With thanks to Hanne Kirk and her team at Gorrissen Federspiel (Denmark) for their overview of a fascinating case that may have passed readers by:

As 2019 passes and 2020 begins, this GuestKat has one more post to share about an interesting Danish decision handed down in July, then neglected and almost forgotten during the summer heat.

Located in Copenhagen’s historical Charlottenborg Palace, Kunsthal Charlottenborg is one of the largest and most beautiful exhibition spaces for contemporary art in Northern Europe. On 20 June 2017, the United Nations International Refugee Day, it also became the backdrop of an art installation by infamous Chinese artist and activist Ai Weiwei, as he covered the building’s façade with more than 3,500 salvaged life jackets to form an artwork titled Soleil Levant (Rising Sun).

[From the Kunsthal Charlottenborg website, we learn that the name ‘Soleil Levant’ “stems from Claude Monet’s painting Impression, Soleil Levant from 1872, which depicts the harbour in Le Havre at the end of the 1870-71 Franco-Prussian war. Whereas Monet’s landscape painting captures the political and social reality of its time with its cranes, steamboats and industrialisation, Ai Weiwei’s Soleil Levant draws attention to the political and social reality of today through refugee lifejackets.”]

The life jackets had been collected from refugees who had reached Europe via the Greek island of Lesbos, and Ai Weiwei’s stated intention behind the installation was to shine a light on the humanitarian crisis sweeping the continent as thousands of refugees arrived, having fled their homes in the search of a better life.


In August 2017, the Danish Volkswagen importer (‘Volkswagen’) took a photo of the new Volkswagen Polo, conveniently parked in front of the Charlottenborg Palace. Ai Weiwei’s Soleil Levant installation, on display until 1 October 2017, featured in the background.

Without permission from either Ai Weiwei or Kunsthal Charlottenborg, the photo was then used by Volkswagen in a marketing campaign for the Polo, including appearances in a print car magazine and on the Danish Volkswagen website.


The campaign caused Ai Weiwei to file a lawsuit against Volkswagen at the District Court of Glostrup. (It is worth noting that, due to the principled nature of the case, it was heard by a panel of three judges rather than the usual one.)

Before the court, Ai Weiwei claimed that Volkswagen’s photo violated his rights as an artist, damaged his credibility, and, worst of all, damaged the artwork itself, as well as the general understanding of human rights and the public’s view of refugees and their situation.

The photographer, on the other hand, explained that he had no idea the installation was even an artwork, and that he had no prior knowledge of either Ai Weiwei or Kunsthal Charlottenborg. That was why, he explained, he had not asked for permission, as was otherwise standard procedure within the Volkswagen organization.

Ai Weiwei claimed that his copyrights (including both financial and moral rights) had been violated, and that Volkswagen had free-ridden on his reputation and goodwill, thereby making improper use of his artwork in the marketing campaign. Volkswagen acknowledged that a copyright infringement had taken place, but denied having additionally violated “good marketing practice” under the Danish Marketing Practices Act. Volkswagen further denied that the infringement had resulted from either intent or gross negligence.

The court ruled in favor of Ai Weiwei, agreeing both that the photo had clearly been used for marketing purposes and that Volkswagen had free-ridden on the Ai Weiwei brand. Furthermore, the court found that the photographer was, at the minimum, guilty of gross negligence. In reaching this conclusion, the court observed, inter alia, that (i) the façade of Kunsthal Charlottenborg carried two large signs (80 x 120 cm) informing of the Ai Weiwei exhibition, and (ii) the exhibition had been the subject of massive media covered in June and July 2017.

As for the measure of damages to Ai Weiwei, the court’s decision is favorable and seems, perhaps, to break with the Danish courts’ general tradition of modesty in awarding damages for IP infringements. Copyright violations and acting against ‘good marketing practice’ each give rise to (i) ‘reasonable remuneration’ to the infringed party for the exploitation and (ii) ‘damages’ for any additional losses. Furthermore, (iii) compensation for non-financial losses (e.g. droit moral infringements and the like) is entitled in the Danish Act on Copyright. The basis for the measure of ‘reasonable remuneration’ is the usual fee payable by the infringer for its use of the intellectual property right – provided that such a ‘usual fee’ exists.

In the case of Ai Weiwei vs. Volkswagen, it was clear that Ai Weiwei never would have accepted Volkswagen’s use of his artwork for commercial purposes, and a ‘usual fee’ could therefore not be identified. Instead, the court resorted to a discretionary assessment, taking into consideration that (i) the car magazine in which the photo was published had been printed in 216,500 copies, (ii) the photo had been visible on Volkswagen’s Danish website from 31 October until 28 November 2017, and (iii) an assessment prepared by Sotheby’s suggested that a grant of permission to use the artwork for commercial purposes would be valued at 600,000 USD.

In the end, the Danish court awarded Ai Weiwei a total 1,750,000 DKK (USD 260,000) in remuneration and damages, 250,000 DKK (USD 40,000) of which was for non-financial losses.

Finally: Volkswagen has appealed the decision to the High Court of Eastern Denmark. This GuestKat assumes that the appeal is driven mainly by the measure of damages. Nevertheless, she has her fingers crossed for Ai Weiwei.

With thanks to Hanne Kirk and her team at Gorrissen Federspiel (Denmark) for this fascinating post regarding the outer limits of copyright in an artwork:

On Monday, 2 December 2019, the Danish Maritime and Commercial High Court issued a ruling in a case which explores the fine line between destruction and alteration of existing artwork. The conclusion? Cutting up an existing artwork to repurpose the individual pieces as wristwatch faces constitutes reproduction of the work in an amended form – not destruction followed by the creation of a new, original work.

Background

In the case in question, the Danish artist Tal Rosenzweig (better known as “Tal R”) had requested a preliminary injunction against the Danish company, Kanske Denmark ApS (“Kanske”), to prevent it from cutting up the painting “Paris Chic”, created by Tal R, in order to insert the pieces into wristwatches. In addition, Tal R had also separately requested preliminary injunctions against the manufacture, sale and marketing by Kanske of such wristwatches.

In the injunction requests, Tal R claimed primarily that the intended use of his “Paris Chic” painting by the company would constitute an infringement of his copyright to the work, reasoning that it would violate his exclusive rights under section 2(1) of the Danish Copyright Act “to control the work by reproducing it and by making it available to the public, whether in the original or in an amended form […]” as well as his rights under section 3(2) of the Act, according to which “[t]he work must not be altered nor made available to the public in a manner or in a context which is prejudicial to the author’s literary or artistic reputation or individuality”.

Tal R further claimed that by marketing and offering for sale the wristwatches (even though none had actually been made, and the painting was therefore yet unharmed), Kanske had violated section 3(1) of the Danish Marketing Practices Act, according to which “[t]raders shall exercise good marketing practice with reference to consumers, other traders and public interests”, as well as section 22(1) of the Act, which states that “[t]raders must not use business identifiers and similar devices that do not belong to them […]”. Specifically, Tal R claimed that Kanske had made unauthorized use of the “Tal R” brand in its marketing, thereby implying that a commercial partnership existed between Tal R and the company.

The painting in question (pictured below) was (and is) the property of Kanske, whose founders bought it from a third party for DKK 600,000 (approximately EUR 80,000).


The painting measures 1.75 by 2.03 meters and took Tal R around three years to finish.

After acquiring the painting, Kanske had initially announced on its website that it would host an online auction, promising that the winner would be given first choice of which piece of the painting he or she desired for a wristwatch. According to one screen shot submitted by Tal R, the highest bid as of 11 November 2019 was DKK 41,000 (approximately EUR 5,467).

For customers not wishing to participate in the auction for first choice, the company offered ‘pre-made’ wristwatches for the price of DKK 10,000 (approximately EUR 1,334) apiece.
In a description on its website, the company wrote of the project (translated from Danish):



According to screen shots submitted by Tal R, the company went on to claim, inter alia, that the purpose of the project was to “arouse emotions”, and that “there can also be strength in the grief that people will feel at losing something. There can be a catharsis in people getting angry at us for doing something that people think is forbidden.”

In the eyes of Tal R, however, both the project itself and the thoughts behind it were products of a “sad culture” in which “art is taken hostage”. In his testimony before the Court, he likened the idea to “someone wanting to burn your favourite book, reasoning that you could then long for it.” In an email to the Danish newspaper, Politiken, he further criticized the founders for “attempting to make money and get attention by making a product from my art”, saying that he was saddened by the project.

The founders of Kanske, on the other hand, explained before the Court that the purpose of the project was to spark a debate and to “poke the arts elite”. They further claimed that the reaction of the general public would not have been the same if the wristwatches had been made in collaboration with an artist. The very heart of the project was to “push the limits” and to experiment with what is allowed, and, more importantly, what is not.

According to the founders, they had planned to make around 300-500 wristwatches from the painting, expecting a profit of DKK 3,000-4,000 (approximately EUR 400-534) for each watch sold. Assuming that the company had, in fact, manufactured and sold 500 watches, the total profit would be around DKK 0.9-1.4m (approximately EUR 120,000-186,670), excluding the DKK 600,000 purchase price for the painting.

Once enough wristwatches had been sold, the founders intended to destroy what remained of the painting.

In relation to Tal R’s claims of copyright infringement, Kanske dismissed these, arguing that the wristwatches would not be a reproduction of the painting in an amended form, but rather a complete destruction of Tal R’s “Paris Chic” painting, followed by the creation of a new and original artwork from the pieces.

In support of this view, Kanske further stated that the individual wristwatch faces, each of which would have an area of only 12.6cm2, made up just 0.04% of the original painting. Likening the pieces to the individual fragments of a smashed sculpture, the company argued that the wristwatch faces would not be recognizable as pieces of “Paris Chic”.

As for Tal R’s claims under the Danish Marketing Practices Act, the founders stated that they were not “traders”, but rather artists exercising their artistic freedom. Secondarily, they claimed that they had made no attempt to give the impression that a commercial partnership existed between Kanske and Tal R, and indeed had no desire to do so.

Judgment

In its 2 December 2019 ruling, the Danish Maritime and Commercial High Court found in favour of Tal R on all claims, confirming expressly that the insertion of pieces of a painting into wristwatches was, in the view of the Court, not a destruction of the work, but rather a reproduction of the work in an amended form.

In support of this conclusion, the Court noted that Kanske had itself explained that the very idea of the project was to transform Tal R’s artwork, and had further asked on its website “what happens when you take an original artwork and turn it into something else?” It made no difference in this regard that the artwork, once incorporated into the wristwatches, would no longer be recognizable.

(This GuestKat finds the last-mentioned statement somehow surprising, given that similarity is a prerequisite for an infringement, and given that similarity calls for a certain recognizability of the original work.)

The Court further ruled that the project would indeed, as claimed by Tal R, constitute an alteration and making available to the public of Tal R’s artwork “in a manner or in a context which is prejudicial to the author’s literary or artistic reputation or individuality,” thereby violating section 3(2) of the Danish Copyright Act.

Finally, the Court also agreed that Kanske had violated sections 3(1) and 22(1) of the Danish Marketing Practices Act by marketing and offering for sale the wristwatches, including by making unauthorized use of the “Tal R” brand.

Overall, the Court dismissed Kanske’s defense that the project was art and should benefit from the protections granted to expressions of artistic freedom.

Comment

The take-away for art lovers and copyright aficionados alike? When you own an artwork, you don’t own the copyright, and cutting up your artwork followed by ‘reuse’ of the individual pieces may be an infringing reproduction.

A copyright dispute in the Intellectual Property Enterprise Court has ended in tears [presumably on a pillow] for Kylie Minogue's bed linen licensee, Ashley Wilde, in Ashley Wilde Group Ltd v BCPL Ltd [2019] EWHC 3166 (IPEC).

Background

BCPL, the defendant, is owned by Caprice Bourret, a well-known model and TV star. BCPL makes and sells  bed linen products (among other things) under the "By Caprice Home" brand; two of these products, a duvet cover and a matching runner, were the subject of the dispute (the "Amore products").

It was common ground that Ashley Wilde owns copyright in the prototype fabric design (an artistic work) for the "Evangeline" duvet cover in the "Kylie Minogue at Home" range. The cover was sold in the UK online and in physical stores in 2014-15 at least. As readers can probably see for themselves, the design (top of the below image) features a repeating horizontal pattern of "scallop-style" pleats.


Around 2017, BCPL began selling the Amore products in the UK. The products featured the design shown in the lower part of the photo above. The products were designed by a freelance designer named Fiona Graham together with Tansy Wilson of the manufacturer in China, and approved by Ms Bourret herself.

Ashley Wilde sued BCPL for copyright infringement, relying on the following similarities to create a presumption of copying:

• The choice of a pattern of scallop-style pleats in repeating horizontal rows; 
• The relative size of each pleat; 
• The relative spacing between each pleat; and
• The relative spacing between each horizontal row. 

The judgment

Her Honour Judge Melissa Clarke delivered a pithy judgment in this case. She emphasised that the question of copying is one of quality, not quantity (Ladbrokes v William Hill) and that a substantial part of a work will have been copied if the parts taken express the intellectual creation of the author (Infopaq). Designers Guild dictates that a prima facie presumption of copying will arise if there is a substantial similarity between the copyright work and the allegedly infringing copy, and there is proof of access to the copyright work (or to intermediate works, such as the Evangeline duvets in this case). There was an interesting scuffle regarding whether the judge should first establish whether the Amore products reproduced the whole or a substantial part of Evangeline design before moving on to consider whether the reproduction was the result of copying, or to identify the copied parts first before considering substantiality. The judge (rightly) preferred the latter option, but nothing seemed to turn on this in the end.

Ashley Wilde got into trouble over its expert evidence. Its expert, Mr Herbert, was initially engaged to "provide an opinion on the similarities between the designs" and to identify evidence to support Ashley Wilde's case, at first the form of an informal opinion. Following the informal opinion, Ashley Wilde applied to adduce expert evidence from Mr Herbert, and Mr Herbert turned his informal opinion into a formal report. Cross-examination, however, revealed that the presentation of Mr Herbert's report downplayed the differences between the parties' respective designs. This, together with the potential effect of Mr Herbert's initial basis of instruction on his impartiality, was enough to cause the judge to disregard the opinions in his report in reaching her decision.

So: was it the case that Ms Graham saw the Evangeline design, just couldn't get it out of her head, and copied it? The judge found that the documentary and witness evidence suggested that it was possible that Ms Graham had access to the Evangeline duvet in her previous role as a buyer for Shop Direct.

This did not matter, though. There were several differences between the Evangeline design and Amore products, including the method of pleating, the number of pleats, the size and shape of the pleated scallops, the positioning of the rows of pleats and the number of repeating scallops. The judge accepted that scallops, pleats and scallop pleats have been widely used in textiles for centuries, but not the suggestion that a decorative motif of pleated scallops is commonplace for duvet covers. Consequently, the only relevant similarities remaining between the Evangeline design and the Amore products were: (i) the crescent shape of the pleated scallops; (ii) the broadly similar size of the scallops; and (iii) the broadly similar spacing between horizontal rows of these ((ii) and (iii) are interrelated).

Consequently, there were not sufficiently close, numerous or extensive similarities to create the presumption of copying. BCPL, meanwhile, had a credible (if not compelling) story of independent creation. The judge therefore found that BCPL did not infringe Ashley Wilde's copyright.

Comment

In a way, this case concerns simply the good old-fashioned idea/expression dichotomy. Although the parties' respective products were both available in the UK within a few years of each other, the evidence showed that scallops and pleats were "having 'a moment'" in the fashion and interior design industries in 2016, when the Amore products were designed. Although conceptually the parties' products were similar, the respective expressions of the relevant idea were not particularly similar.

Ashley Wilde was clearly left spinning [around] by the total rejection of its expert evidence on the basis of partiality. Because there was no "smoking gun" hidden in BCPL's story of independent creation, Ashley Wilde needed its evidence regarding close similarities to be persuasive. Unfortunately for Ashley Wilde, this was not to be.  

Thanks to Katharine Stephens (Bird & Bird) for this guest post:

•  If data in the public domain, such as literary works written before 1870, are used in the input to an AI system, think about what those works may say about gender and race.  
• If you need to demonstrate safety and reliability of an AI system, you cannot have a TDM exception which requires you to destroy data immediately after it has been used.
• Datasets have to be observable and if copyright laws make that an infringement, then, again, how can you show that an AI system is not biased?