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.

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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Facebook won’t stop the music

Facebook won’t stop the music

Before I started law school, I spoke to a lawyer at Universal Music about licensing, copyright, and other fascets of law pertaining to the music industry. Since becoming a lawyer myself, I’m even more fascinated by the ways in which commercial contracts, digital strategy, artists’ rights and expression interact with and shape each other: Facebook’s new global, multi-year agreements with Universal and Sony Music are perfect examples of such dynamism.

Facebook first inked a deal with Universal Music in late December 2017. The deal with Sony,  the largest music publisher in the world, was announced on 9 January. These deals allow Facebook and Instagram users to upload homemade video clips containing songs owned by Universal or Sony, without generating a takedown notice.

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Cease and Desist, Dilly Dilly!

Cease and Desist, Dilly Dilly!

I’ve written previously about cease and desist letters (also known as letters before action) regarding Taylor Swift and Netflix: as evidenced in these two instances, the standard legal documents can be ridiculous, cheeky, or even rather funny. But Budweiser recently took things to a whole new level when it used a medieval town crier to deliver a cease and desist handwritten scroll to Modist, a Minnesota brewery.

American beer company Budweiser launched Game of Thrones-like commercials set in the middle ages, with lords and ladies in authentic(ish) costumes repeating the nonsensical phrase “Dilly Dilly!” In one commercial, banquet invitees approach the king and queen to offer gifts. One man presents a six-pack of Bud Light to the king, who then exclaims, “Sir Jeremy, you are a true friend of the crown. Dilly Dilly!” The members of the royal court then all raise their Bud Lights in response, shouting “Dilly Dilly!” in approval. When the next guest presents a spiced honey mead wine instead of a Bud Light, the king tosses him into the pit of misery.

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Don’t sue the messenger

Don’t sue the messenger

From 1 October, the Intellectual Property (Unjustified Threats) Act 2017 offers new protection for professional advisers (including lawyers) involved in certain intellectual property disputes.

If the owner of a trade mark, patent or design thinks someone else is using their intellectual property without permission, they may be tempted to threaten legal action with a letter, social media post, or other communication. While these are not formal legal actions as such, making such threats can be very a effective deterrent strategy.

Because IP litigation can be both very expensive and commercially disruptive, most people will seek to avoid the cost and energy required to fight a court battle – even if they are confident that they are innocent. To address concerns that threats could be made without proper care, “threats provisions” were introduced into legislation in 1883. If someone finds themselves unjustifiably threatened with legal proceedings for alleged intellectual property infringement, they may be able to launch a counter-attack known as a “threats action.”

This protection is unique to only certain types of intellectual property, and serves to shield innocent businesses from intimidating behaviour. If successful, the threats action may result in an injunction against more threats, a public apology, and damages for injury to reputation.

But until recently, professional advisers – including lawyers – have been at risk of incurring personal liability, because any person could be sued for making an unjustified threat, even if it was simply made on behalf of a client. This is because any person making the threats could be sued – but “person” was not actually defined in statute (section 70A(1), Patents Act 1977). It could therefore be widely interpreted to the owner of the IPR in question, but their lawyers, too – as seen in Brain v Ingledew (a Firm) (No 3). 

It is easy to see how this could be awkward for a variety of reasons. To avoid being sued for an “unjustified threat,” lawyers may suggest skipping past the threatening letter and going straight to formal litigation. This may be confusing or unsatisfactory for a client, who might prefer to send a threat first in the hopes that it could resolve the issue out of court. Lawyers might also require an indemnity from their client, which could have a chilling effect on the relationship. The risk of having one’s lawyer being sued may also discourage an IP owner from asserting their rights in the first instance.

For the last several years, the Law Commission and the Information Commissioners Office have been reviewing these threats provisions, and considering amendments. They have determined that threats actions could be used tactically to drive a wedge between legal advisers and their clients, or to drive cases to court rather than encourage negotiations over settlement.

Accordingly, under the new Intellectual Property (Unjustified Threats) Act 2017  a new protection has been introduced for regulated professional advisers where they act on client instructions, and identify their client in the communication (s. 70D(3), PA 1977). The protection extends to non-UK and non-EU advisers, as well as in-house counsel.