All companies that conduct business online should take note of a potential upcoming renewal deadline for the “safe harbor” from copyright infringement liability. Online service providers seeking safe harbor under 17 U.S.C. § 512(c) of the Digital Millennium Copyright Act (DMCA) must designate a copyright agent with the U.S. Copyright Office and renew that designation at least once every three years. Failure to do so will negate the online service provider’s ability to claim the safe harbor from copyright infringement liability under § 512(c). Many companies renewed their designations between December 1, 2016 and December 31, 2017 using the Copyright Office’s new electronic filing system. For those that did, the three-year renewal deadline may be approaching.Read More
“Improvise. Become more creative. Not because you have to, but because you want to. Evolution is the secret for the next step.” Karl Lagerfeld
Our Fashion team has prepared the latest edition of Fashion Law where we provide you with the latest updates on legal issues affecting the fashion industry.
This edition covers:
• An update on Modern Slavery legislation
• Copyright infringement
• The benefits of design protection in an IP strategy
• A look at illegal phoenix activity.
Click here to read Fashion Law online.
On 22 January 2018, Justice Martino of the Supreme Court of Western Australia delivered his judgment in the case of Milankov Designs & Project Management Pty Ltd v Di Latte & Anor, a copyright infringement case in respect of house plans.
Mr and Mrs Di Latte engaged the plaintiff, Milankov Designs & Project Management Pty Ltd (Milankov), to design and prepare drawings for a home to be built at the Di Lattes’ property. The agreement provided that Milankov would prepare plans for stages of the design and build process – first, the development stage and, second, the construction drawing stage. The Di Lattes agreed to pay Milankov a percentage of the build cost, to be billed to the Di Lattes at various stages throughout the process.
After Milankov had prepared the stage one plans (including plans submitted to council for building licence approval) and the Di Lattes had paid several invoices issued by Milankov, the relationship between the parties broke down. The engagement contract was terminated by the Di Lattes, and Milankov promptly wrote to the Di Lattes putting them on notice that Milankov owned copyright in the plans it had created and that the Di Lattes were not entitled to reproduce the plans without its permission, including by building the house at their property.
Nonetheless, the Di Lattes proceeded to engage an architect to create plans including construction drawings by copying Milankov’s plans, and then to construct a house in accordance with the design.
A recent decision on copyright infringement in building designs
On 13 October, Justice Beach of the Federal Court of Australia delivered his judgment in the case of Henley Arch v Lucky Homes & Ors, a copyright infringement case in respect of a project home design.
Mr and Mrs Mistrys were customers who, in 2013, went part way through the sales process with Henley Arch (Henley) for it to build them a house in accordance with its “Amalfi” design. The Mistrys paid Henley a deposit and plans were drawn up to build the house on the block that the Mistrys were purchasing. The Mistrys signed a standard Henley document acknowledging that Henley owned copyright in the plans and that the Mistrys were not entitled to use these (other than by building with Henley). While the Mistrys had initially wanted Henley’s “Avenue” façade option, after they learned that this would increase the price by about AUD10,000 they reverted to the standard option for the facade.
The Mistrys did not sign a final contract with Henley and instead approached Lucky Homes with the Henley plan (which featured Henley’s title block and copyright notice). Lucky Homes agreed to build the home for the Mistrys with the “Avenue” façade they preferred for about AUD10,000 less than Henley’s price (that is, Henley’s price for the house with the standard façade). The Mistrys ultimately engaged Lucky Homes, and it engaged a draftsperson to create a plan for the Mistrys’ house from the Henley plan, with a number of minor changes.
Earlier this week the Supreme Court of Queensland (Court) delivered its judgment in the case of Coles v Dormer & Ors, a copyright infringement case about home designs. The Court found that a house built in an exclusive Port Douglas estate was created by copying the design of another house built close by in the same estate, and ordered that the infringing house undergo significant alterations to change its appearance.
John and Edith Bredens were prospective buyers of a home in The Sands, which had been constructed by Port Douglas Builders in accordance with plans created by designer Gregory Skyring. The Bredens were not successful in purchasing the house, which was ultimately bought by Stephen Coles, who gave evidence that he was particularly taken with the unique style of the house.
In a recent decision by the U.S. Circuit Court of Appeals for the Seventh Circuit (Seventh Circuit), Judge Frank Easterbrook expressly joined the ongoing debate over the scope of ‘transformative use’ analysis in the ‘fair use’ defense to copyright infringement. In Kienitz v. Sconnie Nation LLC, the court reviewed the trial court’s determination that the using of a photograph of the mayor of Madison, Wisconsin, on a critical T-shirt was ‘fair use’ and did not create liability under the Copyright Act. In finding ‘fair use’, the trial court found support in the recent opinion in Cariou v. Prince, in which the U.S. Circuit Court of Appeals for the Second Circuit held that the use of a photographic image in a work of ‘appropriation art’ was ‘transformative’ and thus a ‘fair use’.