22 February, 2015

Art Anew - Fan Art and Copyright

A big aspect of the modern scene of artistic expression is fan art. This, to the uninitiated, is using prior existing art, be it movies, music or pictures, as inspiration for your own works, often using the same characters, themes or settings, and constructing your own take on the heroes and heroins of your favorite stories. Prima facie a very innocent activity, and potentially quite beneficial for both parties, fan art is an important part of the creator and audience interaction; a form of silent appreciation and discussion on different views and fantasies of said art works. Even with this in mind, fan art does have its greyer areas, especially when it comes to profitability and potentially gaining from the fame of a work, effectively riding its coattails to success. A great example of fan-art-turned-success is the current hit movie 50 Shades of Grey, which (by many accounts) started its humble life as fan fiction of the popular book/movie franchise Twilight under the moniker "Master of the Universe". Where there is money there are lawsuits to be had, which begs the question: does fan art infringe copyright?

As has been discussed on this blog many of times (for example here and here), copyright protects expression, not ideas. Therefore a fan is more than capable of writing a story using similar elements (putting things simplistically), and won't necessarily be infringing the copyright in the original work your fan fiction or art draws from, or even illustrate those stories, especially if no official illustrations exist. Even with major differences (but not enough to be able to distinguish the work completely), what usually draws the line is the commercial use of your derivative works, at least in the interest of the copyright holders, as for most instances fan works just aren't worth the hassle of taking down or demanding licences for; after all, it's free marketing for your works.

This writer's take on a popular movie character
In terms of fans' derivative works, fair use or fair dealing offer the best avenue of protection should you choose to create your own works from existing copyright protected material. In the UK, under the Copyright, Designs and Patents Act 1988, fair dealing protects a finite set of categories under which the use of copyrighted material can be used without infringing the rights given. These categories, including use for criticism and review and for the creation of personal copies, don't offer a category through which to create new, derivative works. A new exception for use in terms of parody or pastiche (discussed here) clearly would allow for the use of copyrighted material for legitimate parody purposes, however leaving a non-parody based use outside of its scope. Overall, the UK leaves fans in the dark, at least in the fair dealing side of the law. What fans can argue, however, is that their work is a new, original artistic work, meriting protection in itself, much like the original works they've branched out from. Again, this is a rough road to travel, as the characters, settings etc. would have to differ quite significantly from the original piece, or become a story wholly unto its own in its development; something, which would be much harder to prove.

There is hope for fans within the common law, as the scheme for fair use in the US and Canada (more on the newer fair use considerations in Canada can be found here), offers a much more robust and flexible approach to the use of copyrighted material. Fair use allows for the use of copyrighted material assessed through four criteria: the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; the nature of the copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the potential market for or value of the copyrighted work.

If the fan creation in question is created for the purpose of entertainment, i.e. to share with other like-minded fans, and isn't solely to gain from the popularity of the work in a commercial sense (although this, by itself, doesn't negate fair use, so works can be sold and fall under fair use), most likely the work will be fine under the first criterion. If the work where the fan piece derives from is a lesser known, even potentially a non-commercial piece, the more likely it is for the fan piece to not infringe it. The second criterion is hard to assess in itself, without having a concrete example, but offers an insight into an important part of protecting the copyrighted work; the more commercial and/or successful it is, the more likely it is that the potentially infringing fan piece actually is infringing on its copyright. The third criterion is a case-by-case assessment of just how much the fan piece takes from the original work, i.e. how substantial is its use of the work in question. The less elements you use, the less likely it is to infringe, at least prima facie. Finally, the last criterion looks at the effect on the original work. Again, this is much harder to assess without a concrete example; however one can argue that the more commercially successful the fan work is, the more likely it is to affect the value of the original work. It has to be noted that fan pieces existing outside of the remit of the commercialization of the work probably will not infringe the original work, i.e. a song written about Harry Potter, not having been used for the purposes of the films or books.

In Canada the Copyright Act also allows for the creation of non-commercial user-generated content (discussed here) giving fans a real avenue to use works for their own purposes so long as the use isn't commercial. Where the line of commercialization is drawn is hard to say yet, but this writer speculates that small commercial aspects of the works could be forgiven. Other than that, fans are welcome to create their own content in Canada without fear of being sued for copyright infringement - a fact that the UK sorely has missed in its copyright legislation.

Overall the US and Canadian schemes offer much more flexibility and use of copyrighted works for derivative fan works, so long as they comply with the above. This writer for one believes that fan participation should be encouraged by the legislature, yet still protecting the legitimate interests of the copyright holders by not allowing for those works to be overstepped by the (overt) commercialization of fan works, such as an unofficial knitted hat being sold on Etsy. A balance has to be struck between freedom of expression and the protection of legitimate commercial interests, even in the domain of derivative works.

12 February, 2015

Passing Off on Persons - Rihanna Wins Appeal Case

If reality TV has taught something to most individuals is that personality, and personas especially, are valuable. This, along with other celebrities, musicians and actors, illustrates an interesting aspect of humanity; a self-imposed value on the eccentric and the unusual, making people and their respective persons more than salable. People often buy things based on association, be it quality, notoriety or just through the endorsement of the right person. Because of this there is a huge amount of value in the right brand or good being associated with the right person, even if that image is conjured up through more 'nefarious' means, i.e. through the illusion of association or endorsement, which can potentially damage the 'brand' of an individual. After a recent case, this writer was inspired to answer one question: can you pass off on a person, not just a brand?

The case in question was Fenty & Ors v Arcadia Group Brands Ltd, decided in the Court of Appeal in the early days of 2015, which dealt with the sale of a simple article of clothing; a t-shirt. Topshop, a well-known store for all that is clothing, sold a t-shirt printed with the image of Robyn Fenty - more commonly known as Rihanna. The image itself was one of her posing, taken during the shooting of a music video for one of her songs. The picture was taken by a third-party photographer, and not commissioned by Rihanna herself, allowing the photographer to sell the rights to the image to Topshop, which he promptly had done, leading to its use in the aforementioned garment. Rihanna subsequently objected to this use, and initiated proceedings against Topshop for the image's use, citing an infringement of her rights, and claiming its use can confuse consumers to believe she endorses the shirt, amounting to passing off (more on which can be found here).

The starting-point for the discussion surrounding the law was set out by Lord Justice Kitchin: "There is in English law no "image right" or "character right" which allows a celebrity to control the use of his or her name or image". In the United States, under various State legislation, an individual's personality or persona can be protected; something that isn't protectable per say under UK legislation.

Some faces are just made for t-shirts
Nevertheless, the protection offered under passing off can potentially extend to individuals, at least on a prima facie application of the requisite elements: there has to be goodwill associated with that individual; a misrepresentation as to that goodwill applying to goods and/or services not associated with that individual; and actual or potential damage to said goodwill. Should Topshop have sufficiently misrepresented a connection with Rihanna, they could be liable under passing off. To put things in more simplistic terms, as described by Lord Justice Kitchin: "...it was [Rihanna's] case that the misrepresentation that she was associated with the t-shirt made it more attractive and so played a material part in the decision of the public to buy it".

Lord Kitchin turned to the earlier decision in Edmund Irvine Tidswell Ltd v Talksport Ltd, where Justice Laddie formulated two criteria that needed to be established for a successful case in passing off in a false endorsement matter: "It follows from the views expressed above that 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 approved of by the claimant".

Whether the public perceive the image of Rihanna as an endorsement or not is very much irrelevant, As long as an image of a potential endorser is used, the use can amount to a misrepresentation to that individual's endorsement of that product. This, however, does not allow a celebrity to unilaterally prevent all uses of their images, but is an assessment that has to be made in every instance and relating to every specific use separately. Topshop had attempted to use Rihanna's fame to their advantage through prior campaigns and contests, clearly leveraging her image to boost their sales. This does not amount to passing off itself, but is a contributing factor usable by the courts. In the end the Court saw that Topshop were indeed liable under passing off, and prevented the further sale of the above t-shirt.

While this case is not a landmark one, it serves an interesting curiosity in the world of celebrity and marketing, and showcases that even images can carry weight and value. Next time you print an image of your loved ones on custom-made t-shirts, think twice.

Source: BBC

05 February, 2015

Court Fashionistas - The ECJ Takes on Unregistered Designs

Oft forgotten by many intellectual property law practitioners and academics (including this writer, sadly), designs are put on the back-burner, and developments are overlooked or rare. With this in mind, a new development quietly emerged from the chambers of the European Court of Justice some time ago, which piqued this writer's interest. When dealing with designs designers have two distinct avenues of protection: registered designs and unregistered designs. Much like in the world of trademarks, registration is the preferred and stronger part of protecting your fashion creations, yet for less affluent or successful designers this might be an avenue beyond their means, or simply a fact of ignorance as to registration. In that event their only remedy is through the protection of unregistered design rights, protected under the Copyright, Designs and Patents Act 1988 in the UK. An important aspect of protectability in unregistered designs is that it has to have 'individual character', i.e. has to be something unique (to put into more common terms). What amounts to individual character then? This is what the ECJ sought to answer.

The case that faced this question was Karen Millen Fashions Ltd v Dunnes Stores, decided in the Summer of last year. At issue in the case was a shirt designed by Karen Millen, a designer from the lovely island of Ireland. The shirt in question was a blue striped shirt, sold by Ms. Millen in Ireland since 2005. Dunnes Stores are a chain of stores in the same country, partaking in the sale of women's clothing, much like Ms. Millen. Dunnes Stores had, at some point, designed and begun selling a very similar shirt, to which Ms. Millen clearly objected, taking the store chain to court over design infringement. Dunnes objected (appealing to the Irish Supreme Court), claiming her shirt had no 'individual' character, and therefore could not be afforded protection under the Council Regulation No 6/2002, which protects those designs, given they have both novelty and individual character - leading to a final decision in Europe's highest court.

The questions posed to the Court seemed quite simple on the outset: 1. when assessing individual character in an item, should the overall impression (as defined in the Regulation) be based on  a single or a combination of similar design features used; and 2. whether the burden of proof designates a need for merely the definition of what amounts to individual character, or that the article in question indeed possesses individual character?

Who ever said judges aren't snappy dressers?
In its assessment the Court took on the first question, and after some discussion, saw that "...Article 6 of [the Regulation] must be interpreted as meaning that, in order for a design to be regarded as having individual character, the overall impression which that design produces on the informed user must be different from that produced on such a user by one or more earlier designs taken individually and viewed as a whole, not by an amalgam of various features of earlier designs". What the Court decided was that the overall impression, in assessing individual character, must be decided on whether the article itself produces a unique impression on the individual, given the body of similar designs viewed as a whole (i.e. similar designs, not just a patch-work of all designs), and not as merely a collection of designs. Should the article give the overall impression of uniqueness and true individual character in light of that body of designs, then the article possesses individual character under the Regulation.

The second question, was answered almost just as easily. To prevent a designer from bringing an action under the Regulation, without first proving the article's individual character and not simply just identifying the infringed article, would, in the Court's mind, go contrary to the intention of the law. As such, the designer would only have to "...both prov[ide] when his design was first made available to the public and indicate[] the elements of his design which give it individual character". From a practical perspective this makes sense, and having a designer effectively contest the validity of his or her design prior to proceedings seems nothing short of silly.

In the end the case was brief, and quite concise, giving us a peek at the often ignored topic of designs. This writer will fully admit to not being wholly familiar with design law, yet attempts to keep track of happenings and wrap his (non-fashionable) brain around them.

Source: JDSupra