Lawyerpalooza: when music festivals get intellectual property licensing wrong

Lawyerpalooza: when music festivals get intellectual property licensing wrong

Commercialisation is the process of bringing Intellectual Property (IP) to the market in order to be exploited: put simply, it’s how artists make money from their creations. To maintain control and balance risk against rewards, creators often use license agreements to ensure their work is used only in accordance with their wishes. So what happens when things go wrong?

Juan Marco is an artist from Los Angeles, California who has created illustrations and branding projects for the last decade. Marco’s work includes characters “inspired by musical energy — how it flows through your body when you create and listen to music.”

For the last several years, Marco has been the official designer for the popular Lollapalooza music festival. As part of this business relationship, he entered into an intlelectual licence agreement with C3 Presents, the concert promotion and artist management company responsible for Lollapalooza.

Licensing is a common way of commercialising intellectual property. A licensing agreement is simply a partnership between an intellectual property rights (IPR) owner and another user who is granted permission to use the IPRs in exchange for an agreed fee or royalty payment. This allows Marco (the licensor) to retain ownership of his work, while at the same time receiving income from C3 (the licensee).

One of the most important provisions of the agreement concern the scope of the licensee’s rights, covering (1) which IPRs are being licensed, (2) exclusivity, and (3) the extent of the licence. “Extent” in this context simply details if the IP can only be used for certain activities, events, or within certain territiories.

The original licence was for the non-exclusive use of various illustrations for Lallopalooza events in Chicago, USA and Santiago, Chile for three years. However, in a recent lawsuit filed in California District Court, Marco argues that his illustrations have been used outside of the original scope as agreed in the licence.

The alleged infringement includes using and modifying the artwork in unauthorised ways, as well as using it in locations beyond Chicago and Santiago. For example, Marco’s artwork is used in connection with the Lollapalooza event in Paris, as seen on the Lollaparis website. Additionally, Marco accuses C3 of sub-licensing his artwork to other users without his permission, in order to manufacture and create products which are similar or substantially similar to Marco’s original artwork.
Screenshot 2018-02-25 at 10.42.08 AM
Marco is therefore claiming for copyright infringement, together with vicarious and contributory copyright infringement. In the first claim, he alleges that he has suffered substantial damages – both general and special – to his business. He notes that the Defendants have profited as a direct result of their “wilful, intentional and malicious” copyright infringement, and is asking for statutory damages of up to $150,000 per infringement.

In his second claim, Marco alleges that the C3 and the other Defendants are vicariously liable for the infringement carried out by other parties. The lawsuit states that the Defendants “knowingly induced, participated in, aided and abetted in and profited from the illegal reproduction and subsequent sales” of his artwork.

By alleging contributory copyright infringement, Marco is asking the Court to consider the Defendant’s secondary liability. To be found guilty of this offence, the Defendants must have reasonably known, or had reason to know, of the infringement. Marco asserts that under the original licence agreement, the Defendants had both the right and ability to supervise the copying of Marco’s artwork, but nevertheless failed to prevent infringement. The Defendants also benefited financially as a direct result of the infringement by other parties, and therefore must have known of the illegal copying in the first instance.

It is interesting to note that Marco is not seeking any damages in respect of harm done to his reputation. By his own admission, Marco has previously collaborated with big names in the music industry, as well as freelance work for record labels and bands. Rather, Marco is suing C3 because of the ways in which his artworks were used in contravention to the original licence agreement. No matter the payments or promotion involved, it is important to remember that permission to use artwork usually comes with very specific strings attached.

All the Stars and Constellations

All the Stars and Constellations

A music video for the new Black Panther film features scenes of striking similarity to artist Lina Iris Viktor’s Constellations series. Is this inspiration or infringement?

Marvel Studios’ new movie Black Panther features the first black superhero to appear in mainstream comics. It has received widespread acclaim and press, not least because of its positive portrayal of Africans and African Americans as powerful, heroic characters. In its review, The New York Times exclaims that the film “is a vivid re-imagination of something black Americans have cherished for centuries — Africa as a dream of our wholeness, greatness and self-realisation.”

To promote the film and its soundtrack, American rapper and songwriter Kendrick Lamar, together with American R&B singer SZA, recently released a music video entitled “All the Stars.” However, the producers of the music video are now accused of stealing from African artists.

British-Liberian artist Lina Iris Viktor, who currently resides in New York, has garnered praise for her series Constellations. The work is characterised by unique patterning, using what Viktor considers a “purist colour palate” of only black and 24-karat gold. Viktor found out about the music video from friends, who had called her to say they had seen Constellations featured in the video. The alleged infringement begins three minutes into the video, and lasts for about 20 seconds.

a screen shot of the “All the Stars” music video

Viktor’s lawyer Christopher Robinson sent a letter to Lamar’s mentor and label head, Anthony Tiffith of Top Dawg Entertainment. In the letter, as seen and reported by The New York Times, the use of Viktor’s artworks in the “All the Stars” video constitutes “willful and egregious” copyright infringement. In particular, the video “incorporates not just the immediately-identifiable and unique look” of Viktor’s work, but also “many of the specific copyrightable elements in the Constellations paintings.”

Viktor was previously contacted on two separate occasions in respect of using her work in association with Black Panther. In the first instance, a set decorator asked Viktor directly if he could feature Constellations in the film itself. On the second occasion, a public relations firm contacted the Mariane Ibrahim Gallery in Seattle, which represents Viktor. The PR firm wanted Viktor to provide Marvel Studios and Disney with artworks to promote Black Panther. In both instances, Viktor declined the opportunity to be associated with the film, for reasons apparently related to financial terms and exclusivity.

Lina Iris Viktor, pictured here with her artwork for House & Leisure Magazine

Constellations and “All the Stars” call into question the fine line between infringement and inspiration. Style and general colour schemes are not protected by copyright law, regardless of the form in which it is illustrated or embodied (17 USC Section 102(b)).

Segments of Kendrick’s music video clearly appear to have been inspired by Viktor’s artwork. There are several striking commonalities with the patterns and colour schemes used, and certain actors’ poses mimic Viktor’s portraits. One could even argue that the name “All the Stars” echoes Viktor’s Constellations title.

Inspiration is a common and important part of most creative processes. The issue of concern is whether the source of inspiration was transformed to the extent that Lamar’s video was itself “original,” or instead “derived” from Viktor’s work. To answer this question, the two artworks must be compared to determine “substantially similarity.” The legal test for substantial similarity is a subjective, factual analysis called the ordinary observer test, as developed in Peter Pan Fabrics, Inc. v. Martin Weiner Corp., (2d Cir. 1960):

The Court will analyse if the ordinary observer, unless he set out to detect the disparities between the works, would be inclined to overlook them and regard the aesthetic appeal of the two works as the same. This means looking at the overall visual effect — the total concept and feel — regardless of the individual elements that may have been changed, added or even removed.

Left, an image from the video for “All the Stars” (Universal Music Group); right, the painting “Constellation I” by Viktor (Mariane Ibrahim Gallery).

At present, no official lawsuit has been filed at court. The letter simply asks the “All the Stars” crew to discuss a resolution of Viktor’s claims, “consisting at a minimum of a public apology for the unauthorised use and a license fee.” In her interview with The New York Times, Viktor explained that these allegations are “an ethical issue” and not about monetary compensation. She noted that the film’s creators focus on black empowerment and African excellence, but at the same time appear to support what she considers cultural appropriation. Lamar, Top Dawg, Marvel Studios and Disney have not yet responded to the allegations.

In an attempt to settle this allegation as quickly as possible, and indeed – to protect the narrative of promoting African and African American artists in general – Black Panther producers may simply choose to give Viktor an apology and a considerable licence fee. Given that the film is expected to smash box office records, and the Black Panther soundtrack has likewise become a hit with audiences, coming up with compensation is unlikely to be too much of a problem.

Legal Careers: Applying for Training Contracts & Vacation Schemes

Legal Careers: Applying for Training Contracts & Vacation Schemes

It was a little over four years ago that I secured my training contract. Now that I’ve successfully been through the process myself, here are a few tips on applying for training contracts and vacation schemes that I hope you might find helpful.

It goes without saying that one of the most important skills any solicitor can have is the ability to organise and prioritise. One of the most helpful systems I implemented during my year-long search for a training contract was an extensive spread sheet.

To begin, I listed out the main information of 100 or so firms with offices in London. This was a dispassionate research task: I tried to separate any emotion I felt regarding rankings or website design.

My research considered:

  • what the application process entailed (verbal reasoning test? cover letter? assessment centre? presentation? panel interview?)
  • their big clients and main practice areas
  • the deadline for their application
  • the number of vacancies

I also looked at their salaries, which in retrospect only served as a distraction. If I had to do it all over again, I’d ignore the financial aspect and simply concentrate on recent deals and commercial awareness in relation to the firm’s core industries.

Conducting this preliminary research forced me to spend about 10-15 minutes acquainting myself with just how many firms are out there. I strongly encourage this approach at the outset, because I promise that there are fantastic firms beyond the magic circle, silver circle, and big-name US firms.

Narrowing down the application list was really difficult for me, and my ideas as to which firms to apply to changed often. Some suggestions I have for going from a seemingly endless list of firms to those you’ll actually be applying to are:

  • Group similar applications together. If you have a “mega-list” and a “maybe” list, take a look at your “maybe list” and compare the application forms. If a firm is only asking for a cover letter and a handful of standard questions (“why solicitor?” “why commercial law?” “what are the biggest challenges facing the legal sector today?”) it likely won’t take quite as long to complete when compared to a very bespoke application.
  • It might be better to complete several applications to firms that you’re not super-crazy about, versus spending your time hunting for THE ONE PERFECT FIRM FOR YOU. Spoiler alert: There probably isn’t one perfect firm for you. And even if there is, you might not be offered a place there. My heart breaks every time someone tells me, mid-July, that they’ve “only applied to one or two firms,” because they “just wouldn’t want to work anywhere else.”
  • Look beyond the numbers! I thought I’d have a better chance getting in with a firm that had 100+ vacancies, as opposed to a smaller firm. But the firm that finally offered me a contract actually only took 5 trainees per intake! Likewise, I wouldn’t worry too much about firm statistics such as PPP/profits per partner. Of course you want to be part of a business that’s doing well, but a lot can (and will!) change over the course of the next few years in the legal sector. A firm that’s doing marvelously today may struggle in a year’s time, and vice versa. Furthermore, indicators such as PPP don’t really tell the whole story. When you’re at the onset of your career, I’d suggest focusing on the things that will matter most to you, personally – things like time spent being mentored by senior associates or partners, your exposure to clients, opportunities for secondments or overseas seats, and the work/life balance you can expect to have.
  • Take things with a pinch of salt. It’s practically impossible to outsmart “the system,” because there really is no coherent system! Sometimes it just boils down to timing, luck, or some aspect of personality you cannot predict. I worked at a particular firm for 8 months, and did very well on the vacation scheme. I thought I stood a very strong chance to secure a training contract, but for whatever reason, I just didn’t have the right “vibe” for the two partners that led my final interview. Although it hurt to be rejected, I knew that I couldn’t take it (too) personally. What works brilliantly for some might not work for you.
  • If a firm looks good to you, APPLY. If a firm doesn’t look good to you (despite being the firm “everyone else applies to,”) DON’T APPLY. Just move on to something else. Don’t waste time agonising over the decision – you can always go back and submit an application later (before the deadline, of course) if you change your mind.
  • This may be an unpopular opinion, but I believe that applying to at least 10 firms is the best approach. In total, between applying for training contracts and vacation schemes in 2013 and 2014, I sent out over 60 separate applications. If you’ve done well at university and have already secured a vacation scheme (or even an interview for one) then the likelihood is that the quality of your applications is already there. It then becomes a numbers game. Once you’re confident in your answers (and have had someone else proof-read for grammar/spelling mistakes!) send the application off, and then send off another one. And another one. And another one. When I was applying for vacation schemes in December 2013, the very last application I made (the day before the deadline!) ended up landing me a week-long placement at a big international firm.

 

Good luck!

Cisco v Arista: what next for computer programs and copyright?

Cisco v Arista: what next for computer programs and copyright?

Computer programs are functional, but they are also “literary works” that may be protected under copyright law. In December 2016, Arista Networks defended itself against a $335 million copyright infringement lawsuit from Cisco Systems. Cisco is now appealing the decision.

Cisco Systems, the largest networking company in the world, is trying to prevent Arista Networks from building ethernet switches which partially rely on technology copied from Cisco. Now on appeal before Federal Court in California (9th Circuit), the legal question is whether aspects of the particular technology deserves copyright protection in the first place.

ethernet switches connect devices together on a network

Copyright protects creative expressions of an idea, but not the idea itself. This “idea–expression dichotomy” therefore limits the scope of copyright protection. In an earlier blog post, The Copyright Between Oceans, I explained how the scène à faire doctrine was used as a successful defence in a copyright lawsuit regarding the novel The Light Between Oceans, and its subsequent film adaptation. When scène à faire (French for “essential scene”) is applied, common or typical plot developments are denied copyright protection. This means that broad themes, storylines and ideas which are common in a particular genre remain free for use by authors, screen writers, and other artists.

In the United States, computer programs are considered “literary works” under the Copyright Act, 17 U.S.C. § 101. Accordingly, scène à faire may be applied to preclude copyright protection from aspects of a computer program which are common or otherwise “dictated by practical realities.” Practical realities include hardware compatibility, manufacturer design, and industry practice. Arista’s defence turns on this concept.

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UEFA scores goal against internet giants to prevent copyright infringement

UEFA scores goal against internet giants to prevent copyright infringement

Union Des Associations Européennes De Football (UEFA), whose members include 55 national football associations, organises some of the most famous and prestigious football competitions in Europe. Recently, UEFA obtained an injunction against the UK’s main retail internet service providers.

As a substitute for paid subscriptions to sport packages through Sky, BT and others, some football fans are instead using set-top box devices such as Kodi to connect directly to streaming servers via their IP addresses. A survey for the BBC found that 47% of adults have watched a football match through an illegal provider at least once, with 36% streaming matches at least once per month.

Infringement in this way is on the rise for two key reasons. Firstly, an increasing proportion of UK consumers mistakenly believe using devices to access unauthorised streams is lawful. Secondly, most people know they personally won’t face charges for pirating illegal streams.

UEFA therefore applied for an injunction against the internet companies themselves, relying on the principle of “online intermediary liability.” Online intermediaries are companies which provide the infrastructure and data storage to facilitate transactions over the internet. Examples of intermediaries are search engines, web hosts, and internet access and service providers (“ISPs”).

Rather than go after private users, copyright holders – such as UEFA, movie stuidos and record labels – consider corporate intermediaries to be more viable targets for lawsuits. Accordingly, if online intermediaries have actual knowledge of the copyright infringement, they may be liable for the illegal behaviour of their customers and viewers.

Services of intermediaries may increasingly be used by third parties for infringing activities. In many cases such intermediaries are best placed to bring such infringing activities to an end. — Recital 59, Information Society Directive (2001/29/EC)

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Google prepares for the first “Right to Be Forgotten” trials in England

Google prepares for the first “Right to Be Forgotten” trials in England

All human beings have three lives: public, private, and secret.
― Gabriel García Márquez

The European Union’s Court of Justice decision in Google Spain v Agencia Española de Protección de Datos, Mario Costeja González (“Google Spain”) confirmed the “right to be forgotten” for European citizens. This right is further enshrined in the upcoming General Data Protection Regulations (GDPR). Accordingly, European data protection law grants individuals a qualified right to have personal data relating to them removed from search engines.

This right is however considered by some to be a uniquely European phenomena, which resulted from one unusual CJEU judgement. Now, two upcoming cases against Google will be the first time in which the “right to be forgotten” will be considered by the English Courts. 

Two unnamed claimants, known only as NT1 and NT2, are bringing a companion case against Google to enforce their right to be forgotten. (NT1 v Google and NT2 v Google,  [2018] EWHC 67 (QB) (Rev 3))

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