The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Monday, 19 March 2018

Swedish Supreme Court says that painting based on photograph is new and independent creation and hence … non-infringing

Mr Lemberger's picture (left) 
and Mr Andersson's painting (right)
Exhausted after several days of intense work, I (finally) afforded the luxury of watching some TV. Zapping my way through the channels, I stumbled upon something called “Domstolen” (ENG: “The Court”), a reality TV-show in the form of a reportage, based on somewhat recent court cases and judicial developments in Sweden. Just as I was about to zap away to the next channel there appeared a case concerning copyright infringement.

The case reported is colloquially known as Swedish scapegoats – a case from 2017 that made all the way up to the Swedish Supreme Court, and concerned a copyright dispute between the author of a close-up photograph and the author of a painting that was based on that photograph.

Markus Andersson is a Swedish artist who primarily paints images in oil and watercolor. In 2006 he was invited to exhibit his oil paintings at the Moderna Museet in Stockholm (The Museum of Contemporary and Modern Art). Mr Andersson exhibited a number of oil paintings of Swedish people, represented as scapegoats (a scapegoat is someone that is used to lay the blame on for all that goes wrong). Amongst others, there was a painting depicting the prosecuted – but subsequently freed of charges – Christer Petterson, ie the alleged murderer of former Swedish Prime Minister Olof Palme.

The portrait used as a basis for the painting of Christer Pettersson was a photograph by Jonas Lemberg. Mr Lemberg had followed and photographed Christer Petterson for a few days in 2005. One of the photographs taken by the Mr Lemberg was a close-up portrait of Christer Petterson that was consequently circulated on Swedish media.

The painting

The painting used dull colours in a rugged landscape and – compared to the photograph - featured a goat depicted in the upper right corner in the background. A photograph of the painting was subsequently uploaded onto Mr Andersson’s website and also sold in poster format.

When finding out about the painting, Mr Lemberg claimed that the artist had infringed the copyright in his close-up portrait of Mr Christer Petterson. 

The District Court and the Court of Appeal’s decisions

The Solna District Court held that, because main focus of the painting was Christer Petterson, which was also the case in the close-up photograph, the painting could not be considered a new and independent work, but rather an adaptation of the original work. This was the case despite the alteration of the environment, such as the dull colours, the rugged landscape and the goat. 

The Court of Appeal, however, held that the painting could not be regarded as an adaptation of the close-up portrait but rather as a new and independent work. In the Court of Appeal’s judgment it is stated that “the face of Christer Petterson has … been highlighted and the face seems less angular than in the photograph. In addition, the colours in the painting are more subdued and adapted to the background, which also causes some differences in how the light falls over the face”.

The Swedish Supreme Court

The main issue subsequently raised before the Swedish Supreme Court was whether the work in question should be regarded as an adaptation of the photographer’s existing work or rather as a new and independent work.

According to 4 § of the Swedish Copyright Act (SCA), a person who has made an adaptation of a work or shall have copyright in the work in the new form, but the right to exploit it shall be subject to the copyright in the original work. Hence, the exclusive rights of the author of the adaptation would be dependent on the original photographer’s rights. The former would therefore not be allowed to dispose of the painting by, for example, making copies of it without obtaining the prior approval of the original copyright owner. If however the work was regarded as an independent work, the artist’s rights in relation to his painting would be separate from the photographer’s rights and he would be free to exploit his painting as he wishes. 

The IPKat reflects on 
scapegoats and adaptations
According to the preparatory works for 4 § SCA, for a work to be regarded as an adaptation of the original work, the adaptation must leave the individuality and form of the original work unaffected. The original features of the original work must therefore be left unaltered in the work as adapted. In order to receive separate copyright protection, instead, the adaptation must be so independent and original that a new work would be created, taking into account, inter alia, the older work that has been used as a model. 

If the artistic individuality that embodies the older work appears as dominant in the new work, then it would be merely regarded as an adaptation. If, however, the new work is characterized by the author’s own expression of individuality and originality, it would be regarded as a new and independent creation.

In making its assessment, the Supreme Court stated that the painting must be considered in its entirety. Hence, even though Christer Petterson is at the centre of the painting, the dominant composition thereof essentially differs from the photograph. The dull colours, the rugged landscape and, above all, the symbolic goat – all give the painting a completely different meaning than the one conveyed by the original photograph. Instead of a strong close-up portrait, the painting conveys an allegory that suggests criticism of mass media’s need for scapegoats.  The painting is therefore a provocation in the form of commentary: Christer Pettersson is only portrayed a subject that has been prone to such media attention. Together with the goat, he is the carrier of such a symbolic message, a message which is also emphasized by the colours in the background.

The Supreme Court, therefore, held that the artist had transformed the photograph in such a way that he had created a new and independent work that gives expression to the painter’s individuality. Therefore he had not infringed the photographer’s rights over the underlying photography of Christer Petterson.

While the case might seem rather peculiar, it is interesting because it protects transformative uses of existing works … is this the Swedish fair use doctrine?

Will trade mark law stop Marine Le Pen’s new campaign?

Marine Le Pen, current leader
of 'Front National'
Last week, Marine Le Pen, leader of the political party National Front (‘Front National’), announced the re-branding of her party, following a defeat in the latest presidential elections in France. A new name, a new team, and a new programme, are all on the cards. The National Front is now to be called ‘Rassemblement national’ (read: National Rally). The objective is to ‘soften’ the image of the National Front, and thereby to distance the party from its tumultuous past (here and here).

Ironically, perhaps, this is not the first time that the name ‘National Rally’ has featured as the name of a national party. Indeed, it had already been used by a collaborationist party known as ‘National Popular Rally’ (‘Rassemblement National Populaire’), founded in 1941 by Marcel Déat during the period of Vichy France (through 1945) (here).

Evidence of prior use of the phrase
'National Rally' by the National Front
in the 1986 elections
In fact, the phrase ‘National Rally’ had already been used by her father (Jean-Marie Le Pen) back in 1986 (here), and Marine Le Pen claimed that the party had registered it as a trade mark with the French Intellectual Property Office. However, there  does not appear to be any evidence that any such application was ever filed on the behalf of the National Front or its key members (past or present), much less than it was ever registered or renewed. That said, the French Intellectual Property Office (INPI) advised the press (here) that it is still checking whether an application was indeed filed back in 1986.

'RN Rassemblement National'  (National Rally) 
mark purchased by the 'Front National' f
rom Mr Bigrat
As for the new brand, a number of registrations for similar signs, owned by other right holders and in other classes of goods and services, appear on the INPI registry (here). For example, the INPI records show that the ‘Rassemblement national Nin-Jutsu’ (read: National Gathering of Nin-Jutsu) used by an association dedicated to the martial arts is registered (here) and already in use (for the classes 16, 25, 28, 41).

There is one registered mark, using the exact same phrase for the purposes of an (apparent) political association, that might have prevented the National Front from using its new brand. However, contrary to what was reported online, the ‘National Front’ was able to purchase this mark from its right holder, Mr Frederick Bigrat, on 22 February 2018, and it can be expected that the records of the French Intellectual Property Office will indicate the re-assignment of the mark soon.

As such, the apparent controversy on the ownership of the trade mark, which occupied the national press for the best part of last week, had in fact been resolved before it even started. Having said that, commentators (here and here) have rightly noted that the other right holders may still file an opposition or pursue other proceedings to prevent a claimed risk of confusion following the renewed attention given to the mark by the National Front.

Sunday, 18 March 2018

Unlawful street art used in a promotional campaign: H&M withdraws its complaint

The H&M advertisement
Street art and copyright have been increasingly at the centre of attention. Katfriend Angela Saltarelli (Chiomenti) reports on a case that was initially brought by H&M against a street artist and – nearly as fast as the creations of fast fashion-focused businesses -  has been now settled.

Here’s what Angela writes:

“H&M, the famous Swedish fast fashion retailer, sued on March 9 last an LA-based graffiti artist, Jason “Revok” Williams, before the US District Court for the Eastern District of New York, requesting a court order that would enable the company to use Revok’s artwork in the background of its new men’s sportswear campaign called “New Routine”, without paying any royalty.

Before the lawsuit, on January 8, 2018 the street artist had sent H&M a cease and desist letter, complaining about the unauthorized use of his artwork in the fashion retailer’s new campaign, requesting compensation for copyright infringement, negligence and unfair competition.

H&M reverted back to Revok’s letter with this complaint, arguing that the graffiti was unlawful and constituted mere vandalism. The retail giant claimed that the making of an illegal act, including criminal trespass and vandalism to the detriment of property of New York City, would entail that the artist does not own any enforceable copyright on his work.

On a subsidiary basis, H&M stated that its production team for the campaign went to the New York City Department of Parks and Recreation (“DPR”) to request whether it needed to pay royalties for using the graffiti images as part of its campaign. H&M stated that DPR confirmed that the company should not pay anything.

This case created in few days a heated debate in both the legal and artistic community [see, eg, here].

As to legal debate, some commentators have held the view that the US Copyright Act does not make any difference between artworks that have been legally created and those which have not, only requiring the work to be original and created on a fixed medium. On the other hand, others have submitted that illegal artworks are not copyrightable, because they fail to promote the progress of science and useful arts, as stated in the US Constitution.  

As to the artistic community, street artists lashed out at H&M harshly over the past few days … so much that last Friday H&M announced via Twitter to have withdrawn the court complaint, saying that it “respects the creativity and uniqueness of artists, no matter the medium. We should have acted differently in our approach to this matter. It was never our intention to set a precedent concerning public art or to influence the debate on the legality of street art.”H&M announced also that they contacted Revok to find an amicable solution.

The legal debate over copyright protection of street art created in conditions of unlawfulness remains therefore open.”

Friday, 16 March 2018

Friday Fantasies

IPKat is here with your weekly update of IP news and events! This week we have news of the ratification of the Hague Agreement by the UK, a new IP inclusive group and a number of seminars and events on copyright reform. 

UK ratifies the Hague Agreement

The UK has ratified the Hague Agreement Concerning the International Registration of Industrial Designs. The agreement will come into force on 13th June 2018. Since 2008, it has been possible to achieve design protection for the UK through the Hague system via the EU’s membership. UK ratification of the Hague Agreement will allow access to the UK as a contracting party in its own right.  

Changes in New Zealand

Amendments to the New Zealand PatentDesign and Trade Mark Regulations have recently been notified. The amendments include changes to micro-organism deposit requirements for patent applications and changes to the extension of time provisions for filing a counter-statement in patent revocation proceedings. See the recent statement on the changes from the New Zealand Intellectual Property Office for further details. 

IP Inclusive

Last month Baker McKenzie hosted IP & ME’s inaugural event, which went ahead in defiance of "The Beast from the East". The theme of the event was Chinese New Year and the speakers were Jenny He (IBM) and Gabriel Goh (Taylor Wessing). Attendees learned about Chinese New Year and how it is observed by businesses in China and other countries. 

Maneki Neko
Next month will see the launch of IP Inclusive's new initiative Careers In Ideas. The launch party will be held at the Royal Society of Medicine on Tuesday 10th April 2018. See more details on the IP Inclusive Blog. Careers in Ideas aims to raise awareness of all types of jobs within the IP sector, from those suitable for school-leavers to those that require further education. 

IP Strategy Survey

AISTEMOS is a London based IP data analytics company. They are currently conducting a survey on IP strategy, focusing on the impact of disruptive technologies, such as blockchain and AI, on the attitudes to IP within organisations. See here to participate in the survey. AISTEMOS's report on their IP strategy survey last year can be found here

The IV Edition of More Than Just A Game (MTJFG) will focus on Culture, Identities, Freedoms & Artificial Intelligence, and will be held on Thursday 5th to Friday 6th April 2018 at Ironmongers Hall, Shaftesbury Place, London EC2Y 8AA. The focus will be on the impact of "AI and Immersive Technologies on Interactive Entertainment and our Culture, Identities and Freedoms". During the two days of the conference, leading international academics, publishers, lawyers, industry experts and policymakers will discuss a wide range of legal and regulatory topics, including Intellectual Property Law, Technology, Content & Communities Regulation, Data Protection and Privacy, E-sports and Streaming, Monetisation Regulation and Loot Boxes. The full programme and registration can be found here

EU copyright reform

Geo-blocking is the practice of restricting or denying access to certain services or content outside a specified territory. As part of the Digital Single Market Strategy, the Council of the European Union recently adopted the EU Anti-Geoblocking Regulation, now published. See more on the history of the EU's approach to geo-blocking herehere and here.

COMMUNIA is an EU project with the stated aim of advocating "for policies that expand the public domain and increase access to and reuse of culture and knowledge". Next week COMMUNIA is organizing a series of European Copyright Action Days in Brussels, in order to highlight "the broad opposition of civil society, libraries, the users, industry and many others concerning the restrictive aspects of the copyright reform proposal [Copyright in the Digital Single Market Proposal]" (Kat post here). Full details of the planned events can be found here

In the library
If you want to learn more about the issues involved in copyright reform, The City Law School is hosting a free seminar: Exceptions, Institutional Uses and the Construction of Copyright Norms, on the evening of 6th April 2018. The seminar will focus on one of the most controversial areas of EU copyright reform: the use of works in institutions such as libraries, museums, archives or schools. The speaker is Professor Guido Westkamp from Queen Mary University. See here for full details and registration. 

There will be another free seminar at The City Law School on 20th March 2018 on Derivative Works in Copyright and Improvement Inventions in Patent Law. The seminar will particularly focus on comparing the different approaches of copyright and patent law  to second-generation creators and inventors. Would a patent-like approach to copyright help promote creativity for the public benefit? The speaker is Professor Maurizio Borghi from Bournemouth University. More information can be found here

WIPO roving seminar series

The WIPO roving seminar series continues. There will be a free Slovenian Roving Seminar on WIPO services in Ljubljana on 27th March 2018. The event and materials will be in both English and Slovenian. Additional information, such as the seminar’s programme and a link to the registration page, can be found here

Ljubljana, Slovenia

The protection of genetic resources, traditional resources and folklore 35 meetings later…

In a few days it  will be time for the next meeting (the 35th one in fact) of the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore. Between the 19th and the 23rd of March, the members of the Intergovernmental Committee will convene in Geneva to discuss issues related to the protection of traditional knowledge, genetic resources and traditional cultural expressions. (This body is a WIPO Intergovernmental Committee with the mandate to conduct text-based negotiations for the adoption of legal instruments for the protection 
of traditional knowledge, genetic resources and folklore).

A quick review of the agenda reveals that the majority of issues that will be discussed are reports on the implementation of earlier decisions. Some of them are based on and refer to decisions that were adopted already in 2001.

In addition to the usual agenda points concerning the accreditation of organisations, the participation of indigenous communities and the discussion on voluntary funding to enable their participation, this meeting will consider the following documents:

This 47-long page document includes a long list of definitions of key terms used with regards to the exploitation of traditional knowledge, genetic resources and traditional cultural expressions as well as those that concern mechanisms used in order to facilitate the fair and equitable sharing of the benefits arising thereof. The glossary is a revised and updated version of earlier documents with similar content. It is not a surprise that the glossary adopts definitions that have been previously used by other major international legal instruments, such as the Berne Convention, the FAO International Treaty on Plant Genetic Resources for Food and Agriculture and the (UNESCO) Recommendation on the Safeguarding of Traditional Culture and Folklore.

Although 47 pages of glossary might seem nothing more  than an expression of exaggerated formalism, reaching consensus on the meaning of terms that are part and parcel of the structures for  providing adequate protection for traditional knowledge, genetic resources and folklore has proven a daunting task. As stated in the document, even the fundamental term of “traditional knowledge” does not enjoy a definition that is acceptable by all. A disappointing statement one would say after over 17 years of negotiations.

This document provides a review of available resources  on the WIPO website, databases, materials and information that may be accessed by visiting It also presents a series of available activities, such as seminars, workshops and publications.

This very short document confirms that the IGC Secretariat continues to work on the accessibility and further use of online contractual clauses and guidelines for the drafting and negotiation of benefit sharing agreements. Nothing new here, it is just keeping up with the previous contributions.

This document  includes a list of resources (documents developed   both by the Secretariat as well as such those that have been proposed by Member States), concerning the documentation of traditional knowledge and genetic resources as well as the compilation of such knowledge in databases.

This report includes all relevant resources and activities by  WIPO and Member States concerning disclosure requirements and their connection to the patentability of inventions based on TK. In addition to discussing  relevant  regional and national initiatives, there is also a database with national legislation regulating the disclosure requirement. 

This document, submitted by the delegations of Canada, Japan, Norway, the Republic of Korea, the Russian Federation and the United States of America concerns a proposal for a further study to be based on national experiences as they relate to a set of questions concerning the disclosure requirement and the effect it has had in practice. Some of the questions posed are of considerable interest according to this Kat, namely: 

“If there was a disclosure requirement, did the Office also require disclosure of prior art that is material to the patentability of the invention? If not, what was the basis for having a disclosure requirement of the source of GR and/or TK, but not on prior art that is material to patentability? Does disclosure improve examination? How often was the source or origin material to patentability? For countries whose IP law requires disclosure, was there also a national law related to misappropriation or misuse of GR and/or TK?
Does the Office provide a mechanism for third parties to submit information material to patentability to a patent application?”

Such a review  could provide interesting insights into the link between the protection of TK and genetic resources and the patentability of inventions. One aspect that, surprisingly to his Kat, is omitted t of the long list of questions  regarding  how the Nagoya Protocol (available here) has been implemented and whether it has had any impact  on how the disclosure requirement is applied and on the effects that it has had.
The 35th meeting of the Intergovernmental Committee; a step closer to the protection of traditional knowledge? 
Image result for cat traditional knowledge
What will this IGC meeting bring?
From the documents submitted, a major part of the 35th meeting of the Intergovernmental Committee will be dedicated to discussing past decisions and activities (some of them already 15 years old).  It  does not seem that the Committee will include the discussion of any novel documents.   Still, planning for a future study on the disclosure requirement is a necessary step in getting a grip on whether twenty years of negotiations in the Committee, as well as the entry into force of the Nagoya Protocol (which in fact omits reference  to the patent-related aspects of the disclosure requirement), have had an impact on this  concrete link between the protection of TK and genetic resources and the patent system. And yes, this might be a step closer to the protection of traditional knowledge, even if it is a tiny one.

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