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Simon Stokes

Table of contents :
Preface and Acknowledgements
Table of Contents
Frequently Cited Material
Table of Cases
Table of Legal Instruments
1. Introduction
1.1. Background and Scope
1.2. Copyright and Art
Suggested Further Reading
2. The Copyright System: Justification and History
2.1. Introduction
2.2. Justifications for Copyright
2.3. The History of Copyright
Suggested Further Reading
3. The Modern Law of Copyright
3.1. Background
3.2. UK Law
Suggested Further Reading
4. Moral Rights and Artist's Resale Right (Droit de Suite)
4.1. Moral Rights
4.2. Implications of Moral Rights and some UK Cases
4.3. Performers' Moral Rights and Performance Works
4.4. Moral Rights in the United States
4.5. Artist's Resale Right (Droit de Suite)
Suggested Further Reading
5. Art, Technology and the Internet: Copyright, Related Rights and Digitisation
5.1. Copyright in Digital and Digitised Works
5.2. Copyright, Artificial Intelligence (AI) and Computer-Generated Works
5.3. Copying and the Internet
5.4. Transmission Right/Communication to the Public Right
5.5. Publication Right
5.6. Database Right and Art (and Art Market) Databases
5.7. Implications of Moral Rights for the Digital Environment89
5.8. Blockchain, Art and Copyright Management
5.9. Art, Copyright Legislation and the Digital Future
Suggested Further Reading
6. Some Current Issues
6.1. Copyright in Photographs of Public Domain Artistic Works1
6.2. Copyright and Visual Search Engines: Fair Use and Fair Dealing in the Online Environment
6.3. Image Sharing, User-Generated Works and Online Artistic Collaboration
6.4. Modern and Contemporary Art and Copyright (Including Film, Video and Performances)
6.5. Orphan Works
6.6. Art, Originality, Infringement and the Development of EU Copyright Law
6.7. Brexit and UK Copyright Law Relating to Artistic Works
6.8. Freedom of Panorama
6.9. Traditional Cultural Expressions, Intangible Cultural Heritage and Copyright
Suggested Further Reading
7. Some Practical Issues and Precedents
7.1. Collecting Societies/Collective Management Organisations (CMOs)
7.2. Copyright in the Context of Art Loans
7.3. Copyright and Setting Up a Website, Online Viewing Room and Using Instagram: Acquiring and Using Image Rights
7.4. The Use of Images in Art Books: The Limits of Fair Dealing
7.5. Transferring/Acquiring Copyright in Artistic Works: Commissioned Art Works and Moral Rights Waivers
7.6. Licensing Artistic Works and Creative Commons
7.7. Artist's Resale Right (ARR) in the United Kingdom: Practical Guidance
7.8. Copyright, Moral Rights and ARR Following the Death of the Artist
7.9. Copyright, Moral Rights and ARR Where the Artist is an Employee or Company Director
Suggested Further Reading
8. Art and Intellectual Property Rights Other than Copyright
8.1. Breach of Confidence
8.2. Passing Off
8.3. Trade Marks
8.4. Domain Names
8.5. Privacy and Publicity Rights
8.6. Copyright and Freedom of Expression
Suggested Further Reading
9. Conclusion
9.1. Categories of 'Art' and the Subsistence of Copyright
9.2. Appropriating the Public Domain: Idea Versus Expression
9.3. Art, Technology and the Future
Suggested Further Reading
Appendix: Precedents and Precedent Checklists
Index

Citation preview

ART AND COPYRIGHT First published in 2001, Art and Copyright has established itself as a leading text in the field. Revised and updated, this third edition includes additional coverage of the following topics: –– –– –– –– –– –– –– ––

the relationship between designs law and artistic works; EU and Brexit developments; AI-created works; graffiti and other non-conventional works; blockchain and rights management; orphan works; new exceptions to copyright; and digital copyright, art databases and online platforms.

This book remains an invaluable work for all those involved in art law and for intellectual property lawyers involved with the exploitation and/or sale of artistic works, as well as for intellectual property academics, researchers, law students, curators, publishers, artists, gallery owners, auction houses, and those developing and running online art platforms, databases and technology to transact in art.

ii

Art and Copyright Third Edition

Simon Stokes Solicitor; Partner, Blake Morgan

HART PUBLISHING Bloomsbury Publishing Plc Kemp House, Chawley Park, Cumnor Hill, Oxford, OX2 9PH, UK 1385 Broadway, New York, NY 10018, USA 29 Earlsfort Terrace, Dublin 2, Ireland HART PUBLISHING, the Hart/Stag logo, BLOOMSBURY and the Diana logo are trademarks of Bloomsbury Publishing Plc First published in Great Britain 2021 Copyright © Simon Stokes, 2021 Simon Stokes has asserted his right under the Copyright, Designs and Patents Act 1988 to be identified as Author of this work. All rights reserved. No part of this publication may be reproduced or transmitted in any form or by any means, electronic or mechanical, including photocopying, recording, or any information storage or retrieval system, without prior permission in writing from the publishers. While every care has been taken to ensure the accuracy of this work, no responsibility for loss or damage occasioned to any person acting or refraining from action as a result of any statement in it can be accepted by the authors, editors or publishers. All UK Government legislation and other public sector information used in the work is Crown Copyright ©. All House of Lords and House of Commons information used in the work is Parliamentary Copyright ©. This information is reused under the terms of the Open Government Licence v3.0 (http://www.nationalarchives.gov.uk/doc/ open-government-licence/version/3) except where otherwise stated. All Eur-lex material used in the work is © European Union, http://eur-lex.europa.eu/, 1998–2021. A catalogue record for this book is available from the British Library. Library of Congress Cataloging-in-Publication data Names: Stokes, Simon, 1963- author. Title: Art and copyright / Simon Stokes. Description: Third edition. | Oxford, UK ; New York, NY : Hart Publishing, an imprint of Bloomsbury Publishing, 2021. | Includes bibliographical references and index. Identifiers: LCCN 2020052031 (print) | LCCN 2020052032 (ebook) | ISBN 9781509934256 (hardback) | ISBN 9781509934263 (pdf) | ISBN 9781509934270 (Epub) Subjects: LCSH: Copyright—Art—Great Britain. | Internet—Law and legislation—Great Britain. Classification: LCC KD1320 .S76 2021 (print) | LCC KD1320 (ebook) | DDC 346.4104/82—dc23 LC record available at https://lccn.loc.gov/2020052031 LC ebook record available at https://lccn.loc.gov/2020052032 ISBN: HB: 978-1-50993-425-6 ePDF: 978-1-50993-426-3 ePub: 978-1-50993-427-0 Typeset by Compuscript Ltd, Shannon To find out more about our authors and books visit www.hartpublishing.co.uk. Here you will find extracts, author information, details of forthcoming events and the option to sign up for our newsletters.

PREFACE AND ACKNOWLEDGEMENTS This book is an updated and revised version of the second edition, published in 2012. The first edition dated back to 2001. Almost 20 years ago at the time of writing. The increase in size is due in large part to both the continued influence of technology on art and the need to take account of European developments – both legislation and case law of the Court of Justice of the European Union. There has also been a growth in scholarly writing on this area (including on the history of artistic copyright) which the author has alluded to. Artistic copyright is a fascinating area – of ever-increasing practical importance but also of deep intellectual and cultural interest. The book seeks to combine these two approaches – the practical and the scholarly – but with a focus on the practical – how successfully is for the reader to judge. I would like to thank Hart Publishing for their continued support and to my editor Dr Roberta Bassi for being receptive to the idea of a third edition and for her help and encouragement throughout. I am also grateful to those readers who have told me a third edition would be a good idea. The book has also benefited from the author’s work as a practising lawyer and I am grateful to clients for throwing up nice legal problems and to my colleagues past and present in the intellectual property team at Blake Morgan LLP (including Nick Arnold, Jill Bainbridge, Ben Evans, and Chris Williams) for helping resolve them. I have also had the opportunity of working over the years with a number of copyright scholars (including members of the British Literary and Artistic Copyright Association (BLACA)) who have been supportive of my endeavours and who have on occasion constructively challenged my views – many of their names appear in footnotes and recommendations for further reading. My wife Aylin provided the encouragement to get the work finished. This edition is dedicated to the memory of my stepfather Roger Smith (an artist) (1939–2012) and my mother Gillian Eastwood Smith (formerly Stokes née Newman) (1940–2020). The family home was full of art – originals and reproductions – in an area once frequented by the Victorian artist Richard Ansdell RA1 – but long since developed as a seaside resort. It has been a quiet and artistic retreat in which to finish off the manuscript. Simon Stokes Lytham St Annes 25 August 2020

1 See

www.lythamstannesartcollection.org/richard-ansdell-ra.html.

vi

TABLE OF CONTENTS Preface and Acknowledgements��v Frequently Cited Material�� xiii Table of Cases��xxi Table of Legal Instruments�� xxxiii 1. Introduction�� 1 1.1. Background and Scope�� 1 1.2. Copyright and Art�� 3 2. The Copyright System: Justification and History�� 8 2.1. Introduction�� 8 2.2. Justifications for Copyright�� 9 2.2.1. The Economic/Utilitarian Justifications for Copyright�� 10 2.2.2. Public Policy Arguments�� 11 2.2.3. Moral Rights/Natural Law Rights�� 11 2.2.4. Copyright Scepticism�� 16 2.2.5. Some Conclusions�� 19 2.3. The History of Copyright�� 20 3. The Modern Law of Copyright��24 3.1. Background�� 24 3.1.1. Overview�� 24 3.1.2. Economic Rights and Moral Rights�� 26 3.2. UK Law�� 26 3.2.1. The Classes of Work Protected by Copyright�� 27 3.2.2. Criteria for Protection: Work Must be ‘Original’�� 41 3.2.3. Who is the Author?�� 43 3.2.4. The Need for Fixation/Permanence of the Work�� 44 3.2.5. Qualifying Factors for Protection�� 45 3.2.6. The Duration of Protection�� 46 3.2.7. The First Owner of the Copyright, Works of Employees and Commissioned Works�� 47 3.2.8. Economic Rights and the Idea/Expression Dichotomy�� 47 3.2.9. Exceptions/Defences to Copyright Infringement�� 54 3.2.10. Industrial Designs�� 58 3.2.11. Other Rights Analogous or Related to Copyright (Excluding Moral Rights)�� 66

viii Table of Contents 4. Moral Rights and Artist’s Resale Right (Droit de Suite)��72 4.1. Moral Rights�� 72 4.2. Implications of Moral Rights and some UK Cases�� 79 4.2.1. Morrison Leahy Music and Another v Lightbond Limited and Others (1991)�� 80 4.2.2. Tidy v The Trustees of the Natural History Museum and Another (1996)�� 80 4.2.3. Pasterfield v Denham and Another (1999)�� 81 4.2.4. Confetti Records v Warner Music (2003)�� 82 4.2.5. Harrison v Harrison (2010)�� 82 4.2.6. Emma Delves-Broughton v House of Harlot Limited (2012)�� 83 4.2.7. Conclusion: Derogatory Treatment in UK Law�� 83 4.3. Performers’ Moral Rights and Performance Works�� 84 4.4. Moral Rights in the United States�� 85 4.5. Artist’s Resale Right (Droit de Suite)�� 87 4.5.1. Background, Rationale and History�� 87 4.5.2. EU Harmonisation�� 90 4.5.3. UK Implementation of the Resale Right Directive�� 94 4.5.4. International Developments�� 96 5. Art, Technology and the Internet: Copyright, Related Rights and Digitisation��98 5.1. Copyright in Digital and Digitised Works�� 98 5.1.1. How does Copyright Protect Digital Works?�� 98 5.1.2. Digitised Works�� 99 5.2. Copyright, Artificial Intelligence (AI) and Computer-Generated Works��100 5.2.1. Artificial Intelligence (AI) and Art��102 5.2.2. Virtual and Augmented Reality and Art��107 5.3. Copying and the Internet��109 5.3.1. Caching��110 5.3.2. Linking and Framing��111 5.3.3. Liability of ISPs, Platforms and Others, Including for User-Generated (and Uploaded) Content��111 5.4. Transmission Right/Communication to the Public Right��112 5.5. Publication Right��113 5.6. Database Right and Art (and Art Market) Databases��114 5.6.1. Art (and Art Market) Databases and Image Libraries��114 5.7. Implications of Moral Rights for the Digital Environment��117 5.8. Blockchain, Art and Copyright Management��118 5.8.1. Blockchain��118 5.8.2. Blockchain and Art��119 5.8.3. Blockchain and Artistic Copyright (Including Artist’s Resale Right) Management��120

Table of Contents ix 5.9. Art, Copyright Legislation and the Digital Future��120 5.9.1. Legislation��120 5.9.2. The Future��123 6. Some Current Issues��126 6.1. Copyright in Photographs of Public Domain Artistic Works��126 6.1.1. Graves’ Case (1869)��128 6.1.2. The Bridgeman Case (1998)��130 6.1.3. Comment on Bridgeman on the Basis of UK Law Before Infopaq and the Development of a European Standard of Originality by the CJEU��135 6.1.4. European Copyright Law��139 6.1.5. Article 14 of the Digital Single Market Copyright Directive��140 6.2. Copyright and Visual Search Engines: Fair Use and Fair Dealing in the Online Environment��142 6.2.1. Kelly v Arriba Soft (1999–2004)��142 6.2.2. Perfect 10 v Google (2006–11)��147 6.2.3. Comment��148 6.2.4. A View from the United Kingdom��148 6.3. Image Sharing, User-Generated Works and Online Artistic Collaboration��153 6.3.1. Case Study: The National Portrait Gallery, Derrick Coetzee and Wikimedia Commons��153 6.3.2. User-Generated Content and Online Artistic Collaboration��156 6.4. Modern and Contemporary Art and Copyright (Including Film, Video and Performances)��158 6.4.1. Ready-Mades, Objets Trouvés, Installations and Assemblage��159 6.4.2. Appropriation Art��160 6.4.3. Minimalist Art and Conceptual Art��162 6.4.4. Graffiti and Street Art��164 6.4.5. Bio-Art, Land Art and Other Non-conventional Art Works��168 6.4.6. Film Copyright, Modern Art and Advertising: Gillian Wearing, Mehdi Norowzian and Beyond��170 6.4.7. The Limits of Appropriation: Parody��174 6.4.8. Appropriation and Parody: Some Concluding Thoughts��179 6.4.9. Film, Video, Multimedia Works, Animation, Computer Games and Performance Works: Copyright and Performers’ Rights��179 6.5. Orphan Works��180 6.5.1. Background��180 6.5.2. The EU Approach – The Orphan Works Directive��182 6.5.3. UK Legislation Relating to Orphan Works – The UK’s Orphan Works Licensing Scheme��184 6.5.4. Orphan Works in the US��185

x Table of Contents 6.6. Art, Originality, Infringement and the Development of EU Copyright Law��186 6.7. Brexit and UK Copyright Law Relating to Artistic Works��187 6.8. Freedom of Panorama��188 6.9. Traditional Cultural Expressions, Intangible Cultural Heritage and Copyright��189 6.9.1. Traditional Cultural Expressions��189 6.9.2. Intangible Cultural Heritage��194 7. Some Practical Issues and Precedents��196 7.1. Collecting Societies/Collective Management Organisations (CMOs)��196 7.2. Copyright in the Context of Art Loans��198 7.3. Copyright and Setting Up a Website, Online Viewing Room and Using Instagram: Acquiring and Using Image Rights��200 7.3.1. Use on a Gallery’s Website (Including Online Viewing Room)��200 7.3.2. Platforms Including Instagram��202 7.4. The Use of Images in Art Books: The Limits of Fair Dealing��203 7.5. Transferring/Acquiring Copyright in Artistic Works: Commissioned Art Works and Moral Rights Waivers��204 7.6. Licensing Artistic Works and Creative Commons��205 7.6.1. Licensing Artistic Works��205 7.6.2. Creative Commons and Open Access��205 7.7. Artist’s Resale Right (ARR) in the United Kingdom: Practical Guidance��207 7.7.1. What is Artist’s Resale Right?��208 7.7.2. Resale Royalty��209 7.7.3. What Works of Art are Relevant?��210 7.7.4. What Sales Attract the Resale Royalty?��211 7.7.5. Who is Entitled to Claim the Right?��211 7.7.6. Who is Liable to Pay the Resale Royalty?��212 7.7.7. Right to Information��212 7.7.8. The Works of Deceased Artists��212 7.8. Copyright, Moral Rights and ARR Following the Death of the Artist��212 7.8.1. Copyright on Death��213 7.8.2. Moral Rights on Death��213 7.8.3. ARR on Death��214 7.8.4. Conclusion��214 7.9. Copyright, Moral Rights and ARR Where the Artist is an Employee or Company Director��214 7.9.1. Copyright and the Employed Artist��214 7.9.2. Moral Rights and the Employed Artist��215 7.9.3. ARR and the Employed Artist��215 7.9.4. Chadwick & Ors v Lypiatt Studio Ltd & Anor��216

Table of Contents xi 8. Art and Intellectual Property Rights Other than Copyright��218 8.1. Breach of Confidence��218 8.2. Passing Off��219 8.3. Trade Marks��222 8.3.1. The Artist as a Brand��222 8.3.2. Use of Trade Marks in Artistic Works��223 8.4. Domain Names��224 8.5. Privacy and Publicity Rights��225 8.6. Copyright and Freedom of Expression��227 9. Conclusion��229 9.1. Categories of ‘Art’ and the Subsistence of Copyright��230 9.2. Appropriating the Public Domain: Idea Versus Expression��232 9.3. Art, Technology and the Future��234 Appendix: Precedents and Precedent Checklists��236 Index��247

xii

FREQUENTLY CITED MATERIAL I. Books and Articles Adeney

E Adeney, The Moral Rights of Authors and Performers: An International and Comparative Analysis (Oxford, Oxford University Press, 2006)

Angelopoulos

C J Angelopoulos, ‘Freedom of Expression and Copyright: The Double Balancing Act’ (2008) 3 Intellectual Property Quarterly 328–53

Barron (2002)

A Barron, ‘Copyright Law and the Claims of Art’ (2002) 4 Intellectual Property Quarterly 368–401

Barron (2004)

A Barron, ‘The Legal Properties of Film’ (2004) 67(2) Modern Law Review 177–208

Bently

L Bently, ‘Copyright and Quotation in Film and TV’ CREATe Working Paper 2020/8 (UK Copyright and Creative Economy Centre, Glasgow www.create.ac.uk)

Bently and Sherman

L Bently and B Sherman, ‘Copyright Aspects of Art Loans’ in N Palmer (ed), Art Loans (London, Kluwer, 1996)

Blakeney

M Blakeney, ‘The Protection of Traditional Knowledge under Intellectual Property Law’ (2000) 6 European Intellectual Property Review 251–61

Bonadio and Lucchi

E Bonadio and N Lucchi, Non-Conventional Copyright (Cheltenham, Edward Elgar, 2018)

Bonadio (2017)

E Bonadio, ‘Copyright protection of street art and graffiti under UK law’ (2017) Intellectual Property Quarterly 187–220

Bonadio (2018)

E Bonadio, ‘Street art, graffiti and copyright’ in E Bonadio and N Lucchi (eds), Non-Conventional Copyright (Cheltenham, Edward Elgar, 2018) 83–110

Booton

D Booton, ‘Framing Pictures: Defining Art in UK Copyright Law’ (2003) 1 Intellectual Property Quarterly 38–68

Bowrey

K Bowrey, ‘Who’s Writing Copyright’s History?’ (1996) 6 European Intellectual Property Review 322

xiv Frequently Cited Material Coombes

R Coombes, The Cultural Life of Intellectual Properties (Durham, NC, Duke University Press, 1998)

Cooper

E Cooper, Art and Modern Copyright: The Contested Image (Cambridge, Cambridge University Press, 2018)

Copinger

N Caddick et al, Copinger and Skone James on Copyright [Current edition is the 17th edn, Second Supplement (London, Sweet & Maxwell, 2019) but most references in the text are to previous editions, including in particular to the 14th edn (London, Sweet & Maxwell, 1999)]

Cornish

W Cornish, D Llewelyn and T Aplin, Intellectual Property [Current edition is the 9th edn (London, Sweet & Maxwell, 2019) but previous editions, in particular the 4th edn by W Cornish (London, Sweet & Maxwell, 1999), are also referred to in the text]

Demarsin et al

B Demarsin et al (eds), Art & Law (Brugge, die Keure, 2008)

Dietz

A Dietz, ‘Term of Protection in Copyright Law and Paying Public Domain: A New German Initiative’ (2000) European Intellectual Property Review 506

Dreier and Hugenholz T Dreier and B Hugenholz (eds), Concise European Copyright Law (Alphen aan den Rijn, Kluwer Law International, 2006) DuBoff and King

LD DuBoff and CO King, Art Law in a Nutshell, 3rd edn (St Paul, MN, West Group, 2000)

Dworkin and Taylor

G Dworkin and R Taylor, Blackstone’s Guide to the Copyright, Designs and Patents Act 1988 (London, Blackstone Press, 1989)

Edwards and Waelde

L Edwards and C Waelde (eds), Law and the Internet [Current edition is the 3rd edn (Oxford, Hart Publishing, 2009); unless otherwise noted, references herein are to the 2nd edn (Oxford, Hart Publishing, 2000)]

Ercolini

S Ercolini, Applied Arts under IP Law (Proceedings of the International Congress of the Association Litteraire et Artistique International (ALAI), Rome 15–16 September 2016) (Canterano, Aracne Editrice, 2018)

Françon

A Françon, ‘Protection of Artists’ Moral Rights on the Internet’ in Pollaud-Dulian (below)

Ginsburg

JC Ginsburg, ‘How Copyright Got a Bad Name for Itself ’ Research Paper Number 02-46, Columbia Law School Public Law & Legal Theory Research Paper Group (18 October 2002), available at SSRN (abstract id 342182) and published in (2002) 26(1) Columbia Journal of Law and the Arts 61–73

Frequently Cited Material xv Golvan

C Golvan, ‘Aboriginal Art and Copyright: An Overview and Commentary Concerning Recent Developments’ (1999) European Intellectual Property Review 599

Gordon (1993)

WJ Gordon, ‘A Property Right in Self Expression: Equality and Individualism in the Natural Law of Intellectual Property’ (1993) 102 Yale Law Journal 1533

Gordon (1999)

WJ Gordon, ‘Touring the Certainties of Property and Restitution: A Journey to Copyright and Parody’ (Oct 1999) Oxford Electronic Journal of Intellectual Property Rights

Gredley and Maniatis

E Gredley and S Maniatis, ‘Parody: A Fatal Attraction? Part 1: The Nature of Parody and its Treatment in Copyright’ (1997) 7 European Intellectual Property Review 339

Gringras

C Gringras, The Laws of the Internet (London, Butterworths, 1997)

Iljadica (2015)

M Iljadica, ‘Graffiti and the moral right of integrity’ (2015) 3 Intellectual Property Quarterly 266–288

Iljadica (2016)

M Iljadica, Copyright Beyond Law: Regulating Creativity in the Graffiti Subculture (Oxford, Hart Publishing, 2016)

Hansen

HC Hansen, ‘International Copyright: An Unorthodox Analysis’ (1996) 29 Vanderbilt Journal of Transnational Law 579

Hansmann and Santilli H Hansmann and M Santilli, ‘Authors’ and Artists’ Moral Rights: A Comparative Legal and Economic Analysis’ (1997) 26 Journal of Legal Studies 95 Hargreaves Review

I Hargreaves, Digital Opportunity: A Review of Intellectual Property and Growth (UK Intellectual Property Office, May 2011)

Heath and Kamperman C Heath and A Kamperman Sanders (eds), New Frontiers Sanders of Intellectual Property Law: IP and Cultural Heritage, IIC Studies in Industrial Property and Copyright Law Volume 25 (Oxford, Hart Publishing, 2005) Hettinger

EC Hettinger, ‘Justifying Intellectual Property’ (1989) 18 Philosophy & Public Affairs 31

Hughes

J Hughes, ‘The Philosophy of Intellectual Property’ (1988) 77 Georgetown Law Journal 287

Isaac

B Isaac, Brand Protection Matters (London, Sweet & Maxwell, 2000)

Jaszi

P Jaszi, ‘Toward a Theory of Copyright: The Metamorphoses of “Authorship”’ (1991) 42 Duke Law Journal 455

xvi Frequently Cited Material Johnson

E Johnson, ‘Intellectual Property and the Incentive Fallacy’ Florida State University Law Review (forthcoming); draft dated 4 May 2011 available at SSRN, id 1746343

Joyce

C Joyce, W Patry, M Leaffer and P Jaszi, Copyright Law, 5th edn (New York, LEXIS, 2000)

Karlen

P Karlen, ‘Intellectual Property in Intellectual Creations’ (Apr 1999) Copyright World 14

Kearns

P Kearns, The Legal Concept of Art (Oxford, Hart Publishing, 1998)

Kerly

D Kitchin et al, Kerly’s Law of Trade Marks and Trade Names, 13th edn (London, Sweet & Maxwell, 2001)

Laddie (1996)

HIL Laddie, ‘Copyright: Over-Strength, Over-Regulated, OverRated?’ (1996) 5 European Intellectual Property Review 253

Laddie

A Speck et al, Laddie, Prescott &Vitoria: The Modern Law of Copyright and Designs [Current edition is the 5th edn (London, LexisNexis, 2018) but previous editions are also referred to in the text]

Merryman and Elsen

JH Merryman and AE Elsen, Law, Ethics and the Visual Arts, 4th edn (The Hague, Kluwer Law International, 2002)

McClean and Schubert D McClean and K Schubert (eds), Dear Images Art, Copyright and Culture (London, Ridinghouse/ICA, 2002) Millinger

DM Millinger, ‘Copyright and the Fine Arts’ (1980) 48 George Washington Law Review 354

Nimmer

MB Nimmer and D Nimmer, Nimmer on Copyright (New York, M Bender, 1998)

Ong

B Ong, ‘Originality from Copying: Fitting Recreative Works into the Copyright Universe’ (2010) 2 Intellectual Property Quarterly 165–91

Pila

J Pila, ‘An Intentional View of the Copyright Work’ (2008) 71(4) Modern Law Review 535–58

Pollaud-Dulian

F Pollaud-Dulian (ed), The Internet and Authors’ Rights (London, Sweet & Maxwell, 1999)

Prowda

J Prowda, Visual Arts and the Law (Farnham, Lund Humphries, 2013)

Rahmatian

A Rahmatian, ‘Non-assignability of Authors’ Rights in Austria and Germany and Its Relation to the Concept of Creativity in Civil Law Jurisdictions Generally: A Comparison with UK Copyright Law’ (2000) 5 Entertainment Law Review 95

Frequently Cited Material xvii Ricketson (1987)

S Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886–1986 (London, Kluwer, 1987)

Ricketson (2018)

S Ricketson, ‘The International Framework of Copyright and Extra-Copyright Protection of Applied Art’ in S Ercolini (ed), Applied Arts under IP Law (Proceedings of the International Congress of the Association Litteraire et Artistique International (ALAI), Rome 15–16 September 2016) (Canterano, Aracne Editrice, 2018)

Rose

M Rose, Authors and Owners (Cambridge, MA, Harvard University Press, 1993)

Rosenmeier and Teilmann

M Rosenmeier and S Teilmann (eds), Art and Law: The Copyright Debate (Copenhagen, DJØF Publishing, 2005)

Rushton

M Rushton, ‘Economics and Copyright in Works of Artistic Craftsmanship’, presented at the Shepherd and Wedderburn Centre for Research into Intellectual Property and Technology (SCRIPT) at the University of Edinburgh (30 October 2000)

Saunders

D Saunders, Authorship and Copyright (London, Routledge, 1992)

Sherman (1994)

B Sherman, ‘From the Non-original to the Ab-original: A History’ in Sherman and Strowel (below)

Sherman (1995)

B Sherman, ‘Appropriating the Postmodern: Copyright and the Challenge of the New’ (1995) 4 Social & Legal Studies 31

Sherman and Strowel

B Sherman and A Strowel (eds), Of Authors and Origins (Oxford, Clarendon Press, 1994)

Spence (1996)

M Spence, ‘Passing Off and the Misappropriation of Valuable Intangibles’ (1996) 112 Law Quarterly Review 472

Spence (1998)

M Spence, ‘Intellectual Property and the Problem of Parody’ (1998) 114 Law Quarterly Review 594

Spence (2007)

M Spence, Intellectual Property (Oxford, Oxford University Press, 2007)

Stamatoudi and Torremans

IA Stamatoudi and PLC Torremans (eds), Copyright in the New Digital Environment, Volume 8 in the Perspectives on Intellectual Property series (London, Sweet & Maxwell, 2000)

Sterling

JAL Sterling, World Copyright Law (London, Sweet & Maxwell, 1999)

Stokes (2006)

S Stokes, Artist’s Resale Right: Law and Practice (Leicester, Institute of Art and Law, 2006)

xviii Frequently Cited Material Stokes (2017)

S Stokes, Artist’s Resale Right: UK Law and Practice, 3rd edn (Builth Wells, Institute of Art and Law, 2017)

Stokes (2019)

S Stokes, Digital Copyright: Law and Practice, 5th edn (Oxford, Hart Publishing, 2019)

Sundara Rajan

MT Sundara Rajan, Moral Rights: Principles, Practice and New Technology (New York, Oxford University Press, 2011)

Tang

X Tang, ‘The Artist as Brand: Toward a Trademark Conception of Moral Rights’ (2012) 122 Yale Law Journal 218

Teilmann-Lock

S Teilmann-Lock, British and French Copyright: A Historical Study of Aesthetic Implications (Copenhagen, DJØF Publishing, 2009)

Teilmann-Lock (2016) S Teilmann-Lock, The Object of Copyright: A Conceptual History of Originals and Copies in Literature, Art and Design (Abingdon, Routledge, 2016) Thomas

D Thomas, Copyright and the Creative Artist (London, Institute of Economic Affairs, 1968)

Vaver

D Vaver, ‘Intellectual Property: The State of the Art’ (2000) 116 Law Quarterly Review 621

von Lewinski

S von Lewinski, International Copyright Law and Policy (Oxford, Oxford University Press, 2008)

Yen

AC Yen, ‘The Interdisciplinary Future of Copyright Theory’ in M Woodmansee and P Jaszi (eds), The Construction of Authorship (Durham, NC, Duke University Press, 1994)

Zemer

L Zemer, The Idea of Authorship in Copyright (Aldershot, Ashgate, 2007)

II. Journals/Information Resources ARTL

Art, Antiquity and Law (Institute of Art and Law, Builth Wells)

EIPR

European Intellectual Property Review (Sweet & Maxwell)

ENT LR

Entertainment Law Review (Sweet & Maxwell)

IPQ

Intellectual Property Quarterly (Sweet & Maxwell)

RIDA

Revue Internationale du Droit d’Auteur

SSRN

Social Science Research Network electronic library

Frequently Cited Material xix III. UK and European Intellectual Property Law Reports FSR

Fleet Street Reports

ECDR

European Copyright and Designs Reports

EMLR

Entertainment and Media Law Reports

RPC

Reports of Patent Cases

IV. EU Directives Copyright in the Digital Single Market (DSM) Directive

Directive on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC (Directive (EU) 2019/790)

Database Directive

Directive on the legal protection of databases (Directive 96/9/EC)

Designs Directive

Directive on the legal protection of designs (Directive 98/71/EC)

Electronic Commerce Directive

Directive on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (Directive 2000/31/EC)

Information Society Directive

Directive on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society (Directive 2001/29/EC)

Orphan Works Directive

Directive on certain permitted uses of orphan works (Directive 2012/28/EU)

Resale Right Directive

Directive on the Resale Right for the benefit of the Author of an Original Work of Art (Directive 2001/84/EC)

V. UK Statutes CDPA

Copyright, Designs and Patents Act 1988

xx

TABLE OF CASES European and International Cases European Court of Human Rights (ECHR) Reklos v Greece, case 1234/05 [2009] ECHR 200, [2009] EMLR 16 (15 January 2009)��227 Von Hannover v Germany (App no 59320) (24 June 2004), (2005) 40 EHRR 1��226, 227 European Union (ECJ / CJEU) Art & Allposters International BV v Stichting Pictoright (Judgment) [2015] EUECJ C-419/13, EU:C:2015:27��47–48 BestWater International (Order) French Text [2014] EUECJ C-348/13_CO, EU:C:2014:2315��111 Bezpečnostni softwarova asociace – Svaz softwarove ochrany v Ministerstvo kultury (BSA), Case C-393/09, EU:C:2010:816��98, 99 Brompton Bicycle v Chedech / Get2Get [2020] EUECJ C-833/18, EU:C:2020:461�� 61 Cofemel-Sociedade de Vestuário SA v G-Star Raw CV C-683/17, EU:2019:721�� 24, 28, 40, 42, 43, 61, 63, 187, 230 Deckmyn (Johan) and Vrijheidsfonds VZW v Helena Vandersteen and Others, C-201/13, EU:C:2014:458, AG’s Opinion�� 57 Deckmyn (Johan) and Vrijheidsfonds VZW v Helena Vandersteen and Others, C-201/13, EU:C:2014:2132�� 28, 55, 57, 79, 178 Flos SpA v Semeraro Casa e Famiglia SpA (Arco lamp design case) [2011] EUECJ C-168/09, EU:C:2011:29, [2011] ECR I-0181��60, 61 Football Association Premier League and Others, C-403/08 and C-429/08, EU:C:2011:631�� 28 Football Dataco Ltd and Others v Yahoo! UK Ltd and Others [2012] EUECJ C-604/10, EU:C:2012:115��117 Football Dataco Ltd and Others v Sportradar GmbH and Sportradar AG Case C-173/11, EU:C:2012:642��156 Fundacion Gala-Salvador Dali and Visual Entidad de Gestion de Artistas Plasticos (VEGAP) v Societe des auteurs dans les arts graphiques et plastiques (ADAGP) and Others, Case C-518/08, EU:C:2010:191�� 92 Funke Medien NRW GmbH v Germany, Case C-469/17, EU:C:2018:870, AG’s Opinion��4, 50

xxii Table of Cases Funke Medien NRW GmbH v Germany, Case C-469/17, EU:C:2019:623��55, 79, 149, 178, 228, 233 Google France SARL & Google Inc v Louis Vuitton, Case C-236/08, EU:C:2010:159��152 GS Media BV v Sanoma Media Netherlands BV and Others [2016] EUECJ C-160/15, EU:C:2016:644��111 Infopaq International v Danske Dagblades Forening, Case C-5/08, EU:C:2009:465, [2009] ECR I-6569, [2010] FSR 20��15, 18, 28, 31, 32, 41, 42, 43, 49, 51, 54, 99, 124, 128, 135, 139, 158, 161, 163, 166, 186, 233 Innoweb (Judgment of the Court) [2013] EUECJ C-202/12, EU:C:2013:850��116 Levola Hengelo BV v Smilde Foods BV C-310/17, EU:C:2018:899��28, 40, 44, 163, 230, 231 Magill. See Radio Telefis Eireann (RTE) and Independent Television Publications Ltd (ITP) v Commission of the European Communities Nederlands Uitgeversverbond and Groep Algemene Uitgevers (Harmonisation of certain aspects of copyright and related rights in the information society – Abstract) [2019] EUECJ C-263/18, EU:C:2019:1111��124 Nintendo Co Ltd and Others v PC Box Srl and 9Net Srl, C-355/12, EU:C:2014:25��108, 180 Painer (Eva-Maria) v Standard Verlags GmbH and Others, Case C-145/10 EU:C:2011:798, [2011] ECR I-12533�� 32, 42, 43, 79, 101, 116, 128, 139 Pelham GmbH and Others v Ralf Hütter and Florian Schneider-Esleben, Case 476/17 EU:C:2019:624�� 56, 228, 233 Phil Collins and Others, Joined Cases C-92/92 and C-326/92 EU:C:1993:847, [1993] ECR I-5145��20, 90 Public Relations Consultants Association v Newspaper Licensing Agency Ltd & Ors (Judgment of the Court) [2014] EUECJ C-360/13��47, 110 Radio Telefis Eireann (RTE) and Independent Television Publications Ltd (ITP) v Commission of the European Communities (Magill) (Cases C-241/91 P and C-242/91 P) EU:C:1995:98, [1995] FSR 530�� 20 Renckhoff (Land Nordrhein-Westfalen v Dirk Renckhoff), C-161/17, EU:C:2018:634�� 42, 43, 152 Ryanair (Judgment) [2015] EUECJ C-30/14, EU:C:2015:10��116 SAS Institute v World Programming Ltd, Case C-406/10 EU:C:2012:259, [2012] 3 CMLR 4, Grand Chamber��4, 50 Sociedad General de Autores y Editores de Espana (SGAE) v Rafael Hoteles SA, Case C-306/05, EU:C:2006:764, [2006] ECR I-11519��154, 186 Spiegel Online GmbH v Volker Beck (Copyright and related rights – Judgment) [2019] EUECJ C-516/17, EU:C:2019:625��55, 56, 111, 228, 233 Svensson and Others v Retriever Sverige AB (Judgment of the Court) [2014] EUECJ C-466/12, EU:C:2014:76��111, 124

Table of Cases xxiii WIPO Sam Francis Estate v Magdison Fine Art Inc, Case No D2000-0673 (WIPO Arbitration and Mediation Center) (27 September 2000)��222 National Cases Common Law Jurisdictions Abraham Moon & Sons Ltd v Thornber & Ors [2012] EWPCC 37, [2013] FSR 17�� 30 Acohs Pty Ltd v Ucorp Pty Ltd [2012] FCAFC 16 (Full Federal Ct of Australia)��100 ‘Adam Ant’ case, See Merchandising Corp of America Inc v Harpbond AG Spalding & Brothers v AW Gamage Ltd (1915) 32 RPC 273 (HL)��223 AG v Guardian (No 2) [1988] 3 All ER 640�� 26 AMP Inc v Utilux Pty Ltd [1971] FSR 572 (HL)�� 62 Anacon Corporation Ltd and Another v Environmental Research Technology Ltd and Another [1994] FSR 659 (ChD)��27, 29 Antiquesportfolio.com plc v Rodney Fitch and Co Ltd [2001] FSR 23, [2001] ECDR 5, The Times (21 July 2000) (ChD)�� 127, 129, 136–137, 148, 150 Ash and Another v McKennitt and Others [2006] EWCA Civ 1714, [2008] QB 73��226 Ashdown v Telegraph Group Ltd [2001] EWCA Civ 1142, [2002] RPC 5�� 54, 149, 150, 178, 218, 227, 233 Associated Newspapers Ltd v HRH Prince of Wales [2006] EWCA Civ 1776, [2008] Ch 57��219 ATB Sales Ltd v Rich Energy Ltd & Anor [2019] EWHC 1207 (IPEC)��49, 54 Ate My Heart Inc v Mind Candy Ltd [2011] EWHC 2741 (Ch)��175 Austin v Columbia Gramophone Co [1917–23] MCC 398�� 4 Autospin (Oil Seals) Ltd v Beehive Spinning (A Firm) [1995] RPC 683 (ChD)�� 12, 16, 42, 232 Azumi Ltd v Zuma’s Choice Pet Products Ltd and others [2017] EWHC 609 (IPEC), [2017] ETMR 24��175 Barrett v Universal-Island Records Ltd and Others [2006] EWHC 1009 (Ch), [2006] EMLR 567��151 Bauman v Fussell [1978] RPC 485 (CA)�� 48 BBC Worldwide Ltd v Pally Screen Printing Ltd [1998] FSR 665 (ChD)�� 61 Beggars Banquet Records Ltd v Carlton Television Ltd [1993] EMLR 349 (ChD)��101 Billhöfer Maschinenfabrik GmbH v TH Dixon & Co Ltd [1990] FSR 105 (ChD)��30, 42 Blake A Field v Google Inc, 412 F.Supp.2d 1106 (D Nev 2006)��151 Bleistein v Donaldson Lithographing Co 188 US 239 (1903)�� 25 Bonz Group (Pty) Ltd v Cooke [1994] 3 NZLR 216 (NZCA)�� 38–39, 40 Bookmakers’ Afternoon Greyhound Services Ltd v Wilf Gilbert (Staffordshire) Ltd [1994] FSR 723 (ChD)��109 Brabourne (Lord) v Hough [1981] FSR 79 (ChD)��222 Bradbury, Agnew & Co v Day (1916) 32 TLR 349��4, 18

xxiv Table of Cases Bradbury v Hotten (1872) LR 8 Exch 1�� 55 Breville Europe Ltd v Thorn EMI Domestic Appliances Ltd (1985) [1995] FSR 77 (ChD)��33, 34 Bridgeman Art Library Ltd v Corel Corp, 25 FSupp 2d 421 (SDNY 13 November 1998); (2000) 5 Entertainment Law Review 104��126, 130, 153, 155, 160 Bridgeman Art Library Ltd v Corel Corp, 97 Civ 6232 (LAK), US District Court, SDNY, 26 February 1999��127, 128, 131–138 Bristol Conservatories Ltd v Conservatories Custom Built Ltd [1989] RPC 455 (CA)��220 Britain v Hanks (1902) 86 LT 765�� 36 British Horseracing Board Ltd v William Hill Organization Ltd [2005] EWCA Civ 863, [2005] RPC 35�� 94 British Leyland v Armstrong [1986] AC 577, [1986] RPC 279 (HL)�� 61, 150, 151 British Northrop Ltd v Texteam Blackburn Ltd [1974] RPC 57��30, 43 British Telecommunications and Others v One in a Million and Others [1998] 4 All ER 476 (CA)��224 Brown v Mcasso Music Production Ltd [2006] EMLR 3 (Patents Cty Ct)��157 Bulun Bulun and Another v R&T Textiles Pty Ltd [1998] FCA 1082, 41 IPR 513 (Fed Ct of Australia)��192 Bulun Bulun v Neljam (1988) (unreported) (Darwin Fed Ct, Australia)��190 Burge v Swarbrick [2007] HCA 17, (2007) 232 CLR 336 (High Ct of Australia)�� 39 Burke and Margot Burke Ltd v Spicers Dress Designs [1936] Ch 400 (ChD)�� 38 Burrow-Giles Lithographic Co v Sarony 111 US 53 (1884)��132 Campbell v Acuff-Rose Music (1994) 510 US 569��143–145, 177, 178 Campbell v MGN Ltd [2004] UKHL 22, [2002] 2 AC 457�� 226–227 Canon Kabushiki Kaisha v Green Cartridge Co (Hong Kong) Ltd [1997] AC 728 (PC HK)��150, 151 Cariou v Prince 714 F.3d 694 (2013) (2d Cir (US)); cert. denied 134 S. Ct. 618��54, 56, 161–162, 177 Carlton Illustrators v Coleman & Co Ltd [1911] KB 771 (KBD)�� 78 Carter v Helmsley-Spear, Inc, 861 F Supp 303 (SDNY 1994); 71 F.3d 77 (2nd Cir 1995)�� 86 Castillo et al v G&M Realty LP et al (EDNY 2018)��167 Castillo v G&M Realty LP, Nos 18-498-cv (L), 18-538-cv (CON), 2020 U.S. App. LEXIS 5228 (2d Cir. Feb. 20, 2020)��86, 164 Castillo v G&M Realty LP petition denied 5 October 2020, US Supreme Ct�� 86 CBS Songs Ltd and Others v Amstrad Consumer Electronics plc [1988] 1 AC 1013 (HL)��48, 156 Chadwick & Ors v Lypiatt Studio Ltd & Anor [2018] EWHC 1986 (Ch), [2019] WTLR 1��216 Cie Generale des Establissements Micheline-Michelin & Cie v CAW-Canada, 71 CPR 3d 348 (Federal Ct, Canada)��177 Clark (Alan) v Associated Newspapers [1998] RPC 261 (ChD)�� 175, 176, 220 Close v Sotheby’s, Inc, 894 F.3d 1061 (9th Cir 2018)�� 90 Coca-Cola Co v Gemini Rising Inc, 346 F.Supp 1183, 1193 (EDNY 1972)��174

Table of Cases xxv Coco v AN Clark (Engineers) Ltd [1969] RPC 41 (ChD)��218 Cohen, et al v G&M Realty LP, US Dist Ct, (EDNY) 2018 WL 851374�� 86 Confetti Records v Warner Music UK Ltd [2003] EWHC 1274 (Ch), [2003] EMLR 790��82, 83 Consorzio Del Prosciutto di Parma v Marks & Spencer plc [1991] RPC 351 (CA)��220 Coogi Australia Pty Ltd v Hysport International Pty Ltd [1998] FCA 1059 (Fed Ct of Australia)�� 39 Coward v Phaestos Ltd & Ors [2013] EWHC 1292 (Ch)��215 Creation Records Ltd v News Group Newspapers Ltd [1997] EMLR 444, (1997) 16 Tr L 544, The Times (29 April 1997) (ChD)�� 33–35, 38, 45, 159, 219, 230, 232 Creative Foundation v Dreamland Leisure Ltd & Ors [2015] EWHC 2556 (Ch), [2016] Ch 253��165, 166 Crocker v Papunya Tula Artists Pty Ltd (1983–85) 5 IPR 426 (Fed Ct of Australia)�� 78 Crosstown Music Company 1, LLC v Rive Droite Music Ltd & Others [2010] EWCA Civ 1222, [2012] Ch 68��236 Cuisenaire v Reed [1963] VR 719 (Vic Sup Ct, Australia)�� 37, 38, 164 Cuisenaire v SW Imports Ltd [1968] 1 Ex CR 493 (Exchequer Ct of Canada)�� 37 Davis (J&S) (Holdings) Ltd v Wright Health Group Ltd [1988] RPC 403 (ChD)�� 29, 33, 45, 231 De Maudsley v Palumbo [1996] FSR 447 (ChD)��219 Delves-Broughton (Emma) v House of Harlot Ltd [2012] EWPCC 29, [2012] Info TLR 343 (Patents Cty Ct)�� 83 Designers Guild v Russell Williams (Textiles) Ltd [1998] FSR 803 (ChD)�� 49, 50, 51, 52, Designers Guild v Russell Williams (Textiles) Ltd [2000] FSR 121 (CA)�� 49, 50, 51, 52, 233 Designers Guild v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416 (HL)�� 4, 5, 13, 49–54, 232, 233 Dicks v Yates (1881) 18 Ch D 76 (CA)�� 18 Donaldson v Becket (1774) 2 Bro PC 129; (1774) 4 Burr 2408; 17 Cobbett P Hist 954 (HL)�� 13–14, 21 Douglas and Others v Hello Ltd and Others [2005] EWCA Civ 595, [2006] QB 125��225 Durand (Andrew) v Molino (Mario) & Another [2000] ECDR 320 (ChD)��48, 205 Electronic Techniques (Anglia) Ltd v Critchley Components Ltd [1997] FSR 401 (ChD)��27, 48 Elvis Presley Trade Marks, Re [1997] RPC 543 (ChD)��223 England & Wales Cricket Board v Tixdaq [2016] EWHC 575 (Ch), [2016] RPC 21�� 49 ENTEC (Pollution Control) Ltd v Abacus Mouldings [1992] FSR 332 (CA)�� 4 Express Newspapers plc v Liverpool Daily Post & Echo plc [1985] 1 WLR 1089 (ChD)��102 Express Newspapers plc v News (UK) Ltd [1990] 1 WLR 1320 (ChD)��136

xxvi Table of Cases Exxon v Exxon Insurance Consultants International Ltd [1982] RPC 69 (CA)��161 Farmers Build Ltd v Carier Bulb Materials Handling Ltd [1999] RPC 461 (CA)�� 64 Feist Publications Inc v Rural Telephone Service Co 499 US 340 (1991) 113 L Ed 358 (1991) (Sup Ct)�� 4, 43, 132, 155 Fisher v Brooker [2006] EWHC 3239 (Ch), [2007] FSR 12; [2008] EWCA Civ 287, [2008] FSR 26��157 Flashing Badge Co Ltd v Groves [2007] EWHC 1372 (Ch), [2007] FSR 36�� 66 Foley (Brigid) Ltd v Elliott [1982] RPC 433 (ChD)��164 Football Association Premier League Ltd v Panini UK Ltd [2003] EWCA Civ 995, [2004] FSR 1�� 58 Football Association Premier League Ltd v QC Leisure (No 2) [2008] EWHC 1411 (Ch), [2008] FSR 32��109 Forensic Telecommunications Services Ltd v West Yorkshire Police & Anor [2011] EWHC 2892 (Ch), [2012] FSR 15�� 55 Foster v Mountford (1976–78) 29 FLR 233 (Northern Territory Supreme Ct, Australia)��190 Fournet v Pearson Ltd (1897) 14 TLR 82 (CA)�� 31 Fraser v Thames Television Ltd [1984] QB 44 (QBD)��219 Fraser-Woodward Ltd v British Broadcasting Corporation Brighter Pictures Ltd [2005] EWHC 472 (Ch), [2005] FSR 36��55, 58 Friedman v Guetta, No. CV 10–00014 DDP JCX, 2011 WL 3510890, 7 (C.D.Cal. May 27, 2011)��168 Frost and Reed v The Olive Series Publishing Company (1908) 24 TLR 649�� 47 Future Publishing Ltd v The Edge Interactive Media Inc & Ors [2011] EWHC 1489 (Ch), [2011] ETMR 50�� 165–166 Galerie Furstenberg v Caffaro 697 FSupp 1282 (SDNY 1988)��221 Gambart v Ball, 14 CB (NS) 306, 143 ER 463 (1863)�� 22 George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64, [1975] RPC 31 (HL); [1973] FSR 477 (CA); [1972] FSR 557�� 36–38, 39, 40, 45, 65, 221 George Ward (Moxley) Ltd v Richard Sankey Ltd and Another [1988] FSR 66 (ChD)�� 4 Glyn v Weston Feature Film Company [1916] 1 Ch 261�� 26, 174, 178 Gordon Fraser Gallery Ltd v Tatt [1966] RPC 505 (ChD)��220 Graves’ Case (1869) LR 4 QB 715�� 33, 99, 126, 127, 128–129, 131, 133–138 Green v Broadcasting Corporation of New Zealand [1989] 2 All ER 1056, [1989] RPC 700 (PC NZ))��44, 172 Greenfield Products Pty Ltd v Rover-Scott Bonnar Ltd (1990) 17 IPR 417 (Australian Fed Ct)�� 31 Guild (Shirin) v Eskander Ltd [2001] FSR 38 (ChD)�� 39 Haelan Laboratories v Topps Chewing Gum Inc (1953) 202 F 2d 866 (2d Cir 1953)��225 Hanfstaengl v Baines & Co [1895] AC 20; affirming sub nom Hanfstaengl v Empire Palace [1894] 2 Ch 1 (CA)�� 18 Hanfstaengl v Empire Palace. See Hanfstaengl v Baines & Co

Table of Cases xxvii Harris v Warren and Phillips (1918) 35 RPC 217�� 40 Harrison v Harrison [2010] EWPCC 3, [2010] ECDR 12�� 82–83, 84 Hearn v Meyer, 664 F Supp 832 (SDNY 1987)��132 Hi-Tech Autoparts Ltd v Towergate Two Ltd [2002] FSR 15 & 16 (Patents County Court)�� 31, 62, 232 Holman v Johnson (1775) 1 Cowp 341��166 Hourahine v Everdell & Mitchard (Unreported)�� 39 HRH Prince of Wales v Associated Newspapers Ltd [2006] EWHC 522 (Ch), [2008] EMLR 3; [2006] EWCA Civ 1776, [2008] EMLR 4 (CA)�� 55 Hubbard v Vosper [1972] 2QB 84 (CA)�� 55 Hughes v Design Look Inc 693 FSupp 1500 (SDNY 1988)��221 Hyde Park Residence Ltd v David Yelland and Others [1999] RPC 655 (ChD)��150 Hyde Park Residence Ltd v David Yelland and Others [1999] RPC 655 (ChD), [2000] EWCA Civ 37, [2001] Ch 143, [2000] 3 WLR 215, [2000] RPC 604�� 26, 54, 149, 150–151, 166 Interlego AG v Tyco Industries Inc [1987] FSR 409 (HKCA)�� 31 Interlego AG v Tyco Industries Inc [1989] AC 217, [1988] 3 All ER 949, [1988] RPC 343 (PC HK)��30, 42, 134, 135, 136, 160–161 International News Service v Associated Press (1918) 248 US 215 (SC)�� 12 IPC Magazines Ltd v MGN Ltd [1998] FSR 431 (ChD)�� 58 IPC Media Ltd v Highbury-Leisure Publishing Ltd [2004] EWHC 2985 (Ch), [2005] FSR 20�� 27 Irvine (Edmund) Tidswell Ltd v Talksport Ltd [2002] EWHC 367 (Ch), [2002] EMLR 32��222, 225 Islestarr Holdings Ltd v Aldi Stores Ltd [2019] EWHC 1473 (Ch)�� 45, 158, 165 ITV Broadcasting Ltd & Others v TV Catch Up Ltd [2010] EWHC 3063 (Ch), [2011] FSR 16��154, 186 James Arnold and Co Ltd v Miafern and Others [1980] RPC 397 (ChD)�� 31 Jo-Y-Jo Ltd v Matalan Ltd [2000] ECDR 198 (ChD)�� 66 Joy Music Ltd v Sunday Pictorial Newspapers (1920) Ltd [1960] 2 QB 60 (QBD)��174 John Mullere & Co v New York Arrows Soccer Team, 802 F.2d 989 (8th Cir 1986)��163 KARO STEP Trade Mark [1977] RPC 255 (ChD)�� 30 Kaye v Robertson [1991] FSR 62 (CA)��222 Kelley v Chicago Park District (635 F.3d 290 (7th Cir. 2011)�� 44, 169, 170 Kelly (Leslie A) v Arriba Soft Corpn US District Court, CD Cal, Southern Division, Case No SA CV 99-560 GLT [JW], 15 December 1999�� 142–149, 152 Kelly (Leslie A) v Arriba Soft Corpn US Court of Appeals for the Ninth District, No 00-55521 (280 F.3d 934 (9th Cir 2002)��146 Kelly (Leslie A) v Arriba Soft Corpn 336 F.3d 811 (9th Circuit 7 July 2003)��146 Kelly (Leslie A) v Arriba Soft Corpn US District Court, Central District of California, 18 March 2004��146 Kenrick & Co v Lawrence & Co (1890) 25 QBD 99�� 30, 53, 163, 232 Kleeneze Ltd v DRG (UK) Ltd [1984] FSR 399 (ChD)�� 53

xxviii Table of Cases Kogan v Martin & Ors (Rev 1) [2019] EWCA Civ 1645, [2020] FSR 3�� 43 Komesaroff v Mickle and Others [1988] RPC 204 (Victoria Sup Ct, Australia)��37, 45 Krisarts SA v Briarfine Ltd [1977] FSR 557�� 48 Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465, [1964] 1 WLR 273 (HL)��12–13, 14, 48, 53, 166 Lakedreax v Taylor, 932 F2d 1103 (5th Cir 1991)��133 Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd and Another [2004] EWCA Civ 886, [2005] RPC 6�� 66 Laugh It Off Promotions CC v South African Breweries International (Finance) BV t/a Sabmark International and Another (CCT42/04) [2005] ZACC 7, 2006 (1) SA 144 (CC), 2005 (8) BCLR 743 (CC) (27 May 2005)��175 LB (Plastics) Ltd v Swish Products Ltd [1979] RPC 551 (HL)�� 4 Leibovitz v Paramount Pictures Corp, 137 F 3d 109 (2d Cir, 1998)��132 Leigh v Warner Bros 10 FSupp 2d 1371 (SD Ga 1998)��221 Lerose Ltd and Another v Hawick Jersey International Ltd [1974] RPC 42 (ChD)�� 30 Lucasfilm Ltd v Andrew Ainsworth [2008] EWHC 1878 (Ch), [2009] FSR 2��34, 35–36, 39, 40, 62, 170, 218, 219, 221, 231 Lucasfilm Ltd v Andrew Ainsworth [2009] EWCA Civ 1328, [2010] Ch 503��27, 29, 31, 33–34, 35, 36, 39, 61, 62, 159 Lucasfilm Ltd v Andrew Ainsworth [2011] UKSC 39, [2012] 1 AC 208�� 25, 31, 34, 35, 62–63, 159 Mabo v Queensland (1992) 175 CLR 1 (High Ct of Australia)��190 Mackie Designs Inc v Behringer Specialised Studio Equipment (UK) Ltd [1999] RPC 717 (ChD)��27, 61 Mars UK Ltd v Teknowledge Ltd [2000] FSR 138 (ChD)��150 Martin v City of Indianopolis, US Ct of Appeals, 7th Cir 192 F.3d 608 (1999)�� 86 Martin v Polyplas [1969] NZLR 1046��136 Massine v de Basil [1936–45] Mac CC 223 (CA)��204 Mazer v Stein 347 US 201 (1954), 74 SCt 460, 98 LEd 630 (1954)��10, 12 Mei Fields Designs Ltd v Saffron Cards and Gifts Ltd [2018] EWHC 1332 (IPEC), [2018] FSR 33�� 49 Meikle v Maufe [1941] 3 All ER 144�� 41 Merchandising Corp of America Inc v Harpbond (‘Adam Ant’ case) [1983] FSR 32 (CA)�� 30, 43, 44, 45, 221 Merlet v Mothercare plc [1986] RPC 115 (ChD)��38, 39 Merlet v Mothercare plc [1986] RPC 129 (CA)�� 159 Metix (UK) Ltd and Another v GH Maughen (Plastics) Ltd and Another [1997] FSR 718 (ChD (Patents Ct))��29, 34, 45, 159, 231 Millar & Lang Ltd v Polak [1908] 1 Ch 433 (ChD)�� 41 Millar v Taylor (1769) 4 Burr 2303; 98 ER 252 (Ct of King’s Bench)��13–14 Milpurrurru and Others v Indofurn Pty Ltd and Others (1994) 130 ALR 659 (Fed Ct of Australia, NT Dist Registry)�� 190, 191, 192

Table of Cases xxix Morris (Dennis) v Thierry Guetta, et al, No. LA CV12–00684 JAK (RZx) Feb. 4, 2013 (US District Court, CD California)��168 Morrison Leahy Music Ltd and Another v Lightbond Ltd and Others [1993] EMLR 144 (ChD)��80, 81 Mosley v News Group Newspapers Ltd [2008] EWHC 1777 (QB), [2008] EMLR 20��226, 227 Murray v Big Pictures (UK) Ltd [2008] EWCA Civ 446, [2009] Ch 481��226 Navitaire Inc v Easyjet Airline Co and Anor [2004] EWHC 1725 (Ch), [2006] RPC 3�� 28, 98–99 Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 (Pat), [2018] FSR 3�� 64 Newspaper Licensing Agency Ltd & Others v Meltwater Holding BV & Others [2010] EWHC 3099 (Ch), [2011] RPC 7; [2011] EWCA Civ 890, [2012] RPC 1��186 Newspaper Licensing Agency Ltd v Marks and Spencer PLC [2000] EWCA Civ 179, [2000] 4 All ER 239, [2000] 3 WLR 1256��27, 49 Newton v Cowie and Another [1827] 4 Bing 234, 130 ER 759��129, 136 Nichols v Universal Pictures Corporation 45 F 2d 119 (1930)�� 51 Norowzian v Arks Ltd and Others (No 1) [1998] FSR 394 (ChD)��172 Norowzian v Arks Ltd and Others (No 2) [1999] FSR 79 (ChD); [2000] FSR 363, [2000] EMLR 67 (CA)��171, 172–173, 221 Norowzian v Arks Ltd and Others (No 2) [2000] FSR 363 (CA)�� 179, 230, 233 Nova Productions Ltd v Mazooma Games Ltd & Ors Rev 1 [2006] EWHC 24 (Ch), [2006] RPC 14��102 Nova Productions Ltd v Mazooma Games Ltd [2007] EWCA Civ 219, [2007] RPC 25��49, 99 Pasterfield v Denham and Another [1999] FSR 168 (Plymouth Cty Ct)�� 81–82, 83, 149–150 Perfect 10 v Google, Inc, US District Court, Central District of CA, CV 04-9484 AHM (SHx), 26 February 2006�� 147–149 Perfect 10 v Google, Inc, 508 F.3d 1146 (9th Cir. 2007)��147 Perfect 10 v Google, Inc, General Case No Cv 04-9484 Ahm (shx) (26 July 2010), US District Court Central District of California Civil Minutes��148 Peter Pan Fabrics, Inc v Martin Weiner Corp 274 F.2d 487 (2d Cir 1960)�� 49 Phillips v Pembroke Real Estate, Inc., 459 F. 3d 128 (1st Cir.2006)��170 Picasso Case. See Visual Arts and Galleries Association v Various John Does Preston v Raphael Tuck & Sons Ltd [1926] 1 Ch 667 (ChD)�� 78 Prince Albert v Strange (1849) 2 De Gex & Sm 652, 64 ER 293 (Ct of Ch) (1849) 1 Mac & G25, 41 ER 1171 (Ct of QB)��218 Pro Sieben Media AG v Carlton UK TV Ltd [1999] FSR 160, The Times (7 January 1999) (CA)�� 55 Public Relations Consultants Association Ltd v Newspaper Licensing Agency Ltd & Ors [2013] UKSC 18, [2013] RPC 19��47, 110 Pushman v New York Graphic Society Inc 287 NY 302, 39 NE 2d, 249 (1942)�� 5 R Griggs Group Ltd & Others v Evans and Others [2005] EWCA Civ 11, [2005] FSR 31��204

xxx Table of Cases R v Gibson (Richard Norman) [1990] 2 QB 619 (CA Crim Div)�� 26 Racing Partnership Ltd & Ors v Done Brothers (Cash Betting) Ltd & Ors [2019] EWHC 1156 (Ch), [2020] Ch 289��116 Radley Gowns Ltd v Costas Spyrou [1975] FSR 455 (ChD)��38, 231 Ray (Robin) v Classic FM plc [1998] FSR 622 (ChD)�� 150, 151, 205 Reckitt & Coleman Products Inc v Borden Inc [1990] 1 WLR 491 (HL)��220 Reject Shop plc v Manners [1995] FSR 870 (CA)�� 43, 100, 139 Response Clothing Ltd v Edinburgh Woollen Mill Ltd (Rev 1) [2020] EWHC 148 (IPEC), [2020] FSR 25��24, 28, 30, 40, 66, 230 Rogers v Koons, 960 F.2d 301 (2d Cir), 506 US 934 (1992)�� 132, 160, 177 Romm Art Creations Ltd v Simcha International Ltd 786 Fsupp 1126 EDNY (1992)��221 Roper v Streeter (1672) Skinner 233, 90 ER 107�� 11 Salinger v Random House Inc (1987) 811 F 2d 90 (CA 2, 1987)�� 17 Saltman Engineering Co Ltd v Campbell Engineering Co Ltd [1948] 65 RPC 203 (CA)��219 Sanchez v Stein No 80CV1208 (1980)��220 Sandman (Aubrey Max) v Panasonic UK Ltd & Matsushita Electric Industrial Co Ltd [1998] FSR 651 (ChD)�� 27 Saphena Computing Ltd v Allied Collection Agencies Ltd [1995] FSR 616 (CA)��204 SAS Institute Inc v World Programming Ltd [2013] EWCA Civ 1482, [2014] RPC 8�� 42, 49, 164 Sawkins v Hyperion Records Ltd [2005] EWCA Civ 565, [2005] 3 All ER 636�� 78, 136, 138 Schweppes Ltd and Others v Wellingtons Ltd [1984] FSR 210 (ChD)��175, 176 Sega Enterprises Ltd v Galaxy Electronics Pty Ltd [1997] FCA 403, (1997) 145 ALR 21 (Federal Ct, Australia)��180 Sehgal v Union of India [2005] FSR 39, 829 (High Ct of New Delhi, India)��76, 83 Shelley Films Ltd v Rex Features Ltd [1994] EMLR 134 (ChD)�� 38, 219, 231 Smith v Montoro 648 F.2d 602 (9th Cir, 1981)��220 Snow v The Eaton Centre (1982) 70 CPR (2d) 105, (Ontario HCJ, Canada)��80–81 SPE International Ltd v Professional Preparation Contractors (UK) Ltd [2000] EIPR N-19 (ChD)�� 25, 42, 163 Specht v Netscape Communications 306 F 17 (2d Cir 2002)��155 Star Athletica, LL. v Varsity Brands, Inc, 137 S. Ct. 1002, 197 L. Ed. 2d 354 (2017)�� 60 Stephenson, Blake & Co v Grant, Legros & Co Ltd (1916) 33 RPC 406�� 41 T & A Textiles and Hosiery Ltd v Hala Textile UK Ltd [2015] EWHC 2888 (IPEC)�� 42 Tate v Fullbrook [1908] 1 KB 821��44, 231 Taverner Rutledge v Specters [1959] RPC 355 (CA)�� 20 Taylor v Maguire [2013] EWHC 3804 (IPEC), [2014] ECDR 4�� 30 Technomed Ltd & Anor v Bluecrest Health Screening Ltd & Anor [2017] EWHC 2142 (Ch), [2018] FSR 8�� 31

Table of Cases xxxi Temple Island Collections Ltd v New English Teas Ltd & Anor [2012] EWPCC 1, [2012] FSR 9 (Patents Cty Ct)��32–33, 48, 54, 128 Thames & Hudson Ltd v Design and Artists Copyright Society Ltd and Others [1995] FSR 153 (ChD)�� 47 Théberge v Galerie d’Art du Petit Champlain Inc (2002) SCC 34 (Canadian Supreme Ct, 28 March 2002)�� 47 Tidy v Trustees of the Natural History Museum and Another (1995) 39 IPR 501; [1996] 3 EIPR D-81�� 80–81, 83, 149 Time Warner Entertainments Company LP v Channel Four Television Corporation Plc and Another [1994] EMLR 1 (CA)�� 55 Twentieth Century Fox Film Corp v Anglo-Amalgamated Film Distributors (1965) 109 SJ 107��174 Twentieth Century Fox Film Corporation & Another v Newzbin Ltd [2010] EWHC 608 (Ch), [2010] FSR 21�� 154, 156, 186 United Pacific Industries Pty Ltd v Madison Sports Pty Ltd [1998] FCA 614 (Fed Ct of Australia)�� 39 University of London Press v University Tutorial Press [1916] 2 Ch 601 (ChD)��12, 41–42, 190, 233 Vane v Famous Players Film Co Ltd [1923–28] MCC 374�� 4 Vermaat (t/a Cotton Productions) v Boncrest Ltd (No 1), The Times (23 June 2000), [2001] FSR 5, [2000] EIPR N-151, (July 2000) 3 Intellectual Property Lawyer (ChD)��30, 39, 40, 42, 231, 232 Viacom International Inc v YouTube Inc, No 07 Civ 2103 (June 23, 2010) (SDNY 2010)��157 Visual Arts and Galleries Association v Various John Does (Picasso Case) 80 Civ 4487 (SDNY 1980)��222 Vitof Ltd v Altoft [2006] EWHC 1678 (Ch)��215 Walker (Charles) & Co v British Picker Co [1961] RPC 57�� 30 Walter v Lane [1900] AC 539 (HL)��18, 136 Warner v Gestetner Ltd (unreported)��204 Warnink (Erven) BV v Townend (J) & Sons (Hull) Ltd [1980] RPC 31 (HL)��220 Watts v Lord Aldington (1993) [1999] LTR 578 (CA)��150 Weller and others v Associated Newspapers Ltd [2015] EWCA Civ 1176, [2016] 3 All ER 357��226, 227 Wham-O Manufacturing Co v Lincoln Industries Ltd [1985] RPC 127 (NZCA)��31, 33 White v Mellin [1895] AC 154 (HL)�� 40 Wildash v Klein [2004] NTSC 17, (2004) 61 IPR 324 (Northern Territory Sup Ct, Australia)�� 36 Williams v Settle [1960] 1 WLR 1072 (CA)��192 Williamson Music Ltd v Pearson Partnership Ltd [1987] FSR 97 (ChD)�� 176, 177, 178 Your Response Ltd v Datateam Business Media Ltd [2014] EWCA Civ 281, [2015] QB 41��116 Yumbulul v Reserve Bank of Australia [1991] FCA 448, (1991) 21 IPR 481 (Fed Ct of Australia, NT Dist Registry)��191

xxxii Table of Cases Other Jurisdictions Austria C Villas, Oberster Gerichtshof, OGH (Austrian Supreme Court), 10 July 2001, GRUR Int 2002, 452, IIC 2003, 223��114 Copyright Collecting Society, Re, 23 November 1999, [2000] EIPR N-63 (Austrian Supreme Ct)�� 68 Belgium Copiepresse v Google, 06/10.928/C, Ct of First Instance, Brussels (13 January 2007); Cour d’Appel de Bruxelles (6 May 2011)��151 France Bernard Buffet, Cour d’Appel, Paris, Recuil Dalloz D 1962 570 (6 July 1962)�� 76 Bezombes (25 November 1980) (1981) 108 RIDA 162, Paris CA�� 76 Bouvier v Cassigneul Cass Crim (13 Dec 1995), (1996) RIDA 306�� 75 Eden v Whistler, (1898) DP 1900 I 497, Cour de Cassation�� 75 Hong v Saltpetriere Chapel Assn (10 April 1995) (1995) 166 RIDA 316, CA Paris, 1 Ch�� 76 Huston v Turner Entertainment (1991), 58 IIC Vol 23, 702, Cour de Cassation��74, 81 Huston (Civil court, 1, 28 May 1991, JCP 1991, II 21731��118 Renault v Dubuffet [1983] ECC 453, Cour de Cassation�� 75 Sté Turner Entertainment c Héritiers Huston, CA Versailles, ch civ réunies, 19 December 1994, (1995) 164 RIDA 389��118 Vlaminck, Cour de Paris, judgment of 19 April 1961, JCP 111N 12183 (1961)�� 76 Waiting for Godot TGI, Paris, 3e ch, RIDA, 1993, 155, 225�� 75 Germany Alcolix BGH (1994) GRUR 206, 208��178 Google File Number I ZR 69/08 (29 April 2010) Federal Supreme Ct��151 Joseph Beuys Case judgment of 16 June 1991, I ZR 24/92, GRUR 1994, 798, BGH�� 90 Joseph Beuys Case BGH NJW 1994, 2889, Federal High Ct�� 87 Joseph Beuys Case (2010) Regional Ct Düsseldorf, 29 September 2010�� 69 Oberammergauer Passionspiele (1986) BGH GRUR 1986, 458�� 25 Pictures on the Berlin Wall, Re (Case I ZR 68/93) [1977] ECC 553��166 Sweden Svanberg (Max Walter) v Eriksson (Leif) (1979) EIPR D-93 (Supreme Ct & Cty Ct of Appeal, Sweden)��176

TABLE OF LEGAL INSTRUMENTS European Union Agreement on the Withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (19 October 2019)��208 Directive 91/250/EEC 14 May 1991 on the legal protection of computer programs [1991] OJ L122/42 (Software Directive)��98, 123 Art 1(2)�� 99 Art 9(1)(2)��121 Directive 92/100/EC of 19 November 1992 on rental right and lending right and on certain rights related to copyright in the field of intellectual property [1992] OJ L346/61 (Rental and Lending Right Directive)�� 68 Recital 13�� 68 Directive 93/98/EEC of 29 October 1993 harmonising the term of protection of copyright and certain related rights, [1993] OJ L290/9 (Term Directive)�� 46, 66, 67, 70 Art 1�� 93 Art 4�� 67 Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases, [1996] OJ L077/20 (Database Directive)�� 46, 67, 114, 117 Recital 40��106 Recital 41��106 Art 3(1)��117 Art 15��121 Directive 98/71/EC of 13 October 1998 on the legal protection of designs [1998] OJ L289/28 (Designs Directive)�� 59, 61, 62, 63, 65 Recital 14�� 65 Art 1�� 65 Art 7�� 65 Art 17��59, 66 Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market [2000] OJ L178/1 (Electronic Commerce Directive)��112, 122, 151, 234 Recital 18��112 Art 12��151

xxxiv Table of Legal Instruments Arts 12–15��151 Art 13��151 Art 14�� 112, 151–152 Art 15��112, 122 Art 21��151 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society [2001] OJ L167/10 (Information Society Directive)��28, 42, 113, 121, 122, 123, 152, 178, 180, 186, 228, 230, 231, 234 Recital 19��78, 79 Recital 23��154, 186 Recital 45��121 Art 2��47, 57, 109, 121, 186 Art 2(a)��230 Art 3�� 57, 113, 122, 186 Art 3(h)��189 Art 5��110, 121 Art 5(1)�� 110, 121, 152 Art 5(2)–(5)��121 Art 5(3)(j)�� 57 Art 5(3)(k)�� 57 Art 5(5)��110 Art 6(4)��121, 122 Art 7��181 Art 9��121 Ch III��122 Directive 2001/84/EC of the European Parliament and of the Council of 27 September 2001 on the resale right for the benefit of the author of an original work of art [2001] OJ L272/32 (Resale Right Directive)�� 90–94, 96, 207, 208, 210, 211 Recitals 1–3�� 91 Recital 7��93, 96 Recital 15�� 90 Recital 17�� 91 Recital 18�� 91 Recital 21�� 91 Recital 23�� 91 Recital 27�� 92 Recital 28�� 93 Art 1(1), (2)�� 91 Art 1(3)�� 91 Art 1(4)�� 92 Art 2��91, 229 Art 2(1)��92, 210

Table of Legal Instruments xxxv Arts 3–5�� 92 Art 2(2)��210 Art 6�� 92 Art 6(1)�� 92 Art 6(2)�� 93 Art 7�� 93 Art 7(2)�� 93 Art 8�� 93 Art 9��93, 212 Art 12��93, 94 Ch III – Final Provisions (Arts 10–14)�� 93 Directive 2012/28/EU of the European Parliament and of the Council of 25 October 2012 on certain permitted uses of orphan works [2012] OJ L299/5�� 182–184 Art 1��183 Art 1(1)��183 Art 3��182 Art 6(2)��183 Annex��183 Directive 2014/26/EU of the European Parliament and of the Council of 26 February 2014 on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market [2014] OJ L84/72��197 Directive (EU) 2019/790 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC (17 April 2019) [2019] OJ L130/92 (‘DSM Copyright Directive’)�� 78, 112, 122, 123, 124, 127–128, 140–141, 152, 187, 189, 234, 235 Recital 23�� 78 Recital 37�� 78 Recital 53�� 128, 140, 141 Art 14��124, 128, 140, 141 Art 15��235 Art 17��235 EC Treaty Art 95�� 90 Political Declaration setting out the framework for the future relationship between the European Union and the United Kingdom [2019] OJ CI C384/178 Pt VII Intellectual Property (paras 42–45)��207 para 43�� 96 Regulation 6/2002/EC of 12 December 2001 on Community Designs [2002] OJ L3/1 (Designs Regulation)��63, 65 Art 96�� 66

xxxvi Table of Legal Instruments Regulation (EU) No 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) [2015] OJ L341/21 (Trade Mark Regulation) Recital 21��175 Regulation (EU) 2016/679 of the European Parliament and of the Council of 27 April 2016 on the protection of natural persons with regard to the processing of personal data and on the free movement of such data, and repealing Directive 95/46/EC [2016] OJ L 119/1 (General Data Protection Regulation)��225 International Berne Convention for the Protection of Literary and Artistic Works 1886��3, 15, 22, 24, 45, 46, 58, 59, 69, 72, 74, 75, 78, 84, 85, 96, 100, 118, 121, 131, 158, 176, 209 Art 2��24, 28 Art 2(1)�� 59 Art 2(7)�� 59 Art 3(3)�� 67 Art 5(2)�� 46 Art 6 bis��74, 75, 76, 79, 82, 83 Art 6 bis(1)�� 74 Art 6 bis(2), (3)�� 75 Art 9(2)��121 Art 14 bis��173 Art 14 ter��89, 93, 96 Art 14 ter(1)–(3)�� 89 Doha Declaration (20 November 2001) para 19��194 European Charter of Fundamental Rights��141 Art 11��227 European Convention on Human Rights (ECHR) Art 8�� 219, 226, 227 Art 8(1), (2)��226 Art 10��226, 227 Art 10(1), (2)��226, 227 Paris Convention for the Protection of Intellectual Property�� 59 Art 5quinquies�� 59 United Nations Convention on Biological Diversity��194

Table of Legal Instruments xxxvii UNESCO Convention for the Safeguarding of the Intangible Cultural Heritage (2003)��195 UNESCO ‘Recommendation on the Safeguarding of Traditional Culture and Folklore’ 1989��193 Universal Copyright Convention (UCC) 1952�� 22, 46, 131 Art III(1)�� 46 WIPO Beijing Treaty on Audiovisual Performances (adopted June 2012) (BTAP)�� 84 World Intellectual Property Organization (WIPO) Copyright Treaty 1996�� 78, 113, 120, 122 Art 2�� 50 Art 8��113 WIPO Performances and Phonograms Treaty (WPPT) 1996�� 78, 84, 120, 122 World Trade Organization (WTO) Agreement on the Trade-Related Aspects of Intellectual Property (TRIPS) 1994 OJ [1994] L336/213��4, 46 Art 9.2��4, 50, 164 Arts 22–24��193 National Australia Administration and Probate Act 1988 (NT)��191 Copyright Act 1968 (Cth)��100 s 35(2)��192 Resale Royalty Right for Visual Artists Act 2009 (No 125, 2009) (Cth)�� 96 Canada Copyright Act, RSC 1970 s 12(7)�� 80 Copyright Act, RSC 1985 s 3(1)(g)�� 69 China Copyright Law (Draft Revision for Review) publicised 6 June 2014�� 96 France Authors’ Rights Law (13–19 January 1791)�� 15 Authors’ Rights Law (19 July 1793)�� 15 Intellectual Property Code Art L 121-2�� 75 Art L 121-4�� 76 Art L 121-5�� 69 Art L 122-2�� 69 Art L 122-5��188

xxxviii Table of Legal Instruments India Copyright Act 1957 s 57�� 76 Italy Code on Cultural Heritage and Landscape Arts 107, 108��188 Switzerland Federal Law on Copyright Art 15�� 76 United Kingdom Artist’s Resale Right Regulations 2006 (SI 2006/346)�� 94, 207, 208, 209, 211, 212, 214, 215 Reg 3(1)�� 95 Reg 3(3)�� 94 Reg 3(4)��210 Reg 3(5)�� 95 Reg 9(2)��214 Reg 10��211 Reg 12(3), (4)�� 94 Reg 13�� 94 Reg 13(3)��210 Reg 14�� 94 Reg 14(1)��208 Reg 16��95, 214 Reg 17�� 94 Sch 1�� 94 Sch 2�� 95, 207, 209 Artist’s Resale Right (Amendment) Regulations 2009 (SI 2009/2792)��94, 207 Artist’s Resale Right (Amendment) Regulations 2011 (SI 2011/2873)��207 Charities Act 1993 s96(1)�� 95 Charities Act (Northern Ireland) 1964 s 35�� 95 Collective Management of Copyright (EU Directive) Regulations 2016 (SI 2016/221)��197 Computer Misuse Act 1990��242 Consumer Rights Act 2015��243 Contracts (Rights of Third Parties) Act 1999��243 Copyright Act 1911�� 21, 22, 36, 41, 204 s 1(2)�� 18

Table of Legal Instruments xxxix Copyright Act 1956�� 22, 47, 204 s 3�� 30 s 3(1)(a)�� 29 s 3(1)(c)�� 36 s 4(3)��204 s 43�� 76 s 48(1)�� 33 Copyright and Related Rights Regulations 1996 (SI 1996/2967)��66, 67 reg 16(2)�� 67 Copyright and Related Rights Regulations 2003 (SI 2003/2498)��113 Copyright and Rights in Databases Regulations 1997 (SI 1997/3032)��67, 114 Reg 6��114 Reg 13(1)�� 68 Reg 14�� 67 Reg 14(2)�� 68 Reg 15�� 68 Reg 16��67, 154 Reg 17�� 67 Reg 17(3)�� 68 Reg 18�� 68 Reg 20�� 68 Regs 29, 30�� 67 Copyright and Rights in Performances (Certain Permitted Uses of Orphan Works) Regulations 2014 (SI 2014/2861)��183 Copyright and Rights in Performances (Licensing of Orphan Works) Regulations 2014 (SI 2014/2863)��184 Copyright, Designs and Patents Act (CDPA) 1988�� 1, 5, 22, 26, 27, 28, 29, 33, 34, 35, 41, 43, 48, 54, 61, 62, 64, 66, 68, 76, 77, 80, 82, 83, 99, 101, 102, 109, 150, 158, 159, 160, 163, 177, 179, 186, 204, 213, 214, 230, 232, 236 Pt I Copyright Ch III Acts Permitted in relation to Copyright Works�� 54, 122, 233 Ch IV Moral rights��3, 77 Ch VI Remedies for Infringement�� 48 Pt II – Rights in Performances Ch 3 Moral rights (ss 205C–205N)�� 84 Pt III Design Right��62, 64 s 1��27, 179 s 1(1)(a)�� 42 s 2�� 59 s 3�� 27 s 3(1)�� 67 s 3(2)��44, 172

xl Table of Legal Instruments s 3A(1), (2)�� 67 s 4��27, 35, 41, 62, 63, 179, 231 s 4(1)��230 s 4(1)(a)��35, 42, 54 s 4(1)(c)��40, 41, 65 s 4(2)�� 27, 29, 30, 32, 33, 41, 99, 100 s 4(2)(a), (b)�� 29 s 5B��179, 180 s 8�� 3 s 9��180 s 9(1)��43, 232 s 9(3)��100, 101, 102, 104, 232 s 10�� 43 s 10(1)��157 s 11�� 47, 204, 214 s 11(2)��204, 215 s 12(3)��166 s 13(3)�� 48 s 16�� 3, 47, 49, 51, 54, 109, 148, 154, 176 s 16(1)�� 49 s 16(2)��48, 154 s 16(3)�� 48, 49, 233 s 17��51, 54 s 17(1)��180 s 17(2)�� 47, 109, 149 s 17(4)��180 s 17(6)�� 47, 109, 149 s 18��47, 48, 68 s 18A(3)(b)�� 68 s 20��113, 149 s 20(2)��154, 186 s 23(c)�� 69 s 28A��47, 110 s 29��149, 233 ss 29–30�� 55 s 29A��105, 234 s 30�� 55, 149, 176, 233 s 30(1ZA)��56, 203 s 30(4)�� 56 s 30A��57, 233 s 30A(1), (2)�� 56 s 31��58, 177 s 44B��183 s 51��61, 66 s 51(3)�� 61 s 52�� 37, 61, 62, 63

Table of Legal Instruments xli ss 54–55�� 41 s 57��181, 191 s 62�� 41, 57, 188 s 63��57, 116 s 64�� 58 s 65�� 41 s 77�� 78, 149, 240, 245 s 77(4)(a)��149 s 78�� 77 s 78(4)(c)�� 77 s 79��78, 117 s 79(2)��102 s 79(3)��215 s 79(6)��150 s 80��78, 80, 82, 83, 149, 240 s 80(2)��79, 80, 82 s 80(2)(a)�� 80 s 80(2)(b)��80, 149 s 81��78, 117 s 81(2)��102 s 81(4)��150 s 82�� 78, 117, 215 s 82(2)��215 s 84��79, 240 s 84(1)��176 s 84(6)�� 78 s 85��240 ss 86, 87�� 77 s 90��213 s 90(1), (2)��236 s 90(3)�� 5, 204, 236 s 92�� 199, 205, 237 s 92(1)��237 s 93��5, 213 s 95��213 s 95(5)��213 s 97(2)�� 48 s 101��205, 237 s 103�� 79 s 104�� 46 ss 153–156�� 46 s 154(4)�� 46 s 163��214 s 165��214 s 168��214 s 170(2)�� 67

xlii Table of Legal Instruments s 171(3)��150 s 173(2)��157 s 175��46, 213 s 175(1)(b)��117 s 175(4)(a)(ii)��117 s 175(4)(b)��46, 213 s 175(4)(b)(iv)��117 s 178�� 27, 41, 101 s 180(2)��180 s 182��180 s 182(2)��180 s 213�� 64 s 216�� 64 s 226�� 64 s 236�� 64 s 296ZA(1)��154 s 296ZE��122 Sch 1�� 22 para 23�� 77 para 23(a), (b)�� 77 Sch ZA1 Certain Permitted Uses of Orphan Works��183 Pt 1 para 5��183 Pt 1 para 5(9)�� 18 Pt 2��183 Copyright (Industrial Process and Excluded Articles) (No 2) Order 1989 (SI 1989/1070)�� 62 Art 3�� 62 Criminal Damage Act 1971 s 1��166 Data Protection Act 1998��226, 227 Digital Economy Act 2010��123 Duration of Copyright and Rights in Performances Regulations 1995 (SI 1995/3297)��46–47 Engraving Copyright Act 1734 Stat 8 Geo II, c 13 (Hogarth’s Act)��21, 206 Enterprise and Regulatory Reform Act 2013��184 European Union (Withdrawal) Act 2018�� 124, 187, 208 European Union (Withdrawal Agreement) Act 2020��124, 208 Fine Arts Copyright Act 1862 Stat 25 & 26 Vict, c 68��20, 22, 74, 128, 129, 138 s 1�� 128–129 s 7�� 78 Human Rights Act 1998��150 Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019 (SI 2019/605)�� 66, 68, 207 International Copyright Act 1852, Stat 15 & 16 Vict c 12�� 21 s 14�� 21 Law of Property Act 1925��236

Table of Legal Instruments xliii Law of Property (Miscellaneous Provisions) Act 1994��236 Partnership Act 1890 s 20(1)��215 Performances (Moral Rights, etc) Regulations 2006 (SI 2006/18)�� 84 Registered Designs Act 1949��64, 65 s 1�� 62 Stat 6 Geo III 1766, c 38�� 21 s 2�� 21 Stat 17 Geo III 1777, c 57��21, 22 Stat 27 Geo III 1787, c 38�� 21 Stat 38 Geo III 1798, c 71�� 21 Stat 54 Geo III 1814, c 56 (Sculpture Copyright Act 1814)��21, 36 Statute of Anne 1709, 8 Anne, c 19��8, 11, 14, 21, 28, 230 Trade Marks Act 1994 s 1(1)��223 s 2��223 s 3��223 s 3(6)��223 ss 4, 5��223 s 10(3)��175 Unfair Contract Terms Act 1977��243 United States Federal US Code�� 9 17 USC § 106��143 § 106(1)��143 § 106A��143 § 107��143 § 301(a)�� 90 § 512(b)–(d)��148 Anti-cybersquatting Consumer Protection Act 2000��224 Berne Convention Implementation Act (BCIA) 1988��131 Constitution Art 1, §8, cl 8�� 10, 131, 132 Copyright Act 1976 (including as codified in Federal US Code 17 USC)��131 s 101�� 24, 44, 60, 85 s 102�� 44 s 102(a)��24, 131 s 102(a)(5)�� 60 s 102(b)�� 50 s 106A�� 85 s 107��161, 185 s 108(h)��185

xliv Table of Legal Instruments s 109(c)�� 69 s 202�� 5 s 410(c)��133 s 504��185 Digital Millennium Copyright Act (DMCA) 1998�� 122, 143, 148 s 1202(b)��146 s 1203��146 Lanham Act 1946 (Trademark Act), 15 USC §§ 1051 et seq��223 s 43(a)��222 Visual Artists Rights Act (VARA) 1990�� 73, 85, 86, 88, 164, 167, 170 State California Art Preservation Act 1979�� 86 California Resale Royalties Act�� 90 Massachusetts Art Preservation Act 1984�� 86

1 Introduction 1.1. Background and Scope1 THE INTERNET, DIGITISATION, an increasingly image-driven culture (for example Instagram) and the fast-developing commercial activities of museums and galleries mean that copyright has increasing importance in the art world. Indeed, the need for galleries to have an online/virtual presence in the time of Covid-19 has only made copyright more important. Artist’s resale right (droit de suite), a branch of copyright, has also now been harmonised across Europe and has been in effect in the United Kingdom since 2006, directly bringing into copyright’s ambit those who deal in, buy or sell works of art. Artists are becoming more and more aware of their rights (supported by artists’ rights organisations such as the Design and Artists Copyright Society (DACS) in the UK), and arguments (including litigation) about the appropriation of artists’ works by others are arising more frequently.2 There is also a continuing debate about the extent to which existing law protects innovative works of modern art, non-traditional works (including graffiti) and the works of traditional cultures. At the same time, the law of cultural property is now an established legal discipline, as is art law.3 This book, first published in 2001, aimed to explore the UK law of copyright and related rights as applied to art as broadly defined,4 with a stress on the ‘fine arts’.5 The 1 It has been endeavoured to state the law relating to the UK as at 1 June 2020, although where possible, significant developments up to 31 August 2020 have been included. 2 The area of appropriation is discussed in ch 6 and parody in ch 3. 3 Art law has been an established legal discipline in the US for some years, and the first holistic treatment of art law in the UK by Paul Kearns was published in 1998: P Kearns, The Legal Concept of Art (Oxford, Hart Publishing, 1998). The Institute of Art and Law in the UK was founded in 1995. As of 2020 there are now a number of UK art law texts published by the Institute of Art and Law and other publishers. 4 No other attempt is made to define ‘art’ for the purposes of this book. It will be clear in any event from the discussion of the law that follows that the legislature and the UK courts define ‘art’ for the purposes of copyright protection in various ways, the category of ‘artistic works’ in the Copyright, Designs and Patents Act (CDPA) 1988 being crucial. For an early and very useful discussion of the legal protection of ‘art’ under UK law, see PH Karlen, ‘What is Art? A Sketch for a Legal Definition’ (1978) 94 Law Quarterly Review 383. See also Kearns (ibid). Photographs, given their importance in modern art and their categorisation as ‘artistic works’ in the CDPA, are included for the purposes of this book. Films and video works do not receive extensive treatment but nevertheless are specifically discussed in ch 6. 5 The Concise Oxford English Dictionary 8th edn, (Oxford, Oxford University Press, 1990) defines the ‘fine arts’ as those ‘appealing to the mind or to the sense of beauty … especially painting, sculpture and architecture’. In fact, with limited exceptions, UK copyright law now makes no express distinction between works of fine art and other artistic works in affording copyright protection. But historically, a distinction between the fine arts and the applied arts was maintained, at least in the classes of work protected: see L Bently and B Sherman, The Making of Modern Intellectual Property Law (Cambridge, Cambridge University Press, 1999).

2 Introduction protection of utilitarian or mass-produced items, except to the extent these comprise art – ‘ready-mades’, for example – was not considered in detail.6 Nor were works of architecture. The law of industrial design, for example, already had received detailed treatment in a number of works.7 So it was felt that the growing relationship between the ‘fine arts’ and copyright, including the development of artists’ moral rights, artist’s resale right, the permitted scope of appropriation in copyright law, the copyright protection of modern art and the challenges of digitisation and the Internet, pointed to the need for a UK text exploring this area. Although the book was not specifically concerned with the law of jurisdictions other than the United Kingdom, the international nature of the area meant that it was often helpful to note the approach taken in other major jurisdictions. In particular, a number of cases from other common law jurisdictions were noted, especially those from the United States, where there was already a considerable amount of case law and scholarship in this field. Also in light of the attempts to harmonise copyright law in the European Union and the long tradition of moral rights protection in continental Europe, these areas were also considered in some detail. Twenty years or so on from its first publication, and ten years on from its second edition, the opportunity has been taken to revise and update the book, primarily from a UK perspective, although significant developments in the US and the EU are noted. Developments in technology have come to the fore – although not new, artificial intelligence is creating much-publicised artistic works and the merging of the real and virtual in how we view and (on occasion) ‘consume’ art all have implications for copyright. There is the ever-increasing amount of case law relating to both technology (‘communication to the public’) and copyright more broadly (including industrial designs and originality) from the Court of Justice of the European Union (CJEU), though how the UK will continue to be influenced by this jurisprudence following Brexit is at the time of writing unclear. Artist’s resale right is firmly embedded in UK law and countries continue to explore its introduction as it is increasingly on the international copyright agenda. Scholars too are finding artistic copyright of abiding interest, including in areas such as non-traditional works and the history of artistic copyright. In revising and updating this book the intention remains to keep the work an overview of the area, a place where the reader can be led to avenues to explore and routes to take across the artistic copyright landscape, but also to have the work retain its practical value as a resource for those who create, deal in or exploit art and reproductions of art including online or in digital form or who are otherwise looking for guidance on artistic copyright.

Other jurisdictions also have made or do make such distinctions. For example, early French (revolutionary) copyright law limited protection to the fine arts, but in 1902 protection was extended to sculptors and decorative designers, irrespective of the merit of their work. The quality of the work can also be relevant in US law: see, eg, L Bently and B Sherman, ‘Copyright Aspects of Art Loans’ in N Palmer (ed), Art Loans (London, Kluwer, 1996). In particular, as discussed below in ch 4, it is an issue in the US approach to moral rights. 6 ‘Ready-made’ is the name given by Marcel Duchamp to a type of work he created that consists of a massproduced article isolated from its functional context and displayed as a work of art: I Chilvers, A Dictionary of Twentieth-Century Art (Oxford, Oxford University Press, 1999). See also generally below ch 6, s 6.4.1. 7 Eg, C Fellner, Industrial Design Law (London, Sweet & Maxwell, 1995); U Suthersanen, Design Law in Europe (London, Sweet & Maxwell, 2000); and M Howe QC, Russell-Clarke on Industrial Designs (London, Sweet & Maxwell, 1998).

Copyright and Art 3

1.2. Copyright and Art Artists, like other ‘authors’, may be entitled to the protection of their works under the law of copyright and related rights. Most legal systems recognise two elements to such protection: economic rights, which are also generally referred to as ‘copyright’ or ‘copyrights’, and moral rights. In the United Kingdom, the economic rights include the rights to control copying (reproduction), the issuing of copies to the public, renting or lending the work, performance, communication to the public and adaptation;8 the moral rights include the right to be identified as ‘author’, to object to derogatory treatment of a work, the right to object to false attribution and the right to privacy of certain photographs and films.9 Living artists and the estates of recently deceased artists are likely to benefit from moral rights, which only an artist or that person’s estate can exercise. This is in distinction to the economic rights, which can be freely transferred in whole or part by way of assignment.10 In this sense, copyright is an intangible property right like other intellectual property rights (patents, registered designs, trade marks, rights in confidential information and so on) but with the added dimension that the creator, the author/artist, retains moral rights in the work irrespective of who owns the actual copyright. It is important to note that copyright is a purely negative right: it is primarily a right to stop others copying a work in which copyright subsists. But it does not prevent someone else independently creating a similar work,11 nor does it necessarily mean that copyright owners have the right to exploit their work themselves.12 Copyright and related rights are national rights – there is no universal law of copyright. In particular, the Anglo-American system of copyright law has tended to stress the economic aspects of copyright, whereas Continental civil laws, which stress ‘authors’ rights’ (droit d’auteur), have generally afforded greater protection to artists/ authors, especially in the context of moral rights.13 However, from the nineteenth century onwards, there has been a series of attempts to protect works internationally, the most important being the Berne Convention for the Protection of Literary and Artistic Works, which dates back to 1886. In recent years, the European Commission has devoted considerable effort to harmonising and strengthening the law of copyright across the European Union, and this has generated an increasing amount of legislation

8 S 16, Copyright, Designs and Patents Act (CDPA) 1988. 9 Ch IV, CDPA. How artist’s resale right/droit de suite should be characterised can be debated, as it has elements of both copyright (it is an economic right) and moral rights (it is inalienable). See below ch 4. 10 At least in the UK: the position may well be different in civil law jurisdictions. See A Rahmatian, ‘NonAssignability of Authors’ Rights in Austria and Germany and Its Relation to the Concept of Creativity in Civil Law Jurisdictions Generally: A Comparison with UK Copyright Law’ (2000) 5 Entertainment Law Review 95. 11 However, absolute monopoly rights such as patents and registered designs can protect against this. 12 For example, take the publication of an illustrated book. The publisher will own the copyright in the printed edition (see, eg, s 8, CDPA); but the author may retain the literary copyright in the text, and the illustrator the artistic copyright in the illustrations. To exploit the book, the publisher needs the consent (‘licence’) of both the author and the illustrator, although once the book is published, the publisher will be able to enforce the copyright in the printed edition and any other copyright it may have in the work against pirates. 13 Von Lewinski usefully sets out the main differences between the copyright and author’s rights systems, noting that many countries now have elements of both systems in their laws: S von Lewinski, International Copyright Law and Policy (Oxford, Oxford University Press, 2008) para 3.20.

4 Introduction and from 2009 onwards an ever-increasing amount of case law. It has also meant that UK copyright law has had to increasingly address and incorporate copyright concepts imported from authors’ rights systems.14 Broadly speaking, common law ‘copyright’ systems have tended to emphasise the protection of the ‘work’, allowing the ‘author’ of such a work to be either an individual or a legal entity, such as a limited company; in contrast, civil law ‘authors’ rights’ systems have tended to emphasise the individual creator of the work and do not as a rule consider legal entities to be eligible as ‘authors’ – only an individual can be an author of a ‘work’, as the work is an emanation of that person’s personality.15 Another distinction between authors’ rights systems and the UK law of copyright has traditionally been the concept of originality. In general, in both systems copyright is afforded only to ‘original’ works: in UK law, skill and labour alone (‘sweat of the brow’) was, with limited exceptions, sufficient to confer ‘originality’, whereas under authors’ rights systems there had to be creativity, on the basis a work reflects the personality of its creator. However, CJEU case law now means ‘sweat of the brow’ has been replaced in the UK by a requirement that the work is the author’s own intellectual creation, the implications of which are considered in Chapter 3. Also, in the US, following the landmark Supreme Court Feist case,16 US law requires ‘some minimal degree of creativity’.17 It is also important to be aware from the outset of the so-called ‘idea/ expression dichotomy’ in copyright law.18 Simply put, copyright does not protect ideas, only the form in which they are expressed. As Lord Salmon once put it, ‘It is trite law that there can be no copyright in an idea.’19 So for example, no one could copyright pointillism as 14 This is discussed below in ch 6 along with Brexit. 15 K Garnett et al, Copinger and Skone James on Copyright, 14th edn (London, Sweet & Maxwell, 1999) [hereafter ‘Copinger (1999)’] para 1-05. The ‘personality theory’ approach to copyright is discussed in ch 2. 16 Feist Publications v Rural Telephone Service Co 499 US 340 (1991) 113 L Ed 358 (1991) (Sup Ct) at 369. 17 Note that the concept of ‘originality’ under UK and EU law is considered further in ch 3 and ch 6. 18 Not all authors have admitted the existence of such a ‘dichotomy’ in UK law, which has no express statutory basis. The late Professor Sir Hugh Laddie called it the ‘idea/expression fallacy’: HIL Laddie, P Prescott, M Vitoria et al, The Modern Law of Copyright and Designs, 3rd edn (London, Butterworths, 2000) [hereafter ‘Laddie (2000)’] 3.74; but it nevertheless appears in copyright cases on a regular basis and it is also a feature of EU copyright law as developed by the CJEU (to which (subject to what happens following Brexit) the UK courts must have regard) (see, eg, the comments of the Advocate General in Funke Medien NRW GmbH v Germany Case C-469/17 EU:C:2018:870, 15 and 37). A few examples include ENTEC (Pollution Control) Ltd v Abacus Mouldings [1992] FSR 332 (per Nichols LJ); George Ward (Moxley) Ltd v Richard Sankey Ltd and Another [1988] FSR 66; and Bradbury, Agnew & Co v Day (1916) 32 TLR 349. See also the cases cited below and also n 19 below. In any event, as Lord Hoffmann more recently observed in Designers Guild v Russell Williams [2000] 1 WLR 2416 (HL), 2422, the distinction does find a place in the Agreement on the TradeRelated Aspects of Intellectual Property (TRIPS) (OJ 1994 L336, 213), to which the UK is a party (in Art 9.2). It is therefore submitted that this distinction is a useful and necessary starting point when considering if there has been infringement of an artistic work. Certainly it must be used with care; as Lord Hailsham commented (citing Professor Joad of ‘Brains Trust’ fame), ‘it all depends on what you mean by ideas’: LB (Plastics) Limited v Swish Products Limited [1979] RPC 551 (HL), 629. Lord Hoffmann also referred to this in Designers Guild (at 2422)). Laddie in any event was prepared to restate the principle on the basis that whilst there is no copyright in general ideas, an original combination of ideas may constitute a substantial part of a copyright work (4.43), citing Lord Hailsham in Swish Products (above) (629) and Astbury J in Austin v Columbia Gramophone Co [1917–23] MCC 398, 408 and again in Vane v Famous Players Film Co Ltd [1923–28] MCC 374, 398. The dichotomy is discussed in more detail below in ch 3. 19 LB (Plastics) Limited v Swish Products Limited [1979] RPC 551 (HL), 633. For a discussion of how the UK and USA have developed and applied this principle with emphasis on software copyright, see S Lai, The Copyright Protection of Computer Software in the United Kingdom (Oxford, Hart Publishing, 2000). See also SAS Institute v World Programming Ltd Case C-406/10 [2012] 3 C.M.L.R. 4, in particular 15 and 37.

Copyright and Art 5 an artistic style, but Seurat’s paintings (if in copyright) would themselves be protected from copying, as they are original artistic works. This dichotomy appears in copyright infringement cases from time to time where the style, technique or other elements of a design or painting have been reproduced, but there has been no literal copying.20 It is then frequently necessary to determine whether what has been copied is (protected) expression or merely an idea not capable of copyright protection. Finally, copyright and related rights are distinct from the ownership (ie, personal property) rights in a work of art or other work, such as a literary manuscript, which may benefit from copyright protection.21 Indeed, the US Copyright Act makes this expressly clear.22 The sale or even the commissioning of a work of art will not necessarily transfer the copyright in the artwork to the buyer/commissioner.23 This, of course, is of particular relevance to art loans, where the borrower may well wish to benefit from the economic rights in the work by producing cards, catalogues and merchandise and may accordingly need to seek permission from the copyright owner.24 Whether the work is protected by copyright, and who owns the copyright, may be difficult questions to answer. For example, when Churchill College, Cambridge acquired some of Sir Winston Churchill’s personal papers a number of years ago with a controversial £12 million grant from the National Lottery,25 they acquired physical title to the papers but not the copyright: copyright in Churchill’s personal papers was kept by the Churchill trustees; copyright in the State papers (which were also given to the College by the Government at the same time) was kept by the Crown. For many years copyright was the Cinderella of intellectual property law, overshadowed in importance by patents and trade marks. However, the advent of digital technology means copyright now has centre stage – those seeking to protect and exploit their works in digitised or new media form and via the Internet increasingly need to rely on copyright. There is a continuing debate about whether the economic rights need to be broadened to cope with the continuing challenges of the new digital technologies. This also brings to the fore another aspect of copyright: the conflicting relationship 20 See, eg, Designers Guild v Russell Williams (above n 18) (per Morritt LJ and Lord Hoffmann), discussed below in ch 3. 21 There are limited exceptions to this rule: eg, pre-CDPA photographs. See Copinger (above n 15) para 5-02. 22 S 202: ‘Ownership of a copyright … is distinct from ownership of any material object in which the work is embodied.’ This section was introduced following Pushman v New York Graphic Society Inc 287 NY 302, 308, 39 NE 2d, 249, 251 (1942), which held that transfer of ownership of an unpublished work transferred the common law copyright in the work as well. See DM Millinger, ‘Copyright and the Fine Arts’ (1980) 48 George Washington Law Review 354, 365. 23 If such an assignment of copyright is sought, this should be agreed in writing. Copyright (as opposed to moral rights) is transferable by assignment – this must be in writing (s 90(3), CDPA) and signed by the owner. Copyright is also transmissible on death by testamentary disposition. Note that the bequest of ‘an original document or other material thing’ recording or embodying an unpublished artistic or other work shall include the copyright in the work unless the contrary is indicated in the testator’s will or codicil, insofar as the testator was the owner of the copyright immediately before his or her death (s 93, CDPA). Commissioned artistic works are considered below in ch 7. 24 Note also that once an artist has sold his or her work and transferred possession of it to a third party, he/she has no right under English law (absent a contractual right of access) to, eg, gain access to the work to photograph it or otherwise copy it, despite the fact he/she still retains the copyright in it. The position appears similar in the US: Millinger (above n 22) 363–64. 25 To be more correct, the National Heritage Memorial Fund purchased the papers using monies generated by the National Lottery.

6 Introduction between owners who wish to control the economic rights to their commercial benefit, on the one hand, and users who claim the benefit of what is called ‘fair use’ in the United States and ‘fair dealing’ in the United Kingdom. Users wish to be able, free of charge, to publish and reproduce works in connection with non-commercial purposes (such as study or research) or for public interest purposes (such as reporting current events or to create new works derived from existing works for parody). These and other issues are explored in chapters three and six. Artists, museums, galleries and publishers are also increasingly looking to other intellectual property laws for protection as well as copyright. This area is considered in chapter eight. Finally, in discussing art and copyright it is important to keep in mind the range of disciplines and perspectives that are being brought to bear on the study of copyright law. The approach taken in this book follows in the main the ‘self-contained’ legal approach to copyright law – readers interested in detailed consideration of economic and sociological approaches to ‘authorship’ and the cultural aspects of intellectual property are referred elsewhere.26 Having said this, it will become apparent as this book progresses that notions of authorship, to what extent copyright should concern itself with aesthetic judgements and varying assumptions about the function of copyright remain important

26 Professor Sterling speaks of the ‘self-contained’ approach in his World Copyright Law (London, Sweet & Maxwell, 1999) 39. The works mentioned below are inevitably selective of what is now a broad field and in the main reflect some of the earlier writing on this area. Those interested in more recent considerations of this area will find the work of the International Society for the History and Theory of Intellectual Property (ISHTIP) of particular interest (www.ishtip.org) as well as in the UK that of CREATe – the UK Copyright and Creative Economy Centre, based at the University of Glasgow (www.create.ac.uk/blog/category/about/). More recent scholarship is also discussed later in this book alongside discussions of certain specific areas but this commentary does not purport to be comprehensive. For a consideration of copyright and ‘authorship’, see, eg, B Sherman and A Strowel (eds), Of Authors and Origins (Oxford, Clarendon Press, 1994). In particular, Brad Sherman, in his paper in Sherman and Strowel (eds) (above), ‘From the Non-original to the Ab-original: A History’, criticises the ‘increasingly self-referential nature of copyright law’ (114). He is of the view that in order to understand and explain copyright law, not only must the rules and principles underlying the law be examined, but also it is necessary ‘to engage in more abstract, reflexive, and historical examinations of the subject’ (129). See also P Jaszi, ‘Toward a Theory of Copyright: The Metamorphoses of “Authorship”’ (1991) 42 Duke Law Journal 455 for an exploration of the extent to which copyright has received a constructed idea of ‘authorship’ from literary and artistic culture and how this ‘authorship construct’ has been mobilised in legal discourse. For a discussion of the two main theories underpinning copyright law (copyright as an economic incentive that advances social welfare versus the legal vindication of a person’s right to property in the fruit of his or her labour (natural law theory)), both of which are discussed below in ch 2, and the need for an interdisciplinary approach to the subject that gives due weight to the natural law theory, see AC Yen, ‘The Interdisciplinary Future of Copyright Theory’ in M Woodmansee and P Jaszi (eds), The Construction of Authorship (Durham, NC, Duke University Press, 1994). Finally, an introduction to the various perspectives from which copyright has been approached (eg, by legal historians, historians of publishing and a variety of scholars with various perspectives on authorship) is K Bowrey, ‘Who’s Writing Copyright’s History?’ (1996) 6 European Intellectual Property Review 322. She comments on: (1) B Edelman, Ownership of the Image: Elements for a Marxist Theory of the Law, E Kingdom (trans) (London, Routledge and Kegan Paul, 1979) (a Marxist perspective), which is discussed by Kearns (above n 3) in ch 3; (2) others such as Mark Rose who are influenced by Foucault’s writings on authors, publishers and copyright; and (3) commentators from cultural studies and legal perspectives, including J Gaines, who is author of Contested Culture: The Image, the Voice and the Law (Chapel Hill, University of North Carolina Press, 1991) and Rosemary Coombes, a legal scholar and anthropologist who takes an interdisciplinary approach, particularly in her book The Cultural Life of Intellectual Properties (Durham, NC, Duke University Press, 1998). For a conceptual history of the objects of copyright protection see S Teilmann-Lock, The Object of Copyright: A Conceptual History of Originals and Copies in Literature, Art and Design (Abingdon, Routledge, 2016).

Copyright and Art 7 currents, albeit not always stated ones, in copyright law.27 So whilst this book primarily approaches art and copyright from the perspective of a practising lawyer, the author has endeavoured to alert readers to examples of writing on this area from a range of viewpoints, not just those of a practitioner. As will become clear, copyright is too important a matter to be left to practitioners alone.

Suggested Further Reading A Barron, ‘Copyright Law and the Claims of Art’ (2002) 4 Intellectual Property Quarterly 368 PH Karlen, ‘What is Art? A Sketch for a Legal Definition’ (1978) 94 Law Quarterly Review 383 D McClean and K Schubert (eds), Dear Images Art, Copyright and Culture (London, Ridinghouse/ICA, 2002) M Torsen Stech, Artists’ Rights: A Guide to Copyright, Moral Rights and Other Legal Issues in the Visual Arts Sphere (Builth Wells, Institute of Art & Law, 2015)

27 For example, Peter Jaszi has argued that the Romantic conception of authorship (which he describes as ‘the Wordsworthian vision of the “author-genius” with privileged access to the numinous’: Jaszi (ibid) 459, referring to M Woodmansee, ‘The Genius and the Copyright: Economic and Legal Conditions of the Emergence of the “Author”’ (1983–84) 17 Eighteenth-Century Studies 425) continues to have an abiding influence. Jaszi cites the example of computer software copyright as being often justified on the grounds that programs are no less inspired than poems and that the imaginative processes of programmers is fundamentally akin to that of a conventional author (463). For a critical view of the relationship between copyright and art that challenges the Romantic conception of authorship, as well as of the law’s focus on categories of artistic works (‘its taxonomic approach’) and of the law’s commitment to the genus rather than the genius (ie, to categorising works rather than having a broader category of ‘art’ that is protected), see A Barron, ‘Copyright Law and the Claims of Art’ (2002) 4 Intellectual Property Quarterly 368: ‘Copyright law in the UK has no category of “art”, and it does not demand of the objects it protects that they elicit an aesthetic response. Copyright law therefore cannot recognise whole swathes of contemporary practice in the visual arts as having any claim to legal protection as such’ (372). For a critical look at authorship, see L Zemer, The Idea of Authorship in Copyright (Aldershot, Ashgate, 2007).

2 The Copyright System: Justification and History 2.1. Introduction BEFORE SETTING OUT a detailed analysis of how copyright protects artistic works, it is worthwhile looking at both the justifications for copyright and the history of copyright law. In order to understand the current law it is necessary to have some background on how copyright has evolved. It has been argued that copyright law initially developed in the United Kingdom without much recourse to philosophical or other justifications.1 Indeed, Lyman Ray Patterson, a leading copyright historian, once categorised the historical development of copyright law as the development of a series of fragmented rules rather than principles: ‘There is no set of clearly defined principles for copyright.’2 Nevertheless, an understanding of some of the main justifications for and principles underlying copyright is necessary to understand current debates about the scope of copyright, including its application to new situations, such as the protection of aboriginal art, digitisation and certain aspects of contemporary art discussed later in this book.3 Intellectual property rights such as copyright affect what people do, say and how they earn a living. So the introduction, continuation and expansion of copyright clearly require considerable justification.4 It is also worth a word of caution too when considering copyright theory and history as applied to artistic works as literary works have tended to be the focus of scholarship and of law-makers. As Rebecca Tushnet has forcefully argued: ‘[c]opyright is literal.

1 See M Rose, Authors and Owners (Cambridge, MA, Harvard University Press, 1993) ch 3, who discusses the genesis of the first UK copyright statute, the Statute of Anne: ‘Probably the truth is that the exact status of authorial property was not something to which anyone had given a great deal of thought prior to the parliamentary consideration of [the Statute of Anne] – and it is unlikely that the matter was examined in any great detail during the deliberations over the statute’ (48). 2 LR Patterson, Copyright in Historical Perspective (Nashville, Vanderbilt University Press, 1968) 222. 3 For a general discussion of the justifications for intellectual property in the much discussed and controversial area of intellectual property protection for brands, see B Isaac, Brand Protection Matters (London, Sweet & Maxwell, 2000) ch 8. 4 See J Waldron, ‘From Authors to Copiers: Individual Rights and Social Values in Intellectual Property Law’ (1993) 68 Chicago-Kent Law Review 841, 887, as discussed in M Spence, ‘Passing Off and the Misappropriation of Valuable Intangibles’ (1996) 112 Law Quarterly Review 472 [hereafter ‘Spence (1996)’] 479.

Justifications for Copyright 9 It starts with the written word as its model, then tries to fit everything else into the literary mode.’5 She notes that in the US ‘protections for photographic, musical, audiovisual, and other modes of expression were added to the U.S. code slowly and haphazardly, following economic rather than conceptual demands. Taking words as the prototypical subject matter of copyright has continuing consequences for copyright law, which often misconceives its object, resulting in confusion and incoherence.’6 Copyright discourse can also often ignore the broader creative and cultural context in which works are created.7

2.2. Justifications for Copyright8 There are a number of different theories of copyright – at least ten according to one commentator9 – but the main justifications for copyright fall into three broad areas. The first is on the basis of economics; the second is on the basis of public policy (the cultural argument for copyright); and the third is on the basis of moral rights (or natural law rights).10 None of these justifications, in Michael Spence’s words, offer a ‘knock-down’ justification for the law of copyright in any particular form, but it is submitted they have rhetorical force in the arguments between stakeholders (authors, producers/distributors/publishers and users) that have shaped modern copyright law.11

5 R Tushnet, ‘Worth a Thousand Words: The Images of Copyright Law’ (2011) 125 Harvard Law Review 683; Georgetown Public Law Research Paper No 11-115, Available at SSRN: https://ssrn.com/abstract=1911352 (2). See also R Tushnet, ‘Performance Anxiety: Copyright Embodied and Disembodied’ (2013) Georgetown Law Faculty Publications and Other Works 1216. https://scholarship.law.georgetown.edu/facpub/1216. 6 Tushnet (2011) 2. 7 This is a point made by Julie Cohen among others – JE Cohen, ‘Creativity and Culture in Copyright Theory’ (2007) 40 University of California Davis Law Review 1151–1205. 8 One way to try to make sense of the various ‘justifications’ for copyright is to view them as ‘rhetorics’. The shape of copyright law can on one analysis be seen as the outcome of interest group politics operating through the institutions of the law – the chief ‘actors’ being: consumers of copyright ‘goods’; the distributors of copyright ‘goods’ (publishers, booksellers, etc), who frequently will take the economic, entrepreneurial risk; and the creators of copyright ‘goods’. These actors employ various ‘rhetorics’ at various times to support their interests, and these in turn ‘can take on lives of their own and become independent factors in the development of intellectual property law’: C Joyce, W Patry, M Leaffer and P Jaszi, Copyright Law, 5th edn (New York, LEXIS Publishing, 2000) [hereafter ‘Joyce’] 61. Another approach is to look at the ‘norms’ at work in copyright laws – the ‘principles that lead to rules of action in concrete cases’: PE Geller, ‘Must Copyright Be Forever Caught between Marketplace and Authorship Norms?’ in B Sherman and A Strowel (eds), Of Authors and Origins (Oxford, Clarendon Press, 1994) 159. Geller categorises these norms as marketplace norms (which reflect the economic/utilitarian preoccupations of Anglo-American copyright law (see below)) and authorship norms (which ‘dictate rules to empower authors to control the use by others of their self-expression’ (159) and which are historically prevalent in droit d’auteur copyright systems. See also below. 9 The commentator is Francis J Kase: see S Teilmann-Lock, British and French Copyright: A Historical Study of Aesthetic Implications (Copenhagen, DJØF Publishing, 2009) 39. 10 For an overview, see K Garnett et al, Copinger and Skone James on Copyright, 14th edn (London, Sweet & Maxwell, 1999) [hereafter ‘Copinger (1999)’] para 2-04; and Teilmann-Lock (ibid) 39–56. Copinger distinguishes four major principles underpinning the copyright system: natural law; just reward for labour; stimulus to creativity; and social requirements. In the author’s view, two of these principles merge together, ‘natural law’ and ‘just reward for labour’ being both classed as ‘moral rights’ arguments. 11 See M Spence, ‘Justifying Copyright’ in D McClean and K Schubert (eds), Dear Images Art, Copyright and Culture (London, Ridinghouse/ICA, 2002) 402–3.

10 The Copyright System: Justification and History

2.2.1. The Economic/Utilitarian Justifications for Copyright In Anglo-American copyright law, economic arguments have been prevalent. It has been strongly argued, for example, that ‘the purpose of copyright is basically to ensure a continuing profit to the originator or creator of a copyrighted work’.12 Therefore the grant of exclusive rights to an author is an incentive for the author to create. It is also a very significant incentive to entrepreneurs such as publishers, who rely on the copyright protection afforded to authors. Economic and public policy arguments are also embodied in the copyright clause of the US Constitution: this grants the federal government the right ‘to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their Writings and Discoveries’.13 Putting it another way, the economic rationale for copyright has both a ‘static’ and ‘dynamic’ element: ‘static’ in that the owner has a positive benefit as a result of ownership of the property right, and ‘dynamic’ in that it acts as an incentive to invest in creating the work on the basis that only the author or his/her assigns can exploit it.14 To quote Anthony Trollope, ‘Take away from English authors their copyrights, and you would very soon take away from England her authors.’15 Of course it can be debated whether in the fine arts the economic basis of copyright has much relevance: it is trite to say that Picasso, for example, would doubtless still have created his works regardless of the existence or otherwise of copyright. It is originals of his works (as opposed to (unsigned) copies) that command enormous prices, and Picasso was able to exploit the market for his works in his lifetime. However, in the applied arts and areas such as lithography, photography, online exploitation and engravings, where the copy (as opposed to the original) has economic value in its own right, the economic justification has greater force. Denis Thomas stated some years ago: It has been suggested that copyright has no effect on true artistic creativity. However, it is presumably a factor in the world of the popular arts, with its chance of quick returns for the entrepreneur alert for changes of mood and fashion, especially among the young. Nor can it be assumed that serious works of art would be entirely unaffected: though artists would continue to express themselves, as they have done throughout history, under all kinds of

12 D Thomas, Copyright and the Creative Artist (London, Institute of Economic Affairs, 1968) 27. See also J Fromer: ‘[t]he dominant American theory of copyright law is utilitarian, in offering the incentive of limited copyright protection to creators to generate material that is valuable to society’ (JC Fromer, ‘An Information Theory of Copyright Law’, (2014) 64 Emory Law Journal 71, 73). 13 Art 1, para 8, cl 8. See for example the comments of the Supreme Court in Mazer v Stein 347 US 201 (1954), 74 SCt 460, 98 LEd 630 (1954): ‘The economic philosophy behind the clause … is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors in “Science and useful Arts.” Sacrificial days devoted to such creative activities deserve rewards commensurate with the services rendered.’ 14 This analysis has been developed by W Landes and R Posner. See in particular the much cited W Landes and R Posner, ‘Trademark Law: An Economic Perspective’ (1987) 30 Journal of Law & Economics 265, discussed, for example, in Isaac (above n 3) 219. See also W Landes and R Posner, ‘An Economic Analysis of Copyright Law’ (1989) 18 Journal of Legal Studies 325. In fact, the approach of neoclassical economists such as Landes and Posner is somewhat different from earlier ‘classical’ economic approaches: it is much more heavily free-market-based and sees far less scope for ‘fair use’ type doctrines, except where there is market failure. See Joyce (above n 8) 68–69. 15 See Trollope’s Autobiography, quoted in Copinger (1999) (above n 10) para 2-04.

Justifications for Copyright 11 economic and social constraints, the publishers, impresarios and galleries needed to bring their own works before the public might be less inclined than under copyright protection to take the financial risk.16

In fact, the economic argument for copyright protection, in one guise or another, has a long history in English law. For example, according to David Saunders, in the seventeenth-century case Roper v Streeter,17 the court ‘recognised investment and expense as justifying a claim to a property [right] in copyright’.18

2.2.2. Public Policy Arguments It is generally regarded as being in the public good that authors should be encouraged to publish their works to ensure as wide a dissemination of knowledge and culture as possible. The existence of copyright encourages this and in economic terms can help make such dissemination viable – indeed, the first British copyright act, the Statute of Anne,19 was entitled ‘An Act for the Encouragement of Learning’.20 However, copyright protection raises conflicts here: it is one thing to encourage the production of copyright works, but if unregulated, copyright might act as a fetter on those who need to copy the works for desirable purposes, such as private study or research, or for critical comment, or (in an artistic context) parody or appropriation. So arguments for exceptions to copyright protection on the basis of ‘fair use’ or ‘fair dealing’ also come to the fore in this regard. These are discussed in chapters three and six.

2.2.3. Moral Rights/Natural Law Rights There are two major theories underpinning arguments that authors have an intrinsic, just or moral right to their creative efforts. These are based on the idea of a ‘just reward’ for labour, and that under natural law authors have an exclusive right of property in their labours.

Just Reward Theory At its most basic this theory can be summed up by Jesus’ injunction: ‘For the labourer is worth his hire.’21 A variant of this is the desert theory, or as it is sometimes called, the ‘value-added’ labour theory.22 According to Becker (as summarised by Isaac), ‘this is a moral theory which seeks to justify the grant of a proprietary right to the creator

16 Thomas (above n 12) 27. 17 (1672) Skinner 233, 90 ER 107. 18 D Saunders, Authorship and Copyright (London, Routledge, 1992) 29. 19 (1709) Anne c 19. 20 Teilmann-Lock (above n 9) 50–54. 21 Luke 10:7 (Authorised Version). See Isaac (above n 3) 222–23. 22 For example, by J Hughes, ‘The Philosophy of Intellectual Property’ (1988) 77 Georgetown Law Journal 287.

12 The Copyright System: Justification and History of intellectual property on the basis that the “effort” in creating the thing “deserves” to be recognised and rewarded such that the creator can prevent imitation of his work.’23 Also, it is argued that as the author will have created something of benefit to society he or she is entitled to receive in return a benefit from society, namely a property right.24 Certainly the desert argument is to be distinguished from the natural law argument discussed below. However, it has also been pointed out that the difficulty with the desert theory is in determining what sort of efforts are worthy of protection and what protection is given.25 For example, ‘[m]any of the best value intangibles are the results of moments of inspiration that involve little or no apparent effort on the part of the person claiming the intangible. The work of the perspiring, but not the inspired, “creator” would be protected by law.’26 Thus the desert principle is not without its problems: in terms of effort, the labours of the artisan might outweigh those of the inspired artistic genius. It can be argued that a variant of the desert theory is the ‘reap/sow’ principle, or ‘unjust enrichment’ argument as it is also called (ie, that it is unjust to reap where you have not sown), although this also has utilitarian aspects.27 This has been used as a basis to prevent misappropriation or unfair competition. A well-known example of this principle is the US case of International News Service v Associated Press.28 This principle also appears in UK copyright law from time to time, and it is also the basis of the famous copyright maxim ‘what is worth copying is … worth protecting’.29 In 1964 Lord Devlin stated: Free trade does not require that one should be allowed to appropriate the fruits of another’s labour, whether they are tangible or intangible. The law has not found it possible to give full 23 Isaac (above n 3) 223, citing LC Becker, ‘Deserving to Own Intellectual Property’ (1993) 68 Chicago-Kent Law Review 609. 24 Isaac (above n 3) 223, again citing Becker (ibid). For example, in the US case of Mazer v Stein (1954), it has been argued by Hughes (above n 22) that the Supreme Court was saying that the enhancement of the public good through the efforts of intellectual labour made the creators worthy of their reward. (See the comments of the Supreme Court noted above.) 25 Isaac (above n 3) 223. See also EC Hettinger, ‘Justifying Intellectual Property’ (1989) 18 Philosophy & Public Affairs 31: ‘Although intellectual laborers often deserve rewards for their labor, copyrights, patents and trade secrets may give the laborer much more or much less than is deserved.’ 26 Spence (1996) (above n 4) 487. Spence gives other arguments against the desert theory as well (487–89). Given these difficulties, Spence sees it as the least important theory in the discussion of intellectual property rights generally (488–89). 27 The ‘rhetoric’ of misappropriation has roots in the longstanding legal doctrines of quasi-contract and restitution: see Joyce (above n 8) 67. 28 (1918) 248 US 215 (SC). In this case the court held that the defendant could be enjoined from using the plaintiff ’s wire service news items during the period the information constituted ‘hot’ news and had commercial value: strictly speaking, what was restricted here was not copying but the use of information to the extent necessary ‘to prevent that competitor from reaping the fruits’ of the plaintiff ’s efforts. See AR Miller and MH Davis, Intellectual Property, 2nd edn (St Paul, MN, West Publishing, 1990) 418; and Isaac (above n 3) 227. 29 University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch (per Peterson J) 610, cited with approval by Lord Reid in Ladbroke Ltd v William Hill Ltd [1964] 1 All ER 465 at 471). Laddie J in Autospin (Oil Seals) Ltd v Beehive Spinning (A Firm) [1995] RPC 683 spoke of the ‘almost evangelical fervour’ of the UK courts to apply the commandment ‘thou shalt not steal’ [the results of the plaintiff ’s labours]: ‘If that has necessitated pushing the boundaries of copyright protection further out, then that has been done. This has resulted in a body of case law on copyright which, in some of its further reaches, would come as a surprise to the draughtsmen of the legislation to which it is supposed to give effect.’ Indeed, this comment of the late Mr Justice Laddie highlights a major difficulty with the misappropriation justification: there are no inherent checks and balances in its application (unlike the utilitarian argument whereby the incentive to create is

Justifications for Copyright 13 protection to the intangible. But it can protect the intangible in certain states, and one of them is when it is expressed in words or print. The fact that that protection is of necessity limited is no argument for diminishing it further, and it is nothing to the point to say that either side of the protective limits a man can obtain gratis whatever his ideas of honesty permit him to pick up.30

Indeed, it was referred to by the House of Lords in a relatively recent case involving artistic works, Designers Guild Limited v Russell Williams (Textiles) Limited:31 The law of copyright rests on a very clear principle: that anyone who by his or her own skill and labour creates an original work of whatever character shall, for a limited period, enjoy an exclusive right to copy that work. No one else may for a season reap what the copyright owner has sown.32

Natural Law/Personality Bases These bases are the ones most often raised by those seeking to protect authors’ rights, as opposed to those exploiting creative works for profit. They have a number of aspects. One is the often-cited statement about property by John Locke in his Second Treatise of Civil Government (1690): [E]very man has a Property in his own Person. This no Body has any Right to but himself. The Labour of his Body and the Work of his Hands, we may say, are properly his. Whatsoever then he removes out of the State that Nature hath provided, and left in, he hath mixed his Labour with, and joyned to it something that is his own, and thereby makes it his Property.33

Thus through labour an individual converts the raw material of nature into private property, whether tangible or intangible. This argument features in the key eighteenthcentury literary property cases between booksellers:34 Extended into the realm of literary production, [this] theory of property produced the notion put forward by the London booksellers of a property founded on the author’s labour, one the balanced by granting copyright for a limited term and the development of fair use and other limiting doctrines such as the idea/expression dichotomy, and the natural law argument whereby a public domain element needs to be preserved on the basis of Locke’s famous proviso). See Joyce (above n 8) 67; and below n 33. 30 Ladbroke v Hill [1964] 1 WLR 273, 291 (per Lord Devlin). See WR Cornish, Intellectual Property, 4th edn (London, Sweet & Maxwell, 1999) 363. 31 [2000] 1 WLR 2416. 32 Designers Guild (ibid) 2418A (per Lord Bingham of Cornhill). Of course the unthinking use of phrases like ‘reap/sow’ and ‘the fruits of another’s labour’ as metaphors can have a strong conservative power in strengthening the rights of owners/creators at the expense of users. ‘Metaphor in legal discourse can … help to lock us into the internal logic of an image or set of images, structure our thinking in a way that may weaken or distort our rational decision-making capacities’: P Loughlan, ‘Pirates, Parasites, Reapers, Sowers, Fruits, Foxes: The Metaphors of Intellectual Property’ (2006) 28 Sydney Law Review 211, 226. ‘Piracy’ is another metaphor that Loughlin criticises. 33 As quoted in Rose (above n 1) 5. It is important to note, however, Locke’s famous proviso – ‘Labour being the unquestionable Property of the Labourer, no Man but he can have a right to what that is joyned to, at least where there is enough and as good left in common for others’ (para 27, Second Treatise, emphasis added). Gordon has restated the proviso as follows: ‘Creators should have property in their original works, only provided that such grant of property does no harm to other persons’ equal abilities to create or to draw upon the pre-existing cultural matrix and scientific heritage. All persons are equal and have an equal right to the common’: WJ Gordon, ‘A Property Right in Self Expression: Equality and Individualism in the Natural Law of Intellectual Property’ (1993) 102 Yale Law Journal 1533, 1563–64. 34 Such as Millar v Taylor (1769) in which the Court of King’s Bench ruled that literary property was a common law right and that copyright was perpetual; and the House of Lords in Donaldson v Becket (1774)

14 The Copyright System: Justification and History author could sell to the bookseller. Though immaterial, this property was no less real and permanent, they argued, than any other kind of estate.35

It has been argued that Locke’s theory of a right of property deriving from personal labour was from the start embedded in American copyright law36 and that ‘the concept of English copyright law is a true picture of Locke’s theory up to the present day. Copyright subsists in a literary, dramatic, musical or artistic work if some, albeit limited, work or effort has gone into the creation of the work.’37 Certainly in English law there was early judicial acknowledgement that it was just to grant copyright to authors of literary works and also that authors had what we now call ‘moral rights’, as Lord Mansfield made clear in Millar v Taylor: It is just, that an author should reap the pecuniary profits of his own ingenuity and labour. It is just, that he should judge when to publish. It is fit he should not only choose the time, but the manner of publication …38

However, in addition to the Lockean natural law strand, Anglo-American copyright law also lays particular stress on the economic basis for copyright protection – the distinctiveness, artistic merit or originality of expression are less relevant than protecting the economic value of the author’s labour.39 Another theory underpinning copyright centres on the idea that an artist’s work is nothing less than an extension of the artist’s personality – the so-called ‘personality’ theory. Kant defended copyright on this basis,40 as did Hegel. It has been argued that the personality justification is the one best applied to the arts.41 The now unfashionable philosopher Herbert Spencer also argued in support of an argument for the peculiarly personal nature of an artist’s work: ‘a production of mental labour may be regarded as property in a fuller sense than may be a product of bodily labour; since that which constitutes its value is exclusively created by the worker.’42

2 Bro PC 129; (1774) 4 Burr 2408; 17 Cobbett P Hist 954, which reversed Millar v Taylor and declared that copyright was limited in term in accordance with the Statute of Anne. See Rose (above n 1) 5 and generally. 35 Rose (above n 1) 6. 36 Saunders (above n 18) 243, citing AC Yen, ‘Restoring the Natural Law: Copyright as Labor and Possession’ (1990) 51 Ohio State Law Journal 517. 37 A Rahmatian, ‘Non-Assignability of Authors’ Rights in Austria and Germany and Its Relation to the Concept of Creativity in Civil Law Jurisdictions Generally: A Comparison with UK Copyright Law’ (2000) 5 Entertainment Law Review 95, 96. Rahmatian cites the traditional test of originality for works to benefit from copyright under English law, which depends on some, albeit a limited amount, of skill, labour and judgement being applied. See, eg, the House of Lords in Ladbroke Ltd v William Hill Ltd [1964] 1 All ER 465; and below ch 3. 38 (1769) 4 Burr 2303; 98 ER 252. 39 See, for example, Rahmatian (above n 37) 97. It can be argued that Lord Mansfield’s judgment in Millar v Taylor mingles both the economic and personal rights of the author: ‘In his presentation, the claims of propriety and property reinforced and validated each other: the personal interests moralised the economic claim, while the property claim gave legal weight to the personal interests’: Rose (above n 1) 82. 40 See JAL Sterling, World Copyright Law (London, Sweet & Maxwell, 1999) 43. Teilmann-Lock (above n 9) discusses the influence of Edward Young and Denis Diderot, as well as Kant and Hegel, on this theory that copyright is not a right of property but a personality right (45–50). 41 See Hughes (above n 22) 287. 42 Thomas (above n 12) 26, citing H Spencer, The Principles of Ethics, Vol II [1897].

Justifications for Copyright 15 Indeed, the link between copyright and the artist’s personality is regarded as the basis for copyright protection in civil law (or droit d’auteur (‘authors’ rights’)) jurisdictions: [I]n the civil law countries, the justification for the protection of a person’s creation is not the potential economic value of the labour and effort which have gone into the work, but the fact that every person can claim protection for his/her personality and anything that flows from it.43

Indeed, the first French authors’ rights laws (13–19 January 1791 and 19 July 1793) reflected this principle, and Le Chapelier, when presenting one of these early French revolutionary laws, stated: ‘La plus sacrée, la plus personnelle de toutes les propriétés est la fruit de a la pensée d’un ecrivain.’44 These laws were of broad scope (granting a property right protecting the works of authors, composers, painters and engravers for their entire lives) and exerted a great influence on the laws of France’s neighbours.45 Nevertheless, the laws did recognise the public domain: once a work was published (as opposed to unpublished works, to which Le Chapelier’s famous quotation above applies), the public was made a party to the author’s property, and protection only extended for a limited period after the author’s death. Indeed, after that period, according to Le Chapelier, ‘everybody should be able to print and publish the works which have helped to enlighten the human spirit.’46 The use of natural law arguments to justify intellectual property rights is not without its critics: if all labour or creative effort resulted in a grant of property rights, would this not prevent others from drawing on the common pool or public domain of works and ideas?47 Also, it has been argued that the Lockean theory fails to properly explain why property ought to be created in the item created: simply because a book is an author’s creation is this a sufficient reason to make it the author’s property?48 What of creations which are 99 per cent inspiration and 1 per cent perspiration, for example – ie, where little labour is expended?49 Other objections have also been raised.50 A strong argument against over-reliance on natural rights justifications for copyright is the nature of artistic works. In reality, ‘authorship’ is not a solitary activity in which

43 Rahmatian (above n 37) 97. According to Sterling (above n 40) (pre-dating EU harmonisation of this area following the CJEU in Infopaq – see ch 3 – but reflecting how EU copyright law is developing), in French law the test for subsistence of copyright is whether the work shows ‘the mark of the author’s personality’, and in German law the subsistence of the author’s right relates to the personal act of creation by the author (43). 44 Rahmatian (above n 37) 98. This point is also made by Sam Ricketson: ‘There was a conscious philosophical basis to the French laws that saw the rights protected as being embodied in natural law’: S Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886–1986 (London, Centre for Commercial Law Studies, Queen Mary College/Kluwer, 1987) 5. 45 See Ricketson (ibid) 6. 46 See the discussion in Teilmann-Lock (above n 9) 32–39 and 66–68. 47 Nevertheless, Locke’s theory continues to be a fertile basis for analysis, especially in the context of copyright. For example, Gordon (above n 33), in applying a Lockean natural law analysis to the idea/expression dichotomy, has stated that Locke’s ‘proviso’ ‘prohibits a creator from owning abstract ideas because such ownership harms later creators’ (1581). For discussion of the ‘proviso’, see above n 33. 48 S Breyer, ‘The Uneasy Case for Copyright: A Study of Copyright in Books, Photocopies and Computer Programmes’ (1970) 84 Harvard Law Review 281, 289, cited in Saunders (above n 18). 49 ‘The labor justification cannot account for the idea whose inception does not seem to have involved labor’: Hughes (above n 22). 50 See, eg, Sterling (above n 40) 41–42, where various difficulties in applying Locke’s property theory to copyright are explored. See also Hettinger (above n 25) 31 for a critique of the Lockean and desert theories, among others.

16 The Copyright System: Justification and History one person creates an entire work from imagination alone. As Bard and Kurlantzick have argued, all artists are part of artistic communities that shape their vision: an artistic work does not just reflect the artist’s personality; it embodies a mixture of his or her personality, the influence of contemporary society and the works of other artists (living and dead). Indeed, this fact argues strongly for the recognition of a strong public domain element to copyright.51

2.2.4. Copyright Scepticism It is perhaps surprising the extent to which copyright, based on any or all of the above justifications, is viewed as necessarily desirable.52 Certainly there are continuing debates about the appropriate duration of copyright protection. Indeed, many of these are conducted on strictly economic grounds: what is the optimal duration to stimulate creativity without stifling the rights of others to create derivative works? At what point do the marginal benefits from increasing the term or scope of copyright protection (such as the additional revenues generated that help to encourage more works) equal the marginal costs incurred from increasing the protection (such as the cost of creating works, the possibility of restricted public access to works and the increased administrative costs of administering and enforcing copyright protection)?53 However, there are also those who actively challenge the application of copyright law of whatever duration, especially to utilitarian works. As noted above, although the ‘public domain’ is not a defined term in UK copyright law, a strong public domain is important in allowing the ‘inspiration’ so important to artistic success to flourish.54 On this understanding, a work within the public domain is not protected by copyright at all (eg, it falls into the ‘idea’ side of the idea/expression dichotomy), or copyright in it has expired. The public domain creates space for creativity to develop and flourish. Indeed, Hugh Hansen, in a witty and original article, has spoken of the players on the copyright stage: first, the secular priesthood of copyright lawyers, all firmly believing that creators

51 RL Bard and L Kurlantzick, Copyright Duration: Duration, Term Extension, the European Union and the Making of Copyright Policy (San Francisco, Austin & Winfield Publishers, 1999). See also Cohen (n 7 above). 52 The 1996 article by the late Mr Justice Laddie, ‘Copyright: Over-Strength, Over-Regulated, Over-Rated?’ (1996) 5 European Intellectual Property Review 253 (the revised text of a Memorial Lecture in honour of the distinguished copyright lawyer Stephen Stewart QC) [hereafter ‘Laddie (1996)’] remains a trenchant critique of modern copyright law. See also his conclusion in Autospin (Oil Seals) Ltd v Beehive Spinning (A Firm) [1995] RPC 683 for some similar criticisms. 53 This is the classic, albeit simplified, benefit–cost analysis in economics: see M Rushton, ‘Economics and Copyright in Works of Artistic Craftsmanship’, presented at the Shepherd and Wedderburn Centre for Research into Intellectual Property and Technology (SCRIPT), University of Edinburgh (30 October 2000). 54 To quote Mr Justice Laddie, ‘The whole of human development is derivative. We stand on the shoulders of the scientists, artists and craftsmen who preceded us. We borrow and develop what they have done; not necessarily as parasites, but simply as the next generation. It is at the heart of what we know as progress’: Laddie (1996) (above n 52) 259. The limits of appropriation, in the context of parody and other uses of someone else’s work, are discussed later in this book. Creative Commons promotes the public domain as an ‘intellectual commons’ (in the same way as there is ‘common land’ to be grazed by all) and offers widely available Creative Commons licences – see https://creativecommons.org/ (accessed 5 August 2020) and also the discussion in n 71 below and ch 7.

Justifications for Copyright 17 are entitled to copyright in their works; second, the ‘agnostics and atheists’, ‘imbued with the culture of the public domain’.55 Certainly, Rushton and others have argued that copyright protection for certain works – in particular, ‘works of artistic craftsmanship’ – is not justified by economic analysis. This is on the basis that law ought to help promote economic efficiency – thus the law should be wary in creating property rights for every conceivable creative work.56 Rushton sees works of artistic craftsmanship as less deserving of copyright protection than works of fine art.57 Others see the continuing expansion of intellectual property law into areas such as the protection of functional designs, the patenting of computer software and microorganisms as indicating that intellectual property has come to be more of an end in itself than as a means to promote innovation.58 Whenever a new intellectual property right is argued for (such as sui generis database rights discussed in chapter three) or the expansion of an existing right is called for (such as extending the exclusive rights granted to copyright owners to include ‘transmission right’ (or ‘communication to the public’) to protect the exploitation of works on the Internet, as discussed in chapter five), then at the very least some attempt at a cost–benefit analysis ought to be undertaken. Nor should intellectual property be treated as an absolute value; ranged against it are values of at least equal importance including, as Professor David Vaver has argued, ‘the right of people to imitate others, to work, to compete, talk, and write freely, and to nurture common cultures’.59 The way intellectual property should be reconciled with these societal values has changed and will continue to change over time. Vaver goes on: ‘[Such] adjustments occur for social and economic reasons; they are not ordained by natural law. Where a particular line should be drawn can certainly not be answered by circularities like “Intellectual property is property”.’60 55 HC Hansen, ‘International Copyright: An Unorthodox Analysis’ (1996) 29 Vanderbilt Journal of Transnational Law 579. 56 Rushton (above n 53) 15. 57 For example, according to Rushton (above n 53), such works inevitably have functional aspects (which ought not to be protected by copyright); they are attractive to consumers for a number of reasons not least often because of their attribution to a particular ‘artist-craftsman’ (so granting copyright to such works will not necessarily stimulate the creation of new works at all); a strong ‘public domain’ or ‘tradition’ is important for creativity in the applied arts; it will often be expensive for copiers to succeed in making acceptable copies of a work of artistic copyright (and hence on economic grounds copyright protection is not required); and moral rights in the applied arts are less important: the law of passing off should suffice (12–14). Rushton’s arguments have not found favour with legislators or the courts in recent years and such works and indeed applied art more generally are protected by copyright in the same manner as other artistic works – the copyright protection of works of artistic craftsmanship and applied art are considered in ch 3. 58 D Vaver, ‘Intellectual Property: The State of the Art’ (2000) 116 Law Quarterly Review 621 [hereafter ‘Vaver (2000)’] 636. See also D Vaver, ‘Intellectual Property Today: Of Myths and Paradoxes’ (1990) 69 Canadian Bar Review 98 [hereafter ‘Vaver (1990)’], in which the author argued that copyright, with its minimal standards for eligibility, is less concerned with authors, art and literature than with protecting the mass media: ‘art and literature [in comparison to the ‘army of standardized industrial products – fungible pop records, soap operas, formula films, pulp books …’] occupy so small a field that it is hard to see how copyright law significantly encourages their creation’ (109) and can even be used as a tool of censorship. Vaver cites, eg, the US case in which JD Salinger was able to prevent a biographer from using letters of his available to the public in an archive: Salinger v Random House Inc (1987) 811 F 2d 90 (CA 2, 1987). 59 See Vaver (2000) (ibid) 636, citing D Vaver, Intellectual Property: Copyright, Patents, Trade-marks (Concord, Ontario, Irwin Law, 1997) 5–6. 60 Ibid.

18 The Copyright System: Justification and History Certainly, it should be noted, as Professor Vaver does, the historical trend has been for intellectual property rights to become more intense and all encompassing. In its early years, for example, copyright law simply prevented literal copying:61 so for example, when the copyright owner of a painting complained that tableaux vivants mimicking it were being staged in London without his permission, a claim of copyright infringement failed.62 This has now changed.63 Likewise, it has been argued that the concept of ‘originality’ as the basis for protection in copyright law has mutated from an understanding that ‘original’ should embody an element of novelty akin to patent law to simply that it involves some independent skill and labour on the part of the author, although more recently the courts in the UK and EU treat a work as ‘original’ if it is ‘the author’s own intellectual creation.’64 Nevertheless, copyright is an expansive right – as Mr Justice Laddie once memorably put it, ‘You can have too much of a good thing, and I suggest we have got too much copyright.’65 Another approach is that of Marxist historians, who have argued that the emergence of copyright and notions of originality were a conversion of ideas into things: property. Art became property, and this basis was reinforced by stressing the creative genius of the artist and hence introducing a moral (rights) basis to plagiarism as equivalent to theft.66 Nevertheless, artists fail to benefit from the copyright system as an artist’s rights are frequently transferred to business interests – to ‘Capital’ – either by virtue of the artist’s employment or by assignment: it is Capital not Labour that ultimately benefits from copyright, albeit that copyright is dressed up in the language of authors’ rights.67 Also, there are those like John Perry Barlow who, in the light of the rapid growth of the Internet and digitisation and the difficulties of preventing the digital piracy of

61 Ibid, 625–26. 62 Hanfstaengl v Empire Palace [1894] 2 Ch 1 (CA), affirmed sub nom Hanfstaengl v Baines & Co [1895] AC 20, discussed in Vaver (2000) (above n 58) 625. Stina Teilmann-Lock comes to the same conclusion in her study of British copyright cases from 1769 to 2001: Teilmann-Lock (above n 9) 235–38. 63 See Bradbury, Agnew & Co v Day (1916) 32 TLR 349, which held that the earlier cases were no longer good law in light of s 1(2) of the Copyright Act 1911: ‘“Copyright” means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatsoever.’ 64 See for example Dicks v Yates (1881) 18 Ch D 76 (CA) (per Lush LJ): ‘I take it to be established law that to be the subject of copyright the matter must be original, it must be a composition of the author, something which has grown up in his mind, the product of something which if it were applied to patent rights would be called invention.’ This is in distinction to the House of Lords in Walter v Lane [1900] AC 539, where simply the original effort in transcribing the notes of a speech done by a shorthand writer was sufficient to justify copyright protection. Both these cases are discussed by Laddie (1996) (above n 52) 259–60. Note, however, that this traditionally held view of how English law treats originality no longer applies following the impact of EU law and in particular the Infopaq decision (Case C-5/08) of 2009. See for example the comments of Estelle Derclaye on the 2009 Infopaq decision (Case C-5/08) of the ECJ: E Derclaye, ‘Infopaq International A/S v Danske Dagblades Forening (C-5/08): Wonderful or Worrisome? The Impact of the ECJ Ruling in Infopaq on UK Copyright Law’ (2010) European Intellectual Property Review 247. ‘Originality’ as developed by the CJEU and applied by the UK courts is discussed further in ch 3. 65 Laddie (1996) (above n 52) 260. But for a measured view of the debate from a US perspective, see also JC Ginsburg, ‘Essay: How Copyright Got a Bad Name for Itself ’, Research Paper 02-46 (Columbia Law School Public Law & Legal Theory Research Paper Group, 18 October 2002), available at SSRN (abstract id=342182) and published in (2002) 26(1) Columbia Journal of Law and the Arts. 66 See AB Kernan, ‘Art and Law’ Princeton Alumni Weekly (12 October 1998) 34, 69, cited by Vaver (1990) (above n 58). 67 This is admittedly a gross oversimplification of the Marxist analysis; for a more detailed discussion, see, eg, K Bowrey, ‘Who’s Writing Copyright’s History?’ (1996) 6 European Intellectual Property Review 322, 325,

Justifications for Copyright 19 works, see the very notion of copyright as outdated: ‘intellectual property law cannot be patched, retrofitted or expanded to contain digitised expression any more than real estate law might be revised to cover the allocation of the broadcasting spectrum.’68 He sees encryption as the technical solution for most intellectual property protection. Finally, in light of the growth of creative communities (often online) that appear to encourage the creation of copyright works without the need for economic incentives (eg, YouTube, Flickr, Instagram, open source software), there has been a debate as to whether the classic economic argument for the existence of copyright is still a credible one. Should the ‘incentives argument’ be jettisoned completely?69 Or should the focus be on not just the economic incentives that might motivate creators but also the ‘expressive incentives’ that underlie copyright law? In other words, perhaps there should be a focus on ‘incentives that express solicitude for and protect a creator’s strong personhood and labor interests’ (for example, giving authors attribution, linking the copyright term to the author’s lifetime and generally the importance of moral rights to authors).70 Either way, copyright is clearly here to stay. But it does seem right to question whether the classic economic incentive argument for copyright is really still valid in all cases, especially in the context of ‘open innovation communities’ (eg, the open source software movement), where information is shared with little if any concerns for intellectual property protection, and indeed, in a legal environment where attempts to privatise creative endeavours are discouraged through ‘Copyleft’ licensing models.71

2.2.5. Some Conclusions There are a variety of justifications for copyright. No one argument is likely to prevail in any jurisdiction or at any particular time: the justifications are, in the words of the leading English copyright text Copinger, ‘cumulative and interdependent … although different countries give varying emphasis to each of them’.72 However, the general view citing B Edelman, Ownership of the Image: Elements for a Marxist Theory of the Law, E Kingdom (trans) (London, Routledge and Kegan Paul, 1979). 68 JP Barlow, ‘The Economy of Ideas: Everything You Know about Intellectual Property is Wrong’ Wired (March 1994). 69 This is argued by E Johnson, ‘Intellectual Property and the Incentive Fallacy’ (2012) 39 Florida State University Law Review, https://ir.law.fsu.edu/lr/vol39/iss3/2/ (accessed 15 August 2020). 70 See JC Fromer, ‘Expressive Incentives in Intellectual Property’ (2012) 98 Virginia Law Review 1745. 71 For a stimulating discussion of this area, see R Cooper Dreyfuss, ‘Does IP Need IP? Accommodating Intellectual Production outside the Intellectual Property Paradigm’, New York University School of Law Research Paper (August 2010), available at SSRN, abstract ID=163950; published in (2010) 31(5) Cardozo Law Review 1437–73. On the origins of ‘copyleft’, see ‘Proprietary software developers use copyright to take away the users’ freedom; we use copyright to guarantee their freedom. That’s why we reverse the name, changing “copyright” into “copyleft”’: ‘What is Copyleft?’, available at www.gnu.org/licenses/copyleft.en.html (accessed 15 August 2020). Outside the field of software, Creative Commons is probably the best known example of taking open-source licensing concepts and modifying them so that they can apply to other types of copyright work where attribution of the author is paramount. See discussion below in ch 6, s 6.3.2, esp n 136. 72 Copinger (1999) (above n 10) 2-04. Laddie, for example, simply sees three ‘sacred’ principles as justifying the existence of copyright: (i) the Eighth Commandment (‘Thou shalt not steal’); (ii) that matter created by the brain should be treated as property; and finally, (iii) the principle of reward (copyright serves as an incentive to allow and encourage artists and the like to spend time in creative activities as their ‘investment’ of time and money will be protected at law, and this is in the public good): Laddie (1996) (above n 52) 253–54.

20 The Copyright System: Justification and History is that in the development of modern copyright laws, the economic and public policy justifications are given greater weight in Anglo-American laws, whilst in civil law and especially Continental jurisdictions, moral rights arguments are given primacy.73 In fact, the European Court of Justice in Phil Collins74 has defined the specific subject matter of copyright and performers’ rights as being to ensure the protection of the moral and economic rights of their holders.75 Also, the perceived difficulty of adequately protecting works on the fringes of or outside traditional concepts of copyright or property rights – for example, databases or ‘semiconductor topographies’ – has led to the growth in so-called sui generis rights: rights ‘of their own nature’, not linked juridically to other specific rights. Indeed, it has been suggested that authors’ rights generally should be classified as sui generis. But this has not found much favour, except in very limited circumstances.76

2.3. The History of Copyright77 Copyright arose out of monopoly privileges granted by the Crown to printers from the fifteenth century onwards. Alongside such printing privileges (‘patents’) direct from the Crown under the royal prerogative, the printing trade also developed its own system of regulation through the Stationers’ Company in London (which in turn derived its authority from the Crown). 73 Saunders speaks of the ‘great divide’ between the traditions of ‘copyright’ as developed in English law and the droit moral in droit d’auteur systems of author’s right protection: Saunders (above n 18) 236–37. See also Copinger (above n 10) para 2-04. 74 Joined Cases C-92/92 and C-326/92 (20 October 1993). 75 Para 20 (emphasis added). Although outside the scope of the present work, it is worth noting that Phil Collins made clear that copyright and moral rights potentially affect trade in goods and services and also competitive relationships within the European Union; hence, although governed by national law, such rights are subject to the requirements of EU law and fall within its scope of application (para 22). In particular, the exercise of copyright in an anti-competitive manner could fall foul of EU law (as well as national competition laws): see, for example, Magill [1995] FSR 530. 76 See Sterling (above n 40) 44 for a discussion of various theories (eg, of Picard, Roubier and Dabin) in this regard. 77 See JH Baker, An Introduction to Legal History, 3rd edn (London, Butterworths, 1990) 348–50; Cornish 4th edn (above n 30) ch 9; and Copinger (1999) (above n 10) ch 2. For a detailed analysis of the development of artistic copyright in the UK during the critical period of 1850–1911 when photography came to the fore and the Fine Arts Copyright Act 1862 came into effect see E Cooper, Art and Modern Copyright: The Contested Image (Cambridge, Cambridge University Press 2018). One of her points is that the logic and grammar of artistic copyright during this period was different from that applying to literary copyright (which is important for as noted earlier most copyright history (and theory) focuses on the printed word) (at 3). See also the articles by K Bowrey, ‘Who’s Painting Copyright’s History’ and L Bently, ‘Art and the Making of Modern Copyright Law’ both in D McClean and K Schubert (eds), Dear Images: Art, Copyright and Culture (London, Ridinghouse/ICA, 2002). S Teilmann-Lock approaches the history of artistic (and other copyrights) through the lens of conceptual history in her book The Object of Copyright: A Conceptual History of Originals and Copies in Literature, Art and Design (Abingdon, Routledge, 2016). For a detailed discussion of the history of intellectual property law generally in the UK see B Sherman and L Bently, The Making of Modern Intellectual Property Law: The British Experience, 1760–1911 (Cambridge, Cambridge University Press, 1999) and for reflections on copyright history see R Deazley, M Kretschmer and L Bently (eds), Privilege and Property: Essays on the History of Copyright (Cambridge, OpenBook Publishers, 2010). For online access to primary materials together with commentaries see Primary Sources on Copyright (1450–1900), eds L Bently and M Kretschmer, www.copyrighthistory.org.

The History of Copyright 21 The modern notion of the creator-authors owning exclusive rights to print and publish their works played no part in the early years of copyright. It was not until the first copyright statute in the world, the 1709 Statute of Anne78 that authors of books or other writings (not works of art) and their assigns were granted a limited fourteen-year period of protection in the first instance.79 In the eighteenth century, it was disputed as to whether literary copyright existed at common law independently from the 1709 statute: in the landmark case of Donaldson v Beckett (1774),80 the House of Lords held that upon publication of a work, it did not. From then on, the law of copyright became the sole creature of statute.81 Works of art were given protection later on, first by a series of statutes beginning in 1735 in favour of engravings.82 The first of these, the Engraving Copyright Act of 1734,83 was the first statute to give legislative protection to artistic works, granting a fourteen-year term of protection for only works both designed and engraved by the artist. This was because the force behind the Act, the celebrated artist and engraver William Hogarth, was invariably the designer as well as the engraver of his well-known works, which were widely pirated.84 Indeed, in distinction to literary property and the genesis of the Statute of Anne (where the book trade, as opposed to authors, were primarily seeking protection), artists, not printers and print-sellers, sought legislative protection against piracy.85 The later Act of 176686 redressed the position and allowed engravers who engraved to the designs of others to themselves benefit from copyright protection. Prints taken by lithography or other mechanical process then gained protection through the International Copyright Act of 1852.87 Further statutes beginning in 1787 gave very limited protection to fabric designs.88 Sculptures were granted protection by statutes of 1798 and 1814.89 Perhaps surprisingly, 78 8 Anne, c 19. 79 For a challenging and fresh look at the background to the Statute of Anne and its aftermath, see R Deazley, On the Origin of the Right to Copy: Charting the Movement of Copyright Law in Eighteenth-Century Britain, 1695–1775 (Oxford, Hart Publishing, 2004). See also more generally, R Deazley, Rethinking Copyright: History, Theory, Language (Cheltenham, Edward Elgar, 2006). 80 4 Burr 2408; 2 Bro PC 129. 81 Common law copyright did survive for unpublished works, but this was abolished by the Copyright Act 1911. 82 Stat 8 Geo II, c 13; enlarged by 6 Geo III, c 38, s 2; 17 Geo III, c 57. 83 Stat 8 Geo II, c 13. 84 See generally Copinger (1999) (above n 10) para 2-19. In particular, Hogarth’s ‘A Harlot’s Progress’ was widely pirated. The Act became law on 25 June 1735, and so Hogarth delayed publication of the even better known ‘The Rake’s Progress’ until that date: D Bindman, Hogarth (London, Thames and Hudson, 1981) 61. Hogarth himself commented, ‘After having had my first plates Pirated on all sides and manner, I applied to parliament for redress which not only has so effectually done my business but has made prints a considerable article and trade in this country, there being more business of that kind done in this Town than in Paris or anywhere else’ (quoted in S Shesgreen (ed), Engravings by Hogarth (New York, Dover Publications, 1973) xxvi). 85 J Feather, Publishing, Piracy and Politics (London, Mansell, 1994) 70. Feather notes that in the 1735 petition by Hogarth, George Vertue and other artists and engravers for protection against unauthorised copying of their engraved prints, they sought similar protection to that already afforded to others ‘as the Laws now in being have preserved the Properties of the Authors of Books’ (70). 86 Stat 6 Geo III, c 38. 87 Stat 15 & 16 Vict c 12, s 14. Lionel Bently discusses the background to this Act and its importance as the first modern copyright statute in L Bently, ‘Art and the Making of Modern Copyright Law’ in McClean and Schubert (eds) (above n 11) 331–51. 88 Stat 27 Geo III, c 38. 89 Stat 38 Geo III, c 71 (busts or statues of humans or animals); and 54 Geo III, c 56. The term of protection in the first instance was 14 years from publication.

22 The Copyright System: Justification and History it was not until 1862 that copyright was extended to paintings, drawings and photographs.90 Prior to this date, case law protected by copyright the photography of an engraving through engraving copyright (which treated the photograph as an unlawful copy of an engraving under the 1777 Act91) but not the photography or other reproduction of a painting (and indeed the making of an engraving from a painting). The first comprehensive, modern statute and unified copyright code was the Copyright Act 1911, which took account of the Berne Convention of 188692 and technological developments such as sound recordings. Under this Act, the period of protection for most types of work was made at least the author’s life plus 50 years.93 The Copyright Act 1956 took account of further technological developments and added three new forms of entrepreneurial copyright: in cinematograph films, broadcasts and the typographical format of published editions. By the 1970s there was a consensus that further changes to the law were required to take account of photocopying, audio- and video- taping and computing. The use of copyright to protect industrial designs was also being reassessed. The United Kingdom also decided to adopt fully the Continental concept of moral rights, and the copyright protection for unpublished works was set at life plus 50 years;94 other changes were also considered desirable. The result is the current copyright statute, the Copyright, Designs and Patents Act (CDPA) 1988, which repealed the 1956 Act (which in turn repealed the 1911 Act).95 The CDPA itself has been revised on a number of occasions to take account of a stream of European copyright Directives. This has been done through Regulations (ie, by statutory instrument) rather than by a new Act. The influence of the harmonisation programme of the European Commission and subsequent judgments of the Court of Justice of the European Union (CJEU) have been increasingly far reaching on UK copyright law. For example, among other areas, CJEU cases have recast how the originality of a copyright work is to be assessed and indeed what a copyright work is.96 How long this will continue after Brexit remains to be seen.97

90 Stat 25 & 26 Vict, c 68 (Fine Arts Copyright Act 1862). The term was the author’s life plus seven years. For a detailed discussion of the Act see R Deazley (2008) ‘Commentary on Fine Arts Copyright Act 1862’, in Primary Sources on Copyright (1450–1900), eds L Bently and M Kretschmer, www.copyrighthistory.org, and E Cooper (above n 77). 91 Stat 17 Geo III, c 57; the case was Gambart v Ball, 14 CB (NS) 306, 143 ER 463 (1863). This case is discussed in Bently (above n 87). See also Cooper (above n 77, ch 6) – the case involved photographic copies of engravings of Rosa Bonheur’s The Horse Fair and William Holman Hunt’s The Light of the World. 92 This has been revised on numerous occasions and, along with the Universal Copyright Convention (UCC) of 1952, is one of the two main international copyright conventions. The Berne Convention ensured equality of protection between member states under which either the personal connection of the author with a member state, or first publication in a member state, was enough to secure copyright in any other member state, on the terms afforded by that state to its own authors (the so-called principle of national treatment). This is discussed further below in ch3; and see generally, Ricketson (above n 44). 93 This remained the position in the UK until 1996, when, in response to a European Directive harmonising the term of copyright, it was made life plus 70 years. 94 Under the 1911 and 1956 Acts, so long as a literary, dramatic or musical work, and certain artistic works remained ‘unpublished’ after the author’s death, the 50-year term did not begin to run. 95 The earlier Acts are still relevant in certain cases, eg, to determine subsistence of copyright in a pre-CDPA work, etc. See the transitional provisions in the CDPA (esp Sch 1). 96 As discussed below in ch 3 and ch 6, s 6.6, the Directives introduced since 1991 to harmonise EU/EEA copyright law have had a significant impact on UK copyright law. 97 Brexit and its impact on UK copyright law is discussed in s 6.7 of this book.

The History of Copyright 23

Suggested Further Reading L Bently and M Kretschmer (eds), Primary Sources on Copyright (1450–1900), www. copyrighthistory.org. E Cooper, Art and Modern Copyright: The Contested Image (Cambridge, Cambridge University Press, 2018) R Deazley, M Kretschmer and L Bently (eds), Privilege and Property: Essays on the History of Copyright (Cambridge, OpenBook Publishers, 2010) D McClean and K Schubert (eds), Dear Images Art, Copyright and Culture (London, Ridinghouse/ICA, 2002) S Teilmann-Lock, British and French Copyright: A Historical Study of Aesthetic Implications (Copenhagen, DJØF Publishing, 2009)

3 The Modern Law of Copyright 3.1. Background THIS CHAPTER provides an overview of UK copyright law – the building blocks (along with Chapter 4) for the later analysis in this book.

3.1.1. Overview The Berne Convention expressly recognises that artistic works are to be given protection in member states of the Berne Copyright Union. Article 2 of the Berne Convention states: [T]he expression ‘literary and artistic works’ shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as … cinematographic works … works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works … works of applied art …

In US law artistic works are protected by copyright and fall within the definition of ‘pictorial, graphic and sculptural works’.1 When granting copyright protection, most states do not discriminate between ‘good’ and ‘bad’ artistic works. So a work has to merely be an ‘artistic work’ rather than be above a particular threshold of quality. Indeed, in the United Kingdom, as we will see below, artistic works are protected irrespective of their artistic quality. The exception to this rule is works of ‘artistic craftsmanship’.2 1 S 102(a), Copyright Act 1976. These are defined to include ‘two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article’ (s 101). ‘Useful article’ is further defined as ‘an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a “useful article”’ (s 101). 2 This exception is how UK law has traditionally treated such works. However in light of the CJEU case Cofemel (Copyright and related rights – Judgment) [2019] EUECJ C-683/17 (discussed later in this chapter) it can be argued even the requirement for artistic quality is no longer necessary for protection as long as the work is the author’s own intellectual creation (see discussion of HH Judge Hacon in Response Clothing Ltd v The Edinburgh Woollen Mill Ltd [2020] EWHC 148 (IPEC) (63)).

Background 25 It is not surprising that the legislature and the judiciary have tended to shy away from making artistic copyright subject to the artistic merit of the work in question. The matter was very well put by Oliver Wendell Holmes (as Justice of the US Supreme Court) in Bleistein v Donaldson Lithographing Co (1903),3 which affirmed copyright protection for a circus advertising poster depicting acrobats performing on bicycles: It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits. At one extreme some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke. It may be more than doubted, for instance, whether the etchings of Goya or the paintings of Manet would have been sure of protection when seen for the first time.4

Also, as Rose has argued, ‘the prestige of items of “high art” … is also invoked to legitimate the protection of humbler products.’5 It therefore can be argued that for art to flourish, those who seek to be artists must receive the same treatment in copyright law as those who succeed as artists.6 Moreover, even a modest work of art deserves protection because it will have the stamp of the artist’s personality on it. To quote Justice Holmes in Bleistein again, Personality always contains something unique. It expresses its singularity even in handwriting, and a very modest grade of art has in it something irreducible, which is one man’s alone. That something he may copyright.7

However, it is worth noting that in countries where copyright is based on the authors’ rights system,8 the requirement of ‘creativity’ for a work to benefit from copyright protection can sometimes pose problems for the protection of artistic works. For example, in Germany, objets trouvés and ready-mades have been denied copyright protection.9

3 (1903) 188 US 239. 4 Bleistein (ibid) 251. See also, for example, the UK Supreme Court: ‘[I]t is common ground that in copyright cases the court is not concerned with passing judgment on the merits of either literary or artistic works’ (Lucasfilm Limited v Ainsworth [2011] UKSC 39, 26). 5 M Rose, Authors and Owners (Cambridge, MA, Harvard University Press, 1993) 137. See, for example, SPE International Ltd v Professional Preparation Contractors (UK) Ltd [2000] EIPR N-19 (per Rimer J), where the originality of drawings for a mobile blast cleaning machine is discussed in the same context as a picture by Mondrian. See also below ch 6, s 6.4.3. 6 Paraphrasing P Goldstein, ‘Copyright’ (1991) 38 Journal of the Copyright Society of the USA 109, 115–16: ‘[F]or authorship to flourish, those who seek to be authors must receive the same welcome as those who succeed as authors.’ 7 Bleistein (above n 3) 299–300. This echoes the ‘personality’ basis for copyright discussed above in ch 2. 8 As noted above ch 1, in droit d’auteur/authors’ rights systems, creativity that reflects the author’s personality is required: a copyright work must be the author’s own intellectual creation. 9 BGH GRUR 1986, 458, Oberammergauer Passionspiele. See L Bently and B Sherman, ‘Copyright Aspects of Art Loans’ in N Palmer (ed), Art Loans (London, Kluwer, 1996) 249 and 257. As UK law now incorporates the author’s own intellectual creation test for originality derived from European law the issue of ‘creativity’ rather than ‘sweat of the brow’ in determining whether a copyright work is original now has application in UK law (see section 3.2.2 below).

26 The Modern Law of Copyright It is further worth noting that in UK law, if a work is blasphemous, offensive or immoral, copyright protection may not be granted, or at the very least, the courts may not enforce copyright.10 Andres Serrano’s highly controversial work ‘Piss Christ’ and other works made out of once living human matter, such as the freeze-dried foetus earrings that were the subject of a prosecution inter alia for outraging public decency in 1989,11 have been suggested in this regard.12 The copyright protection for street art such as graffiti might also be challenged if the street art were considered to be criminal damage or vandalism.13

3.1.2. Economic Rights and Moral Rights This chapter focuses on the artist’s economic rights under copyright law (rights to control the reproduction, communication to the public or other economic exploitation of the work); Chapter 4 looks at the moral rights of artists.

3.2. UK Law In setting out the modern law of copyright in the United Kingdom under the Copyright, Designs and Patents Act (CDPA) 1988, it is necessary to consider: 1) 2) 3) 4) 5) 6) 7) 8) 9)

the classes of work protected by copyright (ie, the ‘subject- matter’ of copyright); criteria for protection (ie, that they be original); the identity of the author; the need for fixation/permanence of the work; qualifying factors for protection; the duration of protection; the identity of the first owner of the copyright; the scope of the copyright monopoly (ie, the economic rights); and other rights analogous to copyright.

10 Glyn v Weston Feature Film [1916] 1 Ch 261; AG v Guardian (No 2) [1988] 3 All ER 640. See also the Court of Appeal judgment in Hyde Park Residence Ltd v David Yelland and Others [2000] 3 WLR 215 in which Aldous LJ gave examples of situations when the Court would be entitled to refuse to enforce copyright as including work that is immoral, scandalous or contrary to family life, or injurious to public life, public health and safety or the administration of justice, or work that incites or encourages others to act in this manner. See RA Browes, ‘Copyright: Court of Appeal Considers Fair Dealing Defence and Rejects Common Law Defence of Public Interest’ (2000) European Intellectual Property Review 289, 291. 11 R v Gibson [1990] 2 QB 619, as discussed at length in P Kearns, The Legal Concept of Art (Oxford, Hart Publishing, 1998) 29–35. 12 See Bently and Sherman (above n 9) 246–47. Kearns (ibid) also gives the example of Leonard McComb’s statue of a naked youth, ‘Portrait of a Young Man’, which was withdrawn from an exhibition in Lincoln Cathedral in 1990 after complaints it was indecent for a place of worship, in a discussion of the application of the law of blasphemous libel to works of art (25–26). 13 See section 6.4.4 below.

UK Law 27

3.2.1. The Classes of Work Protected by Copyright The traditional approach of UK copyright law is that copyright can subsist only in certain classes of works,14 exhaustively defined by section 1 (and related sections) of the CDPA as: 1) ‘original’15 literary works (any written works, including computer programs),16 dramatic works and musical works; 2) ‘original’ artistic works:17 graphic work (which includes (a) any painting, drawing, diagram, map, chart or plan, and (b) any engraving, etching, lithograph, woodcut or similar work),18 photograph, sculpture or collage, in each case irrespective of artistic quality; work of artistic craftsmanship; work of architecture (ie, a building or a model for a building); 3) sound recordings, films19 and broadcasts; and 4) the typographical arrangement of published editions.20 The need for a work to fall into a specific category to be protected appears well-entrenched in UK law.21 However, EU copyright cases have moved to a less subject-matter specific 14 It is debated as to whether only one ‘copyright’ can subsist in a given work. This issue arises from time to time, primarily in engineering drawings and designs, which often contain both diagrams and notation. For example, in Anacon Corporation v Environmental Research Rechnology Ltd [1994] FSR 659, Jacob J held that a circuit diagram for a piece of electronics could be both an artistic work and a literary work (ie, a list of components together with special notation for their interconnection), as under s 178 of the CDPA, ‘writing’ includes any form of notation or code. This finding was criticised by Laddie J in Electronic Techniques (Anglia) Ltd v Critchley Components Ltd [1997] FSR 401, 412–13: either the information concerned is communicated graphically or by words. However, the matter can be debated: see also Aubrey Max Sandman v Panasonic U.K. Ltd & Matsushita Electric Industrial Co Ltd [1998] FSR 651; and Mackie Designs Inc v Behringer [1999] RPC 717. For a critical commentary, see D Booton, ‘Framing Pictures: Defining Art in UK Copyright Law’ (2003) 1 Intellectual Property Quarterly 41–46. Note that maps, which are defined as artistic works in the CDPA also contain text and narrative, see B Bandey, ‘Over-Categorisation in Copyright Law: Computer and Internet Programming Perspectives’ (2007) 29(11) European Intellectual Property Review 461–65. Note also that when an author creates a discrete new drawing, painting or other artistic work, it is protected by its own copyright, even if based on preceding works, as long as sufficient relevant skill and labour have gone in to creating it: see IPC Media Ltd v Highbury-Leisure Publishing Ltd [2005] FSR 20, para 5, which concerned magazine cover designs. 15 The issue of originality is considered below. 16 S 3 CDPA deals with literary works. 17 S 4 CDPA deals with artistic works. 18 S 4(2) CDPA. 19 Film copyright protects a film as a whole. Films are discussed below in ch 6, ss 6.4.6 and 6.4.9. 20 This rather narrow copyright serves to protect the ‘image on the page’ and protects the publisher (who is the owner of this right) who has incurred the costs of typesetting, etc from exact copying by photo-lithography or similar means: it protects the entire edition, whether it contains a number of separate literary works or not. See The Newspaper Licensing Agency Ltd v Marks and Spencer PLC [2000] 4 All ER 239, para 23 (per Peter Gibson LJ). Designs for typefaces themselves are protected by artistic copyright: see below. 21 See for example the Court of Appeal, Jacob LJ in discussing artistic works: ‘Copyright protection in artistic works is defined (now in s.4 of the 1988 Act) by reference to various categories of work with no distinction between their aesthetic merits and appeal and their functionality. A graphic work can include a diagram or plan which is designed to have only practical utility. But it is still protected as an artistic work. Equally it can comprise a painting which (however bad it may be in artistic terms) is unlikely to be anything but decorative. The key therefore to copyright protection is that the work created by the author falls within one or other of the descriptions contained in the 1988 Act: i.e. that it is such a work. It does not depend upon a further analysis or identification of its design features.’ (Lucasfilm v Ainsworth [2009] EWCA Civ 1328 (43)). Note that

28 The Modern Law of Copyright approach to what a copyright-protected work is.22 In this chapter the traditional UK work-specific approach will be applied – it remains to be seen whether the UK courts will follow the lead of the CJEU and develop a broader approach to what a work is although the UK courts have already shown some flexibility here.23 Of primary relevance to this book are ‘artistic works’. It is important to stress that as noted above UK law is quite specific in the categories of artistic works that are protected

Article 2 of the Berne Convention is more open-ended and other jurisdictions are less rigid (see J Marshall, ‘Case Comment: Copyright “works” and “fixation”: where are we now?’ (2019) 3 Intellectual Property Quarterly 252–261). 22 See in particular Levola Hengelo C-310/17, ECLI:EU:C:2018:899 which concerned whether the taste of a food product (cheese) could be protected as a copyright work. In that case it was not protected – for a work to be protected by copyright ‘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’ (para 40). The court went on, ‘[t]he taste of a food product cannot, however, be pinned down with precision and objectivity. Unlike, for example, a literary, pictorial, cinematographic or musical work, which is a precise and objective form of expression, the taste of a food product will be identified essentially on the basis of taste sensations and experiences, which are subjective and variable since they depend, inter alia, on factors particular to the person tasting the product concerned, such as age, food preferences and consumption habits, as well as on the environment or context in which the product is consumed’ (para 42). However the court also set out a test for what qualifies as a copyright work which is not subject-matter specific and not limited to particular categories of work: ‘[i]n that regard, two cumulative conditions must be satisfied for subject matter to be classified as a “work” … First, the subject matter concerned must be original in the sense that it is the author’s own intellectual creation (judgment of 4 October 2011, Football Association Premier League and Others, C-403/08 and C-429/08, EU:C:2011:631, paragraph 97 and the case-law cited). Secondly, only something which is the expression of the author’s own intellectual creation may be classified as a “work” within the meaning of Directive 2001/29 (see, to that effect, judgments of 16 July 2009, Infopaq International, C-5/08, EU:C:2009:465, paragraph 39, and of 4 October 2011, Football Association Premier League and Others, C-403/08 and C-429/08, EU:C:2011:631, paragraph 159)’ (paras 35–37). The court also stated that the concept of work in EU copyright law was a uniform and autonomous one – this certainly challenges the traditional UK approach: ‘[the Information Society Directive 2001/29] makes no express reference to the laws of the Member States for the purpose of determining the meaning and scope of the concept of a “work”. Accordingly, in view of the need for a uniform application of EU law and the principle of equality, that concept must normally be given an autonomous and uniform interpretation throughout the European Union (see, to that effect, judgments of 16 July 2009, Infopaq International, C-5/08, EU:C:2009:465, pararaphs 27 and 28, and of 3 September 2014, Deckmyn and Vrijheidsfonds, C-201/13, EU:C:2014:2132, paragraphs14 and 15)’ (para 33). See also Cofemel-Sociedade de Vesturário SA v G-Star Raw CV (Case C-683/17) EU:C:2019:721. The UK courts are already applying the CJEU decisions Levola Hengelo and Cofemel to this issue albeit in a limited way at present (see Response Clothing Ltd v The Edinburgh Woollen Mill Ltd (Rev 1) [2020] EWHC 148 (IPEC) – this case involved defining what was meant by a work of artistic craftsmanship). Marshall (n 21) 260, sees Levola as opening the door for protection to a range of works in respect of which the UK courts have in the past denied copyright protection (eg Stormtrooper helmets, a random collection of objects, facial makeup, a single creative word (‘Exxon’), furniture prototypes and a jump-cut edited film – works also discussed elsewhere in this book where the relevant cases are discussed). 23 For example, computer GUI (graphical user interface) screens have been held to be artistic works (Navitaire Inc v Easyjet Airline Co. & Anor [2004] EWHC 1725 (Ch) 98). However in a much more recent case Response Clothing Ltd v The Edinburgh Woollen Mill Ltd [2020] EWHC 148 (IPEC) the judge still felt obliged to follow the traditional UK approach of categories – ‘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’ (27) (HH Judge Hacon). For a more general discussion of the CJEU and copyright law see E Rosati, Copyright and the Court of Justice of the European Union (Oxford, Oxford University Press, 2019).

UK Law 29 by copyright. If a work does not fall into one of these categories, it will not be protected by copyright.24 This may appear surprising, for the use of categories of work means that contemporary art works such as ‘ready-mades’ and some other types of modern art do not easily fall into any specific category.25 Indeed, this pigeonholing of art into categories of work, some of which are protected, some of which are not, can be criticised as failing to incentivise modern artists to create such works, thus failing at least one of the rationales for copyright protection discussed in the preceding chapter.26 Nevertheless, as Anne Barron has forcefully spelt out, this is hardly surprising, as ‘the work concept has actually been generated by the copyright system’s … fundamental commitment to the logic of property’: Copyright law is a branch of property law, and the chief function of property law is to define the things which may be objects of exclusive private control and identify the persons in whom those rights of control may be vested. Because of their amorphous character, intellectual objects pose particular difficulties of identification and attribution, and the concept of the work is a response to those difficulties …27

So the categories of artistic work under the CDPA and what is likely to fall within the relevant category are subjects needing detailed consideration, in particular given the way contemporary art is developing. This, along with the issues surrounding the originality of such works, is considered below in chapter six.

Graphic Works: Paintings, Drawings, Engravings, Etc28 Painting has its ordinary usage for the purposes of copyright, and it is a question of fact in any particular case whether what is being considered is or is not a painting.29

24 In practice, as one leading copyright judge put it, the law has been ‘bedevilled’ by attempts to extend the scope of these definitions (Laddie J in Metix (UK) Limited and Another v GH Maughen (Plastics) Limited and Another [1997] FSR 718); and this is a feature of the lack of a developed law of unfair competition in the UK, according to another judge (Whitford J in Davis (J&S) (Holdings) Ltd v Wright Health Group Ltd [1988] RPC 403). The need to fall within the specified categories/descriptions with no distinction between their aesthetic merits and appeal and their functionality in order to claim artistic copyright protection was noted by the Court of Appeal: Lucasfilm Limited v Andrew Ainsworth [2009] EWCA Civ 1328, 43, referred to earlier (n 21). Whilst these cases do pre-date the EU developments noted above in n 22, the author still expects the UK courts to follow the definitional approach required by the CDPA, but with flexibility. 25 As discussed in Bently and Sherman (above n 9) 248–49. Bently and Sherman are of the view that the case for artistic copyright protection for ready-mades is stronger when the works are made with an artistic purpose in mind rather than when the work is simply ‘found’ and ‘relocated with artistic meaning’, as in Duchamp’s Readymades. This issue is given greater consideration below and in ch 6 in particular. 26 See also F Macmillan, ‘Artistic Practice and the Integrity of Copyright Law’ in M Rosenmeier and S Teilmann (eds), Art and Law: The Copyright Debate (Copenhagen, DJØF Publishing, 2005) 71–73. 27 A Barron, ‘Copyright, Art and Objecthood’ in D McClean and K Schubert (eds), Dear Images Art, Copyright and Culture (London, Ridinghouse/ICA, 2002) 291–92. 28 The term ‘graphic work’ was new to the CDPA (s 4(2)) (but included paintings, drawings and engravings defined in s 3(1)(a) of the Copyright Act 1956 as artistic works); and graphic work is defined to include (a) any painting, drawing, diagram, map, chart or plan; and (b) any engraving, etching, lithograph, woodcut or similar work. In Anacon Corporation Limited and Another v Environmental Research Technology Limited and Another [1994] FSR 659, Jacob J said that the essential nature of a graphic work was that it was a thing to be looked at in some manner or other: ‘It is to be looked at in itself ’ (662). Here circuit diagrams were held to be artistic works and also literary works. As discussed in this case, the visual significance of artistic works is

30 The Modern Law of Copyright Drawing also has its ordinary usage, and no particular artistic merit is required for graphic works: in Kenrick v Lawrence30 it was held that there could be copyright in a simple drawing of a hand for a voting card, but the scope of the copyright protection was very limited (to the exact reproduction of that drawing), as no one could monopolise the drawing of a hand in general. Another often cited case illustrating that quite simple artistic works will qualify for copyright protection is British Northrop Ltd v Texteam Blackburn Ltd,31 in which copyright was held to subsist in drawings for rivets, screws, bolts, etc. Other cases have afforded copyright protection to the label design for a sweet tin,32 a signature,33 the arrangement of a few decorative lines on a parcel label34 and colour charts containing numbers used to produce patchwork bedspreads and cushion covers.35 A trade mark (a ‘device mark’) has also been held to be an artistic work (a drawing).36 It is worth speculating whether a random series of marks, say where an artist throws a pot of paint at a canvas, qualifies as a painting. If there is some order or selection behind the creation of the work (eg, through the selection of paint, canvas, etc), there

important both in assessing their originality and also where a case of copyright infringement arises. See also Billhöfer Maschinenfabrik GmbH v TH Dixon & Co Ltd [1990] FSR 105; and below. The list of works which can be graphic works is not exhaustive – so for example papercuts can fall within this category (Taylor v Maguire [2013] EWHC 3804 (IPEC)). But it is not an endlessly flexible definition – ‘It does not follow that the definition is endlessly flexible. All the examples of a graphic work set out in the subsection [s4(2) CDPA] are created by the author making marks on a substrate to generate an image. I do not think that the definition of a graphic work can be stretched to include a fabric, whether made on a loom or a knitting machine’ (Response Clothing Ltd v The Edinburgh Woollen Mill Ltd (Rev 1) [2020] EWHC 148 (IPEC) 16). But contrast Abraham Moon & Sons Ltd v Thornber & Ors [2012] EWPCC 37 (discussed below). 29 Merchandising Corporation v Harpbond [1983] FSR 32: the facial make-up of the 80’s pop star Adam Ant was not a ‘painting’, as a painting has to be on a surface of some kind. 30 (1890) 25 QBD 93. 31 [1974] RPC 57. 32 Taverner Rutledge v Specters [1959] RPC 355 (CA). 33 According to an unreported decision cited in K Garnett et al, Copinger and Skone James on Copyright, 14th edn (London, Sweet & Maxwell, 1999) [hereafter ‘Copinger (1999)’] para 2-23. 34 Walker v British Picker [1961] RPC 57. See WR Cornish, Intellectual Property, 4th edn (London, Sweet & Maxwell, 1999) [hereafter ‘Cornish, 4th edn’] 389. 35 Vermaat v Boncrest Ltd, The Times (23 June 2000), [2000] EIPR N-151, (June 2000) 3 Intellectual Property Lawyer 10. It was held that artistic copyright (as a graphic work) could potentially subsist in a drawing accompanied by words and figures that provided instructions to create an artistic work (on the basis of Lerose Limited and Another v Hawick Jersey International Limited [1974] RPC 42, which held that ‘point patterns’ for knitting machines were artistic works – ‘drawings’ under s 3 of the 1956 Act), Interlego AG v Tyco Industries Inc [1989] AC 217 distinguished. So clearly, literary elements of a design can form part of an artistic work: see also the cases on circuit diagrams discussed above. Another interesting case is Abraham Moon & Sons Ltd v Thornber & Ors [2012] EWPCC 37 where a ‘ticket stamp’ (a ticket stamp is the pattern guide for the setting up of a fabric loom which in essence determines the pattern woven into the fabric) was held to be a graphic work despite being pages of words and numbers. The judge considered that the ticket stamp acted as a record of the visual image (the copyright-protected fabric design) in a similar way to how a computer file stored the iPad created works of the artist David Hockney (105). The judge commented ‘Artistic copyright must relate to the content of the work of the artist [in this case the visual image of the fabric] and not the medium in which it is recorded [in this case the ticket stamp]’ (106). 36 The mark consisted of the words ‘Karo Step’ surrounded by a circle within four arcs of circles that met to form the four points, which were filled in to give it the character of a star: KARO STEP Trade Mark [1977] RPC 255. Whitford J did, however, comment that a drawing could be so simple that it failed to be a ‘work’ for copyright purposes (eg, a straight line or a circle), for ‘work’ carried with it the idea of the exercise of some degree of skill and labour (273).

UK Law 31 would appear no reason why not.37 However, there is old authority for refusing copyright protection where what is produced is ‘meaningless’.38 Rubber stereos for producing designs on transfer paper have been held to be ‘engravings’,39 an engraving being held to include both the images made from the engraved plate and the engraved plate used to produce the engravings.40 Non-slip rubber floor mats for cars have also been protected as engravings: both the metal plate used to produce the mat, as well as the mats themselves (ie, the ‘print’ produced from the engraved metal plate), the judge considering the process involved in the production of the plate as key, being an act of engraving.41 Certainly what is meant by the terms ‘engravings, etchings, lithographs, and woodcuts’ depends upon how the processes concerned (engraving, etching, etc) are defined, but one would have thought that it is straining the English language to call industrial moulds/plates and their output ‘engravings’ in the sense of artistic works.42 Otherwise, one ends up with protecting dies or moulds for mass-produced items as ‘engravings’ simply because the die or mould in question may be cut out of a metal (as is the plate used to create engravings). By focusing on the process of creation, the courts are trying to avoid making any artistic judgement as to what an engraving is, but the result can be a bit surprising, as the cases discussed earlier indicate – so surely questions of what is art (ie, an engraving) have to be considered as well. In any event, the decision of the Court of Appeal in Lucasfilm Limited v Andrew Ainsworth (affirmed by the Supreme Court),43 which is discussed below, suggests the courts are now unlikely to take the approach of just looking at the process used to create a work in determining the question – applying similar principles used by the High Court in that case for what is a ‘sculpture’, an engraving should be given its normal meaning, and there should be some assessment of the author’s purpose in creating the engraving and its visual appeal.

37 ‘Originality’ ought not to be an issue, as applying the traditional test in UK law some skill and labour would be involved in selecting the materials and creating the work or in the alternative following the CJEU test (Infopaq now applied by the courts – Infopaq International A/S v Danske Dagblades Forening [2010] FSR 20) it is presumably still the author’s own intellectual creation which has been considered a low standard by the UK courts (Technomed Ltd & Anor v Bluecrest Health Screening Ltd & Anor [2017] EWHC 2142 (Ch) 89). 38 Fournet v Pearson Ltd (1897) 14 TLR 82 (CA) (unintelligible drunken scrawl): see JAL Sterling, World Copyright Law (London, Sweet & Maxwell, 1999) 189. However, the authority of this case must be doubted. It concerned an alleged literary work written by a drunk optician and published after the event ‘for scientific purposes’; the test for a literary work was held by the judge at trial to be whether ‘it was something of enduring benefit to mankind’. The Court of Appeal gave no consideration to the question of subsistence of copyright. 39 James Arnold and Co Limited v Miafern and Others [1980] RPC 397. 40 Ibid, 403. Paul Baker QC was also of the view that an engraving need not just be made by an engraving process (ie, cutting into wood, metal or other material) (403). However, Copinger (1999) (above n 33) queries whether a mould or die as such would be an ‘engraving’ (3-37), and this was also doubted by the Hong Kong Court of Appeal in Interlego AG v Tyco Industries Inc [1987] FSR 409, 453 (per Fuad JA), commenting on a New Zealand case in which ‘engraving’ included the mould to make a ‘Frisbee’: Wham-O Manufacturing Co v Lincoln Industries Ltd [1985] RPC 127 (CA). In any event, where a mould is used, a sculpture might be the result (but see the discussion about sculptures below). 41 Hi-Tech Autoparts Ltd v Towergate Two Ltd [2002] FSR 15 & 16 (Patents County Court). The judge cited Wham-O (ibid) 153. 42 See generally Copinger (above n 33) 3–37. An Australian case makes this point, denying protection to the moulds of a lawnmower engine: Greenfield Products Pty Ltd v Rover-Scott Bonnar Ltd (1990) 17 IPR 417 (Fed Ct). 43 Above nn 4, 21 and 24.

32 The Modern Law of Copyright

Photographs ‘Photograph’ is defined under section 4(2) of the CDPA as ‘a recording of light or other radiation on any medium on which an image is produced or from which an image may by any means be produced, and which is not part of a film’. Photography is a problem area for copyright law, as in a sense every photograph is a copy of something; and unlike drawing or painting, the actual recording of the image can require no skill or labour beyond the mere mechanical operation of a ‘point-and-shoot’ camera. Hence can photographs be ‘original’ in order to qualify for copyright protection?44 Certainly, UK law has traditionally been more generous in its protection of photographs than the droit d’auteur (authors’ rights) systems, which according to Professor Cornish ‘tend only to give copyright to “photographic works”, that is the results of careful and distinctive arrangement (scene setting, lighting, angle, etc), involving an element of aesthetic judgement which is personal to the photographer’.45 So unlike UK law, such systems will exclude both snapshots and press photographs.46 However, in the United Kingdom, ‘the work of the humble snapshot-taker stands in the same category as Beaton and Cartier-Bresson.’47 In any event, in UK law as traditionally understood there is still scope for originality in a photograph: for example, the use of specialised techniques such as angle of shot, exposure and use of filters; the creation of a specific scene or style of subject; and merely being in the right place at the right time. These factors all contribute to the creation of an original work. Traditionally, only a low level of originality is required in UK law: that some, albeit limited work or effort has gone into the creation of the work is enough – however the current test for originality is now that of the author’s own intellectual creation.48 In practice this new test is unlikely to make much difference for most photographs.49 However the traditional view that a photograph of an engraving from a

44 As Sir Richard Arnold has recently commented: ‘[t]he problem with copyright in photographs is that photographs can range from sophisticated artistic creations involving complex staging of the scene featured in the photograph (such as the works of Cindy Sherman) to images made entirely mechanically (such as photocopies, stills from security cameras and the like)’ (R Arnold, ‘Paintings from photographs: a copyright conundrum’ (2019) 50(7) International Review of Intellectual Property and Competition Law, 860–878. He also goes on in the same passage to note that in between such works and closer to the first end of the spectrum there are photographs which depend on the photographer capturing a ‘decisive moment’ (eg Henri Cartier-Bresson) and then further to the second end of the spectrum works which require considerable technical skill to produce the best results but where the composition is a given (such as a high quality photograph of a painting). So only some photographs involve mental labour (intellectual creativity) but all involve some element of mechanical labour. 45 Cornish, 4th edn (above n 34) 390. 46 Ibid. See also Kearns (above n 11) 69–71. 47 Cornish, 4th edn (above n 34) 407. 48 See Infopaq International A/S v Danske Dagblades Forening [2009] EUECJ C-5/08 as applied in, eg, Temple Island Collections Ltd v New English Teas Ltd & Anor [2012] EWPCC 1: ‘[a]t trial it was common ground that the impact of European Union law meant that the judgment of the CJEU in the Infopaq case (C-5/08 [2010] FSR 20) was such that copyright may subsist in a photograph if it is the author’s own “intellectual creation”. After trial it was also common ground that the recent judgment of the CJEU in the Painer case (C-145/10, 1st December 2011) was to the same effect and did not necessitate further submissions from the parties’ (18). 49 In Temple Island Collections Ltd v New English Teas Ltd & Anor [2012] EWPCC 1 which applied Infopaq the judge (HH Judge Birss QC) stated that there were ‘three aspects in which there is room for originality in photography: i) Residing in specialities of angle of shot, light and shade, exposure and effects achieved with filters, developing techniques and so on; ii) Residing in the creation of the scene to be photographed;

UK Law 33 picture, for example, is an ‘original’ photograph worthy of copyright protection can now be doubted.50

Sculptures/Ready-Mades/Collages ‘Sculpture’ is not defined by the CDPA, except that it includes ‘any cast or model made for the purposes of sculpture’.51 So a sculpture, for the purposes of the CDPA, is a sculpture in the ordinary sense of the term, as well as any cast or model made for the purposes of sculpture. Can ready-mades – works of art that are found or manufactured objects presented as art, eg, Marcel Duchamp’s urinal entitled ‘Fountain’ (1917) – be sculptures? It appears accepted that objects other than what one would traditionally class as such may be sculptures for the purpose of copyright protection: in a New Zealand case, a carved wooden model of the Frisbee was held to be a sculpture, but the manufactured plastic flying discs themselves were considered utilitarian objects, lacking ‘any expressive form of the creator and any idea which the creator seeks to convey’.52 According to the judge, ‘sculpture should in three-dimensional form express the idea of the sculptor.’53 However, in a later case, models and casts for dental impression trays were held not to be sculptures, as they were not made for the purposes of sculpture but were merely steps in the production process, and it was never intended that they have any continuing existence.54 The extension of ‘sculpture’ to include what are properly industrial designs (eg, in Breville Europe Ltd v Thorn EMI Domestic Appliances Ltd55) definitely appears to be receding.56 Current case law certainly suggests that the courts will tend to interpret iii) Deriving from being in the right place at the right time’ (22). The judge also noted: ‘[t]he resulting composition is capable of being the aggregate result of all these factors which will differ by degrees in different cases. Ultimately however the composition of the image can be the product of the skill and labour (or intellectual creation) of a photographer and it seems to me that skill and labour/intellectual creation directed to that end can give rise to copyright’ (27). 50 Graves’ Case (1869) LR 4 QB 715 is the authority for this traditional view. This case is not without its critics, and the matter is given further consideration below in ch 6 in light of CJEU cases and European developments. For arguments why photographs should not be treated as ‘artistic works’ under the CDPA but instead (like films, broadcasts and sound recordings) be treated as ‘medium or signal copyrights’, which do not need to be ‘original’, see R Arnold, ‘Copyright in Photographs: A Case for Reform’ (2005) 27(9) European Intellectual Property Review 303–5. 51 S 4(2) CDPA. 52 Wham-O Manufacturing Co v Lincoln Industries Ltd [1985] RPC 127, 157 (per Davison CJ). 53 Ibid. 54 J & S Davis (Holdings) Limited v Wright Health Group Limited [1988] RPC 403. 55 [1995] FSR 77 (a case in fact decided by Falconer J in 1985): plaster shapes made to produce die-casting moulds for the heating plates of a sandwich toaster were held to be sculptures. The manner in which the work was made was held to be important; eg, carving, modelling or casting are all part of the process of making a sculpture based on the ordinary dictionary meaning of sculpture (from the Concise Oxford English Dictionary), as extended by s 48(1) of the 1956 Act (which extended sculpture to include ‘any cast or model made for the purposes of sculpture’) (94). This approach was followed by Lloyd J in Creation Records v News Group Newspapers, The Times (29 April 1997); [1997] EMLR 445, who stated that the assembly of objets trouvés in that case could not be a sculpture on this basis. 56 ‘No ordinary citizen – indeed no ordinary lawyer – would regard a sandwich toaster or any part of it as a work of sculpture – even if it did produce ‘scalloped’ sandwiches. So why should a copyright lawyer take a different view? A total or almost total emphasis on the manner of creation, as in Breville and Wham-O, produces a result which offends common sense and in our view is wrong. There must be [as the trial judge said] be some element of artistic expression however unsuccessful’: Lucasfilm [2009] (above n 21) 66.

34 The Modern Law of Copyright ‘sculpture’ in its ordinary sense: ‘a three dimensional work made by an artist’s hand’.57 Having said that, when the Court of Appeal reviewed the case law in this area and, in rejecting prototype Star Wars helmets and armour and also toy Stormtroopers as sculptures, they concluded that no one test can be applied and considered that a multifactorial approach (which the judge applied at first instance) can be justified: The result of this analysis is that it is not possible or wise to attempt to devise a comprehensive or exclusive definition of ‘sculpture’ sufficient to determine the issue in any given case. Although this may be close to adopting the elephant test of knowing one when you see one, it is almost inevitable in this field.58

In another case, Creation Records Ltd and Others v News Group Newspapers Ltd,59 it was argued that the scene of assembled objects in a swimming pool together with the members of the Oasis pop group, which was to form the subject matter of an album cover photograph, was itself an artistic work, either a sculpture, collage or work of artistic craftsmanship. The judge, citing Breville, gave short shrift to it being a sculpture or a work of artistic craftsmanship, as no element in the composition had been carved, modelled or made in any of the other ways in which sculpture is made.60 Nor did it appear to involve the exercise of any craftsmanship.61 However, the judge in Creation Records did discuss at greater length the possible meaning of ‘collage’ under the CDPA. ‘Collage’ was introduced into the CDPA in 1988 as a new category of artistic work. According to Lloyd J, the traditional understanding of that word is that it involves the use of glue or some other adhesive in the process of making a work of visual art, being derived from the French, although the Concise Oxford English Dictionary (ninth edition) also defined it as ‘a collection of unrelated things’. Lloyd J was firmly of the view that an essential element of a collage is the sticking of two or more things together; the collocation of random, unfixed elements (as in the photograph) was not a collage, even if done with artistic intent.62 57 Metix (above n 24) (per Laddie J). The case concerned inter alia moulds for making cartridges (used to mix chemicals), which the plaintiffs claimed copyright in as works of sculpture. This was firmly rejected by the judge, on the basis that although it was not possible to say with precision what is and what is not a sculpture, the persons making the moulds did not appear to consider themselves (nor were they considered by anyone else) to be artists when they designed the moulds, and their only consideration in making the moulds was to achieve a precise functional effect rather than any aesthetic appeal. To describe the moulds as sculptures would be to go far beyond the meaning that the word ‘sculpture’ has to ordinary members of the public, notwithstanding the frequent attempts made to widen the field covered by the Copyright Acts. 58 Jacob LJ, judgment of the court, in Lucasfilm [2009] (above n 21) 77. The Supreme Court upheld the judgments at first instance and in the Court of Appeal but ‘at the risk of appearing humourless’, was not enthusiastic about the ‘elephant test’: ‘[a]ny zoologist has no difficulty in recognising an elephant on sight, and most could no doubt also give a clear and accurate description of its essential identifying features. By contrast a judge, even one very experienced in intellectual property matters, does not have some special power of divination which leads instantly to an infallible conclusion, and no judge would claim to have such a power. The judge reads and hears the evidence (often including expert evidence), reads and listens to the advocates’ submissions, and takes what the Court of Appeal rightly called a multi-factorial approach. Moreover the judge has to give reasons to explain his or her conclusions’: Lucasfilm [2011] (above n 4) 47. 59 Above n 55. 60 As noted above, this test – the method of creation – is no longer in favour, at least on its own. ‘The process of fabrication is relevant but not determinative. I do not see why a purely functional item, not intended to be at all decorative, should be treated as a sculpture simply because it is (for example) carved out of wood or stone’: Mann J in Lucasfilm Ltd & Ors v Ainsworth & Anor [2008] EWHC 1878 (Ch) 118, (ix). 61 Creation Records (above n 55) 448–49. 62 Ibid, 450.

UK Law 35 The judge’s discussion of whether the composition in question was a ‘collage’ is worth reading. Counsel for the plaintiffs had argued that section 4 of the CDPA ought not to be construed to deny copyright protection to novel works of art. So Lloyd J considered in passing the possible copyright treatment of a number of contemporary artworks that are difficult to categorise within the existing definitions of works protected by copyright. These included Carl Andre’s bricks; the stone circles created by Richard Long; Rachel Whiteread’s house; the living sculptures of Gilbert and George; and installation art generally.63 In the end, he did not find it necessary or appropriate to determine the matter. However, he did distinguish the record cover ‘compilation’ or assembled scene from such works of art, on the basis that the ‘compilation’ was merely – indeed intrinsically – ephemeral and was materially different from such works of art.64 In conclusion, the courts have been unable to define precisely what comprises a sculpture, despite it being the term used in section 4(1)(a) of the CDPA: ‘a … sculpture … irrespective of artistic quality’. For one thing, the elimination of ‘artistic quality’ from the definition has tempted some judges to focus on how the work is made, in an attempt to avoid judging artistic merit. But to do so leads to sandwich toaster moulds and wooden Frisbee models to be protected as sculptures, a result that offends common sense – even that of a copyright lawyer. So any definition has to include within it a consideration of the purpose for which the object in question is made, although any artistic merit is to be rejected – in other words, is it made to be enjoyed as a visual thing? So the best guidance we currently have revolves around the guidance factors enumerated by Mann J in Lucasfilm,65 which can be summarised as follows: 1) Some regard has to be had to the normal use of the word ‘sculpture’. 2) Nevertheless, the concept can be applicable to things going beyond what one would normally expect to be art in the sense of the sort of things that one would expect to find in art galleries. 63 Carl Andre’s bricks and similar works continue to inspire judicial comment. For example, Mann J commented on the definition of sculpture under the CDPA: ‘A pile of bricks, temporarily on display at the Tate Modern for two weeks, is plainly capable of being a sculpture. The identical pile of bricks dumped at the end of my driveway for two weeks preparatory to a building project is equally plainly not. One asks why there is that difference, and the answer lies, in my view, in having regard to its purpose. One is created by the hand of an artist, for artistic purposes, and the other is created by a builder, for building purposes’: Lucasfilm [2008] (above n 60) 118, (viii). 64 Creation Records (above n 55) 449–50. Nor was it a ‘dramatic work’, as it was inherently static, having no movement, story or action (448). The judge in fact rejected all attempts to claim that the ‘composition’ assembled for the photograph was a work protected by copyright. However, he did consider that there was an arguable case that the taking of the photograph and its publication were in breach of confidence (the composition having been made at a hotel under conditions of security and limited access). A similar circumstance might be if an artist kept his studio private, and photographs of his works were taken without his permission: in addition to a copyright infringement action (assuming the works were protected by copyright), there might be an action for breach of confidence. This area is discussed in more detail below in ch 8. 65 Lucasfilm [2008] (above n 60) para 118. On appeal, the Court of Appeal (above n 21) agreed with Mann J’s approach (para 77). The Supreme Court (above n 3) was also in agreement: ‘we would uphold the judgments below very largely for the reasons that they give’ (47). What was highlighted by the Supreme Court in its judgment was the utilitarian purpose behind the Imperial Stormtrooper helmet at issue – it was a mixture of costume and prop, an element in the process of production of the film and so not sculpture’ (42–47). The Supreme Court also stressed the policy considerations underlying the law in this area (48). These are noted below s 3.2.9. See also C de Mauny, ‘Lucasfilm Ltd v Ainsworth: Star Wars Episode VIII, The Sculpture Wars’ (2010) 32(5) European Intellectual Property Review 251–54.

36 The Modern Law of Copyright 3) It is inappropriate to stray too far from what would normally be regarded as sculpture. 4) No judgement is to be made about artistic worth. 5) Not every three-dimensional representation of a concept can be regarded as a sculpture. Otherwise every three-dimensional construction or fabrication would be a sculpture, and that cannot be right. 6) It is of the essence of a sculpture that it should have, as part of its purpose, a visual appeal in the sense that it might be enjoyed for that purpose alone, whether or not it might have another purpose as well. The purpose is that of the creator. 7) The fact that the object has some other use does not necessarily disqualify it from being a sculpture, but it still has to have the intrinsic quality of being intended to be enjoyed as a visual thing. 8) It is created for artistic purposes (the example of Carl Andre’s pile of bricks (as opposed to bricks dumped in a driveway for building purposes) was discussed). 9) The process of fabrication is relevant but not determinative. Yet this approach too is not without its problems when it comes to works that either can be mass produced or have utility as well as aesthetic appeal: in an Australian case, threedimensional depictions of animals made out of wire incorporating a candle holder were held to be sculptures, as well as works of artistic craftsmanship,66 suggesting that these definitions potentially overlap. It is to works of artistic craftsmanship we now turn.

Works of Artistic Craftsmanship The courts also have had difficulty defining this category of work, which expressly includes ‘artistic’ in its definition. Its introduction into English copyright law in the Copyright Act 191167 was a response to the Arts and Crafts Movement. The term would appear to cover the work of artist-craftsmen and include such items as hand-painted tiles, stained-glass windows, wrought-iron gates and certain pieces of furniture.68 66 Wildash v Klein (2004) 61 IPR 324. ‘I am satisfied that the works in question are “sculptures”. They are three dimensional craft pieces hand made with a degree of skill in the medium employed which are designed to have aesthetic appeal to potential purchasers. That some of the works … are also functional … does not prevent them from being “sculptures” within the meaning of that term in the Act’: para 12 (per Angel J). They were also held to be works of artistic craftsmanship: ‘The present handicraft works in issue are “works of artistic craftsmanship”. They demonstrate the requisite artistic quality and are the product of the requisite craftsmanship. Each is made by hand and has artistic character that is likely to be valued or appreciated by its owner’ (para 13). In Lucasfilm, there was a discussion of the copyright protection of toy soldiers (toy Imperial Stormtroopers). Highly accurate and artistic reproductions of soldiers could qualify as sculptures, even if children might play with them (citing Britain v Hanks (1902) 86 LT 765 – a model soldier cast in metal was a sculpture under the 1814 Act), but in most modern cases, toy soldiers real or fictional will not be works of art, being mass produced toys, not collectables, whose only purpose is play and not to be admired for their own visual sake: Lucasfilm, High Court (above n 60) (para 123); and Court of Appeal (above n 21) (paras 81–82). This was the case for the toy Stormtroopers in Lucasfilm. 67 S 35. 68 See George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1975] RPC 31, the leading case, in which the House of Lords considered the availability of copyright protection for the prototype model of a drawing room furniture suite comprising two chairs and a settee. The House of Lords unanimously determined that the prototype furniture did not fall within the definition of a ‘work of artistic craftsmanship’ within s 3(1)(c) of the Copyright Act 1956. This case has been the subject of much comment. See, for example, D Booton, ‘Art in the Law of Copyright: Legal Determinations of Artistic Merit under United Kingdom Copyright Law’ (1996) 1 Art, Antiquity and Law 125; and Kearns (above n 11) ch 3.

UK Law 37 As nine separate approaches to the definition of ‘work of artistic craftsmanship’ are discernible from the leading case, Hensher v Restawile Upholstery,69 the law is, to say the least, uncertain.70 Now that section 52 of the Copyright, Designs and Patents Act 1988 has been repealed (as discussed later in this chapter) the limitation on the copyright protection of industrially manufactured artistic works to 25 years (rather than 70 years from the death of the creator) in the UK no longer applies. This means we can expect to see more cases where it is argued that the items in question are works of artistic craftsmanship – in areas like furniture and industrial design in particular.71 In Hensher, Lords Simon and Kilbrandon considered that the intention of the maker to create a work of art was highly significant.72 Lord Reid, however, whilst regarding the intention of the designer as important, did not consider this conclusive, nor was the utility of the work a bar to protection. The work must clearly be made by craftsmanship,73 and in determining whether it is ‘artistic’, it is important to avoid philosophical concerns of aesthetics, not least as those ignorant about philosophy are entitled to have opinions about what is artistic.74 Lord Reid was also of the view that a work was ‘artistic’ if a substantial section of the public genuinely admires and values it for its appearance and gets pleasure or satisfaction, whether emotional or intellectual, from looking at it – whether or not others consider it vulgar or common or meaningless.75 Lord Morris said that to decide whether a work fell within the definition, the work must itself be assessed in a detached and objective way to determine whether it has the character or virtue of being artistic, without giving decisive weight to the author’s intention (although this

69 Ibid. 70 The UK Intellectual Property Office Guidance document on the repeal of s 52 of the Copyright, Designs and Patents Act 1988, 7–9 contains a useful and succinct summary of the law in this area with the comment: ‘There is no statutory definition of a “work of artistic craftsmanship”. Without a formal definition, it is ultimately up to the UK courts to decide what would be classified as a work of artistic craftsmanship (protected by copyright law).’ (Guidance document on repeal of s 52, CDPA, IPO, March 2017 – see https://assets. publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/606207/160408_guidance_s52_final_web_accessible.pdf (accessed 9 May 2020)). 71 See above IPO Guidance document on the repeal of s 52 for background. The repeal took effect on 28 July 2016 (with a transitional period to full implementation to 6 April 2017). 72 In Hensher (above n 68) Lord Simon was also of the view that ‘works of artistic craftsmanship’ must be construed as a whole (and artistic and craftsman not construed in isolation (69)); furthermore, it could not be properly construed without bearing in mind the aims and achievements of the Arts and Crafts Movement, with its emphasis on the applied or decorative (as opposed to the fine) arts. However, craftsmanship is not limited to handicraft, nor is ‘artistic’ incompatible with machine production (66); it does, however, presuppose special training, skill and knowledge for its production (66): Lord Simon cited Cuisenaire v Reed [1963] VR 719; and Cuisenaire v SW Imports Ltd [1968] 1 Ex CR 493, 514. Ultimately, what was important was: is the work by someone who in this respect was an artist-craftsman (69); and given the presence of craftsmanship, what was the intent of the creator and the result of their work (70)? ‘[A]rtists have vocationally an aim and impact which differ from those of the ordinary run of humankind’ (70). See also the later Australian case of Komesaroff v Mickle and Others [1988] RPC 204 in which a product for creating moving sand pictures was held not to be a work of artistic craftsmanship, as no craftsmanship on the part of the creator was employed in creating the product – Cuisenaire v Reed was also applied, although Hensher was not cited. Lord Kilbrandon was also of the view that the conscious intention of the craftsman was the primary test of whether his product is artistic or not: ‘the fact that many of us like looking at a piece of honest work, especially in the traditional trades, is not enough to make it a work of art’ (Hensher (above n 68) 71). 73 Hensher (above n 68) 53. Lord Reid was of the view this suggests a durable handmade object and not something, for example, to be used merely as a step in a commercial operation that has no value in itself. 74 Ibid, 54. 75 Ibid.

38 The Modern Law of Copyright was a possible pointer); it was a question of fact upon which the court should pay heed to the evidence adduced.76 Viscount Dilhorne was also of the view that the functional appeal of a work was not a bar to protection: for him it was simply a question of fact for the judge, and ‘works of artistic craftsmanship’ must be given its ordinary and natural meaning.77 Subsequent cases to Hensher do little to clarify things. In Merlet v Mothercare78 Walton J denied protection to a baby raincosy, as the creator, Mme Merlet, had designed it without any artistic consideration in mind but rather to protect her baby on a visit to Scotland from ‘the assumed rigours of a Highland summer’.79 Also, following Lord Reid and others in Hensher, he noted that onlookers gained no aesthetic satisfaction from contemplating the garment, and this was relevant.80 In Shelley Films Limited v Rex Features Limited,81 Merlet was distinguished, and it was held to be arguable that copyright could subsist in a film set as a work of artistic craftsmanship.82 Creation Records Limited and Others v News Group Newspapers Limited83 also considered Shelley Films: the assembly of ‘objets trouvés’ photographed in Creation Records was held not to be a work of ‘artistic craftsmanship’ – it was not the subject of or result of the exercise of any craftsmanship,84 and it could be distinguished from a film set (as in Shelley Films), which clearly does involve craftsmanship in its creation. In the New Zealand case Bonz Group (Pty) Ltd v Cooke,85 Tipping J had to consider whether hand-knitted woollen sweaters and cardigans designed and knitted by different persons depicting among other things dancing lambs and golfing kiwis were entitled to protection as works of artistic craftsmanship: the Judge held they were.86 Bonz was applied

76 Ibid, 57. 77 Ibid, 62. Like Lord Reid, he was also of the view that a work of craftsmanship is something made by hand and not mass produced (60). Note, however, that in light of the development of the Arts and Crafts Movement, Lord Simon was of the view that ‘craftsmanship’ was not limited to handicraft (but did presuppose special training, skill and knowledge for its production), nor was ‘artistic’ incompatible with machine production (66). 78 [1986] RPC 115. 79 Ibid, 126–27. 80 Ibid, 124. It was not permissible to consider the article in its intended use (ie, mother, baby and raincosy together as an ensemble); to determine the question, the article must be judged on its own merits (124). 81 [1994] EMLR 134 (application for interlocutory relief). 82 If the set were imaginatively conceived and implemented overall, and the overall effect and intent was artistic: Shelley Films (ibid) 143. 83 [1997] EMLR 444 (another application for an interlocutory injunction). 84 See especially Lord Simon in Hensher (above n 68). 85 [1994] 3 NZLR 216. 86 Consideration was given to Hensher (above n 68), Merlet (above n 78), Cuisenaire v Reed (above n 72) and the earlier dress design case of Burke and Margot Burke Limited v Spicers Dress Designs [1936] Ch 400 (which denied protection to a woman’s dress on the basis it was a work of artistic craftsmanship). (Skilled dressmakers had derived their ideas from a design sketch made by a director of the plaintiff, but this case was doubted by Oliver J in Radley Gowns Ltd v Costas Spyrou [1975] FSR 455, where it was found to be arguable that the original dress was a work of artistic craftsmanship.) Tipping J in Bonz had difficulty with making the intention of the designer the determinative test: there had to be an objective element, or there must be some artistic quality present. What was important was that the author was both a craftsman and an artist: a craftsman makes something in a skilful way and takes justified pride in his workmanship; an artist has creative ability and produces something with creative appeal. The idea of craftsmanship relates more to the execution of a work than its design, but ‘artistic’ relates more to the design; and it did not matter that the designer and craftsman were different persons (Bonz (above n 85) 224).

UK Law 39 in the United Kingdom in Vermaat v Boncrest Ltd,87 which concerned sample patchwork bedspreads, which were held not to be works of artistic craftsmanship: following Bonz, it was necessary to consider whether they could fairly be said to be the work of both a craftsman and an artist, and in this case the bedspreads could not be viewed as artistic or creative enough to fall within the definition of a work of artistic craftsmanship.88 The court did not consider the talents and intentions of the designer.89 Since this case, an attempt in the UK courts to protect machine-made prototype garments intended for mass production failed. Applying Merlet v Mothercare, the judge in Shirin Guild v Eskander Limited90 said the test was twofold: first, did their creation manifest an exercise of craftsmanship; and second, were they works of art? The latter was a matter of evidence; a primary consideration but not necessarily the only one was whether the maker had the conscious purpose of creating a work of art, and if he did and did not manifestly fail in this regard, it would be a work of art. In this case, prototype machine-made garments intended for mass production were neither craftsmanship, nor did Mrs Guild intend creating a work of art or even regard herself as an artist.91 More recently, an attempt to argue that prototype Star Wars Stormtrooper helmets and armour were works of artistic craftsman-ship also failed. The judge found the decision in Bonz helpful, citing Tipping J that the author had to be both a craftsman and an artist.92 The author here was certainly a craftsman but, for this purpose, not an artist – the purpose in creating the items was not to appeal to the aesthetic but to give a particular impression in a film: ‘it was no part of their purpose that it should in any way appeal as a piece of art; or that it should be admired for any aspect of its appearance as such.’93 87 The Times (23 June 2000) (Ch D) (per Evans-Lombe J); [2000] EIPR N-151; Intellectual Property Lawyer (July 2000) Issue 3. Hensher (above n 60) was considered by Evans-Lombe J, but the approach of Tipping J in Bonz (above n 85) was the one he actually applied. 88 As the works were made by seamstresses in India (to the designs of designers in England), they were held to be works of craftsmanship; but, although pleasing to the eye, the works did not have sufficient artistry or creativity to qualify as ‘artistic’. 89 To add even further confusion, U Suthersanen, Design Law in Europe (London, Sweet & Maxwell, 2000) 16-050 refers to an unreported case, Hourahine v Everdell & Mitchard, which concerned pop-up greetings cards. These were held to be works of craftsmanship (on the basis of the effort put into constructing the card) but were not artistic – notwithstanding criticism of the Court of Appeal, eg, by Lord Reid (55), the Court of Appeal in Hensher was nevertheless relied on to the effect that for a work to qualify as a work of artistic craftsmanship, its utilitarian or functional appeal should not be the primary inducement to its acquisition or retention (per Russell LJ at 49), and the functional aspect predominated in this case. 90 [2001] FSR 38. 91 Note, however, the approach in an Australian case in which the stitch structure of a fabric used in massproduced designs and created by using a computer was held to be a work of artistic craftsmanship, the judge following the approach of Lord Simon in Hensher (a work of artistic craftsmanship had to have both craftsmanship, which could include the use of computer-controlled machinery, and aesthetic quality): Coogi Australia v Hysport International [1998] FCA 1059. See also United Pacific Industries v Madison Sports [1998] FCA 614. 92 Lucasfilm Limited v Andrew Ainsworth [2008] EWHC 1878 (Ch), paras 124–35. Note also that whilst certain other aspects of this case were appealed (in particular, a finding that the works in question were not sculptures), the determination that they were not works of artistic craftsmanship was not appealed: Lucasfilm [2009] (above n 21). In an Australian case the Court focused on artistic quality – whether a work has that quality depended on whether it is a work of craftsmanship, the artistic form of expression of which is sufficiently ‘unconstrained by functional considerations’: Burge v Swarbrick (2007) 232 CLR 336. See also a discussion of the case by J Pila, ‘Works of Artistic Craftsmanship in the High Court of Australia: The Exception as Paradigm Copyright Work’ (2009) 36(3) Federal Law Review 365–81. 93 Lucasfilm, High Court (ibid) para 134. The judge (Mann J) also considered whether the objects in question would have been recognised by William Morris as products of the Arts and Crafts movement – not as a general test, but to make his point (para 134).

40 The Modern Law of Copyright It has been suggested that possibly because of the lack of clear guidance in Hensher, few claims to works of artistic craftsmanship have been raised in the courts.94 A leading text strongly rejects any test that may involve a question of taste, subjective quality or personal opinion, as to adjudicate on these matters would exceed the functions of a court of law.95 To overcome this, Laddie, Prescott and Vitoria (LPV) proposed a test essentially similar to that of Lord Reid in Hensher.96 A case post-dating LPV applied the test of the judge in Bonz Group (Pty) Ltd v Cooke97 to the effect that the test is two-fold – was the person who created the work: a) a craftsman in that he or she made the work in a skilful way, taking justified pride in his workmanship; and b) an artist in that he or she used their creative ability to produce something which has aesthetic appeal?98

Works of Architecture and Typefaces Although not the subject of detailed consideration in this book, it should be noted that for copyright purposes, ‘artistic works’ also include works of architecture, being

94 A Speck et al, Laddie, Prescott & Vitoria: The Modern Law of Copyright 5th edn (London, LexisNexis, 2018) (hereafter ‘Laddie 2018’) 4.38. 95 Ibid, 4.37, citing a number of cases in which the courts have refused to adjudicate on questions that are not susceptible of judicial determination, including White v Mellin [1895] AC 154 (HL) 165 (per Lord Herschell) (whether one trader’s product was ‘better’ than another); and Harris v Warren and Phillips [1918] 35 RPC 217, 221–22 (per Eve J) (relative merits of musical compositions and whether they constitute the mature art of their composers). 96 Craftsmanship is seen as the working of materials by manual dexterity to produce the work, and ‘artistic’ relates to the visual appearance of the work, which must be significant in that persons wish to acquire and keep the work on especial account of its appearance: Laddie 2018 (above n 94) 4.37. Laddie 2018 sees such a two-part test as the only one actually workable. 97 [1994] 3 NZLR 216. This case and Tipping J’s judgment had been cited with approval by the UK courts in two previous first instance decisions – Vermaat (t/a Cotton Productions) v Boncrest Ltd (No.1) [2001] FSR 5 and Lucasfilm Ltd & Ors v Ainsworth & Anor [2008] EWHC 1878 (Ch). 98 Response Clothing Ltd v The Edinburgh Woollen Mill Ltd (Rev 1) [2020] EWHC 148 (IPEC) 36. In this case the work was a jacquard fabric design for ladies’ tops (Wave Fabric) which was held to be a work of artistic craftsmanship. The judge thought that the House of Lords in 1974 (the date of Hensher) would not have considered such a design a work of artistic craftsmanship ‘[b]ut no binding principles of law can be deduced from the judgment in Hensher which compel me to the same conclusion now. Moreover, the summary definition of a work of artistic craftsmanship provided by Tipping J in Bonz Group has been approved twice in England at first instance and the Wave Fabric can be said to fall within that definition’ (54). The judge then went on to cite recent CJEU cases dealing with the nature of a copyright work under CJEU law which appeared to remove the need for any aesthetic appeal for a work to be protected by copyright as long as it was the author’s own intellectual creation (Levola Hengelo (C-310/17) and Cofemel (C-683/17)). However, he considered that at present UK law still requires a work of artistic craftsmanship to have aesthetic appeal and he concluded: ‘I will adopt the Bonz Group summary definition of a work of artistic craftsmanship with clarifications which I believe to be consistent with the definition: (i) it is possible for an author to make a work of artistic craftsmanship using a machine, (ii) aesthetic appeal can be of a nature which causes the work to appeal to potential customers and (iii) a work is not precluded from being a work of artistic craftmanship solely because multiple copies of it are subsequently made and marketed. No binding English authority has been drawn to my attention which prevents me from construing s.4(1)(c) in that way. Accordingly, the Wave Fabric is a work of artistic craftsmanship’ (64). So, the fact it was machine-made and made in multiple copies did not prevent it being protected.

UK Law 41 buildings or models for buildings.99 This is in distinction to any plans, drawings and sketches for such works, which are eligible for protection as artistic works in their own right (as graphic works).100 The CDPA assumes that typefaces are protected as ‘artistic works’, although they are not expressly included in this category by section 4 of the CDPA.101

Films, Video Works and Animation Films as artistic works (in a broad sense) are considered below in chapter six, sections 6.4.6 and 6.4.9.

3.2.2. Criteria for Protection: Work Must be ‘Original’ ‘Originality’ does not mean being inventive or particularly creative and the standard required for a work to qualify as ‘original’ is low. An often-cited case is University of London Press Limited v University Tutorial Press Limited,102 which considered what was meant by ‘original’ in the context of a literary work. According to the judge, The word ‘original’ does not in this connection mean that the work must be the expression of original or inventive thought. Copyright acts are not concerned with the originality of ideas but with the expression of thought, and, in the case of a ‘literary work’, with the expression of thought in print or writing. The originality which is required relates to the expression of the thought. But the [Copyright Act 1911] does not require that the expression must be in an original or novel form, but that the work must not be copied from another work – that it should originate from the author.103

However it does need to be borne in mind that in light of the CJEU case Infopaq104 the UK courts now need to apply the arguably higher requirement for originality formulated by the CJEU in that and later cases – that of the author’s own intellectual creation

99 S 4(1)(c) CDPA. ‘Building’ includes any fixed structure, and a part of a building or fixed structure (s 4(2)). Copinger (above n 33) argues that based on the Copyright Act 1911, a work of architecture needs to have an artistic character or design to benefit from copyright protection (3-44). 100 So it is possible to infringe copyright in a building (as distinct from its plans) by, eg, copying the original building in an extension to a building – as in Meikle v Maufe [1941] 3 All ER 144, which involved an extension to the Heal’s building in Tottenham Court Road, London. At the time (the middle of the Second World War), this case generated much controversy because in the past architects had tended to view such copying as a compliment rather than insisting on their legal rights and also because of the context of the immense amount of rebuilding (and hence ‘copying’) foreseen after the war. In any event, there are a number of specific exceptions to copyright infringement for buildings and models for buildings – eg, s 62 CDPA (photographing, filming or drawing a building, etc); and s 65 CDPA (reconstructing a building). Freedom of panorama (which allows buildings to be photographed in a number of countries) is discussed below in section 6.8. 101 See s 178 and ss 54–55 CDPA. Cases under the Copyright Act 1911 held that both individual letters and fonts were artistic works: Millar & Lang Ltd v Polak [1908] 1 Ch 433; and Stephenson, Blake & Co v Grant, Legros & Co Ltd [1916] 33 RPC 406. 102 [1916] 2 Ch 601. 103 University of London Press Limited v University Tutorial Press (ibid) 608–9 (per Peterson J). The judgment also appears to acknowledge what is often called the idea/expression dichotomy in copyright: copyright does not protect ideas as such but only their expression. See below s 3.2.8; and above ch 1. 104 Infopaq International A/S v Danske Dagblades Forening [2009] EUECJ C-5/08.

42 The Modern Law of Copyright (which needs to reflect the personality of its author, as an expression of her free and creative choices)105 – and not the lower test that the work is not copied from another work and employs ‘sufficient skill, judgement and/or labour’ as developed by the UK courts over the years prior to Infopaq, although in most cases it is submitted the outcome is likely to be the same as the traditional UK approach.106 So where older UK cases dealing with originality are considered this needs to be borne in mind. Sherman107 has pointed out that the University of London Press Limited v University Tutorial Press Limited108 case highlights that in copyright law, ‘originality’ centres on the relationship between a work created and its creator. In other words, the source of the work must be the individual involved; there must be something in the work that can be said to be distinctively the ‘author’s’. Given that all artistic works emanate from some sort of tradition (and therefore will inevitably draw on ideas or indeed expression from other works), Sherman sees copyright drawing as ‘a line demarcating the acceptable (original) works from those in which the external influences become so great that the effort of the subject is overshadowed or eclipsed’.109 In any event, it remains the case that some degree of skill and labour on the part of the author is required to qualify a work as ‘original’,110 – traditionally (pre-Infopaq) no more than trivial effort and skill were required for these purposes.111 Nevertheless even

105 See Cofemel (Copyright and related rights – Judgment) [2019] EUECJ C-683/17 and the CJEU cases discussed in the judgement (30) (Painer, C-145/10, EU:C:2011:798 and Renckhoff, C-161/17, EU:C:2018:634) (30). The CJEU test is arguably higher than the traditional test as noted by the Court of Appeal (Lewison LJ): ‘If the Information Society Directive has changed the traditional domestic test, it seems to me that it has raised rather than lowered the hurdle to obtaining copyright protection’ (SAS Institute Inc v World Programming Ltd [2013] EWCA Civ 1482, 37). In a later case involving artistic works the assumption however was that the CJEU test and the traditional test were materially the same (T & A Textiles and Hosiery Limited v Hala Textile UK Limited [2015] EWHC 2888 (IPEC)) (16). However as discussed in ch 6 (the copyright protection of photographs of public domain works of art) there are situations where the application of the CJEU test will arguably deny protection to works protected under the traditional test but these it is submitted will be rare cases. 106 For a consideration of the CJEU test and the traditional UK test see A Rahmatian, ‘Originality in UK Copyright Law: The Old “Skill and Labour” Doctrine Under Pressure’ (2013) 44 International Review of Intellectual Property and Competition Law 4–34, and also more generally on the impact of CJEU cases on UK and EU copyright law see E Derclaye, ‘Assessing the Impact and Reception of the Court of Justice of the European Union Case Law on UK Copyright Law: What does the Future Hold?’ [2014] Revue Internationale de Droit d’auteur 5–117 and E Rosati, ‘Towards an EU-wide copyright? (Judicial) pride and (legislative) prejudice’ (2013) 1 Intellectual Property Quarterly 47–68. 107 B Sherman, ‘From the Non-original to the Ab-original: A History’ in B Sherman and A Strowel (eds), Of Authors and Origins (Oxford, Clarendon Press, 1994) 118–20. 108 [1916] 2 Ch 601. 109 Ibid, 120, fn 33 (emphasis added). For the importance of ‘authorship’, see Vermaat v Boncrest (above n 97) 10 (discussed earlier), in which some sketches for textile product designs were held not to be graphic works under s 4(1)(a) CDPA as they were insufficiently precise and lacked the requirement of originality under s 1(1)(a) CDPA because they did not depict the design pattern specified by the second claimant, which would differentiate them from other similar textile products: as the sketches could not be differentiated from the work of others, then there was no proof of authorship. See ‘Comment’ by Jeremy Phillips in Intellectual Property Lawyer (July 2000) Issue 3. 110 Interlego v Tyco [1989] (above n 35) 262H. 111 The traditional position is exemplified by Autospin (Oil Seals) v Beehive Spinning (a Firm) [1995] RPC 683 at 694, cited in SPE International v Professional Preparation Contractors (above n 5). What counted in the context of artistic works was whether the skill and labour applied to a new work pertains to that which is visually significant (Interlego v Tyco [1989] (above n 35) 262H, as cited in, eg, SPE International v Professional Preparation Contractors (above n 5) Chancery Division, High Court, 15 July 1999 (per Rimer J); [2000] EIPR N-19 and Billhöfer Maschinenfabrik (above n 28)). This traditional position was viewed as a very low standard

UK Law 43 applying the traditional (pre-Infopaq) test mere mechanical copying was not sufficient to confer ‘originality’: in The Reject Shop plc v Manners,112 the Court of Appeal rejected an argument that a slightly enlarged image produced using a photocopier was itself an original artistic work: there was no skill and labour involved in the copying sufficient to confer ‘originality of an artistic character’.113 Chapter six looks at “originality” in certain areas (for example, in the context of appropriation art, ready-mades, minimalist art and photographs).114

3.2.3. Who is the Author? For artistic and literary works, the ‘author’ for copyright purposes is the creator of the work in question.115 ‘Author’ is a term of art used throughout the CDPA. The CDPA also recognises works of ‘joint authorship’ – works produced by the collaboration of two or more authors in which the contribution of each author is not distinct from that of the other author or authors.116 The rise of user-generated content (eg, through Wikipedia and similar web 2.0 sites and services), artificial intelligence (AI) and online artistic collaboration may be challenging the rather fixed concept of the ‘author’ in UK copyright law, but the concept is so fundamental both in UK and international copyright law that it will remain for the foreseeable future.117

and lower than that of the US where following the Supreme Court in Feist Publications v Rural Telephone Service Co 499 US 340 (1991) 113 L Ed 358 (1991), a work must possess at least some minimal degree of creativity (369). In Europe, the position was different still: not only must origination be present, but the author’s own personality must find its expression in the work. However, as noted above the test for originality formulated by the CJEU which the UK courts must now apply is that of the author’s own intellectual creation which requires that the work ‘reflects the personality of its author, as an expression of his free and creative choices (see, to that effect, judgments of 1 December 2011, Painer, C-145/10, EU:C:2011:798, paragraphs 88, 89 and 94, and of 7 August 2018, Renckhoff, C-161/17, EU:C:2018:634, paragraph 14)’ (Cofemel (Copyright and related rights – Judgment)) [2019] EUECJ C-683/17, 30. 112 [1995] FSR 870. 113 Ibid, 876 (per Legatt LJ). 114 Note, for example, that in Merchandising Corp v Harpbond (above n 29) Lawton LJ was of the view that two straight lines drawn with grease-paint with another line in between them drawn with other colouring by itself could not attract copyright, as it had no originality (47). However, the main issue in this case was whether facial make up could be a ‘painting’ for copyright purposes. Contrast Megarry J in British Northrop (above n 31) 68: a single straight line drawn with the aid of a ruler was an artistic work. 115 S 9(1) CDPA. The rule is different for sound recordings, films, broadcasts and published editions (in respect of protection for typographical arrangements). 116 S 10 CDPA. The four elements of joint authorship are: (a) collaboration (ie a ‘common design’ which does not just focus on who did the writing (or in the case of an artistic work who created the artistic expression) – collaboration is a broad concept which can include contributing detailed ideas); (b) authorship; (c) contribution; and (d) non-distinctness of contribution (see Kogan v Martin & Ors (Rev 1) [2019] EWCA Civ 1645 – a case concerning the authorship of the screenplay of a film about the latter part of the life of Florence Foster Jenkins). For a detailed discussion of joint authorship, see L Zemer, The Idea of Authorship in Copyright (Aldershot, Ashgate, 2007) ch 7. He presents a collectivist model of intellectual property rights. See also below ch 9. See also D Simone, Copyright and Collective Authorship (Cambridge, Cambridge University Press, 2019) – Dr Simone discusses Wikipedia in her book, along with Australian indigenous art, scientific collaborations and films. 117 See S Stokes, Digital Copyright: Law and Practice, 5th edn (Oxford, Hart Publishing, 2019) for a discussion of web 2.0, authorship, AI and related issues; and the discussions below ch 5, s 5.2, ch 6, s 6.3 and ch 9.

44 The Modern Law of Copyright

3.2.4. The Need for Fixation/Permanence of the Work In the case of a literary, dramatic or musical work, copyright will subsist in the work only if it is recorded in writing or otherwise.118 There are no equivalent provisions for artistic works, although Bently and Sherman argue that a similar requirement may be demanded by the courts for artistic works.119 Indeed, on public policy grounds it has been argued that as copyright is in the nature of a monopoly, there must be certainty in its subject matter to avoid injustice.120 CJEU copyright jurisprudence does not expressly refer to fixation but does require that ‘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’. This is because ‘first, the authorities responsible for ensuring that the exclusive rights inherent in copyright are protected must be able to identify, clearly and precisely, the subject matter so protected. The same is true for individuals, in particular economic operators, who must be able to identify, clearly and precisely, what is the subject matter of protection which third parties, especially competitors, enjoy. Secondly, the need to ensure that there is no element of subjectivity – given that it is detrimental to legal certainty – in the process of identifying the protected subject matter means that the latter must be capable of being expressed in a precise and objective manner.’121 Certainly some element of fixation has on occasion been found necessary for artistic works in UK law.122 For example, in addition to the ‘Adam Ant case’ that Bently and

118 S 3(2) CDPA. Note that in the US there is a general fixation requirement (s 101 of the 1976 Copyright Act) which appears to contemplate there being an embodiment that is ‘sufficiently permanent or stable to allow the work to be perceived, reproduced or otherwise communicated for a period of more than transitory duration’: House Report accompanying the 1976 Copyright Act, quoted in JH Merryman and AE Elsen, Law, Ethics and the Visual Arts, 4th edn (The Hague, Kluwer Law International, 2002) 413. This fixation requirement (in particular the exclusion of works of transitory duration) has been criticised as being outdated and as preventing certain art forms from being protected under US law (M Carpenter and S Hetcher, ‘Function over Form: Bringing the Fixation Requirement into the Modern Era’ (2014) 82 Fordham Law Review 2221– the case of Kelley v Chicago Park District (635 F.3d 290 (7th Cir. 2011)) is often cited in this regard where an artistically arranged garden was not considered stable or permanent enough to be protected by copyright (see, eg, Carpenter and Hetcher and also L P Loren, ‘Fixation as notice in copyright law’ (2016) 96 Boston University Law Review 939). 119 They cite the Merchandising Corp ‘Adam Ant’ case (above n 29) in which Lawton LJ said that a painting could not be an idea: it was an ‘object’. See Bently and Sherman (above n 12) 46. 120 Farwell LJ in Tate v Fullbrook [1908] 1 KB 821, 822–33. This case concerned infringement of a dramatic work (music hall ‘dramatic sketch’). The question arose whether scenic effects, stage ‘business’ and the makeup of actors were protected by copyright. They were held not to be, as they could not be the subject of printing and publication, and in any event the scope of the monopoly granted by copyright had to be clear. Farwell LJ’s dictum was approved by the Privy Council in Green v Broadcasting Corporation of New Zealand [1989] 2 All ER 1056, 1058 (in which the dramatic ‘format’ of the TV show Opportunity Knocks inter alia was determined not certain enough to be protected by copyright because, eg, the identity of performers would change from show to show and the material presented would change; nor was it a dramatic work, as the format lacked the essential characteristic of having sufficient unity to be capable of performance). 121 Levolo Hengelo BV (C-310/17) ECLI:EU:C:2018:899, 40–41. 122 US law requires fixation of original works of authorship ‘in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device’ (s 102 Copyright Act 1976). Millinger is of the view that the US requirements appear to deny copyright protection to conceptual art works of a temporary nature (for example, Christo’s ‘Running Fence’ and ‘Wrapped Buildings’, which last only a few days or weeks): DM Millinger, ‘Copyright and the Fine Arts’ (1980) 48 George Washington Law Review 354 359. See also n 118 above for more US analysis of this area.

UK Law 45 Sherman cite, in the Australian case Komesaroff v Mickle and Others,123 works of ‘kinetic art’ (‘sand pictures’) were found to lack sufficient permanence to be classed as works of artistic craftsmanship because no sand picture was static for any length of time.124 In Davis v Wright Health Group,125 Whitford J held that the models and casts in that case were not sculptures as, inter alia, it was never intended they should have any continuing existence.126 In Creation Records (discussed above in the context of collages), an assembly of objets trouvés was, inter alia, not a collage, as it was intrinsically ephemeral, existing for only a few hours.127 However, the general proposition that something which has a mere transient existence cannot be a ‘work of sculpture’ was rejected by Laddie J in Metix v GH Maughan (Plastics).128 Also in a recent case concerning art deco artistic designs ‘debossed’ on make-up powder (which would disappear once the makeup was used) an argument that the works were not sufficiently fixed to be protected by copyright was rejected.129 One would expect the UK courts at present to take a more pragmatic view of fixation than was taken in the past not least in light of CJEU jurisprudence as to what a ‘work’ is and the requirement in EU copyright law that authors deserve a high level of protection.

3.2.5. Qualifying Factors for Protection It is important to note that the basis behind the international copyright system enshrined in the Berne Convention is the principle of ‘national treatment’. This in effect means that in the United Kingdom, for example, a work originating in a foreign country will, in the vast majority of cases, be given the same protection as a work created in the United Kingdom.130 123 Above n 72. 124 Komesaroff (above n 72) 210. Estelle Derclaye has criticised the interpretation that this case and Merchandising Corporation v Harpbond [1983] FSR 32 mean that artistic works need to be fixed and that all works need to be recorded in some permanent form (E Derclaye, ‘Debunking some of UK copyright law’s longstanding myths and misunderstandings’ (2013) 1 Intellectual Property Quarterly 1–17) – she comments ‘[t]he statutory and case law also mean that artistic works need not be recorded but that at least works of artistic craftsmanship must have a static aspect for some time. This may often imply fixation but does not imply permanence’ (17). 125 [1988] RPC 403. 126 This case concerned plastic dental impression plates; the items in question were stages in producing these items, rather than independent artistic works, so Whitford J’s decision at 410–12 is not surprising. See also comments of Lord Simon in Hensher (above n 68). 127 Creation Records (above n 55). Whether or not there was artistic intent in the creation of the assembly was held to be irrelevant. 128 Above n 24. It was accepted in argument before Laddie J that a sculpture made from ice is no less a sculpture because it may melt as soon as the temperature rises. 129 Islestarr Holdings Ltd v Aldi Stores Ltd [2019] EWHC 1473 (Ch). The judge commented: ‘I am in no doubt that the design embossed into the powders can be subject to copyright protection in principle. Otherwise, artistic works by, for example, persons who make sculptures out of sand at low water on a tidal beach, which are then washed away, could have no claim to copyright in, say, a pre-construction sketch or photograph of the completed work. Likewise, I can see no reason why the creator of a bespoke wedding cake could not claim copyright in his or her work. The fact that the design in the powders disappears by being rubbed away by the user, does not, in my judgment, affect or remove the copyright protection to which such an artistic work is entitled, as that is as set out as a visual record in Annex 4. In other words, the powders are a three-dimensional reproduction of the two-dimensional object, namely the drawing’ (48). Note however that in this case there was a visual record of the design embossed into the powders – so there was fixation regardless of the ephemeral nature of the works themselves. 130 Set against ‘national treatment’ is the argument for reciprocity in copyright protection – ie, that in the UK a work of foreign origin will be given only the protection to which that work is entitled in its country of origin.

46 The Modern Law of Copyright In other words, in the United Kingdom a work will generally be protected by copyright provided either: (a) the author is at the material time131 a ‘qualifying person’ (ie, a British national or resident or domiciled in one of the countries of the Berne Union or a country that is a party to the Universal Copyright Convention); or (b) the work was first ‘published’132 in one of these countries.133 There is no requirement to register the work with the Stationers’ Company or the UK Intellectual Property Office: no such formalities are necessary to secure copyright in the United Kingdom.134 However, it is desirable for international protection and also to help enforce the owner’s rights to include a copyright notice on copies of a work, along the lines of © [name of copyright owner], year of first publication.135 Also the CDPA has certain presumptions as to authorship which apply where the artist’s name appears on the work or on copies of it.136

3.2.6. The Duration of Protection From 1 January 1996, copyright in new and existing literary and artistic works was extended as a result of EU harmonisation, and it in general now lasts for the life of the author and expires at the end of the period 70 years from the end of the calendar year in which the author dies. This is the so-called 70-year post mortem auctoris rule. (Until 1 January 1996 the term was 50-year post mortem auctoris.137) Furthermore, the introduction on 1 January 1996 of the new copyright term ‘revived’ copyright in works previously out of copyright in the United Kingdom but which on 1 July 1995 were protected under the copyright legislation of any other state in the EEA.138 In recent years ‘reciprocity’ provisions in intellectual property legislation have become more common, especially in the EU (where non-EU states must offer a similar level of protection for their authors to benefit from EU protection). See for example the Database Directive (96/9 [1996] OJ L077/20) and the copyright Term Directive (93/98 [1993] OJ L290/9). But the TRIPS Agreement requires national treatment (as does the Berne Convention with a few exceptions): see HC Hansen, ‘International Copyright: An Unorthodox Analysis’ (1996) 29 Vanderbilt Journal of Transnational Law 579. 131 For literary, dramatic, musical and artistic works, this is (in the case of unpublished works) when the work was made or, if the making of it extended over a period, a substantial part of that period, and (in the case of a published work), when the work was first published or, if the author had died before that time, immediately before his death (s 154(4) CDPA). See below for a discussion of what constitutes ‘publication’. 132 S 175 of the CDPA states that ‘publication’ means the issue of copies to the public and includes, in the case of a literary, dramatic, musical or artistic work, making it available to the public by means of an electronic retrieval system. The exhibition of an artistic work does not constitute publication (s 175(4)(b)), and there are other specific rules for buildings and works incorporated in them and other works generally. Thus in general, ‘publication’ is only relevant to copies of an artistic work, not the work itself. 133 Ss 153–56 CDPA. The rules for foreign authors are potentially complex: see G Dworkin and R Taylor, Blackstone’s Guide to the Copyright, Designs and Patents Act 1988 (London, Blackstone, 1989) 11–13. 134 Indeed, Art 5(2) of the Berne Convention provides that the enjoyment and exercise of authors’ rights shall not be subject to any formality. 135 See Art III(1) of the Universal Copyright Convention (UCC). This will help to secure protection in UCC countries that are not part of the Berne Union. 136 S104 CDPA. 137 See Duration of Copyright and Rights in Performances Regulations 1995 (SI 1995/3297). There are different rules for works of unknown authorship/anonymous works such as folklore and indigenous art. 138 The EEA means the European Economic Area – ie, as of June 2020 the current 27 EU Member States plus certain neighbouring states (Norway, Liechtenstein, Iceland). Germany already has a 70-year post mortem

UK Law 47

3.2.7. The First Owner of the Copyright, Works of Employees and Commissioned Works Under UK law, unless an artistic work is created in the course of employment (where the copyright automatically vests in the employer upon creation of the work), the copyright will vest in the author on creation of the work.139 Thus even if a work is commissioned, copyright in general will vest with the artist, photographer, etc, unless a written assignment of copyright is executed by the author.140 Authors may allow a copyright and collecting society such as DACS (Design and Artists Copyright Society) or the Artists Collecting Society (ACS) to administer and protect their copyrights on their behalf.141

3.2.8. Economic Rights and the Idea/Expression Dichotomy Under English law a copyright owner has a bundle of exclusive rights which he can prevent others from exercising. These so-called ‘restricted acts’142 include: 1) the right to copy143 the work (including, in respect of an artistic work, making a two-dimensional copy of a three-dimensional work, and vice versa); auctoris term. The ‘transitional’ provisions in the 1995 Regulations dealing with the ownership and exploitation of ‘revived’ copyright are complex. 139 See s11 CDPA and also section 7.9 below. 140 Under the 1956 Copyright Act, the commissioner of, for example, a portrait for money or money’s worth is the first owner of the copyright, subject to agreement to the contrary. In the case of a commission, ownership by the commissioner in equity may in limited cases result from the circumstances. This is discussed further below ch 7. 141 DACS is not the owner by assignment of the copyright; it acts on behalf of the owner-artists it represents. See for example, Thames & Hudson Limited v Design and Artists Copyright Society Ltd and Others [1995] FSR 153. 142 S 16 CDPA. Other restricted acts in addition to those listed include rental or lending, public performance and making an adaptation. 143 Copying in relation to a work means reproducing the work in any material form. This includes storing the work in any medium by electronic means (s 17(2)) and also includes transient/temporary copies (s 17(6) and Art 2 of the Information Society Directive) although s 28A CDPA provides an exception for certain temporary copies so web browsing does not infringe copyright (see Public Relations Consultants Association Ltd v The Newspaper Licensing Agency Ltd & Ors [2013] UKSC 18 and Public Relations Consultants Association v Newspaper Licensing Agency Ltd & Ors (Judgment of the Court) [2014] EUECJ C-360/13).Under UK law, reproduction (ie, the multiplication of copies) has traditionally been considered as key. For example, framing an engraving taken from a pamphlet but not copying it would not be reproduction: Frost and Reed v The Olive Series Publishing Company (1908) 24 TLR 649. See also the Canadian case Théberge v Galerie d’Art du Petit Champlain Inc (2002) SCC 34 (Supreme Court, 28 March 2002), where the physical transfer of a work from a lawfully acquired poster onto canvas was not held to involve reproduction as there was no multiplication of copies of the work. If there were remedies here, these were more properly in the sphere of moral rights: see S Stokes, ‘Copyright and the Reproduction of Artistic Works’ (2003) 25(10) European Intellectual Property Review 486–88. Note however, the contrary position taken by the CJEU in Art & Allposters International (Judgment) [2015] EUECJ C-419/13 (where the facts were similar to Théberge). In Allposters the CJEU decided that the change in medium (from paper poster to canvas) meant that the exhaustion of rights doctrine (which allows the free circulation of copies of a work where the copies were placed on the market with the copyright owner’s consent – in the UK see s 18 CDPA noted below) did not apply to the changed/ altered works as the copyright owner had not consented to the transfer from paper to canvas. The author has argued Allposters may have significant ramifications for artistic practice where artists alter copies of other artistic works (for example cutting them to create a collage) but he is not aware of any artistic copyright cases where Allposters has been applied in this way. See S Stokes, ‘Copyright and Artistic Practice: Allposters Revisited’, (2016) 27(5) Entertainment Law Review 172–174. Toby Headdon also sees Allposters as allowing the

48 The Modern Law of Copyright 2) the right to issue copies to the public (but this right will be exhausted once the copies have been put on the market with the consent of the copyright owner – in other words such copies can be freely bought marketed and re-sold);144 and 3) the right to communicate the work to the public (eg, by broadcasting or on-demand access, including uploading to a website available for access via the Internet).145 Copyright in a work will be infringed by a person who, without the licence of the copyright owner, does or authorises another to do any of the acts restricted by copyright.146 Thus, a museum would infringe copyright if, in relation to a painting in its possession but in which it did not own the copyright, it took photographs of the work or allowed (ie, authorised147) others to do so without the licence of the artist/copyright owner. Likewise, in the case of the Churchill papers referred to in chapter one, for example, their reproduction would require the consent (ie, licence) of the relevant copyright owner and not of Churchill College, Cambridge. It is important to note that for the purposes of copyright infringement, copying involves the copying of the work as a whole or a substantial part of it, and either directly or indirectly.148 The definition of what is meant by ‘a substantial part’ is not a precise one: as we shall see later when considering the ‘idea/expression dichotomy’, traditionally there has been no one test, and the phrase has been susceptible to a number of meanings.149 An attempt to define what ‘substantial’ means in the context of the CDPA copyright owner to control the exploitation of altered objects commenting that Allposters was ‘more akin to a case of copyright moonlighting as a law against unfair competition’ as it was not really a case of ‘reproduction’ in the ordinary copyright sense (T Headdon, ‘The Allposters problem: reproduction, alteration and the misappropriation of value’ (2018) 40(8) European Intellectual Property Review 501–509). 144 See s 18 CDPA. 145 See section 5.4 below. 146 S 16(2) CDPA. However, to infringe, the act must be in respect of the work as a whole or a substantial part of it (s 16(3)). The test of ‘substantial’ is of quality, not quantity: Ladbroke (Football) v Hill (William) (Football) [1964] 1 WLR 273; and see below. See also Bauman v Fussell [1978] RPC 485 (CA), in which a painting derived from a photograph did not infringe the photograph – see in particular the dissenting judgment of Romer LJ; and Krisarts v Briarfine [1977] FSR 557 (interlocutory judgment: plaintiffs had an arguable case of copyright infringement where the defendants used paintings in which the plaintiffs held copyright to assist them in producing their own paintings of well-known views of London which were not slavish copies of the plaintiffs’ copyright works). Also more recently Temple Island Collections Ltd v New English Teas Ltd & Anor [2012] EWPCC 1 where the copyright in a black and white photograph of a red bus travelling across Westminster Bridge was infringed by a similar but by no means identical image. These cases provide some specific examples of how the courts have dealt with the copying of art. Infringing copyright may give rise to a civil liability (including payment of damages or an account of profits to the aggrieved copyright owner, granting of an injunction and delivery up to prevent the infringement), as well as a possible criminal liability: see, eg, Chapter VI CDPA. For flagrant breaches of copyright, additional statutory damages are available (s 97(2) CDPA). In recent years there has been a tendency to introduce stiffer criminal penalties and more stringent powers to deal with what is termed ‘copyright theft’. 147 Thus museums should be cautious about allowing photography or filming of their collections. However, in the light of Durand v Molino [2000] ECDR 320 (which referred to CBS Songs Ltd v Amstrad Consumer Electronics Plc [1988] AC 1013 (HL), where ‘authorise’ was held to mean to grant or purport to grant expressly or by implication the right to do the act complained of (1054, per Lord Templeman), museums and galleries can take comfort that some degree of encouragement or actual authorisation or approval is required; merely ‘standing by’ whilst the infringement takes place is not enough to constitute ‘authorisation’ for copyright infringement purposes. The use of ‘no photography’ notices ought to be sufficient. 148 S 13(3) CDPA. 149 Note also that whether there can be infringement by the reproduction of small parts of copyright works on a regular basis (none of which by itself amounts to taking a substantial part) is problematic: see Electronic Techniques v Critchley Components (above n 14) 407–11.

UK Law 49 was made in Newspaper Licensing Agency v Marks and Spencer Plc,150 where Peter Gibson LJ was of the view that the word described something more than de minimis, something considerable in amount, sufficient to make it worthy of consideration.151 In any event, in determining the test for infringement regard must now also be had to the decisions of the CJEU in this regard, as they are being applied in the UK. A ‘substantial part’ need not be extensive if it is the author’s own intellectual creation, following the CJEU in Infopaq.152 So, for example, in a recent artistic copyright case CJEU law was applied to section 16 of the CDPA and the judge made clear that ‘when considering whether a “substantial part” of a copyright work has been taken for the purposes of section 16(3) CDPA 88, what matters is the extent to which that part contains elements which express the intellectual creation of the author. If it contains elements which express the intellectual creation of the author, then it is a substantial part. If it does not, it is not.’153 So when copyright infringement cases which pre-date the application of Infopaq are considered (including Designers Guild discussed below) regard must be had to the fact that the test of what is meant by a substantial part now has to be assessed in line with Infopaq as applied by the UK courts. Anglo-American copyright law generally looks to ‘substantial similarity’ to prove infringement. In the case of artistic works, it is the visual similarity of the original and the copy that is important. The often cited US Judge Learned Hand said that the plaintiff must show that ‘the ordinary observer, unless he set out to detect the disparities [between the two works], would be disposed to overlook them, and regard their aesthetic appeal as the same.”154 Indeed, it has been argued by Peter Karlen, in a critique of the application of the idea/expression dichotomy, that the copyright protection afforded to art enables artists to restrain plagiarists from using the material world to recreate in the audience the imaginative experiences first created by their work. So for example, the owner of copyright in a sculpture can prevent others who have seen the work from ‘shaping any part of the universe, using any materials, to simulate the sculpture’.155 150 [2000] 3 WLR 1256. 151 Newspaper Licensing Agency v Marks and Spencer (ibid) 1265G. 152 Case C-5/08 Infopaq International [2009] ECR I-6569. The Court of Appeal has commented: ‘Our domestic legislation confines the doing of a restricted act (e.g. copying) to doing that act in relation to the work as a whole or any “substantial part of it”: Copyright Designs and Patents Act 1988 s. 16 (1), s. 16 (3), Nova Productions Ltd v Mazooma Games Ltd [2007] EWCA Civ 219, [2007] RPC 25 [29]. It has long been the position in domestic law that what is substantial is a question to be answered qualitatively rather than quantitatively. In Infopaq the court said that parts of a work are entitled to the same protection as the work as a whole. But the parts in question must “contain elements which are the expression of the intellectual creation of the author of the work”: [39]. This is now the test for determining whether a restricted act has been done in relation to a substantial part of a work’ (Lewison LJ in SAS Institute Inc v World Programming Ltd [2013] EWCA Civ 1482, 38). 153 HH Judge Melissa Clarke in ATB Sales Ltd v Rich Energy Ltd & Anor [2019] EWHC 1207 (IPEC) 14 citing Arnold J in England & Wales Cricket Board v Tixdaq [2016] EWHC 575 (Ch) 65. But the UK courts also on occasion still talk about the test being ‘has the copying taken a substantial part of the skill, labour and judgement found in the earlier work’ on the basis there is no difference between this test and that in Infopaq (see the comments of David Stone (sitting as an Enterprise Judge) in Mei Fields Designs v Saffron Cards and Gifts [2018] EWHC 1332 (IPEC) 100 (a case concerning artistic copyright infringement relating to greeting cards)). 154 Peter Pan Fabrics, Inc v Martin Weiner Corp 274 F.2d 487, 489 (2d Cir 1960). For the US position generally, see P Karlen, ‘Intellectual Property in Intellectual Creations’ (April 1999) Copyright World 14. 155 Karlen (ibid) 17 and 18

50 The Modern Law of Copyright Leaving aside Peter Karlen’s view of the scope and rationale for copyright protection, to better understand the scope of the copyright monopoly in UK law, it is necessary to analyse how the UK courts have applied the idea/expression dichotomy, given that the concept has no statutory basis in the United Kingdom.

The Idea/Expression Dichotomy in UK Law: Designers Guild (1998–2000) Although there is no statutory basis for the idea/expression dichotomy in the United Kingdom (unlike in the United States156), the often cited fact that copyright does not protect ideas as such but only their expression receives judicial consideration and guarded support from time to time in UK law.157 Indeed, it has been used to help determine whether there has been copying of a ‘substantial part’ of a copyright work. One of the more significant recent cases to consider the scope of copyright protection for aesthetic, artistic designs, Designers Guild Ltd v Russell Williams (Textiles) Ltd,158 gave express consideration to the idea/expression dichotomy. This case concerned the copying of fabric designs (derived from an original artistic work) in which the copying involved was not literal or exact: the style, technique and ideas behind the plaintiff ’s work were copied. The plaintiff succeeded at first instance, lost in the Court of Appeal and then had the trial judge’s order restored in the House of Lords. Morritt LJ in the Court of Appeal expressly referred to the idea/ expression dichotomy: ‘copyright subsists, not in ideas, but in the form in which the ideas are expressed.’159 For there to be copyright infringement in his view, the expression of an idea rather than the idea itself must be copied. He later went on to cite an observation by Professor Cornish that there is no clear boundary between what amounts to a substantial part of a

156 See s 102(b) Copyright Act 1976: in no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle or discovery, regardless of the form in which it is described, explained, illustrated or embodied in such work. See discussion in ch 1 and above. However the UK courts need to have regard to it pursuant to international copyright law including EU copyright law as the idea/expression dichotomy is part of EU law – ‘[w]ith respect to international law, both Article 2 of the WIPO Copyright Treaty and Article 9(2) of the TRIPs Agreement provide that copyright protection extends to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such’ (SAS Institute Inc v World Programming Ltd (Intellectual property) [2012] EUECJ C-406/10, 33). 157 See above ch 1. The CJEU in its copyright jurisprudence has recognised the dichotomy – see, eg, SAS Institute Inc v World Programming Ltd (Intellectual property) [2012] EUECJ C-406/10 and also Advocate General Szpunar’s recent comments: ‘It is commonly accepted as a principle that copyright does not protect ideas but expressions. According to one classic formulation, ideas roam free, in that they cannot be monopolised by copyright, unlike the case of, for instance, patents protecting ideas, inventions and suchlike. Copyright protects only the way in which ideas have been articulated in a work. Ideas themselves, severed from any work, can therefore be freely reproduced and shared.’ (Funke Medien Case C-469/17 ECLI:EU:C:2018:870, 15). According to WJ Gordon, ‘Touring the Certainties of Property and Restitution: A Journey to Copyright and Parody’ (Oct 1999) Oxford Electronic Journal of Intellectual Property Rights (published as part of the University of Montreal volume on certainty and the law, Des Certitudes du Droit (Montreal, Editions Themis, 1999), because no firm definition has ever evolved of what constitutes an ‘idea’, the idea/ expression dichotomy depends on how a judge determines what constitutes an idea: ‘By characterising something as an “idea”, a judge is essentially ruling that it is something that cannot be commodified for purposes of private ownership, but rather should be commonly shared. No certain rule can capture this enquiry’ (21–22). 158 [1998] FSR 803 (ChD), [2000] FSR 121 (CA), [2000] 1 WLR 2416 (HL). 159 Designers Guild v Russell Williams CA judgment (ibid) 128 (per Morritt LJ).

UK Law 51 copyright work and what does not.160 Nevertheless, according to Professor Cornish, the idea/expression dichotomy is a useful and necessary concept, albeit that it was too vague a distinction to offer more by way of general guidance.161 To quote Professor Cornish, ‘the answer in a particular case can only lie in the tribunal’s innate sense of fairness.’162 As Designers Guild is a relatively recent and significant House of Lords (Supreme Court) artistic copyright infringement case, and it gives express consideration to the idea/expression dichotomy, it will be considered in more detail below (although as noted earlier the reader does need to bear in mind it predates Infopaq).

Facts The plaintiff, the Designers Guild, is a designer and manufacturer of wallpapers and fabrics. In September 1995 it launched a new range of fabric designs under the name ‘Orientalis’. One of those designs, ‘Ixia’, was a striped pattern with flowers scattered over it in a somewhat impressionistic style. It was a successful design, achieving sales of £171,000 in its first year. The Ixia fabric design was produced from a design painted by Helen Burke, a designer employed by the plaintiff. It was inspired by the ‘handwriting and feel’ of Matisse. In September 1996 the defendant, Russell Williams (Textiles) Ltd, exhibited at trade fairs in Belgium and the Netherlands a striped design, ‘Marguerite’, with scattered flowers, also in a somewhat impressionistic style. The plaintiff took the view that the defendant’s design Marguerite had been copied from Ixia and commenced proceedings on 24 December 1996. The defendant accepted subsistence and ownership of copyright in the painting but denied infringement. The issue at trial was therefore whether for the purposes of sections 16 and 17 of the CDPA the defendant had copied from the Ixia design and thereby indirectly copied a substantial part of the painting.

The High Court The judge found that there was copying by the defendant. Furthermore, there was copying of a substantial part of Ixia. Looking at Ixia as a whole, the judge found that the defendant had adopted the ‘essential features and substance’ of the original.163

160 A well-known dictum in this regard by Judge Learned Hand in the US case Nichols v Universal Pictures Corporation 45 F 2d 119 (1930) (in the context of a play) (quoted by Morritt LJ (ibid) 130) was cited by Professor Cornish in support (and is also discussed by Laddie (3rd edn (2000) of the work referred to above n 94) in an analysis of the distinction between a work protected by copyright and a general idea which is not (4.45)): ‘upon any work … a great number of increasing patterns of increasing generality will fit equally well, as more and more incident is left out. The last may perhaps be no more than the most general statement of what the [work] is about, and may at times consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the [author] could prevent the use of his “ideas”, to which, apart from their expression, his property never extended … Nobody has ever been able to fix that boundary, and nobody ever can’ (Cornish, 4th edn (above n 34) 121). 161 Designers Guild v Russell Williams CA judgment (above n 159) 130, citing Cornish, 3rd edn (London, Sweet & Maxwell, 1996) para 11-06 et seq. 162 Cornish, 3rd edn (ibid). 163 Designers Guild (above n 158) 828. This test is referred to in Copinger (1999) (above n 33) 7-82.

52 The Modern Law of Copyright

The Court of Appeal The judge at first instance gave greater consideration as to whether there was copying than to whether what was copied was protectable expression – ie, whether a substantial part of Ixia was copied. The Court of Appeal concentrated on the latter point.164 Although the Court found that the designers of Marguerite copied the idea of Ixia and adopted the same techniques, they did not copy a substantial part of the expression of the idea.165 When Morritt LJ analysed the similarities between the two works he found that Marguerite adopted the same idea as Ixia (a combination of flowers and stripes) and in three respects the same techniques (brushwork, formation of the design and the resist effect used); nevertheless, the same techniques produced ‘different visual effects’ in Marguerite, and the subject matters of their use (stripes and flowers) were not copied from Ixia into Marguerite.166

The House of Lords The House of Lords were unanimous in overturning the Court of Appeal decision. In particular, the approach of Morritt LJ in analysing individual features of the two works to determine substantial copying rather than comparing the two works as a whole was criticised.167 The question was ‘Did Marguerite incorporate a substantial part of the skill and labour expended by the designer of Ixia in producing Ixia?’168 Also the Court of Appeal’s attempt to approach the issue of substantiality afresh, even though the trial judge had not misdirected himself, was also criticised. Lord Hoffmann gave detailed consideration to the application of the idea/expression dichotomy in UK law, which he felt must be handled with care.169 In particular, he stressed that every element in the expression of an artistic work, ‘unless it got there by accident or compulsion’, would in fact be the expression of an idea on the part of the

164 For example, Morritt LJ (131) gave six pointers for assessing whether a substantial part has been copied: (1) the part to be considered is the part of the work which has been copied; (2) the copying which is relevant is the copying, not of the idea, but of the expression of the idea [emphasis added]; (3) substantiality is a qualitative not a quantitative test; (4) the antithesis of ‘substantial’ is ‘insignificant’; (5) no weight is to be attributed to that which is commonplace or well-known or derived from some other source when considering whether the part which has been copied is ‘substantial’; and (6) the object of the law of copyright is to protect the product of the skill and labour of the maker not to confer on him a monopoly in the idea it may express [emphasis added]. 165 Designers Guild (above n 159) 135. Morritt LJ stressed that what the law was seeking to protect here was the product of the skill and labour of the designer – in this case, to allow a finding of copyright infringement would be to cast the net of copyright protection too wide and to create a monopoly in ideas. 166 Ibid, 134. 167 Morritt LJ was of the view that some dissection of the work allegedly copied was necessary in order to focus on the relevant aspects of the work that had been copied (131). This approach was rejected by the House of Lords: eg, 2434 (per Lord Scott of Foscote), 2421–22 (per Lord Hoffmann) and 2418 (per Lord Bingham of Cornhill). 168 Designers Guild (above n 158), per Lord Scott of Foscote, who spoke approvingly of the test proposed in the second edition of Laddie (2nd edn of the work referred to above n 94) (92–93, para 2-108), where infringement of copyright by an altered copy is concerned (this was the case here): ‘Has the infringer incorporated a substantial part of the independent skill, labour etc contributed by the original author in creating the copyright work?’ Lord Scott considered this a useful test, ‘based as it is on an underlying principle of copyright law, namely, that a copier is not at liberty to appropriate the benefit of another’s skill and labour’ (2431G). 169 Designers Guild (above n 158) 2422D–2423E.

UK Law 53 artist: ‘It was the artist’s choice to paint stripes rather than polka dots, flowers rather than tadpoles, use one colour and brush technique rather than another, etc.’170 The expression of these ideas was clearly protected by copyright, both as a cumulative whole and also to the extent to which they form a ‘substantial part’ of the work. Substantiality depended upon quality rather than quantity.171 In his view, there were numerous authorities for the proposition that the ‘part’ which is regarded as substantial can be a feature or combination of features of the work, abstracted from it rather than forming a discrete part of it. For example, the original elements in the plot of a literary work such as a play may be a substantial part or the work, so that copyright may be infringed by a work that fails to reproduce a single sentence of the original. If one were to ask what is being protected in such a case, it would be difficult to give any answer except that it is an idea expressed in the copyright work. Based upon an analysis of the cases applying the idea/expression dichotomy, Lord Hoffmann discerned two distinct propositions. The first was that a copyright work can express certain ideas that are not protected because they have no connection with the literary, dramatic, musical or artistic nature of the work.172 The other proposition was that certain of the ideas expressed by a copyright work may not be protected because, although they may be ideas of a literary, dramatic or artistic nature, they are not original or are so commonplace as not to form a substantial part of the work.173 In conclusion, in cases of artistic copyright, the more abstract and simple the copied idea, the less likely it is to constitute a substantial part of a copyright work. According to Lord Hoffmann, originality, in the copyright sense of the contribution of the author’s skill and labour, tends to lie in the detail with which the basic idea is presented: ‘copyright law protects foxes better than hedgehogs.’174

Designers Guild: Comment Designers Guild is a difficult copyright infringement case. In a straw poll of the author’s office at the time, the vast majority agreed with Morritt LJ that the designs in question did not look, in his words, ‘sufficiently similar’ for there to be copyright infringement.175 The judgment of Lord Hoffmann may be helpful in clarifying the application of 170 Ibid, 2422F. 171 Citing Ladbroke (Football) (above n 146) 276 (per Lord Reid), 283 (per Lord Evershed), 288 (per Lord Hodson) and 293 (per Lord Pearce). 172 He cited as an example the fact that although a literary work may describe a system or invention, this does not entitle the author to claim protection for his system or invention as such. The same was true of an inventive concept expressed in an artistic work: Kleeneze Ltd v DRG (UK) Ltd [1984] FSR 399 was cited by Lord Hoffmann in support. This case involved the copying of the concept of a letterbox draught excluder, which was held not to be infringement. 173 Lord Hoffmann cited Kenrick & Co v Lawrence & Co (1890) 25 QBD 99. So applying this to Designers Guild, the mere notion of combining stripes and flowers was not a substantial part of the plaintiff ’s work: ‘At that level of abstraction, the idea, though expressed in the design, would not have represented sufficient of the author’s skill and labour as to attract copyright protection’ (Designers Guild (above n 159) 2423D). 174 Designers Guild (above n 159) 2423E. Lord Hoffmann was of the view that here the elements copied went well beyond the banal and that the trial judge was justified in deciding that they formed a substantial part of the originality of the work. 175 Ibid, 133. Morritt LJ of course did not reach a concluded view on ‘so subjective and unanalytical approach alone’ (133). He went on to conduct the analysis of the designs referred to earlier.

54 The Modern Law of Copyright the idea/expression dichotomy in UK law, but it should be noted that their Lordships all took different approaches to the issue of ‘substantiality’. The common thread was that the works should be compared as a whole in assessing copying of a substantial part, and all (apart from Lord Millett) stressed that what copyright protects is the skill and labour of the original designer.176 In any event it is submitted that following Infopaq177 and applying the test of ‘substantial part’ as being the author’s own intellectual creation Designers Guild was rightly decided and it continues to be applied by the UK courts in artistic copyright infringement cases.178

3.2.9. Exceptions/Defences to Copyright Infringement There are certain limited exceptions/defences to copyright infringement set out in Chapter III of the CDPA.179 Whilst the list below is not exhaustive – there are additional

176 For a critique of the case and proposals for a clearer test for copyright infringement, see M Spence and T Endicott, ‘Vagueness in the Scope of Copyright’ (2005) 121 Law Quarterly Review 657. 177 Infopaq International A/S v Danske Dagblades Forening [2009] EUECJ C-5/08. 178 For example, ATB Sales Ltd v Rich Energy Ltd & Anor [2019] EWHC 1207 (IPEC) where Lord Millett in Designers Guild is cited. See also the earlier case of Temple Island Collections Ltd v New English Teas Ltd & Anor [2012] EWPCC 1 where the judge (HH Judge Birss QC) commented: ‘[c]opyright is infringed by reproducing the whole or a substantial part of a work in a material form (s16 and s17 of the 1988 Act). It was common ground between the parties that a “substantial part” is a matter of quality not quantity. Mr Edenborough [counsel for the claimant] summed up the task here based on Designers Guild in the House of Lords. First one asks whether there has been copying and if so which features have been copied, and then asks whether that represents a substantial part of the original. One does not then ask if the alleged infringement looks on the whole similar, because one can reproduce a substantial part without necessarily producing something that looks similar even though of course it may do so’ (30). The judge also noted that ‘[v]isual significance must also be relevant to infringement and to the question of whether a substantial part of an artistic work has been taken. What falls to be considered, in order to decide if a substantial part of an artistic work has been reproduced, are elements of the work which have visual significance. What is visually significant in an artistic work is not the skill and labour (or intellectual creative effort) which led up to the work, it is the product of that activity. The fact that the artist may have used commonplace techniques to produce his work is not the issue. What is important is that he or she has used them under the guidance of their own aesthetic sense to create the visual effect in question. Just because the Act [CDPA] provides for copyright in these original artistic works irrespective of their artistic quality (s 4(1)(a)), does not mean that one ignores what they look like and focuses only on the work which went into creating them’. (34). 179 It should be noted that the rationale for these exceptions stems from a not always recognised desire to preserve some element of the ‘public domain’. Copying is not necessarily wrongful; it is how we learn and develop new creative works, and it is the essence of a common culture. ‘The trick is to find some means to distinguish wrongful from fair copying. Some of those means are case-by-case, like “substantial similarity” and “fair use”. Some are system-wide rules, like the provisions limiting the duration of copyrights and patents’ (Gordon (above n 157) 29). Unlike US law, there is no general ‘fair use’ defence in UK law (see, eg in the context of artistic works Cariou v Prince 714 F.3d 694 (2013) (2d Cir (US)), nor (it has been argued) a general ‘public interest defence’; a specific statutory exception in Chapter III of Part I of the CDPA must be relied on, as these set out what is and is not permitted. They set out in detail the extent to which the public interest overrides copyright. See, eg, Aldous LJ in Hyde Park Residence Ltd v Yelland (CA) 228H. Yelland has been criticised: eg, R Burrell, ‘Defending the Public Interest’ (2000) 9 European Intellectual Property Review 394; and see also Lord Phillips in Ashdown v Telegraph Group Ltd [2001] EWCA Civ 1142 (18 July 2001), where the Court of Appeal in a later case opened the door to a public interest defence, even if only in rare circumstances. However, Laddie (3rd edition (2000) of work referred to above n 94) still sees a limited role for fair use as developed in the nineteenth century as a factor a court may take into account when determining whether a substantial part of a copyright work has been taken in assessing infringement in borderline cases, especially when the defendant’s work was not competing with the plaintiff ’s but rather was to ‘enlighten the public’

UK Law 55 provisions dealing with visual impairment, education, libraries and archives and so on – in practice, these are some of the more important exceptions (ie, certain acts that the law permits that would otherwise infringe copyright):180 1) Fair dealing with a work for the purposes of private study, fair dealing with a work for the purposes of research for a non- commercial purpose, and fair dealing with a work for criticism or review (of that or another work or a performance of a work) or (other than a photograph) reporting current events (provided in each case other than the first there is sufficient acknowledgement181) does not infringe copyright.182 In addition copyright in a work is not infringed by the use of a quotation from the work (whether for criticism or review or otherwise) provided that: (a) the work has (4.54), suggesting that the concept of ‘fair use’ may fall within the exercise of a rule of reason or proportionality by the courts. However, Laddie (2000) also notes, ‘The fair use doctrine seldom applied to artistic works because it would not often be the case that there was any countervailing benefit of public enlightenment to be gained by permitting copying of works of that kind’ (4.54). See Bradbury v Hotten (1872) LR 8 Exch 1, 5 and 7, in which the defendant introduced nine pictures from Punch owned by the plaintiffs into his ‘comic life of Napoleon III’, which was held to be an infringement. Kelly CB put the matter thus: ‘Where one man for his own profit puts into his work an essential part of another man’s work, from which that other may still derive profit, or from which, but for the act of the first, he might have derived profit, there is evidence of a piracy upon which a jury should act’ (6). Finally, the relationship between freedom of expression and copyright does arise from time to time – could a fundamental right trump copyright, operating in effect as a defence to infringement where no other exception or defence is available? This seems unlikely except in very limited circumstances – see Stokes (2019) (n 117 above) s 2.4.3 and also YH Lee, ‘Copyright and Freedom of expression: a literature review’, CREATe Working Paper 2015/04 May 2015 (www.create.ac.uk). Recent CJEU cases in any event stress that EU copyright law already takes account of fundamental rights in its exceptions – see, eg, Spiegel Online (Copyright and related rights – Judgment) [2019] EUECJ C-516/17 and Funke Medien NRW (Copyright and related rights – Judgment) [2019] EUECJ C-469/17. 180 Exceptions and limitations to copyright are to be interpreted strictly as authors are to have a high level of protection for their works in CJEU (and so UK) law (see, eg, Arnold J in Forensic Telecommunications Services Ltd v West Yorkshire Police & Anor [2011] EWHC 2892 (Ch) 108). Nevertheless the CJEU has also noted exceptions seek to achieve a ‘fair balance’ between the rights of authors and the rights of users (Deckmyn and Vrijheidsfonds (Judgement of the Court) [2014] EUECJ C-201/13, 26). 181 See Fraser-Woodward Ltd v British Broadcasting Corporation Brighter Pictures Ltd [2005] EWHC 472 (Ch) (23 March 2005) paras 70–77. 182 Ss 29–30 CDPA. The general view is that to benefit from a fair dealing defence, the copying must be ‘fair’; and in assessing fairness, the amount, importance or proportion of the work copied will be important, as will be whether usage competes with the copyright owner. See Dworkin and Taylor (above n 133) 76; Hubbard v Vosper [1972] 2QB 84 (CA); and HRH Prince of Wales v Associated Newspapers Ltd [2008] EMLR 3, [2008] EMLR 4 (CA). The latter case stressed that in the context of reporting current events, the most important factor was whether there was commercial competition with the owner’s rights. The lawfulness of the method by which the copyright material was obtained (eg, in the case of unpublished works not made available to the public) will also be highly relevant (and fatal to fair dealing for criticism or review – see s 30 CDPA) but is generally irrelevant once the work in question is in the public domain: Time Warner Entertainments Company LP v Channel Four Television Corporation Plc and Another (CA) [1994] EMLR 1. By way of example, in a case in which the defendants, Carlton TV, used in a programme criticising chequebook journalism a 30-second extract from a programme broadcast by the plaintiff in Germany that featured an exclusive interview with Mandy Allwood and her boyfriend Paul Hudson, such use was considered by the Court of Appeal to be fair dealing for the purposes of criticism or review. According to the Court of Appeal in this case, the test of whether an extract from a copyright work had been used by another ‘for the purposes of criticism or review’ was an objective one; but the user’s subjective intentions or motives were relevant to whether the material’s use satisfied the test of fair dealing on which that defence also depended: Pro Sieben Media AG v Carlton UK Television Ltd and Another, TLR 7.1.99. Note that in Pro Sieben, Robert Walker LJ commented: ‘“Criticism or review” and “reporting current events” are expressions of wide and indefinite scope. Any attempt to plot their precise boundaries is doomed to failure. They should be interpreted liberally’ (Pro Sieben Media AG v Carlton UK TV Ltd [1999] FSR 160, 620). He also noted that ‘Criticism of a work need not be limited to criticism of style. It may also extend to the ideas to be found in a work and its social or moral implications’ (621).

56 The Modern Law of Copyright been made available to the public; (b) the use of the quotation is fair dealing with the work; (c) the extent of the quotation is no more than is required by the specific purpose for which it is used; and (d) the quotation is accompanied by a sufficient acknowledgement (unless this would be impossible for reasons of practicality or otherwise) – the exception is not limited to just literary quotations.183 Finally there is a further fair dealing exception also of relevance to artistic works: ‘[f]air dealing with a work for the purposes of caricature, parody or pastiche does not infringe copyright in the work’.184 It is anticipated that this last exception may prove useful in the UK where allegations are made of appropriation of another’s work or in other situations where a work of art incorporates copyright-protected material, as long as it is ‘fair dealing’.185 183 S 30 (1ZA) CDPA (this exception has only been in existence since 1 October 2014). The exception covers quotations of not just literary works – artistic works are included in the exception and it is a broad exception (see L Bently, ‘Copyright and Quotation in Film and TV’ CREATe Working Paper 2020/8 (UK Copyright and Creative Economy Centre, Glasgow www.create.ac.uk)). In this working paper the author explores the application of the quotation exception to the use of artistic works in films as well as the art work The Clock (a 24 hour long film which is a montage of numerous film snippets that feature time – debuted at the White Cube Gallery in 2010). See also the CJEU in Pelham Case 476/17 EU:C:2019:624, 71: ‘[a]s regards the usual meaning of the word ‘quotation’ in everyday language, it should be noted that the essential characteristics of a quotation are the use, by a user other than the copyright holder, of a work or, more generally, of an extract from a work for the purposes of illustrating an assertion, of defending an opinion or of allowing an intellectual comparison between that work and the assertions of that user, since the user of a protected work wishing to rely on the quotation exception must therefore have the intention of entering into ‘dialogue’ with that work.’ The CJEU also stated that: ‘there can be no such dialogue where it is not possible to identify the work concerned by the quotation at issue … the concept of ‘quotations’ ….does not extend to a situation in which it is not possible to identify the work concerned by the quotation in question’ (paras 73–74). Note also that to the extent that a term of a contract purports to prevent or restrict the doing of any act which, by virtue of subsection (1ZA), would not infringe copyright, that term is unenforceable (S 30 (4) CDPA). The CJEU has also recently noted that ‘quotation’ can include a reference by means of a hyperlink to a file which can be downloaded independently (Spiegel Online (Copyright and related rights – Judgment) [2019] EUECJ C-516/17, 84). 184 S 30A(1) CDPA (this exception has only been in existence since 1 October 2014). To the extent that a term of a contract purports to prevent or restrict the doing of any act which, by virtue of this section, would not infringe copyright, that term is unenforceable (S 30A(2)). The UK IPO guidance on the exceptions comments: ‘The words “caricature, parody or pastiche” have their usual meaning in everyday language, but also take account of the context and purpose of the copyright exceptions. In broad terms: parody imitates a work for humorous or satirical effect. It evokes an existing work while being noticeably different from it. Pastiche is musical or other composition made up of selections from various sources or one that imitates the style of another artist or period. A caricature portrays its subject in a simplified or exaggerated way, which may be insulting or complimentary and may serve a political purpose or be solely for entertainment.’ The IPO also notes ‘[i]t is important to understand, however, that this change in the law only permits use for the purposes of caricature, parody, or pastiche to the extent that it is “fair dealing.” Fair dealing allows you only to make use of a limited, moderate amount of someone else’s work.’ It goes on to say ‘[f]air dealing allows you only to make use of a limited, moderate amount of someone else’s work. Anything that is not fair dealing will require a licence or permission from the copyright owner … The new exception allows a reference to a copyright work – in essence building on it. This means it is very unlikely that someone could copy a whole unchanged work, without permission from the copyright owner. For example, it would not be considered “fair” to use an entire musical track on a spoof video’ (see https://assets.publishing.service.gov.uk/government/uploads/system/ uploads/attachment_data/file/448274/Exceptions_to_copyright_-_Guidance_for_creators_and_copyright_ owners.pdf (accessed 22 August 2020)). 185 The scope of this exception is considered in some detail by Emily Hudson who argues that the inclusion of ‘pastiche’ as one of the three fair dealing purposes gives a defence in the UK to among other things collage and appropriation art (E Hudson, ‘The pastiche exception in copyright law: a case of mashed-up drafting?’ (2017) 4 Intellectual Property Quarterly 346–368). Crucial is whether the copying in question is fair (368). She considers that if the works the subject of the US fair use case Cariou v Prince 714 F.3d 694 (2013) (2d Cir (US)) were subject to similar litigation in the UK they could reasonably be classed as instances of pastiche under

UK Law 57 2) In the case of buildings, sculptures, models for buildings and works of artistic craftsmanship permanently situated in public places or in premises open to the public, the copyright in such work is not infringed by inter alia making a graphic work representing it or making a photograph or film of it, but a three-dimensional reproduction would amount to an infringement.186 3) To copy an artistic work for the purpose of advertising the sale of it does not infringe copyright. This is clearly of importance to auction houses and art dealers.187 Interestingly, in the US there is no specific exception along these lines so the US concept of ‘fair use’ would need to be relied on if permission from the artist was not obtained and it appears arguable whether it would be fair use.188 s 30A (365). See also sections 6.4.7 and 6.4.8 below. See also S Jacques, The Parody Exception in Copyright Law (Oxford, Oxford University Press, 2019). It should also be noted when interpreting the parody exception that ‘parody’ is an autonomous concept in EU law (see Johan Deckmyn and Vrijheidsfonds VZW v Helena Vandersteen and Others, C-201/13, EU:C:2014:2132 and E Rosati, ‘Just a matter of laugh? Why the CJEU decision in Deckmyn is broader than parody’ (2015) 52(2) Common Market Law Review 511–529)). Focusing on ‘parody’ rather than caricature or pastiche (the CJEU did not define caricature or pastiche although the relationship between them was commented on by the Advocate General – Johan Deckmyn and Vrijheidsfonds VZW v Helena Vandersteen and Others, C-201/13, ECLI:EU:C:2014:458 (paras 40-46)) the CJEU ruled that ‘the essential characteristics of parody, are, first, to evoke an existing work, while being noticeably different from it, and secondly, to constitute an expression of humour or mockery. The concept of “parody” … is not subject to the conditions that the parody should display an original character of its own, other than that of displaying noticeable differences with respect to the original parodied work; that it could reasonably be attributed to a person other than the author of the original work itself; that it should relate to the original work itself or mention the source of the parodied work. However, the application, in a particular case, of the exception for parody, within the meaning of Article 5(3)(k) of Directive 2001/29, must strike a fair balance between, on the one hand, the interests and rights of persons referred to in Articles 2 and 3 of that directive, and, on the other, the freedom of expression of the user of a protected work who is relying on the exception for parody, within the meaning of Article 5(3)(k). It is for the national court to determine, in the light of all the circumstances of the case … whether the application of the exception for parody, within the meaning of Article 5(3)(k) of Directive 2001/29, on the assumption that the drawing at issue fulfils the essential requirements of parody, preserves that fair balance.’ In Deckmyn the parody had a discriminatory message so the right to freedom of expression of the parodist came into conflict with the right (what the CJEU termed ‘the legitimate interest’) of the artist not to have their work associated with that message (the CJEU noted that ‘holders of rights provided for in Articles 2 and 3 of Directive 2001/29, such as [the artist], have, in principle, a legitimate interest in ensuring that the work protected by copyright is not associated with such a message’ (para 31) – this has echoes of moral rights applying but moral rights are not yet harmonised at EU level and the Advocate General noted the case before the CJEU was not about moral rights – this was an issue solely for the national courts (para 28) – see Rosati (2015) (ibid) for a further discussion). Note also the conditions which the CJEU states do not need to apply to a parody for the exception to apply. 186 S 62 CDPA. This exception is clearly important where works of sculpture or artistic craftsmanship are permanently on public display. However, there is nothing to stop an exhibition organiser/gallery owner from restricting such copying as a term of condition of entry to the art gallery where the works are on public display. In Europe in relation to architectural works this exception has been termed ‘freedom of panorama’ and is considered in more detail in ch 6. 187 S 63 CDPA. It can be debated whether s 63 as currently drafted applies to just print reproductions (catalogues) or more broadly – digital copies of a catalogue and online reproductions (online advertisements) and in 2011 the UK IPO consulted on expanding the exception (2011 Consultation on Copyright); it should be noted that the Information Society Directive (2001/29/EC) expressly permits Member States to have such an exception covering both print and online use (‘use for the purpose of advertising the public exhibition or sale of artistic works, to the extent necessary to promote the event, excluding any other commercial use’ (Art 5(3)(j)). 188 Judith Prowda comments that this use has so far not been litigated in the US (JB Prowda, Visual Arts and the Law (Lund Humphries, Farnham, 2013) 93). See also Barry Werbin’s useful blog ‘Use of Art Images in Gallery and Auction Catalogues: Copyright Minefield and Practical Advice’ (NYSBA Entertainment, Arts and Sports Law Blog 1 February 2012) – http://nysbar.com/blogs/EASL/2012/02/use_of_art_images_in_ gallery_a_1.html (accessed 16 May 2020).

58 The Modern Law of Copyright 4) Where the author of an artistic work is not the copyright owner, he does not infringe the copyright by copying the work in making another artistic work, provided he does not repeat or imitate the main design of the earlier work.189 5) The incidental inclusion of a work protected by copyright in an artistic work, sound recording, film or broadcast does not infringe copyright.190 The fair dealing defence is given further consideration below in chapter seven, where the use of artistic works to illustrate books is considered.

3.2.10. Industrial Designs Artistic Copyright and Industrial Design The relationship between copyright and designs reproduced by a manufacturing process or otherwise ‘industrially’ applied to a product is a difficult one and varies from country to country.191 It is possible to distinguish between two extremes. At one end, works of ‘pure’ or fine art (such as paintings, drawings or sculptures) are applied to or incorporated as part of useful or utilitarian objects (eg, wallpaper, fabric, etc). At the other end, everyday objects (such as furniture or consumer products) display some ‘artistic’ element in their shape or appearance. In practice, many designs (of, eg, jewellery, clothing, children’s toys, etc) will fall within a continuum between these two extremes. The unease about protecting such objects as ‘artistic works’ under copyright law derives from their utility.192 Indeed, international attempts to bring all industrial designs under 189 S 64 CDPA. 190 S 31 CDPA. By way of example, should the late Sister Wendy Beckett or some other art critic be filmed walking through the Tate with the odd incidental shot of works still in copyright, this would appear to be incidental inclusion. However, if she was then filmed in front of a work whilst commenting on it, this would clearly not be incidental inclusion, though it is likely to be fair dealing for the purposes of criticism or review. See also IPC Magazines Ltd v MGN Ltd [1998] FSR 431, 441, where incidental inclusion was considered to mean that the inclusion was casual, inessential, subordinate or merely background. The law here was summarised by Mann J in Fraser-Woodward v BBC Brighter Pictures [2005] EWHC 472 (Ch) para 82: ‘Guidance as to the law as to incidental inclusion can be found in Football Association Premier League Ltd v Panini UK Ltd [2004] FSR 1. In that case the defendants had published photographs of Premier League footballers in their club strip, which included Premier League or club logos; the League and clubs claimed copyright in their logos. The defendants relied on the defence of incidental inclusion, and it was rejected on the facts of the case. Chadwick LJ said that the question of whether there was incidental inclusion: “is to be answered by considering the circumstances in which the relevant artistic work – the image of the player as it appears on the sticker or in the album – was created” And whether or not the inclusion is incidental “turns on the question: why – having regard to the circumstances in which the [allegedly infringing work] was created – has [the original copyright work] been included in [the former]’ (12). He went on to hold that commercial as well as aesthetic considerations came into play in that consideration. Mummery LJ observed that ‘incidental is an ordinary descriptive English word … The range of circumstances in which the word “incidental” is commonly used to describe a state of affairs is sufficiently clear to enable the courts to apply it to the ascertainable objective context of the particular infringing act in question’ (15). 191 Detailed consideration of this area is outside the scope of this book. For more information specific texts on this area should be consulted. 192 S Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886–1986 (London, Kluwer, 1987) (Ricketson 1987) sets out this analysis at para 6.44. Professor Ricketson provides a more recent survey in his chapter ‘The International Framework of Copyright and Extra-Copyright Protection of Applied Art’ in S Ercolani (ed), Applied Arts under IP Law (Proceedings of the International Congress of the Association Litteraire et Artistique Internationale (ALAI) Rome, 15-16 September 2016) (Aracne editrice, Canterano 2018) (Ricketson 2018).

UK Law 59 the umbrella of artistic copyright have not succeeded. Currently, the Berne Convention effectively allows Berne Union countries to have their own laws on designs in addition to any artistic copyright protection they decide to grant – design laws (as opposed to copyright) typically requiring the registration or deposit of the design, levels of novelty and originality and limited terms of protection.193 So in many countries design laws and copyright are not mutually exclusive (which is the position in Europe under the Designs Directive).194 There is of course considerable commercial interest in the position. If a design is protected by copyright, then protection can potentially last until 70 years after the death of the designer under the usual copyright principles; if a design is instead protected by design right/registered design or similar protection, then this will be for a much lesser period. However, trade mark protection (potentially of unlimited duration, as long as renewal fees are paid) is also available for designs, whether in 2D or 3D, as is the law of unfair competition or similar laws in a number of countries (eg, the UK law of passing off). In addition, the scope of protection varies between the rights that potentially apply. Trade marks and the law of passing off are dealt with elsewhere in this book. But design protection through copyright, design right and other specific ‘designs’ laws will be considered here, although only in overview as regards design protection as opposed to copyright. As noted earlier in this chapter, in the United Kingdom, artistic copyright extends to sculptures, works of artistic craftsmanship, engravings and other artistic works covered by section 2 of the CDPA. When looking at the copyright protection afforded to designs/applied art in the United Kingdom and elsewhere, there is no uniform treatment, and indeed, nearly all jurisdictions seem to struggle with this area. The crux of the matter is the assumption that what copyright should protect are ‘creative’, original works, but it is dangerous for copyright to tread too far into protecting designs that are technical in nature or are otherwise ‘functional’ or mass-produced. This is because such designs are either not worthy of the exalted benefit of copyright, or more mundanely because to grant copyright protection would restrict technical progress, so a much more limited period of protection than the long copyright term ought to apply, particularly for functional items rather than those to be looked at and enjoyed. These boundaries are of course difficult to draw. A good example are the chairs designed by the architect Le Corbusier, the subject of litigation in a number of European jurisdictions. A chair of course is a functional item, but it can also be a thing of beauty or at least have aesthetic appeal. Le Corbusier’s chairs are modernist design icons. Should they be protected by artistic copyright (so giving Le Corbusier and then his heirs/assigns protection, potentially up to 70 years after his death)? Or are they more properly the subject of laws protecting industrial designs – laws that tend to rely on a

193 See Arts 2(1) and 2(7) of the Berne Convention as discussed in detail in Ricketson (1987) paras 6.44–6.54. Note that for designs, the Paris Convention for the Protection of Intellectual Property (which requires member countries to protect industrial designs – Article 5quinquies) runs in parallel with the Berne Convention for many countries: Ricketson (ibid) para 6.54. 194 Directive on the legal protection of designs (98/71/EC) Art 17 states that copyright protection shall continue to apply to designs to the extent determined (including as to originality) by the Member State in question.

60 The Modern Law of Copyright registration process and offer more limited protection? Courts in Germany, Switzerland and Austria say they should be protected by copyright; other jurisdictions, including Italy and the United Kingdom, have traditionally taken a different view.195 France generously protects works of applied art through both copyright and design protection – the so-called doctrine of the ‘unity of art’, which is in some ways a logical view, for is it really possible for the courts to distinguish between ‘major art’ and ‘minor art’, a boundary impossible to fix with precision?196 In the US, ‘pictorial, graphic or sculptural works’ (which include works of artistic craftsmanship) are protected by copyright (section 102(a)(5) of the Copyright Act but the definition of such works in section 101 of the Copyright Act only gives the design of certain types of ‘useful’ articles copyright protection. ‘Useful articles’ are defined as articles ‘having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally part of a useful article is considered a “useful article”.’ Section 101 states the design of a useful article shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article. Needless to say, this definition involving a ‘separability’ test is not an easy one to apply in practice but one thing is clear – there is a high threshold to the copyrightability of useful articles.197 In his overview of the relationship between copyright and designs, Christopher Heath (writing before the European Flos decision198) notes at least four approaches to the protection of applied art under copyright law, which can be summarised as: 1) Copyright protection is excluded from designs where the copyright work has been copied more than a certain number of times, so confirming its industrial application (as is the case in India and the United Kingdom). 2) Copyright protects any work that could be registered as a design. (France in particular takes this very generous approach under the ‘unity of art’ doctrine noted earlier.) 3) Copyright and design laws are applied concurrently, with a higher threshold of originality required for copyright protection (eg, Germany, Austria, Switzerland, Japan). 4) Copyright protects only designs that are incorporated into works of art distinguishable from any utilitarian function (eg, Italy, the United States and the United Kingdom). 195 The CJEU decision in the Italian Arco lamp design case case Flos SpA v Semeraro Casa e Famiglia SpA [2011] EUECJ C-168/09 as subsequently applied has overturned the traditional view – Flos is discussed later in this section. 196 See Ricketson (1987) (above n 192) para 6.45. 197 This point is made by J Ginsburg in ‘The Supreme Court Fails to Un-“Twist” the Knot’ in Ercolani (2018) (n 192 above). The current approach is that of the Supreme Court in Star Athletica, L. L. C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 197 L. Ed. 2d 354 (2017) (see the discussion in Ginsburg). The Court held: ‘an artistic feature of the design of a useful article is eligible for copyright protection if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article’ (Star Athletica, L. L. C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1016 (2017)). See also JB Prowda, Visual Arts and the Law (Lund Humphries, Farnham, 2013) 63–65. 198 Flos SpA v Semeraro Casa e Famiglia SpA [2011] EUECJ C-168/09. See C Heath, ‘The Protection of Aesthetic Creations as Three-Dimensional Marks, Designs, Copyright or Under Unfair Competition’ in C Heath and A Kamperman Sanders (eds), New Frontiers of Intellectual Property Law (Oxford, Hart Publishing, 2005).

UK Law 61 The UK Position Having given an overview of the issues, how does UK law address them? It is helpful by way of background to consider the position before and after the repeal of section 52 CDPA on 28 July 2016. Before the repeal of section 52 the UK had in effect limited the term of protection for certain artistic works that were industrially manufactured (in more than 50 copies) to 25 years. However, in light of the CJEU decision in Flos the UK Government controversially decided to repeal section 52 on the grounds this was required to ensure UK law complied with EU copyright law.199 a. Copyright Before the Repeal of Section 52 The protection of utilitarian or mass-produced items by copyright was an important and controversial feature of UK copyright law until the CDPA. In particular, as copyright protected engineering drawings of product designs as graphic works, this copyright would protect against indirect copying of the drawings through copying the products in question.200 The effect of the CDPA was to exclude the vast majority of industrial designs from copyright protection.201 This was done by effectively removing copyright

199 Professor Lionel Bently argued in 2012 the UK IPO should have exercised caution before rushing to take action in light of Flos and waited to see how the CJEU case law here has developed given Flos was at odds with what Member States had agreed in the Designs Directive and subsequent EU legislation (see L Bently, ‘The Return of Industrial Copyright?’ (July 19, 2012). European Intellectual Property Review, Vol 10, September 2012; University of Cambridge Faculty of Law Research Paper No 19/2012). However it is fair to say that more recent CJEU decisions have only served to highlight a requirement in EU law that all artistic works should be protected including mass produced designs (see Cofemel-Sociedade de Vesturário SA v G-Star Raw CV (Case C-683/17) EU:C:2019:721 and Brompton Bicycle [2020] EUECJ C-833/18) (in the latter case the Court ruled that copyright will also apply even where the shape of the product has a technical function as copyright protection is nevertheless available ‘to a product whose shape is, at least in part, necessary to obtain a technical result, where that product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality’ (the product in this case was the well-known Brompton folding bicycle)). 200 The ‘high watermark’ was British Leyland Motor Corp v Armstrong Patents Co Ltd [1986] RPC 279 (HL), which upheld that copying of functional industrial articles constituted infringement of artistic copyright in their design drawings by (indirectly) reproducing those drawings in three dimensions. 201 ‘It was clearly the intention of the framers of the CDPA that copyright protection was no longer to be available to what can compendiously be described as ordinary functional commercial articles’: Mackie Designs (above n 14) 723 (per Pumfrey J). See the effect of s 52 (below n 202) and s 51 CDPA, which states, ‘It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design.’ For these purposes, ‘design’ means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article, other than surface decoration (s 51(3)). S 51 was considered in BBC Worldwide Ltd v Pally Screen Printing Ltd [1998] FSR 665, which highlights some of the difficulties of the relationship between copyright and design protection. On an application for summary judgment, the copying of the Teletubbies TV characters to make T-shirts and other clothing benefited from a defence under s 51. In particular, there was no evidence that the three-dimensional Teletubby characters were artistic works; had this been proven, then the case would have been decided differently. A claim in passing off (to the effect that members of the public would regard the defendant’s products as those of the plaintiff or in some way associated with them and therefore there was deception) failed as well. (See also below ch 8.) Also, in Lucasfilm [2009] (above n 21), paintings and drawings used to create Star Wars Stormtrooper helmets and armour were held to be design documents for works [the helmets and armour] that were not artistic works (ie, they were not sculptures or works of artistic craftsmanship), so there was no copyright infringement of the underlying paintings and drawings in this case (paras 83–87).

62 The Modern Law of Copyright protection from designs other than for artistic works and typefaces, and limiting the term of copyright protection for designs ‘made by an industrial process’ and derived from an artistic work to 25 years from first marketing.202 In short, the intention behind the CDPA was to leave copyright as the preserve of what might properly be called artistic works.203 A concern frequently raised against copyright protection for ‘useful’ articles was that the designer would receive protection that will exceed any expression of its aesthetic elements and encompass the technological applications of the utilitarian article. This may foreclose competitors from using designs of general application, and if a monopoly should be granted, this ought to be patent protection.204 In Lucasfilm v Ainsworth, the Supreme Court summarised the policy considerations underlying the complex UK copyright and design protection regime at that time (2011) with regard to ‘three-dimensional artefacts’ and why the courts should be slow to allow the boundaries of full copyright protection (at present only applying to sculptures and works of artistic craftsmanship) to ‘creep outwards’: It is possible to recognise an emerging legislative purpose (though the process has been slow and laborious) of protecting three-dimensional objects in a graduated way, quite unlike the protection afforded by the indiscriminate protection of literary copyright. Different periods of protection are accorded to different classes of work. Artistic works of art (sculpture and works of artistic craftsmanship) have the fullest protection; then come works with ‘eye appeal’ (AMP Inc v Utilux Pty Ltd [1971] FSR 572);205 and under Part III of the 1988 Act206 a modest level of protection has been extended to purely functional objects (the exhaust system of a motor car being the familiar example). Although the periods of protection accorded to the

202 S 52 CDPA. This effectively limited copyright protection for the articles in question (being articles made by an industrial process which are copies of the underlying artistic work) to 25 years from the end of the calendar year in which the articles were first marketed. Under The Copyright (Industrial Process and Excluded Articles) (No 2) Order 1989 (SI 1989-1070), an article would essentially fall within s 52 as ‘made by an industrial process’ if (a) it is one of more than 50 such articles, or (b) it consists of goods manufactured in lengths or pieces, not being handmade goods. Also, Art 3 of these Regulations provide that s 52 does not, however, apply to works of sculpture (other than casts or models used or intended to be used as models or patterns to be multiplied by any industrial process); wall plaques, medals and medallions; and printed matter primarily of a literary or artistic character (listed to include among other things book jackets, dressmaking patterns, greetings cards, labels, maps, plans, and playing cards). So for example, a fabric design (being an artistic design) that is industrially applied (eg, to curtains) would only benefit from 25 years’ protection in the UK. The application of s 52 was discussed in Lucasfilm [2008] (above n 60) 143–69; and Lucasfilm [2009] (above n 21) 88–98. 203 Copinger (above n 33) 13-29, citing Hansard HL vol 491, cols 185–86. Copinger distinguishes a work of fine art (such as a painting) from an ‘industrial’ design, on the basis a work of fine art performs no particular function other than to be enjoyed as an object in itself (13-02). The result of this has been attempts by litigants to expand the scope of artistic copyright protection under the categories of artistic work in s 4 CDPA to applied art. To take just two examples, that non-slip rubber floor mats for cars are ‘engravings’ (Hi-Tech Autoparts Ltd v Towergate Two Limited [2002] FSR 15 & 16); and more recently, that prototype Star Wars Stormtrooper helmets are either works of artistic craftsmanship or sculptures (Lucasfilm [2008] (above n 60); and Lucasfilm [2009] (above n 21)). This area and these cases are discussed above s 3.2.1. 204 See RM Polakovic, ‘Should the Bauhaus be in the Copyright Doghouse? Rethinking Conceptual Separability’ (1993) 64 University of Colorado Law Review 871, 889. 205 ie, registered designs, which will not be protected to the extent the features of the product are solely dictated by their technical function. Note that ‘eye appeal’ was a feature of registered designs law prior to 2001 and still applies to pre-2001 designs, but it is no longer part of the statute – s 1 Registered Designs Act 1949, following EU harmonisation under the Designs Directive. See M Howe QC, Russell-Clarke and Howe on Industrial Designs, 8th edn (London, Sweet & Maxwell, 2010) ch 3. 206 ie, unregistered design right. See below.

UK Law 63 less privileged types have been progressively extended, copyright protection has always been much more generous. There are good policy reasons for the differences in the periods of protection, and the Court should not, in our view, encourage the boundaries of full copyright protection to creep outwards. (Lucasfilm [2011] UKSC 39, 49).

Following the Repeal of Section 52 The repeal of section 52 in July 2016 meant that there was no longer any restriction in UK law that would limit the term of copyright protection where copies of an artistic work are made by an industrial process. As long as the item falls within the definition of an original artistic work under section 4 CDPA then it will benefit from the full term of copyright protection. In practice for 3D industrial designs (eg chairs, lamps and so on) to be protected for the full copyright term this means they need to be original works of artistic craftsmanship under section 4 CDPA, so the discussion above in section 3.2.1 relating to what is a work of artistic craftsmanship is now particularly relevant.207 For 2D designs eg fabric patterns or wallpapers as long as the underlying work is an original artistic work (whether a work of artistic craftsmanship or a graphic work for example) then such designs have the full term of copyright protection. One consequence of the repeal of section 52 is that consent is now required from the copyright owner in order to reproduce such works whether in 3D or even 2D (eg photographs in a book or on a website) where the underlying work is protected by copyright as an artistic work, unless a copyright exception applies. Another consequence is that the manufacture, marketing, distribution and resale of replicas of iconic furniture designs in the UK can no longer take place if the iconic designs are protected by copyright as works of artistic craftsmanship and the licence of the copyright owner is not obtained.208 b. Design Protection in the United Kingdom: Overview Although copyright law’s application to industrial designs is limited in the United Kingdom, there remain a number of other forms of protection – a confusing array of rights that either need to be applied for or do not require registration. Registered rights (which were harmonised across the EU by the Designs Directive209) are dealt with last, together with the Community-wide scheme for the protection of designs through a registered (and unregistered) right under the Designs Regulation,210 which has thereby established a ‘Community design’ across the European Union. The implications of Brexit for this are also noted below.

207 Also relevant will be how the UK courts (and indeed the UK legislator) may apply Cofemel [Cofemel (Copyright and related rights – Judgment) [2019] EUECJ C-683/17] and any future CJEU cases – this might make the concept of a ‘work of artistic craftsmanship’ redundant if the law develops to protect any type of copyright work and remove any requirement for ‘artistic quality’ (see n 2 above) – but at the moment at least this is just speculation and Brexit may also of course be a factor. 208 See Guidance document on repeal of s 52, CDPA, IPO, March 2017 – see https://assets.publishing.service. gov.uk/government/uploads/system/uploads/attachment_data/file/606207/160408_guidance_s52_final_ web_accessible.pdf (accessed 9 May 2020). 209 Directive of 13 October 1998 on the legal protection of designs 98/71/EC (OJ L289, 28.10.98) (‘Designs Directive’) 28. 210 Council Regulation of 12 December 2001 on Community Designs (6/2002/EC) (OJ L3, 5.1.2002) (‘Designs Regulation’) 1.

64 The Modern Law of Copyright c. Design Right under the CDPA The design right was a new right introduced by Part III of the CDPA to protect functional designs. (As noted above, the previous generous copyright protection for such designs had been removed under the CDPA.) It is best categorised as a right in the nature of copyright, as it confers a right against copying the design rather than an absolute monopoly, which would restrict even the independent creation of a registered design. The purpose of the right, in the words of the Court of Appeal, is not to protect the ‘novelty’ of a work against all competition (as registered design protection would) but, like copyright, to ‘provide limited protection against unfair misappropriation of the time, skill and effort expended by the author of the design on the creation of his work’.211 Design right is a property right that arises automatically in an ‘original design’ being the design of ‘the shape or configuration (whether internal or external) of the whole or part of an article’. ‘Originality’ here means not commonplace in a qualifying country in the design field in question at the time of its creation. Section 213 of the CDPA clarifies that design right does not subsist in: • a method or principle of construction; • features of shape or configuration of an article that (i) enable it to be connected to or placed in, around or against another article so that either article may perform its function, or (ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part; or • ‘surface decoration’. Hence surface decoration is properly the subject of copyright (or registered design protection).212 Where a design (eg, a work of artistic craftsmanship) can benefit from both design right and copyright, copyright takes precedence (section 236 CDPA). The exclusive (ie, economic) right of the design right owner is to reproduce the design for commercial purposes by making articles to the design or making a design document recording the design for the purpose of enabling such articles to be made (section 226 CDPA). Reproduction is defined more narrowly than for copyright: it means copying the design so as to produce articles exactly or substantially to that design.213 Thus, taking a photograph of a design that is not an artistic work would not infringe copyright or design right. The design right is limited in duration in most cases to ten years (section 216 CDPA). d. Registered Design Protection In the United Kingdom, there are two forms of registered designs available: registration at the UK Intellectual Property Office for a UK registered design (under the Registered Designs Act 1949 (as amended)); or (prior to the end of the Brexit transition period as regards protection in the UK) registration at the European Union Intellectual Property 211 Farmers Build Ltd v Carier Bulb Materials Handling Ltd [1999] RPC 461 (CA), 481. 212 See Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 (Pat): ‘[w]hether a feature is surface decoration is a value judgment for the Court in each case’ (Carr J, 26). 213 S 226 CDPA.

UK Law 65 Office (EUIPO) in Alicante for a Community Design under the Designs Regulation, which gives protection as a unitary right across the European Union. As the substantive law is now the same here for both registered rights (due to the Designs Directive harmonising UK law so that in effect it is also in line with the Designs Regulation), the registered rights in designs under the 1949 Act and the Designs Regulation will be considered together. As UK designs law will remain harmonised with EU law as at the date the Brexit transition period ends (until the UK were in the future to decide to change it) it is assumed in this brief discussion that references to Community designs will after the Brexit transition period still apply to design protection in the UK (albeit the UK will no longer fall within the unitary EU registered community design (RCD)) on the basis that in the UK an existing RCD will in effect convert to a UK registered design and the unregistered Community design will continue as a UK only right (a Supplementary unregistered design (SUD)), but specialist works should be consulted for the definitive position.214 Note that unregistered Community design (UCD) protects designs capable of registration under the Designs Regulation – whether or not applied for – from being copied for three years from the date on which a design was first made available to the public within the Community. Registered designs, however, can last for up to 25 years from filing and confer exclusive monopoly rights. A design is capable of protection by a ‘design right’ (ie, a Community design – through registration as a ‘registered Community design’ (RCD) or through unregistered Community design (UCD)) to the extent it is new (ie, no identical design has been made available to the public) and has individual character.215 ‘Design’ means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation (Article 1 of the Designs Directive). ‘Product’ means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product (ie, a product composed of multiple components that can be replaced, permitting disassembly and reassembly of the product), packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs (Article 1). Design right does not subsist in features of appearance of a product that are solely dictated by its technical function or are necessary for interconnection purposes (Article 7) – although this does not mean the design must have an aesthetic quality (Recital 14). Based on these definitions, which include references to ‘handicraft’, there appears to be a potential overlap between ‘design right’ under the Designs Directive/Designs Regulation and works of artistic craftsmanship under section 4(1)(c) of the CDPA and possibly other artistic works under UK law (depending upon how ‘handicraft item’ is interpreted).216 Registered design protection can in any event freely overlap with 214 See also www.gov.uk/guidance/changes-to-eu-and-international-designs-and-trade-mark-protectionafter-the-transition-period (accessed 9 May 2020). In that document the UK IPO comments: ‘At the end of the transition period (1 January 2021), registered Community designs (RCDs), unregistered Community designs (UCDs), will no longer be valid in the UK. These rights will be immediately and automatically replaced by UK rights. If you own an existing right, you do not need to do anything at this stage.’ 215 This in effect is a test for originality but not the same test as for copyright. 216 A number of the Law Lords in Hensher considered that a work of craftsmanship was one involving ‘handicraft’.

66 The Modern Law of Copyright copyright and unregistered design right (Article 17 of the Designs Directive; Article 96 of the Designs Regulation). By way of example, unless they are works of artistic craftsmanship, clothing designs will typically fall within design protection, as opposed to copyright protection (except for any surface decoration aspects of the design).217 Likewise for furniture created by a designer (unless it can be considered to be a sculpture or work of artistic craftsmanship218). However, using an artistic work (eg, a drawing) on the face of an item as surface decoration (eg, on a badge) is protected by copyright, as section 51 of the CDPA does not apply.219

3.2.11. Other Rights Analogous or Related to Copyright (Excluding Moral Rights) Copyright, more than any other intellectual property right, has been expanded in the UK to cover a wide range of objects and activities, and to protect both economic and moral interests, adding to the complexity of the subject. Moral rights and droit de suite are dealt with separately below in Chapter 4, and what follows is a discussion of certain other aspects of copyright – domestic and foreign – of relevance to artists, publishers and galleries.

Publication and Database Rights Two relatively recent additions to UK copyright law that have resulted from European Directives, namely publication right and database rights, are also of relevance to the protection of artistic works. From 1 December 1996 a new right, ‘publication right’, was introduced into the CDPA.220 The publication right is equivalent to copyright (but excludes moral rights protection) by protecting unpublished literary, artistic and other works in which copyright has expired.221 The first owner of the publication right is the national of an EEA 217 See Jo-Y-Jo Ltd v Matalan Ltd [2000] ECDR 198 (Rattee J): S Clark, ‘Jo-Y-Jo Ltd v Matalan Retail Ltd: Threadbare Protection for Clothing Designs?’ (1999) 12 European Intellectual Property Review 627. See more recently Response Clothing Ltd (2020) (see n 98 above). 218 See above s 3.2.1. 219 Flashing Badge Co Ltd v Groves [2007] EWHC 1372 (Ch), [2007] FSR 36, distinguishing Lambretta Clothing v Teddy Smith (UK) Ltd [2004] EWCA Civ 886. 220 See the Copyright and Related Rights Regulations 1996 (SI 1996/2967) (‘Regulations’) as amended by The Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019 (SI 2019/605). 221 Of course the fact that copyright must have expired means that works that never benefited from copyright protection in the first place cannot then benefit from this publication right. The purpose behind Council Directive 93/98/EEC (the ‘Term Directive’) was to harmonise this area, as a number of countries had a publication right – in particular, the editio princeps of Germany on which the Directive is mainly based. See Copinger (1999) (above n 33, 17-02). Note also that the UK has the so-called 2039 rule which protects certain works unpublished at the end of 1989 and where the author died prior to 1 August 1969 – such works enjoy copyright protection until the end of 2039. In general artistic works are not included within the rule (but literary, dramatic and musical works are as well as certain sound recordings and films) but engravings and photographs (taken on or after 1 June 1957) are included in the rule – see A O’Connell, ‘Copyright in

UK Law 67 state or (after Brexit) of the UK who ‘publishes’ such a work for the first time within the European Economic Area (EEA) or (after Brexit) the UK.222 The right lasts for 25 years from the end of the calendar year in which the work was first published. Those with historic collections of artistic works, such as museums, galleries and private collectors, need to bear this right in mind and exercise caution when allowing others to ‘publish’ their unpublished works – for example, by exhibiting them in public or allowing photography – lest they lose the publication right.223 Database rights came into force on 1 January 1998.224 In addition to gaining possible copyright protection,225 databases226 gained the benefit of a sui generis database right protection.227 There are no formalities for database right protection, but the maker of

Unpublished Works: 2039 and Orphan Works’, Library and Information Research, Vol 39 No 121 (2015) and also the detailed discussion in ‘Consultation on reducing the duration of copyright in unpublished (“2039”) works in accordance with section 170(2) of the Copyright, Designs and Patents Act 1988’ (UK IPO, 2014) – https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/368811/ consultation-on-unpublished-works.pdf (accessed 9 May 2020). 222 ‘Publication’ is defined to include any communication to the public and includes exhibiting or showing the work in public or other communication to the public, as well as more traditional means of publication (eg, issuing copies to the public): Reg 16(2). The Regulations therefore appear to envisage that an unpublished work will cease to be ‘unpublished’ once it is exhibited in public, for example. However, the EC Directive upon which the Regulations are based (ie, Art 4 of Council Directive 93/98/EEC (the Term Directive)) can be interpreted differently so that ‘publication’ (in the context of an unpublished work) simply means issuing copies to the public, as opposed to exhibiting the work. See, eg, Art 3(3) of the Berne Convention; and Laddie (3rd edition (2000) of the work referred to above n 94) 11.26–11.30. Copinger (1999) (above n 33) also acknowledges this possibility (see 7-04 fn 22) but relies on the strict language of the Regulations rather than the Directive in its analysis), so it is submitted the matter remains unclear. Laddie (2000) 11-32 and ch 2 discusses how a Court would treat the Regulations given their view that they fail to properly implement the Directive and therefore may be ultra vires and to that extent invalid: in their view a Court could treat them as amended in order to properly reflect the Directive. 223 For a detailed consideration of publication right, see H Simpson and D Booton, ‘The New Publication Right: How it will affect Museums, and Galleries’ (1997) 2 Art, Antiquity and Law 283. See also Copinger (1999) (above n 33) ch 17; and Laddie (3rd edition (2000) of the work referred to above n 94) ch 11. As noted above the 2039 rule may also need to be considered. 224 Under the Copyright and Rights in Databases Regulations 1997 (SI 1997/3032) implementing Directive 96/9/EC on the legal protection of databases. The intention was to harmonise the law across the EC protecting compilations of mere data or factual information; and the right is economic in origin. For example, the ‘maker of the database’ (a crucial definition for ownership and hence enforcement) is in general the person who takes the initiative in obtaining, verifying or presenting the contents of a database and assumes the risk of investing in that obtaining, verification or presentation (Reg 14). For a discussion of database right and copyright generally, see Laddie (3rd edition (2000) of the work referred to above n 94) ch 30; and Copinger (1999) (above n 33) ch 18. 225 Copyright protection for a database as an original literary work is still available on the basis the selection or arrangement of the contents of the database constitutes the author’s own intellectual creation (a higher originality requirement than previously the case: see s 3A(2) CDPA). ‘Old’ (pre-28 March 1996 databases) that were in copyright on 1 January 1998 continue to enjoy copyright, even if they fail to satisfy the new originality requirement (Reg 29 Copyright and Rights in Database Regulations 1997 (ibid)). 226 A ‘database’ is a collection of independent works, data or other materials that (a) are arranged in a systematic or methodical way and (b) are individually accessible by electronic or other means (s 3(1) and s 3A(1) CDPA). So for example, a ‘virtual art gallery’ on a website or on CD-ROM could qualify for database right protection, regardless of the copyright position of the individual images/pictures in the gallery (which could be owned by persons other than the database right owner). See below ch 5 for a fuller discussion. 227 For 15 years from the making of the database or making it available to the public, whichever is longer, the owner of the database right can prevent the extraction or reutilisation of all or a substantial part of the contents of the database (Regs 16 and 17, subject to the transitional provisions in Reg 30 Copyright and Rights in Database Regulations 1997); a substantial change to the contents of a database (eg, updating) can in certain circumstances effectively extend the term of protection to a further fifteen years from the date of the change

68 The Modern Law of Copyright a database must have a connection with an EEA state (or after Brexit the UK only).228 The fair dealing and moral rights provisions in the CDPA do not apply to database right.229 Database right protection is most likely to be encountered in the context of artistic works, for example, where the intellectual property protection of CD-ROMS or websites is concerned. This area is further discussed below in chapter five.

Rental and Lending Rights Another recent innovation is the extension to artistic works of the rental and lending rights in section 18 of the CDPA (ie, the right to restrict the rental and lending of copies of a work to the public). This is a consequence of the 1992 EC Directive on Rental and Lending Right.230 On first glance, the Directive would appear to restrict the lending of original artistic works as well as copies. But the Council Working Group involved in the Directive wanted to avoid this result, and so Recital 13 was included: Whereas it is desirable … to exclude from rental and lending … certain forms of making available as for instance … making available for exhibition …; whereas lending within the meaning of this Directive does not include making available between establishments which are accessible to the public …

So the better view is that the Directive does not apply to the renting or lending of artistic works for the purposes of exhibition.231 However, an Austrian case suggests that this is without prejudice to any national rights that expressly provide for the payment of royalties if works are exhibited.232 In this case, the defendant, a non-profit organisation, organised an exhibition of artistic works of members of the plaintiff (a copyright collecting society) that was sponsored by the Bank of Austria. This was held to be a ‘for-profit’ exhibition, for which royalties were payable by the defendant. In any event, when implementing the Directive, the UK government expressly excluded from rental and lending rights the making available of a work for the purpose of exhibition in public.233

(Reg 17(3)). Absent agreement otherwise or except in the case of works created during the course of employment, the first owner of database right will be the maker of the database (Regs 14(2) and 15). To benefit from database right protection there must have been a substantial investment in obtaining, verifying or presenting the contents of the database (Reg 13(1)). 228 Reg 18 Copyright and Rights in Database Regulations 1997 (above n 224). After Brexit (strictly speaking the expiry of the transition period – ie at the time of writing from 1 January 2021) database right in the UK will only be available to UK citizens, residents, and businesses for new databases from that date but existing databases will continue to be protected for the rest of their duration – see www.gov.uk/guidance/sui-generisdatabase-rights-after-the-transition-period (accessed 9 May 2020) and The Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019 (SI 2019/605). 229 There are more limited ‘fair dealing’ type restrictions on database right in Reg 20 Copyright and Rights in Database Regulations 1997. 230 Directive 92/100 (OJ 1992 L 346/61). Whereas it is desirable … to exclude from rental and lending … certain forms of making available as for instance … making available for exhibition …; whereas lending within the meaning of this Directive does not include making available between establishments which are accessible to the public … 231 See generally Bently and Sherman (above n 9) 273–74. 232 Re Copyright Collecting Society, Supreme Court, 23 November 1999, [2000] EIPR N-63. 233 S 18A (3)(b) CDPA.

UK Law 69

Exhibition/Display Right234 The Berne Convention does not contain any requirement of a right to display artistic works in public, although the exhibition of a work of art in an inappropriate place might infringe the moral right of integrity.235 So for example, under UK law, whilst the public performance of a film without consent can infringe copyright, exhibiting an original work of art or indeed a lawful copy in public will not do so.236 It appears that relatively few countries have such a right. In France the better view is that there is such a right (as part of the general right to control the public presentation of a work).237 In the United States and Germany, copyright owners appear to have an exhibition right, but it has been generally understood it cannot be exercised where the work is exhibited with the permission of the owner of an art work.238 Nevertheless, the German government still pays royalties to artists when their works are exhibited in public galleries.239 In Canada, there is a well-developed exhibition right (there being no moral right of disclosure).240 Owners of copyright in artistic works have the right ‘to present at a public exhibition, for a purpose other than sale or hire, an artistic work created after June 7, 1988, other than a map, chart or plan’.241 234 See Bently and Sherman (above n 9) 274–76. See also the more recent study by Dr Yaniv Benhamou for WIPO: Y Benhamou, Revised Report on Copyright Practices and Challenges of Museums (November 16, 2018). Available at SSRN: https://ssrn.com/abstract=3449290 or http://dx.doi.org/10.2139/ssrn.3449290 (18) (Benhamou). 235 Ricketson (above n 192) 470. See generally below ch 4. 236 So in the UK (absent any breach of confidence – see below ch 8), the copyright owner has no control over the exhibition of her work as long as her moral rights are respected – see below ch 4. But she can control the exhibition of an infringing copy of her work (s 23(c) CDPA). See generally Copinger, (2011) (16th edition of the work referred to above n 33) 11–13. 237 E Adeney, The Moral Rights of Authors and Performers: An International and Comparative Analysis (Oxford, Oxford University Press, 2006) 192–94 takes this view (right of disclosure under Art L121-5, Intellectual Property Code). More recent discussion also supports this view citing Article L122-2 (communication right) – see Benhamou (n 234 above) 36. 238 In the US it appears there is a right of public display, but the owner of a work is entitled to display it without the authority of the copyright owner; but if the work is loaned by the copyright owner rather than sold, then the copyright owner can control the right. See Merryman and Elsen (above n 118) 431–32. Dr Benhamou comments ‘[the] US expressly recogni[zes] on-site public display by a museum of an original work of art or a “copy lawfully made” (Section 109(c) Copyright Act). The display right applies only to the original work and to “copies lawfully made” at the place where the copy is located (i.e. not to infringing copies or public performance of audiovisual works, even if the museum owns the work of film, video, digital or other types of such works), AAMD Guidelines, 31’ (Benhamou (n 234 above) 37). 239 JL Duchemin, ‘Thoughts on the Exhibition Right’ (1993) 156 Revue Internationale du Droit d’Auteur 14, 48. This was the position as of the date of Duchemin’s article. Note, however, the more recent German case in which the estate of Joseph Beuys was able to prevent the exhibition of photographs of a Beuys performance work (although the legal grounds appear to include what in the UK would be copyright infringement): J von Perfall, ‘Images of Beuys Performance Banned: German Court Rules Museum Breached Artist’s Copyright by Displaying Photographs of 1964 Happening’ (Nov 2010) 218 Art Newspaper; and D Maclean, ‘Artist’s Copyright Versus Curator’s Freedom of Expression: Wider Significance of Beuys Case’ (Nov 2010) 218 Art Newspaper. Dr Yaniv Benhamou comments that Germany allows the author to control exhibition but has an exception that allows the public exhibition of an original work by their owner unless at the time of sale of the original work the author ruled this out (Benhamou (n 234 above) 38). 240 Adeney (ibid) 357. In Canada the Copyright Act grants the copyright owner the right ‘to present at a public exhibition, for a purpose other than sale or hire, an artistic work’ (Art 3(1)(g) of the Copyright Act) (see Benhamou (n 234) 36) 241 S 3(1)(g) Copyright Act, RSC, 1985 c C-42.

70 The Modern Law of Copyright Although overshadowed by droit de suite in Europe, some have argued for the development of display right as a means of providing financial incentives for visual artists. But this development appears unlikely in the near future, if at all.242

Droit de Suite/Domaine Public Payant The recent harmonisation of droit de suite (right of an artist or his estate to a share in the resale price of his works) across Europe is discussed below in chapter four. But the introduction across Europe of a domaine public payant system (‘paying public domain’) has so far received little support.243 Under this system, when a work is exploited after its copyright has expired, royalties are paid into a joint fund to benefit needy authors or to promote the arts in general. The idea can be traced back to French author Victor Hugo, who advocated the setting up a public domain payant. The money would be collected into a fund devoted to the encouragement of young writers and creators.244 Yet there have been advocates of paying public domain, such as the German Writers Union, who proposed a modernised form of paying public domain.245 This is on the basis that earlier authors, whose works are often successful only long after their death, should help finance the creative activities of current, living authors.215 Indeed, it has been argued that droit de suite and domaine public payant ought to operate in tandem, as droit de suite generally favours artists’ heirs rather than living artists.246 The argument for domaine public payant is certainly challenging for countries such as the United Kingdom that have a chequered history of state funding for the arts and communal funds for artists. The principle behind the introduction of such a system is that artists should be viewed as members of an artistic community spanning both the past and present. Artists whose works are successful only long after their death will, by way of a (fictitious in legal terms) ‘testament’, effectively contribute to the financing and development of the creativity of later living artists. These living artists are in effect paid in advance and will make payment back in due course through income from their works after their death.247 So in a sense, the dead care for the living. 242 See H Hansmann and M Santilli, ‘Authors’ and Artists’ Moral Rights: A Comparative Legal and Economic Analysis’ (1997) 26 Journal of Legal Studies 95 117. See also WA Carleton III, ‘Copyright Royalties for Visual Artists: A Display-Based Alternative to the Droit de Suite’ (1991) 76 Cornell Law Review 510. 243 Very few countries have or have had such a right – in 2020 WIPO commented ‘Italy was often cited as an example of a Western country applying such a system, which it abrogated in 1996. Nowadays, such regimes exist in Algeria, Kenya, Ruanda, Senegal, Republic of the Congo, Côte d’Ivoire and Paraguay.’ (Note on The Meanings of the Term ‘Public Domain’ in the Intellectual Property System with special reference to the Protection of Traditional Knowledge and Traditional Cultural Expressions/Expressions of Folklore, WIPO, WIPO/GRTKF/IC/17/INF/8, 24 November 2010) Annex note 75). Germany extended its copyright period to the author’s life plus 70 years rather than confer such a right: see Cornish (above n 35) 365. Indeed, an attempt to ‘fill the gap’ between the 50-year and 70-year post mortem auctoris periods by a special version of paying public domain – that the last 20 years of protection post mortem auctoris should not profit authors’ heirs but should be established as an authentic right of the community of the living generation of authors – failed during the run-up to the adoption of the so-called Term Directive (Council Directive 93/98 of 29 October 1993 harmonising the term of protection of copyright and certain related rights [1993] OJ L290/9). See A Dietz, ‘Term of Protection in Copyright Law and Paying Public Domain: A New German Initiative’ (2000) European Intellectual Property Review 506, 507. 244 WIPO (2010) at Annex paras 54–58. 245 See Dietz (ibid). Ibid, 510. 246 Indeed, the introduction of droit de suite is often criticised on this ground: ibid, 508. 247 Dietz (above n 243) 507.

UK Law 71

Suggested Further Reading W Cornish, D Llewelyn and T Aplin, Intellectual Property: Patents, Copyrights, Trademarks & Allied Rights 9th edn (London, Sweet & Maxwell, 2019) (and earlier editions) G Davies et al, Copinger and Skone James on Copyright 17th edn (London, Sweet & Maxwell, 2016) (and earlier editions) S Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886–1986 (London, Kluwer, 1987) E Rosati, Copyright and the Court of Justice of the European Union (Oxford, Oxford University Press, 2019) A Speck et al, Laddie, Prescott & Vitoria: The Modern Law of Copyright 5th edn (London, LexisNexis, 2018) (and earlier editions)

4 Moral Rights and Artist’s Resale Right (Droit de Suite) THIS CHAPTER discusses both moral rights and droit de suite (artist’s resale right). Both rights fall outside of the ‘classic’ economic rights of authors under copyright law (reproduction, communication to the public) in that they are linked to the author’s continuing relationship with her work and are inalienable (in the sense the author cannot transfer/assign them like copyright, except on death). So, they are discussed in the same chapter but as noted below droit de suite is an unusual right as it combines both a moral and an economic aspect. Both rights have origins in France and both are late additions to UK copyright law – moral rights came into effect in 1989, droit de suite/artist’s resale right in 2006. Moral rights are not harmonised under EU law but droit de suite/artist’s resale right is.

4.1. Moral Rights1 As discussed in chapter one, the cultural value of authorship is embedded in the development of both the Anglo-American and authors’ rights (droit d’auteur) copyright systems. In copyright systems based on authors’ rights, it has long been the case that the personality of artists as expressed in their creations benefits from protection as a proprietary right alongside the economic interests in their exploitation. The argument is that any author, whatever he creates, embodies some part of himself in his works, and this gives rise to an interest that deserves protection, in the same manner as other personal rights such as reputation and confidences.2 To mistreat a work of art is to mistreat the artist, to 1 For a comparative legal and economic analysis of moral rights, see H Hansmann and M Santilli, ‘Authors’ and Artists’ Moral Rights: A Comparative Legal and Economic Analysis’ (1997) 26 Journal of Legal Studies 95. See also E Adeney, The Moral Rights of Authors and Performers: An International and Comparative Analysis (Oxford, Oxford University Press, 2006), G Davies and K Garnett, Moral Rights 2nd edn (London, Sweet & Maxwell, 2016) and MT Sundara Rajan, Moral Rights: Principles, Practice and New Technology (New York, Oxford University Press, 2011). For a critical survey see, P Masiyakurima, ‘The Trouble with Moral Rights’ (2005) 68(3) Modern Law Review 411–34. The author comments, ‘moral rights are plagued by serious internal inconsistencies which may be made more glaring by technological advances’ (434). 2 S Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886–986 (London, Kluwer, 1987) 456. See also Adeney (ibid) 3, who stresses that moral rights protect a range of interests beyond just personality (albeit this has been the European approach to their development), including offering some modicum of power to performers (who have limited moral rights protection now), upholding human rights, addressing concerns about the ethical treatment of creators, safeguarding the standing of creators and so on.

Moral Rights 73 invade his privacy and impair his personality.3 Another argument advanced in support of moral rights is the belief that ‘authors’ are ‘almighty creators who pour particular meanings into their creations and therefore inherently have undisputed authority over the uses and interpretations of those creations’.4 The general justifications for moral rights are based on the natural rights/personality theories that were discussed in chapter two. Moral rights can also be justified on economic and public policy (and public interest) grounds. The European Commission, for example, has stated that by protecting the authorship and authenticity of a work, moral rights also serve consumer interests, as they can assist consumers in verifying they have received the authentic product they are seeking and not any different or pirated goods.5 Hansmann and Santilli have also argued that moral rights have economic implications: a work of art will sell for more if it can be attributed to the artist (hence the value of the right of paternity); furthermore, the reputation of an artist is based on the entire corpus of his work, so the right of integrity is important in helping preserve the artist’s reputation (and so preserving the value of the artist’s work).6 These are variants of an argument often advanced to justify trade mark rights.7 It has also been argued that art is a common good – a good for all members of MT Sundara Rajan sees moral rights as recognising the special relationship between authors and their works and notes their popularity across various legal systems, and she argues they are modern rights that can apply in the digital environment and are relevant to the ongoing concern in the art market about fakes and authenticity (Introductory Presentation, Conference on Moral Rights in the Serial Arts, Rodin Museum, Paris, 18 October 2019). See also Sundara Rajan n 1 above. For a rather different view see AM Adler, ‘Against Moral Rights’ (2009) 97 California Law Review 263 who argues that contemporary art has eliminated the art object as worthy of special veneration. This means that ‘moral rights law is incompatible with contemporary artistic practice because the law is based on romantic and outdated assumptions about art’ (294) and that ‘[t]he foundation of moral rights law depends on a boundary between art and other objects, but it is this precise boundary that contemporary artists have attempted to destroy’ (263). She questions ‘the most basic premise of moral rights law: that law should treat visual art as a uniquely prized category that merits exceptions from the normal rules of property and contract’ (265 – note she has a US perspective on moral rights where only visual art (and not other copyright works) have moral rights protection under the Visual Artists Rights Act 1990 (VARA)). 3 P Jaszi, ‘Toward a Theory of Copyright: The Metamorphoses of “Authorship”’ (1991) 42 Duke Law Journal 455, 497, citing J Merryman and A Elsen, Law, Ethics, and the Visual Arts, 2nd edn (The Hague, Kluwer Law International, 1987) 145. 4 LA Beyer, ‘Intentionalism, Art and the Suppression of Innovation: Film Colorization and the Philosophy of Moral Rights’ (1988) 82 Northwestern University Law Review 1011, 1027 (as discussed in Jaszi (ibid) 497). Sundara Rajan (n 1 above, 4) also comments: ‘[m]oral rights are based on the idea that an author is personally invested in his or her work. In view of this special relationship, an author’s interest in the work transcends the motive of financial gain. Moral rights offer legal recognition to an author’s special relationship with his or her own work.’ 5 See ‘Follow-Up to the Green Paper on Copyright and Related Rights in the Information Society’, COM(96), 568 final (20 November 1996) 27. 6 Hansmann and Santilli (above n 1) 108–9. 7 Trade mark rights operate in the public interest by protecting consumers against confusion, and in economic terms they help lower the search costs for consumers and encourage quality control by trade mark owners. See for example, WM Landes and RA Posner, ‘The Economics of Trademark Law’ (1988) 78 Trademark Reporter 276–77; WM Landes and RA Posner, ‘Trademark Law: An Economic Perspective’ (1987) 30 Journal of Law & Economics 265; and NJ Wilkof, ‘Trade Marks and the Public Domain: Generic Marks and Generic Domain Names’ (2000) 12 European Intellectual Property Review 571. Xiyin Tang has also argued that moral rights like trade mark law (especially in an era of factory-made or assistant produced works) can reduce search costs, ensure truthful identification and increase efficiency in the art market – indeed she would reframe the dialogue around moral rights seeing them justified not by arguments based on ‘personhood’ or ‘anti-commodification’ but as a way to protect an artist’s brand from subsequent dilution and free riding (X Tang, ‘The Artist as Brand: Toward a Trademark Conception of Moral Rights’ (2012) 122 Yale Law Journal 218, 249).

74 Moral Rights and Artist’s Resale Right (Droit de Suite) a community and if necessary this common good or public interest should (through moral rights) trump the private property rights an owner has in the work to prevent the work’s destruction or mutilation.8 The first country to protect moral rights was France, although it was not until the early part of the last century that the French courts began to speak about a droit moral or moral right as such.9 Because of their traditional stress on the economic aspects of copyright, the common law systems traditionally viewed moral rights as quite alien.10 It has been has pointed out that the separate ‘moral rights’ element of copyright has been progressively enhanced on the Continent over the past century or so.11 In particular, both France and Germany give at least equal recognition to moral rights and economic rights, although the basic assumptions in each system are different. French law renders moral rights perpetual as well as (in some sense) inalienable; German law gives both moral rights and economic rights the same duration.12 There are a significant number of French cases dealing with moral rights and granting strong rights to artists – perhaps the most famous being the case concerning the colorisation of the black and white film ‘The Asphalt Jungle – permitted in the US but outlawed in France – as the late director John Huston himself commented: ‘I filmed it in black and white, as a sculptor chooses to shape clay, to mould his work in bronze, to sculpt in marble.’13 Following the Paris text of the Berne Convention,14 moral rights are generally considered to include the right to be identified as author (right of paternity – sometimes also termed ‘right to attribution’15) and to object to certain types of derogatory acts in relation to one’s work (right of integrity): 1. Independently of the author’s economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory

8 See T Cheng-Davies, ‘A work of art is not just a barrel of pork: the relationship between private property rights, moral rights and the preservation of cultural heritage’ (2016) 3 Intellectual Property Quarterly 278–294. She also refers to Joseph Sax’s book Playing Darts with a Rembrandt: Public and Private Rights in Cultural Treasures (Ann Arbor, University of Michigan Press, 1999). 9 Ricketson (above n 2) 457–59. 10 Ibid, 459. That is not to say there was no equivalent protection. There was the possibility of common law actions in defamation and passing off, and the Fine Arts Copyright Act 1862 afforded a limited form of protection in respect of unauthorised changes and alterations of artistic works: Ricketson (above n 2) 459. 11 WR Cornish, D Llewelyn and T Aplin, Intellectual Property, 9th edn (London, Sweet & Maxwell, 2019) 12-068. 12 The German position is due to ‘the Hegelian perception of the work as the fulfilled expression of the author’s personality’: Cornish et al (ibid) 12-068. According to Ricketson, there are two major approaches to the nature of moral rights: the monist approach and the dualist approach. The monist approach prevails in Austrian and German law: the economic and moral rights are inextricably linked and interdependent and therefore should be of the same duration. The dualist approach, which is followed in France and similar legal systems, views such rights as separate and distinct. See Ricketson (above n 2) 458. See also Adeney (above n 1) ch 8 (for France) and ch 9 (for Germany). 13 Huston v Turner Entertainment, French Court of Cassation, 1991. I am grateful to MT Sundara Rajan (see above n 2) for the quotation. 14 Art 6 bis Berne Convention. 15 Eg, LD DuBoff and CO King, Art Law in a Nutshell, 3rd edn (St Paul, MN, West Group, 2000) 204 and 208–11, discussing the US law in this area.

Moral Rights 75 action in relation to, the said work, which would be prejudicial to his honour or reputation.16 2. The rights granted to the author in accordance with the preceding paragraph shall, after his death, be maintained, at least until the expiry of the economic rights, and shall be exercisable by the persons or institutions authorised by the legislation of the country where protection is claimed. However, those countries whose legislation, at the moment of their ratification of or accession to this Act, does not provide for the protection after the death of the author of all the rights set out in the preceding paragraph may provide that some of these rights may, after his death, cease to be maintained. 3. The means of redress for safeguarding the rights granted by this Article shall be governed by the legislation of the country where protection is claimed.17 In fact, authors’ rights countries tend to go further, and in addition to these two rights, moral rights in such countries may well include some or all of the following:18 • The right to decide upon first publication or other release (the so-called ‘right of disclosure’ in French law19), including the right to refuse to supply the original In an early French case, the artist Whistler was held entitled not to deliver a portrait with which he was dissatisfied to the commissioner, even after exhibiting it.20 In a later case, an artist was able to prevent the publication of his youthful works after having stored them away.21 • The right of the author to insist on completion of the original where that depends on the execution of others This is a rather extreme sanction, and the French case of Renault v Dubuffet,22 which concerned a sculpture that Renault had to complete once execution had begun, has been much criticised.23 • The right to correct or withdraw works of which the author no longer approves (the right of withdrawal or repentance) 16 As discussed below when considering UK law the Berne text leaves open a subjective or objective test here – Cornish et al (n 11 above) comment that ‘[t]ruly committed systems of moral rights may go further than the Berne Convention in extending protection beyond cases where there will be injury to damage or reputation. Notably in France the subjective reaction of the author to the alteration or use of the work is generally the governing consideration’ (12-081). So, in France, Samuel Beckett successfully objected to his play Waiting for Godot being played by women (RIDA 1993, No 155, 225; J.C.P. 1988 II 21062 (cited in Cornish et al (n 11) 12-081)). Also the phrase ‘or other derogatory action in relation to, the said work’ opens the door for a broad range of acts to be considered to be derogatory treatment (eg recontextualising or re-siting an artistic work) but this broad concept is not included in the UK moral rights legislation where the action is limited to ‘treatment’ which focuses on physical alteration of the work (see discussion below on UK law). 17 Art 6 bis Berne Convention. 18 See Cornish et al (above n 11) 12-069 and 12-082. 19 Art L 121-2 CPI [Intellectual Property Code]. 20 Eden v Whistler, DP 1900 I 497. According to Cornish et al (above n 11), the artist had to return his fee and undertake not to [further] exhibit the portrait himself (12-082). 21 Bouvier v Cassigneul, Cass Crim (13 Dec 1995), (1996) RIDA 306. 22 [1983] ECC 453. 23 Cornish et al (above n 11, at 12-082) cites the criticism of the leading authors Françon and Ginsburg (1985) 9 Col-VLA JLA 381: taking the right to its logical conclusion, it could in theory mean the commissioner would have to maintain the work once executed.

76 Moral Rights and Artist’s Resale Right (Droit de Suite) French law, for example, recognises this right, but it is subject to the author indemnifying the publisher against loss; and so it appears to be exercised rarely.24 However, it should be noted that this right seems available only to authors of published works, not to visual artists.25 • The right to object to the destruction or removal of the original To some extent, this overlaps with the right of integrity – as was the case with the famous refrigerator decorated on all its panels by Bernard Buffet; its owner was prevented from breaking it up in order to sell it.26 Nevertheless, even French law is unclear about whether the right extends to prevent destruction.27 In addition to Bernard Buffet, there have been other cases in which the French courts have objected, for example, to the destruction of a church sculpture considered blasphemous28 or to the dismantling of a work of art where the organisers of the exhibition considered the work unsuitable for its (again, religious) setting.29 This goes further than Article 6 bis of the Berne Convention, where the general view is that the right of integrity does not extend to the destruction of works.30 In India the destruction of a bronze mural sculpture by Amar Nath Sehgal (deemed a national treasure) was held to be an infringement of moral rights.31 Until 1 August 1989 when the Copyright, Designs and Patents Act (CDPA) 1988 came into force, moral rights as such were not expressly recognised by UK copyright law, although limited protection was afforded by the laws of defamation, passing off, contract and section 43 of the Copyright Act 1956 (false attribution of authorship)).32 The CDPA 24 Intellectual Property Code L 121-4; and Cornish et al (above n 11) 12-082. In French law the right is termed that of ‘withdrawal and repentance’: see A Françon, ‘Protection of Artists’ Moral Rights and the Internet’ in F Pollaud-Dulian (ed), The Internet and Authors’ Rights (London, Sweet & Maxwell, 1999). 25 See Cour de Paris, judgment of 19 April 1961, JCP 111N 12183 (1961), a French case denying right of withdrawal to Vlaminck. See also Hansmann and Santilli (above n 1) 139. Adeney (above n 1) 195 also notes that the right cannot be exercised in relation to a work of visual art, the embodiment of which has been sold. 26 Judgment of 6 July 1962 (l’affaire Bernard Buffet, Cour d’Appel, Paris, Recuil Dalloz) D 1962 570. 27 See Cornish et al (above n 11 at 12-082) and also Adeney (above n 1) 186, noting that ‘neither doctrine nor jurisprudence is entirely consistent’. 28 ‘Bezombes’ CA Paris (25 November 1980), (1981) 108 RIDA 162. 29 Hong v Saltpetriere Chapel Assn, CA Paris, 1 Ch (10 April 1995), (1995) 166 RIDA 316. 30 Ricketson (above n 2) 470. Stina Teilmann has argued that the right of integrity ought to include the right to prevent the destruction of an original work of art, even if in countries such as the UK it does not – an artwork ‘exists materially, and is an end in itself ’. Surely if copies can be protected against derogatory treatment, why shouldn’t the original be protected from the ultimate act against its integrity as a work of art? Teilmann cites Art 15 of the Swiss Federal Law on Copyright, which includes a right to ‘protection against destruction’: S Teilmann, ‘Framing the Law: The Right of Integrity in Britain’ (2005) 27(1) European Intellectual Property Review 19, 23. 31 Sehgal v Union of India [2005] FSR 829. In 1979 the mural was pulled down and consigned to a government store-room and it was damaged and pieces lost (including one bearing the name of the creator) – a report commissioned by the Court revealed massive damage. The Court held that s 57 of the Copyright Act 1957 should be interpreted widely as the destruction of a work of art was an extreme form of mutilation and by reducing the volume of the artist’s creative corpus it affected his reputation prejudicially (56). In addition the Court held that where a work of art had attained the status of a modern national treasure and of being part of the cultural heritage of a nation the right of integrity extended to the work in relation to the cultural heritage of the nation – this is an additional right to the author’s moral right of integrity (59) – the judgement cited. MT Sundara Rajan, ‘Moral Rights and the Protection of Cultural Heritage’, (2001) 10(1) International Journal of Cultural Property 79–94 (in the judgement at 41). The defendant had argued that destruction of a work meant the work no longer existed and could not be viewed by anyone and so could not give rise to prejudice to the author’s reputation (31). 32 A Speck at al, Laddie, Prescott, and Vitoria The Modern Law of Copyright, 5th edn (London, LexisNexis, 2018) [hereafter ‘Laddie, 5th edn’] 38.1.

Moral Rights 77 incorporates the rights of paternity and integrity into English law, and also added the right to object to false attribution as part of the moral rights provisions (chapter IV) and the right to privacy of certain photographs and films.33 However, in distinction to the droit d’ auteur systems, under UK law, authors can waive their moral rights; and this is standard practice in many publishing contracts.34 Also the right of paternity needs to be asserted in UK law before it is enforced, as noted below. It has also been noted that in the UK moral rights are subject to many exceptions.35 In addition to the UK a number of other common law jurisdictions have moral rights, some laws being very recent and some (eg the US) of very limited scope.36 Unlike copyright, moral rights cannot be assigned by an author, but as noted above, in the UK they may be waived by an instrument in writing signed by the person giving up the right. However, infringements of the moral right of paternity can arise only after the right has been ‘asserted’ by the author. This is a controversial requirement: in order to exercise their moral rights, authors should not only assert their rights in contracts with publishers/art dealers but also, to ensure that third parties are bound by the rights, include on all copies of their work an express statement asserting the right of paternity. There is a special provision as regards the public exhibition of artistic works: the name of the author on the original, the authorised copy or the frame of the work is usually sufficient to assert the right.37 All the moral rights, bar that of false attribution, continue to subsist for as long as copyright subsists in the work; the right in relation to false attribution subsists for 20 years after a person’s death.38 However, no moral rights apply if the author died before 1 August 1989 (the date of commencement of the CDPA 1988).39 The right of paternity means that the author of an artistic work has the right to 33 Chapter IV CDPA: breach of moral rights is actionable as a breach of statutory duty. See Laddie, 5th edn (n 32) (ibid) 38.6. 34 S 87 CDPA. 35 Makeen Makeen made this point forcibly in a presentation he gave in Paris at the Rodin Museum in October 2019 along with noting the need to assert the right of paternity – ‘Exercising the Right of Paternity in the UK and Egypt: why only a handful of cases’ (Conference on Moral Rights in the Serial Arts, Rodin Museum, Paris, 18 October 2019). Indeed much criticism has been levelled at moral rights in the UK – see, eg, J Brown-Pedersen, ‘The Inadequacy of UK Moral Rights Protection: A Comparative Study on the Waivability of Rights and Recontextualisation of Works in Copyright and Droit D’auteurs Systems” (2018) 3 LSE Law Review 116–128. See also Ginsburg (1990) (n 36) below.’ 36 Canada (1931), India (1957), UK (1988), US (1990), New Zealand (1994), Ireland (2000), and Australia (2004) – see MT Sundara Rajan, ‘Moral Rights and the Protection of the Visual Arts in the Common-Law Countries’, Presentation, Conference on Moral Rights in the Serial Arts, Rodin Museum, Paris, 18 October 2019. For a general discussion from a common law perspective which is also critical of the UK’s approach in the CDPA see JC Ginsburg, ‘Moral rights in a common law system’ (1990) 1(4) Entertainment Law Review 121–130. 37 So that, for example, the artist’s signature on a painting or his name on the original frame would amount to an assertion of the author’s right of paternity in connection with the public exhibition of that painting: s 78 CDPA. Indeed, even if subsequently the identification of the artist is removed or obscured, the moral rights remain asserted: s 78(4) (c). Laddie, 5th edn (n 32) 38.21 recommends that a purchaser of a work of art should require a warranty (coupled with an appropriate indemnity) that there was no such identification (if there is none apparent). 38 S 86 CDPA. 39 Sch I, para 23 CDPA. Also, the paternity and integrity rights do not apply to anything done before 1 August 1989, nor (in respect of ‘existing’ works – ie, works made before 1 August 1989) to anything done after that date by or with the licence of the copyright owner (Sch I para 23(3)(b) where the author was not the first owner), nor to anything which by virtue of an assignment or licence granted before 1 August 1989 could be done without infringing copyright (Sch I, para 23(3)(a)). Laddie, 5th edn (n 32) 38.7 sees this provision as enabling the assignee or licensee to fully exploit the work without any curtailment due to moral rights.

78 Moral Rights and Artist’s Resale Right (Droit de Suite) be identified whenever the work is, inter alia, published commercially, communicated to the public or exhibited in public.40 The right to object to derogatory treatment of a work arises where the treatment amounts to distortion or mutilation of the work or is otherwise prejudicial to the honour or reputation of the author or director; and in the case of an artistic work, the right is infringed by a person who, inter alia, exhibits in public a derogatory treatment of the work or communicates to the public a visual image of a derogatory treatment of the work.41 The right not to have a work falsely attributed to a person as author would, inter alia, be infringed if a person were to exhibit in public or to issue copies to the public of an artistic work on which there is a false attribution. It can also be infringed by dealing with an altered artistic work as if it were unaltered.42 Computer programs and computer-generated works and works created by employees in the course of their employment do not in general benefit from moral rights protection in the UK.43 It is possible that at some point in the future the European Commission may propose a Directive to harmonise moral rights protection across Europe.44 However at present moral rights are not harmonised at an EU level (except for some limited provisions in certain directives for crediting the author)45 – the view of the Commission in 2004 was there was no need to do this and this remains the position.46 Whilst this may be the 40 S 77 CDPA. This needs to be identification as the ‘author’ or ‘director’, not merely a thank-you to the person concerned: Sawkins v Hyperion Records Ltd [2005] 3 All ER 636, 651. 41 S 80 CDPA. 42 S 84(6) is similar to the corresponding provision in s 7 of the Fine Art Copyright Act 1862, under which there were several cases dealing with this area: Carlton Illustrators v Coleman [1911] KB 771; Preston v Raphael Tuck [1926] Ch 667; and Crocker v Papunya Tula Artists Pty Ltd (1983–85) 5 IPR 426. See Laddie, 5th edn (n 32) 38.49. 43 See ss 79, 81, and 82 CDPA. 44 The need to consider harmonisation in this area in the context of digitisation was recognised by the European Commission’s 1995 Green Paper on ‘Copyright and Neighbouring Rights in the Information Society’ (COM(95), 382 final, 16 July 1995). In their 1996 follow-up paper, the Commission was of the view that the time was not right for concrete harmonisation initiatives but proposed to further study the development of this area with a view to determining whether existing disparities in national legislation present significant obstacles to exploiting copyright, most notably as regards the integrity of matter protected by copyright: ‘Follow-Up to the Green Paper on Copyright and Related Rights in the Information Society’ (COM(96), 568 final, 20 November 1996). See further the report commissioned by the European Commission (Study contract n ETD/99/B5-3000/E°28) by A Strowel, M Salokannel and E Derclaye, ‘Moral Rights in the Context of the Exploitation of Works through Digital Technology’ (April 2000), which concluded there was no need for general harmonisation at EU level (225). 45 M Walter, ‘Moral Rights and Exhibition Making – Old Questions, New Answers?’ Presentation, Conference on Moral Rights in the Serial Arts, Rodin Museum, Paris, 18 October 2019. 46 ‘… there is no apparent need to harmonise moral rights protection in the Community …’. (European Commission Staff Working Paper on the review of the EC legal framework in the field of copyright and related rights, SEC (2004) 995, 19.7.2004). Nor were moral rights a key policy initiative in a more recent Communication on ‘A Single Market for Intellectual Property Rights’ (COM(2011) 287 final, 24 May 2011). The current European Commission digital single market policy webpage on simply copyright states ‘Moral rights include the right to claim authorship of the work and the right to object to any derogatory action in relation to the work. They are not harmonised at EU level.’ (https://ec.europa.eu/digital-single-market/en/ copyright). The latest major EU copyright directive (Directive (EU) 2019/790 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC (17 April 2019) at Recitals 23 and 37 refers to moral rights in the context of national rights – they are not otherwise referred to. Note also that the foundational InfoSoc Directive (Directive 2001/29) has the following recital (19): ‘The moral rights of rightholders should be exercised according to the legislation of the Member States and the provisions of the Berne Convention for the Protection of Literary and Artistic Works, of the WIPO Copyright Treaty and of the WIPO Performances and Phonograms Treaty. Such moral rights remain outside the scope of this Directive.’

Implications of Moral Rights and some UK Cases 79 position of the Commission moral rights are referred to in copyright decisions of the CJEU from time to time and the special relationship between the author and their work has been commented on as foundational to copyright protection.47

4.2. Implications of Moral Rights and some UK Cases Clearly, it is possible for the owner of a work of art to fall foul of the author’s moral rights. In particular, if reproductions of the work are made, it is sensible to identify the artist on such reproductions. Also, when acquiring a work of art, thought must be given as to whether the artist’s moral rights have been asserted. A buyer may wish to put appropriate warranties and indemnities in the sale contract (likewise, generally, for copyright).48 It may even be possible for restorers and those involved in conserving works to fall foul of moral rights.49 Moral rights also pose particular challenges for the Internet, as discussed below in chapter five. False attribution of authorship remains actionable in the UK (albeit it also overlaps with the right of integrity). But false attribution just requires the inaccurate naming of a person as author – no prejudice to honour or reputation of the author is required.50 So the public exhibition of an artistic work (or a copy of it) in or on which there is a false attribution would infringe the right as would certain other acts including in the course of a business dealing with a work which has been altered after the author parted with possession of it as being the unaltered work of the author.51 Finally, difficult questions arise in connection with what might be derogatory treatment. There are few reported cases dealing with moral rights in the UK. These in the main deal with what might be considered ‘derogatory treatment’ within section 80(2) of the CDPA and are discussed below. What does seem clear is that in the UK derogatory treatment requires some alteration of the work – simply exhibiting the work in a new context for example would not under UK law be a ‘treatment’ of the work whether or not the context might be considered derogatory and UK law in this regard falls well below the level of moral rights protection (based on Article 6bis of the Berne Convention) that applies in many other states.52 Breach of moral rights is actionable as a breach of statutory duty under UK law.53 47 For example, the right of attribution/paternity is referred to in Painer, C-145/10, EU:C:2011:798, para 135 and Funke Medien NRW, C-469/17, ECLI:EU:C:2019:623, para 60, and integrity (eg ensuring an author’s work is not associated with a discriminatory message – see Deckmyn, C-201/13, ECLI:EU:C:2014:2132, para 31). See also the Advocate General in Funke Medien NRW, C-469/17, ECLI:EU:C:2018:870, para 60: ‘[i]t is true that, as confirmed by recital 19 of Directive 2001/29, moral rights remain outside the scope of that directive, as indeed outside the scope of EU law generally. However, the origin of and justification for copyright, in the form of both moral and property rights, lies in the special relationship between the author and his work.’ 48 See also below ch 7. See also n 37 above. 49 Peter Karlen refers to Californian moral rights legislation as holding restorers and conservators liable for grossly negligent injury to a work: P Karlen, ‘Moral Rights and Collectors’ Art Law (January 2000). 50 See discussion in Cornish et al (above n 11) at 12.089. 51 S 84 CDPA. 52 See, eg, Brown-Pedersen (above n 35). 53 S 103 CDPA.

80 Moral Rights and Artist’s Resale Right (Droit de Suite)

4.2.1. Morrison Leahy Music and Another v Lightbond Limited and Others (1991)54 The defendants in Morrison Leahy had produced a sound recording that was a medley or ‘megamix’ of words and music from five compositions, of which the second plaintiff (the singer and composer George Michael) was author and the first plaintiff copyright owner. These were interspersed with fill-in music composed by others. The defendants claimed they were permitted to do this pursuant to a copyright clearance they had obtained from the Mechanical Copyright Protection Society, of which the first plaintiff was a member. The plaintiffs denied that any clearance applied to the defendants’ actions, and as well as suing for infringement of copyright, they claimed that the defendants’ actions infringed their moral rights under section 80(2) of the CDPA. Morritt J held that what the defendants had done clearly amounted to treatment within the meaning of section 80(2)(a) of the CDPA; it was also arguable that such treatment amounted to distortion or mutilation within section 80(2)(b). However, this was an interlocutory decision for an injunction pending full trial, so the matter as to whether there was in fact derogatory treatment was left by the judge as a question of fact at trial.

4.2.2. Tidy v The Trustees of the Natural History Museum and Another (1996)55 In Tidy – an application for summary judgment rather than a full trial – Bill Tidy, the well-known cartoonist, had drawn some cartoons of dinosaurs to be displayed at the Natural History Museum. In May 1993, a book was published that reproduced Tidy’s drawings in smaller dimensions (from 420 mm by 297 mm to 67 mm by 42 mm). Tidy made an application for summary judgment on the grounds that the reduced size amounted to a distortion (as opposed to a mutilation) of the drawings or was in any event prejudicial to his honour or reputation – ie, it was derogatory treatment under section 80 of the CDPA. The plaintiff contended that the reduction in size detracted from the visual impact of the cartoons; it would also lead people to believe he could not be bothered to re-draw the cartoons for the book, especially since he was given credit in the book for the drawings. In fact, the judge (Rattee J) was not prepared to grant summary judgment in Tidy’s favour in the absence of evidence as to whether the public considered the reproduction as affecting Tidy’s reputation. Nor was it clear beyond argument that the reduction in size was distortion of the original drawings. Counsel for Tidy referred to the Canadian Ontario High Court decision Snow v The Eaton Centre.56 In that case, legislative language comparable to the CDPA was 54 [1993] EMLR 144. 55 Ch D, Rattee J (29 March 1995), [1996] 3 EIPR D-81. 56 70 CPR (2d) 105: an injunction was granted to an artist to require the removal of ribbons from a sculpture of 60 geese known as ‘Flight Stop’. The sculpture was used by the defendants as part of a Christmas display. S 12(7) of the (Canadian) Copyright Act RSC 1970 provides that an author has the right to restrain any distortion or modification of his work prejudicial to his honour or reputation.

Implications of Moral Rights and some UK Cases 81 considered, and the judge in that case held that the words ‘prejudicial to his honour or reputation’ involved a ‘certain subjective element or judgement on the part of the author so long as it is reasonably arrived at’. Rattee J held in Tidy that even if he accepted the Canadian principle, he would still have to be satisfied that the view held by the artist was a reasonable one; this inevitably involved applying an objective test of reasonableness. So evidence from the public as to how the reproduction affected Tidy’s reputation in their minds was required.

4.2.3. Pasterfield v Denham and Another (1999)57 Pasterfield was an action for infringement of copyright and of moral rights, and passing off, brought by two designers. In 1988 they had been commissioned to design two leaflets and a brochure by Plymouth City Council, the second defendant, to be used to promote the Plymouth Dome, a tourist attraction. They had designed pictures of a satellite, a formation of German bombers and a detailed cut-away drawing of the interior of the Dome with accompanying text. The leaflets and brochure were used by the second defendant between 1989 and 1993. In 1994 the second defendant commissioned the first defendant, Mr Denham, to update one of the leaflets used to promote the Dome. This new leaflet still contained copies of the satellite and bomber formation, as well as a smaller version of the cut-away drawing, with a number of alterations, including the omission of a number of features around the edges of the original drawing and a variation to the colouring of the artwork. Also added alongside the cut-away drawing were the words ‘Designed and Produced by Denham Design 0752 671787’. Around one million copies of this leaflet were produced and distributed by the City Council in 1994 and 1995. The plaintiffs’ claim for copyright infringement failed, as the judge held that the commission to design the drawings passed equitable title to the City Council, and even if this were not the case, there was an implied licence to allow the City Council to use the drawings to promote the Dome. Also, the passing off claim failed, as substantial numbers of the public were unlikely to be confused as to the origins of the drawings in the new leaflet produced by Mr Denham. The plaintiffs’ infringement of moral rights claim also failed. The judgment contained a discussion of the law here, citing the same Canadian case that was cited in Tidy and also the earlier English case Morrison v Lightbond. Also cited was the French Supreme Court (Cour de Cassation) case of Huston v Turner Entertainment (1991),58 in which the Court had held that colourising a black-and-white John Huston film, Asphalt Jungle, was a breach of the droit moral. But Tidy was not cited. The judge in Pasterfield held that for an infringement of the moral right of integrity, the artist must establish that the treatment accorded to his work is either a distortion or a mutilation that prejudices his honour or reputation as an artist. It is not sufficient that the artist is himself aggrieved by what has occurred. Nor is distortion or mutilation

57 Plymouth 58 IIC

County Court, His Honour Judge Overend (9–10 March 1998), [1999] FSR 168. Vol 23, 702.

82 Moral Rights and Artist’s Resale Right (Droit de Suite) alone enough – it must be prejudicial to the artist’s honour or reputation.59 Considering the facts, the judge found that the variations in colour did not affect the honour or reputation of the plaintiff, Mr Pasterfield, as an artist: often there are colour variations when artwork is reproduced. In this case, they did not come anywhere near what the judge perceived to be the gross difference between a black-and-white film and a colourised version of the same film. Nor did any of the other differences, omissions and alterations amount to derogatory treatment. Indeed, the judge was critical of the plaintiffs’ expert, considering his evidence ‘seriously flawed’.

4.2.4. Confetti Records v Warner Music (2003)60 Confetti Records involved music copyright and sound recordings; the treatment at issue involved adding a rap line and additional parts of another track to an existing recording. In considering the wording of section 80 of the CDPA and Article 6 bis of the Berne Convention, the judge came to the conclusion that in Article 6 bis, the author can object to distortion, mutilation or modification of his work only if it is prejudicial to his honour or reputation. He did not believe that the framers of the 1988 Act meant to alter the scope of the author’s moral rights in this respect, so he held that the mere fact that a work has been distorted or mutilated gives rise to no claim, unless the distortion or mutilation prejudices the author’s honour or reputation.61 In this case, there was no evidence relating to prejudice to the author’s honour or reputation, so on the facts, applying what appeared to be an objective test, the judge did not find any derogatory treatment.62

4.2.5. Harrison v Harrison (2010)63 This was a literary copyright case involving copyright and passing off in relation to a second edition of a book which was held to infringe the copyright of the author of the first edition (claimant). The claimant also argued his moral rights of attribution/ paternity and integrity were infringed. The claimant succeeded in the claim relating to the moral right of attribution but failed in the claim that his right to object to derogatory treatment of his work was infringed. There was a ‘treatment’ in this case but it was not derogatory (the claimant’s complaints were considered ‘carping objections of a trivial kind which miss their target’ not even prejudicial let alone capable of affecting the claimant’s honour and reputation).64 What is interesting in this case is that the judge,

59 The judge quoted the second edition of Laddie (2nd edition of the work referred to above n 32) as authority for this interpretation of s 80(2) in the absence (at that time) of a UK decision after full trial on what is meant by ‘derogatory treatment’. 60 [2003] EWCH 1274 (Ch). 61 Ibid, para 150 (per Lewison J). 62 Ibid, paras 145–62. 63 [2010] EWPCC 3, [2010] ECDR 12 64 Para 85 (Fysh J).

Implications of Moral Rights and some UK Cases 83 citing the Indian case Sehgal v Union of India,65 accepted that ‘treatment’ of a work can include its destruction. He stated: ‘Treatment’ of a work is I think, a broad, general concept; de minimis acts apart, it implies a spectrum of possible acts carried out on a work, from the addition of say, a single word to a poem to the destruction of the entire work …. The limit to the generality of the word [treatment] is surely to be found later [in the statute]: in the possible prejudice to the honour or reputation of the author arising from the treatment.66

4.2.6. Emma Delves-Broughton v House of Harlot Limited (2012)67 Here a photograph was altered by removing the background, reversal of the image, and cropping so that quite a large photograph became small. The photograph was used on the defendant’s website. The judge held that there was derogatory treatment but no authorities were cited by the judge nor did he explore in any detail whether or not there was derogatory treatment – he just decided that there was.68

4.2.7. Conclusion: Derogatory Treatment in UK Law In the absence of a clear decision on the point in the High Court after full trial or indeed in the higher courts at all, there remains uncertainty as to what might amount to derogatory treatment – although it is clear there must be prejudice to the author’s honour or reputation and the complaint must be more than trivial.69 It has been commented that ‘the concept the Act appears to be aiming at is akin to libel but where the harmful act is not the speaking or publishing of untrue words but the derogatory treatment of the author’s or director’s work.’70 Applying the test in defamation law, the question becomes ‘Would right thinking members of the public think less of the author?’ Certainly, Tidy, Pasterfield and Confetti Records appear to stress an objective rather than subjective test. But the scope of derogatory treatment remains uncertain in UK law. For example, it has been argued that the destruction of a work of art is unlikely to infringe the right of integrity under the CDPA.71 Nor would the siting of a work of art in an unsuitable setting.72 If the interpretation of Article 6 bis of the Berne Convention is also considered, the stress is on derogatory action that would be prejudicial to the artist’s honour

65 [2005] FSR 39. 66 Para 60 [Fysh J]. 67 [2012] EWPCC 29. 68 Para 32. 69 Harrison v Harrison [2010] ECDR 12, para 85. 70 Laddie (2nd edition of the work referred to above n 32) 1016. 71 Ibid, on the basis that to interpret s 80 in this way would confuse the destruction of the physical embodiment of the work with the destruction of the work itself. 72 On the grounds that this would not be ‘treatment’: there is no addition to or deletion from the work, hence no treatment of it. See Laddie, 5th edn (n 32) 38.28. See also the comment about ‘recontexualisation’ – see Brown- Pedersen (above n 35).

84 Moral Rights and Artist’s Resale Right (Droit de Suite) or reputation. The adjective ‘derogatory’ appears to imply a subjective standard, but this is made subject to the more objective criterion of prejudice to honour or reputation.73 Indeed, it has been argued that ‘honour’ and ‘reputation’ are more objective concepts, being analogous to the personal interests protected by the law of defamation.74 Harrison v Harrison arguably opens the door for a broad definition of treatment including the destruction of a work but this was a literary copyright case and is a first instance judgement (of the Patents County Court) so of less than persuasive authority.

4.3. Performers’ Moral Rights and Performance Works It should be noted that in the UK, since 1 February 2006, performers have had moral rights of attribution (ie, to be identified as the performer) and integrity (ie, the right to object to derogatory treatment), based on the World Intellectual Property Organization (WIPO) and the Performances and Phonograms Treaty (WPPT) 1996.75 However, in the UK these rights are of limited application to the visual arts as such as they do not apply to fixations of audiovisual performances (eg films).76 Attempts to introduce such rights at international level have been problematic, due at least in part to opposition from the US film industry.77 However, progress in this area is still being made – in June 2012 the WIPO Beijing Treaty on Audiovisual Performances was adopted – among other things it recognises performers’ moral rights (ie the right to be identified, the right to object to distortions of the performance). It entered into force on 28 April 2020.78 Despite the uncertainty surrounding performers’ moral rights and their application to the visual arts, to avoid the possibility of future disputes, those creating performance works or other works involving performers would be well advised to ensure: that all performers consent in writing to the performances and recordings of their performances where relevant; that moral rights waivers are obtained where appropriate; that all performers are properly identified (eg, in any credits or programmes); and that any commercial terms are documented and agreed.

73 Ricketson (above n 2) 469. 74 Ibid, 471. Laddie, 5th edn (n 32) 38.29 considers it likely that a UK court would, where possible, strive to interpret ‘treatment’ in such a way as to give effect to the requirements of the Berne Convention. 75 The Performances (Moral Rights, etc) Regulations 2006 (SI 2006/18). 76 See CDPA, Part II Rights in Performances, ch 3. They are primarily limited to (live) public performances, broadcasts of live performances and sound recordings – for a further discussion see G Davies, N Caddick and G Harbottle, Copinger and Skone James on Copyright 17th edn (London, Sweet & Maxwell, 2016) 11–37 (attribution) and 11–62 (derogatory treatment). 77 Adeney (above n 1) 157–59. 78 http://beijingtreaty.com/about/what-is-the-beijing-treaty/ – this website notes: ‘The WIPO Beijing Treaty on Audiovisual Performances (BTAP) is a multilateral treaty acknowledging for the first time the intellectual property rights of performers with regard to their audiovisual performances. Adopted in 2012, it is a landmark achievement and one that officially ends a discrimination dating from the early 60’s and resulting, until recently, in the sole protection of audio performances in most countries around the world.’ For its current status and those states that have entered into the Treaty see www.wipo.int/beijing_treaty/en/.

Moral Rights in the United States 85

4.4. Moral Rights in the United States79 Until 1990, the US (at least at federal level) had no express enactment dealing with moral rights,80 although the US courts had at times offered protection for interests analogous to moral rights through the extension of common law rights or trade mark laws.81 Following the Visual Artists Rights Act (VARA) 1990, US copyright law was amended to give authors of certain specified art works the rights of attribution (ie, to claim authorship and to prevent false attribution) and integrity (which extends both to intentional distortion, mutilation or modification of a work that would be prejudicial to the artist’s honour or reputation and to any intentional or grossly negligent destruction of a work of recognised stature).82 An explanation of the reasons for the statute was given in its legislative progress in the House Reports: An artist’s professional and personal identity is embodied in each work created by that artist. Each work is part of his or her reputation. Each work is a form of personal expression (oftentimes painstakingly and earnestly recorded). It is a rebuke to the dignity of the visual artist that our copyright law allows distortion, modification and even outright permanent destruction of such efforts.83

VARA does not, however, meet the minimal protections sought by the Berne Convention.84 In particular, it applies only to works of ‘visual art’, ie: 1.

a painting, drawing, print, or sculpture, existing in a single copy, or a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author, or, in the case of a sculpture, in multiple cast, carved, or fabricated sculptures of 200 or fewer that are consecutively numbered by the author and bear the signature or other identifying mark of the author; or 2. A still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, or in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author.85 The requirement that to prevent the destruction of a work of visual art the work must be of ‘recognised stature’ has proved controversial and difficult to apply in practice; it goes against a guiding principle of Anglo-American copyright law noted above in

79 The definitive commentary on moral rights in the US is the April 2019 Report of the Register of Copyrights, ‘Authors, attribution, and integrity: examining moral rights in the United States’ (United States Copyright Office, Washington DC, 2019) – www.copyright.gov/policy/moralrights/full-report.pdf. 80 See generally Adeney (above n 1) ch 15. 81 Hansmann and Santilli (above n 1) 97. 82 See s 106A Copyright Act 1976. 83 HR Rep No 101-514 (1990), 15. 84 See DuBoff and King (above n 15) 204. 85 S 101 Copyright Act 1976. For example, reproductions of qualifying works and works destined for commercial purposes (eg, posters, works of applied art) are not covered: see C Joyce, W Patry, M Leaffer and P Jaszi, Copyright Law, 5th edn (New York, LEXIS, 2000) 637.

86 Moral Rights and Artist’s Resale Right (Droit de Suite) chapter three that artistic merit is not in general a prerequisite for copyright protection.86 Having said that ‘recognised stature’ has been held to apply to works of graffiti artists – 45 such artworks were destroyed at the 5Pointz mural point in New York City in 2014 and damages of $6.7 million in total were awarded to 21 graffiti and street artists in 2018.87 Certain US states have also enacted their own legislation to protect the moral right of integrity: California and New York are particularly noted in this regard.88 For example, the California Art Preservation Act 1979 prohibits intentional ‘defacement, mutilation, alteration or destruction’ of ‘fine art’. ‘Fine art’ is defined as including original paintings, sculpture, drawings, etc of ‘recognised quality’.89 As of 1997, it was noted that at least 11 US states recognised moral rights in greater or lesser degree, notwithstanding VARA.90 In its 2019 Report on moral rights the US Copyright Office speaks of the complex US moral rights landscape – ‘a patchwork of federal and state laws, as well as industry customs and other forms of private ordering.’91 The Copyright Office concluded in its Report that many diverse aspects of the current moral rights patchwork – including copyright law’s derivative work right, state moral rights statutes, and contract law – are generally working well and should not be changed. The Copyright Office also concluded that there is no need for the creation of a blanket moral rights statute at this time. However, it noted that there were aspects of the US moral rights patchwork that could be improved to the benefit of individual authors and the copyright system as a whole. 86 See, for example, Martin v City of Indianopolis, US Court of Appeals, 7th Cir 192 F.3d 608 (1999); and Carter v Helmsley-Spear, Inc, 861 F Supp 303 (SDNY 1994) and 71 F.3d 77 (2nd Cir 1995). The view taken by these cases is that ‘recognised stature’ (not defined by VARA) has two elements: (1) merit or intrinsic worth; and (2) a public acknowledgement of that stature by society or the art community. 87 Cohen, et al v G&M Realty L.P. United States District Court, E.D. New York. 2018 WL 851374, discussed in E Bonnadio, ‘Street art, graffiti and copyright’ in E Bonnadio and N Lucchi (eds), Non-Conventional Copyright (Cheltenham, Edward Elgar, 2018) 95–98. The case was appealed and in February 2020 the US Court of Appeals for the Second Circuit upheld the District Court’s ruling Castillo v G&M Realty L.P., Nos 18-498-cv (L), 18-538-cv (CON), 2020 U.S. App. LEXIS 5228 (2d Cir. Feb. 20, 2020) – see https://itsartlaw.org/2020/03/02/ case-review-castillo-et-al-v-gm-realty-l-p/ and https://ial.uk.com/5pointz-appeal-marks-quantum-shift-inu-s-copyright-law/ (accessed 19 August 2020)). The case was stayed pending petition to the US Supreme Court (https://ial.uk.com/5pointz-stayed-supreme-court/ (accessed 19 August 2020) but in October 2020 the Supreme Court declined to hear the appeal so the ruling stands (see www.nytimes.com/2020/10/06/nyregion/ graffiti-artists-5pointz.html). 88 See DuBoff and King (above n 15). Another State with a law in this area is Massachusetts, which enacted the Massachusetts Art Preservation Act in 1984. 89 This statute has been used to protect murals: it was reported in the Daily Telegraph (4 August 2000) that the artist Garth Benton sued Gordon Getty, son of the art collector J Paul Getty, because one of his murals in Getty’s home was painted over. The case was reportedly settled out of court: www.dematerialized.com/ noartbulletinpage.html (accessed 4 June 2011). It was also invoked in a dispute involving the removal of a David Hockney mural in a hotel swimming pool in 1988: website of the Institute of Art and Law (Leicester), 24 August 2000, www.inst-of-art-and-law.co.uk. 90 Hansmann and Santilli (above n 1) 97. According to Peter Karlen (ibid), VARA, a Federal statute, ‘generally preempts much of the various State moral rights statutes, particularly in relation to all those works of art and rights recognised under the Federal statutes. But State statutes still have a role to play in relation to works and rights not covered under [VARA]. Only an individual analysis of each situation will determine whether [VARA] controls or whether state law applies.’ 91 See n 79 above – Executive Summary. By private ordering is meant through contract (i.e. agreement) or other ways of managing moral rights (eg custom and practice) not mandated by statute. A good example in the US context is how film credits are dealt with.

Artist’s Resale Right (Droit de Suite) 87

4.5. Artist’s Resale Right (Droit de Suite) 4.5.1. Background, Rationale and History The laws of a number of European and other countries have for decades recognised that artists have a right to receive a percentage of the sale price every time one of their works is resold. This is the so-called droit de suite, or artist’s resale right.92 It can be debated what sort of intellectual property right it is: it is an economic right in that artists and their estates gain remuneration from its exercise, but it is also similar to a moral right, as it is inalienable (save by will/testamentary disposition or by inheritance laws), so an artist cannot waive, sell or transfer the right. It is also a right embedded in the physical embodiment of a work: the right applies to the resale of an object – the work of fine art in question – so its exercise also potentially involves a consideration of contract and sale of goods law to determine when and where the ‘resale’ in question takes place. So it can perhaps best be categorised as a sui generis right rooted in copyright law, with aspects of both economic rights and moral rights (as it is a personality right, given its inalienability).93 Indeed, the right is divorced from the ownership of copyright in the fine art object: an artist may have assigned their copyright in the work to someone else, but she would still be entitled to the resale right. Moreover, the right applies only to a subset of ‘artistic works’ – those fine art objects (typically original works of ‘graphic or plastic art’) that are themselves protected by copyright, although such a definition can be considered anachronistic. For example, the paintings of Gilbert and George qualify for the right; their video works do not. An artist who works solely in electronic media likewise has no rights, as she will not have created a physical embodiment of the original work that can be bought and sold.94 As we will see, the ambiguity in the legal basis of the right gives rise to a number of issues, not least how the right should be applied when there is an international aspect – either to its exercise or how it should be treated on the death of the artist.

92 This section is a summary of this area; for a more detailed treatment of the right, the reader is referred to S Stokes, Artist’s Resale Right (Droit de Suite): UK Law and Practice 3rd edn (Builth Wells, Institute of Art and Law, 2017) (the first edition (2006) also published by the Institute of Art and Law is also on occasion referred to in this book as well) and to the works cited in that work, in particular, L de Pierredon-Fawcett, The Droit de Suite in Literary and Artistic Property: A Comparative Law Study (New York, Center for Law and the Arts, Columbia University, 1992), which remains the best international analysis of this area, if now inevitably rather out of date. Practical guidance on ARR, including its operation in the UK after Brexit is provided in ch 7 of this work. 93 The German Federal High Court in the Joseph Beuys case called it a participation right sui generis, rooted in copyright law (BGH NJW 1994, 2889); but see also D Booton, ‘A Critical Analysis of the European Commission’s Proposal for a Directive Harmonising Droit de Suite’ (1998) 2 Intellectual Property Quarterly 165–91. Joerg Wuenschel goes as far as to say, ‘European droit de suite has no precise legal character and follows only that copyright system in which it is introduced’: J Wuenschel, ‘Artists’ Resale Right: Dalí’s Royalties’ (2010) 5(8) Journal of Intellectual Property Law & Practice 555–56. 94 The argument against video or electronic works benefiting from the right is practical – they are not physically embodied as fine art works (granted that a video installation might be if it were classed as a sculpture); moreover, the artist in question is able to fully exploit the work by licensing its exploitation, much in the same way as authors and composers do for their literary and musical works, so the right is unnecessary.

88 Moral Rights and Artist’s Resale Right (Droit de Suite) Looking at the reasons for the right, artists, the argument goes, may have had to sell their works cheaply when young and unknown and should be able to share in the profits made by art dealers once they achieve fame. In particular, the spectre of an artist’s wife and children begging in the gutter following the untimely death of the artist was advanced to justify the introduction of droit de suite in France: the artists Millet and Dégas, among others, were invoked in this regard.95 The right, it is argued, puts artists on a par with writers and composers, who may continue to earn royalties on the use of their works throughout their term of copyright. Indeed, it can be argued that the main source of income for an artist absent droit de suite is the first sale, unlike other copyright works where the reproduction right is of greater importance. So droit de suite can help to make artists’ exploitation of their work more effective and to redress the imbalance with other classes of work.96 An American lawyer, Donald Millinger, has put the case for droit de suite as follows: [T]he fine artist shares none of the gain, if his work is resold for a large profit. The fine artist’s economic position thus compares unfavourably with the position of authors or composers who, as their work increases in popularity and value, receive a continuous and increasing source of income from royalty rights. [The American artist’s profit, if any, comes on the initial sale. Because the artist’s bargaining power is minimal and his sense of business acumen often is less than his buyer’s, the work is frequently sold at a low price.]97

Others see droit de suite as an acknowledgement by society of merits of artistic creativity.98 It can also be seen as an incentive to artistic creativity.99 Finally, it can be argued that matters of fairness are paramount here: it is simply right and just that artists should share in the exploitation of their works by whatever means. Nevertheless, droit de suite has its critics. It has been argued that it makes little economic sense in practice.100 It is also difficult to collect and many countries which may have ARR on their statute books appear to have problems collecting it in practice so the right is ineffective.101 It is also argued that, absent harmonisation with, for example, New York law, the UK art market will simply shift from London to countries with no

95 Ricketson (above n 2) 410–11. For example, the wife of the Impressionist Jean-Francois Millet was left in penury, while his paintings sold for millions: ‘Artists Campaign for EU to Drop Royalties Plan’ Sunday Telegraph (26 November 2000). 96 Ricketson (above n 2) 412. 97 Millinger wrote this in the context of a plea for greater copyright/moral rights protection generally for fine artists in the US. His article pre-dates VARA: DM Millinger, ‘Copyright and the Fine Arts’ (1980) 48 George Washington Law Review 354, 376. 98 For example, the European Parliament. 99 When the right was introduced in the UK this was one of the points made by the government – the Regulations implementing the right ‘ensure a just reward for living British artists’ creativity … [and] will benefit struggling artists’: Lord Sainsbury, UK Patent Office Press Release (14 February 2006). 100 It is fair to say that economists have analysed the right in some detail in a number of countries. A number of studies highlight that it interferes with the art market (by encouraging works to be sold in non-droit de suite states); depresses the price of works and so arguably acts as a disincentive to create new works and for dealers to deal in works that attract the right; and also benefits a limited number of artists (see Stokes (2017) (above n 92) 6–8). Having said that, some studies are more positive: see, eg, J Farchy and K Graddy, The Economic Implications of the Artist’s Resale Right (report prepared for WIPO SCCR/35/7 (Standing Committee on Copyright and Related Rights, 35th session Geneva 13–17 November 2017)). 101 J Prowda, Visual Arts and the Law (Lund Humphries, Farnham 2013) 131.

Artist’s Resale Right (Droit de Suite) 89 or weak versions of droit de suite, such as New York or Switzerland.102 It has also been stated that once the United Kingdom has droit de suite, there will be an anomaly in that an artist will get no financial benefit when the copyright in a work, as opposed to the work itself, is resold. Yet the value of the copyright in such works is often rising steeply, given the increased opportunities for exploitation based on the Internet and character merchandising.103 It can also be argued that the right is embodied in bourgeois notions of what a work of art is; poses numerous practical difficulties and costs in terms of its administration and collection, particularly in an international context; and potentially has a distorting effect on the international trade in art. Moreover, in the twenty-first century, artists are well able (through collecting societies such as the UK Design and Artists’ Copyright Society (DACS)) to exploit and license their copyrights in ways undreamed of a hundred or so years ago when the right first emerged. Its application after an artist’s death can also be queried: artists these days seem able to achieve fame and fortune early and need support at the very early stages of their career, not a type of social security to their heirs after death. In any event, the right appears to benefit disproportionately the estates of successful dead artists whose works achieve the highest prices at auction. Certainly, statistics from Germany and France, where the right is well established, suggest that only a limited number of artists benefit from the right; the majority receive only modest sums.104 Finally, some artists also oppose it because they believe it damages the art trade in general and hence the market for their work. They also argue it acts as a restraint on what happens to their works on their death.105 The right of resale was first introduced in France in 1920, and for this reason it is often referred to as droit de suite (literally, ‘right of following’). Droit de suite is dealt with in Article 14 ter of the Berne Convention: 1. The author, or after his death the persons or institutions authorized by national legislation, shall, with respect to original works of art and original manuscripts of writers and composers, enjoy the inalienable right to an interest in any sale of the work subsequent to the first transfer by the author of the work. 2. The protection provided by the preceding paragraph may be claimed in a country of the Union only if legislation in the country to which the author belongs so permits, and to the extent permitted by the country where this protection is claimed. 3. The procedure for collection and the amounts shall be matters for determination by national legislation. 102 The British Art Market Federation frequently makes this point. 103 See JN Adams, ‘The United Kingdom’s Droit de Suite’ in IA Stamatoudi and PLC Torremans (eds), Copyright in the New Digital Environment, vol 8 of the Perspectives on Intellectual Property series (London, Sweet & Maxwell, 2000) 117. 104 See ‘Fifteen-Year Reprieve for the UK’ The Art Newspaper (April 2000) 1: ‘In France, between 1993 and 1995, of the 2,000 artists and their heirs who benefited from droit de suite, a mere 2–3% (which includes, for example, the heir of Picasso) received 43% of the sum collected. The remainder got an average of FFr3,000 (£300; $470), from which had to be deducted the 20% levy of the collecting agency.’ See also the discussion in Stokes (2017) (n 92) 7. 105 Ibid.

90 Moral Rights and Artist’s Resale Right (Droit de Suite) As can be seen, droit de suite can be claimed only in those countries whose legislation provides for it and only on the basis of reciprocity. Austria, the Netherlands, Ireland and the United Kingdom were the only Member States of the European Union that did not recognise this right prior to 2006, although in practice it was not enforced by a number of the others. In contrast, in the United States, only California has a right akin to droit de suite.106

4.5.2. EU Harmonisation On 25 April 1996, the European Commission presented the European Council with a proposal for a European Parliament and Council Directive to harmonise national laws relating to artist’s resale right.107 The Commission’s argument for harmonisation was that the differing provisions for artist’s resale right between the various member states give rise to anomalies that distort sales in the Internal Market. For example, if an English artist were to sell his work in, say, Germany, he would have the right to claim five per cent of the sale price as a royalty.108 On the other hand, if a German artist sold his work in London, no such royalty is payable to him.109 Also, the legislation of the 11 Member States that did at that time recognise artist’s resale right had marked differences as regards the works covered, the people entitled to receive payment, the rate applied and the basis of assessment. The aim of the 1996 proposal was to harmonise the legislation of all Members States. The legislative progress of the proposal was complex, if not tortuous and inevitably the subject of political compromise. But in 2001, a Directive on this area was finally adopted: Directive 2001/84/ EC on the Resale Right for the Benefit of the Author of an Original Work of Art.110 How far it is a true harmonisation measure can be debated, as it contains an unusually large number of options, opt-outs and derogations. The Directive is primarily a harmonisation measure (see in particular Recital 15).111 At the time of its adoption, the United Kingdom, Ireland, Austria and the Netherlands 106 DuBoff and King (above n 15) 218–21. However, the Californian resale royalty law effectively no longer applies – the Ninth Circuit Court of Appeals in Close v Sotheby’s, Inc., 894 F.3d 1061 (9th Cir. 2018) held that for sales after 1 January 1978, the California Resale Royalties Act is expressly preempted by the federal Copyright Act of 1976 (17 U.S.C. § 301(a)). The California Resale Royalties Act is no longer valid for sales beyond that date – see http://arts.ca.gov/resources/rra.php. 107 Proposal for a European Parliament and Council Directive on the resale right for the benefit of the author of an original work of art (presented by the Commission), COM(96) 97 final. 108 This derives from the principle of non-discrimination: a Member State cannot treat nationals of other Member States less favourably than its own nationals. See joined cases C-92/92 and C-326/92 Phil Collins and Others [1993] ECR I 5145. 109 In a German case, three works by the late contemporary artist Joseph Beuys were sold in London. Even though buyer and seller were both German, Joseph Beuys’ heirs did not receive any royalties: BGH, judgment of 16 June 1991, I ZR 24/92, GRUR 1994, 798. The European Commission’s calculations show that out of a sale price of £462,000 (DM1,418,340), art dealers saved about DM71,000. See case note [1995] 4 EIPR D-94. 110 For a discussion of the legislative background, see Stokes (2017) (above n 92) ch 2. The legal basis of the Directive as a harmonising measure has been criticised: J Wuenschel, ‘Article 95 EC Revisited: Is the Artist’s Resale Right Directive a Community Act beyond EC Competence?’ (2009) 4(2) Journal of Intellectual Property Law & Practice 130–36. 111 For a discussion and commentary on the Directive, see H Vanhees in T Dreier and B Hugenholz (eds), Concise European Copyright Law (Alphen aan den Rijn, Kluwer Law International, 2006) 405–21; and Stokes

Artist’s Resale Right (Droit de Suite) 91 did not have the right at all. Also, Italy and Luxembourg did not enforce the right. The Recitals of the Directive specifically refer to the need to harmonise the following aspects of the right: • The duration (Now 70 years post mortem auctoris, the same as the copyright term) (Recital 17) • The acts of resale to which the right applies (All acts of resale except those effected directly between persons acting in their private capacity without the participation of an art market professional. Also excepted are acts of resale where not for profit museums open to the public acquire works from persons acting in their private capacity.) (Recital 18) • The categories of works of art subject to the resale right (Recital 21) • The royalty rates (Recital 23) The main provisions of the Directive are summarised below.

Artist’s Right to a Royalty: Article 1(1) and 1(2) An artist has the right to receive a royalty based on the price obtained for any resale of an original work of art then in copyright, subsequent to the first transfer by the artist. The right applies to all acts of resale ‘involving as sellers, buyers or intermediaries art market professionals such as salesrooms, art galleries and, in general, any dealers in works of art’ (Article 1(2)). The right is inalienable and cannot be waived even in advance.

Excluded Sales: Recital 18 and Article 1(3) The right does not apply to resale between individuals acting in their private capacity, without the participation of an art market professional; nor to resale by persons acting in their private capacity to museums that are not-for-profit and are open to the public. Member States are able also to exclude sales where the seller has acquired the work directly from the artist less than three years before that resale and where the resale price does not exceed €10,000.

Classes of Eligible Work: Recitals 1–3; Article 1(1) and Article 2 The Recitals to the Directive stress that droit de suite is an integral part of copyright and applies to original graphic and plastic works of art, and the subject matter of the right is the physical work – namely, the medium in which the copyright work is incorporated. The right is to ensure that artists share in the economic success of their (2017) (above n 92). For an analysis of its implementation in a number of EU states, see K Lubina and H Schneider, ‘Taking Stock of the Implementation of the European Directive 2001/84/EC on Droit de Suite’ in B Demarsin et al (eds), Art & Law (Brugge, die Keure, 2008) 292–316; Stokes (2017) (above n 92) ch 6; and S Stokes, ‘Implementing the Artist’s Resale Right (Droit de Suite) Directive into English Law’ [2002] Entertainment Law Review 153.

92 Moral Rights and Artist’s Resale Right (Droit de Suite) original works of art. It is to redress the balance between the economic situation of authors of graphic and plastic works of art and that of other creators who benefit from successive exploitations of their works. (For example, a novel is typically published in return for a royalty and further sums may be due, eg, if the work is serialised or made into a film.) According to Article 2(1), an ‘original work of art’ means: works of graphic or plastic art such as pictures, collages, paintings, drawings, engravings, prints, lithographs, sculptures, tapestries, ceramics, glassware and photographs, provided they are made by the artist himself or are copies considered to be original works of art.

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

Liability to Pay: Article 1(4) Member States are able to decide whether royalty is payable by the seller or by the art market professional involved in the sale or whether liability is shared between these persons.

Royalty Calculation: Articles 3–5 Member States can decide the threshold or minimum sale price above which the right must apply, although this cannot exceed €3,000. The total amount of royalty payable is in any event limited to €12,500. The royalties are based on bands: 4% (or 5% if Member State chooses) for the portion of the sale price up to €50,000; 3% for the portion of the sale price from €50,000.01 to 200,000; 1% for the portion of the sale price from €200,000.01 to 350,000; 0.5% for the portion of the sale price from exceeding €350,000 to 500,000; 0.25% for the portion of the sale price exceeding €500,000. All sale prices are net of tax.

Persons Entitled to Receive Royalties/Collective Management: Article 6 An artist is to be paid royalty, and after his death, it is to be paid to those entitled under him. Note that the details of how the right is to be dealt with on death are left to the Member States under their own succession laws (Recital 27 and Article 6(1)).112

112 This will inevitably lead to interesting issues of conflict of laws when an artist is a national of one state that (as is likely to be the case) has different succession laws to another state where the right is claimed, and the law applying to testamentary dispositions under a will under the law of that state conflicts with those in another state (eg, France, which may limit the right to heirs and not allow freedom of testamentary disposition by the artist). Indeed, this issue arose early on in the life of the Directive, and the CJEU has already had to get involved with the issue; but in the end, the Court left the matter to Member States, as Art 6(1) clearly requires. See Fundación Gala-Salvador Dalí and Visual Entidad de Gestión de Artistas Plásticos (VEGAP) v Société des auteurs dans les arts graphiques et plastiques (ADAGP) and Others, Case C-518/08, Judgment of the Court (Third Chamber) of 15 April 2010; and Wuenschel (2010) (above n 93). For a discussion of art and testamentary disposition, particularly in the context of moral rights, see C Declerck, ‘Art as the Subject of the Will’ in Demarsin et al (eds) (ibid – above n 111) 454–65.

Artist’s Resale Right (Droit de Suite) 93 Member States may also allow or require artists’ and other collecting societies (eg, DACS and ACS in the UK) to administer the right. This must be done in a transparent and efficient manner. Member States must also ensure that amounts intended for authors who are nationals of other Member States are collected and distributed (Article 6(2) and Recital 28).

Reciprocity: Article 7 An artist who is not a European national is entitled to the right only if his or her home state permits European Union nationals also to benefit from the resale right. The European Commission is obliged in the Directive (Article 7(2)) to publish an indicative list of third countries that fulfil the condition for reciprocity.113 The European Union was also to press for Article 14 ter of the Berne Convention (which provides for the resale right) to be made compulsory (Recital 7).

Term of Protection of Resale Right/Implementation: Articles 8 and 12 The right lasts for the duration of the copyright term – ie, until 70 years from the death of the artist.114 It had to be implemented by 1 January 2006. As far as the United Kingdom is concerned (as well as for other Member States that did not have the right as of 13 October 2001), the right did not need to come into force until 1 January 2010, with a possible further extension to 1 January 2012, in respect of those entitled to royalty following the artist’s death.

Right to Information: Article 9 Artists and any collecting society will have a right to information from the relevant art market professional to enable them to collect royalty, for up to three years following resale.

Final Provisions: Chapter III The European Commission has to regularly review the operation of the Directive and may propose revisions to enhance the effectiveness of the Directive. The Commission’s first report was late – this was submitted in December 2011.115

Conclusion At a mere five pages, this Directive is one of the shorter copyright Directives; and its shortness – arguably the result of political compromise – leaves certain areas open, either for different Member State implementations or for the courts to rule on in due course. 113 No such list has been published – see Stokes (2017) (n 92 above) 73. 114 Directive 93/98/EC, Art 1. 115 Report on the Implementation and Effect of the Resale Right Directive (2001/84/EC) (COM(2011) 0878 final).

94 Moral Rights and Artist’s Resale Right (Droit de Suite) Areas for debate under the Directive include the scope of its application (eg, to prints/ limited edition works, works of applied art (including jewellery and furniture as these are not expressly listed in the Directive) and new media works, as opposed to what is generally understood as ‘fine art’) and how cross-border sales should be dealt with (eg, a sale made between parties in different Member States or for export outside the European Economic Area), as the Directive is silent on these issues.116

4.5.3. UK Implementation of the Resale Right Directive117 The United Kingdom implemented artist’s resale right (ARR) through the Artist’s Resale Right Regulations 2006,118 which came into force on 14 February 2006, shortly after the 1 January 2006 deadline set by Article 12 of the Directive. In the main, the Regulations follow the Directive,119 but in light of the options available to the United Kingdom under the Directive, the key features of the Regulations are that: 1.

The sale price threshold at which ARR applies is €1,000 (Regulation 12(3)), and the initial royalty rate is set at 4% (Regulation 3(3) and Schedule 1). 2. The right does not apply to art works bought by the seller from the artist within three years of their sale and sold for no more than €10,000 (Regulation 12(4)). 3. The right has to be collected through a collecting society, and if the artist does not choose one, ‘the collecting society which manages copyright on behalf of artists’ (which in 2006 was DACS) is mandated to act (Regulation 14) (and if there is more than one such collecting society the ARR holder may choose which of them is mandated). 4. The right does not apply to the sales of the work of deceased artists until 1 January 2012 (Regulation 17).120 5. The persons liable to pay the right are the following, who are jointly and severally liable: a) the seller; and b) ‘the relevant person’ – ie, a person who is acting in the course of a business of dealing in works of art and who is: a. the agent of the seller; or b. where there is no such agent, the agent of the buyer; or c. where there are no such agents, the buyer (Regulation 13). 116 For detailed consideration of this area, see the analysis by M Weller, ‘International Aspects’ in chapter six of the first edition (2006) of Stokes (2017) (above n 92); and P Valentin, ‘Droit de Suite’ [2006] European Intellectual Property Review 268–75. 117 For a discussion of the UK implementation, see C Lewis, ‘Implementing the Artist’s Resale Right Directive’ (2007) 2(5) Journal of Intellectual Property Law & Practice 298–304; Stokes (2017) (above n 92) ch 4; and J Cave, ‘An Overview of the European Artist’s Resale Right Directive 2001/84/EC and its Implementation in the UK via the Artist’s Resale Right Regulations 2005’ (2006) 1(4) Journal of Intellectual Property Law & Practice 242–46. 118 SI 2006/346. These have subsequently been amended – see ch 7 below. 119 The English courts have tended to look to the Directive anyway in applying the law (subject to any options the UK has, as described in the Regulations). See Stokes (2017) (above n 92) ch 4; and the trenchant comments of Jacob LJ in, eg, British Horseracing Board v William Hill [2005] EWCA Civ 863, para 8. It remains to be seen how the courts will approach this following Brexit (see ch 6). 120 Reg 17, as amended by the Artist’s Resale Right (Amendment) Regulations 2009/2792.

Artist’s Resale Right (Droit de Suite) 95 6.

As noted above, it is for Member States to decide how ARR is to be dealt with on the artist’s death. The UK Regulations provide that ARR is transmissible as personal or moveable property by testamentary disposition or in accordance with the rules of intestate succession, but only to a natural person (ie, an individual, not a corporation or similar entity) or to a ‘qualifying body’.121 So there are restrictions on how ARR can be dealt with on death. Where the artist in question died before 14 February 2006 and at the time of her or his death was a ‘qualifying individual’,122 then certain transitional provisions apply to assist in determining who can exercise the right following the artist’s death (Regulation 16). Note that ARR is payable only on a resale subsequent to the first transfer of ownership by the author (Regulation 3(1)), so determining if the first transfer of ownership by the artist has occurred prior to the sale in question is crucial. Sales by the artist of their works whilst they are alive do not therefore attract ARR; nor does a bequest by the artist in her or his will (or under intestate succession), and nor does the disposal of the work by the artist’s personal representatives as part of the administration of the artist’s estate or by an official receiver or trustee in bankruptcy for the purposes of realising the artist’s estate (Regulation 3(5)). However, when a person who has inherited a work from the artist comes to sell it, then ARR is potentially chargeable on that sale, as this will be a resale subsequent to the first transfer of ownership by the artist.

Practical Aspects of ARR in the United Kingdom Chapter seven below contains some practical guidance on the application of ARR in the United Kingdom, with primarily art dealers and auctioneers in mind. It also discusses the impact of Brexit on the right. As artists can collect the right in the United Kingdom only through collecting societies, artists are referred to the practical guidance issued by the UK collecting societies in this area.

Impact of ARR in the United Kingdom ARR took effect in the United Kingdom in 2006. DACS is the largest collecting society in this area (the other UK collecting society is ACS123), and as of September 2010, DACS had reported that it had paid in total since 2006 over £10.5 million in ARR payments to over 1,800 visual artists. The median payment was £360. The extension of ARR to the estates of dead artists in 2012 has increased the amount collected – in its 2018 Annual Review DACS stated that it had collected £76 million in total ARR royalties since 2006 and that in 2018 1,900 artists received over £10 million in ARR royalties from DACS.124 In its 2018 – 2019 financial year ACS collected £1.912 million in ARR royalties and distributed £1.909 million.125 121 A ‘qualifying body’ is a body that is (a) a charity within the meaning of s 96(1) of the Charities Act 1993 or s 35 of the Charities Act (Northern Ireland) 1964; (b) a Scottish charity; or (c) a foreign charity. 122 This is a natural person who is an EEA national or a national of a country listed in Sched 2 of the Regulations as originally enacted. 123 https://artistscollectingsociety.org/. 124 www.dacs.org.uk/about-us/corporate-resources/annual-reports. 125 ACS – Transparency Report 2018–2019.

96 Moral Rights and Artist’s Resale Right (Droit de Suite) The right appears to be functioning reasonably well in the UK in that it appears to be collected efficiently although it remains controversial in the UK art market.126 Others especially DACS see it as ‘[a] critical cornerstone of Britain’s cultural sustainability.’127 It has also been noted in a recent economic review of ARR globally ‘[o]verall, artists are overwhelmingly in favor of the ARR. Most believe it is a moral issue; artists should share in the profitability of their work, as do other creators.’128 The UK Government has stated its intention that ARR should continue post Brexit.129

4.5.4. International Developments The Directive commits the European Union to promote the international harmonisation of artist’s resale right/droit de suite via the Berne Convention (Recital 7), with a view to making Article 14 ter of the Convention compulsory. Since 2014 CISAC (the International Confederation of Societies of Authors and Composers) has also been conducting an international campaign for ARR to be extended internationally and the World Intellectual Property Organisation (which administers the Berne Convention) is also involved in facilitating an examination of the extension of the right.130 So far, two other major world art markets outside of London (Switzerland and New York) show no sign of having the right despite efforts in those countries to promote it.131 Australia has, however, implemented the right.132 Also it appears China (in 2018 the third largest global art market behind the UK (Art Basel/UBS Art Market Survey 2019)) will also introduce it.133 126 See, eg, M Wilson, Art Law and the Business of Art (Cheltenham, Edward Elgar, 2019) 34. See also S Stokes, 10 years of artist’s resale right (ARR) in the UK 2006-2016: a fair share for artists or a levy on the art market? (2016) 27(4) Entertainment Law Review 125–127. Issues remain in the art market around administrative costs of the right and ongoing concerns it makes the UK art market less competitive than those states without ARR – see, eg, C McAndrew, The EU Directive on ARR and the British Art Market (British Art Market Federation, 2014 – https://tbamf.org.uk/wp-content/uploads/2014/09/ARR-SectorReport-UK-2014.pdf) and C Silvester, Art Attack The Spectator 5 March 2016 – https://life.spectator.co.uk/ articles/why-britains-world-class-galleries-and-auction-houses-could-benefit-from-brexit/. 127 Gilane Tawadros, Chief Executive DACS on the tenth anniversary of ARR in the UK. See Stokes (2017) (n 92) v and 38. 128 J Farchy and K Graddy, The Economic Implications of the Artist’s Resale Right (report prepared for WIPO SCCR/35/7 (Standing Committee on Copyright and Related Rights, 35th session Geneva 13–17 November 2017)) 33. 129 Political Declaration setting out the framework for the future relationship between the European Union and the United Kingdom (19 October 2019) para 43. 130 See C Jewell, The artist’s resale right: a fair deal for visual artists, WIPO Magazine, June 2017. 131 Stokes (2017) (n 92) 7.2.6 and 7.2.7. In the US, see, eg, www.copyright.gov/docs/resaleroyalty/ (there was an inquiry and report by the US Copyright Office in 2012 and 2013 as well as attempts to enact legislation) and in Switzerland see https://ial.uk.com/switzerland-fourth-attempt-to-introduce-the-artist-resale-right/. 132 Resale Royalty Right for Visual Artists Act 2009 (No 125, 2009). The right commenced operation on 9 June 2010. See M Cahill Pettengill, ‘Australia Joins droit de suite Scheme: Latest Sign-Up Reignites Controversy as UK Anticipates End of “70 Years” Exemption’ (June 2010) 214 The Art Newspaper; and ‘Australian Dealers and Auctioneers Launch Fight against Resale Right’ Antiques Trade Gazette (12 February 2011). See also Stokes (2017) (n 92) 7.2.1. 133 But not in Hong Kong, according to sources of the author in China – information on law reform in China is not always easy to obtain. Provisions relating to ARR were included in the Copyright Law (Draft Revision for Review) publicised on 6 June 2014. Detailed protection measures were to be provided separately by the State Council (see article on IP rights in art in China by Angeli Xi, Jingtian & Gongcheng published on lexology.com on 2 May 2019).

Artist’s Resale Right (Droit de Suite) 97

Suggested Further Reading E Adeney, The Moral Rights of Authors and Performers: An International and Comparative Analysis (Oxford, Oxford University Press, 2006) G Davies and K Garnett, Moral Rights 2nd edn (London, Sweet & Maxwell, 2016) S Stokes, Artist’s Resale Right (Droit de Suite): UK Law and Practice 3rd edn (Builth Wells, Institute of Art and Law, 2017) MT Sundara Rajan, Moral Rights: Principles, Practice and New Technology (New York, Oxford University Press, 2011)

5 Art, Technology and the Internet: Copyright, Related Rights and Digitisation THE MODERN LAW of copyright is frequently considered to represent a balance between conflicting interests: an author’s economic/monopoly rights and the need in a liberal society for access to and the right to use creative material in the public interest.1 Digital technology poses challenges to this balance as well as throwing up issues of its own, not least in relation to artistic works generated using a computer, including through artificial intelligence (AI). This chapter explores some of the issues of special relevance to art.2

5.1. Copyright in Digital and Digitised Works 5.1.1. How does Copyright Protect Digital Works? There is no doubt that copyright can protect digital art works – by this is meant on-screen computer graphics and displays, as well as still images. So for example, a computer graphic user interface (GUI) is potentially protected as a copyright work and can be protected, according to the European Court of Justice, if it is ‘its author’s own intellectual creation’.3 In the United Kingdom, computer graphics have also been protected as artistic works. For example, a UK court has found GUIs, as well as computer icons, to be potentially protected by copyright: GUI screens are artistic works. They are recorded as such only in the complex code that displays them, but I think that this is strictly analogous to more simple digital representations 1 See H Bosher, Law, Technology and Cognition (London, Routledge, 2020) 14. 2 For further discussion of the impact of digitisation on copyright law, see IA Stamatoudi and PLC Torremans (eds), Copyright in the New Digital Environment, Vol 8 in the Perspectives on Intellectual Property series (London, Sweet & Maxwell, 2000). For discussion of art and digitisation, see S Stokes, ‘Art, Digitisation and Copyright: Some Current Issues’ (1998) Art, Antiquity and Law 361, upon which part of this chapter is based. 3 Case C-393/09 Bezpec nostní softwarová asociace – Svaz softwarové ochrany v Ministerstvo kultury (BSA) EU:C:2010:816, para 51. This copyright is distinct from the copyright protecting the computer program itself under the Software Directive (Directive 91/250): para 42. The Court noted that a national court (when determining whether a work is an author’s ‘intellectual creation’) must take account, among other things, of the specific arrangement or configuration of all components that form part of the graphic–user interface (GUI) in order to meet the creation of originality: ‘In that regard, that criterion cannot be met by components of the graphic user interface which are differentiated only by their technical function’ (para 48). See also below ch 6,

Copyright in Digital and Digitised Works 99 of graphic works. The code constructs the screen from basic elements, and is so arranged to give a consistent appearance to the individual elements. I think, nonetheless, that to arrange a screen certainly affords the opportunity for the exercise of sufficient skill and labour for the result to amount to an artistic work. I consider that the GUI screens satisfy this requirement. There is force in the suggestion that they present a uniform appearance in layout of the elements, and so contribute to a uniformity of interface. On the whole this is sufficient skill and labour to entitle the screens sued on to artistic copyright.4

Films and video content are discussed separately in this book (eg, in chapter six), but they are clearly protected – as films, not through artistic copyright under section 4(2) of the Copyright, Designs and Patents Act (CDPA) 1988 (as they contain moving images). As Lord Justice Jacob has commented when he denied protection for a sequence of moving images as an artistic work in the context of a video game, ‘Graphic work’ is defined as including all the types of thing specified in s 4(2) [CDPA] which all have this in common, namely that they are static, non-moving. A series of drawings is a series of graphic works, not a single graphic work in itself. No one would say that the copyright in a single drawing of Felix the Cat is infringed by a drawing of Donald Duck. A series of cartoon frames showing Felix running over a cliff edge into space, looking down and only then falling would not be infringed by a similar set of frames depicting Donald doing the same thing. That is in effect what is alleged here. This reasoning is supported by the fact that Parliament has specifically created copyright in moving images by way of copyright in films.5

5.1.2. Digitised Works Is it also the case that a separate copyright can subsist in a digitised work, distinct from the copyright in the original work, just as there can be a separate copyright in a photograph of a painting, distinct from the copyright in the painting itself?6 It is submitted that if the digitised image is taken using a digital camera, then the skill and labour used by the photographer (on the basis it is the author’s own intellectual creation) would appear to qualify the digital image as an ‘original’7 photograph for copyright purposes, s 6.6. Under UK law, the assumption is that a GUI, if protected, would be an artistic work. See also Navitaire v Easyjet Airline Co and Anor [2004] EWHC 1725 (Ch). 4 Navitaire (ibid) paras 97–99. Software copyright is outside the scope of this text. Readers are referred, eg, to S Stokes, Digital Copyright: Law and Practice, 5th edn (Oxford, Hart Publishing, 2019) ch 6. Some interfaces will not be protected as copyright works because they are simply ideas underlying the interfaces of software see, eg, Navitaire (ibid n 3) paras 97–99; the BSA case (as noted above n 3) – ‘where the expression of [GUI] components 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’ (para 49); and Art 1(2) Software Directive. In Nova Productions Ltd v Mazooma Games Ltd [2007] EWCA Civ 219 it was assumed that the individual images (frames) displayed to the user of a video game were artistic works protected by copyright: ‘It was common ground that the individual frames stored in the memory of a computer were ‘graphic works’ within the meaning of the Act’ (para 12) (per Jacob LJ)), but there was no separate copyright in the sequence of frames displayed. 5 Nova Productions (ibid) paras 16 and 17. 6 Graves Case (1869) LR 4 QB 715, 723. See discussion of photographs as artistic works protected by copyright above in ch 3 and below in ch 6. 7 As discussed above in ch 3, the term ‘original’ does not mean new or novel; it refers to the fact that a work must originate from its author. Originality as traditionally required in UK copyright law requires an element of independent skill, labour or judgement to produce the copy. Now the test is the author’s own intellectual creation as developed in EU copyright law by the CJEU (from Infopaq [2009] EUECJ C-5/08 onwards – see ch 6 below).

100 Art, Technology and the Internet: Copyright, Related Rights and Digitisation and therefore it ought to qualify for copyright protection: there is clearly no difference in using an ordinary camera except the technology of reproduction.8 However, if the digitised image is made simply by scanning a photograph using a digital scanner, it is hard to see how the image can itself benefit from copyright protection: no originality at all is expended in creating the scanned image; it is analogous to a Xerox copy.9 However, if the scanned image were then to be digitally enhanced or manipulated, this may well qualify the digitised image for separate copyright protection. An issue then will be whether the enhancement was carried out by a person using, for example, a mouse button and relevant software. In this case, provided that person used sufficient originality, the copyright in the enhanced image should vest in that person – ie, we are talking here about a computer-aided work rather than a computer-generated work. Alternatively, the digital image may have been created automatically without manual intervention (by a software program for example) and is therefore a computergenerated work.

5.2. Copyright, Artificial Intelligence (AI) and Computer-Generated Works Interesting questions arise in the context of computer-generated art works – such works have been around for a long time (since the 1970s if not earlier)10 but the issues here have come to the fore more recently with advances in artificial intelligence (AI) giving rise to some much publicised AI-generated art works – The Next Rembrandt and Portrait of Edmond Belamy, for example.11 The analysis which follows is under UK copyright law but issues at an international level are also touched upon. It is important first to distinguish between ‘computer-generated’ and ‘computeraided’ works under UK law which unlike many other copyright systems contains specific provisions in this regard.12 Computer-aided works do not receive special treatment

8 To recap: s 4(2) CDPA defines a ‘photograph’ as ‘a recording of light or other radiation on any medium on which an image is produced or from which an image may by any means be produced, and which is not part of a film’. 9 See The Reject Shop v Manners [1995] FSR 870. See also the discussion in chapter 6 and in particular 6.1. 10 For example the art-creating program AARON that dates back to 1973, written by the artist Harold Cohen – see MA Boden, Artificial Intelligence A Very Short Introduction (Oxford, Oxford University Press 2018) 63 and www.wired.com/2001/05/aaron-art-from-the-machine/ (accessed 8 February 2020). Robert Denicola provides an interesting survey of the ways in which machines have generated artistic works starting with AARON through to more recent examples in R Denicola, ‘Ex Machina: Copyright Protection for Computer-Generated Works’ (2016) 69 Rutgers University Law Review 251, 262–264. 11 See below (5.2.1). 12 Australia, for example, unlike the UK, does not protect computer-generated works where there is no human ‘author’ of the work in question – see Copyright Act 1968 and Acohs Pty Ltd v Ucorp Pty Ltd [2012] FCAFC 16. The view is that worldwide in general (under the Berne Convention) a human author is required for copyright protection (so a machine-generated work is highly problematic if there is no human author) (see J Ginsburg, ‘People not machines: authorship and what it means in the Berne Convention’ (2018) 49(2) International Review of Intellectual Property and Competition Law 131–135) – the UK (along with South Africa, Hong King, India, Ireland and New Zealand) is an anomaly in this regard by ‘inventing’ a human author where a machine creates a copyright work – as noted below in such circumstances the author is ‘the person by whom the arrangements necessary for the creation of the work are undertaken’ (s 9(3) CDPA). See also M Iglesias, S Shamuilia and A Anderberg, ‘Intellectual Property and Artificial Intelligence A literature review’

Copyright, Artificial Intelligence (AI) and Computer-Generated Works 101 under the CDPA. This is the case when a work is largely generated by a human author, although a computer is used incidentally in order to facilitate the task (eg, a book written using a word processing program running on a computer, which functions as a labour-saving tool). The AI scholar Margaret Boden comments that what distinguishes computer-generated art (CG art) from art created using a computer as a ‘mere tool’ (a new paintbrush) helping the artist do what they might have done anyway is that CG art could not have been done ‘or perhaps even imagined’ without the computer/ machine behind it.13 Section 178 of the CDPA defines a computer-generated work as one generated by a computer in circumstances such that there is no human author of it. Under the CDPA provided it is original14 and satisfies the other relevant criteria for copyright protection discussed earlier, a computer-generated work can benefit from copyright protection. A fundamental question is who the author of the work for copyright purposes is – this relates both to originality (and any need for a ‘human’ creator) and ownership. Section 9(3) of the CDPA provides that in the case of a computer-generated work, the author shall be taken to be ‘the person by whom the arrangements necessary for the creation of the work are undertaken’. It is a point of debate as to what precisely is meant by these ambiguous words.15 What is clear is that the approach in the UK to defining the author of a computer-generated work by reference to how the work is made conflicts with the approach in many jurisdictions where for any copyright work to be protected a human author must have created it which appears to rule out protecting computer-generated works by copyright.16 Having said that as we shall see later such a work must still be original – so in light of European case law on originality a human author is still required under section 9(3) CDPA – they return by the back door.17 (2019) European Commission, Joint Research Centre EUR 30017 EN, 13. But this still begs the question of whether such a work is original which is discussed later in this section – the European test for originality as ‘the author’s own intellectual creation’ envisages a human author (see, eg, Painer (C-145/10) EU:C:2011:798) and as discussed later in this section 5.2; see also A Guadamuz, ‘Do androids dream of electric copyright? Comparative analysis of originality in artificial intelligence generated works’ (2017) 2 Intellectual Property Quarterly 169–186. 13 Boden (2018) (n 10) 63. 14 Not necessarily a straightforward question – see n 7 above and section 5.2.1. 15 The intention appears to be ‘[t]hat [the law] expands the concept of authorship beyond persons who actually create copyrightable expression to persons who originate the process of creating copyrightable expression’ [emphasis added] (Denicola (2016) (n 10) 282). It has also been noted that in the absence of many cases on this area in the UK then cases that have investigated the authorship of films might be instructive – under the CDPA a film’s producer and principal director are together deemed the author and a producer is defined as ‘in relation to a sound recording or a film, means the person by whom the arrangements necessary for the making of the sound recording or film are undertaken ….’ (s 178 CDPA) (see R Abbott in T Aplin (ed), Research Handbook on Intellectual Property and Digital Technologies (Cheltenham, Edward Elgar, 2020) ch 15). Film case law indicates a fact intensive enquiry – Abbott refers to, eg Beggars Banquet [1993] EMLR 349. Abbott considers it may not be clear in all cases whether the person who makes the necessary arrangements is the computer’s owner, user or programmer. Interestingly the 1988 law seemed intended to protect automated creations such as satellite photographs (very much at the sweat of the brow end of copyright originality more suited to protect the investment of effort in a machine taking photographs automatically than the European author’s own intellectual creation standard) (see A Lauber-Ronsberg and Sven Hetmank, ‘The Concept of authorship and inventorship under pressure: Does artificial intelligence shift paradigms?’ (2019) 14(7) Journal of Intellectual Property Law & Practice 574). 16 Denicola (2016) (n 10). 17 In reviewing the literature on this area Toby Bond and Sarah Blair see three possible approaches to originality: first look at the creative efforts of the persons making the arrangements under s 9(3), second

102 Art, Technology and the Internet: Copyright, Related Rights and Digitisation It is certainly not clear how conflicting claims between several programmers, data providers and systems operators can be resolved and these issues will become more difficult still where AI-generated works are concerned, as discussed in 5.2.1 below. In a decision under the predecessor to the 1988 Act, Express Newspapers plc v Liverpool Daily Post & Echo plc,18 the court ruled that the author of grids of letters produced with the aid of a computer for use in prize draws was the programmer who wrote the relevant software. Contrary arguments were rejected by Whitford J: The computer was no more than a tool. It is as unrealistic [to suggest that the programmer was not the author] as it would be to suggest that, if you write your work with a pen, it is the pen which is the author of the work rather than the person who drives the pen.

In Express Newspapers the nexus between one person and the finished work was close, as the programmer was also the person who ran the program and checked the results. Likewise in a later case where the programmer who both wrote the program concerned and who also devised the visual appearance of the artistic works (composite frames creating an impression of movement in a coin operated computer game based on theme of pool) and the rules and logic underpinning the creation of the works concerned was held to be the author for the purposes of section 9(3) CDPA.19 If the nexus is less close, disputes are likely to arise where a number of competing individuals claim to have ‘made arrangements necessary for the creation of the work’. And what if the programmer were a machine where it is difficult to find a human author at all? Here we move beyond the type of basic computer programs and computer-generated works that were in existence in the 1980s when the CDPA in its current form was put together and into the realm of works created using artificial intelligence (AI). As for moral rights the view is that these are difficult to justify for AI – in UK law they do not apply to computer-generated works in any event.20

5.2.1. Artificial Intelligence (AI) and Art Overview of the Issues Artificial intelligence means different things to different people. Some see it as meaning ‘artificial general intelligence’ – where a machine can perform any intellectual task

the legislature intended no originality requirement for such works and third that the originality should be assessed objectively – would the creation of the work by a human have satisfied the originality requirement? (T Bond and S Blair, ‘Artificial Intelligence & copyright: Section 9(3) or authorship without an author’ (2019) 14(6) Journal of Intellectual Property Law & Practice 423). 18 [1985] 1 WLR 1089. 19 Nova Productions Ltd v Mazooma Games Ltd & Ors Rev 1 [2006] EWHC 24 (Ch) 98–106. This is the only case to date on s 9(3) CDPA. Interestingly the judge noted that although the player of the game had an effect on the appearance on screen of the relevant works ‘[t]he player is not, however, an author of any of the artistic works created in the successive frame images. His input is not artistic in nature and he has contributed no skill or labour of an artistic kind. Nor has he undertaken any of the arrangements necessary for the creation of the frame images. All he has done is to play the game’ (106). 20 Lauber-Ronsberg and Hetmank (2019) (above n 15) 576. See also ss 79(2) and 81(2) CDPA which disapply moral rights in the UK from among other things computer programs and computer-generated works.

Copyright, Artificial Intelligence (AI) and Computer-Generated Works 103 a human can do – the AI of the movies. Others (and many in law and business) use the term to describe any machine or technology which does something which if done by a human would be said to require intelligence even if the technology behind it is in reality simply a means of enabling computers to ‘learn’ from large amounts of data (data sets) (ie machine learning) – from speech recognition, driverless cars to analysing all of Rembrandt’s extant art works to create ‘The Next Rembrandt.’21 As noted earlier there are several ways in which a computer (a machine) can be used to create a work of art:22 a) As a ‘tool’ (or ‘slave’) – for example where David Hockney uses an iPad or iPhone to create drawings23 – here the copyright clearly vests in the artist under UK law – there is no doubt there is a work by a human author and that the work is original both in the traditional UK copyright sense (‘sweat of the brow’) and in the European sense of the author’s own intellectual creation; b) As a ‘collaborator’ – the artist uses the machine to create the work by training the machine learning system, and choosing the algorithm and inputs used to train the machine as well as the artist actually selecting the output which is the final art work. The Next Rembrandt and Portrait of Edmond Belamy are in this category. For example the Portrait of Edmond Belamy (which sold at Christie’s New York in October 2018 for US$432,000) was created by a Paris-based art collective called Obvious.24 The work was produced using an algorithm the collective had selected to use and train using a data set of 15,000 portraits painted between the fourteenth and twentieth centuries (again presumably chosen by the collective). To generate the work, the algorithm compared its own work to those in the data set until it could not tell them apart (this was through using a ‘generative adversarial network’ (GAN)25) – again 21 Ethem Alpaydin defines artificial intelligence as ‘[p]rogramming computers to do things, which, if done by humans would be said to require intelligence’ (E Alpaydin, Machine Learning: the new AI (Cambridge, MA, The MIT Press, 2016) 171). Margaret Boden says ‘(AI) seeks to make computers do the sorts of things minds can do … [i]intelligence isn’t a single dimension, but a richly structured space of diverse information-processing capacities’ (Boden (2018) (above n 10) 1). ‘The Next Rembrandt’ is discussed at www.nextrembrandt.com/ (accessed 8 February 2020). Machine learning has been defined as the area of computer science ‘that focuses on developing and evaluating algorithms that can extract useful patterns from data sets: a machine learning algorithm takes a data set as input and returns a model that encodes the patterns the algorithm extracted from the data’ (taken from JD Kelleher and B Tierney, Data Science (Cambridge, MA, The MIT Press, 2018) 243). Popular models include decision trees and neural networks. A more technologically neutral definition of ‘machine learning’ is that of the head of Carnegie Mellon University’s Machine Learning Department as ‘a scientific field addressing the question “How can we program systems to automatically learn and to improve with experience?”’ (Denicola (2016) (above n 10) 254). 22 Timothy Pinto helpfully refers to three different levels of human and machine artistic input in AI-generated art – machine as slave, machine as collaborator and machine as artist which are used here (T Pinto, ‘Robo ART! The Copyright Implications of Artificial Intelligence Generated Art’ (2019) 30(6) Entertainment Law Review 175–176). 23 Hockney’s art dealer (Annely Juda Fine Art) has commented: ‘Hockney, who is now in his eighties, quickly became accustomed to drawing on the “Brushes” app on the iPhone and proceeded to draw with an iPad, which he says: “takes it to a new level – simply because it’s eight times the size of an iPhone, as big as a reasonably sized sketchbook.” Hockney believes the software to be so advanced that it keeps up with the artist’s hand and allows sufficient sensitivity in colour and painterly line’ (www.annelyjudafineart.co.uk/exhibitions/ iphone-and-ipad-drawings-2009-2012-david-hockney (accessed 8 February 2020)). 24 www.bbc.co.uk/news/technology-45980863 (accessed 8 February 2020). 25 Generative adversarial (neural) networks (GANs) have been popular as a way of creating artistic and other ‘creative’ works: ‘[t]he magic of GANs lies in the rivalry between the two neural nets. It mimics the

104 Art, Technology and the Internet: Copyright, Related Rights and Digitisation the collective would presumably have chosen which image(s) they liked best following this process, named them and put them up for sale. A member of Obvious commented that one of the reasons behind the work was to ‘make everybody understand AI can be creative’.26 So whilst this is true in a sense, the collective Obvious were also clearly collaborators in creating the work and would appear to fall within the UK law construct as ‘author’ as ‘the person by whom the arrangements necessary for the creation of the work are undertaken’ (section 9(3) CDPA). Whether such a work is ‘original’ (in a copyright sense) and therefore qualifies for copyright protection as an original artistic work can be debated in light of the divergence between the traditional sweat of the brow concept of originality in UK law (some independent skill, labour and judgement was used) or the European test of the author’s own intellectual creation is applied (which if applied here arguably rules out protection).27 c) As an ‘artist’ – the work is produced by the machine without any human creativity or authorship – perhaps the machine has taught itself to create and select art works – which at present is in the realm of science fiction.28 Here it is difficult to conceive of any human author (so therefore there is no copyright protection) – unless the machine were at some point in the future to be vested with ‘personality’ – to be treated as a person.29

Practical Issues Given the above analysis there are clearly challenges in applying copyright protection to computer-generated works yet in the UK at least section 9(3) CDPA opens the door more widely for protection than in many other countries. Yet even elsewhere one might expect arguments that such works are protected as the focus will be on the facts and on the degree of involvement of the human author – so is heavily fact dependent. An example is a stained glass-window of Cologne Cathedral created by Gerhard Richter.

back-and-forth between a picture forger and an art detective who repeatedly try to outwit one another. Both networks are trained on the same data set. The first one, known as the generator, is charged with producing artificial outputs, such as photos or handwriting, that are as realistic as possible. The second, known as the discriminator, compares these with genuine images from the original data set and tries to determine which are real and which are fake. On the basis of those results, the generator adjusts its parameters for creating new images. And so it goes, until the discriminator can no longer tell what’s genuine and what’s bogus’ (see www. technologyreview.com/s/610253/the-ganfather-the-man-whos-given-machines-the-gift-of-imagination/ (accessed 8 February 2020)). 26 The author discusses the work and its creation in more detail in S Stokes, ‘Artificial Intelligence (AI) and Art: An IP Conundrum?’ (13 November 2018) at www.blakemorgan.co.uk/artificial-intelligence-ai-and-artan-ip-conundrum/ (accessed 8 February 2020). 27 This is the view of Timothy Pinto (Pinto (2019) (above n 22) 175–177). See also Guadamuz (2017) (above n 12) 186. 28 Pinto (2019) (above n 22) 175. 29 This isn’t that far-fetched – in 2017 the European Parliament called for ‘creating a specific legal status for robots in the long run, so that at least the most sophisticated autonomous robots could be established as having the status of electronic persons responsible for making good any damage they may cause, and possibly applying electronic personality to cases where robots make autonomous decisions or otherwise interact with third parties independently’ (European Parliament resolution of 16 February 2017 with recommendations to the Commission on Civil Law Rules on Robotics, para 59f).

Copyright, Artificial Intelligence (AI) and Computer-Generated Works 105 He decided first that the window should be composed of small squares and that there should be certain repetitive patterns. He then used software (a randomiser) to choose colours from a defined colour range and to decide on the arrangement of the colours in the window. Under UK law it is submitted that there is no doubt the work should be protected by copyright vesting in the artist as author and it has also been argued that German law should protect it as well.30 The artist has exercised free and creative choices in designing the work, using a computer as a tool, and he would have decided what final designs to use – all this, it can be argued, points to sufficient original human involvement under both UK and German law. It should also not be forgotten that potentially there will be other copyright and intellectual property issues involved in the creation of an AI-generated work. The algorithms used (as code) are potentially protected by copyright as computer programs and the law of confidence (if they are secret) can also protect them (whether in code or not) so the right to use them may need to be obtained. Patents might also apply if a technical process is involved. Also the data sets used to train the AI may also be protected by intellectual property rights – database right for example, and if images are used which are protected by copyright (say of Picasso) then if in the process of using the images there will be copying this will potentially infringe copyright if an exception cannot be found or a licence obtained.31

Law Reform The global uncertainty about how computer-generated works are protected by copyright is causing governments around the world to consider law reform here. For example, the World Intellectual Property Organisation (WIPO) is actively looking into the area32 and it is anticipated (at the time of writing) that the UK Intellectual Property Office (IPO) will consult on this area in 2020. Many of those arguing for protection do so on the basis that copyright should provide incentives for creators and these incentives (legal protection by copyright) should apply to computer-generated works to protect the investment of those creating them and to encourage more production of AI works and innovation generally.33

30 The creation of the work and its protection under German law is discussed in Lauber-Ronsberg and Hetmank (2019) (above n 15) 574. See also www.gerhard-richter.com/en/art/other/glass-and-mirrors-105/ cologne-cathedral-window-14890 (accessed 9 February 2020): ‘Cathedral Window was designed for the south transept of Cologne Cathedral. The work, which consists of approximately 11,500 squares of glass in 72 colours, was unveiled in 2007. Some of the brightly coloured square panes were arranged randomly, while others were selected in response to the architectural context.’ 31 See Iglesias, Shamuilia and Anderberg (2019) (above n 12) 8–11. Exceptions in the UK might include that for text and data mining although this is limited for non-commercial research (s 29A CDPA). 32 See WIPO Conversation on Intellectual Property (IP) and Artificial Intelligence (AI) (www.wipo.int/ about-ip/en/artificial_intelligence/). 33 See, eg, Guadamuz (2017) (above n 12) 186 and Denicola (2016) (above n 10) – from a US perspective Denicola comments: ‘If a person uses a computer to assist in the manipulation and fixation of expression created by the user, the result is copyrightable. However, if a user’s interaction with a computer prompts it to generate its own expression, the result is excluded from copyright. This is a tenuous and ultimately unnecessary and counter-productive distinction. It denies the incentive of copyright to an increasingly large group of works that are indistinguishable in substance and public value from works created by human beings’ (286). Denicola sees US law as not potentially denying such protection – it is just that the courts or if necessary the legislature should take the lead here (286–287).

106 Art, Technology and the Internet: Copyright, Related Rights and Digitisation The reviews will not just be in relation to copyright either – patent protection for computer-generated inventions is also a hot topic in IP circles currently.34 It has been argued there are several possible options for copyright law reform here:35 a) Abandon the human author favoured by European continental copyright law – if so, how long would protection last, who would own the copyright (the programmer, the person providing the training data, the person using the AI?), what would be the level of creativity/originality required and what would happen to moral rights?36 b) Acknowledge the AI as a legal person but why should such works have the same protection as those of human authors and could this not devalue human creativity (which created the AI in the first place)? c) No action – the works if unprotected will fall into the public domain – would this be negative from an economic perspective? – something that doubtless will be analysed going forward as part of the law reform debate. d) Create a different legal regime than copyright for AI generated works. This could be a specific (and limited) ‘robot copyright’ or a neighbouring right or a sui generis right (an example of the latter is database right). Such regimes typically protect works: • for a much more limited period than copyright (initially in the case of database right 15 years); • may require a certain level of ‘investment’ to qualify (substantial investment in obtaining, verifying or presenting the contents of a database, for database right, for example) – indeed the protection of the investment of their maker may be their raison d’etre;37 and • may apply specific concepts relating to both: ○ how the right is infringed that may differ from reproduction or communication to the public in the case of copyright protection (for example database right protects against the extraction or re-utilisation of all or the substantial part of the contents of a database), and ○ who owns the right (in database right the maker of the database owns it).38

34 See, eg, R Abbott, ‘The Artificial Inventor Project’ WIPO Magazine December 2019. 35 Lauber-Ronsberg and Hetmank (2019) (above n 15) 576–577. 36 Shlomit Yanisky-Ravid has argued that works produced by AI systems could be protected as works made for hire under US copyright law – the AI system would be treated as a creative employee or independent contractor of the user. ‘Under this proposed model, ownership, control and responsibility would be imposed on the humans or legal entities [eg corporations] that use AI sysyems and enjoy its benefits’ (S Yanisky-Ravid, ‘Generating Rembrandt: Artificial Intelligence, Copyright, and Accountability in the 3A Era – the human-like authors are already here – a New Model’ [2017] Michigan State Law Review 659). 37 For database right: ‘Whereas the object of this sui generis right is to ensure protection of any investment in obtaining, verifying or presenting the contents of a database for the limited duration of the right; whereas such investment may consist in the deployment of financial resources and/or the expending of time, effort and energy’ (Recital 40, Directive 96/9/EC on the legal protection of databases). 38 The maker of a database is the person who takes the initiative and the risk of investing in creating the database and this excludes subcontractors in particular from the definition of maker (see Recital 41, Directive 96/9/EC).

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5.2.2. Virtual and Augmented Reality and Art39 Virtual Reality Virtual reality (VR) has been defined as ‘presenting our senses with a computer generated virtual environment that we can explore in some fashion’.40 Another definition is ‘[a] technology that enables a person to interact with a computer-simulated environment, be it based on a real or an imagined place’.41 So the viewer (through a headset or other ‘immersive’ technology) can experience a computer-generated environment which is experienced virtually in three dimensions. VR can be used for entertainment purposes as well as a creative or training tool. For example there have been collaborations between VR technology companies and art galleries to develop VR exhibitions of art works.42 VR can also be used to market art works – going beyond just a 2D ‘virtual gallery’ (discussed in chapter 7, section 7.3 below) to an immersive 3D presentation of the artist’s work.43 Artists are also creating VR art works – in 2002 the artists Langlands and Bell created a virtual reality tour of Osama Bin Laden’s hideout in Afghanistan and audiences were invited to navigate the building using a joystick.44

Augmented Reality VR may not be fully immersive – so for example a real world viewing experience may have artificial/VR elements added to it – an example is the Pokemon Go!45 This is called ‘augmented reality’ – examples in the art world include a museum including a digital image of a lost or stolen work of an artist in its collection or the work of MoMAR – who use AR ‘to overlay art onto existing artwork and frames housed in museums and gallery spaces around the world’.46 Apps such as Smartify might also be considered to 39 See J Russo and M Risch, Virtual Copyright (12 October 2017). W Barfield, M Blitz (eds) The Law of Virtual and Augmented Reality ((2018 Forthcoming). Available at SSRN: https://ssrn.com/abstract=3051871. Also W Barfield and MJ Blitz (eds), Research Handbook on the Law of Virtual and Augmented Reality (Cheltenham, Edward Elgar, 2018). 40 www.vrs.org.uk/virtual-reality/what-is-virtual-reality.html (accessed 15 February 2020). 41 www.tate.org.uk/art/art-terms/v/virtual-reality. 42 For example, in 2019 VR-All-Art hosted an exclusive vernissage and art sale event titled ‘Past, Future and Everything in between’, organised by the Visconti Fine Art gallery and Brajak Vitberg art and design studio. ‘Together, the three collaborators presented artworks among which were prints by Andy Warhol, unique luxury lamps of futuristic design, and an extended pop art exhibition in virtual reality, thus entwining past and future, as well as everything in between.’ (see https://vrallart.com/news/vr-all-art_hosted_art_exhibition_ past-future_and_everything_in_between (accessed 15 February 2020)). 43 For example, see the activities of the company VR-All-Art AG – a pioneer in the area of VR, AR (augmented reality) (see below) and art – see https://vrallart.com/about. 44 www.tate.org.uk/art/art-terms/v/virtual-reality. 45 www.theguardian.com/technology/2016/jul/18/pokemon-go-uk-developers-augmented-reality. 46 http://momar.gallery/ (accessed 15 February 2020). MoMAR on its website describes itself as ‘An unauthorized gallery concept aimed at democratizing physical exhibition spaces, museums, and the curation of art within them. MoMAR is non-profit, non-owned, and exists in the absence of any privatized structures. MoMAR uses Augmented Reality to overlay art onto existing artwork and frames housed in museums and gallery spaces around the world. Downloading the MoMAR app, visitors hold their phones over specified frames and spaces in order to view alternate artwork, and MoMAR exhibits.’ For example, in 2018 visitors with the MoMAR app who visited a room of paintings by Jackson Pollock at the Museum of Modern Art (MoMA) in New York were able to use the app to create an alternative, AR viewing experience. ‘Viewed

108 Art, Technology and the Internet: Copyright, Related Rights and Digitisation involve AR if they involve the user having an augmented experience – for example if by hovering their phone on a gallery image the user is presented additional information in real time.47

Legal Issues48 The copyright issues revolve around: (a) the rights needed (if any) to create the VR/AR works; and (b) are the VR/AR works created protected by copyright and if so who owns them?: (a) Rights clearance: in developing a VR/AR experience the programmer/developer may use AI to generate images or may use (and reproduce) existing ‘real world’ artistic images (or digital images too) (for image recognition purposes, for example) so legal issues may be engaged in who owns the images and whether rights need to be cleared to use them – for example a licence from the artist. Where the VR/AR developer is using images created by others (eg an image of a painting) as part of the works generated through VR/AR then if such images (and underlying artistic works) are protected by copyright, issues will arise as to whether such use is fair dealing/fair use or requires a licence from the artist or other copyright owner. (b) Protection and ownership of the VR/AR ‘work’ itself: in terms of the creation of the work the discussion above about computer-generated works and authorship is relevant to questions of authorship, moral rights and ownership. Also relevant is the nature of the VR/AR works created – what sort of works are they for copyright purposes and does this matter? Such a work might be considered a film, containing photographs or artistic works, and have sound effects or use music – this makes for a potentially complex copyright analysis but analogies already exist with film, video, computer games and multimedia works where the courts seem to be entertaining a broad concept of a protected work not necessarily constrained to existing categories of protected works.49 The user may also have a role in determining what content is created or shown (for example they may decide what to look at in VR/AR) – this raises interesting questions of joint authorship in the works created.50

through the app, Pollock’s paintings are either remixed beyond recognition or entirely replaced’ (www.wired. com/story/augmented-reality-art-museums/ (accessed 15 February 2020)). MoMAR has also curated an AR show at MoMA called ‘Open to the Public’ (25/10/19 to 25/10/20) – https://archpaper.com/2019/12/ curatorial-collective-augments-moma-momar/. 47 Smartify describes itself as ‘A global platform for the discovery and sharing of art. SMARTIFY instantly identifies artworks and allows you to create a personal gallery of favourites’ (https://medium.com/@_smartify; see also https://smartify.org/about-us). Smartify uses image recognition technology in its app. 48 Note also that those creating VR/AR art or using it will also need software licences for the underlying technology although some applications are free (open source). 49 See Nintendo C-355/12 (ECLI:EU:C:2014:25) para 23 and the discussion in Stokes (2019) (above n 4) 32. To generate the user experience there will also be layers of underlying works and data (including databases) to consider as well – as an example, consider what is involved in an AR augmented map – the map itself is protected by copyright then the developer will have used very large amounts of data (including real world images) which the user experiences in an interactive way – https://getoutside.ordnancesurvey.co.uk/3d/ (accessed 15 February 2020). 50 Stokes (2019) (above n 4) 238–239. Other copyright issues may also be relevant.

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5.3. Copying and the Internet When a copyright work, say a photograph of a painting (‘Work’), is scanned into computer memory using a digital scanner, the Work will be copied; and if the Work is in copyright, this will amount to an infringement.51 Once in electronic form, numerous further copies of the Work can be made, for example onto hard disk (or hard drive), universal serial bus (USB) stick, compact disc (CD) and so on; they would also infringe copyright under the CDPA. Moreover, transitory copies of the work will be made: for example, if the work is viewed on a screen, a copy of the work will be made in the computer’s random-access memory (RAM). Both this copy and, it appears, the on-screen ‘copy’ will infringe copyright.52 Furthermore, if the electronic copy of the Work is uploaded onto a computer server (itself an act of copying) that is then accessible on the World-Wide Web, a person browsing the Web would, through instructions sent by that person’s computer, download a copy of the work into RAM in her machine – again an act of copying; and the person uploading it would be communicating it to the public. Indeed, as one author succinctly put it, ‘the Internet works by copying.’53 The Internet is a global computer network that allows computers worldwide to talk to each other. A viewer’s (‘browser’s’) computer (whether PC, tablet or smartphone) transmits a request to a server computer holding the website that is being browsed to forward a copy of some particular material that the server is storing. This material is not passed directly to the viewer’s computer; it is broken into packets and sent across the Internet, passing from one computer on the Internet to another, each of which could be said to make a copy of each packet, until all the packets are received at the browser’s computer. Thus the exploitation of works in digital form is likely to involve the generation of a number of potentially infringing copies, as well as communicating the work to the public. Copying may also take place in several countries. For example, if the server in question is located in Country Y, and the person browsing in Country X, then if the copyright laws of X and Y differ, this may lead to a different degree of protection between countries. In practice, however, provided the digital copy of a work is lawfully made available for browsing, then those browsing ought to benefit from an implied licence – ie, the law will imply a licence from the circumstances, but the scope of the licence can be queried.54 In any event in the UK (and under European copyright law) there is also

51 S 16 CDPA. Again, to recap, to infringe a copyright work by copying it one must, without licence of the copyright owner, reproduce at least a substantial part of it in any material form. See also ch 6, s 6.2. 52 A copy is made by reproducing the whole or any substantial part of the work in any material form. Certainly, the act of calling work up onto a screen will normally involve reproduction in the memory of the computer, which will amount to copying. In addition, reproduction includes storing the work in any medium by electronic means (s 17(2) CDPA) and also includes transient/temporary copies (s 17(6) CDPA; and Art 2 of the Information Society Directive) so even displaying an image on a TV or computer monitor can amount to copying by reproduction in material form. See Bookmakers’ Afternoon Greyhound Services Ltd v Wilf Gilbert (Staffordshire) Limited [1994] FSR 723; and Football Association Premier League Ltd v QC Leisure (No 2) [2008] FSR 32, paras 231–32. 53 C Gringras, The Laws of the Internet (London, Butterworths, 1997) 163. 54 See below ch 6 for a fuller discussion of this issue.

110 Art, Technology and the Internet: Copyright, Related Rights and Digitisation a copyright exception that will apply – section 28A CDPA (which gives effect to the exemption for temporary copies produced while browsing under Article 5(1) of the Information Society Directive55).56 Other issues that arise in connection with the Internet include caching; linking and framing; and user-generated (and uploaded) content.

5.3.1. Caching A cache is a computer (generally a server) that holds copies of information (eg, the most popular pages on the Web), so that users do not have to return to the original server. In general terms, cached material can be stored: 1. 2. 3.

at a geographically closer site; on a more powerful computer; or on a computer with a less congested path to the user.

Typically, internet service providers (ISPs) store, or ‘cache’, frequently accessed webpages onto their own servers to speed up users’ connection times. A cache is also created by web browsers (such as Microsoft’s Internet Explorer software), which create caches on the hard disk/storage memory of a user’s computer in addition to the transient RAM copies created whilst browsing. This means that users have easier and quicker access to particular websites. Thus, caching can occur both on a user’s computer and at server level (so-called ‘proxy caching’). Caching clearly involves copying a substantial part of a copyright work and (assuming the work is protected by copyright) would appear to require a licence from the copyright owner to avoid a claim of infringement (subject to the exception in section 28A CDPA applying – see above). Although convenient for users, caching is by no means necessary, and therefore it can be argued that no licence will be implied from the circumstances. Regardless of its legal status, caching facilitates the copying of entire websites, throwing up obvious copyright issues. A cache site may not be updated as frequently as the original site. Therefore infringing information may have been removed from the original site but not the cache, rendering the website owner and/or the person operating the cache still potentially liable for any infringement actions.

55 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society. 56 Public Relations Consultants Association Ltd v The Newspaper Licensing Agency Ltd & Ors [2013] UKSC 18 and Public Relations Consultants Association v Newspaper Licensing Agency Ltd & Ors (Judgment of the Court) [2014] EUECJ C-360/13 – the CJEU concluded: ‘Article 5 of [the Information Society Directive] must be interpreted as meaning that the copies on the user’s computer screen and the copies in the internet “cache” of that computer’s hard disk, made by an end-user in the course of viewing a website, satisfy the conditions that those copies must be temporary, that they must be transient or incidental in nature and that they must constitute an integral and essential part of a technological process, as well as the conditions laid down in Article 5(5) of that directive, and that they may therefore be made without the authorisation of the copyright holders.’

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5.3.2. Linking and Framing Hypertext links enable a web browser to jump from one website to another, facilitating the accessing of related information.57 Viewers are often unaware that, having clicked onto a particular word or phrase (usually highlighted and underlined), they have accessed another website. There continues to be a debate about the extent to which the use of hypertext links requires the consent of the person whose site is being linked and/or of the copyright or database right owner, especially where such linking is misleading, defamatory or harmful to that person’s reputation; facilitates copying in circumstances such that a licence permitting such copying cannot be implied from the copyright owner; or amounts to database right infringement. An example is the ‘framing’ of someone else’s content so that it appears on-screen as your own, although in fact the content is from a linked site with no connection to your own site. Cases from various jurisdictions diverge here, but mere linking is less problematic than framing.58 However, it is fair to say that the law in the EU (which also applies in the UK on the basis of the law applying before Brexit) has recently challenged the long-held assumption that simply providing a link to a website can incur no liability for the person creating the link. If the linked site contains infringing content for example this may be problematic, especially if the person creating the link is operating commercially (for profit) or knows that they are linking to unlicensed/ infringing content – in such circumstances the person creating the link can be held to be communicating the infringing work to the public – an act restricted by copyright.59 Those providing links on their sites (especially if commercial businesses) would be advised to do some due diligence on the sites they are linking to as for profit businesses will be deemed to have knowledge of the infringing works they may unwittingly link to.60

5.3.3. Liability of ISPs, Platforms and Others, Including for User-Generated (and Uploaded) Content61 Internet service providers (ISPs) may charge subscribers for the right to access the Internet and to host content (eg, websites) on behalf of third parties: they are intermediaries in the sense that they do not themselves determine what appears on the websites they

57 ‘Hyperlink’ means a connection between two items of hypertext (the language used to build websites and converted into readable English by browser software). A hyperlink appears on a page of information displayed when browsing a website as an underlined keyword, which if clicked on takes the user to another document or website. 58 See Stokes (2019) (above n 4) 172–175. 59 The authority for this is GS Media (Judgment) [2016] EUECJ C-160/15 which follows the earlier cases of Svensson and Others v Retriever Sverige AB (Judgment of the Court) [2014] EUECJ C-466/12 (linking can infringe copyright in certain circumstances) and BestWater International (Order) French Text [2014] EUECJ C-348/13_CO (framing of content was not infringement). In any event if the linking is done for quotation purposes an exception might apply (Spiegel Online C-516/17) ECLI:EU:C:2019:62). 60 This is in light of GS Media (above n 59). 61 Stokes (2019) (above n 4).

112 Art, Technology and the Internet: Copyright, Related Rights and Digitisation host. Platforms (for example those operated by Google (YouTube) and Facebook) also allow two or more persons or groups to interact and this can allow the exchange of content (lawful or otherwise). Others (eg, the operator of a website) may simply allow third parties to post or upload content on their sites (eg, by allowing users to contribute to a blog, to post images to an online gallery or to post or create other user-generated content). A much debated question is whether an ISP, platform or website operator can be held liable for copyright infringement (or other unlawful acts such as defamation) occurring on its sites and, if so, what (if any) knowledge of or participation in the infringement must the ISP or web-site operator have to be liable? Various other intermediaries are also involved in facilitating the transmission of content over the Internet: telecommunications operators may provide the backbone/ pipe (ie, acting as a mere ‘conduit’) and may (or others may) provide the intermediate servers and proxy caches. It has been debated to what extent these activities may also infringe copyright. As far as the liability of EU service providers (ie, those providing an information society service within the European Economic Area62 including platforms) is concerned, their liability where they host, cache or transmit infringing material is potentially limited or eliminated by the provisions of the Electronic Commerce Directive (2000/31/EC), as implemented into local law. The relevant provisions of this Directive are discussed in more detail in chapter six in the context of the operation of visual search engines. However, in general terms, where the service provider has no knowledge the content it is hosting infringes, then as long as it acts expeditiously to remove or block access to the content once it is notified of the infringement (eg, through a notice and take-down procedure), then it can escape liability.63 One difficult issue is to what extent must a service provider/platform monitor or take active steps to seek to ensure their platform or service does not host infringing content even if they have not been notified of the infringing content. The Electronic Commerce Directive (Article 15) says there is no general obligation to monitor. But developments at EU level such as the Copyright in the Digital Single Market Directive64 mean the law is moving away from the approach taken in the Electronic Commerce Directive, at least in the EU (the UK at the time of writing (February 2020) was not planning to implement the Copyright in the Digital Single Market Directive).65

5.4. Transmission Right/Communication to the Public Right To what extent are ‘transmissions’ via the Internet protected by copyright? As discussed above, when a person browses a website, instructions sent from the viewer’s computer 62 This is broadly defined, spanning a wide range of economic activities that take place online. See Recital 18 of Directive 2000/31/EC. 63 Art 14. 64 Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC (Text with EEA relevance) OJ L130, 17.5.2019, 92–125. 65 www.law.kuleuven.be/citip/blog/to-monitor-or-not-to-monitor-the-uncertain-future-of-article-15-ofthe-e-commerce-directive/ (accessed 16 February 2020).

Publication Right 113 will arrive at the computer (server) that is the physical location of the website, and this will set in motion the transmission of the relevant text or image in digitised packets over the Internet. These packets are received by the viewer’s computer and are then converted into on-screen text and images. Such ‘on-demand’, interactive access to copyright material has been considered to represent a challenge to existing copyright laws. In the United Kingdom at least, prior to the Copyright and Related Rights Regulations 2003,66 which implement the Information Society Directive (2001/29/EC), for the act of transmission to potentially infringe copyright, the transmission would have to amount to either a broadcast (which it clearly was not) or a cable programme service. However, the interactive nature of the Internet would appear to rule out cable programme protection.67 International concerns about the level of protection for online transmissions were addressed in the World Intellectual Property Organization (WIPO) Copyright Treaty 199668 and in the Information Society Directive. The WIPO Treaty provides for a new right of communication to the public for authors of literary and artistic works. Such persons shall: … enjoy the exclusive right of authorising any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them.69

This ‘communication to the public right’ gives artists (and other rights holders) clear control over the use made of digitised images of their works over the Internet.70 Museums and others who wish to make use of the Internet will need to bear this right in mind when exploiting images of art works in their collections. This right is discussed in more detail below in chapter six.

5.5. Publication Right Publication right71 applies just as much to the electronic publication of a work (eg, by putting a copy on a compact disc with read-only memory (CD-ROM) that is issued to the public or by making it available by means of an electronic retrieval system such as on a website) as it does to more traditional publishing. Furthermore, it can be infringed in an analogous manner to copyright, and this includes making electronic copies. This right cannot therefore be ignored in the digital environment. 66 SI 2003/2498. 67 See Gringras (above n 53) 170–71. 68 Adopted by Diplomatic Conference on 20 December 1996. 69 Art 8 (Right of Communication to the Public) WIPO Treaty (ibid). In UK law, this right is enshrined in s 20 CDPA and refers to ‘communication to the public’. 70 Art 3 Information Society Directive (Directive 2001/29/EC). The scope of the communication to the public right is broad and extends not just to the act of transmission – the jurisprudence of the CJEU continues to develop the right with a number of landmark cases – linking is just one area the right applies to, as noted above. See also J Koo, The Right of Communication to the Public in EU Copyright Law (Oxford, Hart Publishing, 2019). 71 See above ch 3.

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5.6. Database Right and Art (and Art Market) Databases As discussed above in chapter three, a further right analogous to copyright is database right, introduced into UK law on 1 January 1998 by the Copyright and Rights in Databases Regulations 1997.72 The Regulations also attempt to harmonise what copyright protection applies to databases following the earlier EU Database Directive (96/9/ EC). A database is defined by Regulation 6 to mean ‘a collection of independent works, data or other materials which: (a) are arranged in a systematic or methodical way and (b) are individually accessible by electronic or other means’. The Regulations provide that a database can be protected by database right regardless of whether the individual contents (text, images, moving pictures, etc) are themselves protected by copyright. The rationale of the right is to protect the investment of the maker of the database. So, database right can protect collections of pure data (whether or not in electronic form) that are not selected or arranged in an original manner (a telephone directory, eg). It also potentially applies to an art database (say of images) as well as a database of auction price data. Given the definition of ‘database’, the Regulations can also apply to CD-ROMs, digital video disks (DVDs) and other collections of text, images, etc, including, potentially, websites. The Regulations therefore strengthen the protection afforded to those who create databases as well as those who produce and compile CD-ROMs, DVDs, etc, as well as websites – as opposed to those (such as artists, museums, auction houses, publishers, dealers or galleries) who may own rights in their content.73

5.6.1. Art (and Art Market) Databases and Image Libraries Price/Auction Databases There are a growing number of online art databases worldwide. These include sites that monitor art prices typically using auction data (which may also be available online, from the auction houses) as gallery data is more difficult to obtain74 or provide art analytics

72 SI 1997/3032, implementing the Database Directive (96/9/EC). 73 There is some debate about how well copyright protects CD-ROMs: see J Wienand, ‘Museums as International Copyright Owners: Use and Abuse of Images, Multimedia Problems, the Internet’ (1997) 2 Art, Antiquity and Law 35. See also I Stamatoudi, ‘To What Extent are Multimedia Products Databases?’ in Stamatoudi and Torremans (eds) (above n 2) for a discussion of how well database rights can protect multimedia. Stamatoudi suggests tailor-made legislation is needed to protect multimedia works, as database rights only protect primitive forms of multimedia works well, in her view (41). In the author’s view, the Regulations clearly do increase the legal protection available for CD-ROMs, DVDs, web-sites, etc. See Stokes (2019) (above n 4) ch 3. Note that an Austrian case has held that a website with hyperlinks to other websites is a database: C Villas, Oberster Gerichtshof, OGH (Austrian Supreme Court), 10 July 2001, GRUR Int 2002, 452, IIC 2003, 223. See generally P Bernt Hugenholtz in T Dreier and B Hugenholtz (eds), Concise European Copyright Law (Alphen aan den Rijn, Kluwer Law International, 2006) 307–42. 74 There are, however, also databases of gallery (primary art market) data as opposed to auction house data, eg, Artfacts (https://about.artfacts.net/about.html) and Magnus (www.magnus.net/about/) (accessed 16 February 2020). Magnus operates a ‘crowd-sourced’ model of data collection from trusted users of its app.

Database Right and Art (and Art Market) Databases 115 more generally and they may apply artificial intelligence/machine learning to the data they collect – examples include Artprice (which describes itself as the world leader in art market information), artnet, ArtTactic, artnome (artnome uses its data for machine learning and computer vision research) and Pi-eX.75 Firms providing online bidding platforms may also have access to price databases (for example developed through their own activities in bringing auctioneers and buyers together) which they can make available to others (eg the-saleroom.com, invaluable and liveauctioneers). The auction houses themselves may make available information on previous/past sales.76 Images of works to which the price/sales data relate are also often displayed.

Art Work/Image Library Databases The price/auction databases referred to above also typically include databases of art images to which the price/sales data relates. In addition galleries and those working with them to provide online access to their collections (including works not usually on display) (eg Art UK77) or marketing/news (and auction) sites such as Artsy will make available art databases of visual images often with considerable investment in the databases and search technology used.78 There are also commercial art databases/libraries, for example Bridgeman Images.79

Other Databases (Including Blockchain-based Databases) Other databases also exist – for example the Art Loss Register – the world’s largest database of stolen art (which also includes images).80 Also those providing authentication services (for example using blockchain) in relation to works of art will be creating databases and this will (presumably) include images of the works authenticated.81

This has created a database of works and pricing information which users of its app can access (www.magnus. net/faq/). This is done as follows: (i) the user of the app is in a gallery and likes a work of art; (ii) the user starts the app and taps the image button to take a photo of the work of art; (iii) a ‘digital fingerprint’ of the piece is created and sent to Magnus; and (iv) Magnus will find the name of the artwork and the artist, plus current and historic price, dimensions and material. 75 www.artprice.com/contact; www.artnet.com/; https://arttactic.com/; www.artnome.com/art-analytics; www.pi-ex.co/index.html (all accessed 16 February 2020). 76 See, eg, Christie’s – www.christies.com/results/, Sothebys – www.sothebys.com/en/results?locale=en, Bonhams – www.bonhams.com/results/ and Phillips – www.phillips.com/auctions/past (all accessed 16 February 2020). 77 https://artuk.org/about/about (accessed 16 February 2020) – Art UK has digitised over 230,000 artworks by over 40,000 artists and sculptures are also being added (website, February 2020). Art UK is the operating name of the Public Catalogue Foundation, a charity registered in England and Wales (109685) and Scotland (SC048601). 78 www.artsy.net/ (accessed 16 February 2020). 79 www.bridgemanimages.co.uk/en/. 80 www.artloss.com/en. 81 See, eg, Verisart (https://verisart.com/news) – Verisart claims to be building a new global standard for art certification and verification. DACS has partnered with Verisart for Bronzechain (a blockchain hallmarking service for sculptures) – the blockchain linked certificates for Bronzechain include an image of the work in question – see www.dacs.org.uk/latest-news/dacs-pioneers-bronzechain?category=For+Artists&title=N (accessed 16 February 2020). See also 5.8 below.

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Legal Issues The copyright and database right issues relating to art-related databases of images of artistic works and data can be summarised as follows: a) Issues relating to images: the discussion in this book is about how copyright can protect images in two ways – both the photograph/digital image itself as well as the underlying work are relevant. Those amassing image databases and making them available (including use for search/image identification purposes) need to be mindful of these two aspects of copyright protection and that depending on the jurisdiction in question exceptions which may permit the creation, storage, reproduction/use and/or making available/communication to the public of such images may not necessarily cover what is being done. So, for example, an exception which might permit a work to be copied in order to advertise its sale will not necessarily apply after the sale is ended.82 b) Issues relating to data: under English law data (information) itself is not ‘property’ (if it doesn’t qualify as a copyright work)83 – so its legal protection is typically through a bundle of rights – rights in confidential information (if it is confidential), database right (if it is part of a protected database)84 and contract (where use rights are granted under a contract/licence).85 This all raises interesting questions in relation to: (i) where the data is sourced from and do any legal restrictions apply (so, for example, if web-scraping were used this might be problematic if carried out in breach of any website/licence terms or otherwise86 or whether the data was confidential); and (ii) how the database maker seeks to itself protect its data – through contract or website terms, for example.

82 See, eg, s 63 CDPA and the discussion in section 3.2.9. Clearly where works of art which are in copyright are concerned there will be issues in relation to any rights the artist or their estate may have as regards the creation of reproductions and communication of the work to the public; as regards the photographic image itself (as opposed to the copyright of the artist or their estate in the work) there may be issues as to whether such a faithful reproduction has sufficient originality to be protected by copyright in light of CJEU jurisprudence – see, eg, Eva-Maria Painer v Standard VerlagsGmbH and Others (Judgment of the Court (Third Chamber)) [2011] EUECJ C-145/10 and discussion in section 6.1 below. Also where images have been lawfully obtained (eg crowd-sourced where the user may benefit from a fair dealing/fair use exception for their own personal use) the re-use of such images in an art database for commercial purposes may not benefit from any exception depending on the precise facts and the legal system in question. In the UK, for example, it is perhaps difficult to see how a fair dealing exception might apply to the activities of the database maker if they are a commercial organisation and s 63 CDPA does not apply. 83 Your Response Ltd v Datateam Business Media Ltd [2014] EWCA Civ 281: ‘An electronic database consists of structured information. Although information may give rise to intellectual property rights, such as database right and copyright, the law has been reluctant to treat information itself as property. When information is created and recorded there are sharp distinctions between the information itself, the physical medium on which the information is recorded and the rights to which the information gives rise. Whilst the physical medium and the rights are treated as property, the information itself has never been’ (per Floyd LJ) (para 42). 84 Database right is a uniquely European creation – the US does not have it. 85 See The Racing Partnership Ltd & Ors v Done Brothers (Cash Betting) Ltd & Ors [2019] EWHC 1156 (Ch) for a recent discussion of copyright and other rights in data (horseracing data – (i) betting prices; and (ii) factual information relating to the courses and the relevant races) where a range of legal rights were invoked to protect the data including: copyright (literary works), database right, breach of contract and breach of confidence. 86 See, eg, Ryanair (Judgment) [2015] EUECJ C-30/14 and Innoweb (Judgment of the Court) [2013] EUECJ C-202/12; see also Stokes (2019) (n 4 above) 93–94.

Implications of Moral Rights for the Digital Environment 117 c) Issues relating to the structure of the databases and the search and other technologies that power them: copyright can protect the structure and arrangement of a database if they are original works87 as well as the software code underpinning its use and other rights (including rights in confidential information) may also be relevant.88

5.7. Implications of Moral Rights for the Digital Environment89 As noted earlier the moral rights of paternity and integrity do not apply to computer programs or computer-generated works,90 although surprisingly, the right to object to false attribution could theoretically apply to computer programs or computer-generated works. However, moral rights remain relevant to artistic works and the Internet: it is clear that making digital copies of a work of art available on a server for public access over the Internet does amount to ‘publication’.91 Also, it is submitted that showing a copy of the work on a website is tantamount to exhibiting the copy of the work in public. Thus moral rights could be infringed by making a digitised copy of the work available for browsing on a server over the Internet, as the following examples illustrate. Scenario (a): A digitised copy of a work in which the right of paternity has been asserted is put on a server, available for browsing over the Internet. The artist is not identified in relation to the image. Prima facie, this would be an infringement of the artist’s right of paternity. Also, as discussed earlier, there could also be an issue regarding copyright infringement if use of the work for this purpose is not licensed.

87 Database Directive 96/9/EC, Art 3(1): In accordance with this Directive, databases which, by reason of the selection or arrangement of their contents, constitute the author’s own intellectual creation shall be protected as such by copyright. No other criteria shall be applied to determine their eligibility for that protection. See Football Dataco and Others [2012] EUECJ C-604/10. 88 For example, ‘The Art Genome Project’ is the classification system and technological framework (in essence a search engine) that powers Artsy (a platform for collecting and discovering art) (www.artsy.net/ article/the-art-genome-project-seven-facts-about-the-art-genome-project) (accessed 16 February 2020). This is clearly a considerable investment of effort and creativity. 89 For discussion of the issues from both authors’ rights and common law perspectives, see A Françon, ‘Protection of Artists’ Moral Rights on the Internet’ in F Pollaud-Dulian (ed), The Internet and Authors’ Rights (London, Sweet & Maxwell, 1999); and G Lea, ‘Moral Rights and the Internet: Some Thoughts from a Common Law Perspective’ in Pollaud-Dulian (ed) (above). There is a discussion in droit d’auteur jurisdictions about whether the mere act of digitisation per se can infringe the right of integrity due to a potential reduction in the quality of the image. See the very thorough and perceptive discussion in L de Souza and C Waelde, ‘Moral Rights and the Internet: Squaring the Circle’ (2002) 3 Intellectual Property Quarterly 265–288 (also available in the Edinburgh Research Archive (ERA) at https://era.ed.ac.uk/handle/1842/2306 (accessed 16 February 2020)). Also, MT Sundara Rajan, Moral Rights: Principles, Practice and New Technology (Oxford, Oxford University Press, 2011). 90 SS 79, 81 and 82 CDPA. 91 S 175(1)(b) CDPA makes clear that publication includes making a work ‘available to the public by means of an electronic retrieval system’. The Internet is one enormous electronic retrieval system. It has also been argued that putting a copy of a work on a website can also amount to commercial publication: Gringras (above n 53) 193. Note that s 175(4)(a)(ii) and s 175(4)(b)(iv) CDPA (as amended in 2003) effectively state that ‘the communication to the public of the work (otherwise than for the purposes of an electronic retrieval system) does not constitute publication).’

118 Art, Technology and the Internet: Copyright, Related Rights and Digitisation Scenario (b): The digitised copy referred to in (a) is manipulated electronically (for example, the colour tones are altered). This may amount to derogatory treatment.92 Indeed, in the context of author’s rights systems of moral rights protection, it has been discussed whether simply digitising a work could infringe the ‘right of respect’ under French law.93 Scenario (c): A derogatory hypertext link is placed on a website linking to an image of an artistic work on another website. It is debatable whether this is derogatory treatment of the linked work.94

As is clear from chapter four above, moral rights laws vary substantially in scope from state to state, in particular as to who possesses such rights and their scope. This has led to arguments that the global nature of the Internet requires a harmonisation of moral rights laws.95 But it has also been argued that the very notion of moral rights is under threat from digitisation. The possibility of both perfect and distorted copies seems to fly in the face of the Romantic, ‘eighteenth-century idea of a work as a perfect, static and self-contained unit, linked to the author as a projection of his personality’.96 On the other hand, the ‘strong’, inalienable nature of moral rights (especially in author’s rights systems) means that an aggressive assertion of moral rights could stifle the exploitation of artistic and other copyright works on the Internet. This has led to calls for a more flexible international moral rights system, together with collective schemes for moral rights management.97

5.8. Blockchain, Art and Copyright Management 5.8.1. Blockchain98 Blockchain can be described as a form of shared and synchronised digital ledger (or database) containing data in ‘blocks’ linked together in a chain which is shared and distributed (typically in a decentralised manner over a number of ‘nodes’ in a peer to peer network) and cryptographically signed so it is immutable – a record that cannot be altered – it is also referred to as distributed ledger technology (DLT). It gained 92 There is a dearth of case law in this area. As discussed earlier, a treatment is derogatory if it amounts to distortion or mutilation of the work or is otherwise prejudicial to the honour or reputation of the author. However, cases from other jurisdictions dealing with the colourisation of films may also be relevant here: eg, the well-known French case Huston (Civil court, 1, 28 May 1991, JCP 1991, II 21731 (note by Françon). See also Sté Turner Entertainment c Héritiers Huston, CA Versailles, ch civ réunies, 19 December 1994, (1995) 164 RIDA 389. 93 Françon (above n 89) 78–79, in the context of a case involving the scanning of the famous photograph of Che Guevara onto T-shirts. Françon also sees the interactivity of the Internet as a challenge to the right of respect (the right of respect is akin to the right of integrity in the Berne Convention). 94 Or it may be infringement of other laws that in the past have served on occasion to function as ‘moral rights’ (eg, the law of passing off or defamation). Lea (above n 89) 98–99 discusses this example. 95 See, eg, P Torremans, ‘Moral Rights in the Digital Age’ in Stamatoudi and Torremans (eds) (above n 2). 96 Lea (above n 89) 97. 97 Ibid. For example, in the copyright sphere there are a number of such collective schemes and licensing bodies (in the UK, DACS, Pixel and ACS – see section 7.1 below). 98 See Stokes (2019) (n 4) 241–242, M Gupta, Blockchain for Dummies (Hoboken, NJ, IBM Ltd Edition/John Wiley, 2017), P De Filippi and A Wright, Blockchain and the Law: The Rule of Code (Cambridge, MA, Harvard University Press, 2018) and E Rennie, J Potts and A Pochesneva, ‘Blockchain and the Creative Industries’, Provocation Paper (RMIT University, Melbourne, Australia, November 2019) available at https://apo.org.au/ sites/default/files/resource-files/2019/11/apo-nid267131-1398946.pdf (accessed 7 March 2020).

Blockchain, Art and Copyright Management 119 prominence from 2009 as the basis of cryptocurrencies such as bitcoin but it can be applied outside of cryptocurrencies and can be used in both private and public environments. As a database/digital ledger it can act as a record of transactions and ownership, for example. One author has commented: ‘the real innovation of distributed ledger technology is that it ensures the integrity of the ledger by crowdsourcing oversight and removes the need for a central authority. In other words, transactions are verified and validated by the multiple computers that host the blockchain. For this reason it is seen as “near unhackable,” because to change any of the information on it, a cyber-attack would have to strike (nearly) all copies of the ledger simultaneously.’99 Smart contracts can also be built into the blockchain, written in computer code, and which can execute transactions. In a copyright context a smart contract might contain a set of rules for how a digital copyright asset such as a digital photograph can be licensed. Some see blockchain as holding great promise as a copyright rights management tool (see for example KODAKOne and Jaak).100 Others are concerned it might be put to use to facilitate copyright infringement which will be difficult to stop.101

5.8.2. Blockchain and Art102 Blockchain has generated considerable interest in artistic circles. Digital artists have used it to create interactive art works – one example being ‘Plantoid’ a blockchain based ‘life-form’ created as an art project by the legal scholar and blockchain researcher Primavera De Filippi to visualise her academic research.103 There are a number of potential applications of blockchain to art and the wider art market and not just as regards copyright – for example the use of blockchain to authenticate works as well as to allow art to be ‘tokenised’ and transacted in through the use of virtual cryptographic tokens. Unique digital art works can also be created and their distribution reproduction and authenticity tracked and managed using blockchain – the game ‘Cryptokitties’ was an early example of this and so called ‘digital’ (or ‘crypto’) collectibles.104 Indeed DLT can allow the creation of ‘scarce’ digital art works which goes against the ability of digital art works to be easily copied and reproduced – a ‘unique’ work can be created and this has scarcity value.105 99 Birgit Clark – from B Clark, ‘Blockchain and IP Law: A Match Made in Crypto Heaven?’, WIPO Magazine February 2018 (www.wipo.int/wipo_magazine/en/2018/01/article_0005.html (accessed 7 March 2020). 100 www.kodakone.com/ and www.jaak.io (accessed 7 March 2020). 101 De Filippi and Wright (2018) (above n 98) 123–125. 102 Rennie et al (2019) (above n 98) provide a very useful overview of the current uses of blockchain in relation to art (as of 2019). A ground-breaking book on the interaction of art and blockchain (including copyright aspects) is R Catlow, M Garrett, N Jones & S Skinner, Artists Re:Thinking the Blockchain (Torque Editions and Furtherfield, 2017) (available at https://torquetorque.net/wp-content/uploads/ArtistsReThinkingTheBlockchain.pdf (accessed 7 March 2020)). 103 www.forbes.com/sites/katmustatea/2018/01/31/meet-plantoid-blockchain-art-with-a-life-of-its-own/# 1d714e703f64 (accessed 7 March 2019). See P De Filippi, ‘Plantoid – The Birth of a Blockchain-Based Lifeform’ (in Catlow et al (2017) (above n 102)). 104 www.theverge.com/2017/12/13/16754266/cryptokitties-ethereum-ether-game-cats (accessed 7 March 2020). 105 M Zeilinger, ‘Digital Art as “Monetised Graphics”: Enforcing Intellectual Property on the Blockchain’ [2016] Philosophy & Technology 31. Scarcity can be created through the use of NFTs (non-fungible tokens) representing the artwork in question – see the OpenLaw project ‘Modernising Art with Blockchains’ (https://medium.com/@OpenLawOfficial/modernizing-art-with-blockchains-6cba4694833d (accessed 7 March 2020)).

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5.8.3. Blockchain and Artistic Copyright (Including Artist’s Resale Right) Management106 As noted earlier, blockchain has the potential to help automate copyright management – to store records of creation and ownership of copyright works as well as transactions, for example – this is particularly useful for an unregistered intellectual property right such as copyright where there is no central public register (as there is for patents, registered designs and registered trade marks). Blockchain can also be used to facilitate payments (for example using cryptocurrencies). It could be applied to automate copyright licensing – in Canada it has been reported that the Canadian Artists’ Representation/ Le Front des artistes canadiens (CARFAC) and Access Copyright are developing a blockchain system where artists can register their work on a blockchain and protect it from copyright infringement.107 Another potential application is its use to automate the collection of artist’s resale right – this has been trialled in Australia. In 2018, Australia’s Copyright Agency Limited instigated a pilot to test how blockchain could be used to administer resale royalties of visual artworks, commencing with indigenous artworks.108 In the UK the copyright management organisation DACS has been exploring various use cases of blockchain.109 We can expect to see the increasing use of blockchain in relation to copyright management – especially copyright licensing, enforcement of licensing and royalty collection and potentially the collection of artist’s resale right.

5.9. Art, Copyright Legislation and the Digital Future 5.9.1. Legislation Legislative activity in the area of copyright and digitisation over the last 20 years or so in the EU and the UK has addressed at least four significant issues:110 1. The implementation of the WIPO Treaties of 1996 dealing with the challenges of copyright and digitisation generally. 106 See. eg, M Waugh, ‘Artists Rights in the Era of the Distributed Ledger’ in Catlow et al (2017) (above n 102). Also Clark (2018) (above n 99). Also M Finck and V Moscon, ‘Copyright law on blockchains: between new forms of rights administration and digital rights management 2.0’ (2019) 50(1) International Review of Intellectual Property and Competition Law 77–108. 107 https://ipolitics.ca/2019/12/02/stakeholders-consider-potential-for-blockchain-ledger-as-it-nears-completion/ (accessed 7 March 2020). 108 See Rennie et al (2019) (above n 98) 14. 109 See, eg, ‘Bronzechain’ – DACS and Verisart have launched Bronzechain, described as an innovative new scheme combining the traditional hallmark with cutting-edge blockchain technology to guarantee the quality and provenance of fine art bronze sculpture – see www.dacs.org.uk/latest-news/bronzechain-dacs-verisartfoundries-sign-up?category=For+Artists&title=N (accessed 7 March 2020). In 2018 DACS also published a report examining the potential impacts of blockchain technologies on the art market (see www.dacs.org. uk/DACSO/media/DACSDocs/Press%20releases/The-Art-Market-2-0-Blockchain-and-Financialisation-inVisual-Arts-2018.pdf (accessed 7 March 2020). Mark Waugh also discusses DACS’ activities in relation to blockchain (Waugh (2017) (above n 106)). 110 The US has faced similar issues but does not have the single market drivers of the EU. The list here does not cover all developments, for example measures relating to orphan works or the regulation of collecting societies/copyright management organisations.

Art, Copyright Legislation and the Digital Future 121 Does existing copyright law adequately protect authors and others involved in exploiting copyright works over the internet? In the European Union, the Information Society Directive was the result. Key elements of this are: • Clarification of the extent to which the reproduction and distribution rights apply in the digital environment, including the scope of fair use/fair dealing exceptions.111 The reproduction right (subject to limited exceptions) means that authors shall have the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form in whole or in part of their works.112 The distribution right is the exclusive right for authors, in respect of the originals of their works or copies thereof, to authorise or prohibit any form of distribution to the public by sale or otherwise. However, temporary acts of reproduction that are transient or incidental, are an integral and essential part of a technological process and whose sole purpose is to enable a transmission in a network between third parties by an intermediary or a lawful use of a work but without independent economic significance, are expressly excepted from the reproduction right.113 (Thus, the activities of Internet intermediaries may not necessarily infringe copyright.) As part of clarifying the reproduction right, the Directive has also effectively limited the scope of fair dealing/fair use across the European Union/European Economic Area by limiting the exceptions to copyright that Member States may have in their laws.114 In particular, all such exceptions ‘shall only be applied in certain special cases which do not conflict with a normal exploitation of the work or other subject-matter and do not unreasonably prejudice the legitimate interests of the right-holder’.115 The effect of these fair dealing/fair use-related provisions is (a) to limit the freedom of Member States to introduce new copyright exceptions and (b) to cause a review of existing provisions to ensure compliance with the Directive. Fair dealing/fair use should be the exception, not the rule. It should also be noted that it can be debated whether the copyright ‘exceptions’ by way of fair dealing or fair use can be overridden by contract under European copyright law: the author’s view is that it can, certainly under English law as it stood prior to reforms made in 2014.116 In other words, users can be made to contract out of these exceptions unless legislation prevents this. 111 Arts 5 and 6(4) Information Society Directive. 112 Art 2 Information Society Directive. 113 Art 5(1) Information Society Directive. 114 Art 5(2)–(5) Information Society Directive. 115 Art 5(5) Information Society Directive. This limitation, the so called ‘three-step test’, was first codified in Art 9(2) of the Berne Convention and is reflected in other international copyright laws as well as EU Directives. However, the scope of the test in the Information Society Directive is considerably broader than that in the Berne Convention: Bechtold in Dreier and Hugenholtz (eds) (above n 73) 381–83. 116 Such attempts to exclude fair dealing exceptions might, however, fall foul of consumer law in certain cases. See Bechtold (ibid) 370–71. Note also the specific provisions relating to software (Art 9(1)(2) Directive 91/250/EEC) and databases (Art 15 Directive 96/9/EC), which seek to make contract terms null and void that seek to exclude or limit certain copyright or database right exceptions noted in those Directives. However, the Information Society Directive does not contain any similar provisions. Indeed, Art 9 and recital 45 leave the door open for contracts to restrict the copyright exceptions enumerated in the Information Society Directive.

122 Art, Technology and the Internet: Copyright, Related Rights and Digitisation • A new right of communication to the public (as part of an on-demand service such as the Internet) to be added to the rights of authors. This reflects the need noted above for a ‘transmission right’ for the Internet: ‘Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.’117 • Legal protection of anti-copying and rights management systems.118 2. Clarifying the liability of ISPs and other intermediaries/service providers where they ‘innocently’ transmit or host information. In the European Union, this was addressed by the Electronic Commerce Directive (2000/31/EC), as noted above.119 The United States addressed both this area and areas dealt with in the European Union by the Information Society Directive with the Digital Millennium Copyright Act 1998, which deals with the implementation of the WIPO Treaties and other matters, including the liability of intermediaries. The Directive on Copyright in the Digital Single Market has recently revisited intermediary liability as regards the EU by placing more responsibility on intermediaries.120 In January 2020 and following Brexit the UK Government announced it had no plans to implement this Directive in the UK.121 In the UK, I Hargreaves, Digital Opportunity: A Review of Intellectual Property and Growth (UK Intellectual Property Office, May 2011) [hereafter ‘Hargreaves Review’] recommended that UK law should be clarified so that fair dealing and similar exceptions cannot be overridden through contract (51–52). Revisions and additions made to the exceptions in Part I, Chapter III CDPA in 2014 have now built in statutory provisions into UK law that prevent contract overriding certain exceptions. 117 Art 3 Information Society Directive. 118 Ch III Information Society Directive. Note that concerns that technical measures (eg, copy and access protection) could lock up content, depriving users of access to copyright works – even those out of copyright and even for use for private, non-commercial purposes – led to Art 6(4), which gives Member States the ability to address this area in their national laws. In the UK, see s 296ZE CDPA. Note that even then, contract may potentially be used by right-holders to seek to limit the application of Art 6(4). See para 4 of Art 6(4). 119 See also the discussion below in ch 6. This did not require intermediaries to monitor for infringing content (Article 15); rather once they became aware of it they were to act exeditiously take it down – see Stokes (2019) (above n 4) 2.6.1. 120 Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC (Text with EEA relevance) OJ L130, 17.5.2019, 92–125. The provisions on intermediary liability are controversial – see, eg, https://balkin.blogspot.com/2019/05/to-monitor-or-not-to-monitor-uncertain.html (accessed 14 March 2020). The author of this blog, Aleksandra Kuczerawy, comments: ‘Current policy discourse in the European Union is steadily shifting from intermediary liability to intermediary responsibility. The long-established principle prohibiting general monitoring obligations is currently being challenged by two initiatives in particular, namely the Copyright in the Digital Single Market Directive and the proposal on the Regulation preventing the dissemination of terrorist content online. By holding service providers liable and requiring broad implementation of censoring measures, this growing trend toward imposing monitoring obligations may have significant ramifications for the ability of individuals to freely share and access content online.’ 121 Written parliamentary answer (Chris Skidmore, 16 January 2020) www.parliament.uk/business/publications/written-questions-answers-statements/written-question/Commons/2020-01-16/4371/: ‘The deadline for implementing the EU Copyright Directive is 7 June 2021. The United Kingdom will leave the European Union on 31 January 2020 and the Implementation Period will end on 31 December 2020. The Government has committed not to extend the Implementation Period. Therefore, the United Kingdom will not be required to implement the Directive, and the Government has no plans to do so. Any future changes to the UK copyright framework will be considered as part of the usual domestic policy process.’

Art, Copyright Legislation and the Digital Future 123 3.

4.

Tackling online piracy through greater civil and criminal sanctions. In the United Kingdom, an example of this is the Digital Economy Act 2010 (DEA). This had some controversial provisions, including a two-stage process to stem internet piracy: warning letters to begin with and, if that does not work, ‘technical measures’ to limit or even suspend internet access, potentially cutting serious abusers off.122 However, the DEA is now in practice redundant, replaced by voluntary initiatives to prevent copyright infringement and also the growth in the ability of content owners to secure blocking injunctions against internet service providers to prevent users accessing infringing content.123 Creating a digital single market in the EU. From 2014–2019 the European Commission established and implemented a strategy ‘for the best possible access to the online world for individuals and businesses’ envisioning a digital single market (DSM) across the EU. A DSM is ‘one in which the free movement of persons, services and capital is ensured and where the individuals and businesses can seamlessly access and engage in online activities under conditions of fair competition, and a high level of consumer and personal data protection, irrespective of their nationality or place of residence’.124 This strategy has resulted in a considerable amount of legislation including in relation to copyright.125 Initiatives have included making digital content portable across the EU (so users can access their home content services (eg Netflix) wherever they are in the EU), a review of the enforcement of IPRs, the clearance of rights for crossborder transmissions of broadcasters, and the prevention of geo-blocking.126 The most significant aspect of the DSM for copyright is the Copyright in the Digital Single Market Directive noted above.127

5.9.2. The Future Over the last 30 years or so, the building blocks of a revised, digitally-focused copyright (and in Europe, database right) regime have been put in place internationally. In the European Union, this has also included a considerable amount of harmonisation of copyright law across Member States as well. The Court of Justice of the European Union (CJEU) and Member State courts in particular have been interpreting and applying the result of the EU copyright legislative agenda from the 1991 Software Directive to the 2001 Information Society Directive, generating an increasing amount of important case law addressing fundamental copyright concepts, which the UK courts as well as other

122 For a criticism of the law (in its initial form), see L Edwards, ‘Mandy and Me: Some Thoughts on the Digital Economy Bill’ (2009) 6(3) SCRIPTed: A Journal of Law, Technology and Society 534. 123 See Stokes (2019) (above n 4) 8.3.3 and 8.3.4. 124 https://ec.europa.eu/digital-single-market/en/news/digitalyou-digital-culture (accessed 14 March 2020). 125 www.europeansources.info/record/state-of-the-union-2016-commission-proposes-modern-eu-copyright-rules-for-european-culture-to-flourish-and-circulate/ (accessed 14 March 2020). 126 See Stokes (2019) (above n 4) 2.7 for an overview. 127 Where relevant to topics in this book this Directive is referred to elsewhere in this book. However, as noted above, the UK Government has indicated it will not implement it.

124 Art, Technology and the Internet: Copyright, Related Rights and Digitisation Member State courts have had to come to terms with.128 Despite Brexit, this Europeaninfluenced copyright law (as of 31 December 2020 when the transition/implementation period in effect at the time of writing this book is due to end) will remain in place in the UK until such time as the UK might choose to undertake a root and branch reform of its copyright law.129 It is also fair to say that copyright law continues to be under the spotlight as far as legislators are concerned – right-holders pressing for greater protection against online piracy, others expressing concerns that technology, restrictive copyright licences and increasingly strict copyright laws (including those such as the Copyright in the Digital Single Market Directive in relation to online platforms) are having a ‘chilling effect’ on freedom of expression and, ultimately, on creativity.130 And there continues to be a desire to explore the possibility of new exceptions to copyright in areas where current laws are not seen to be fit for purpose, especially in the online environment.131 So we can expect to see this area develop further. Artistic works are unlikely to be given special treatment under the new regimes (although the Copyright in the Digital Single Market does specifically deal with works of visual art in the public domain),132 but the ubiquity of images in our society and online will continue to test online copyright laws – through the operation of visual search engines, the exploitation online of so-called orphan works (works whose copyright owner cannot be found), the development of online artistic communities and platforms (including Instagram) (whether image-sharing sites or collaborative sites to create artistic works including through appropriation) and so on. Some of these areas are explored in greater detail below in chapters six and seven.

Suggested Further Reading R Catlow, M Garrett, N Jones & S Skinner, Artists Re:Thinking the Blockchain (Torque Editions and Furtherfield, 2017) (available at https://torquetorque.net/wp-content/uploads/ ArtistsReThinkingTheBlockchain.pdf (accessed 7 March 2020)) R Denicola, ‘Ex Machina: Copyright Protection for Computer-Generated Works’ (2016) 69 Rutgers University Law Review 251

128 In the digital context this includes cases relating to what a copyright work is and the originality required for copyright protection (eg Infopaq International A/S v Danske Dagblades Forening [2009] EUECJ C-5/08), exhaustion of rights (eg Nederlands Uitgeversverbond and Groep Algemene Uitgevers (Harmonisation of certain aspects of copyright and related rights in the information society – Abstract) [2019] EUECJ C-263/18) and the nature of the communication public right (eg Svensson and Others v Retriever Sverige AB (Judgment of the Court) [2014] EUECJ C-466/12). 129 The effect of the European Union (Withdrawal Agreement) Act 2020 and the European Union (Withdrawal) Act 2018 is that once transition ends EU law in the UK will ‘crystallise’ at that date and the UK courts will continue to apply it as it stood at that date unless Parliament determines otherwise in future. 130 See, eg, Lumen formerly Chilling Effects – www.lumendatabase.org/ (accessed 14 March 2020). 131 See, eg, some of the recommendations in the Hargreaves Review (above n 116) a number of which were implemented into UK law in 2014. Also, the EU’s DSM strategy looked into this and the Copyright in the Digital Single Market Directive has some provisions here. 132 Article 14 – see below, section 6.1.

Art, Copyright Legislation and the Digital Future 125 A Guadamuz, ‘Do androids dream of electric copyright? Comparative analysis of originality in artificial intelligence generated works’ (2017) 2 Intellectual Property Quarterly 169–186 T Pinto, ‘Robo ART! The Copyright Implications of Artificial Intelligence Generated Art’ (2019) 30 Entertainment Law Review 6 E Rennie, J Potts and A Pochesneva, ‘Blockchain and the Creative Industries’, Provocation Paper (RMIT University, Melbourne, Australia, November 2019) available at https://apo.org.au/sites/ default/files/resource-files/2019/11/apo-nid267131-1398946.pdf (accessed 7 March 2020) S Stokes, Digital Copyright: Law and Practice, 5th edn (Oxford, Hart Publishing, 2019)

6 Some Current Issues IN THIS CHAPTER a number of current issues relating to the relationship between copyright and art are examined: 1. 2. 3. 4. 5. 6. 7. 8. 9.

copyright in photographs of public domain artistic works; the use of Internet visual search engines; image-sharing, user-generated works and online artistic collaboration; modern art and copyright (including films, video and performances); orphan works; art, originality, infringement and EU copyright law; the effect of Brexit on UK copyright law relating to artistic works; freedom of panorama; and traditional cultural expressions (including indigenous art).

6.1. Copyright in Photographs of Public Domain Artistic Works1 It has been a matter of considerable debate in UK copyright law as to the standard of originality required for photographs to benefit from copyright protection. In particular, to what extent should photographs that are simply faithful reproductions in two dimensions of three- or two-dimensional artistic works be protected? This question is of special importance to picture libraries, museums and galleries that exploit photographs of artistic works for commercial gain or fundraising purposes, as well as to publishers. The discussion here focuses on photographs of public domain works of art, ie, photographs of artistic works where the copyright in the original work has expired. 1 See S Stokes, ‘Copyright in Photographs of Works of Art: The Bridgeman Litigation’ (2000) 5 Art, Antiquity and Law 47; and S Stokes, ‘Graves’ Case Revisited in the USA: Bridgeman Art Library Ltd v Corel Corporation’ (2000) 5 Entertainment Law Review 104, upon which part of this section is based. For a more recent survey of the issues from a European perspective see T Magoni, ‘The digitisation of cultural heritage: originality, derivative works and (non) original photographs’ (2015) Institute for Information Law, Faculty of Law, University of Amsterdam – paper available at https://www.ivir.nl/publicaties/download/1507.pdf and also by the same author ‘Digitising the Public Domain: Non Original Photographs in Comparative EU Copyright Law’ in J Gilchrist and B Fitzgerald (eds) Copyright, Property and the Social Contract (Cham, Springer, 2018). For a more general discussion of copyright in photographs of paintings and a review of recent European cases see R Arnold, ‘Paintings from photographs: a copyright conundrum’ (2019) 50(7) International Review of Intellectual Property and Competition Law, 860–878.

Copyright in Photographs of Public Domain Artistic Works 127 In this scenario the only relevant copyright is that in any photographs taken. Additional considerations apply where the work of art itself is protected by copyright – in such circumstances taking a photograph will be a reproduction of the work and as noted in chapter 3 that will amount to copyright infringement by the photographer unless the copyright owner of the work consents (including through a licence via a collecting society) or the photographer benefits from a copyright exception. This issue is of considerable complexity. UK law unlike certain other European states only protects ‘original’ photographs; there is no lesser form of ‘related rights’ protection for non-original photographs as there is in Germany, Spain, Italy, Austria, Denmark, Finland, Sweden, Iceland and Norway.2 When this issue was discussed in earlier editions of this book the debate centred on how UK law has traditionally applied the originality standard to photographs and in particular those of artistic works. This is discussed in sections 6.1.1–6.1.3 largely retaining the text of previous editions. The leading UK case, Graves’ Case, dates back to 1869.3 But more recently, a US District Court reconsidered Graves’ Case in a surprising series of decisions in Bridgeman Art Library Ltd v Corel Corporation,4 and the UK High Court also considered the matter in the context of photographs of (three-dimensional) antiques in July 2000 (though Graves’ Case was not referred to).5 The Bridgeman litigation occasioned a great deal of comment at the time and generated a debate about whether photographs of public domain art works ought to benefit from copyright protection, discussed in section 6.1.3 below. In the meantime, UK copyright owners of such photographs continued to operate on the basis copyright applied to these sorts of photographs. However, by the end of the first decade of this century two important developments had added a new European dimension to the issue, which is explored in sections 6.1.4 and 6.1.5 below. First there has been a growing movement to ensure access to public domain information and documentation including library and museum collections, especially if such institutions were in the public sector. In particular in 2008 the European Commission had commented on barriers to the use of public domain works and that these barriers could limit the accessibility and usability of the material, for example through Europeana.6 The Commission stressed the ‘importance of keeping public domain works accessible after a format shift. In other words, works in the public domain should stay there once digitised and be made accessible through the internet.’7 If this was true for digitising library collections why not also the collections of art museums and galleries where digital images of their public domain art works were concerned?8 This approach has gained momentum and by 2019 the Commission’s Digital Single Market initiative had resulted in the Directive on copyright and related rights in the Digital Single Market

2 See Margoni (2015) (above n 1) 28 and Annex I. 3 (1869) LR 4 QB 715. 4 US District Court, Southern District of New York, 26 February 1999, Lewis A Kaplan J, 97 Cir 6232 (LAK). See the New York Law Journal (24 February 1999) for a brief discussion. 5 Antiquesportfolio.com plc v Rodney Fitch and Co Ltd [2001] FSR 23 (ChD) Neuberger J. 6 www.europeana.eu/portal/en – this is the EU digital platform for cultural heritage. 7 Europe’s cultural heritage at the click of a mouse: Progress on the digitisation and online accessibility of cultural material and digital preservation across the EU, COM(2008)513 final, 7. 8 For background as of 2010 see R Deazley, ‘Photographs, copyright and the South Kensington experiment’ (2010) 3 Intellectual Property Quarterly 292–331.

128 Some Current Issues (‘DSM Copyright Directive’) which includes specific provisions relating to works of visual art in the public domain.9 Article 14 requires Member States to provide that, when the term of protection of a work of visual art has expired, any material [not defined] resulting from an act of reproduction of that work is not subject to copyright or related rights, unless the material resulting from that act of reproduction is original in the sense that it is the author’s own intellectual creation. So a photograph of a public domain painting, say, would appear to be ‘material resulting from an act of reproduction of the painting’ so could not be subject to copyright or related rights (some Member States give related rights protection for certain classes of ‘unoriginal’ photographs as noted earlier) unless it is the author’s own intellectual creation. Which of course begs the question of what is meant by the author’s own intellectual creation. We return to this below. Recital 53 gives the rationale for the provision which reflects the previous discussion of the European Commission’s desire to promote access to culture online.10 Member States have until 7 June 2021 to implement its provisions. This Article is controversial and is further discussed in section 6.1.5 below. Second there has been the ongoing development of European copyright law through decisions of the CJEU which UK courts have been obliged to follow. In particular, a European test for originality has emerged – as a UK case involving photographic copyright in 2012 noted – ‘the impact of European Union law [has] meant that the judgment of the CJEU in the Infopaq case (C-5/08)11 was such that copyright may subsist in a photograph if it is the author’s own ‘intellectual creation’.12 This test of course is also referred to in Article 14 of the DSM Copyright Directive. What this test is and how it might differ from the traditional UK approach is discussed in section 6.1.4. Before this the traditional UK approach to the originality of photographs in the context of photographs of artistic works prior to the developments noted in sections 6.1.4 and 6.1.5 is considered.

6.1.1. Graves’ Case (1869) Before looking at the Bridgeman case, it is worth recapping what was in issue in Graves’ Case. Graves’ Case was a case under the Fine Art Copyright Act 1862, which was the first to accord photographs copyright protection in English law. Section 1 of the Act afforded 9 Directive (EU) 2019/790. The provisions are Article 14 and Recital 53. 10 Recital 53 states: ‘The expiry of the term of protection of a work entails the entry of that work into the public domain and the expiry of the rights that Union copyright law provides in relation to that work. In the field of visual arts, the circulation of faithful reproductions of works in the public domain contributes to the access to and promotion of culture, and the access to cultural heritage. In the digital environment, the protection of such reproductions through copyright or related rights is inconsistent with the expiry of the copyright protection of works. In addition, differences between the national copyright laws governing the protection of such reproductions give rise to legal uncertainty and affect the cross-border dissemination of works of visual arts in the public domain. Certain reproductions of works of visual arts in the public domain should, therefore, not be protected by copyright or related rights. All of that should not prevent cultural heritage institutions from selling reproductions, such as postcards.’ 11 [2010] FSR 20. 12 HH Judge Birss QC in Temple Island Collections Ltd v New English Teas Ltd & Anor [2012] EWPCC 1, 18. The judge also referred to the (then) recent judgment of the CJEU in the Painer case (C-145/10, 1 December 2011) being of the same effect (18).

Copyright in Photographs of Public Domain Artistic Works 129 to the author (being a British subject or resident within the dominions of the Crown) of every original painting, drawing, and photograph inter alia the sole and exclusive right of copying, engraving, reproducing, and multiplying such painting or drawing, and the design thereof, or such photograph, and negative thereof, by any means and of any size. In this case, the defendant was charged with infringing Henry Graves’ copyright in a number of paintings and three photographs. Of particular relevance were the photographs: these were taken from three engravings made for Graves; the copyright in the engravings belonged exclusively to Graves; and they were the first and only photographs of these subjects. One of the points at issue in the case was whether the photographs were protected by copyright.13 Counsel in support of Graves argued that there was copyright: a photograph from an engraving of a picture is an original photograph and hence by implication protected by the Act. In opposition, it was stated that these photographs were not original photographs as they were taken from a work of art; they were mere copies of the engraving, not original in the sense intended in section 1 of the Act. The relevant part of Blackburn J’s judgment, with which the other two judges agreed, is as follows: It has been argued that the word ‘original’ is to be taken as applying to a photograph. The distinction between an original painting and its copy is well understood, but it is difficult to say what can be meant by an original photograph. All photographs are copies of some object, such as a painting or a statue. And it seems to me that a photograph taken from a picture is an original photograph, in so far as to copy it is an infringement of this statute.14

Indeed, Blackburn J’s judgment hits on the central issue: all photographs are a copy of something. In this sense, they are different from other artistic works. So what is the standard of originality required by English law? The prevailing and traditional view was that expressed in Copinger, a leading textbook: Provided that the author can demonstrate that he expended some small degree of time, skill and labour in producing the photograph (which may be demonstrated by the exercise of judgement as to such matters as the angle from which to take the photograph, the lighting, the correct film speed, what filter to use, etc), the photograph ought to be entitled to copyright protection, irrespective of its subject matter.15

This view gained general acceptance by those exploiting photographic libraries and using photographs, although in 1995 the application of Graves’ Case as authority for 13 It is also worth noting a case predating Graves, Newton v Cowie and Another [1827] 4 Bing 234, 130 ER 759, which concerned the piracy of nine engraved copies of drawings – another case involving the reproduction by mechanical means of another artistic work. What copyright in an engraving protected, according to Best CJ, was not the picture from which the engraving was taken (another engraver could equally well copy that); rather, the labour of the engraver was protected: ‘The engraver, although a copyist, produces the resemblance by means very different from the painter or draftsman from whom he copies – means which require great labour and talent … The … engraver does not claim the monopoly of the use of the picture from which the engraving is made; he says, take the trouble of going to the picture yourself, but do not avail yourself of my labour, who have been to the picture, and have executed the engraving’ (245–46). 14 Graves’ Case (above n 3) 723. 15 K Garnett et al, Copinger and Skone James on Copyright, 14th edn (London, Sweet & Maxwell, 1999) [hereafter ‘Copinger (1999)’] 3-104. This was cited with approval by Neuberger J in Antiquesportfolio.com v Rodney Fitch (above n 5).

130 Some Current Issues establishing the standard of originality to be used was questioned in the second edition of another textbook, Laddie.16 So it was with considerable surprise that at the end of 1998, the Bridgeman Art Library found that a US district court denied copyright protection to their picture library images when they attempted to sue Corel for copyright infringement – the Court citing English law as authority for its decision. This case is worthy of careful review.

6.1.2. The Bridgeman Case (1998) The plaintiff was (and remains) a leading British art library founded by Lady Bridgeman. It has a large collection of photographs (both as transparencies and digital image files) taken of works of art that are themselves out of copyright (ie, in the public domain), but Bridgeman claims copyright in the photographs. Corel was a leading Canadian software house and had recently started to market a CD-ROM collection of reproductions of paintings by European masters in the United States, United Kingdom and Canada. This was called ‘Professional Photos CD-ROM Masters’. The images were bought from ‘Off the Wall Images’, a company that no longer exists. Bridgeman claimed that Corel had infringed 120 of its images of paintings in the public domain by including these images on its CD-ROM. It was claimed that Corel’s digital images must have been copied from the Bridgeman reproductions because no other authorised reproductions of those works existed. Bridgeman sued in the New York federal court, alleging copyright infringement and other claims. Both parties moved for summary judgment. On 13 November 1998, the Southern District Court of New York granted the defendant’s motion for summary judgment, dismissing the plaintiff ’s copyright infringement claim on the alternative grounds that the allegedly infringed works – colour transparencies of paintings that themselves were in the public domain – were not original and therefore not permissible subjects of valid copyright and, in any case, were not infringed.17 The Court applied UK law in determining whether the plaintiff ’s transparencies were protected by copyright and applied US law to determine if there was infringement. The Court noted, however, that it would have reached the same result under US law. Additionally, the Court held that even if the photographs were protected by copyright, they could not be infringed by Corel’s photographs, as the only similarity between them was that ‘both are exact reproductions of public domain works of art.’ Under well-settled US law, where the only similarity between two works relates to uncopyrightable elements, there can be no infringement as a matter of law.18 Following the entry of final judgment, the Court, in the words of Judge Kaplan, ‘was bombarded with additional submissions’. On 23 November 1998, the plaintiff moved for re-argument and reconsideration, arguing that the Court erred on the issue of originality. It asserted that the Court had ignored the US Register of Copyright’s issuance 16 HIL Laddie, P Prescott, and M Vitoria The Modern Law of Copyright and Designs, 2nd edn (London, Butterworths, 1995) [hereafter ‘Laddie, 2nd edn’] 3.56. See discussion below. 17 The Bridgeman Art Library Ltd v Corel Corp, 25 FSupp 2d 421 (SDNY 1998). 18 For a discussion of the first decision, see the case note in (1999) Entertainment Law Review N-32 by Robert W Clarida.

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

Nevertheless, as the Judge felt the issues were significant beyond the immediate interests of the parties, he was prepared to allow a re- argument and reconsideration of the case. Judge Kaplan considered Professor Patry’s arguments and US law generally, especially in relation to: the Copyright Clause of the Constitution, which permits Congress to enact legislation protecting only original works, with originality determined in accordance with the meaning of the Copyright Clause;19 and the Copyright Clause’s relation to the Berne Convention, the Universal Copyright Convention and the US Berne Convention Implementation Act (BCIA) 1988. After a technical review of the law relating to treaties such as the Berne Convention and their effect on the protection of foreign copyrights in the United States, the Judge considered it was quite clear that whilst US copyright law (the Copyright Act 1976, as amended by the BCIA) extends certain copyright protection to the holders of copyright in Berne Convention works, the Copyright Act is the exclusive source of that protection. Accordingly, in the case of the photographs in issue, the subsistence of copyright in them was properly a question of US law, which limits such copyright protection to ‘original works of authorship’.20

US Law The Court’s previous opinion was that the plaintiff ’s exact photographic copies of public domain works of art would not be protected by copyright under US law because they were not original. In view of the Court’s conclusion here that US law governed on this issue, the Judge considered it appropriate to give a somewhat fuller statement of

19 US 20 S

Constitution, Art I §8, Cl 8. 102(a) Copyright Act 1976.

132 Some Current Issues the Court’s reasoning. According to the Judge, it is clear US law that photographs are ‘writings’ within the meaning of the Copyright Clause of the US Constitution.21 In short, in US law, according to Judge Kaplan, ‘there is broad scope for copyright in photographs because ‘a very modest expression of personality will constitute sufficient originality’’.22 The Judge cited a leading US copyright text, Nimmer on Copyright, to the effect that there ‘appear to be at least two situations in which a photograph should be denied copyright for lack of originality’, one of which the Judge considered directly relevant here: ‘where a photograph of a photograph or other printed matter is made that amounts to nothing more than slavish copying’.23 Nimmer thus concluded, according to the Judge, that a slavish photographic copy of a painting would lack originality. Also, the Judge was of the view that there was little doubt that many photographs (probably the overwhelming majority) reflect at least the modest amount of originality required for copyright protection. This could include posing the subjects, lighting, choosing angle, selecting film and camera, evoking the desired expression and almost any other variant involved.24 However, ‘slavish copying’, though doubtless requiring technical skill and effort, does not qualify.25 He also referred to the Supreme Court in Feist Publications Inc v Rural Telephone Service Co,26 where ‘sweat of the brow’ alone was not the ‘creative spark’ that was the sine qua non of originality. The Judge found that in this case, the plaintiff by its own admission had laboured to create ‘slavish copies’ of public domain works of art. Thus he had no difficulty in finding that ‘while it may be assumed that this required both skill and effort, there was no spark of originality – indeed, the point of the exercise was to reproduce the underlying works with absolute fidelity.’ He therefore found that the works were not original and not protected by copyright. The Judge also discussed the plaintiff ’s technical defence that as the US Register of Copyright issued a certificate of registration for one of the plaintiff ’s transparencies, this demonstrated that its photographs were protected by copyright under US law. The Judge considered this argument misguided: while the certificate was prima facie evidence of

21 He cited in particular Burrow-Giles Lithographic Co v Sarony 111 US 53 (1884). 22 See MB Nimmer and D Nimmer, Nimmer on Copyright (New York, M Bender, 1998) [hereafter ‘Nimmer’] §2.08[E][1], 2-130. 23 Ibid, 2-131. 24 Judge Kaplan cited Rogers v Koons, 960 F.2d 301, 307 (2d Cir), 506 US 934 (1992); and Leibovitz v Paramount Pictures Corp, 137 F 3d 109, 116 (2d Cir, 1998). 25 Judge Kaplan cited Hearn v Meyer, 664 F Supp 832 (SDNY 1987), where according to Judge Kaplan, Judge Leisure held that ‘slavish copies’ of public domain reproductions of public domain original works of art were not protected by copyright, despite the great skill and effort involved in the copying process, as well as minor but unintentional variations between the copies and the works copied. 26 499 US 340 (1991). In light of this, Judge Kaplan also commented that it was not entirely surprising that an attorney for the Museum of Modern Art – ‘an entity with interests comparable to plaintiffs and its clients’ – not long ago presented a paper acknowledging that a photograph of a two-dimensional public domain work of art ‘might not have enough originality to be eligible for its own copyright’. Judge Kaplan cited B Wolff, ‘Copyright’ in Legal Problems of Museum Administration, American Legal Institute/American Bar Association (ALI-ABA) course of study C989 (Washington, DC, ALI-ABA, 1995) 27, 48; and LA Greenburg, ‘The Art of Appropriation: Puppies, Piracy, and Post-Modernism’ (1992) 11(1) Cardozo Arts & Entertainment Law Journal 20–21 (photographic copies of original art photographs taken by the famous photographer Edward Weston, which were made to ‘deconstruct the myth of the masterpiece’, were not copyrightable).

Copyright in Photographs of Public Domain Artistic Works 133 the validity of the copyright,27 including the originality of the work, the presumption was not irrebuttable.28 Here, the Judge was of the view that the facts pertinent to the issue of originality were undisputed. The Court held as a matter of law that the plaintiff ’s works were not original under either British or US law and therefore not entitled to copyright protection.

UK Law Although Judge Kaplan concluded that his decision as to the law governing the subsistence of copyright rendered the point moot, it is surprising nevertheless that he felt able to state that the plaintiff ’s copyright claim would fail even if the governing law were that of the United Kingdom, as opposed to US law. According to the Judge, the plaintiff ’s attack on the Court’s previous conclusion that its colour transparencies were not original and therefore not protected by copyright under British law depended primarily on its claim that the Court failed to apply Graves’ Case, the supposedly controlling authority that the plaintiff did not even cite in its opposition to the defendant’s motion for summary judgment. In particular, the judgment of Blackburn J in Graves’ Case quoted above was cited. The plaintiff and the amicus in its brief argued that the plaintiff ’s photographs of public domain paintings were protected by copyright under British law on the clear authority of Graves’ Case. Judge Kaplan, however, was of the view that the antiquity of Graves’ Case was overlooked, as well as the subsequent development of the law of originality in the United Kingdom. In particular, one of the leading UK copyright texts, the second edition of Laddie,29 was cited in detail by the Judge, to the effect that originality presupposes the exercise of substantial independent skill, labour, judgement and so forth. According to Laddie, there was room for originality in a photograph in three respects. First, there can be originality that does not depend on the creation of the scene or object to be photographed – this includes the angle of shot, light and shade, exposure, effects achieved by means of filters, developing techniques, etc: ‘in such manner does one photograph of Westminster Abbey differ from another, at least potentially.’30 Secondly, there may be creation of the scene or subject to be photographed, such as the arrangement or posing of a group. Thirdly, a person may create a worthwhile photograph by being at the right place at the right time and capturing and recording a scene unlikely to recur. Judge Kaplan then discussed Laddie’s questioning of the continued authority of Graves’ Case under the above analysis. Laddie states: It is submitted that Graves’ Case … does not decide the contrary, since there may have been special skill or labour in setting up the equipment to get a good photograph, especially with the rather primitive materials available in those days. Although the judgments do not discuss

27 S 410(c) Copyright Act 1976. 28 Eg, Lakedreax v Taylor, 932 F2d 1103, 1108 (5th Cir 1991). Indeed, the Copyright Act leaves the ‘evidentiary weight to be accorded the certificate [to] the discretion of the court’: s 410(c). 29 Laddie, 2nd edn (above n 16). 30 Ibid, 3.56.

134 Some Current Issues this aspect it may have been self-evident to any contemporary so as not to require any discussion. If this is wrong it is submitted that Graves’ Case is no longer good law and in that case is to be explained as a decision made before the subject of originality had been fully developed by the courts.31

This analysis, according to the Judge, was quite pertinent to the Bridgeman case. Most photographs, according to the Judge, are ‘original’ in one if not more of the three respects set out in Laddie – and therefore are protected by copyright. But the plaintiff ’s difficulty here was that it was seeking protection ‘for the exception that proves the rule’: photographs of existing two-dimensional articles (in this case works of art), each of which reproduces the article in the photographic medium as precisely as technology permits. ‘Its transparencies stand in the same relation to the original works of art as a photocopy stands to a page of typescript, a doodle, or a Michelangelo drawing.’32 Although the plaintiff argued that the photocopier analogy was inapt because taking a photograph requires greater skill than making a photocopy, and the transparencies involved a change in medium, according to Judge Kaplan, ‘the argument is as unpersuasive under British as under US law … The allegedly greater skill required to make an exact photographic, as opposed to Xerographic or comparable, copy is immaterial.’ The Judge then went on to refer to the Privy Council case of Interlego AG v Tyco Industries,33 in which it was held, ‘Skill, labour or judgement merely in the process of copying cannot confer originality.’34 This point, according to Judge Kaplan, was exactly the same as the lack of protection under US law for a ‘slavish copy’. Nor was the change in medium (ie, from painting to photograph), standing alone, significant: [A] copy in a new medium is copyrightable only where, as often but not always is the case, the copier makes some identifiable original contribution. In the words of the Privy Council in Interlego AG, ‘There must … be some element of material alteration or embellishment which suffices to make the totality of the work an original work.’35

Indeed, Judge Kaplan considered that the plaintiff ’s expert effectively conceded the same point, ‘noting that copyright ‘may’ subsist in a photograph of a work of art because ‘change of medium is likely to amount to a material alteration from the original work, unless the change of medium is so insignificant as not to confer originality’’.36 The Judge was of the view, as the Court noted in its earlier opinion, ‘It is uncontested that Bridgeman’s images are substantially exact reproductions of public domain works, albeit in a different medium.’37 There was no suggestion that they varied significantly from the underlying works. In consequence, the change of medium was immaterial, according to the Judge.

31 Ibid, 239 fn 3. 32 The Judge noted that the plaintiff conceded that a photocopy was not original and hence not copyrightable. 33 [1988] 3 All ER 949, 970 (appeal taken from Hong Kong). 34 Ibid, 971 (per Lord Oliver). 35 Bridgeman (above n 17) para 35, citing Interlego (above n 33) 972 (per Lord Oliver). 36 Bridgeman (above n 17). 37 Ibid, 426. The Judge noted that Lady Bridgeman, the plaintiff ’s principal, testified that the goal of the transparencies was to be as true to the original work as possible: Bridgeman Dep 15.

Copyright in Photographs of Public Domain Artistic Works 135

6.1.3. Comment on Bridgeman on the Basis of UK Law Before Infopaq38 and the Development of a European Standard of Originality by the CJEU The seriousness of the issues raised in Bridgeman caused the UK Museums Copyright Group, which assists museums with copyright matters, to both commission an in-depth report on the case and also seek a written opinion from the leading copyright barrister Jonathan Rayner James QC (one of the authors of Copinger (1999)). According to the Group, Mr Rayner James had no doubt that UK copyright law protects works of art, citing him as follows: [A]s a matter of principle, a photograph of an artistic work can qualify for copyright protection in English law, and that is irrespective of whether … the subject of the photographs is more obviously a three-dimensional work, such as a sculpture, or is perceived as a twodimensional artistic work, such as a drawing or a painting.39

Bridgeman is not, of course, binding on UK courts. Also, it can be argued that the picture library images in question, by virtue of the careful photography and lighting involved in order to show artistic works to best effect (better probably than a gallery visitor would see), in no way compare to mere photocopies or slavish copies. Nevertheless, Judge Kaplan’s careful review of the English authorities in his second decision, in particular the important Privy Council case of Interlego v Tyco, is of considerable interest. It is at least arguable that the antiquity of Graves’ Case and the particular facts in issue (the owner of the copyright in the photographs and the engravings was the same person, and they were the first and only photographs of these subjects) mean that Graves’ Case is now less than persuasive, especially in the light of the Privy Council in Interlego v Tyco. The following comments of Lord Oliver in Interlego v Tyco (cited in part by Judge Kaplan) about what the test of originality should be seem particularly relevant: Originality in the context of literary copyright has been said in several well known cases to depend on the degree of skill, labour and judgement involved in preparing a compilation … [T]he amount of skill, judgement or labour is likely to be decisive in the case of compilations. To apply that, however, as a universal test of originality in all copyright cases is not only unwarranted by the context in which the observations were made but palpably erroneous. Take the simplest case of artistic copyright, a painting or a photograph. It takes great skill, judgement and labour to produce a good copy by painting or to produce an enlarged photograph from a positive print, but no one would reasonably contend that the copy painting or enlargement was an ‘original’ artistic work in which the copier is entitled to claim copyright. Skill, labour or judgement merely in the process of copying cannot confer originality.40

It is therefore submitted that following Bridgeman, there was some doubt about the copyright protection of photographs that are themselves simply copies of other artistic

38 Infopaq International A/S v Danske Dagblades Forening [2009] EUECJ C-5/08. 39 See the Museums Copyright Group Press Release of December 1999. The author is grateful to Emma Williams of the Museums Copyright Group for this information. See also the 2004 publication of the Group’s ‘Copyright in Photographs of Works of Art’, available at www.museumscopyright.org.uk/.htm. 40 Interlego v Tyco (above n 33) 971.

136 Some Current Issues works. Graves’ Case may no longer be good law. Having said that, there are contrary arguments: these and a case in a similar area, Sawkins v Hyperion Records Ltd, are considered below.41 Bridgeman was also criticised by another leading copyright barrister, Kevin Garnett QC.42 He saw the reasoning in the case as flawed. In particular, he viewed Lord Oliver’s speech in Interlego as clearly obiter, as not addressing the specific issue and furthermore as not taking into account Graves’ Case or the House of Lords in the later case of Walter v Lane.43 In particular, it is clear that photographs are protected by copyright irrespective of their artistic quality, and the skill of the photographer is often to faithfully reproduce what is in front of the camera. In many ways, according to Garnett, such a skill is analogous to a reporter who faithfully reproduces the spoken words of a speaker, as in Walter v Lane. Mere photocopies are also different in kind from the photographs in Bridgeman: photocopying is a wholly mechanical process. Also, although it is a copy of a painting, such a photograph is nevertheless different in character and quality from the painting and therefore is sufficiently different to secure copyright protection, though the photograph is derived from the painting. Garnett’s arguments were critically considered in 2001 by Ronan Deazley, who argued that UK courts should follow the US lead in Bridgeman and hold that exact photographic reproductions of works in the public domain are not protected by copyright.44 Nevertheless, a consideration of other authorities and the context of Interlego can be used to challenge Bridgeman. Another helpful case, which Garnett does not cite, is Martin v Polyplas,45 in which copyright protection was given to a coin engraved in three dimensions from a drawing.46 Finally, a case similar to but by no means the same as Bridgeman, Antiquesportfolio. com v Fitch, was heard by the High Court in London in an application for summary judgment.47 Antiquesportfolio concerned inter alia whether copyright could subsist in photographs of antiques (ie, three-dimensional items, as opposed to the photographs of paintings considered in Bridgeman). The authorities discussed earlier – namely, 41 As noted below, regard should also be had to the more recent decision of the Court of Appeal to grant copyright protection to faithfully edited musical scores themselves out of copyright, which could be used to argue in favour of protecting the Bridgeman photographs: Hyperion Records Ltd v Sawkins [2005] EWCA Civ 565 (19 May 2005). 42 K Garnett, ‘Copyright in Photographs’ (2000) European Intellectual Property Review 229. (The author is also a contributing author of Copinger (1999) (above n 15)). 43 [1900] AC 539. This case concerned literary copyright: the House of Lords held that an independent reporter’s copyright subsisted in the verbatim report of a public speech. The status of this case was, according to Garnett, recently confirmed by Browne-Wilkinson V-C in Express Newspapers plc v News(UK) Ltd [1990] 1 WLR 1320, 1325: ‘As a result of [Walter v Lane] it was established that the mere reporting of the words of another gives rise to a reporter’s copyright so long as skill and judgment have been employed in the composition of the report.’ 44 R Deazley, ‘Photographing Paintings in the Public Domain: A Response to Garnett’ (2001) European Intellectual Property Review 179. See also S Stokes, ‘Letter to the Editor’ (2001) European Intellectual Property Review 354; and R Deazley, ‘Letter to the Editor: In Response to Simon Stokes’ (2001) European Intellectual Property Review 601. 45 [1969] NZLR 1046. 46 See WR Cornish, Intellectual Property, 4th edn (London, Sweet & Maxwell, 1999) 388. See also Newton v Cowie (above n 13), which predates Graves’ Case. 47 Antiquesportfolio.com v Rodney Fitch (above n 5).

Copyright in Photographs of Public Domain Artistic Works 137 Bridgeman, Copinger (1999) and Laddie (second edition), as well as the US text Nimmer on Copyright,48 but not Graves’ Case – were all considered by Neuberger J. He was of the view that the positioning of the three-dimensional object in question (unless it was a sphere), the angle at which it was taken, the lighting and focus, etc could all be matters of aesthetic or even commercial judgement, albeit at a very basic level. In particular, in this case, the photographs appeared to have been taken with a view to showing particular aspects and features of the items, such as their colour, the glaze (in the case of pottery) and other details. He also thought a relevant factor may be that the photographer had chosen particular items as either typical or especially fine examples of the artefact in question. Taking all these factors together, he held that the photographs were protected by copyright. Nevertheless, the Judge expressly did not decide whether copyright could subsist in photographs of paintings. However, he did observe that, as was suggested in Nimmer on Copyright, such photographs could well be protected by copyright if the photographer could show he had used some degree of skill and care in taking the photograph – this would be sufficient to make them ‘original’ for copyright purposes. In light of Antiquesportfolio, it is submitted that in the United Kingdom, the Bridgeman photographs would still be likely to benefit from copyright protection if the UK courts were to take a traditional approach to the matter, despite the uncertainties surrounding the application of Graves’ Case. It is hard to see how a court applying traditional UK copyright law could reasonably make a distinction between photographs of two- and three-dimensional items: the labour and skill in aspects of selection, focus, angle, shutter speed, lighting, etc are common to both sorts of photograph. There may be more choice in how to photograph a three-dimensional object in terms of aspect, positioning and background; but arguably, sufficient skill and labour will be involved in photographing a picture as well.49 Certainly that has been the position of those advising museums and galleries in the United Kingdom. For example, in 2009 the National Portrait Gallery, through their solicitors, Farrer & Co, alleged copyright infringement against US citizen Derrick Coetzee, on the basis that he had infringed the Gallery’s copyright in several thousand

48 Ibid, 2.130. 49 It is also interesting to note what Neuberger J said in the context of what copyright in a photograph protects (where there is infringement). In Antiquesportfolio, the infringing photographs (taken from Millers Antiques Encyclopaedia, in which Reed Books claimed copyright) were reproduced in various sizes on the claimant’s website, which was prepared by the defendants (which Neuberger J held to be copyright infringement); the photographs were also traced by the defendants to create logos, watermarks and business cards for the claimant. In the latter case, Neuberger J considered Copinger (1999) (above n 15) 7-86 as representing the law on determining copyright infringement of photographs. In particular, what copyright serves to protect is the author’s work of origination: so a photograph can be infringed both by literal copying and also where the defendant recreates the feeling and artistic character of the photograph where a substantial part of the photograph is thereby taken. The Judge held that tracing the photographs did not amount to copyright infringement: the feeling and artistic character of the photographs were not taken; nor was there any substantial taking of the photographer’s skill and labour – ie, the focusing, camera angle, lighting, etc were not appropriated; the logos were not very detailed; and their shape was determined by the shape of the object in the photograph in question. However, whether a detailed drawing of a photograph of a nineteenth-century bureau used on a brochure cover infringed was left to trial, although the Judge suspected it did infringe.

138 Some Current Issues photographs of works of art by uploading them to the Wikimedia Commons, a free online media repository; Coetzee claimed the works were in the public domain under US law.50 This legal action and the issues it raises are considered further below in section 6.3. In terms of scholarly legal analysis of the status of works such as the Bridgeman photographs – ie, ‘recreative’ works that ‘have been derived from, and which purport to be perfectly accurate copies of, antecedent works that were created at an earlier point in history’51 – it has been argued that copyright protection ought to apply due to the ‘originality’ involved in the recreative process itself, even if the works in question appear to be exact copies of the antecedent works (and in that sense lacking originality). ‘Any intellectual skill, labour or judgement that has gone into the recreation, replication, reconstruction or reproduction of the antecedent work should be relevant towards assessing the originality of these works.’52 Indeed, if the approach in Bridgeman (buttressed by the Court of Appeal decision in Sawkins v Hyperion Records53) is followed, then there is no reason why restored and reconstituted manuscripts, sheet music, paintings and films (on the basis the underlying work is out of copyright) should not potentially benefit from copyright protection by virtue of the restorer’s art – this copyright vesting in the restorer.54 This analysis was written in 2011 – to what extent does it hold true in 2020?55

50 See http://en.wikinews.org/wiki/U.K._National_Portrait_Gallery_threatens_U.S._ citizen_with_legal_ action_over_Wikimedia_images (accessed 9 November 2011). 51 B Ong, ‘Originality from Copying: Fitting Recreative Works into the Copyright Universe’ (2010) 2 Intellectual Property Quarterly 165–91, 167. 52 Ong (ibid) 189. In his fascinating article, Ong considers the Bridgeman case, as well as the reconstructed dead sea scrolls, the restored Sistine Chapel frescoes and an important English case relating to musical copyright (Sawkins v Hyperion Records Ltd (above n 41)). Is there copyright in the restored Sistine Chapel frescoes? And is there copyright in the performing editions of French baroque musical editions where the original scores have been edited to reproduce faithfully the composer’s original intentions? Sawkins v Hyperion Records is clearly helpful to Ong’s argument (and indeed the arguments advanced in this section of this book) that recreative works such as the Bridgeman photographs should be protected by copyright. For an alternative view, see J Pila, ‘An Intentional View of the Copyright Work’ (2008) 71(4) Modern Law Review 535–58, who argues that it is key to a work being protected as a literary, dramatic, musical or artistic (‘LDMA’) work that it ‘is, and ought to be an intentional expression of an LDMA idea; meaning an intentional expression of a particular idea associated with a tradition of LDMA authorship … [E]ven skilfully produced records of works ought not to attract LDMA copyright: because they are not LDMA works’ (557). So if the creators of such records are to have copyright, it ought to be ‘mechanical copyright of the type already granted to the makers of records of other LDMA works’ (557). 53 Above n 41. This case is important when considering restored and ‘recreative’ works. 54 This is argued by Paul Torremans: P Torremans, ‘Legal Issues Pertaining to the Restoration and Reconstitution of Manuscripts, Sheet Music, Paintings and Films for Marketing Purposes’ (2011) 33(3) European Intellectual Property Review 178–88. 55 It should also be noted that since 2011 we have had the benefit of Elena Cooper’s magisterial study of artistic copyright from 1850–1911 and given the context of the Graves Case and that the courts were still developing the notion of originality as applied to photographs there are reasons to doubt the continued relevance of this case and it should be treated with caution by modern courts – she notes ‘the basis of photographic copyright in the 1860s was highly indeterminate, photographs being by implication protected by the Engraving Acts as non-original products of a “mechanical process,” and the brevity of [Blackburn] J’s judgment on the question of originality under the 1862 Act, may reflect that point’ (E Cooper, Art and Modern Copyright: The Contested Image (Cambridge, Cambridge University Press, 2018) 241).

Copyright in Photographs of Public Domain Artistic Works 139

6.1.4. European Copyright Law When the preceding sections were written in early 2011 the UK courts were still coming to terms with decisions of the CJEU regarding originality. Infopaq had concerned literary works – Painer, decided by the CJEU in December 2011, had concerned a portrait photograph, so is of particular relevance.56 The Court in Painer ruled: a portrait photograph can … be protected by copyright if, which it is for the national court to determine in each case, such photograph is an intellectual creation of the author reflecting his personality and expressing his free and creative choices in the production of that photograph.57

According to the Court in Painer an intellectual creation is an author’s own if it reflects the author’s personality and that is the case if the author was able to express his creative abilities in the production of the work by making free and creative choices. As regards a portrait photograph, the Court noted, the photographer can make free and creative choices in several ways and at various points in its production: 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. By making those various choices, the author of a portrait photograph can stamp the work created with his ‘personal touch’.58 How this approach applies in practice to photographs of public domain artistic works is far from straightforward. This is because there are a variety of ways in which such images may be made. First works may be mechanically scanned or digitised – akin to photocopying. Fine art prints, photographs and engravings appear readily susceptible to this process. If they are in the public domain then it is difficult to see in light of Painer and other EU copyright jurisprudence how such works are protected either on the basis of EU copyright law or indeed traditional UK law as they are akin to photocopies which do not merit protection under traditional UK copyright law.59 Moving on to paintings, here more skill and labour and judgement is required – such works are typically framed and cannot simply be scanned. A high quality digital image may require substantial effort and creative choices to get the right image – lighting, aperture etc. Such images might also be digitally enhanced. Here there must be arguments about whether the image is original or not under European copyright law regardless of the traditional UK approach – the issue revolves around what free and creative choices the photographer had (bearing in mind EU law requires this and that it bears the stamp of the author’s personality – if there was little room for free and creative choice on the part of the photographer then ‘sweat of the brow’ alone is not enough).60 This approach is 56 Eva-Maria Painer v Standard VerlagsGmbH and Others (Judgment of the Court (Third Chamber)) [2011] EUECJ C-145/10. Margoni (2015) (above n 1) speaks of five landmark decisions between 2009 and 2012 (including Infopaq and Painer as elaborating ‘the precise contours of the EU originality standard’ (2.2.2)). 57 Ruling (second paragraph) and see also paras 86–99. 58 Paras 88–93. 59 The Reject Shop plc v Manners [1995] FSR 870, discussed in S Stokes, Digital Copyright Law and Practice, 5th edn (Oxford, Hart Publishing) 34–35. 60 Margoni (2015) (n 1 above) 2.2.2. Margoni also comments in the context of UK law that ‘[t]he better view is in all probability that a picture of a work of art, including a painting, cannot be excluded a priori from

140 Some Current Issues reflected in UK IPO guidance.61 Arguments have also been raised by copyright scholars and art historians that such images are no longer protected by copyright (whatever the traditional UK view).62 Moving on to images of 3D works, eg sculptures, it must arguably be the case that European law and traditional UK law are on the same page here as the photographer has considerable creative freedom in how to photograph the sculpture. Having said all this, in any event the Digital Single Market Copyright Directive appears to intend to put the matter beyond doubt, at least in those countries where it is implemented (the latest date for implementation being 7 June 2021). The approach taken by the Directive is that faithful reproductions of public domain works of visual art (including 3D works such as sculptures) do not benefit from copyright protection as presumably the desire by the photographer to create a faithful reproduction must limit their free and creative choices and the resulting image lacks the stamp of their personality – so it cannot be ‘original in the sense that it is the author’s own intellectual creation’.63

6.1.5. Article 14 of the Digital Single Market Copyright Directive This provision discussed earlier is controversial. Public domain advocates see it as a good thing.64 Others, in particular those representing picture libraries, have

copyright protection just because the object photographed is not created or staged by the photographer. The deciding factor should be whether ‘taking the photograph leaves ample room for individual arrangements’ such as motives, visual angles and lighting, that is to say, to free and creative choices that can ‘embellish’ the result. Of course, the fact that the object of the photograph is fixed and pre-existing, such as in the case of an object of art or a painting, instead of being created by the photographer, reduces considerably the space for such arrangements, but does not by itself exclude completely such a possibility. In these types of cases the court should verify whether the photographer was able to put the stamp of his personality on the photograph in the act of taking the picture and eventually in its post-production, or, on the contrary, whether it represents only a mere reproduction or a slavish copy’ (47–48). 61 UK IPO Copyright Notice: digital images, photographs and the internet (Copyright Notice Number: 1/2014 Updated: November 2015): ‘… according to the Court of Justice of the European Union which has effect in UK law, copyright can only subsist in subject matter that is original in the sense that it is the author’s own ‘intellectual creation’. Given this criteria, it seems unlikely that what is merely a retouched, digitised image of an older work can be considered as ‘original’. This is because there will generally be minimal scope for a creator to exercise free and creative choices if their aim is simply to make a faithful reproduction of an existing work’ (3). 62 ` See, eg, the leading UK copyright scholar Lionel Bently quoted in The Art Newspaper (28 November 2017) (Ivan Macquisten, ‘UK museums’ right to charge image fees is called into question’): ‘The [European] Court of Justice has made it quite clear: for a photograph to be protected by copyright, it must be original in the sense that the photographer has exercised creative choices and thereby stamped the photograph with their personal imprint,’ he says. ‘A photographer who merely seeks to control light and angles to create an image of a work of art is highly unlikely to have created a copyright work.’ See also the comments of the art historian Bendor Grosvenor in March 2019 who has been critical of the practice of museum charging reproduction fees for works out of copyright: www.arthistorynews.com/articles/5362_The_end_of_museum_image_fees. 63 As required by the Directive, Art 14 to benefit from protection. Recital 53 of the Directive elaborates on this highlighting the underlying policy objective here: ‘In the field of visual arts, the circulation of faithful reproductions [emphasis added] of works in the public domain contributes to the access to and promotion of culture, and the access to cultural heritage. In the digital environment, the protection of such reproductions through copyright or related rights is inconsistent with the expiry of the copyright protection of works.’ 64 For example, www.communia-association.org/2019/06/25/implementing-copyright-directive-protectingpublic-domain-article-14/.

Copyright in Photographs of Public Domain Artistic Works 141 been highly critical. What is clear is that the European Commission sees the provisions in the Directive (noted at the start of this section 6.1) as clarifying beyond doubt that reproductions of public domain art works cannot benefit from copyright protection: What is the new provision on public domain of works of art? When a work of art is not protected by copyright anymore, for instance an old painting, it falls into the public domain. In that situation, everybody should be free to make, use and share copies of that work. This is not always the case today, as some Member States provide protection to copies of those works of art. The new Directive will make sure that nobody can claim copyright protection on works in the field of the visual arts which have already fallen into the public domain. Thanks to this provision, all users will be able to disseminate online with full legal certainty copies of works of art in the public domain. For instance, anybody will be able to copy, use and share online photos of paintings, sculptures and works of art in the public domain when they find them in the internet and reuse them, including for commercial purposes or to upload them in Wikipedia.65

However, as noted earlier, when Article 14 is looked at in detail such copies will only fall into the public domain if they are not the author’s own intellectual creation. Whilst many such reproductions will not be the author’s own intellectual creation this may not be true in all cases, see section 6.1.4 above. But as noted above one can expect Article 14 taken together with Recital 53 of the Directive to operate as a presumption in this regard in so far as the photographs/reproductions are faithful reproductions of works in the public domain.66 This approach seems flawed – if I take a photograph of an out of copyright sculpture (or even a building (a work of architecture) – which could be considered a work of visual art – the Directive does not define this) in a public place and choose an attractive shot with background showing the work in situ am I to be denied protection for my photograph? Bearing in mind that the same shot without the inclusion of the public domain work of visual art would certainly qualify for copyright protection. Or by clever lighting, siting and technology I create an old master image that reveals aspects of the painting hidden from view in the gallery? A faithful reproduction in a sense but also enhanced by the photographer. But the Directive would deny the photographer protection. The Directive also removes any related rights protection in those countries where such rights subsist. Article 14 seems likely to generate litigation as it is an unclear and incoherent piece of legislation that could deny photographers of creative works copyright protection through a misguided attempt to implement a policy objective as regards the public domain.

65 Questions & Answers: EU negotiators reach a breakthrough to modernise copyright rules. Strasbourg, 13 February 2019. 66 See Recital 53. Nevertheless Art 14 has been the subject of criticism on the grounds it is incoherent and questionable from several perspectives including violating the principle of equality under the European Charter of Fundamental Rights – see M Walter, ‘Moral Rights and Exhibition Making – Old Questions, New Answers?’ Presentation, Conference on Moral Rights in the Serial Arts, Rodin Museum, Paris, 18 October 2019.

142 Some Current Issues

6.2. Copyright and Visual Search Engines: Fair Use and Fair Dealing in the Online Environment67 In December 1999, a US District Court caused considerable surprise by holding in Leslie A Kelly v Arriba Soft Corporation that the use by an Internet ‘visual search engine’ of others’ copyright images was prima facie copyright infringement but was justified under the ‘fair use’ doctrine.68 At the time, it was argued that the case raised significant issues for artists, photographers and others who allow their images to be used on the Internet.69 It is therefore worth analysing the case, as well as subsequent US cases and what the English courts might make of such actions.

6.2.1. Kelly v Arriba Soft (1999–2004) Arriba, subsequently known as ditto.com Inc (or ‘Ditto’), operates a ‘visual search engine’ on the Internet. Unlike other Internet search engines, it retrieves images instead of text and produces a list of reduced ‘thumbnail’ pictures related to the search query. During the period relevant to the case, the search engine in question was known as the Arriba Vista Image Searcher. By clicking on a desired thumbnail picture, Arriba Vista users were able to view an ‘image attributes’ window, which described the image’s dimensions, provided an address for the website from where the image originated and displayed the full-size version of the image by opening a link to the originating website – without any other part of the originating website being seen.70 The user could visit the originating website only by clicking on the address.71 The search engine operates by maintaining an indexed database of approximately two million thumbnail images. These thumbnails are obtained by the operation of Ditto’s ‘crawler’, a computer program that trawls the web in search of images to be converted into thumbnails and added to the index. Ditto’s employees then screen and rank the images, eliminating any that are inappropriate. The plaintiff in Kelly v Arriba Soft was a photographer specialising in photographs of the California gold rush country and also in photographs related to the works of Laura Ingalls Wilder (of Little House on the Prairie fame). He publishes his photographs in

67 This section is a revised and expanded version of S Stokes, ‘Leslie A Kelly v Arriba Soft Corp: A View from the United Kingdom’ (2000) 12 European Intellectual Property Review 599. 68 US District Court, Central District of Southern California, Southern Division, Case No SA CV 99-560 GLT [JW] (Judge Gary L Taylor), 15 December 1999. 69 On 24 July 2000, the American Society of Media Photographers Inc, the Authors Guild Inc and the North American Nature Photography Association filed an amicus curiae brief in support of the plaintiff-appellant Kelly, on the basis inter alia that the District Court’s fair use analysis if accepted would seriously harm the legitimate copyright interests of freelance photographers and other authors of copyright works. 70 In other words the full-size image was not technically located on the defendant’s website. According to the decision, it appears that images of the plaintiff ’s photographs were stored briefly in full on the defendant’s computer (server) until the thumbnails were made; they were then deleted. 71 Apparently, as of December 1999 (the time of the decision), Ditto had modified its search engine so that when a ditto.com user clicks on a thumbnail, two windows open simultaneously. One window contains the full-size image; the other contains the originating webpage in full.

Copyright and Visual Search Engines 143 books and on two websites, one of which provides a virtual tour of California’s gold rush country and promotes his book on the subject; the other markets corporate retreats in that area. In January 1999, around 35 of Kelly’s images were indexed by the Ditto crawler and put in the defendant’s image database. As a result, these images were made available in thumbnail form to users of the defendant’s visual search engine. Kelly objected, and Ditto removed the images from its database, although due to some technical difficulties, some reappeared on occasion. In the meantime, Kelly sued the defendant for copyright infringement and also violation of the Digital Millennium Copyright Act (DMCA) 1998 by removing or altering the copyright management information associated with Kelly’s images. The hearing was one for summary judgment. The judge had no difficulty in finding a prima facie case of copyright infringement. The defendant did not dispute the validity of the plaintiff ’s copyright or his ownership, nor did it dispute it had reproduced and displayed the plaintiff ’s images in thumbnail form without authorisation. However, the issue was then whether the infringement was justified on the basis of ‘fair use’ under US copyright law. According to the judge, ‘Fair use’ is a limitation on copyright owners’ exclusive right ‘to reproduce the copyrighted work in copies’ (17 [US Code (USC)] § 106(1)). It is codified at 17 USC § 107, which provides: Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors. Fair use is an affirmative defense, and defendants carry the burden of proof on the issue.72

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

The Purpose and Character of the Use The court found the ‘transformative’ nature of the use of the plaintiff ’s images very significant, citing the US Supreme Court decision in Campbell v Acuff-Rose Music,73 which

72 Kelly

v Arriba Soft (above n 68) 2–3. 510 US 569, 579.

73 (1994)

144 Some Current Issues concerned an alleged parody of the song ‘Oh Pretty Woman’: ‘the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.’ The judge considered the defendant’s use of the images was very different from the use for which the images were originally created. Kelly’s works were artistic works used for illustrative purposes; Arriba’s visual search engine and related thumbnail images were for a functional purpose, not an artistic or aesthetic purpose – to catalogue and improve access to images on the Internet. Also, although the use was commercial, it was ‘somewhat more incidental and less exploitative than more traditional types of commercial use’.74 So overall, despite the fact that the defendant’s old (and then current) search engine allowed users to view and potentially download full-size images without necessarily viewing the rest of the originating web-pages detracted from this argument to an extent, the court found that the purpose and character of the defendant’s use was on the whole significantly transformative and therefore the first factor weighed in favour of fair use.

The Nature of the Copyright Work The judge cited Campbell to the effect that ‘that some works are closer to the core of intended copyright protection than others, with the consequence that fair use is more difficult to establish when the former works are copied.’75 In the view of the court artistic works like the plaintiff ’s photographs are part of that core. The court therefore found the second factor weighed against fair use.

The Amount and Substantiality of the Portion Used According to the judge, the analysis of this factor on the basis of Campbell focuses on: … the persuasiveness of a [copier’s] justification for the particular copying done, and the enquiry will harken back to the first of the statutory factors, for … the extent of permissible copying varies with the purpose and character of the use.76

In the view of the court in Kelly v Arriba Soft, if only the thumbnail index were at issue, the defendant’s copying would likely be reasonable in the light of its purposes. The judge seemed to accept the defendant’s arguments that for a visual search engine to work, such reduced size and resolution (ie, thumbnail) images were necessary: it was noted that the thumbnail images could not be enlarged into useful images. The image attributes pages (displaying the full-sized images separated from their originating webpages), however, were more problematic as it was, in the court’s view, remotely related to the purposes of the search engine. The court therefore found the third factor weighed slightly against fair use.

74 Kelly

v Arriba Soft (above n 68) 3. v Acuff-Rose Music (above n 73) 586, cited in Kelly v Arriba Soft (above n 68). v Acuff-Rose Music (above n 73) 586–87.

75 Campbell 76 Campbell

Copyright and Visual Search Engines 145

The Effect of the Use on the Potential Market or Value of the Copyrighted Work According to the judge, the fourth factor inquiry, following Campbell again, … examines the direct impact of the defendant’s use and also considers ‘whether unrestricted and widespread conduct of the sort engaged in by the defendant … would result in a substantially adverse impact on the potential market for the original’.77

The relevant market, according to the judge, was that of the plaintiff ’s websites taken together. The photographs were used to promote the products sold by Kelly’s websites (including Kelly’s books and corporate tour packages) and to draw users to view the additional advertisements posted on those websites. According to the judge, ‘the fourth factor addresses not just the potential market for a particular photo, but also its ‘value’. The value of [the] Plaintiff ’s photographs to [the] Plaintiff could potentially be adversely affected if their promotional purposes are undermined.’78 The defendant argued that there was no likely negative impact on this market, as its search engine did not compete with Kelly’s websites and in fact would actually increase the number of users finding their way to those sites. Kelly, however, argued that the market for his various products had been harmed because the defendant’s conduct allowed users to improperly copy Kelly’s images from the defendant’s site and subsequently use them. The search engine also enabled users to ‘deep link’ directly to the pages containing retrieved images and thereby bypass the ‘front page’ of the originating websites. Thus users would be less likely to view all of the advertisements on the websites or view the websites’ entire promotional messages. The judge found the plaintiff had shown no evidence of any such harm or adverse impact. So in the absence of any evidence about traffic to Kelly’s websites or effect on Kelly’s businesses, the court could not find any market harm to the plaintiff. On the other hand, the court found that the defendant met its burden of proof by offering evidence tending to show a lack of market harm, and the plaintiff was not able to refute that evidence. The court therefore found the fourth factor weighed in favour of fair use.

Conclusion: Fair Use In considering the four factors necessary to determine fair use, the court found two factors weighed in favour of fair use, and two weighed against it. Decisive here was the first factor. The defendant never held Kelly’s work out as its own or even engaged in conduct specifically directed at Kelly’s work. According to the judge, [The] Plaintiff ’s images were swept up along with two million others available on the Internet, as part of [the] Defendant’s efforts to provide its users with a better way to find images on the Internet. [The] Defendant’s purposes were and are inherently transformative, even if its realization of those purposes was at times imperfect.[79] Where, as here, a new use and new

77 Ibid, 590, cited in Kelly v Arriba Soft (above n 68). 78 Kelly v Arriba Soft (above n 68) 5. 79 Eg, the ability to display full-size images of the plaintiff ’s photographs without the other aspects of the originating websites.

146 Some Current Issues technology are evolving, the broad transformative purpose of the use weighs more heavily than the inevitable flaws in its early stages of development.80

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

The Digital Millennium Copyright Act (DMCA) In Kelly v Arriba Soft, the plaintiff raised an interesting argument that the defendant had violated section 1202(b) of the DMCA81 by displaying thumbnails of Kelly’s images without displaying the corresponding copyright management information (consisting of a standard copyright notice in the surrounding text). This argument was given short shrift by the judge.

Two Appeals Court Decisions Kelly v Arriba Soft has been the subject of two Appeals Court decisions.82 The first decision, filed on 6 February 2002, affirmed in part and reversed in part the order of the US District Court. Unlike the District Court, the Appeals Court focused in some detail on the linking and use made of the thumbnail images obtained by using Arriba’s search engine. The creation of the thumbnail images and their use for search purposes was found to be fair use. However, the ‘in-line linking’ – whereby clicking on a thumbnail gave access to a larger, full-size framed image that was divorced from its original website – was held to infringe the plaintiff photographer’s public display rights, and this was not justified by the fair use doctrine. The second decision (re-filed on 7 July 2003) withdrew the Appeals Court’s earlier ruling that ‘in-line linking’ violated a copyright owner’s public display right but retained the ruling that the creation of thumbnail images by search engines is fair use. The decision left open for a further hearing whether the display by Arriba of Kelly’s full-sized images was fair use. This is important, as the display of the full-size images involved the use of linking (including ‘in-line linking’ initially). This fascinating case appears to have ended with a default judgment in Kelly’s favour,83 but the issues raised therein were continued to be considered by the US courts, in particular in the action by publisher Perfect 10 against Google, which will be examined next. 80 Kelly v Arriba Soft (above n 68) 5. 81 S 1202(b) DMCA reads: ‘No person shall, without the authority of the copyright owner or the law: (1) intentionally remove or alter any copyright management information; … (3) distribute … copies of works … knowing that copyright management information has been removed or altered without authority of the copyright owner or the law, knowing, or, with respect to civil remedies under section 1203, having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under [federal copyright law].’ 82 The first was US Court of Appeals for the Ninth District, No 00-55521 (280 F.3d 934 (9th Cir 2002). The US copyright scholar Jane Ginsburg has commented that the case ‘strikes an encouraging balance between fostering the dissemination of information via the Internet on the one hand and securing the author’s interest in the economic potential of digital distribution for her work on the other’: JC Ginsburg, ‘Essay: How Copyright Got a Bad Name for Itself ’ (2002) 26(1) Columbia Journal of Law and the Arts 61. The second appeal was the 9th Circuit decision 336 F.3d 811 (7 July 2003). 83 US District Court, Central District of California, 18 March 2004.

Copyright and Visual Search Engines 147

6.2.2. Perfect 10 v Google (2006–11) Perfect 10 is a US adult entertainment publisher. Images of its models have appeared on unauthorised websites. Google operates a well-known Web search service that includes image searching, and Google had indexed these unauthorised images and made thumbnail images available through the normal operation of its search service. Perfect 10 complained to Google in May 2001 that Google’s creation of thumb-nail images and in-line linking to full-size images infringed Perfect 10’s copyright; and legal action against Google was commenced in November 2004. In February 2006, a district court ruled in favour of Google on several grounds, in particular that Google’s use of frames and in-line links did not amount (in a US copyright sense) to the display by Google of the full-size images stored on and served by infringing third-party web-sites.84 In other words, Google was not liable for direct copyright infringement by merely linking to these sites. However, the court ruled against Google for its creation of thumbnails. In particular, the district court determined that Google’s use of thumbnails as part of its image search function was likely to infringe Perfect 10’s copyrights, as Google’s Image Search service copied Perfect 10’s images as thumbnail images in its cache and displayed them to users. The California District Court’s holding distinguished Kelly v Arriba, in which it had been held that creating and using thumbnails for search purposes was fair use; in Perfect 10 it was pointed out that Perfect 10 also sells reduced-size images for download to mobile phones, and Google’s thumbnails might affect the market for those reducedsize images. Also, Google’s use of the thumbnails was held to be more commercial than Arriba’s as, in the opinion of the judge, Google’s AdSense program appeared to be available to the websites infringing Perfect 10’s copyright, and Google derived a benefit from this program. Both sides appealed, and on 16 May 2007, the Ninth Circuit Court of Appeals reversed the District Court’s finding on fair use, holding that Google benefited from a fair use defence insofar as Google was copying Perfect 10’s images to create thumbnail images. The Appeals Court applied the fair use principles discussed in Kelly and came to the conclusion that Google was putting Perfect 10’s thumbnail images (‘along with millions of other thumbnail images’) to a use fundamentally different than that intended by Perfect 10, and this was a significant transformative use that provided a significant benefit to the public. This convinced the Court that Google’s use was fair use. The Appeals Court also considered whether Google could be secondarily liable for its in-line linking to infringing full-size images under the doctrines of contributory and vicarious infringement. The District Court considered that Perfect 10 was unlikely to succeed in proving Google could be held liable on these grounds. The Appeals Court took the view that further fact-finding by the District Court was necessary here, in particular as to whether Google had known of infringing activities yet had failed to take reasonable and feasible steps to refrain from providing access to infringing images (in other words, secondary liability).

84 Perfect 10 v Google, Inc, US District Court, Central District of CA, CV 04-9484 AHM (SHx), 26 February 2006 (Judge A Howard Matz).

148 Some Current Issues Google moved for summary judgment, asserting that it was protected from secondary liability by the relevant provisions of the DMCA.85 The Court’s decision on this was appealed;86 but the case does not appear to have progressed further.87

6.2.3. Comment Kelly v Arriba Soft and Perfect 10 v Google raise a whole host of issues about the protection of copyright on the Internet and exemplify the thorny issues that courts worldwide are now tackling. Certainly it seems desirable for visual search engines to be available for the benefit of all Internet users. Although these are US cases, they highlight a debate that can be had about the conflict between the rights of copyright owners and others in the context of the effective functioning of the Internet. Certainly, the cases highlight the current US approach to ‘fair use’, which focuses on the transformative character, if any, of the defendant’s work.88 The cases also indicate the potential protection granted to companies providing Internet services through the US Digital Millennium Copyright Act.89

6.2.4. A View from the United Kingdom It is interesting to speculate what the outcome of these cases might have been if they had involved the infringement in the United Kingdom of photographs by a living British photographer. The analysis that follows focuses on copyright and moral rights protection for such a photographer; it does not consider database rights issues, which are primarily relevant to persons constructing search engine databases or websites to host the images. Of first concern is whether there would be prima facie infringement of copyright. On the facts, the answer is clearly yes: copying all or any substantial part of a copyright work is ‘primary’ infringement of copyright in the work,90 and copying includes 85 See below. 86 Google moved for partial summary judgment that it was entitled to immunity under three different provisions of the DMCA. Specifically, Google asserted that it deserved ‘safe harbor’ under 17 USC § 512(d) for its Web and image searches; under 17 USC § 512(b) for its caching feature; and under 17 USC § 512(c) for its blogger service. In July 2010 the District Court granted in part and denied in part Google’s motion for partial summary judgment of entitlement to safe harbor under 17 USC § 512(d) for its Web and image searches. The Court granted Google’s motion for partial summary judgment for its caching feature based on 17 USC § 512(d), without having to assess whether it would be separately entitled to safe harbor under 17 USC § 512(b). The Court granted Google’s motion for partial summary judgment of entitlement to safe harbor under 17 USC § 512(c) for its blogger feature. See ibid. See US District Court Central District of California Civil Minutes, General Case No Cv 04-9484 Ahm (shx) (26 July 2010) Perfect 10 Inc v Google Inc (A Howard Matz J). Perfect 10 appealed in October 2010. 87 See the outline of the case by the Electronic Frontier Foundation (EFF) at www.eff.org/cases/perfect-10v-google (accessed 22 August 2020). 88 For a review of US fair use cases, see JAL Sterling, World Copyright Law (London, Sweet & Maxwell, 1999) 364–69. 89 See above n 86. 90 S 16 Copyright, Designs and Patents Act 1988 (CDPA) 1988. See also the Antiquesportfolio case (above n 5, discussed above s 6.1.3), in which the judge was clearly of the view that even small-scale reproduction by digital means of an entire photograph on a website is copyright infringement.

Copyright and Visual Search Engines 149 for these purposes both ‘storing the work in any medium by electronic means’91 and also making copies that ‘are transient or are incidental to some other use of the work’.92 Thumbnail images such as those discussed in Kelly and Perfect 10 v Google are also communicated to the public.93 It could also be argued that by making these images available the search engine provider was authorising these images to be copied (see discussion in section 6.3.1 below). Having established prima facie infringement of copyright, the second question is whether there is a defence in the United Kingdom analogous to that of fair use. The fair dealing defences in English law are much more narrowly drawn than the US fair use doctrine and apply only in certain contexts, including non-commercial research, private study,94 criticism, review, quotation and news reporting.95 These do not appear particularly relevant here.96 Nor does it appear that an English court would be swayed by any argument that the public interest would demand that the infringement be permitted: this appears ruled out, for example, following the Court of Appeal decision in Hyde Park Residence v David Yelland.97

Moral Rights Aspects Under UK law, as discussed above in chapter four, ‘authors’ such as photographers benefit from moral rights protection in addition to copyright. An English court in these circumstances would therefore also have to entertain any claim by the photographer that his moral rights had been infringed if, for example, having asserted this right, he was not identified in connection with the commercial publication of his works (which clearly includes web publishing).98 Of more interest in this case is whether the production of a thumbnail image could be said to infringe the photographer’s moral right not to have his work subjected to derogatory treatment.99 ‘Treatment’ includes any alteration or adaptation of the work, and such treatment is derogatory ‘if it amounts to distortion or mutilation of the work or is otherwise prejudicial to the honour or reputation of the author’.100 It might therefore be argued that a thumbnail image is a distortion of the work, although this may be difficult to sustain in the light of the limited case law in this area.101 91 S 17(2) CDPA. 92 S 17(6) CDPA. 93 S 20 CDPA. 94 S 29 CDPA. See above ch 3, s 3.2.9. 95 S 30 CDPA. 96 In the context of s 29 CDPA, ‘research’ of the sort relevant to Kelly and Perfect 10 v Google is for commercial purposes. 97 [2000] ENT L R N-77, [1999] RPC 655, [2000] 3 WLR 215. Note, however, the less narrow decision in Ashdown v Telegraph Group Ltd [2001] EWCA Civ 1142 (18 July 2001). Nevertheless in light of recent CJEU case law the UK courts may in any event be reluctant to apply public interest or other defences which fall outside of the current UK copyright exceptions (see, eg, Funke Medien NRW GmbH v Germany C-469/17 ECLI:EU:C:2019:623). 98 S 77 CDPA, in particular s 77(4)(a). 99 S 80 CDPA. 100 S 80(2)(b) CDPA. 101 As discussed above ch 4. For example, in Tidy v Trustees of the Natural History Museum (1995) 39 IPR 501, the scaling down of the plaintiff ’s cartoons of dinosaurs was held to be a ‘treatment’ of the work, but the matter of whether this was ‘derogatory’ was left until full trial. See also Pasterfield v Denham and Another [1999] FSR 168 (per His Honour Judge Overend): ‘… what the plaintiff must establish is that the treatment

150 Some Current Issues However, a defendant might in any event seek to raise the defence that moral rights do not apply, as the database and search results produced by the search engine are ‘a collective work of reference’.102 This appears to stretch such a definition beyond its context in the Copyright, Designs and Patents Act (CDPA) 1988 of ‘encyclopaedia, dictionary, yearbook or other collective work of reference’, however.

Implied Licence or Consent As discussed above in chapter five, it can be argued that both express and implied copyright licences are central to the effective functioning of the Internet. Could it therefore be argued under UK law that by making their images available on the Internet, photographers and other creators of images have granted implied licences to enable the copying, communication to the public and cataloguing of their works where necessary to search the Internet – or that they have at least granted consent? There is debate about the circumstances in which such a copyright licence will be implied. The classic approach, based on contract cases dealing with the implications of terms into contracts, is to be cautious about the existence and scope of any such licence.103 In particular, as there is unlikely to be a contract between the photographer and search engine, and the photographer will probably have included an on-screen licence on his website restricting copying without his consent in any event, it is perhaps difficult to see why such a licence would be implied from the circumstances. Nevertheless, it has been argued that the operation of search engines might fall within either a public interest defence to copyright infringement or the more general legal doctrine of ‘non-derogation from grant’.104 But this must be doubted given, for example, the Court of Appeal’s rejection of a broad public interest defence in Hyde Park Residence v Yelland105 accorded to his work is either a distortion or mutilation that prejudices his honour or reputation as an artist. It is not sufficient that the author is aggrieved by what has occurred.’ 102 Ss 79(6) and 81(4) CDPA. 103 So for example, a term will be implied if it is necessary to give business efficacy to the contract, or it satisfies the ‘officious bystander’ test (in practice, these may well be the same tests: Watts v Lord Aldington [1999] LTR 578, 596–67 (per Steyn LJ)) – and not merely because it is reasonable. Also, the term to be implied must be the minimum necessary in the circumstances, and the term must be clear: see in the context of copyright, Robin Ray v Classic FM plc [1998] FSR 622; Antiquesportfolio.com (above n 5); and Copinger (1999) (above n 15) 5-208–5-216. It is also possible for a licence to be implied from conduct, trade practice or custom, and by estoppel and acquiescence. 104 HL MacQueen, ‘Copyright and the Internet’ in L Edwards and C Waelde (eds), Law and the Internet, 2nd edn (Oxford, Hart Publishing, 2000) 208–10. MacQueen cites the first instance formulation of the public interest defence by Jacob J in Hyde Park Residence v Yelland (above n 97) and in Mars UK Ltd v Teknowledge Ltd [2000] FSR 138. He also cites the non-derogation from grant argument acknowledged by Jacob J in Mars and deriving from British Leyland v Armstrong [1986] AC 577 and the later, more restrictive Privy Council case Canon Kabushiki Kaisha v Green Cartridge Co (Hong Kong) Ltd [1997] AC 728. 105 Above n 97. Note, however, that a later Court of Appeal decision has subsequently recognised a broader public interest defence to copyright infringement: ‘In the light of these judgments, we do not consider that Aldous LJ [in Hyde Park v Yelland] was justified in circumscribing the public interest defence to breach of copyright as tightly as he did. We prefer the conclusion of Mance LJ that the circumstances in which public interest may override copyright are not capable of precise categorisation or definition. Now that the Human Rights Act is in force, there is the clearest public interest in giving effect to the right of freedom of expression in those rare cases where this right trumps the rights conferred by the Copyright Act. In such circumstances, we consider that s 171(3) of the Act permits the defence of public interest to be raised’: Ashdown v Telegraph Group (above n 97) 58 (per Lord Phillips). But note comments at n 97 above on recent CJEU jurisprudence.

Copyright and Visual Search Engines 151 and the very limited scope of the ‘non-derogation from grant’ principle.106 So absent any further judicial clarification of the matter in the United Kingdom, the existence and scope of any implied licence in such circumstances remains unclear.107 However, there are cases from other jurisdictions that suggest an image copyright owner who displays his works on the Internet must take technical steps to prevent automated searching (which can easily be done) or else they will be deemed to have consented to the activities of search engine operators, who will thus be excused from copyright infringement. In other words, the onus is placed on rights owners to take steps to limit the automated searching and copying of their content.108

European Law and Policies The Electronic Commerce Directive109 contains certain exclusions from liability for copyright infringement that might be relevant in cases such as the (hypothetical) one described above: the ‘mere conduit’, ‘caching’ and ‘hosting’ exceptions from liability.110 These exceptions are designed to protect those who provide ‘information society services’ from liability where they act simply as intermediaries in transmitting or storing information in circumstances where: (i) they merely transmit information at the request of another (the recipient of the service) (‘mere conduit’ exception in Article 12); (ii) there is automatic, intermediate and temporary storage of information to allow for more efficient transmission of information provided by a recipient to others (‘caching’, which is excepted in Article 13); and (iii) they store information provided by and stored at the request of a recipient of the service, provided that the service provider does not have knowledge of illegal activity or information and that if they become aware of this, they act expeditiously to remove or disable access to the information (‘hosting’, which is covered by Article 14). These exceptions are not specifically directed at Internet search engines: the Directive leaves the liability position of providers of ‘hyperlinks and location tool services’ for further analysis.111

106 In Canon (above n 104) 737–40, Lord Hoffmann referred to the doctrine as ‘exceptional’, and any extension of the doctrine beyond the facts in British Leyland should be treated with some caution – it is in reality a defence based on ‘public policy’. 107 However, UK courts will imply copyright licences from conduct: see, eg, Barrett v Universal-Island Records Ltd and Others [2006] EWHC 1009 (Ch) (15 May 2006) paras 357–59; and see generally Robin Ray v Classic FM (above n 103). 108 See, eg, the decision of the German Federal Supreme Court, File Number I ZR 69/08 (29 April 2010), in which Google’s visual search engine was found not to infringe copyright, as the claimant had consented to the copying and display of her works by making them available on the Internet without taking technical steps (eg, meta-tags and robot.txt files) to prevent ‘Googlebots’ automatically copying her content. Contrast, however, the opposite decision of a Belgian court in Copiepresse v Google, 06/10.928/C, The Court of First Instance in Brussels (13 January 2007) in which Google’s argument along these lines was rejected. See S Stokes, Digital Copyright: Law and Practice, 3rd edn (Oxford, Hart Publishing, 2009) 178–79. Copiepresse was upheld on appeal: Cour d’Appel de Bruxelles (6 May 2011). However, from a common law perspective, see the favourable decision in the US case Blake A Field v Google Inc, 412 F.Supp.2d 1106 (D Nev 2006), in which it was held that making content available without meta-tags to prevent the operation of Googlebots amounted to consent (by way of an implied licence) to what Google was doing. 109 Directive 2000/31 on legal aspects of electronic commerce [2000] OJ L178/1. 110 See ibid, Arts 12–15. 111 Art 21.

152 Some Current Issues In this context, it appears unlikely that (at least from a UK perspective) any of these exceptions apply.112 Certainly, mere conduit or caching do not apply in the United Kingdom as relevant exceptions in the case of the infringement of photographs by a living British photographer, and probably not hosting either, as the search engine operator is the one who decides (albeit through software-operated processes) what information to search, extract, copy and display as part of its search offering. So for example, as regards hosting, surely in no way can it be said that the owner of a copyright image has requested his images to be stored by the operator of a visual search engine simply by making them available to be searched. The Court of Justice of the European Union (CJEU) considered the application of Article 14 of the Electronic Commerce Directive in the context of Google’s ‘AdWords’ programme; but as AdWords operates rather differently from Google’s visual search engine, it can be doubted that the CJEU’s reasoning here could benefit a visual search engine provider.113 In addition, the Information Society Directive114 does not provide any clear guidance on this area. The language in the Directive dealing with the exception for temporary copies of works on the Internet only applies if the copying is transient or incidental and is an integral and essential part of a technological process the sole purpose of which is to enable transmission in a network or a lawful use of a work and ‘which have no independent economic significance’.115 This does not seem to be the case here. In conclusion, it is submitted that an English court would be likely to decide Kelly v Arriba rather differently, unless it (like the German Federal Supreme Court) took the view that the image holder, by simply making the images available without taking technical steps to prevent their copying by a search engine, had given consent – such a view would in any event seem to fly in the face of the CJEU’s decision in Renckhoff where the reposting of an image on a website (the image had been copied from a website where the image was lawfully available but where there were no stated restrictions on re-use) was held to be a new communication to the public and so potentially infringing.116 112 Note that some Member States have extended the protections to additional activities, such as the provision of hyperlinks and search engines. Eg, Austria: see I Walden in A Büllesbach et al (eds), Concise European IT Law (Alphen aan den Rijn, Kluwer Law International, 2006) 247–55. 113 Google France & Google Inc v Louis Vuitton [2010] EUECJ C-236/08 (23 March 2010). AdWords allows Google users to pay Google so that sponsored links appear in search results where the paid for search term is used by someone using Google’s search engine. The CJEU concluded as follows: ‘[Art 14 of the Electronic Commerce Directive] must be interpreted as meaning that the rule laid down therein applies to an internet referencing service provider in the case where that service provider has not played an active role of such a kind as to give it knowledge of, or control over, the data stored. If it has not played such a role, that service provider cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned’ (para 120). In the case of a visual search engine, it is difficult to see how this applies, as Google does not store the information at the request of the image owner and does have control over the information it searches and indexes and copies. 114 Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society. See above ch 5. Those wishing to explore this area further also need to consider the impact of the recently adopted Copyright in the Digital Single Market Directive (Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC) (although at the time of writing the UK Government has no intention of implementing this into UK law). 115 Directive 2001/29/EC, Art 5(1). 116 Land Nordrhein-Westfalen v Dirk Renckhoff C-161/17 ECLI:EU:C:2018:634. The Court in this case distinguished between linking to an image (where different rules apply) and an image being copied from one website and then posted on another.

Image Sharing, User-Generated Works and Online Artistic Collaboration 153

6.3. Image Sharing, User-Generated Works and Online Artistic Collaboration The Internet, in particular what is sometimes referred to as ‘Web 2.0’, has allowed the proliferation of user-generated content – content that is created by users and may be generated collaboratively or collectively (eg, blog comments, social networking, Wikipedia content). This section looks at some of the legal issues surrounding such content, focusing first on a dispute involving Wikimedia Commons.

6.3.1. Case Study: The National Portrait Gallery, Derrick Coetzee and Wikimedia Commons In July 2009 Derrick Coetzee, a US citizen and contributor to Wikimedia Commons, a free online media repository, received a legal complaint from the London-based solicitors acting for the National Portrait Gallery (NPG).117 It was alleged that in March 2009, he had without the consent of the NPG: a. accessed NPG’s database of images, which was available online via its website; b. downloaded from NPG’s database more than 3,300 high-resolution images of public domain paintings (ie, the artists had died more than 70 years ago); c. circumvented the technical measures that NPG put in place on its website to prevent those high-resolution images from being copied; and d. uploaded those images to Wikipedia (ie, the Wikimedia Commons website). The NPG had contacted the Wikimedia Foundation in April 2009 to request that the images be removed, but the Wikimedia Foundation allegedly refused to do so; and this left NPG with no option but to threaten legal proceedings against Mr Coetzee personally through the UK courts, unless the matter could be settled. The case is worth considering in detail as it highlights the interplay of technology and copyright as it relates to art images.

The NPG’s Complaint The NPG’s complaint had several limbs: 1.

Infringement of Copyright in Photographs of Paintings The NPG claimed that the images of public domain artistic works copied by Mr Coetzee were original photographs and clearly protected by photographic copyright under UK law (notwithstanding the US case Bridgeman Art Library v Corel,118 in which, as discussed above, images of public domain works of art were not protected by copyright), and that copyright was owned by the NPG. So downloading (ie, copying) the NPG’s copyright photographs and then uploading them

117 Derrick Coetzee made the legal correspondence public – page 156 n 95 of the previous edition of this book looks at commentary at the time around the case. 118 See above s 6.1.2.

154 Some Current Issues

2.

3.

4.

5.

to Wikipedia (ie, communicating them to the public) was, it was argued, both a breach of contract (ie, the NPG website terms) and also an infringement of copyright in the UK, in particular a breach of section 16 of the CDPA.119 It was also alleged that by posting the images to the Wikipedia web-site, Mr Coetzee was expressly authorising Wikipedia users to themselves make further copies of those images on their own screens and hard drives in the manner permitted by the GNU Free Documentation License, under which Wikipedia operates. This was primary copyright infringement in the United Kingdom under section 16(2) of the CDPA. Infringement of Database Right It was claimed that the NPG website was a database protected by database right. On this basis, the right was accordingly infringed by Mr Coetzee’s downloading of over 3,300 NPG images and then uploading them to the Wikipedia website in breach of NPG’s website terms: this was claimed to be infringement of the UK database right under Regulation 16 of the Copyright and Rights in Databases Regulations 1997.120 Unlawful Circumvention of Technological Measures NPG’s images copied by Mr Coetzee were available on the NPG web-site via ‘Zoomify’. Zoomify is a software application that according to the NPG’s solicitors is used to publish photographic images in such a way that an entire high-resolution image is never made available to a public user. (High-resolution images having more value and utility than low resolution ones.) The NPG used the Zoomify technology to protect their copyright in the high-resolution images. It was alleged that Mr Coetzee had circumvented the Zoomify software and so was in breach of section 296ZA(1) of the CDPA. Breach of Contract On every page of NPG’s website and clearly visible there is a ‘Use this Portrait’ menu, on which two links are clearly visible: ‘License this image’ and ‘Use this image on your website’. If either of these links is clicked, then the user is told that permission is needed to reproduce the NPG’s images. So Mr Coetzee’s downloading of the images and subsequent uploading to the Wikipedia website was, it was alleged, carried out in breach of contract (ie, the website licence). The Jurisdiction of UK Courts NPG’s solicitors acknowledged that Mr Coetzee was based in the United States of America but nevertheless argued that his activities gave rise to claims under UK law because: a. NPG’s servers were based in the United Kingdom, and therefore ‘technically’, his unlawful downloading (which give rise to some of the copyright, database right and breach of contract claims) took place in the United Kingdom; and b. the pages of the Wikipedia website on which he had reproduced the NPG’s images were clearly directed at (amongst others) UK users of Wikipedia.

119 Note that in light of CJEU case law, the communication to the public right should be given a broad interpretation: Sociedad General de Autores y Editores de España (SGAE) v Rafael Hoteles SA [2006] ECR I-11519. Moreover, the definition of the right in s 20(2) CDPA is not exhaustive: see, eg, ITV Broadcasting Ltd & Others v TV Catch Up Ltd [2010] EWHC 3063 (Ch) (25 November 2010); and Twentieth Century Fox Film Corporation & Another v Newzbin Ltd [2010] EWHC 608 (Ch) (29 March 2010). See also Recital 23 of the Information Society Directive (above n 114): ‘This right should be understood in a broad sense covering all communication to the public not present at the place where the communication originates.’ 120 SI 1997/3032.

Image Sharing, User-Generated Works and Online Artistic Collaboration 155 It should be noted that the email from the NPG’s solicitors was reasonable in tone: it was hoped that Mr Coetzee would give certain undertakings and remove all the images, and once this was done, the NPG would not pursue a claim against him or seek to recover their legal costs. The NPG wanted to avoid litigation. Furthermore, the NPG was willing to enter into a dialogue with the Wikimedia Foundation to discuss terms upon which lowresolution images of paintings in the NPG’s collection could be made available on Wikipedia.

Mr Coetzee’s Defence Despite the offer to settle the matter, Mr Coetzee sent a very robust response through his attorney, who was with the Electronic Frontier Foundation (EFF),121 a US organisation founded in 1990 that seeks among other things to champion ‘the public interest in every critical battle affecting digital rights’.122 The EFF were prepared to defend Mr Coetzee, given the issues at stake. Fundamental to the EFF response to the NPG’s complaint were the fact that Mr Coetzee resides in the United States and the contention that all of the alleged infringing acts occurred in the United States. On this basis, the EFF stated that UK copyright law has no application to the matter, it being solely one of US copyright law. The EFF arguments under US law were as follows: a.

The photographs of the NPG’s public domain paintings are not protected by copyright. The EFF cited the US cases on originality, specifically the Supreme Court case Feist Publications v Rural Telephone Service,123 as well as (unsurprisingly) Bridgeman Art Library v Corel Corp.124 b. The NPG has no independent database rights with regard to the images, as such rights are not recognised under US Law. (This is correct insofar as database right is an EU/EEA-only right.) c. The NPG’s ‘browsewrap’ contract claims were ‘specious’, as there was no binding contract to breach. (The EFF cited the US case Specht v Netscape Communications.125) There is clearly a conflict of laws issue here: EFF’s argument assumes US law applies to the formation of a ‘browsewrap’ contract. The position is less clear-cut under English law, and in any event, it depends very heavily on the facts at the time any alleged contract was made – certainly the more a user is directed to there being contractual terms before accessing the images and has to accept the terms (eg, tick a box), being given the opportunity to print them out or store them before being given access, the more likely a court will be to find the requirements necessary for a contract under English law (the classic trinity of offer, acceptance and consideration). If instead, the terms are simply website terms that the user is not required to affirmatively agree to before being given access, then it is more likely they will be viewed as the terms of a ‘bare’ licence – permission to do certain things that would

121 www.eff.org/deeplinks/2009/07/eff-defends-wikipedi

(accessed 22 August 2020). the EFF website, www.eff.org/about (accessed 22 August 2020). 123 Above n 26. 124 Above n 17; and see the discussion above s 6.1.2 125 306 F.3d 17 (2d Cir 2002). 122 See

156 Some Current Issues otherwise be unlawful under copyright and IP law. And if use outside the licence occurs, this will not be a breach of contract in such a situation. The NPG’s only rights would in that case be in reference to infringement of copyright, etc (if indeed there are infringing acts under applicable law). d. The NPG’s circumvention claims were ‘baseless’, as ‘the Zoomify technology previously used on NPG’s website does not effectively control access to a work protected under copyright law’. This is clearly a matter of fact, regardless of whether US law or UK law applies.

Comment This was a fascinating dispute that raised significant legal and public interest issues. On the one hand, the NPG had invested very heavily in digitising images from its collection, making them available to the public for research and general interest but at the same time seeking to earn money from commercial licensing. On the other hand, what rights did the NPG actually have in their images, especially in the United States? And what of Derrick Coetzee’s and Wikimedia’s desire to make what is considered to be public domain content readily available worldwide? The dispute also highlighted the difficult conflict of laws issues that potentially apply to online copyright infringements. For example, under UK and EU law, how is the ‘communication to the public right’ infringed? Is it a matter of the law of the country where the content is uploaded to a server and made available (place of emission), or is it the place where the content is transmitted to and ‘received’ (or where it is directed/targeted to be received) – or possibly both?126 And how is ‘authorisation’ of infringement to be assessed – can placing content on a US website that if downloaded in the United Kingdom would infringe UK copyright amount to authorising UK copyright infringement?127 Likewise for database right.

6.3.2. User-Generated Content and Online Artistic Collaboration It is clear that the Internet works by copying.128 Indeed, the architecture of the Internet allows users to interact with other people’s content (of which the Coetzee dispute 126 Where both theories apply (place of emission and place of receipt/reception/where it is communicated/ made available to) this reflects the Bogsch theory developed by Dr Apard Bosch for satellite broadcasting – ‘[t]he Bogsch theory proposes that the broadcaster of a signal must comply with the laws of the countries of emission and reception – the countries of reception being where the broadcast is made available to the public’ S Blackman, ‘Choice of Law for Online Copyright Infringement: A Proposal for the Law Applicable to Ubiquitous File Sharing (February 2013).’ Available at SSRN: https://ssrn.com/abstract=2286403 or http:// dx.doi.org/10.2139/ssrn.2286403 (21). In Football Dataco Ltd and Others v Sportradar GmbH and Sportradar AG Case C-173/11 (a database right case) ECLI:EU:C:2012:642 the CJEU held that the law of the territory of intended receipt (ie where the infringer targets members of the public in that state) can also apply to database right infringement (and not just the territory where the database is uploaded and made available). 127 UK law has a relatively narrow concept of authorisation. Eg, ‘‘authorise’ means the grant or purported grant of the right to do the act complained of. It does not extend to mere enablement, assistance or even encouragement. The grant or purported grant to do the relevant act may be express or implied from all the relevant circumstances’: Twentieth Century Fox v Newzbin (above n 119) para 90 (per Kitchin J), citing the current leading case, CBS Songs Ltd and Others v Amstrad Consumer Electronics plc [1988] 1 AC 1013. 128 See above ch 5.

Image Sharing, User-Generated Works and Online Artistic Collaboration 157 is just one example). As a case in point, anyone who visits the Wikipedia website can edit Wikipedia entries. Interaction with content (copying, editing, etc) is key to developments in social networking, online gaming and the growth of online communities (YouTube, Second Life and so on).129 These developments raise a number of legal issues, including: • the potential for ‘piracy’ on a massive scale, with content owners challenging the boundaries of copyright law in terms of who is liable for infringing acts, often seeking to affix liability on those operating the site in question;130 • challenges to the very notion of ‘authorship’, as there is a move away from the traditional focus on either attributed authors or indeed identifiable authors at all. So for example, under UK law, where no one author’s contribution is identifiable, this results in a work of ‘joint authorship’ (ie, ‘a work produced by the collaboration of two or more authors in which the contribution of each author is not distinct from that of the other author or authors’ (section 10(1) CDPA));131 • the relationship between copyright rules on ownership and authorship and contract law, given that a user who uploads his own ‘user-generated content’ will almost invariably be asked to agree to licence terms that may severely restrict or limit his rights to control the use of the works and may even seek to ‘own’ what users contribute.132 On the other hand, the use of contract terms seems essential, given the need to regulate the rights of joint authors under copyright law.133 The impact of these trends on artistic practice is as yet unclear – so far the trend has been on multi-authored and edited (primarily) literary works, of which Wikipedia is a very good example, but there are some examples in the visual arts as well.134 Note that

129 See JGH Griffin, ‘The Centrality of Architecture in Copyright Law’ (2010) 4 Intellectual Property Quarterly 380, 385. 130 Witness the US (New York) case Viacom International Inc v YouTube Inc, No 07 Civ 2103. 131 Note that a person who adapts an existing work may be able to claim joint authorship with the original author if the adaptor has contributed enough by way of skill and independent judgement to the finished work: Brown v Mcasso Music Production Ltd [2006] EMLR 3; and Fisher v Brooker [2007] FSR 12, [2008] FSR 26 (CA). In the context primarily of literary works, JGH Griffin has commented, ‘The rise of the multi-authored, collective, manipulable works may indicate a return to authorship of the sort found within an oral, speaking community, rather than the property-based one of the immediate pre-digital era. We may be at an age where ‘linear writing’ and ‘the book’ are at an end’: JGH Griffin, ‘The Changing Nature of Authorship: Why Copyright Law Must Focus on the Increased Role of Technology’ (2005) 2 Intellectual Property Quarterly 135, 136. 132 In the context of Sony’s online games and generally, see A Schwarz and R Bullis, ‘Rivalrous Consumption and the Boundaries of Copyright Law: Intellectual Property Lessons from Online Games’ (2005) 10(1) Intellectual Property Law Bulletin 13. 133 In particular, where there is more than one author/owner of a work, the consent of all authors/owners is required, eg, to license the work (s 173(2) CDPA). For a discussion of ownership rules and the need for users to retain rights if this area is to fully develop, see C Ondrejka, ‘Escaping the Gilded Cage: User Created Content and Building the Metaverse’ (2004) 49 New York Law School Law Review 81. There is a growing legal discourse on ‘virtual property’ in the context of this area: eg, J Fairfield, ‘Virtual Property’ (2005) 85 Boston University Law Review 1047; and J Fairfield, ‘Anti-Social Contracts: The Contractual Governance of Virtual Worlds’ (2008) 53 McGill Law Journal 427, which argues that contract law is not the way to regulate online communities. 134 An example of an online artistic collaboration is the ‘The One Million Masterpiece Project’: www.millionmasterpiece.com/about (accessed 22 August 2020). However, this is a collection of individual, identifiable images from each artist, albeit that what emerges will be a collective work.

158 Some Current Issues Wikipedia does have licence terms that apply to contributions.135 A key influence on the licence terms developed for Wikipedia and similar sites has been the free and opensource software movement, which is a model of multi-author collaboration facilitated by licence terms that seek to prevent the privatisation of code. Similar licence terms have been devised for artistic works.136

6.4. Modern and Contemporary Art and Copyright (Including Film, Video and Performances) The copyright protection afforded to a variety of modern and contemporary art in the United Kingdom is a matter of some debate.137 Often such works either strain to fall within any category of ‘artistic work’ under the CDPA; or even if they appear to fall within a specific category, their protection is uncertain as they may not be ‘original’. Sometimes what is at issue is the ‘concept’ underlying the work (eg, in conceptual art), which is not protectable, as it falls on the ‘idea’ side of the idea/expression dichotomy.138 As noted in the discussion below and elsewhere in this book of what a copyright work is, whether a category/closed list approach (as currently set out in the CDPA) to protection in the UK is still the correct approach can be debated in light of recent European (CJEU) copyright cases but the traditional approach is mainly followed in the discussion below (with caveats noted here and below) as it remains to be seen how the UK courts will develop the law in this area.139 Originality, however, has certainly moved on from the traditional test of skill, labour and/or judgement to that of the author’s own intellectual creation following on from the CJEU case Infopaq but the practical impact of this can be debated.140 It is worth considering what copyright protection UK law might give various twentieth- and twenty-first century art forms, assuming that the artist is either alive or died less than 70 years ago. 135 ‘The text of Wikipedia is copyrighted (automatically, under the Berne Convention) by Wikipedia editors and contributors and is formally licensed to the public under one or several liberal licenses. Most of Wikipedia’s text and many of its images are co-licensed under the Creative Commons Attribution-Sharealike 3.0 Unported License (CC-BY-SA) and the GNU Free Documentation License (GFDL) (unversioned, with no invariant sections, front-cover texts, or back-cover texts)’: http://en.wikipedia.org/wiki/Wikipedia: Copyrights (accessed 22 August 2020). 136 See, eg, the ‘Free Art Licence’ (www.artlibre.org) and the work of Creative Commons (www.creativecommons.org). 137 For a discussion of the position internationally, see L Bently and B Sherman, ‘Copyright Aspects of Art Loans’ in N Palmer (ed), Art Loans (London, Kluwer, 1996) 248–49 and 254–57. 138 See above ch 3. 139 For a recent discussion of whether copyright works must fall into specific categories to be protected or whether any ‘creative works’ should be protected see E Bonadio and N Lucchi, ‘Introduction: setting the scene for non-conventional copyright’ in E Bonadio and N Lucchi (eds), Non-Conventional Copyright (Cheltenham, Edward Elgar, 2018) 1–21. 140 So, for example, in a recent artistic copyright infringement case (summary judgment) the court asked whether the designs were the original work of their author’s own intellectual creation and applied the test of whether the designers made their own and/or joint intellectual choices in creating the designs (which was satisfied by the claimants) even though the designers were inspired by art deco and it was argued the art deco features of the design were generic by the defendant (Islestarr Holdings Ltd v Aldi Stores Ltd [2019] EWHC 1473 (Ch) paras 90–101). See also 3.2.2 above.

Modern and Contemporary Art and Copyright 159

6.4.1. Ready-Mades, Objets Trouvés, Installations and Assemblage Artists who engage in ready-mades, objets trouvés, installations or assemblage141 elevate ordinary objects to the status of art, thereby challenging accepted ideas about what art is. Marcel Duchamp’s exhibition of a bicycle wheel attached to a stool and signed by the artist, which was displayed as art in a gallery in 1913, represents the first so-called ‘ready-made’. An everyday, ‘found object’, or objet trouvé, which can be used as a readymade, may also be used as part of an assemblage (see below). Ready-mades must fall within the definition of ‘sculpture’ under the CDPA in order to be protected by copyright as ‘artistic works’. As discussed above in chapter three, UK law defines sculpture broadly. But even if considered to be ‘sculpture’, are such works original? Here the originality consists in taking the found object out of its usual setting and exhibiting it in an artistic context. Bently and Sherman consider that under UK law, if the object was created with an artistic purpose in mind, then the courts are more likely to protect the work.142 In Creation Records Ltd and Others v News Group Newspapers Ltd,143 it was argued by counsel for the plaintiffs that along with other contemporary art works, Carl Andre’s famous brick ‘sculpture’144 ought to benefit from copyright protection. Whilst this point was not developed further by the judge in that case, the ‘permanence’ of such works was distinguished from the transitory assemblage of found objects that was the subject matter of this case – the latter did not qualify for protection either as sculpture or as collage. In any event, the cases discussed in chapter three (in particular, Metix v Maughan145 and Lucasfilm v Andrew Ainsworth146) suggest the courts are more willing to look at the intention and status (as ‘artist’) of the creator when deciding to class a work as a ‘sculpture’. Where a number of found objects are brought together to form a work on canvas, such as Arman’s ‘Crusaders’, in which stacks of paint brushes are assembled and stuck together to form the work, then an ‘assemblage’ is created. It is suggested that where an assemblage consists of items affixed to canvas, then it is likely to be protected as a collage, following the definition of collage put forward by Lloyd J in Creation Records: ‘In my view a collage does indeed involve as an essential element the sticking of two or more things together’. Given the above discussion, there also seems no reason why

141 The definitions of these terms are derived from the Glossary in The 20th-Century Art Book (London, Phaidon Press, 1996) 142 Bently and Sherman (above n 137) 267. As discussed above ch 3, whilst UK law protects sculptures irrespective of artistic quality, it may also be that the courts would be minded in such circumstances to follow the test for artistic quality in the context of works of artistic craftsmanship when considering ready-mades: the intention of the artist/craftsman is crucial. See Merlet v Mothercare [1986] RPC 129. 143 16 Tr L544, The Times (29 April 1997), discussed above ch 3. 144 ‘Equivalent VIII’ (1966), controversially acquired and displayed by the Tate Gallery. This work has received later UK judicial comment: see above ch 3. 145 [1997] FSR 718. 146 [2009] EWCA Civ 1328, 66. The Supreme Court in this case did not criticise this approach. Indeed, the purpose behind the work was crucial in not protecting the Imperial Stormtrooper helmet at issue as a sculpture – it was a film costume and prop, a utilitarian work, an element in the process of production of a film (the film rather than the helmet being the work of art): [2011] UKSC 39, paras 42–48.

160 Some Current Issues installations147 should not in a number of cases be classed as sculpture under the CDPA. However, to the extent they include film and video or artistic works, then potentially there may be separate copyright protection for those elements.

6.4.2. Appropriation Art An artist engaging in ‘appropriation art’ expressly sets out to ‘borrow’ images from other sources and include or assimilate them into his or her own work.148 Whilst this practice can be traced to Dadaism, Surrealism and Pop art,149 appropriation art is rooted in postmodern-ism.150 It can therefore be debated as to whether appropriation art is sufficiently original, as here the expressive form (as opposed to merely the idea) of the original work is copied. So similar issues arise to those already considered in the discussion of the Bridgeman case earlier in this chapter. In addition, the artist can himself be open to a complaint of plagiarism or of copyright infringement, even if a defence of ‘parody’, fair use (in the US) or of fair dealing for the purpose of criticism or review is raised. For example, this occurred in relation to the 2000 Turner Prize nominated work by Glenn Brown, entitled ‘The Loves of Shepherds (after ‘Doublestar’ by Tony Roberts)’.151 It is worthwhile citing the Privy Council in Interlego v Tyco again as to what is necessary to afford copyright protection to a copy of a work: ‘There must in addition be some element of material alteration or embellishment which suffices to make the totality of 147 It can be debated what is meant by ‘installation art’. ‘Almost any arrangement of objects in a given space can now be referred to as installation art, from a conventional display of paintings to a few well-placed sculptures in a garden. It has become the catch-all description that draws attention to its staging, and as a result it’s almost totally meaningless’: C Bishop, ‘But is it Installation Art?’ Tate, Etc (Issue 3, Spring 2005). Wikipedia comments, ‘Installation art is an artistic genre of three-dimensional works that are often site-specific and designed to transform the perception of a space’: https://en.wikipedia.org/wiki/Installation_art (accessed 22 August 2020). 148 See B Sherman, ‘Appropriating the Postmodern: Copyright and the Challenge of the New’ (1995) 4 Social & Legal Studies 31 for a discussion of this area and how real the perceived challenges of appropriation art actually are to copyright law. For example, LA Greenberg, ‘The Art of Appropriation: Puppies, Piracy and Postmodernism’ (1992) 11 Cardozo Arts and Entertainment Law Journal 1, in her discussion of, among other things, Rogers v Koons (above n 24), considers that appropriation art represents ‘the most radical challenge to copyright laws to date’ (33). Sherman (above) lists examples of appropriation art as including Mike Bildo’s fullsize copies of paintings by Cezanne, Matisse, Pollock, Lichtenstein and Picasso (to which Bildo attaches his signature and renames them) and Marcel Duchamp’s addition of a moustache to a copy of the Mona Lisa (32). Koons’ appropriation of the ‘String of Puppies’ photograph, the subject of Rogers v Koons, which is discussed below, is another example. 149 Sherman (ibid n 148) 32, citing A Bonnett, ‘Art, Ideology and Everyday Space: Subversive Tendencies from Dada to Postmodernism’ (1992) 10 Society and Space 69. 150 ‘Re-appropriating existing representations that are effective precisely because they are loaded with preexisting meaning and putting them into new and ironic contexts is a typical form of postmodern … critique’: L Hutcheon, The Politics of Postmodernism (London, Routledge, 1989) 44, commenting on postmodern photography, including the work of Cindy Sherman, Sherrie Levine and Martha Rosler. See also Sherman (above n 148): ‘By placing a well-known object such as the American flag, a painting by Picasso or an advertising logo in a new context, the appropriation artist aims to denaturalize it and thus to provide the borrowed object with a new meaning or vocabulary’ (32). 151 See S Lockyear, ‘Copyright and the Visual Arts: Questions and Answers’ in D McClean and K Schubert (eds), Dear Images Art, Copyright and Culture (London, Ridinghouse/ICA, 2002); and also the earlier edition of this book (esp s 6.3.5).

Modern and Contemporary Art and Copyright 161 the work an original work.’152 In the context of artistic works, such alteration or embellishment must be ‘visually significant’.153 It is not enough that what is done is to convey ‘information’154 – so although in the process of appropriation, the meaning of the work is changed by placing it in a new context, its visual significance may well not be. Hence it may not benefit from copyright protection.155

Richard Prince and the Art of Appropriation In the US, the artist Richard Prince is well known for appropriating photographs or other images (including Instagram feeds in his exhibition ‘New Portraits’ in 2014). This has on occasion led to legal action being taken against him. In 2008 the photographer Patrick Cariou sued Prince (as well as his gallery and their catalogue publisher) for copyright infringement.156 It was alleged he had wrongfully appropriated photographs of Cariou from Cariou’s Yes Rasta book (published in 2000) featuring photographs of Rastafarians Cariou had taken in Jamaica. Prince scanned the photographs and used them in different ways – including by enlarging and cropping them and then painting on them. There were other treatments as well. Prince relied on fair use as a defence – in the US (according to the US Copyright Office) fair use is a legal doctrine that promotes freedom of expression by permitting the unlicensed use of copyright-protected works in certain circumstances. Section 107 of the Copyright Act provides the statutory framework for determining whether something is a fair use and identifies certain types of uses – such as criticism, comment, news reporting, teaching, scholarship, and research – as examples of activities that may qualify as fair use. Section 107 calls for consideration of the following four factors in evaluating a question of fair use: • Purpose and character of the use, including whether the use is of a commercial nature or is for nonprofit educational purposes (this was the focus in Prince v Cariou); • Nature of the copyrighted work; • Amount and substantiality of the portion used in relation to the copyrighted work as a whole; • Effect of the use upon the potential market for or value of the copyrighted work.157 The fair use defence failed at trial as the court held Prince’s use of Cariou’s work was not sufficiently transformative as Prince’s work did not in any way comment on any aspect

152 Interlego v Tyco (above n 33) 972 (per Lord Oliver). 153 See above ch 3. 154 This is properly the subject of literary works in copyright law: Exxon v Exxon Insurance [1982] RPC 69. See Sherman (above n 148) 49 fn 22. 155 See Sherman (above n 148) 38–40. See also Interlego v Tyco Industries (above n 33) 972 (per Lord Oliver): ‘essentially artistic copyright is concerned with the visual image’. Note, however, that Interlego predates the CJEU in Infopaq [2009] EUECJ C-5/08 so one also ought to ask is the copy the appropriation artist’s ‘own intellectual creation.’ 156 See the discussion in JB Prowda, Visual Arts and the Law (Lund Humphries in association with Sotheby’s Institute of Art 2013) 88–91 157 Taken from www.copyright.gov/fair-use/more-info.html (accessed 24 May 2020). The same commentary adds: ‘transformative’ uses are more likely to be considered fair. Transformative uses are those that add something new, with a further purpose or different character, and do not substitute for the original use of the work.

162 Some Current Issues of the original work (this was a departure from past precedent158). The appeals court however disagreed with the trial judge. The appeals court held that the law imposes no requirement that a work comment on the original or its author in order to be considered transformative. It concluded that 25 of the 30 works at issue constituted fair use. The court found those works transformative because the defendant’s ‘composition, presentation, scale, color palette, and media are fundamentally different and new compared to the photographs, as is the expressive nature of [defendant’s] work’. The court also found no evidence that defendant’s work usurped either the primary or derivative market for plaintiff ’s photographs. As to the other five works, the court remanded to the district court for further consideration under the proper standard.159 The case was settled in March 2014.160 This case has received much commentary. Some see it as giving appropriation artists much-needed support others that the case fails to conclusively provide clear guidance and that it would have been helpful if the Supreme Court had ruled on the matter.161 One commentator (Julie Ahrens) sees the case as affirming ‘an important tradition in modern art that relies on the appropriation of existing images to create highly expressive works with new meaning’. She also notes how the court applied the standpoint of the ‘reasonable observer’ in determining the matter (citing the judgement): ‘What is critical is how the work in question appears to the reasonable observer, not simply what an artist might say about a particular piece or body of work. Prince’s work could be transformative even without commenting on Cariou’s work or on culture, and even without Prince’s stated intention to do so. Rather than confining our inquiry to Prince’s explanations of his artworks, we instead examine how the artworks may ‘reasonably be perceived’ in order to assess their transformative nature.’162

6.4.3. Minimalist Art and Conceptual Art Both minimalism and conceptual art, art movements that flourished in the 1960s and 1970s, challenged the existing way art was made, disseminated and viewed as elitist and giving misplaced importance to the art object.163 Each raise interesting copyright issues.

Minimalism ‘Minimalist art is [art] pared down to its essentials’, according to Phaidon Press’s 20th-Century Art Book.164 Examples include the work of Robert Morris, Carl Andre, 158 Prowda (n 156 above) makes this point (89). 159 Cariou v Prince, 714 F.3d 694 (2d Cir. 2013) cert. denied 134 S. Ct. 618 (2013 – summary taken from www. copyright.gov/fair-use/summaries/cariou-prince-2dcir.2013.pdf (accessed 24 May 2020). 160 www.artnews.com/art-in-america/features/landmark-copyright-lawsuit-cariou-v-prince-is-settled59702/ (accessed 24 May 2020). 161 https://itsartlaw.org/2013/04/29/appropriate-standards-in-appropriation-art-cariou-v-prince-decisiongarners-relief-but-fails-to-provide-substantive-guidance/ (accessed 24 May 2020). 162 http://cyberlaw.stanford.edu/blog/2013/04/second-circuit-victory-richard-prince-and-appropriation-art (accessed 24 May 2020). Judith Prowda’s view is that while the decision does not offer certainty in close cases it does assist artists who transform the original work by adding new expression, meaning or message (Prowda (n 156 above) 91). 163 Minimalism – Tate.org.uk/art/art-terms. 164 Above n 141.

Modern and Contemporary Art and Copyright 163 Dan Flavin, Sol LeWitt, Donald Judd, Agnes Martin and Frank Stella – it is nonrepresentational and abstract comprising for example of geometric, single or repeated forms (cubes for example) or repeated bricks or tiles (as in the work of Carl Andre, which engage with the space it occupies – Carl Andre said ‘I’m not a studio artist, I’m a location artist’).165 Issues arise as to whether such works are sufficiently original and in the case of 3D works into what category of work they fall into (sculptures, works of artistic craftsmanship) (assuming in this discussion a ‘closed list’ approach to UK copyright protection – a work has to fall within one of the CDPA categories in the UK, although whether this remains the correct approach in light of EU copyright law can be debated).166 Certainly in the past UK law has afforded copyright protection to a variety of simple drawings, including a hand for a voting card,167 so it is submitted that copyright protection ought not to be a problem for most minimalist paintings and drawings. However, the scope of protection will be very limited. So for example, when considering the copyright protection in engineering manufacturing drawings for a mobile blast-cleaning machine, a judge concluded that an argument that the skill and effort in producing the drawing in question was too trivial to justify a claim of originality was easy to advance, but he was not willing to accept it. The judge quoted from the essay entitled ‘Prose and Dr Tillotson’ by Somerset Maugham, in which Maugham talked about an unforgettable and haunting picture by Mondrian consisting of some black lines and a red one on a white background and suggested that any viewer might think he could easily produce the work himself as it looked so simple. Maugham ended his essay by challenging the reader to try.168 Of course these cases predate Infopaq and stress the sweat of the brow/skill, labour and/or judgement test for originality but following the European concept of originality as ‘the author’s own intellectual creation’ it is suggested a similar result will still be reached as long as the work reflects the personal touch of the author and their free and creative choices.169 Certainly the UK position is to be distinguished from that in the United States, where, for example, the Register of Copyright refused to register a logo for ‘New York Arrows’ that was comprised of four angled lines forming an arrow and the word ‘arrow’ in cursive script.170

Conceptual Art The American artist Sol LeWitt commented that in conceptual art the idea or concept is the most important aspect of the work – ‘[w]hen an artist uses a conceptual form of art, 165 Commentary by the Tate on his work ‘Last Ladder’ (1959) – see n 163 above. 166 J Marshall, ‘Case Comment: Copyright ‘works’ and ‘fixation’: where are we now?’ (2019) 3 Intellectual Property Quarterly 252–261 (commenting on the CJEU case Levola Hengelo BV v Smilde Foods BV (C-310/17) EU:C:2018:899). See also J McCutcheon, The Concept of the Copyright Work under EU Law: More Than a Matter of Taste (July 30, 2019) [2020] European Law Review, forthcoming. Available at SSRN: https://ssrn. com/abstract=3428844. See section 3.2.1 above for background on this area. 167 Kenrick v Lawrence (1890) 25 QBD 99. See discussion above ch 3. 168 SPE International Ltd v Professional Preparation Contractors (UK) Ltd [2000] EIPR N-19, transcript at p 20 (Rimer J). 169 See S Burke, ‘Copyright and conceptual art’ in E Bonadio and N Lucchi (eds), Non-Conventional Copyright (Cheltenham, Edward Elgar, 2018) 44–61. 170 John Mullere & Co v New York Arrows Soccer Team, 802 F.2d 989 (8th Cir 1986), discussed in Bently and Sherman (above n 137) 257.

164 Some Current Issues it means that all of the planning and decisions are made beforehand and the execution is a perfunctory affair’.171 Examples of conceptual art include Sol LeWitt’s wall drawings executed by assistants from the artist’s written instructions and diagrams, Joseph Beuys’ performance works (or ‘actions’) (for example, I like America and America Likes Me (1974) where Beuys wrapped himself in felt and spent three days in a room with a coyote) and Richard Long’s land art. As noted earlier it is a principle (if not a cliché) of copyright that it protects not ideas but the expression of an idea.172 This is one obvious challenge of conceptual art. Another is whether there is a copyright work that it is protected (eg in the case of a performance) although often it will be ‘fixed’ in a photograph or on film/video in any event. Works which consist of instructions (such as Sol LeWitt’s wall drawings) might be protected as literary works – if so there are cases where making articles that follow written patterns or instructions does not infringe copyright – there is no objective similarity between the copyright work (literary work) and the article in question.173 Yet this approach can be criticised, especially given how European copyright law now defines originality and appears moving to a more fluid concept of a copyright work, focused on the author’s creativity.174

6.4.4. Graffiti and Street Art There has been a growing scholarly interest in the copyright protection of graffiti and street art in recent years.175 This is perhaps not surprising given the ubiquity and increasing attention given to this art form – in popular culture, in commerce and in art scholarship – initially viewed by many as vandalism such art now has its own museums and is collected. Indeed, street artists such as Banksy are household names whose works are very valuable and as a result have been subject to litigation – in particular where issues arise as to the ownership of the ‘embodiment’ (physical title as opposed to 171 S LeWitt, ‘Paragraphs on Conceptual Art’ Artforum Vol 5, no 10, 1967, 79–83 and cited in Conceptual Art – tate.org.uk/art/art-terms. 172 As an English court put it (in a software copyright case) – ‘[I]t is a cliché of copyright law that copyright does not protect ideas: it protects the expression of ideas. But the utility of the cliché depends on how ideas are defined. This dichotomy has made its way into international treaties and European legislation. The international treaties include the Agreement on Trade-Related Aspects of Intellectual Property Rights (‘TRIPS’), article 9 (2) of which provides: “Copyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such”’ – Lewison LJ in SAS Institute Inc v World Programming Ltd [2013] EWCA Civ 1482, 20. See section 3.2.8 above. 173 For example, knitting instructions were not infringed by the making of a garment – Brigid Foley Ltd v Elliott [1982] RPC 433 and literary copyright in a book which described a system of teaching was not infringed by the making of rods that demonstrated this method—Cuisenaire v Reed [1963] VR 719 (Supreme Court of Victoria, Australia). This area is discussed by Burke (see n 169 above). 174 See Burke (n 169 above) 58–61. 175 See, eg, E Bonadio, ‘Copyright protection of street art and graffiti under UK law’ [2017] Intellectual Property Quarterly 187–220 (Bonadio (2017)); M Iljadica, ‘Graffiti and the moral right of integrity’ (2015) 3 Intellectual Property Quarterly 266–288; E Bonadio, The Cambridge Handbook of Copyright in Graffiti and Street Art (Cambridge, Cambridge University Press, 2019); M Iljadica, Copyright Beyond Law: Regulating Creativity in the Graffiti Subculture (Oxford, Hart Publishing, 2016); E Bonadio, ‘Street art, graffiti and copyright’ in E Bonadio and N Lucchi (eds), Non-Conventional Copyright (Cheltenham, Edward Elgar, 2018) 83–110 (Bonadio (2018)). There has also been a high profile US case involving street art and the application of the Visual Artists Rights Act (VARA) 1990 (whitewashing of graffiti on the 5Pointz building in Long Island City – Castillo et al. v G&M Realty L.P. (2020)) where significant damages ($6.75m) were awarded to the graffiti artists (see section 4.4 above and the further discussion below when discussing moral rights and graffiti).

Modern and Contemporary Art and Copyright 165 copyright title) of the work where someone has removed the artwork from a building wall say – this area is outside the scope of this text.176 Copyright scholars have looked at how copyright and moral rights apply to this art form as well as examining in detail the creative culture behind such works and the norms that graffiti and street artists follow outside of copyright law itself.177 Graffiti refers to a technique of painting names and letters on various urban surfaces (eg walls and subway trains) and street art refers to more elaborate forms of art which have developed from early graffiti art and focuses on images not letters.178 It is a surprisingly modern art form – graffiti art appeared first in New York City in the early 1970s and spread to the UK (London and Bristol) in the early 1980s.179 Copyright and moral rights issues discussed in the context of graffiti and street art include the following.180

Does Copyright Protection Apply to Graffiti and Street Art? For copyright to apply then as discussed earlier in this book (chapter 2) first there needs to be a copyright work and graffiti (including tags) and street art are clearly artistic works (or for some works literary works too). Other considerations are the need for fixation/permanency of the work (which again would not appear to be a problem under UK law181) and its originality (especially tags – which are the street artist’s signature and logo – these can be quite simple) but assuming independent creation and the way the law on originality is developing (with the stress on the author’s own intellectual creation182) then it is likely such works will be original (depending on the facts – so graffiti which was just one word would not be an original literary work but its stylised form could be an artistic work).183 176 The only reported UK case involving Banksy concerned the ownership of the physical work (not Banksy’s copyright which the judge said prima facie vested in Banksy (para 2) (despite the work being (arguably) illegal – one person’s street art can be another person’s act of vandalism – although this was not argued in the case – however, Banksy had painted the work without the prior knowledge or consent of either the landlord or the tenant) – see The Creative Foundation v Dreamland Leisure Ltd & Ors [2015] EWHC 2556 (Ch)). A tenant (defendant) removed the Banksy piece Art Buff from a wall of a building and a person who had acquired the landlord’s title and rights to the work by an assignment from the landlord required it back – the court agreed with the landlord’s assignee, the claimant. Bonadio notes that a mural can become the property of the owner of the wall by virtue of accession (so fixtures) or a work of street art might be a chattel if it could be detached without damaging the structure of the building – as was the case in The Creative Foundation v Dreamland Leisure Ltd [2015] where the judge held the art work (as a chattel) belonged to the landlord (Bonadio (2017) 198–199). See also www.lawgazette.co.uk/practice-points/who-owns-street-art/5051041.article (accessed 23 November 2019). 177 As regards the latter see in particular Iljadica (2016) (n 175 above). 178 Bonadio (2017) (n 175 above) 187–188. 179 Ibid. 180 See in particular Bonadio (2017) and Bonadio (2018) (above n 175). 181 See, eg, the recent discussion on fixation in Islestarr Holdings Ltd v Aldi Stores Ltd [2019] EWHC 1473 (Ch) 41–50 which considered a copyright design embossed into makeup powders – it was argued by the defendant that no copyright subsisted in the powder design as it was merely an ephemeral depression in the powder itself which when used would disappear (para 42) – the judge was is no doubt copyright protection could subsist otherwise artistic works of an ephemeral nature (eg sand sculptures the judge noted that exist only at low tide) could have no claim to copyright in say a pre-construction sketch or photograph of the work (para 48). 182 See section 3.2.2 above. 183 In Future Publishing Ltd v The Edge Interactive Media Inc & Ors [2011] EWHC 1489 (Ch) one point under consideration was whether the ‘EDGE’ logo owned by the claimants (and used on a well-known computer

166 Some Current Issues One issue discussed in the context of graffiti and street art is whether the illegality of many such works – on the basis they are placed on surfaces without permission (so could be considered acts of vandalism and potentially criminal damage184) – would be a bar to their copyright protection on the basis that either no copyright subsists at all in the work or copyright does subsist but the law will not enforce such a copyright on public policy grounds.185 This discussion is unresolved in the UK courts as regards graffiti and street art.186 However, that copyright exists in such works has on occasion been assumed by the courts.187

Ownership, Collaborative Authorship and Anonymity188 Who owns the copyright in a work depends on the circumstances of creation – usually the author is the first owner and works can be jointly owned in the case of jointly created works. Where a work is commissioned the author can agree to assign their copyright. These rules apply to graffiti and street art in the same way as other artistic works. Anonymity is not a bar to copyright protection either so street artists who do not sign their works can still enforce their copyright in the future.189

Moral Rights190 This area is much discussed – perhaps not surprisingly in the context of whether there is the right to prevent the destruction of a work or whether the artist can object to the

gaming magazine) was protected by copyright as it used a version of a well-known typeface – the defendant argued it was not an original work. The judge rejected this: ‘The stretching of the font was combined with the distinctive slash and projection on the middle bar of the ‘E’. What is required for artistic originality is the expenditure of more than negligible or trivial effort or relevant skill in the creation of the work’: see Garnett et al Copinger and Skone James (above n 15) 3-130 and Ladbroke v William Hill [1964] 1 WLR 273, 287. The claimant’s logo is original within this test’ (10). In this case the judge was applying the traditional skill labour and judgement test of originality but it is submitted the Infopaq originality test would come to a similar conclusion. 184 Criminal Damage Act 1971, s 1. 185 See, eg, Hyde Park Residence Ltd v Yelland [2001] Ch 143 (CA). Aldous LJ cited Lord Mansfield CJ in Holman v Johnson (1775) 1 Cowp 341, 343: ‘No court will lend its aid to a man who founds his cause of action upon an immoral or illegal act.’ For a detailed discussion of this area see Iljadica (2016) 102–108, Bonadio (2017) 211–217 and Bonadio (2018) 101–108 (all n 175 above) – Bonadio (2018) notes that US and UK law do not give a precise answer as to whether such illegally produced works are protected by copyright (101). He also notes that the protection of the moral rights of the artist in relation to such works is a grey area of US and UK law (Bonadio (2018) 106). Another argument that might be adduced against protection is the unclean hands doctrine – an equitable defence that a claimant should not profit from their illegal activity – this has often been raised in US cases (Bonadio (2018) 102–104). 186 Contrast a German copyright case involving artwork painted on the Berlin Wall where the court said it was not in principle relevant that the work’s creation was unlawful (Re Pictures on the Berlin Wall (Case I ZR 68/93) [1977] ECC 553 – discussed in Bonadio (2018) (above n 175) 104). An argument in favour of granting copyright protection is that only if the content of a copyright work is illegal should copyright be denied (eg if obscene) – if the illegality is instead in the process of creation (which it is for much graffiti and street art) then that should not be a bar to protection – see Bonadio (2018) 104–105. 187 The Creative Foundation v Dreamland Leisure Ltd & Ors [2015] EWHC 2556 (Ch) 2. 188 Bonadio (2017) (n 175 above) 196–198. See also sections 3.2.3 and 3.2.7 of this book. 189 See s 12(3) CDPA (which indicates the duration of works of unknown authorship). 190 Iljadica (2015) and Iljadica (2016) ch 8; Bonadio (2018) 94–101 (all above n 175).

Modern and Contemporary Art and Copyright 167 break up of their work of art and its exhibition in a gallery say – different to its original street-art context (so-called ‘decontextualisation’). Here the discussion in Chapter 4 is relevant. Much discussion of this area in the context of street art revolves around the US Visual Artists Rights Act (VARA) and in particular the 5Pointz case (2018) where the artworks in question were held to be works of recognised stature under VARA and so subject to protection under that Act. In this case the judge awarded the artists $6.7 million in damages against the building owner and property developer (Jerry Wolkoff) after their street art building murals were whitewashed in 2013 as part of the development of the building.191 In any event, a discussion of moral rights may be somewhat moot, at least in the UK where there is no law akin to VARA – where works have been created on a surface without the permission of the relevant property owner it is hard to see a UK court supporting the artist as opposed to the rights of the property owner of the work in its original form. However, where such a work is removed from its place of creation and then re-sold then at that point it is akin to any other work of art on a tangible medium where the copyright (and moral rights) exist separately from any consideration of who owns the tangible medium. In this event UK moral rights law at least will only give the artist limited protection as derogatory treatment does not appear to cover decontextualisation or the destruction of a work (see Chapter 4). Other jurisdictions may be more favourable, as discussed more generally in Chapter 4. Of course, issues around the illegal creation of the work and whether this affects the grant and/or enforcement of copyright and moral rights protection in the first place also remain relevant.

The Culture of Artistic Creation and the Relevance of Copyright Law It has been noted that street artists can often appropriate other works (or styles) including those of other street artists – for example, it has been stated that for inspiration Banksy has drawn upon the French artist Blek le Rat who pioneered the stencil technique in urban settings.192 This of course raises copyright and moral rights issues similar to those discussed elsewhere in this book in the context of appropriation art (assuming those with rights that are infringed wish to assert their rights – within the graffiti

191 Castillo et al v G&M Realty L.P. et al (E.D.N.Y. 2018) (judgement 12 February 2018) (the case was appealed – with the Appeals Court ruling in the artists’ favour and upholding the 2018 judgement—https://itsartlaw. org/2020/03/02/case-review-castillo-et-al-v-gm-realty-l-p/ (accessed 22 August 2020) and the US Supreme Court declined to hear a further appeal – see section 4.4 above). See also www.nytimes.com/2018/02/12/ nyregion/5pointz-graffiti-judgment.html (accessed 23 November 2019) and www.nytimes.com/2020/10/06/ nyregion/graffiti-artists-5pointz.html (accessed 10 October 2020) and also Bonadio (2018) (above n 175) 95–97 for a discussion of the case and other US street art cases. 192 For example, www.connexionfrance.com/Mag/Culture/Street-art-Before-Banksy-there-was-Blek-le-Rat, www.stencilrevolution.com/blogs/profiles/blek-le-rat and www.independent.co.uk/news/people/charlie-hebdofrances-banksy-blek-le-rat-remember-the-attackers-are-a-cold-blooded-crazy-minority-9968192.html. Banksy himself was quoted as saying ‘every time I think I’ve painted something slightly original, I find out Blek Le Rat has done it well, only twenty years earlier’ (in his unauthorised biography – see www.independent.co.uk/arts-entertainment/art/features/blek-le-rat-streetwriting-man-7675837.html. See Bonadio (2017) (above n 175) 217–218.

168 Some Current Issues subculture itself there is also informal regulation that operates outside of or beyond copyright law – addressing among other things copying (originality and infringement) and the prohibition of damage to others’ works (a form of integrity right)).193

6.4.5. Bio-Art, Land Art and Other Non-conventional Art Works194 Before moving on to discuss film and issues of infringement of copyright (including appropriation and parody) it is worth noting that other modern and contemporary art forms in addition to those discussed at 6.4.1–6.4.4 raise interesting copyright issues. Such works are at the margins of copyright protection and have been called new or non-conventional forms of expression. Their protection by copyright raises a number of issues:195 a.

Do such works fall within the sorts of works (the subject matter) copyright protects – an issue in closed-list copyright regimes such as the UK and US?196 b. Are they original? c. Is fixation an issue (in the sense they need to be fixed in a tangible medium)? d. Are they functional (so therefore to be denied copyright protection on the basis that design or patent protection is more appropriate)? e. Is there a (human) author (for example works produced by computers or even animals)? Most jurisdictions require a human author (or deem one). f. Public interest issues – some works might fall outside what the law will protect on public policy grounds – the work is obscene for example or the work is really just an idea not the expression of an idea or it is mere facts or a collection of data. As will be apparent these are recurring issues in this chapter and a number have already been touched on in the preceding discussion.

193 See Iljadica (2016) (above n 175). Those outside the street art community have taken legal action against street artists for copyright infringement – for example in the US, the street artist Thierry Guetta (aka ‘Mr Brainwash’) lost a case against the photographer Dennis Morris whose iconic 1977 photograph of Sid Vicious (lead singer of the Sex Pistols) he had copied in a number of his works – a fair use defence failed (as the new use was not sufficiently transformative) (Dennis Morris v Thierry Guetta, et al, No. LA CV12– 00684 JAK (RZx) United States District Court, C.D. California Feb. 4, 2013) (Bonadio (2018) (above n 175) 109). In this case the judge commented: ‘As noted by another court in a case with similar issues, “To permit one artist the right to use without consequence the original creative and copyrighted work of another artist simply because that artist wished to create an alternate work would eviscerate any protection by the Copyright Act. Without such protection, artists would lack the ability to control the reproduction and public display of their work and, by extension, to justly benefit from their original creative work.”’ Friedman v Guetta, No. CV 10–00014 DDP JCX, 2011 WL 3510890, 7 (C.D.Cal. May 27, 2011). 194 See generally E Bonadio and N Lucchi (eds), Non-Conventional Copyright (Cheltenham, Edward Elgar, 2018) and in particular Xiyin Tang, ‘Copyright in the expanded field: on land art and other new mediums’ (23–43) and Jani McCutcheon, ‘Copyright in bio art’. Also, E Bonadio and N Lucchi, ‘How far can copyright be stretched? Framing the debate on whether new and different forms of creativity can be protected’ (2019) 2 Intellectual Property Quarterly 115–135. 195 This list is the same as that set out in Bonadio and Lucchi (2018) (above n 194) 3-15. It of course also covers the same ground as chapter 3 of this book as these are well-understood principles of copyright law. 196 Tang (above n 194) notes that to be protected under US law a work must fall into one of eight categories (one of which is pictorial/graphic/sculptural works) (24).

Modern and Contemporary Art and Copyright 169

Bio Art Bio art operates at the intersection of art and the biological sciences – it is often a term used to apply to art created using biological materials in a laboratory, for example using DNA, tissue, blood, bacteria, plants etc (so called vitalist or ‘wet’ bio art) but also to conventional representations of biotechnology or conventional photographs, drawings or sculptures portraying biotechnology (so-called ‘dry’ bio art).197 It is a new yet increasingly established art form.198 Dry bio art does not appear to throw up any particular novel copyright questions (except to the extent the artistic work lacks originality – this might be an issue in say microscope images (whether optical or electron) of natural objects where the photographer’s creative freedom and ability to stamp their personality on their work might be limited, although in the author’s view there will in most cases be sufficient originality as such images require both technical skill and an aesthetic/creative sense – they are hardly slavish copies). Wet bio art raises a number of other issues – is there a copyright work (or just an ‘idea’ which is often the case – here the discussion above about conceptual art has relevance), fixation,199 is there an author recognised by copyright law (or indeed there could be many authors/collaborators) and so on. Some works of bio art (for example genetically engineered organisms or plant varieties) are arguably more suitable for patent or industrial property protection rather than copyright.200 In any event, as Jani McCutcheon eloquently argues much bio art would be created whether it was protected by copyright or not and if copyright is needed here it is to secure moral rights protection for the artist.201 Also, copyright protection if it were to extend to bio art would be relatively ‘thin’ covering the expression produced by the biological material not the material itself – indeed she sees a ‘potentially profound disconnect between copyright and a significant proportion of bio art’.202

Land Art Land art involves using the earth – the land and its landscape – as an artistic medium, making earthworks for example or making structures in the landscape using natural materials. Land art is considered part of the wider conceptual art movement discussed above (although some works might also be considered performance art). One very

197 See McCutcheon (n 194 above) for the distinction between wet and dry bio art (62–63). Waag give the following definition: ‘BioArt is an art practice where humans work with live tissues, bacteria, living organisms, and life processes. Using scientific processes such as biotechnology the artworks are produced in laboratories, galleries, or artists’ studios’ (https://waag.org/en/tags/bioart). 198 Judging by books on the subject (eg W Myers, Bio Art (London, Thames and Hudson, 2015)). 199 Here and in the context of biological works one might mention the US case Kelley v Chicago Park District 635 F.3d (7th Cir. 2011) which concerned the copyright protection of a wildflower garden created by the artist Chapman Kelley where the Federal Appeals Court commented ‘a garden is simply too changeable to satisfy the primary purpose of fixation; its appearance is too inherently variable to supply a baseline for determining questions of copyright creation and infringement’ – this decision has been criticised (see Tang (above n 194) 31–33). 200 See McCutcheon (n 194) 80. 201 78–80. 202 82.

170 Some Current Issues famous land art work is Robert Smithson’s Spiral Jetty of 1970, an earthwork built out into the Great Salt Lake in the US. He used mechanical earth-moving equipment to make the artwork giving the work an element of permanence.203 Other artists such as Richard Long have made more minimal and temporary interventions in the landscape – one of Long’s well-known works (A Line Made by Walking (1967)) involved Long walking up and down until he had made a mark in the earth – such a work has a performative aspect.204 Land art raises a number of legal issues, not just copyright related. For example, if a land art work is to have any degree of permanence and to avoid arguments that the work is illegal (see the discussion above about graffiti) then the artist will need to negotiate rights over the land in which the work is situated or to be offered such rights by say the commissioner of the work (if they are the landowner). This is outside the subject matter of this book. Looking at copyright, the discussion around land art has centred on whether a work of land art can be a copyright work – it would be straining categories to describe such works as sculptures (or works of artistic craftsmanship) although that is not to say such arguments might not find favour in the UK courts at least.205 In the US land artists have struggled to protect their rights under VARA.206 It has been argued that if copyright does not protect land art then alternative forms of protection should be considered – real property law and the doctrines of trespass and nuisance (but to be effective these rights demand the co-operation of the land owner).207

6.4.6. Film Copyright, Modern Art and Advertising: Gillian Wearing, Mehdi Norowzian and Beyond Some of the most creative British artists of recent times have abandoned or radically modified the use of traditional artistic media. Gillian Wearing, winner of the 1997 Turner Prize, is one of the best known of the so-called Young British Artists (YBAs). A number of her works have also provided inspiration for advertising campaigns. For example, ‘Signs’ (1993), a photographic work, involved people on the street being asked 203 In a sense the work is permanent – it has been around for nearly 50 years at the time of writing but it also can be submerged – it is actively preserved by the Dia Art Foundation. As the Foundation informs visitors to the work: ‘Dia is proud to be the owner and steward of Robert Smithson’s Spiral Jetty. We rely on your help to preserve the artwork for all of us now and for future generations. Please leave Spiral Jetty and the natural environment exactly as you found it. Visitors must ‘leave no trace’ at the site. Do not take existing rocks from the artwork or trample vegetation. Making fire pits near the artwork or on the parking lot is strictly prohibited and will result in significant fines. Carry out any waste with you’ (www.diaart.org/visit/ visit/robert-smithson-spiral-jetty). 204 www.tate.org.uk/art/art-terms/l/land-art. 205 In Lucasfilm Ltd v Ainsworth [2008] EWHC (Ch) 1878 Mann J commented: ‘A pile of bricks, temporarily on display at the Tate Modern for 2 weeks, is plainly capable of being a sculpture. The identical pile of bricks dumped at the end of my driveway for 2 weeks preparatory to a building project is equally plainly not. One asks why there is that difference, and the answer lies, in my view, in having regard to its purpose. One is created by the hand of an artist, for artistic purposes, and the other is created by a builder, for building purposes’ ([118]). 206 See Tang (above n 194). She specifically comments on Phillips v Pembroke Real Estate, Inc., 459 F. 3d 128 (1st Cir.2006) (concerning site specific sculptures in South Boston’s Eastport Park) and Kelley v Chicago Park District 635 F.3d 290 (7th Cir. 2011) (see n 199 above). 207 Tang (n 194) 37–42. See also how the Dia Art Foundation seek to preserve Spiral Jetty (see n 203 above).

Modern and Contemporary Art and Copyright 171 by the artist to write on signboards what they were feeling at the time and then holding the signs up in front of the camera. (One of the photographs of a young businessman with a sign reading ‘I’m Desperate’ became particularly well-known.) Wearing’s work allegedly inspired a Volkswagen advertisement in which a security guard, a harassed mother and others hold up signs stating what they are supposedly feeling (‘Sensitive’ in the case of the security guard, ‘Sex Chocolate Sex Chocolate’ in the case of the mother). ‘2 into 1’, a video work in which the voices of a mother and her sons are transposed, was allegedly emulated in a computer game advertisement. The artist protested about the taking of her ideas considering it to be ‘theft’, especially as there was no reference to her work.208 But no court proceedings ensued (or at least have been reported). However, a similar case, Norowzian v Arks Limited and Others (No 2),209 which went as far as the Court of Appeal, expressly considered the copyright protection afforded to contemporary artistic works, in particular film copyright. In this case, the plaintiff/ claimant, Mr Norowzian, was a film director and also a successful director of advertising films. In 1992, he directed a short film, Joy, which was made to demonstrate his creativity to potential advertising clients (rather than being an express piece of advertising). Joy was a very short film with no dialogue, produced on a very low budget and shot on the flat rooftop of a London building. The set was simply a canvas sheet draped over an existing structure on the roof where the filming took place. The cast is one man, casually dressed, who performs a strange dance to music. According to the judge at first instance, Rattee J, the particularly striking feature of the visual impact of the film was the result of the filming and editing techniques employed by Mr Norowzian: the filming was carried out with a camera in a fixed or ‘locked off ’ position, and the editing made extensive use of a process called ‘jumpcutting’. As defined by Rattee J, jump-cutting is: … a film editing process whereby the editor excises pieces of the original film within a sequence of movements by the actor, with the result that on the edited version of the film he appears to have performed successively, without an interval, two movements that could not have immediately succeeded each other.210

The result was a film containing apparent sudden changes of position by the actor/ dancer that could never have been performed as successive movements in reality. In the trial, this was referred to as giving the film a ‘surreal effect’.211 Joy, according to Mr Norowzian, tells the story of the development of the emotions of the sole character from diffidence to exuberant joy, portrayed by a development of his movements from tentative to increasingly broad and confident. Rattee J was of the view there was no doubt it was a striking example of a talented film director’s art. In 1994, a filmed advertisement for Guinness stout was shown in cinemas and on television in Eire and Northern Ireland and later (as a remake authorised by Guinness)

208 For background on Gillian Wearing and the works of art discussed, see ‘Daring Wearing by Miranda Sawyer: An Interview with the Artist’ Observer Magazine (3 September 2000). 209 [1999] FSR 79 (Rattee J), [2000] FSR 363 (CA). 210 Norowzian (ibid) (n 209 above) 81. 211 Ibid.

172 Some Current Issues in England and Wales. Called Anticipation, it portrays a man who waits for his pint of Guinness to settle by carrying out a series of dancing movements to music with no dialogue. There were two characters (drinker and barman) and a jump-cutting technique similar to that used in Joy, with a similar result: the dancing man appears to indulge in a series of jerky movements that could not be achieved by a dancer in reality.212 The makers of Anticipation had seen Joy – indeed, Mr Norowzian was asked to produce a similar commercial for Guinness but declined – and Guinness’ advertising agents then went off to produce Anticipation; the actor who played the drinker in Anticipation had also seen Joy. Following letters before action sent in 1994, 1995 and 1996, the plaintiff in 1997 commenced proceedings for copyright infringement and passing off against the advertising agency for Guinness, Arks, as well as its client, Guinness Brewing Worldwide Ltd (the second defendant) and Guinness plc, the holding company (the third defendant). The case was the subject of three judgments, none of which found in favour of Mr Norowzian.213 The issue the courts had to address was the scope of copyright protection for films. (There was an initial claim in passing off, but this was not pursued at trial.) In the United Kingdom, films are copyright works under section 1(1)(b) of the CDPA (as discussed above in chapter 3). However, all ‘film copyright’ protects is the film per se – ie, the recording. The copyright is designed to protect the copying of the frames of the film rather than the film being a copyright work in its own right. This copyright cannot be infringed by making a similar film unless actual frames of the original film are copied, and this was not the case in Norowzian. Of course, there will be a range of other copyrights protecting a traditional film – copyright in the music, in any sets and designs, and copyright in the screenplay, etc. Yet in an innovative film such as Joy, the range of more traditional copyright rights involved is potentially limited, and in any event, not all aspects may be copied. So in this case, in order to strengthen the copyright claim, it was argued that Joy was itself a recording of a dramatic work (a dramatic work includes a work of dance or mime).214 This argument failed at trial: according to the judge, for a dance or mime to be a dramatic work, it must be able to be physically performed,215 and this was not possible with the actions in Joy; nor could the film itself be a dramatic work under the CDPA. The Court of Appeal, however, found that a film could of itself be a dramatic work under the CDPA. This point was not advanced to any extent in the High Court. The expression ‘dramatic work’, according to Nourse LJ in the Court of Appeal, as a matter of construction must be given its natural and ordinary meaning. According to

212 Ibid. 213 Norowzian v Arks Ltd and Others (No 2), Interlocutory Judgment (Application to strike out part of the defence), Mr AG Steinfeld QC sitting as a deputy judge of the High Court (17 December 1997), [1998] FSR 394; Judgment of Mr Justice Rattee (17 July 1998), [1999] FSR 79; Court of Appeal Judgment of 4 November 1999, [2000] FSR 363. 214 A dramatic work must be recorded in writing or otherwise (eg, on film) to be protected: s 3(2) CDPA. 215 The only authority cited by the Judge for this was Lord Bridge in Green v Broadcasting Corporation of New Zealand [1989] RPC 700, 702: ‘it seems to their Lordships that a dramatic work must have sufficient unity to be capable of performance.’

Modern and Contemporary Art and Copyright 173 the judge, a dramatic work is ‘a work of action, with or without words or music, which is capable of being performed before an audience’.216 A film was often, though not always, a work of action, and it was capable of being performed before an audience. Hence it could be a ‘dramatic work’. But it need not also be a recording of a dramatic work (which Joy, like many cartoon films, was not). Buxton LJ agreed, relying on Article 14 bis of the Berne Convention to the effect that ‘dramatic works’ include not only drama in any traditional or normal sense but also cinematography. Having found Joy to be protected by copyright as a dramatic work, the Court then went on to consider whether Anticipation copied all or a substantial part of Joy. Counsel for Mr Norowzian had argued that Joy derived its original dramatic impact form a number of factors, including the filming and editing techniques used. These, he argued, were part of the skill, labour and judgement that Mr Norowzian applied to making Joy, and combined with the other similarities, their effect is to demonstrate that Anticipation borrows much of its dramatic impact from Joy. He therefore submitted that Anticipation reproduced a substantial part of the dramatic content of Joy – and therefore there was copyright infringement.217 The court rejected these arguments and held that copyright was not infringed. Nourse LJ’s reasoning is particularly relevant to the protection of art works by copyright: As [Rattee J] recognised, the highest that can be put in favour of [Mr Norowzian] is that there is a striking similarity between the filming and editing styles and techniques used by the respective directors of the two films. But no copyright subsists in mere style or technique. [Counsel for the defendant Arks Ltd] instanced the technique of pointillism, which was originated by the neo-impressionists Seurat and Signac. That was a telling example. If, on seeing La Baignade, Asnières at the Salon des Artistes Indépendents in 1884, another artist had used precisely the same technique in painting a scene in Provence, Seurat would have been unable, by the canons of English copyright law, to maintain an action against him. Other examples of original artistic styles or techniques whose imitation in the production of an entirely different subject matter would not found such an action might be the ‘sprung rhythm’ of Gerard Manley Hopkins’ verse or the thematic buildup of Sibelius’s second symphony. So here, the subject matter of the two films being, as [Rattee J] said, very different one from the other, the similarities of style and technique are insufficient to give [Mr Norowzian] a cause of action against the defendants.

According to Buxton LJ, the essence and originality of Joy rested in its subject matter: a representation in stylised form of a young man hesitating with tension when coming amongst a group of unknown people but gradually gaining self-confidence. That essence and originality was not reproduced at all in Anticipation.218

216 Norowzian CA judgment (above n 214) 367. 217 As discussed in H Porter, ‘A ‘Dramatic Work’ Includes … a Film’ (2000) Entertainment Law Review 50, 52. For another view of the Court of Appeal decision, see J Hughes and M Parry, ‘An Unsettling Feeling: A Second View of the Norowzian Decision’ (2000) Entertainment Law Review 56. And for a criticism of the treatment of film as ‘dramatic work’, see IA Stamatoudi, ‘‘Joy’ for the Claimant: Can a Film also be Protected as a Dramatic Work?’ (2000) 1 Intellectual Property Quarterly 117–26. The website copyrightuser.org contains a very helpful guide to film copyright and discusses Joy with a link to the Guinness advert—www.copyrightuser.org/educate/ the-game-is-on/episode-3-case-file-23/ (accessed 22 August 2020). 218 Ibid, 370.

174 Some Current Issues

6.4.7. The Limits of Appropriation: Parody Parody is a word with a wide range of meanings, and appropriation may or may not involve parody.219 Parody may include an element of satire or ridicule, and in more general terms, the work parodied is effectively re-used in all or part to perform a different function than the original work. However, unlike plagiarism, where the intention is to conceal the derivation of the work copied, a parodist relies on the audience’s awareness of the target work or genre to be successful: ‘The complicity of the audience is the sine qua non of its enjoyment.’220 A leading author on the subject, Linda Hutcheon, has spoken of parody as ‘imitation characterised by ironic inversion, not always at the expense of the parodied text’.221 According to Gredley and Maniatis, Hutcheon also sees parody as ‘one of the major forms of self-reflexivity in twentieth century art forms, marking ‘the intersection of creation and re-creation, of invention and critique’’.222 As well as copyright and moral rights, other intellectual property rights may also protect against parody, including trade marks.223 A parodist is unlikely to face problems

219 See M Spence, ‘Intellectual Property and the Problem of Parody’ (1998) 114 Law Quarterly Review 594 [hereafter ‘Spence (1998)’]; E Gredley and S Maniatis, ‘Parody: A Fatal Attraction? Part 1: The Nature of Parody and its Treatment in Copyright’ (1997) 7 European Intellectual Property Review 339; and WJ Gordon, ‘Touring the Certainties of Property and Restitution: A Journey to Copyright and Parody’ (Oct 1999) Oxford Electronic Journal of Intellectual Property Rights for a law and economics approach to parody and copyright infringement. For a recent discussion see S Jacques, The Parody Exception in Copyright Law (Oxford, Oxford University Press, 2019). See also the reports commissioned by the UK Intellectual Property Office (IPO) and published in 2013 exploring the introduction of a copyright exception for parody and pastiche and ‘the importance of parodic works both as a form of cultural expression and as a potential source of innovation and growth’ (available at www.gov.uk/government/publications/parody-and-pastiche (accessed 22 August 2020)). As noted in section 3.2.9 above such an exception was introduced in the UK in 2014 and its scope is considered there. The UK IPO reports include both economic and legal analyses. The legal analysis is a very useful survey of the law in seven jurisdictions including the UK (D Mendis and M Kretschmer, The Treatment of Parodies under Copyright Law in Seven Jurisdictions A Comparative Review of the Underlying Principles (Newport, The Intellectual Property Office, 2013)). In looking at the UK case law on parody the authors of the legal analysis find only a handful of cases (2.1) and note a more relaxed approach prior to the 1960s (where parody was permitted if the parodist ‘had bestowed such mental labour upon the material he had taken and had subjected it to such revision and alteration so as to produce an original work’ (Joy Music v Sunday Pictorial Newspapers (1920) Ltd [1960] 2QB 60 following Glyn v Weston Feature Film Company [1915] 1 Ch 261) – the turning point they see as Twentieth Century Fox Film Corp v Anglo-Amalgamated Film Distributors (1965) 109 S.J. 107). In this case, a poster based on the plaintiff ’s advertisement of their film Cleopatra was used by the defendants to produce a humorous poster Carry on Cleo and the judge found that ‘on a visual comparison … the defendant’s poster did reproduce a material part of the plaintiff ’s poster’ – the creativity and humorous intent of the parodist was no defence – there had been a substantial taking of the original work. The authors note ‘[t]he case was instrumental in its departure from previous case law, and for the first time, it sent out a strong signal in the shift in the copyright balance’ (2.1.2). 220 Gredley and Maniatis (ibid) (above n 219) 340. 221 L Hutcheon, A Theory of Parody: The Teaching of Twentieth-Century Art Forms (London, Methuen, 1985) 6. See also her later work, The Politics of Postmodernism (London, Routledge, 1989). 222 Gredley and Maniatis (above n 219) 339, citing Hutcheon (ibid n 221) 2. 223 As well as the law of passing off and registered designs (Spence (1998) (above n 219) 598–601). The use of trade mark law by corporations in North America to suppress parody or criticism is considered by R Coombes, The Cultural Life of Intellectual Properties (Durham, NC, Duke University Press, 1998). For example, in 1972, the Coca-Cola Company prevented the marketing of ‘ENJOY COCAINE’ posters in the same style as the well-known slogan ‘ENJOY COCA-COLA’: Coca-Cola Co v Gemini Rising Inc, 346 F.Supp 1183, 1193 (EDNY 1972). According to Coombes, US trade mark law will generally protect against parody (especially in a commercial context) on the grounds of either confusion or (more likely) the application of the trade

Modern and Contemporary Art and Copyright 175 if only the style or genre of other works is made the subject of parody, for there is then unlikely to be copyright infringement. However, where the expression, as opposed to the mere idea, of a work is copied for the purposes of parody, then there may well be a copyright issue. UK law, unlike the law in a number of continental jurisdictions,224 made no express exceptions for parody until relatively recently. Until the introduction of an express exception for ‘caricature, parody or pastiche’ into UK law in 2014 a parody would constitute an infringement of copyright if the parodist has taken a substantial part of the protected work, although merely ‘conjuring up’ the work being parodied did not normally amount

mark dilution doctrine in favour of the proprietor of the mark. This doctrine seeks to prevent the tarnishing or erosion of the reputation of a trade mark even if there is no confusion as such. US trade mark law can potentially restrict artists who appropriate trade marks, whether words, signs or images (which may or may not be protected by copyright as well). Coombes (73–74) cites the artist Hans Haacke’s work ‘Metromobilitan’, which used Mobil Oil’s trade marks to criticise Mobil’s activities in South Africa and its sponsorship of South African art in the era of apartheid and in respect of which legal action was threatened. UK/EU trade mark law also has provisions around trade mark dilution (see, eg, Azumi Ltd v Zuma’s Choice Pet Products Ltd and others [2017] EWHC 609 (IPEC) and in the context of parody as a defence to trade mark infringement see Ate My Heart Inc v Mind Candy Ltd [2011] EWHC 2741 (Ch) – the singer Lady Ga Ga obtained an interim injunction to block the release of Lady Goo Goo song – this was clearly in a commercial context where the defendant had a money-making objective, a point noted by commentators – see, eg, www.harbottle.com/news/lady-gagasinjunction-ate-my-heart-inc-v-mind-candy-and-moshi-music/ (accessed 22 August 2022)). However, a UK Supreme Court judge commented in 2015 that ‘… the importance of freedom of expression seems to me to suggest that judges should be astute to avoid the risk of routinely accepting that every statement which may or even does tarnish a well-known trade mark should be treated as unlawful’ (Lord (David) Neuberger, ‘Trade Mark Dilution and Parody’, 2015 Fox Intellectual Property Lecture, Toronto www.supremecourt.uk/docs/ speech-150220.pdf) 21). Nevertheless he also commented: ‘[a]s I see it, the position appears to be that, under EU and UK law, just as parody can in principle give rise to a copyright infringement claim, so can parody in a commercial context in principle give rise to a [trade mark] infringement claim on the basis of dilution, notwithstanding that the use is unlikely to be confusing’ (32). An example of where an attempt to prevent a commercial parody failed in the law of passing off on the basis that the mark was used on different goods (ie, there was no common field of activity) is the use of ‘Schlurppes’ as a ‘joke’ (in contrast to ‘Schweppes’) in Schweppes Limited v Wellingtons Limited [1984] FSR 210 but this case predates current UK trade mark law where trade mark dilution now has a statutory basis (s10(3) Trade Marks Act 1994 – see above discussion). See also below ch 8 for a discussion of trade mark law, including the law of passing off (in particular, the publication of the satirical secret political diaries of Alan Clark were prevented inter alia by the law of passing off: Clark v Associated Newspapers [1998] RPC 261). For a relatively recent South African Constitutional Court case in which freedom of expression trumped trade mark rights (and which Lord Neuberger (ibid) comments on), see Laugh It Off Promotions CC v South African Breweries International (Finance) BV t/a Sabmark International and Another (CCT42/04) [2005] ZACC 7, 2006 (1) SA 144 (CC), 2005 (8) BCLR 743 (CC) (27 May 2005). The trade mark at issue was South African Breweries’ mark ‘America’s lusty, lively beer Carling Black Label Beer Brewed in South Africa’. The defendants Laugh It Off were producing and selling t-shirts that lampooned the trade mark by stating: ‘Africa’s lusty, lively exploitation since 1652 White Black Labour Guilt No regard given worldwide’. At the end of his very thoughtful judgment, Sachs J concludes, ‘A society that takes itself too seriously risks bottling up its tensions and treating every example of irreverence as a threat to its existence. Humour is one of the great solvents of democracy. It permits the ambiguities and contradictions of public life to be articulated in non-violent forms. It promotes diversity. It enables a multitude of discontents to be expressed in a myriad of spontaneous ways. It is an elixir of constitutional health’ (para 110). As will be seen from the above discussion the relationship between trade mark law and parody is a complex and developing one – one recent development is Recital 21 to the amended EU Trade Mark Regulation (Regulation (EU) No 2015/2424) which states: ‘[u]se of a trade mark by third parties for the purpose of artistic expression should be considered as being fair as long as it is at the same time in accordance with honest practices in industrial and commercial matters. Furthermore, this Regulation should be applied in a way that ensures full respect for fundamental rights and freedoms, and in particular the freedom of expression.’ 224 For example, France and Spain: see, eg, A Ramalho, ‘Parody in Trademarks and Copyright: Has Humour Gone Too Far?’ (2009) Cambridge Student Law Review 58.

176 Some Current Issues to infringement.225 The exception now permits parody if it is ‘fair dealing’. However parodists also potentially face liability for infringement of moral rights – that of derogatory treatment and the right to object to false attribution of authorship.226 It is a matter of some debate as to when a parody might constitute derogatory treatment.227 Does the parody have to be offensive to the spirit of the work? Or will most parodies not be derogatory treatment in any event because they are not usually prejudicial to the honour or reputation of the original artists, in the sense that a parody will not be made out to be the work of the (parodied) artist?228 Others argue that moral rights should strongly protect against parody.229 By way of example of the difficulties the law of copyright and moral rights face when dealing with artistic parodies, consider the Swedish case Max Walter Svanberg v Leif Eriksson.230 The plaintiff was an internationally recognised Swedish surrealist artist. The defendant, a well-known satirist, exhibited a reproduction of one of Svanberg’s works, to which Eriksson had added serigraphically printed comments and printing instructions. The intention was to add to the debate in Sweden about the propriety of selling reproductions of graphic works and to act as a satire on the commercial practices involved in graphic art. The plaintiff sued for infringement of copyright, and the case eventually went to the Supreme Court of Sweden. The Court held that Eriksson’s additions, which only covered a minor portion of Svanberg’s work, could clearly be distinguished from Svanberg’s work, and no material alteration to the central elements of Svanberg’s work had taken place. So the artistic integrity of Svanberg’s work was not compromised, and Svanberg’s reputation as an artist had not suffered as a result of Eriksson’s actions to the reproduction.231 225 S 16 CDPA. See, for example, the music and literary copyright case Williamson Music Ltd v Pearson Partnership Ltd [1987] FSR 97. The test formulated by Judge Paul Baker QC in this case was ‘whether the parody, on the one hand, conjures up the idea of the original work and no more than the idea or, on the other hand, whether it uses a substantial part of the expression of the original work’ (107). As Mendis and Kretschmer note above (n 219) it is no longer a defence to argue that because a parody is itself an original copyright work then there is no copyright protection. See, for example, the criticism of this (old) approach by Falconer J in Schweppes Limited and Others v Wellingtons Limited [1984] FSR 210, approved by Judge Paul Baker QC in Williamson Music (106): if a substantial part is taken, then unless a fair dealing defence can be relied upon (eg, (as of 2020) for purposes of parody or criticism or review or quotation, per s 30 CDPA), there will prima facie be infringement. See below. 226 Under s 84(1) CDPA, actionable without proof of damage. See Clark v Associated Newspapers [1998] RPC 261 (above n 223), which involved a spoof diary of the politician Alan Clark by Peter Bradshaw entitled Alan Clark’s Secret Political Diaries. The plaintiff succeeded under both s 84(1) and the law of passing off. 227 See Spence (1998) (above n 219) 597–98. 228 This is the view taken by Copinger (1999) (above n 15) para 11-46, citing Clark v Associated Newspapers (above n 223), in which derogatory treatment did not arise as there was no ‘treatment’ of the plaintiff ’s work because the plaintiff ’s style rather than his actual work was involved. According to Copinger, only where the treatment is made out to be the plaintiff ’s can there be infringement. Copinger, however, foresees one case where there might be derogatory treatment: where those who read, see or hear the plaintiff ’s work will no longer be able to do so without recalling to mind the parody, to the prejudice of the original artist’s honour or reputation. 229 S Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886–1986 (London, Kluwer, 1987) 486. 230 (1979) EIPR D-93. 231 Indeed, the County Court of Appeal in this case stated that derived art forms were common in artistic and especially modern art circles: artistic practice in this area should be borne in mind when considering the issue of infringement and artists’ rights (Svanberg v Eriksson (ibid) 94); this point was not overruled by the Supreme Court.

Modern and Contemporary Art and Copyright 177 It is possible that certain parodies may benefit from both the parody exception as well as one of the other fair dealing defences available under the CDPA, in particular, fair dealing for the purposes of criticism or review.232 However, this would only be a defence to copyright infringement, not to infringement of moral rights. Certainly a parody can fall within the much broader fair use doctrine in the United States as a form of criticism; unlike UK and Canadian law, for example, the US fair use doctrine is in general far more flexible as regards parodies.233 Nevertheless, in Rogers v Koons,234 the celebrated kitsch artist Jeff Koons was unable to rely on this defence when sued for copyright infringement in respect of a sculpture he created. The sculpture was a copy of a well-known black-and-white photograph ‘Puppies’ showing a man and a woman on a bench with a string of eight German Shepherd puppies. Koons argued that he had created a parody of modern society; however, the Court was of the view that the work copied must itself be at least in part the object of parody. This was to set some practicable boundaries to this defence.235 The defendant’s ‘bad faith’ and ‘profit-making motives’ were also fatal to his case.236 There has been a debate about whether parody should be afforded special treatment under the law. According to Michael Spence (writing in 1998), four arguments were often advanced:237 a. Parody should be treated as a distinctive genre as it deserves special treatment. b. The problem of parody is one of ‘market failure’, as owners of copyright works are unlikely to grant licences to permit the creation of parodies; and so the law 232 S 31 CDPA. In Williamson Music (above n 225), Judge Paul Baker QC seemed to accept that fair dealing for the purpose of criticism or review might be successfully relied on in certain circumstances but declined to discuss the matter further. See Copinger (1999) (above n 15) 9–18. But Copinger (1999) foresees problems with this defence. There must be ‘sufficient acknowledgement’ of the work parodied – ie, there must be an acknowledgement identifying the work in question by its title or other description and identifying the author, unless (in the case of a published work) it is published anonymously or (in the case of an unpublished work) it is not possible to ascertain the identity of the author by reasonable enquiry: Copinger(1999) (above n 15) 9-21. Both Spence (1998) (above n 219) and Copinger (1999) see such a defence as unlikely in many cases, as it appears to run counter to publishing practice, and ‘one of the benchmarks against which a parody can be judged is its success in making a connection with the work being parodied without any form of express reference’: Copinger (1999) (above n 15) 9-18. 233 See Campbell v Acuff-Rose Music (Supreme Court) (above n 73). Gordon (above n 219) contrasts the limited fair dealing defences in Canadian law with the fair use doctrine in the US, and she cites a Canadian case involving the parodic use of a Michelin logo by a trade union, in which an argument that Acuff-Rose be applied was rejected: Cie Generale des Establissements Micheline-Michelin & Cie v CAW-Canada, 71 CPR 3d 348): Gordon (above n 219) 9. According to Gredley and Maniatis (above n 219), the Supreme Court in AcuffRose in any event arguably reinforced a narrow, traditional view of parody, placing it firmly in the context of ridiculing distortion or criticism: ‘To justify a finding of fair use, the parody must – at least in part – recognisably target and comment on or criticise the original work’ (343). Certainly this was the view taken in Rogers v Koons (above n 24) (see below), which was cited by Justice Kennedy in Acuff-Rose. 234 Above n 24. 235 See LD DuBoff and CO King, Art Law in a Nutshell, 3rd edn (St Paul, MN, West Group, 2000) 186. 236 See Gredley and Maniatis (above n 219) 342. Gredley and Maniatis critically discuss at some length the approach of the US courts to parody and, in particular, the application of the fair use defence as elaborated in Koons, the landmark Campbell v Acuff-Rose Music case (above n 73) and others. They conclude: ‘The theoretical and practical difficulties of applying the US fair use doctrine to parody, and of arriving at a consistent and coherent approach which would establish certainty both for parodists and owners of parodied works, has led to calls for the redefinition of parody and its recognition as a separate art form for copyright purposes’ (343). But fair use continues to have its place in US law relation to art – see Cariou v Prince discussed in section 6.4.2 above. 237 Spence (1998) (above n 219) 601–15.

178 Some Current Issues should intervene to allow new creative works such as parodies to come into existence.238 c. Parody involves the ‘transformative’ use of a copyright work – ie, a new creative work arises that is not a market substitute for the earlier work, notwithstanding its dependence on it.239 d. Parodists’ right to free speech should be protected.240 In conclusion, Spence (as of 1998) considered that parody by itself did not require special legislation in the United Kingdom – existing statutes and laws potentially gave judges the scope to balance the rights of intellectual property holders and the free speech rights of parodists.241 However, others have called for the reform of UK copyright law here and for the introduction of a specific copyright exception for parody, which would be compatible with the Information Society Directive. As noted earlier, this movement for change bore fruit and in 2014 a specific exception for was introduced into UK law – fair dealing with a work for the purposes of caricature, parody or pastiche.242 This exception is discussed in section 3.2.9 above.

238 See Gordon (above n 219). 239 It is argued that allowing transformative uses encourages the production and dissemination of texts and that it is also necessary for the preservation of certain types of artistic discourse: see Spence (1998) (above n 219) 605, citing the German case Alcolix BGH (1994) GRUR 206, 208. According to Spence, the argument in this case was that artists must be able to use existing works if they are to communicate effectively and to speak freely about and through the artistic tradition in which they work; although as Spence rightly points out, this seems to be a variant of the argument that parody should fall within the right to free speech (607). As discussed above, UK law once recognised this idea, which stems from Glyn v Weston Feature Film Company [1916] 1 Ch 261, 268: ‘no infringement of the plaintiff ’s rights takes place where the defendant has bestowed such mental labour upon what he has taken and has subjected it to such revision and alteration as to produce an original result’ (per Younger J). However, this is now no longer the case: see Williamson Music (above n 225). Nevertheless, Laddie opens the door to this idea, eg, ‘where the parody does not really injure the copyright owner, save in his amour propre’: HIL Laddie, P Prescott, M Vitoria et al, The Modern Law of Copyright and Designs, 3rd edn (London, Butterworths, 2000) 3.142 fn 6. See also the possibility that a form of the fair use doctrine might still apply in the UK. In any event, a number of other jurisdictions do give weight to this idea (eg, Australia (probably), the US (Campbell v Acuff-Rose Music (above n 73)), Germany and Italy): Spence (1998) (above n 219) 605–6. 240 It should not be forgotten that copyright, in the sense of printing privileges, arose as a means of suppressing free speech and, more particularly, religious heresy. Note that there is only likely to be a conflict between the right to freedom of expression under human rights law and copyright law (with freedom of expression trumping copyright) in very rare circumstances if at all: see in particular the Court of Appeal in Ashdown v Telegraph Group [2002] RPC 5. See, for example, the discussion in CJ Angelopoulos, ‘Freedom of Expression and Copyright: The Double Balancing Act’ (2008) 3 Intellectual Property Quarterly 328–53. See also EU copyright law developments which stress that copyright exceptions already provide a means for balancing copyright against fundamental rights, eg Funke Medien NRW GmbH v Germany C-469/17 ECLI:EU:C:2019:623 and n 97 above. 241 Spence (1998) (above n 219) 615–20. 242 Recent UK copyright law reviews recommended a parody exception. See Gowers Review of Intellectual Property, HM Treasury (2006) Recommendation 12, para 4.90: ‘Create an exception to copyright for the purpose of caricature, parody or pastiche by 2008’; and I Hargreaves, Digital Opportunity: A Review of Intellectual Property and Growth, UK Intellectual Property Office (May 2011) para 5.37. See also the arguments advanced by C Rutz, ‘Parody: A Missed Opportunity?’ (2004) 3 Intellectual Property Quarterly 284–315. As noted in section 3.2.9 above, in Johan Deckmyn and Vrijheidsfonds VZW v Helena Vandersteen and Others, C-201/13, EU:C:2014:2132 the CJEU has also noted that parody is an autonomous concept of EU law.

Modern and Contemporary Art and Copyright 179

6.4.8. Appropriation and Parody: Some Concluding Thoughts As Alfred Yen has eloquently pointed out,243 striking a balance between the interests of authors and that of the public is crucial in setting the limits to which copyright law can be used to prevent appropriation. Yen has stressed that authorship in its broadest sense is possible only when future authors are able to borrow from those who went before them. If too much of existing works is reserved as private property through the copyright system, then would-be authors will find it impossible to create. Hence, as stated earlier in this book, a strong public domain is a vital part of any copyright system.

6.4.9. Film, Video, Multimedia Works, Animation, Computer Games and Performance Works: Copyright and Performers’ Rights As will be clear from the discussion elsewhere in this book, when the copyright protection of works that do not neatly fall into the categories of ‘artistic work’ in section 4 of the CDPA is considered, difficulties arise. This is because UK copyright law currently protects only certain categories of works; the wider concept of ‘intellectual creations’ is not as yet part of UK copyright law (as applied by the UK courts), as it is in some European laws (but see section 3.2.1 above for a discussion of recent developments relating to the concept and categorisation of a ‘work’ in the EU and recent UK cases). For example, take a film, a video work, a computer game or a multi-media work (with animation, say): the CDPA only specifically defines and deals with films (and any underlying software would be protected as a literary work). Accordingly, a film as a ‘copyright work’244 is protected both as a form of ‘intellectual creation’ (in a limited sense, based on case law, as a ‘dramatic work’245) and as a ‘commodity production’ under section 5B of the CDPA (with no express requirement of originality).246 A film for this purpose is ‘a recording on any medium from which a moving image by any means can be produced’ (with the sound track being treated as part of the film). This is a broad

243 AC Yen, ‘The Interdisciplinary Future of Copyright Theory’ in M Woodmansee and P Jaszi (eds), The Construction of Authorship (Durham, NC, Duke University Press, 1994) 159–61. 244 See s 1 CDPA. 245 Norowzian v Arks Ltd (No 2) [2000] FSR 363. But query who the authors of a film as a dramatic work are – presumably as joint authors all those involved in creating it: see M Spence, Intellectual Property (Oxford, Oxford University Press, 2007) [hereafter ‘Spence (2007)’] 99–100. 246 Anne Barron discusses film copyright at some length in A Barron, ‘The Legal Properties of Film’ (2004) 67(2) Modern Law Review 177–208. She notes there are two UK approaches to film copyright (as discussed in this section): a ‘physicalist’ approach, which treats a film as co-extensive with its recording on some medium, and a ‘formalist’ approach, which treats a film as an expressive form that exceeds this physical manifestation. As discussed in Norowzian v Arks, the expressive form is that of a dramatic work. Barron has also commented that by only potentially protecting film as ‘dramatic work’ (which by its nature will have limits even if broadly defined as works of action, with or without words or music, which are capable of being performed before an audience (see Nourse LJ in Norowozian) – Barron refers to a film as a dramatic work as a ‘story on celluloid’ (205)), ‘Norowzian has both revealed the legal conditions of possibility for the commercial dominance of fiction cinema, and exposed the large gap between this conception of film aesthetics and the much wider conceptions that are adhered to by film practitioners, theorists and audiences. In other words, the ultimate legacy of Norowzian has been to map out a site of instability in copyright discourse that is now proving to be a space for critical reflection about the law’s role in relation to film’ (Barron (2004) 207–8).

180 Some Current Issues definition covering films, video works, animation and potentially other ‘recordings’.247 In the case of a film under section 5B, copying is restricted by copyright in the film (section 17(1) of the CDPA), and this includes making a photograph of the whole or any substantial part of any image forming part of the film (section 17(4) of the CDPA). For a video work, its recording will be protected as a film under section 5B, and it may also be protected as a dramatic work, together with any sound track (which may benefit from a separate copyright in the sound recording) and along with any other copyrights (literary, dramatic and musical works) underlying the music and any dialogue and action. So rather than there being one category of multimedia or similar work, multimedia works and videos comprise various copyright-protected elements.248 In addition, under UK law, performers enjoy protection for their performances; this right is complex but in essence gives performers control over their performances as soon as they are recorded (ie, a film or sound recording is made of the performances).249 It should be noted that there is debate about the legal protection of computer games, especially those with a significant amount of audiovisual content dependent on the player’s interaction. Clearly, they will involve underlying literary works (software), artistic works and sound recordings, but following an Australian case, they may also be considered to be films.250 However, where the ‘plot’ of a game depends on player interactions, it can be questioned whether there is a sufficiently clearly delineated dramatic work involved.251

6.5. Orphan Works252 6.5.1. Background There has been much discussion in recent years about updating copyright law to deal with the perceived problem of ‘orphan works’, especially in an era of mass digitisation 247 Spence (2007) (above n 245) 100. Here, the authors are the producer and principal director jointly (s 9 CDPA). 248 See WR Cornish, D Llewelyn and T Aplin, Intellectual Property, 7th edn (London, Sweet & Maxwell, 2010) 881–82; and T Aplin, Copyright Law in the Digital Society (Oxford, Hart Publishing, 2005). By way of example, consider the work of new media artists Jon Thomson and Alison Craighead: much of their work combines a range of data, information and copyright protected works into new art forms, including installations and video works. See http://thomson-craighead.net/ (accessed 22 August 2020). 249 A protected performance may be a dramatic performance (including dance and mime); a musical performance; a reading or recitation of a literary work; or a performance of a variety act or similar presentation (s 180(2) CDPA). See Spence (2007) (above n 174) 122–23. Note that the performance must be a live one given by one or more individuals (s 182(2) CDPA). Note also that the broadcasting of a live performance also falls within performers’ rights (s 182 CDPA). See generally R Arnold, Performers’ Rights, 4th edn (London, Sweet & Maxwell, 2008). 250 Sega Enterprises Ltd v Galaxy Electronics Pty Ltd (1997) 145 ALR 21. Note that following CJEU jurisprudence the courts might treat them as copyright protected works however they are classified: ‘videogames …. constitute complex matter comprising not only a computer program but also graphic and sound elements, which, although encrypted in computer language, have a unique creative value which cannot be reduced to that encryption. In so far as the parts of a videogame, in this case, the graphic and sound elements, are part of its originality, they are protected, together with the entire work, by copyright in the context of the system established by Directive 2001/29’ (Nintendo C-355/12 (ECLI:EU:C:2014:25), para 23). 251 See the discussion above ch 3, s 3.2.4 about the need for certainty regarding what is protected by copyright. 252 This section is based in part on discussions at the 2011 Workshop ‘Who Owns the Orphans? Traditional and Digital Property in Visual Art’, University of London Senate House (17 March 2011). The author is grateful to Professor Uma Suthersanen, Dr Maria Mercedes Frabboni and their colleagues, who organised

Orphan Works 181 by libraries, museums, archives and galleries of works in their possession for both preservation purposes and broadening access through online display. There are a number of definitions of ‘orphan works’. One is that they are works whose rights-holders are not known or easy to find and trace.253 If such works appear likely to be still in copyright, then the fact they are ‘orphans’ may well dissuade their owners to digitise and/or make them available online, due to their inability to clear the rights to use the works in question, even after diligent searching. The fear is that the rights-holders may emerge in the future and claim copyright (and possibly moral rights) infringement, and the institution concerned therefore does not wish to risk financial penalties (damages, licensing fees) and adverse publicity. The possibility that digital archives and libraries are being held back by the uncertainly over orphan works was identified as an important issue in both the United States and the European Union, as it hinders the public dissemination of cultural goods to the benefit of society as a whole.254 Vetulani in 2008 noted: Discussions on how to deal with orphan works are currently being undertaken by stakeholders and cultural and collective management institutions [ie, collecting societies] at different levels and scopes. Some of them have been initiated by the stakeholders themselves, others by the European Commission or by Member States. Generally speaking, the aim of these discussions is to find a solution to facilitate the use of orphan material without prejudice to copyright. The eventual solution should provide legal certainty both to users and right holders, should the right holders reappear after the use of orphan works was made without their explicit consent.255

There are a number of possible solutions. One is to create a specific exception to copyright law to deal with orphan works;256 other options include limiting a user’s liability the workshop under the Arts and Humanities Research Council ‘Beyond Text’ programme, as well as to his fellow participants. It also draws on S Stokes, Digital Copyright Law and Practice (Hart Publishing, Oxford, 2019) 259–263. For background to this area see also M Favale, F Homberg, M Kretschmer, D Mendis and D Secchi, ‘Copyright, and the Regulation of Orphan Works: A comparative review of seven jurisdictions and a rights clearance simulation’ CREATe Working Paper No 7 (2013) (available at www.create.ac.uk/publications/ copyright-and-the-regulation-of-orphan-works/ (accessed 17 May 2020)). The Working Paper reviewed seven jurisdictions and noted that ‘two distinct approaches appear to be used for governing orphan works in the jurisdictions reviewed. The first may be labelled ‘ex-ante’, and involves rights clearing before a work is used, the second is ‘ex-post’ and typically involves the management of infringement risks by the user.’ 253 An alternative definition is to focus on how works that originally were clearly traceable (eg, picture library images containing metadata to identify the copyright owner, etc) intentionally become ‘orphaned’ when this metadata is stripped away by third parties and/or are used without proper credits. This is perceived to be a particular problem for photographic and visual art images: eg, S Fodor (of the Coordination of European Picture Agencies Stock, Press and Heritage (CEPIC)), ‘Orphan Works: Challenges and Opportunities’, submission to the European Commission’s Public Hearing on Orphan Works’ (26 October 2009). Strictly speaking, however, this is not really an orphan works issue – the stripping away of rights management information is itself potentially an unlawful act under EU copyright law (Art 7, Information Society Directive) and so is not discussed further in this section. 254 In the United States, see US Copyright Office, Report on Orphan Works: A Report of the Registrar of Copyrights (January 2006) [there is also a later report in 2015 noted below]. In the European Union, see, eg, A Vetulani, The Problem of Orphan Works in the EU: An Overview of Legislative Solutions and Main Actions in This Field, European Commission, DG Information Society (February 2008); and A Vuopala, Assessment of the Orphan Works Issue and Costs for Rights Clearance, European Commission, DG Information Society (May 2010). 255 Vetulani (ibid n 254) 5. 256 ie, a specific exception to copyright or a limitation on the user’s liability. In the UK there is already some limited provision here: eg, s 57 CDPA states that copyright is not infringed where it is not possible by reasonable inquiry to ascertain the identity of the author and where it is reasonable to assume that copyright has expired or the author died 70 years or more before the infringing act. Attempts in the UK following the 2006

182 Some Current Issues for copyright infringement if they carried out a ‘diligent search’257 or various licensing models and schemes,258 as well as at the same time encouraging the establishment of copyright registers to allow for easier searching of rights.259 Considering the licensing approach, one might view an orphan works licence as a form of insurance against a copyright infringement clam: if the rights holder of an orphan work emerges after the granting of an orphan works licence they are entitled to the licence fee paid and can prohibit any further licences being granted. In the UK there is also the possibility of collecting societies offering extended collective licensing (ECL) (ie they are authorised to grant copyright licences in respect of works not owned by or licensed to the licensing body) which could also address orphan works issues and the Hargreaves Review recommended establishing a Copyright Hub to streamline licensing.260 Both the UK and the European Union have now legislated in this area. The EU’s Directive ‘… should ensure that orphan works can be digitised and used in the information society’.261

6.5.2. The EU Approach – The Orphan Works Directive262 The Orphan Works Directive provides an exception to the right of reproduction (but only for the purposes of digitisation, making available, indexing, cataloguing, preservation or restoration) and communication to the public for the use of orphan works. Orphan works under the Directive are copyright works or phonograms where none of the right-holders can be identified (or if identified, located) despite a diligent search being carried out in accordance with the Directive (Article 3). Such a search also Gowers Review of Intellectual Property (above n 242) to implement orphan works provisions in the Digital Economy Bill 2010 failed. See DWK Khong, ‘The (Abandoned) Orphan-Works Provision of the Digital Economy Bill’ (2010) 32(11) European Intellectual Property Review 560–64. However, the UK now has a licensing regime in place (see below). The Orphan Works Directive follows the exception route (see below). 257 As has been proposed for the USA – one proposal talks of only ‘reasonable compensation’ being payable by the user if they have complied with the search requirements rather than a higher level of infringement damages (see below). NB the two US proposals from 2008 (see n 278 below) were of limited application to the visual arts: ‘[i]nterestingly, commercial applications of visual works are excluded from this beneficial regime. Fixation of graphic or sculptural material on useful articles offered for sale is not included in the limitation of remedies’ (M Favale et al (2013) (above n 252) at 12). 258 For example, under one scheme, users who cannot reasonably locate a copyright owner would pay a modest fee to a ‘licensing’ agency that, even if not mandated by the rights holder concerned (which appears unlikely given they cannot be traced by the user), is given a ‘licence’ – in effect, an indemnity to protect them should the rights-holder appear at some point. In some ways, this is similar to the user buying insurance. There are a number of voluntary and mandatory licence models under recent discussion: see, eg, Khong (ibid). 259 See, eg, the EU ARROW Project: N Kroes (Vice-President of the European Commission responsible for the Digital Agenda), ‘Addressing the Orphan Works Challenge: The International Federation of Reproduction Rights Organisations (IFRRO) Launch of ARROW+ (Accessible Registries of Rights Information and Orphan Works towards Europeana)’, Press Release (Brussels, 10 March 2011). 260 See Stokes (2019) (above n 252) for a discussion of ECL and the Copyright Hub. 261 Kroes (ibid n 260). On 24 May 2011, the Commission published its proposal: ‘Proposal for a Directive of the European Parliament and of the Council on Certain Permitted Uses of Orphan Works’ Com(2011) 289 Final. As noted below the Directive was adopted. 262 Directive 2012/28/EU (OJ L299, 27 October 2012) 5.

Orphan Works 183 includes a search of relevant sources listed in the Annex to the Directive. These works and phonograms must be protected by copyright or related rights and be first published in a Member State or, in the absence of publication, first broadcast in a Member State. So, a work first published in the US but now in an EU collection would not benefit from the Directive. It should be noted that under the Directive orphan works are not necessarily all categories of copyright works – artistic works which are standalone are not included (eg photographs, images of other artistic works and illustrations) unless they are incorporated in (or embedded in or constitute an integral part of) a relevant work under the Directive – for example they are an integral part of a book, a journal, a newspaper, a magazine or other writings, or a cinematographic or audiovisual work which in each case qualify as an orphan work under the Directive.263 Uses of orphan works permitted by the Directive are limited to certain uses made of orphan works by ‘publicly accessible libraries, educational establishments and museums, as well as by archives, film or audio heritage institutions and public-service broadcasting organisations, established in the Member States, in order to achieve aims related to their public-interest missions’.264 The permitted uses are ‘to achieve aims related to their public-interest missions, in particular the preservation of, the restoration of, and the provision of cultural and educational access to, works and phonograms contained in their collection. The organisations may generate revenues in the course of such uses, for the exclusive purpose of covering their costs of digitising orphan works and making them available to the public.’265 Right-holders are able at any time to put at an end to orphan work status and where this is done they are to be entitled to fair compensation for the use that has been made of their works. The Directive was implemented into UK law by The Copyright and Rights in Performances (Certain Permitted Uses of Orphan Works) Regulations 2014 which created a new copyright exception for orphan works (section 44B CDPA together with Schedule ZA1 CDPA) with effect from 29 October 2014.266 Unlike the UK licensing scheme noted below, no application or fee is required under the Directive and the UK implementing regulations – but a diligent search must be carried out to benefit from the exception and this (and certain other information) must be recorded in the EU database of orphan works maintained by EUIPO (formerly OHIM).267 Orphan works designated as an orphan work in another EU Member States are to be treated as orphan works in the UK as well – Schedule ZA1 clarifies what is meant by a diligent search.268 Once the transitional period following the UK’s exit from the EU ends (at the time of writing 31 December 2020) then the exception under the Orphan Works Directive 263 See Art 1 of the Directive. 264 Article 1(1). 265 Article 6(2). 266 SI 2014/2861. 267 Paragraph 5(9), Sch ZA1 CDPA. 268 Paragraph 5, Sch ZA1 CDPA – both the relevant database maintained by the EU (OHIM/EUIPO) (https:// euipo.europa.eu/orphanworks/ (accessed 16 May 2020)) and (if there is no record in the EUIPO database then the relevant sources listed in Part 2 of Schedule ZA1 to the CDPA must be searched against. The relevant body must carry out the diligent search prior to making use of the orphan work.

184 Some Current Issues will no longer apply in the UK and will be repealed. UK institutions will then need to rely on the UK scheme (see below). The UK Intellectual Property Office’s guidance at the time of writing is: By 1 January 2021 UK cultural heritage institutions will need to: • remove any orphan works currently placed online under the exception • consider seeking a licence under the UK’s orphan works licensing scheme • where they have a licence to use the work in the UK, consider limiting online access to users based in the UK to avoid copyright infringement in the EEA269

The UK’s exit from the EU orphan works regime will have a significant impact on UK cultural heritage institutions who have been heavy users of the regime.270

6.5.3. UK Legislation Relating to Orphan Works – The UK’s Orphan Works Licensing Scheme The Orphan Works Directive is of narrow scope. It focuses on non-commercial, public interest uses of orphan works by a limited set of organisations and right-holders remain able to opt out. As noted above, it is also of limited application to artistic works. In parallel with the adoption of the Directive, the UK had already started exploring ways of addressing the orphan works issue. In May 2011, the Hargreaves Review had recommended: The Government should legislate to enable licensing of orphan works. This should establish extended collective licensing for mass licensing of orphan works, and a clearance procedure for use of individual works. In both cases, a work should only be treated as an orphan if it cannot be found by search of the databases involved in the proposed Digital Copyright Exchange.271

The UK Government put forward legislation for orphan works licensing and extended collective licensing in the Enterprise and Regulatory Reform Act 2013 – the Act permits the Secretary of State to make regulations to license the use of orphan works that are much broader than the Directive provides for (covering commercial as well as noncommercial use potentially as well as a broader range of works). In 2014 Regulations272 were made that appointed the Comptroller-General of Patents, Designs and Trade Marks as the authorising body with the power to grant licences of orphan works in respect of which a diligent search has been carried out in accordance with the Regulations. A UK Orphan Works Licensing Scheme is now in operation and a number of such licences have now been granted.273 A fee must be paid for the licence in question and

269 www.gov.uk/guidance/orphan-works-and-cultural-heritage-institutions-copyright-after-the-transitionperiod (accessed 16 May 2020). 270 See, eg, https://blogs.ucl.ac.uk/copyright/tag/orphan-works/ (accessed 16 May 2020). 271 Recommendation 4. 272 The Copyright and Rights in Performances (Licensing of Orphan Works) Regulations 2014 (SI 2014/2863). 273 www.orphanworkslicensing.service.gov.uk/view-register (accessed 16 May 2020). A search of the register on 16 May 2020 revealed 700 results in the category ‘still visual art’ (including photographs, oil paintings, architectural drawings, and posters) and 15 in the category ‘moving images’.

Orphan Works 185 the diligent search requirements are quite extensive.274 All licences are non-exclusive, do not permit sub-licensing of the work and can be a maximum of seven years. They can be renewed for a further term not exceeding seven years. They are limited in territorial scope to the UK. The IPO will hold the licence fee on behalf of the right holder. Following the end of the Brexit transition period (currently 31 December 2020) licensees under the UK scheme will no longer need to consult the EUIPO orphan works database as part of the diligent search. No other changes will be made to the diligent search requirements or the UK licensing scheme in general following Brexit.275 The success of the UK’s orphan works licensing scheme has been debated – its take up has been limited and it can be considered bureaucratic and onerous and also requires the payment of fees.276

6.5.4. Orphan Works in the US In the US, recent attempts to legislate in this area have had mixed results.277 Proposed legislation in 2008 would have given the user of an orphan work protection from certain infringement remedies (should the copyright owner of the orphan work subsequently emerge) provided the user had performed a reasonably diligent search for the author of the work prior to use.278 Such a scheme reduces the user’s risk and limits their liability but does not eliminate it and does not give certainty to the user they will be free of a claim from the author/copyright owner.279 But it avoids the need to apply for a licence before using the work. The US Copyright Office has conducted several studies in this area (including one in 2006) and its latest report (2015) set out recommendations for legislation in this area.280 The Office recommended a legislative framework that would limit good faith orphan works users’ legal liability similar to that in the proposed Shawn Bentley Orphan Works Act of 2008.281 These remain proposals at the time of writing. 274 See www.gov.uk/guidance/copyright-orphan-works (accessed 16 May 2020). 275 www.gov.uk/guidance/orphan-works-and-cultural-heritage-institutions-copyright-after-the-transitionperiod (accessed 16 May 2020). 276 See, eg, M Martinez and M Terras, 2019. ‘Not Adopted’: The UK Orphan Works Licensing Scheme and How the Crisis of Copyright in the Cultural Heritage Sector Restricts Access to Digital Content. Open Library of Humanities, 5(1), 36. DOI: http://doi.org/10.16995/olh.335. 277 Khong (above n 256). Note, however, that s 108(h) US Copyright Act, which dates from 2005, is a limited exception/‘safe harbour’ for libraries and certain other institutions in respect of preservation, scholarship or research in respect of works in the last 20 years of their copyright term. See also ss 107 and 504 US Copyright Act in respect of ‘fair use’ protections here as well under US law. For a critique of relatively recent US proposals, see N Netanel, Copyright’s Paradox (New York, Oxford University Press, 2008) 205–7. 278 There were two legislative proposals – the Orphan Works Act 2008 and the Shawn Bentley Orphan Works Act of 2008. As noted above (n 257) they had limitations in relation to the visual arts. 279 See Yael Lifshitz-Goldberg, Seminar at WIPO on Orphan Works May 2010—www.wipo.int/edocs/mdocs/ sme/en/wipo_smes_ge_10/wipo_smes_ge_10_ref_theme11_02.pdf (accessed 16 May 2020). The paper refers to the Orphan Works Act of 2008. 280 See www.copyright.gov/orphan/ (accessed 16 May 2020) – the 2015 report was entitled ‘Orphan Works and Mass Digitization’. 281 This includes ‘reasonable compensation’ being the monetary remedy where a diligent search was performed (subject to certain further qualifications and limitations, eg if the infringer were a not for profit entity and the infringement was not commercial). NB The draft Bill included in the report removes limitations on remedies in relation to artistic works as follows: ‘EXCLUSION FOR FIXATIONS IN OR ON USEFUL

186 Some Current Issues

6.6. Art, Originality, Infringement and the Development of EU Copyright Law As noted earlier in this book, the Information Society Directive is the current key piece of European copyright law, both for digital and non-digital works and infringement.282 Almost 20 years on from its adoption, there are now many domestic and CJEU cases dealing with the application and interpretation of the Directive. A number of the more important cases are noted elsewhere in this book and considered in greater detail there. UK copyright law is now firmly influenced by CJEU case law which was not the case when the first edition of this book was written. Several important points emerge from the CJEU case law of relevance to artistic copyright (as well as more generally); much of which was already in place (even if in embryo) when the second edition of this book was published:283 a. The communication to the public right in Article 3 of the Information Society Directive should be interpreted broadly.284 b. Exceptions to copyright must be interpreted strictly.285 c. The reproduction right set out in Article 2 of the Directive is a Community concept to be interpreted uniformly across the Union – so this covers direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or part of an author’s ‘works’ (and also films, etc) and should also be interpreted broadly.286 d. ‘Works’ must be ‘intellectual creations’287 (so it can be argued that the concept of what a work is should be broader than the specifically defined categories in UK law).288 e. The test for the originality of a work is that it is the author’s own intellectual creation.289 This also has implications in terms of how copyright infringement is assessed.290 ARTICLES – The limitations on remedies under this section shall not be available to an infringer for infringements resulting from fixation of a pictorial, graphic, or sculptural work in or on a useful article that is offered for sale or other commercial distribution to the public’ (s 514 (f)). 282 Directive 2001/29/EC. 283 The case law is now voluminous – in this section the focus is in the main on the earlier cases which have formed the foundation for how these concepts have been developed by the CJEU – for a comprehensive recent survey see E Rosati, Copyright and the Court of Justice of the European Union (Oxford, Oxford University Press, 2019). 284 Sociedad General de Autores (above n 119). Moreover, the definition of the right in s 20(2) CDPA is not exhaustive: ITV Broadcasting v TV Catch Up (above n 119); and Twentieth Century Fox v Newzbin (above n 119). See also Recital 23 of the Information Society Directive (above n 282): ‘This right should be understood in a broad sense covering all communication to the public not present at the place where the communication originates.’ 285 Infopaq International v Dansk Dagblades Forening [2009] EUECJ C-5/08 (16 July 2009) para 56. See also the UK case Newspaper Licensing Agency Ltd & Others v Meltwater Holding BV & Others [2010] EWHC 3099 (Ch) (26 November 2010), [2011] EWCA Civ 890 (27 July 2011) 22. 286 Infopaq (ibid) paras 27–29 and 41–43. 287 Ibid, para 34. 288 This argument is made in C Handig, ‘Infopaq International A/S v Danske Dagblades Forening (C-5/08): Is the Term ‘Work’ of the CDPA 1988 in Line with the European Directives?’ (2010) 32(2) European Intellectual Property Review 53–57. For example, the definition of a work in German copyright law is ‘exemplary’, not exhaustive. This is discussed further in chapter 3 of this book. 289 Infopaq (above n 192) paras 30–51. In other words, the author’s ‘creativity’ rather than the traditional UK law concept of ‘sweat of the brow’ is what counts. Again, this is discussed in ch 3 above. 290 See discussion in ch 3.

Brexit and UK Copyright Law Relating to Artistic Works 187 The implications of the CJEU cases has been and continues to be far-reaching. As discussed elsewhere in this book, considerations of what a copyright work is, what is meant by originality and the test for infringement are all now matters of EU law as far as the UK is concerned. At the time of writing, the CJEU had recently delivered its judgement in Cofemel291 which is likely to be a very influential case in relation to artistic works, as discussed in chapter 3. Indeed the very notion that only ‘artistic’ works can be protected by copyright appears to be displaced in that case by a test based purely on the work being the author’s own intellectual creation, with no consideration of aesthetics. However, once the Brexit transitional period ends the UK courts will no longer be bound by future CJEU copyright cases (although one would expect such cases to be influential). But as discussed below prior EU and CJEU case law will ‘crystallise’ in the UK at that time and so will continue to apply unless the UK legislator wishes to disapply or change it. This means UK copyright law will remain heavily influenced by EU copyright law after Brexit.

6.7. Brexit and UK Copyright Law Relating to Artistic Works292 The UK left the EU on 31 January 2020 but then entered into a transition period expiring at 11pm on 31 December 2020. The transition period preserves EU copyright law in place until it ends. Once the transition period ends EU law no longer has any effect in the UK (except in so far as Parliament has decided EU law is to be retained pursuant to domestic legislation) and the UK becomes a ‘third country’ as far as the EU is concerned. The UK Government has decided to retain the majority of EU copyright law in place but amended to reflect the fact the UK is no longer in the EU. For example, as discussed elsewhere in this book, artist’s resale right will continue to apply in the UK as will other aspects of EU copyright law (modified as necessary) other than the EU orphan works exception. But the UK will no longer be subject to future decisions of the CJEU. Nor will the Supreme Court be bound by any retained EU case law (and nor is the High Court of Justiciary when sitting as a court of appeal (apart from in very limited circumstances)). In deciding whether to depart from any retained EU case law, the Supreme Court or the High Court of Justiciary must apply the same test as it would apply in deciding whether to depart from its own case law. The UK Government has also made clear that it does not intend to implement the controversial Copyright in the Digital Single Market Directive as the deadline for Member State implementation falls beyond the end of the current transition period and so the UK is not required to implement it.293 291 Cofemel (Copyright and related rights – Judgment) [2019] EUECJ C-683/17. 292 Emily Gould has produced a useful commentary – see https://ial.uk.com/interesting-times-for-copyrightlaw-in-the-uk/ (accessed 23 May 2020) and see Alexander Herman’s earlier commentary – https://ial.uk.com/ brexit-and-the-changes-to-art-law/ (accessed 23 May 2020). The European Union (Withdrawal) Act 2018 contains the provisions that deal with what EU law is ‘retained’ in the UK following Brexit and how it is to be interpreted. 293 BBC News, 24 January 2020 (comments of Universities and Science Minister Chris Skidmore) (www. bbc.co.uk/news/technology-51240785). This Directive has been controversial not least due to its attempts to

188 Some Current Issues At this stage, the author can only speculate on how UK copyright law will develop after Brexit. Nearly all of the present structure will remain in place initially but the Supreme Court not the CJEU will be the final arbiter. And the UK legislator will have supremacy. One assumes that over time there will be divergence between UK and EU copyright law but how wide the divide will be remains to be seen.

6.8. Freedom of Panorama294 As discussed in chapter 3, copyright regulates the reproduction and communication to the public of works protected by copyright. This on its face is a very broad right. Simply taking a photograph of a building which is an architectural work and in copyright or a sculpture protected by copyright even in a public place would on its face infringe copyright (right of reproduction). This would be compounded if the images were placed on the internet (including social media) (where the right of communication to the public would be infringed). Not surprisingly many copyright systems have sought to limit copyright’s scope in such circumstances by creating an exception which would allow the photography of buildings or works of art in public places, for example. In the UK such an exception is in section 62 CDPA and is discussed in chapter 3. However, such exceptions are piecemeal and vary from country to country. Some countries such as Argentina, Belgium, France, Greece, Italy have very limited exceptions or none at all – it has been commented ‘users who take a selfie in front of the Pyramide du Louvre in Paris would not be authorised to post it on social media’.295 In addition certain countries also have additional restrictions beyond copyright law – these may be rights of privacy or in Italy, for example, a law protecting cultural heritage which prohibits the commercial reproduction of public heritage goods – reproductions of Michelangelo’s David for example are caught by this restriction.296 Such a right has been termed ‘freedom of panorama’ – being ‘the legal right in some countries to publish pictures of artworks, sculptures, paintings, buildings or monuments that are in public spaces, even when they are still under copyright’.297 There has strengthen the application of copyright law to platforms but it contains a range of measures including some relevant to cultural heritage institutions and others of more general benefit to authors which it appears those in the UK will now not benefit from. 294 See M Dulong de Rosnay and P-C Langlais (2017). Public artworks and the freedom of panorama controversy: a case of Wikimedia influence Internet Policy Review 6(1) -https://policyreview.info/articles/analysis/ public-artworks-and-freedom-panorama-controversy-case-wikimedia-influence (accessed 23 May 2020). Also, A Shtefan Freedom of panorama: the EU experience (2019) 11(2) European Journal of Legal Studies 13–27. 295 Dulong de Rosnay and Langlais (n 294 above). However, in 2016 France did introduce a limited freedom of panorama exception for individuals only and for non commercial use – L 122-5 of the French Intellectual Property Code—www.dreyfus.fr/en/2016/12/06/copyright-adoption-of-the-controversial-panorama-exception/ (accessed 23 May 2020). It appears that the use of images on Wikimedia which permits subsequent commercial use of uploaded images (under the terms of its Creative Commons licence to users) would still fall foul of French law despite this exception (see the article by the French law firm Dreyfus cited earlier). Also the sharing of an image on a social media site which requires the user to grant rights in the image for commercial purposes is also problematic (a point made by Julia Rada in relation to Facebook – https://juliareda. eu/2016/06/last-call-freedom-of-panorama/ (accessed 23 May 2020)). 296 Articles 107 and 108 of the Italian Code on Cultural Heritage and Landscape (see blog by S Barabino – https://blogs.dlapiper.com/iptitaly/author/sbarabino/ (accessed 23 May 2020)). 297 See Dulong de Rosnay and Langlais (n 294 above).

Traditional Cultural Expressions, Intangible Cultural Heritage and Copyright 189 been a movement to press for this right to apply across the EU (which would conflict with Member States such as France who strongly limit this right). This is driven in part by a desire that images of such works should be freely available on sites such as Wikipedia and social media. One contested area is the scope of such a right – should it just be limited to non-commercial use or be broader? The boundaries between commercial and non-commercial use can be blurred especially when social media and internet sites are concerned.298 At the moment the right is not harmonised across Europe – Member States are allowed to have an exception to copyright law in this area under the Information Society Directive.299 Attempts to introduce legislation to address freedom of panorama in the latest EU copyright directive (Copyright in the Digital Single Market Directive) were controversial and in the end were dropped.300

6.9. Traditional Cultural Expressions, Intangible Cultural Heritage and Copyright301 6.9.1. Traditional Cultural Expressions The non-Western art forms of indigenous peoples pose a particular challenge to copyright law, as does the whole question of how the Western legal concept of intellectual property relates to cultural expressions (including folklore) and indigenous knowledge from non-Western societies.302 Aboriginal peoples in particular (not least because of 298 This is a point made by the Wikimedia movement (https://meta.wikimedia.org/wiki/Freedom_of_ Panorama_in_Europe_in_2015/Learn_more) who comment: ‘Commercial and non-commercial are legally not clearly defined and such a distinction on the internet is sometimes impossible to make. The Wikimedia movement encourages freedom for contributors and wants to ensure that its educational materials are spread as widely and efficiently as possible. Therefore, content is licensed to allow even commercial uses.’ 299 Article 3(h). 300 Dulong de Rosnay and Langlais (n 294 above). See also https://juliareda.eu/2016/03/copyright-consultation/ (accessed 23 May 2020) (Julia Reda is a strong advocate of the right). There is, however, an exception in the Directive relating to artistic works in the public domain (although not a freedom of panorama exception as such) – this is discussed earlier in this chapter (section 6.1.5). 301 For a detailed consideration of this area see D Zografos, Intellectual Property and Traditional Cultural Expressions (Cheltenham, Edward Elgar, 2010). See also T Janke, Minding Culture: Case Studies on Intellectual Property and Traditional Cultural Expressions (WIPO, 2003) and CB Graber and M Burri Nenova (eds), Intellectual Property and Traditional Cultural Expressions In a Digital Environment (Cheltenham, Edward Elgar, 2008). For a discussion relating to the EU (the Sami and Basque peoples) see CP Arnesen, ‘Protection of traditional cultural expressions: an EU perspective’ (2014) 9(5) Journal of Intellectual Property Law & Practice 389–396. Andreas Rahmatian in contrast discusses the dangers and pitfalls of what he considers to be a usually well-meaning protection of traditional cultural expressions – its ethnic stereotyping and segregating effect (A Rahmatian, Universalist Norms for a Globalised Diversity: On the Protection of Traditional Cultural Expressions (October 1, 2007). F Macmillan New Directions in Copyright Law, Vol 6 (Edward Elgar, Cheltenham, 2007) 199–231. Available at SSRN: https://ssrn.com/abstract=2366073). This area remains one of continuing interest even if internal progress in this area at WIPO is slow – see, eg M Rimmer (ed), Indigenous Intellectual Property: A Handbook of Contemporary Research (Cheltenham (UK) and Northampton (Mass.): Edward Elgar, 2015). 302 See FW Grosheide et al (eds), Articles on the Legal Protection of Cultural Expressions and Indigenous Knowledge (Antwerp, Intersentia, 2002). For further background, see BT Hoffman (ed), Art and Cultural Heritage Law, Policy, and Practice (Cambridge, Cambridge University Press, 2006) esp ‘Part Seven: Who Owns Traditional Knowledge?’ and WB Wendland, ‘Intellectual Property and the Protection of Traditional Knowledge and Cultural Expressions’, which looks at what the World Intellectual Property Organisation in Geneva

190 Some Current Issues the experience in Australia and New Zealand) may wish to have redress should items with particular religious or cultural significance be copied in inappropriate ways or in breach of tribal secrecy.303 For example, in Australia, ‘The right to create paintings and other artworks depicting creation and dreaming stories, and to use pre-existing designs and well recognised totems of the clan, resides in the traditional owners (or custodians) of the stories or images.’304 These and similar works may fail to be adequately protected by copyright/moral rights305 because, for example: a. It may be difficult to show that they are original works for copyright purposes: often such works are evolutionary and derivative in nature.306 However, this may

(WIPO) have been involved with in terms of international initiatives in this area. See also the work of Silke von Lewinski, eg, her chapter ‘Protection of Folklore’ in S von Lewinski, International Copyright Law and Policy (Oxford, Oxford University Press, 2008). The terms ‘folklore’ and ‘traditional cultural expressions’ are the preferred terms here and are often used simultaneously: von Lewinski (above) 527. ‘Traditional knowledge’ is also a term used, but this relates less to copyright and expressive art forms and more to knowledge or techniques (often kept secret) that may have medicinal or other uses (and are often of interest to Western companies): B Hammer Jensen, ‘Who Owns Traditional Knowledge? A Personal and Industry View’ in Hoffman (ed) (above) 340–51. For a recent survey of the law in this area in Australia see M Sentina, E Mason and T Janke, Terri Janke and Company, Legal protection of Indigenous Knowledge in Australia Supplementary Paper 1 (commissioned by IP Australia and the Department of Industry, Innovation and Science, 2018) (available at www.ipaustralia.gov.au/sites/default/files/supp_paper_1_legal_protection_in_australia_28mar2018.pdf (accessed 22 August 2020). 303 If such works are not in the public domain, then the law of confidence might be a useful source of protection: Foster v Mountford (1976–78) 29 FLR 233, in which the Supreme Court of the Northern Territory suppressed the publication of an anthropology text that revealed tribal secrets. See also below ch 8. 304 Milpurrurru and Others v Indofurn Pty Ltd and Others (1994) 130 ALR 659, para 12 (per von Doussa J). The judge also noted that under Aboriginal law, it is the responsibility of the traditional owners to take action to preserve the dreaming and to punish those responsible for the breach, even if they themselves had no control over or knowledge of what occurred (para 13). Sanctions can include the removal of the right to participate in ceremonies and to paint stories; ostracism; forced payment of money; and in serious cases, the possibility of physical violence, such as spearing. It is therefore not surprising that aboriginal artists have been forced to take action against those infringing their copyright: by vigorously pursuing their rights, aboriginal artists may well be hoping for more lenient treatment by their clans. Linked to this is also the extent to which the common law should recognise traditional or customary law. In the landmark case Mabo v Queensland (1992) 175 CLR 1, the High Court of Australia held that the common law of Australia recognises a form of native [land] title. See generally M Blakeney, ‘Protecting Expressions of Australian Aboriginal Folklore under Copyright Law’ (1995) 9 European Intellectual Property Review 422 [hereafter ‘Blakeney (1995)’]. 305 See generally E Evatt, ‘Enforcing Indigenous Cultural Rights: Australia as a Case Study’ in UNESCO and Institute of Art and Law (eds), Cultural Rights and Wrongs (Leicester, Institute of Art and Law, 1998); and for some comments from a New Zealand perspective, see E Gray, ‘Maori Culture and Trade Mark Law in New Zealand’ in C Heath and A Kamperman Sanders (eds), New Frontiers of Intellectual Property Law: IP and Cultural Heritage, IIC Studies in Industrial Property and Copyright Law Volume 25 (Oxford, Hart Publishing, 2005). For a commentary on Australian developments and some cases relating to aboriginal art, see C Golvan, ‘Aboriginal Art and Copyright: An Overview and Commentary Concerning Recent Developments’ (1999) European Intellectual Property Review 599 [hereafter ‘Golvan (1999)’]. He notes that aboriginal artists have been involved in litigation to protect their copyright on an almost continual basis since 1988, beginning with Bulun Bulun v Neljam (unreported). In this 1988 case, John Bulun Bulun and other Northern Territory artists brought an action in the Federal Court in Darwin concerning the unauthorised reproduction of their artworks on t-shirts. The case settled before judgment, and a sum of AUS$150,000 was paid in settlement. 306 As discussed above ch 3, the ‘author’ is crucial to whether a work is ‘original’: ‘the work must not be copied from another work … [I]t should originate from the author’: University of London Press v University Tutorial Press [1916] 2 Ch 601, 608; and see Sherman (above n 148) 118–25.

Traditional Cultural Expressions, Intangible Cultural Heritage and Copyright 191 not necessarily rule out a finding of ‘originality’ in all cases – see, for example, the Australian case of Milpurrurru and Others v Indofurn Pty Ltd and Others.307 b. Following on from the previous point, who the author is may be a difficult question in any event, given that such works are frequently communal in nature. UK copyright law, for example, does not recognise ‘communal authors’ in copyright works (although protection is afforded to ‘anonymous’ works308); a work can be of joint authorship, but all the authors need to be identified. In any event, even if there is an identifiable author, this can still cause problems for the community as a whole: the fact that the work in question may have been authorised by traditional custodians will not be enough to give these persons rights in the work if, for example, the creator were to exploit the work outside the parameters permitted by the community. This was precisely the situation in the Australian case of Yumbulul v Reserve Bank of Australia: Aboriginal artist Terry Yumbulul was criticised by his clan for allowing a reproduction of his work (a Morning Star pole produced under the authority of the clan).309 French J in this case stated, ‘Australia’s copyright law does not provide adequate recognition of Aboriginal community claims to regulate the reproduction and use of works which are essentially communal in origin.’310 c. What is copied is the style of the work in question or its subject matter or themes. Whilst this may cause offence to the group in question, the copying falls on the ‘idea’ side of the idea/expression dichotomy,311 and therefore copyright is not infringed. An example is the acrylic dot style used in traditional Australian Aboriginal art, which is not protected.312 d. A work such as a body painting may lack any requirement of ‘fixation’.313 e. Moral rights may be unavailable or not properly applicable, especially where the harm is communal.314

307 Above n 304. Milpurrurru involved an action brought by three aboriginal artists and the Public Trustee for the Northern Territory, in whom the Administration and Probate Act 1988 had vested the real and personal property of five other aboriginal artists, who had died before the proceedings commenced, against the importers into Australia of carpets made in Vietnam that reproduced the artists’ designs. In this case, although the artworks follow traditional aboriginal form and are based on dreaming themes, the judge held that each artwork was one of intricate detail and complexity, reflecting great skill and originality and therefore ‘original’ for copyright purposes (para 20). The judge also had no difficulty in finding that those carpets that were not exact reproductions of the artworks nevertheless reproduced a substantial part of the artworks in question (and hence were infringing), despite the respondents’ argument that what was reproduced were designs, symbols and themes common to many aboriginal artworks (see paras 69–90). Counsel for the applicant artists, Colin Golvan, has stated that in his view von Doussa J adopted a liberal approach in favour of the artists to the issue of substantial copying, indicating a strong preference on the part of the judge to prohibit the unfair and unauthorised practices of the respondents in the circumstances: Golvan (1999) (above n 305) 600). 308 S 57 CDPA. 309 Yumbulul v Reserve Bank of Australia (1991) IPR 481. 310 Ibid, 490. 311 See above ch 3. 312 Evatt (above n 304) 73. Although note the approach of von Doussa J in Milpurrurru (above n 204). 313 As discussed above ch 3, s 3.2.4. 314 Moral rights are ‘personal’ as opposed to communal in nature. There have been discussions in Australia about introducing ‘communal moral rights’: see generally E MacKay, ‘Indigenous Traditional Knowledge, Copyright and Art: Shortcomings in Protection and An Alternative Approach’, University of New South Wales Faculty of Law Research Series, Paper 15 (2010).

192 Some Current Issues f.

g.

A work may be in the public domain as far as copyright law is concerned, having been created more than ‘life plus 70 years’ from the act of infringement at issue, even though it may be considered secret by the tribal group or by the people ‘owning’ the work. Even if a court finds there has been infringement, the remedy awarded will generally be to compensate the artists themselves by way of damages and not to compensate their communities for inappropriate use of their images.315 However, an Australian case, John Bulun Bulun and Another v R&T Textiles, has recognised that Australian Aboriginal artists can come under fiduciary duties to their community.316 In that case, the artist was entitled to pursue the exploitation of the artwork for his own benefit, but he was still under a fiduciary duty not to act in a manner that would harm the communal interests of his clan. Equity would therefore intervene in circumstances in which an artist (as the copyright owner at law) fails or is unable to take legal action to protect communal interests.317

Despite the encouraging development of this area in Australia, it remains the view of many commentators that copyright law as developed in the Western world – with its emphasis on copyright as a species of private property – is ill-suited to protect traditional works.318 The copyright protection afforded to aboriginal and similar works is part of a wider discussion of how traditional knowledge in its broadest sense is

315 The principles underlying the award of damages in this area have been given detailed consideration by the Australian courts in Milpurrurru (above n 304) and John Bulun Bulun and Another v R&T Textiles Pty Ltd [1998] FCA 1082 (3 September 1998) (includes corrigendum). In Milpurrurru, von Doussa J noted that although the applicants argued that the unauthorised use of their artworks was in effect the pirating of cultural heritage, under copyright law, damages could only be awarded insofar as the ‘pirating’ caused a loss to the copyright owners (as opposed to their communities). However, von Doussa J nevertheless acknowledged the communal aspects by stating that the anger and distress directed at the artists by their community arising out of the infringement could constitute part of the compensation for ‘personal suffering’ by the artists, a recognised head of damages for copyright infringement in his view (paras 144–46). In any event, in this case, the judge felt able to award substantial additional damages for flagrant infringement of copyright (following the English Court of Appeal in Williams v Settle [1960] 1 WLR 1072) in recognition inter alia of the harm caused to the living artists in their cultural environment (paras 158 and 160). The judge’s approach to damages has also been considered by Blakeney (1995) (above n 304), who sees the recognition of cultural harm in this case as a recognition that customary aboriginal laws may be taken into account in quantifying the damage suffered (443). 316 Bulun Bulun v R&T Textiles (ibid n 315). 317 See Golvan (1999) (above n 305); and AT Kenyon, ‘The Artist Fiduciary: Australian Aboriginal Art and Copyright’ (1999) 2 Entertainment Law Review 42. Bulun Bulun (above n 315) involved a claim of copyright infringement by the aboriginal artist John Bulun Bulun and (through John Bulun Bulun) his clan in respect of fabric printed in Indonesia and imported into Australia. The fabric was found to infringe Bulun Bulun’s work ‘Magpie Geese and Water Lillies at the Waterhole’, which had a very significant place in the cultural and spiritual life of the artists’ indigenous community, the Ganalbingu people. The judge (von Dousa J again), however, rejected an argument that based on customary law and old common law copyright cases, there was collective or communal ownership of the copyright itself: copyright is now solely a creature of statute. In particular, s 35(2) of the (Australian) Copyright Act 1968 effectively precludes any notion of group ownership in an artistic work, unless it is of ‘joint authorship’; here, there was no suggestion that the author was anyone other than Bulun Bulun. 318 See, for example, M Blakeney, ‘The Protection of Traditional Knowledge under Intellectual Property Law’ (2000) 6 European Intellectual Property Review 251 [hereafter ‘Blakeney (2000)’] 256. See also C Golvan, ‘Aboriginal Art and Copyright: An Overview and Commentary Concerning Recent Developments’ (1996) 1 Media and Arts Law Review 151: ‘One of the challenging aspects of the Aboriginal copyright litigation has involved attempts to create meaningful links between the interests of the artists and the culture and practice of the Western legal system.’

Traditional Cultural Expressions, Intangible Cultural Heritage and Copyright 193 protected by law, including intellectual property law. In other words, are indigenous cultural rights adequately protected at law?319 Should sui generis forms of protection for ‘traditional knowledge’, for example, be introduced,320 on the grounds that the Anglo-Saxon system is too much centred on a single identifiable author with personal property rights?321 Or should traditional knowledge be viewed simply as being in (and remaining in) the ‘public domain’, on the basis that it should not be ‘commodified’ or made the subject of a property right in order to avoid impeding the free flow of information? There are developments in this area at the international level, albeit very slow moving. For example, in 1982 the United Nations Educational, Scientific and Cultural Organisation (UNESCO) and the World Intellectual Property Organisation (WIPO) proposed ‘Model Provisions for National Laws on the Protection of Expressions of Folklore against Illicit Exploitation and other Prejudicial Actions’, which were adopted by WIPO and UNESCO in 1985.322 In 1989, the UNESCO General Committee also adopted a ‘Recommendation on the Safeguarding of Traditional Culture and Folklore’. In 1993, there was also a Draft United Nations Declaration on the Rights of Indigenous Peoples, which made references to the issues outlined above.323 Despite these activities, an effective international regime for the protection of expressions of ‘folklore’ has not so far developed. In 1997, a joint UNESCO–WIPO World

319 For a discussion of the Australian experience, see Evatt (above n 305); and MacKay (above n 314). 320 In Australia, the introduction of specific rights for aboriginal artists has been criticised as unduly emphasising ‘traditional’, ‘authentic’ aboriginal art at the expense of urban aboriginal artists who operate outside their traditional culture: S Gray, ‘Freedom or Fossilisation: Proposed Legislative ‘Protection’ for the Work of Aboriginal Artists’, 50th Anniversary Conference of the Australasian Law Teachers’ Association, Cross Currents: Internationalism, National Identity & Law (1995). Arguments in favour of collective, community sui generis rights protection (rather than the expansion of copyright/IP law itself to deal with some of the current issues) is that such a system (unlike IP law) will not be rooted in the ‘colonial’ Western concept of IP, which is simply incapable of adapting to communal, traditional concepts of property and its exploitation. See the WIPO Draft Report on Fact-finding Missions on Intellectual Property and Traditional Knowledge (1998–99), Draft for Comment (3 July 2000) [‘WIPO Draft Report’], available at www.wipo.int (accessed 5 December 2020). See also below n 331. For a careful consideration of the issues regarding sui generis rights, see MacKay (above n 314). See also the critical analysis in K Weatherall, ‘Culture, Autonomy and Djulibinyamurr: Individual and Community in the Construction of Rights to Traditional Designs’ (2001) 64(2) Modern Law Review 191. More recent consideration is given in K Bizer, M Lankau, G Spindler, P Zimbehl, Sui Generis Rights for the Protection of Traditional Cultural Expressions Policy Implications, 2 (2011) JIPITEC 114, 1 (see www.jipitec.eu/issues/jipitec-2-2-2011/3083 (accessed 23 May 2020). 321 In contrast, indigenous customary law emphasises group ownership and community involvement in decision-making: K Puri, ‘Is Traditional or Cultural Knowledge a Form of Intellectual Property?’ (Jan 2000) Oxford Electronic Journal of Intellectual Property Rights, in which Professor Puri stated, ‘the IP regime is inherently inappropriate or dysfunctional in relation to the needs of indigenous peoples … [A] sui generis legislation is the answer.’ He also argues for the revision of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) to include specific rights to protect indigenous peoples’ traditional knowledge and IP rights: Arts 22, 23 and 24, for example, should be amended to provide for the introduction of indigenous collective certifications and geographical indications to protect indigenous arts, cultural expressions and traditional knowledge. 322 Several countries have enacted legislation based in part on these Model Provisions, including Nigeria (see Blakeney (2000) (above n 318). This is really a form of sui generis protection: see the WIPO Draft Report (above n 320). 323 Art 12 included the right ‘to maintain, protect and develop the past, present and future manifestations of their cultures, such as … artefacts, designs, ceremonies, … visual and performing arts …’ Other rights relating to intellectual property were also formulated and/or recognised: Blakeney (2000) (above n 318) 258–59.

194 Some Current Issues Forum on the Protection of Folklore was convened.324 In 1998, WIPO was given the mandate to undertake exploratory research to identify the issues for the international intellectual property system and to assess the needs of stakeholders in the field of traditional knowledge; this took place during 1998–99.325 Then in late 2000 at the WIPO General Assembly, member states agreed to the establishment of an Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore.326 This Committee’s work has included developing draft provisions for the protection of ‘traditional cultural expressions’ (or, ‘expressions of folklore’), including music, art, designs, names, signs and symbols, performances, architectural forms, handicrafts and narratives.327 After ten years’ work, firm progress was reported towards the goal of an international treaty to protect traditional cultural expressions.328 However writing in 2020 and another ten years later there is no international treaty yet in place. The latest draft provisions to protect traditional cultural expressions were published by WIPO in June 2019.329 Whilst progress at the international level is slow WIPO’s work is highlighting this area and is encouraging states to consider legislating in this area or at least promoting awareness that IP rights such as copyright can apply to traditional cultural expressions. For completeness, it should also be noted that the World Trade Organisation (WTO) has also been involved in this area but primarily in the context of patents.330 However, paragraph 19 of the 2001 Doha Declaration also states that the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Council should also look at the relationship between the TRIPS Agreement and the UN Convention on Biological Diversity and at the protection of traditional knowledge and folklore.331

6.9.2. Intangible Cultural Heritage The above discussion on traditional cultural expressions and copyright falls within a broader concept of ‘intangible cultural heritage’. UNESCO have commented that ‘Cultural heritage does not end at monuments and collections of objects. It also includes

324 At the end of the Forum, a Plan of Action was adopted, which expressed concerns about the inadequacy of copyright law and the need for a new international agreement on the sui generis protection of folklore. The participants from the UK and USA, however, expressly disassociated themselves from the Plan of Action: Blakeney (2000) (above n 318) 260. 325 For the work of WIPO as the specialised UN agency responsible for promoting intellectual property worldwide and the different Member State perspectives on this area, see WB Wendland, ‘Intellectual Property and the Protection of Cultural Expressions: The Work of the World Intellectual Property Organisation (WIPO)’ in Grosheide et al (eds) (above n 302) 101–38. See also Intellectual Property and Traditional Cultural Expressions/Folklore – Booklet n° 1 (WIPO, 2005). 326 See Blakeney, ‘The Australian Experience’ in Grosheide et al (eds) (above n 308) 175. 327 See www.wipo.int/tk/en/folklore/ (accessed 23 May 2020). 328 See ‘WIPO Folklore Discussions Get New Energy after Years of Stalemate’ (2010) 14(28) Bridges Weekly Trade News Digest. WIPO has also issued legal guidance on this area, eg, J Anderson and M Torsen, Intellectual Property and the Safeguarding of Traditional Cultures: Legal Issues and Practical Options for Museums, Libraries and Archives (Geneva, WIPO, 2010). 329 www.wipo.int/meetings/en/doc_details.jsp?doc_id=439176 (accessed 23 May 2020). 330 See www.wto.org/english/tratop_e/trips_e/art27_3b_background_e.htm (accessed 22 August 2020). 331 Ministerial [‘Doha’] Declaration (20 November 2001).

Traditional Cultural Expressions, Intangible Cultural Heritage and Copyright 195 traditions or living expressions inherited from our ancestors and passed on to our descendants, such as oral traditions, performing arts, social practices, rituals, festive events, knowledge and practices concerning nature and the universe or the knowledge and skills to produce traditional crafts.’ The relationship between such intangible cultural heritage and copyright will reflect in many places what has already been discussed in relation to traditional cultural expressions. There is a UNESCO Convention on this area.332

Suggested Further Reading E Bonadio, ‘Copyright protection of street art and graffiti under UK law’ [2017] Intellectual Property Quarterly 187–220 E Bonadio and N Lucchi, Non-Conventional Copyright (Cheltenham, Edward Elgar, 2018) M Dulong de Rosnay and P-C Langlais (2017). Public artworks and the freedom of panorama controversy: a case of Wikimedia influence Internet Policy Review 6(1) —https://policyreview. info/articles/analysis/public-artworks-and-freedom-panorama-controversy-case-wikimediainfluence M Iljadica, Copyright Beyond Law: Regulating Creativity in the Graffiti Subculture (Oxford, Hart Publishing, 2016) T Magoni, ‘The digitisation of cultural heritage: originality, derivative works and (non) original photographs’ (2015) Institute for Information Law, Faculty of Law, University of Amsterdam – paper available at www.ivir.nl/publicaties/download/1507.pdf D Mendis and M Kretschmer, The Treatment of Parodies under Copyright Law in Seven Jurisdictions A Comparative Review of the Underlying Principles (Newport, The Intellectual Property Office, 2013) JB Prowda, Visual Arts and the Law (Lund Humphries in association with Sotheby’s Institute of Art, 2013)

332 Convention for the Safeguarding of the Intangible Cultural Heritage (UNESCO, 2003). For a recent consideration of this area see M Burri, ‘Cultural Heritage and Intellectual Property’ in F Francioni and A Vrdoljak (eds) The Oxford Handbook of International Cultural Heritage Law (Oxford, Oxford University Press, 2020), 459–482. Available at SSRN: https://ssrn.com/abstract=3288622.

7 Some Practical Issues and Precedents THIS CHAPTER looks at some of the more practical copyright issues facing artists and those commissioning artistic works, as well as museums, galleries, art dealers, auctioneers and art publishers.1 These issues include: 1. Collecting Societies and Copyright Management; 2. Copyright and art loans; 3. Acquiring and using image rights online – websites, online viewing rooms and Instagram; 4. Use of images in art books; 5. Transfer/acquisition of copyright in artistic works, including copyright in commissioned art works and moral rights waivers;2 6. Licensing artistic works, Creative Commons and Open Access;3 7. The practical aspects of Artist’s Resale Right (ARR) in the United Kingdom; 8. Issues that arise on the death of the artist; 9. Issues that are relevant where the artist is an employee.

7.1. Collecting Societies/Collective Management Organisations (CMOs)4 Collecting societies (or as they are now often called ‘collective management organisations’) have an increasingly important role in relation to the management of copyright in artistic works (in particular the reproduction and communication to the public rights) as well as in relation to collecting artist’s resale right (ARR). Such organisations have existed for many years in relation to music and literary copyright and are typically

1 For further practical guidance in the area of art and copyright, see MF Flint, N Fitzpatrick and CD Thorne, A User’s Guide to Copyright, 6th edn (Haywards Heath, Tottel Publishing, 2006), which contains a chapter entitled ‘Artists, Photographers, Art Galleries, Art Dealers and Museums’ (ch 27). See also P Wienand, A Booy and R Fry, A Guide to Copyright for Museums and Galleries (London, Routledge, 2000); and K Wotherspoon, ‘Copyright Issues Facing Galleries and Museums’ (2003) 25(1) European Intellectual Property Review 34–39. Also, for an accessible, illustrated introductory text see G Davies, Copyright Law for Artists, Photographers and Designers (London, A&C Black, 2010). 2 A precedent and a precedent checklist are also included below in the Appendix. 3 A precedent and a precedent checklist are also included below in the Appendix. 4 See S Stokes, Digital Copyright Law and Practice 5th edn (Oxford, Hart Publishing 2019) 9.3.

Collecting Societies/Collective Management Organisations (CMOs) 197 owned or controlled by their members and operate on a not for profit basis. But in the UK they are relatively new in the field of artistic copyright – the oldest such society – DACS – was founded in 1984.5 Another UK collecting society in relation to artistic works is the Artists’ Collecting Society (ACS) founded in 2006.6 It is important to note that other than in relation to ARR where such societies have a statutory role in collecting ARR on behalf of artists (who can only do so through a collecting society) in the UK the use of such societies by an artist or their estate is entirely voluntary. In addition a new collecting society for visual rights (pictures) – PICSEL – was recently formed in the UK – ‘PICSEL membership is open to all visual rights holders who directly license images for books, magazines, and TV broadcasting, in the UK, which includes picture libraries and agencies – large or small – as well as individual creators.’7 Joining such a society brings benefits to artists and their estates and other rights owners where relevant (eg in relation to PICSEL, picture libraries and agencies) – not only can they collect ARR in relation to artists and their estates but rights owners can seek to benefit from the online and other uses of their works. They also have access to experts in copyright licensing and guidance in this area. DACS in particular also lobbies to protect the rights of artists, establishing and supporting, for example, the campaign ‘Fair share for artists’ which is raising awareness of artists’ resale rights and supporting its continued retention in UK law.8 On occasion an artist may be represented by more than one collecting society – for example Alberto Giacometti.9 Such societies have recently become subject to specific regulation – in the UK, the Collective Management of Copyright (EU Directive) Regulations 2016 apply.10

5 www.dacs.org.uk/about-us/what-is-dacs. 6 https://artistscollectingsociety.org/. 7 www.picsel.org.uk/. For example, PICSEL is a member of the Copyright Licensing Agency (CLA) (as is DACS) and so benefits from fees received by the CLA from the CLA’s licensing activities which in turn PICSEL (and DACS) then distribute to their members – www.cla.co.uk/news-CLA-new-members-DACSPICSEL. The CLA operates a collective licensing scheme that covers the copying (including photocopying and downloading) of copyright works in various sectors – business, education and the public sector – it grants ‘blanket’ licences to a large number of works on behalf of rights owners – ‘[a] CLA licence lets you legally copy extracts of content in an efficient and cost-effective manner. We offer licences tailored for businesses, charities, educational institutions, and public sector organisations. Our licences make copying content simple because you don’t need to ask permission and negotiate terms of use from the copyright owner every time you copy something. Instead, a CLA licence means you have blanket clearance to copies (within limits) of the content you need, when you need it’ – www.cla.co.uk/do-you-needa-licence. 8 https://fairshareforartists.org/about/. ‘The Fair Share for Artists campaign communicates how Artist’s Resale Right royalties are an essential source of income for artists and must be protected’ – see https://fairshareforartists.org/faqs/. 9 According to ACS, ACS holds a contract with the Fondation Alberto et Annette Giacometti (who hold a 5/8 share in his copyright) to clear copyright for 5/8 of the estate. DACS clears copyright for the remaining 3/8. Copyright must be cleared by both collecting societies – see https://artistscollectingsociety.org/copyrightservice/ (accessed 2 February 2020). 10 SI 2016/221. These implemented Directive 2014/26/EU on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market.

198 Some Practical Issues and Precedents

7.2. Copyright in the Context of Art Loans11 In chapter three, passing reference was made to some of the issues that can arise in the context of art loans.12 Can the loaned works be photographed (whether they are on public display or not)? Can the artists exert their moral rights in the context of the contemplated exhibition? One way these and other issues can be dealt with is to ensure that an art loan agreement is in place that specifically deals with artists’ rights. What provisions are finally included in an art loan agreement depends of course upon the respective interests and bargaining power of the parties. However, it is clear that both the lender and borrower will want certain rights and protections under the agreement. An additional dimension is added if the works being loaned are still in copyright. Set out below and following on from the discussion of copyright and moral rights in Chapters 3 and 4 is a non-exhaustive checklist of the sorts of things borrowers and lenders should consider including in their loan agreements. It should be stressed what is below reflects a more favourable position for the lender and can always be negotiated especially given the increasing trend for galleries to allow photography by visitors using smartphones and other devices. It also assumes that photographic copyright subsists in any images (including any photographs of public domain works – see section 6.1 above for further discussion of this area). Online viewing rooms and virtual galleries are given consideration in section 7.3 below. Clauses a lender will want to include: A. Publicity/Use of Lender’s Name and Reputation A.1 Ensure the lender’s name is properly referred to, used and publicised in the borrower’s gallery and on publicity materials and elsewhere as appropriate. Reserve the right of approval of the lender for this. Also ensure the control and protection of goodwill in the lender’s name and any trade marks/logo on merchandising (eg, the right to approve the quality of merchandise, use of name, marks or logo).13 A.2 Oblige the borrower to produce sufficient guides of a high quality to satisfy public demand. A.3 Require the borrower to seek the approval of and co- operate with the lender over publicity generally (including, eg, television documentaries, websites, social media etc). 11 This section does not seek to address the range of copyright issues museums and galleries face – for further guidance Naomi Korn’s guide on ‘Copyright for Museums and Galleries’ at copyrightuser.org is highly recommended (www.copyrightuser.org/educate/intermediaries/museums-and-galleries/ (accessed 22 August 2020)). See also RE Pantalony, Managing Intellectual Property for Museums (Geneva, WIPO, 2013) (available at www.wipo.int/edocs/pubdocs/en/copyright/1001/wipo_pub_1001.pdf (accessed 2 August 2020). 12 Bently and Sherman treat this area at some length: L Bently and B Sherman, ‘Copyright Aspects of Art Loans’ in N Palmer (ed), Art Loans (London, Kluwer, 1996). See also S Stokes, Art Loans and Exhibitions (Leicester, Institute of Art and Law, 1996), upon which this section is based. 13 Whilst not the specific subject of this book, museums and galleries may wish to consider trade mark protection for their names and logos. Trade mark protection has even been sought as a means of protecting copyright works once copyright has expired or in anticipation of its expiry: the works of Beatrix Potter and Frederick Warne’s use of trade marks to protect them (in particular, the characters in them) are an example of this. See also below ch 8.

Copyright in the Context of Art Loans 199 B. Copyright/Moral Rights B.1 If possible, the lender will want to ensure the borrower assigns back to the lender all copyright in any photographs or other reproductions of the lender’s collection that the borrower makes or commissions. This gives the lender the strongest copyright position, and to satisfy the likely needs of the borrower, the lender can grant a licence back of this copyright on the following terms: B.1.1 Restrict use to specified uses: catalogues, posters, postcards and classes of merchandise – all subject to royalty payments, if deemed appropriate. Take care to exclude the grant of electronic rights (eg, rights to publish, communicate to the public or digitally transmit images on CD-ROM, over the Internet or through apps or social media) and the right to film/ broadcast unless intended (eg, for limited publicity purposes). B.1.2 Ensure consent required to sub-license or assign granted rights. B.1.3 Restrict conditions under which flash photography, etc may be used. B.1.4 Ensure the lender is acknowledged as copyright owner on all reproductions, including use of any copyright symbol. B.1.5 Restrict who may be allowed to copy the collection (eg, make it an obligation that no photography be allowed (particularly important for loans of sculpture and works of artistic craftsmanship)) and ensure any photographers, etc who do copy it assign their rights to the lender.14 B.1.6 Set out rights of academic users regarding fair dealing, etc. B.1.7 The copyright licence should spell out the territory and duration of the licence and whether it is exclusive or non-exclusive.15 B.2 Provide a limited right to use transparencies, electronic image files and publicity materials, etc of the lender to aid the borrower to create its own exhibition guides, etc. B.3 If a work is in copyright, ensure it is the responsibility of the borrower to seek permission of relevant copyright owners (or those managing copyright on their behalf, eg DACS) and to comply with moral rights legislation as appropriate for the borrower’s activities under the loan agreement. B.4 Ensure that the loan of works is not to be construed as authorising the borrower (or others) to make copies of (or to communicate to the public) the lender’s works that are in copyright subject to any express licences granted in the agreement. B.5 Specify indemnity from the borrower in the event the borrower infringes the intellectual property rights of the artist or other copyright owners. Also, specify general indemnity from the borrower for breach of the loan agreement and especially copyright/publicity provisions. Borrowers will want similar provisions regarding publicity and rights to reproduce as may be offered by a lender, but a borrower will need to make sure that any rights 14 This was first written in 2001 when galleries routinely controlled photography (which was easy to do – not so since the advent of smart phones). These days such a restriction may well need to be reassessed depending on the nature of the works lent and in the author’s recent experience is no longer common in the UK. 15 An exclusive copyright licence should always be in writing. See s 92 Copyright, Designs and Patents Act (CDPA) 1988. See also below in the Appendix.

200 Some Practical Issues and Precedents granted are broad enough and sufficient for its likely requirements based on the borrower’s current copyright policy. The borrower will also want to ensure it has the right to continue to sell reproductions and merchandise and otherwise use the lender’s copyright material following the end of the loan. In addition, a borrower should consider asking for the following: 1. Warranty and indemnity from the lender that the works are not in copyright; if the works are in copyright the lender should be obliged to provide details of the copyright owner and to provide the copyright owner’s written consent to the loan (if appropriate). 2. Indemnity from the lender in respect of intellectual property infringement claims in respect of negatives, transparencies, electronic image files, publications, etc supplied by the lender for the borrower’s use. 3. Assurance that if the borrower has a commercial subsidiary or other associated entity that is involved in merchandising, any copyright or trade mark/name licences granted by the artist or lender will allow such an entity to carry out appropriate reproduction or merchandising.

7.3. Copyright and Setting Up a Website, Online Viewing Room and Using Instagram: Acquiring and Using Image Rights By way of a practical illustration of how copyright applies to the Internet and some of the issues in acquiring and using image rights, this section will consider the legal issues faced by a gallery (including a commercial gallery or auction house or a picture library) that has decided to make images of certain items in its collection available for a ‘virtual tour’ or viewing on the internet or is using a platform such as Instagram to display images – online viewing rooms (containing curated and typically online only exhibitions) and platforms such as Instagram are increasingly important for publicising works and where relevant their sale and/or exhibition.16 This section focuses on image rights in the artistic works on display but it needs to be borne in mind there will be other copyright issues involved if the website contains other content (including video or text) or is interactive and regularly curated (such as an online viewing room). Issues which may relate to orphan works where the copyright owner cannot be traced are considered separately (see section 6.5).

7.3.1. Use on a Gallery’s Website (Including Online Viewing Room) Having decided which works will be put on ‘virtual’ display, the gallery will need to ensure that by putting digital copies on its server and thereby making them accessible 16 See, eg, S Indrisek, ‘For Galleries, Online Viewing Rooms Are About Storytelling and Sales’ Artsy, 27 December 2019 and www.christies.com/features/Top-100-Art-Instagrams-Curators-Directors-andGallerists-8487-1.aspx (accessed 2 February 2020).

Copyright and Setting Up a Website, Online Viewing Room and Using Instagram 201 over the Internet, it will not be infringing someone else’s copyright. To this end, it will need to ensure that where any of the works of art in question are still in copyright, appropriate consents are obtained from the artists or the artists’ estates or other right-holders unless an exception can be relied on (see section 3.2.9 of this work). Furthermore, where existing photographs are being digitised in order to create the tour, the copyright position regarding the photographs will also have to be explored. The gallery must either own the copyright in the photographs or ensure that the licences it has from the photographers are sufficiently broad to allow electronic exploitation of the images.17 Having satisfied itself that it does have the necessary rights (or can rely on an exception) to publish and communicate to the public the works over the Internet, the gallery then needs to give some thought to protecting its rights. A website and its contents are capable of protection by copyright, and therefore appropriate copyright notices should be used in connection with the website. Database right notices should also be considered as a website may benefit from database right protection (the case law here is uncertain).18 Furthermore, attention should be paid to any moral rights issues, as discussed elsewhere in this book, as appropriate. To further protect the gallery’s position, it would be sensible to have persons accessing the site expressly agree to be bound by an electronic copyright licence – ie, in order for them to view the site, they could click on a button agreeing to be bound by on-screen licence terms and conditions or they do some other action (eg providing an e-mail address in return for access to the site/viewing room). These terms and conditions could be very short, simply to the effect that images on the site are available only for viewing on-screen for personal use and may not be printed out, downloaded onto a hard drive, memory stick or other permanent form or shared with others, uploaded or hyperlinked to other websites without the prior consent of the gallery. Such an on-screen licence is likely to be effective under English law as long as care is taken in drafting it and how it is entered into.19 However, whilst sensible from a legal perspective such a ‘click wrap’ type licence is somewhat intrusive and may put people off visiting the website (but for a viewing room this may be desirable as it adds to the ‘exclusivity of access’)20 – so instead a ‘browse wrap’ licence could be used instead – the licence terms are visible on the website (eg through a link) but do not need to be affirmatively agreed to by clicking on

17 For a general discussion of the issues involved in determining the scope of any online rights that may have been granted (from a US perspective), see MF Radcliffe, ‘On-Line Rights: How to Interpret Pre-Existing Agreements’ (1996) 9 European Intellectual Property Review 494. For a UK view, see S Stokes, Digital Copyright: Law and Practice, 5th edn (Oxford, Hart Publishing, 2019). See also section 6.1 above. 18 See Stokes (2019) (above n 17), ch 3. 19 See AD Murray, ‘Entering into Contracts Electronically: The Real WWW’ in L Edwards and C Waelde (eds), Law and the Internet, 2nd edn (Oxford, Hart Publishing, 2000) ch 2. For a discussion in light of consumer law developments, see also C Riefa and J Hörnle, ‘The Changing Face of Electronic Consumer Contracts in the Twenty-First Century: Fit for Purpose?’ in L Edwards and C Waelde (eds), Law and the Internet, 3rd edn (Oxford, Hart Publishing, 2009) ch 2. See also the discussion above ch 6, s 6.3. 20 A gallery operating an online viewing room will typically want an e-mail address in order to contact visitors and will also need to provide a privacy policy so a modified form of click wrap licence – where the visitor supplies an e-mail address after being presented with and in return for agreeing to terms and conditions and a privacy policy in order to access the viewing room – is one way to seek to ensure the terms are binding – this is the approach, for example, that David Zwirner Gallery have taken – www.davidzwirner.com/viewing-room (accessed 2 February 2020).

202 Some Practical Issues and Precedents a button or submitting information (such as an e-mail address) to gain access. Browse wrap licences are of uncertain enforceability so whilst it may be appropriate to use them on a site where no money changes hands, if the site has e-commerce functionality (eg the works of art on display can be purchased online) then a click wrap licence (and other binding terms) will be essential.21 Practical protection against copying can also be incorporated by, for example, limiting the resolution of the works of art viewed on screen so that they are useful only for browsing and cannot be reproduced to a high enough quality for commercial purposes. Furthermore, the gallery should seriously consider using some sort of digital watermark technology that would enable the source of any copies to be identified or otherwise protects against the misappropriation of the images and/or the use of digital rights management (DRM) more generally.22 Of course, if at some point a gallery or picture library decides to commercially market images from its collection over the Internet, then the need for clear and binding licence terms and conditions must be stressed. Also, it would be prudent to consider some sort of subscription mechanism whereby, for example, only those who have supplied verified credit card details (‘subscribers’) are allowed to download relevant images; these images could furthermore be supplied in encrypted form so that only subscribers (who would have access to the relevant encryption technology) could view them and utilise the images.

7.3.2. Platforms Including Instagram Online platforms/social media sites including Facebook, Instagram, and Twitter are increasingly being used to market works of art – both by gallerists and by artists. Instagram is seen as the leading platform – it is, after all, a platform devoted to images. Taking Instagram as an example, the same considerations as those in 7.3.1 above about ensuring you have the necessary rights (or can rely on exceptions) in the images you wish to upload to Instagram apply. But in addition Instagram’s own Terms of Use will apply. This includes the user granting Instagram a broad non-exclusive worldwide transferable royalty free licence of the user’s content which on its face allows Instagram to do pretty much anything with the uploaded content (but Instagram’s use will, however, be ‘consistent with your [the user’s] privacy and application settings’). This licence can be terminated at any time by the user deleting their content or account but the content will continue to appear if the user shared it with others and they have not deleted it.23 Instagram is clearly an attractive application for gallerists, auction houses and artists. However if you do not own the rights in the content (eg art images) you wish to upload to Instagram you need to be comfortable you have any rights that you may 21 See Stokes (2019) (above n 17) 168–169. Where the website has e-commerce functionality other legal issues will apply relating to contract law, sale of goods, consumer law etc. 22 For a discussion of this area, see D Green, A Museum Guide to Digital Rights Management (Canadian Heritage Information Network, 2010). 23 Instagram’s Terms of Use (revised 19 April 2018). In the UK Instagram (at the time of writing this section) was provided by Facebook Ireland Limited and the Terms of Use are presented as an agreement between the user and Facebook Ireland Limited.

The Use of Images in Art Books: The Limits of Fair Dealing 203 need from the artist/photographer concerned in order to grant to Instagram the licence they require, and also you need to be prepared to accept the risk that once others have accessed your content via Instagram your ability to control its further use (if issues were to arise in the future) may be limited.

7.4. The Use of Images in Art Books: The Limits of Fair Dealing The production of glossy art books full of high-quality reproductions of art works and devoted to particular artists or schools remains a significant publishing activity worldwide. Although such publications were originally the preserve of commercial publishers, large museums and galleries now frequently undertake to publish such volumes themselves. It is a question of considerable importance to artists to what extent their work can be reproduced in such works without their consent on the grounds that reproductions of their pictures are being used for the purposes of fair dealing – in particular, for the purposes of criticism or review (and/or quotation). This question (in the context of criticism or review) was the subject of litigation in the United Kingdom which centred on the reproduction of a number of Matisse’s works in a number of well-known books published by Phaidon Press, including The 20th Century Art Book, The Art Book and Minimum. The beneficiaries of the Matisse estate, Les Heritiers Matisse, brought a copyright infringement action against Phaidon Press. The claim was supported by the Design and Artists Copyright Society (DACS), which acted as agent for the Matisse family in respect of UK copyright matters. The case was originally brought in 1992 but was reactivated in 1998 following several years of inactivity during the completion of various probate matters relating to the estate. The case settled before trial on terms reportedly favourable to the Matisse estate.24 Critical to a fair dealing defence in this case is both whether the work being reproduced is being used for criticism or review of either the copyright work or another work and whether such use is fair. In this context, where licences of the works are available and where the books in question focus on high-quality reproductions of a large number of images with a limited amount (if any) of critical text (rather than a limited number reproduced for scholarly academic purposes, for example), it is perhaps difficult to see why a fair dealing defence based on criticism or review should succeed in light of the fair dealing factors discussed above in chapter three.25 Certainly, it is publishing

24 S Garben and R Hoy, ‘Coffee Table Art Books: Unfair Dealing’ (2000) Entertainment Law Review 19. 25 The quotation exception was not available in the 1990s but even if it had been such use would still need to be fair dealing and of limited extent and so it is submitted such an exception would not have applied either in this case had it then been available (s 30(1ZA) CDPA – in force from 1 October 2014). However, whilst it has been argued that the concept of quotation is broad, nevertheless it still has to be ‘fair dealing’ (see L Bently, ‘Copyright and Quotation in Film and TV’ CREATe Working Paper 2020/8 (UK Copyright and Creative Economy Centre, Glasgow www.create.ac.uk). Also, in its guidance the UK IPO note the exception ‘only allows use of material where it is genuinely for the purpose of quotation, and only where the use is fair and reasonable (e.g. it does not replace a commercial sale). So, for example, it could permit a short quotation that is necessary and relevant in an academic paper or a history book, but it would not permit a long extract … Whilst

204 Some Practical Issues and Precedents industry practice to clear image rights and not rely on fair dealing exceptions wherever reasonably possible.

7.5. Transferring/Acquiring Copyright in Artistic Works: Commissioned Art Works and Moral Rights Waivers26 The copyright position with regard to commissioned portraits and other artistic works that are not created by employees of the commissioner in the course of their employment is potentially complex. The current position is that commissioning a work does not automatically transfer legal title of the copyright to the commissioner. Whilst there may be circumstances in which equity will imply an assignment of the copyright, this cannot be assumed. So if the person commissioning the work wishes to acquire title to the intellectual property in the work, then he or she must obtain a written assignment from the artist. The Copyright, Designs and Patents Act (CDPA) 1988 makes clear that with effect from 1 August 1989, the copyright in any new commissioned work will, absent special circumstances,27 remain vested in the artist or photographer as ‘author’.28 However, in respect of pre-CDPA commissioned portraits and certain other artistic works, the copyright will in general remain with the person who commissioned them.29 Setting aside the issues that apply to pre-CDPA works, it is still possible for there to be an equitable transfer of copyright from an artist to the commissioner in certain circumstances, namely where it was clearly necessary for the commissioner to own the copyright in the work – eg, where it was paid for in full and created exclusively for the commissioner or was derived from the commissioner’s designs.30 Alternatively, a court may imply an exclusive licence rather than outright ownership; or where circumstances

the exception applies to all types of copyright work, it would only be in exceptional circumstances that copying a photograph would be allowed under this exception. It would not be considered fair dealing if the proposed use of a copyright work would conflict with the copyright owner’s normal exploitation of their work. For example, the ability to sell or license copies of photographs for inclusion in newspapers would be a normal exploitation’ (‘Exceptions to copyright: Guidance for creators and copyright owners’ (UK Intellectual Property Office, October 2014)). 26 See S Stokes, ‘Copyright in Commissioned Paintings’ (2000) 5 Art, Antiquity and Law 77, upon which part of this section is based. 27 For example, the work is created in the course of employment (s 11(2) CDPA) – see section 7.9 below. 28 This is the result of s 11 CDPA (the author of a work is the first owner of the copyright in it) and also because an assignment of copyright is not effective unless it is in writing and signed by the assignor (s 90(3) CDPA). 29 See, eg, s 4(3) Copyright Act 1956. The date of creation of the work is crucial to determine whether the applicable rules are those under the 1956 or 1911 Copyright Acts, or under earlier law. See K Garnett et al, Copinger and Skone James on Copyright, 14th edn (London, Sweet & Maxwell, 1999) [hereafter ‘Copinger (1999)’] 5-29–5-40 for a comprehensive discussion of this area. 30 For example, in equity due to some express or implied contract term or given all the circumstances. See, for example, Massine v de Basil [1936–45] Mac CC 223; and Warner v Gestetner Ltd, unreported but cited in Saphena Computing Ltd v Allied Collection Agencies Ltd [1995] FSR 616, 634 (copyright to be owned by commissioner where work made specifically for the commissioner’s business and at his expense, and neither party can have contemplated that the maker of the work would have any genuine use for it himself). See also R Griggs Group Ltd & Others v Evans and Others [2005] EWCA Civ 11 (25 January 2005).

Licensing Artistic Works and Creative Commons 205 show that exclusivity was not intended, then simply a non-exclusive licence will be implied.31 The Appendix contains a further discussion of assignments and moral rights waivers, together with a precedent assignment and precedent checklist.

7.6. Licensing Artistic Works and Creative Commons 7.6.1. Licensing Artistic Works An assignment transfers ownership of copyright from the artist to another person. If moral rights are also waived at the time of the assignment, then at that point the artist will lose control over the reproduction of her works, as well as over other acts that would otherwise infringe copyright. Rather than assigning her rights, the artist could seek to retain ownership and instead license others to exploit her works, typically in return for an up-front fee (a licence by way of a simple permission) or through more complex royalty arrangements that give the artist a share in the success of the work that uses the licensed images/works. At its simplest a licence is a permission from the copyright owner (licensor) which allows the user (licensee) to carry out acts within the scope of the permission that would otherwise infringe copyright absent the licence.32 Licences need not be in writing but for legal certainty they should be and an exclusive licence needs to be in writing if the full benefits of an exclusive licence are to be obtained.33 As discussed above, collecting societies offer guidance in this area and also act for artists in licensing their rights.34 Further discussion of this area and a sample licence and precedent checklist are included in the Appendix.

7.6.2. Creative Commons and Open Access35 The organisation Creative Commons promotes the use of various ‘Creative Commons’ (CC) licences inspired by the open source software and ‘copyleft’ movements which allow collaboration between authors/artists and challenge traditional models of licensing copyright where all rights other than those limited rights licenced were reserved to the copyright owner – the ‘all-rights-reserved framework’.36 Creative Commons is 31 Robin Ray v Classic FM plc [1998] FSR 622. For a case dealing with the ownership of commissioned artistic works, see Andrew Durand v Mario Molino & Another [2000] ECDR 320. 32 For a further discussion of licences and whether they are always contracts or can just be a simple permission see Stokes (2019) (above n 17) 7.2. 33 ss 92 and 101 CDPA. 34 Section 7.1. 35 See S Stokes, Digital Copyright Law and Practice 5th edn (Oxford, Hart Publishing, 2019) 9.5.5 (Creative Commons) and 8.4.3 (Open Access). An earlier edition of the current work discussed a forerunner of Creative Commons specifically applied to art – the ‘free art license’ (www.artlibre.org) – see S Stokes, Art and Copyright (Revised paperback edition Oxford, Hart Publishing, 2003) 231–241. 36 See http://thepowerofopen.org/.

206 Some Practical Issues and Precedents ‘committed to expanding our online frontiers, making digital content and collaboration legal, easy, and free’.37 Creative Commons offers a range of licences authors and artists can choose from – their licences and public domain tools provide a free, simple, and standardised way to grant copyright permissions for creative and academic works; ensure proper attribution; and allow others to copy, distribute, and make use of those works. ‘CC licenses are copyright licenses, and depend on the existence of copyright to work. CC licenses are legal tools that creators and other rights holders can use to offer certain usage rights to the public, while reserving other rights.’38 It is the simplicity of use and their standardisation which have made Creative Commons licences attractive in a number of areas in relation to digital content especially where copyright owners are keen to promote the sharing and re-use of their works free of charge to the public but want to ensure they are attributed in such cases and that their works remain ‘public’ and free to be used by others on the same terms as the original CC licence the copyright owner granted. CC licences can reserve commercial use to the copyright owner (for example a Non Commercial (NC) CC licence) so using a CC licence does not prevent you from licensing your work commercially – but it is important to select the right CC licence depending on what you wish to do.39 In addition to its licences, Creative Commons also provides a tool where an author can ‘dedicate’ their works to the public domain – in effect to opt out of (waive) copyright and database protection completely – this is done by using the Public Domain Mark ‘CC0’. A number of significant image and other databases make their content available on this basis – for example, the Metropolitan Museum of Art in New York does this in relation to materials it identifies as ‘Open Access’.40 Open access refers to the international movement to grant free and open online access to academic information, such as publications and data. ‘A publication is defined “open access” when there are no financial, legal or technical barriers to accessing it – that is to say when anyone can read, download, copy, distribute, print, search for and search within the information, or use it in education or in any other way within the legal agreements.’41 Open Access collections may use CC0 or other rights owners (especially in relation to journals) may use a Creative Commons CC-BY licence instead to ensure there is attribution of the author(s). At law, CC0 is a full and irrevocable waiver of all rights in the work and also includes a fallback ‘public licence’ to grant a very broad and free licence to use the work for any purpose (commercial or non-commercial) in territories where a waiver may not be effective.42

37 https://creativecommons.org/. 38 Taken from https://creativecommons.org/faq/#is-creative-commons-against-copyright (accessed 1 February 2020). 39 See also http://thepowerofopen.org/. 40 www.metmuseum.org/information/terms-and-conditions. The image of William Hogarth’s trade card from 1720 (a reproduction from 1880–1928 of the original) which is used on the front cover of this book is taken from the Met and used pursuant to CC0 – www.metmuseum.org/art/collection/search/820840. The pen and ink inscription gives the artist’s date of death. As noted in ch 2 of this book Hogarth promoted copyright protection for engravings resulting in the Engraving Copyright Act 1734 (called Hogarth’s Act) – the first artistic copyright statute. 41 Taken from www.openaccess.nl/en/what-is-open-access. 42 https://creativecommons.org/publicdomain/zero/1.0/legalcode.

Artist’s Resale Right (ARR) in the United Kingdom: Practical Guidance 207 An example of the use of Creative Commons licences in action is Wikipedia which at the time of writing makes use of the Creative Commons Attribution-ShareAlike 3.0 Unported License.43 Many find Creative Commons licences attractive but thought needs to be given as to whether and what form of Creative Commons licence might be appropriate before using one. Creative Commons also provides among other things a search tool to allow persons to search for free public domain content and content licensed under Creative Commons licences.44

7.7. Artist’s Resale Right (ARR) in the United Kingdom: Practical Guidance As discussed above in Chapter 4, artist’s resale right (ARR) gives artists and their estates the right to a share in the resale proceeds of their works when they are sold through the involvement of an art market professional, such as a dealer or auction house, as buyer, seller or intermediary. The right is treated as part of the artist’s copyright, but unlike with copyright, an artist cannot sell or waive/contract out of his right to the royalty. The UK law implementing the EU Directive on this area is the Artist’s Resale Right Regulations 2006 (as amended)45 which will continue in effect after Brexit pursuant to the European Union (Withdrawal Act) 2018. It is not anticipated that Brexit will cause the UK Government to seek to revoke what for some remains a controversial piece of legislation as artist’s resale right is expressly mentioned in the Political Declaration between the UK and the EU in relation to Brexit as being a right that should be preserved.46 The guidance that follows is primarily aimed at dealers and auctioneers, although those entitled to claim the right should also find it helpful.47 However, as those claiming

43 This allows users of the work under the licence to copy, distribute and transmit the work, and to adapt the work for any purpose, even commercially. But only under the following conditions: (i) the user must attribute the work in the manner specified by the author or licensor (but not in any way that suggests that they endorse the user or its use of the work); and (ii) if the user alters, transforms, or builds upon this work, the user may distribute the resulting work only under the same, similar or a compatible licence – see https://en.wikipedia. org/wiki/Wikipedia:Text_of_Creative_Commons_Attribution-ShareAlike_3.0_Unported_License. 44 https://ccsearch.creativecommons.org/. 45 Directive 2001/84/EC of the European Parliament and of the Council of 27 September 2001 on the resale right for the benefit of the author of an original work of art (OJ L272, 13.10.2001, 32); and the Artist’s Resale Right Regulations (SI 2006/346) (as subsequently amended). The 2006 Regulations have been amended by: The Artist’s Resale Right (Amendment Regulations) 2009 (2009 No 2792) (which extended the derogation from ARR for the estates of deceased artists from 1 January 2010 until 1 January 2012); The Artist’s Resale Right (Amendment) Regulations 2011 (which made changes in relation to the transmission and vesting of the right, revoked Schedule 2 of the Regulations (a list of countries outside the EEA whose nationals may enjoy resale right), and added a review of the Regulations to be carried out before 1 January 2017 and regularly thereafter); and The Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019 (dealing with UK ARR after Brexit). 46 Political Declaration setting out the framework for the future relationship between the European Union and the United Kingdom (19 October 2019) Section VII (Intellectual Property). 47 This is an updated version of guidance first produced by the author in 2006 when ARR came into effect in the UK. The author is grateful to Rory Gissane for his assistance with the original guidance. It is a summary of the law and should not be relied on without taking up-to-date legal advice. Further guidance is also contained in S Stokes, Artist’s Resale Right: UK Law and Practice 3rd edn (Institute of Art and Law, 2017) ch 5.

208 Some Practical Issues and Precedents the right in the United Kingdom can do so only through a collecting society, claimants are also going to need to refer to the collecting society they wish to use for advice in this area, including the practicalities of collecting ARR due to them.48 As further noted in chapter 4, the territorial scope of UK ARR (ie ARR as it applies in the UK under the 2006 Regulations) is unclear where there is an international dimension to the sale – for example, where the sale is online and the sale contract is not physically concluded in the UK or where the work of art is sold by a UK dealer at an art fair outside the UK as neither the ARR Directive nor the Regulations provide any guidance here. This is an area where legal advice will need to be taken in light of the facts – including where was the sale contract formed and where did title pass in the work?49

7.7.1. What is Artist’s Resale Right? The Artist’s Resale Right Regulations give the ‘author’ of a work of art (ie, the creator of the work) a right to a royalty on any sale of his work that is a resale subsequent to the first transfer of ownership by the author. The royalty is defined as a ‘resale royalty’. The phrase ‘subsequent to the first transfer of ownership by the author’ means that the right is payable only after the artist or his estate has either sold or transferred the work, eg, by way of gift or a bequest in a will.50 So if a dealer buys a work direct from the artist or his estate, the right is not payable; but the right will be payable when the dealer sells the work. So where a dealer buys and sells works on his own account, then subject to the three-year ‘bought as stock exemption’,51 he will need to factor any future liability to pay the resale royalty into the price he currently pays for works of art. The resale right will apply only where the work of art in question is protected by copyright, and it will continue to be payable for as long as copyright subsists in the work. Most works of art are protected by copyright (as discussed earlier in this book), provided the artist in question died no later than 70 years ago. The United Kingdom secured a concession from the European Union so that the right did not apply to works by dead artists until 2012. Also, for the right to apply, up until exit day (for Brexit) (originally 31 January 2020 at 11.00pm but at the time of writing extended during a transition period until 31 December 2020 at 11.00pm)52 the artist had to be an EU/EEA national (ie, a national of an EU Member State or of Iceland, Liechtenstein or Norway) or a national of another state that has the right and which state extends this to EEA authors and their successors in title. (The UK Government originally produced a list of these countries in the 2006 Regulations, of which there were 26,

48 See Reg 14(1). There are several collecting societies in the UK that deal with ARR. The largest is the Design and Artists Copyright Society (DACS). The other is the Artists’ Collecting Society (ACS). 49 Stokes (2017) (above n 47) considers this area in more detail, 5.4.1 and 7.3. 50 See above ch 4, s 4.5.3. 51 See below s 7.7.4. 52 European Union (Withdrawal Act) 2018 and European Union (Withdrawal Agreement) Act 2020 together with Agreement on the Withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (19 October 2019).

Artist’s Resale Right (ARR) in the United Kingdom: Practical Guidance 209 including Russia and Brazil.53). As from exit day the change to the Regulations is that only UK nationals will now expressly benefit from UK ARR under the Regulations – nationals of other states (including of the EEA) only benefit under the Regulations if their own state has ARR and UK nationals benefit from ARR in that state. The UK Intellectual Property Office has commented: Nationals of the UK and other countries that provide reciprocal treatment for UK nationals (including EU member states) will continue to receive resale rights in the UK after the end of the transition period. This is in accordance with the Berne Convention. No changes are being made to the calculation of royalty payments.54

So if a work of art is out of copyright or if the artist does not satisfy the nationality requirements, then the resale right will not in any event apply.

7.7.2. Resale Royalty Resale royalty is calculated as an amount based on the sale price, as follows: (a) (b) (c) (d) (e)

4 per cent for the portion of the sale price up to €50,000; 3 per cent for the portion of the sale price from €50,000.01 to €200,000; 1 per cent for the portion of the sale price from €200,000.01 to €350,000; 0.5 per cent for the portion of the sale price from €350,000.01 to €500,000; 0.25 per cent for the portion of the sale price exceeding €500,000.

However, the total amount of the royalty may not exceed €12,500. So, for example, if a painting is sold for €600,000, the royalty would be calculated as follows: 4% of €50,000 = €2,000 3% of €150,000 = €4,500 1% of €150,000 = €1,500 0.5% of €150,000 = €750 0.25% of €100,000 = €250 Total resale royalty due = €9,000 The total amount of resale royalty is therefore calculated based upon the sum of consecutive portions of the sale price to which the appropriate royalty is applied. The fact that there is a total maximum amount payable means that for paintings or other works of art sold for €2 million or more, the resale royalty remains at and can never exceed €12,500 in respect of the work sold.

53 Sched 2 of the Regulations (as of 13 February 2006) listed the following countries (in addition to the EEA states at that time): Algeria, Brazil, Bulgaria, Burkina Faso, Chile, Congo, Costa Rica, Croatia, Ecuador, Guinea, Iraq, Ivory Coast, Laos, Madagascar, Mali, Monaco, Morocco, Peru, Philippines, Romania, Russian Federation, Senegal, Serbia and Montenegro, Tunisia, Turkey and Uruguay. This Schedule is no longer part of the Regulations as amended. 54 www.gov.uk/guidance/changes-to-copyright-law-after-the-transition-period#artists-resale-right (accessed 1 February 2020).

210 Some Practical Issues and Precedents The ‘sale price’ is a term undefined by the Directive, which says only that the sale price is ‘net of tax’. The Regulations define the sale price as the ‘price obtained for the sale, net of the tax payable on the sale and converted into Euro at the European Central Bank reference rate prevailing at the contract date’.55 The Patent Office Guidance for Business on Artist’s Resale Right, issued around February 2006, took the view that the sale price is the price the work is advertised for (ie, the ticket price in a gallery) or the hammer price at auction. However, calculating resale royalty on ticket price is not strictly speaking correct, as the price may be negotiated prior to agreeing a sale, so based on the Regulations the relevant price is the price actually obtained for the sale. In each case, the sale price is ‘net of tax’, which is assumed to mean value-added tax (VAT). The Artist’s Resale Right Regulations provide that ‘liability shall arise on the completion of this sale’. However, a person who is liable may withhold payment until evidence of entitlement to be paid the royalty is produced.56

7.7.3. What Works of Art are Relevant? ARR applies to ‘original works of art’, which are defined by the Artist’s Resale Right Directive to mean ‘works of graphic or plastic art such as pictures, collages, paintings, drawings, engravings, prints, lithographs, sculptures, tapestries, ceramics, glassware and photographs, provided they are made by the artist himself or are copies considered to be original works of art’.57 The Directive also clarifies that copies of a work of art that is covered by the Directive and have been made in limited numbers by the artist himself or under his authority shall be considered to be original works of art for the purposes of the Directive. Such copies will normally have been numbered, signed or otherwise duly authorised by the artist.58 The Regulations take a similar approach. The Patent Office Guidance states: All the usual works of art are covered, such as paintings, drawings, engravings, prints, lithographs, and sculptures, amongst others. Ceramics, glassware and tapestries are also covered, and other works to the extent they can be considered to be ‘works of graphic or plastic art’ within the meaning of the Directive.

In light of the definition of ‘original works of art’, it is unclear whether the right would apply to a one-off piece of craft silver, furniture, stained glass, jewellery or other works of applied art created by an artist/craftsperson not covered by the definition of ‘tapestries, ceramics or glassware’. There is no clear definition of works of graphic or plastic art in English law, and where there is uncertainty, UK courts may look to the ways in which other EU/EEA states treat the right; and ultimately, it may be necessary for the European Court of Justice (or after Brexit the UK courts) to clarify this in due course. However, in the author’s view it would be straining the definition of ‘works of artistic craftsmanship’ under UK copyright law to treat them as ‘original works of graphic or

55 Artist’s

Resale Right Regulations (above n 44) Reg 3(4). Note the £–€€exchange rate to be used. Reg 13(3). 57 Artist’s Resale Right Directive (above n 44) Art 2(1). 58 Ibid, Art 2(2). 56 Ibid,

Artist’s Resale Right (ARR) in the United Kingdom: Practical Guidance 211 plastic art’ within the meaning and purpose of the Directive – arguments can certainly be made for example that jewellery and furniture – works of applied art – should not fall within the scope of ARR.59 There is also uncertainty about how limited edition prints made by an artist or under his authority are to be treated: it is unclear what the Directive means by a ‘limited number’ in this context.

7.7.4. What Sales Attract the Resale Royalty? It must be emphasised that resale royalty is not payable on all sales of a work of art: the work of art must fall within the relevant category;60 it must be protected by copyright; and the artist must also satisfy the nationality test.61 As discussed above, it is also necessary that the sale in question be a sale subsequent to the first transfer of ownership of the work. Assuming that all this is the case, the resale royalty will be payable only if the following conditions are satisfied in respect of the sale: 1. The buyer or the seller (or where the sale takes place through an agent (eg, an auctioneer or dealer paid on commission/consignment), the agent of the buyer or the seller) is acting in the course of a business dealing in works of art; and 2. the sale price is not less than €1000. So the right does not apply to private sales where a dealer or auctioneer is not involved as buyer, seller or agent. Furthermore, a sale of a work of art will not be regarded as a resale if the seller previously acquired the work directly from the artist less than three years before the sale, and the sale price does not exceed €10,000 (‘bought as stock exemption’). So, for example, if a dealer buys a work directly from an artist and subsequently sells it for less than €10,000, and the work in question was bought less than three years before the sale directly from the artist, then the resale by the dealer will not attract the resale royalty.

7.7.5. Who is Entitled to Claim the Right? Only the artist or the artist’s estate can claim the right – and they can do so only through a collecting society, which represents a number of artists. In paying the resale royalty, dealers or auction houses will need to liase with DACS or ACS – not the artist. The Regulations also clarify that where there is more than one ‘author’ of the work, for example, a work by the artists Gilbert & George, then the resale right belongs to the authors as owners in common. Reference to the authors as ‘owners in common’ means

59 See Stokes (2017) (above n 47) 4.2.3. For a detailed consideration of jewellery see J Ogden, ‘Will the glitterati be affected if they make glitter arty? Jewellery and the artist’s resale right’ (2010) XV(3) Art Antiquity and Law 253–260. 60 See above s 7.7.3. 61 See above s 7.7.1 and Reg 10.

212 Some Practical Issues and Precedents that on the death of each author their share of the right will pass to their heirs. It is possible for the authors to agree their respective shares otherwise the right will be held in equal shares. Whilst the resale right cannot be assigned or waived by the artist, it can be transferred on death by will or in accordance with the intestacy rules if there is no will.

7.7.6. Who is Liable to Pay the Resale Royalty? The Artist’s Resale Right Regulations make the following persons jointly and severally liable to pay the resale royalty due in respect of a sale: 1. the seller; 2. any agent of the seller, or if none, the agent of the buyer; and if there are no such agents, the buyer – provided in each case they are acting in the course of a business dealing in works of art. This means that dealers and auction houses will be jointly liable with their clients: if their clients do not pay the resale royalty, then the dealer/ auctioneer remains liable. Dealers and auction houses thus need to consider revising their standard terms of business to try to protect themselves, and they may want to deduct the resale royalty from buyers’ payments (in order to be in a position to pay the resale royalty) before paying the net sale proceeds to sellers. This will all need to be documented in a legally binding manner.

7.7.7. Right to Information The Regulations include the right to information required by Article 9 of the Artist’s Resale Right Directive. On request by the artist, his estate or a collecting society, dealers and auction houses must supply the information required to enable the royalty to be paid, at any time up to three years from the date of the sale.

7.7.8. The Works of Deceased Artists Chapter 4, section 4.4.3 above discusses some of the issues that may arise following the death of an artist and see also section 7.8.3 below.

7.8. Copyright, Moral Rights and ARR Following the Death of the Artist Difficult questions can arise as to what happens to copyright, moral rights and ARR following the death of the artist. In the UK separate yet related rules apply to copyright, moral rights and ARR.

Copyright, Moral Rights and ARR Following the Death of the Artist 213

7.8.1. Copyright on Death62 The artist during their lifetime can make provision for how the copyright in their works will be dealt with on their death (assuming of course the artist has retained such rights – this may not necessarily be the case where work has been commissioned nor if they created the works as a director and/or an employee of a limited company or other corporate entity – see section 7.9 below). The artist can transfer the copyright they own on their death by making a will and making a bequest of the copyright, as copyright is treated as personal or moveable property on death and can be transferred by testamentary disposition. Where the artist fails to either make a will or expressly deal with their copyright in their will (for example they might leave by a bequest under the will their works remaining in their studio at death (but not mention copyright at all in their will)) then the law provides default positions. So, for a bequest this will also transfer the copyright in the works to the beneficiary of the tangible object/work of art in question if the works were ‘not published’ at the artist’s death. In broad terms, publication does not include an exhibition but would (apart from in limited circumstances) include the issue of copies to the public or making the work available to the public – so if the artist’s works had been published in a magazine, a book or online prior to their death this default rule would not apply.63 Where no bequest is relevant and the artist made a will then the copyright the artist owned at their death will fall into the residue of their estate and be treated accordingly by the artist’s personal representatives. If the artist did not make a will at all then the rules of intestate succession apply.

7.8.2. Moral Rights on Death64 Whilst moral rights cannot be assigned or transferred by the artist during their lifetime the law does allow the artist to transfer moral rights under a will (testamentary disposition) and this could be to a different person than the recipient of their copyright on death. However, if the artist does not make a will with express provision for moral rights their moral rights will in the first instance pass to the person to whom the copyright in the work(s) (being part of their estate) has passed on their death and failing that they will be exercisable by the artist’s personal representatives. Note that different rules apply to the right against false attribution than to the other moral rights – the former right can only be exercised by the deceased’s personal representatives.65

62 The relevant statutory provisions referred to in this section are ss 90 and 93 of the CDPA. 63 See s 175 CDPA and in particular s 175(4)(b). Where the artist died before 1 August 1989 (the date the CDPA came into force) reference will also need to be made to the transitional provisions of the CDPA as well as earlier copyright acts, to the extent applicable to tracing the transmission of title to the artist’s copyright after their death. 64 The relevant provision is s 95 CDPA. 65 S 95(5).

214 Some Practical Issues and Precedents

7.8.3. ARR on Death66 Like moral rights, ARR cannot be assigned/transferred by the artist during their lifetime but can be dealt with by testamentary disposition or in default by the rules of intestate succession. However, there are restrictions placed on to whom the right may be transferred (such restrictions do not apply to copyright or moral rights) – the recipient has to be a natural person or a qualifying body (as defined in the ARR Regulations). There are also transitional provisions applying specific rules where the artist died before the ARR Regulations came into force (14 February 2006).

7.8.4. Conclusion The potential complexity of what happens to copyright, moral rights and ARR on death means that artists do need to think about making a will if they want to have some control over their artistic legacy and ensure as far as possible their dependants benefit from rights which potentially last for 70 years from their death.

7.9. Copyright, Moral Rights and ARR Where the Artist is an Employee or Company Director The discussion in the book generally assumes that the artist is an independent creator, most likely self-employed but not an employee or the manager or director of a business. The employment status of the artist does not affect the copyright in their works (although it will be relevant to who first owns the copyright, the employer or artist) but it may well limit or eliminate the moral rights and ARR they might otherwise have in works created whilst they are employed. This can be important in practice as the case discussed at the end of the section highlights. First the legal background is summarised.

7.9.1. Copyright and the Employed Artist Where a work of art is created by an employee in the course of their employment then unless there is an agreement to the contrary the employee’s employer will be the first owner of copyright in the work.67 The employee as ‘author’ is still relevant for other provisions of the CDPA (eg the duration of the copyright is linked to the author’s life plus 70 years) but they never own the copyright. Also where the artist is not technically

66 The Artist’s Resale Right Regulations (SI 2006/346) (as subsequently amended). See Regs 9(2) and 16. 67 S 11 CDPA which provides that the author is the first owner of copyright unless the author is an employee and creates the work in the course of their employment (note this section does not apply to Crown copyright or Parliamentary copyright (see ss 163 and 165 CDPA) or to copyright which subsists by virtue of s 168 CDPA (copyright of certain international organisations)).

Artist is an Employee or Company Director 215 an employee but owes a fiduciary duty to the company in question (eg by being a director of the company) then in equity the copyright in works they create for the company is likely to vest in the company – the copyright will be held on trust for the company.68 If the artist were in a business partnership and the work was created for the partnership then the copyright would be a partnership asset.69

7.9.2. Moral Rights and the Employed Artist Right of Attribution If a work is created by an author in the course of their employment then the right of attribution does not apply to anything done by or with the authority of the copyright owner where copyright in the work originally vested in the author’s or director’s employer by virtue of section 11(2) CDPA (works produced in the course of employment)70 – so effectively the artist’s right of attribution falls away.

Right to Object to Derogatory Treatment of a Work Where a work is produced in the course of the author’s employment then the right to object to derogatory treatment does not apply to anything done in relation to such a work by or with the authority of the copyright owner unless the author or director: (a) is identified at the time of the relevant act; or (b) has previously been identified in or on published copies of the work; and where in such a case the right does apply, it is not infringed if there is a sufficient disclaimer.71 So this right is curtailed where the artist is an employee and can also be subject to a disclaimer.72

7.9.3. ARR and the Employed Artist The ARR Regulations do not address the situation where the artist is employed. However, it can be argued that where the artist is employed by a company or is a director of a company (or other business entity) and that entity has provided the materials used by the artist and also (potentially) studio space and tools then the work of art created by the artist never belongs to them – it vests on creation in their employer/business entity. If the artist has never owned the work of art then it can also be argued ARR cannot apply as ARR only applies after the first transfer of ownership of the work by the artist.73 68 See, eg,. Vitof Ltd v Altoft [2006] EWHC 1678 (Ch). 69 S 20(1) Partnership Act 1890 and see, eg, Coward v Phaestos Ltd & Ors [2013] EWHC 1292 (Ch). 70 S 79(3) CDPA. 71 S 82 CDPA. 72 S 82(2) CDPA. 73 See previously published guidance by the UK Intellectual Property Office in February 2007 – see Stokes (2017) (n 47 above) 24.

216 Some Practical Issues and Precedents

7.9.4. Chadwick & Ors v Lypiatt Studio Ltd & Anor74 Background to the Case Successful visual artists often operate through limited companies. This can have tax advantages. One such example was the leading British sculptor Lynn Chadwick, who died in 2003. From July 1973 he changed his status from a sole trader to becoming a director and employee of a company he and his wife owned and transferred his stock and trading business to the company. However, at the time no written agreement dealing with the transfer of the (physical) property and copyright in his art works was executed. On the artist’s death a dispute arose as to where title to the property and copyright lay in his works of art created both pre and post 1973 – with the artist’s estate or with the company? His Will made no mention of the artist’s artworks or copyright in them. As noted elsewhere in this book, selling or transferring physical title to a work of art does not transfer the copyright in it – so often physical title and the copyright (including moral rights) in an artistic work are in separate ownership.

The Case These facts gave rise to a dispute which was considered by the High Court in the UK. Based on the evidence before him the judge concluded that in 1973 physical property and copyright in works extant at that time and part of the artist’s trading business were transferred to the company and going forward from 1973 as the artist was an employee of the company the physical property and copyright in his works were vested in the company by operation of law. It did not matter that the formalities to transfer legal title to the copyright from the Estate to the company were not complied with – the company owned the copyright in equity (to the extent it did not have legal title by virtue of the artist’s employment) and so could call upon the Estate to transfer the formal, legal title to the copyright to it.

Lessons from the Case The obvious lesson is that copyright must not be forgotten about when artists structure their businesses or draft their wills. Doing so may help to avoid future disputes. It is fair to say that back in 1973 there was a lot less interest in copyright and works of art than there is now – in addition to copyright artists also have moral rights as well as ARR and artists are a lot more protective of their rights and have collecting societies such as DACS and ACS to assist them. However, lawyers and tax advisors who advocate an employee/corporate approach to managing artist’s rights do need to think about the effect this will have on the artist’s ARR and moral rights – as noted above under UK law the effect is likely to effectively extinguish or significantly water down any moral rights and it can also be argued as set out above that ARR does not apply to employee-created works either.

74 [2018]

EWHC 1986 (Ch).

Artist is an Employee or Company Director 217

Suggested Further Reading L Bently and B Sherman, ‘Copyright Aspects of Art Loans’ in N Palmer (ed), Art Loans (London, Kluwer, 1996) N Korn, ‘Copyright for Museums and Galleries’ (www.copyrightuser.org/educate/intermediaries/ museums-and-galleries/) RE Pantalony, Managing Intellectual Property for Museums (Geneva, WIPO, 2013) (available at www.wipo.int/edocs/pubdocs/en/copyright/1001/wipo_pub_1001.pdf) S Stokes, Artist’s Resale Right: UK Law and Practice 3rd edn (Institute of Art and Law, 2017)

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

8.1. Breach of Confidence Under UK law, breach of confidence is purely a creation of the common law, and ‘it is well established … that the provision of information which is of its nature confidential, in circumstances in which the confidence is not removed, imposes duties on the recipient to respect that confidence.’3 An action for breach of confidence may be available in addition to copyright infringement for unpublished works.4 Indeed, the leading early case on the subject, 1 Note that database right and other rights typically grouped with copyright are discussed above in chs 3 and 5. 2 For a useful practical guide to the whole area of privacy and personality rights, see R Deacon, N Lipton and R Pinker, Privacy and Personality Rights: Commercial Exploitation and Protection (Bristol, Jordans, 2010). See also JB Prowda, Visual Arts and the Law (Fareham, Lund Humphries (in association with Sotheby’s Institute of Art) 2013). 3 Lucasfilm Ltd & Others v Ainsworth & Another [2008] EWHC 1878 (Ch) (31 July 2008) para 196 (per Mann J). 4 For there to be an actionable breach of confidence, three requirements must be satisfied: (a) the information imparted must be ‘confidential’ (ie, not something that is public property and public knowledge); (b) the information must be imparted in circumstances where an obligation of confidence is imposed; and (c) there must be a breach of the obligation of confidence (eg, see dictum of Megarry J in Coco v AN Clark (Engineers) Ltd [1969] RPC 41, 47). There is also a potential ‘public interest’ defence to breach of confidence: Copinger (1999) (below n 14) 20-02. For a case reporting the issues, see Ashdown v Telegraph Group [2002] RPC 5; and

Passing Off 219 Prince Albert v Strange (1849),5 concerned the publication of etchings by Prince Albert and Queen Victoria that had been created for their own use and not for publication. The defendants had acquired some impressions of the etchings in breach of confidence from a printer who had access to the etchings. The court granted an injunction restraining the defendants from publishing not just the copies of the etchings but also a catalogue describing the etchings. Hence, a breach of confidence action can go beyond copyright law in protecting ‘ideas’ (in this case, the catalogue, which would not itself infringe any copyright in the etchings, although it was derived from them), as well as their expression (the etchings).6 It can also be used in circumstances where the work disclosed to the public in breach of confidence is not itself protected by copyright, as in the case of the assembly of objects for the Oasis album cover in Creation Records v News Group Newspapers,7 discussed above in chapter three. Also, a conceptual art work by Anna Livia Lowendahl-Atomic uses the law of confidence as an intrinsic element of the work.8 It should be noted that the ‘fair dealing’ defences do not apply in the case of breach of confidence.9 Different persons may also own the copyright from those entitled to bring an action for breach of confidence.

8.2. Passing Off In the United Kingdom, the law of passing off may aid an artist who finds that others are passing off his work as theirs.10 This is in addition to any moral right claim – eg, for false for a review of the law see, CJ Angelopoulos, ‘Freedom of Expression and Copyright: The Double Balancing Act’ (2008) 3 Intellectual Property Quarterly 328–53 and see section 8.6 below in a copyright context. Note also the developing law of privacy in the UK grounded in the law of confidence and Art 8 of the European Convention on Human Rights (ECHR), discussed below s 8.5. 5 2 De Gex & Sm 652, 64 ER 293 (on appeal) (1849) 1 Mac & G25, 41 ER 1171. 6 See F Gurry, Breach of Confidence (Oxford, Clarendon Press, 1984) 20–21. 7 [1997] EMLR 444; The Times (29 April 1997) Ch D. This was an interlocutory application in which an arguable case was found that the taking of a photograph of the assemblage and its publication were in breach of confidence. See also Shelley Films Ltd v Rex Features Ltd [1994] EMLR 134 (physical appearance of a closed film set also protected by the law of confidence); and Fraser v Thames Television [1984] QB 44 (plot or developed idea protected by law of confidence even if not protected by copyright). Information imparted to another can still be considered confidential (and so protected) even if it can be reconstructed from other material that is publicly available – for example, the design drawings of a leather punch were protected even if they could have been created by reverse engineering using the punch: Saltman Engineering Co Ltd v Campbell Engineering Co Ltd [1948] RPC 203, discussed in Lucasfilm (above n 3) para 198). Note, however, that merely vague ideas that are not sufficiently developed to be capable of producing a result (such as that for a new nightclub in De Maudsley v Palumbo [1996] FSR 447) will not be protected. 8 The work consists of a series of 60 secrets that are for sale under the terms of a contractual confidentiality agreement: H Lydiate, ‘Mum’s the Word’ Art Monthly (Dec 2000/Jan 2001) 61. 9 Human rights defences (freedom of expression) can of course be raised in respect of breach of confidence, but there will need to be exceptional circumstances to permit this, given a breach of confidence has occurred and confidences should generally be respected. See, eg, Associated Newspapers Ltd v HRH Prince of Wales [2006] EWCA Civ 1776 (21 December 2006) 68: ‘the test to be applied when considering whether it is necessary to restrict freedom of expression in order to prevent disclosure of information received in confidence is not simply whether the information is a matter of public interest but whether, in all the circumstances, it is in the public interest that the duty of confidence should be breached’ (per Lord Phillips CJ). See also section 8.6 below in a copyright context. 10 The ‘classical trinity’ of requirements for passing off are: (a) a reputation or goodwill acquired by the claimant for his goods, name or mark; (b) a misrepresentation by the defendant leading to confusion

220 Art and Intellectual Property Rights Other than Copyright attribution of authorship or a claim of copyright infringement – and extends beyond the artist to successor owners of his copyright or his publisher. Central to liability in passing off is the need for a misrepresentation.11 For example, in the ‘Alan Clark Diaries’ case referred to earlier in chapter six in the context of parody, the issue was whether a substantial (or large) number of readers of the Evening Standard, in which the ‘parodied’ articles appeared, had been misled or were likely to be misled as to the authorship of the articles, although that deception had to be more than momentary and inconsequential.12 It is also possible to commit passing off by representing a work that is the plaintiff ’s as being the work of someone else (so-called ‘reverse passing-off ’).13 This clearly overlaps with the moral right of paternity. The exploitation of an author’s work that has been altered or revised without the author’s consent can also be passing off.14 As may also be the case if old material of an author is published as new work.15 It will be a clear-cut case of passing off if an artist with an established reputation in his name finds other traders using the name in the course of trade to pass off their designs as those of the artist. However, it is much more difficult to establish that the imitation of an artist’s style can be passing off.16 The difficulty of course is that in most cases, even if the artistic styles in question are similar, it will be clear that the works in question emanate from different artists; hence, there is no actionable misrepresentation. In Gordon Fraser Gallery Ltd v Tatt,17 a case that concerned rival greetings card manufacturers, the defendants offered for sale cards that bore a distinct resemblance to the plaintiff ’s, which had a distinctive individual style. In an application for an interlocutory injunction, it was held that mere imitation of an artistic style by itself would be unlikely to amount to passing off;18 there would need to be a sufficient misrepresentation so that a person buying the defendant’s cards would be under the impression that they were published by the plaintiffs. This was not the case here.19 (or deception), causing (c) damage to the claimant: see Consorzio Del Prosciutto di Parma v Marks & Spencer plc [1991] RPC 351, 368; Reckitt & Coleman Products Inc v Borden Inc [1990] 1 WLR 491, 499 (per Lord Oliver). 11 Erven Warnink v Townend [1980] RPC 31, 93 (per Lord Diplock). 12 Alan Clark v Associated Newspapers Ltd [1998] RPC 261. Here, the reputation of Alan Clark as an author was protected by the law of passing off: his reputation and goodwill as an author was placed at risk, as were the prospective sales of his published works and the market value of his rights to exploit his works. 13 See, eg, Bristol Conservatories Ltd v Conservatories Custom Built Ltd [1989] RPC 455 (CA). US cases in which this has happened include Sanchez v Stein No 80CV1208 (1980), in which the defendant was alleged to have sold works of the plaintiff as the defendant’s own creation (the ‘Winged Wolves’ case) (see LD DuBoff and CO King, Art Law in a Nutshell, 3rd edn (St Paul, MN, West Group, 2000) 210); and Smith v Montoro 648 F.2d 602 (9th Cir, 1981) regarding film credits (see DuBoff and King (above) 211). 14 K Garnett et al, Copinger and Skone James on Copyright, 14th edn (London, Sweet & Maxwell, 1999) (Copinger 1999) 21–13. 15 Ibid, 21–14. 16 Ibid, 21–18. 17 [1966] RPC 505. 18 In this case (ibid), Buckley J was of the view that ‘a similarity of artistic style, or even a similarity of content and design, which does not, or may not, amount to a breach of copyright, would be too indefinite a feature to rely upon as the basis of granting relief in respect of passing off ’ (509). 19 Gordon Fraser Gallery Ltd v Tatt (above n 18) 508: ‘[I]t seems to me that the artist … would have some difficulty in saying that [he] had a monopoly in producing works in [his style]. I am not concerned here with any question of copyright, but only with questions of passing off; and merely effecting the style, or imitating or adopting the style, [of] an artist, would it seems to me to be a difficult ground on which to base a claim for passing off if that was the only basis for the claim’ (per Buckley J).

Passing Off 221 Despite the difficulties in sustaining a passing off action in respect of artistic styles or designs, often claims in copyright infringement and passing off are pleaded together, especially where the copyright claim is weak. So for example, in the leading case on works of artistic craftsmanship, George Hensher Limited v Restawhile Upholstery (Lancs) Limited, the plaintiff, as well as claiming breach of copyright in their furniture designs, also claimed in passing off.20 In Norowzian v Arks, discussed above in chapter six, a claim in passing off was abandoned during the trial.21 In Merchandising Corp of America v Harpbond,22 a case concerning Adam Ant’s facial make-up, a claim in passing off that (by reproducing pictures of Adam Ant in their magazines, including a picture of Adam Ant altered by the defendants to replicate his facial make-up) the defendants were holding themselves out as licensees of the plaintiffs failed.23 More recently, in Lucasfilm Limited v Andrew Ainsworth,24 a claim in passing off was made by the film companies behind Star Wars against a designer/manufacturer involved in the original film, Andrew Ainsworth, who was making and selling replica armour and helmets used in the film of which he claimed to be the creator, among other things. It was claimed that Mr Ainsworth had misrepresented his products as licensed by the claimants and also that there was a reverse passing off claim. These were rejected by the judge (and not appealed).25 Note that in the United States, an artist’s style was held to be a protectable trade dress in Romm Art Creations Ltd v Simcha International Ltd.26 But there are other decisions to the contrary.27

20 The passing off claim failed at first instance before Graham J and was not the subject of the appeal ([1975] RPC 31); the passing off claim failed as the plaintiffs did not have a sufficient reputation in the shape of their goods to found a passing off action. 21 [1999] EMLR 67, 76. 22 [1983] FSR 32. See above ch 3. 23 Lawton LJ was of the view there was no evidence that the defendants were doing this, and even if they were, what they did was not damaging to Adam Ant’s reputation: Merchandising Corp of America v Harpbond (ibid) 47. 24 Above n 3. 25 Lucasfilm (above n 3) para 180: ‘He has not pretended that Lucas’s goods are his; nor has he pretended that the goods that he was selling, which were in fact his own, were Lucas’s. He says what he is selling are his own, and he is proud of them. What he says is true so far as the origin of the goods is concerned. It might be false so far as the creation of the original design is concerned, but that is not misappropriating Lucas’s goodwill in the manner required in passing off. What he has done is different – he has described himself as the original creator of the original goods. That may be untrue, and it may amount to one or more other civil wrongs (as to which there was no argument and there is no claim), but it does not amount to passing off. It is a (mis)statement about him, not about the goods he is selling. He does not sell his goods by reference to someone else’s goods or someone else’s goodwill’ (per Mann J). 26 786 FSupp 1126 (EDNY 1992). Trade dress is the overall appearance or ‘look’ of a product or service. To succeed, confusion as to the source of the goods or services concerned is likely, among other things: DuBoff and King (above n 13) 200–2. Romm concerned the style of the Israeli artist Itzchak Tarkay’s posters and limited editions. The defendant distributed posters and limited editions strikingly similar to the plaintiff ’s. In this case, the court held that Tarkay’s images served no purpose other than to identify their source, and there was a likelihood of confusion as to source (see DuBoff and King (above n 13) 201), so there was trade dress infringement, though no copyright infringement. 27 See Leigh v Warner Bros 10 FSupp 2d 1371 (SD Ga 1998); Hughes v Design Look Inc 693 FSupp 1500 (SDNY 1988) (concerned paintings by Andy Warhol); and Galerie Furstenberg v Caffaro 697 FSupp 1282 (SDNY 1988) (a counterfeiting case in which it was found that Salvador Dali’s style is not a trade mark). These cases are discussed in DuBoff and King (above n 13) 40–41 and 201–2. See also WM Borchard, Trademarks and the Arts, 2nd edn (New York, Columbia University Law School, 1999) 45 and 77–78.

222 Art and Intellectual Property Rights Other than Copyright In conclusion, it is also worth noting that until recently, UK law has granted very little protection to an artist’s name and personality as such.28 However, as noted below in section 8.5, this has changed: a celebrity can claim protection in passing off for false endorsement where their image or name is used to falsely endorse or sell other people’s products; and individuals (whether or not celebrities) have increasingly strong privacy rights.

8.3. Trade Marks 8.3.1. The Artist as a Brand29 Trade mark protection for artists is increasingly common. This reflects to an extent our celebrity culture and of course commercial concerns. So, in the US, for example, the name ‘Picasso’ has been held to be a trade mark in the context of Picasso and his heirs licensing various goods (including art reproductions, eyewear and scarves). The court recognised that the name ‘Picasso’ and his famous signature had acquired a secondary meaning, and his heirs had a right to profit from the use of his name and reputation.30 A similar view was taken in a dispute relating to the domain name samfrancis.com between the administrator of the expressionist artist Sam Francis’ estate and a commercial art gallery that had registered the domain name.31 Indeed trade marks for artists appear to be encouraged in the US.32 28 See Copinger (1999) 21-45–21-48. In particular, it had been debated to what extent the unauthorised use of an artist’s name or image to endorse someone else’s product is actionable in passing off. See, eg, Lord Brabourne v Hough [1981] FSR 79; Kaye v Robertson [1991] FSR 62. In the latter case, the plaintiff, the actor Gordon Kaye, was photographed and interviewed by the defendants whilst in hospital following an accident; the defendants announced they were going to publish an article, on the basis that Mr Kaye had consented. It was held that Mr Kaye was not a trader in relation to his interest in his story and his accident, so there was no passing off. See also P Jones, ‘Manipulating the Law against Misleading Imagery: Photo-Montage and Appropriation of Well-Known Personality’ (1999) 1 European Intellectual Property Review 28; and generally, the discussion below about trade mark protection for an artist’s name. However, in light of Edmund Irvine Tidswell Ltd v Talksport Ltd [2002] EWHC 367 (13 March 2002) (Ch) para 46, discussed below s 8.5, it is clear that passing off law can be used to prevent false endorsement: ‘[There] is nothing which prevents an action for passing off succeeding in a false endorsement case. However, to succeed, the burden on the claimant includes a need to prove at least two, interrelated, facts. First that at the time of the acts complained of he had a significant reputation or goodwill. Second that the actions of the defendant gave rise to a false message which would be understood by a not insignificant section of his market that his goods have been endorsed, recommended or are approved of by the claimant’ (per Laddie J). 29 See, eg C Lury, ‘Portrait of the Artist as a Brand’ in D McClean and K Schubert (eds), Dear Images: Art, Copyright and Culture (London, ICA/Ridinghouse, 2002). 30 Visual Arts and Galleries Association v Various John Does, discussed in DuBoff and King (above n 13) 192–93. This appears to be an example of US law – s 43(a) of the Lanham Act 1946, which prohibits ‘a false description of origin, or any false description or representation’ in connection with any goods or services that are introduced into commerce (DuBoff and King (above n 13) 191–92)) – giving protection to an unregistered trade mark. Under UK law, such an action would need to be brought in passing off if the mark was not registered. DuBoff and King also make the point that under US law, only a well-known artist such as Picasso would be able to argue that his own name had a secondary meaning (ie, an established customer association between the name and the artist’s work) and hence should be protected as a trade mark. 31 Frederick M Nicholas, Administrator, The Sam Francis Estate v Magdison Fine Art Inc, Case No D2000-0673 (WIPO Arbitration and Mediation Center) (27 September 2000). See below s 8.4. 32 See www.uspto.gov/learning-and-resources/ip-policy/musicians-and-artists-profile (accessed 31 May 2020).

Trade Marks 223 In the United Kingdom, trade mark law (as opposed to passing off) protects registered trade marks, and the main element in UK trade mark infringement actions is confusion (as opposed to misrepresentation in passing off). Also, a registered trade mark is a property right in its own right;33 passing off protects the right in the goodwill of the trader or business concerned as opposed to any property in the mark (or name or get-up) itself.34 To secure a trade mark registration in the United Kingdom, the mark applied for must be: any sign which is capable (a) of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and (b) of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.35

So it is possible for artistic works, as well as an artist’s name (or pseudonym) or signature,36 to be registered as a trade mark, provided there are no grounds for refusing the trade mark application.37 For example, if the name of a well known artist were to be applied for as a trade mark for by another person without the artist’s consent then this could be considered a ‘bad faith’ application and ought not to be granted.38 As a practical matter, art dealers, museums, galleries and artists are advised to consider carefully protecting their logos, names and other brands through trade marks, where appropriate and available.39 Also, any use made of their brands by others, for example for merchandising purposes, should be strictly controlled by licence in the appropriate form, in order to seek to preserve and maintain rights in the brands.

8.3.2. Use of Trade Marks in Artistic Works Just as artists may seek to protect their names as trade marks other trade mark owners may object if their trade mark is used in an art work without their consent. This may 33 S 2 Trade Marks Act (TMA) 1994. The monopoly granted by a trade mark is in respect of the classes of goods and services for which it is registered. 34 What is protected in passing off is ‘the property in the business or goodwill likely to be injured by the misrepresentation’: AG Spalding & Brothers v AW Gamage Ltd (1915) 32 RPC 273 (HL) (per Lord Parker). 35 S 1(1) Trade Marks Act 1994 (as amended). 36 The more distinctive the signature, the more likely it is to be registered as a trade mark: signatures are prima facie distinctive for trade mark purposes, but not inevitably so: see Laddie J in Re Elvis Presley Trade Marks [1997] RPC 543, 558. 37 The grounds can be absolute (eg, the mark fails to satisfy the requirements of s 1(1), it is devoid of any distinctive character, etc (s 3 TMA)) or relative (eg, it is identical or confusingly similar to an earlier trade mark (s 5 TMA)), or it is a protected emblem such as a national flag (s 4 TMA). It is interesting to note that at the time of writing the artist Banksy has had an EU trade mark application refused by EUIPO because it was filed in bad faith – he had no intention of using it (www.natlawreview.com/article/don-t-bank-sytrademarks-banksy-loses-eu-trademark-due-to-bad-faith) (accessed 10 October 2020). In the UK the TMA also states that ‘[a] trade mark shall not be registered if or to the extent that the application is made in bad faith’ (s 3(6) TMA). 38 See www.gov.uk/guidance/trade-marks-manual/the-examination-guide (accessed 31 May 2020) s 5.11. 39 Of course, copyright and designs protection may also be available for signatures, logos and designs. There is passing off protection too for unregistered trade marks and in the US the Lanham Act is considered useful in protecting unregistered marks including visual artistic styles (see Prowda (n 2 above) 92).

224 Art and Intellectual Property Rights Other than Copyright be combined with a copyright claim if the trade mark is also protected by copyright. Such cases do occur from time to time – large media corporations may feel an artist is damaging one of their brands, for example. In the US there has been litigation between former members of the Velvet Underground band and the Andy Warhol Foundation for the Visual Arts for trade mark infringement in relation to the iconic Warhol banana image associated with the band.40 Appropriation artists may find themselves sued for both copyright and trade mark infringement (see also section 6.4.7 above).

8.4. Domain Names Strictly speaking, Internet domain names are not a species of intellectual property; they simply represent a unique Internet address, performing a similar function to a telephone number. Rights to use a domain name are governed by the contract made between an applicant and the relevant domain name registrar. Nevertheless, domain names are often treated as if they were intellectual property. Furthermore, there are frequently conflicts between domain names and trade marks (whether registered or protected at common law by passing off), as registrars generally register on a first-come, first-served basis, and no two domain names can be identical. Trade marks, however, are national in scope, so whilst there can only be one registrant of, say, ‘art.com’, ‘Art’ might be a trade mark in various countries and in respect of a variety of classes of goods and services, each mark potentially owned by a separate proprietor. This inevitably gives rise to conflicts between registrants and trade mark proprietors. So it is worth briefly investigating this area from the perspective of an artist, dealer or museum. A number of museums, art galleries, art publishers and artists have been the victims (or alleged victims) of ‘cybersquatting’: an unconnected person has registered a domain name identical or similar to, for example, a museum’s name and has either sought money for its ‘return’ or traded using the domain name in the hope of benefiting from the museum’s goodwill in its name. Such activities can amount to passing off or trade mark infringement in the United Kingdom.41 In other countries, the matter has been legislated against.42 Cybersquatting is now typically dealt with by the aggrieved party making use of the Uniform Domain Name Dispute Resolution Policy (UDRP) established by the Internet Corporation for Assigned Names and Numbers (ICANN),43 a form of private arbitration.44 The UDRP is aimed at providing a swift remedy for ‘bad faith’ domain name registrations.45 40 Prowda (n 2 above) (92). 41 See, eg, the ‘One in a Million’ case: British Telecommunications and Others v One in a Million and Others [1998] 4 All ER 476. 42 In the US by the Anti-cybersquatting Consumer Protection Act 2000, for example. 43 A non-profit corporation responsible for the Internet address system (www.icann.org). 44 See www.icann.org/resources/pages/help/dndr/udrp-en. 45 To be successful, the complainant must prove: (i) that the alleged cybersquatter’s domain name is identical to or confusingly similar to a trade mark or service mark in which the complainant has rights; and (ii) the cybersquatter has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith by the cybersquatter (see para 4(a) UDRP). Para 4(b) UDRP also gives non-exhaustive lists of the circumstances to be treated as evidence of registration and use in bad faith (eg, name acquired simply to sell back to the complainant at a profit; or use of the name

Privacy and Publicity Rights 225 A number of museums, art galleries, art publishers and artists have successfully used the UDRP.46

8.5. Privacy and Publicity Rights Artistic works, especially photographs, may portray a person’s image or other information about that person (eg, name or reputation). Many states will provide a remedy to the subject of the image (ie, the person concerned) to control either the use of their image for commercial publicity (eg, product endorsement or simply in press/media coverage) through a ‘right of publicity’ or where a right of privacy or confidence is breached.47 The legal basis of the protection afforded to persons and the scope of protection vary from state to state. For example, in the United States, the right of publicity is treated as a property right;48 but in the United Kingdom, there is no express right of publicity – rather, those seeking to protect the use of their image or ‘personality’ have to rely on a range of legal doctrines, including passing off,49 registered trade mark protection50 and privacy/breach of confidence.51 In the US the torts of the right of privacy and the right of publicity exist – over half of all US States recognise a right of publicity through common law or State legislation.52 Some countries are promoting ‘image rights’ as a unique species of intellectual property.53 The current position in the United Kingdom is that absent passing off (eg, where in a commercial context a person’s image is used to endorse the promotion of a product without his or her consent) or trade mark infringement, the rights that have to be relied on relate to privacy (including data protection) and breach of confidence.

by the respondent for commercial gain by attracting users to the respondent’s site by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s website). Para 4(c) indicates how rights to and a legitimate interest in a domain name may be demonstrated. 46 Some decisions are discussed in previous editions of this text. 47 For a critical analysis of this area, see G Black, Publicity Rights and Image: Exploitation and Legal Control (Oxford, Hart Publishing, 2011), upon which this section heavily draws. 48 Haelan Laboratories v Topps Chewing Gum Inc (1953) 202 F 2d 866. 49 Irvine v Talksport (above n 28). The case involved an edited photograph of the racing driver Eddie Irvine holding a portable radio with the words ‘Talk Radio’ added – the latter being the radio station of the defendants. The defendants had not sought permission from Eddie Irvine for this. He successfully sued for false endorsement through the law of passing off but not through a broader right of publicity. Laddie J noted, ‘Manufacturers and retailers recognise the realities of the market place when they pay for well-known personalities to endorse their goods. The law of passing off should do likewise. There appears to be no good reason why the law of passing off in its modern form and in modern trade circumstances should not apply to cases of false endorsement’ (para 43). Note that this narrow decision is very much based on the classic approach to passing off in English law: the judge was clear that it did not open the floodgates to a broader publicity right in the UK (paras 44–45). 50 See above. 51 Douglas and Others v Hello Ltd and Others [2005] EWCA Civ 595 (18 May 2005). Data protection law can also be relevant as well – an image of a person is personal data under the European General Data Protection Regulation (Regulation 2016/679) which continues to apply in the UK following Brexit. 52 Prowda (n 2 above) ch 2. 53 For example, Guernsey – http://ipo.guernseyregistry.com/article/103037/What-are-Image-Rights (accessed 31 May 2020).

226 Art and Intellectual Property Rights Other than Copyright The law on privacy and breach of confidence has been a rapidly moving area of the law.54 Generalising in this area is difficult, but an image taken in circumstances in which there is a reasonable expectation of privacy (though not necessarily a private situation) can be protected from misuse through reliance on Article 8 of the European Convention on Human Rights (ECHR), subject to any freedom of expression rights under Article 10 of the ECHR – in which case the court has to balance the two rights.55 Article 8 1. Everyone has the right to respect for his private and family life, his home and his correspondence. 2. There shall be no interference by a public authority with the exercise of this right except such as is in accordance with the law and is necessary in a democratic society in the interests of national security, public safety or the economic well-being of the country, for the prevention of disorder or crime, for the protection of health or morals, or for the protection of the rights and freedoms of others. Article 10 1.

2.

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

For example, Article 8 was potentially infringed by a photograph of JK Rowling’s son that was taken in a public street.56 Clearly, children are more deserving of protection than their celebrity parents, but even celebrities can control the use made of images about them in circumstances in which Article 8 is infringed and Article 10 does not take precedence.57 So an artist using the likeness or images of persons in their works would be well advised to get those people’s consent, unless the artist is comfortable a defence

54 Where the confidential information is ‘private information’ about a person, then ‘in order to find the rules of the English law of breach of confidence we now have to look in the jurisprudence of articles 8 and 10 [of the ECHR]’: Ash and Another v McKennitt and Others [2006] EWCA Civ 1714 (14 December 2006) para 11 (per Buxton LJ). Arts 8 and 10 ECHR are set out below. 55 See, eg, the discussion of the balancing test in Mosley v News Group Newspapers Ltd [2008] EWHC 1777 (QB) (24 July 2008) paras 8–23. 56 Murray v Big Pictures (UK) Ltd [2008] EWCA Civ 446 (7 May 2008). A claim under the Data Protection Act 1998 was also made (paras 2 and 62). For a later case see Weller and others v Associated Newspaper Ltd [2015] EWCA Civ 1176, [2016] 3 All ER 357. See www.5rb.com/article/photos-of-celebrities-children-doespaul-wellers-case-muddy-the-waters-of-media-law/ (accessed 31 May 2020). 57 See, eg, the ECtHR in Von Hannover v Germany (App no 59320) (24 June 2004), (2005) 40 EHRR1, in which it was ruled that paparazzi photographs of Princess Caroline of Monaco going about her daily life – ‘activities of a purely private nature such as practising sport, out walking, leaving a restaurant or on holiday’ (para 61) – infringed Article 8. See also Campbell v MGN Ltd [2004] UKHL 22 (6 May 2004), in which the

Copyright and Freedom of Expression 227 here can be relied on (eg, under Article 10, which is not always likely).58 Indeed, this area is receiving continued attention by the courts, with images in particular receiving particular scrutiny.59

8.6. Copyright and Freedom of Expression In closing this chapter it is worth briefly touching upon the complex and contested area of how copyright (as both a property right and a moral right) relates to the fundamental right of freedom of expression.60 The text of Article 10 is set out above.61 When Article 10(1) is considered in detail the right also includes the right not just of expression itself but also to receive and impart information. But the right is subject to limits set by Article 10(2) (including as noted above privacy as well as the rights of others such as copyright). Recent CJEU cases have stressed the importance of protecting

model Naomi Campbell claimed that the publication of a newspaper article was in breach of confidence and the Data Protection Act 1998 because it contained the following five elements: ‘(1) the fact that Miss Campbell was a drug addict; (2) the fact that she was receiving treatment for her addiction; (3) the fact that the treatment which she was receiving was provided by Narcotics Anonymous; (4) details of the treatment – for how long, how frequently and at what times of day she had been receiving it, the nature of it and extent of her commitment to the process; and (5) a visual portrayal by means of photographs of her when she was leaving the place where treatment had been taking place’ (para 88); by a 3:2 majority, the House of Lords agreed, in particular in respect of elements 3, 4 and 5. See also Mosley v News Group Newspapers (above n 55) in which it was ruled that the claimant had a reasonable expectation of privacy in relation to (albeit unconventional) sexual activities carried on between consenting adults on private property (para 232); a hidden camera had been used. 58 See, eg, comments of the ECtHR in Von Hannover (2005) 40 EHRR 1, para 59: ‘Although freedom of expression also extends to the publication of photos, this is an area in which the protection of the rights and reputation of others takes on particular importance. The present case does not concern the dissemination of “ideas”, but of images containing very personal or even intimate “information” about an individual. Furthermore, photos appearing in the tabloid press are often taken in a climate of continual harassment which induces in the person concerned a very strong sense of intrusion into their private life or even of persecution.’ Furthermore, ‘the decisive factor in balancing the protection of private life against freedom of expression should lie in the contribution that the published photos and articles make to a debate of general interest. It is clear in the instant case that they made no such contribution since the applicant exercises no official function and the photos and articles related exclusively to details of her private life’ (para 76). 59 See, eg, the ECtHR decision in Reklos v Greece, case 1234/05 [2009] ECHR 200 (15 January 2009) regarding photographs of a newborn baby in a sterile baby unit taken without the parents’ consent: ‘The Court reiterated that the concept of private life [under Art 8] was a broad one which encompassed the right to identity. It stressed that a person’s image revealed his or her unique characteristics and constituted one of the chief attributes of his or her personality. The Court added that effective protection of the right to control one’s image presupposed, in the present circumstances, obtaining the consent of the person concerned when the picture was being taken and not just when it came to possible publication’ (ECtHR Press release (15 January 2009). Also Weller and others v Associated Newspaper Ltd [2015] EWCA Civ 1176, [2016] 3 All ER 357. 60 Yin Harn Lee surveys this area in Copyright and Freedom of Expression: A Literature Review CREATe Working Paper 2015/04 (May 2015) (www.create.ac.uk). In Ashdown v Telegraph Group Ltd [2001] EWCA Civ 1142 – the Court of Appeal noted that ‘rare circumstances can arise where the right of freedom of expression will come into conflict with the protection afforded by the Copyright Act, notwithstanding the express exceptions to be found in the Act. In these circumstances, we consider that the court is bound, insofar as it is able, to apply the Act in a manner that accommodates the right of freedom of expression. This will make it necessary for the Court to look closely at the facts of individual cases (as indeed it must whenever a ‘fair dealing’ defence is raised). We do not foresee this leading to a flood of litigation’ (45). See also Angelopoulos (n 4 above). 61 This right is also enshrined in Art 11 of the EU Charter of Fundamental Rights where it is referred to as the right to ‘Freedom of expression and information’.

228 Art and Intellectual Property Rights Other than Copyright copyright and that if a balance between freedom of expression and copyright is to be found then the relevant copyright exceptions available need to be considered as EU Copyright law already balances fundamental rights and copyright in the structure of the Information Society Directive (Directive 2001/29/EC) with its exhaustive list of copyright exceptions.62 These cases highlight that the ability of Member State courts to allow freedom of expression as an autonomous defence to copyright infringement is constrained, as the CJEU sees freedom of expression already accommodated in the exceptions to copyright in its harmonized copyright framework.63

Suggested Further Reading G Black, Publicity Rights and Image: Exploitation and Legal Control (Oxford, Hart Publishing, 2011) W Cornish, D Llewelyn and T Aplin, Intellectual Property: Patents, Copyrights, Trademarks & Allied Rights 9th edn (London, Sweet & Maxwell, 2019) JB Prowda, Visual Arts and the Law (Fareham, Lund Humphries (in association with Sotheby’s Institute of Art) 2013) T Snijders and S van Deursen, ‘The Road Not Taken – the CJEU Sheds Light on the Role of Fundamental Rights in the European Copyright Framework – a Case Note on the Pelham, Spiegel Online and Funke Medien Decisions.’ (2019) 50 International Review of Intellectual Property and Competition Law 1176–1190. https://doi.org/10.1007/s40319-019-00883-0

62 Funke Medien NRW [2019] EUECJ C-469/17, Pelham and Others [2019] EUECJ C-476/17 and Spiegel Online [2019] EUECJ C-516/17. 63 This is the view of T Snijders and S van Deursen in their enlightening article ‘The Road Not Taken – the CJEU Sheds Light on the Role of Fundamental Rights in the European Copyright Framework – a Case Note on the Pelham, Spiegel Online and Funke Medien Decisions.’ (2019) 50 International Review of Intellectual Property and Competition Law1176–1190. https://doi.org/10.1007/s40319-019-00883-0. They note, ‘… in these three cases, the CJEU arrived at the place where two roads diverged: the road of a genuine judicial balancing act between fundamental rights, and the road of full harmonisation of European copyright law. The CJEU seems to have chosen the latter road, by not allowing fundamental rights to play a role as an external limitation to the exclusive rights of copyright holders beyond the closed list of exceptions and limitations provided for by the Copyright Directive [Directive 2001/29/EC] – or at least not as a general possibility’ (taken from the Conclusion of the article).

9 Conclusion THIS BOOK HAS explored the scope and nature of the copyright protection granted to artistic works under UK law. As well as setting out the applicable law with reference to the treatment of artistic works in certain other jurisdictions, the preceding chapters have discussed a number of current and practical issues. A number of recurring themes and issues occur. These are considered further here. Before doing so, however, it is worth mentioning one of the ways in which artistic copyright differs from other sorts of copyright: the privileged place of the ‘original’ work of art, – its ‘aura’.1 Indeed, artist’s resale right (ARR, or droit de suite) recognises this, for ARR applies only where an original work of art is resold – not mass-produced copies.2 The continuing importance of the ‘original’ not only underpins the functioning of ARR but surely also weakens the argument for artistic copyright based on economic incentives, as an artist’s desire in this case is to create an original, and this would happen regardless of whether or not there was copyright protection for it. In other words, reproductions protected by copyright may be a source of useful additional income, but the value of a reproduction cannot compare to the original. Indeed it may be queried how relevant copyright is for successful contemporary artists as the art world has its own systems of control and artists can exert control on copying and use without invoking copyright law (through contract for example or other understood norms).3 1 ‘That which withers in the age of mechanical reproduction is the aura of the work of art’: Walter Benjamin in his 1936 essay ‘The Work of Art in the Age of Mechanical Reproduction’. 2 Art 2 Resale Right Directive 2001/84/EC. See above ch 4. 3 This point is made by D McClean – ‘Piracy and authorship in contemporary art and the artistic commonwealth’, in L Bently, J Davis, and J Ginsburg (eds), Copyright and Piracy: An Interdisciplinary Critique (Cambridge Intellectual Property and Information Law, Cambridge, Cambridge University Press 2010) 311–339. doi:10.1017/CBO9780511761577.017. The ‘high’ art system emphasises the authenticity and provenance of unique artefacts – original works – and this McClean suggests has generated an alternative system of authorship and enforcement for artists to copyright law. On this analysis copyright infringement actions best suit authors whose work is linked to reproductive cultural media, such as music, literature and film. The author would tend to agree, although that is not to say that copyright (including moral rights and artist’s resale right) are not still important particularly when actors who do not follow art market norms are involved – here the artist’s only redress may be a copyright action. For a critique of McLean’s article see J Griffiths, ‘Copyright’s Imperfect Republic and the Artistic Commonwealth’, Queen Mary School of Law Legal Studies Research Paper 56/2010 (3 June 2010). Available at SSRN: https://ssrn.com/abstract=1620125. Note that Xiyan Tang makes a similar point to Daniel McClean – ‘[i]ndeed, it seems to me that the unique position of visual artists in the intellectual property sphere derives from the high premium placed on the original itself. This characteristic of the art market renders it simply not analogous to the markets for literature, film, or music’ (X Tang, ‘The Artist as Brand: Toward a Trademark Conception of Moral Rights’ (2012) 122 Yale Law Journal. Available at: https://digitalcommons.law.yale.edu/ylj/vol122/iss1/4)) (250). Tang argues that ‘[g]iven the inadequacy of a traditional copyright regime governing subsequent copies rather than the original itself, then, it seems that

230 Conclusion The position of commercial artists is of course different, as is that of artists who rely heavily on exploiting their reproduction rights or creating copies of their works for sale. Nevertheless, there is a tendency in discussing copyright to lump all the various classes of work together, forgetting that there are significant differences between Microsoft Windows software, say, and a Lucian Freud painting – even if the law treats them both as works that must be ‘original’ but not works of genius.

9.1. Categories of ‘Art’ and the Subsistence of Copyright The confining definition of ‘artistic works’ in section 4(1) of the Copyright, Designs and Patents Act (CDPA) 1988 and the limited protection afforded to films as ‘dramatic works’ mean the UK courts will continue to have to determine whether works outside the boundaries of traditional art forms are protected by copyright although this is subject to how the law may develop in light of EU copyright jurisprudence.4 In determining the subsistence of copyright for a particular work, issues will arise regarding the fixation/permanence of the work; its categorisation as a ‘graphic work’, ‘sculpture’, ‘collage’, ‘film’, etc; and its originality.5 moral rights, or a regime according the artist more control over the original, serves as an adequate solution for the problems arising from the uniqueness of the fine art object’ (251). More recently Guy Rub has also pointed to the importance of social norms in the art world: ‘[t]his web of norms … provides artists with a set of powerful rights that only partly overlap with the existing legal framework for protecting and incentivizing creativity. Those norms guarantee the artists’ central role in the art world and effectively and efficiently incentivize types of creativity that our legal system does not, such as the creation of certain public ideas’ (GA Rub, ‘Owning Nothingness: Between the Legal and the Social Norms of the Art World’ [2020] Brigham Young University Law Review 1147, Ohio State Public Law Working Paper No 537, Available at SSRN: https:// ssrn.com/abstract=3433327 (1218)). 4 See Creation Records v News Group Newspapers [1997] EMLR 444; and Norowzian v Arks [2000] FSR 363. The potential impact of EU copyright jurisprudence is discussed in ch 3 but the author assumes that unless the UK legislator in the future chooses to move away from a definition-based approach to the broader concept of a ‘work’ the UK courts will feel bound to follow the current UK approach as regards categories of work (see, eg, Response Clothing Ltd v The Edinburgh Woollen Mill Ltd (Rev 1) [2020] EWHC 148 (IPEC) discussed in section 3.2.1 above where the judge (HHJ Hacon) noted ‘[i]n 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’ (27)). But it is worth stressing this disconnect between the UK classificatory approach and that of the CJEU which has stated that ‘work’ is an autonomous EU copyright concept and that two cumulative conditions must be satisfied for subject matter to be classified as a ‘work’ within the meaning of Directive 2001/29. First, the subject matter concerned must be original in the sense that it is the author’s own intellectual creation. Second, only something which is the expression of the author’s own intellectual creation may be classified as a ‘work’ within the meaning of Directive 2001/29 (see Levola Hengelo BV v Smilde Foods BV C-310/17 ECLI:EU:C:2018:899). Indeed in Cofemel [2019] EUECJ C-683/17 the CJEU recently went further and ruled out aesthetic effect/visual appeal being a requirement of a ‘work’ as this is too subjective to ‘permit a subject matter to be characterised as existing and identifiable with sufficient precision and objectivity’ (para 53). Indeed the court concluded: ‘Article 2(a) of Directive 2001/29 must be interpreted as precluding national legislation from conferring protection, under copyright, to designs such as the clothing designs at issue in the main proceedings, on the ground that, over and above their practical purpose, they generate a specific, aesthetically significant visual effect’ (para 56). 5 How the law classifies art remains very much an on-going debate (despite the move by the CJEU towards an all-encompassing concept of a copyright work and indeed whether aesthetics/artistic quality has any relevance at all – see above n 4). In particular, much has been said about the law’s classification of art and the way it serves: to exclude certain works because they do not fall within established categories; to protect too much

Categories of ‘Art’ and the Subsistence of Copyright 231 In seeking to classify works within specific categories of ‘artistic work’, it is clear from section 4 of the CDPA that, except for ‘works of artistic craftsmanship’, ‘artistic quality’ should not be a relevant factor. Nevertheless, a review of the cases suggests that when a court cannot easily fit a work into a specific category, issues such as the intention of the creator and his or her status (as an ‘artist’) are likely to be considered – despite both the express language of section 4 and the often-expressed reluctance of the courts to determine questions of aesthetics and other subjective matters.6 ‘Works of artistic craftsmanship’ remain an ill-defined category of work. Various tests have been used,7 including considerations of the function of the work, the intention of the designer, whether the work appeals to the aesthetic senses, whether the designer is an artist-craftsman, whether the work is artistic or creative enough, as well as attempts at giving the term ‘works of artistic craftsmanship’ its ‘ordinary and natural meaning’. Given the increasing importance of ‘craft’ in artistic circles and the difficulties surrounding the protection of works as diverse as fashion designs, film sets and patchwork bedspreads,8 it is submitted that a clear and consistent approach by the courts is necessary in this area.9 Moving on from the category of work, the issue of ‘fixation’ remains a difficult one. It has been argued that there is no requirement of fixation for artistic works, and whether a work is intended to have a long or short existence should be irrelevant.10 However, the cases on this issue appear to conflict.11 It is submitted that some element of fixation is surely necessary to define the scope of what is protected by copyright.12 In practice, when considering whether the work in question is an ‘artistic work’, the issue of fixation (for example, the ‘re-created’ works discussed above ch 6, s 6.1); or to provide only limited copyright protection (for example, the ‘idea’ of a work can still be copied). See, eg, A Barron, ‘Copyright Law and the Claims of Art’ (2002) 4 Intellectual Property Quarterly 368–401; A Barron, ‘The Legal Properties of Film’ (2004) 67(2) Modern Law Review 177–208; D Booton, ‘Framing Pictures: Defining Art in UK Copyright Law’ (2003) 1 Intellectual Property Quarterly 38–68; TSL Chang, ‘Does Copyright Law Confer a Monopoly over Unpreserved Cows?’ (2006) 28(5) European Intellectual Property Review 276–81; and J Pila, ‘An Intentional View of the Copyright Work’ (2008) 71(4) Modern Law Review 535–58. See also McClean (above n 3) and Griffiths (above n 3). 6 See, eg, Metix (UK) v GH Maughan (Plastics) [1997] FSR 718, in which sculpture was defined as ‘a threedimensional work made by an artist’s hand’, as well as the consideration of ‘sculpture’ by Mann J in Lucasfilm Limited v Andrew Ainsworth [2008] EWHC 1878 (Ch) (31 July 2008), para 118, where an artist’s purpose in creating the work was considered relevant to assessing what is a ‘sculpture’. For further discussion of the courts’ consideration of questions of aesthetics and other subjective matters, see above ch 3, s 3.2. 7 As discussed above ch 3, s 3.2.1. 8 See respectively Radley Gowns Ltd v Costas Spyrou [1975] FSR 455; Shelley Films Limited v Rex Features Limited [1994] EMLR 134; and Vermaat v Boncrest Ltd, The Times (23 June 2000), [2001] FSR 5, [2000] EIPR N-151, (July 2000) 3 Intellectual Property Lawyer 10. 9 Of course, the whole area illustrates the various judicial approaches that can be taken to defining art and craft. See P Kearns, The Legal Concept of Art (Oxford, Hart Publishing, 1998) ch 3. 10 K Garnett et al, Copinger and Skone James on Copyright, 14th edn (London, Sweet & Maxwell, 1999) [hereafter ‘Copinger (1999)’] 3–40. 11 In Metix (above n 6), a sculpture made from ice was considered by Laddie J to be no less a sculpture because it will inevitably melt; but contrast Davis (J&S) (Holdings) Ltd v Wright Health Group Ltd [1988] RPC 403 – see discussion in ch 3, s 3.2.4. 12 See, eg, Tate v Fullbrook [1908] 1 KB 821, discussed above ch 3, s 3.2.4. The CJEU has also stated: ‘… 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’ (Levola Hengelo BV v Smilde Foods BV C-310/17 ECLI:EU:C:2018:899 (para 40)).

232 Conclusion will be addressed, as the very categories of ‘artistic works’ (graphic works, photographs, sculptures and collages) would seem to require such a determination.13 In the UK originality has moved from ‘sweat of the brow’ to the author’s own intellectual creation although how much of a change this means in practice has been debated. But it still remains the case that, as Lord Hoffmann famously remarked, ‘copyright law protects foxes better than hedgehogs’14 – so whilst a simple artistic work may be protected by copyright, the protection afforded to the artist to prevent copying may well be limited.15 Works must also have an ‘author’ for copyright purposes: this is embedded in both the structure of the CDPA16 and the very notion of ‘originality’. So far the EU has not addressed this area. This means that works of communal origin where there is ‘collective’ authorship, as often is the case for traditional cultural expressions, may fail to be protected by copyright.17 It should be noted that whether or not a work is protected by copyright is not just about whether the author has economic rights (eg, to control reproduction and distribution) that can be exercised. If the work is not protected by copyright, then moral rights and ARR will not apply either. Assuming, however, that the work is protected by copyright, what then will copyright protect?

9.2. Appropriating the Public Domain: Idea Versus Expression The perceived need to prevent the unjust appropriation of an author’s skill and labour (recast as the author’s ‘intellectual creation’ via CJEU case law) remains it is argued the chief judicial justification for copyright in the UK – a policy historically pursued by the courts with ‘almost evangelical fervour’.18 To state matters even more simply, ‘what is 13 See, eg, Creation Records (above n 4), where the collocation of random, unfixed objects was not a collage, even when done with artistic intent. 14 Designers Guild v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416, 2423E. The quotation is from Sir Isaiah Berlin and, in turn, the Greek poet Archilocus: ‘The fox knows many things, the hedgehog one big one.’ See Berlin’s 1953 essay that discusses the tension between monist and pluralist versions of the world and history. See also a review of the first edition of this book, G Haggart (2002) European Intellectual Property Review 384; and the reference to this background in Hi-Tech Autoparts Ltd v Towergate Two Ltd [2002] FSR 15 & 16. 15 See Kenrick v Lawrence (1890) 25 QBD 93, discussed above ch 3, s 3.2.1. 16 S 9(1) CDPA reads: ‘“Author” in relation to a work means the person who creates it.’ This even appears for computer-generated works (s 9(3); see above ch 5). The author remains central to copyright law – whatever Roland Barthes might have said in ‘The Death of the Author’ (1967), her death remains greatly exaggerated. See JC Ginsburg, ‘The Concept of Authorship in Comparative Copyright Law’, Columbia Law School Pub Law Research Paper 03-51 (10 January 2003), available at http://ssrn.com/abstract= 368481. For a discussion of what the death of the author (in the poststructuralist sense) might actually mean for copyright law, see L Bently, ‘Copyright and the Death of the Author in Literature and Law’ (1994) 57(6) Modern Law Review 986. See also the critical view of Lior Zemer, who argues that ‘[a]uthorship is a joint enterprise between public and authors’ and that the public is a key participant in ‘the creative act of authorship’, and so ‘authorial rights granted to individual creators should be granted to the public as well’; he further argues that ‘authors and copyrighted works are socially constructed and historically contingent’: L Zemer, The Idea of Authorship in Copyright (Aldershot, Ashgate, 2007) ch 8. 17 See generally ch 3; Vermaat v Boncrest (above n 8); and ch 6, s 6.9. 18 Autospin (Oil Seals) Ltd v Beehive Spinning (A Firm) [1995] RPC 683 (per Laddie J). As noted above ch 3, s 3.2.8, the majority of the House of Lords acknowledged in Designers Guild (above n 14), the current leading artistic copyright case, that the function of copyright is to protect the skill and labour of the author.

Appropriating the Public Domain: Idea Versus Expression 233 worth copying … is worth protecting.’19 Furthermore, as copyright is a right of property, the infringement of that right is actionable without proof of damage.20 As noted in chapter two, this ‘misappropriation’ justification for copyright protection can easily be taken to extremes absent any checks and balances in terms of what is protected. So as discussed earlier in this book, both the courts and the legislature have sought to limit the application of this doctrine on public policy grounds through various mechanisms, including: a. b. c.

restricting copyright protection to certain classes of works and limiting its duration; giving the functional aspects of works limited or no protection in most cases; specifying that copyright is only infringed if the whole or a substantial part of the work is copied;21 d. providing a significant list of activities that may be done without infringing copyright, chief of which are the ‘fair dealing’ provisions contained in chapter III of the CDPA and in particular ‘caricature, parody or pastiche’ as well as ‘quotation’;22 e. applying the idea/expression dichotomy to cases of similar but not identical works, even though the principle has no statutory basis in UK law;23 and f. using judicial discretion in applying (a)–(e) above, including a very limited public interest defence.24 In looking at the cases, one sees the courts being reluctant to protect the ‘mere style or technique’ of a work, such as pointillism,25 either through copyright or the law of passing off.26 However, it is clear that the appropriation of an entire work or of any elements that embody the author’s own intellectual creation is likely to amount to copyright infringement absent any permitted exception, such as a fair dealing defence. Indeed, because UK law does not have a general ‘fair use’ defence to copyright infringement, in difficult cases the courts have to rely on the above exceptions. Whilst notions of ‘fairness’ and judicial common sense can do much to eliminate the harsher

19 University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 (per Peterson J). CJEU cases such as Infopaq do not necessarily contradict this approach. 20 Copinger (1999) (above n 10) 22–42. 21 S 16(3) CDPA. See also the developments in EU law on the reproduction right (above ch 6, s 6.6). 22 See in particular ss 29, 30 and 30A. See in particular E Hudson ‘The pastiche exception in copyright law: a case of mashed-up drafting?’ (2017) 4 Intellectual Property Quarterly 346–368 on the potentially broad scope of this exception. Lionel Bently has also emphasised the broad scope of the quotation exception and its potential application to artistic works and films (L Bently, ‘Copyright and Quotation in Film and TV’ CREATe Working Paper 2020/8 (UK Copyright and Creative Economy Centre, Glasgow www.create.ac.uk)). 23 See generally above ch 3, ss 3.2.8 and 3.2.9: conceptual art works are difficult to protect on this basis. 24 For a public interest defence, see Ashdown v Telegraph Group [2002] RPC 5; and C J Angelopoulos, ‘Freedom of Expression and Copyright: The Double Balancing Act’ (2008) 3 Intellectual Property Quarterly 328–53. However, as noted in ch 8, section 8.6 current CJEU jurisprudence means such a defence is now of very limited scope, if indeed it can still apply at all – see T Snijders and S van Deursen, ‘The Road Not Taken – the CJEU Sheds Light on the Role of Fundamental Rights in the European Copyright Framework – a Case Note on the Pelham, Spiegel Online and Funke Medien Decisions.’ (2019) 50 International Review of Intellectual Property and Competition Law1176–1190. https://doi.org/10.1007/s40319-019-00883-0. 25 Norowzian v Arks [2000] FSR 363 (CA) (per Nourse LJ). See also Morritt LJ in Designers Guild v Russell Williams [2000] FSR 121 (CA). Presumably, examples of mere style or technique would generally fall within the second category of unprotected ‘ideas’ noted by Lord Hoffmann in Designers Guild (above n 14) 2423D as being ‘not original or so commonplace as not to form a substantial part of the work’. 26 There being no general tort of unfair competition in English law: see above ch 8.

234 Conclusion effects of the lack of such a general defence, it is submitted that the advent of the Internet makes the need for the development of a more general ‘fair use’ defence pressing.27

9.3. Art, Technology and the Future When this book was first published, the full impact of the continued growth of the Internet through broadband, mobile devices and social media had not yet been felt, and measures to create safe harbours for those who might innocently infringe copyright, such as the Information Society Directive28 and the Electronic Commerce Directive,29 had either only recently been implemented or this had not yet happened at all. Looking back, the author’s earlier fears about the end of the public domain, about copyright being locked up through technical measures and about fair dealing being restricted by contract have been, if not proved unfounded, at the very least challenged by the growth of Web 2.0 and movements towards open access for cultural materials (of which Wikipedia is a prime example). The current cultural trend towards user-generated content, the sharing of works through social media sites and the questioning of copyright by generations who have now grown up with the Internet seems to the author to challenge many of the assumptions underlying copyright as an economic right and especially the economic incentive justification for copyright. Certainly, as far as artistic works are concerned, it can be argued there needs to be more emphasis on moral rights and the role played by the rights of attribution and integrity, whether enshrined in copyright legislation or supplemented through contractual obligations or requirements (as in the Creative Commons licences, which require attribution).30 More fundamentally, however, is the question of whether copyright in its current form, underpinned by justifications based on economic incentives arguments to creativity and innovation, needs a radical rewriting in light of user attitudes to copying, downloading, remixing and mash-ups, appropriation, and user-generated content. This is beyond the scope of this work, but current and future trends in how artistic works are created, copied and manipulated in digital form should be used to inform the on-going copyright debate, with the views of individual creators and users (increasingly the same persons)

27 See, eg, the discussion on Internet visual search engines above ch 6. The need to revisit fair dealing in light of technological change was recognised in the Hargreaves Review: I Hargreaves, Digital Opportunity: A Review of Intellectual Property and Growth (UK Intellectual Property Office, May 2011). Limited additional exceptions were added in relation to technology in 2014 (eg s 29A CDPA (text and data analysis)). Once the Brexit transition period ends the UK will be free to introduce exceptions to copyright law that fall outside of the closed list of permitted exceptions in the Information Society Directive (Directive 2001/29/EC). EU Member States in the meantime will need to implement the Copyright in the Digital Single Market (DSM) Directive (Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC) whilst remaining bound to respect the closed list of exceptions in the Information Society Directive (as supplemented in a limited way by the Copyright in the DSM Directive). 28 Directive 2001/29/EC. 29 Directive 2000/31/EC. 30 These arguments are discussed above ch 2, s 2.2.4, esp n 71. See also Tang (n 3 above) and MT Sundara Rajan, Moral Rights: Principles, Practice and New Technology (New York, Oxford University Press, 2011).

Art, Technology and the Future 235 taken into account and not just those of rights owners, platforms and collecting societies/copyright management organisations. In any event platforms such as Google are likely to continue to push copyright law to its limits and have become increasingly important in copyright policy.31 Finally, there is the very notion of authorship linked to a human creator, explored in chapter 5. How copyright law will develop in light of artificial intelligence will be a challenge for copyright policy-makers and a priority during this decade.32

Suggested Further Reading A Adler, ‘Why Art Does Not Need Copyright’ (2018) 86 George Washington Law Review 313–375 L Bently, ‘Copyright and Quotation in Film and TV’ CREATe Working Paper 2020/8 (UK Copyright and Creative Economy Centre, Glasgow www.create.ac.uk) J Griffiths, ‘Copyright’s Imperfect Republic and the Artistic Commonwealth’, Queen Mary School of Law Legal Studies Research Paper 56/2010 (3 June 2010), available at Griffiths, Jonathan, Copyright’s Imperfect Republic and the Artistic Commonwealth (June 3, 2010). Available at SSRN: https://ssrn.com/abstract=1620125 E Hudson ‘The pastiche exception in copyright law: a case of mashed-up drafting?’ (2017) 4 Intellectual Property Quarterly 346–368 D McClean, (2010) ‘Piracy and authorship in contemporary art and the artistic commonwealth’ in L Bently, J Davis, and J Ginsburg (eds), Copyright and Piracy: An Interdisciplinary Critique (Cambridge Intellectual Property and Information Law, Cambridge, Cambridge University Press) 311–339. doi:10.1017/CBO9780511761577.017 D McClean (ed), Artist, Authorship & Legacy: A Reader (London, Ridinghouse, 2018) X Tang, The Artist as Brand: Toward a Trademark Conception of Moral Rights, (2012) 122 Yale Law Journal. Available at: https://digitalcommons.law.yale.edu/ylj/vol122/iss1/4 UK Intellectual Property Office (IPO), Open Consultation on Artificial intelligence including a call for views: copyright and related rights (www.gov.uk/government/consultations/ artificial-intelligence-and-intellectual-property-call-for-views/artificial-intelligence-call-forviews-copyright-and-related-rights) (7 September 2020)

31 The EU’s Copyright in the Digital Single Market (DSM) Directive and its implementation across the EU (but not according to the UK Government in the UK – see ch 5) remain a continuing source of controversy – see, eg, K Wilsher, ‘France accuses Google of flouting EU copyright law meant to help news publishers’ Los Angeles Times 17 October 2020 (www.latimes.com/business/story/2019-10-17/france-accuses-google-ignoring-copyright-law (accessed 6 August 2020)) – the author comments: ‘Prior to its adoption in March [2019], Google and other key internet players lobbied heavily against the EU directive. The most controversial articles in the final directive are article 15, which forces search engines and aggregated news platforms to pay for the snippets they use from other publications, and article 17, which makes internet giants including Google and YouTube responsible for material they publish without copyright permission and slaps penalties on them if they fail to block content that infringes copyright.’ 32 For example, on 7 September 2020 the UK IPO launched an Open Consultation on Artificial intelligence including a call for views: copyright and related rights (www.gov.uk/government/consultations/ artificial-intelligence-and-intellectual-property-call-for-views/artificial-intelligence-call-for-views-copyright-and-related-rights). The questions asked include: (a) should content generated by AI be eligible for protection by copyright or related rights?; (b) if so, what form should this protection take, who should benefit from it, and how long should it last?; and (c) do other issues need to be considered in relation to content produced by AI systems?

APPENDIX: PRECEDENTS AND PRECEDENT CHECKLISTS 1 Introduction2 This appendix contains a precedent assignment of copyright (along with other intellectual property rights) and a precedent copyright licence under the law of England and Wales, together with precedent checklists. The precedents have been chosen as the two key copyright-related transactions, and they have been kept simple for ease of use. Needless to say, they come with the health warning that they are simply examples, by way of general guidance, and are not drafted for specific circumstances where legal advice should be taken before relying on them. They also do not take account of tax issues. In particular, copyright licences are often much longer depending on their intended use, with a full set of legal boilerplate clauses, termination rights, tax provisions, audit rights as regards royalty payments and so on. Each precedent has been drafted in plain English where possible, with legal terms avoided as much as possible. In particular, copyright assignments are often drafted in a style reminiscent of transfers of property (whether land (real) or personal property), with phrases such as ‘with full title guarantee’ added in order to imply various title warranties originally under the Law of Property Act 1925 (by reference to the phrase ‘as beneficial owner’) and now dealt with in the Law of Property (Miscellaneous Provisions) Act 1994 (by reference, eg, to the phrase ‘with full title guarantee’). Whilst some copyright lawyers may disagree, the author believes that there is no need to precisely mirror the language of property transfers in copyright transactions, as what is key is what the Copyright, Designs and Patents Act (CDPA) 1988 says.3 The CDPA simply states that copyright ‘is transmissible by assignment … as personal or moveable property’ (section 90(1)); that it may be partial (ie, limited to part of the copyright term – eg, 10 years rather than 70 years after death – or only in relation to certain rights) (section 90(2)); and that a copyright assignment ‘is not effective unless it is in writing signed by or on behalf of the assignor’ (section 90(3)). There are even fewer ‘formalities’ for licences. These need not be in writing, although it is highly desirable

1 For guidance on copyright generally the website copyrightuser.org is highly recommended – see, eg, James Griffin’s article on licensing and exploiting copyright – www.copyrightuser.org/understand/rightspermissions/licensing-exploiting/ (accessed 25 August 2020). 2 The author is grateful to Lucy Morris, then a trainee solicitor at Blake Lapthorn, for her assistance with this appendix when previously published. 3 For judicial support for this view, see Crosstown Music Company 1, LLC v Rive Droite Music Ltd & Others [2010] EWCA Civ 1222 (2 November 2010) 35.

Appendix 237 that an exclusive licence be in writing signed by or on behalf of the copyright owner. (See, eg, sections 92 and 101 of the CDPA.) Note that the CDPA defines an exclusive licence as: … a licence in writing signed by or on behalf of the copyright owner authorising the licensee to the exclusion of all other persons, including the person granting the licence, to exercise a right which would otherwise be exercisable exclusively by the copyright owner.4

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

Licence Licences are generally more complex than assignments. This is because they are often part of a longer-term commercial relationship. They can range from short permissions (eg, to include a specified image in a book) to very detailed publishing or other media licences. Licences are very flexible in allowing the scope of the rights licensed to be treated in many different ways. The precedent included herein is a short licence document more akin to a permission than a full-blown commercial licence, but it nevertheless seeks to address key areas (although at the expense of brevity – clauses dealing with termination rights, audit rights and so on are not included). In addition, a checklist is included to illustrate the sorts of provisions often seen in detailed commercial licences.5

Assignment Precedent Checklist A checklist for an assignment (based on the precedent in this appendix) includes: • Ensure comfort obtained on who the owner is and who is to execute the assignment as assignor • Define the Work as precisely as possible 4 S 92(1) CDPA. In other words, an exclusive licensee has the right to exploit the rights exclusively licensed to the exclusion of anyone else, even the copyright owner. 5 For more information here, see S Stokes, Digital Copyright: Law and Practice, 5th edn (Oxford, Hart Publishing, 2019), from which the checklist is taken (in modified form).

238 Appendix • Set out any fee/consideration to be paid (there needs to be some consideration, even if nominal, to ensure the assignment is binding) • Define the rights to be assigned (just copyright or other intellectual property rights as well?; in which territories – worldwide?) • Are these all the rights in the Work, or are they to be limited to duration, territory or class of right? • Are rights to sue for past infringements to be included? • Consider scope of warranties as to ownership (title), non-infringement and so on • Ensure further assurance dealt with (eg, some countries may require additional formalities to ensure copyright is fully assigned and the further assurance clause can assist with this in the future) • is it necessary to require the assignor to hand over any tangible items embodying the Work (eg, preparatory drawings, sketches, etc), and if so, on what terms? • Will the assignor waive his/her moral rights? Or will he/she assert them? • Ensure there is a choice of law clause and, where considered appropriate, a dispute resolution clause

Sample Intellectual Property Assignment and Waiver of Moral Rights Parties (1) The person who owns the Intellectual Property Rights in the Work and who is assigning these rights is the Assignor. His/her details are: [give name and address] (2) The person who is receiving from the Assignor the assignment of the rights is the Assignee. His/her details are: [give name and address]

[Background] [Give any relevant background to the assignment]

Definitions Fee means [give price to be paid]6 Intellectual Property Rights means all and any intellectual property rights of whatever nature worldwide, whether registered or unregistered, including without limitation

6 If the consideration is nominal, then this can be defined as ‘Fee means the sum of one pound (£1) (receipt of which the Assignor acknowledges).’

Appendix 239 copyright, database right, rights in designs, patents and other rights in inventions, trade marks, rights in goodwill, and rights in confidential information [and also including the right to sue for past infringements of these rights].7 Work means [this must be fully described]

Fee This Assignment is entered into in consideration of the payment of the Fee by the Assignee to the Assignor.

Assignment The Assignor assigns to the Assignee all the Assignor’s entire right title and interest in the Intellectual Property Rights in or relating to the Work for the full period of such rights, together with any and all renewals, revivals, reversions and extensions of such rights throughout the world now or in the future.

Further Assurance The Assignor undertakes at the reasonable cost and expense of the Assignee to do any and all acts and execute any and all documents in such manner as may be reasonably required by the Assignee in order to protect, perfect or enforce any of the rights assigned to the Assignee pursuant to this Assignment. [In addition, the Assignor undertakes to promptly provide to the Assignee on request any materials in any format embodying the Work in the Assignor’s possession, custody or control.]8

Warranties9 The Assignor warrants that: 1. 2. 3. 4.

the Intellectual Property Rights in or relating to the Work are solely owned by it; the Work is original to the Assignor and is not copied from other people’s work; it has not granted anyone else any rights or interest in or over the Work; and the Work does not contain anything defamatory, obscene or otherwise unlawful nor does it infringe the rights of any other person.

7 This needs to be added in order for the right to sue and claim damages for infringements occurring prior to the date of the assignment to be transferred to the Assignee. 8 This paragraph seeks to ensure any materials (eg, drawings, manuscripts, etc) that embody the Work are handed over. In practice, this paragraph is likely to be made more specific in order to better identify any such materials. 9 These are very basic warranties – an Assignee would want to consider whether they give it sufficient comfort.

240 Appendix

Waiver of Moral Rights10 The Assignor irrevocably and unconditionally waives to the fullest extent permitted by law and in favour of the Assignee, its successors, assigns and licensees any moral rights to which he/she may be entitled under any laws now existing or in future enacted in any part of the world (including without limitation rights pursuant to the Copyright, Designs and Patents Act 1988, sections 77, 80, 84 and 85).

Choice of Law This assignment shall be governed by and construed in accordance with English law. [The parties submit to the [non-]exclusive jurisdiction of the English courts.]11

Agreed: Signature of the Assignor: Date: Signature of the Assignee: Date:

Licence Checklist This checklist is drafted from the perspective of a licensor (the person granting the licence), but it will also be helpful background for a licensee (the person being granted the licence). On the basis that you (the licensor) have acquired the necessary rights (ie, you either own them or have a licence with a right to sub-license others), what must you bear in mind when you are acting as a licensor? For example, what if you own the copyright in an image or other content and you want to license others to use the content? From a licensor’s perspective, full-form licences will usually address at least the following.

Ensure the Licence is Binding How will the licence be agreed to and executed to ensure it is legally binding (eg, in writing and signed or online)?

10 If,

instead, an assertion of moral rights is to be made, see the language in the licence precedent. clarifying which courts are to deal with disputes and on what basis.

11 Consider

Appendix 241

Define What You are Licensing You can only license what you are entitled to and should only license what you want to – an obvious point, but one that is often forgotten.

Delivery Do you need to specify how/when delivery of any licensed material will take place (eg, by Internet download)?

Licence Scope (a) A licensor will generally be as restrictive as possible in drafting the grant of rights in order to: (i) protect his/her copyright and other IP from misuse outside the scope of the licensed use; (ii) extract additional payment from the licensee (eg, if new/additional uses are required) Particular care must be taken in defining what electronic/digital rights are granted. Do you want to give the licensee rights in respect of now unknown technologies, or do you want to limit the rights granted to existing exploitation methods? If so, avoid overly broad grants and be as specific as possible. (b) A reservation of rights clause is quite typical – ie, the licensor retains ownership of everything licensed, and no rights are granted except those expressly granted by the licence. (c) A clause is also often added to ensure that any use outside the scope of the licence is a clear breach of contract to enable termination of the licence and a contractual damages claim, in addition to any copyright/IP infringement claim. (d) If the licensee is allowed to copy or redistribute the content, ensure he/she includes your copyright and other proprietary rights notices on any copies or relevant sites.

Responsibilities of the User/Licensee In addition to any restrictions within the licence, are there any other obligations or responsibilities you need to put on the licensee? Eg, in the case of a digital licence, must the licensee procure the appropriate hardware, software and Internet connection at his/ her expense and liability in order to make use of the content licensed?

Payment a) How is payment of the licence fees structured? Is it a one-off licence fee (for perpetual use until the agreement is terminated) or an annual licence fee? Or will there be a royalty basis? Can you increase the fees in subsequent years if relevant?

242 Appendix b) Payment terms will be specified and VAT/tax aspects dealt with (eg, withholding taxes if there is a foreign element).

Other Services/Products Do you wish to offer any additional products or services, and if so, how will they be charged for and/or licensed?

Technical Measures/Audit/Inspection/Record-Keeping a) Where relevant (eg, in a digital context), you should expressly reserve the right to employ technical measures, including by remote access/control, to protect and/or disable your content. This is to help you to comply with the Computer Misuse Act 1990. b) Consider audit rights to check any misuse and where appropriate to check royalty payments. c) Consider obliging the licensee to keep full records of all copies and licensing of the content: this is essential if you are being paid on a royalty basis.

Warranties What comfort do you wish to offer users as to: a) Quality of material supplied; b) Non-infringement of third-party IP and that the material is not obscene, defamatory, unlawful, illegal, etc; c) The fact that your IP is owned by you; and d) The fact that all moral rights have been waived?

Assertion of Moral Rights If you have moral rights in the Work you are licensing, do you wish to assert your moral right of attribution?

Limitations of Liability/Exclusions Licensors increasingly try to exclude or limit their liability in licences (although this is not universally the case), and it may well be appropriate for a licensee to challenge this practice. Loss of profit, revenue and goodwill are often sought to be excluded, as are indirect and consequential damages. A monetary cap on liability may be attempted, to be set at the value of the licence fees. Terms that may be implied by law (eg, as to quality/fitness for purpose of any material supplied) are also often excluded in favour of the express terms of the contract. In any event, regard must be had to general English contract law principles regarding the

Appendix 243 lawfulness of excluding/limiting liability in light of the Unfair Contract Terms Act 1977, the Consumer Rights Act 2015 and other relevant consumer protection legislation.

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

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

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

244 Appendix

Sample Short-Form Licence12 Parties Licensor (person granting the rights): [give details] Licensee (person receiving the grant of rights): [give details]

Background [give the reasons for the licence]

Definitions Copyright: the Licensor’s copyright in the Licensed Material Fee: [define] Licensed Material: [give details of what is being licensed] Licence Period: [define] Purpose: [give details of the purpose of the licence] Territory: [worldwide or limited to certain countries]

Grant of Rights Subject to the payment of the Fee and the Licensee’s compliance with the terms of this Licence, the Licensee is granted the [exclusive/non-exclusive] right by the Licensor under the Copyright to [use]13 the Licensed Material for the Purpose in the Territory for the Licence Period.

Reservation of Rights The Licensee agrees not to use the Licensed Material other than as expressly permitted by this Licence. The Licensor shall retain ownership of all rights in the Licensed Material, and all rights not expressly granted by this Licence are reserved to the Licensor.

12 This is a short licence of just copyright intended for a simple grant of rights for a limited period and purpose. It is drafted in favour of the licensor. 13 Use denotes broad rights depending on the purpose and context. Consider limiting or clarifying this to more specific rights – eg, ‘to reproduce’, ‘to communicate to the public’, etc – if these can be readily defined, and it is clear what these rights should be.

Appendix 245

Assertion of Moral Rights The Licensor’s moral right to be identified as the author or director of the Licensed Material under section 77 of the Copyright, Designs and Patents Act 1988 is asserted.14 In the event this licence authorises the making of copies of the Licensed Material, the Licensor also asserts his/her right to be identified in the event of the public exhibition of a copy of the Licensed Material made pursuant to this licence.15

Credits/Copyright Notice The Licensee will credit the Licensor as follows: [give credit/copyright notice]

Warranties16 The Licensor warrants that he/she owns the copyright in the Licensed Material, that he/she is entitled to grant the rights licensed in this Licence and that as far as he/she is aware, the Licensee’s use of the Licensed Material as contemplated by this Licence will not infringe the copyright or other intellectual property rights or any other rights of any other person.

Choice of Law This Licence shall be governed by and construed in accordance with English law. [The parties submit to the [non-]exclusive jurisdiction of the English courts.]17

Agreed: Signature:

Signature:

Date:

Date:

(for and on behalf of Licensor)

(for and on behalf of Licensee)

14 This assumes the Licensor has moral rights and wishes to assert them. If moral rights are to be waived, see the assignment precedent for a suggested moral rights waiver clause. 15 Depending on the nature of the licence, the Licensor should consider adding to or modifying this language to deal with, eg, printed publications using the Licensed Material to ensure where reasonably possible those having access to the Licensed Materials are put on notice of the assertion of the right. 16 These are limited warranties in favour of the Licensor. 17 Consider clarifying which courts are to deal with disputes and on what basis.

246

INDEX aboriginal art: traditional cultural expressions, 189–94 see also indigenous art ACS, see Artists’ Collecting Society advertising, 57, 170–72 aesthetic appeal, 36, 40, 49, 59 aesthetic quality, 65 AI (artificial intelligence), see computer-generated works alterations, 134, 160–61, 176 derogatory treatment, 79, 86, 149 Pasterfield v Denham and Another, 81–82 animation, 179–80 anonymity, 191 graffiti and street art, 166 antiques: photographs of public domain works of art, 136–38 appearance: computer programs, 102 design right, 65–66 functionality and, 60, 64 industrial designs, 58 digital works, 99 works of artistic craftsmanship, 36–40 applied art, 10, 17, 24, 59–60 EU law, 93–94, 210–11 appropriation, 160–61 Cariou v Prince, 161–62 limits, 174–79 parody, 174–79 public domain, 232–34 arbitration, 243 domain names, 224 architecture, 27, 40–41 freedom of panorama, 188–89 traditional cultural expressions, 194 see also buildings ARR, see resale right art as a general concept, 2–3, 230–32 art books, 203–4 art loans, 198 borrowers, 199–200 lenders, 199–200

moral rights, 199–200 publicity/use of lenders’ name, 198 reputation, 198 artificial intelligence, see computer-generated works artistic character: originality of an artistic character, 42–43 artistic communities, 15–16, 70 online artistic communities, 124 artistic copyright generally, 3–7 artistic craftsmanship, 17, 24, 36–40, 231 law reform, 63, 64, 65–66 US law, 60 artistic creativity, 10, 88 artistic merit, 14, 25, 30, 35–36, 85–86 artistic nature, 53 artistic purposes, 36, 159 artistic quality, 24, 27, 35–36, 136, 231 artistic styles, 5–6, 173, 220–21 artist’s resale right, see resale right Artists’ Collecting Society (ACS), 197 Arts and Crafts Movement, 36–37 assemblages, 159–60 assignment, 204–5, 237, 238–40 assignment precedent checklist, 237–38 attribution, 234–35, 242 Creative Commons, 206–7, 234 employees’ rights, 215 false attribution of ownership, 76–78, 79, 219–20 digital environment, 117 moral rights on death, 213 parody, 176 see also passing off performance works, 84 right to, 74–75, 76–78, 82–83 US law, 85 auction houses/auctioneers, 57, 114–15, 200, 202–3 resale right, 207–12 audio-visual performances, 84 audit rights: licences, 237, 242 augmented reality, 107–8 ownership, 108

248 Index protection and ownership, 108 rights clearance, 108 Australia: artist’s resale right, 96 blockchain, 120 computer games, 180 copyright management, 120 fabrics, 39 kinetic art, 44–45 traditional cultural expressions, 189–93 Austria: exhibited works, 68 industrial designs, 59–60 photographs, 127 resale right, 90 authors’ rights, 3–4, 15, 72, 75–76 authorship, 6–7, 15–16, 43, 72–73, 101, 104, 157, 166, 235 augmented reality, 108 computer-generated works (AI), 100–102 false attribution of authorship, 76–77, 79, 176, 219–20 see also passing off US law, 85 virtual reality, 108 bad faith, 177, 223 domain name registration, 224 Berne Convention for the Protection of Literary and Artistic Works (1886), 3, 22, 24, 45–46, 59, 131 derogatory treatment, 82, 83 dramatic works, 173 moral rights, 74–76, 79 US law, 85 resale right, 89, 93, 96 right to display artistic works, 69 bio-art, 168, 169 blasphemous material, 26, 76 blockchain, 118–19 art authentication, 115 artist’s resale right, 120 copyright management, 119–20 interactive art works, 119 boilerplate clauses, 236, 243 brand, see trade marks breach of confidence, 218–19 breach of contract: licences, 241 National Portrait Gallery v Coetzee, 154 Brexit: artistic works, 185, 187–88 artist’s resale right, 207–8 database right, 67–68 intermediary liability, 122

orphan works, 183–184 publication right, 66–67 registered design protection, 64–66 Bridgeman Case (1998), 130–31, 135–39 broadcasting spectrum, 19 broadcasts, 22, 27, 58, 123 collecting societies, 196–97 on-demand transmission, 48, 113, 122 orphan works, 183 browsing, 109–10, 117–18, 202 caching, 110 buildings, 40–41, 57 freedom of panorama, 188–89 see also architecture buyers: resale right, 94, 207, 211, 212 caching, 110–11, 151–52 Canada: copyright management, 120 exhibition right, 69 caricature, see parody Cariou v Prince, 161–62 categories of art/artistic works, 1–2, 27–41, 230–32 celebrities, 222–23 right to privacy, 226–27 ceramics, 210 certificates of registration, 130–31, 132–33 children: expectation of privacy, 226–27 choice of law, 240 civil law, 19–20 droit d’auteur, 3–4, 15 classes of protected work, 27–29, 35–36 architecture, 40–41 artistic craftsmanship, 36–40 collages, 34–35 film, 41 graphic works, 29–31 photographs, 32–33 ready-mades, 33–34 sculpture, 33–34 typefaces, 40–41 collaboration: online collaboration, 156–58 collages, 34–35 collecting societies, see collective management organisations (CMOs) collective management organisations (CMOs), 196–97 colour, 65, 81–82, 104–5 colour charts, 30 commercial licences, 237 commissioned work, 47, 166, 204–5

Index 249 common law, 4, 21 breach of confidence, 218–19 passing off, 219–22 right of publicity, 225 commonplace, 64 communication to the public right, 112–13 collective management organisations, 196–97 freedom of panorama, 188–89 Community designs, 63, 64–65 compact discs (CDs): copying, 109, 113 compensation: orphan works, 183 compilations, 35, 135 completion of works: right to insist on, 75 composers, 80 resale right, 88–89, 96 compositions, 33–36, 80, 162 computer games, 179–80 computer-generated works (AI), 100–2 artificial intelligence (AI) defined, 102–3 artist, computers as, 104 collaborators, computers as, 103–4 generative adversarial networks, 103–4 tool, computers as, 103 UK law, 104–5 law reform, 105–6 WIPO, 105 computer programs/software, 117–18 conceptual art, 163–64 conduits, 112, 151–52 Confetti Records v Warner Music (2003), 82 confidential information, 3, 116–17 see also privacy configuration, 64 conflict of laws, 92, 101, 155 confusion: trade mark law, 223 consent, 48, 63, 69, 84, 127 art loans, 199, 200 fair dealing, 203 gallery websites and online viewing rooms, 201–2 hyperlinks, 111 image rights, 225, 226–27 passing off, 220 search engines, 153 implied licence, 150–51, 152 trade mark infringement, 223–24 contemporary art, see modern art contract, see breach of contract copies: digitised copies, 117–18 exact photographic copies, 131–32, 134, 136

slavish copying, 132, 134, 135, 169 transient/temporary, 47, 109–10, 152 copying, 109–10 act of copying, 109 caching, 110 framing, 111 liabilities, 111–12 linking, 111 literal, 5, 18, 50 slavish, 132, 134, 135, 169 substantial, 52–53 copyleft, 19, 205 Copyright, Designs and Patents Act (1988), 22, 26, 236–37 authorship, 43, 46 categories of art, 27–41, 230–32 commissioned works, 204 design right, 64 digital works, 99 duration of protection, 46 employees’ rights, 47 exceptions/defences, 54–58 exhibition right, 69 idea/expression dichotomy, 47–54 industrial design, 59, 61–63 industrially manufactured artistic works, 37, 61–63 moral rights, 76–79, 150, 240, 245 Confetti Records v Warner Music (2003), 82 Emma Delves-Broughton v House of Harlot Limited (2012), 83 Harrison v Harrison (2010), 82–83 Morrison Leahy Music and Another v Lightbond Limited and Others (1991), 80 Pasterfield v Denham and Another (1999), 81–82 right of integrity, 83 Tidy v The Trustees of the Natural History Museum and Another (1996), 80–81 originality, 41–43 permanence of work, 44–45 publication right, 66–68 rental and lending rights, 68 Copyright Act (1911), 22 Copyright Act (1956), 22 Court of Justice of the EU, 22 digital works, 98, 123–24 see also EU law craftsmanship, 17, 36–40 Creative Commons, 205–7 creativity requirement, 25 creativity, 4, 25, 88, 104, 186–87 minimal degree of, 4, 43 see also originality

250 Index criminal liability, 48, 122–23 graffiti/street art, 26, 166 cultural expressions, traditional, 189–94 cultural heritage: intangible cultural heritage, 194–95 customary law, 189–94 cybersquatting, 224 DACS, see Design and Artists Copyright Society damages, 86, 89, 167, 181, 192 dance, 171–72 see also performance rights data protection, 123, 225–27 databases see database right database right, 67–68, 114, 148 art databases/image libraries: artwork/image library databases, 115 blockchain-based databases, 115 price/auction databases, 114–15 stolen art database, 115 data-related issues, 116 database structure issues, 117 image-related issues, 116 linking and framing, 111 National Portrait Gallery v Coetzee, 153–58 de minimis, 48–49, 83 dead artists, see deceased artists dealers, 207–8, 211–12 deceased artists, 212 moral rights, 213 resale rights, 214 deception, 219–20 decoration: surface decoration, 64, 66 defamation, 76, 83–84, 112 defences to copyright infringement, 54–58 degree of skill, 36, 42–43, 135, 137 derogations, 90 non-derogation from grant principle, 150–51 derogatory treatment, 74–75, 78, 83–84 Confetti Records v Warner Music (2003), 82 Morrison Leahy Music and Another v Lightbond Limited and Others (1991), 80 Pasterfield v Denham and Another (1999), 81–82 Tidy v The Trustees of the Natural History Museum and Another (1996), 80–81 desert theory, 11–12 Design and Artists Copyright Society (DACS), 1, 47, 89, 94, 95–96, 197, 203 blockchain, 120 design right, 64, 65–66 designers, 50–54 designs, 58–63 design right, 63–64

registered design protection: EU Intellectual Property Office, 64–65 EU law, 65–66 registered Community designs, 65 supplementary unregistered designs, 65 UK Intellectual Property Office, 64 unregistered Community designs, 65 destruction/removal of original, right to object to, 76 developments, 2 device marks, 30 see also trade marks diagrams, 27, 164 digital environment, 117–18 digital future, 234–35 digital rights management (DRM), 202 digital single market, 112, 122–23, 124, 127–28, 140–41 digital video disks (DVDs), 114 digital watermark technology, 202 digital works, 98–99 EU law, 98 UK, 98–99 see also films; videos digitisation/digital legislation, 120–24 digital single market, 123 liability: internet service providers, 122–23 intermediaries, 122–23 piracy, 123 WIPO treaties, 120–22 digitised copies, 117–18 digitised works, 99–100 dilution, 174–75 disclosure, right of, 75 display right, 69–70 see also galleries; museums dispute resolution, 243 distinctiveness, 14 distortion, see derogatory treatment distribution right, 121 blockchain, 119 domain names, 224–25 domaine public payant, 70 Donaldson v Beckett (1774), 21 downloading, 109, 144, 147, 153–55, 202, 234–35 dramatic works, 171–73 drawings, 21–22, 29–30, 80–81, 163–64, 210 DRM, see digital rights management droit de suite, see resale right droit d’auteur, 3–4, 15, 32 duration of protection, 46 DVDs (digital video disks), 114

Index 251 e-commerce, 112, 122, 151–52, 234 economic incentive, 19, 229, 234–35 economic justifications for copyright, 9 applied arts, 10–11 background, 10–11 fine arts, 10–11 economic rights, 3, 26 authorship, 43 classes of work protected, 27–41 criteria for protection, 41–43 defences, 54–58 duration of protection, 46 exceptions, 54–58 first owners, 47 idea/expression dichotomy, 47–54 industrial designs, 58–66 need for fixation/permanence, 44–45 originality, 41–43 qualifying factors, 45–46 related rights, 66 database right, 66–68 display right, 69–70 domaine public payant, 70 droit de suite, 70 exhibition right, 69–70 lending right, 68 publication right, 66–68 rental right, 68 resale right, 70 UK law, 26 editing techniques, 171–73 EEA, see European Economic Area EFF, see Electronic Frontier Foundation Electronic Frontier Foundation (EFF), 155–56 electronic image files, 199–200 electronic retrieval systems, 113, 117 elephant test, 34 embellishment, 134, 160–61 embodiment, 16, 72–73, 85, 87, 89, 164–65 Emma Delves-Broughton v House of Harlot Limited (2012), 83 employment, creation in the course of, 47, 78, 214–15 Chadwick & Ors v Lypiatt Studio Ltf & Anor, 216–17 moral rights, 215 resale rights, 215 Engraving Copyright Act (1734), 21, 206 engravers and engravings, 15, 21–22, 31, 59, 210 photographs of engravings, 128–30 equity, 192, 204–5, 215 essential function, 121, 152 estates of deceased artists, 3, 87, 89, 95–96, 197, 108–9, 207

estoppel, 150–51 etchings, 31, 219 EU Intellectual Property Office, 64–65, 183, 185 EU law: Resale Right Directive: artist’s right to a royalty, 91 collective management, 92–93 duration, 91 eligible works, 91–92 excluded sales, 91 harmonisation, 90–94 liability to pay, 92 reciprocity, 93 right to information, 93, 212 royalties, 92–93 term of protection, 93 UK implementation, 94–96, 207–8, 210–11 database right, 114 digital works, 98 Digital Single Market Copyright Directive, 112, 122–23, 124, 127–28, 140–41 Designs Directive, 58, 63, 64–66 e-commerce, 112, 122, 151–52, 234 fair dealing: visual search engines, 151–52 Information Society Directive, 110, 113, 121–22, 123–24, 152, 178, 186–87, 189, 228, 234 originality and copyright infringement, 186–87 orphan works, 182–84 rental and lending right, 68 software, 123–24 European Commission: digital single market, 123 harmonisation of copyright law, 3–4, 22 artist’s resale right, 90–94 moral rights, 78–79 European Convention on Human Rights (ECHR): privacy: freedom of expression, 226 right to respect for private and family life, 226 European Economic Area (EEA), 66–67, 94, 112, 121 European Parliament, 90 European Union: EU Intellectual Property Office, 64–65 harmonisation of copyright law, 3–4, 22 artist’s resale right, 90–94 moral rights, 78–79 see also EU law evidence, 37–39, 80–82, 132–33, 145, 210, 216 exact reproductions, 30, 130–31, 134, 138 exact photographic copies, 131, 134, 136

252 Index exceptions to copyright, 54–58 exclusions, see limitations of liability exclusive licences, 204–5, 236–37 exhibition right, 69–70 see also galleries; museums expression, idea and, 232–34 see also freedom of expression extraction, 106 fabric designs, 21, 50–54, 58, 63 fabrication, 36 facial make-up, 45, 221 fair dealing and fair use, 6, 11, 108 art books, 203–4 art loans, 199 defence, 55–57 digital environment, 121–22 EU law, 151–52 Kelly v Arriba Soft, 142–46 Perfect 10 v Google, 147–48 UK perspective, 148–51 limits, 203–4 meaning of fair dealing, 55–56 meaning of fair use, 143–146 parody, 160, 175–76, 177–78 fair share, 197 fair use, see fair dealing and fair use false attribution, 3, 76–79, 85, 117, 176, 213 false endorsement, 222, 225 fiduciary duties, 214–15, 192 film sets, 38, 231 films and filming, 41, 99, 179–80 fine arts, 1–2, 58, 86, 87–88 first owners, 47, 166 employees’ rights, 214 publication right, 66–67 first transfer of ownership, 89, 91, 95, 208, 211, 215 see also resale right fixation/permanence of work, 44–45 folklore, see traditional cultural expression framing, 111 France, 14–15, 60, 69, 188–89 moral rights, 74–75 droit de suite, 88–90 freedom of expression: European Convention on Human Rights: balancing right to privacy, 226–27 limits, 227–28 freedom of panorama, 188–89 full-size images, 142, 144, 146, 147 functional designs, 17, 64 functional purposes, 144 fundamental rights, see confidentiality: freedom of expression; privacy

furniture, 36–37, 58, 63, 66, 94, 210–11, 221 chairs, 59–60 galleries and museums: art loans, 198 moral rights, 199–200 publicity/use of lenders’ name, 198 reputation, 198 brand protection, 223 domain names, 224–25 display right, 69–70 exhibition right, 69–70 online viewing rooms, 200–2 photographs of public domain works of art, 133–38 websites, 200–2 Germany, 60, 69, 70, 74, 89, 90, 105, 127, 152 GFDL, see GNU Free Documentation License glassware, 210–11 GNU Free Documentation License (GFDL), 154 good faith, 185 goodwill, 198, 223, 224, 239, 242 Google, 147–48, 152 governing law, 243 graffiti, 164–65, 167–68 anonymity, 166 collaborative authorship, 166 copyright protection, 165–66 joint ownership, 166 moral rights, 166–67 ownership, 166 see also street art graphic user interfaces (GUIs), 99 graphic works, 29–31 Graves’ Case (1869), 128–30 grounds for refusal: trade mark applications, 223 GUIs, see graphic user interfaces handicrafts, 65–66 Hargreaves Review, 182, 184 harm, 145, 191–92 harmonisation, 22 resale right, 70, 90–94, 96 Harrison v Harrison (2010), 82–83 high-quality reproductions, 203–4 high-resolution images, 153–54 Hogarth, William (1697–1764), 21, 206 Hogarth’s Act see Engraving Copyright Act (1734) honour, see reputation hosting, 151–52 human rights, see confidentiality: freedom of expression; privacy hyperlinks, 111, 151–52, 201

Index 253 ICANN, see Internet Corporation for Assigned Names and Numbers Iceland, 127, 208 idea/expression dichotomy, 4–5, 47, 232–34 communication to the public right, 48 copyright infringement, 48–49 Designers Guild Ltd v Russell Williams (Textiles) Ltd, 50–54 restricted acts, 47–48 right to copy, 47 right to issue copies, 48 substantial similarity, 49 UK law, 50–54 identifiable authors, 191 image libraries, 115 image rights: acquisition and use for websites, 200–2 online viewing rooms, 200–2 image sharing: National Portrait Gallery v Coetzee, 153–58 images: full-size images, 142, 144, 146, 147 high-resolution images, 153–54 image libraries, 115 sharing of, 153–58 thumbnail, 142–5, 146–7, 149 use in art books, 203–4 imitation, 143, 174–79, 220 implied licences, 150–51 in-line linking, 146, 147 incentives, 10, 19, 88, 105, 234 incidental inclusion, 58 indemnities, 76, 79, 199–200 independent skill, 18, 104, 133 indexes: orphan works, 182 thumbnail images, 142–43, 144, 147 India, 60, 76, 82–83 indigenous art, 120, 189–94 industrial designs, see designs information society services, 112, 151 infringement, 186–87 defences, 54–58 see also appropriation, copying, communication to the public right injunctions, 11, 80, 123, 219, 220 innovation, 17, 19, 119, 234–35 Instagram, 202–3 installations, 159–60 instructions, 109, 112–13, 164, 176 intangible cultural heritage, 194–95 integrity, right of, 74–75 intellectual creations, 41–43, 179–80, 186–7 see also originality

Intellectual Property Office (UK), 46, 64, 105, 184, 209 intellectual property rights: breach of confidence, 218–19 domain names, 224–25 freedom of expression, 227–28 passing off, 219–22 privacy rights, 225–27 publicity rights, 225–27 see also designs; economic rights; moral rights; trade marks interests: communal, 192 general, 156 legitimate, 212 national security interests, 226 personal, 83–84 public, see public interest intermediaries, 91, 111–12 liability, 122–23, 151 International Copyright Act (1852), 21 Internet: caching, 110 copyright exception, 109–10 copyright infringement, 109–10 framing, 111 linking, 111 see also internet service providers (ISPs) internet service providers (ISPs): liability for user-generated content, 111–12, 122–23 liability: internet service providers, 122–23 intermediaries, 122–23, 151 Internet Corporation for Assigned Names and Numbers (ICANN), 224 intestate succession, 95, 213, 214 intrinsic utilitarian function, 60 inventions and inventors, 239 Ireland, 90–91, 171–72 ISPs, see internet service providers Italy, 60, 91, 127, 188 joint authorship, 43 graffiti and street art, 166 jurisdiction, 2, 243 National Portrait Gallery v Coetzee, 154–55 just reward theory, 11–12 desert argument, 12 unjust enrichment, 12–13 justifications for copyright, 8–9, 19–20 economic/utilitarian justifications, 9, 10–11 moral rights justification, 9, 11 just reward, 11–13 natural law basis, 13–14 personality basis, 14–16

254 Index public policy justification, 9, 11 scepticism, 16 art/property argument, 18 duration debates, 16 general failure of the system, 17–19 legal creep, 17–18 Marxist theories, 18 public domain, 16–19 utilitarian works and public domain, 16–17 Kelly v Arriba Soft, 142–46 kinetic art, 44–45 knowledge of infringement, 111–12, 151 labour, 11–16 land art, 168, 169–70 legal history, 20–22, 24–26 legitimate interests, 121 lending rights, 68 liability: criminal liability, 48, 122–23 graffiti/street art, 26, 166 internet service providers, 111–12, 122–23 intermediaries, 122–23, 151 secondary, 147 user-generated content, 111–12, 122–23 see also limitations of liability libraries, 54–55, 127–30, 130–31 see also image libraries licences, 201–2, 205, 237 checklist, 240–43 implied, 150–51 orphan works, 182, 184–85 sample short form licence, 244–5 terms and conditions, 201–2 see also Creative Commons Liechtenstein, 46, 208 limitations of liability, 242–43 limited access, 43 limited editions, 85, 94, 211 linking: hyperlinks, 111, 151, 201 in-line, 146–47 literal copying, 5, 18, 50 literary works, 27, 41, 43, 139, 164, 165, 180 lithographs, 10, 21, 24–25, 27, 31, 92, 210 living artists, 3, 70 loan agreements, 199–200 loans, 198 moral rights, 199–200 publicity/use of lenders’ name, 198 reputation, 198 Lockean natural law, 13–16 logos, 163, 165, 198, 223

machine production, 36–40 make-up, 45, 221 maps, 27, 69 markets, 96 mass-produced items, 1–2, 31, 59, 61–62, 229 material alteration, 134, 160–61, 176 merchandising, 88–89, 198–200, 223 merit, see artistic merit minimal degree of creativity, 4, 42–43 minimalist art, 162–63 misappropriation, 12, 64, 202, 233 misrepresentation, 220–21, 223 misuse, 226, 241, 242, 243 models and casts, 33, 45 modern art, 158 advertising, 170–71 appropriation art, 160–62 bio-art, 168, 169 land art, 168, 169–70 advertising, 170–73 conceptual art, 163–64 graffiti, 164–68 limits of appropriation, 174–79 minimalist art, 162–63 parody, 174–79 ready-mades, objets trouvés, installations and assemblage, 159–60 street art, 164–68 monopoly right, see economic rights moral rights, 72–74, 79 Confetti Records v Warner Music (2003), 82 deceased artists, 213 derogatory treatment, 83–84 Emma Delves-Broughton v House of Harlot Limited (2012), 83 employed artists, 215 EU law, 78–79 France, 74–76 graffiti, 166–67 harmonisation, lack of, 78–79 Harrison v Harrison (2010), 82–83 implications for digital environment, 117–18 just reward theory, 11–12 desert argument, 12 unjust enrichment, 12–13 moral rights justification for copyright, 9, 11 just reward, 11–13 natural law basis, 13–14 personality basis, 14–16 Morrison Leahy Music and Another v Lightbond Limited and Others (1991), 80 natural law theory: criticisms, 15–16 economic rights, 14

Index 255 personality theory, 14–16 right of property, 13–14 origins, 74–76 UK law, 76–78 Pasterfield v Denham and Another (1999), 81–82 performers’ moral rights, 84 personality theory, 14–16 right of attribution, 74–75 UK law, 76–78 right of disclosure, 75 right of integrity, 74–75 right of withdrawal or repentance, 75–76 right to insist on completion, 75 right to object to destruction/removal or original, 76 street art, 166–67 Tidy v The Trustees of the Natural History Museum and Another (1996), 80–81 United States, 85–86 visual search engines: fair use/fair dealing, 149–50 waivers, 204–5 Morrison Leahy Music and Another v Lightbond Limited and Others (1991), 80 moulds, 31 moving images, 99, 179–80 multimedia works, 179–80 museums, see galleries and museums music, 44, 53, 80, 82, 138, 171–72, 180, 194, 196–97 sheet, 138 mutilation see derogatory treatment names: artists’ names, 222–23 domain names, 224–25 National Portrait Gallery v Coetzee, 153–58 national security, 226 national treatment, 45–46 natural law theory: criticisms, 15–16 economic rights, 14 France, 15 Lockean, 14–16 personality theory, 14–16 right of property, 13–14 Spencer, 14 Netherlands, 51, 90, 90–91 New Zealand, 33, 38–39, 189–90 news reporting, 143, 149, 161 non-conventional art works, 168–70 Norway, 127, 208 objets trouvés, 25, 38, 45, 159–60 offensive material, 26

officious bystander test, 150 omissions, 81–82 on-screen licences, 150, 201 online artistic collaboration, 156–58 online communities, 157 online environment, 142–52 online piracy, 123 online platforms, see platforms open access, 205–7 open source software, 19, 205–6 originality, 4 criteria for protection, 41–43 EU law, 128, 139–40, 186–87 photographs: EU law, 128, 139–40 UK law, 127, 128, 129–30, 133–34, 135, 138 US law, 131–33 sufficient, 100, 105, 132, 169 origins and history, 20–22 orphan works, 180–82 EU law, 182–84 UK law, 184–85 US law, 185 owners and ownership, 5–6 first owners, 47 graffiti and street art, 166 transfers, see transfer of ownership see also attribution packaging, 65, 223 paintings, 21–22, 29–31 original, 86, 129 photographs of paintings, 99, 109–10, 135–37, 153–56 public domain, 126–28, 141, 153–56 Bridgeman Case (1998), 130–31, 135–39 EU law, 135–39 Graves’ Case (1869), 128–30 UK law, 133–34 US law, 131–33 parody, 56, 174–79, 220, 233 passing off, 219–22 Pasterfield v Denham and Another (1999), 81–82 patents, 3, 5, 20, 62, 239 bio-art, 169 computer-generated designs, 105–6 World Trade Organization, 194 paternity, right of, 73–74, 76–78, 82, 117–18, 220 paying public domain, 70 Perfect 10 v Google, 147–48 performances and performers’ rights, 179–80 moral rights, 84 performance art, 163, 179–180 permanence of work, 44–45

256 Index permanent reproductions, 121, 186 permission, 5, 18, 57, 69, 154, 166, 199, 205, 206 personal interests, 84 personal property, 5, 193, 236 personality theory, 14–16 photocopies, 22, 43, 134, 135–36, 139 photographic reproduction: exact photographic reproductions, 131–32, 134, 136 photographs, 32–33 photographs of paintings, 99, 109–10, 135–37, 153–56 public domain artistic works, photographs of, 126–27 Bridgeman case, 130–31 comparative law, 127 digital single market, 127–28, 140 ensuring public access to public domain, 127–28 EU law, 128, 139–40 Graves case, 128–30 National Portrait Gallery v Coetzee, 153–58 originality test, 128 UK law, 127, 128, 129–30, 133–34, 135, 138 US law, 131–33 originality: EU law, 128, 139–40 UK law, 127, 128, 129–30, 133–34, 135, 138 US law, 131–33 physical embodiment, 87 PICSEL, 197 picture libraries, 127, 130, 135, 140–41, 197, 200, 202 pictures, see images piracy, 18–19, 21, 123–24, 157, 229–30 plagiarism, 18, 49, 160, 174 platforms, 111–112, 202–203 plastic art, 87, 92, 210–11 pointillism, 4, 173, 233 portraits: commissioned, 75, 204–5 portrait photographs, 139 posters, 174, 199 potential markets, 145 precedents: precedent assignment of copyright, 237, 238–40 precedent checklists, 237–38 precedent copyright licence, 237, 240–44 short-form licence, 244–45 prices, 10–11 price databases, 114–15 printing privileges, 20, 178 prints, 21, 92, 94, 139, 210–11

privacy, 225–26 children, 226–27 European Convention on Human Rights: freedom of expression, 226 right to respect for private and family life, 226 reasonable expectation, 226 private property, 13, 73–74, 179, 192–93 profits, 88, 96, 111, 177, 196–97 programmers, 102, 108 property: personal property, 5, 193, 236 private property, 13, 73–74, 179, 192–93 protected works, 27–29, 35–36 architecture, 40–41 artistic craftsmanship, 36–40 collages, 34–35 film, 41 graphic works, 29–31 photographs, 32–33 ready-mades, 33–34 sculpture, 33–34 typefaces, 40–41 public display, 69, 146, 198 public domain: appropriation, 232–34 artistic works, photographs of, 126–27 comparative law, 127 ensuring public access to public domain, 127–28 digital single market, 127–28 National Portrait Gallery v Coetzee, 153–58 originality test, 128 Graves case, 128–30 Bridgeman case, 130–31 US law, 131–33 UK law, 133–35 Creative Commons, 205–7 freedom of panorama, 188–89 open access, 205–7 paying public domain, 70 public interest, 6, 168, 183 defence, 54–55, 73–74, 150–51, 155–56, 233 public performance, see display right; exhibition right public policy, 9, 10, 11, 19–20, 44, 73, 166, 168, 233 public safety, 226 publication right, 66–67, 113 publicity, 198–200 rights, 225–27 publicity materials, 198–99 published work: publication right, 66–67 publishers, 6, 9, 10–11, 77, 114, 147–48, 219–20, 224–25

Index 257 qualifying factors for protection, 45–46 quality: aesthetic, 65 artistic, 24–25, 35–36, 136, 231 quotations, 55–56, 149, 203 RAM (random-access memory), 109 ready-mades, 2, 33–34, 159–60 reap/sow principle, 12–14 reasonable expectation of privacy, 226–27 reasonableness, 81 reciprocity, 90, 93, 209 recognised stature, 85–86, 167 recordings, 32, 84, 172–73 sound, 22, 27, 58, 80, 82, 179–80 registered designs: EU Intellectual Property Office, 64–65 EU law, 65–66 registered Community designs, 65 supplementary unregistered designs, 65 UK Intellectual Property Office, 64 unregistered Community designs, 65 registered trade marks, 120, 222–23, 225 registration, 69, 74, 76, 219 certificates, 130–31, 132 designs, 59–60, 64–66 domain names, 224 trade marks, 222–23 removal of original, right to object to, 76 rental and lending rights, 68 repentance, right of, 75–76 reproduction(s), see copies; copying reputation, 72–79, 149 art loans, 198 artist as a brand, 222–23 case law, 80–83 derogatory treatment, 83–84 freedom of expression, 226 hyperlinks, 111 parody, 176 passing off, 220 privacy, 225 US law, 85 resale right, 1, 70 background, 87–90 blockchain, 120 collective management organisations, 196–97 deceased artists, 212, 214 definition, 208–9 employed artists, 215 EU law: artist’s right to a royalty, 91 Brexit, 207 collective management, 92–93

duration, 91 eligible works, 91–92 excluded sales, 91 harmonisation, 90–94 liability to pay, 92 reciprocity, 93 Resale Right Directive, 90–94 right to information, 93 royalties, 92–93 term of protection, 93 international developments, 96 persons entitled to claim, 211–12 persons liable to pay, 212 practical guidance, 207–8 definition of the right, 208–9 resale royalties, 209–10 relevant works of art, 210–11 right to information, 212 sales attracting resale royalties, 211 UK: implementation of Directive, 94–96 resale royalties, 209–10 persons entitled to claim, 211–12 persons liable to pay, 212 relevant works of art, 210–11 sales attracting, 211 restorers, 79, 138 reverse passing off, 220–21 rights, see individual rights royalties, 68, 69, 70, 88, 90–94, 120, 205, 241, 242 resale, 95–96, 207–12 safe harbour, 148, 185, 234 sale prices: royalties, 209–10 sand pictures, 45 scepticism regarding value of copyright protection: art/property argument, 18 duration of protection, 16–17 general failure of the system, 17–19 legal creep, 17–18 utilitarian works and public domain, 16–17 sculptures, 21–22, 33–34 search engines, 142, 151–52 see also visual search engines sellers, see resale right separability, conceptual, 60, 62 servers, 109–10, 117, 200–1 caching, 110, 112 jurisdiction issues, 154, 156 service marks, 219–21 shape, 58, 61, 64, 65, 223 sharing of images, 153–58 sheet music, 138

258 Index signatures, 30, 77, 85, 165, 222–23 similar works, 3, 27, 180 similarities, 130, 164, 173 substantial similarity, 49 skill, 13–16 degree of skill, 42–43, 135, 137 independent skill, 18, 104, 133 sufficient skill, 42, 99, 137 see also originality slavish copying, 132, 134, 135, 169 smart contracts, 119 social media, 188–89, 198–99, 202–3, 234 software, 117–18 open source software, 19, 205–7 sound recordings, 22, 27, 58, 80, 82, 180 special treatment, 100–1, 124, 177 stakeholders, 9, 181, 194 Statute of Anne (1709), 21 street art, 164–65, 167–68 anonymity, 166 collaborative authorship, 166 copyright protection, 165–66 joint ownership, 166 moral rights, 166–67 ownership, 166 see also graffiti style(s), 4–5, 32, 50–51, 173–75, 191, 220–22, 233 subject matter, 20, 27–28, 44, 52, 91–92, 121, 159, 173, 191, 223 substantial part, 48–49, 50–54, 106, 148–49, 173, 175–76, 180, 233 caching, 110 succession, 92 intestate succession, 95, 213, 214 sufficient originality, 100, 105, 132, 169 sufficient skill, 42, 99, 137 summary judgments, 80–81, 130, 133, 136–37, 143, 148 surface decoration, 64, 66 ‘sweat of the brow’, 4, 103, 104, 132, 139–40, 163, 232 Switzerland, 60, 89, 96 symbols, 65, 194, 199 tapestries, 92, 210–11 technical function, 65 technical measures/steps, 123, 151, 152, 153, 234, 242 techniques, 5, 32, 50, 52, 173, 233 editing techniques, 171, 173 technology and technological developments, 22, 123, 234 see also blockchain; computer-generated works (AI); digital future; digital works, copyright; digitised copies; digitised works; Internet

termination rights, 243 testamentary dispositions, 87, 95, 213–14 textiles, see fabric designs themes, 102, 191 third party rights, 44, 77, 243 see also intermediaries three-dimensional items, 136–37 three-dimensional reproductions, 57 three-dimensional works, 47, 135 thumbnail images, 142–44, 146–48, 149 Tidy v The Trustees of the Natural History Museum and Another (1996), 80–81 trade marks, 218 artists as brands, 222–23 artistic works, 30, 223–24 industrial designs, 59 parody, 174–75 registered, 120, 225 Trade-Related Aspects of Intellectual Property Rights (TRIPS), 194 traditional cultural expressions, 189–94, 232 traditional knowledge, 189–94 traditional owners, 190 transfer of ownership, 95, 208, 211, 215 see also resale right transient/temporary copies, 47, 109–10, 152 transitory copying and Internet, 109–12 transmission right, 17, 112–13, 122 transparencies, 130–34, 199, 200 typefaces, 40–41 typographical arrangements, 22, 27 UNESCO: protection of cultural heritage, 193–94 intangible cultural heritage, 194–95 unfair competition, 12, 59 United Kingdom: computer-generated works (AI), 104–5 law reform, 105–6 digital works, 98–99 photographs of public domain works of art, 133–34 United Nations, 193–95 United States, 24 exhibition right, 69 fair use, 6, 177 Kelly v Arriba Soft, 142–46 Perfect 10 v Google, 147–48 liability of ISPs, 122 moral rights, 85–86 orphan works, 181, 185 photographs of public domain works of art, 131–33 Register of Copyright, 163 right to privacy, 225

Index 259 unity of art, 60 unlawful circumvention of technological measures: National Portrait Gallery v Coetzee, 154 unpublished works, 15, 22, 66–67, 143, 218–19 unregistered design, 63, 64–66 uploading, 48, 109–10, 111–12, 137–38, 141, 153–54, 156, 202–3 use, see fair use user-generated content, 156–58 liability of ISPs and others, 111–12, 122–23 users, 6, 144–46, 156–58 utilitarian function, 60–61 utilitarian justifications for copyright, see economic justifications for copyright utility, 36, 37, 58, 154 validity, 132–33, 143 value-added labour theory, 11–12 videos, 179–80 virtual reality, 107 ownership, 108 protection and ownership, 108 rights clearance, 108 virtual tours, 142–43, 200 visual artists, 70, 85–86, 95, 167, 216 visual arts, 84, 141, 157–58 visual search engines, 112, 124 EU law, 151–52 fair use and fair dealing: EU law, 151–52 Kelly v Arriba Soft, 142–46 Perfect 10 v Google, 147–48 UK perspective, 148–51 Kelly v Arriba Soft, 142–43 amount/substantiality of portion used, 144 appeals, 146

effect of use on potential market/value of work, 145–46 nature of the work, 144 purpose and character of use, 143–44 Perfect 10 v Google, 147–48 UK perspective, 148–49 consent, 150–51 implied licence, 150–51 moral rights, 149–50 waivers, moral rights, 84, 193, 204–5, 238–40 warranties, 239, 242 watermarks, digital, 202 websites: acquisition and use of image rights, 200 gallery websites, 200–2 online platforms, 202–3 social media platforms, 202–3 domain names, 224–25 Wikimedia, 188–89 Wikimedia Commons, 138 National Portrait Gallery v Coetzee, 153–56 Wikimedia Foundation, 153, 155 Wikipedia, 43, 141, 153–55, 157–58, 189, 207, 234 WIPO, see World Intellectual Property Organization withdrawal or repentance, right of, 75–76 woodcuts, 27, 31 works of artistic craftsmanship, 17, 24, 36–40, 231 law reform, 63, 64, 65–66 US law, 60 World Intellectual Property Organization (WIPO): computer-generated works (AI), 105 digitisation, 120–22 protection of cultural heritage, 193–94 World Trade Organization, 194

260