Nexus: originality

AG Campos in Brompton Bicycle advises CJEU to rule that 'exclusively' functional shapes do not deserve copyright protection

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Is a functional shape eligible for copyright protection under the InfoSoc Directive?

This, in a nutshell, is the intriguing issue that the Court of Justice of the European Union (CJEU) has been asked to address in Brompton Bicycle, C-833/18.

As readers might guess, the shape at issue in this case is Brompton's iconic foldable bike, originally created in 1975 and sold in its current form since 1987:

This morning, Advocate General (AG) Campos Sánchez-Bordona issued his Opinion. He advised the Court to rule that, if the shape is exclusively dictated by the technical function of the relevant product, then no copyright subsists in it.

Whilst this conclusion appears reasonable and in line with existing CJEU case law, including - most recently - the Cofemel decision [here; for a recent application, see here], the Opinion appears to go a bit astray from that, at least in one notable respect (read on).

Let's see a bit more in detail what happened and how the AG reasoned.

Background

This referral from the Tribunal de l’entreprise de Liège was made in the context of copyright infringement proceedings that Brompton had brought against Korean company Get2Get over this bike:

In response to Brompton's claim, Get2Get submitted that the appearance of the Brompton product is dictated by the technical function sought and that it deliberately adopts the folding technique [previously covered by a now expired patent; the referring court did not indicate whether the appearance of the Brompton bike was also protected by a design right] because that is the most functional method. As a result, the defendant's product looks as it does because of technical constraints.

Brompton submitted that other shapes are present on the market, and this would demonstrate the originality of its product: free and creative choices were made in the realization of the Brompton bike.

The court which heard the action was not sure whether copyright could subsist in an object whose shape is necessary to achieve a technical result. Also, should any of the following criteria be relevant to the assessment?

The existence of other possible shapes which allow the same technical result to be achieved?
The effectiveness of the shape in achieving that result?
The intention of the alleged infringer to achieve that result?
The existence of an earlier, now expired, patent on the process for achieving the technical result sought?

Hence, the referral to the CJEU.

The AG Opinion

The AG began his assessment noting that any response to the referring court's questions "cannot overlook the difficulties related to cumulative protection", as offered under patents, designs, and copyright, respectively. Copyright cannot be a means to circumvent the time-limited duration of other rights and the overall balance between different rights:

That careful balance — which is most directly reflected in the short protection period granted to an inventor or designer — would be upset if the allotted term were simply extended to reach the generous periods afforded to copyright protection. Designers would lose the incentive to avail themselves of the industrial property system if, in return for lower costs and fewer procedural requirements (inter alia lack of registration), they were guaranteed copyright protection of their creations for a much longer term.

In this sense, AG Campos referred back to the Opinion [not yet available in English] of AG Szpunar in Cofemel [here].

The implications of Cofemel

Whilst it is true that in principle rights cumulation is allowed under EU law, according to AG Campos, the Cofemel judgment contains "a number of clarifications which weaken, so to speak, or reduce the force of the principle of cumulation." This is so because:

first, "concurrent protection can be envisaged only in certain situations";
second, the nature of the protection provided under copyright and designs is different;
third, "the obtaining of copyright in subject matter which is already protected by a design right involves certain risks which should not be underestimated. In particular, "the grant of protection, under copyright, to subject matter that is protected as a design must not have the consequence that the respective objectives and effectiveness of those two forms of protection are undermined’";
fourth, it is for national court to specify when one of the 'certain situations' which allow the cumulation of IP rights has arisen.

(1) Copyright in a technical shape

Further to these preliminary remarks, the AG turned to consideration of the first question referred and recalled that:

One of the important contributions of the judgment in Cofemel is that it does not allow the originality of the purported ‘work’ (in that case, clothing) to be linked to its aesthetic elements. The Court refused to allow reliance on aesthetic factors as a ground for protection of a design by copyright.

According to the AG, in light of all this, the issue is whether - having excluded aesthetic elements as relevant to the assessment - the achievement of a technical or functional result serves to rule out copyright protection.

He recalled that a similar question has been already answered - in the affirmative - in relation to computer programs: "where the expression of the components of a subject matter ‘is dictated by their technical function, the criterion of originality is not met, since the different methods of implementing an idea are so limited that the idea and the expression become indissociable’." (Bezpečnostní softwarová asociace; in the same sense, see also Football Dataco). Hence,

It can be inferred from those rulings that, as a general rule, works (objects) of applied arts whose shape is dictated by their function cannot be protected by copyright. If the appearance of a work of applied art is exclusively dictated by its technical function, as a decisive factor, it will not be eligible for copyright protection.

This conclusion, explained the AG, is in line with what happens in the field of trade marks and means that:

[D]esigns whose shape is dictated by technical considerations which do not leave room for the exercise of creative freedom are not eligible for copyright protection. Conversely, where a design merely has a number of functional aspects, that does not deprive it of copyright protection.

But for what the AG called 'mixed designs', that is designs that combine artistic and functional elements, if the latter predominate over the former "to the extent that the latter became irrelevant", then copyright will not be available.

To this end, the AG noted that case law on shapes associated with functional elements in relation to industrial property and trade mark law can provide, by analogy, a number of valid interpretative approaches in respect of copyright. In particular, he referred to the CJEU decision in Lego Juris to conclude that, as the referring court appeared to consider the appearance of the bicycle at issue as necessary to achieve the technical result, meaning that the relationship of exclusivity between appearance and functionality exists, then it is not possible to grant copyright protection to such a shape.

(2) Criteria to be used

Turning to the second question referred, that is what criteria need to be taken into account to conduct the assessment of copyright subsistence, the AG considered them in turn.

1. The existence of an earlier patent

In principle, this circumstance should not prevent copyright protection from arising, although a registered patent may serve to identify technical constraints which dictated the shape of the product in question, as well as highlighting a close relationship between the shape patented and the result intended.

2. The existence of other possible shapes which allow the same technical result to be achieved

Here the AG referred to DOCERAM, which held that a court can take this circumstance into account in the field of designs, though it is not a conclusive factor in itself. The same should apply, mutatits mutandis, in respect of copyright.

3. The intention of the alleged infringer to achieve that technical result

This, according to the AG, "is not, in principle, relevant." However:

When examining whether or not there is a right for the object to be protected as a work, the court is entitled to explore the inventor or designer’s original intention rather than that of the person who reproduces his invention or design.
For that purpose, account must be taken of the time when the invention or design was initially conceived in order to assess whether its author was really seeking to achieve his own intellectual creation or whether, instead, he was seeking only to protect an idea applicable to the development of an original industrial product with a view to the mass production and sale of that product on the market. The fact that there has been an industrial application of the invention or design or that a commercial benefit has been obtained from it may provide evidence worthy of attention.
From that perspective, the fact that subsequent recognition of the design may also warrant its exhibition in museums does not appear to me to be relevant. That factor or others like it, such as the receipt of awards in the sphere of industrial design, confirms, rather, that its nature is that of an industrial object deserving of praise, or even admiration, in its own sphere, or that it has a number of important aesthetic components.

4. The effectiveness of the shape in achieving a technical result

As the referring court did not provide enough information to understand the exact meaning of this part of the second question, the AG considered that there was not much to say and that "if the shape which the designer of the product (in this case, a bicycle) planned were not suitable for attaining the desired functionality, the requirement of future industrial application would not be satisfied."

In conclusion

The AG noted that, like AG Saugmandsgaard Øe had argued in his Opinion in DOCERAM, there might be criteria other than those listed by the referring court, but also that "it would not be appropriate to make an exhaustive or non-exhaustive list of those criteria in the abstract when, in reality, that assessment (which is factual in nature) is connected to a set of circumstances which are difficult to recognise a priori." He also added that refusal of copyright protection would not in any case prevent protection under the national laws again slavish or parasitic imitations.

In a position to "achieve his
own intellectual creation"?

Comment

The Brompton Opinion is correct in several respects but also problematic, at least in one key aspect.

Let's start from the good. The considerations concerning rights cumulation and the conclusion re copyright protection of functional shapes are overall in sync with earlier CJEU case law.

The Opinion is also important because it adopts a functional interpretation of Cofemel, one which could contribute to avoiding that copyright protection is perceived as 'easy' to claim now that extra criteria, eg aesthetic appeal, artistic merit, etc, are out of the window.

However, the Opinion is also concerning insofar as it considers that account could be taken of the intention that the author had when he/she created the work. The AG considered that, whilst external recognition (eg, exhibition in museums or awards) should not be relevant, internal and subjective elements might be. This is concerning for a number of reasons, of which two in particular stand out.

First, it runs contrary to the Cofemel decision itself: the CJEU said that what is only required is a work that is original. Certainly, the subjective intention of the author should not be taken into account to determine copyright subsistence. What the author thought or wanted to achieve is irrelevant. The assessment should be one based on objective criteria.

Second, it evokes the need for an assessment that is difficult to undertake and may potentially imply a value judgement: eg, only works created by those who felt like that they were 'making art' would be deserving of protection, as would only the works created by those in the 'right' (or, in some cases, 'sober') state of mind to understand what they were trying to achieve. According to this logic, something written in a state like that of Coleridge when he drafted Kubla Khan could not be deserving of protection ... Similarly, cases like Lucasilm (concerning copyright in the Star Wars Stormtrooper Helmet) should be regarded as correctly decided (in my view, it was not). This can't be right: what matters is that a work is the result of an author's free and creative choices, irrespective of whether such choices were made with a certain end goal in mind or in a certain state of mind.

Let's now wait to see what the CJEU thinks.

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UK court applies CJEU Cofemel decision for the first time: "complete conformity" with EU law would preclude any requirement of aesthetic appeal

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IPKat-approved jacquard fabric

Yesterday, the Intellectual Property Enterprise Court (IPEC, a specialist court which is part of the Business and Property Courts of the High Court of Justice of England and Wales) issued what appears to be the first UK decision tackling the implications of the judgment of the Court of Justice of the European Union (CJEU) in Cofemel, C-683/17 [see here; Cofemel was also awarded the prestigious Kat-award 'Copyright Decision of the Year 2019'].

It is the decision in Response Clothing Ltd v The Edinburgh Woollen Mill Ltd [2020] EWHC 148 (IPEC) (29 January 2020).

Background

The claimant, Response, is a clothing company; the defendant, EWM, is a major retailer of clothing with about 400 stores in the UK.

Between 2009 and 2012, Response supplied EWM with ladies tops made of a jacquard fabric of a design referred to as a 'wave arrangement'. In 2012, Response attempted to raise the price of the tops, but EWM refused. The latter then provided a sample of Response's top or a swatch of its fabric to other garment suppliers, with an invitation to supply tops made from a similar fabric. A few companies got the order over time, and supplied garments made from jacquard fabric.

Response sued EWM for copyright infringement, claiming that protection would subsist in its wave arrangement as:

either a graphic work [see the definition at s4(2) CDPA], or
a work of artistic craftmanship [there is no statutory definition of this category]

NOTE: the UK has a closed list of protectable copyright subject-matter. This has traditionally meant that, in order to claim copyright, there should be not just an original work, but also a work of the 'right kind'. In the past, certain types of less conventional subject-matter - including the Star Wars Stormtrooper Helmet and the assembly of a scene - were refused protection, while for works like TV formats uncertainties whether copyright protection would be available have subsisted for a long time.

The fabric as a graphic work?

HHJ Hacon considered whether a fabric could be considered a graphic work, and noted that - whilst the list in s4(2) is not exhaustive - "[i]t does not follow that the definition is endlessly flexible." He found that a fabric would not satisfy the definition of graphic work: the relevant notion cannot be stretched to include a fabric, whether made on a loom or a knitting machine.

The fabric as a work of artistic craftsmanship?

The judge thus turned to the consideration of whether copyright could subsist in the fabric as a work of artistic craftsmanship. To this end, he began by recalling the history of closed subject-matter categorization and the challenges that EU - or rather: CJEU-driven - harmonization have presented:

The Statute of Anne of 1709 was the world's first copyright statute, although there had been some earlier common law giving rights to authors. The Statute was concerned with literary copyright. Since then, because Parliament has incrementally afforded copyright protection to other types of work, the law has become structured in the form of successive categories of copyright work. In the 300 years since the Statute of Anne a claimant has been required to show that his work falls within at least one of the categories identified for protection in the copyright statute of the day. In recent years, there may have developed a tension between the way this is approached in the 1988 Act and EU copyright directives which have entered into force.

He then noted that, if the fabric at issue could not be considered a work of artistic craftsmanship, then "the design knitted into it is not protected by any other provision of the 1988 Act". This would be so because s1 CDPA is "clear": "a work is only capable of being a copyright work if it falls within one of the three descriptions set out under subsection (1)."

The judge reviewed case law on works of artistic craftsmanship. He noted that, to determine whether the claimant's fabric qualifies as such, it would be necessary to determine whether the employee who created it "was both (a) a craftsman in that he or she made the fabric in a skilful way, taking justified pride in his workmanship and (b) was an artist in that he or she used their creative ability to produce something which has aesthetic appeal." (Bonz Group (Pty) Ltd v Cooke [1994] 3 N.Z.L.R. 216). He was of the view that the claimant's work could qualify for protection if this was the test. However, if the test was instead that of the House of Lords in George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd [1976] AC 64 (a case decided under the 1956 Copyright Act), the conclusion could be that the claimant's work may not qualify for protection.

At this point, HHJ Hacon turned to EU law and the interpretation given of it by the CJEU.

Applying Cofemel

Before considering Cofemel, the judge recalled the earlier CJEU decision in Levola Hengelo, C-310/17 [here], which clarified that the notion of 'work' is an autonomous concept of EU law. As such, it must receive uniform interpretation and application across the EU.

Turning to Cofemel, the judge recalled that in its decision "[t]he CJEU ruled that national law could not impose a requirement of aesthetic or artistic value." Hence, the judge stated,

I take the view that, subject to my being satisfied that the [claimant's fabric] is original in that its design was its author's own intellectual creation, that design is a work within the meaning of art.2 of Directive 2001/29. If no sufficiently similar design existed before it was created, it must have been the expression of the author's free and creative choices.

He continued noting that:

Pursuant to the Marleasing principle, I am required to interpret the 1988 Act, so far as is possible, in conformity with Directive 2001/29 and therefore in conformity with the way in which that Directive has been interpreted by the CJEU

Clearly both a craftsman and an artist

The issue, the judge explained, was "not whether Directive 2001/29 has the effect of removing all the gaps there may be in copyright protection available from a court at first instance for 'works' within the meaning of art.2 of the Directive, but whether it is possible to interpret s.4(1)(c) of the 1988 Act in conformity with art.2 of Directive 2001/29 such that the [claimant's fabric] qualifies as a work of artistic craftsmanship and thereby its design becomes entitled to copyright protection. In my view it is, up to a point. Complete conformity with art.2, in particular as interpreted by the CJEU in Cofemel, would exclude any requirement that the [claimant's fabric] has aesthetic appeal".

The judge found that he did not have to go that far, since the fabric did in fact have aesthetic appeal.

He concluded that the claimant's fabric was protected in accordance with the Bonz Group test and that copyright in it had been infringed.

Comment

The decision, as mentioned, appears to be the first time that a UK court considers the CJEU judgment in Cofemel. What is interesting about it is the acknowledgment that, indeed, full compliance with it would probably require granting protection to an original work, irrespective of its aesthetic appeal (and, as I have said a few times on this blog, irrespective of the category it belongs to).

In this particular instance, the judge felt he did not have to go that far, as the fabric did possess such appeal. However, even if this had not been the case, protection should have been acknowledged insofar as the subject-matter at issue qualified as an 'original' 'work' in the sense clarified by the CJEU.

As I wrote here, Cofemel in itself did not arguably made any change to the law: it was merely a step in the consistent approach that CJEU case law has had to the requirements for copyright subsistence, this being a process which began a little over 10 years ago with Infopaq, C-5/08.

Overall, the Response decision employs a rather cautious language and confirms that, to be protected, a 'work' must (still) fall - at least formally - under one of the categories in s1 CDPA which - for the time being - must be interpreted in accordance with EU law.

However, after a decade of CJEU case law, it appears preferable and more correct to adopt a less formalistic approach. It is worth recalling that - as early as 2010 - Arnold J (as he then was), in SAS Institute Inc v World Programming Ltd [2010] EWHC 1829 (Ch) (23 July 2010), noted that:

In the light of a number of recent judgments of the CJEU, it may be arguable that it is not a fatal objection to a claim that copyright subsists in a particular work that the work is not one of the kinds of work listed in section 1(1)(a) of the Copyright, Designs and Patents 1988 and defined elsewhere in that Act. Nevertheless, it remains clear that the putative copyright work must be a literary or artistic work within the meaning of Article 2(1) of the Berne Convention.

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Sheeran v Chokri Part 2: Admission of similar fact evidence

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Readers may remember the case of Ed Sheeran and Sam Chokri, discussed by this Kat back in August 2018 here. The case is still on going and the most recent hearing before Mr Justice Nugee took place on the 9th December 2019 in the High Court of England and Wales.

Recap of the case

Ed Sheeran's song 'Shape of you' reached number-one on the singles charts in 34 countries, was the best-selling-song of 2017, the best-selling digital song worldwide, winning multiply awards and ranked as the ninth most successful song of all-time by Billboard. But since 10th May 2018 Ed’s royalties for the song have been frozen after singer-songwriter Sam Chokri (known as Sami Switch) claimed that 'Shape of you' was copied from Sam’s song 'Oh why'.

Sheeran and fellow feline

As a result, Sheeran, together with Steven Muccutcheon (songwriter, second claimant), John Mcdaid (songwriter, the one from Snow Patrol, third claimant), Sony Music, Rokstone Music, Spirit B, Kobalt Music (publishing companies, assignees and licensees, third – seventh claimants), bought a claim against Sam Chokri (first defendant), Ross O'Donoghue (second defendant and co-songwriter) and Artists & Company Ltd (third defendant and publisher), seeking a declaration that the song 'Shape of You' does not infringe the defendants song 'Oh Why'.

Chokri agues that 'Oh Why' was released in March 2015 and 'Shape of You' takes a substantial part of the song, using a musicologist report which suggested that the lyrics “oh why, oh why, oh why” [from the song Oh Why] were similar to those of “Oh I, Oh I, Oh I” in 'Shape of You'. Other similarities claimed include: structure of the lyrics between the choruses, tone, harmonic progression, texture, melodic fills, rhythmic clicking.

Sheeran's arguments are that the joint authors of 'Shape of You' (first, second and third claimants) created the song on 12th October 2016 and that there are significant differences between the songs such as different lyrical content, different keys, different musical content of fills, different number and rhythm of clicking sounds. And, since “I” and “why” are different words, it is only the “oh” that is similar which does not amount to a substantial part of the song, nor is it protected by copyright at all since it is an unoriginal element. Additionally, the tone and composition techniques, such as clicking, are merely ideas and are too general to be the expression of ideas. See further discussion on the arguments of the parties here.

Latest developments - admissible similar fact evidence

The defendants sought to rely on similar fact evidence to support the argument that the first to third claimants were, consciously or subconsciously, in the habit of appropriating the compositional skill and labour of other songwriters during their song writing session. This included that the claimants also created the song 'Strip That Down' (later recorded by Liam Payne), which also became the subject of a copyright dispute and now includes the creators of the song 'It Wasn't Me', who receive 25% of the PRS royalties. The same also occurred in relation to 'Shape of You', as it was alleged, that it was copied, in part, from a song called 'No Scrubs', since the writers also now appear as co-authors and receive a 15% share of the PRS royalties. And further dispute arose between Sheeran's song 'Photograph' (also written by the first and third claimants; Sheeran and McDaid) and a song called 'Amazing', following which there was a settlement agreement and 35% of the PRS royalties now go to the writers of 'Amazing'.

Naturally, the Claimants sought to strike out these allegations, which came before Deputy Master Jefferis on 4 June 2019 on the basis that similar fact evidence is only admissible in civil proceedings in appropriate circumstances as found in the House of Lords decision in O'Brien v Chief Constable of South Wales Police [2005] UKHL 26, where Lord Bingham said that any evidence to be admissible must be relevant and cited Lord Simon of Glaisdale in DPP v Kilbourne [1973] AC 729 at 756: "Evidence is relevant if it is logically probative or disprobative of some matter which requires proof… relevant (i.e. logically probative or disprobative) evidence is evidence which makes the matter which requires proof more or less probable."

Lord Bingham identified two stages in the enquiry: (1) whether the evidence is assumed (provisionally) to be true, and if so, legally admissible; and (2) whether evidence or some of it (and if so which parts of it), which ex hypothesi is legally admissible, should be admitted. He recognised that the second stage requires the judge to make a very difficult and sometimes a finely balanced judgment.

In favour of admitting the evidence, the argument will always be that justice requires the evidence to be admitted in addition to wider considerations such as public interest in exposing official misfeasance and protecting the integrity of the criminal trial process; vindication of reputation; the public righting of public wrongs, and will always depend primarily on the judge's assessment of the potential significance of the evidence, assuming it to be true, in the context of the case as a whole. On the other hand, Bigham highlighted considerations against admitting such evidence include firstly, that the admission of the evidence might distort the trial and distract the attention of the decision maker; secondly, it will be necessary to weigh the potential probative value of the evidence against its potential for causing unfair prejudice; and thirdly, stress will be laid on the burden which admission would lay on the resisting party.

The decision under appeal

Deputy Master Jefferis declined to strike out allegations, following Bingham's two stage test, set out above:

The First Part of the Test

When all the songs use the same chords
guitar hero level expert is in sight!
Image: Mr Throk

In relation to 'No Scrubs', the fact of the settlement of 15 %, which is of the total revenue, which means 30 percent of the music, shows that there is some real acceptance by the Claimants that there had been copying and seems to be logically probative of the possibility of the same thing happening in 'The Shape of You' and so the first part of the test in O'Brien is made out in relation to 'No Scrubs'. In relation to 'Strip That Down'; there was a clearance for 25 percent of the total, or 50 percent of the music, making it more probable that the claimants could see a risk copying being established. In relation to 'Photograph'; the settlement was 35 percent of the total, which meant 70 percent of music, and as such there was a real chance that copying might be established in that cases.

The Second Part of the Test: Proportionality
Deputy Master Jefferis fundamentally disagreed with that submission that he could make some directions and minimise the cost of all this and this is only a secondary allegation; the primary one is all about 'The Shape of You' and 'Oh Why'. He recognised that having three more music pieces that have to be compared would greatly increase the cost and complexity and length of the trial. Then he accepted that it would have a major effect on the costs and the length of the trial as it would require expert evidence from musicologists, the music industry practice about clearance, as well as disclosure how the music was created.

However, he considered the value of the song, claimed to be £30 million - although disputed by the claimant - if it was a £2 million plus costs for a £15 million claim, or the claim only to the music part of it at £7.5 million, that would not be so disproportionate that it should be struck out. That would be to say that because it is too expensive to prove, you cannot plead it. As such, he declined to strike out allegations.

Case on Appeal of the Admission of the Similar Fact Evidence

The Claimants appealed the basis that Deputy Master's judgement was flawed at both stages of the application of O'Brien. In summary; first, that he found that there was sufficiently credible evidence of copying based on the instances of clearances and settlement without any precise identification of what the evidence of copying was; and second, that he failed to weigh all the factors against the potential probative value of the evidence.

It was accepted that the O'Brien test was the appropriate assessment, but Mr Justice Nugee highlighted that there is a potential difference between an application as to whether evidence should be admitted at trial and an application to strike out pleadings. The question at the pleading stage, which is the stage of the current case, is a question of whether the matters that are pleaded are capable of being matters which ought to form part of the trial. The materiality of that difference is that the trial judge will have to decide whether the actual evidence given or sought to be given is admissible whereas, in these circumstances the decision is whether if the facts pleaded are proved then those facts would be admissible and could be relevant.

As such, the Judge agreed that the Deputy Master was entitled to find that the first part of the test was satisfied. in that he could conclude that the case of copying might be established in relation to the other three songs and that that could be logically probative of the case of copying in relation to 'Oh Why'.

She's done it before and she'll do it again...
Image: Jonathan

As to the second part of the test, which could be stopped if it could be seen clearly at this stage that even if fully proved, the probative value was outweighed by the prejudice so that a fair trial. The claimant argued that Deputy Master based his decision on incorrect numbers and overlooked certain factors such the effect on Ed's reputation. However, the Judge did not accept this argument and stated that Deputy Master had identified a number of downsides of allowing the plea to go forward, such as the increase in the cost, complexity and length of the trial, as well as referring to the impact on the Claimant - although not hugely important, still born in mind.

Therefore, in all the circumstances the Judge did not agree with the Claimants criticisms of Deputy Master's judgment and the appeal was dismissed. Although it was noted that there is nothing to stop these pleadings to be struck out at a later stage for lack of particularisation.

The risk of including this evidence if of course to create an assumption that "once a thief, always a thief". However, where there has been an instance of similarity between songs that might have been a coincidence, it is less likely to be a coincidence where there are three instances. As it was said in the case of Rex v Sims [1946] K.B. 531, [at 540]: "The probative force of all the acts together is much greater than one alone." So the probative force of four resemblances together is much better than one alone." On the other hand, there has been a recent increase in cases of copyright infringement in songs, so the fact that there are four examples of other disputes could be a reflection of this trend more so than a pattern of behaviour by Sheeran.

Nevertheless, the songs where played to the Judge in Court, and whilst two songs sounding similar does not equate to a claim for copyright infringement, when that is supported by the clearance and royalty share evidence, this was enough to allow the pleadings at this stage.

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Copyright protection of fictional characters: is it possible? how far can it go?

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The IPKat's favourite fictional character

Last year, I was fortunate enough to be invited by Associate Professor Yann Basire (Director-General of CEIPI) to participate in a great (and cool!) conference he organized in Strasbourg on Pop Culture and IP. The topic I was asked to discuss was trade mark protection of fictional characters, and the contribution will be published in 2020 as part of a collection edited by Yann and entitled Propriété Intellectuelle et Pop Culture (LexisNexis, coll. IRPI).

But what about copyright protection of fictional characters: is it possible? how far could it go?

Copyright protection is available to any work in a Berne and, now, EU sense. While no particular issues arise in relation to the literary, artistic or dramatic works that feature certain characters, in that they are regarded as ‘traditional’ copyright subject matter, whether copyright also vests in fictional characters as such has occasionally proved controversial.

Difficulties are linked to the fact that, first, one might wonder whether a character is to be considered a ‘work’ in a copyright sense and, secondly, assuming that it is, what type of work a character is. While the latter appears to be less fundamental question than the former, it might still be a problematic one to answer in those European jurisdictions that envisage an exhaustive list of protectable works.

A ‘work’ that is sufficiently ‘original’

There is no statutory definition of ‘work’ in EU copyright directives, including the InfoSoc Directive.

However, recently the Court of Justice of the European Union (CJEU) tackled the notion of ‘work’ in its judgment in Levola Hengelo [Katposts here] (the CJEU confirmed its findings in that case in its more recent decision in Cofemel [Katposts here]).

Noting that the InfoSoc Directive provides both a set of exclusive rights relating, in the case of authors, to their ‘works’ and relevant exceptions and limitations to such rights but makes no express reference to the laws of individual Member States for the purpose of determining the meaning and scope of the concept of a ‘work’, such concept is to be considered an autonomous concept of EU law. As such, it is to be given a uniform application throughout the EU, in compliance with the principle of autonomy of EU law.

As I also discuss here, this conclusion on the side of the CJEU is not surprising, also considering its frequent use in copyright case law: the CJEU has indeed often employed this interpretative standard in its copyright case law, with the practical effect of strengthening harmonization of copyright laws across the EU.

The CJEU considered that two cumulative conditions must be satisfied for subject matter to be classified as a ‘work’ within the meaning of the InfoSoc Directive. First, the subject matter concerned must be original in the sense that it is the author’s own intellectual creation, in accordance with the decision in Infopaq and subsequent case law. Second, only something which is the expression of the author’s own intellectual creation may be classified as a ‘work’ within the meaning of that directive. Recalling both the wording of Article 2(1) of the Berne Convention and the idea/expression dichotomy in Articles 2 of the WIPO Copyright Treaty and 9(2) of the TRIPs Agreement, the Court concluded that

for there to be a ‘work’ as referred to in Directive 2001/29, the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.

In the case of a fictional character, the definition of ‘work’ may be satisfied when the character at issue appears in a single work and its features are identifiable in accordance with the CJEU criteria. The assessment, however, might be potentially more complex when the character is one with a longstanding history and which has appeared and changed to some extent over time. Would it be possible to identify with sufficient precision and objectivity the protectable expression which renders such character a ‘work’?

Under US law, the answer appears to be in the affirmative, insofar as certain requirements are satisfied. In 2015, the U.S. Court of Appeals for the Ninth Circuit was called to decide whether defendant Mark Towle had infringed DC Comics’ exclusive rights under a copyright when he built and sold replicas of the Batmobile, as it appeared in the 1966 television show Batman and the 1989 film BATMAN. “Holy copyright law, Batman!”, noted Circuit Judge Ikuta at the beginning of his opinion.

The court considered whether the Batmobile itself could a protected character under US law by adopting a 3-part test:

the character must generally have physical as well as conceptual qualities;
the character must be sufficiently delineated to be recognizable as the same character whenever it appears (this requires the presence of identifiable character traits and attributes, but the character does not need to have a consistent appearance);
the character must be especially distinctive and contain some unique elements of expression, meaning that it cannot be a stock character such as a magician in standard magician garb. Even when a character lacks sentient attributes and does not speak (like a car), it can be a protectable character if it meets this standard.

Applying this test, to the case at issue, the court concluded that the Batmobile would be protected by copyright and that the defendant had infringed it.

It appears that, even if this test is only directly applicable under US law, it could be useful also in a European context. We could indeed consider that fulfilment of all requirements of the test is substantially what is required under EU law to identify a ‘work’ that is sufficiently ‘original’. Indeed, whilst the first and third step seem to relate to the originality of the character and, thus, what makes it its ‘author’s own intellectual creation’, the result of their ‘free and creative choices’ and ultimately what carries their ‘personal touch’, the second step entails the consideration of whether such character is “identifiable with sufficient precision and objectivity” and is, thus, a ‘work’ in the sense clarified in Levola Hengelo.

A work of the ‘right kind’

In European jurisdictions that envisage a closed list of protectable subject matter, an additional difficulty surrounding copyright protection of fictional characters relates to their classification: what types of works are they? A question of this kind, whose compatibility with EU law (or, rather: CJEU case law) is highly questionable, remains formally a fundamental one to answer, in that impossibility to determine what category a work belongs to (usually) leads to a finding that copyright protection is not possible.

So, under UK law (a jurisdiction in which copyright protection is only available to a limited number of works), leading commentaries explain that a ‘work’ is "a thing which satisfies the statutory description of a literary, dramatic, etc. work."

Such ‘thing’ must be, first, a production in the Berne sense and, second, fall within one of the categories provided by the Copyright, Designs and Patents Act 1988 (CDPA). Categorization has implications not just for determining whether a certain work may be actually protected by copyright under UK law, but also what rights attach to such work. So, for instance, section 21(1) CDPA excludes the right of adaptation for artistic works, while providing expressly for it in relation to literary, dramatic and musical works. Similarly, section 17(3) includes conversion of a work into a three-dimensional form within the scope of the right of reproduction only for artistic works, not also literary works. In addition, differences between the various categories subsist also in relation to the topic of infringement. While copyright in a literary, dramatic, musical or artistic work may be infringed without copying the medium on which the work was recorded by the author or published by the publisher, copyright in sound recordings, broadcasts, published editions and films may only be infringed by reproducing the medium produced by the author.

In UK copyright case law, there have been a few instances in which works have been denied copyright protection due to the very impossibility of placing such works within one of the categories provided by the CDPA. Examples include the assembly of a scene (the scene was that which would be photographed for the cover of Oasis’s Be Here Now album) and the Stormtrooper Helmet from the Star Wars films. Until recently, uncertainties have also surrounded the protectability of TV formats by means of copyright, due to uncertain categorization thereof [Katpost here].

The same difficulties of categorization seem likely to subsist also in relation to fictional characters: are they a literary work? a dramatic work? an artistic work?

All this said, as mentioned, it is highly questionable whether an approach of this kind is (still) allowed under EU law. Most recently, in Cofemel, the CJEU considered that the notion of work solely presupposes the fulfilment of two cumulative requirements: first, it implies the existence of an original object, in the sense that said object is the intellectual creation of its author; second, the notion of work is reserved to those elements which are the expression of such creation. When an object is a ‘work’ in this sense, “it shall be eligible, in this respect, for copyright protection, in compliance with Directive 2001/29”.

All this rather clearly suggests that no other criteria can be imposed to determine copyright subsistence, not even the requirement that the work at issue is one of the right kind. This conclusion is also in line with certain enlightened UK case law, which has noted how – in light of a number of CJEU rulings – it may be arguable that it is not a fatal objection to a claim that copyright subsists in a particular work that the work is not one of the kinds of work listed in section 1(1)(a) CDPA and defined elsewhere in that Act. Nevertheless, it remains clear that the putative copyright work must be a literary or artistic work within the meaning of Article 2(1) of the Berne Convention.

Which and how many copyrights?

Copyright protection of a character (if available) is in principle limited in time; in Europe, it will last for the life of the author and seventy years after their death. This means that in principle, upon falling in the public domain, it will become possible to use a character without the need for a licence to, eg, create a new adaptation of the story featuring said character.

So, if we take the example of Sleeping Beauty in the version by Charles Perrault (as also subsequently collected and printed by the Brothers Grimm), both the story and the characters are no longer protected by copyright. However, subsequent adaptations of the public domain stories would warrant their own copyright protection, insofar as they are original.

The same is true with regard to the relevant characters: so, if we apply the criteria mentioned above, this means that, eg, Disney’s version of Sleeping Beauty as a character with a certain appearance and personality would enjoy its self-standing copyright protection and the same would be true of Dreamworks’s own version, which also has an original appearance and personality. Insofar as no original features of a copyright-protected character are reproduced, it remains possible to use a third-party character to create, eg, new adaptations of well-known story.

Conclusion

Different IP rights are available for the protection of fictional characters. As far as copyright is concerned, doubts may subsist regarding the classification of characters as self-standing works which enjoy copyright protection separate from the works in which they are contained. In addition, copyright protection is limited in time and encompasses the external appearance of such characters.

Other types of IP rights, including trade mark protection, might thus present a certain attractiveness, due to the fact that (in the case of trade marks) protection could be virtually perpetual and relate to elements that are not necessarily connected with the external appearance of the character (eg, their name).

However, it is doubtful whether trade mark registration could be effectively pursued in each and every instance, particularly on consideration of the applicability of the absolute grounds for refusal or invalidity concerning distinctiveness, public policy and morality and aesthetic functionality. In addition, the scope of protection – where available – would go only as far as allowing the trade mark owner to repress third-party uses of identical or similar signs, insofar as such uses are uses in a trade mark sense and affect the functions of the registered trade mark (the latter is true also in double identity scenarios, as the CJEU considered in Arsenal).

All this suggests that the most effective way to protect a fictional character through IP is a comprehensive strategy that relies on different rights allowing the pursuit of different objectives of exclusivity, but is also conscious of the limitations that are inherent to each and every right.

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[Guest post] Rome court rules that iconic photograph of judges Falcone and Borsellino is not a photographic artwork

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In this guest contribution, Ilaria Gargiulo (DGRS Studio Legale) discusses a recent decision of an Italian court which shows that, even for iconic photographs, fulfilling the originality requirement for copyright protection is not necessarily a given.

Here's what Ilaria writes:

Rome court rules that iconic photograph of judges Falcone and Borsellino is not a photographic artwork

The photograph taken on 27 March 1992 of judges Giovanni Falcone and Paolo Borsellino by photo reporter Tony Gentile during a conference is perhaps one of the best-known images in recent Italian history. The picture, portraying them smiling one next to the other, has become, over the years, a symbol of the fight against the “mafia logical system”:

The iconic photograph of judges Falcone and Borsellino by Tony Gentile

However, according to the Rome Court of First Instance (decision 14758/2019), the photograph above is not sufficiently original to be considered a photographic artwork protected under Article 2 of the Italian Copyright Act (Law No 633/1941).

The decision was issued in the context of proceedings brought by Gentile against RAI - Radiotelevisione Italiana, the Italian national public broadcasting company, over the unauthorised use of the image.

The Rome court pointed out at the very outset that, historically, photographs were not protected by copyright under Italian law. This choice, which dates back to 1941, “was determined, on the one hand, by the importance of the role of pictures to the cultural industries, so that limiting as much as possible any monopoly on them would be preferable; on the other hand, by the difficulty of finding a creative quid in photographic works which would allow to distinguish the technical nature of the process from to the photographer’s personal contribution in reaching the final result”.

The choice of Italian legislature, however, was at odds with the Berne Convention, and the law was eventually amended.

Currently, Italian law protects two types of photographs:

“simple” (semplici) photographs, which are protected for 20 years, and
photographic artworks which are protected by the 'full' copyright term of life plus 70 due to their originality, the latter to be understood in the sense of Article 6 of the EU Term Directive (“author’s own intellectual creation”).

The distinction between simple photographs and copyright-protected photographs must be made having regard to the level of creativity at issue, this being something that has proved thorny to address satisfactorily.

As a matter of fact, a jurisprudential trend has been to lower the creativity level threshold for photographs to access the full copyright protection, by requiring only that the photographer includes his own style in the picture and sensitivity. A different trends aims instead to adopt more restrictive criteria, by making reference to the originality of the framing, to light, perspective and so on (as per the CJEU Painer decision).

In the case at issue, the more restrictive approach has prevailed.

The Rome court considered that the picture of Falcone and Borsellino must be considered a “simple” photograph, because the image would be a “proof, a sort of a description of a certain situation, a moment of smiling and relaxation of the two judges in the middle of a congress”. The value of the snapshot thus lies in the presence of the subjects pictured and in their stories, not in the technique used (for example in terms of choosing the pose, the lights or the scenery).

The decision found that, for a photograph to be considered an artwork, what is required is “a long and accurate choice of the place, the subject, the colours, the perspective and the light by the photographer and that it becomes real in one unique and unrepeatable snapshot in which the author synthetises his vision of the object”. In sum:

the photographer must have in mind a precise creative objective having an artistic value, which is sufficiently original (e.g. like the one required for a painting);
the picture must be the expression of a precise artistic project, a style and a creative moment.

Only if realised according to these criteria, a picture can be considered a photographic artwork and, as a consequence, is protected under Italian Law for the full term of life plus 70 years. In the absence of this, the photograph at issue will likely be still protected against, eg, unauthorised reproduction, but only for a term of 20 years from its creation (which had lapsed in this case).

It is not the first time that the Rome court adopts the more restrictive criteria in assessing a photograph Indeed, in a similar matter in 2003, in the case of a photograph of an artist playing the guitar and singing during a public exhibition, the court considered that the author’s contribution was only linked to the material reporting of a certain event and did not display the level of originality required under copyright law.

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A European perspective on paparazzi photographs of celebrities and lawsuits against celebrities over the posting of photographs of themselves

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Over the past few months several media outlets have been reporting on a series of copyright lawsuits filed in the US against celebrities over their social media (in particular: Instagram) feeds [Katposts by Hayleigh here, here, and here].

Whilst some of these lawsuits concerned fairly straightforward issues, that is the publication of third-party photographs portraying third parties [eg, Versace publishing a photograph of Jennifer Lopez wearing Versace: here; or super-model Gigi Hadid posting a picture of her boyfriend Zayn Malik: here], others are potentially more intriguing in that they relate to the publication by celebrities of photographs of themselves.

The first of this series of recent lawsuits is the one concerning the publication, by Gigi Hadid on her Instagram account, of this photograph of herself taken by a paparazzo:

The complaint was eventually dismissed because plaintiff had failed to comply with the registration requirement under US copyright law. Indeed, “the registration requirement is “[a] statutory condition” under which a plaintiff must obtain registration of a copyright in a work “before filing a lawsuit” based on infringement of that work.”

From a substantial standpoint, the first Gigi Hadid copyright infringement case was interesting for the variety of arguments raised by the defendant model, ranging from publicity to fair use and implied licence issues.

In the wake of this case, some commentators have raised the question whether Hadid could have made an additional argument, that is that she would be the joint author of the work on grounds that she did contribute sufficient authorship to the creation of the photographer’s work. Apparently, as of today, there has been no case decided by a US court regarding a joint authorship claim as relating to paparazzi photographs.

What would happen, however, if a case like the Hadid one was litigated in Europe? Let's consider some preliminary issues in this post, concerning in particular copyright subsistence in a paparazzo photograph and the question of authorship.

A European perspective on celebrities posting photographs of themselves without authorization

(1) Originality

The first aspect to clarify in a case in which the photograph at issue is a paparazzo photograph would - or, more likely, should - be whether, indeed, a work of this kind could even enjoy copyright protection at all.

It is apparent that the concept of originality mandated by EU law (or, rather, case law of the Court of Justice of the European Union (CJEU)) requires (way) more than just skill, labour or effort, that is all elements that might be present in a photograph taken by a paparazzo who has waited for a long time for the target celebrity to arrive in a specific place, etc.

What the CJEU case law mandates is that the work at issue is ‘its author’s own intellectual creation’, in the sense that it is the result of ‘free and creative choices’ and ultimately carries the author’s own ‘personal touch’.

The CJEU recently summarized 10 years of EU case law on originality in its decision in Funke Medien [Katpost here]:

[I]t is for the national court to ascertain whether […] the author was able to make free and creative choices capable of conveying to the reader the originality of the subject matter at issue, the originality of which arises from the choice, sequence and combination of the words by which the author expressed his or her creativity in an original manner and achieved a result which is an intellectual creation […], whereas the mere intellectual effort and skill [is] not relevant in that regard

With specific regard to portrait photographs, in Painer the CJEU considered that an author can make ‘free and creative choices’ at different stages of the production of a photograph:

In the preparation phase, the photographer can choose the background, the subject’s pose and the lighting. When taking a portrait photograph, he can choose the framing, the angle of view and the atmosphere created. Finally, when selecting the snapshot, the photographer may choose from a variety of developing techniques the one he wishes to adopt or, where appropriate, use computer software.

Arguably, very few (if any) of these elements are actually ‘chosen’ by the paparazzo when taking a photograph on the street, as his/her actions depend on where the celebrity at issue decides to appear and how he/she decides to behave. It is the celebrity who decides the pose and expression that he/she wishes to assume.

In sum, the unauthorized reposting of a paparazzo photograph might not be even an infringement of copyright due to the fact that copyright would not even subsist in such work.

This said, however, simple photographs like paparazzi photographs could be still protected by applicable sui generis national rights (where available), in accordance with what Article 6 of the Term Directive expressly allows.

(2) Authorship and joint authorship

Assuming that the photograph at issue is sufficiently original, one could consider more closely the argument raised that the celebrity portrayed in the photograph is to be considered joint author of that work.

(Unfortunately), authorship and joint authorship are not (yet) areas of copyright in respect of which the EU (or the CJEU) has undertaken a general harmonization (there has only been some limited harmonization for certain types of works). Recital 14 of the Term Directive sums it up rather bluntly:

The question of authorship of the whole or a part of a work is a question of fact which the national courts may have to decide.

If we take the case of the UK, very recently the Court of Appeal of England and Wales revisited the issue of joint authorship in Kogan v Martin, adopting a somewhat different approach from the one envisaged at first instance [Katpost here]. In its decision, the Court of Appeal revisited the law – or, rather, the case law – on joint authorship and spelled out that there are three key criteria that need to be satisfied:

First, there must be a collaboration between the authors, in the sense of a ‘joint project’;
The second element is authorship. By relying on the position adopted by Laddie J in Cala Homes, the court rejected the view that only those ‘who pushed the pen’ are joint authors: “It is the skill and effort involved in creating, selecting or gathering together the detailed concepts or emotions which the words have fixed in writing which is protected”;
Finally, the contribution made by a joint author must be an 'authorial' one.

The position of the court is intriguing: whilst in the case of a celebrity photographed on the street without any prior warning, it appears unlikely that a collaboration could be envisaged, things might be different at, eg, red carpets, film premieres, awards ceremonies etc, that is in all those situations in which a celebrity knows that there will be photographers and actually accepts to pose for them. In all these instances, in fact, it might not be impossible to advance the view that, indeed, the celebrity at issue is joint author of the photograph:

(3) Image rights

An additional point to consider is not one relating explicitly to copyright, but rather image rights. As readers know, this is a profoundly un-harmonized area of the law, and different approaches are in place across different EU Member States.

Whilst continental European jurisdictions have long-standing histories of image rights protection (and often image rights are also included in national copyright statutes), this is not the case of jurisdictions like the UK, in which protection is only available on a fragmentary basis through reliance on different causes of action, including inherently flexible actions like passing off (as in the Rihanna case [here], the outcome of which heavily depended on the background facts), breach of confidence, and – more recently – misuse of private information, etc.

Kats (with celebrities)
(source: Zimbio)

Conclusion

This post has focused on preliminary copyright issues, notably the question of originality and authorship/joint authorship of celebrity paparazzi photographs (issues like licensing and copyright exceptions and limitations have been left out of the analysis).

Generally speaking, it may be questionable that copyright protection could be successfully invoked for all photographs whose only merit appears to be that of being at the right place at the right. In his decision in the Red Bus case, Judge Birss QC (as he then was) suggested that one thing is a photograph whose composition also includes elements arising from being at the right place at the right time and another thing is a 'mere photograph', that is "an image which is nothing more than the result of happening to click [one's own] camera in the right place at the right time." While the former situation might give rise to originality, the latter would not be enough for copyright protection to arise. In the case of paparazzi photographs taken in the street, where indeed it is mostly about 'being in the right place the right time', the same might be argued.

As discussed, arguments relating to joint authorship, especially in photographs for which the celebrity at issue has actually willingly posed, might not be unconceivable to advance, also considering that the inclusion of the celebrity at issue is what makes the photograph actually 'original' (and valuable): it is not really the background, the lighting, the angle, etc.

What do readers think?

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Nexus

AG Campos in Brompton Bicycle advises CJEU to rule that 'exclusively' functional shapes do not deserve copyright protection

UK court applies CJEU Cofemel decision for the first time: "complete conformity" with EU law would preclude any requirement of aesthetic appeal

Sheeran v Chokri Part 2: Admission of similar fact evidence

Recap of the case

Latest developments - admissible similar fact evidence

The decision under appeal

Case on Appeal of the Admission of the Similar Fact Evidence

Copyright protection of fictional characters: is it possible? how far can it go?

[Guest post] Rome court rules that iconic photograph of judges Falcone and Borsellino is not a photographic artwork

A European perspective on paparazzi photographs of celebrities and lawsuits against celebrities over the posting of photographs of themselves

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