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copyright law in a nutshellIn Australia copyright subsists solely by virtue of the Copyright Act 1968 and the Designs Act 2003 which are both Commonwealth Laws (ie Federal Laws). There is no “common law” concept of copyright in Australia. The law is found in the legislation passed by the Federal Government and interpreted by the courts. Copyright is as “the exclusive right to do certain acts relating to literary, dramatic, musical and artistic works, sound recordings, cinematograph films, television or sound broadcasts and published editions of works. The Copyright Act gives protection to an author of such works etc, except where that author has created such work for an employer or its assigned to another person or company. Copyright is generally for the life of the author plus 70 years. If the first publication of the work is anonymous or pseudonymous, copyright is for 70 years from date it was published.5. If there where two similar works independently produced, the author who published first will not be able to prevent the other from publishing. Copyright exists immediately upon the work being created, you don’t register copyright it is obtained at the creation of the work. Registration exists for this such as patents and trademarks. For Copyright to provide protection the work must be original, in novel but not completely novel The holder of copyright of works gives the copyright holder the right to reproduce, publish, perform in public, or communicate the work to the public and to allow others to do the same generally by way of a licence. Infringement of copyright can come either directly or indirectly. Direct occurs when a someone , other than the copyright owner or the licensee holder uses the copyrighted works with out permission. Indirect infringement occurs where a person, without the licence of the owner, imports into an article which would infringe copyright if it had been made in Australia . or sells or hires an article knowing that it infringes the copyright. The main remedies available to an owner or exclusive licensee for an infringement of copyright are: · an injunction; · damages or an account of profits; · additional (or exemplary) damages; · delivery up of copies of the work or damages for its conversion or detention;5. · an injunction ; · delivery up and destruction of the infringing works An infringer in some circumstances may also be subject to criminal penalties On 20 February 2015 the Communications Alliance released a draft code of practice responding to concerns about online copyright infringement. In recent months we have voiced our opinion on the issue and will be filing our response to the Communications Alliance in the coming weeks. Below is a summary of the draft code:
Background In November 2014 the Attorney General and Minister for Communications laid down the following ultimatum to Australian copyright holders, ISPs and consumers: collaborate to develop an industry code which responds to concerns about online copyright infringement, while protecting the legitimate interests of rights holders, by April 2015; or we will impose measures for you. It comes as no surprise that the Communications Alliance - which represents ISPs and rights holders from music, film, television and the performing arts – has released a draft code of practice in support of its fight against online copyright infringement. The draft code was released for public comment on 20 February 2015 with a final proposal anticipated to be lodged with the ACMA by 8 April 2015. Benchmarks Among the main criteria outlined by the AG and Minister for Communications was a code which:
Proposed Changes In response The Communications Alliance have proposed the creation of a Copyright Notice Scheme targeted at residential fixed internet users who are alleged to have infringed copyright online. Rights Holders may send infringement notices to ISPs covered by the scheme, alleging that copyright infringement of a particular work has been associated with a particular ISP address. The ISP must wait at least 14 days on issuing a notice before issuing a further notice. An ISP participating in the scheme must investigate the complaint, but must not disclose the user’s identity at any time during the process. Users caught illegally downloading content will receive an escalating series of infringement notices designed to change their behaviour and steer them toward lawful sources of content. An account holder who receives three infringement notices in a 12 month period has the right to have the validity of the allegations independently reviewed by an adjudication panel. The rights holder may request a Final Notice List from the ISP detailing the IP Addresses who have received Final Notices which have not been set aside by the Adjudication Panel. In line with the AG’s recommendations the proposed scheme has a strong emphasis on public education and while it does not contain explicit sanctions against internet users, it does provide for a ‘facilitated preliminary discovery’ process through which ISPs can assist Rights Holders who may decide to take legal action against persistent infringers. Such discovery must be sought by way of application to the Federal Court, with ISPs, rights holders and users having to comply with any orders of Court. Details on key issues such as how the Scheme is to be funded and the roles played by rights holders of content such as music and films and the ISPs are still under discussion. Rights Holders involved in the code development include APRA AMCOS, ARIA, Australia Screen Association, Copyright Agency, Foxtel, Free TV Australia, Music Rights Australia, News Corporation Australia, Village Roadshow Limited and World Media. Chris Woodforde, a representative on behalf of several Right’s Holders during the negotiations said “The creative industries believe that the implementation of an effective code is an important step in protecting creative content in the online environment. The release of the draft code for public comment is important in achieving that goal. The creative industry representatives will continue to work with the Government, ISPs and other stakeholders to implement the code and address the serious issue of online copyright infringement.” Is the draft code well balanced in its response to the issues?For the most part the code has adopted a pragmatic approach to the issue and has largely struck a balance between the interests of the rights holder, ISP and consumers. While the Communications Alliance concedes that the code is currently in draft there are some notable points of concern. One of the more obvious concerns is whether ISPs are adequately equipped to police and investigate such inquiries? If we are to recommend devolving the power to police copyright infringement to a commercial enterprise then more consideration must be given to ensure that this responsibility is not abused. In the current state of play ISPs remain under intense pressure from rights holders to disclose the identity of copyright infringers. While the draft code provides for a ‘3 strikes policy’ and scope for an independent adjudicator, uncertainty remains over the integrity of the ISP’s investigation. Will the investigations take place in Australia or an offshore location? Do ISPs intend on establishing dedicated units within their organisation to conduct such investigations? Will the processes be uniform across all ISPs? While in theory the proposal makes sense and reads well, there is inevitably scope for abuse in practice. The biggest fear is that ISPs simply ‘go through the motions’ of issuing infringement notices without adequate investigation, unduly placing more pressure and costs on the consumer to defend the allegations. It also bears considering whether and how the costs of implementing and regulating such a scheme are passed onto the consumer from the ISPs. In 2009 the ‘3 strikes policy’ was introduced in France and serves as a cautionary tale. Despite resulting in positive feedback the law was eventually repealed in 2013. The government cited a failure to benefit authorized services, punishing users more so than the illegal providers and the costs of implementing the regime as the main reasons for its failure. The French calculated the costs of sending out the 1 million required emails and 99,000 registered letters as 12 million Euros and requires the dedication of 60 civil servants. The French Culture Minister argued that the costs outweighed the low rate of cases actually proceeding to trial (some 134), many without conviction. Panel discussion: Digital Rights & Cross-Border Issues - Midem 2014
 In the entertainment industry trademark law offers performers some degree of protection for artistic credits and moral rights. It can serve to supplement copyright law in affording protection against the use in other entertainment works of certain features of a product (for example titles and character names) that cannot be directly copyrighted.
In this article we explore how trademark law is applied in the entertainment industry and how a court will determine if a trademark infringement has occurred. In particular, we look at how this test was applied in the case of Hormel Foods Corporation v Jim Henson Productions. Whilst it is a US decision the law is relevant in Australia (it’s also not very often that we get to write on the law with references to Miss Piggy and processed meat). The decision in Hormel Foods Corporation v Jim Henson Productions gives a detailed look at how the court applies this test to entertainment trademark cases. This dispute involved the character Spa’am in the movie, Muppet Treasure Island, and whether it had infringed upon Hormel Food’s trademark for SPAM luncheon meat. What is a trademark? A trademark is any word, name, symbol or device used to distinguish goods or services dealt with in the course of trade. Trademark protects consumers in their choices and use of goods by providing easy recognition of the product whose features consumers prefer. This kind of brand name recognition gives producers an incentive to preserve or enhance the attractive quality of their product, but it also gives imitators an incentive to use the name without matching the product quality. The role of trademark law is to bar any use of a name or symbol that is identified with a product where such use may confuse consumers about the product they are seeking to buy and use. Trademark infringement test If your trademark is being used by someone else you have a right to bring a trademark infringement claim. When examining a claim for infringement, the court will address the question as to ‘whether an ordinary prudent purchaser would be likely to be misled or simply confused as to the source of the goods or as to the sponsorship or endorsement of the mark.’ Hormel Foods Corporation v Jim Henson ProductionsIn the Muppet movies Spa’am was the ‘high priest of a tribe of wild boars that worshiped Miss Piggy’. Hormel, makers of the well-known luncheon meat SPAM, felt that the use of the name Spa’am on Muppet Treasure merchandise such as clothes and toys may cause confusion to consumers and dilute the famous SPAM name. The court examined the following eight factors to determine if a trademark infringement had occurred: 1. Strength of the mark Usually if the mark is strong the court will conclude that a consumer would be confused by another weaker mark. However, in this case SPAM and the Muppet brand of humour are both widely recognised household names in their own right. Due to the familiarity with both the brands, the court found it would be unlikely for consumers to be confused about the identity of the products and consumers would be likely to see the name Spa’am as the joke it was intended to be, namely to parody the luncheon meat. 2. Degree of similarity between the marks The court examines the similarity of marks visually (side by side) and in the context they are being used. In this case, the court found a passing resemblance with the two names. Spa’am is divided in two by an apostrophe and has two ‘As’. But contextually, the two marks appear in strikingly different contexts and visual displays. Spa’am is depicted as a wild boar puppet and all products have the Muppet Treasure Island branding on them. Even though there are some similarities in the name, the court ruled there would be no confusion and that consumers would realise that the Muppets were parodying the SPAM name. 3. Proximity of the product The next step is to look at whether the products are competing in the same market. In this case, the two products operate in two distinct merchandising markets. The consumers of merchandise in the SPAM market would generally consume luncheon meat and the other product is operating in the puppet entertainment market. For this reason, the court found it would be unlikely that consumers would be confused as the products are not in the same market. 4. Expanding into other markets This test preserves the interests of trademark owners to expand into other avenues or related fields. As Hormel had no intention of entering any SPAM products into the puppet entertainment market, the court found that Henson’s Spa’am did not infringe on any future market opportunities. 5. Actual confusion The court examines any actual evidence of consumer confusion*. In this case, there was no evidence presented and therefore the court dismissed this part of the test. 6. Bad faith The court examines whether the mark has been used in bad faith. In this scenario, Henson’s parody of the SPAM name was not intended to be done deceitfully. Henson had nothing to gain from creating confusion among SPAM consumers nor wished to create a business relationship with them. For this reason, the court ruled that the mark was not created in bad faith. 7. Quality of the mark The court examines whether an inferior product may cause injury to another’s trademark. Hormel was concerned that the Spa’am character would call into question the quality of SPAM luncheon meat. However, the court ruled that Spa’am was a positive character who was not unhygienic and that a simple comic reference to the fact that SPAM is made from pork would not damage the SPAM image, especially in light of the numerous other humorous references to SPAM in the community. 8. Consumer sophistication In this test, the court examines the target audience to see if they would be likely to be misled. The court found that a child or adult would be likely to buy merchandise featuring Spa’am because they like the Muppets, not because they mistakenly think that it is a SPAM product. Weighing all of these factors up, the court found that consumers were not confused about the marks and therefore no trademark infringement was found. Conclusion Artists have a right to protect the goodwill and reputation they have built up in their brand of work and consumers also have a right not to be misled. Trademark law can be used as an additional source of protection other than copyright law to protect and progress the rights of artists in the entertainment industry. *McNote: It might be difficult to confuse a can of ham with an animated pig?  Authors of creative works such as visual art, films, books and songs naturally want the right to claim (or disclaim) credit for their efforts when their work appears before the public. Even more important to many artists is the right to protect the integrity of their work by preventing any significant alterations to its original form. In the world of copyright, this right is known as a ‘moral right’ and artists are protected under the law.
What are moral rights? Under section 195 of the Copyright Act, artists have a moral right to the integrity of their work and right of attribution of authorship. This includes the right to “prevent a distortion, mutilation or other modification of or other derogative action in relation to the work which would be prejudicial to the author’s honour or reputation.” Under this moral right, artists have the right to have their work attributed to them in the form in which the artist created it. Moral rights are different to copyright in that they cannot be assigned, transferred or sold without consent. Artists are entitled to terminate their agreement or sue for infringement if a licensee or purchaser of their work has affected its integrity. Examples of moral right infringement Any artist can claim that their moral rights have been infringed if their work has been changed in some way. At present, the most hotly debated and controversial infringement of moral rights is in film colourisation and movie alternation techniques. Black and white movie favourites, such as Casablanca, are being altered and changed into colour. Recently, actress Angelica Huston, on behalf of her father Jon Huston, sued the Ted Turner Entertainment Company for non-consensual film colourisation of his film The Asphalt Jungle. The French Court returned a favourable verdict concluding that the colourisation of Huston’s film violated his moral rights. The court ruled that the colourisation of the film could not be shown without the consent of the creator and damages were ordered. The publishing industry is also rife with moral rights claims by authors. For example, a publisher due to a limited budget may decide to abridge or condense an author’s book and delete certain photographs from its contents. This abridgement may affect the quality, style and literary finish of the book, amounting to a breach of the author’s moral rights. Another example which we have seen recently was where a visual artist had licensed an artwork to an organisation that used his design on stickers, without identifying the author’s name. The organisation’s failure to attribute the author amounted to a breach of our client’s moral right. Monty Python’s claim Perhaps the most famous case that debated the moral rights of artists was Gilliam v American Broadcasting Company. Television studios often try to fit the length of a movie into a standard schedule of network television. This process is called ‘Lexiconning’. Due to the extensive commercial breaks, scenes and language are often deleted or sped up to fit network timeframes and decency standards. This is what occurred when the ABC and BBC licensed the rights to telecast Monty Python’s Flying Circus. The television networks managed to cut 24 minutes of Monty Python’s classic comedy by omitting the climax of skits and deleting schematic developments in the storyline. This constituted a mutilation of Monty Python’s work or as Judge Lasker stated, “The networks have impaired the integrity of Monty Python’s work causing the programme to lose its iconoclastic verve.” Although the ABC and BBC had licensing rights to edit the program to fit in with television timeframes, the claimed revisions in the script exceeded the scope of their licence. The court ruled that the claimed revisions in the scripts and ultimately the program could only be made after consultation with Monty Python. When can’t moral rights be claimed? Moral rights cannot be claimed in every instance. In order to claim moral rights, the artist’s work must have been changed in some way or not attributed properly. For example, if you don’t like the format your work has been presented in but there is no change to your artistic work, you cannot claim this defence. What can the courts do? If your moral rights have been infringed, you may be entitled to injunctive relief (a court order requiring the party to refrain from an activity) or awarded an account of any profits. However, litigation should always be a last resort due to its timely and costly nature. Solving the problem through negotiation is preferable. If you do decide to sue for an infringement of your moral rights, you will still need to arrange how the remainder of your responsibilities under the contract will be carried out. It is also very important to check whether the court has authority to hear your moral right claim in the country you are situated. For example, the moral right claim is not available under current US law. Defences to moral right claims If the person who changed the artist’s work can prove this was a reasonable act in all the circumstances, then this could be a possible defence to a moral right claim. The court will use its discretion to determine the ‘reasonableness’ of the change and will base their examination on the nature of the work and relevant industry practices. Conclusion There is a need to allow the owner of the underlying copyright to control the method in which the work is presented to the public. This right remains paramount in copyright law. Moral rights under copyright law are used to recognise the important role of the artist in our society and the need to provide adequate legal protection for one who submits his or her work to the public. Copyright infringement or fair use? Legal shades of grey We recently had an enquiry from a theatre director wanting to know whether he could change the words of Madonna’s hit song, Like a Virgin for use in his theatre production. The legal issue here is what constitutes ‘fair use’ of a copyrighted work and what is simply copyright infringement. However, as we outline in this article, the issue is not always black and white. What is fair use? The fact that an artist’s copyrighted work has been copied does not necessarily mean that copyright infringement has taken place. The same law that gives copyright ownership to the original creator of a work also grants everyone else a general privilege of ‘fair use’ of that work. The fair use doctrine is a defence against copyright infringement. It permits courts to avoid rigid application of the copyright statute when on occasion it would stifle the very creativity which the law was designed to foster, namely to ‘promote the Progression of Science and Useful Arts'. Section 150-153 of the Copyright Act defines fair use as any dealing with copyrighted material for the purposes of ‘criticism; review; parody; news reporting; teaching or research'. If the work is used for any of these purposes, no copyright infringement can be found. There has been considerable debate among the higher courts in Australia and America about what constitutes ‘fair use’. The courts have finally begun to commit themselves to judging this issue, albeit on a case by case basis. Fair use factors In the case of our theatre director, a court would consider the following factors in order to determine whether his use of Madonna’s work would constitute fair use:
Application of the law to parody In the scenario we’ve discussed, the purpose for changing the lyrics was to parody or ridicule Madonna’s hit song, Like a Virgin. The entertainment genre known as parody has long posed a challenge to the copyright doctrine. In fact, parody as an art form long predated copyright as evidenced by the work of Shakespeare. The hoped-for benefits of parody are not only entertainment and enjoyment but also artistic innovation and social criticism. The legal problem though is that in order to parody a work, one also has to copy it sufficiently to create a recognisable ‘derivative work’. This is something that ordinarily requires consent of the copyright holder, which may not be forthcoming even for a fee. America has led the way in facing this legal and intellectual dilemma, particularly in the case of Campbell v Acuff Rose. The court had to decide whether a rap song made by 2 Live Crew had violated the property right of Roy Orbison’s 1960s country rock hit, Oh Pretty Woman, the rights to which were assigned to Acuff Rose. 2 Live Crew did request permission from the copyright owner to use the work but were denied. They went ahead and published the rap song and were sued for infringement. The court found that the material copied was a fair use of the work as it was a parody or play on words of the hit song. The court stated that even though there was “substantial copying” of Roy Orbison’s song, “when parody takes aim it must be able to conjure up at least enough of that original to make the object of its critical wit recognisable. It must therefore quote the most distinctive or memorable features that are contained in the song.” Therefore, although in most copyright cases any copying of work no matter how small or large is prohibited without the artist’s permission, in parody cases copying the ‘heart of a work’ is permissible in order for the parody to ‘take aim’. It is uncontested in 2 Live Crew’s case, that there would be a copyright infringement but for the finding of fair use. Applying this precedent to the scenario of our theatre director, it would appear that as the theatre director significantly transformed the lyrics of Like a Virgin, to make fun of or parody the hit song, it would constitute a fair use and it is unlikely that copyright infringement would be found. But not in all cases… However, this is not true of every case and one needs to be reminded that this is a grey area of law to be judged on a case by case basis. For example, in Dr Seuss Enterprises, L.P v Penguin Books, the court found that an author who mimicked the style of a Dr Seuss book to retell the facts of the OJ Simpson murder trial, was not entitled to claim the fair use defence to copyright infringement. The Court determined that the book entitled, ‘The Cat that is not OUT of the HAT’ was a satire, not a parody. The court emphasised that the book merely used the Dr Seuss characters and style to tell the story of the murder. As the book did not poke fun at or ridicule Dr Seuss, the court found that the author’s work was non-transformative and commercially affected Dr Seuss’ book market. Conclusion Fair use is a copyright principle based on the belief that the public is entitled to freely use portions of copyrighted materials for purposes such as commentary and criticism. Unfortunately, if the copyright owner disagrees with your fair use interpretation, the dispute may have to be resolved by a court of law. Courts take a subjective view of this doctrine and it is hard to determine whether you will be successful or not. If the factors are weighed up and it is determined that your purpose is not a fair use, then you are infringing upon the rights of the copyright owner and may be liable for damages.   Copyright licence and a tale of two artists Over the course of two months we advised two artists on similar copyright issues relating to works they had been commissioned to create. What unfolded was a tale that had a very different ending for each artist. In this article we explore licensing copyright and the importance of clearly articulating exactly what it is you’re permitting your artwork to be used for.
The backstory In both cases, the artists were commissioned by large organisations to create a design and a piece of art. The first artist was briefed to create a piece of art for use on material for a specific event in 2012. The second artist’s brief was to create a piece of art for the organisation’s reception and for use on the cover of selected internal educational material. Both artists came to see us for advice after they noticed their artwork being used in mediums they did not expect and in a way that provided commercial benefit for the commissioning organisation. The first artist noticed his design was being used on stickers, brochures, signs and in advertising material. The second artist discovered that the organisation was having her design reproduced on a large brick wall of their car park. Both artists had written contracts in place for their commissioned work. As far as both artists were concerned, they created their designs for a specific use and the organisations concerned had misused their artwork and breached their contracts. Plot line #1: Assigning v selling copyright Copyright protects artists’ literary, dramatic, musical and artistic works. Some of the works protected under copyright law may include paintings, drawings, screenplays, sound recordings, novels or even computer programs. Copyright protection ensures that no one can use or display your work. Under section 36 (1) and 101 (1) of the Copyright Act 1968 (Cth), a licence or express permission must be obtained from the owner of the Copyright work, namely the artist, before the work can be used in any way otherwise it is an infringement. There is no question here that our two artists owned the copyright to their art and design and had the right to sell or licence it. In both cases the artist had agreed to licence (as opposed to sell or assign) their artwork. What we needed to determine was whether or not they had agreed to license their artwork for a specific or limited purpose and whether in fact the contract had been breached by the licensee. Plotline #2: The licence agreement If licensing your copyrighted work, like our artists you should have a contract in place (often referred to as a ‘licence agreement’. That contract should preferably be a formal document and at the very least must be in written form such as a Terms and Conditions document, a letter or even a statement made on a quote when pricing the transaction. In reality many contracts for artwork are formed by the quote and/or a letter or proposal. Any contract must include a clause along the lines of this: “the artist shall remain the sole owner of the copyright in the Artwork.” When licensing your copyright (i.e. you are not selling or assigning it), it is important that the contract details specifically what the design is to be used for, how long it is to be used for, in what formats and that you retain ownership of the design. With that in mind, consider this clause which was in our first artist’s contract: “Copyright in the Artwork and design remains with the Artist and any printing must attribute copyright to the Artist. Under this licence agreement, upon payment of the fee, the company may use the design for the use on sponsors T-Shirts, programs, tickets and advertising material for the event on 3 October 2012.” This clause makes it very clear that the ‘buyer’ of this license would be breaching copyright should they seek to use the design after 3 October 2012. Now, consider the following clause which was contained in our second artist’s contract – also a licensing contract: “Title to the Artwork and all Intellectual property rights in Artwork will vest in the Artist. Upon payment for the Artwork the company is granted a permanent, irrevocable, royalty-free, exclusive licence, to use, exploit, reproduce, adapt, sublicense the intellectual property rights in the Artwork for any purpose.” This clause allows the company to use the art for pretty much any purpose they want and to sell the design. As you can see, the ramifications of these two clauses – although both in relation to licensing - are vastly different. After corresponding with each of the organisations involved, we managed to negotiate a further substantial fee for the first artist as the organisation was in breach of the contract. For the second artist, she was not paid for the additional uses of her design but the organisation agreed not to use the design other than in its original style. In both cases the organisations are now attributing copyright to the artists on all reproductions of the designs – an obligation that was in both contracts which the organisations “forgot” to do. The moral of the story Make sure before signing a written contract, you understand exactly how, when and what you want your design is to be used for. The fact that you are licensing, not selling your work, will not protect you from your artwork being used for other purposes unless specifically stipulated in your contract. Do not rely on a conversation and a handshake. Be in control of your contract by creating and sending it to the licensee where possible. If you receive a contract, make sure that you understand the scope of what your artwork is to be used for. A legal footnote We have changed the facts above for confidentiality reasons. The issues dealt with in our advice to the two artists went well beyond the clauses in relation to licensing. One such issue for both artists dealt with moral rights; both artworks were reproduced and adapted in a way that effectively changed the meaning of the designs and their integrity. When advising artists on copyright, we generally caution against selling or assigning copyright unless there is a considerable financial benefit involved.
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