The plaintiff, Mr. Luksan, was a scriptwriter and principal director of a documentary on the topic of German photography from the Second World War.  The defendant, Mr. Van der Let, was hired to produce the film and was assigned all copyright and/or related rights in the film held by Mr. Luksan.  However, the assignment expressly excluded the right to broadcast the film, in almost any medium, to closed circles of users in return for separate payment.

In apparent violation of this express contractual exclusion, Mr. Van der Let made the film available on the internet and assigned the rights for this purpose to the website, movieeurope.com, where it could be downloaded by video on demand.  He also made the trailer available on Youtube and assigned the pay TV rights to Scandinavia TV.

Mr. Luksan contended that these forms of exploitation violated rights that were reserved to him in the contractual arrangement and demanded that half of the statutory rights to remuneration vest in him.  Mr. Van der Let responded by arguing that a statutory assignment of those rights is provided to him by virtue of Paragraph 38(1) of the UrhG  (copyright code) which grants all exclusive exploitation rights to the producer.  Furthermore, he alleged that this statutory grant renders any agreement diverging from the rule of reservation as void.

The dispute was further complicated, as the first and second sentences of Paragraph 38(1) of the UrhG, seemed to be contrary to European Union law.  The first sentence provides for the original and direct allocation of the exploitation rights to the film producer alone, rather than merely establishing a rebuttable presumption.  The second sentence provides that statutory rights to remuneration are to be shared equally by the producer and author of a film subject to any express agreement derogating from the rule.  On the contrary, EU law requires that the presumption in favour of the producer be rebuttable and that derogation from shared remuneration is prohibited.

As the dispute was dependent upon an interpretation between conflicting laws, the matter was referred to the European Court of Justice.  Firstly, the court explained that reproduction rights vest by operation of law in the principal director.  This vesting precludes national legislation which allocates those exploitation rights exclusively to the producer as was provided by the UrhG.  Nevertheless, EU law must allow the Member States the option of laying down a presumption of transfer, in favour of the producer, of exploitation rights provided that such a presumption is not an irrebuttable one that would preclude the principal director from agreeing otherwise.  The court also addressed the issue of statutory compensation and found that the principal director must be entitled to the right of fair compensation provided in Article 5(2)(b) of (private copying exception).  Finally, the court held that EU law must be interpreted as not allowing Member States the option of laying down a presumption transfer in favour of the producer of the right to fair compensation vesting in the principal director of said work.

Andrew Baker is a LLB/BCL candidate at McGill University Faculty of Law.

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Some commentators speculate was because there is no conclusive rule on the legality of sampling, despite an increasing number of lawsuits claiming damages.  While this legal uncertainty has not stopped other artists from pursuing a number of high profile lawsuits, the outcomes of such cases demonstrate a general lack of legal clarity.

The two principle legal defenses to sampling are de minimis use and fair use (fair dealing).  The former is invoked when the litigant argues that the sample is so negligible that the court needn’t bother with a fair use analysis as there is no copyright infringement to be found. The latter requires the sampler to prove that the use falls under a number of legal exceptions to copyright infringement.

There has been contradictory jurisprudence on the de minimis use defense.  For example, in involving the Beastie Boys, the Ninth Circuit accepted the de minimis argument.  They based their reasoning on a significance test stating that, “To say that a use is de minimis because no audience would recognize the appropriation is thus to say that the use is not sufficiently significant.” the Sixth Circuit eliminated the de minimis defense with regards to sampling based on a value test.  The court explained that

“Even when a small part of a sound recording is sampled, the part taken is something of value.  No further proof of that is necessary than the fact that the producer of the record or the artist of the record intentionally sampled because it would (1) save costs, or (2) add something to the recording, or (3) both.”

Fair use doctrine with regard to sampling is even more unclear.  The Sixth Circuit’s holding which eliminated the de minimis use defense considered a sample of merely three notes lasting two seconds.  While the court stated that the door for fair use is still open in sampling cases, the strict test for infringement could have a bearing on other fair use defenses.  Accepted fair use defenses could include sampling that is transformative, for non-commercial purpose, copied only a small amount, the original had a thin copyright, or the copying did not harm the market for the original work or its derivatives. It would seem the only bright line rule would be that if one is unsure, it is best to assume that permission is required for sampling.

With the rise in popularity in sampling, and the mutual interest from both samplers and copyright holders, many artists now seek sample clearance before using a copyrighted work.  This requires seeking clearance from the owner of the song (typically the publisher) and the holder of the master recording (typically the recording company).  also include recreating the music sample, seeking copyright owners who want to have their work sampled, or contacting the artist directly if they still maintain some control over the work.

Andrew Baker is an LLB/BCL candidate at McGill University Faculty of Law.

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The image in question was first published on the cover of the Velvet Underground’s 1967 debut album, “The Velvet Underground and Nico.”  It depicts a banana accompanied by Warhol’s signature executed in the late pop artist’s distinctive silkscreen style.  The band and Warhol collaborated on many occasions in the late 1960s.  Warhol acted as manager to The Velvet Underground while the group was the house band at Warhol’s well-known Manhattan studio, the Factory.  It was even Warhol who suggested that the band collaborate with Nico who, in addition to lending her name to the title, sings on several of the album’s tracks.  Due to the close relationship of the parties, the creation and distribution of the album artwork was a seemingly collaborative effort.  It has been reported that The Velvet Underground even with Warhol in exchange for providing them with the image.

The present legal troubles began when former members of the band learned that the Warhol Foundation had licensed the image to Apple to be printed on cases and sleeves for IPhones and IPads.  A partnership of former Velvet Underground members, Lou Reed and John Cale, allege that they own a trademark in the image based on its strong association with the band.  In the suit they explain that licensing the image to Apple will deceive consumers into believing that the band allowed for the sponsorship and approval of Apple products.  They support their claim to a trademark by stating that they have maintained exclusive and which included re-using the image on a 1995 box-set of their work and even licensing it to Absolut Vodka in 2001.  Both the past use and licensing of the image were met without objection from the Warhol Foundation.

The current state of legal limbo is based on the strong associations to both artists evoked by the image.  The original work is an unmistakeable Warhol with no definitive evidence of any sale to the band.  Moreover, no copyright was ever registered.  The eventual critical and commercial success of “The Velvet Underground and Nico” has led to the iconic image subsequently being closely associated to the band leading many to  In the suit the partners explain that, “The banana design became a symbol, truly an icon, of The Velvet Underground.”  There has been no definitive response from the Warhol Foundation to the allegations.

The Velvet Underground is seeking an injunction preventing the use of the banana image by others, a declaration that the Warhol Foundation has no copyright in the work, their share of any profits already made from the Apple licensing, and further unspecified damages. The onus will be on the band to uphold their trademark claim which is despite the fact that Andy’s very own signature adorns the work.

Andrew Baker is a LLB/BCL candidate at McGill University Faculty of Law.

The post This Suit Is Bananas appeared first on IPOsgoode.

Andrew Baker is a LLB/BCL candidate at McGill University Faculty of Law.

A has led to some uncertainty as subject to protection.

The case involved a Marseille-based photographer, Patrick Box, who authored a photo originally published in a book dedicated to bouillabaisse, a fish stew popular in the south of France.  The photo depicted two fish, their bodies curved so that they were joined at the face and tail, on a yellow plate on a black background.  Box later transferred the photograph (among others) to the City of Marseille’s publication, La revue culturelle de la Ville de Marseille, to be used in an upcoming article on the topic of the city’s famous culinary delight.  The 211th edition was released in December 2005 containing a photo authored by another photographer.  The new photo contained parts of Box’s original which had been modified by the addition of more fish, all without his permission ( for photos of the original and modified works).  Unable to reach an amicable solution with the publishers, Box took the case to trial.

Box’s argument is based on (CPI) which grants the author of an original work an incorporeal exclusive right which can be set up against others.  The existence or conclusion of a rental contract for a work or service by the author of an original work does not bring about a derogation of the author’s rights of enjoyment except where prescribed by law.  In other words, if the court deemed that Box’s photograph is an original work under Art. 111-1, he is granted protection against moral harm stemming from non-authorized use even though he transferred the photos.

At first instance, the trial judge found in favour of Box.  The defendants did not contest that the work had been partially reproduced.  The judge ruled that the photograph, by the choice of the elements which composed it including the colour, lighting, and angle, sufficiently demonstrated a mark of personality of the author constituting an original work.  The co-defendants were found liable in solidum for €15,165.

The Ville de Marseille appealed the decision, contesting primarily that the photograph should be denied protection accorded to an intellectual work under Art. 111-1 because it does not constitute an original work.  The Court of Appeal explained that originality signifies the reflection of the personality of the author or the revelation of a creative talent.  The court warned against confusing originality with mere professional competence possessed by a photographer in general, the latter amounting to a mere prestation of services rather than the creation of a protected work.  The Court of Appeal was not convinced that Box’s photo sufficiently demonstrated his personality as author and overturned the initial ruling.

The Supreme Court essentially upheld the decision of the Court of Appeal.  While somewhat reticent about the Court of Appeal’s reasoning which invoked factual elements, the Supreme Court agreed in principle that the explanation that Mr. Box’s services were merely technical was a sufficient response to the arguments brought forth by the parties ( for a more detailed judicial history).

Article 112-2 of the CPI explicitly includes photographs as protected works.  But if no other formal legal process has been followed to guarantee protection, .  Proving originality in a legal sense because there are no formal criteria for determining such a subjective question.  Yet, the stakes are high since the absence of originality will deny the author any protection.  The law must utilize a similar framework for fields as diverse as software and modern art.  The decision has that the legal standard for their particular profession is moving in the wrong direction because it demonstrates that even works destined for publication may not be protected.

Others contend that the decision does not demonstrate a problem with the judicial notion of originality or even the capacity of courts to apply such principles.  This is especially the case with photography, which is highly susceptible to infringement.

The current decision does not draw any particular bright line rule as the court explicitly states that a photograph is still an original work when the personality of the author is revealed through the choices he or she makes in its production.  Yet, some disciplines may be more susceptible to the difficulties of demonstrating one’s personality in the final work.

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Canadian Federation of Musicians (CFM) and ACTRA have recently formalized agreement that outlines opportunities for mutual support on issues of common interest, and promotes solidarity and greater unity of purpose between the two labour unions.

The two unions are far from strangers, having worked together on many strategic initiatives in the past.  For instance, ACTRA has provided contracted services to CFM and its assignees for collection and distribution of remuneration to its members of funds collected under the .  The unions have also collaborated on numerous public policy issues having conducted joint presentations to parliamentary committees, government agencies, and the .

The strategic agreement brings greater formality to joint CFM and ACTRA initiatives.  It contains provisions to allow the two unions to pool resources as well as provide support for one another on issues of collective bargaining, organization, and public policy initiatives.

ACTRA is presently engaged in advocacy on .  The union advocates for increased Canadian content in broadcasting, reforms to copyright law to ensure fair compensation for artists, regulation on foreign ownership in Canada’s telecommunications industry, and greater public investment in cultural industries.  On the , ACTRA presently urges the Canadian government:

“-    To ratify the provisions of the WIPO Performances and Phonograms Treaty (WPPT) and the WIPO Copyright Treaty (WCT) by amending Canada’s Copyright Act to comply with the terms of the Treaties;

-       To provide a full range of economic and moral rights for audiovisual performers in Canada’s ��DZ������������Act; and

-       To update and expand Canada’s private copying levy to apply to all technologies ordinarily used by Canadians for private copying purposes, so that performers are fairly compensated and consumers can copy works for their own personal use.”

It remains to be seen how exactly the terms of the partnership will impact the two unions’ lobbying efforts since the two unions already share many common policy goals.  , ACTRA’s National President commented that, “Our members work side-by-side, and in many cases – are members of both unions.  It only makes sense that we would strengthen our bond and work closely together to promote our mutual interests.”

CFM is a distinct division of the American Federation of Musicians, United States and Canada.  For 31 years CFM has provided support to professional musicians and counts over 17,000 active members in Canada. 

ACTRA (Alliance of Canadian Cinema, Television and Radio Artists) is a national organization of professional performers working in English-language recorded media.  ACTRA represents 22,000 members in Canada.

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A New 91��ɫ court against ’s claims that online music provider, ’s techniques violate the 1998 (�ٲѰ䴡).�� moves one step further in parsing out a legal grey area regarding how the copyright rules set out in the DMCA apply to new and emerging , but could potentially create other legal questions.

MP3Tunes is a service which allows users to store music files, purchased or not, in an online digital locker providing access from various personal internet-connected devices.  Record label, EMI, attempted to argue that the service caused routine violations of its copyrights.  A major issue in the case was whether or not MP3Tunes was covered by the “” provision of the DMCA which safeguards such services from any liability for copyright infringement so long as they promptly comply with takedown notices issued by copyright holders.

EMI tried to argue that even if MP3Tunes was protected by the safe harbor provision they failed in their duty to ensure quick response to DCMA takedown notices, block repeat infringers from using the service, and sweep their service for infringing files.  Nevertheless, US District Judge William Pauley was mostly satisfied with MP3Tunes’ conduct with regards to these matters in declaring that only in a few instances did MP3Tunes fail in its duties imposed by the DMCA.

Yet, it was for MP3Tunes as they could still be on the hook for millions of dollars in damages.  EMI claimed that MP3Tunes operated the website, www.sideload.com, which sought out free music files and loaded the content into music lockers, some of which infringed EMI’s copyrights.  MP3Tunes removed the infringing links at sideload, but failed to remove all of the pirated music in MP3Tune lockers that had originated from the site.  The judge explained that the removal of the infringing links was insufficient as the files still existed in MP3Tunes lockers.  Statutory damages for willful infringement range from $750 to $150,000 and with a claim of approximately 500 pirated works, EMI could still win up to $75 million in future proceedings.

MP3Tunes founder, Michael Robertson, has called the case for unlicensed cloud music services.  EMI had initially claimed over 33,000 instances of infringement which were largely dismissed in the case.  For the remainder of works still in question, Robertson is confident that this particular finding was inconsistent with the judge’s overall ruling.  He therefore plans to appeal.

Despite the claims of victory, over some ways the service operated, but not for others.  The precedent requires MP3Tunes to satisfactorily remove infringing content from its service.  Robertson found this to be in conflict with the past ruling in Viacom v. Youtube which required the issuing of takedown notices by stating that the judge created new law in imposing a more exigent interpretation of the DMCA.

As a result, the legal standard established by Justice Pauley could have an impact on other service providers of similar unlicensed cloud services.  Robertson also noted that the new standard could conceivably require Google to remove infringing materials from personal Gmail accounts.  The duty imposed by the DMCA on cloud computing, even in cases of safe harbor protection, is still up in the air for the foreseeable future.

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The United Kingdom is of the (DEA) after the legislation recently passed through the begun last year.

The implementation of the DEA is another measure in the UK’s attempt to modernize the digital copyright regulatory regime.  The government has noted that online copyright infringement poses a major barrier to economic growth in creative industries which contribute £59 billion to the economy each year. 

Professor Ian Hargreaves’ recently released outlines many of these issues in detail.  The government plans to adopt all ten recommendations included in the report.  ISPs in the UK have responded negatively to the DEA provisions, the obligation to inform subscribers that their account is infringing copyright and challenging the costs involved with policing infringers in court.  Nevertheless, the DEA has .

As a result, the government has outlined that the next stage of implementation will occur in two steps.

Firstly, implementation of the DEA requires Parliament to pass a Statutory Instrument (SI) to allow for the sharing of costs which sets out how the scheme will be financed.  Initially, the government had hoped to share the costs 75%:25% between copyright holders and ISPs respectively for the establishment of the scheme under UK regulator, .  However, judicial review determined that ISPs cannot be held responsible for qualifying costs such as the establishment of an appeals body and the administration and enforcement of the initial obligations of the DEA.  The government has therefore decided to amend the SI to remove any obligation for ISPs to pay for qualifying costs, but the 75%:25% cost sharing regime will remain in place for later operational expenses.

The SI also lays out the financing of the appeals process.  Once the scheme is operational, subscribers will receive a notification of infringement.  When a notification is received, subscribers can appeal the finding by paying a £20 fee which would be refunded upon a successful appeal.  Full details of the Sharing of Costs SI .

Secondly, Parliament must approve Ofcom’s Official Obligations Code, which sets out the details of how the regulator will deal with cases of digital copyright infringement.  The government has measures concluding that infringers will easily alter their site locations before any injunction passes through the court process.   Details on the Initial Obligations Code remain scarce as the final draft has been delayed by a year, but the government still plans to send out infringement notifications by late 2012.

While Ofcom continues to debate the best methods for dealing with copyright infringers, the new cost sharing plan and the establishment of the appeals process represents another step to the final implementation of the DEA.

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The Quebec Court of Appeal on the notorious Robinson Sucroë cartoon plagiarism case.  The decision has greatly reduced the remarkable damages awarded by the trial court in 2009, but upholds the finding of liability.

Illustrator, Claude Robinson had been embroiled in a legal battle against France Animation and Cinar Films, among others, regarding a cartoon series that he created in 1982 entitled Robinson Curiosité.  Robinson claimed that the animated Franco-Quebécois television production, Robinson Sucroë, debuted in 1992, plagiarized his original work.  At trial in 2009, Robinson was successful in proving that the defendants had access to his ideas in the 1980s and that the Robinson Sucroë series was substantially similar to his work with regards to characters and drawings.  In addition to pecuniary damages, Robinson was awarded $1,000,000 in punitive damages and $400,000 in moral damages.

Robinson’s case was based on both the (LDA) and the defendants’ extracontractual obligations under the (CCQ).  The defendants appealed the court’s ruling on numerous grounds which included a charge that the judge erred in the finding of similarity between the works, that the finding of lost profits was inaccurate, and that the non-pecuniary damages awarded were exorbitant.  The Appeal Court agreed with the lower court in finding that Robinson Sucroë was substantially similar to Robinson’s original work, but has reduced the large damages awarded in several instances.

The Appellants (Cinar, et al.) alleged that the trial judge erred in the consideration of exhibit P-18, a series of earlier conceptual works created by Robinson, arguing that the work constituted mere ideas and not a final product constituting an integral part of the Respondent’s (Robinson) actual work, Robinson Curiosité.  The Appeal Court explained that the LDA protects the original expression of an author, not mere ideas.  Nevertheless, even though the work contained in exhibit P-18 was not fully realised, and more precise versions of Robinson’s idea were produced, exhibit P-18 was still protected under the LDA as the production of newer versions did not automatically lead to an abandonment of the authorship right.

The Appellants also argued that the damages awarded for lost profits were inaccurate in that some aspects of Robinson Sucroë, such as the music, were absent from Robinson’s original work.  The Appeal Court agreed in adopting the standard from the patent case, , which requires that any right to damages for lost profits must stem directly from the infringement.  The music in Robinson Sucroe was found to be an original work, and as such, the award for profits was reduced accordingly.

The Appellants were also partially successful on the issue of moral damages.  The Appeal Court explained that the $400,000 award was entirely non-pecuniary and therefore subject to the limit established in .  While the court agreed that Robinson was subjected to considerable harm, damages had to be considered within the context of other cases and his injuries did not warrant an award on the high end of the Andrews spectrum.  The Court concluded that 50% of the limit was reasonable, reducing the award to $121,350 (for the application of the Andrews limit see also: and ).

Finally, the Appeal Court also found the punitive damages awarded at trial to be excessive and, in the process, raised some interesting questions about such damages under Quebec law.  Article 1621 CCQ requires that punitive damages be provided by law.  The LDA was silent on the issue at the time of the infringement, but the court determined that a breach of sections 6 and 49 of the were sufficient to allow for the awarding of punitive damages. Nevertheless, the trial judge had failed to account for the individual liability of each party for punitive damages which was problematic considering the court must consider the contextual factors of each party in granting such awards.  The case had set a precedent, citing articles 1480 and 1526 CCQ, that awarding punitive damages in solidarity was not appropriate.  Again, the Appeal Court determined that the Appellants’ appalling behaviour warranted punitive damages, but reduced the amount to $250,000 specifically apportioned in accordance with the damage caused by each party.

The decision upholds many of the principles upon which Claude Robinson originally fought for, but has substantially reduced the damages awarded on many points of law.  Nevertheless it is an interesting example of the complexity involved in awarding damages, even in the instances of blatant plagiarism.

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WIPO members to discuss a potential treaty for the disabled that would create minimum exceptions in copyright laws to facilitate access to copyrighted works by persons who are disabled, and permit the sharing of accessible works across borders.

Advocates for the disabled, such as the European Blind Union (EBU), that blind and partially sighted people are denied full participation in education, employment, and culture by the failure of copyright law to create exceptions for the creation and distribution of accessible formats.  Many developed countries have exceptions in place in their domestic copyright laws to address these concerns.  For example, in Canada, updated provisions in Bill C-32.  Nevertheless, the production and distribution of accessible print materials has remained low, particularly in developing nations, for a WIPO treaty that would create binding exceptions in law.

At present, several nations, including the US and the European Commission, remain opposed to a treaty and support only soft law solutions and a .  Despite the , the European Parliament has recently called on the Commission to pursue a treaty solution highlighting the disagreement that exists over the issue.   Pressure has also been mounting from advocacy groups, such as the European Blind Union, who remain committed to a treaty.   for IPOsgoode’s past coverage regarding the EBU and EU Parliament’s support for a treaty solution.

Despite the point of disagreement over a treaty, the recent round of WIPO negotiations seems to demonstrate .  A cross-regional group of member states, including the US, outlining shared viewpoints which could form the basis of a future international legal instrument.  This “consensus document” was submitted to WIPO as a formal proposal for a legal instrument.  Nevertheless, it appears that as member states continue to adhere to their original positions regarding the nature of any future legal instrument with the US and EU remaining opposed to any form of binding treaty.

Despite the disagreement, the European Blind Union has the negotiations have, “Made great progress towards a law to improve access to books for blind and other print disabled people.”  The EBU also thanked the EU Commission for its help in, “Draft[ing] the text and in its desire to consult the European Blind Union on the substance of that text,” while reiterating its commitment to a binding treaty and reminding the Commission that the EU Parliament also advocates for a treaty.

Despite the common ground struck at this round of negotiations, the form of any future legal instrument remains unclear.  A finalized draft document and further negotiations on how exactly any proposal will become law are expected in November 2011.

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Ashlee Froese, alum of 2006 and , has launched , which has garnered immediate attention from both the fashion industry and the legal community, receiving over 500 unique hits in its first three days.

Canada Fashion Law covers the business and legal issues surrounding the fashion industry by not only exploring contemporary legal issues, but also by providing commentary on the existing policy framework of intellectual property within the fashion industry.

In her , Froese explains how Canada’s poor performance in the The Office of the United States Trade Representative’s presents obstacles for the Canadian fashion industry with regards to US willingness to trade.  She goes on to explain that other countries, such as France and Italy, have specifically drafted domestic intellectual property laws for fashion design, which provide greater legal clarity.  The US is also considering specific protections for the fashion industry as it reforms its copyright law.

Canada Fashion Law has also covered two interesting cases in Canada and the US, respectively.  Froese the recent Supreme Court of Canada trademark case, , explaining that the decision demonstrates the usefulness of conducting trade-mark availability searches (the Masterpiece case was also ).  The blog is also by Christian Louboutin against Yves Saint Laurent for allegedly copying its distinctive red-soled shoe design trade-marked in 2008.

Already, Canada Fashion Law has caught the attention of the legal community with NY State Attorney, , recently on his .  The interview discusses fashion industry-specific policy solutions within the framework of trade-mark law thereby highlighting many of the unique and interesting problems arising at the intersection of fashion and law.

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