reputation. The adjective ‘derogatory’ appears to imply a subjective standard, but this is made subject to the more objective criterion of prejudice to honour or reputation.54 Indeed, it has been argued that ‘honour’ and ‘reputation’ are more objective concepts, being analogous to the personal interests protected by the law of defamation.55 It is possible that at some point in the future the European Commission may propose a Directive to harmonise moral rights protection across Europe.56 Laddie, 2nd edn (above n 28) 1016. Ibid, on the basis that to interpret s 80 in this way would confuse the destruction of the physical embodiment of the work with the destruction of the work itself. 53 On the grounds that this would not be ‘treatment’: there is no addition to or deletion from the work, hence no treatment of it. See Laddie, 2nd edn (above n 28) 1015. 54 Ricketson (above n 2) 469. 55 Ibid, 471. Laddie, 2nd edn (above n 28) 1016 considers it likely that a UK court would, where possible, strive to interpret ‘treatment’ in such a way as to give effect to the requirements of the Berne Convention. 56 The need to consider harmonisation in this area in the context of digitisation was recognised by the European Commission’s 1995 Green Paper on ‘Copyright and Neighbouring Rights in the Information Society’ (COM(95), 382 final, 16 July 1995). In their 1996 follow-up paper, the Commission was of the view that the time was not right for concrete harmonisation initiatives but proposed to further study the development of 51 52

Moral Rights and Droit de Suite 95 4.3

MORAL RIGHTS IN THE UNITED STATES

Until 1990, the United States (at least at federal level) had no express enactment dealing with moral rights,57 although the US courts had at times offered protection for interests analogous to moral rights through the extension of common law rights or trade mark laws.58 Following the Visual Artists Rights Act (VARA) 1990, US copyright law was amended to give authors of certain specified art works the rights of attribution (ie, to claim authorship and to prevent false attribution) and integrity (which extends both to intentional distortion, mutilation or modification of a work that would be prejudicial to the artist’s honour or reputation and to any intentional or grossly negligent destruction of a work of recognised stature).59 An explanation of the reasons for the statute was given in its legislative progress in the House Reports: An artist’s professional and personal identity is embodied in each work created by that artist. Each work is part of his or her reputation. Each work is a form of personal expression (oftentimes painstakingly and earnestly recorded). It is a rebuke to the dignity of the visual artist that our copyright law allows distortion, modification and even outright permanent destruction of such efforts.60

this area with a view to determining whether existing disparities in national legislation present significant obstacles to exploiting copyright, most notably as regards the integrity of matter protected by copyright: ‘Follow-Up to the Green Paper on Copyright and Related Rights in the Information Society’ (COM(96), 568 final, 20 November 1996). See further the report commissioned by the European Commission (Study contract n° ETD/99/B5-3000/E°28) by A Strowel, M Salokannel and E Derclaye, ‘Moral Rights in the Context of the Exploitation of Works through Digital Technology’ (April 2000), which concluded there was no need for general harmonisation at EU level (225). This was also the position of a 2004 Commission Staff Working Paper (Brussels, 19.7.2004 SEC(2004) 995, para 3.5). At the time of writing (May 2011), harmonisation of moral rights does not appear to be a priority—it was not included as a key policy initiative in the recent Communication from the Commission to the European Parliament, the Council, the European Economic and Social Committee and the Committee of the Regions, ‘A Single Market for Intellectual Property Rights: Boosting Creativity and Innovation to Provide Economic Growth, High-Quality Jobs and First-Class Products and Services in Europe’ (Brussels, 24.5.2011 COM(2011) 287 final). 57 See generally Adeney (above n 1) ch 15. 58 Hansmann and Santilli (above n 1) 97. 59 See s 106A Copyright Act 1976. 60 HR Rep No 101-514 (1990), 15.

96 Art and Copyright VARA does not, however, meet the minimal protections sought by the Berne Convention.61 In particular, it applies only to works of ‘visual art’, ie: 1.

2.

a painting, drawing, print, or sculpture, existing in a single copy, or a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author, or, in the case of a sculpture, in multiple cast, carved, or fabricated sculptures of 200 or fewer that are consecutively numbered by the author and bear the signature or other identifying mark of the author; or A still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, or in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author.62

The requirement that to prevent the destruction of a work of visual art the work must be of ‘recognised stature’ has proved controversial and difficult to apply in practice; it goes against a guiding principle of Anglo-American copyright law noted above in chapter three that artistic merit is not in general a prerequisite for copyright protection.63 Certain US states have also enacted their own legislation to protect the moral right of integrity: California and New York are particularly noted in this regard.64 For example, the California Art Preservation Act 1979 prohibits intentional ‘defacement, mutilation, alteration or destruction’ of ‘fine art’. ‘Fine art’ is defined as including original paintings, sculpture, drawings, etc of ‘recognised quality’.65 As of 1997, See DuBoff and King (above n 13) 204. S 101 Copyright Act 1976. For example, reproductions of qualifying works and works destined for commercial purposes (eg, posters, works of applied art) are not covered: see C Joyce, W Patry, M Leaffer and P Jaszi, Copyright Law, 5th edn (New York, LEXIS, 2000) 637. 63 See, for example, Martin v City of Indianopolis, US Court of Appeals, 7th Cir 192 F.3d 608 (1999); and Carter v Helmsley-Spear, Inc, 861 F Supp 303 (SDNY 1994) and 71 F.3d 77 (2nd Cir 1995). The view taken by these cases is that ‘recognised stature’ (not defined by VARA) has two elements: (1) merit or intrinsic worth; and (2) a public acknowledgement of that stature by society or the art community. 64 See DuBoff and King (above n 13). Another state with a law in this area is Massachusetts, which enacted the Massachusetts Art Preservation Act in 1984. 65 This statute has been used to protect murals: it was reported in the Daily Telegraph (4 August 2000) that the artist Garth Benton sued Gordon Getty, son of the art collector J Paul Getty, because one of his murals in Getty’s home was painted over. The case was reportedly settled out of court: http://www.dematerialized.com/noartbulletinpage.html (accessed 4 June 2011). It was also invoked in a dispute involving the removal of a David Hockney mural in a hotel swimming pool in 1988: website of the Institute of Art and Law (Leicester), 24 August 2000, http://www.inst-of-art-and-law.co.uk. 61 62

Moral Rights and Droit de Suite 97 it was noted that at least 11 US states recognised moral rights in greater or lesser degree, notwithstanding VARA.66

4.4

ARTIST ’ S RESALE RIGHT

( DROIT

DE SUITE )

4.4.1 Background, Rationale and History The laws of a number of European and other countries have for decades recognised that artists have a right to receive a percentage of the sale price every time that one of their works is resold. This is the socalled droit de suite, or artist’s resale right.67 It can be debated what sort of intellectual property right it is: it is an economic right in that artists and their estates gain remuneration from its exercise, but it is also similar to a moral right, as it is inalienable (save by will/testamentary disposition or by inheritance laws), so an artist cannot waive, sell or transfer the right. It is also a right embedded in the physical embodiment of a work: the right applies to the resale of an object—the work of fine art in question—so its exercise also potentially involves a consideration of contract and sale of goods law to determine when the ‘resale’ in question takes place. So it can perhaps best be categorised as a sui generis right rooted in copyright law, with aspects of both economic rights and moral rights (as it is a personality right, given its inalienability).68 Hansmann and Santilli (above n 1) 97. According to Peter Karlen (ibid), VARA, a Federal statute, ‘generally preempts much of the various State moral rights statutes, particularly in relation to all those works of art and rights recognised under the Federal statutes. But State statutes still have a role to play in relation to works and rights not covered under [VARA]. Only an individual analysis of each situation will determine whether [VARA] controls or whether state law applies.’ 67 This section is a summary of this area; for a more detailed treatment of the right, the reader is referred to S Stokes, Artist’s Resale Right: Law and Practice (Leicester, Institute of Art and Law, 2006) and to the works cited in that work, in particular, L de Pierredon-Fawcett, The Droit de Suite in Literary and Artistic Property: A Comparative Law Study (New York, Center for Law and the Arts, Columbia University, 1992), which remains the best international analysis of this area, if now inevitably rather out of date. 68 The German Federal High Court in the Joseph Beuys case called it a participation right sui generis, rooted in copyright law (BGH NJW 1994, 2889); but see also D Booton, ‘A Critical Analysis of the European Commission’s Proposal for a Directive Harmonising Droit de Suite’ (1998) 2 Intellectual Property Quarterly 165–91. Joerg Wuenschel goes as far as to say, ‘European droit de suite has no precise legal character and follows only that copyright system in which it is introduced’: J Wuenschel, ‘Artists’ Resale Right: Dalí’s Royalties’ (2010) 5(8) Journal of Intellectual Property Law & Practice 555–56. 66

98 Art and Copyright Indeed, the right is divorced from the ownership of copyright in the fine art object: an artist may have assigned their copyright in the work to someone else, but he would still be entitled to the resale right. Moreover, the right applies only to a subset of ‘artistic works’—those fine art objects (typically original works of ‘graphic or plastic art’) that are themselves protected by copyright, although such a definition can be considered anachronistic. For example, the paintings of Gilbert and George qualify for the right; their video works do not. An artist who works solely in electronic media likewise has no rights, as she will not have created a physical embodiment of the original work that can be bought and sold.69 As we will see, the ambiguity in the legal basis of the right gives rise to a number of issues, not least how the right should be applied when there is an international aspect—either to its exercise or how it should be treated on the death of the artist. Looking at the reasons for the right, artists, the argument goes, may have had to sell their works cheaply when young and unknown and should be able to share in the profits made by art dealers once they achieve fame. In particular, the spectre of an artist’s wife and children begging in the gutter following the untimely death of the artist was advanced to justify the introduction of droit de suite in France: the artists Millet and Dégas, among others, were invoked in this regard.70 The right, it is argued, puts artists on a par with writers and composers, who may continue to earn royalties on the use of their works throughout their term of copyright. Indeed, it can be argued that the main source of income for an artist absent droit de suite is the first sale, unlike other copyright works where the reproduction right is of greater importance. So droit de suite can help to make artists’ exploitation of their work more effective and to redress the imbalance with other classes of work.71 An American lawyer, Donald Millinger, has put the case for droit de suite as follows: The argument against video or electronic works benefiting from the right is practical—they are not physically embodied as fine art works (granted that a video installation might be if it were classed as a sculpture); moreover, the artist in question is able to fully exploit the work by licensing its exploitation, much in the same way as authors and composers do for their literary and musical works, so the right is unnecessary. 70 Ricketson (above n 2) 410–11. For example, the wife of the Impressionist JeanFrancois Millet was left in penury, while his paintings sold for millions: ‘Artists Campaign for EU to Drop Royalties Plan’ Sunday Telegraph (26 November 2000). 71 Ricketson (above n 2) 412. 69

Moral Rights and Droit de Suite 99 [T]he fine artist shares none of the gain, if his work is resold for a large profit. The fine artist’s economic position thus compares unfavourably with the position of authors or composers who, as their work increases in popularity and value, receive a continuous and increasing source of income from royalty rights. [The American artist’s profit, if any, comes on the initial sale. Because the artist’s bargaining power is minimal and his sense of business acumen often is less than his buyer’s, the work is frequently sold at a low price.]72

Others see droit de suite as an acknowledgement by society of merits of artistic creativity.73 It can also be seen as an incentive to artistic creativity.74 Finally, it can be argued that matters of fairness are paramount here: it is simply right and just that artists should share in the exploitation of their works by whatever means. Nevertheless, droit de suite has its critics. It has been argued that it makes little economic sense in practice.75 It is also argued that, absent harmonisation with, for example, New York law, the UK art market will simply shift from London to countries with no or weak versions of droit de suite, such as New York or Switzerland.76 It has also been stated that once the United Kingdom has droit de suite, there will be an anomaly in that an artist will get no financial benefit when the copyright in a work, as opposed to the work itself, is resold. Yet the value of the copyright in such works is often rising steeply, given the increased opportunities for exploitation based on the Internet and character merchandising.77 It can also be argued that the right is embodied in bourgeois notions of what a work of art is; poses numerous practical difficulties and costs Millinger wrote this in the context of a plea for greater copyright/moral rights protection generally for fine artists in the US. His article pre-dates VARA: DM Millinger, ‘Copyright and the Fine Arts’ (1980) 48 George Washington Law Review 354, 376. 73 For example, the European Parliament. 74 When the right was introduced in the UK this was one of the points made by the government—the Regulations implementing the right ‘ensure a just reward for living British artists’ creativity . . . [and] will benefit struggling artists’: Lord Sainsbury, UK Patent Office Press Release (14 February 2006). 75 It is fair to say that economists have analysed the right in some detail in a number of countries. A number of studies highlight that it interferes with the art market (by encouraging works to be sold in non-droit de suite states); depresses the price of works and so arguably acts as a disincentive to create new works and for dealers to deal in works that attract the right; and also benefits a limited number of artists (see Stokes (2006) (above n 67) 7–8). Having said that, some studies are more positive: see comments below regarding the UK experience of implementing the right. 76 The British Art Market Federation frequently makes this point. 77 See JN Adams, ‘The United Kingdom’s Droit de Suite’ in IA Stamatoudi and PLC Torremans (eds), Copyright in the New Digital Environment, vol 8 of the Perspectives on Intellectual Property series (London, Sweet & Maxwell, 2000) 117. 72

100 Art and Copyright in terms of its administration and collection, particularly in an international context; and potentially has a distorting effect on the international trade in art. Moreover, in the twenty-first century, artists are well able (through collecting societies such as the UK Design and Artists’ Copyright Society (DACS)) to exploit and license their copyrights in ways undreamed of a hundred or so years ago when the right first emerged. Its application after an artist’s death can also be queried: artists these days seem able to achieve fame and fortune early and need support at the very early stages of their career, not a type of social security to their heirs after death. In any event, the right appears to benefit disproportionately the estates of successful dead artists whose works achieve the highest prices at auction. Certainly, statistics from Germany and France, where the right is well established, suggest that only a limited number of artists benefit from the right; the majority receive only modest sums.78 Finally, some artists also oppose it because they believe it damages the art trade in general and hence the market for their work. They also argue it acts as a restraint on what happens to their works on their death.79 The right of resale was first introduced in France in 1920, and for this reason it is often referred to as droit de suite (literally, ‘right of following’). Droit de suite is dealt with in Article 14 ter of the Berne Convention: 1.

2.

3.

The author, or after his death the persons or institutions authorized by national legislation, shall, with respect to original works of art and original manuscripts of writers and composers, enjoy the inalienable right to an interest in any sale of the work subsequent to the first transfer by the author of the work. The protection provided by the preceding paragraph may be claimed in a country of the Union only if legislation in the country to which the author belongs so permits, and to the extent permitted by the country where this protection is claimed. The procedure for collection and the amounts shall be matters for determination by national legislation.

See ‘Fifteen-Year Reprieve for the UK’ The Art Newspaper (April 2000) 1: ‘In France, between 1993 and 1995, of the 2,000 artists and their heirs who benefited from droit de suite, a mere 2–3% (which includes, for example, the heir of Picasso) received 43% of the sum collected. The remainder got an average of FFr3,000 (£300; $470), from which had to be deducted the 20% levy of the collecting agency.’ 79 Ibid. 78

Moral Rights and Droit de Suite 101 As can be seen, droit de suite can be claimed only in those countries whose legislation provides for it and only on the basis of reciprocity. Austria, the Netherlands, Ireland and the United Kingdom were the only Member States of the European Union that did not recognise this right prior to 2006, although in practice it was not enforced by a number of the others. In contrast, in the United States, only California has a right akin to droit de suite.80 4.4.2 EU Harmonisation On 25 April 1996, the European Commission presented the European Council with a proposal for a European Parliament and Council Directive to harmonise national laws relating to artist’s resale right.81 The Commission’s argument for harmonisation was that the differing provisions for artist’s resale right between the various member states give rise to anomalies that distort sales in the Internal Market. For example, if an English artist were to sell his work in, say, Germany, he would have the right to claim five per cent of the sale price as a royalty.82 On the other hand, if a German artist sold his work in London, no such royalty is payable to him.83 Also, the legislation of the 11 Member States that did at that time recognise artist’s resale right had marked differences as regards the works covered, the people entitled to receive payment, the rate applied and the basis of assessment. The aim of the 1996 proposal was to harmonise the legislation of all Members States. The legislative progress of the proposal was complex, if not tortuous and inevitably the subject of political compromise. But in 2001, a Directive on this area was finally adopted: Directive 2001/84/ EC on the Resale Right for the Benefit of the Author of an Original DuBoff and King (above n 13) 218–21. Proposal for a European Parliament and Council Directive on the resale right for the benefit of the author of an original work of art (presented by the Commission), COM(96) 97 final. 82 This derives from the principle of non-discrimination: a Member State cannot treat nationals of other Member States less favourably than its own nationals. See joined cases C-92/92 and C-326/92 Phil Collins and Others [1993] ECR I 5145. 83 In a German case, three works by the late contemporary artist Joseph Beuys were sold in London. Even though buyer and seller were both German, Joseph Beuys’ heirs did not receive any royalties: BGH, judgment of 16 June 1991, I ZR 24/92, GRUR 1994, 798. The European Commission’s calculations show that out of a sale price of £462,000 (DM1,418,340), art dealers saved about DM71,000. See case note [1995] 4 EIPR D-94. 80 81

102 Art and Copyright Work of Art.84 How far it is a true harmonisation measure can be debated, as it contains an unusually large number of options, opt-outs and derogations. The Directive is primarily a harmonisation measure (see in particular Recital 15).85 At the time of its adoption, the United Kingdom, Ireland, Austria and the Netherlands did not have the right at all. Also, Italy and Luxembourg did not enforce the right. The Recitals of the Directive specifically refer to the need to harmonise the following aspects of the right: s 4HEDURATION.OWYEARSpost mortem auctoris, the same as the copyright term) (Recital 17) s 4HE ACTS OF RESALE TO WHICH THE RIGHT APPLIES !LL ACTS OF RESALE except those effected directly between persons acting in their private capacity without the participation of an art market professional. Also excepted are acts of resale where not for profit museums open to the public acquire works from persons acting in their private capacity.) (Recital 18) s 4HECATEGORIESOFWORKSOFARTSUBJECTTOTHERESALERIGHT2ECITAL 21) s 4HEROYALTYRATES2ECITAL The main provisions of the Directive are summarised below. Artist’s Right to a Royalty: Article 1(1) and 1(2) An artist has the right to receive a royalty based on the price obtained for any resale of an original work of art then in copyright, subsequent to the first transfer by the artist. The right applies to all acts of resale ‘involving as sellers, buyers or intermediaries art market professionals For a discussion of the legislative background, see the previous editions of this book; and Stokes (2006) (above n 67) ch 2. The legal basis of the Directive as a harmonising measure has been criticised: J Wuenschel, ‘Article 95 EC Revisited: Is the Artist’s Resale Right Directive a Community Act beyond EC Competence?’ (2009) 4(2) Journal of Intellectual Property Law & Practice 130–36. 85 For a discussion and commentary on the Directive, see H Vanhees in T Dreier and B Hugenholz (eds), Concise European Copyright Law (Alphen aan den Rijn, Kluwer Law International, 2006) 405–21; and Stokes (2006) (above n 67). For an analysis of its implementation in a number of EU states, see K Lubina and H Schneider, ‘Taking Stock of the Implementation of the European Directive 2001/84/EC on Droit de Suite’ in B Demarsin et al (eds), Art & Law (Brugge, die Keure, 2008) 292–316; Stokes (2006) (above n 67) ch 6; and S Stokes, ‘Implementing the Artist’s Resale Right (Droit de Suite) Directive into English Law’ (2002) Entertainment Law Review 153. 84

Moral Rights and Droit de Suite 103 such as salesrooms, art galleries and, in general, any dealers in works of art’ (Article 1(2)). The right is inalienable and cannot be waived even in advance. Excluded Sales: Recital 18 and Article 1(3) The right does not apply to resale between individuals acting in their private capacity, without the participation of an art market professional; nor to resale by persons acting in their private capacity to museums that are not-for-profit and are open to the public. Member States are able also to exclude sales where the seller has acquired the work directly from the artist less than three years before that resale and where the resale price does not exceed €10,000. Classes of Eligible Work: Recitals 1–3; Article 1(1) and Article 2 The Recitals to the Directive stress that droit de suite is an integral part of copyright and applies to original graphic and plastic works of art, and the subject matter of the right is the physical work—namely, the medium in which the copyright work is incorporated. The right is to ensure that artists share in the economic success of their original works of art. It is to redress the balance between the economic situation of authors of graphic and plastic works of art and that of other creators who benefit from successive exploitations of their works. (For example, a novel is typically published in return for a royalty and further sums may be due, eg, if the work is serialised or made into a film.) According to Article 2(1), an ‘original work of art’ means: works of graphic or plastic art such as pictures, collages, paintings, drawings, engravings, prints, lithographs, sculptures, tapestries, ceramics, glassware and photographs, provided they are made by the artist himself or are copies considered to be original works of art.

Also within this definition are copies of works of art made in limited numbers by the artist himself or under his authority. This is on the basis that such copies will normally have been numbered, signed or otherwise duly authorised by the artist.

104 Art and Copyright Liability to Pay: Article 1(4) Member States are able to decide whether royalty is payable by the seller or by the art market professional involved in the sale or whether liability is shared between these persons. Royalty Calculation: Articles 3–5 Member States can decide the threshold or minimum sale price above which the right must apply, although this cannot exceed €3,000. The total amount of royalty payable is in any event limited to €12,500. The royalties are based on bands: 4% (or 5% if Member State chooses) for the portion of the sale price up to €50,000; 3% for the portion of the sale price from €50,000.01 to 200,000; 1% for the portion of the sale price from €200,000.01 to 350,000; 0.5% for the portion of the sale price from exceeding €350,000 to 500,000; 0.25% for the portion of the sale price exceeding €500,000. All sale prices are net of tax. Persons Entitled to Receive Royalties/Collective Management: Article 6 An artist is to be paid royalty, and after his death, it is to be paid to those entitled under him. Note that the details of how the right is to be dealt with on death are left to the Member States under their own succession laws (Recital 27 and Article 6(1)).86 Member States may also allow or require artists’ and other collecting societies (eg, DACS in the UK ) to administer the right. This must be done in a transparent and efficient manner. Member States must also ensure that amounts intended for authors who are nationals of other Member States are collected and distributed (Article 6(2) and Recital 28). This will inevitably lead to interesting issues of conflict of laws when an artist is a national of one state that (as is likely to be the case) has different succession laws to another state where the right is claimed, and the law applying to testamentary dispositions under a will under the law of that state conflicts with those in another state (eg, France, which may limit the right to heirs and not allow freedom of testamentary disposition by the artist). Indeed, this issue has arisen early on in the life of the Directive, and the ECJ has already had to get involved with the issue; but in the end, the Court has left the matter to Member States, as Art 6(1) clearly requires. See Fundación Gala-Salvador Dalí and Visual Entidad de Gestión de Artistas Plásticos (VEGAP) v Société des auteurs dans les arts graphiques et plastiques (ADAGP) and Others, Case C-518/08, Judgment of the Court (Third Chamber) of 15 April 2010; and Wuenschel (2010) (above n 68). For a discussion of art and testamentary disposition, particularly in the context of moral rights, see C Declerck, ‘Art as the Subject of the Will’ in Demarsin et al (eds) (ibid) 454–65. 86

Moral Rights and Droit de Suite 105 Reciprocity: Article 7 An artist who is not a European national is entitled to the right only if his or her home state permits European Union nationals also to benefit from the resale right. The European Commission is to publish an indicative list of third countries that fulfil the condition for reciprocity. The European Union is also to press for Article 14 ter of the Berne Convention (which provides for the resale right) to be made compulsory (Recital 7). Term of Protection of Resale Right/Implementation: Articles 8 and 12 The right lasts for the duration of the copyright term—ie, until 70 years from the death of the artist.87 It must be implemented by 1 January 2006. As far as the United Kingdom is concerned (as well as for other Member States that did not have the right as of 13 October 2001), the right did not need to come into force until 1 January 2010, with a possible further extension to 1 January 2012, in respect of those entitled to royalty following the artist’s death. Right to Information: Article 9 Artists and any collecting society will have a right to information from the relevant art market professional to enable them to collect royalty, for up to three years following resale. Final Provisions: Chapter III The European Commission is to regularly review the operation of the Directive and may propose revisions to enhance the effectiveness of the Directive. As of February 2011, the European Commission was preparing a report on the implementation and effect of the Directive, as provided for in Article 11. In order to prepare this report, the Commission was at that time seeking evidence-based information and views from interested parties.88 Directive 93/98/EC, Art 1. Consultation on the implementation and effect of the Resale Right Directive (2001/84/EC) (from 07.01.2011 to 11.03.2011). The Commission had been due to report to the European Parliament, the Council and the Economic and Social Committee on the implementation and effect of the Directive by 1 January 2009, but this had not been done as of February 2011 (Directive 93/98/EC, Art 11). 87 88

106 Art and Copyright Conclusion At a mere five pages, this Directive is one of the shorter copyright Directives; and its shortness—arguably the result of political compromise—leaves certain areas open, either for different Member State implementations or for the courts to rule on in due course. Areas for debate under the Directive include the scope of its application (eg, to prints/limited edition works, works of applied art and new media works, as opposed to what is generally understood as ‘fine art’) and how cross-border sales should be dealt with (eg, a sale made between parties in different Member States or for export outside the European Economic Area), as the Directive is silent on these issues.89 4.4.3 UK Implementation of the Resale Right Directive90 The United Kingdom implemented artist’s resale right (ARR) through the Artist’s Resale Right Regulations 2006,91 which came into force on 14 February 2006, shortly after the 1 January 2006 deadline set by Article 12 of the Directive. In the main, the Regulations follow the Directive,92 but in light of the options available to the United Kingdom under the Directive, the key features of the Regulations are that: 1. The sale price threshold at which ARR applies is €1,000 (Regulation 12(3)), and the initial royalty rate is set at 4% (Regulation 3(3) and Schedule 1). 2. The right does not apply to art works bought by the seller from the artist within three years of their sale and sold for no more than €10,000 (Regulation 12(4)). 89 For detailed consideration of this area, see the analysis by M Weller, ‘International Aspects’ in Stokes (2006) (above n 67) ch 6; and P Valentin, ‘Droit de Suite’ (2006) European Intellectual Property Review 268–75. 90 For a discussion of the UK implementation, see C Lewis, ‘Implementing the Artist’s Resale Right Directive’ (2007) 2(5) Journal of Intellectual Property Law & Practice 298– 304; Stokes (2006) (above n 67) ch 4; and J Cave, ‘An Overview of the European Artist’s Resale Right Directive 2001/84/EC and its Implementation in the UK via the Artist’s Resale Right Regulations 2005’ (2006) 1(4) Journal of Intellectual Property Law & Practice 242–46. 91 SI 2006/346. 92 The English courts will tend to look to the Directive anyway in applying the law (subject to any options the UK has, as described in the Regulations). See Stokes (2006) (above n 67) ch 4; and the trenchant comments of Jacob LJ in, eg, British Horseracing Board v William Hill [2005] EWCA Civ 863, para 8.

Moral Rights and Droit de Suite 107 3. 4. 5.

The right has to be collected through a collecting society, and if the artist does not choose one, DACS is mandated to act (Regulation 14). The right does not apply to the sales of the work of deceased artists until 1 January 2012 (Regulation 17).93 The persons liable to pay the right are the following, who are jointly and severally liable: a) b)

6.

the seller; and ‘the relevant person’—ie, a person who is acting in the course of a business of dealing in works of art and who is: a. the agent of the seller; or b. where there is no such agent, the agent of the buyer; or c. where there are no such agents, the buyer (Regulation 13). As noted above, it is for Member States to decide how ARR is to be dealt with on the artist’s death. The UK Regulations provide that ARR is transmissible as personal or moveable property by testamentary disposition or in accordance with the rules of intestate succession, but only to a natural person (ie, an individual, not a corporation or similar entity) or to a ‘qualifying body’.94 Also, it may be further so transmitted by any person into whose hands it passes (Regulation 9(1)). So there are restrictions on how ARR can be dealt with on death. Where the artist in question died before 14 February 2006 and at the time of her or his death was a ‘qualifying individual’,95 then certain transitional provisions apply to assist in determining who can exercise the right following the artist’s death (Regulation 16). Note that ARR is payable only on a resale subsequent to the first transfer of ownership by the author (Regulation 3(1)), so determining if the first transfer of ownership by the artist has occurred prior to the sale in question is crucial. Sales by the artist of their works whilst they are alive do not therefore attract ARR; nor does a

Reg 17, as amended by the Artist’s Resale Right (Amendment) Regulations 2009/2792. 94 A ‘qualifying body’ is a body that is (a) a charity within the meaning of s 96(1) of the Charities Act 1993 or s 35 of the Charities Act (Northern Ireland) 1964; (b) a Scottish charity; or (c) a foreign charity and has its central administration in an EEA state or a country listed in Sched 2, which lists states whose nationals benefit from UK ARR. 95 This is a natural person who is an EEA national or a national of a country listed in Sched 2 of the Regulations. 93

108 Art and Copyright bequest by the artist in her or his will (or under intestate succession), and nor does the disposal of the work by the artist’s personal representatives as part of the administration of the artist’s estate or by an official receiver or trustee in bankruptcy for the purposes of realising the artist’s estate (Regulation 3(5)). However, when a person who has inherited a work from the artist comes to sell it, then ARR is potentially chargeable on that sale, as this will be a resale subsequent to the first transfer of ownership by the artist. Practical Aspects of ARR in the United Kingdom Chapter seven below contains some practical guidance on the application of ARR in the United Kingdom, with primarily art dealers and auctioneers in mind. As artists can collect the right in the United Kingdom only through collecting societies, artists are referred to the practical guidance issued by the UK collecting societies in this area. Impact of ARR in the United Kingdom ARR took effect in the United Kingdom in 2006. DACS is the largest collecting society in this area, and as of September 2010, it had reported that it had paid in total since 2006 over £10.5 million in ARR payments to over 1,800 visual artists. The median payment is £360. DACS have also commented that it is estimated that resale royalties will generate £15 million per annum post-2012 for artists and their estates. DACS are also firmly of the view that: Since the introduction of the ARR in 2006, there has been no evidence that it has had a negative impact on the UK art market. In fact, the British art and antiques market generated £7.7 billion in sales in 2009.96 For DACS data and its comments, see its evidence to the Parliamentary Culture, Media and Sport Committee (Funding of the Arts and Heritage), September 2010. DACS have been consistent on this point, based on their data and also commissioned research. See, eg, their paper entitled ‘DACS’ Submission to the Government Consultation on Artist’s Resale Right: The Derogation for Deceased Artists’, September 2008. The initial impact on the UK art market of the right (called ARR for ‘Artist’s Resale Right’) was also analysed in K Graddy, N Horowitz and S Szymanski, A Study into the Effect on the UK Art Market of the Introduction of the Artist’s Resale Right (London, IP Institute, 2008), and the conclusion was: ‘There is no evidence that ARR has diverted business away from the UK, where the size of the art market has grown as fast, if not faster, than the art market in jurisdictions where ARR is not currently payable. There is no evidence that ARR has reduced prices, as prices have appreciated substantially for art eligible for ARR, and 96

Moral Rights and Droit de Suite 109 DACS have also provided more recent data to the 2011 EC Consultation on the Implementation and Effect of the Resale Right Directive.97 The UK art market in the main continues to take a different view, viewing the extension of ARR to the estates of dead artists in the United Kingdom from 2012 with considerable alarm, with fears of a significant adverse effect on the UK art market.98 International Developments The Directive commits the European Union to promote the international harmonisation of droit de suite via the Berne Convention (Recital 7), with a view to making Article 14 ter of the Convention compulsory. So far, the three other major world art markets outside of London (China, Switzerland and New York) show no sign of having the right. Australia has, however, recently implemented the right.99

faster than in markets where ARR is not currently payable.’ Contrast this with T Froschauer, The Impact of Artist Resale Rights in the United Kingdom (London, Antiques Trade Gazette, 2008), which highlights uncertainty in the art market in the application of the right, the costs to the art market from the right, that fewer artists than expected had benefited from the right, and that the top 10 per cent of artists had shared out about 80 per cent of the ARR collected, signs of an adverse impact on dealers in taking on younger artists and, most significantly, concerns about the extension of the right to deceased artists from 2012, when many more works will come within ARR’s ambit, increasing the administrative and associated costs on the art market. (Graddy et al (above) estimate a fourfold increase.) DACS in their 2008 submission included in Appendix 3 a critique of the Froschauer study by European Economics. 97 2001/84/EC, Submission, March 2011. The EC Consultation is due to report in October 2011: Communication from the Commission to the European Parliament, the Council, the European Economic and Social Committee and the Committee of the Regions, ‘A Single Market for Intellectual Property Rights Boosting Creativity and Innovation to Provide Economic Growth, High-Quality Jobs and First-Class Products and Services in Europe’, Brussels, 24.5.2011COM(2011) 287 final, 3.3.8. 98 ‘Resale Right 2012 Extension Risks Thousands of Jobs’ Antiques Trade Gazette (5 July 2010). 99 Resale Royalty Right for Visual Artists Act 2009 (No 125, 2009). The right commenced operation on 9 June 2010. See M Cahill Pettengill, ‘Australia Joins droit de suite Scheme: Latest Sign-Up Reignites Controversy as UK Anticipates End of “70 Years” Exemption’ (June 2010) 214 The Art Newspaper; and ‘Australian Dealers and Auctioneers Launch Fight against Resale Right’ Antiques Trade Gazette (12 February 2011). For more information, see the website of the Copyright Agency Limited, which is mandated to administer the right for an initial period of five years: http://www.resaleroyalty.org.au.

5

Art and the Internet: Copyright, Related Rights and Digitisation

T

of copyright is frequently considered to represent a balance between conflicting interests: an author’s economic/ monopoly rights and the need in a liberal society for access to information. Digital technology poses challenges to this balance. This chapter explores some of the issues of special relevance to art.1 he modern law

5.1 

copyright in digital and digitised works

5.1.1  Digital Works There is no doubt, at least under UK and EU law, that copyright can protect digital art works—by this is meant on-screen computer graphics and displays, as well as still images. So for example, a computer graphic user interface (GUI) is potentially protected as a copyright work and can be protected, according to the European Court of Justice, if it is ‘its author’s own intellectual creation’.2 In the United Kingdom, 1   For further discussion of the impact of digitisation on copyright law, see IA Stamatoudi and PLC Torremans (eds), Copyright in the New Digital Environment, Vol 8 in the Perspectives on Intellectual Property series (London, Sweet & Maxwell, 2000). For discussion of art and digitisation, see S Stokes, ‘Art, Digitisation and Copyright: Some Current Issues’ (1998) Art, Antiquity and Law 361, upon which part of this chapter is based. 2  Case C-393/09 Bezpecˇ nostní softwarová asociace – Svaz softwarové ochrany v Ministerstvo kultury, 12 Dec 2010, para 51. This copyright is distinct from the copyright protecting the computer program itself under the Software Directive (Directive 91/250): para 42. The Court noted that a national court (when determining whether a work is an author’s ‘intellectual creation’) must take account, among other things, of the specific arrangement or configuration of all components that form part of the graphic–user interface (GUI) in order to meet the creation of originality: ‘In that regard, that criterion cannot be met by components of the graphic user interface which are differentiated only by their technical function’ (para 48). See also below ch 6, s 6.6. Under UK law, the

112  Art and Copyright computer graphics have also been protected as artistic works. For example, a UK court has found GUIs, as well as computer icons, to be potentially protected by copyright: GUI screens are artistic works. They are recorded as such only in the complex code that displays them, but I think that this is strictly analogous to more simple digital representations of graphic works. The code constructs the screen from basic elements, and is so arranged to give a consistent appearance to the individual elements. I think, nonetheless, that to arrange a screen certainly affords the opportunity for the exercise of sufficient skill and labour for the result to amount to an artistic work. I consider that the GUI screens satisfy this requirement. There is force in the suggestion that they present a uniform appearance in layout of the elements, and so contribute to a uniformity of interface. On the whole this is sufficient skill and labour to entitle the screens sued on to artistic copyright.3

Films and video content are discussed separately in this book (eg, in chapter six), but they are clearly protected—as films, not through artistic copyright under section 4(2) of the Copyright, Designs and Patents Act (CDPA) 1988 (as they contain moving images). As Lord Justice Jacob has commented when he denied protection for a sequence of moving images as an artistic work in the context of a video game, ‘Graphic work’ is defined as including all the types of thing specified in s 4(2) [CDPA] which all have this in common, namely that they are static, nonmoving. A series of drawings is a series of graphic works, not a single graphic work in itself. No one would say that the copyright in a single drawing of Felix the Cat is infringed by a drawing of Donald Duck. A series of cartoon frames showing Felix running over a cliff edge into space, looking down and only then falling would not be infringed by a similar set of frames depicting Donald doing the same thing. That is in effect what is alleged here. This reasoning is supported by the fact that Parliament has specifically created copyright in moving images by way of copyright in films.4 assumption is that a GUI, if protected, would be an artistic work. See also Navitaire v Easyjet Airline Co and Anor [2004] EWHC 1725 (Ch). 3   Navitaire (ibid) paras 97–99. Software copyright is outside the scope of this text. Readers are referred, eg, to S Stokes, Digital Copyright: Law and Practice, 3rd edn (Oxford, Hart Publishing, 2009) ch 6. Some interfaces will not be protected as copyright works because they are simply ideas underlying the interfaces of software. See, eg, Navitaire (ibid) paras 97–99; and Art 1(2) Software Directive. In Nova Productions Ltd v Mazooma Games Ltd [2007] EWCA Civ 219 it was assumed that the individual images (frames) displayed to the user of a video game were artistic works protected by copyright: ‘It was common ground that the individual frames stored in the memory of a computer were “graphic works” within the meaning of the Act’ (para 12) (per Jacob LJ)), but there was no separate copyright in the sequence of frames displayed. 4   Nova Productions (ibid) paras 16 and 17.

Art and the Internet   113 5.1.2  Digitised Works Is it also the case that a separate copyright can subsist in a digitised work, distinct from the copyright in the original work, just as there can be a separate copyright in a photograph of a painting, distinct from the copyright in the painting itself?5 It is submitted that if the digitised image is taken using a digital camera, then the skill and labour used by the photographer would appear to qualify the digital image as an ‘original’6 photograph for copyright purposes, and therefore it ought to qualify for copyright protection: there is clearly no difference in using an ordinary camera except the technology of reproduction.7 However, if the digitised image is made simply by scanning a photograph using a digital scanner, it is hard to see how the image can itself benefit from copyright protection: no originality at all is expended in creating the scanned image; it is analogous to a Xerox copy.8 However, if the scanned image were then to be digitally enhanced or manipulated, this may well qualify the digitised image for separate copyright protection. An issue then will be whether the enhancement was carried out by a person using, for example, a mouse button and relevant software. In this case, provided that person used sufficient originality, the copyright in the enhanced image should vest in that person—ie, we are talking here about a computer-aided work rather than a computer-generated work. Alternatively, the digital image may have been created automatically without manual intervention and is therefore a computer-generated work.

5.2 

copyright and computer - generated works

Interesting questions arise in the context of computer-generated art works. It is important first to distinguish between ‘computer-generated’ 5   Graves Case (1869) LR 4 QB 715, 723. See discussion of photographs as artistic works protected by copyright above in ch 3 and below in ch 6. 6   As discussed above in ch 3, the term ‘original’ does not mean new or novel; it refers to the fact that a work must originate from its author. Originality requires an element of independent skill, labour or judgement to produce the copy. 7   To recap: s 4(2) CDPA defines a ‘photograph’ as ‘a recording of light or other radiation on any medium on which an image is produced or from which an image may by any means be produced, and which is not part of a film’. 8  See The Reject Shop v Manners [1995] FSR 870.

114  Art and Copyright and ‘computer-aided’ works. Computer-aided works do not receive special treatment under the CDPA. This is the case when a work is largely generated by a human author, although a computer is used incidentally in order to facilitate the task (eg, a book written using a word processing program running on a computer, which functions as a labour-saving tool). Section 178 of the CDPA defines a computer-generated work as one generated by a computer in circumstances such that there is no human author of it. Provided it is original and satisfies the other relevant criteria for copyright protection discussed earlier, a computer-generated work can benefit from copyright protection. However, the interesting question is who the author of the work for copyright purposes is. Section 9(3) of the CDPA provides that in the case of a computer-generated work, the author shall be taken to be ‘the person by whom the arrangements necessary for the creation of the work are undertaken’. It is a point of debate as to what precisely is meant by these ambiguous words. It is certainly not clear how conflicting claims between several programmers, data providers and systems operators can be resolved. In a decision under the predecessor to the 1988 Act, Express Newspapers plc v Liverpool Daily Post & Echo plc,9 the court ruled that the author of grids of letters produced with the aid of a computer for use in prize draws was the programmer who wrote the relevant software. Contrary arguments were rejected by Whitford J: The computer was no more than a tool. It is as unrealistic [to suggest that the programmer was not the author] as it would be to suggest that, if you write your work with a pen, it is the pen which is the author of the work rather than the person who drives the pen.

In Express Newspapers the nexus between one person and the finished work was close, as the programmer was also the person who ran the program and checked the results. If the nexus is less close, disputes are likely to arise where a number of competing individuals claim to have ‘made arrangements necessary for the creation of the work’.

  [1985] 1 WLR 1089.

9

Art and the Internet   115 5.3 

transitory copying and the internet

When a copyright work, say a photograph of a painting (‘Work’), is scanned into computer memory using a digital scanner, the Work will be copied; and if the Work is in copyright, this will amount to an infringement.10 Once in electronic form, numerous further copies of the Work can be made, for example onto floppy disk, hard disk, universal serial bus (USB) stick, compact disc (CD) and so on; they would also infringe copyright under the CDPA. Moreover, transitory copies of the work will be made: for example, if the work is viewed on a screen, a copy of the work will be made in the computer’s randomaccess memory (RAM). Both this copy and, it appears, the on-screen ‘copy’ will infringe copyright.11 Furthermore, if the electronic copy of the Work is uploaded onto a computer server (itself an act of copying) that is then accessible on the World-Wide Web, a person browsing the Web would, through instructions sent by that person’s computer, download a copy of the work into RAM in his machine—again an act of copying; and the person uploading it would be communicating it to the public. Indeed, as one author has succinctly put it, ‘the Internet works by copying.’12 The Internet is a global computer network that allows computers worldwide to talk to each other. A viewer’s (‘browser’s’) computer transmits a request to a server computer holding the website that is being browsed to forward a copy of some particular material that the server is storing. This material is not passed directly to the viewer’s computer; it is broken into packets and sent across the Internet, passing from one computer on the Internet to another, each of which could be 10   S 16 CDPA. Again, to recap, to infringe a copyright work by copying it one must, without licence of the copyright owner, reproduce at least a substantial part of it in any material form. See also below ch 6, s 6.2. 11   A copy is made by reproducing the whole or any substantial part of the work in any material form. Certainly, the act of calling work up onto a screen will normally involve reproduction in the memory of the computer, which will amount to copying. In addition, reproduction includes storing the work in any medium by electronic means (s 17(2) CDPA) and also includes transient/temporary copies (s 17(6) CDPA; and Art 2 of the Information Society Directive) so even displaying an image on a TV or computer monitor can amount to copying by reproduction in material form. See Bookmakers’ Afternoon Greyhound Services Ltd v Wilf Gilbert (Staffordshire) Limited [1994] FSR 723; and Football Association Premier League Ltd v QC Leisure (No 2) [2008] FSR 32, paras 231–32. 12   C Gringras, The Laws of the Internet (London, Butterworths, 1997) 163.

116  Art and Copyright said to make a copy of each packet, until all the packets are received at the browser’s computer. Thus the exploitation of works in digital form is likely to involve the generation of a number of potentially infringing copies, as well as communicating the work to the public. Copying may also take place in several countries. For example, if the server in question is located in Country Y, and the person browsing in Country X, then if the copyright laws of X and Y differ, this may lead to a different degree of protection between countries. In practice, however, provided the digital copy of a work is lawfully made available for browsing, then those browsing ought to benefit from an implied licence—ie, the law will imply a licence from the circumstances, but the scope of the licence can be queried.13 Other issues that arise in connection with the Internet include caching; linking and framing; and user-generated content. 5.3.1 Caching A cache is a computer (generally a server) that holds copies of information (eg, the most popular pages on the Web), so that users do not have to return to the original server. In general terms, cached material can be stored: 1. at a geographically closer site; 2. on a more powerful computer; or 3. on a computer with a less congested path to the user. Typically, internet service providers (ISPs) store, or ‘cache’, frequently accessed webpages onto their own servers to speed up users’ connection times. A cache is also created by web browsers (such as Microsoft’s Internet Explorer software), which create caches on the hard disk/storage memory of a user’s computer in addition to the transient RAM copies created whilst browsing. This means that users have easier and quicker access to particular websites. Thus, caching can occur both on a user’s computer and at server level (so-called ‘proxy caching’). Caching clearly involves copying a substantial part of a copyright work and (assuming the work is protected by copyright) would appear to require a licence from the copyright owner to avoid a claim of infringement. Although convenient for users, caching is by no means   See below ch 6 for a fuller discussion of this issue.

13

Art and the Internet   117 necessary, and therefore it can be argued that no licence will be implied from the circumstances. Regardless of its legal status, caching facilitates the copying of entire websites, throwing up obvious copyright issues. A cache site may not be updated as frequently as the original site. Therefore infringing information may have been removed from the original site but not the cache, rendering the website owner and/or the person operating the cache still potentially liable for any infringement actions. 5.3.2  Linking and Framing Hypertext links enable a web browser to jump from one website to another, facilitating the accessing of related information.14 Viewers are often unaware that, having clicked onto a particular word or phrase (usually highlighted and underlined), they have accessed another website. There continues to be a debate about the extent to which the use of hypertext links requires the consent of the person whose site is being linked and/or of the copyright or database right owner, especially where such linking is misleading, defamatory or harmful to that person’s reputation; facilitates copying in circumstances such that a licence permitting such copying cannot be implied from the copyright owner; or amounts to database right infringement. An example is the ‘framing’ of someone else’s content so that it appears on-screen as your own, although in fact the content is from a linked site with no connection to your own site. Cases from various jurisdictions diverge here, but mere linking is less problematic than framing.15 5.3.3  Liability of ISPs and Others, Including for User-Generated Content Internet service providers (ISPs) may charge subscribers for the right to access the Internet and to host content (eg, websites) on behalf of third 14   ‘Hyperlink’ means a connection between two items of hypertext (the language used to build websites and converted into readable English by browser software). A hyperlink appears on a page of information displayed when browsing a website as an underlined keyword, which if clicked on takes the user to another document or website. 15   See Stokes (2009) (above n 3) 129–34.

118  Art and Copyright parties: they are intermediaries in the sense that they do not themselves determine what appears on the websites they host. Others (eg, the operator of a website) may simply allow third parties to post or upload content on their sites (eg, by allowing users to contribute to a blog, to post images to an online gallery or to post or create other user-generated content). A much debated question is whether an ISP or website operator can be held liable for copyright infringement (or other unlawful acts such as defamation) occurring on its sites and, if so, what (if any) knowledge of or participation in the infringement must the ISP or website operator have to be liable? Various other intermediaries are also involved in facilitating the transmission of content over the Internet: telecommunications operators may provide the backbone/pipe (ie, acting as a mere ‘conduit’) and may (or others may) provide the intermediate servers and proxy caches. It has been debated to what extent these activities may also infringe copyright. As far as the liability of EU service providers (ie, those providing an information society service within the European Economic Area16) is concerned, their liability where they host, cache or transmit infringing material is potentially limited or eliminated by the provisions of the Electronic Commerce Directive (2000/31/EC), as implemented into local law. The relevant provisions of this Directive are discussed in more detail in chapter six in the context of the operation of visual search engines. However, in general terms, where the service provider has no knowledge the content it is hosting infringes, then as long as it acts expeditiously to remove or block access to the content once it is notified of the infringement (eg, through a notice and take-down procedure), then it can escape liability.17

5.4 

transmission right

To what extent are ‘transmissions’ via the Internet protected by copyright? As discussed above, when a person browses a website, instructions sent from the viewer’s computer will arrive at the computer (server) that is the physical location of the website, and this will set in motion the transmission of the relevant text or image in digitised pack16   This is broadly defined, spanning a wide range of economic activities that take place online. See Recital 18 of Directive 2000/31/EC. 17   Art 14.

Art and the Internet   119 ets over the Internet. These packets are received by the viewer’s computer and are then converted into on-screen text and images. Such ‘on-demand’, interactive access to copyright material has been considered to represent a challenge to existing copyright laws. In the United Kingdom at least, prior to the Copyright and Related Rights Regulations 2003,18 which implement the Information Society Directive (2001/29/EC), for the act of transmission to potentially infringe copyright, the transmission would have to amount to either a broadcast (which it clearly was not) or a cable programme service. However, the interactive nature of the Internet would appear to rule out cable programme protection.19 International concerns about the level of protection for online transmissions were addressed in the World Intellectual Property Organization (WIPO) Copyright Treaty 199620 and in the Information Society Directive. The WIPO Treaty provides for a new right of communication to the public for authors of literary and artistic works. Such persons shall: . . . enjoy the exclusive right of authorising any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them.21

This ‘communication to the public right’ gives artists (and other rights holders) clear control over the use made of digitised images of their works over the Internet.22 Museums and others who wish to make use of the Internet will need to bear this right in mind when exploiting images of art works in their collections. This right is discussed in more detail below in chapter six.

5.5 

publication right

Publication right23 applies just as much to the electronic publication of a work (eg, by putting a copy on a compact disc with read-only   SI 2003/2498.   See Gringras (above n 12) 170–71. 20   Adopted by Diplomatic Conference on 20 December 1996. 21   Art 8 (Right of Communication to the Public) WIPO Treaty (ibid). In UK law, this right is enshrined in s 20 CDPA and refers to ‘communication to the public’. 22   Art 3 Information Society Directive (Directive 2001/29/EC). 23   See above ch 3. 18 19

120  Art and Copyright memory (CD-ROM) that is issued to the public or by making it available by means of an electronic retrieval system such as on a website) as it does to more traditional publishing. Furthermore, it can be infringed in an analogous manner to copyright, and this includes making electronic copies. This right cannot therefore be ignored in the digital environment.

5.6 

database right

As discussed above in chapter three, a further right analogous to copyright is database right, introduced into UK law on 1 January 1998 by the Copyright and Rights in Databases Regulations 1997.24 The Regulations also attempt to harmonise what copyright protection applies to databases following the earlier EU Database Directive (96/9/ EC). A database is defined by Regulation 6 to mean ‘a collection of independent works, data or other materials which: (a) are arranged in a systematic or methodical way and (b) are individually accessible by electronic or other means’. The Regulations provide that a database can be protected regardless of whether the individual contents (text, images, moving pictures, etc) are themselves protected by copyright. This is an issue in particular for collections of pure data (whether or not in electronic form) that are not selected or arranged in an original manner (a telephone directory, eg). Given the definition of ‘database’, the Regulations can also apply to CD-ROMs, digital video disks (DVDs) and other collections of text, images, etc, including, potentially, websites. The Regulations therefore strengthen the protection afforded to those who produce and compile CD-ROMs, DVDs, etc, as well as websites—as opposed to those (such as artists, museums or galleries) who may own rights in their content.25   SI 1997/3032, implementing the Database Directive (96/9/EC).   There is some debate about how well copyright protects CD-ROMs: see J Wienand, ‘Museums as International Copyright Owners: Use and Abuse of Images, Multimedia Problems, the Internet’ (1997) 2 Art, Antiquity and Law 35. See also I Stamatoudi, ‘To What Extent are Multimedia Products Databases?’ in Stamatoudi and Torremans (eds) (above n 1) for a discussion of how well database rights can protect multimedia law. Stamatoudi suggests tailor-made legislation is needed to protect multimedia works, as database rights only protect primitive forms of multimedia works well, in her view (41). In the author’s view, the Regulations clearly do increase the legal protection available for CD-ROMs, DVDs, websites, etc. See Stokes (2009) (above n 3) ch 3. Note that an Austrian case has held that a website with hyperlinks to other websites is a database: C Villas, Oberster Gerichtshof, 24 25

Art and the Internet   121 5.7 

implications of moral rights for the digital environment

The moral rights of paternity and integrity do not apply to computer programs or computer-generated works,26 although surprisingly, the right to object to false attribution could theoretically apply to computer programs or computer-generated works. However, moral rights can still be relevant to the Internet: it is clear that making digital copies of a work of art available on a server for public access over the Internet does amount to ‘publication’.27 Also, it is submitted that showing a copy of the work on a website is tantamount to exhibiting the copy of the work in public. Thus moral rights could be infringed by making a digitised copy of the work available for browsing on a server over the Internet, as the following examples illustrate. Scenario (a): A digitised copy of a work in which the right of paternity has been asserted is put on a server, available for browsing over the Internet. The artist is not identified in relation to the image. Prima facie, this would be an infringement of the artist’s right of paternity. Also, as discussed earlier, there could also be an issue regarding copyright infringement if use of the work for this purpose is not licensed. Scenario (b): The digitised copy referred to in (a) is manipulated electronically (for example, the colour tones are altered). This may amount to derogatory treatment.28 Indeed, in the context of author’s rights systems of moral OGH (Austrian Supreme Court), 10 July 2001, GRUR Int 2002, 452, IIC 2003, 223. See generally P Bernt Hugenholtz in T Dreier and B Hugenholtz (eds), Concise European Copyright Law (Alphen aan den Rijn, Kluwer Law International, 2006) 307–42. 26   For discussion of the issues from both authors’ rights and common law perspectives, see A Françon, ‘Protection of Artists’ Moral Rights on the Internet’ in F Pollaud-Dulian (ed), The Internet and Authors’ Rights (London, Sweet & Maxwell, 1999); and G Lea, ‘Moral Rights and the Internet: Some Thoughts from a Common Law Perspective’ in Pollaud-Dulian (ed) (above). There is a discussion in droit d’auteur jurisdictions about whether the mere act of digitisation per se can infringe the right of integrity. 27   S 175(1)(b) CDPA makes clear that publication includes making a work ‘available to the public by means of an electronic retrieval system’. The Internet is one enormous electronic retrieval system. It has also been argued that putting a copy of a work on a website can also amount to commercial publication: Gringras (above n 12) 193. Note that s 175(4)(a)(ii) and s 175(4)(b)(iv) CDPA (as amended in 2003) effectively state that ‘the communication to the public of the work (otherwise than for the purposes of an electronic retrieval system) does not constitute publication).’ 28   There is a dearth of case law in this area. As discussed earlier, a treatment is derogatory if it amounts to distortion or mutilation of the work or is otherwise prejudicial to the honour or reputation of the author. However, cases from other jurisdictions dealing with the colourisation of films may also be relevant here: eg, the well-known French case

122  Art and Copyright rights protection, it has been discussed whether simply digitising a work could infringe the ‘right of respect’ under French law.29 Scenario (c): A derogatory hypertext link is placed on a website linking to an image of an artistic work on another website. It is debatable whether this is derogatory treatment of the linked work.30

As is clear from chapter four above, moral rights laws vary substantially in scope from state to state, in particular as to who possesses such rights and their scope. This has led to arguments that the global nature of the Internet requires a harmonisation of moral rights laws.31 But it has also been argued that the very notion of moral rights is under threat from digitisation. The possibility of both perfect and distorted copies seems to fly in the face of the Romantic, ‘eighteenth-century idea of a work as a perfect, static and self-contained unit, linked to the author as a projection of his personality’.32 On the other hand, the ‘strong’, inalienable nature of moral rights (especially in author’s rights systems) means that an aggressive assertion of moral rights could stifle the exploitation of artistic and other copyright works on the Internet. This has led to calls for a more flexible international moral rights system, together with collective schemes for moral rights management.33

5.8 

art , copyright legislation and the digital future

5.8.1 Legislation Legislative activity in the area of copyright and digitisation over the last fifteen years or so has tended to address three issues: Huston (Civil court, 1, 28 May 1991, JCP 1991, II 21731 (note by Françon). See also Sté Turner Entertainment c Héritiers Huston, CA Versailles, ch civ réunies, 19 December 1994, (1995) 164 RIDA 389. 29   Françon (above n 26) 78–79, in the context of a case involving the scanning of the famous photograph of Che Guevara onto T-shirts. Françon also sees the interactivity of the Internet as a challenge to the right of respect (the right of respect is akin to the right of integrity in the Berne Convention). 30   Or it may be infringement of other laws that in the past have served on occasion to function as ‘moral rights’ (eg, the law of passing off or defamation). Lea (above n 26) 98–99 discusses this example. 31   See, for example, P Torremans, ‘Moral Rights in the Digital Age’ in Stamatoudi and Torremans (eds) (above n 1). 32   Lea (above n 26) 97. 33   Ibid. For example, in the copyright sphere there are a number of such collective schemes and bodies (in the UK, DACS).

Art and the Internet   123 1. The implementation of the WIPO Treaties of 1996 dealing with the challenges of copyright and digitisation generally. Does existing copyright law adequately protect authors and others involved in exploiting copyright works over the internet? In the European Union, the Information Society Directive has been the result. Key elements of this are: • Clarification of the extent to which the reproduction and distribution rights apply in the digital environment, including the scope of fair use/fair dealing exceptions.34 The reproduction right (subject to limited exceptions) means that authors shall have the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form in whole or in part of their works.35 The distribution right is the exclusive right for authors, in respect of the originals of their works or copies thereof, to authorise or prohibit any form of distribution to the public by sale or otherwise. However, temporary acts of reproduction that are transient or incidental, are an integral and essential part of a technological process and whose sole purpose is to enable a transmission in a network between third parties by an intermediary or a lawful use of a work but without independent economic significance, are expressly excepted from the reproduction right.36 (Thus, the activities of Internet intermediaries may not necessarily infringe copyright.) As part of clarifying the reproduction right, the Directive has also effectively limited the scope of fair dealing/fair use across the European Union/European Economic Area by limiting the exceptions to copyright that Member States may have in their laws.37 In particular, all such exceptions ‘shall only be applied in certain special cases which do not conflict with a normal exploitation of the work or other subjectmatter and do not unreasonably prejudice the legitimate interests of the right-holder’.38   Arts 5 and 6(4) Information Society Directive.   Art 2 Information Society Directive.   Art 5(1) Information Society Directive. 37   Art 5(2)–(5) Information Society Directive. 38  Art 5(5) Information Society Directive. This limitation, the so called ‘three-step test’, was first codified in Art 9(2) of the Berne Convention and is reflected in other inter34 35 36

124  Art and Copyright The effect of these fair dealing/fair use-related provisions is (a) to limit the freedom of Member States to introduce new copyright exceptions and (b) to cause a review of existing provisions to ensure compliance with the Directive. Fair dealing/fair use should be the exception, not the rule. It should also be noted that it can be debated whether the copyright ‘exceptions’ by way of fair dealing or fair use can be overridden by contract under European copyright law: the author’s view is that it can, certainly under English law.39 In other words, users can be made to contract out of these exceptions. • A new right of communication to the public (as part of an on-demand service such as the Internet) to be added to the rights of authors. This reflects the need noted above for a ‘transmission right’ for the Internet: ‘Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.’40 • Legal protection of anti-copying and rights management systems.41 national copyright laws as well as EU Directives. However, the scope of the test in the Information Society Directive is considerably broader than that in the Berne Convention: S Bechtold in Dreier and Hugenholtz (eds) (above n 25) 381–83. 39   Such attempts to exclude fair dealing exceptions might, however, fall foul of consumer law in certain cases. See Bechtold (ibid) 370–71. Note also the specific provisions relating to software (Art 9(1)(2) Directive 91/250/EEC) and databases (Art 15 Directive 96/9/EC), which seek to make contract terms null and void that seek to exclude or limit certain copyright or database right exceptions noted in those Directives. However, the Information Society Directive does not contain any similar provisions. Indeed, Art 9 and recital 45 leave the door open for contracts to restrict the copyright exceptions enumerated in the Information Society Directive. In the UK, I Hargreaves, Digital Opportunity: A Review of Intellectual Property and Growth (UK Intellectual Property Office, May 2011) [hereafter ‘Hargreaves Review’] has recommended that UK law should be clarified so that fair dealing and similar exceptions cannot be overridden through contract (51–52). 40   Art 3 Information Society Directive. 41   Ch III Information Society Directive. Note that concerns that technical measures (eg, copy and access protection) could lock up content, depriving users of access to copyright works—even those out of copyright and even for use for private, non-commercial purposes—led to Art 6(4), which gives Member States the ability to address this area in their national laws. In the UK, see s 296ZE CDPA. Note that even then, contract may potentially be used by right-holders to seek to limit the application of Art 6(4). See para 4 of Art 6(4).

Art and the Internet   125 2. Clarifying the liability of ISPs and other intermediaries/service providers where they ‘innocently’ transmit or host information. In the European Union, this has been addressed by the Electronic Commerce Directive (2000/31/EC), as noted above.42 The United States addressed both this area and areas dealt with in the European Union by the Information Society Directive with the Digital Millennium Copyright Act 1998, which deals with the implementation of the WIPO Treaties and other matters, including the liability of intermediaries. 3. Tackling online piracy through greater civil and criminal sanctions. In the United Kingdom, an example of this is the Digital Economy Act 2010. This has some controversial provisions, including a two-stage process to stem internet piracy: warning letters to begin with and, if that does not work, ‘technical measures’ to limit or even suspend internet access, potentially cutting serious abusers off.43 5.8.2  The Future Over the last twenty years or so, the building blocks of a revised, digitally-focused copyright (and in Europe, database right) regime have been put in place internationally. In the European Union, this has also included a certain amount of harmonisation of copyright law across Member States as well. The Court of Justice of the European Union (CJEU) and Member State courts are also now interpreting and applying the result of the EU copyright legislative agenda from the 1991 Software Directive to the 2001 Information Society Directive, generating an increasing amount of case law, which is now starting to be felt in Member States. It is also fair to say that copyright law continues to be under the spotlight as far as legislators are concerned—right-holders pressing for greater protection against online piracy, others expressing concerns that technology, restrictive copyright licences and increasingly strict   See also the discussion below in ch 6.   For a criticism of the law (in its initial form), see L Edwards, ‘Mandy and Me: Some Thoughts on the Digital Economy Bill’ (2009) 6(3) SCRIPTed: A Journal of Law, Technology and Society 534, available at http://www.law.ed.ac.uk/ahrc/script-ed/vol6-3/ editorial.asp (accessed 10 October 2011). 42 43

126  Art and Copyright copyright laws are having a ‘chilling effect’ on freedom of expression and, ultimately, on creativity.44 And there continues to be a desire to explore the possibility of new exceptions to copyright in areas where current laws are not seen to be fit for purpose, especially in the online environment.45 So we can expect to see this area develop further. Artistic works are unlikely to be given special treatment under the new regimes, but the ubiquity of images in our society and online will continue to test copyright laws—through the operation of visual search engines, the exploitation online of so-called orphan works (works whose copyright owner cannot be found), the development of online artistic communities (whether image-sharing sites or collaborative sites to create artistic works) and so on. Some of these areas are explored in greater detail below in chapter six.

  See, eg, http://www.chillingeffects.org/index.cgi (accessed 10 October 2011).   See, for example, some of the recommendations in the Hargreaves Review (above n 39). 44 45

6

Some Current Issues

I

a number of current issues relating to the relationship between copyright and art are examined: n this chapter

1. copyright in photographs; 2. the use of Internet visual search engines; 3. image-sharing, user-generated works and online artistic collaboration; 4. modern art and copyright (including films, video and performances); 5. orphan works; 6. art, originality, infringement and EU copyright law; and 7. traditional cultural expressions (including aboriginal art).

6.1 

copyright in photographs 1

It is a matter of considerable debate in UK copyright law as to the standard of originality required for photographs to benefit from copyright protection. In particular, to what extent should photographs that are simply reproductions in two dimensions of three- or two-dimensional artistic works be protected? This question is of special importance to picture libraries, museums and galleries that exploit photographs of artistic works for commercial gain or fundraising purposes, as well as to publishers. There is surprisingly little authority on this issue. The leading case, Graves’ Case, dates back to 1869.2 However, more recently, a US District 1   See S Stokes, ‘Copyright in Photographs of Works of Art: The Bridgeman Litigation’ (2000) 5 Art, Antiquity and Law 47; and S Stokes, ‘Graves’ Case Revisited in the USA: Bridgeman Art Library Ltd v Corel Corporation’ (2000) 5 Entertainment Law Review 104, upon which part of this section is based. 2   (1869) LR 4 QB 715.

128  Art and Copyright Court reconsidered Graves’ Case in a surprising series of decisions in Bridgeman Art Library Ltd v Corel Corporation,3 and the UK High Court also considered the matter in the context of photographs of (three-dimensional) antiques in July 2000 (though Graves’ Case was not referred to).4 6.1.1  Graves’ Case (1869) Before looking at the Bridgeman case, it is worth recapping what was in issue in Graves’ Case. Graves’ Case was a case under the Fine Art Copyright Act 1862, which was the first to accord photographs copyright protection in English law. Section 1 of the Act afforded to the author (being a British subject or resident within the dominions of the Crown) of every original painting, drawing, and photograph inter alia the sole and exclusive right of copying, engraving, reproducing, and multiplying such painting or drawing, and the design thereof, or such photograph, and negative thereof, by any means and of any size. In this case, the defendant was charged with infringing Henry Graves’ copyright in a number of paintings and three photographs. Of particular relevance were the photographs: these were taken from three engravings made for Graves; the copyright in the engravings belonged exclusively to Graves; and they were the first and only photographs of these subjects. One of the points at issue in the case was whether the photographs were protected by copyright.5 Counsel in support of Graves argued that there was copyright: a photograph from an engraving of a picture is an original photograph 3  US District Court, Southern District of New York, 26 February 1999, Lewis A Kaplan J, 97 Cir 6232 (LAK). See the New York Law Journal (24 February 1999) for a brief discussion. 4   Antiquesportfolio.com plc v Rodney Fitch and Co Ltd, The Times (21 July 2000) (ChD) Neuberger J. 5   It is also worth noting a case predating Graves, Newton v Cowie and Another [1827] 4 Bing 234, 130 ER 759, which concerned the piracy of nine engraved copies of drawings—another case involving the reproduction by mechanical means of another artistic work. What copyright in an engraving protected, according to Best CJ, was not the picture from which the engraving was taken (another engraver could equally well copy that); rather, the labour of the engraver was protected: ‘The engraver, although a copyist, produces the resemblance by means very different from the painter or draftsman from whom he copies—means which require great labour and talent. . . The . . . engraver does not claim the monopoly of the use of the picture from which the engraving is made; he says, take the trouble of going to the picture yourself, but do not avail yourself of my labour, who have been to the picture, and have executed the engraving’ (245–46).

Some Current Issues   129 and hence by implication protected by the Act. In opposition, it was stated that these photographs were not original photographs as they were taken from a work of art; they were mere copies of the engraving, not original in the sense intended in section 1 of the Act. The relevant part of Blackburn J’s judgment, with which the other two judges agreed, is as follows: It has been argued that the word ‘original’ is to be taken as applying to a photograph. The distinction between an original painting and its copy is well understood, but it is difficult to say what can be meant by an original photograph. All photographs are copies of some object, such as a painting or a statue. And it seems to me that a photograph taken from a picture is an original photograph, in so far as to copy it is an infringement of this statute.6

Indeed, Blackburn J’s judgment hits on the central issue: all photographs are a copy of something. In this sense, they are different from other artistic works. So what is the standard of originality required by English law? The prevailing view is that expressed in Copinger, a leading textbook: Provided that the author can demonstrate that he expended some small degree of time, skill and labour in producing the photograph (which may be demonstrated by the exercise of judgement as to such matters as the angle from which to take the photograph, the lighting, the correct film speed, what filter to use, etc), the photograph ought to be entitled to copyright protection, irrespective of its subject matter.7

This view gained general acceptance by those exploiting photographic libraries and using photographs, although in 1995 the application of Graves’ Case as authority for establishing the standard of originality to be used was questioned in the second edition of another textbook, Laddie.8 So it was with considerable surprise that at the end of 1998, the Bridgeman Art Library found that a US district court denied copyright protection to their picture library images when they attempted to sue Corel for copyright infringement—the Court citing English law as authority for its decision. This case is worthy of careful review.   Graves’ Case (above n 2) 723.   K Garnett et al, Copinger and Skone James on Copyright, 14th edn (London, Sweet & Maxwell, 1999) [hereafter ‘Copinger’] 3-104. This was cited with approval by Neuberger J in Antiquesportfolio.com v Rodney Fitch (above n 4). 8   HIL Laddie, P Prescott, and M Vitoria The Modern Law of Copyright and Designs, 2nd edn (London, Butterworths, 1995) [hereafter ‘Laddie, 2nd edn’] 3.56. See discussion below. 6 7

130  Art and Copyright 6.1.2 The Bridgeman Case (1998) The plaintiff was (and remains) a leading British art library founded by Lady Bridgeman. It has a large collection of photographs (both as transparencies and digital image files) taken of works of art that are themselves out of copyright (ie, in the public domain), but Bridgeman claims copyright in the photographs. Corel was a leading Canadian software house and had recently started to market a CD-ROM collection of reproductions of paintings by European masters in the United States, United Kingdom and Canada. This was called ‘Professional Photos CD-ROM Masters’. The images were brought from ‘Off the Wall Images’, a company that no longer exists. Bridgeman claimed that Corel had infringed 120 of its images of paintings in the public domain by including these images on its CD-ROM. It was claimed that Corel’s digital images must have been copied from the Bridgeman reproductions because no other authorised reproductions of those works existed. Bridgeman sued in the New York federal court, alleging copyright infringement and other claims. Both parties moved for summary judgment. On 13 November 1998, the Southern District Court of New York granted the defendant’s motion for summary judgment, dismissing the plaintiff’s copyright infringement claim on the alternative grounds that the allegedly infringed works—colour transparencies of paintings that themselves were in the public domain—were not original and therefore not permissible subjects of valid copyright and, in any case, were not infringed.9 The Court applied UK law in determining whether the plaintiff’s transparencies were protected by copyright and applied US law to determine if there was infringement. The Court noted, however, that it would have reached the same result under US law. Additionally, the Court held that even if the photographs were protected by copyright, they could not be infringed by Corel’s photographs, as the only similarity between them was that ‘both are exact reproductions of public domain works of art.’ Under well-settled US law, where the only similarity between two works relates to uncopyrightable elements, there can be no infringement as a matter of law.10 Following the entry of final judgment, the Court, in the words of Judge Kaplan, ‘was bombarded with additional submissions’. On   The Bridgeman Art Library Ltd v Corel Corp, 25 FSupp 2d 421 (SDNY 1998).   For a discussion of the first decision, see the case note in (1999) Entertainment Law Review N-32 by Robert W Clarida. 9

10

Some Current Issues   131 23 November 1998, the plaintiff moved for re-argument and reconsideration, arguing that the Court erred on the issue of originality. It asserted that the Court had ignored the US Register of Copyright’s issuance of a certificate of registration for one of the plaintiff’s transparencies (‘The Laughing Cavalier’), which it took as establishing the subsistence of copyright; furthermore, it claimed that the Court had misconstrued British copyright law in that it failed to follow Graves’ Case. At about the same time, the Court received an unsolicited letter from Professor William Patry, author of a copyright law treatise, which argued that the Court erred in applying the law of the United Kingdom to the issue of copyright protection. The plaintiff then moved for an order permitting the filing of an amicus brief by one of its associates, the Wallace Collection, to address the UK law issue. The Court granted leave for the submission of the amicus brief and invited the parties to respond to Professor Patry’s letter. Accordingly, the case was re-argued and reconsidered, and judgment was given by Judge Kaplan on 26 February 1999. At the outset of his second judgment, Judge Kaplan stated: It is worth noting that the post-judgment flurry was occasioned chiefly by the fact that the plaintiff failed competently to address most of the issues raised by this interesting case prior to the entry of final judgment. In particular, while plaintiff urged the application of UK law, it made no serious effort to address the choice of law issue and no effort at all (apart from citing the British copyright act) to bring pertinent UK authority to the Court’s attention before plaintiff lost the case. Indeed, it did not even cite Graves’ Case, the supposedly controlling authority that the Court is said to have overlooked.

Nevertheless, as the Judge felt the issues were significant beyond the immediate interests of the parties, he was prepared to allow a reargument and reconsideration of the case. Judge Kaplan considered Professor Patry’s arguments and US law generally, especially in relation to: the Copyright Clause of the Constitution, which permits Congress to enact legislation protecting only original works, with originality determined in accordance with the meaning of the Copyright Clause;11 and the Copyright Clause’s relation to the Berne Convention, the Universal Copyright Convention and the US Berne Convention Implementation Act (BCIA) 1988. After a technical review of the law relating to treaties such as the Berne   US Constitution, Art I §8, Cl 8.

11

132  Art and Copyright Convention and their effect on the protection of foreign copyrights in the United States, the Judge considered it was quite clear that whilst US copyright law (the Copyright Act 1976, as amended by the BCIA) extends certain copyright protection to the holders of copyright in Berne Convention works, the Copyright Act is the exclusive source of that protection. Accordingly, in the case of the photographs in issue, the subsistence of copyright in them was properly a question of US law, which limits such copyright protection to ‘original works of authorship’.12 US Law The Court’s previous opinion was that the plaintiff’s exact photographic copies of public domain works of art would not be protected by copyright under US law because they were not original. In view of the Court’s conclusion here that US law governed on this issue, the Judge considered it appropriate to give a somewhat fuller statement of the Court’s reasoning. According to the Judge, it is clear US law that photographs are ‘writings’ within the meaning of the Copyright Clause of the US Constitution.13 In short, in US law, according to Judge Kaplan, ‘there is broad scope for copyright in photographs because “a very modest expression of personality will constitute sufficient originality”’.14 The Judge cited a leading US copyright text, Nimmer on Copyright, to the effect that there ‘appear to be at least two situations in which a photograph should be denied copyright for lack of originality’, one of which the Judge considered directly relevant here: ‘where a photograph of a photograph or other printed matter is made that amounts to nothing more than slavish copying’.15 Nimmer thus concluded, according to the Judge, that a slavish photographic copy of a painting would lack originality. Also, the Judge was of the view that there was little doubt that many photographs (probably the overwhelming majority) reflect at least the modest amount of originality required for copyright protection. This could include posing the subjects, lighting, choosing angle, selecting   S 102(a) Copyright Act 1976.   He cited in particular Burrow-Giles Lithographic Co v Sarony 111 US 53 (1884). 14   See MB Nimmer and D Nimmer, Nimmer on Copyright (New York, M Bender, 1998) [hereafter ‘Nimmer’] §2.08[E][1], 2-130. 15   Ibid, 2-131. 12 13

Some Current Issues   133 film and camera, evoking the desired expression and almost any other variant involved.16 However, ‘slavish copying’, though doubtless requiring technical skill and effort, does not qualify.17 He also referred to the Supreme Court in Feist Publications Inc v Rural Telephone Service Co,18 where ‘sweat of the brow’ alone was not the ‘creative spark’ that was the sine qua non of originality. The Judge found that in this case, the plaintiff by its own admission had laboured to create ‘slavish copies’ of public domain works of art. Thus he had no difficulty in finding that ‘while it may be assumed that this required both skill and effort, there was no spark of originality— indeed, the point of the exercise was to reproduce the underlying works with absolute fidelity.’ He therefore found that the works were not original and not protected by copyright. The Judge also discussed the plaintiff’s technical defence that as the US Register of Copyright issued a certificate of registration for one of the plaintiff’s transparencies, this demonstrated that its photographs were protected by copyright under US law. The Judge considered this argument misguided: while the certificate was prima facie evidence of the validity of the copyright,19 including the originality of the work, the presumption was not irrebuttable.20 Here, the Judge was of the view that the facts pertinent to the issue of originality were undisputed. The Court held as a matter of law that the plaintiff’s works were not 16   Judge Kaplan cited Rogers v Koons, 960 F.2d 301, 307 (2d Cir), 506 US 934 (1992); and Leibovitz v Paramount Pictures Corp, 137 F 3d 109, 116 (2d Cir, 1998). 17   Judge Kaplan cited Hearn v Meyer, 664 F Supp 832 (SDNY 1987), where according to Judge Kaplan, Judge Leisure held that ‘slavish copies’ of public domain reproductions of public domain original works of art were not protected by copyright, despite the great skill and effort involved in the copying process, as well as minor but unintentional variations between the copies and the works copied. 18   499 US 340 (1991). In light of this, Judge Kaplan also commented that it was not entirely surprising that an attorney for the Museum of Modern Art—‘an entity with interests comparable to plaintiffs and its clients’—not long ago presented a paper acknowledging that a photograph of a two-dimensional public domain work of art ‘might not have enough originality to be eligible for its own copyright’. Judge Kaplan cited B Wolff, ‘Copyright’ in Legal Problems of Museum Administration, American Legal Institute/American Bar Association (ALI-ABA) course of study C989 (Washington, DC, ALI-ABA, 1995) 27, 48; and LA Greenburg, ‘The Art of Appropriation: Puppies, Piracy, and Post-Modernism’ (1992) 11(1) Cardozo Arts & Entertainment Law Journal 20–21 (in which it was held that photographic copies of original art photographs taken by the famous photographer Edward Weston, which were made to ‘deconstruct the myth of the masterpiece’, were not copyrightable). 19   S 410(c) Copyright Act 1976. 20  Eg, Lakedreax v Taylor, 932 F2d 1103, 1108 (5th Cir 1991). Indeed, the Copyright Act leaves the ‘evidentiary weight to be accorded the certificate [to] the discretion of the court’: s 410(c).

134  Art and Copyright original under either British or US law and therefore not entitled to copyright protection. UK Law Although Judge Kaplan concluded that his decision as to the law governing the subsistence of copyright rendered the point moot, it is surprising nevertheless that he felt able to state that the plaintiff’s copyright claim would fail even if the governing law were that of the United Kingdom, as opposed to US law. According to the Judge, the plaintiff’s attack on the Court’s previous conclusion that its colour transparencies were not original and therefore not protected by copyright under British law depended primarily on its claim that the Court failed to apply Graves’ Case, the supposedly controlling authority that the plaintiff did not even cite in its opposition to the defendant’s motion for summary judgment. In particular, the judgment of Blackburn J in Graves’ Case quoted above was cited. The plaintiff and the amicus in its brief argued that the plaintiff’s photographs of public domain paintings were protected by copyright under British law on the clear authority of Graves’ Case. Judge Kaplan, however, was of the view that the antiquity of Graves’ Case was overlooked, as well as the subsequent development of the law of originality in the United Kingdom. In particular, one of the leading UK copyright texts, the second edition of Laddie,21 was cited in detail by the Judge, to the effect that originality presupposes the exercise of substantial independent skill, labour, judgement and so forth. According to Laddie, there was room for originality in a photograph in three respects. First, there can be originality that does not depend on the creation of the scene or object to be photographed—this includes the angle of shot, light and shade, exposure, effects achieved by means of filters, developing techniques, etc: ‘in such manner does one photograph of Westminster Abbey differ from another, at least potentially.’22 Secondly, there may be creation of the scene or subject to be photographed, such as the arrangement or posing of a group. Thirdly, a person may create a worthwhile photograph by being at the right place at the right time and capturing and recording a scene unlikely to recur.   Laddie, 2nd edn (above n 8).   Ibid, 3.56.

21 22

Some Current Issues   135 Judge Kaplan then discussed Laddie’s questioning of the continued authority of Graves’ Case under the above analysis. Laddie states: It is submitted that Graves’ Case . . . does not decide the contrary, since there may have been special skill or labour in setting up the equipment to get a good photograph, especially with the rather primitive materials available in those days. Although the judgments do not discuss this aspect it may have been self-evident to any contemporary so as not to require any discussion. If this is wrong it is submitted that Graves’ Case is no longer good law and in that case is to be explained as a decision made before the subject of originality had been fully developed by the courts.23

This analysis, according to the Judge, was quite pertinent to the Bridgeman case. Most photographs, according to the Judge, are ‘original’ in one if not more of the three respects set out in Laddie—and therefore are protected by copyright. But the plaintiff’s difficulty here was that it was seeking protection ‘for the exception that proves the rule’: photographs of existing two-dimensional articles (in this case works of art), each of which reproduces the article in the photographic medium as precisely as technology permits. ‘Its transparencies stand in the same relation to the original works of art as a photocopy stands to a page of typescript, a doodle, or a Michelangelo drawing.’24 Although the plaintiff argued that the photocopier analogy was inapt because taking a photograph requires greater skill than making a photocopy, and the transparencies involved a change in medium, according to Judge Kaplan, ‘the argument is as unpersuasive under British as under US law. . . The allegedly greater skill required to make an exact photographic, as opposed to Xerographic or comparable, copy is immaterial.’ The Judge then went on to refer to the Privy Council case of Interlego AG v Tyco Industries,25 in which it was held, ‘Skill, labour or judgement merely in the process of copying cannot confer originality.’26 This point, according to Judge Kaplan, was exactly the same as the lack of protection under US law for a ‘slavish copy’. Nor was the change in medium (ie, from painting to photograph), standing alone, significant: [A] copy in a new medium is copyrightable only where, as often but not always is the case, the copier makes some identifiable original contribution.   Ibid, 239 fn 3.   The Judge noted that the plaintiff conceded that a photocopy was not original and hence not copyrightable. 25   [1988] 3 All ER 949, 970 (appeal taken from Hong Kong). 26   Ibid, 971 (per Lord Oliver). 23 24

136  Art and Copyright In the words of the Privy Council in Interlego AG, ‘There must . . . be some element of material alteration or embellishment which suffices to make the totality of the work an original work.’27

Indeed, Judge Kaplan considered that the plaintiff’s expert effectively conceded the same point, ‘noting that copyright “may” subsist in a photograph of a work of art because “change of medium is likely to amount to a material alteration from the original work, unless the change of medium is so insignificant as not to confer originality”’.28 The Judge was of the view, as the Court noted in its earlier opinion, ‘It is uncontested that Bridgeman’s images are substantially exact reproductions of public domain works, albeit in a different medium.’29 There was no suggestion that they varied significantly from the underlying works. In consequence, the change of medium was immaterial, according to the Judge. 6.1.3 Comment The seriousness of the issues raised in Bridgeman caused the UK Museums Copyright Group, which assists museums with copyright matters, to both commission an in-depth report on the case and also seek a written opinion from the leading copyright barrister Jonathan Rayner James QC (one of the authors of Copinger). According to the Group, Mr Rayner James had no doubt that UK copyright law protects works of art, citing him as follows: [A]s a matter of principle, a photograph of an artistic work can qualify for copyright protection in English law, and that is irrespective of whether . . . the subject of the photographs is more obviously a three-dimensional work, such as a sculpture, or is perceived as a two-dimensional artistic work, such as a drawing or a painting.30

Bridgeman is not, of course, binding on UK courts. Also, it can be argued that the picture library images in question, by virtue of the care  Bridgeman (above n 9) para 35, citing Interlego (above n 25) 972 (per Lord Oliver).   Bridgeman (above n 9). 29   Ibid, 426. The Judge noted that Lady Bridgeman, the plaintiff’s principal, testified that the goal of the transparencies was to be as true to the original work as possible: Bridgeman Dep 15. 30   See the Museums Copyright Group Press Release of December 1999. The author is grateful to Emma Williams of the Museums Copyright Group for this information. See also the 2004 publication of the Group’s ‘Copyright in Photographs of Works of Art’, available at http://www.museumscopyright.org.uk/‌.htm. 27 28

Some Current Issues   137 ful photography and lighting involved in order to show artistic works to best effect (better probably than a gallery visitor would see), in no way compare to mere photocopies or slavish copies. Nevertheless, Judge Kaplan’s careful review of the English authorities in his second decision, in particular the important Privy Council case of Interlego v Tyco, is of considerable interest. It is at least arguable that the antiquity of Graves’ Case and the particular facts in issue (the owner of the copy­ right in the photographs and the engravings was the same person, and they were the first and only photographs of these subjects) mean that Graves’ Case is now less than persuasive, especially in the light of the Privy Council in Interlego v Tyco. The following comments of Lord Oliver in Interlego v Tyco (cited in part by Judge Kaplan) about what the test of originality should be seem particularly relevant: Originality in the context of literary copyright has been said in several well known cases to depend on the degree of skill, labour and judgement involved in preparing a compilation. . . [T]he amount of skill, judgement or labour is likely to be decisive in the case of compilations. To apply that, however, as a universal test of originality in all copyright cases is not only unwarranted by the context in which the observations were made but palpably erroneous. Take the simplest case of artistic copyright, a painting or a photograph. It takes great skill, judgement and labour to produce a good copy by painting or to produce an enlarged photograph from a positive print, but no one would reasonably contend that the copy painting or enlargement was an ‘original’ artistic work in which the copier is entitled to claim copyright. Skill, labour or judgement merely in the process of copying cannot confer originality.31

It is therefore submitted that following Bridgeman, there is some doubt about the copyright protection of photographs that are themselves simply copies of other artistic works. Graves’ Case may no longer be good law. Having said that, there are contrary arguments: these and a case in a similar area, Sawkins v Hyperion Records Ltd, are considered below.32 Bridgeman has also been criticised by another leading copyright barrister, Kevin Garnett QC.33 He sees the reasoning in the case as flawed.   Interlego v Tyco (above n 25) 971.   As noted below, regard should also be had to the more recent decision of the Court of Appeal to grant copyright protection to faithfully edited musical scores themselves out of copyright, which could be used to argue in favour of protecting the Bridgeman photographs: Hyperion Records Ltd v Sawkins [2005] EWCA Civ 565 (19 May 2005). 33  K Garnett, ‘Copyright in Photographs’ (2000) European Intellectual Property Review 229. (The author is also a contributing author of Copinger (above n 7)). 31 32

138  Art and Copyright In particular, he views Lord Oliver’s speech in Interlego as clearly obiter, as not addressing the specific issue and furthermore as not taking into account Graves’ Case or the House of Lords in the later case of Walter v Lane.34 In particular, it is clear that photographs are protected by copyright irrespective of their artistic quality, and the skill of the photographer is often to faithfully reproduce what is in front of the camera. In many ways, according to Garnett, such a skill is analogous to a reporter who faithfully reproduces the spoken words of a speaker, as in Walter v Lane. Mere photocopies are also different in kind from the photographs in Bridgeman: photocopying is a wholly mechanical process. Also, although it is a copy of a painting, such a photograph is nevertheless different in character and quality from the painting and therefore is sufficiently different to secure copyright protection, though the photograph is derived from the painting. Garnett’s arguments were critically considered in 2001 by Ronan Deazley, who argued that UK courts should follow the US lead in Bridgeman and hold that exact photographic reproductions of works in the public domain are not protected by copyright.35 Nevertheless, a consideration of other authorities and the context of Interlego can be used to challenge Bridgeman. Another helpful case, which Garnett does not cite, is Martin v Polyplas,36 in which copyright protection was given to a coin engraved in three dimensions from a drawing.37 Finally, a case similar to but by no means the same as Bridgeman, Antiquesportfolio.com v Fitch, was heard by the High Court in London in an application for summary judgment.38 Antiquesportfolio concerned inter alia whether copyright could subsist in photographs of antiques (ie, three-dimensional items, as opposed to the photographs of paintings considered in Bridgeman). The authorities discussed ear34   [1900] AC 539. This case concerned literary copyright: the House of Lords held that an independent reporter’s copyright subsisted in the verbatim report of a public speech. The status of this case was, according to Garnett, recently confirmed by BrowneWilkinson V-C in Express Newspapers plc v News(UK) Ltd [1990] 1 WLR 1320, 1325: ‘As a result of [Walter v Lane] it was established that the mere reporting of the words of another gives rise to a reporter’s copyright so long as skill and judgment have been employed in the composition of the report.’ 35   R Deazley, ‘Photographing Paintings in the Public Domain: A Response to Garnett’ (2001) European Intellectual Property Review 179. See also S Stokes, ‘Letter to the Editor’ (2001) European Intellectual Property Review 354; and R Deazley, ‘Letter to the Editor: In Response to Simon Stokes’ (2001) European Intellectual Property Review 601. 36   [1969] NZLR 1046. 37   See WR Cornish, Intellectual Property, 4th edn (London, Sweet & Maxwell, 1999) 388. See also Newton v Cowie (above n 5), which predates Graves’ Case. 38   Antiquesportfolio.com v Rodney Fitch (above n 4).

Some Current Issues   139 lier—namely, Bridgeman, Copinger and Laddie (second edition), as well as the US text Nimmer on Copyright,39 but not Graves’ Case— were all considered by Neuberger J. He was of the view that the positioning of the three-dimensional object in question (unless it was a sphere), the angle at which it was taken, the lighting and focus, etc could all be matters of aesthetic or even commercial judgement, albeit at a very basic level. In particular, in this case, the photographs appeared to have been taken with a view to showing particular aspects and features of the items, such as their colour, the glaze (in the case of pottery) and other details. He also thought a relevant factor may be that the photographer had chosen particular items as either typical or especially fine examples of the artefact in question. Taking all these factors together, he held that the photographs were protected by copyright. Nevertheless, the Judge expressly did not decide whether copyright could subsist in photographs of paintings. However, he did observe that, as was suggested in Nimmer on Copyright, such photographs could well be protected by copyright if the photographer could show he had used some degree of skill and care in taking the photograph— this would be sufficient to make them ‘original’ for copyright purposes. In light of Antiquesportfolio, it is submitted that in the United Kingdom, the Bridgeman photographs would still be likely to benefit from copyright protection, despite the uncertainties surrounding the application of Graves’ Case. It is hard to see how a court could reasonably make a distinction between photographs of two- and threedimensional items: the labour and skill in aspects of selection, focus, angle, shutter speed, lighting, etc are common to both sorts of photograph. There may be more choice in how to photograph a three-dimensional object in terms of aspect, positioning and background; but arguably, sufficient skill and labour will be involved in photographing a picture as well.40   Ibid, 2.130.   It is also interesting to note what Neuberger J said in the context of what copyright in a photograph protects (where there is infringement). In Antiquesportfolio, the infringing photographs (taken from Millers Antiques Encyclopaedia, in which Reed Books claimed copyright) were reproduced in various sizes on the claimant’s website, which was prepared by the defendants (which Neuberger J held to be copyright infringement); the photographs were also traced by the defendants to create logos, watermarks and business cards for the claimant. In the latter case, Neuberger J considered Copinger (above n 7) 7-86 as representing the law on determining copyright infringement of photographs. In particular, what copyright serves to protect is the author’s work of origination: so a photograph can be infringed both by literal copying and also where the defendant recreates 39 40

140  Art and Copyright Certainly that remains the position of those advising museums and galleries in the United Kingdom. For example, in 2009 the National Portrait Gallery, through their solicitors, Farrer & Co, alleged copyright infringement against US citizen Derrick Coetzee, on the basis that he had infringed the Gallery’s copyright in several thousand photographs of works of art by uploading them to the Wikimedia Commons, a free online media repository; Coetzee claimed the works were in the public domain under US law.41 This legal action and the issues it raises are considered further below in section 6.3. In terms of scholarly legal analysis of the status of works such as the Bridgeman photographs—ie, ‘recreative’ works that ‘have been derived from, and which purport to be perfectly accurate copies of, antecedent works that were created at an earlier point in history’42—it has recently been argued that copyright protection ought to apply due to the ‘originality’ involved in the recreative process itself, even if the works in question appear to be exact copies of the antecedent works (and in that sense lacking originality). ‘Any intellectual skill, labour or judgement that has gone into the recreation, replication, reconstruction or reproduction of the antecedent work should be relevant towards assessing the originality of these works.’43 Indeed, if the approach in Bridgeman the feeling and artistic character of the photograph where a substantial part of the photograph is thereby taken. The Judge held that tracing the photographs did not amount to copyright infringement: the feeling and artistic character of the photographs were not taken; nor was there any substantial taking of the photographer’s skill and labour—ie, the focusing, camera angle, lighting, etc were not appropriated; the logos were not very detailed; and their shape was determined by the shape of the object in the photograph in question. However, whether a detailed drawing of a photograph of a nineteenth-century bureau used on a brochure cover infringed was left to trial, although the Judge suspected it did infringe. 41   See http://en.wikinews.org/wiki/U.K._National_Portrait_Gallery_threatens_‌U.S._ ‌citizen_‌with_‌legal_‌action_‌over_Wikimedia_images (accessed 9 November 2011). 42  B Ong, ‘Originality from Copying: Fitting Recreative Works into the Copyright Universe’ (2010) 2 Intellectual Property Quarterly 165–91, 167. 43   Ong (ibid) 189. In his fascinating article, Ong considers the Bridgeman case, as well as the reconstructed dead sea scrolls, the restored Sistine Chapel frescoes and an important English case relating to musical copyright (Sawkins v Hyperion Records Ltd (above n 32)). Is there copyright in the restored Sistine Chapel frescoes? And is there copyright in the performing editions of French baroque musical editions where the original scores have been edited to reproduce faithfully the composer’s original intentions? Sawkins v Hyperion Records is clearly helpful to Ong’s argument (and indeed the arguments advanced in this section of this book) that recreative works such as the Bridgeman photographs should be protected by copyright. For an alternative view, see J Pila, ‘An Intentional View of the Copyright Work’ (2008) 71(4) Modern Law Review 535–58, who argues that it is key to a work being protected as a literary, dramatic, musical or artistic (‘LDMA’) work that it ‘is, and ought to be an intentional expression of an LDMA idea;

Some Current Issues   141 (buttressed by the Court of Appeal decision in Sawkins v Hyperion Records44) is followed, then there is no reason why restored and reconstituted manuscripts, sheet music, paintings and films (on the basis the underlying work is out of copyright) should not potentially benefit from copyright protection by virtue of the restorer’s art—this copyright vesting in the restorer.45

6.2 

copyright and visual search engines : fair use and fair dealing in the online environment 46

In December 1999, a US District Court caused considerable surprise by holding in Leslie A Kelly v Arriba Soft Corporation that the use by an Internet ‘visual search engine’ of others’ copyright images was prima facie copyright infringement but was justified under the ‘fair use’ doctrine.47 At the time, it was argued that the case raised significant issues for artists, photographers and others who allow their images to be used on the Internet.48 It is therefore worth analysing the case, as well as subsequent US cases and what the English courts might make of such actions.

meaning an intentional expression of a particular idea associated with a tradition of LDMA authorship. . . [E]ven skilfully produced records of works ought not to attract LDMA copyright: because they are not LDMA works’ (557). So if the creators of such records are to have copyright, it ought to be ‘mechanical copyright of the type already granted to the makers of records of other LDMA works’ (557). 44  Above n 32. This case is important when considering restored and ‘recreative’ works. 45  This is argued by Paul Torremans: P Torremans, ‘Legal Issues Pertaining to the Restoration and Reconstitution of Manuscripts, Sheet Music, Paintings and Films for Marketing Purposes’ (2011) 33(3) European Intellectual Property Review 178–88. 46   This section is a revised and expanded version of S Stokes, ‘Leslie A Kelly v Arriba Soft Corp: A View from the United Kingdom’ (2000) 12 European Intellectual Property Review 599. 47   US District Court, Central District of Southern California, Southern Division, Case No SA CV 99-560 GLT [JW] (Judge Gary L Taylor), 15 December 1999. 48   On 24 July 2000, the American Society of Media Photographers Inc, the Authors Guild Inc and the North American Nature Photography Association filed an amicus curiae brief in support of the plaintiff-appellant Kelly, on the basis inter alia that the District Court’s fair use analysis if accepted would seriously harm the legitimate copyright interests of freelance photographers and other authors of copyright works.

142  Art and Copyright 6.2.1  Kelly v Arriba Soft (1999–2004) Arriba, subsequently known as ditto.com Inc (or ‘Ditto’), operates a ‘visual search engine’ on the Internet. Unlike other Internet search engines, it retrieves images instead of text and produces a list of reduced ‘thumbnail’ pictures related to the search query. During the period relevant to the case, the search engine in question was known as the Arriba Vista Image Searcher. By clicking on a desired thumbnail picture, Arriba Vista users were able to view an ‘image attributes’ window, which described the image’s dimensions, provided an address for the website from where the image originated and displayed the full-size version of the image by opening a link to the originating website—without any other part of the originating website being seen.49 The user could visit the originating website only by clicking on the address.50 The search engine operates by maintaining an indexed database of approximately two million thumbnail images. These thumbnails are obtained by the operation of Ditto’s ‘crawler’, a computer program that trawls the web in search of images to be converted into thumbnails and added to the index. Ditto’s employees then screen and rank the images, eliminating any that are inappropriate. The plaintiff in Kelly v Arriba Soft was a photographer specialising in photographs of the California gold rush country and also in photographs related to the works of Laura Ingalls Wilder (of Little House on the Prairie fame). He publishes his photographs in books and on two websites, one of which provides a virtual tour of California’s gold rush country and promotes his book on the subject; the other markets corporate retreats in that area. In January 1999, around 35 of Kelly’s images were indexed by the Ditto crawler and put in the defendant’s image database. As a result, these images were made available in thumbnail form to users of the defendant’s visual search engine. Kelly objected, and Ditto removed the images from its database, although due to some technical difficulties, some reappeared on occa49   In other words the full-size image was not technically located on the defendant’s website. According to the decision, it appears that images of the plaintiff’s photographs were stored briefly in full on the defendant’s computer (server) until the thumbnails were made; they were then deleted. 50  Apparently, as of December 1999 (the time of the decision), Ditto had modified its search engine so that when a ditto.com user clicks on a thumbnail, two windows open simultaneously. One window contains the full-size image; the other contains the originating webpage in full.

Some Current Issues   143 sion. In the meantime, Kelly sued the defendant for copyright infringement and also violation of the Digital Millennium Copyright Act (DMCA) 1998 by removing or altering the copyright management information associated with Kelly’s images. The hearing was one for summary judgment. The judge had no difficulty in finding a prima facie case of copyright infringement. The defendant did not dispute the validity of the plaintiff’s copyright or his ownership, nor did it dispute it had reproduced and displayed the plaintiff’s images in thumbnail form without authorisation. However, the issue was then whether the infringement was justified on the basis of ‘fair use’ under US copyright law. According to the judge, ‘Fair use’ is a limitation on copyright owners’ exclusive right ‘to reproduce the copyrighted work in copies’ (17 [US Code (USC)] § 106(1)). It is codified at 17 USC § 107, which provides: Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors. Fair use is an affirmative defense, and defendants carry the burden of proof on the issue.51

After thus laying out the definition of fair use, the judge went on to consider each of the four factors listed above in relation to the case at hand.

  Kelly v Arriba Soft (above n 47) 2–3.

51

144  Art and Copyright The Purpose and Character of the Use The court found the ‘transformative’ nature of the use of the plaintiff’s images very significant, citing the US Supreme Court decision in Campbell v Acuff-Rose Music,52 which concerned an alleged parody of the song ‘Oh Pretty Woman’: ‘the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.’ The judge considered the defendant’s use of the images was very different from the use for which the images were originally created. Kelly’s works were artistic works used for illustrative purposes; Arriba’s visual search engine and related thumbnail images were for a functional purpose, not an artistic or aesthetic purpose—to catalogue and improve access to images on the Internet. Also, although the use was commercial, it was ‘somewhat more incidental and less exploitative than more traditional types of commercial use’.53 So overall, despite the fact that the defendant’s old (and then current) search engine allowed users to view and potentially download full-size images without necessarily viewing the rest of the originating webpages detracted from this argument to an extent, the court found that the purpose and character of the defendant’s use was on the whole significantly transformative and therefore the first factor weighed in favour of fair use. The Nature of the Copyright Work The judge cited Campbell to the effect that ‘that some works are closer to the core of intended copyright protection than others, with the consequence that fair use is more difficult to establish when the former works are copied.’54 In the view of the court artistic works like the plaintiff’s photographs are part of that core. The court therefore found the second factor weighed against fair use. The Amount and Substantiality of the Portion Used According to the judge, the analysis of this factor on the basis of Campbell focuses on:   (1994) 510 US 569, 579.   Kelly v Arriba Soft (above n 47) 3. 54   Campbell v Acuff-Rose Music (above n 52) 586, cited in Kelly v Arriba Soft (above n 47). 52 53

Some Current Issues   145 . . . the persuasiveness of a [copier’s] justification for the particular copying done, and the enquiry will harken back to the first of the statutory factors, for . . . the extent of permissible copying varies with the purpose and character of the use.55

In the view of the court in Kelly v Arriba Soft, if only the thumbnail index were at issue, the defendant’s copying would likely be reasonable in the light of its purposes. The judge seemed to accept the defendant’s arguments that for a visual search engine to work, such reduced size and resolution (ie, thumbnail) images were necessary: it was noted that the thumbnail images could not be enlarged into useful images. The image attributes pages (displaying the full-sized images separated from their originating webpages), however, were more problematic as it was, in the court’s view, remotely related to the purposes of the search engine. The court therefore found the third factor weighed slightly against fair use. The Effect of the Use on the Potential Market or Value of the Copyrighted Work According to the judge, the fourth factor inquiry, following Campbell again, . . . examines the direct impact of the defendant’s use and also considers ‘whether unrestricted and widespread conduct of the sort engaged in by the defendant . . . would result in a substantially adverse impact on the potential market for the original’.56

The relevant market, according to the judge, was that of the plaintiff’s websites taken together. The photographs were used to promote the products sold by Kelly’s websites (including Kelly’s books and corporate tour packages) and to draw users to view the additional advertisements posted on those websites. According to the judge, ‘the fourth factor addresses not just the potential market for a particular photo, but also its “value”. The value of [the] Plaintiff’s photographs to [the] Plaintiff could potentially be adversely affected if their promotional purposes are undermined.’57 The defendant argued that there was no likely negative impact on this market, as its search engine did not compete with Kelly’s websites   Campbell v Acuff-Rose Music (above n 52) 586–87.   Ibid, 590, cited in Kelly v Arriba Soft (above n 47). 57   Kelly v Arriba Soft (above n 47) 5. 55 56

146  Art and Copyright and in fact would actually increase the number of users finding their way to those sites. Kelly, however, argued that the market for his various products had been harmed because the defendant’s conduct allowed users to improperly copy Kelly’s images from the defendant’s site and subsequently use them. The search engine also enabled users to ‘deep link’ directly to the pages containing retrieved images and thereby bypass the ‘front page’ of the originating websites. Thus users would be less likely to view all of the advertisements on the websites or view the websites’ entire promotional messages. The judge found the plaintiff had shown no evidence of any such harm or adverse impact. So in the absence of any evidence about traffic to Kelly’s websites or effect on Kelly’s businesses, the court could not find any market harm to the plaintiff. On the other hand, the court found that the defendant met its burden of proof by offering evidence tending to show a lack of market harm, and the plaintiff was not able to refute that evidence. The court therefore found the fourth factor weighed in favour of fair use. Conclusion: Fair Use In considering the four factors necessary to determine fair use, the court found two factors weighed in favour of fair use, and two weighed against it. Decisive here was the first factor. The defendant never held Kelly’s work out as its own or even engaged in conduct specifically directed at Kelly’s work. According to the judge, [The] Plaintiff’s images were swept up along with two million others available on the Internet, as part of [the] Defendant’s efforts to provide its users with a better way to find images on the Internet. [The] Defendant’s purposes were and are inherently transformative, even if its realization of those purposes was at times imperfect.[58] Where, as here, a new use and new technology are evolving, the broad transformative purpose of the use weighs more heavily than the inevitable flaws in its early stages of development.59

Having weighed all of the fair use factors together, the court found that the defendant’s conduct constituted fair use of the plaintiff’s images.

58   Eg, the ability to display full-size images of the plaintiff’s photographs without the other aspects of the originating websites. 59   Kelly v Arriba Soft (above n 47) 5.

Some Current Issues   147 The Digital Millennium Copyright Act (DMCA) In Kelly v Arriba Soft, the plaintiff raised an interesting argument that the defendant had violated section 1202(b) of the DMCA60 by displaying thumbnails of Kelly’s images without displaying the corresponding copyright management information (consisting of a standard copyright notice in the surrounding text). This argument was given short shrift by the judge. Two Appeals Court Decisions Kelly v Arriba Soft has been the subject of two Appeals Court decisions.61 The first decision, filed on 6 February 2002, affirmed in part and reversed in part the order of the US District Court. Unlike the District Court, the Appeals Court focused in some detail on the linking and use made of the thumbnail images obtained by using Arriba’s search engine. The creation of the thumbnail images and their use for search purposes was found to be fair use. However, the ‘in-line linking’—whereby clicking on a thumbnail gave access to a larger, full-size framed image that was divorced from its original website—was held to infringe the plaintiff photographer’s public display rights, and this was not justified by the fair use doctrine. The second decision (re-filed on 7 July 2003) withdrew the Appeals Court’s earlier ruling that ‘in-line linking’ violated a copyright owner’s public display right but retained the ruling that the creation of thumbnail images by search engines is fair use. The decision left open for a further hearing whether the display by Arriba of Kelly’s fullsized images was fair use. This is important, as the display of the 60   S 1202(b) DMCA reads: ‘No person shall, without the authority of the copyright owner or the law: (1) intentionally remove or alter any copyright management information; . . . (3) distribute . . . copies of works . . . knowing that copyright management information has been removed or altered without authority of the copyright owner or the law, knowing, or, with respect to civil remedies under section 1203, having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under [federal copyright law].’ 61   The first was US Court of Appeals for the Ninth District, No 00-55521 (280 F.3d 934 (9th Cir 2002). The US copyright scholar Jane Ginsburg has commented that the case ‘strikes an encouraging balance between fostering the dissemination of information via the Internet on the one hand and securing the author’s interest in the economic potential of digital distribution for her work on the other’: JC Ginsburg, ‘Essay: How Copyright Got a Bad Name for Itself’ (2002) 26(1) Columbia Journal of Law and the Arts 61. The second appeal was the 9th Circuit decision 336 F.3d 811 (7 July 2003).

148  Art and Copyright full-size images involved the use of linking (including ‘in-line linking’ initially). This fascinating case now seems to have ended with a default judgment in Kelly’s favour,62 but the issues raised therein have continued to be considered by the US courts, in particular in the action by publisher Perfect 10 against Google, which will be examined next. 6.2.2  Perfect 10 v Google (2006–11) Perfect 10 is a US adult entertainment publisher. Images of its models have appeared on unauthorised websites. Google operates a wellknown Web search service that includes image searching, and Google had indexed these unauthorised images and made thumbnail images available through the normal operation of its search service. Perfect 10 complained to Google in May 2001 that Google’s creation of thumbnail images and in-line linking to full-size images infringed Perfect 10’s copyright; and legal action against Google was commenced in November 2004. In February 2006, a district court ruled in favour of Google on several grounds, in particular that Google’s use of frames and in-line links did not amount (in a US copyright sense) to the display by Google of the full-size images stored on and served by infringing third-party websites.63 In other words, Google was not liable for direct copyright infringement by merely linking to these sites. However, the court ruled against Google for its creation of thumbnails. In particular, the district court determined that Google’s use of thumbnails as part of its image search function was likely to infringe Perfect 10’s copyrights, as Google’s Image Search service copied Perfect 10’s images as thumbnail images in its cache and displayed them to users. The California District Court’s holding distinguished Kelly v Arriba, in which it had been held that creating and using thumbnails for search purposes was fair use; in Perfect 10 it was pointed out that Perfect 10 also sells reduced-size images for download to mobile phones, and Google’s thumbnails might affect the market for those reduced-size images. Also, Google’s use of the thumbnails was held to be more commercial than Arriba’s as, in the opinion of the judge, Google’s AdSense   US District Court, Central District of California, 18 March 2004.   Perfect 10 v Google, Inc, US District Court, Central District of CA, CV 04-9484 AHM (SHx), 26 February 2006 (Judge A Howard Matz). 62 63

Some Current Issues   149 program appeared to be available to the websites infringing Perfect 10’s copyright, and Google derived a benefit from this program. Both sides appealed, and on 16 May 2007, the Ninth Circuit Court of Appeals reversed the District Court’s finding on fair use, holding that Google benefited from a fair use defence insofar as Google was copying Perfect 10’s images to create thumbnail images. The Appeals Court applied the fair use principles discussed in Kelly and came to the conclusion that Google was putting Perfect 10’s thumbnail images (‘along with millions of other thumbnail images’) to a use fundamentally different than that intended by Perfect 10, and this was a significant transformative use that provided a significant benefit to the public. This convinced the Court that Google’s use was fair use. The Appeals Court also considered whether Google could be secondarily liable for its in-line linking to infringing full-size images under the doctrines of contributory and vicarious infringement. The District Court considered that Perfect 10 was unlikely to succeed in proving Google could be held liable on these grounds. The Appeals Court took the view that further fact-finding by the District Court was necessary here, in particular as to whether Google had known of infringing activities yet had failed to take reasonable and feasible steps to refrain from providing access to infringing images (in other words, secondary liability). Google moved for summary judgment, asserting that it was protected from secondary liability by the relevant provisions of the DMCA.64 The Court’s decision on this was appealed;65 and at present, the case continues.66   See below.   Google moved for partial summary judgment that it was entitled to immunity under three different provisions of the DMCA. Specifically, Google asserted that it deserved ‘safe harbor’ under 17 USC § 512(d) for its Web and image searches; under 17 USC § 512(b) for its caching feature; and under 17 USC § 512(c) for its blogger service. In July 2010 the District Court granted in part and denied in part Google’s motion for partial summary judgment of entitlement to safe harbor under 17 USC § 512(d) for its Web and image searches. The Court granted Google’s motion for partial summary judgment for its caching feature based on 17 USC § 512(d), without having to assess whether it would be separately entitled to safe harbor under 17 USC § 512(b). The Court granted Google’s motion for partial summary judgment of entitlement to safe harbor under 17 USC § 512(c) for its blogger feature. See ibid. The case is now on appeal again. See US District Court Central District of California Civil Minutes, General Case No Cv 04-9484 Ahm (shx) (26 July 2010) Perfect 10 Inc v Google Inc (A Howard Matz J). Perfect 10 appealed in October 2010. 66   See the outline of the case by the Electronic Frontier Foundation (EFF) at http:// www.eff.org/cases/perfect-10-v-google (accessed 21 October 2011). 64 65

150  Art and Copyright 6.2.3 Comment Kelly v Arriba Soft and Perfect 10 v Google raise a whole host of issues about the protection of copyright on the Internet and exemplify the thorny issues that courts worldwide are now tackling. Certainly it seems desirable for visual search engines to be available for the benefit of all Internet users. Although these are US cases, they highlight a debate that can be had about the conflict between the rights of copyright owners and others in the context of the effective functioning of the Internet. Certainly, the cases highlight the current US approach to ‘fair use’, which focuses on the transformative character, if any, of the defendant’s work.67 The cases also indicate the potential protection granted to companies providing Internet services through the US Digital Millennium Copyright Act.68

6.2.4  A View from the United Kingdom It is interesting to speculate what the outcome of these cases might have been if they had involved the infringement in the United Kingdom of photographs by a living British photographer. The analysis that follows focuses on copyright and moral rights protection for such a photographer; it does not consider database rights issues, which are primarily relevant to persons constructing search engine databases or websites to host the images. Of first concern is whether there would be prima facie infringement of copyright. On the facts, the answer is clearly yes: copying all or any substantial part of a copyright work is ‘primary’ infringement of copyright in the work,69 and copying includes for these purposes both ‘storing the work in any medium by electronic means’70 and also making copies that ‘are transient or are incidental to some other use of the 67   For a review of US fair use cases, see JAL Sterling, World Copyright Law (London, Sweet & Maxwell, 1999) 364–69. 68   See above n 65. 69   S 16 Copyright, Designs and Patents Act 1988 (CDPA) 1988. See also the recent Antiquesportfolio case (above n 4, discussed above s 6.1.3), in which the judge was clearly of the view that even small-scale reproduction by digital means of an entire photograph on a website is copyright infringement. 70   S 17(2) CDPA.

Some Current Issues   151 work’.71 Thumbnail images such as those discussed in Kelly and Perfect 10 v Google are also communicated to the public.72 Having established prima facie infringement of copyright, the second question is whether there is a defence in the United Kingdom analogous to that of fair use. The fair dealing defences in English law are much more narrowly drawn than the US fair use doctrine and apply only in certain contexts, including non-commercial research, private study,73 criticism, review and news reporting.74 These do not appear particularly relevant here.75 Nor does it appear that an English court would be swayed by any argument that the public interest would demand that the infringement be permitted: this appears ruled out, for example, following the Court of Appeal decision in Hyde Park Residence v David Yelland.76 Moral Rights Aspects Under UK law, as discussed above in chapter four, ‘authors’ such as photographers benefit from moral rights protection in addition to copyright. An English court in these circumstances would therefore also have to entertain any claim by the photographer that his moral rights had been infringed if, for example, having asserted this right, he was not identified in connection with the commercial publication of his works (which clearly includes web publishing).77 Of more interest in this case is whether the production of a thumbnail image could be said to infringe the photographer’s moral right not to have his work subjected to derogatory treatment.78 ‘Treatment’ includes any alteration or adaptation of the work, and such treatment is derogatory ‘if it amounts to distortion or mutilation of the work or is otherwise prejudicial to the honour or reputation of the author’.79 It might therefore be argued that a thumbnail image is a distortion of the work, although this   S 17(6) CDPA.   S 20 CDPA. 73   S 29 CDPA. See above ch 3, s 3.2.8. 74   S 30 CDPA. 75   In the context of s 29 CDPA, ‘research’ of the sort relevant to Kelly and Perfect 10 v Google is for commercial purposes. 76   [2000] ENT L R N-77, [1999] RPC 655, [2000] 3 WLR 215. Note, however, the less narrow decision in Ashdown v Telegraph Group Ltd [2001] EWCA Civ 1142 (18 July 2001). 77   S 77 CDPA, in particular s 77(4)(a). 78   S 80 CDPA. 79   S 80(2)(b) CDPA. 71 72

152  Art and Copyright may be difficult to sustain in the light of the limited case law in this area.80 However, a defendant might in any event seek to raise the defence that moral rights do not apply, as the database and search results produced by the search engine are ‘a collective work of reference’.81 This appears to stretch such a definition beyond its context in the Copyright, Designs and Patents Act (CDPA) 1988 of ‘encyclopaedia, dictionary, yearbook or other collective work of reference’, however. Implied Licence or Consent As discussed above in chapter five, it can be argued that both express and implied copyright licences are central to the effective functioning of the Internet. Could it therefore be argued under UK law that by making their images available on the Internet, photographers and other creators of images have granted implied licenses to enable the copying, communication to the public and cataloguing of their works where necessary to search the Internet—or that they have at least granted consent? There is debate about the circumstances in which such a copyright licence will be implied. The classic approach, based on contract cases dealing with the implications of terms into contracts, is to be cautious about the existence and scope of any such licence.82 In particular, as there is unlikely to be a contract between the photographer and search engine, and the photographer will probably have included an on-screen licence on his website restricting copying without his consent in any 80   As discussed above ch 4. For example, in Tidy v Trustees of the Natural History Museum (1995) 39 IPR 501, the scaling down of the plaintiff’s cartoons of dinosaurs was held to be a ‘treatment’ of the work, but the matter of whether this was ‘derogatory’ was left until full trial. See also Pasterfield v Denham and Another (1999) FSR 168 (per His Honour Judge Overend): ‘. . . what the plaintiff must establish is that the treatment accorded to his work is either a distortion or mutilation that prejudices his honour or reputation as an artist. It is not sufficient that the author is aggrieved by what has occurred.’ 81   Ss 79(6) and 81(4) CDPA. 82   So for example, a term will be implied if it is necessary to give business efficacy to the contract, or it satisfies the ‘officious bystander’ test (in practice, these may well be the same tests: Watts v Lord Aldington [1999] LTR 578, 596–67 (per Steyn LJ))—and not merely because it is reasonable. Also, the term to be implied must be the minimum necessary in the circumstances, and the term must be clear: see in the context of copyright, Robin Ray v Classic FM plc [1998] FSR 622; Antiquesportfolio.com (above n 4); and Copinger (above n 7) 5-208–5-216. It is also possible for a licence to be implied from conduct, trade practice or custom, and by estoppel and acquiescence.

Some Current Issues   153 event, it is perhaps difficult to see why such a licence would be implied from the circumstances. Nevertheless, it has been argued that the operation of search engines might fall within either a public interest defence to copyright infringement or the more general legal doctrine of ‘nonderogation from grant’.83 But this must be doubted given, for example, the Court of Appeal’s rejection of a broad public interest defence in Hyde Park Residence v Yelland84 and the very limited scope of the ‘nonderogation from grant’ principle.85 So absent any further judicial clarification of the matter in the United Kingdom, the existence and scope of any implied licence in such circumstances remains unclear.86 However, there are cases from other jurisdictions that suggest an image copyright owner who displays his works on the Internet must take technical steps to prevent automated searching (which can easily be done) or else they will be deemed to have consented to the activities of search engine operators, who will thus be excused from copyright infringement. In other words, the onus is placed on rights owners to take steps to limit the automated searching and copying of their content.87 83   HL MacQueen, ‘Copyright and the Internet’ in L Edwards and C Waelde (eds), Law and the Internet, 2nd edn (Oxford, Hart Publishing, 2000) 208–10. MacQueen cites the first instance formulation of the public interest defence by Jacob J in Hyde Park Residence v Yelland (above n 76) and in Mars UK Ltd v Teknowledge Ltd [2000] FSR 138. He also cites the non-derogation from grant argument acknowledged by Jacob J in Mars and deriving from British Leyland v Armstrong [1986] AC 577 and the later, more restrictive Privy Council case Canon Kabushiki Kaisha v Green Cartridge Co (Hong Kong) Ltd [1997] AC 728. 84   Above n 76. Note, however, that a later Court of Appeal decision has subsequently recognised a broader public interest defence to copyright infringement: ‘In the light of these judgments, we do not consider that Aldous LJ [in Hyde Park v Yelland] was justified in circumscribing the public interest defence to breach of copyright as tightly as he did. We prefer the conclusion of Mance LJ that the circumstances in which public interest may override copyright are not capable of precise categorisation or definition. Now that the Human Rights Act is in force, there is the clearest public interest in giving effect to the right of freedom of expression in those rare cases where this right trumps the rights conferred by the Copyright Act. In such circumstances, we consider that s 171(3) of the Act permits the defence of public interest to be raised’: Ashdown v Telegraph Group (above n 76) 58 (per Lord Phillips). 85  In Canon (above n 83) 737–40, Lord Hoffmann referred to the doctrine as ‘exceptional’, and any extension of the doctrine beyond the facts in British Leyland should be treated with some caution—it is in reality a defence based on ‘public policy’. 86   However, UK courts will imply copyright licences from conduct: see, eg, Barrett v Universal-Island Records Ltd and Others [2006] EWHC 1009 (Ch) (15 May 2006) paras 357–59; and see generally Robin Ray v Classic FM (above n 82). 87   See, eg, the decision of the German Federal Supreme Court, File Number I ZR 69/08 (29 April 2010), in which Google’s visual search engine was found not to infringe copyright, as the claimant had consented to the copying and display of her works by making them available on the Internet without taking technical steps (eg, meta-tags and robot.txt

154  Art and Copyright European Law and Policies The Electronic Commerce Directive88 contains certain exclusions from liability for copyright infringement that might be relevant in cases such as the (hypothetical) one described above: the ‘mere conduit’, ‘caching’ and ‘hosting’ exceptions from liability.89 These exceptions are designed to protect those who provide ‘information society services’ from liability where they act simply as intermediaries in transmitting or storing information in circumstances where: (i) they merely transmit information at the request of another (the recipient of the service) (‘mere conduit’ exception inArticle 12); (ii) there is automatic, intermediate and temporary storage of information to allow for more efficient transmission of information provided by a recipient to others (‘caching’, which is excepted in Article 13); and (iii) they store information provided by and stored at the request of a recipient of the service, provided that the service provider does not have knowledge of illegal activity or information and that if they become aware of this, they act expeditiously to remove or disable access to the information (‘hosting’, which is covered by Article 14). These exceptions are not specifically directed at Internet search engines: the Directive leaves the liability position of providers of ‘hyperlinks and location tool services’ for further analysis.90 In this context, it appears unlikely that (at least from a UK perspective) any of these exceptions apply.91 Certainly, mere conduit or caching do not apply in the United Kingdom as relevant exceptions in the case of the infringement of photographs by a living British photographer, files) to prevent ‘Googlebots’ automatically copying her content. Contrast, however, the opposite decision of a Belgian court in Copiepresse v Google, 06/10.928/C, The Court of First Instance in Brussels (13 January 2007) in which Google’s argument along these lines was rejected. See S Stokes, Digital Copyright: Law and Practice, 3rd edn (Oxford, Hart Publishing, 2009) 178–79. Copiepresse was recently upheld on appeal: Cour d’Appel de Bruxelles (6 May 2011). However, from a common law perspective, see the favourable decision in the US case Blake A Field v Google Inc, 412 F.Supp.2d 1106 (D Nev 2006), in which it was held that making content available without meta-tags to prevent the operation of Googlebots amounted to consent (by way of an implied licence) to what Google was doing.   Directive 2000/31 on legal aspects of electronic commerce [2000] OJ L 178/1.   See ibid, Arts 12–15. 90   Art 21. 91   Note that some Member States have extended the protections to additional activities, such as the provision of hyperlinks and search engines. Eg, Austria: see I Walden in A Büllesbach et al (eds), Concise European IT Law (Alphen aan den Rijn, Kluwer Law International, 2006) 247–55. 88 89

Some Current Issues   155 and probably not hosting either, as the search engine operator is the one who decides (albeit through software-operated processes) what information to search, extract, copy and display as part of its search offering. So for example, as regards hosting, surely in no way can it be said that the owner of a copyright image has requested his images to be stored by the operator of a visual search engine simply by making them available to be searched. The Court of Justice of the European Union (CJEU) has recently considered the application of Article 14 of the Electronic Commerce Directive in the context of Google’s ‘AdWords’ programme; but as AdWords operates rather differently from Google’s visual search engine, it can be doubted that the CJEU’s reasoning here could benefit a visual search engine provider.92 In addition, the Information Society Directive93 does not provide any clear guidance on this area. The language in the Directive dealing with the exception for temporary copies of works on the Internet only applies if the copying is transient or incidental and is an integral and essential part of a technological process the sole purpose of which is to enable transmission in a network or a lawful use of a work and ‘which have no independent economic significance’.94 This does not seem to be the case here. In conclusion, it is submitted that an English court would be likely to decide Kelly v Arriba rather differently, unless it (like the German Federal Supreme Court) took the view that the image holder, by simply making the images available without taking technical steps to prevent their copying by a search engine, had given consent.

92   Google France & Google (Inc v Louis Vuitton) [2010] EUECJ C-236/08 (23 March 2010). AdWords allows Google users to pay Google so that sponsored links appear in search results where the paid for search term is used by someone using Google’s search engine. The CJEU concluded as follows: ‘[Art 14 of the Electronic Commerce Directive] must be interpreted as meaning that the rule laid down therein applies to an internet referencing service provider in the case where that service provider has not played an active role of such a kind as to give it knowledge of, or control over, the data stored. If it has not played such a role, that service provider cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned’ (para 120). In the case of a visual search engine, it is difficult to see how this applies, as Google does not store the information at the request of the image owner and does have control over the information it searches and indexes and copies. 93  Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society. See above ch 5. 94   Ibid, Art 5(1).

156  Art and Copyright 6.3 

image sharing , user - generated works and online artistic collaboration

The Internet, in particular what is sometimes referred to as ‘Web 2.0’, has allowed the proliferation of user-generated content—content that is created by users and may be generated collaboratively or collectively (eg, blog comments, social networking, Wikipedia content). This section looks at some of the legal issues surrounding such content, focusing first on a dispute involving Wikimedia Commons. 6.3.1  Case Study: The National Portrait Gallery, Derrick Coetzee and Wikimedia Commons In July 2009 Derrick Coetzee, a US citizen and contributor to Wikimedia Commons, a free online media repository, received a legal complaint from the London-based solicitors acting for the National Portrait Gallery (NPG).95 It was alleged that in March 2009, he had without the consent of the NPG: a. accessed NPG’s database of images, which was available online via its website; b. downloaded from NPG’s database more than 3,300 high-resolution images of public domain paintings (ie, the artists had died more than 70 years ago); c. circumvented the technical measures that NPG put in place on its website to prevent those high-resolution images from being copied; and d. uploaded those images to Wikipedia (ie, the Wikimedia Commons website). The NPG had contacted the Wikimedia Foundation in April 2009 to request that the images be removed, but the Wikimedia Foundation 95   Derrick Coetzee has made the legal correspondence public: http://commons.wikimedia.org/w/index.php?title=User:Dcoetzee/NPG_legal_threat&oldid=23494218 (accessed 9 November 2011). See also media comment: eg, BBC News, ‘Wikipedia Painting Row Escalates’ (17 July 2009), http://news.bbc.co.uk/1/hi/technology/8156268. stm (accessed 20 October 2011); and the commentary on the case by the Citizen Media Law Project, available at http://www.citmedialaw.org/threats/national-portrait-gallery-vcoetzee (accessed 20 October 2011).

Some Current Issues   157 allegedly refused to do so; and this left NPG with no option but to threaten legal proceedings against Mr Coetzee personally through the UK courts, unless the matter could be settled. The NPG’s Complaint The NPG’s complaint had several limbs: 1.  Infringement of Copyright in Photographs of Paintings The NPG claimed that the images of public domain artistic works copied by Mr Coetzee were original photographs and clearly protected by photographic copyright under UK law (notwithstanding the US case Bridgeman Art Library v Corel,96 in which, as discussed above, images of public domain works of art were not protected by copyright), and that copyright was owned by the NPG. So downloading (ie, copying) the NPG’s copyright photographs and then uploading them to Wikipedia (ie, communicating them to the public) was, it was argued, both a breach of contract (ie, the NPG website terms) and also an infringement of copyright in the UK, in particular a breach of section 16 of the CDPA.97 It was also alleged that by posting the images to the Wikipedia website, Mr Coetzee was expressly authorising Wikipedia users to themselves make further copies of those images on their own screens and hard drives in the manner permitted by the GNU Free Documentation License, under which Wikipedia operates. This was primary copyright infringement in the United Kingdom under section 16(2) of the CDPA. 2.  Infringement of Database Right It was claimed that the NPG website was a database protected by database right. On this basis, the right was accordingly infringed by Mr Coetzee’s downloading of over 3,300 NPG images and then uploading   See above s 6.1.2.   Note that in light of CJEU case law, the communication to the public right should be given a broad interpretation: Sociedad General de Autores y Editores de España (SGAE) v Rafael Hoteles SA [2006] ECR I-11519. Moreover, the definition of the right in s 20(2) CDPA is not exhaustive: see, eg, ITV Broadcasting Ltd & Others v TV Catch Up Ltd [2010] EWHC 3063 (Ch) (25 November 2010); and Twentieth Century Fox Film Corporation & Another v Newzbin Ltd [2010] EWHC 608 (Ch) (29 March 2010). See also Recital 23 of the Information Society Directive (above n 93): ‘This right should be understood in a broad sense covering all communication to the public not present at the place where the communication originates.’ 96 97

158  Art and Copyright them to the Wikipedia website in breach of NPG’s website terms: this was claimed to be infringement of the UK database right under Regulation 16 of the Copyright and Rights in Databases Regulations 1997.98 3.  Unlawful Circumvention of Technological Measures NPG’s images copied by Mr Coetzee were available on the NPG website via ‘Zoomify’. Zoomify is a software application that according to the NPG’s solicitors is used to publish photographic images in such a way that an entire high-resolution image is never made available to a public user. (High-resolution images having more value and utility than low resolution ones.) The NPG used the Zoomify technology to protect their copyright in the high-resolution images. It was alleged that Mr Coetzee had circumvented the Zoomify software and so was in breach of section 296ZA(1) of the CDPA. 4.  Breach of Contract On every page of NPG’s website and clearly visible there is a ‘Use this Portrait’ menu, on which two links are clearly visible: ‘License this image’ and ‘Use this image on your website’. If either of these links is clicked, then the user is told that permission is needed to reproduce the NPG’s images. So Mr Coetzee’s downloading of the images and subsequent uploading to the Wikipedia website was, it was alleged, carried out in breach of contract (ie, the website license). 5.  The Jurisdiction of UK Courts NPG’s solicitors acknowledged that Mr Coetzee was based in the United States of America but nevertheless argued that his activities gave rise to claims under UK law because: a. NPG’s servers were based in the United Kingdom, and therefore ‘technically’, his unlawful downloading (which give rise to some of the copyright, database right and breach of contract claims) took place in the United Kingdom; and b. the pages of the Wikipedia website on which he had reproduced the NPG’s images were clearly directed at (amongst others) UK users of Wikipedia. It should be noted that the email from the NPG’s solicitors was reasonable in tone: it was hoped that Mr Coetzee would give certain   SI 1997/3032.

98

Some Current Issues   159 undertakings and remove all the images, and once this was done, the NPG would not pursue a claim against him or seek to recover their legal costs. The NPG wanted to avoid litigation. Furthermore, the NPG was willing to enter into a dialogue with the Wikimedia Foundation to discuss terms upon which low-resolution images of paintings in the NPG’s collection could be made available on Wikipedia. Mr Coetzee’s Defence Despite the offer to settle the matter, Mr Coetzee sent a very robust response through his attorney, who was with the Electronic Frontier Foundation (EFF),99 a US organisation founded in 1990 that seeks among other things to champion ‘the public interest in every critical battle affecting digital rights’.100 The EFF were prepared to defend Mr Coetzee, given the issues at stake. Fundamental to the EFF response to the NPG’s complaint were the fact that Mr Coetzee resides in the United States and the contention that all of the alleged infringing acts occurred in the United States. On this basis, the EFF stated that UK copyright law has no application to the matter, it being solely one of US copyright law. The EFF arguments under US law were as follows: a. The photographs of the NPG’s public domain paintings are not protected by copyright. The EFF cited the US cases on originality, specifically the Supreme Court case Feist Publications v Rural Telephone Service,101 as well as (unsurprisingly) Bridgeman Art Library v Corel Corp.102 b. The NPG has no independent database rights with regard to the images, as such rights are not recognised under US Law. (This is correct insofar as database right is an EU/EEA-only right.) c. The NPG’s ‘browsewrap’ contract claims were ‘specious’, as there was no binding contract to breach. (The EFF cited the US case Specht v Netscape Communications.103) There is clearly a conflict of laws issue here: EFF’s argument assumes US law 99   https://www.eff.org/deeplinks/2009/07/eff-defends-wikipedi (accessed 9 November 2011). 100   See the EFF website, https://www.eff.org/about (accessed 3 November 2011). 101   Above n 18. 102   Above n 9; and see the discussion above s 6.1.2. 103   306 F.3d 17 (2d Cir 2002).

160  Art and Copyright applies to the formation of a ‘browsewrap’ contract. The position is less clear-cut under English law, and in any event, it depends very heavily on the facts at the time any alleged contract was made—certainly the more a user is directed to there being contractual terms before accessing the images and has to accept the terms (eg, tick a box), being given the opportunity to print them out or store them before being given access, the more likely a court will be to find the requirements necessary for a contract under English law (the classic trinity of offer, acceptance and consideration). If instead, the terms are simply website terms that the user is not required to affirmatively agree to before being given access, then it is more likely they will be viewed as the terms of a ‘bare’ licence—permission to do certain things that would otherwise be unlawful under copyright and IP law. And if use outside the licence occurs, this will not be a breach of contract in such a situation. The NPG’s only rights would in that case be in reference to infringement of copyright, etc (if indeed there are infringing acts under applicable law). d. The NPG’s circumvention claims were ‘baseless’, as ‘the Zoomify technology previously used on NPG’s website does not effectively control access to a work protected under copyright law’. This is clearly a matter of fact, regardless of whether US law or UK law applies. Comment This is a fascinating dispute that raises significant legal and public interest issues. On the one hand, the NPG has invested very heavily in digitising images from its collection, making them available to the public for research and general interest but at the same time seeking to earn money from commercial licensing. On the other hand, what rights does the NPG actually have in their images, especially in the United States? And what of Derrick Coetzee’s and Wikimedia’s desire to make what is considered to be public domain content readily available worldwide? The dispute also highlights the difficult conflict of laws issues that potentially apply to online copyright infringements. For example, under UK and EU law, how is the ‘communication to the public right’ infringed? Is it a matter of the law of the country where the content is uploaded to a server and made available (place of emission), or is it the

Some Current Issues   161 place where the content is transmitted to and ‘received’—or possibly both?104 And how is ‘authorisation’ of infringement to be assessed— can placing content on a US website that if downloaded in the United Kingdom would infringe UK copyright amount to authorising UK copyright infringement?105 Likewise for database right. As of March 2011, images from the NPG gathered by Wikimedia’s ‘User:Dcoetzee’ ‘using a special tool’ were still available on Wikimedia Commons with the following notice: While Commons policy accepts the use of this media, one or more third parties have made copyright claims against Wikimedia Commons in relation to the work from which this is sourced or a purely mechanical reproduction thereof. This may be due to recognition of the ‘sweat of the brow’ doctrine, allowing works to be eligible for protection through skill and labour, and not purely by originality as is the case in the United States (where this website is hosted). These claims may or may not be valid in all jurisdictions. 104   One suggestion is that it should be the place where it is received, where the end-user can access the work, where the UK is targeted. ‘Content is made available in the UK when it can be accessed from the UK and there is at least some intention that it should be’: B Allgrove and S Sellars, ‘On Demand and Online: A Cause of Action Too Far’ Copyright World (Issue 196, Dec 2009/Jan 2010) 19. This is clearly much broader than focusing on where the hosting server is based. Note that under the Satellite and Cable Directive (93/83/EC), it is the place where the signals originate, not where they are received, that is relevant for the act of communication to the public (Art 1). The Information Society Directive, however, does not specifically address this, leaving the matter in doubt. See, eg, S Bechtold in T Dreier and B Hugenholtz (eds), Concise European Copyright Law (Alphen aan den Rijn, Kluwer Law International, 2006) 362, although Bechtold seems to favour applying the law of the country where it was intended the work was to be received. An alternative view in favour of the place of uploading is presented in the Amicus Brief of Google Inc and others in Explorologist Ltd v Brian Sapient, aka Brian J Cutler: http:// www.sla.org/pdfs/publicpolicy/030508AmicusBrief.pdf (accessed 20 October 2011). In any event, the issue (in the context of database right) has recently been referred by the UK Court of Appeal to the CJEU: Football Dataco Ltd & Others v Sportradar GmbH & Another (Rev 1) [2011] EWCA Civ 330 (29 March 2011. In this case, the first instance judge preferred the ‘emission theory’ (ie, place where server located and from where the data was made available is relevant): Football Dataco Ltd & Others v Sportradar GmbH & Another [2010] EWHC 2911 (Ch) (17 November 2010) para 74. In the Court of Appeal, however, strong arguments in favour of the ‘transmission theory’ were made (ie, the place of receipt, to where the data is transmitted at the request of a user accessing the data, is key). 105   UK law has a relatively narrow concept of authorisation. Eg, ‘“authorise’ means the grant or purported grant of the right to do the act complained of. It does not extend to mere enablement, assistance or even encouragement. The grant or purported grant to do the relevant act may be express or implied from all the relevant circumstances’: Twentieth Century Fox v Newzbin (above n 97) para 90 (per Kitchin J), citing the current leading case, CBS Songs Ltd and Others v Amstrad Consumer Electronics plc [1988] 1 AC 1013.

162  Art and Copyright As such, use of this image in the jurisdiction of the claimant or other countries may be regarded as copyright infringement. Please see Commons: When to use the PD-Art tag for more information. See User:Dcoetzee/NPG_legal_threat for more information.106

6.3.2  User-Generated Content and Online Artistic Collaboration It is clear that the Internet works by copying.107 Indeed, the architecture of the Internet allows users to interact with other people’s content (of which the Coetzee dispute is just one example). As a case in point, anyone who visits the Wikipedia website can edit Wikipedia entries. Interaction with content (copying, editing, etc) is key to developments in social networking, online gaming and the growth of online communities (YouTube, Second Life and so on).108 These developments raise a number of legal issues, including: • the potential for ‘piracy’ on a massive scale, with content owners challenging the boundaries of copyright law in terms of who is liable for infringing acts, often seeking to affix liability on those operating the site in question;109 • challenges to the very notion of ‘authorship’, as there is a move away from the traditional focus on either attributed authors or indeed identifiable authors at all. So for example, under UK law, where no one author’s contribution is identifiable, this results in a work of ‘joint authorship’ (ie, ‘a work produced by the collaboration of two or more authors in which the contribution of each 106   See, eg, the notice that is visible when a high-resolution sample image (in this case of the Victorian theologian, social reformer and Anglican priest FD Maurice) is viewed via Wikimedia Commons: http://commons.wikimedia.org/wiki/File:(John)_Frederick_ Denison_Maurice_by_Jane_Mary_Hayward.jpg (accessed 20 October 2011). At the foot of the page, Wikimedia Commons also states, ‘The official position taken by the Wikimedia Foundation is that “faithful reproductions of two-dimensional public domain works of art are public domain, and that claims to the contrary represent an assault on the very concept of a public domain.” For details, see Commons:When to use the PD-Art tag. This photographic reproduction is therefore also considered to be in the public domain. Please be aware that depending on local laws, re-use of this content may be prohibited or restricted in your jurisdiction. See Commons:Reuse of PD-Art photographs.’ 107   See above ch 5. 108  See JGH Griffin, ‘The Centrality of Architecture in Copyright Law’ (2010) 4 Intellectual Property Quarterly 380, 385. 109   Witness the US (New York) case Viacom International Inc v YouTube Inc, No 07 Civ 2103.

Some Current Issues   163 author is not distinct from that of the other author or authors’ (section 10(1) CDPA));110 • the relationship between copyright rules on ownership and authorship and contract law, given that a user who uploads his own ‘user-generated content’ will almost invariably be asked to agree to licence terms that may severely restrict or limit his rights to control the use of the works and may even seek to ‘own’ what users contribute.111 On the other hand, the use of contract terms seems essential, given the need to regulate the rights of joint authors under copyright law.112 The impact of these trends on artistic practice is as yet unclear—so far the trend has been on multi-authored and edited (primarily) literary works, of which Wikipedia is a very good example, but there are some examples in the visual arts as well.113 Note that Wikipedia does have 110   Note that a person who adapts an existing work may be able to claim joint authorship with the original author if the adaptor has contributed enough by way of skill and independent judgement to the finished work: Brown v Mcasso Music Production Ltd [2006] EMLR 3; and Fisher v Brooker [2007] FSR 12, [2008] FSR 26 (CA). In the context primarily of literary works, JGH Griffin has commented, ‘The rise of the multi-authored, collective, manipulable works may indicate a return to authorship of the sort found within an oral, speaking community, rather than the property-based one of the immediate pre-digital era. We may be at an age where “linear writing” and “the book” are at an end’: JGH Griffin, ‘The Changing Nature of Authorship: Why Copyright Law Must Focus on the Increased Role of Technology’ (2005) 2 Intellectual Property Quarterly 135, 136. 111   In the context of Sony’s online games and generally, see A Schwarz and R Bullis, ‘Rivalrous Consumption and the Boundaries of Copyright Law: Intellectual Property Lessons from Online Games’ (2005) 10(1) Intellectual Property Law Bulletin 13. 112   In particular, where there is more than one author/owner of a work, the consent of all authors/owners is required, eg, to licence the work (s 173(2) CDPA). For a discussion of ownership rules and the need for users to retain rights if this area is to fully develop, see C Ondrejka, ‘Escaping the Gilded Cage: User Created Content and Building the Metaverse’ (2004) 49 New York Law School Law Review 81. There is a growing legal discourse on ‘virtual property’ in the context of this area: eg, J Fairfield, ‘Virtual Property’ (2005) 85 Boston University Law Review 1047; and J Fairfield, ‘Anti-Social Contracts: The Contractual Governance of Virtual Worlds’ (2008) 53 McGill Law Journal 427, which argues that contract law is not the way to regulate online communities. 113   An example of an online artistic collaboration is the ‘The One Million Masterpiece Project’: http://www.millionmasterpiece.com/about (accessed 3 July 2011). However, this is a collection of individual, identifiable images from each artist, albeit that what emerges will be a collective work. Creative Commons (see below) has been encouraging collaborative art works—eg, a remixable art exhibition in Australia in 2010–11: http://creativecommons.org.au/weblog/entry/2071 (accessed 20 October 2011). See etcc.tv: ‘Each artist will take Creative Commons licensed images, create a new work based on those images, and in turn license their image for others to remix—legally. Through this process, the project utilises emerging copyright practices to demonstrate new models of distribution, collaboration and commerce.’

164  Art and Copyright licence terms that apply to contributions.114 A key influence on the licence terms developed for Wikipedia and similar sites has been the free and open-source software movement, which is a model of multi-author collaboration facilitated by licence terms that seek to prevent the privatisation of code. Similar licence terms have been devised for artistic works.115

6.4  modern art and copyright ( including film , video and performances ) The copyright protection afforded to a variety of modern and contemporary art in the United Kingdom is a matter of some debate.116 Often such works either strain to fall within any category of ‘artistic work’ under the CDPA; or even if they appear to fall within a specific category, their protection is uncertain as they may not be ‘original’. Sometimes what is at issue is the ‘concept’ underlying the work (eg, in conceptual art), which is not protectable, as it falls on the ‘idea’ side of the idea/expression dichotomy.117 It is worth considering what copyright protection UK law might give various twentieth- and twenty-first century art forms, assuming that the artist is either alive or died less than 70 years ago. 6.4.1 Ready-Mades, Objets Trouvés, Installations and Assemblage Artists who engage in ready-mades, objets trouvés, installations or assemblage118 elevate ordinary objects to the status of art, thereby 114   ‘The text of Wikipedia is copyrighted (automatically, under the Berne Convention) by Wikipedia editors and contributors and is formally licensed to the public under one or several liberal licenses. Most of Wikipedia’s text and many of its images are co-licensed under the Creative Commons Attribution-Sharealike 3.0 Unported License (CC-BY-SA) and the GNU Free Documentation License (GFDL) (unversioned, with no invariant sections, front-cover texts, or back-cover texts)’: http://en.wikipedia.org/wiki/Wikipedia: Copyrights (accessed 21 October 2011). 115   See, eg, the ‘Free Art Licence’ (http://www.artlibre.org) and the work of Creative Commons (http://www.creativecommons.org). 116  For a discussion of the position internationally, see L Bently and B Sherman, ‘Copyright Aspects of Art Loans’ in N Palmer (ed), Art Loans (London, Kluwer, 1996) 248–49 and 254–57. 117   See above ch 3. 118   The definitions of these terms are derived from the Glossary in The 20th-Century Art Book (London, Phaidon Press, 1996)

Some Current Issues   165 challenging accepted ideas about what art is. Marcel Duchamp’s exhibition of a bicycle wheel attached to a stool and signed by the artist, which was displayed as art in a gallery in 1913, represents the first socalled ‘ready-made’. An everyday, ‘found object’, or objet trouvé, which can be used as a ready-made, may also be used as part of an assemblage (see below). Ready-mades must fall within the definition of ‘sculpture’ under the CDPA in order to be protected by copyright as ‘artistic works’. As discussed above in chapter three, UK law defines sculpture broadly. But even if considered to be ‘sculpture’, are such works original? Here the originality consists in taking the found object out of its usual setting and exhibiting it in an artistic context. Bently and Sherman consider that under UK law, if the object was created with an artistic purpose in mind, then the courts are more likely to protect the work.119 In Creation Records Ltd and Others v News Group Newspapers Ltd,120 it was argued by counsel for the plaintiffs that along with other contemporary art works, Carl Andre’s famous brick ‘sculpture’121 ought to benefit from copyright protection. Whilst this point was not developed further by the judge in that case, the ‘permanence’ of such works was distinguished from the transitory assemblage of found objects that was the subject matter of this case—the latter did not qualify for protection either as sculpture or as collage. In any event, the cases discussed in chapter three (in particular, Metix v Maughan122 and Lucasfilm v Andrew Ainsworth123) suggest the courts are more willing to look at the intention and status (as ‘artist’) of the creator when deciding to class a work as a ‘sculpture’. Where a number of found objects are brought together to form a work on canvas, such as Arman’s ‘Crusaders’, in which stacks of paint 119   Bently and Sherman (above n 116) 267. As discussed above ch 3, whilst UK law protects sculptures irrespective of artistic quality, it may also be that the courts would be minded in such circumstances to follow the test for artistic quality in the context of works of artistic craftsmanship when considering ready-mades: the intention of the artist/craftsman is crucial. See Merlet v Mothercare [1986] RPC 129. 120   16 Tr L544, The Times (29 April 1997), discussed above ch 3. 121   ‘Equivalent VIII’ (1966), controversially acquired and displayed by the Tate Gallery. This work has received later UK judicial comment: see above ch 3. 122   [1997] FSR 718. 123   [2009] EWCA Civ 1328, 66. The Supreme Court in this case did not criticise this approach. Indeed, the purpose behind the work was crucial in not protecting the Imperial Stormtrooper helmet at issue as a sculpture—it was a film costume and prop, a utilitarian work, an element in the process of production of a film (the film rather than the helmet being the work of art): [2011] UKSC 39, paras 42–48.

166  Art and Copyright brushes are assembled and stuck together to form the work, then an ‘assemblage’ is created. It is suggested that where an assemblage consists of items affixed to canvas, then it is likely to be protected as a collage, following the definition of collage put forward by Lloyd J in Creation Records: ‘In my view a collage does indeed involve as an essential element the sticking of two or more things together’. Given the above discussion, there also seems no reason why installations124 should not in a number of cases be classed as sculpture under the CDPA. However, to the extent they include film and video or artistic works, then potentially there may be separate copyright protection for those elements. 6.4.2  Appropriation Art An artist engaging in ‘appropriation art’ expressly sets out to ‘borrow’ images from other sources and include or assimilate them into his or her own work.125 Whilst this practice can be traced to Dadaism, Surrealism and Pop art,126 appropriation art is rooted in postmodernism.127 It can therefore be debated as to whether appropriation art is 124   It can be debated what is meant by ‘installation art’. ‘Almost any arrangement of objects in a given space can now be referred to as installation art, from a conventional display of paintings to a few well-placed sculptures in a garden. It has become the catchall description that draws attention to its staging, and as a result it’s almost totally meaningless’: C Bishop, ‘But is it Installation Art?’ Tate, Etc (Issue 3, Spring 2005). Wikipedia comments, ‘Installation art describes an artistic genre of three-dimensional works that are often site-specific and designed to transform the perception of a space’: http://en. wikipedia.org/wiki/Installation_art (accessed 21 October 2011). 125   See B Sherman, ‘Appropriating the Postmodern: Copyright and the Challenge of the New’ (1995) 4 Social & Legal Studies 31 for a discussion of this area and how real the perceived challenges of appropriation art actually are to copyright law. For example, LA Greenberg, ‘The Art of Appropriation: Puppies, Piracy and Postmodernism’ (1992) 11 Cardozo Arts and Entertainment Law Journal 1, in her discussion of, among other things, Rogers v Koons (above n 16), considers that appropriation art represents ‘the most radical challenge to copyright laws to date’ (33). Sherman (above) lists examples of appropriation art as including Mike Bildo’s full-size copies of paintings by Cezanne, Matisse, Pollock, Lichtenstein and Picasso (to which Bildo attaches his signature and renames them) and Marcel Duchamp’s addition of a moustache to a copy of the Mona Lisa (32). Koons’ appropriation of the ‘String of Puppies’ photograph, the subject of Rogers v Koons, which is discussed below, is another example. 126   Sherman (ibid) 32, citing A Bonnett, ‘Art, Ideology and Everyday Space: Subversive Tendencies from Dada to Postmodernism’ (1992) 10 Society and Space 69. 127   ‘Re-appropriating existing representations that are effective precisely because they are loaded with pre-existing meaning and putting them into new and ironic contexts is a typical form of postmodern . . . critique’: L Hutcheon, The Politics of Postmodernism

Some Current Issues   167 sufficiently original, as here the expressive form (as opposed to merely the idea) of the original work is copied. So similar issues arise to those already considered in the discussion of the Bridgeman case earlier in this chapter. In addition, the artist can himself be open to a complaint of plagiarism or of copyright infringement, even if a defence of ‘parody’ or of fair dealing for the purpose of criticism or review is raised. For example, this occurred in relation to the 2000 Turner Prize nominated work by Glenn Brown, entitled ‘The Loves of Shepherds (after ‘Doublestar’ by Tony Roberts)’.128 It is worthwhile citing the Privy Council in Interlego v Tyco again as to what is necessary to afford copyright protection to a copy of a work: ‘There must in addition be some element of material alteration or embellishment which suffices to make the totality of the work an original work.’129 In the context of artistic works, such alteration or embellishment must be ‘visually significant’.130 It is not enough that what is done is to convey ‘information’131—so although in the process of appropriation, the meaning of the work is changed by placing it in a new context, its visual significance may well not be. Hence it may not benefit from copyright protection.132 6.4.3  Minimalist Art ‘Minimalist art is [art] pared down to its essentials’, according to Phaidon Press’s 20th-Century Art Book.133 Do such works embody sufficient effort to be protected by copyright? UK law has afforded copyright protection to a variety of simple drawings, including a hand for a (London, Routledge, 1989) 44, commenting on postmodern photography, including the work of Cindy Sherman, Sherrie Levine and Martha Rosler. See also Sherman (above n 125): ‘By placing a well-known object such as the American flag, a painting by Picasso or an advertising logo in a new context, the appropriation artist aims to denaturalize it and thus to provide the borrowed object with a new meaning or vocabulary’ (32). 128  See S Lockyear, ‘Copyright and the Visual Arts: Questions and Answers’ in D McClean and K Schubert (eds), Dear Images Art, Copyright and Culture (London, Ridinghouse/ICA, 2002); and also the earlier edition of this book (esp s 6.3.5). 129   Interlego v Tyco (above n 25) 972 (per Lord Oliver). 130   See above ch 3. 131   This is properly the subject of literary works in copyright law: Exxon v Exxon Insurance [1982] RPC 69. See Sherman (above n 125) 49 fn 22. 132   See Sherman (above n 125) 38–40. See also Interlego v Tyco Industries (above n 25) 972 (per Lord Oliver): ‘essentially artistic copyright is concerned with the visual image’. 133   Above n 118.

168  Art and Copyright voting card,134 so it is submitted that copyright protection ought not to be a problem for most minimalist paintings and drawings. However, the scope of protection will be very limited. So for example, when considering the copyright protection in engineering manufacturing drawings for a mobile blast-cleaning machine, a judge concluded that an argument that the skill and effort in producing the drawing in question was too trivial to justify a claim of originality was easy to advance, but he was not willing to accept it. The judge quoted from the essay entitled ‘Prose and Dr Tillotson’ by Somerset Maugham, in which Maugham talked about an unforgettable and haunting picture by Mondrian consisting of some black lines and a red one on a white background and suggested that any viewer might think he could easily produce the work himself as it looked so simple. Maugham ended his essay by challenging the reader to try.135 Certainly the UK position is to be distinguished from that in the United States, where, for example, the Register of Copyright refused to register a logo for ‘New York Arrows’ that was comprised of four angled lines forming an arrow and the word ‘arrow’ in cursive script.136 6.4.4  Film Copyright, Modern Art and Advertising: Gillian Wearing, Mehdi Norowzian and Beyond Some of the most creative British artists of recent times have abandoned or radically modified the use of traditional artistic media. Gillian Wearing, winner of the 1997 Turner Prize, is one of the best known of the so-called Young British Artists (YBAs). A number of her works have also provided inspiration for advertising campaigns. For example, ‘Signs’ (1993), a photographic work, involved people on the street being asked by the artist to write on signboards what they were feeling at the time and then holding the signs up in front of the camera. (One of the photographs of a young businessman with a sign reading ‘I’m Desperate’ became particularly well-known.) Wearing’s work allegedly inspired a Volkswagen advertisement in which a security guard, a harassed mother and others hold up signs stating what they   Kenrick v Lawrence (1890) 25 QBD 93. See discussion above ch 3.   SPE International Ltd v Professional Preparation Contractors (UK) Ltd [2000] EIPR N-19, transcript at p 20 (Rimer J). 136   John Mullere & Co v New York Arrows Soccer Team, 802 F.2d 989 (8th Cir 1986), discussed in Bently and Sherman (above n 116) 257. 134 135

Some Current Issues   169 are supposedly feeling (‘Sensitive’ in the case of the security guard, ‘Sex Chocolate Sex Chocolate’ in the case of the mother). ‘2 into 1’, a video work in which the voices of a mother and her sons are transposed, was allegedly emulated in a computer game advertisement. The artist protested about the taking of her ideas considering it to be ‘theft’, especially as there was no reference to her work.137 But no court proceedings ensued (or at least have been reported). However, a similar case, Norowzian v Arks Limited and Others (No 2),138 which went as far as the Court of Appeal, expressly considered the copyright protection afforded to contemporary artistic works, in particular film copyright. In this case, the plaintiff/claimant, Mr Norowzian, was a film director and also a successful director of advertising films. In 1992, he directed a short film, Joy, which was made to demonstrate his creativity to potential advertising clients (rather than being an express piece of advertising). Joy was a very short film with no dialogue, produced on a very low budget and shot on the flat rooftop of a London building. The set was simply a canvas sheet draped over an existing structure on the roof where the filming took place. The cast is one man, casually dressed, who performs a strange dance to music. According to the judge at first instance, Rattee J, the particularly striking feature of the visual impact of the film was the result of the filming and editing techniques employed by Mr Norowzian: the filming was carried out with a camera in a fixed or ‘locked off’ position, and the editing made extensive use of a process called ‘jump-cutting’. As defined by Rattee J, jump-cutting is: . . . a film editing process whereby the editor excises pieces of the original film within a sequence of movements by the actor, with the result that on the edited version of the film he appears to have performed successively, without an interval, two movements that could not have immediately succeeded each other.139

The result was a film containing apparent sudden changes of position by the actor/dancer that could never have been performed as successive movements in reality. In the trial, this was referred to as giving the film a ‘surreal effect’.140 Joy, according to Mr Norowzian, tells the story of 137   For background on Gillian Wearing and the works of art discussed, see ‘Daring Wearing by Miranda Sawyer: An Interview with the Artist’ Observer Magazine (3 September 2000). 138   [1999] FSR 79 (Rattee J), [2000] FSR 363 (CA). 139   Norowzian (ibid) 81. 140  Ibid.

170  Art and Copyright the development of the emotions of the sole character from diffidence to exuberant joy, portrayed by a development of his movements from tentative to increasingly broad and confident. Rattee J was of the view there was no doubt it was a striking example of a talented film director’s art. In 1994, a filmed advertisement for Guinness stout was shown in cinemas and on television in Eire and Northern Ireland and later (as a remake authorised by Guinness) in England and Wales. Called Anticipation, it portrays a man who waits for his pint of Guinness to settle by carrying out a series of dancing movements to music with no dialogue. There were two characters (drinker and barman) and a jumpcutting technique similar to that used in Joy, with a similar result: the dancing man appears to indulge in a series of jerky movements that could not be achieved by a dancer in reality.141 The makers of Anticipation had seen Joy—indeed, Mr Norowzian was asked to produce a similar commercial for Guinness but declined—and Guinness’ advertising agents then went off to produce Anticipation; the actor who played the drinker in Anticipation had also seen Joy. Following letters before action sent in 1994, 1995 and 1996, the plaintiff in 1997 commenced proceedings for copyright infringement and passing off against the advertising agency for Guinness, Arks, as well as its client, Guinness Brewing Worldwide Ltd (the second defendant) and Guinness plc, the holding company (the third defendant). The case was the subject of three judgments, none of which found in favour of Mr Norowzian.142 The issue the courts had to address was the scope of copyright protection for films. (There was an initial claim in passing off, but this was not pursued at trial.) In the United Kingdom, films are copyright works under section 1(1)(b) of the CDPA (as discussed above in chapter 3). However, all ‘film copyright’ protects is the film per se—ie, the recording. The copyright is designed to protect the copying of the frames of the film rather than the film being a copyright work in its own right. This copyright cannot be infringed by making a similar film unless actual frames of the original film are copied, and this was not the case in Norowzian.  Ibid.   Norowzian v Arks Ltd and Others (No 2), Interlocutory Judgment (Application to strike out part of the defence), Mr AG Steinfeld QC sitting as a deputy judge of the High Court (17 December 1997), [1998] FSR 394; Judgment of Mr Justice Rattee (17 July 1998), [1999] FSR 79; Court of Appeal Judgment of 4 November 1999, [2000] FSR 363. 141 142

Some Current Issues   171 Of course, there will be a range of other copyrights protecting a traditional film—copyright in the music, in any sets and designs, and literary copyright in the screenplay, etc. Yet in an innovative film such as Joy, the range of more traditional copyright rights involved is potentially limited, and in any event, not all aspects may be copied. So in this case, in order to strengthen the copyright claim, it was argued that Joy was itself a recording of a dramatic work (a dramatic work includes a work of dance or mime).143 This argument failed at trial: according to the judge, for a dance or mime to be a dramatic work, it must be able to be physically performed,144 and this was not possible with the actions in Joy; nor could the film itself be a dramatic work under the CDPA. The Court of Appeal, however, found that a film could of itself be a dramatic work under the CDPA. This point was not advanced to any extent in the High Court. The expression ‘dramatic work’, according to Nourse LJ in the Court of Appeal, as a matter of construction must be given its natural and ordinary meaning. According to the judge, a dramatic work is ‘a work of action, with or without words or music, which is capable of being performed before an audience’.145 A film was often, though not always, a work of action, and it was capable of being performed before an audience. Hence it could be a ‘dramatic work’. But it need not also be a recording of a dramatic work (which Joy, like many cartoon films, was not). Buxton LJ agreed, relying on Article 14 bis of the Berne Convention to the effect that ‘dramatic works’ include not only drama in any traditional or normal sense but also cinematography. Having found Joy to be protected by copyright as a dramatic work, the Court then went on to consider whether Anticipation copied all or a substantial part of Joy. Counsel for Mr Norowzian had argued that Joy derived its original dramatic impact form a number of factors, including the filming and editing techniques used. These, he argued, were part of the skill, labour and judgement that Mr Norowzian applied to making Joy, and combined with the other similarities, their effect is to demonstrate that Anticipation borrows much of its dramatic impact from Joy. He therefore submitted that Anticipation 143   A dramatic work must be recorded in writing or otherwise (eg, on film) to be protected: s 3(2) CDPA. 144  The only authority cited by the Judge for this was Lord Bridge in Green v Broadcasting Corporation of New Zealand [1989] RPC 700, 702: ‘it seems to their Lordships that a dramatic work must have sufficient unity to be capable of performance.’ 145   Norowzian CA judgment (above n 138) 367.

172  Art and Copyright reproduced a substantial part of the dramatic content of Joy—and therefore there was copyright infringement.146 The court rejected these arguments and held that copyright was not infringed. Nourse LJ’s reasoning is particularly relevant to the protection of art works by copyright: As [Rattee J] recognised, the highest that can be put in favour of [Mr Norowzian] is that there is a striking similarity between the filming and editing styles and techniques used by the respective directors of the two films. But no copyright subsists in mere style or technique. [Counsel for the defendant Arks Ltd] instanced the technique of pointillism, which was originated by the neo-impressionists Seurat and Signac. That was a telling example. If, on seeing La Baignade, Asnières at the Salon des Artistes Indépendents in 1884, another artist had used precisely the same technique in painting a scene in Provence, Seurat would have been unable, by the canons of English copyright law, to maintain an action against him. Other examples of original artistic styles or techniques whose imitation in the production of an entirely different subject matter would not found such an action might be the ‘sprung rhythm’ of Gerard Manley Hopkins’ verse or the thematic buildup of Sibelius’s second symphony. So here, the subject matter of the two films being, as [Rattee J] said, very different one from the other, the similarities of style and technique are insufficient to give [Mr Norowzian] a cause of action against the defendants.

According to Buxton LJ, the essence and originality of Joy rested in its subject matter: a representation in stylised form of a young man hesitating with tension when coming amongst a group of unknown people but gradually gaining self-confidence. That essence and originality was not reproduced at all in Anticipation.147 6.4.5  The Limits of Appropriation: Parody Parody is a word with a wide range of meanings, and appropriation may or may not involve parody.148 Parody may include an element of 146  As discussed in H Porter, ‘A “Dramatic Work” Includes . . . a Film’ (2000) Entertainment Law Review 50, 52. For another view of the Court of Appeal decision, see J Hughes and M Parry, ‘An Unsettling Feeling: A Second View of the Norowzian Decision’ (2000) Entertainment Law Review 56. And for a criticism of the treatment of film as ‘dramatic work’, see IA Stamatoudi, ‘“Joy” for the Claimant: Can a Film also be Protected as a Dramatic Work?’ (2000) 1 Intellectual Property Quarterly 117–26. 147   Ibid, 370. 148   See M Spence, ‘Intellectual Property and the Problem of Parody’ (1998) 114 Law Quarterly Review 594 [hereafter ‘Spence (1998)’]; E Gredley and S Maniatis, ‘Parody: A

Some Current Issues   173 satire or ridicule, and in more general terms, the work parodied is effectively re-used in all or part to perform a different function than the original work. However, unlike plagiarism, where the intention is to conceal the derivation of the work copied, a parodist relies on the audience’s awareness of the target work or genre to be successful: ‘The complicity of the audience is the sine qua non of its enjoyment.’149 A leading author on the subject, Linda Hutcheon, has spoken of parody as ‘imitation characterised by ironic inversion, not always at the expense of the parodied text’.150 According to Gredley and Maniatis, Hutcheon also sees parody as ‘one of the major forms of self-reflexivity in twentieth century art forms, marking “the intersection of creation and re-creation, of invention and critique” ’.151 As well as copyright and moral rights, other intellectual property rights may also protect against parody, including trade marks.152 A Fatal Attraction? Part 1: The Nature of Parody and its Treatment in Copyright’ (1997) 7 European Intellectual Property Review 339; and WJ Gordon, ‘Touring the Certainties of Property and Restitution : A Journey to Copyright and Parody’ (Oct 1999) Oxford Electronic Journal of Intellectual Property Rights for a law and economics approach to parody and copyright infringement. 149   Gredley and Maniatis (ibid) 340. 150   L Hutcheon, A Theory of Parody: The Teaching of Twentieth-Century Art Forms (London, Methuen, 1985) 6. See also her later work, The Politics of Postmodernism (London, Routledge, 1989). 151   Gredley and Maniatis (above n 148) 339, citing Hutcheon (ibid) 2. 152   As well as the law of passing off and registered designs (Spence (1998) (above n 148) 598–601). The use of trade mark law by corporations in North America to suppress parody or criticism is considered by R Coombes, The Cultural Life of Intellectual Properties (Durham, NC, Duke University Press, 1998). For example, in 1972, the Coca-Cola Company prevented the marketing of ‘ENJOY COCAINE’ posters in the same style as the well-known slogan ‘ENJOY COCA-COLA’: Coca-Cola Co v Gemini Rising Inc, 346 F.Supp 1183, 1193 (EDNY 1972). According to Coombes, US trade mark law will generally protect against parody (especially in a commercial context) on the grounds of either confusion or (more likely) the application of the trade mark dilution doctrine in favour of the proprietor of the mark. This doctrine seeks to prevent the tarnishing or erosion of the reputation of a trade mark even if there is no confusion as such. US trade mark law can potentially restrict artists who appropriate trade marks, whether words, signs or images (which may or may not be protected by copyright as well). Coombes (73–74) cites the artist Hans Haacke’s work ‘Metromobilitan’, which used Mobil Oil’s trade marks to criticise Mobil’s activities in South Africa and its sponsorship of South African art in the era of apartheid and in respect of which legal action was threatened. UK trade mark law has only a limited common law doctrine of dilution (see D Kitchin et al, Kerly’s Law of Trade Marks and Trade Names, 13th edn (London, Sweet & Maxwell, 2001) 14.82 and 14.83), and it also has a limited statutory basis (see s 10(3) Trade Marks Act 1994). An example where an attempt to prevent a commercial parody failed in the law of passing off on the basis that the mark was used on different goods (ie, there was no common field of activity) is the use of ‘Schlurppes’ as a ‘joke’ (in contrast to ‘Schweppes’) in Schweppes Limited v Wellingtons Limited [1984] FSR 210. See also below ch 8 for a

174  Art and Copyright parodist is unlikely to face problems if only the style or genre of other works is made the subject of parody, for there is then unlikely to be copyright infringement. However, where the expression, as opposed to the mere idea, of a work is copied for the purposes of parody, then there may well be a copyright issue. UK law, unlike the law in a number of continental jurisdictions,153 currently makes no express exceptions for parody. A parody will constitute an infringement of copyright if the parodist has taken a substantial part of the protected work, although merely ‘conjuring up’ the work being parodied will not normally amount to infringement.154 Parodists also potentially face liability for infringement of moral rights—that of derogatory treatment and the right to object to false attribution of authorship.155 It is a matter of some debate as to when a discussion of trade mark law, including the law of passing off (in particular, the publication of the satirical secret political diaries of Alan Clark were prevented inter alia by the law of passing off: Clark v Associated Newspapers [1998] RPC 261). For a relatively recent South African Constitutional Court case in which freedom of expression trumped trade mark rights, see Laugh It Off Promotions CC v South African Breweries International (Finance) BV t/a Sabmark International and Another (CCT42/04) [2005] ZACC 7, 2006 (1) SA 144 (CC), 2005 (8) BCLR 743 (CC) (27 May 2005). The trade mark at issue was South African Breweries’ mark ‘America’s lusty, lively beer Carling Black Label Beer Brewed in South Africa’. The defendants Laugh It Off were producing and selling t-shirts that lampooned the trade mark by stating: ‘Africa’s lusty, lively exploitation since 1652 White Black Labour Guilt No regard given worldwide’. At the end of his very thoughtful judgment, Sachs J concludes, ‘A society that takes itself too seriously risks bottling up its tensions and treating every example of irreverence as a threat to its existence. Humour is one of the great solvents of democracy. It permits the ambiguities and contradictions of public life to be articulated in non-violent forms. It promotes diversity. It enables a multitude of discontents to be expressed in a myriad of spontaneous ways. It is an elixir of constitutional health’ (para 110). 153   For example, France and Spain: see, eg, A Ramalho, ‘Parody in Trademarks and Copyright: Has Humour Gone Too Far?’ (2009) Cambridge Student Law Review 58. 154   S 16 CDPA. See, for example, the music and literary copyright case Williamson Music Ltd v Pearson Partnership Ltd [1987] FSR 97. The test formulated by Judge Paul Baker QC in this case was ‘whether the parody, on the one hand, conjures up the idea of the original work and no more than the idea or, on the other hand, whether it uses a substantial part of the expression of the original work’ (107). It is no longer a defence to argue that because a parody is itself an original copyright work then there is no copyright protection. See, for example, the criticism of this (old) approach by Falconer J in Schweppes Limited and Others v Wellingtons Limited [1984] FSR 210, approved by Judge Paul Baker QC in Williamson Music (106): if a substantial part is taken, then unless a fair dealing defence can be relied upon (eg, for purposes of criticism or review, per s 30(1) CDPA), there will prima facie be infringement. See below. 155   Under s 84(1) CDPA, actionable without proof of damage. See Clark v Associated Newspapers (above n 152), which involved a spoof diary of the politician Alan Clark by Peter Bradshaw entitled Alan Clark’s Secret Political Diaries. The plaintiff succeeded under both s 84(1) and the law of passing off.

Some Current Issues   175 parody might constitute derogatory treatment.156 Does the parody have to be offensive to the spirit of the work? Or will most parodies not be derogatory treatment in any event because they are not usually prejudicial to the honour or reputation of the original artists, in the sense that a parody will not be made out to be the work of the (parodied) artist?157 Others argue that moral rights should strongly protect against parody.158 By way of example of the difficulties the law of copyright and moral rights face when dealing with artistic parodies, consider the Swedish case Max Walter Svanberg v Leif Eriksson.159 The plaintiff was an internationally recognised Swedish surrealist artist. The defendant, a well-known satirist, exhibited a reproduction of one of Svanberg’s works, to which Eriksson had added serigraphically printed comments and printing instructions. The intention was to add to the debate in Sweden about the propriety of selling reproductions of graphic works and to act as a satire on the commercial practices involved in graphic art. The plaintiff sued for infringement of copyright, and the case eventually went to the Supreme Court of Sweden. The Court held that Eriksson’s additions, which only covered a minor portion of Svanberg’s work, could clearly be distinguished from Svanberg’s work, and no material alteration to the central elements of Svanberg’s work had taken place. So the artistic integrity of Svanberg’s work was not compromised, and Svanberg’s reputation as an artist had not suffered as a result of Eriksson’s actions to the reproduction.160 It is possible that certain parodies may benefit from one of the fair dealing defences available under the CDPA, in particular, fair dealing   See Spence (1998) (above n 148) 597–98.   This is the view taken by Copinger (above n 7) para 11-46, citing Clark v Associated Newspapers (above n 152), in which derogatory treatment did not arise as there was no ‘treatment’ of the plaintiff’s work because the plaintiff’s style rather than his actual work was involved. According to Copinger, only where the treatment is made out to be the plaintiff’s can there be infringement. Copinger, however, foresees one case where there might be derogatory treatment: where those who read, see or hear the plaintiff’s work will no longer be able to do so without recalling to mind the parody, to the prejudice of the original artist’s honour or reputation. 158  S Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886–1986 (London, Kluwer, 1987) 486. 159   (1979) EIPR D-93. 160   Indeed, the County Court of Appeal in this case stated that derived art forms were common in artistic and especially modern art circles: artistic practice in this area should be borne in mind when considering the issue of infringement and artists’ rights (Svanberg v Eriksson (ibid) 94); this point was not overruled by the Supreme Court. 156 157

176  Art and Copyright for the purposes of criticism or review.161 However, this would only be a defence to copyright infringement, not to infringement of moral rights. Certainly a parody can fall within the much broader fair use doctrine in the United States as a form of criticism; unlike UK and Canadian law, for example, the US fair use doctrine is in general far more flexible as regards parodies.162 Nevertheless, in Rogers v Koons,163 the celebrated kitsch artist Jeff Koons was unable to rely on this defence when sued for copyright infringement in respect of a sculpture he created. The sculpture was a copy of a well-known black-and-white photograph ‘Puppies’ showing a man and a woman on a bench with a string of eight German Shepherd puppies. Koons argued that he had created a parody of modern society; however, the Court was of the view that the work copied must itself be at least in part the object of parody. This was to set some practicable boundaries to this defence.164 The defendant’s ‘bad faith’ and ‘profit-making motives’ were also fatal to his case.165 161   S 31 CDPA. In Williamson Music (above n 154), Judge Paul Baker QC seemed to accept that fair dealing for the purpose of criticism or review might be successfully relied on in certain circumstances but declined to discuss the matter further. See Copinger (above n 7) 9–18. But Copinger foresees problems with this defence. There must be ‘sufficient acknowledgement’ of the work parodied—ie, there must be an acknowledgement identifying the work in question by its title or other description and identifying the author, unless (in the case of a published work) it is published anonymously or (in the case of an unpublished work) it is not possible to ascertain the identity of the author by reasonable enquiry: Copinger (above n 7) 9-21. Both Spence (1998) (above n 148) and Copinger see such a defence as unlikely in many cases, as it appears to run counter to publishing practice, and ‘one of the benchmarks against which a parody can be judged is its success in making a connection with the work being parodied without any form of express reference’: Copinger (above n 7) 9-18. 162  See Campbell v Acuff-Rose Music (Supreme Court) (above n 52). Gordon (above n 148) contrasts the limited fair dealing defences in Canadian law with the fair use doctrine in the US, and she cites a Canadian case involving the parodic use of a Michelin logo by a trade union, in which an argument that Acuff-Rose be applied was rejected: Cie Generale des Establissements Micheline-Michelin & Cie v CAW-Canada, 71 CPR 3d 348): Gordon (above n 148) 9. According to Gredley and Maniatis (above n 148), the Supreme Court in Acuff-Rose in any event arguably reinforced a narrow, traditional view of parody, placing it firmly in the context of ridiculing distortion or criticism: ‘To justify a finding of fair use, the parody must—at least in part—recognisably target and comment on or criticise the original work’ (343). Certainly this was the view taken in Rogers v Koons (above n 16) (see below), which was cited by Justice Kennedy in Acuff-Rose. 163   Above n 16. 164   See LD DuBoff and CO King, Art Law in a Nutshell, 3rd edn (St Paul, MN, West Group, 2000) 186. 165   See Gredley and Maniatis (above n 148) 342. Gredley and Maniatis critically discuss at some length the approach of the US courts to parody and, in particular, the application of the fair use defence as elaborated in Koons, the landmark Campbell v Acuff-Rose Music case (above n 52) and others. They conclude: ‘The theoretical and

Some Current Issues   177 There remains a continuing debate about whether parody should be afforded special treatment under the law. According to Michael Spence, four arguments are often advanced:166 a. Parody should be treated as a distinctive genre as it deserves special treatment. b. The problem of parody is one of ‘market failure’, as owners of copyright works are unlikely to grant licenses to permit the creation of parodies; and so the law should intervene to allow new creative works such as parodies to come into existence.167 c. Parody involves the ‘transformative’ use of a copyright work— ie, a new creative work arises that is not a market substitute for the earlier work, notwithstanding its dependence on it.168 d. Parodists’ right to free speech should be protected.169 practical difficulties of applying the US fair use doctrine to parody, and of arriving at a consistent and coherent approach which would establish certainty both for parodists and owners of parodied works, has led to calls for the redefinition of parody and its recognition as a separate art form for copyright purposes’ (343). 166   Spence (1998) (above n 148) 601–15. 167   See Gordon (above n 148). 168   It is argued that allowing transformative uses encourages the production and dissemination of texts and that it is also necessary for the preservation of certain types of artistic discourse: see Spence (1998) (above n 148) 605, citing the German case Alcolix BGH (1994) GRUR 206, 208. According to Spence, the argument in this case was that artists must be able to use existing works if they are to communicate effectively and to speak freely about and through the artistic tradition in which they work; although as Spence rightly points out, this seems to be a variant of the argument that parody should fall within the right to free speech (607). As discussed above, UK law once recognised this idea, which stems from Glyn v Weston Feature Film Company [1916] 1 Ch 261, 268: ‘no infringement of the plaintiff’s rights takes place where the defendant has bestowed such mental labour upon what he has taken and has subjected it to such revision and alteration as to produce an original result’ (per Younger J). However, this is now no longer the case: see Williamson Music (above n 154). Nevertheless, Laddie opens the door to this idea, eg, ‘where the parody does not really injure the copyright owner, save in his amour propre’: HIL Laddie, P Prescott, M Vitoria et al, The Modern Law of Copyright and Designs, 3rd edn (London, Butterworths, 2000) 3.142 fn 6. See also the possibility that a form of the fair use doctrine might still apply in the UK. In any event, a number of other jurisdictions do give weight to this idea (eg, Australia (probably), the US (Campbell v Acuff-Rose Music (above n 52)), Germany and Italy): Spence (1998) (above n 148) 605–6. 169   It should not be forgotten that copyright, in the sense of printing privileges, arose as a means of suppressing free speech and, more particularly, religious heresy. Note that there is only likely to be a conflict between the right to freedom of expression under human rights law and copyright law (with freedom of expression trumping copyright) in rare circumstances: see in particular the Court of Appeal in Ashdown v Telegraph Group [2002] RPC 5. See, for example, the discussion in CJ Angelopoulos, ‘Freedom of Expression and Copyright: The Double Balancing Act’ (2008) 3 Intellectual Property Quarterly 328–53.

178  Art and Copyright In conclusion, Spence considers that parody by itself does not require special legislation in the United Kingdom—existing statutes and laws potentially give judges the scope to balance the rights of intellectual property holders and the free speech rights of parodists.170 However, others have recently called for the reform of UK law here and for the introduction of a specific copyright exception for parody, which would be compatible with the Information Society Directive.171 6.4.6  Appropriation and Parody: Some Concluding Thoughts As Alfred Yen has eloquently pointed out,172 striking a balance between the interests of authors and that of the public is crucial in setting the limits to which copyright law can be used to prevent appropriation. Yen has stressed that authorship in its broadest sense is possible only when future authors are able to borrow from those who went before them. If too much of existing works is reserved as private property through the copyright system, then would-be authors will find it impossible to create. Hence, as stated earlier in this book, a strong public domain is a vital part of any copyright system. 6.4.7  Film, Video, Multimedia Works, Animation, Computer Games and Performance Works: Copyright and Performers’ Rights As will be clear from the discussion elsewhere in this book, when the copyright protection of works that do not neatly fall into the categories of ‘artistic work’ in section 4 of the CDPA is considered, difficulties arise. This is because UK copyright law currently protects only certain categories of works; the wider concept of ‘intellectual creations’ is not part of UK copyright law, as it is in some European laws.   Spence (1998) (above n 148) 615–20.   Above n 93. Recent UK copyright law reviews have recommended a parody exception. See Gowers Review of Intellectual Property, HM Treasury (2006) Recommendation 12, para 4.90: ‘Create an exception to copyright for the purpose of caricature, parody or pastiche by 2008’; and I Hargreaves, Digital Opportunity: A Review of Intellectual Property and Growth, UK Intellectual Property Office (May 2011) para 5.37. See also the arguments advanced by C Rutz, ‘Parody: A Missed Opportunity?’ (2004) 3 Intellectual Property Quarterly 284–315. 172   AC Yen, ‘The Interdisciplinary Future of Copyright Theory’ in M Woodmansee and P Jaszi (eds), The Construction of Authorship (Durham, NC, Duke University Press, 1994) 159–61. 170 171

Some Current Issues   179 For example, take a film, a video work, a computer game or a multimedia work (with animation, say): the CDPA only specifically defines and deals with films (and any underlying software would be protected as a literary work). Accordingly, a film as a ‘copyright work’173 is protected both as a form of ‘intellectual creation’ (in a limited sense, based on case law, as a ‘dramatic work’174) and as a ‘commodity production’ under section 5B of the CDPA (with no express requirement of originality).175 A film for this purpose is ‘a recording on any medium from which a moving image by any means can be produced’ (with the sound track being treated as part of the film). This is a broad definition covering films, video works, animation and potentially other ‘recordings’.176 In the case of a film under section 5B, copying is restricted by copyright in the film (section 17(1) of the CDPA), and this includes making a photograph of the whole or any substantial part of any image forming part of the film (section 17(4) of the CDPA). For a video work, its recording will be protected as a film under section 5B, and it may also be protected as a dramatic work, together with any sound track (which may benefit from a separate copyright in the sound recording) and along with any other copyrights (literary, dramatic and musical works) underlying the music and any dialogue and action. So rather than there being one category of multimedia or similar work, multimedia works and videos comprise various   See s 1 CDPA.   Norowzian v Arks Ltd (No 2) [2000] FSR 363. But query who the authors of a film as a dramatic work are—presumably as joint authors all those involved in creating it: see M Spence, Intellectual Property (Oxford, Oxford University Press, 2007) [hereafter ‘Spence (2007)’] 99–100. 175  Anne Barron discusses film copyright at some length in A Barron, ‘The Legal Properties of Film’ (2004) 67(2) Modern Law Review 177–208. She notes there are two UK approaches to film copyright (as discussed in this section): a ‘physicalist’ approach, which treats a film as co-extensive with its recording on some medium, and a ‘formalist’ approach, which treats a film as an expressive form that exceeds this physical manifestation. As discussed in Norowzian v Arks, the expressive form is that of a dramatic work. Barron has also commented that by only potentially protecting film as ‘dramatic work’ (which by its nature will have limits even if broadly defined as works of action, with or without words or music, which are capable of being performed before an audience (see Nourse LJ in Norowozian)—Barron refers to a film as a dramatic work as a ‘story on celluloid’ (205)), ‘Norowzian has both revealed the legal conditions of possibility for the commercial dominance of fiction cinema, and exposed the large gap between this conception of film aesthetics and the much wider conceptions that are adhered to by film practitioners, theorists and audiences. In other words, the ultimate legacy of Norowzian has been to map out a site of instability in copyright discourse that is now proving to be a space for critical reflection about the law’s role in relation to film’ (Barron (2004) 207–8). 176   Spence (2007) (above n 174) 100. Here, the authors are the producer and principal director jointly (s 9 CDPA). 173 174

180  Art and Copyright copyright-protected elements.177 In addition, under UK law, performers enjoy protection for their performances; this right is complex but in essence gives performers control over their performances as soon as they are recorded (ie, a film or sound recording is made of the performances).178 It should be noted that there is debate about the legal protection of computer games, especially those with a significant amount of audiovisual content dependent on the player’s interaction. Clearly, they will involve underlying literary works (software), artistic works and sound recordings, but following an Australian case, they may also be considered to be films.179 However, where the ‘plot’ of a game depends on player interactions, it can be questioned whether there is a sufficiently clearly delineated dramatic work involved.180

6.5 

orphan works 181

There has been much discussion in recent years about updating copyright law to deal with the perceived problem of ‘orphan works’, especially in an era of mass digitisation by libraries, museums, archives and galleries of works in their possession for both preservation purposes 177   See WR Cornish, D Llewelyn and T Aplin, Intellectual Property, 7th edn (London, Sweet & Maxwell, 2010) 881–82; and T Aplin, Copyright Law in the Digital Society (Oxford, Hart Publishing, 2005). By way of example, consider the work of new media artists Jon Thomson and Alison Craighead: much of their work combines a range of data, information and copyright protected works into new art forms, including installations and video works. See http://thomson-craighead.net/ (accessed 22 October 2011). 178   A protected performance may be a dramatic performance (including dance and mime); a musical performance; a reading or recitation of a literary work; or a performance of a variety act or similar presentation (s 180(2) CDPA). See Spence (2007) (above n 174) 122–23. Note that the performance must be a live one given by one or more individuals (s 182(2) CDPA). Note also that the broadcasting of a live performance also falls within performers’ rights (s 182 CDPA). See generally R Arnold, Performers’ Rights, 4th edn (London, Sweet & Maxwell, 2008). 179   Sega Enterprises Ltd v Galaxy Electronics Pty Ltd (1997) 145 ALR 21. 180   See the discussion above ch 3, s 3.2.4 about the need for certainty regarding what is protected by copyright. 181   This section is based in part on discussions at the 2011 Workshop ‘Who Owns the Orphans? Traditional and Digital Property in Visual Art’, University of London Senate House (17 March 2011). The author is grateful to Professor Uma Suthersanen, Dr Maria Mercedes Frabboni and their colleagues, who organised the workshop under the Arts and Humanities Research Council ‘Beyond Text’ programme, as well as to his fellow participants.

Some Current Issues   181 and broadening access through online display. There are a number of definitions of ‘orphan works’. One is that they are works whose rightsholders are not known or easy to find and trace.182 If such works appear likely to be still in copyright, then the fact they are ‘orphans’ may well dissuade their owners to digitise and/or make them available online, due to their inability to clear the rights to use the works in question, even after diligent searching. The fear is that the rights-holders may emerge in the future and claim copyright (and possibly moral rights) infringement, and the institution concerned therefore does not wish to risk financial penalties (damages, licensing fees) and adverse publicity. The possibility that digital archives and libraries are being held back by the uncertainly over orphan works has been identified as an important issue in both the United States and the European Union, as it would hinder the public dissemination of cultural goods to the benefit of society as a whole.183 Vetulani has noted: Discussions on how to deal with orphan works are currently being undertaken by stakeholders and cultural and collective management institutions [ie, collecting societies] at different levels and scopes. Some of them have been initiated by the stakeholders themselves, others by the European Commission or by Member States. Generally speaking, the aim of these discussions is to find a solution to facilitate the use of orphan material without prejudice to copyright. The eventual solution should provide legal certainty both to users and right holders, should the right holders reappear after the use of orphan works was made without their explicit consent.184 182   An alternative definition is to focus on how works that originally were clearly traceable (eg, picture library images containing metadata to identify the copyright owner, etc) intentionally become ‘orphaned’ when this metadata is stripped away by third parties and/or are used without proper credits. This is perceived to be a particular problem for photographic and visual art images: eg, S Fodor (of the Coordination of European Picture Agencies Stock, Press and Heritage (CEPIC), ‘Orphan Works: Challenges and Opportunities’, submission to the European Commission’s Public Hearing on Orphan Works’ (26 October 2009), see http://ec.europa.eu/internal_market/copyright/docs/ copyright-infso/orphanworks/Fodoren.pdf (accessed 22 October 2011)). Strictly speaking, however, this is not really an orphan works issue—the stripping away of rights management information is itself potentially an unlawful act under EU copyright law (Art 7, Information Society Directive) and so is not discussed further in this section. 183   In the United States, see US Copyright Office, Report on Orphan Works: A Report of the Registrar of Copyrights (January 2006), available at http://www.copyright.gov/ orphan/orphan-report-full.pdf (accessed 22 October 2011). In the European Union, see, eg, A Vetulani, The Problem of Orphan Works in the EU: An Overview of Legislative Solutions and Main Actions in This Field, European Commission, DG Information Society (February 2008); and A Vuopala, Assessment of the Orphan Works Issue and Costs for Rights Clearance, European Commission, DG Information Society (May 2010). 184   Vetulani (ibid) 5.

182  Art and Copyright There are a number of possible solutions. One is to create a specific exception to copyright law to deal with orphan works;185 other options include various licensing models and schemes,186 as well as at the same time encouraging the establishment of copyright registers to allow for easier searching of rights.187 The European Commission has been working on a proposal for a Directive for orphan works and has recently stated that it ‘. . . should ensure that orphan works can be digitised and used in the information society’.188 However, in the United States, recent attempts to legislate in this area have had mixed results.189 The current absence of specific copyright exceptions regarding orphan artistic works means that those who wish to use such works would do well to undertake a risk assessment before embarking on any potentially infringing acts. But the law will change here if the European Commission proposal on this area is adopted.

185   Ie, a specific exception to copyright or a limitation on the user’s liability. In the UK there is already some limited provision here: eg, s 57 CDPA states that copyright is not infringed where it is not possible by reasonable inquiry to ascertain the identity of the author and where it is reasonable to assume that copyright has expired or the author died 70 years or more before the infringing act. Attempts in the UK following the 2006 Gowers Review of Intellectual Property (above n 171) to implement orphan works provisions in the Digital Economy Bill 2010 failed. See DWK Khong, ‘The (Abandoned) OrphanWorks Provision of the Digital Economy Bill’ (2010) 32(11) European Intellectual Property Review 560–64. 186   For example, under one scheme, users who cannot reasonably locate a copyright owner would pay a modest fee to a ‘licensing’ agency that, even if not mandated by the rights holder concerned (which appears unlikely given they cannot be traced by the user), is given a ‘licence’—in effect, an indemnity to protect them should the rights-holder appear at some point. In some ways, this is similar to the user buying insurance. There are a number of voluntary and mandatory licence models under recent discussion: see, eg, Khong (ibid). 187  See, eg, the EU ARROW Project: N Kroes (Vice-President of the European Commission responsible for the Digital Agenda), ‘Addressing the Orphan Works Challenge: The International Federation of Reproduction Rights Organisations (IFRRO) Launch of ARROW+ (Accessible Registries of Rights Information and Orphan Works towards Europeana)’, Press Release (Brussels, 10 March 2011), available at http://europa. eu/rapid/pressReleasesAction.do?reference=SPEECH/11/163 (accessed 22 October 2011). 188   Kroes (ibid). On 24 May 2011, the Commission published its proposal: ‘Proposal for a Directive of the European Parliament and of the Council on Certain Permitted Uses of Orphan Works’ Com(2011) 289 Final. 189   Khong (above n 185). Note, however, that s 108(h) US Copyright Act, which dates from 2005, is a limited exception/‘safe harbor’ for libraries and certain other institutions in respect of preservation, scholarship or research in respect of works in the last 20 years of their copyright term. See also ss 107 and 504 US Copyright Act in respect of ‘fair use’ protections here as well under US law. For a critique of recent US proposals, see N Netanel, Copyright’s Paradox (New York, Oxford University Press, 2008) 205–7.

Some Current Issues   183 6.6 

art , originality , infringement

and recent developments in eu copyright law

As noted earlier in this book, the Information Society Directive is the current key piece of European copyright law, both for digital and nondigital works and infringement.190 Ten years on from its adoption, we are now seeing both domestic and CJEU cases dealing with the application and interpretation of the Directive. Impressions so far are that these decisions in the main are good for rights-holders. However, at the time of writing, the impact of EU copyright law on the development of UK copyright law remains unclear. So what follow are some observations on how the law is developing and its possible impact on UK copyright law. In reviewing recent CJEU decisions, several important points emerge inter alia from the case law: a. The communication to the public right in Article 3 of the Information Society Directive should be interpreted broadly.191 b. Exceptions to copyright must be interpreted strictly.192 c. The reproduction right set out in Article 2 of the Directive is a Community concept to be interpreted uniformly across the Union—so this covers direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or part of an author’s ‘works’ (and also films, etc) and should also be interpreted broadly.193 d. ‘Works’ must be ‘intellectual creations’194 (so it can be argued that the concept of what a work is should be broader than the specifically defined categories in UK law).195   Directive 2001/29/EC (above n 93).   Sociedad General de Autores (above n 97). Moreover, the definition of the right in s 20(2) CDPA is not exhaustive: ITV Broadcasting v TV Catch Up (above n 97); and Twentieth Century Fox v Newzbin (above n 97). See also Recital 23 of the Information Society Directive (above n 93): ‘This right should be understood in a broad sense covering all communication to the public not present at the place where the communication originates.’ 192   Infopaq International v Dansk Dagblades Forening [2009] EUECJ C-5/08 (16 July 2009) para 56. See also the UK case Newspaper Licensing Agency Ltd & Others v Meltwater Holding BV & Others [2010] EWHC 3099 (Ch) (26 November 2010), [2011] EWCA Civ 890 (27 July 2011) 22. 193   Infopaq (ibid) paras 27–29 and 41–43. 194   Ibid, para 34. 195  This argument is made in C Handig, ‘Infopaq International A/S v Danske Dagblades Forening (C-5/08): Is the Term “Work” of the CDPA 1988 in Line with the European Directives?’ (2010) 32(2) European Intellectual Property Review 53–57. For 190 191

184  Art and Copyright e. The test for the originality of a work is that it is the author’s own intellectual creation.196 In a recent CJEU case (Infopaq), it was made clear that even short works can potentially be protected by copyright (eg, as short as 11 words from a newspaper article);197 and in the United Kingdom in a recent case (Meltwater, applying Infopaq), newspaper headlines were held to be potentially protected by copyright.198 So this case law also suggests that, eg, some book and article titles might conceivably be protected by copyright (overturning the long-held view against this).199 However, going beyond the specific facts in Infopaq and Meltwater, if the test for originality for all copyright works is now the authors’ own intellectual creation rather than ‘sweat of the brow’, then this may have significant consequences for the protection of certain types of artistic work as UK case law develops following CJEU decisions.200 Also, if the test for infringement in light of Infopaq is changed from the UK test of taking all or a substantial part of the copyright work to that in Infopaq (where there was infringement even though only limited parts of a work were taken, because those parts were the author’s intellectual creation)—then what impact will this have?201 example, the definition of a work in German copyright law is ‘exemplary’, not exhaustive. 196   Infopaq (above n 192) paras 30–51. In other words, the author’s ‘creativity’ rather than the traditional UK law concept of ‘sweat of the brow’ is what counts. 197  Ibid. 198   Newspaper Licensing Agency v Meltwater (above n 192) [2010] EWHC 3099 (Ch) para 71 (per Proudman J): ‘In my opinion headlines are capable of being literary works, whether independently or as part of the articles to which they relate. Some of the headlines in the Daily Mail with which I have been provided are certainly independent literary works within the Infopaq test.’ This approach was upheld on appeal: Newspaper Licensing Agency v Meltwater [2011] EWCA Civ 890, 22. 199   See, eg, Francis Day & Hunter v 20th Century Fox [1940] AC 112; and Exxon v Exxon Insurance (above n 131). 200   See the implications highlighted in E Derclaye, ‘Infopaq International A/S v Danske Dagblades Forening (C-5/08): Wonderful or Worrisome? The Impact of the ECJ Ruling in Infopaq on UK Copyright Law’ (2010) 32(5) European Intellectual Property Review 247–51. She argues, ‘A huge beneficial change resulting from the Infopaq decision could well be for authors of works of artistic craftsmanship. The decision could well mean that the obscure requirement of “artistic character or quality” is out of the window’ (249). 201   This is discussed by Stephen Vousden in light of the previous comment by Jacob LJ in Mazooma [2007] EWCA Civ 219, para 29: ‘I should, in passing, mention one other difference of language pointed out by Mr Howe. The [Software Directive of 1991] defines “restricted acts” as reproduction “in any form, in part or in whole” (Art 4(a)). The UK Act does not say “in part or in whole”. It uses the well-established language “in relation to the work as a whole or any substantial part”, s 16(3)(a).’ Jacob LJ also noted that the

Some Current Issues   185 6.7 

traditional cultural expressions and copyright

The non-Western art forms of indigenous peoples pose a particular challenge to copyright law, as does the whole question of how the Western legal concept of intellectual property relates to cultural expressions (including folklore) and indigenous knowledge from non-Western societies.202 Aboriginal peoples in particular (not least because of the experience in Australia and New Zealand) may wish to have redress should items with particular religious or cultural significance be copied in inappropriate ways or in breach of tribal secrecy.203 For example, in Australia, ‘The right to create paintings and other artworks depicting creation and dreaming stories, and to use pre-existing designs and well definition of artistic work and reproduction ‘. . . is an aspect of UK copyright law untouched by any EU harmonisation’ (para 11). So according to Vousden, Infopaq would appear to prevent UK courts from taking such an approach in future if they are to follow EU law as interpreted by the CJEU in Infopaq. See S Vousden, ‘Infopaq and the Europeanisation of Copyright Law’ (2010) World Intellectual Property Organization (WIPO) Journal 197, 208–10. See also the discussion by Thomas Hoppner, who queries where Infopaq harmonises the conditions under which copyright protection is conferred as depending on the ‘expression of the intellectual creation of the author’ ‘rather than the common law criterion of the level of the author’s skill, labour and capital involved in crafting the work’ (on the grounds that except for limited areas (computer programs, databases and photographs), the CJEU ‘lacks authority to define the conditions for copyright protection’): T Hoppner, ‘Reproduction in Part of Online Articles in the Aftermath of Infopaq (C-5/08)’ (2011) 33(5) European Intellectual Property Review 331, 332. 202  See FW Grosheide et al (eds), Articles on the Legal Protection of Cultural Expressions and Indigenous Knowledge (Antwerp, Intersentia, 2002). For further background, see BT Hoffman (ed), Art and Cultural Heritage Law, Policy, and Practice (Cambridge, Cambridge University Press, 2006) esp ‘Part Seven: Who Owns Traditional Knowledge?’ and WB Wendland, ‘Intellectual Property and the Protection of Traditional Knowledge and Cultural Expressions’, which looks at what the World Intellectual Property Organisation in Geneva (WIPO) have been involved with in terms of international initiatives in this area. See also the work of Silke von Lewinski, eg, her chapter ‘Protection of Folklore’ in S von Lewinski, International Copyright Law and Policy (Oxford, Oxford University Press, 2008). The terms ‘folklore’ and ‘traditional cultural expressions’ are the preferred terms here and are often used simultaneously: von Lewinski (above) 527. ‘Traditional knowledge’ is also a term used, but this relates less to copyright and expressive art forms and more to knowledge or techniques (often kept secret) that may have medicinal or other uses (and are often of interest to Western companies): B Hammer Jensen, ‘Who Owns Traditional Knowledge? A Personal and Industry View’ in Hoffman (ed) (above) 340–51. 203   If such works are not in the public domain, then the law of confidence might be a useful source of protection: Foster v Mountford (1976–78) 29 FLR 233, in which the Supreme Court of the Northern Territory suppressed the publication of an anthropology text that revealed tribal secrets. See also below ch 8.

186  Art and Copyright recognised totems of the clan, resides in the traditional owners (or custodians) of the stories or images.’204 These and similar works may fail to be adequately protected by copyright/moral rights205 because, for example: a. It may be difficult to show that they are original works for copyright purposes: often such works are evolutionary and derivative in nature.206 However, this may not necessarily rule out a finding of ‘originality’ in all cases—see, for example, the Australian case of Milpurrurru and Others v Indofurn Pty Ltd and Others.207 204   Milpurrurru and Others v Indofurn Pty Ltd and Others (1994) 130 ALR 659, para 12 (per von Doussa J). The judge also noted that under Aboriginal law, it is the responsibility of the traditional owners to take action to preserve the dreaming and to punish those responsible for the breach, even if they themselves had no control over or knowledge of what occurred (para 13). Sanctions can include the removal of the right to participate in ceremonies and to paint stories; ostracism; forced payment of money; and in serious cases, the possibility of physical violence, such as spearing. It is therefore not surprising that aboriginal artists have been forced to take action against those infringing their copyright: by vigorously pursuing their rights, aboriginal artists may well be hoping for more lenient treatment by their clans. Linked to this is also the extent to which the common law should recognise traditional or customary law. In the landmark case Mabo v Queensland (1992) 175 CLR 1, the High Court of Australia held that the common law of Australia recognises a form of native [land] title. See generally M Blakeney, ‘Protecting Expressions of Australian Aboriginal Folklore under Copyright Law’ (1995) 9 European Intellectual Property Review 422 [hereafter ‘Blakeney (1995)’]. 205   See generally E Evatt, ‘Enforcing Indigenous Cultural Rights: Australia as a Case Study’ in UNESCO and Institute of Art and Law (eds), Cultural Rights and Wrongs (Leicester, Institute of Art and Law, 1998); and for some comments from a New Zealand perspective, see E Gray, ‘Maori Culture and Trade Mark Law in New Zealand’ in C Heath and A Kamperman Sanders (eds), New Frontiers of Intellectual Property Law: IP and Cultural Heritage, IIC Studies in Industrial Property and Copyright Law Volume 25 (Oxford, Hart Publishing, 2005). For a commentary on Australian developments and some cases relating to aboriginal art, see C Golvan, ‘Aboriginal Art and Copyright: An Overview and Commentary Concerning Recent Developments’ (1999) European Intellectual Property Review 599 [hereafter ‘Golvan (1999)’]. He notes that aboriginal artists have been involved in litigation to protect their copyright on an almost continual basis since 1988, beginning with Bulun Bulun v Neljam (unreported). In this 1988 case, John Bulun Bulun and other Northern Territory artists brought an action in the Federal Court in Darwin concerning the unauthorised reproduction of their artworks on t-shirts. The case settled before judgment, and a sum of AUS$150,000 was paid in settlement. 206   As discussed above ch 3, the ‘author’ is crucial to whether a work is ‘original’: ‘the work must not be copied from another work. . . [I]t should originate from the author’: University of London Press v University Tutorial Press [1916] 2 Ch 601, 608; and see Sherman (above n 125) 118–25. 207   Above n 204. Milpurrurru involved an action brought by three aboriginal artists and the Public Trustee for the Northern Territory, in whom the Administration and Probate Act 1988 had vested the real and personal property of five other aboriginal artists, who had died before the proceedings commenced, against the importers into Australia of carpets made in Vietnam that reproduced the artists’ designs. In this case, although the

Some Current Issues   187 b. Following on from the previous point, who the author is may be a difficult question in any event, given that such works are frequently communal in nature. UK copyright law, for example, does not recognise ‘communal authors’ in copyright works (although protection is afforded to ‘anonymous’ works208); a work can be of joint authorship, but all the authors need to be identified. In any event, even if there is an identifiable author, this can still cause problems for the community as a whole: the fact that the work in question may have been authorised by traditional custodians will not be enough to give these persons rights in the work if, for example, the creator were to exploit the work outside the parameters permitted by the community. This was precisely the situation in the Australian case of Yumbulul v Reserve Bank of Australia: Aboriginal artist Terry Yumbulul was criticised by his clan for allowing a reproduction of his work (a Morning Star pole produced under the authority of the clan).209 French J in this case stated, ‘Australia’s copyright law does not provide adequate recognition of Aboriginal community claims to regulate the reproduction and use of works which are essentially communal in origin.’210 c. What is copied is the style of the work in question or its subject matter or themes. Whilst this may cause offence to the group in question, the copying falls on the ‘idea’ side of the idea/expression dichotomy,211 and therefore copyright is not infringed. An example is the acrylic dot style used in traditional Australian Aboriginal art, which is not protected.212 artworks follow traditional aboriginal form and are based on dreaming themes, the judge held that each artwork was one of intricate detail and complexity, reflecting great skill and originality and therefore ‘original’ for copyright purposes (para 20). The judge also had no difficulty in finding that those carpets that were not exact reproductions of the artworks nevertheless reproduced a substantial part of the artworks in question (and hence were infringing), despite the respondents’ argument that what was reproduced were designs, symbols and themes common to many aboriginal artworks (see paras 69–90). Counsel for the applicant artists, Colin Golvan, has stated that in his view von Doussa J adopted a liberal approach in favour of the artists to the issue of substantial copying, indicating a strong preference on the part of the judge to prohibit the unfair and unauthorised practices of the respondents in the circumstances: Golvan (1999) (above n 205) 600). 208   S 57 CDPA. 209   Yumbulul v Reserve Bank of Australia (1991) IPR 481. 210   Ibid, 490. 211   See above ch 3. 212   Evatt (above n 205) 73. Although note the approach of von Doussa J in Milpurrurru (above n 204).

188  Art and Copyright d. A work such as a body painting may lack any requirement of ‘fixation’.213 e. Moral rights may be unavailable or not properly applicable, especially where the harm is communal.214 f. A work may be in the public domain as far as copyright law is concerned, having been created more than ‘life plus 70 years’ from the act of infringement at issue, even though it may be considered secret by the tribal group or by the people ‘owning’ the work. g. Even if a court finds there has been infringement, the remedy awarded will generally be to compensate the artists themselves by way of damages and not to compensate their communities for inappropriate use of their images.215 However, an Australian case, John Bulun Bulun and Another v R&T Textiles, has recognised that Australian Aboriginal artists can come under fiduciary duties to their community.216 In that case, the artist was entitled to pursue the exploitation of the artwork for his own benefit, but he was still under a fiduciary duty not to act in a manner that would harm the communal interests of his clan. Equity would therefore intervene in circumstances in which an   As discussed above ch 3, s 3.2.4.   Moral rights are ‘personal’ as opposed to communal in nature. There have been discussions in Australia about introducing ‘communal moral rights’: see generally E MacKay, ‘Indigenous Traditional Knowledge, Copyright and Art: Shortcomings in Protection and An Alternative Approach’, University of New South Wales Faculty of Law Research Series, Paper 15 (2010). 215  The principles underlying the award of damages in this area have been given detailed consideration by the Australian courts in Milpurrurru (above n 204) and John Bulun Bulun and Another v R&T Textiles Pty Ltd [1998] 1082 FCA (3 September 1998) (includes corrigendum). In Milpurrurru, von Doussa J noted that although the applicants argued that the unauthorised use of their artworks was in effect the pirating of cultural heritage, under copyright law, damages could only be awarded insofar as the ‘pirating’ caused a loss to the copyright owners (as opposed to their communities). However, von Doussa J nevertheless acknowledged the communal aspects by stating that the anger and distress directed at the artists by their community arising out of the infringement could constitute part of the compensation for ‘personal suffering’ by the artists, a recognised head of damages for copyright infringement in his view (paras 144– 46). In any event, in this case, the judge felt able to award substantial additional damages for flagrant infringement of copyright (following the English Court of Appeal in Williams v Settle (1960) 1 WLR 1072) in recognition inter alia of the harm caused to the living artists in their cultural environment (paras 158 and 160). The judge’s approach to damages has also been considered by Blakeney (1995) (above n 204), who sees the recognition of cultural harm in this case as a recognition that customary aboriginal laws may be taken into account in quantifying the damage suffered (443). 216   Bulun Bulun v R&T Textiles (ibid). 213 214

Some Current Issues   189 artist (as the copyright owner at law) fails or is unable to take legal action to protect communal interests.217 Despite the encouraging development of this area in Australia, it remains the view of many commentators that copyright law as developed in the Western world—with its emphasis on copyright as a species of private property—is ill-suited to protect traditional works.218 The copyright protection afforded to aboriginal and similar works is part of a wider discussion of how traditional knowledge in its broadest sense is protected by law, including intellectual property law. In other words, are indigenous cultural rights adequately protected at law?219 Should sui generis forms of protection for ‘traditional knowledge’, for example, be introduced,220 on the grounds that the Anglo-Saxon system 217   See Golvan (1999) (above n 205); and AT Kenyon, ‘The Artist Fiduciary: Australian Aboriginal Art and Copyright’ (1999) 2 Entertainment Law Review 42. Bulun Bulun (above n 215) involved a claim of copyright infringement by the aboriginal artist John Bulun Bulun and (through John Bulun Bulun) his clan in respect of fabric printed in Indonesia and imported into Australia. The fabric was found to infringe Bulun Bulun’s work ‘Magpie Geese and Water Lillies at the Waterhole’, which had a very significant place in the cultural and spiritual life of the artists’ indigenous community, the Ganalbingu people. The judge (von Dousa J again), however, rejected an argument that based on customary law and old common law copyright cases, there was collective or communal ownership of the copyright itself: copyright is now solely a creature of statute. In particular, s 35(2) of the (Australian) Copyright Act 1968 effectively precludes any notion of group ownership in an artistic work, unless it is of ‘joint authorship’; here, there was no suggestion that the author was anyone other than Bulun Bulun. 218   See, for example, M Blakeney, ‘The Protection of Traditional Knowledge under Intellectual Property Law’ (2000) 6 European Intellectual Property Review 251 [hereafter ‘Blakeney (2000)’] 256. See also C Golvan, ‘Aboriginal Art and Copyright: An Overview and Commentary Concerning Recent Developments’ (1996) 1 Media and Arts Law Review 151: ‘One of the challenging aspects of the Aboriginal copyright litigation has involved attempts to create meaningful links between the interests of the artists and the culture and practice of the Western legal system.’ 219   For a discussion of the Australian experience, see Evatt (above n 205); and MacKay (above n 214). 220   In Australia, the introduction of specific rights for aboriginal artists has been criticised as unduly emphasising ‘traditional’, ‘authentic’ aboriginal art at the expense of urban aboriginal artists who operate outside their traditional culture: S Gray, ‘Freedom or Fossilisation: Proposed Legislative “Protection” for the Work of Aboriginal Artists’, 50th Anniversary Conference of the Australasian Law Teachers’ Association, Cross Currents: Internationalism, National Identity & Law (1995). Arguments in favour of collective, community sui generis rights protection (rather than the expansion of copyright/IP law itself to deal with some of the current issues) is that such a system (unlike IP law) will not be rooted in the ‘colonial’ Western concept of IP, which is simply incapable of adapting to communal, traditional concepts of property and its exploitation. See the WIPO Draft Report on Fact-finding Missions on Intellectual Property and Traditional Knowledge (1998–99), Draft for Comment (3 July 2000) [‘WIPO Draft Report’], available at http://www.wipo.int (accessed 22 October 2011). See also below n 225. For a recent

190  Art and Copyright is too much centred on a single identifiable author with personal property rights?221 Or should traditional knowledge be viewed simply as being in (and remaining in) the ‘public domain’, on the basis that it should not be ‘commodified’ or made the subject of a property right in order to avoid impeding the free flow of information? There are developments in this area at the international level, albeit very slow moving. For example, in 1982 the United Nations Educational, Scientific and Cultural Organisation (UNESCO) and the World Intellectual Property Organisation (WIPO) proposed ‘Model Provisions for National Laws on the Protection of Expressions of Folklore against Illicit Exploitation and other Prejudicial Actions’, which were adopted by WIPO and UNESCO in 1985.222 In 1989, the UNESCO General Committee also adopted a ‘Recommendation on the Safeguarding of Traditional Culture and Folklore’. In 1993, there was also a Draft United Nations Declaration on the Rights of Indigenous Peoples, which made references to the issues outlined above.223 Despite these activities, an effective international regime for the protection of expressions of ‘folklore’ has not so far developed. In 1997, a joint UNESCO–WIPO World Forum on the Protection of Folklore was convened.224 In 1998, WIPO was given the mandate to undertake explorand careful consideration of the issues regarding sui generis rights, see MacKay (above n 214). See also the critical analysis in K Weatherall, ‘Culture, Autonomy and Djulibinyamurr: Individual and Community in the Construction of Rights to Traditional Designs’ (2001) 64(2) Modern Law Review 191. 221   In contrast, indigenous customary law emphasises group ownership and community involvement in decision-making: K Puri, ‘Is Traditional or Cultural Knowledge a Form of Intellectual Property?’ (Jan 2000) Oxford Electronic Journal of Intellectual Property Rights, in which Professor Puri stated, ‘the IP regime is inherently inappropriate or dysfunctional in relation to the needs of indigenous peoples. . . [A] sui generis legislation is the answer.’ He also argues for the revision of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) to include specific rights to protect indigenous peoples’ traditional knowledge and IP rights: Arts 22, 23 and 24, for example, should be amended to provide for the introduction of indigenous collective certifications and geographical indications to protect indigenous arts, cultural expressions and traditional knowledge. 222   Several countries have enacted legislation based in part on these Model Provisions, including Nigeria (see Blakeney (2000) (above n 218). This is really a form of sui generis protection: see the WIPO Draft Report (above n 220). 223   Art 12 included the right ‘to maintain, protect and develop the past, present and future manifestations of their cultures, such as . . . artefacts, designs, ceremonies, . . . visual and performing arts . . .’ Other rights relating to intellectual property were also formulated and/or recognised: Blakeney (2000) (above n 218) 258–59. 224   At the end of the Forum, a Plan of Action was adopted, which expressed concerns about the inadequacy of copyright law and the need for a new international agreement on the sui generis protection of folklore. The participants from the UK and USA, how-

Some Current Issues   191 atory research to identify the issues for the international intellectual property system and to assess the needs of stakeholders in the field of traditional knowledge; this took place during 1998–99.225 Then in late 2000 at the WIPO General Assembly, member states agreed to the establishment of an Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore.226 This Committee’s work has included developing draft provisions for the protection of ‘traditional cultural expressions’ (or, ‘expressions of folklore’), including music, art, designs, names, signs and symbols, performances, architectural forms, handicrafts and narratives.227 After ten years’ work, firm progress is now reported towards the goal of an international treaty to protect traditional cultural expressions.228 For completeness, it should also be noted that the World Trade Organisation (WTO) has also been involved in this area but primarily in the context of patents.229 However, paragraph 19 of the 2001 Doha Declaration also states that the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Council should also look at the relationship between the TRIPS Agreement and the UN Convention on Biological Diversity and at the protection of traditional knowledge and folklore.230

ever, expressly disassociated themselves from the Plan of Action: Blakeney (2000) (above n 218) 260. 225   For the work of WIPO as the specialised UN agency responsible for promoting intellectual property worldwide and the different Member State perspectives on this area, see WB Wendland, ‘Intellectual Property and the Protection of Cultural Expressions: The Work of the World Intellectual Property Organisation (WIPO)’ in Grosheide et al (eds) (above n 202) 101–38. 226   See Blakeney, ‘The Australian Experience’ in Grosheide et al (eds) (above n 202) 175. 227   See http://www.wipo.int/tk/en/folklore/ (accessed 22 October 2011). 228   See ‘WIPO Folklore Discussions Get New Energy after Years of Stalemate’ (2010) 14(28) Bridges Weekly Trade News Digest, available at http://ictsd.org/i/news/bridgesweekly/81827/ (accessed 22 October 2011). WIPO has also issued legal guidance on this area, eg, J Anderson and M Torsen, Intellectual Property and the Safeguarding of Traditional Cultures: Legal Issues and Practical Options for Museums, Libraries and Archives (Geneva, WIPO, 2010). 229  See http://www.wto.org/english/tratop_e/trips_e/art27_3b_background_e.htm (accessed 22 October 2011). 230   Ministerial [‘Doha’] Declaration (20 November 2001).

7

Some Practical Issues and Precedents

T

at some practical copyright issues facing artists and those commissioning artistic works, as well as museums, galleries, art dealers, auctioneers and art publishers.1 These issues include: his chapter looks

1. 2. 3. 4.

Copyright and art loans; Copyright, websites and image rights; Use of images in art books; Transfer/acquisition of copyright in artistic works, including copyright in commissioned art works and moral rights waivers;2 5. Licensing artistic works;3 and 6. The practical aspects of Artist’s Resale Right (ARR) in the United Kingdom.

7.1 

copyright in the context of art loans

In chapter three, passing reference was made to some of the issues that can arise in the context of art loans.4 Can the loaned works be 1  For further practical guidance in the area of art and copyright, see MF Flint, N Fitzpatrick and CD Thorne, A User’s Guide to Copyright, 6th edn (Haywards Heath, Tottel Publishing, 2006), which contains a chapter entitled ‘Artists, Photographers, Art Galleries, Art Dealers and Museums’ (ch 27). See also P Wienand, A Booy and R Fry, A Guide to Copyright for Museums and Galleries (London, Routledge, 2000); and K Wotherspoon, ‘Copyright Issues Facing Galleries and Museums’ (2003) 25(1) European Intellectual Property Review 34–39. 2   A precedent and a precedent checklist are also included below in Appendix A. 3   A precedent and a precedent check list are also included below in Appendix A. 4  Bently and Sherman treat this area at some length: L Bently and B Sherman, ‘Copyright Aspects of Art Loans’ in N Palmer (ed), Art Loans (London, Kluwer, 1996). See also S Stokes, Art Loans and Exhibitions (Leicester, Institute of Art and Law, 1996), upon which this section is based.

194  Art and Copyright photographed (whether they are on public display or not)? Can the artists exert their moral rights in the context of the contemplated exhibition? One way these and other issues can be dealt with is to ensure that an art loan agreement is in place that specifically deals with artists’ rights. What provisions are finally included in an art loan agreement depends of course upon the respective interests and bargaining power of the parties. However, it is clear that both the lender and borrower will want certain rights and protections under the agreement. An additional dimension is added if the works being loaned are still in copyright. Set out below and following on from the discussion of copyright and moral rights in chapters three and four is a non-exhaustive checklist of the sorts of things borrowers and lenders should consider including in their loan agreements. Clauses a lender will want to include: A. Publicity/Use of Lender’s Name and Reputation A.1 Ensure the lender’s name is properly referred to, used and publicised in the borrower’s gallery and on publicity materials and elsewhere as appropriate. Reserve the right of approval of the lender for this. Also ensure the control and protection of goodwill in the lender’s name and any trade marks/logo on merchandising (eg, the right to approve the quality of merchandise, use of name, marks or logo).5 A.2 Oblige the borrower to produce sufficient guides of a high quality to satisfy public demand. A.3 Require the borrower to seek the approval of and cooperate with the lender over publicity generally (including, eg, television documentaries, etc). B. Copyright/Moral Rights B.1 If possible, the lender will want to ensure the borrower assigns back to the lender all copyright in any photographs or other reproductions of the lender’s collection that the borrower makes or commissions. This gives the lender the strongest copyright position, and to satisfy the likely needs 5   Whilst not the specific subject of this book, museums and galleries may wish to consider trade mark protection for their names and logos. Trade mark protection has even been sought as a means of protecting copyright works once copyright has expired or in anticipation of its expiry: the works of Beatrix Potter and Frederick Warne’s use of trade marks to protect them (in particular, the characters in them) are an example of this. See also below ch 8.

Some Practical Issues and Precedents   195 of the borrower, the lender can grant a licence back of this copyright on the following terms: B.1.1 Restrict use to specified uses: catalogues, posters, postcards and classes of merchandise—all subject to royalty payments, if deemed appropriate. Take care to exclude the grant of electronic rights (eg, rights to publish, communicate to the public or digitally transmit images on CD-ROM, over the Internet or through apps) and the right to film/ broadcast unless intended (eg, for limited publicity purposes). B.1.2 Ensure consent required to sub-license or assign granted rights. B.1.3 Restrict conditions under which flash photography, etc may be used. B.1.4 Ensure the lender is acknowledged as copyright owner on all reproductions, including use of any copyright symbol. B.1.5 Restrict who may be allowed to copy the collection (eg, make it an obligation that no photography be allowed (particularly important for loans of sculpture and works of artistic craftsmanship)) and ensure any photographers, etc who do copy it assign their rights to the lender. B.1.6 Set out rights of academic users regarding fair dealing, etc. B.1.7 The copyright licence should spell out the territory and duration of the licence and whether it is exclusive or non-exclusive.6 B.2 Provide a limited right to use transparencies, electronic image files and publicity materials, etc of the lender to aid the borrower to create its own exhibition guides, etc. B.3 If work is in copyright, ensure it is the responsibility of the borrower to seek permission of relevant copyright owners and to comply with moral rights legislation as appropriate for the borrower’s activities under the loan agreement.

6  An exclusive copyright licence should always be in writing. See s 92 Copyright, Designs and Patents Act (CDPA) 1988. See also below Appendix A.

196  Art and Copyright B.4 Ensure that the loan of works is not to be construed as authorising the borrower (or others) to make copies of the lender’s works that are in copyright. B.5 Specify indemnity from the borrower in the event the borrower infringes the intellectual property rights of the artist or other copyright owners. Also, specify general indemnity from the borrower for breach of the loan agreement and especially copyright/publicity provisions. Borrowers will want similar provisions regarding publicity and rights to reproduce as may be offered by a lender, but a borrower will need to make sure that any rights granted are broad enough and sufficient for its likely requirements based on the borrower’s current copyright policy. The borrower will also want to ensure it has the right to continue to sell reproductions and merchandise and otherwise use the lender’s copyright material following the end of the loan. In addition, a borrower should consider asking for the following: 1. Warranty and indemnity from the lender that the works are not in copyright; if the works are in copyright the lender should be obliged to provide details of the copyright owner and to provide the copyright owner’s written consent to the loan (if appropriate). 2. Indemnity from the lender in respect of intellectual property infringement claims in respect of negatives, transparencies, electronic image files, publications, etc supplied by the lender for the borrower’s use. 3. Assurance that if the borrower has a commercial subsidiary or other associated entity that is involved in merchandising, any copyright or trade mark/name licences granted by the artist or lender will allow such an entity to carry out appropriate reproduction or merchandising.

7.2 

copyright and setting up a website :

acquiring and using image rights

By way of a practical illustration of how copyright applies to the Internet and some of the issues in acquiring and using image rights, this section will consider the legal issues faced by a gallery that has

Some Practical Issues and Precedents   197 decided to make images of certain items in its collection available for a ‘virtual tour’ on the Internet. Having decided which works will be put on ‘virtual’ display, the gallery will need to ensure that by putting digital copies on its server and thereby making them accessible over the Internet, it will not be infringing someone else’s copyright. To this end, it will need to ensure that where any of the works of art in question are still in copyright, appropriate consents are obtained from the artists or the artists’ estates or other right-holders. Furthermore, where existing photographs are being digitised in order to create the tour, the copyright position regarding the photographs will also have to be explored. The gallery must either own the copyright in the photographs or ensure that the licences it has from the photographers are sufficiently broad to allow electronic exploitation of the images.7 Having satisfied itself that it does have the necessary rights to publish and communicate to the public the works over the Internet, the gallery then needs to give some thought to protecting its rights. A website and its contents are capable of protection by copyright, and therefore appropriate copyright notices should be used in connection with the website. Database right notices should also be considered. Furthermore, attention should be paid to any moral rights issues, as discussed elsewhere in this book, as appropriate. To further protect the gallery’s position, it would be sensible to have persons accessing the site expressly agree to be bound by an electronic copyright licence—ie, in order for them to view the site, they could click on a button agreeing to be bound by on-screen licence terms and conditions. These terms and conditions could be very short, simply to the effect that images on the site are available only for viewing onscreen for personal use and may not be printed out, downloaded onto a hard drive, memory stick or other permanent form or hyperlinked to other websites without the prior consent of the gallery. Such an onscreen licence is likely to be effective under English law as long as care is taken in drafting it and how it is entered into.8 7   For a general discussion of the issues involved in determining the scope of any online rights that may have been granted (from a US perspective), see MF Radcliffe, ‘On-Line Rights: How to Interpret Pre-Existing Agreements’ (1996) 9 European Intellectual Property Review 494. For a UK view, see S Stokes, Digital Copyright: Law and Practice, 3rd edn (Oxford, Hart Publishing, 2009). 8  See AD Murray, ‘Entering into Contracts Electronically: The Real WWW’ in L Edwards and C Waelde (eds), Law and the Internet, 2nd edn (Oxford, Hart Publishing, 2000) ch 2. For a more recent discussion in light of consumer law developments, see also

198  Art and Copyright Practical protection against copying can also be incorporated by, for example, limiting the resolution of the works of art viewed on screen so that they are useful only for browsing and cannot be reproduced to a high enough quality for commercial purposes. Furthermore, the gallery should seriously consider using some sort of digital watermark technology that would enable the source of any copies to be identified or otherwise protects against the misappropriation of the images and/or the use of digital rights management (DRM) more generally.9 Of course, if at some point a gallery or picture library decides to commercially market images from its collection over the Internet, then the need for clear licence terms and conditions must be stressed. Also, it would be prudent to consider some sort of subscription mechanism whereby, for example, only those who have supplied verified credit card details (‘subscribers’) are allowed to download relevant images; these images could furthermore be supplied in encrypted form so that only subscribers (who would have access to the relevant encryption technology) could view them and utilise the images.

7.3 

the use of images in art books : the limits of fair dealing

The production of glossy art books full of high-quality reproductions of art works and devoted to particular artists or schools remains a significant publishing activity worldwide. Although such publications were originally the preserve of commercial publishers, large museums and galleries now frequently undertake to publish such volumes themselves. It is a question of considerable importance to artists to what extent their work can be reproduced in such works without their consent on the grounds that reproductions of their pictures are being used for the purposes of fair dealing—ie, for the purposes of criticism or review. C Riefa and J Hörnle, ‘The Changing Face of Electronic Consumer Contracts in the Twenty-First Century: Fit for Purpose?’ in L Edwards and C Waelde (eds), Law and the Internet, 3rd edn (Oxford, Hart Publishing, 2009) ch 2. See also the discussion above ch 6, s 6.3. 9   For a recent discussion of this area, see D Green, A Museum Guide to Digital Rights Management (Canadian Heritage Information Network, 2010), available at http://www. pro.rcip-chin.gc.ca/‌‌gestion_collections-collections_management/GND-DRM/gestion_ numerique_droits-digital_rights_management-eng.jsp (accessed 13 June 2011).

Some Practical Issues and Precedents   199 This question was the subject of litigation in the United Kingdom which centred on the reproduction of a number of Matisse’s works in a number of well-known books published by Phaidon Press, including The 20th Century Art Book, The Art Book and Minimum. The beneficiaries of the Matisse estate, Les Heritiers Matisse, brought a copyright infringement action against Phaidon Press. The claim was supported by the Design and Artists Copyright Society (DACS), which acted as agent for the Matisse family in respect of UK copyright matters. The case was originally brought in 1992 but was reactivated in 1998 following several years of inactivity during the completion of various probate matters relating to the estate. The case settled before trial on terms reportedly favourable to the Matisse estate.10 Critical to a fair dealing defence is both whether the work being reproduced is being used for criticism or review of either the copyright work or another work and whether such use is fair. In this context, where licences of the works are available and where the books in question focus on high-quality reproductions of a large number of images with a limited amount (if any) of critical text (rather than a limited number reproduced for scholarly academic purposes, for example), it is perhaps difficult to see why a fair dealing defence should succeed in light of the fair dealing factors discussed above in chapter three. Certainly, it is publishing industry practice to clear image rights and not rely on fair dealing exceptions wherever reasonably possible.

7.4 

transferring / acquiring copyright in artistic works :

commissioned art works and moral rights waivers 11

The copyright position with regard to commissioned portraits and other artistic works that are not created by employees of the commissioner in the course of their employment is potentially complex. The current position is that commissioning a work does not automatically transfer legal title of the copyright to the commissioner. Whilst there may be circumstances in which equity will imply an assignment of the copyright, this cannot be assumed. So if the person commissioning the 10   S Garben and R Hoy, ‘Coffee Table Art Books: Unfair Dealing’ (2000) Entertainment Law Review 19. 11   See S Stokes, ‘Copyright in Commissioned Paintings’ (2000) 5 Art, Antiquity and Law 77, upon which part of this section is based.

200  Art and Copyright work wishes to acquire title to the intellectual property in the work, then he or she must obtain a written assignment from the artist. The Copyright, Designs and Patents Act (CDPA) 1988 makes clear that with effect from 1 August 1989, the copyright in any new commissioned work will, absent special circumstances,12 remain vested in the artist or photographer as ‘author’.13 However, in respect of pre-CDPA commissioned portraits and certain other artistic works, the copyright will in general remain with the person who commissioned them.14 Setting aside the issues that apply to pre-CDPA works, it is still possible for there to be an equitable transfer of copyright from an artist to the commissioner in certain circumstances, namely where it was clearly necessary for the commissioner to own the copyright in the work—eg, where it was paid for in full and created exclusively for the commissioner or was derived from the commissioner’s designs.15 Alternatively, a court may imply an exclusive licence rather than outright ownership; or where circumstances show that exclusivity was not intended, then simply a non-exclusive licence will be implied.16 Appendix A contains a further discussion of assignments and moral rights waivers, together with a precedent assignment and precedent checklist.

  For example, the work is created in the course of employment (s 11(2) CDPA).   This is the result of s 11 CDPA (the author of a work is the first owner of the copyright in it) and also because an assignment of copyright is not effective unless it is in writing and signed by the assignor (s 90(3) CDPA). 14   See, eg, s 4(3) Copyright Act 1956. The date of creation of the work is crucial to determine whether the applicable rules are those under the 1956 or 1911 Copyright Acts, or under earlier law. See K Garnett et al, Copinger and Skone James on Copyright, 14th edn (London, Sweet & Maxwell, 1999) [hereafter ‘Copinger’] 5-29–5-40 for a comprehensive discussion of this area. 15   For example, in equity due to some express or implied contract term or given all the circumstances. See, for example, Massine v de Basil [1936–45] Mac CC 223; and Warner v Gestetner Ltd, unreported but cited in Saphena Computing Ltd v Allied Collection Agencies Ltd [1995] FSR 616, 634 (copyright to be owned by commissioner where work made specifically for the commissioner’s business and at his expense, and neither party can have contemplated that the maker of the work would have any genuine use for it himself). See also R Griggs Group Ltd & Others v Evans and Others [2005] EWCA Civ 11 (25 January 2005). 16   Robin Ray v Classic FM plc [1998] FSR 622. For a case dealing with the ownership of commissioned artistic works, see Andrew Durand v Mario Molino & Another [2000] ECDR 320. 12 13

Some Practical Issues and Precedents   201 7.5 

licensing artistic works

An assignment transfers ownership of copyright from the artist to another person. If moral rights are also waived at the time of the assignment, then at that point the artist will lose control over the reproduction of his works, as well as over other acts that would otherwise infringe copyright. Rather than assigning his rights, the artist could seek to retain ownership and instead licence others to exploit his works, typically in return for an up-front fee (a licence by way of a simple permission) or through more complex royalty arrangements that give the artist a share in the success of the work that uses the licensed images/ works. In the United Kingdom, DACS (along with others) provides guidance on this area and (as a collecting society) acts for artists in licensing their rights.17 Further discussion of this area and a sample licence and precedent checklist are included in Appendix A.

7.6 

artist ’ s resale right

( arr )

in the united kingdom :

practical guidance

As discussed above in chapter four, artist’s resale right (ARR) gives artists and (from 1 January 2012 in the United Kingdom) their estates the right to a share in the resale proceeds of their works when they are sold through the involvement of an art market professional, such as a dealer or auction house, as buyer, seller or intermediary. The right is treated as part of the artist’s copyright, but unlike with copyright, an artist cannot sell or waive/contract out of his right to the royalty. The UK law implementing the EU Directive on this area is the Artist’s Resale Right Regulations 2006 (as amended).18 The guidance that follows is primarily aimed at dealers and auctioneers, although those entitled to claim the right should also find it 17   See http://www.dacs.org.uk. Other UK organisations also represent artists and their estates, including the Bridgeman Art Library (http://www.bridgemanart.com/aboutbridgeman/information-for-artists-and-galleries.aspx). 18  Directive 2001/84/EC of the European Parliament and of the Council of 27 September 2001 on the resale right for the benefit of the author of an original work of art (OJ No L 272, 13.10.2001, 32); and the Artist’s Resale Right Regulations (SI 2006/346).

202  Art and Copyright helpful.19 However, as those claiming the right in the United Kingdom can do so only through a collecting society, claimants are also going to need to refer to the collecting society they wish to use for advice in this area, including the practicalities of collecting ARR due to them.20 7.6.1  What is Artist’s Resale Right? The Artist’s Resale Right Regulations give the ‘author’ of a work of art (ie, the creator of the work) a right to a royalty on any sale of his work that is a resale subsequent to the first transfer of ownership by the author. The royalty is defined as a ‘resale royalty’. The phrase ‘subsequent to the first transfer of ownership by the author’ means that the right is payable only after the artist or his estate has either sold or transferred the work, eg, by way of gift or a bequest in a will.21 So if a dealer buys a work direct from the artist or his estate, the right is not payable; but the right will be payable when the dealer sells the work. So where a dealer buys and sells works on his own account, then subject to the three-year ‘bought as stock exemption’,22 he will need to factor any future liability to pay the resale royalty into the price he currently pays for works of art. The resale right will apply only where the work of art in question is protected by copyright, and it will continue to be payable for as long as copyright subsists in the work. Most works of art are protected by copyright, provided the artist in question died no later than 70 years ago. The United Kingdom secured a concession from the European Union so that the right will not apply to works by dead artists until 2012. Also, for the right to apply, the artist will need to be an EU/EEA national (ie, a national of an EU Member State or of Iceland, Liechtenstein or Norway) or a national of another state that has the 19   This is an updated version of guidance produced by the author in 2006. The author is grateful to Rory Gissane for his assistance with the original guidance. It is a summary of the law and should not be relied on without taking up-to-date legal advice. Further guidance is also contained in S Stokes, Artist’s Resale Right: Law and Practice (Leicester, Institute of Art and Law, 2006) ch 5. 20   See Reg 14(1). There are several collecting societies in the UK that deal with ARR. The largest is the Design and Artists Copyright Society (DACS) (http://www.dacs.org. uk), which is the default society—ie, if a claimant does not mandate a collecting society, DACS is deemed to be mandated (Reg 14(3)). The second-largest is the Artists’ Collecting Society (ACS) (http://www.artistscollectingsociety.org.uk/default.ASP). 21   See above ch 4, s 4.4.3. 22   See below s 7.6.4.

Some Practical Issues and Precedents   203 right. (The UK Government has produced a list of these countries, of which there are 26, including Russia and Brazil.23) So if a work of art is out of copyright or if the artist does not satisfy the nationality requirements, then the resale right will not apply. 7.6.2  Resale Royalty Resale royalty is calculated as an amount based on the sale price, as follows: (a) 4 per cent for the portion of the sale price up to €50,000; (b) 3 per cent for the portion of the sale price from €50,000.01 to €200,000; (c) 1 per cent for the portion of the sale price from €200,000.01 to €350,000; (d) 0.5 per cent for the portion of the sale price from €350,000.01 to €500,000; (e) 0.25 per cent for the portion of the sale price exceeding €500,000. However, the total amount of the royalty may not exceed €12,500. So, for example, if a painting is sold for €600,000, the royalty would be calculated as follows: 4% of €50,000 = €2,000 3% of €150,000 = €4,500 1% of €150,000 = €1,500 0.5% of €150,000 = €750 0.25% of €100,000 = €250 Total resale royalty due = €9,000 The total amount of resale royalty is therefore calculated based upon the sum of consecutive portions of the sale price to which the appropriate royalty is applied. The fact that there is a total maximum amount payable means that for paintings or other works of art sold for €2 million or more, the resale royalty remains at and can never exceed €12,500 in respect of the work sold. 23   Sched 2 of the Regulations (as of 13 February 2006) lists the following countries (in addition to the EEA states at that time): Algeria, Brazil, Bulgaria, Burkina Faso, Chile, Congo, Costa Rica, Croatia, Ecuador, Guinea, Iraq, Ivory Coast, Laos, Madagascar, Mali, Monaco, Morocco, Peru, Philippines, Romania, Russian Federation, Senegal, Serbia and Montenegro, Tunisia, Turkey and Uruguay.

204  Art and Copyright The ‘sale price’ is a term undefined by the Directive, which says only that the sale price is ‘net of tax’. The Regulations define the sale price as the ‘price obtained for the sale, net of the tax payable on the sale and converted into Euro at the European Central Bank reference rate prevailing at the contract date’.24 The Patent Office Guidance for Business on Artist’s Resale Right, issued around February 2006, took the view that the sale price is the price the work is advertised for (ie, the ticket price in a gallery) or the hammer price at auction. However, calculating resale royalty on ticket price is not strictly speaking correct, as the price may be negotiated prior to agreeing a sale, so based on the Regulations the relevant price is the price actually obtained for the sale. In each case, the sale price is ‘net of tax’, which is assumed to mean valueadded tax (VAT). The Artist’s Resale Right Regulations provide that ‘liability shall arise on the completion of this sale’. However, a person who is liable may withhold payment until evidence of entitlement to be paid the royalty is produced.25 7.6.3  What Works of Art are Relevant? ARR applies to ‘original works of art’, which are defined by the Artist’s Resale Right Directive to mean ‘works of graphic or plastic art such as pictures, collages, paintings, drawings, engravings, prints, lithographs, sculptures, tapestries, ceramics, glassware and photographs, provided they are made by the artist himself or are copies considered to be original works of art’.26 The Directive also clarifies that copies of a work of art that is covered by the Directive and have been made in limited numbers by the artist himself or under his authority shall be considered to be original works of art for the purposes of the Directive. Such copies will normally have been numbered, signed or otherwise duly authorised by the artist.27 The Regulations take a similar approach. The Patent Office Guidance states: All the usual works of art are covered, such as paintings, drawings, engravings, prints, lithographs, and sculptures, amongst others. Ceramics, glass24   Artist’s Resale Right Regulations (above n 18) Reg 3(4). Note the £–€ exchange rate to be used. 25   Ibid, Reg 13(3). 26   Artist’s Resale Right Directive (above n 18) Art 2(1). 27   Ibid, Art 2(2).

Some Practical Issues and Precedents   205 ware and tapestries are also covered, and other works to the extent they can be considered to be ‘works of graphic or plastic art’ within the meaning of the Directive.

In light of the definition of ‘original works of art’, it is unclear whether the right would apply to a one-off piece of craft silver, furniture, stained glass or other works of applied art created by an artist/craftsperson not covered by the definition of ‘tapestries, ceramics or glassware’. There is no clear definition of works of graphic or plastic art in English law, and where there is uncertainty, UK courts are likely to look to the ways in which other EU/EEA states treat the right; and ultimately, it may be necessary for the European Court of Justice to clarify this in due course. There is also uncertainty about how limited edition prints made by an artist or under his authority are to be treated: it is unclear what the Directive means by a ‘limited number’ in this context. 7.6.4  What Sales Attract the Resale Royalty? It must be emphasised that resale royalty is not payable on all sales of a work of art: the work of art must fall within the relevant category;28 it must be protected by copyright; and the artist must be living (at least prior to 1 January 2012; thereafter, the estate of a deceased artist will benefit whilst the work remains in copyright) and also satisfy the nationality test.29 As discussed above, it is also necessary that the sale in question be a sale subsequent to the first transfer of ownership of the work. Assuming that all this is the case, the resale royalty will be payable only if the following conditions are satisfied in respect of the sale: 1. The buyer or the seller (or where the sale takes place through an agent (eg, an auctioneer or dealer paid on commission/consignment), the agent of the buyer or the seller) is acting in the course of a business dealing in works of art; and 2. the sale price is not less than €1000. So the right does not apply to private sales where a dealer or auctioneer is not involved as buyer, seller or agent. Furthermore, a sale of a work of art will not be regarded as a resale if the seller previously acquired the work directly from the artist less   See above s 7.6.3.   See above s 7.6.1 and Reg 10.

28 29

206  Art and Copyright than three years before the sale, and the sale price does not exceed €10,000 (‘bought as stock exemption’). So, for example, if a dealer buys a work directly from an artist and subsequently sells it for less than €10,000, and the work in question was bought less than three years before the sale directly from the artist, then the resale by the dealer will not attract the resale royalty. 7.6.5  Who is Entitled to Claim the Right? Only the artist or the artist’s estate can claim the right—and they can do so only through a collecting society, which represents a number of artists. In paying the resale royalty, dealers or auction houses will need to liase with DACS or any other collecting society established for this purpose (eg, Artists’ Collecting Society)—not the artist. The Regulations also clarify that where there is more than one ‘author’ of the work, for example, a work by the artists Gilbert & George, then the resale right belongs to the authors as owners in common. Reference to the authors as ‘owners in common’ means that on the death of each author their share of the right will pass to their heirs. It is possible for the authors to agree their respective shares otherwise the right will be held in equal shares. Whilst the resale right cannot be assigned or waived by the artist, it can be transferred on death by will or in accordance with the intestacy rules if there is no will. 7.6.6  Who is Liable to Pay the Resale Royalty? The Artist’s Resale Right Regulations make the following persons jointly and severally liable to pay the resale royalty due in respect of a sale: 1. the seller; 2. any agent of the seller, or if none, the agent of the buyer; and if there are no such agents, the buyer—provided in each case they are acting in the course of a business dealing in works of art. This means that dealers and auction houses will be jointly liable with their clients: if their clients do not pay the resale royalty, then the dealer/ auctioneer remains liable. Dealers and auction houses thus need to

Some Practical Issues and Precedents   207 consider revising their standard terms of business to try to protect themselves, and they may want to deduct the resale royalty from buyers’ payments (in order to be in a position to pay the resale royalty) before paying the net sale proceeds to sellers. This will all need to be documented in a legally binding manner. 7.6.7  Right to Information The Regulations include the right to information required by Article 9 of the Artist’s Resale Right Directive. On request by the artist, his estate or a collecting society, dealers and auction houses must supply the information required to enable the royalty to be paid, at any time up to three years from the date of the sale. 7.6.8  The Works of Deceased Artists From 1 January 2012, ARR will apply to the works of deceased artists. Chapter four, section 4.4.3 above discusses some of the issues that may arise following the death of an artist.

8

Art and Intellectual Property Rights other than Copyright

S

speaking , intellectual property rights other than copyright, such as the law of trade marks and passing off and breach of confidence, are outside the scope of this book.1 However, there are circumstances in which the interests of an author/artist or owner of a copyright work will be damaged by activities that fall outside the scope of copyright (including moral rights) protection. For example, such activity may involve no substantial reproduction of the protected work, or the work copied may not qualify for copyright protection. It is therefore worth bearing in mind the possibility of other remedies or forms of protection. In addition, artists may decide to use trade marks in their works or images of people, and this potentially raises issues of trade mark infringement, as well as the possibility of publicity and/or privacy rights.2 trictly

1   Note that database right and other rights typically grouped with copyright are discussed above in chs 3 and 5. 2   Practitioner texts in the area of trade marks and brand protection include D Kitchin et al, Kerly’s Law of Trade Marks and Trade Names, 14th edn (London, Sweet & Maxwell, 2005) [hereafter ‘Kerly’]; C Morcom, A Roughton and S Malynicz, The Modern Law of Trademarks, 3rd edn (London, LexisNexis, 2008); and B Isaac, Brand Protection Matters (London, Sweet & Maxwell, 2000). See also J Drysdale and M Silverleaf, Passing Off Law and Practice (London, Butterworths, 1995); and C Wadlow, The Law of Passing Off (London, Sweet & Maxwell, 1995). See also generally K Garnett et al, Copinger and Skone James on Copyright, 14th edn (London, Sweet & Maxwell, 1999) [hereafter ‘Copinger’] ch 21. For breach of confidence, see F Gurry, Breach of Confidence (Oxford, Clarendon Press, 1984); and Copinger (above) ch 20. For domain names, see L Edwards and C Waelde (eds), Law and the Internet, 2nd edn (Oxford, Hart Publishing, 2000); and C Wilson, ‘Domain Names and Trade Marks: An Uncomfortable Interrelationship’ in L Edwards and C Waelde (eds), Law and the Internet, 3rd edn (Oxford, Hart Publishing, 2009) ch 9. For a detailed consideration of ‘brand stretching’ and merchandising, see Isaac (above) ch 5. For a useful practical guide to the whole area of privacy and personality rights, see R Deacon, N Lipton and R Pinker, Privacy and Personality Rights: Commercial Exploitation and Protection (Bristol, Jordans, 2010).

210  Art and Copyright 8.1 

breach of confidence

Under UK law, breach of confidence is purely a creation of the common law, and ‘it is well established . . . that the provision of information which is of its nature confidential, in circumstances in which the confidence is not removed, imposes duties on the recipient to respect that confidence.’3 An action for breach of confidence may be available in addition to copyright infringement for unpublished works.4 Indeed, the leading early case on the subject, Prince Albert v Strange (1849),5 concerned the publication of etchings by Prince Albert and Queen Victoria that had been created for their own use and not for publication. The defendants had acquired some impressions of the etchings in breach of confidence from a printer who had access to the etchings. The court granted an injunction restraining the defendants from publishing not just the copies of the etchings but also a catalogue describing the etchings. Hence, a breach of confidence action can go beyond copyright law in protecting ‘ideas’ (in this case, the catalogue, which would not itself infringe any copyright in the etchings, although it was derived from them), as well as their expression (the etchings).6 It can also be used in circumstances where the work disclosed to the public in breach of confidence is not itself protected by copyright, as in the case of the assembly of objects for the Oasis album cover in Creation Records v News Group Newspapers,7 discussed above in chapter three. Also, a conceptual art 3   Lucasfilm Ltd & Others v Ainsworth & Another [2008] EWHC 1878 (Ch) (31 July 2008) para 196 (per Mann J). 4   For there to be an actionable breach of confidence, three requirements must be satisfied: (a) the information imparted must be ‘confidential’ (ie, not something that is public property and public knowledge); (b) the information must be imparted in circumstances where an obligation of confidence is imposed; and (c) there must be a breach of the obligation of confidence (eg, see dictum of Megarry J in Coco v AN Clark (Engineers) Ltd [1969] RPC 41, 47). There is also a potential ‘public interest’ defence to breach of confidence: Copinger (above n 2) 20-02. For a more recent case reporting the issues, see Ashdown v Telegraph Group [2002] RPC 5; and for a review of the law see, CJ Angelopoulos, ‘Freedom of Expression and Copyright: The Double Balancing Act’ (2008) 3 Intellectual Property Quarterly 328–53. Note also the developing law of privacy in the UK grounded in the law of confidence and Art 8 of the European Convention on Human Rights (ECHR), discussed below s 8.5. 5   2 De Gex & Sm 652, 64 ER 293 (on appeal) (1849) 1 Mac & G25, 41 ER 1171. 6   See Gurry (above n 2) 20-21. 7   [1997] EMLR 444; The Times (29 April 1997) Ch D. This was an interlocutory application in which an arguable case was found that the taking of a photograph of the assem-

Art and Intellectual Property Rights other than Copyright   211 work by Anna Livia Lowendahl-Atomic uses the law of confidence as an intrinsic element of the work.8 It should be noted that the ‘fair dealing’ defences do not apply in the case of breach of confidence.9 Different persons may also own the copy­right from those entitled to bring an action for breach of confidence.

8.2 

passing off

In the United Kingdom, the law of passing off may aid an artist who finds that others are passing off his work as theirs.10 This is in addition to any moral right claim—eg, for false attribution of authorship or a claim of copyright infringement—and extends beyond the artist to successor owners of his copyright or his publisher. blage and its publication were in breach of confidence. See also Shelley Films Ltd v Rex Features Ltd [1994] EMLR 134 (physical appearance of a closed film set also protected by the law of confidence); and Fraser v Thames Television [1984] QB 44 (plot or developed idea protected by law of confidence even if not protected by copyright). Information imparted to another can still be considered confidential (and so protected) even if it can be reconstructed from other material that is publicly available—for example, the design drawings of a leather punch were protected even if they could have been created by reverse engineering using the punch: Saltman Engineering Co Ltd v Campbell Engineering Co Ltd [1948] RPC 203, discussed in Lucasfilm (above n 3) para 198). Note, however, that merely vague ideas that are not sufficiently developed to be capable of producing a result (such as that for a new nightclub in De Maudsley v Palumbo [1996] FSR 447) will not be protected. See Copinger (above n 2) 20-11. 8   The work consists of a series of 60 secrets that are for sale under the terms of a contractual confidentiality agreement: H Lydiate, ‘Mum’s the Word’ Art Monthly (Dec 2000/Jan 2001) 61. 9   Human rights defences (freedom of expression) can of course be raised in respect of breach of confidence, but there will need to be exceptional circumstances to permit this, given a breach of confidence has occurred and confidences should generally be respected. See, eg, Associated Newspapers Ltd v HRH Prince of Wales [2006] EWCA Civ 1776 (21 December 2006) 68: ‘the test to be applied when considering whether it is necessary to restrict freedom of expression in order to prevent disclosure of information received in confidence is not simply whether the information is a matter of public interest but whether, in all the circumstances, it is in the public interest that the duty of confidence should be breached’ (per Lord Phillips CJ). 10   The ‘classical trinity’ of requirements for passing off are: (a) a reputation or goodwill acquired by the claimant for his goods, name or mark; (b) a misrepresentation by the defendant leading to confusion (or deception), causing (c) damage to the claimant: see Consorzio Del Prosciutto di Parma v Marks & Spencer plc [1991] RPC 351, 368; Reckitt & Coleman Products Inc v Borden Inc [1990] 1 WLR 491, 499 (per Lord Oliver); and Copinger (above n 2) 21-02.

212  Art and Copyright Central to liability in passing off is the need for a misrepresentation.11 For example, in the ‘Alan Clark Diaries’ case referred to earlier in chapter six in the context of parody, the issue was whether a substantial (or large) number of readers of the Evening Standard, in which the ‘parodied’ articles appeared, had been misled or were likely to be misled as to the authorship of the articles, although that deception had to be more than momentary and inconsequential.12 It is also possible to commit passing off by representing a work that is the plaintiff’s as being the work of someone else (so-called ‘reverse passing-off’).13 This clearly overlaps with the moral right of paternity. The exploitation of an author’s work that has been altered or revised without the author’s consent can also be passing off.14 As may also be the case if old material of an author is published as new work.15 It will be a clear-cut case of passing off if an artist with an established reputation in his name finds other traders using the name in the course of trade to pass off their designs as those of the artist. However, it is much more difficult to establish that the imitation of an artist’s style can be passing off.16 The difficulty of course is that in most cases, even if the artistic styles in question are similar, it will be clear that the works in question emanate from different artists; hence, there is no actionable misrepresentation. In any event, the authors of Copinger take the view that passing off is unlikely except where a particular style or characteristic has become associated with an artist, and another has so nearly copied it so as to lead to confusion.17 Copinger cites Gordon Fraser Gallery   Erven Warnink v Townend [1980] RPC 31, 93 (per Lord Diplock).   Alan Clark v Associated Newspapers Ltd [1998] RPC 261. Here, the reputation of Alan Clark as an author was protected by the law of passing off: his reputation and goodwill as an author was placed at risk, as were the prospective sales of his published works and the market value of his rights to exploit his works. 13   See, eg, Bristol Conservatories Ltd v Conservatories Custom Built Ltd [1989] RPC 455 (CA). US cases in which this has happened include Sanchez v Stein No 80CV1208 (1980), in which the defendant was alleged to have sold works of the plaintiff as the defendant’s own creation (the ‘Winged Wolves’ case) (see LD DuBoff and CO King, Art Law in a Nutshell, 3rd edn (St Paul, MN, West Group, 2000) 210); and Smith v Montoro 648 F.2d 602 (9th Cir, 1981) regarding film credits (see DuBoff and King (above) 211). 14   Copinger (above n 2) 21-13 15   Ibid, 21-14. 16   Ibid, 21-18. 17   See, for example, Marengo v Daily Sketch and Daily Graphic Limited [1992] FSR 1 (CA), 2: ‘No one is entitled to protection against confusion as such. Confusion may result from the collision of two independent rights or liberties and where that is the case neither party can complain; they must put up with the results of the confusion as one of the misfortunes which occur in life. The protection to which a man is entitled is protection against passing off which is quite a different thing from mere confusion. . . If all that 11 12

Art and Intellectual Property Rights other than Copyright   213 Ltd v Tatt18 in support, a case that concerned rival greetings card manufacturers: the defendants offered for sale cards that bore a distinct resemblance to the plaintiff’s, which had a distinctive individual style. In an application for an interlocutory injunction, it was held that mere imitation of an artistic style by itself would be unlikely to amount to passing off;19 there would need to be a sufficient misrepresentation so that a person buying the defendant’s cards would be under the impression that they were published by the plaintiffs. This was not the case here.20 Despite the difficulties in sustaining a passing off action in respect of artistic styles or designs, often claims in copyright infringement and passing off are pleaded together, especially where the copyright claim is weak. So for example, in the leading case on works of artistic craftsmanship, George Hensher Limited v Restawhile Upholstery (Lancs) Limited, the plaintiff, as well as claiming breach of copyright in their furniture designs, also claimed in passing off.21 In Norowzian v Arks, discussed above in chapter six, a claim in passing off was abandoned during the trial.22 In Merchandising Corp of America v Harpbond,23 a case concerning Adam Ant’s facial make-up, a claim in passing off that (by reproducing pictures of Adam Ant in their magazines, including a picture of Adam Ant altered by the defendants to replicate his facial make-up) the defendants were holding themselves out as licensees of the plaintiffs failed.24 a trader is doing is to carry on trade in his own name and [in] disposing of or advertising his goods does no more than make the perfectly true statement that the goods are his goods, no other trader is entitled to complain’ (per Lord Greene, MR). 18   [1966] RPC 505. 19   In this case (ibid), Buckley J was of the view that ‘a similarity of artistic style, or even a similarity of content and design, which does not, or may not, amount to a breach of copyright, would be too indefinite a feature to rely upon as the basis of granting relief in respect of passing off’ (509). 20   Gordon Fraser Gallery Ltd v Tatt (above n 18) 508: ‘[I]t seems to me that the artist . . . would have some difficulty in saying that [he] had a monopoly in producing works in [his style]. I am not concerned here with any question of copyright, but only with questions of passing off; and merely effecting the style, or imitating or adopting the style, [of] an artist, would it seems to me to be a difficult ground on which to base a claim for passing off if that was the only basis for the claim’ (per Buckley J). 21   The passing off claim failed at first instance before Graham J and was not the subject of the appeal ([1975] RPC 31); the passing off claim failed as the plaintiffs did not have a sufficient reputation in the shape of their goods to found a passing off action. 22   [1999] EMLR 67, 76. 23   [1983] FSR 32. See above ch 3. 24   Lawton LJ was of the view there was no evidence that the defendants were doing this, and even if they were, what they did was not damaging to Adam Ant’s reputation: Merchandising Corp of America v Harpbond (ibid) 47.

214  Art and Copyright More recently, in Lucasfilm Limited v Andrew Ainsworth,25 a claim in passing off was made by the film companies behind Star Wars against a designer/manufacturer involved in the original film, Andrew Ainsworth, who was making and selling replica armour and helmets used in the film of which he claimed to be the creator, among other things. It was claimed that Mr Ainsworth had misrepresented his products as licensed by the claimants and also that there was a reverse passing off claim. These were rejected by the judge (and not appealed).26 Note that in the United States, an artist’s style was held to be a protectable trade dress in Romm Art Creations Ltd v Simcha International Ltd.27 But there are other decisions to the contrary.28 In conclusion, it is also worth noting that until recently, UK law has granted very little protection to an artist’s name and personality as such.29 However, as noted below in section 8.5, this is changing: a celeb  Above n 3.   Lucasfilm (above n 3) para 180: ‘He has not pretended that Lucas’s goods are his; nor has he pretended that the goods that he was selling, which were in fact his own, were Lucas’s. He says what he is selling are his own, and he is proud of them. What he says is true so far as the origin of the goods is concerned. It might be false so far as the creation of the original design is concerned, but that is not misappropriating Lucas’s goodwill in the manner required in passing off. What he has done is different—he has described himself as the original creator of the original goods. That may be untrue, and it may amount to one or more other civil wrongs (as to which there was no argument and there is no claim), but it does not amount to passing off. It is a (mis)statement about him, not about the goods he is selling. He does not sell his goods by reference to someone else’s goods or someone else’s goodwill’ (per Mann J). 27   786 FSupp 1126 (EDNY 1992). Trade dress is the overall appearance or ‘look’ of a product or service. To succeed, confusion as to the source of the goods or services concerned is likely, among other things: DuBoff and King (above n 13) 200–2. Romm concerned the style of the Israeli artist Itzchak Tarkay’s posters and limited editions. The defendant distributed posters and limited editions strikingly similar to the plaintiff’s. In this case, the court held that Tarkay’s images served no purpose other than to identify their source, and there was a likelihood of confusion as to source (see DuBoff and King (above n 13) 201), so there was trade dress infringement, though no copyright infringement. 28  See Leigh v Warner Bros 10 FSupp 2d 1371 (SD Ga 1998); Hughes v Design Look Inc 693 FSupp 1500 (SDNY 1988) (concerned paintings by Andy Warhol); and Galerie Furstenberg v Caffaro 697 FSupp 1282 (SDNY 1988) (a counterfeiting case in which it was found that Salvador Dali’s style is not a trade mark). These cases are discussed in DuBoff and King (above n 13) 40–41 and 201–2. See also WM Borchard, Trademarks and the Arts, 2nd edn (New York, Columbia University Law School, 1999) 45 and 77–78. 29  See Copinger (above n 2) 21-45–21-48. In particular, it is debatable to what extent the unauthorised use of an artist’s name or image to endorse someone else’s product is actionable in passing off. See, for example, Lord Brabourne v Hough [1981] FSR 79; Kaye v Robertson [1991] FSR 62. In the latter case, the plaintiff, the actor Gordon Kaye, was photographed and interviewed by the defendants whilst in hospital following an accident; the defendants announced they were going to publish an article, on the basis that 25 26

Art and Intellectual Property Rights other than Copyright   215 rity can claim protection in passing off for false endorsement where their image or name is used to falsely endorse or sell other people’s products; and individuals (whether or not celebrities) have increasingly strong privacy rights.

8.3 

trade marks

In the United States, the name ‘Picasso’ has been held to be a trade mark in the context of Picasso and his heirs licensing various goods (including art reproductions, eyewear and scarves). The court recognised that the name ‘Picasso’ and his famous signature had acquired a secondary meaning, and his heirs had a right to profit from the use of his name and reputation.30 A similar view was taken in a dispute relating to the domain name samfrancis.com between the administrator of the expressionist artist Sam Francis’ estate and a commercial art gallery that had registered the domain name.31 Mr Kaye had consented. It was held that Mr Kaye was not a trader in relation to his interest in his story and his accident, so there was no passing off. See also P Jones, ‘Manipulating the Law against Misleading Imagery: Photo-Montage and Appropriation of Well-Known Personality’ (1999) 1 European Intellectual Property Review 28; and generally, the discussion below about trade mark protection for an artist’s name. However, in light of Edmund Irvine Tidswell Ltd v Talksport Ltd [2002] EWHC 367 (13 March 2002) (Ch) para 46, discussed below s 8.5, it is clear that passing off law can be used to prevent false endorsement: ‘[There] is nothing which prevents an action for passing off succeeding in a false endorsement case. However, to succeed, the burden on the claimant includes a need to prove at least two, interrelated, facts. First that at the time of the acts complained of he had a significant reputation or goodwill. Second that the actions of the defendant gave rise to a false message which would be understood by a not insignificant section of his market that his goods have been endorsed, recommended or are approved of by the claimant’ (per Laddie J). 30   Visual Arts and Galleries Association v Various John Does, discussed in DuBoff and King (above n 13) 192–93. This appears to be an example of US law—s 43(a) of the Lanham Act 1946, which prohibits ‘a false description of origin, or any false description or representation’ in connection with any goods or services that are introduced into commerce (DuBoff and King (above n 13) 191–92))— giving protection to an unregistered trade mark. Under UK law, such an action would need to be brought in passing off if the mark was not registered. DuBoff and King also make the point that under US law, only a well-known artist such as Picasso would be able to argue that his own name had a secondary meaning (ie, an established customer association between the name and the artist’s work) and hence should be protected as a trade mark. 31   Frederick M Nicholas, Administrator, The Sam Francis Estate v Magdison Fine Art Inc, Case No D2000-0673 (WIPO Arbitration and Mediation Center) (27 September 2000). See below s 8.4.1.

216  Art and Copyright In the United Kingdom, trade mark law (as opposed to passing off) protects registered trade marks, and the main element in UK trade mark infringement actions is confusion (as opposed to misrepresentation in passing off). Also, a registered trade mark is a property right in its own right;32 passing off protects the right in the goodwill of the trader or business concerned as opposed to any property in the mark (or name or get-up) itself.33 To secure a trade mark registration in the United Kingdom, the mark applied for must be: . . . [a] sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.34

So it is possible for artistic works, as well as an artist’s name (or pseudonym) or signature,35 to be registered as a trade mark, provided there are no grounds for refusing the trade mark application.36 There might, however, be difficulties in securing a trade mark registration for an artist’s name in some cases.37 In light of the Court of Appeal decision in Re Elvis Presley Trade Marks38 and of the UK regis32   S 2 Trade Marks Act (TMA) 1994. The monopoly granted by a trade mark is in respect of the classes of goods and services for which it is registered. 33   What is protected in passing off is ‘the property in the business or goodwill likely to be injured by the misrepresentation’: AG Spalding & Brothers v AW Gamage Ltd (1915) 32 RPC 273 (HL) (per Lord Parker). 34   S 1(1) Trade Marks Act 1994. 35   The more distinctive the signature, the more likely it is to be registered as a trade mark: signatures are prima facie distinctive for trade mark purposes, but not inevitably so: see Laddie J in Re Elvis Presley Trade Marks [1997] RPC 543, 558; and the further discussion of Elvis below. 36   The grounds can be absolute (eg, the mark fails to satisfy the requirements of s 1(1), it is devoid of any distinctive character, etc (s 3 TMA)) or relative (eg, it is identical or confusingly similar to an earlier trade mark (s 5 TMA)), or it is a protected emblem such as a national flag (s 5 TMA). 37   It should also be added that there is no copyright in a name: Du Boulay v Du Boulay [1869] LR 2PC 430. 38   [1999] RPC 567, upholding Laddie J (above n 35). The decision was under the old Trade Marks Act 1938 and was to the effect that the marks applied for—‘Elvis’, ‘Elvis Presley’ and a signature of Elvis Presley—were neither distinctive of nor capable of distinguishing the applicant’s goods (cosmetics and other goods in Class 3). See generally C Morcom et al, The Modern Law of Trademarks, 2nd edn (London, Butterworths, 1999) 5.50–5.51; and Morcom, Roughton and Malynicz, 3rd edn (above n 2) 5.101. For an example of a case under the current Act (TMA), see Jane Austen Trade Mark [2000] RPC 879: the applicants, a toiletry business, sought to register ‘JANE AUSTEN’ in respect of various toiletries. Their application was refused under s 3(1)(b) TMA on the basis that it was devoid of any distinctive character. The application was opposed by the trustees of

Art and Intellectual Property Rights other than Copyright   217 try decision in Diana, Princess of Wales Trade Mark Application,39 some applicants may have difficulty. This is because trade marks serve to function as ‘badges of origin’ for the goods or services in respect of which the mark is applied for. Clearly, if the mark is applied for in respect of, say, posters or engravings produced by the artist, then the mark can function as a badge of origin: it can serve as an indication that the goods/services are supplied by or under the control of the person whose name it is. However, if the mark is used simply for unrelated merchandising or souvenir purposes by a well-known artist, then the matter may well be different.40 It is also likely to be more difficult to register as a trade mark the name of a deceased artist rather than of a living artist.41 Ironically, the more well known the name of the artist, the harder it will be for his name to function as a badge of origin for trade mark purposes; the name is at risk of merely being indicative or descriptive of the content or character of the goods (ie, it refers back to the artist concerned) rather than signifying trade origin.42 the Jane Austen Memorial Trust, which owned Jane Austen’s house and museum in Hampshire and had developed a trade in related souvenirs. It was held that unless educated through use to see the name differently, the public would not regard ‘Jane Austen’ as a badge of origin. However, it should be noted that Kerly advises caution in relying too heavily on Elvis when considering similar ‘personality-based’ trade mark applications, as the 1994 Act regime is more permissive than the previous 1938 Act: D Kitchin et al, Kerly’s Law of Trade Marks and Trade Names, 13th edn (London, Sweet & Maxwell, 2001) 22.49–22.54. See also Kerly, 14th edn (above n 2) 22-008. 39   [2001] ETMR 25. 40   Simon Brown LJ in Elvis (above n 38) made clear that in this case there was absolutely no connection between the class of products in question (toiletries) and the things for which Elvis Presley was famous (597). He went on to state: ‘there should be no a priori assumption that only a celebrity or his successors may ever market (or licence the marketing of) his own character. Monopolies should not be so readily created’ (598). 41  See current UK Intellectual Property Office Trade Mark Manual (Examination Process), available at http://www.ipo.gov.uk/tmmanual-chap3-exam.pdf (accessed 13 October 2011). This notes that in respect of applications for a trade mark in the name of a deceased person, ‘[i]n these circumstances the name is more likely to be seen by consumers as merely an historical reference to the subject matter of the goods or services, rather than to the trade source of the goods. However, each such case must be judged on its own facts taking account of the length of time that has passed since the person concerned died, or the group became defunct, and the relationship (if any) between the goods/services in the application and those associated with the dead person or defunct group.’ For a critical commentary on this area, see I Simon, ‘CDs, Celebrities and Merchandise: The Trade Mark Registry’s Hybrid Theory’ (2005) 27(7) European Intellectual Property Review 265–69. 42   See, eg, Laddie J in Elvis (above n 35) 550–54. For example, the character of soap sold under the mark ‘Elvis’ would be ‘Elvis Soap’; hence, the mark is descriptive of the goods in respect of which it is being used. The ‘Elvis’ marks served merely to distinguish the products, not their producer, and would serve to describe the essential nature of the

218  Art and Copyright Despite some difficult issues surrounding merchandising and trade mark protection, as a practical matter, art dealers, museums, galleries and artists are advised to consider carefully protecting their logos, names and other brands through trade marks, where appropriate and available.43 Also, any use made of their brands by others, for example for merchandising purposes, should be strictly controlled by license in the appropriate form, in order to seek to preserve and maintain rights in the brands.

8.4 

domain names

Strictly speaking, Internet domain names are not a species of intellectual property; they simply represent a unique Internet address, performing a similar function to a telephone number. Rights to use a domain name are governed by the contract made between an applicant and the relevant domain name registrar. Nevertheless, domain names are often treated as if they were intellectual property. Furthermore, there are frequently conflicts between domain names and trade marks (whether registered or protected at common law by passing off), as registrars generally register on a first-come, first-served basis, and no two domain names can be identical. Trade marks, however, are national in scope, so whilst there can only be one registrant of, say, ‘art.com’, ‘Art’ might be a trade mark in various countries and in respect of a variety of classes of goods and services, each mark potentially owned by a separate proprietor. This inevitably gives rise to conflicts between

goods being traded (Elvis Presley memorabilia) but say nothing as to their trade origins. However, the whole point of a trade mark is to distinguish the proprietor’s goods from similar goods marketed by competitors: Elvis (above n 38) 596 (per Simon Brown LJ). See also TARZAN Trade Mark [1970] RPC 450. Note, however, that where a celebrity uses his or her name to endorse a product with which he or she has a connection—eg, ‘Tiger Woods’ for golf clubs—then there is no reason why this could not in principle be registered as a trade mark: Kerly, 14th edn (above n 2) 20-010. But Tiger Woods would have more difficulty getting trade mark protection for the use of his name on posters or other images of him: here they are ‘mere image carriers’, which his name describes, and so his name is not being used as a badge of origin. See Morcom, Roughton and Malynicz, 3rd edn (above n 2) 5.101, referring to the UK Intellectual Property Office Trade Mark Manual (ibid). 43   Of course, copyright and designs protection may also be available for signatures, logos and designs.

Art and Intellectual Property Rights other than Copyright   219 registrants and trade mark proprietors. So it is worth briefly investigating this area from the perspective of an artist, dealer or museum. A number of museums, art galleries, art publishers and artists have been the victims (or alleged victims) of ‘cybersquatting’: an unconnected person has registered a domain name identical or similar to, for example, a museum’s name and has either sought money for its ‘return’ or traded using the domain name in the hope of benefiting from the museum’s goodwill in its name. Such activities can amount to passing off or trade mark infringement in the United Kingdom.44 In other countries, the matter has been legislated against.45 Increasingly, cybersquatting is now dealt with by the aggrieved party, making use of the Uniform Domain Name Dispute Resolution Policy (UDRP) established by the Internet Corporation for Assigned Names and Numbers (ICANN),46 a form of private arbitration, to which a number of ICANN-accredited domain name registrars must submit and enforce.47 The UDRP is aimed at providing a swift remedy for ‘bad faith’ domain name registrations.48 A number of museums, art galleries, art publishers and artists have used the UDRP.49 These include the following notable disputes over domain names. 44   See, eg, the ‘One in a Million’ case: British Telecommunications and Others v One in a Million and Others [1999] 4 All ER 476. 45   In the US by the Anti-cybersquatting Consumer Protection Act 2000, for example. 46   A non-profit corporation responsible for the Internet address system (http://www. icann.org). 47   So for example, the UDRP applies to .com and other so-called ‘generic top-level domains’. Note that in the UK, the .uk registry Nominet has its own dispute resolution policy for the domains it administers. 48   To be successful, the complainant must prove: (i) that the alleged cybersquatter’s domain name is identical to or confusingly similar to a trade mark or service mark in which the complainant has rights; and (ii) the cybersquatter has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith by the cybersquatter (see para 4(a) UDRP). Para 4(b) UDRP also gives non-exhaustive lists of the circumstances to be treated as evidence of registration and use in bad faith (eg, name acquired simply to sell back to the complainant at a profit; or use of the name by the respondent for commercial gain by attracting users to the respondent’s site by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s website). Para 4(c) indicates how rights to and a legitimate interest in a domain name may be demonstrated. 49   Decisions of the various arbitrators appointed to resolve disputes can be found from the relevant ICANN-approved dispute resolution service provider (eg, the World Intellectual Property Organization (WIPO) (http://www.wipo.int/‌amc/‌en/‌domains/‌search/ ‌index.html)) or by searching the Internet. ICANN (as of May 2011) no longer maintains an up-to-date index: see http://www.icann.org/‌ en/‌ udrp/‌ #proceedings (accessed 13 October 2011).

220  Art and Copyright 8.4.1 Samfrancis.com: Frederick M Nicholas, Administrator, The Sam Francis Estate v Magdison Fine Art Inc (2000) The complainant in the Sam Francis Estate case50 was the administrator of the estate of the abstract expressionist artist Sam Francis, who died in 1994. The respondent was an art gallery in Aspen, Colorado—‘a legitimate fine art gallery, physically and virtually, exhibiting and selling modern and contemporary art masters of which Sam Francis is one’.51 The gallery had been operating for over 30 years in New York City and Aspen. On or about 14 April 1998, the respondent registered the domain name samfrancis.com, through which it offered for sale lithographs, etchings and screenprints by Sam Francis. The complainant did not authorise the respondent to use the name or mark ‘SAM FRANCIS’ as its domain name or website. The complainant sent two ‘cease and desist’ letters to the respondent requiring it to stop using the domain name. On 24 June 2000, the complainant invoked the UDRP. Interestingly, the complainant failed. The Panel had no difficulty in finding that the complainant had a common law (ie, unregistered) trade mark and service mark in ‘SAM FRANCIS’;52 the majority of the panel of three arbitrators, however, held there was no bad-faith registration and use of the domain name under the UDRP, although the presiding panelist

  Above n 31.   Sam Francis decision (above n 31) s 4. 52   ‘The Panel finds that an artist may be entitled to a common law trade mark or service mark without registering the mark with the appropriate authority. See Julia Fiona Roberts v Russell Boyd (WIPO Case No D2000-0120) (29 May 2000)’ (ibid, s 6). Julia Fiona Roberts was a UDRP case that concerned the bad faith registration of juliaroberts. com, which the well-known actress by the same name successfully complained about, despite not having a trade mark registration for her name; instead, common law trade mark rights in her name were recognised. A UDRP case in which English law was applied also found that common law trade mark rights exist in an author’s name: Jeanette Winterson v Mark Hogarth (WIPO Case No D2000-0235) (22 May 2000). This case was cited in support in Julia Roberts. ‘The artist must show that his or her name has achieved sufficient secondary meaning or association with Complainant. Over the course of Sam Francis’ lengthy and distinguished career, and continuing today, the public has come to recognize and associate the name “Sam Francis” as a symbol that distinguishes the artwork produced exclusively by a single artist. The name “Sam Francis” has become synonymous with the works produced by Sam Francis in the public mind. As a result, the name “Sam Francis” has acquired distinctiveness and secondary meaning as a common law trade mark and service mark when associated with works of art’: Sam Francis decision (above n 31) s 6. 50 51

Art and Intellectual Property Rights other than Copyright   221 dissented.53 Because the respondent made clear on its website that it was not the artist’s site, rather it was a commercial gallery selling his paintings, and as there was no misleading assertion that it was sponsored or approved by the artist, nor did it tarnish the reputation of the artist, the complainant was unable to show that the respondent had registered and used the mark in bad faith. ‘To use an artist’s name as an informational reference in the context of otherwise legitimately offering that artist’s genuine work for sale to the public may well constitute a fair use under applicable law.’54 The Panel also concluded that in a difficult case such as this, the scope of ‘fair use’ is a matter best determined by the courts rather than the UDRP. 8.4.2 Gallerina.com: Gallerina v Mark Wilmshurst (2000) In the Gallerina case,55 the award-winning British contemporary art gallery Gallerina was successful in having the domain name gallerina. com transferred back to it: the domain name was found to have been registered and used in bad faith by the respondent. The Panel had no difficulty in finding that the complainant, Gallerina, which had traded under that name for six years, had sufficient reputation and goodwill in its name to sustain a passing off action in the United Kingdom to protect its name, despite not having a registered trade mark—ie, it had a trade mark or service mark (albeit under common law) identical to or confusingly similar to the domain name, and hence paragraph 4(a)(i) of the UDRP was satisfied. 8.4.3 Artnews.net: Artnews, LLC v Ecorp.com (2000)56 The publisher of the well-known US monthly magazine ARTnews (which also owned the registered trade mark ‘ARTnews’) had no difficulty in obtaining a transfer of the artnews.net domain name back to it 53   The dissenting panellist was of the view that because the domain name in issue was identical to the complainant’s ‘SAM FRANCIS’ common law marks, the respondent intentionally attracted customers by creating the impression that the website www.samfrancis.com was sponsored or authorised by the artist; hence, there was bad faith (para 4(b)(iv) UDRP). 54   Sam Francis decision (above n 31) s 6. 55   Case No D2000-0730 (WIPO Arbitration and Mediation Center) (16 August 2000). 56   Claim No FA0007000095231 (National Arbitration Forum) (22 August 2000).

222  Art and Copyright from the respondent, who was held to have registered the domain name in bad faith. 8.4.4 Gettymuseum.com/Gettysmuseum.com; Brooklynmuseumofart.com/.org: The J Paul Getty Trust v Domain 4 Sale & Company and Brooklyn Institute of Arts and Sciences v Fantastic Sites (2000) The Getty Museum (which held a number of registered trade marks for ‘the Getty’ and related marks) and the Brooklyn Museum of Art (which was held to have common law rights in its name) also had no difficulty in obtaining the domain names Gettymuseum.com and Gettysmuseum. com, and Brooklynmuseumofart.com and Brooklynmuseumofart.org respectively back from respondents who had clearly registered them in bad faith.57

8.5 

privacy and publicity rights

Artistic works, especially photographs, may portray a person’s image or other information about that person (eg, name or reputation). Many states will provide a remedy to the subject of the image (ie, the person concerned) to control either the use of their image for commercial publicity (eg, product endorsement or simply in press/media coverage) through a ‘right of publicity’ or where a right of privacy or confidence is breached.58 The legal basis of the protection afforded to persons and the scope of protection vary from state to state. For example, in the United States, the right of publicity is treated as a property right;59 but 57   See respectively The J Paul Getty Trust v Domain 4 Sale & Company, Claim No FA0007000095262 (National Arbitration Forum) (7 September 2000); and Brooklyn Institute of Arts and Sciences v Fantastic Sites Inc, Claim No FA0009000095560 (National Arbitration Forum) (2 November 2000). ‘When the name of a famous museum is registered as a domain name by anyone other than the museum itself, and the registrant provides no evidence of why the domain name was registered or what good faith use is proposed, the only inference is that the domain name was registered in bad faith’: the Brooklyn case (per the Honourable Carolyn Marks Johnson, Panelist). 58   For an up-to-date and critical analysis of this area, see G Black, Publicity Rights and Image: Exploitation and Legal Control (Oxford, Hart Publishing, 2011), upon which this section heavily draws. 59   Haelan Laboratories v Topps Chewing Gum Inc (1953) 202 F 2d 866.

Art and Intellectual Property Rights other than Copyright   223 in the United Kingdom, there is no express right of publicity—rather, those seeking to protect the use of their image or ‘personality’ have to rely on a range of legal doctrines, including passing off,60 registered trade mark protection61 and privacy/breach of confidence.62 The current position in the United Kingdom is that absent passing off (eg, where in a commercial context a person’s image is used to endorse the promotion of a product without his or her consent) or trade mark infringement, the rights that have to be relied on relate to privacy (including data protection) and breach of confidence. The law on privacy and breach of confidence has been a rapidly moving area of the law over the last 10 years or so.63 Generalising in this area is difficult, but an image taken in circumstances in which there is a reasonable expectation of privacy (though not necessarily a private situation) can be protected from misuse through reliance on Article 8 of the European Convention on Human Rights (ECHR), subject to any freedom of expression rights under Article 10 of the ECHR—in which case the court has to balance the two rights.64 Article 8 1. Everyone has the right to respect for his private and family life, his home and his correspondence. 2. There shall be no interference by a public authority with the exercise of this right except such as is in accordance with the law and is necessary in a democratic society in the interests of national security, public safety or 60   Irvine v Talksport (above n 29). The case involved an edited photograph of the racing driver Eddie Irvine holding a portable radio with the words ‘Talk Radio’ added—the latter being the radio station of the defendants. The defendants had not sought permission from Eddie Irvine for this. He successfully sued for false endorsement through the law of passing off but not through a broader right of publicity. Laddie J noted, ‘Manufacturers and retailers recognise the realities of the market place when they pay for well-known personalities to endorse their goods. The law of passing off should do likewise. There appears to be no good reason why the law of passing off in its modern form and in modern trade circumstances should not apply to cases of false endorsement’ (para 43). Note that this narrow decision is very much based on the classic approach to passing off in English law: the judge was clear that it did not open the floodgates to a broader publicity right in the UK (paras 44–45). 61   See, eg, the cases regarding Jane Austen and Elvis noted above, esp n 38. 62   Douglas and Others v Hello Ltd and Others [2005] EWCA Civ 595 (18 May 2005). 63   Where the confidential information is ‘private information’ about a person, then ‘in order to find the rules of the English law of breach of confidence we now have to look in the jurisprudence of articles 8 and 10 [of the ECHR]’: Ash and Another v McKennitt and Others [2006] EWCA Civ 1714 (14 December 2006) para 11 (per Buxton LJ). Arts 8 and 10 ECHR are set out below. 64   See, eg, the discussion of the balancing test in Mosley v News Group Newspapers Ltd [2008] EWHC 1777 (QB) (24 July 2008) paras 8–23.

224  Art and Copyright the economic well-being of the country, for the prevention of disorder or crime, for the protection of health or morals, or for the protection of the rights and freedoms of others. Article 10 1. Everyone has the right to freedom of expression. This right shall include freedom to hold opinions and to receive and impart information and ideas without interference by public authority and regardless of frontiers. This article shall not prevent States from requiring the licensing of broadcasting, television or cinema enterprises. 2. The exercise of these freedoms, since it carries with it duties and responsibilities, may be subject to such formalities, conditions, restrictions or penalties as are prescribed by law, and are necessary in a democratic society, in the interests of national security, territorial integrity or public safety, for the protection of health or morals, for the protection of the reputation or rights of others, for preventing the disclosure of information received in confidence, or for maintaining the authority and impartiality of the judiciary.

For example, Article 8 was potentially infringed by a photograph of JK Rowling’s son that was taken in a public street.65 Clearly, children are more deserving of protection than their celebrity parents, but even celebrities can control the use made of images about them in circumstances in which Article 8 is infringed and Article 10 does not take precedence.66 So an artist using the likeness or images of persons in their works would be well advised to get those people’s consent, unless the 65   Murray v Big Pictures (UK) Ltd [2008] EWCA Civ 446 (7 May 2008). A claim under the Data Protection Act 1998 was also made (paras 2 and 62). 66   See, eg, the ECtHR in Von Hannover v Germany (App no 59320) (24 June 2004), (2005) 40 EHRR1, in which it was ruled that paparazzi photographs of Princess Caroline of Monaco going about her daily life—‘activities of a purely private nature such as practising sport, out walking, leaving a restaurant or on holiday’ (para 61)—infringed Article 8. See also Campbell v MGN Ltd [2004] UKHL 22 (6 May 2004), in which the model Naomi Campbell claimed that the publication of a newspaper article was in breach of confidence and the Data Protection Act 1998 because it contained the following five elements: ‘(1) the fact that Miss Campbell was a drug addict; (2) the fact that she was receiving treatment for her addiction; (3) the fact that the treatment which she was receiving was provided by Narcotics Anonymous; (4) details of the treatment—for how long, how frequently and at what times of day she had been receiving it, the nature of it and extent of her commitment to the process; and (5) a visual portrayal by means of photographs of her when she was leaving the place where treatment had been taking place’ (para 88); by a 3:2 majority, the House of Lords agreed, in particular in respect of elements 3, 4 and 5. See also Mosley v News Group Newspapers (above n 64) in which it was ruled that the claimant had a reasonable expectation of privacy in relation to (albeit unconventional) sexual activities carried on between consenting adults on private property (para 232); a hidden camera had been used.

Art and Intellectual Property Rights other than Copyright   225 artist is comfortable a defence here can be relied on (eg, under Article 10, which is not always likely).67 Indeed, it is likely that this area is going to receive continued attention by the courts, with images in particular receiving particular scrutiny.68

67   See, eg, comments of the ECtHR in Von Hannover (2005) 40 EHRR 1, para 59: ‘Although freedom of expression also extends to the publication of photos, this is an area in which the protection of the rights and reputation of others takes on particular importance. The present case does not concern the dissemination of “ideas”, but of images containing very personal or even intimate “information” about an individual. Furthermore, photos appearing in the tabloid press are often taken in a climate of continual harassment which induces in the person concerned a very strong sense of intrusion into their private life or even of persecution.’ Furthermore, ‘the decisive factor in balancing the protection of private life against freedom of expression should lie in the contribution that the published photos and articles make to a debate of general interest. It is clear in the instant case that they made no such contribution since the applicant exercises no official function and the photos and articles related exclusively to details of her private life’ (para 76). 68   See, eg, the potential impact of the ECtHR decision in Reklos v Greece, case 1234/05 [2009] ECHR 200 (15 January 2009) regarding photographs of a newborn baby in a sterile baby unit taken without the parents’ consent: ‘The Court reiterated that the concept of private life [under Art 8] was a broad one which encompassed the right to identity. It stressed that a person’s image revealed his or her unique characteristics and constituted one of the chief attributes of his or her personality. The Court added that effective protection of the right to control one’s image presupposed, in the present circumstances, obtaining the consent of the person concerned when the picture was being taken and not just when it came to possible publication’ (ECtHR Press release (15 January 2009).

9

Conclusion

T

explored the scope and nature of the copyright protection granted to artistic works under UK law. As well as setting out the applicable law with reference to the treatment of artistic works in certain other jurisdictions, the preceding chapters have discussed a number of current and practical issues. A number of recurring themes and issues occur. These are considered further here. Before doing so, however, it is worth mentioning one of the ways in which artistic copyright differs from other sorts of copyright: the privileged place of the ‘original’ work of art,—its ‘aura’.1 Indeed, artist’s resale right (ARR, or droit de suite) recognises this, for ARR applies only where an original work of art is resold—not mass-produced copies.2 The continuing importance of the ‘original’ not only underpins the functioning of ARR but surely also weakens the argument for artistic copyright based on economic incentives, as an artist’s desire in this case is to create an original, and this would happen regardless of whether or not there was copyright protection for it. In other words, reproductions protected by copyright may be a source of useful additional income, but the value of a reproduction cannot compare to the original. The position of commercial artists is of course different, as is that of artists who rely heavily on exploiting their reproduction rights or creating copies of their works for sale. Nevertheless, there is a tendency in discussing copyright to lump all the various classes of work together, forgetting that there are significant differences between Microsoft Windows software, say, and a Lucian Freud painting—even if the law treats them both as works that must be ‘original’ but not works of genius. his book has

1   ‘That which withers in the age of mechanical reproduction is the aura of the work of art’: Walter Benjamin in his 1936 essay ‘The Work of Art in the Age of Mechanical Reproduction’ (English translation available at http://www.marxists.org/reference/ subject/philosophy/works/ge/benjamin.htm (accessed 11 July 2011) II. 2   Art 2 Resale Right Directive 2001/84/EC. See above ch 4.

228  Art and Copyright 9.1 

categories of ‘ art ’ and the subsistence of copyright

The confining definition of ‘artistic works’ in section 4(1) of the Copyright, Designs and Patents Act (CDPA) 1988 and the limited protection afforded to films as ‘dramatic works’ mean the courts continue to have to determine whether works outside the boundaries of traditional art forms are protected by copyright.3 In determining the subsistence of copyright for a particular work, issues will arise regarding the fixation/permanence of the work; its categorisation as a ‘graphic work’, ‘sculpture’, ‘collage’, ‘film’, etc; and its originality.4 In seeking to classify works within specific categories of ‘artistic work’, it is clear from section 4 of the CDPA that, except for ‘works of artistic craftsmanship’, ‘artistic quality’ should not be a relevant factor. Nevertheless, a review of the cases suggests that when a court cannot easily fit a work into a specific category, issues such as the intention of the creator and his or her status (as an ‘artist’) are likely to be considered—despite both the express language of section 4 and the oftenexpressed reluctance of the courts to determine questions of aesthetics and other subjective matters.5 3  See Creation Records v News Group Newspapers [1997] EMLR 444; and Norowzian v Arks [2000] FSR 363. 4  How the law classifies art remains very much an on-going debate. In particular, much has been said about the law’s classification of art and the way it serves: to exclude certain works because they do not fall within established categories; to protect too much (for example, the ‘re-created’ works discussed above ch 6, s 6.1); or to provide only limited copyright protection (for example, the ‘idea’ of a work can still be copied). See, eg, A Barron, ‘Copyright Law and the Claims of Art’ (2002) 4 Intellectual Property Quarterly 368–401; A Barron, ‘The Legal Properties of Film’ (2004) 67(2) Modern Law Review 177–208; D Booton, ‘Framing Pictures: Defining Art in UK Copyright Law’ (2003) 1 Intellectual Property Quarterly 38–68; TSL Chang, ‘Does Copyright Law Confer a Monopoly over Unpreserved Cows?’ (2006) 28(5) European Intellectual Property Review 276–81; and J Pila, ‘An Intentional View of the Copyright Work’ (2008) 71(4) Modern Law Review 535–58. See also D McClean, ‘Authorship in Contemporary Art and the Artistic Commonwealth’ in L Bently et al (eds), Copyright and Piracy (Cambridge, Cambridge University Press, 2010); and Jonathan Griffiths’ response, J Griffiths, ‘Copyright’s Imperfect Republic and the Artistic Commonwealth’, Queen Mary School of Law Legal Studies Research Paper 56/2010 (3 June 2010), available at http://ssrn.com/ abstract=1620125. 5   See, eg, Metix (UK) v GH Maughan (Plastics) [1997] FSR 718, in which sculpture was defined as ‘a three-dimensional work made by an artist’s hand’, as well as the consideration of ‘sculpture’ by Mann J in Lucasfilm Limited v Andrew Ainsworth [2008] EWHC 1878 (Ch) (31 July 2008), para 118, where an artist’s purpose in creating the work was considered relevant to assessing what is a ‘sculpture’. For further discussion of the courts’ consideration of questions of aesthetics and other subjective matters, see above ch 3, s 3.2.

Conclusion  229 ‘Works of artistic craftsmanship’ remain an ill-defined category of work. Various tests have been used,6 including considerations of the function of the work, the intention of the designer, whether the work appeals to the aesthetic senses, whether the designer is an artist-craftsman, whether the work is artistic or creative enough, as well as attempts at giving the term ‘works of artistic craftsmanship’ its ‘ordinary and natural meaning’. Given the increasing importance of ‘craft’ in artistic circles and the difficulties surrounding the protection of works as diverse as fashion designs, film sets and patchwork bedspreads,7 it is submitted that a clear and consistent approach by the courts is necessary in this area.8 Moving on from the category of work, the issue of ‘fixation’ remains a difficult one. It has been argued that there is no requirement of fixation for artistic works, and whether a work is intended to have a long or short existence should be irrelevant.9 However, the cases on this issue appear to conflict.10 It is submitted that some element of fixation is surely necessary to define the scope of what is protected by copyright.11 In practice, when considering whether the work in question is an ‘artistic work’, the issue of fixation will be addressed, as the very categories of ‘artistic works’ (graphic works, photographs, sculptures and collages) would seem to require such a determination.12 Originality remains wedded to the notions of ‘sweat of the brow’ and of ‘authorship’ (subject to what was said in chapter six about European developments in this area). Xerographic or similar reproductions apart, skill and labour devoted to the visual expression of an artistic work will be sufficient to satisfy the threshold of ‘originality’ in   As discussed above ch 3, s 3.2.1.   See respectively Radley Gowns Ltd v Costas Spyrou [1975] FSR 455; Shelley Films Limited v Rex Features Limited [1994] EMLR 134; and Vermaat v Boncrest Ltd, The Times (23 June 2000), [2001] FSR 5, [2000] EIPR N-151, (July 2000) 3 Intellectual Property Lawyer 10. 8   Of course, the whole area illustrates the various judicial approaches that can be taken to defining art and craft. See P Kearns, The Legal Concept of Art (Oxford, Hart Publishing, 1998) ch 3. 9   K Garnett et al, Copinger and Skone James on Copyright, 14th edn (London, Sweet & Maxwell, 1999) [hereafter ‘Copinger’] 3-40. 10  In Metix (above n 5), a sculpture made from ice was considered by Laddie J to be no less a sculpture because it will inevitably melt; but contrast Davis (J&S) (Holdings) Ltd v Wright Health Group Ltd [1988] RPC 403 and the other cases noted above ch 3, s 3.2.4. 11   See, for example, Tate v Fullbrook [1908] 1 KB 821, discussed above ch 3, s 3.2.4, n 108. 12   See, for example, Creation Records (above n 3), where the collocation of random, unfixed objects was not a collage, even when done with artistic intent. 6 7

230  Art and Copyright UK law; ‘creativity’ has historically found no part in UK copyright law.13 Nevertheless, as Lord Hoffmann famously remarked, ‘copyright law protects foxes better than hedgehogs’14—so whilst a simple artistic work may be protected by copyright, the protection afforded to the artist to prevent copying may well be limited.15 Works must also have an ‘author’ for copyright purposes: this is embedded in both the structure of the CDPA16 and the very notion of ‘originality’. So works of communal origin where there is ‘collective’ authorship, as often is the case for traditional cultural expressions, may fail to be protected by copyright.17 It should be noted that whether or not a work is protected by copyright is not just about whether the author has economic rights (eg, to control reproduction and distribution) that can be exercised. If the work is not protected by copyright, then moral rights and ARR will not 13   Kearns (above n 8) describes the criterion for copyright protection in England as ‘originality divorced from creativity’ (83). But see the discussion above ch 6, s 6.6 for possible future developments here. However, in a recent UK case where EU developments were considered and applied, it was stated, ‘Originality involves the application of skill or labour in the creation of the work. . . The skill or labour need not be directed to the creation of particular modes of expression; it can be deployed in the selection or choice of what should be included in the work’: The Newspaper Licensing Agency Ltd & Others v Meltwater Holding BV & Others [2010] EWHC 3099 (Ch) (26 November 2010) para 30 (per Proudman J). 14   Designers Guild v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416, 2423E. The quotation is from Sir Isaiah Berlin and, in turn, the Greek poet Archilocus: ‘The fox knows many things, the hedgehog one big one.’ See Berlin’s 1953 essay that discusses the tension between monist and pluralist versions of the world and history. See also a review of the first edition of this book, G Haggart (2002) European Intellectual Property Review 384; and the reference to this background in Hi-Tech Autoparts Ltd v Towergate Two Ltd [2002] FSR 15 & 16. 15  See Kenrick v Lawrence (1890) 25 QBD 93, discussed above ch 3, s 3.2.1. 16   S 9(1) CDPA reads: ‘“Author” in relation to a work means the person who creates it.’ This even appears for computer-generated works (s 9(3); see above ch 5). The author remains central to copyright law—whatever Roland Barthes might have said in ‘The Death of the Author’ (1967), her death remains greatly exaggerated. See JC Ginsburg, ‘The Concept of Authorship in Comparative Copyright Law’, Columbia Law School Pub Law Research Paper 03-51 (10 January 2003), available at http://ssrn.com/abstract= 368481. For a discussion of what the death of the author (in the poststructuralist sense) might actually mean for copyright law, see L Bently, ‘Copyright and the Death of the Author in Literature and Law’ (1994) 57(6) Modern Law Review 986. See also the critical view of Lior Zemer, who argues that ‘[a]uthorship is a joint enterprise between public and authors’ and that the public is a key participant in ‘the creative act of authorship’, and so ‘authorial rights granted to individual creators should be granted to the public as well’; he further argues that ‘authors and copyrighted works are socially constructed and historically contingent’: L Zemer, The Idea of Authorship in Copyright (Aldershot, Ashgate, 2007) ch 8. 17   See generally ch 3, s 3.2.2; Vermaat v Boncrest (above n 7); and ch 6, ss 6.4 and 6.7.

Conclusion  231 apply either. Assuming, however, that the work is protected by copyright, what then will copyright protect?

9.2 

appropriating the public domain : idea versus expression

‘Skill and labour’ are the yardsticks used to class a work as ‘original’, and it is the perceived need to prevent the unjust appropriation of an author’s skill and labour that remains the chief judicial justification for copyright—a policy pursued by the courts with ‘almost evangelical fervour’.18 To state matters even more simply, ‘what is worth copying . . . is worth protecting.’19 Furthermore, as copyright is a right of property, the infringement of that right is actionable without proof of damage.20 As noted in chapter two, this ‘misappropriation’ justification for copyright protection can easily be taken to extremes absent any checks and balances in terms of what is protected. So as discussed earlier in this book, both the courts and the legislature have sought to limit the application of this doctrine on public policy grounds through various mechanisms, including: a. restricting copyright protection to certain classes of works and limiting its duration; b. giving the functional aspects of works limited or no protection in most cases; c. specifying that copyright is only infringed if the whole or a substantial part of the work is copied;21 d. providing a significant list of activities that may be done without infringing copyright, chief of which are the ‘fair dealing’ provisions contained in chapter III of the CDPA;22 18   Autospin (Oil Seals) Ltd v Beehive Spinning (A Firm) [1995] RPC 683 (per Laddie J). As noted above ch 3, s 3.2.8, the majority of the House of Lords acknowledged in Designers Guild (above n 14), the current leading artistic copyright case, that the function of copyright is to protect the skill and labour of the author . There may be developments in UK law influenced by European case law (see above ch 6, s 6.6), but this remains the current position (as of July 2011). 19   University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 610 (per Peterson J). 20   Copinger (above n 9) 22-42. 21   S 16(3) CDPA. But see developments in EU law on the reproduction right (above ch 6, s 6.6). 22   See in particular ss 29 and 30.

232  Art and Copyright e. applying the idea/expression dichotomy to cases of similar but not identical works, even though the principle has no statutory basis in UK law;23 and f. using judicial discretion in applying (a)–(e) above, including a very limited public interest defence.24 In looking at the cases, one sees the courts being reluctant to protect the ‘mere style or technique’ of a work, such as pointillism,25 either through copyright or the law of passing off.26 However, it is clear that wholesale appropriation of a work, even if done for the purposes of parody, is likely to amount to copyright infringement absent any permitted exception, such as a fair dealing defence. UK law does not have a general ‘fair use’ defence to copyright infringement, so in difficult cases the courts have to rely on the above exceptions. Whilst notions of ‘fairness’ and judicial common sense can do much to eliminate the harsher effects of the lack of such a general defence, it is submitted that the advent of the Internet makes the need for the development of a more general ‘fair use’ defence pressing.27 9.3 

the digital future

When this book was first published, the full impact of the continued growth of the Internet through broadband, mobile devices and social media had not yet been felt, and measures to create safe harbours for those who might innocently infringe copyright, such as the Information Society Directive28 and the Electronic Commerce Directive,29 had either 23   See generally above ch 3, ss 3.2.8 and 3.2.9: conceptual art works are difficult to protect on this basis. 24   For a public interest defence, see Ashdown v Telegraph Group [2002] RPC 5; and C J Angelopoulos, ‘Freedom of Expression and Copyright: The Double Balancing Act’ (2008) 3 Intellectual Property Quarterly 328–53. 25   Norowzian v Arks (above n 3) (per Nourse LJ). See also Morritt LJ in Designers Guild v Russell Williams [2000] FSR 121 (CA). Presumably, examples of mere style or technique would generally fall within the second category of unprotected ‘ideas’ noted by Lord Hoffmann in Designers Guild (above n 14) 2423D as being ‘not original or so commonplace as not to form a substantial part of the work’. 26   There being no general tort of unfair competition in English law: see above ch 8. 27   See the discussion on Internet visual search engines above ch 6. The need to revisit fair dealing in light of technological change was recently recognised in the Hargreaves Review: I Hargreaves, Digital Opportunity: A Review of Intellectual Property and Growth (UK Intellectual Property Office, May 2011). 28   Directive 2000/29/EC. 29   Directive 2000/31/EC.

Conclusion  233 only recently been implemented or had not yet happened at all. Looking back, the author’s earlier fears about the end of the public domain, about copyright being locked up through technical measures and about fair dealing being restricted by contract have been, if not proved unfounded, at the very least challenged by the growth of Web 2.0 and movements towards open access for cultural materials (of which Wikipedia is a prime example). The current cultural trend towards user-generated content, the sharing of works through social media sites and the questioning of copyright by generations who have now grown up with the Internet seems to the author to challenge many of the assumptions underlying copyright as an economic right and especially the economic incentive justification for copyright. Certainly, as far as artistic works are concerned, it can be argued there needs to be more emphasis on moral rights and the role played by the rights of attribution and integrity, whether enshrined in copyright legislation or supplemented through contractual obligations or requirements (as in the Creative Commons licences, which require attribution).30 More fundamentally, however, is the question of whether copyright in its current form, underpinned by justifications based on economic incentives arguments to creativity and innovation, needs a radical rewriting in light of user attitudes to copying, downloading, remixing and mash-ups, and user-generated content. This is beyond the scope of this work, but current and future trends in how artistic works are created, copied and manipulated in digital form should be used to inform the on-going copyright debate, with the views of individual creators and users (increasingly the same persons) taken into account and not just those of media corporations and collecting societies. If many are ignoring copyright as an increasing irrelevance, we should be prepared to ask challenging questions about the nature and scope of copyright (and the central role of the author as owner).31 As the distinguished American legal scholar Harold Berman memorably put it, Law has to be believed in, or it will not work. It involves not only man’s reason and will, but his emotions, his intuitions and commitments, and his faith.32   These arguments are discussed above ch 2, s 2.2.4, esp n 68.   See Zemer (above n 16) for a critical look at authorship. 32   HJ Berman, The Interaction of Law and Religion (London, SCM Press, 1974) 14. 30 31

Appendix A:

Precedents and Precedent Checklists introduction 1

This appendix contains a precedent assignment of copyright (along with other intellectual property rights) and a precedent copyright licence under the law of England and Wales, together with precedent checklists. The precedents have been chosen as the two key copyrightrelated transactions, and they have been kept simple for ease of use. Needless to say, they come with the health warning that they are simply examples, by way of general guidance, and are not drafted for specific circumstances where legal advice should be taken before relying on them. They also do not take account of tax issues. In particular, copyright licences are often much longer depending on their intended use, with a full set of legal boilerplate clauses, termination rights, tax provisions, audit rights as regards royalty payments and so on. Each precedent has been drafted in plain English where possible, with legal terms avoided as much as possible. In particular, copyright assignments are often drafted in a style reminiscent of transfers of property (whether land (real) or personal property), with phrases such as ‘with full title guarantee’ added in order to imply various title warranties originally under the Law of Property Act 1925 (by reference to the phrase ‘as beneficial owner’) and now dealt with in the Law of Property (Miscellaneous Provisions) Act 1994 (by reference, eg, to the phrase ‘with full title guarantee’). Whilst some copyright lawyers may disagree, the author believes that there is no need to precisely mirror the language of property transfers in copyright transactions, as what is key is what the Copyright, Designs and Patents Act (CDPA) 1988 says.2 1   The author is grateful to Lucy Morris, trainee solicitor at Blake Lapthorn, for her assistance with this appendix. 2   For judicial support for this view, see Crosstown Music Company 1, LLC v Rive Droite Music Ltd & Others [2010] EWCA Civ 1222 (2 November 2010) 35.

236  Art and Copyright The CDPA simply states that copyright ‘is transmissible by assignment . . . as personal or moveable property’ (section 90(1)); that it may be partial (ie, limited to part of the copyright term—eg, 10 years rather than 70 years after death—or only in relation to certain rights) (section 90(2)); and that a copyright assignment ‘is not effective unless it is in writing signed by or on behalf of the assignor’ (section 90(3)). There are even fewer ‘formalities’ for licences. These need not be in writing, although it is highly desirable that an exclusive licence be in writing signed by or on behalf of the copyright owner. (See, eg, sections 92 and 101 of the CDPA.) Note that the CDPA defines an exclusive licence as: . . . a licence in writing signed by or on behalf of the copyright owner authorising the licensee to the exclusion of all other persons, including the person granting the licence, to exercise a right which would otherwise be exercisable exclusively by the copyright owner.3

assignment

Key issues in drafting an assignment are to make sure it is properly executed by the right person (the owner) and that it properly identifies what is being assigned both in relation to the work and the rights in the work to be assigned. So for example, an assignment of the Englishlanguage rights in a book would not include rights in respect of other languages, and these days the phrase ‘book’ is ambiguous, so it could be debated whether it assigned just the classic printed book (volume form) rights or also included any electronic book rights. Query also the duration of the rights assigned and the territories. This highlights the need for precision in drafting.

licence

Licences are generally more complex than assignments. This is because they are often part of a longer-term commercial relationship. They can range from short permissions (eg, to include a specified image in a 3   S 92(1) CDPA. In other words, an exclusive licensee has the right to exploit the rights exclusively licensed to the exclusion of anyone else, even the copyright owner.

Appendix A   237 book) to very detailed publishing or other media licences. Licences are very flexible in allowing the scope of the rights licensed to be treated in many different ways. The precedent included herein is a short licence document more akin to a permission than a full-blown commercial licence, but it nevertheless seeks to address key areas (although at the expense of brevity—clauses dealing with termination rights, audit rights and so on are not included). In addition, a checklist is included to illustrate the sorts of provisions often seen in detailed commercial licences.4

assignment precedent checklist

A checklist for an assignment (based on the precedent in this appendix) includes: • Ensure comfort obtained on who the owner is and who is to execute the assignment as assignor • Define the Work as precisely as possible • Set out any fee/consideration to be paid (there needs to be some consideration, even if nominal, to ensure the assignment is binding) • Define the rights to be assigned (just copyright or other intellectual property rights as well?) • Are these all the rights in the Work, or are they to be limited to duration or class of right? • Are rights to sue for past infringements to be included? • Consider scope of warranties as to ownership (title), noninfringement and so on • Ensure further assurance dealt with (eg, some countries may require additional formalities to ensure copyright is fully assigned and the further assurance clause can assist with this in the future) • Is it necessary to require the assignor to hand over any tangible items embodying the Work (eg, preparatory drawings, sketches, etc), and if so, on what terms?

4   For more information here, see S Stokes, Digital Copyright: Law and Practice, 3rd edn (Oxford, Hart Publishing, 2009), from which the checklist is taken (in modified form).

238  Art and Copyright • Will the assignor waive his/her moral rights? Or will he/she assert them? • Ensure there is a choice of law clause and, where considered appropriate, a dispute resolution clause

sample intellectual property assignment and waiver of moral rights

Parties (1) The person who owns the Intellectual Property Rights in the Work and who is assigning these rights is the Assignor. His/her details are: [give name and address] (2) The person who is receiving from the Assignor the assignment of the rights is the Assignee. His/her details are: [give name and address] [Background] [Give any relevant background to the assignment] Definitions Fee means [give price to be paid]5 Intellectual Property Rights means all and any intellectual property rights of whatever nature worldwide, whether registered or unregistered, including without limitation copyright, database right, rights in designs, patents and other rights in inventions, trade marks, and rights in confidential information [and also including the right to sue for past infringements of these rights].6 Work means [this must be fully described] 5   If the consideration is nominal, then this can be defined as ‘Fee means the sum of one pound (£1) (receipt of which the Assignor acknowledges).’ 6   This needs to be added in order for the right to sue and claim damages for infringements occurring prior to the date of the assignment to be transferred to the Assignee.

Appendix A   239 Fee This Assignment is entered into in consideration of the payment of the Fee by the Assignee to the Assignor. Assignment The Assignor assigns to the Assignee all the Assignor’s entire right title and interest in the Intellectual Property Rights in or relating to the Work for the full period of such rights, together with any and all renewals, revivals, reversions and extensions of such rights throughout the world now or in the future. Further Assurance The Assignor undertakes at the reasonable cost and expense of the Assignee to do any and all acts and execute any and all documents in such manner as may be reasonably required by the Assignee in order to protect, perfect or enforce any of the rights assigned to the Assignee pursuant to this Assignment. [In addition, the Assignor undertakes to promptly provide to the Assignee on request any materials embodying the Work in the Assignor’s possession, custody or control.]7 Warranties8 The Assignor warrants that: 1. the Intellectual Property Rights in or relating to the Work are solely owned by it; 2. the Work is original to the Assignor and is not copied from other people’s work; 7   This paragraph seeks to ensure any materials (eg, drawings, manuscripts, etc) that embody the Work are handed over. In practice, this paragraph is likely to be made more specific in order to better identify any such materials. 8   These are very basic warranties—an Assignee would want to consider whether they give it sufficient comfort.

240  Art and Copyright 3. it has not granted anyone else any rights or interest in or over the Work; and 4. it is not aware that any third party has any claim, interest or rights in respect of the Work. Waiver of Moral Rights9 The Assignor irrevocably and unconditionally waives to the fullest extent permitted by law and in favour of the Assignee, its successors, assigns and licensees any moral rights to which he/she may be entitled under any laws now existing or in future enacted in any part of the world (including without limitation rights pursuant to the Copyright, Designs and Patents Act 1988, sections 77, 80, 84 and 85). Choice of Law This assignment shall be governed by and construed in accordance with English law. [The parties submit to the [non-]exclusive jurisdiction of the English courts.]10 Agreed: Signature of the Assignor: Date: Signature of the Assignee: Date:

licence checklist

This checklist is drafted from the perspective of a licensor (the person granting the licence), but it will also be helpful background for a licensee (the person being granted the licence). 9   If, instead, an assertion of moral rights is to be made, see the language in the licence precedent. 10   Consider clarifying which courts are to deal with disputes and on what basis.

Appendix A   241 On the basis that you (the licensor) have acquired the necessary rights (ie, you either own them or have a licence with a right to sublicense others), what must you bear in mind when you are acting as a licensor? For example, what if you own the copyright in an image or other content and you want to license others to use the content? From a licensor’s perspective, full-form licences will usually address at least the following. Ensure the Licence is Binding How will the licence be agreed to and executed to ensure it is legally binding (eg, in writing and signed or online)? Define What You are Licensing You can only licence what you are entitled to and should only licence what you want to—an obvious point, but one that is often forgotten. Delivery Do you need to specify how/when delivery of any licensed material will take place (eg, by Internet download)? Licence Scope (a) A licensor will generally be as restrictive as possible in drafting the grant of rights in order to: (i) protect his/her copyright and other IP from misuse outside the scope of the licensed use; (ii) extract additional payment from the licensee (eg, if new/additional uses are required) Particular care must be taken in defining what electronic/digital rights are granted. Do you want to give the licensee rights in respect of now unknown technologies, or do you want to limit the rights granted to existing exploitation methods? If so, avoid overly broad grants and be as specific as possible.

242  Art and Copyright (b) A reservation of rights clause is quite typical—ie, the licensor retains ownership of everything licensed, and no rights are granted except those expressly granted by the licence. (c) A clause is also often added to ensure that any use outside the scope of the licence is a clear breach of contract to enable termination of the licence and a contractual damages claim, in addition to any copyright/IP infringement claim. (d) If the licensee is allowed to copy or redistribute the content, ensure he/she includes your copyright and other proprietary rights notices on any copies or relevant sites. Responsibilities of the User/Licensee In addition to any restrictions within the licence, are there any other obligations or responsibilities you need to put on the licensee? Eg, in the case of a digital licence, must the licensee procure the appropriate hardware, software and Internet connection at his/her expense and liability in order to make use of the content licensed? Payment a) How is payment of the licence fees structured? Is it a one-off licence fee (for perpetual use until the agreement is terminated) or an annual licence fee? Or will there be a royalty basis? Can you increase the fees in subsequent years if relevant? b) Payment terms will be specified and VAT/tax aspects dealt with (eg, withholding taxes if there is a foreign element). Other Services/Products Do you wish to offer any additional products or services, and if so, how will they be charged for and/or licensed? Technical Measures/Audit/Inspection/Record-Keeping a) Where relevant (eg, in a digital context), you should expressly reserve the right to employ technical measures, including by remote

Appendix A   243 access/control, to protect and/or disable your content. This is to help you to comply with the Computer Misuse Act 1990. b) Consider audit rights to check any misuse and where appropriate to check royalty payments. c) Consider obliging the licensee to keep full records of all copies and licensing of the content: this is essential if you are being paid on a royalty basis. Warranties What comfort do you wish to offer users as to: a) Quality of material supplied; b) Non-infringement of third-party IP and that the material is not obscene, defamatory, unlawful, illegal, etc; c) The fact that your IP is owned by you; and d) The fact that all moral rights have been waived? Assertion of Moral Rights If you have moral rights in the Work you are licensing, do you wish to assert your moral right of attribution? Limitations of Liability/Exclusions Licensors increasingly try to exclude or limit their liability in licences (although this is not universally the case), and it may well be appropriate for a licensee to challenge this practice. Loss of profit, revenue and goodwill are often sought to be excluded, as are indirect and consequential damages. A monetary cap on liability may be attempted, to be set at the value of the licence fees. Terms that may be implied by law (eg, as to quality/fitness for purpose of any material supplied) are also often excluded in favour of the express terms of the contract. In any event, regard must be had to general English contract law principles regarding the lawfulness of excluding/limiting liability in light of the Unfair Contract Terms Act 1977 (which potentially applies to both business and consumer contracts) and other relevant consumer protection legislation.

244  Art and Copyright Termination (a) Is it clear how the agreement can be terminated? At the very least, an un-remedied breach by the licensee of the agreement or his/her insolvency ought to allow the licensor to terminate. (b) Clarify what happens on termination—eg, what clauses survive, what accrued rights continue, the content/material to be erased from the user’s systems, etc.

Boilerplate Clauses a) Ensure you are not liable for force majeure (ie, if an event outside your reasonable control prevents you from performing the contract). b) Make clear how the licence terms can be waived or varied. c) Include a provision (‘severance clause’) that seeks to remove any unlawful provisions from the agreement. This is particularly important if there is bona fide uncertainty about the competition law aspects of the agreement. d) Restrict the licensee from assigning or sublicensing the agreement without your consent. Consider also whether it might be in your interest to be able to terminate the agreement if the licensee is taken over (‘change in control’), in particular if the licensee is acquired by a competitor. e) Give your affiliates, associated companies and suppliers the benefit of the exclusions/limitations of liability in the licence by making use of the Contracts (Rights of Third Parties) Act 1999 and prevent anyone else apart from you and the licensee, as appropriate benefiting from the contract. f) How will the parties communicate (eg, to serve notice of termination)? g) If you are supplying confidential information, ensure the licensee is bound by obligations of confidence. h) Include an entire agreement clause to seek to exclude any prior terms or representations made by the licensor concerning the licence and to ensure no other documents or discussions set out the agreement of the parties. Liability for fraud should not, however, be excluded.

Appendix A   245 Governing Law/Jurisdiction/Dispute Resolution (a) What is the governing law of the contract? (b) Is it clear which courts are empowered to determine any disputes? The Licensor will prefer its courts but with the right to sue in the licensee’s jurisdiction (eg, for non-payment or misuse of IP). (c) Do you require alternative dispute resolution provisions (eg, arbitration or mediation)? This can be useful in avoiding disputes going to court, and arbitration may be useful in an international agreement.

sample short - form licence 11

Parties Licensor (person granting the rights): [give details] Licensee (person receiving the grant of rights): [give details] Background [give the reasons for the licence] Definitions Copyright: the Licensor’s copyright in the Licensed Material Fee: [define] Licensed Material: [give details of what is being licensed] Licence Period: [define] Purpose: [give details of the purpose of the licence] Territory: [worldwide or limited to certain countries]

11   This is a short licence of just copyright intended for a simple grant of rights for a limited period and purpose. It is drafted in favour of the licensor.

246  Art and Copyright Grant of Rights Subject to the payment of the Fee and the Licensee’s compliance with the terms of this Licence, the Licensee is granted the [exclusive/nonexclusive] right by the Licensor under the Copyright to [use]12 the Licensed Material for the Purpose in the Territory for the Licence Period. Reservation of Rights The Licensee agrees not to use the Licensed Material other than as expressly permitted by this Licence. The Licensor shall retain ownership of all rights in the Licensed Material, and all rights not expressly granted by this Licence are reserved to the Licensor. Assertion of Moral Rights The Licensor’s moral right to be identified as the author or director of the Licensed Material under section 77 of the Copyright, Designs and Patents Act 1988 is asserted.13 In the event this licence authorises the making of copies of the Licensed Material, the Licensor also asserts his/her right to be identified in the event of the public exhibition of a copy of the Licensed Material made pursuant to this licence.14 Credits/Copyright Notice The Licensee will credit the Licensor as follows: [give credit/copyright notice] 12   Use denotes broad rights depending on the purpose and context. Consider limiting or clarifying this to more specific rights—eg, ‘to reproduce’, ‘to communicate to the public’, etc—if these can be readily defined, and it is clear what these rights should be. 13   This assumes the Licensor has moral rights and wishes to assert them. If moral rights are to be waived, see the assignment precedent for a suggested moral rights waiver clause. 14   Depending on the nature of the licence, the Licensor should consider adding to or modifying this language to deal with, eg, printed publications using the Licensed Material to ensure where reasonably possible those having access to the Licensed Materials are put on notice of the assertion of the right.

Appendix A   247 Warranties15 The Licensor warrants that he/she owns the copyright in the Licensed Material, that he/she is entitled to grant the rights licensed in this Licence and that as far as he/she is aware, the Licensee’s use of the Licensed Material as contemplated by this Licence will not infringe the copyright or other intellectual property rights of any other person. Choice of Law This Licence shall be governed by and construed in accordance with English law. [The parties submit to the [non-]exclusive jurisdiction of the English courts.]16 Agreed: Signature: Signature: Date: Date: (for and on behalf of Licensor) (for and on behalf of Licensee)

  These are limited warranties in favour of the Licensor.   Consider clarifying which courts are to deal with disputes and on what basis.

15 16

Appendix B

Sources for Cases, Images and Legislation As noted in the Preface, the author’s website (www.artcopyright.org. uk) contains links to selected cases, images and legislation (both EU and UK) that are referred to in this book. It is currently intended to include on the site references to significant developments in artistic copyright by way of short updates (which will not purport to be comprehensive or timely—just pointers to areas the author finds of interest in light of the discussion in this book). In addition, as of July 2011, the following open-access sources of legal information are suggested: The United Kingdom, Ireland, the European Union and Certain Other Jurisdictions: Cases and Legislation The British and Irish Legal Information Institute (BAILII) website is recommended (www.bailii.org). This also gives access to EU and ECtHR case law. For the European Union, see also EUR-Lex (eur-lex.europa.eu/en/ index.htm). International The BAILII website has international links, and there are similar organisations outside the United Kingdom. • •

Australia and New Zealand: the Australasian Legal Information Institute (AustLII) (www.austlii.edu.au) and the New Zealand Legal Information Institute (NZLII) (www.nzlii.org) Canada: the Canadian Legal Information Instituted (CanLII) (www.canlii.org)

250  Art and Copyright • The United States: the Legal Information Institute (LII) (www. law.cornell.edu). Also, the World Intellectual Property Organization (WIPO) has links on its website (www.wipo.int) to copyright legislation globally, as well as much other material. Other The author recommends the open-access repository the Social Science Research Network (SSRN) (www.ssrn.com) for scholarly papers and abstracts; and also JSTOR (www.jstor.org), an online archive of academic journals.

Index Introductory Note References such as ‘178–9’ indicate (not necessarily continuous) discussion of a topic across a range of pages. Wherever possible in the case of topics with many references, these have either been divided into sub-topics or only the most significant discussions of the topic are listed. Because the entire work is about ‘art’ and ‘copyright’ the use of these terms (and certain others which occur constantly throughout the book) as an entry point has been restricted. Information will be found under the corresponding detailed topics. aboriginal art 11, 127, 186–7, 189 aboriginal artists 186, 189 absolute monopoly 4, 75 ACS see Artists’ Collecting Society advertising 67, 145–6, 168–9, 213    and modern art 168–72 aesthetic appeal 41, 44, 58, 70 aesthetic elements 71, 73 aesthetic quality 48, 77 alterations 84, 92, 96, 151, 167, 177    material 51, 136, 167, 175 animation 50, 178–9 Anticipation 170–2, 194 appearance 31, 46, 48–9, 69, 71, 75–7, 211 applied art 2, 14, 22, 31, 71, 73    works of 31, 70, 96, 106, 205 appropriation 1–2, 22, 133, 166–7, 172, 178, 215    art 52, 133, 166–7    limits 172–8    of public domain 231–2 arbitrators 219–20 architecture 2, 31, 49, 162    works of 2, 34, 49 armour 41, 48, 73, 214 ARR see resale right art see also Introductory Note and detailed entries    appropriation 52, 133, 166    books, use of images 198–9    categories of 2, 9, 35–6, 39, 164, 178–9, 228–31    and copyright 3–9   galleries see galleries    loans 2, 7, 33, 164, 193–6    markets 99, 102–5, 108–9, 201    modern 1–2, 35, 127, 133, 164, 168

   plastic 103, 204–5    publishers 193, 219   reproductions see reproductions artist-craftsmen 22, 45, 229 artistic character 44, 49, 52, 73, 140, 184 artistic communities 21, 126 artistic copyright 3–4, 22, 35, 64, 69–70, 112, 227 see also copyright artistic craftsmanship 21–2, 31, 41, 44–9, 66–7, 73–4, 76–7    works of 22, 31, 44–9, 54, 70–1, 73–4, 228–9 artistic creativity 14, 99 artistic designs 60, 73 artistic intent 42, 54, 229 artistic merit 2, 19, 31, 36, 43, 45, 96 artistic nature 63–4 artistic practice 35, 163, 175 artistic purposes 35, 42, 44, 165 artistic quality 31, 34, 43–4, 47–8, 138, 165, 184 artistic styles 6, 172, 212–13 artistic works 31–9, 49–58, 67–70, 72–4, 76–81, 112–13, 227–30    categories of 2, 9, 35–6, 39, 164, 178–9, 228–31    definition 228    licensing 201    original 52, 60, 80, 87, 101–3, 137, 201    protection of 33, 77    transfer/acquisition of copyright 199–200 artists 81–4, 88–93, 97–100, 102–9, 163–9, 200–7, 217–21    aboriginal 186, 189    deceased 4, 100, 107–9, 202, 205, 207, 217    living 4, 82, 150, 154, 188, 217

252  Index artists (cont.):   resale right see resale right    visual 81, 86, 95, 108 Artists’ Collecting Society (ACS) 202, 206 Arts and Crafts Movement 45–6, 48 assemblages 164–6 assignment 1, 4, 6, 24, 56, 199–201, 235–40    checklist 237–8    sample 238–40 attributed authors 162 attribution 22, 25, 36, 89, 95, 233, 243    false 4, 87–9, 95, 121    right to 85 auction houses/auctioneers 67, 108, 193, 201, 205–7 audio-visual performances 89 audit rights 235, 237, 243 Australia 48, 109, 163, 177, 185–6, 188–9 Austria 4, 18, 70, 72, 80, 101–2, 154 authorisation 57–8, 119, 123–4, 143, 161, 196, 220 authors 3–5, 11–15, 24–9, 50–2, 79–83, 85–91, 182–7    attributed 162    definition 52–3    identifiable 162, 187    joint 52, 162–3, 179, 187, 189    labour 18–19    original 63, 163 authorship 8–9, 14, 51–3, 83–5, 162–3, 178, 229–30    creative act of 230    false attribution of 87, 174, 211    joint 52, 162–3, 179, 187, 189    original works of 53, 132    Romantic conception of 8–9 bad faith 176, 219–22 bad-faith registration 220 badge of origin 217–18 borrowers 7, 194–6 breach of confidence 43, 64, 80, 209–11, 223–4 bricks 42, 44, 165 broadcasts 29, 35, 39, 52, 67, 119, 195    live 89 brow, sweat of the 133, 161, 184, 229 browsing 115–17, 121, 198 buildings 34, 49, 55, 66, 163 buyers 90, 99, 101–2, 107, 201, 205–7

caching 116–18, 148–9, 154 capital 24, 185 carpets 186–7 casts 40, 44, 62, 169 catalogues 7, 144, 195, 210 categories of art/artistic works 2, 9, 35–6, 39, 164, 178–9, 228–31 CDs (compact discs) 115, 119 celebrities 215, 217 ceramics 103, 204–5 certificates of registration 131, 133 chairs 45, 70 charts 31, 34, 36, 81    colour 37 choice of law 131, 238, 240, 247 circuit diagrams 34, 36–7 civil law 4–5, 19, 26, 29 clans 186–9 collages 34, 41–2, 54, 103, 165–6, 204, 228–9 collecting societies 56, 80, 100, 104–5, 107–8, 201–2, 206–7 colour charts 37 commercial licences 237 commissioned portraits 199–200 commissioners 56, 86, 199–200 commissions 56, 92, 194 common law 18, 27, 186, 210, 218, 220–1    copyright 5–6, 27    trade marks 220 commonplace 62, 64, 75, 232 Commons    Creative 25, 163–4, 233    Wikimedia 140, 156, 161–2 communal authors 187 communal interests 188–9 communal moral rights 188 communal ownership 189 communication to the public 67, 78, 119, 124, 157, 160–1, 183 Community designs 74–6 compact discs (CDs) 115, 119 compilations 42, 137 composers 20, 49, 98–100, 140 compositions 24, 41–3, 90, 138 computer games 53, 178–80 computer-generated works 113–14, 230 computer programs/software 34, 51, 77, 111, 121, 142, 185 see also software computers 48, 112, 114–16, 118    viewer’s 115, 118–19 conceptual art 164, 210

Index  253 conceptual separability 71 conduits 118, 154 confidential information 4, 223, 238 configuration 72, 75, 111 conflict of laws 104, 159 confusion 84, 173, 211–12, 214, 216    likelihood of 214, 219 consent 4, 58, 80, 117, 152, 195–6, 225 consumers 12, 22, 84, 217 contemporary art see modern art contracts 87–8, 95, 124, 152, 157–8, 160, 242–5 contributions 52, 64, 162, 164, 225 control 7, 12, 36, 80–1, 155, 224–5, 244 copiers 12, 22, 63, 135, 137, 145 copies    digitised 121    exact photographic 132–3, 135    slavish 51, 57, 132–3, 135, 137    transient/temporary 57, 115 copying 49, 56–62, 64–7, 72–3, 115–17, 149–50, 152–5    act of 115    literal 6, 139    slavish 51, 57, 132–3, 135, 137    substantial 59, 62, 187 copyleft 25 copyright see also Introductory Note    and art 3–9    artistic 3–4, 22, 35, 64, 69–70, 112, 227    classes of work protected 34–50    clause in US Constitution 13, 131–2    and computer-generated works 113–14    definition of author 52–3    digital works 111–12    digitised works 113    duration of protection 55–6    exceptions to 15, 49, 56–68, 123, 126, 183    films 35, 168, 170, 179    first owners 56    history of 27–9    and industrial designs 68–74    infringement 57–60, 62–5, 92, 139–40, 143, 153–4, 172–6     defences to 65–8      prima facie 141, 150–1    justifications for 12–26     economic/utilitarian 13–14      just reward theory 12, 15–17, 99     moral rights 15–21      natural law 8, 12, 15–20, 23     personality bases 17–20

     public policy arguments 14–15    legislation, and digital future 56, 122–6, 233   licences see licences    management information 143, 147    modern law of 31–82     background 31–3     UK 33–82    monopoly 34, 59     scope 56–68    need for fixation/permanence of work 53–4    originality as criterion for protection 50–2    other rights analogous or related to 68–82    owners 23, 55–8, 80–1, 115–17, 147, 195–6, 236    photographs 127–41    qualifying factors for protection 54–5    scepticism 21–5    system 5, 12–13, 15, 17, 23–5, 83, 178    and traditional cultural expressions 127, 185–91, 230    and visual search engines 141–55    works 6, 25, 32, 59–60, 63–6, 115–16, 184 courts 32–3, 46–9, 128–36, 144–6, 148–50, 165, 228–9    French 84, 87    UK 2, 16, 29, 47, 59, 94, 151    US 53, 71, 95, 148, 176 craftsmanship    artistic 21–2, 31, 41–2, 44–9, 66–7, 73–4, 76–7    works of 46–8, 77 creation 18–20, 22–3, 37–40, 54, 75, 84, 147–8    in the course of employment 56, 79, 199–200    intellectual 32, 51, 58, 79, 111, 178–9, 183–5 creative act of authorship 230 Creative Commons 25, 163–4, 233 creativity 5, 12, 21–2, 32, 47, 82, 230    artistic 14, 99    minimal degree of 5, 51 creators 4–5, 12–13, 15–16, 20, 25, 40, 44–6 cultural expressions, traditional 127, 185–91, 230 customary law 186, 189–90 cybersquatting 219

254  Index DACS see Design and Artists’ Copyright Society damages 57, 100, 181, 188, 211 dance 169, 171, 180 database right 23, 77–9, 117, 120, 124–5, 157–9, 161    and Internet 120 databases 26, 78–9, 117, 120, 124–5, 157–9, 161 dead artists see deceased artists dealers 99, 103, 109, 201–2, 205–7, 219 dealing, fair see fair dealing deceased artists 82, 85, 100, 104–5, 107–9, 205–7, 230 deception 73, 211–12 decoration, surface 72, 75, 77 defamation 84, 87, 94, 117–18, 122, 243 defences to copyright infringement 65–8 see also exceptions to copyright degree of skill 37, 44, 51, 137, 139 derogatory treatment 4, 85, 87–91, 93–4, 121–2, 151–2, 174–5 desert theory 15–16 Design and Artists’ Copyright Society (DACS) 56, 67, 100, 104, 107–9, 199, 201–2 design documents 72–3, 76 designers 27, 45, 47, 61–3, 69, 71, 229 designs 5–6, 28–9, 34–5, 47, 61–2, 64, 211–13    artistic 60, 73    Community 74–6    and copyright 68–74    design right 69–70, 74–7     under CDPA 75–6    fabric 28, 60–1, 73    functional 22, 75    original 75, 214    protection 70, 73–7, 218    registered 4, 74–7, 173    unregistered 74, 77 destruction 86–7, 94, 96 device marks 37 see also trade marks diagrams 31, 34, 36    circuit 34, 36–7 digital environment 120–1, 123 digital future 122, 232–3 digital images 113, 130 digital piracy 24 digital rights management (DRM) 198 digital technology 7, 95, 111 digital video disks (DVDs) 7, 120 digital watermark technology 198

digital works, copyright 111–12 digitisation 2, 11, 24, 94, 111, 122–3 digitised copies 121 digitised images 113, 119 digitised works 113 directors 47, 88, 169, 179, 246 disclosure 80–1, 211, 224 display 42, 80–1, 146–8, 153, 155, 166    public 67, 81, 147, 194    right 80–1, 147 distortion 85, 88, 90–1, 93, 95, 121, 151–2 distribution 123, 163, 230 domain names 209, 215, 218–22 domaine public payant 81–2 downloading 115, 144, 148, 157–8, 198, 233 dramatic works 42, 53, 171–2, 179, 228 drawings 31–2, 34, 36–7, 72–3, 91–2, 112, 167–8 DRM (digital rights management) 198 droit de suite see resale right duration of protection 21, 34, 55–6, 76, 85, 102, 236–7 duties 210–11, 224    fiduciary 188 DVDs (digital video disks) 7, 120 economic incentives 8, 25, 227 economic rights 3–4, 7, 26, 34, 56, 85, 97 editing techniques 169, 171 EEA see European Economic Area EFF see Electronic Frontier Foundation electronic/digital rights 195, 236, 241 Electronic Frontier Foundation (EFF) 149, 159 electronic image files 195–6 electronic retrieval systems 55, 120–1 elephant test 41 embellishment 51, 136, 167 embodiment 53, 86    physical 94, 97–8 employment, creation in the course of 56, 79, 199–200 engravers 20, 27–8, 128 engravings 14, 27–8, 31, 34, 36–9, 128–9, 204 equity 56, 188, 199–200 estates 4, 18, 81, 108–9, 199, 201–2, 205–7 etchings 32, 34, 36, 38, 210, 220 European Economic Area (EEA) 56, 78, 106–7, 118    states 78–9, 107, 203

Index  255 European Parliament 95, 99, 105 European Union 3, 5, 21, 75–6, 105, 125, 181    Commission 5, 29, 51, 94–5, 101, 105, 181–2 evidence 41, 46, 48, 91, 93, 108, 146 exact photographic copies 132, 135 exact reproductions 36, 187    of public domain works 130, 136 exceptions to copyright 15, 49, 56–68, 123, 126, 183 see also defences to copyright infringement exclusive licences 200, 236 exhibition 33, 55, 87, 193    public 81, 88, 246    right 80–1 expiry of rights 22, 55, 78, 82, 85, 182, 194 exploitation 23, 56, 83, 98–9, 103, 116, 188–9 expression 6, 19, 31, 50–1, 62–3, 174, 210    freedom of 126, 153, 174, 177, 211, 224–5    and idea 16, 20, 22, 56, 58–61, 63, 231–2    intentional 140–1 fabric designs 28, 60–1, 73 fabrication 42, 44 fabrics 48, 61, 69, 189 facial make-up 36, 53, 213 fair dealing 7, 15, 123–4, 199    defence 33, 66, 68, 151, 174–5, 199, 211    in online environment 141–55    use of images in art books 198–9 fair use 15–16, 65, 141, 143–51, 176–7, 221, 232    defence 65, 149, 176, 232    doctrine 65, 141, 147, 151, 176–7    in online environment 141–55 false attribution 4, 87–9, 95, 121, 174, 211 false endorsement 215, 223 fees 86, 242–3 fiduciary duties 188 files, electronic image 195–6 filming 49, 57, 169, 171–2 films 2–4, 35, 112–13, 164–6, 169–72, 178–80, 228    copyright 35, 168, 170, 179    original 169–70, 214    sets 46–7, 229 fine arts 2, 14, 69, 96, 106    works of 2, 22, 73, 97

first owners 34, 56, 78–9, 88, 200 first transfer of ownership 100, 102, 107–8, 202, 205 fixation/permanence of work 33, 53–4, 89, 188, 228–9 folklore 55, 185, 190–1 formalities 55, 79, 224, 236–7 foxes and hedgehogs 64, 230 framing 57, 87, 116–17 France 70, 72, 80–1, 84–5, 98, 100, 104    courts 84, 87    law 19–20, 85–6, 122 freedom 25, 104, 124, 177, 189, 223–4    of expression 126, 153, 174, 177, 211, 224–5 fruits of labour 8, 16–17, 19 full-size images 142, 144–9 functional designs 22, 75 functional purposes 75, 144 functions, utilitarian 71–2 furniture 45, 69, 77, 205 galleries 67–8, 78–9, 140, 156, 193–4, 196–8, 218–20 games, computer 53, 179–80 general interest 160, 225 Germany 19, 33, 56, 66, 70, 85, 100–1    Federal Supreme Court 153, 155 GFDL see GNU Free Documentation License glassware 204–5 GNU Free Documentation License (GFDL) 157, 164 good faith 222 goodwill 194, 211–12, 214–16, 221, 243 Google 148–51, 153–5 grants 7, 13, 57, 161, 195, 241, 245 graphic user interfaces (GUIs) 111–12 graphic works 34, 36–7, 112, 228–9 group ownership 189–90 GUIs see graphic user interfaces handicrafts 45–6, 77, 191 Hargreaves Review 124, 126, 178, 232 harm 18, 141, 146, 188 harmonisation 5, 51, 82, 94–5, 101–2, 122, 125 hedgehogs 64, 230 heirs 81–2, 100–1, 104, 206, 215 high-quality reproductions 198–9 high-resolution images 156, 158 honour 85, 88, 91, 93–5, 121, 151–2, 175 hosting 118, 150, 154–5

256  Index human rights 82–3, 153, 177, 211, 223 hyperlinks 117, 120, 154 ICANN (Internet Corporation for Assigned Names and Numbers) 219 Iceland 56, 202 idea/expression dichotomy 16, 20, 22, 56, 58–61, 63, 231–2 identifiable authors 162, 187 identification 36, 88 image rights, acquisition and use for websites 196–8 images 111–13, 118–22, 128–30, 139–42, 155–64, 197–9, 222–5    copyright 141, 155    digital 113, 130    digitised 113, 119    full-size 142, 144–9    high-resolution 156, 158    licensed 163, 201    moving 112, 179    persons 222–3, 225    picture library 129, 136, 181    sharing of 126, 156–64    thumbnail 142–5, 147–9, 151    use in art books 198–9    visual 89, 167 imitation 15, 172–3, 212–13 implied licences 92, 116, 152–4 in-line linking 147–9 incentives 13, 16, 25–6, 99    economic 8, 25, 227 incidental inclusion 67–8 indemnities 90, 182, 196 independent skill 23, 63, 113 indexes 142, 155, 219 India 47, 72 indigenous art 55, 185, 189–90 industrial designs see designs information 16, 105, 116–17, 154–5, 162, 207, 210–11    confidential 4, 223, 238    copyright management 143, 147 information society services 118, 154 infringement   copyright see copyright, infringement    of moral rights 174, 176 injunctions 15, 57, 90–1, 210    interlocutory 46, 213 innovation 22, 84, 95, 109, 233 installations 42, 164, 166 instructions 37, 64, 115, 118

integrity 80, 84–7, 89, 92, 94–6, 121–2, 233 intellectual creations 32, 51, 58, 79, 111, 178–9, 183–5 intellectual property rights 4, 11, 16, 20, 23, 173, 190–1 see also copyright; designs; moral rights; trade marks    other than copyright 209–27 intent, artistic 42, 54, 229 intentional expression 140–1 intentions 3, 45, 47, 71–3, 78, 165, 228–9 interests 12, 24, 83, 95, 100, 111, 239–40    communal 188–9    general 160, 225    legitimate 123, 219    of national security 223–4    personal 19, 94   public see public interest interference 223–4 intermediaries 118, 123, 125, 154, 201 Internet 111–26, 141–2, 146–7, 152–3, 155–6, 195–8, 232–3    art, copyright legislation and digital future 56, 122–6, 233    and database right 120    implications of moral rights for digital environment 121–2    publication right 119–20   search engines see search engines    and transitory copying 115–18    transmission right 118–19 internet, service providers see ISPs Internet Corporation for Assigned Names and Numbers (ICANN) 219 intestate succession 107–8 intrinsic utilitarian function 31, 71 inventions 24, 63, 173, 238 Ireland 101–2 ISPs (internet service providers) 116–18, 125    liability for user-generated content 117–18 Italy 72, 81, 102, 177 joint authorship 52, 162–3, 179, 187, 189 kinetic art 54 labour 15–20, 51–2, 62–5, 112–13, 128–9, 137, 229–31 legitimate interests 123, 219 lenders 194–6 lending rights 3, 56, 79–80

Index  257 liability 104, 118, 125, 154, 174, 202, 242–4    secondary 149 libraries 66, 180–2, 191    picture 127, 129, 198 licences 57–8, 88, 115–17, 152–3, 195, 235–7, 240–7    checklist 240–5    commercial 237    exclusive 200, 236    fees 242–3    implied 92, 116, 152–4    on-screen 152, 197    sample 245–7    terms 163–4, 197–8, 244 licensed images 163, 201 licensed material 241, 245–7 licensees 88, 213, 236, 240–7 licensing 98, 193, 201, 224, 241, 243 licensors 240–7 Liechtenstein 56, 202 limited access 43 limited editions 96, 103, 204–5 linking 25, 116–17, 122    in-line 147–9 literal copying 6, 139 literary works 34, 37, 50, 63–4, 179–80, 184 lithographs 14, 28, 31, 34, 36, 38, 204 live broadcasts 89 live performances 89, 180 living artists 4, 82, 150, 154, 188, 217 loan agreements 194–6 loans, art 2, 7, 33, 164, 193–6 Lockean natural law 16–20 logos 24, 68, 139–40, 168, 194, 218 machine production 45–6 make-up, facial 36, 53, 213 maps 31, 34, 36, 73, 81, 179 markets 14, 82, 100, 109, 130, 142, 145–6    potential 143, 145 mass-produced items 2, 38, 44, 46, 48, 72 material alteration 51, 136, 167, 175 material form 23, 56–7, 115 mechanical reproduction 161, 227 media 39, 44, 56, 103, 113, 135–6, 179 merchandising 99, 194, 196, 209, 217 merit, artistic 2, 19, 31, 36, 43, 45, 96 minimal degree of creativity 5, 51 minimalist art 52, 167–8 misappropriation 16, 198, 231 misrepresentation 211–12, 216

misuse 223, 241, 243, 245 models 31, 34, 40, 49, 54, 66, 73 modern art 1–2, 11, 35–6, 127, 133, 164, 228    and advertising 168–72    appropriation art 52, 133, 166–7    and copyright 164–80    limits of appropriation 172–8    minimalist art 52, 167–8   ready-mades, objets trouvés, installations and assemblage 164–6 money 26, 56, 160, 186, 219 monopoly 53, 62, 74, 128, 213, 216, 228 monopoly rights 4, 76, 111 moral rights 2–4, 25–6, 83–97, 121–2, 150–2, 243, 246    assertion 243, 246    derogatory treatment 4, 87–91, 93–4, 121–2, 151, 174–5    dualist approach 85    implications 89–94      for digital environment 121–2    infringement 174, 176    as justification for copyright 15–21    monist approach 85    United States 95–7    waivers 89, 193, 199–200, 238, 240 moulds 38, 40–1, 43 movements 42, 169–70 moving images 112, 179 multimedia works 178–9 museums 57, 78, 91, 102–3, 119–20, 193–4, 217–19 music 29, 53, 90, 93, 169–71, 174, 179    sheet 141 mutilation 85, 88, 90–1, 93, 95–6, 121, 151–2 names 2, 25, 88, 194, 211–13, 215–22, 238    artists 214–16, 221    domain 209, 215, 218–22 national security 223–4 national treatment 29, 54 natural law 8, 12, 15–20, 23    Lockean 16–20 Netherlands 61, 101–2 New Zealand 38, 40, 47, 53, 171, 185–6 Norway 56, 202 objets trouvés 33, 40, 47, 54, 164 officious bystander test 152 omissions 92–3 on-screen copies 115, 117, 197

258  Index on-screen licences 152, 197 online artistic collaboration 52, 127, 162–4 online communities 162–3 online environment 126, 141–55 online piracy 125 online rights 197 open source software 25, 164 original artistic works 52, 60, 80, 87, 101–3, 137, 201 original authors 63, 163 original designs 75, 214 original film 169–70, 214 original paintings 128–9 original photographs 39, 128–9, 157 original works 59, 101–2, 136, 167, 173–4, 204, 227 originality 5, 23–4, 39, 113, 131–7, 139–40, 227–31    as criterion for protection 50–2    sufficient 113, 132 originating websites 142, 146 origination 51, 139 orphan works 180–2 owners 6–7, 11, 13, 32, 81, 177, 236–7    copyright 23, 55–8, 80–1, 115–17, 147, 195–6, 236    first 34, 56, 78–9, 88, 200 ownership 6, 8, 13, 24, 56, 78, 200–1    group 189–90   transfers see transfers packets 115–16, 119 paintings 28, 36–7, 52–3, 57, 128–30, 135–9, 203–4    original 128–9    photographs of 52, 138–9    public domain 134, 156, 159 parody 22, 59, 167, 172–8, 212, 232 passing off 70, 92, 170, 173–4, 209, 211–16, 223    reverse 212, 214 patents 4, 7, 16, 23, 27, 64–5, 191 paternity 84–5, 87–8, 121, 212 paying public domain 81–2 performance works 89, 178 performances 3, 53, 66, 89, 127, 164, 180    live 89, 180    public 56, 80 performers 53, 80, 83, 89    rights 26, 178–80 permanence of work 33, 53–4, 89, 188, 228–9

permanent reproductions 123, 183 permission 7, 23, 43, 81, 158, 160, 195 personal interests 19, 94 personal property 6, 186, 235 personality 5, 19, 21, 32, 51, 83, 223    theory 5, 19 photocopies 29, 135, 137–8 photographers 39, 56, 113, 138–9, 141, 150–2, 154 photographic reproduction 162 photographic reproductions, exact 52, 132–3, 135, 138–9 photographs 39, 41–3, 57, 113, 142, 144–6, 224–5   Bridgeman Case 127–40, 157, 159, 167, 201    copyright 127–41   Graves’ Case 39, 113, 127–9, 131, 134–5, 137–9    original 39, 128–9, 157    of paintings 52, 132–3, 135, 138–9 physical embodiment 94, 97–8 picture libraries 127, 129, 136, 181, 198 pictures see images piracy 4, 17, 28, 59, 65, 128, 188    online 125 plagiarism 24, 51, 167, 173 plastic art 103, 204–5 pointillism 6, 172, 232 portraits 56, 86, 140, 158    commissioned 199–200 posters 96, 173, 195, 217–18 potential markets 143, 145 prices 14, 99, 102, 108, 202, 204, 238    sale 97, 101, 104, 203–6 printing privileges 27, 177 prints 28, 31, 103, 106, 204–5 privacy 4, 83, 87, 209–10, 215, 222–5    reasonable expectation of 223–4 private capacity 102–3 private property 18, 178, 189, 224 profits 13, 17–18, 57, 65, 98, 215, 219 programmers 9, 114 programs, computer 34, 51, 77, 111, 121, 142, 185 property 13–15, 17–20, 23–4, 59–60, 189–90, 216, 235–6    personal 6, 186, 235    private 18, 178, 189, 224 public display 67, 81, 147, 194 public domain 20–2, 65–6, 84, 130, 133, 138, 162    appropriation 231–2

Index  259    artistic works, images of 133–4, 156–7, 159    images of 133–4, 156–7, 159    paying 81–2 public exhibition 81, 88, 246 public interest 33, 65, 84, 151, 153, 159, 211    defence 65, 153, 210, 232 public performance 56, 80 public policy 12–14, 26, 153 public safety 223–4 publication right 77–8, 119–20 publicity 194–6, 209, 222–3    rights 222–5 publicity materials 194–5 published works 55, 176, 212 publishers 4, 7–8, 12–14, 35, 68, 86, 127    art 193, 219 qualifying persons 55 quality    aesthetic 48, 77    artistic 31, 34, 43–4, 47–8, 138, 165, 184 RAM (random-access memory) 115–16 ready-mades 2, 33, 35, 40, 52, 164–5 reap/sow principle 16–18 reasonable expectation of privacy 223–4 reasonableness 91 reciprocity 54, 101, 105 recognised stature 95–6 recordings 39, 89, 113, 170–1, 179    sound 29, 35, 39, 52, 67, 89–90, 179–80 registered designs 4, 74–7, 173 registered trade marks 216, 221–2 registration 69, 74, 76, 219    certificates of 131, 133    trade marks 216, 220 rental and lending rights 56, 79–80 reproduction(s) 3, 56–8, 115, 123, 127–8, 183–5, 194–6    art 3, 31, 215    exact 36, 187    high-quality 198–9    mechanical 161, 227    photographic 162    three-dimensional 67    unauthorised 186 reputation 83–5, 91, 93–5, 151–2, 175, 211–13, 215    sufficient 213, 221

resale right 1, 3–4, 81–3, 97–109, 193, 201–7, 227    background 97–101    and deceased artists 207    definition 202–3    EU harmonisation 101–6    persons entitled to claim 206    persons liable to pay 206–7    practical guidance 201–2    relevant works of art 204–5    right to information 207    sales attracting resale royalties 205–6    UK 201–7      implementation of Directive 106–9 resale royalties 108, 202–7    sales attracting 205–6 restorers 90, 141 reverse passing-off 212, 214 rhetorics 12, 16 rights    to attribution 85    audit 235, 237, 243    database 77–8, 120, 157    design 75–7    economic 3–4, 7, 26, 34, 56, 85, 97    electronic/digital 195, 236, 241    human 82–3, 223    lending 3, 56, 79–80    monopoly 4, 76, 111   moral see moral rights    online 197    registered 74, 76   resale see resale right Romantic conception of authorship 8–9 royalties 80–2, 98, 101–5, 195, 235, 242–3    resale 108, 202–7 safe harbor 149, 182 sale prices 97, 101, 104, 203–6 sales 6, 61, 67, 81, 103–4, 106–8, 204–7 sand pictures 45, 54 sculptures 38, 40–4, 54, 73–4, 96, 165–6, 228–9 search engines 142, 144–7, 152–5   visual see visual search engines security 43, 100, 168–9, 223–4    national 223–4 selection 37, 59, 79, 139, 230 sellers 101–4, 106–7, 201, 205–7 separability, conceptual 71 servers 115–16, 118, 121, 142, 158, 160–1, 197 service marks 219–21

260  Index service providers 118, 154–5 services 13, 26, 52, 95, 109, 154, 214–18 sets, film 46–7, 229 sharing, of images 126, 156–64 sheet music 141 signatures 37, 96, 166, 215–16, 218, 240, 247 similar works 4, 34, 36, 179, 186, 189 similarities 62, 130, 171–2, 213 skill 17–18, 45–6, 51–2, 62–5, 135, 137–9, 229–31    degree of 37, 44, 51, 137, 139    independent 23, 63, 113    sufficient 112, 139 slavish copying 51, 57, 132–3, 135, 137 software 25, 112–14, 117, 124, 179–80, 242 see also computer programs/ software    open source 25, 164 sound recordings 29, 35, 39, 52, 67, 89–90, 179–80 South Africa 173–4 special treatment 114, 126, 177 stakeholders 13, 181, 191 stature, recognised 95–6 style(s) 6, 39, 60–1, 172–4, 187, 212–14, 232 subject matter 26, 41, 53, 103, 129, 165, 172 substantial copying 59, 62, 187 substantiality 58–9, 62–3, 65, 143–4 succession    intestate 107–8    laws 104 successor owners 211 sufficient originality 113, 132 sufficient skill 112, 139 summary judgments 91, 130, 134, 138, 143, 149 surface decoration 72, 75, 77 sweat of the brow 133, 161, 184, 229 Switzerland 70, 72, 99 symbols 77, 187, 191, 220 T-shirts 73, 122, 186 tapestries 103, 204–5 technical measures/steps 124–5, 153, 155–6, 233, 242 techniques 6, 60, 62, 172, 185, 232    editing 169, 171 technological developments 28–9 technology 21, 113, 125, 135, 163    digital 7, 95, 111

temporal displacement test 71 termination 242, 244    rights 235, 237 terms 28–9, 43–5, 55–6, 152, 159–60, 162–4, 185    general 116, 118, 173    licence 163–4, 197–8, 244 territories 195, 236, 245–6 testamentary dispositions 6, 104, 107 themes 60, 187 three-dimensional items 138–9 three-dimensional reproductions 67 three-dimensional works 56, 136, 228 thumbnail images 142–5, 147–9, 151 trade marks 4, 7, 69–70, 173–4, 194, 209, 214–21    dilution 173    infringement 209, 216, 219, 223    registered 216, 221–2 traditional cultural expressions 127, 185–91, 230 traditional knowledge 185, 189–91 traditional owners 186 transfers 6, 85, 97, 199, 221    first 100, 102, 107–8, 202, 205 transient/temporary copies 57, 115 transitory copying and Internet 115–18 transmission, theory 161 transmission right 23, 118–19, 123–4, 155 transparencies 130–1, 133–6, 195–6 typefaces 35, 49–50, 72, 77 typographical arrangements 35, 52 unauthorised reproduction 186 unauthorised use 59, 188, 214 United States 5–7, 15–16, 71–2, 132–3, 150–1, 159–62, 176–7    courts 53, 71, 95, 148, 176    law 2, 5, 13, 31, 130–5, 159–60, 215 unity of art 70, 72 unpublished works 6, 78, 176, 210 unregistered design 74, 77 updates 3, 92 uploading 140, 157, 161 use   fair see fair use    unauthorised 59, 188, 214 user-generated content    liability of ISPs and others 117–18    and online artistic collaboration 162–4 users 7, 116–18, 142, 144–6, 156, 160–3, 181–2 utilitarian function 71–2

Index  261 utilitarian objects 2, 40, 69, 72 utility 44–5, 69, 158 value-added labour theory 15 videos 3, 98, 127, 164, 166, 169, 178–9 virtual tours 142, 197 visual artists 81, 86, 95, 108 visual arts 9, 42, 53, 83, 86, 89, 96 visual search engines 118, 126–7, 141–2, 145, 150, 153, 155    and copyright 141–55   Kelly v Arriba Soft 141–8, 150, 155   Perfect 10 v Google 148–51    UK perspective 150–5 waivers, moral rights 89, 193, 199–200, 238, 240

warranties 88, 90, 196, 235, 237, 239, 247 watermarks, digital 198 websites 79, 117–18, 120–2, 142, 145–6, 150, 197    acquisition and use of image rights 196–8    originating 142, 146 Wikimedia 140, 160–1    Commons 140, 156, 161–2    Foundation 156, 159, 162 Wikipedia 52, 156–7, 159, 163–4, 166, 233 WIPO see World Intellectual Property Organization woodcuts 34, 36, 38 World Intellectual Property Organization (WIPO) 89, 119, 185, 190–1, 219