Photographic copyright: higher but wider?

January 25, 2012 Leave a Comment

The IP Kat blog has an interesting discussion of copyright infringement of photographs.

To cut a long story short, the High Court was asked to judge on whether copyright in the following image (created by a Mr Fielder, with the copyright owned by Temple Island Collections):

was infringed by the following image (used by New English Teas on the packaging for one of their products):

The court decided that the answer was yes, since the creators of the second image has been aware of the existence of the first image, and were unable to show they hadn’t copied it.

The case highlights a couple of points of general application.

1. Copyright in photographs

The court confirmed that a photograph will only attract copyright if it is the photographer’s own “intellectual creation”, and the judge suggested three aspects which could make a photograph “original”:

  • “specialities of angle of shot, light and shade, exposure and effects achieved with filters, developing techniques and so on”;
  • “creation of the scene to be photographed”;
  • “being in the right place at the right time”.

In this case, the court had no difficulty finding that the first image was Mr Fielder’s own intellectual creation, by reason of its composition and the visual contrasts involved. However, this is a long way from the traditional English law approach in which (as one IP textbook puts it) “pointing the camera at a subject and pressing the shutter” was considered enough to gain copyright protection.

This suggests that many photographs over which copyright is asserted may in fact fall outside the scope of its protection – though elements such as “being in the right place at the right time” would still seem to cast the net quite widely.

2. Infringing copyright in photographs

Again the traditional approach has been that infringing copyright in a photograph involved actually reproducing that photograph (or a substantial part of it). There was nothing to stop you taking your own photograph which happened to incorporate the same features as another image. As the IP Kat observes, this does seem to extend the scope of protection for photographs to include “an idea, a lay-out or a scheme for such a photograph”.

For this reason, it may be that the losing party in this case will hop on the next bus (sorry…) to the Court of Appeal. In the meantime, though, this case highlights some interesting issues in what can be a very sensitive area for photographers: on the one hand confirming that the bar for copyright protection is higher than previously thought, but on the other suggesting that the scope of protection, if acquired at all, may be wider than previously thought.

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How distinctive is the App Store?

March 23, 2011 Leave a Comment

Amazon has launched an “Appstore” selling applications for the Android mobile phone operating system. In response, Apple is suing Amazon in the US claiming that Amazon’s Appstore will “confuse and mislead customers” due to the similarity in name with Apple’s own App Store.

Apple has not yet been able to register App Store as a trademark in the US (and its application to do so is being opposed by Microsoft). However, APP STORE is registered as a European Community trade mark, effective from 21 July 2008. If Amazon were to launch their Appstore in the EU – and currently there is no information on if and when this will happen – then Apple would presumably want to bring trade mark infringement proceedings against Amazon.

To be honest, I’m amazed that Apple were able to register APP STORE as a trade mark. A mark must be distinctive in order to be capable of registration as a Community (or for that matter EU national) trade mark. In the words of the Community Trade Mark Regulation, it must be “capable of distinguishing the goods or services of one undertaking from those of other undertakings”. In particular a mark cannot be registered if it:

consist[s] exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service.

To register APP STORE for the sale of computer software applications (that is, “apps”) is, to my mind, on a level with registering SHOE SHOP for the sale of footwear. No doubt Amazon’s defence to a claim would consist (in part) of a vigorous assertion that the mark should be revoked.

Against that, it is sometimes argued (though not, as far as I’m aware, by Apple itself) that Apple invented the word “app” in relation to software. There are two responses to this:

  1. Who invented the word isn’t relevant to whether it’s a valid trade mark. Even if Apple invented the word “app” for software, it is still widely used (even by Apple!) in a generic sense.
  2. It’s not true that Apple invented the word anyway: it’s not hard to find examples from before 2008 of the word “app” being used for software, particularly in the free/open source software world.

I do need to add a lawyerly disclaimer here. I am emphatically not arguing that readers of this blog post should rush out and start using the name “App Store”, confident in the knowledge that Apple’s trade mark registration is invalid. Apple could still run other arguments (such as a “passing off” claim), and would argue with equal vigour that their trade mark should stand (for example, on grounds of “acquired distinctiveness”). If you want to take on the world’s second largest company on an issue like this, be my guest – but take legal advice first…

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easyDispute over trade mark

July 21, 2010 Leave a Comment

My colleague Ed Weeks (on his Boardroom Disputes blog) has written a number of times over the past couple of years on the dispute between Sir Stelios Haji-Ioannou and the easyJet board.

This dispute has now developed an intellectual property angle, with Sir Stelios threatening to terminate the airline’s licence to use the “easyJet” trade mark. The trade mark is owned by Sir Stelios’ company easyGroup IP Licensing Limited, and is licensed to easyJet Airline Company Limited under an agreement which Sir Stelios is now threatening to terminate.

easyGroup has issued a “cure notice” to easyJet threatening to terminate the licence agreement unless there is an improvement in easyJet’s punctuality record within the next 90 days. This follows newspaper reports that fewer than 50 per cent of easyJet flights from Gatwick were on time in June.

Should easyGroup proceed to terminate easyJet’s licence, the result would undoubtedly be a huge court battle, given the importance of the easyJet name for the airline. I doubt that the licence agreement contains an express right to terminate for poor punctuality performance: presumably easyGroup are relying on more general obligations, as typically found in trade mark licences, for the licensee to provide services under the licensed mark to a high standard and not to bring the trade mark (or its owners) into disrepute.

Given the risks to both sides of this course of action, I would be very surprised if the licence were terminated. More likely this is being used by Sir Stelios as leverage in his long-running battles with the easyJet board.

Sir Stelios’ ire has no doubt only been increased by the way in which his own personal name and image have been dragged into the controversy over easyJet’s punctuality (and its reluctance to release its performance figures) by easyJet’s main competitor, Ryanair. Ryanair apologised for its ads referring to him as “easy Jet’s Mr Late Again”, but its newspaper ads printing this apology provided another opportunity for it to take a dig at easyJet.

As a final observation, I notice that the Telegraph news item refers to Sir Stelios threatening to remove “the easy brand name”. easyGroup – which owns a large number of trade marks which include “easy” as a prefix – has made a number of attempts over the years to claim the name “easy” itself as a trade mark, without success. I wonder if easyGroup have taken the opportunity themselves to provide a small boost for their claim to “easy” as a brand name.

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Football League cries foul against BBC presenter

April 15, 2009 Leave a Comment

The BBC’s technology correspondent, Rory Cellan-Jones, has been Twittering and blogging about YouTube’s removal of a video which he posted on the site.

The video was a 37-second clip of last weekend’s Brentford v Exeter City football match, which Cellan-Jones had taken on his new digital camera. It seems the Football League filed a complaint with YouTube alleging that the clip infringed copyright. YouTube responded by promptly taking down the video and threatening Cellan-Jones’s account with closure if he offended again.

Now it seems to me to be absurd to suggest that Cellan-Jones was infringing “copyright”. There is no copyright in a football match. As for the video footage, Cellan-Jones took this himself using his own camera. As this was (I assume) not in the course of his duties as a BBC employee, he is the owner of the copyright in that footage, not the Football League.

Could the football club (or the Football League) acquire the copyright under the terms and conditions for entry to the match? No: copyright (or future copyright in a prospective work) can only be assigned by an agreement in writing, signed by or on behalf of the copyright owner (ss.90 & 91 Copyright, Designs and Patents Act 1988). So Cellan-Jones remains the owner of the copyright in the footage he took with his camera.

I haven’t been able to access Brentford FC’s ticket conditions, but I assume that (like those for fellow League Two team Leeds United (PDF)) they prohibit the use of video equipment within the ground. Hence – assuming Cellan-Jones bought the tickets himself – he was in breach of his contract with Brentford FC by using his camera. However, that does not give the Football League a basis for claiming under YouTube’s copyright notification procedures.

So, on the face of it, this looks like a spurious claim by the Football League: an example of how automatic detection and notification of alleged copyright infringements can lead to “false positives”. As a result, Cellan-Jones (having had a previous copyright notification) now faces the automatic closure of his YouTube account should a third “infringement” occur. Given that he’s unlikely to want to spend money consulting lawyers on an issue like this, his only practical recourse – other than writing a blog post on one of the world’s most high-profile websites! – may be to check out YouTube’s counter-notice provisions and decide whether he wishes to follow this rather formal (and far from risk-free) procedure.

Still, perhaps Cellan-Jones should count himself lucky. If those lobbying for a “three strikes” law for ISPs were to have their way, people in his position in future could even face the loss of their internet access.

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Effective copyright: podcast link

March 30, 2009 Leave a Comment

As an update to my previous post, William Patry’s lecture (along with the introduction and Q&A) is now available for download on the SCL website. SCL members can complete the questionnaire to obtain CPD points using the link here.

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Effective copyright in a networked world

March 25, 2009 Leave a Comment

Attended a very interesting and provocative lecture last night by William Patry, Senior Copyright Counsel at Google, Inc. and author of the 6,000-page epic Patry on Copyright, reportedly the world’s largest copyright reference work.

Patry was giving the SCL Annual Lecture in London. This year’s lecture was dedicated to the late Prof Sir Hugh Laddie, who died last year, and the topic, “Crafting an Effective Copyright Law”, was taken from a statement by Sir Hugh that “we do not need a strong copyright law, but rather an effective copyright law”.

The full lecture should be available on the SCL website before too long (and I’ll add a link when it is), and I highly recommend listening to it. Patry’s thesis was that copyright should not be treated as private property, but as a government programme to promote creativity and innovation by legislative means. Therefore copyright laws – and in particular any proposal to extend their scope – should be assessed on the basis of empirical data rather than appeals to what is “right and just” or the “moral case at the heart of copyright” (to quote Andy Burnham’s vacuous justification for extending the term of copyright for sound recordings).

I think Patry’s rhetorical characterisation of copyright as a government programme is a fruitful one, which can encourage a more level-headed assessment of copyright (and indeed other “intellectual property”) laws. Copyright is a good thing, but its effectiveness needs to be scrutinised continually, and it should be remembered its purpose is to benefit society as a whole by encouraging the creation of more copyright works, not simply to enrich copyright owners (not that those two ambitions are mutually exclusive, of course).

Equally, I think Patry overstated the case against treating copyright as a property right. He is correct that referring to copyright as “property” imports a wide range of legal, moral and emotional connotations which can be problematic (“An Englishman’s copyright proprietorship is his castle”, perhaps?). However, there is also a strong pragmatic case for treating copyright as property, in that it allows copyright to be assigned, licensed, bequeathed, valued and so on like other forms of property.

The big lesson, though, is that attempts to use copyright to protect business models that have been superseded by new technologies – not least the growth of high-speed internet connections and the “pervasive network” – is ultimately harmful to society and indeed to copyright owners themselves. Technology is going to drive new ways both of doing business and of accessing copyright material, and copyright owners cannot expect the law to protect them from the hard work of adapting to this. That’s just a bailout by another name.

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