Category: Copyright

1
Sometimes Borrowing Isn’t Stealing: De Minimis Sampling of Music Sound Recordings Isn’t Copyright Infringement, Say Two Key Courts in the United States and Germany
2
Star Athletica, LLC v. Varsity Brands, Inc. and the Challenge of Copyright Protection for Garment Design
3
European Court Considers Whether Hyperlinking to Unauthorised Content on Third-party Websites Infringes Copyright
4
The Protection of Creative Designs: New Evaluation Standards Introduced by the Italian Supreme Court
5
The end for the Dallas Buyers Club Dispute and Speculative Invoicing? Or is it Just the Beginning.
6
H&M Unsuccessful in Challenge to YSL’s Registered Designs for Handbags
7
Consider Fair Use Before Submitting Takedown Request
8
Sydney Fashion Law Breakfast – Thursday 15 October
9
Southern District of New York Court Parses ‘Fair Use’ in Fox News’ Copyright Infringement Dispute with Media Monitoring Service
10
A bed Called ‘Nathalie’ – A Dispute Over Creative Designs Protected by Italian Copyright Law

Sometimes Borrowing Isn’t Stealing: De Minimis Sampling of Music Sound Recordings Isn’t Copyright Infringement, Say Two Key Courts in the United States and Germany

Setting music sampling up for a potential U.S. Supreme Court battle, the Ninth Circuit sided with Madonna Louise Veronica Ciccone and her producer (Shep Pettibone) in emphatically rejecting the Sixth Circuit’s bright-line rule that all unlicensed sampling constitutes copyright infringement.  Just days earlier, Germany’s highest court ruled against seminal electronic band Kraftwerk in a similar dispute. While the reasoning in both cases overlapped in some respects, the German court went further by expressly protecting the artistic freedom of samplers and rejecting the requirement — which the Ninth Circuit embraced — that the sample not be recognizable as coming from the plaintiff’s song.

Music sampling, which is common in some musical genres, is the use of snippets from a sound recording — often altered or enhanced in some manner — in a new sound recording.  In Ciccone, the Ninth Circuit affirmed the district court’s grant of summary judgment in favor of defendants Madonna, Pettibone and their associated record labels, music publishers and distributors on the grounds that — contrary to the Sixth Circuit rule set forth in Bridgeport — the de minimis exception to copyright infringement applies to sound recordings just as it does to other types of copyrighted works.  The samples in question were “horn hits” (punctuation-like snippets of horn section chords) that lasted, respectively, less than a second and less than a quarter-second, and the court found that the average listener was unlikely to recognize their source.  In the Kraftwerk case, which involved a two-second drum loop, Germany’s Federal Constitutional Court overturned a finding that electropop producer Moses Pelham had infringed, reasoning that the lower court had not sufficiently considered whether the impact of the sample on Kraftwerk might be negligible.

To read the full alert, please click here.

By Mark Wittow and Eliza Hall

Star Athletica, LLC v. Varsity Brands, Inc. and the Challenge of Copyright Protection for Garment Design

By: John Cotter and Shamus Hyland

Under the U.S. Copyright Act, a “useful article” such as a chair, a dress, or a uniform may obtain copyright protection, but only for elements that “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. § 101. For apparel, this generally means that the overall design of a garment is not protected by copyright, but certain ornamental features (such as a pattern woven into the fabric) may be protectable. In practice, the Copyright Act protects fabric designs, not dress designs. Recently, the U.S. Supreme Court decided to tackle this uncertain area, granting certiorari in Star Athletica, LLC v. Varsity Brands, Inc. In that case, the Sixth Circuit Court of Appeals ruled 2 – 1 that the design features of Varsity Brands’ cheerleader uniform (e.g. “stripes, chevrons, color blocks, and zigzags”) were separable from the utilitarian aspects of the uniform, and thus eligible for copyright protection. Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015).

The majority opinion identified nine specific approaches plus hybrids that various courts and the Copyright Office have formulated over the years to analyze how copyrightable design features can be separated from utilitarian elements, and the extent to which design features can achieve copyright protection. Id. at 484-87. The majority then employed its own hybrid five-part test grounded in the text of the Copyright Act, finding that the designs at issue played no role in the overall function of the article as a cheerleading uniform. The majority broadly defined the function of a cheerleading uniform: “to cover the body, permit free movement, and wick moisture.” Id. at 492. The dissent, meanwhile, took a more “particularized” view of the function of the uniform. Id. at 496. It pointed out that the design elements at issue do serve a utilitarian function because they identify the wearer as a cheerleader and should therefore be afforded no protection under the Copyright Act. Id.

The dissent in Varsity Brands characterized the law of copyright protection for design elements of useful articles as “a mess.” Id. at 496-97. The consequences of this mess are significant for businesses with stakes in garment design. As the dissent observed, clarity is needed to alleviate the courts’ confusion and protect business interests. Id. The Supreme Court now has an opportunity to spell out a more consistent approach to the “metaphysical quandary” of design-functionality in garment copyright protection. Ideally, the Court will clarify the boundaries of copyright protection, and specify the appropriate factors for courts to weigh when separating expressive elements from utilitarian functions. Star Athletica’s opening brief is due around late June, and we will continue to monitor this case.

European Court Considers Whether Hyperlinking to Unauthorised Content on Third-party Websites Infringes Copyright

By Alessandra Feller and Alessia Castelli

Following the provision of a recent Advocate General opinion, the Court of Justice of the European Union (CJEU) is expected to give further guidance on hyperlinking soon.

A dispute arose in the Netherlands between Sanoma Media Netherlands BV (and others) and GS Media in relation to the posting of website hyperlinks to third party sites which contained photographs the communication of which was not authorised by Sanoma and the other right holders.

Specifically, the Dutch Supreme Court has referred certain questions to the CJEU, asking whether

  1. hyperlinks to a freely accessible third party website which displays material without the consent of the copyright owner should be considered a “communication to the public” within the meaning of Art 3(1) of the Directive no. 2001/29 (“InfoSoc Directive”).
  2. In such circumstances, whether the following factors are relevant:
    • the awareness of the hyperlinker of the failure of authorisation from the copyright owner, and/or
    • the facilitation role played by the hyperlink on the accessibility of the material.Such conclusions were based on the grounds that the photographs were “freely accessible” to the general internet public on third party websites.

The CJEU decision on this case is much awaited, and it will be complementing the argument introduced by the Svensson case on hyperlinking. The decision in Svensson left some ambiguity as to whether it made a difference that works had been published on a site linked to without the copyright owner’s consent.

On April 7, 2016, Advocate General Wathelet  released an opinion that hyperlinking to unauthorised content does not constitute an act of communication to the public under Article 3(1) of the InfoSoc Directive, because the intervention of the hyper linker is not essential to the making available of the copyright works to users. He also held that it is irrelevant whether the hyperlinker is aware that the linked content is unauthorised. In the AG’s view, the only criterion that mattered is whether the linked website is freely accessible or whether the hyperlink is used to circumvent a restriction put in place in order to limit access to a protected work. Only in the latter case would a hyperlink constitute a communication to the public.

The Protection of Creative Designs: New Evaluation Standards Introduced by the Italian Supreme Court

By Alessandra Feller and Alessandra Bellani

Through judgment no. 23292 of November 13 2015, the Italian Supreme Court introduced a distinction between objective and subjective standards, which should guide the judges’ assessment in order to decide if an industrial design can seek protection under Italian copyright law (the “IC Law”).

The Supreme Court recalled the principles established under the IC Law providing that:

  • industrial designs are worthy of protection if they have a “quid pluris” that consists of creative and artistic features; and
  • simple creative works are worthy of protection even if they only have an intrinsic artistic value.

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The end for the Dallas Buyers Club Dispute and Speculative Invoicing? Or is it Just the Beginning.

By Greg Pieris and Simon Casinader

On 16 December 2015, another chapter (and perhaps the final chapter) closed in the long running dispute between the rights holder of the film Dallas Buyers Club (DBC) and six Australian ISPs. Justice Perram of the Federal Court of Australia dismissed DBC’s application for preliminary discovery of the identities of over 4,000 Australian BitTorrent users who allegedly shared copies of the film.

As we reported in April 2015 (see here), Justice Perram initially ruled in favour of DBC ordering six ISPs to disclose the details of 4,726 customers. However, the Court was concerned this information would be used to write to account holders making demands for payments very much excess of what might actually be recovered in any actual suit (a practice known as “speculative invoicing”). To address this concern, the Court adopted the novel approach of making the release of account holder information conditional on DBC submitting for the Court’s approval a draft of the letter of demand proposed to be sent to the relevant account holders.

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H&M Unsuccessful in Challenge to YSL’s Registered Designs for Handbags

Fashion retailer, H&M has been unsuccessful in its application to the EU General Court to invalidate YSL’s Community designs for handbags. Community designs protect designs for up to 25 years in every EU Member State. In November 2006, YSL successfully registered two of its designs for handbags. H&M had applied for a declaration of invalidity for these two YSL designs arguing that the designs had no individual character.

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Consider Fair Use Before Submitting Takedown Request

The U.S. Digital Millennium Copyright Act (DMCA) has been a potent tool for combatting copyright infringement on the Internet. Section 512 shields Internet service providers from liability if they expeditiously remove content after copyright owners submit takedown requests notifying the ISP of infringing content. Last week, in Lenz v. Universal Music Corp., the Ninth Circuit held that copyright owners must consider fair use before sending takedown notices, or they could face liability for damages.

This decision cautions copyright owners to take a closer look at infringing content and document their fair use analysis before submitting takedown requests. An intensive investigation is not required and the fair use analysis may not be correct, but the copyright owner must have a good faith belief that fair use does not apply.

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Sydney Fashion Law Breakfast – Thursday 15 October

How close is too close? Trends, inspirations and courts – where is the line between paying homage and knocking off someone else’s design?

K&L Gates invites you to our Fashion Law Breakfast on Thursday 15 October to explore the ins and outs of copying in the fashion industry, including tips on how to avoid getting into hot water and the legal options available to designers who discover that their creations have been copied. A panel of fashion industry and legal experts will discuss the role of trends in creating designs and address the difference between being inspired and being liable for copying.

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Southern District of New York Court Parses ‘Fair Use’ in Fox News’ Copyright Infringement Dispute with Media Monitoring Service

On 25 August 2015, the U.S. District Court for the Southern District of New York (SDNY) ruled that certain functions of the TVEyes media-monitoring service infringe Fox News’ copyrights in its programming content.

TVEyes is a for-profit, media-monitoring service with over 22,000 subscribers that indexes nearly all news-related television and radio content in a searchable database. TVEyes allows users to track the usage of words or phrases of interest and to view the transcripts and video clips of the portions of the television broadcast that use the search term. Subscribers may set ‘watch lists’ for terms to receive real time alerts when certain terms are used and search past broadcasts. TVEyes also provides subscribers with analytic data such as a segment’s Nielsen viewership rating, the frequency with which a term has been mentioned over a specified time period and the geographic markets and channels where a term is used. Additionally, TVEyes users may archive, indefinitely, video clips that appear in response to search queries on TVEyes’ server. Users can also email the video clip links to others, allowing the recipients of the link to view the video clip on TVEyes’ server, as well as download copies of identified digital video clips for offline use and permanent storage.

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A bed Called ‘Nathalie’ – A Dispute Over Creative Designs Protected by Italian Copyright Law

A recent judgment on 16 June  2015 (no. 7432/2015), saw the Court of Milan ascertain the difference between a shape trademark and an artistic shape classified as industrial design protected under copyright law.

The dispute concerned the use and the reproduction of the design of the renowned ‘Nathalie’ bed (the Design), which was created in the ‘70s by Italian designer and architect Vico Magistretti. Mr. Magistretti (and later his heirs) granted an exclusive licence of the Design to the plaintiff.

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