QMJIP

Queen Mary Journal of Intellectual Property

Month: February, 2015

Is the Monopoly era of Collecting Societies coming to an end?

by eleonoracurreri

Apparently this is the new rising scenario in Italy that might be spread all over Europe.

Everything started when a smart start-up had been launched in 2011, Soundreef. Since the beginning it was clear to its founder, Davide D’Atri, that Soundreef would have competed on the market place with other European Collecting Societies, a very ambitious goal since CMOs have always had a monopolistic role in the rights management. The way in which Soundreef grew in the last couple of years is extremely fascinating and it is evident that this phenomenon will have a strong impact on the traditional role and functions of Collecting Societies throughout Europe.

Basically, the kind of activities undertaken by the Italian start-up can be divided into two categories: IN STORE, that licenses music used in the stores reaching over 45 million customers who can choose their playlist from a catalogue of over 170.000 songs (allowing store owners to save up to 50% on what they would have paid to collecting societies for the same service) and Soundreef LIVE, a system that offers to all the registered artists the possibility to receive royalties from their live performances.

Another factor that helps in understanding the significant success of Soundreef is its efficiency. For instance, regarding the Live system, Soundreef is incredibly fast in giving back royalties to the artists. Not only efficiency but also transparency is a secret of its success. Every artist, publisher or editor has an online account, continuously updated, that provides information concerning how much he or she has earned and will be paid, and at what time and in which place the music has been played.

The founders of Soundreef decided to compete with the collecting societies since the European Commission affirmed, in 2008, that the creation of a cross-border market for royalty collection is preferable. For this reason, Davide and his friends incorporated Soundreef in London where it mainly operates while serving 13 other countries, including UK, USA, Italy, France, Spain and Sweden.

As the numbers grows in favour of Soundreef, the traditional Collecting Societies should be aware of this new reality. SIAE, the Italian CMO, pointed out that the start-up does not protect users against a potentially abusive use of their works no longer managed by SIAE and that the mandate of Soundreef is not legitimate.

There is no question that a lawsuit between the two rivals in the royalty management field would be deeply interesting, but it is far more interesting that Soundreef has been sued by a private author, Laura Piccinelli, filing a precautionary injunction arguing that Soundreef infringed the exclusivity granted to SIAE. According to the Italian Judge, not only were the prerequisites for the injunction not met, but also the activity undertaken by Soundreef is absolutely legitimate as it operates accordingly to the principles of the Directive 2014/26/EU, playing a crucial role in the creation of a single digital market, underlying the obsolescence of Art. 180 of the Italian Copyright Act[1].

The claimant filed an appeal since she insisted that Soundreef infringed the intermediary activity SIAE is entitled to. The Judge of Appeal declared, in accordance with the Judge of First Instance[2], that the SIAE exclusiveness shall be applied only to music works composed in Italy or by foreigners who are domiciled in Italy (Art. 185 ICA). Soundreef manages music and rights that belong to foreign composers and as a consequence there is no infringement of the prerogatives of SIAE.

Even though the ruling of the Court of Milan simply interpreted Art. 180 in the light of the Directive 2012/26/EU and it does not represent the end of SIAE monopoly, certainly it is significant. This decision tries to expand the exclusive prerogatives ever since attributed to SIAE. Furthermore is the clear that the Soundreef phenomenon is increasing very quickly and that in the future it will represent a serious threat to the traditional Collecting Societies as it might inspire the rise of other startups in this field.

Eleonora Currieri
Assistant Editor, QMJIP

Further information on Soundreef is available via their website:  http://www.soundreef.com/en/

[1] Legge 22 Aprile 1941 n.633

[2] http://www.tafter.it/wp-content/uploads/2014/11/Ordinanza-20443671-Rigetto-Reclamo-Piccinelli.pdf First Instance Decision

Will 3D Printing Destroy the Copyright in Manufacturing Industry?

by baixuege

Although the earliest 3D printing technologies were visible in the 1980s, little attention was paid at that time. Since the first commercial 3D printer has entered public consciousness and been offered to sale in 2009, 3D printing has become more common and available. It is applied not only in the military, engineering, and automotive, but also many other industries. There are even 3D printing workshops in big cities like New York and London. It is possible now for everyone to print materials as they like with the 3D printer. In the foreseeable future, 3D printers may follow the steps of personal computers, and it is not impossible that families will have their own 3D printer. That is amazing and convenient, but potential problems also come along.

Any of the various processes used to print an object in three-dimensional form is regarded as 3D printing. Different 3D printing processes involve different technologies and materials. Basically, the start point is a 3D digital model. This can be done with various kinds of 3D software programs or scanning an existing item by a scanner system. The most widely used process is Fused Deposition Modelling (FDM). The FDM process melts plastic material and puts it together layer by layer on the build platform to print the object according to the 3D model that has been supplied to the 3D printer. Another popular method is named Selective Laser Sintering (SLS). SLS uses lasers to fuse the powdered material selectively to form the three-dimensional object and gets the end product after cleaning the excess powder. As previously mentioned, no matter which method is used in the print process, the original object or a 3D design is needed. From the file preparation to the final printed object, intellectual property rights exist all the way round and are being potentially infringed.

Obviously, customers are able to manufacture dishes, spectacle frames, toys, accessories and so on. As the technology is getting more mature, it will be possible for customers to print a chair, a table, and even a boat or a car using 3D printing in the future. The technology is developing more quickly than the law. Some scholars predict 3D printing will have an impact on the manufacturing industry similar to that of MP3 files on the music industry. Sharing the 3D data files and printing the objects by the 3D printer will lead to countless similar or even exact copies of the original designs and products. What is worse, by downloading an MP3 file you just get a copy, you cannot say that this song is written by you. But after downloading the 3D data file and printing it, you can say the product is made by you in some way.

The intellectual property rights can be infringed by a 3D data designer, the website in which are the files shared, and anyone who prints the object. Patent and copyright of the designs can hardly be protected in the digital environment, and now it is not just the people and company who owned the machines and technology who have the means to copy the copyright works.

The law is perhaps easier clearest in respect of patents. In most jurisdictions, an infringement of patent rights may occur where the defendant has made, used, sold, offered to sell, or imported an infringing invention or its equivalent. Under this definition, anyone using the 3D printer to print a patented item would be an infringer.

Copyright is vulnerable even when the 3D data have been put online. File-sharing and any methods used for unauthorized dissemination will potentially injure the copyright of the first designer and printer. It provides access to people who might be able to copy the authorized works by 3D printer. However the judicial system cannot monitor every individual’s behavior. It seems impossible to prevent the infringements only by law.

But there is also a positive side to the problem. Copying and infringing do not bring legal injuries only, attendant technology developments occur. Driven by the potential infringements that can be hardly prevented, new security measures around IT databases may soon be developed. Basically, the system functions by making the data unavailable in personal computer terminals. Updated and unique materials in the manufacturing process would be indispensable. For instance, it is unreasonable for a family to have the material to print all the components of a car. Obstructions to potential infringements will therefore be set up technically. Besides the law, every industry has its own internal regulation, the problems that brought by the technology always can be solved by the technology.

3D printing seems to be trying to destroy the manufacturing industry in a constantly updated way. Existing legislation is not enough to follow up the developments. Where the law is blank, maybe the technologies against infringements should dominate.

Bai Xuege
Assistant Editor, QMJIP

German Federal Patent Court declares Nespresso’s capsules patent invalid

by Axel P Ringelhann

On 12 February 2015, the 2nd Division of the German Federal Patent Court decided on an appeal by the Swiss company Ethical Coffee Company in the ‘Nespresso case’.

The appellant markets coffee capsules compatible with the ‘Nespresso’ system for which Nestec SA (‘Nespresso’) holds the European Patent 1 646 305. The patent at issue consists of ‘an apparatus for extracting a cartridge’, coffee machines equipped with such a mechanism, and a combination of such a device and capsules.

Numerous legal disputes with respect to the aforementioned patent, both in Germany as well as abroad, have been – and still are – discussed at Court. In a similar case in the UK, in 2013 J Arnold held in Nestec v Dualit  the majority of Nestec’s patent claims invalid due to lack of novelty and found Dualit – a company which produced and marketed capsules similar to those of Nestec – not to have committed any act of infringement.

Also in the case at hand the deciding Court declared Nespresso’s patent invalid. The decision has not been published yet.

Axel P Ringelhann
Assistant Editor, QMJIP

Art & Pornography – A critical analysis

by Josh Jaskiewicz

The aim of this post is to recall a recent and controversial event that has yet to be explained without arbitrary judgment on modern morality. That event was on Tuesday 1st of December, when the Audiovisual Media Services Regulations 2014 introduced restrictions on pornography produced and sold in the UK. The amendment to the Communications Act 2003 effectively censored a list of sex acts by demanding that online pornography adhere to the same guidelines set out by the British Board of Film Censors.[1]

The legislation, which was the result of heavy lobbying, and passed in the name of protecting children from obscene content, has the wider and more repercussive effect of state control of internet content. Those hardest hit are without doubt the independent pornographic producers, but also, without mention, those artists who wish to explore the boundaries of morality through provocative and erotic art.

Without entering into a moral discussion on the pros and cons of the aforementioned legislative changes, the purpose of this post is directed toward a different exploration: whether or not art can be clearly distinguished from pornography. In particular, my aim is to elucidate the different characteristics of art and pornography and explore how the law has obfuscated the ability to clearly distinguish the two. Prior to further analysis I intend to address the difference in meaning of art and pornography in both their ordinary and statutory context. This becomes important as it reveals the inadequacy and futility of the legal attempts to control sexual imagination[2]. The difficulties in distinguishing the two become apparent through inconsistent legal interpretation which has been insensitive to art’s unique, culturally distinct, ontological form[3] that has changed over time.

Instead the law has provided vague and elastic formulae, permitting debates over morality that fit uneasily into the format of a criminal trial[4]. This post will aim to separate art from pornography as far as is possible through an analysis of judicial and ordinary approaches in Anglo-American jurisprudence. In doing so I hope to clarify current and potential tensions arising with the right to freedom of expression and any overlaps between art and pornography.

Ordinary and Statutory definitions

“…In the world, a lot of people know the difference between pornography on the one hand and art, literature… on the other. Such materials are not pornography – and, frankly, everyone knows they are not”. [5]

Mackinnon and Dworkin’s definition of pornography arises from the feminist civil rights ordinance which is more detailed to place emphasis on “the graphic sexually explicit subordination of women through pictures or words[6]. This definition is noteworthy, as we will see later, it sheds light on some of the difficulties associated with distinguishing art from pornography due to art’s subversive quality. Needless to say, the word ‘pornography’ enjoys a more definitive definition. Originating from the Greek ‘Pornographosto mean ‘the writing of harlots’[7]. Its agreed categorical effect is that which intends to sexually arouse in the interest of sexual release[8].

The definition of art on the other hand is not so axiomatic. To begin to understand the complexities in distinguishing art from pornography it is necessary to consider art in its most recent context: ‘Modernism’. It was a particular phase of this movement – ‘late Modernism’ – that became the focus of Post-Modern art[9]. It distinguished between good art and bad art[10] by demanding that good art was determined by self-criticism, self-definition and elimination of elements from other disciplines[11].

In a post-modern era, however, ‘art’ violates any definition we give it[12] consequently creating dialectic tensions with the law in attempts to apply any one standard. Modern art depends on co-opting, reversing and destabilising words and images[13] rather than creating new original works. Contemporary artists have thus embarked on a wide scale appropriation of political and socially charged issues including sexuality, religion and hate speech[14].

As Jacques Derrida points out “All destructive discourses… must inhabit the structures they demolish”[15]; art can take a subversive role in appropriating pornography for explicitly activist purposes[16]. Merry Alpern’s work for example employs explicitly sexual images, in particular a series of photographs of prostitutes through the window of a brothel.  To some the art would be sexually arousing and for others degrading and even obscene. However the scope of her work is to provoke viewers to consider a feminist point: the exploitation of women who work in the sex industry, and the sexual abuse of women in general.[17]

The difficulty is that through this subversion such art will indadvertently fall into Mackinnon and Dworkin’s definition[18] of pornography and collaterally within the legal realm of obscenity.

The closest definition of art by statutory instrument can be found in s.4 of the Copyright and Patents act Act 1988. An artistic work is to mean, i. a graphic work, photograph, sculpture or collage, irrespective of artistic quality, ii. a work of architecture be it a building or a model, or iii. a work of artistic craftsmanship[19]. The difficulties with such a definition is the ‘artistic quality’ of a work of art as presented in Hensher[20] . The law excludes evaluation of artistic merit from its testing as it is deemed not to be an arbiter of taste[21]. However in Hensher, the Court of Appeal found itself struggling to conclude without considering ‘artistic quality’ to have some aesthetic appeal to the work as well as considering expert evidence and creator’s intentions[22]. One can see then how the law’s disregard for artistic merit would be problematic if hypothetically applied to Rauschenberg’s telegram in 1960 for a portrait gallery, reading: “This is a portrait… if I say so”[23]. The distinction between what is art and what is not in examples like this lies solely in the artist’s intention[24] . It can be argued that assessing artistic intention is outside the scope of the law or at least limited to the art critics and not the judges.

The dilemma then in distinguishing art from pornography from a legal perspective is reduced to the fact that both are not appreciated for their intended unique and distinct qualities. Instead, they are adjudicated by their encompassing ability to ‘deprave and corrupt those whose minds are open to such immoral influences[25].

Until recently there was no legislation against pornography,  instead the appropriate statutory recourse fell within the parameters of obscenity and indecency,[26],  which has attributed much to the difficulty in separating it from works of art.  The Obscene Publications Act 1959 is aimed to prevent decent people from being corrupted as opposed to merely offended[27]. Arguably then the distinction between art and pornography can be drawn by protection of its merit under s.4. Here a work of art that is deemed obscene may be exculpated on the ground that it is in the interests of science, literature, art or learning as a ‘public good’ defence[28]. It seems peculiar then why such protection is not afforded to the common law offence of ‘outraging public decency’ which denies a work of art the possibility to distinguish itself by virtue of any expert opinion. In R v. Gibson[29] the Court of Appeal upheld a public indecency conviction against an artist and proprietor of the art gallery. A work of art by definition of its context in a gallery, in addition to a number of distinguished critics prepared to testify its artistic merit, to deny it such a distinction as ‘inadmissible’ would seem rightfully inappropriate yet it is what followed in Gibson. This case remains an oddity yet it reflects a verdict wholly reliant on subjective moral standards and vague value judgements; as well as any tensions that arise in conflict to article 10 rights to receive and impart information and ideas without frontiers[30]. In Knuller[31] Lord Simon held that “outrage like ‘corrupt’ is a very strong word… goes considerably beyond offending the susceptibilities of, or even shocking, reasonable people”. An alternative approach would be to apply the ordinary meaning of  ‘outrage’ and ‘corrupt’ then at least an artist may know within which boundaries he may operate. The subjective and ambiguous nature of these value judgments in effect will only  work to chill freedom of expression for fear of prosecution.

It seems then that statutory and common law definitions of Obscenity and Indecency are inconsistent and offer limited insight in determining the difference between art and pornography. The very etymology of ‘obscenity’ itself is disputed. It has no such correspondence to tangible objects and so it remains relative and subjective in describing the reaction of an individual to a certain type of experience[32]. In addition, the Court of Appeal has persistently refused to define the common law offence of ‘outraging public decency’[33]. It becomes problematic then to rely on such indeterminate legal application to effectively distinguish art from pornography when attention is required to recognise the ontological peculiarity of art[34]; and not simply the penumbra of obscene or sexually explicit properties of both.

Judicial and Ordinary Interpretations

“Tell me what’s wrong with words or with you, that the thing is all right but the word is taboo!”

–  D.H. Lawrence       

There is nothing wrong with recognising that art is different to pornography, their similar qualities however cannot necessarily be imputed to the other[35].The stubborn Hicklin test entrenched in legal interpretation  has made to ‘deprave and corrupt’ mantra in assessing any sexually explicit material. The case Roth v. United States[36] redefined the Hicklin criteria to apply to the ‘appeals of prurient interest’, ‘patently offensive’ with no ‘redeeming social value’ in the light of ‘average, contemporary community standards’. When this was put to the test in Memoirs v. Massachusetts[37] the book ‘Fanny Hill’ was deemed obscene nonetheless. Despite not satisfying the ‘no social redeeming value’ criteria, the court found for the plaintiff on the grounds it could be used solely for its ‘prurient interest’. This shows the courts inability to distinguish that on the one hand we appreciate or relish art, and on the other we consume or use pornography[38]. It is unsurprising then that the leading United State’s case Miller v. California[39] appears to also be inadequate. Judicial attempts to establish a new test of whether the material has any ‘serious’ artistic or literary value[40] offers little protection to contemporary works of art that replace ‘sincerity’ with ‘cynicism’[41].

It was similarly antagonistic of Byrne J in the prosecution of D.H. Lawrence’s Lady Chatterly’s Lover to instruct the jury to consider the novel dispassionately on the details, emphasising the importance of the moral well-being of the community as a whole over that of self-expression[42]. Judge Woolsey’s position in the earlier ‘Ulysses’ case on the other hand was ethically correct in confirming the importance of the novel’s details. Although “many words usually considered dirty….Each word of the book contributes like a bit of mosaic to the detail of the picture which Joyce is seeking to construct for his readers”[43].

These two examples demonstrate the inconsistency in interpretation in the law, and that evaluating works of art remains a job for cultural critics and not judges[44] with a conservative moral outlook.

When obscenity distinguishes from pornography by reference to effect however, it follows that art as such is never pornographic[45]. The effect of art is not as specific and immediate as is comprised in the concept of pornography[46]. At most art may trigger a feeling which is already primed, it is argued then in its manner of working, and it ceases to be art[47]. Obscenity then, in relation to art, cannot be localised in intention nor in effect, but only in the expressive substance of the work of art itself[48].

In the furore caused by the publication of Salman Rushdie’s: the Satanic Verses in 1989, the court failed to acknowledge the appropriate psychic distance involved when approaching the ambiguity of art[49]. In noting that blasphemous libel was not exculpable by virtue of its artistic context, the divisional court failed to see art can incite no “real life” action other than the reader’s psychic reaction[50]. One cannot then reasonably attribute any manifestation of this reaction as the motive of the artist’s self-expression.

Art’s central aim is to evoke feelings, but these feelings are imagined and although reflective in character they are not a reflection of what we do and undergo[51]. What differentiates pornography and art are their central aims, pornography’s aim is distinguished by its categorical effect which requires minimal psychic distance and like advertising or propaganda is promotional in character[52].

According to Jerold Levinson there is art with a pornographic, or arousing dimension as there is pornography with an artistic, or aesthetically interesting dimension[53]. The line is drawn by virtue of opacity and transparency. Art will demand a cognitive response to its ambiguous and opaque medium which in turn will undermine the level of arousal felt by the viewer. In light of the Philanderer[54] case this would appear to be correct as it was held that pornography has “No message… no thought” and is therefore left to the most basic human reaction. Under this premise art is then distinguished by its culturally, cognitive quality where a relationship is created through a constructive process rather than simply provided through the image.

This distinction is not so clear when the cognitive aspect of the art in question is regarded as pornographic by nature. Klimt’s ‘Reclining Masturbating Girl, Rodin’s ‘Female Nude on All fours’ and more obviously Robert Mapplethorpe’s photography, can all be construed to be as arousing as any pornographic image although their artistic quality is infinitely greater[55]. Arthur Danto went as far as to point out that Robert Mapplethorpe “achieves images that are beautiful and exciting at once: pornography and art in the same striking photographs[56]. However when Mapplethorpe’s exhibition arrived in Cincinnati in 1988, what was a ‘normal’ exhibition turned out to be the impetus for intense debate on federal funding of the arts and ultimately the focus of an obscenity trail[57]. In this case art was being identified with obscenity or equivalently with pornography, however once the images were placed through verbal description and in a proper and bound context they were no longer publicly controversial or misunderstood[58].

Context can then be seen as an insightful tool in distinguishing art from pornography. Cutter J in the Tropic of Cancer[59] case stated in a “conscious effort to to create a work of literary art as having significance…  prevents treating it as hard core pornography”. In the Sensation and ‘I am a Camera’ exhibitions explicit images that were complained to be have obscene and pornographic qualities maintained their status as works of art through their presence in the gallery. It seems more reasonable to expect an individual in a gallery to engage in some deeper level of thought or abstraction than it is for the Law to attempt to police it.

Conclusions

Art, unlike pornography, is a legitimate culture set apart from the masses[60]. The difficulties in clearly distinguishing art from pornography have stemmed from the very definition and meaning of the words in addition to the subjective and elastic manner by which they have been regulated. As we have seen the rigid structure of the Law does little to compartmentalise ambiguous entities such as art[61]. The very existence of art’s ontological form calls attention to the inadequacies of such structures[62] in the law such as terms to ‘deprave, corrupt and outrage‘in the aim to expand and create new ones.

Vague and inconsistent judgements deemed to regulate on the other hand have proven to provide inadequately for artistic and cultural progression. As Lynda Nead points out, “only by examining the images that hover over the edges of acceptability is the viewer enabled to actively explore the place where meaning is constructed”[63].

What is clear from this argument is that there is no way to draw a principled distinction between ‘art’ and ‘pornography’; a substantial overlap between them will always exist[64]. The context of a gallery or an adult shop can indicate to what might be expected yet it does not preclude that within small subclasses of these domains collections of work may very well qualify as both pornography and art[65].

Josh Jaskiewicz
Associate Editor, QMJIP

[1] http://www.independent.co.uk/news/uk/home-news/uk-porn-legislation-what-is-now-banned-under-new-government-laws-9898541.html

[2] Geoffrey Robertson and Andrew Nicol, Media Law Fully Revised 5th Edition p. 194

[3] Paul Kearns , Criminal Law Review 2007, The ineluctable decline of obscene libel: exculpation and abolition, pp.4

[4] Media Law Fully Revised 5th Edition. Op. Cit. p.191

[5] Andrea Dworkin and Catherine A. MacKinnon, pornography and civil rights: A New Day for Women’s Equality (Minneapolis, MN: organizing against pornography, 1988) p. 38-9

[6] Amy Adler, What’s Left?: Hate Speech, Pornography, and the Problem for Artistic Expression, California Law Review, Vol. 84, No. 6 (Dec, 1996), pp. 1509

[7] Norman St. John-Stevas, Obscenity And The Law, Secker & Warburg 1956. pp.1

[8] Jerold Levinson, Erotic Art and Pornographic Pictures, Philosophy and Literature, Volume 29, Number 1 April 2005, pp. 230

[9] Amy M. Adler, Post-Modern Art and the Death of Obscenity Law, Citation: Yale Law Journal [vol. 99: 1359-1990] pp.1363

[10] Francis Frascina and Charles Harrison, Modern Art and Modernism: A Critical Anthology, Clement Greenberg in ‘American-Type’ Painting pp.94

[11] Wallis, Brian. “What’s Wrong With This Picture? An Introduction.” In Art After Modernism: Rethinking Representation. New York: The New Museum of Contemporary Art 1984. pp. 10–13

[12] Post-Modern Art and the Death of Obscenity Law, Op. Cit. pp. 1378

[13] What’s Left?: Hate Speech, Pornography, and the Problem for Artistic Expression Op. Cit. pp. 1519

[14] Ibid. pp. 1502

[15] Jacques Derrida, La Parole Souffile, in Writing and Difference pp.194 (Alan Bass trans, 1978)

[16] What’s Left?: Hate Speech, Pornography, and the Problem for Artistic Expression Op. Cit. pp. 1529

[17] Ibid.

[18] Supra note 5.

[19] Copyright, Designs and Patents Act 1988

[20] George Hensher Ltd v Restawhile Upholstery Ltd [1976] AC 64

[21] The Legal Concept of Art , Op. Cit. pp.66

[22] Artistic Works, 6 September 2010, A guide to artistic works, http://www.lawdit.co.uk/reading_room/room/view_article.asp?name=../articles/mc-1029-artistic-works.htm

[23] Post-Modern Art and the Death of Obscenity Law, Op. Cit. pp. 1376

[24] Ibid.

[25] R v. Hicklin (1868) L.R. 3 Q.B. 360 at 371

[26] Catherine Itzin, Pornography, Pornography, Women, Violence and Civil Liberties a Radical New View, pp. 401

[27] Paul Kearns , Criminal Law Review 2000, Obscene and blasphemous libel: misunderstanding art. pp. 1

[28] Obscene Publications Act 1959

[29] 2 Q.B. 619 (1990)

[30] Article 10.1, Freedom of Expression, European Convention on Human Rights

[31] Knuller v DPP [1973] AC 435

[32] Obscenity And The Law, Op. Cit. pp.1

[33] Media Law Fully Revised 5th Edition. Op. Cit. pp. 250

[34] Robert Stecker, Interpretation and Construction; Art, Speech and the Law, 2003, pp. 161

[35] Abraham Kaplan, Obscenity as an Esthetic Category, Law and Contemporary Problems, Vol. 20, No. 4, Obscenity and the Arts (Autumn, 1955), pp. 550 -551

[36] 354 U.S. 476 (1957)

[37] 383 U.S. 413 (1966)

[38]Erotic Art and Pornographic Pictures Op. Cit. p.229

[39] 413 US 15 (1973)

[40] Paul Kerns, The Legal Concept of Art, Hart Publishing Oxford 1998, pp. 44

[41] Post-Modern Art and the Death of Obscenity Law, Op. Cit. pp. 1364

[42] The Legal Concept of Art , Op. Cit. p 41-42

[43] United States v. One Book Called “Ulysses,” 2 F. Supp. i82, I84 (S.D.N.Y. 1933), aff’d, 72 F.2d 705 (2d.Cir. 1934).

[44] Eric Hoffman, Feminism, Pornography, and Law,  University of Pennsylvania Law Review, Vol. 133, No. 2 (Jan., 1985), p. 508

[45] Obscenity as an Esthetic Category, Law and Contemporary Problems  Op. Cit. p. 549

[46] Ibid.

[47] Ibid.

[48] Ibid

[49] Obscene and blasphemous libel: misunderstanding art. Op. Cit. pp. 3

[50] Ibid.

[51] Obscenity as an Esthetic Category, Law and Contemporary Problems  Op. Cit. pp. 549

[52] Ibid.

[53] Jerold Levinson Erotic Art and Pornographic Pictures Op. Cit. p 237

[54] R v. Martin Secker & Warburg 1WLR 1138 (1954)

[55] Hans Maes, Art or Porn: Clear Division or False Dilemma? pp. 58

[56] Arthur C. Danto, The Abuse of Beauty: Aesthetics and the Concept of Art (Chicago: Open Court, 2003), pp. 82

[57] Judith Tannenbaum, Robert Mapplethorpe: The Philadelphia Story, Art Journal, Vol. 50, No. 4, Censorship II (Winter, 1991), pp. 71

[58] Beth A. Eck, Nudity and Framing: Classifying Art, Pornography, Information, and Ambiguity, Sociological Forum, Vol. 16, No. 4 (Dec., 2001), pp. 605

[59] The Massachusetts case of Tropic of Cancer

[60] Nudity and Framing: Classifying Art, Pornography, Information, and Ambiguity, Sociological Forum Op. Cit. pp. 613

[61]Ibid.  pp. 607

[62] Ibid.

[63] Ibid. 608

[64]What’s Left?: Hate Speech, Pornography, and the Problem for Artistic Expression Op. Cit. pp 1507

[65] Art or Porn: Clear Division or False Dilemma? Op. Cit. pp. 63

The architect and the right of integrity of his work – Jean Nouvel and the Parisian concert hall

by Axel P Ringelhann

This week, on Friday 13 February 2015, a rather prominent case concerning moral rights was heard at the TGI de Paris (‘Tribunal de Grande Instance de Paris’, Grand Instance Court of Paris). The parties involved are Jean Nouvel, a well-known French architect, and the Philharmonie de Paris.

In 2007, Jean Nouvel was awarded the contract to design a new concert hall for the Philharmonie de Paris . On 14 January 2015, as the prestigious project was already running two years late and three times over its original budget, the gigantic concert hall was inaugurated in the presence of none other than the French President himself, however in the absence of the architect (see here). Jean Nouvel used his absence at the inauguration ceremony as an expression of his discontent as regards the changes made to his work without his consent and the fact that the building was opened too soon – at that time there were still some parts of the building under construction. Hence, in an interview with the established French newspaper Le Monde he announced to invoke his moral rights at court.

Indeed, in the meantime the star-architect sought action for infringement of his moral right over his the respect of his work. He requests that the court order the defendant to recover the modifications of his initial drawings and plans. In total, the architect denotes 26 instances of non-conformity with his original sketches. The facade, parapets, foyers and a promenade are particularly concerned. For the time being, the plaintiff claims that his name and image not be used in connection with the concert hall.

It is now up to the court to decide on infringement of the architect’s right of integrity. Article L121‑1 of the French Intellectual Property Code (‘Code de la propiété intellectuelle’) provides that the author has a personal right over the respect of his work. Article 6bis of the Berne Convention also provides authors the right ‘to object to any distortion, mutilation or other modification of, or other derogatory action in relation to… [the] work, which would be prejudicial to his honor or reputation.’ French law has a larger scope than article 6bis, as the changes made to the work do not have to be proven prejudicial to the honor or reputation of the author (see to this extent the 1709blog in yet another recent French case). As for functional buildings, the French judges established a two-tier test for modifications (see a recent judgment regarding this judge-made law). First, modifications are only justified if new needs (‘besoins nouveaux’) arise. And secondly, those changes must be indispensable (‘strictement nécessaires’) and must not be disproportionate as to the goal they aim to achieve. Given the fact that during the construction of the concert hall – which obviously is a functional building – the French state succumbed to the global financial crisis, one may wonder whether in these circumstances the modifications resulting of budget cuts might be justified as being necessary.

As regards the present proceedings, Le Monde reports that in the course of the hearing, Jean Nouvel mentioned that modern artists would not process every little thing themselves. However, he stressed that he remains the architect of his atelier’s works, given that every process would undergo his final check. The defendant qualified that statement as the architect’s concession of a lack of authorship for the building at issue. On 16 April 2015 the court will hand down judgment, we will then have clarification as to the authorship for the new Parisian concert hall and the alleged infringements of the moral rights of the architect.

Axel P Ringelhann, Assistant Editor
Queen Mary Journal of Intellectual Property

Creativeworks London: Design and Fashion Workshops

by Federica Pigozzo

On January 23rd and 28th two workshops on the relationship between Intellectual Property and the Creative Industries took place at the Victoria and Albert Museum and at the London College of Fashion, in London. They were part of the Creativeworks London London’s Digital Economy Research Cluster and represent just one of the on-going series of Creativeworks London’s Research Labs. They were run by Chris Reed, Professor of Electronic Commerce Law at the Centre for Commercial Law Studies, Queen Mary University of London.

The aim of the project is to provide a platform where members of the creative community, academics and practitioners have the rare opportunity to come together, discuss and share ideas in order to investigate the subject matter of IP exploitation in the creative sector.

The first workshop focused on Design. Creatives working in different fields, such as illustration, graphic design, film, photography, media and product design participated and a number of interesting questions was raised and discussed.

One of the main concerns for people working within the community seems to be the appropriation of their own work by third parties without giving credit. In an increasingly digitalized world this process has become easier and therefore more common so it is understandable that such issue is seen as particularly relevant in an industry that relies on the digital element as a fundamental aspect of its business.

The implementation of IP rights in the context of a creative framework can be extremely complex due to different factors. First, the nature of the goods in question is such that different provisions are often involved at the same time but, while some aspects of those goods can be granted overlapping protections, some other aspects don’t fall into the scope of any traditional right and therefore are left unprotected. This of course generates confusion. Secondly, even if one or more IP rights apply to the specific case, artists show the tendency not to take advantage of them. Third, in case of infringement, resorting to legal remedies is often considered too expensive. Finally, smaller businesses and independent artists seem to think that taking their claims in front of a judge is always going to be ineffective, especially when big companies are involved as a counterpart.

That being so, alternative remedies and actions were suggested. One of the most interesting points that have been made involves the concept of non-traditional return: since appropriation often cannot be stopped and one of the main goals for upcoming designers is to get their name recognized in the marketplace, attribution for their own work could be considered a valid form of remuneration as it would allow them to increase their following, to strengthen their position and consequently to be able to take advantage of eventual IP rights more efficiently. This would help them building their brand and therefore counterbalance the negative effects of appropriation.

From a more technical point of view, the importance of drafting clear contractual clauses to precisely define the scope of licensing agreements and assignments has been emphasized, as well as the relevant role played by Non-Disclosure Agreements (NDAs) in the protection of trade secrets.

Another significant question concerned the balance between sharing ideas and securing them at the same time. The point is particularly relevant as the issues it raises can undermine the basic principles of Intellectual Property Law itself. In fact, IP rights only protect specific expressions of ideas under specific circumstances and not ideas themselves: if they are not conveyed through particular means they cannot be granted protection. On the other hand, designers expressed their concern over the fact that, in order to put them into effect, ideas often need to be shared from an early stage, when they have not yet been fixated. This situation clearly highlights the existence of a gap between IP regulations and the actual needs of the creative community: this may be one of the reasons why IP laws are sometimes considered more as a barrier rather than as a tool.

The second workshop focused on Fashion. The most peculiar aspect regarding the fashion industry lies in the context in which the community works: inspiration comes from everywhere – exhibitions, artworks, brands’ archives, literature, people on the street – and defining the line that separates inspiration from imitation is an extremely demanding task, especially considering how the reprise of someone else’s work often occur on a subconscious level.

It can also be noticed that the subjective element is particularly relevant within the fashion community as most of its aspects can be brought back to a matter of personal taste, making it particularly hard to set objective standards and to apply them in the context of an evaluation.

The interdisciplinary nature of fashion has been cited as one of the main problems when it comes to legal protection. As the different elements of a fashion creation – fabrics, prints, shapes, cuts, design, functional details – require different forms of protection, the result is a layered combination that in most cases is seen as difficult to implement and disadvantageous from an economic standpoint.

The lack of IP provisions specifically built according to the peculiar needs of the fashion sector seems to be another relevant issue. The long-term protection granted by the most common IP rights is not particularly useful considering the cyclical nature of fashion and the increasingly fast-moving market. This is detrimental to their application and it often makes it necessary for designers to search for different, most effective strategies to protect their work.

For the same reason, some designers decide not to invest time and effort on legally solving copying disputes and prefer to focus on the business dimension and on keeping their production of the highest quality possible to make it harder for competitors and copycats to reach comparable results.

From this point of view, an interesting solution has been prospected. IP protection and the above-mentioned branding strategy could be combined in order to bridge the gap left by legal provisions and help designers – younger ones in particular – to build their reputation and establish their identity on the fashion scene in a stronger, more protectable way. Moreover, such framework could be more effective in striking a balance between the creators’ desire to seek protection and the simultaneous need to provide access to their own work.

As the fashion industry seems to operate at the edge of IP protection, it has been suggested that new ways to exploit the existing legal framework could be researched. Since there is no sui generis protection for fashion design, particular attention should be put into finding innovative approaches to adapt the current provisions to the main peculiarities of this sector.

These workshops provided a great opportunity to share opinions and to see common issues from a different perspective. Since such meetings are not a frequent occurrence, they can be particularly useful for both designers and legal experts in order to understand how the creative industries work and how the law, IP law in particular, can serve as an effective asset in such a particular environment.

Federica Pigozzo

Assistant Editor

The recent drug challenge before the Indian Patent Office: Gilead’s hepatitis C drug “Sovaldi”

by María Victoria Rivas Llanos

Under Section 3 (d) of the Indian Patent Act[1], a new form of a known substance shall be deemed unpatentable unless “enhanced efficacy” is proved. The purpose of this provision is to prevent what is called “evergreening of drug patents”, a practice used by big pharmaceutical companies to extend the patent monopoly over old drugs by introducing minor changes to their composition.

The most recent rejection of the Indian patent controller pursuant Section 3 (d) of the Indian Patent Act was issued last month against Gilead’s patent application for its hepatitis C drug “Sovaldi”[2]. The patent controller’s decision revives the long-lasting battle commenced by Novartis in 2006 for its cancer drug “Glivec”[3]; where Novartis’ application was rejected due to its alleged lack of novelty.

In the case at hand, Indian generic companies and healthcare activists brought pre-grant opposition procedures against Gilead’s application, challenging the patentability of its updated version for a known drug. In their view, grating a patent for Sovaldi would have set a wrong precedent with detrimental effect directly on the market of pharmaceuticals and drug prices, and indirectly on access to medicines.

On its part, Gilead underlined the imminent lack of incentive for innovation of the Indian patent system that intends to create a higher bar for new substances beyond the purpose of the law itself. In any case, according to Gilead, it should have been granted a patent for Sovaldi, since this drug presents a lower level of toxicity than its predecessor and therefore enhanced efficacy. The question remains, however, whether this argument would have been sufficient to reach the threshold of enhanced efficacy. In this regard, the aforementioned Novartis Supreme Court decision stated that Section 3 (d) refers to “therapeutic efficacy”[4].

The question at stake is once again how to strike a balance between securing access to affordable medicines for the poor and encouraging pharmaceutical companies to invest in research and development for new drugs.

The Novartis case represented a landmark decision with influence on the practice amongst the Indian Intellectual Property authorities regarding pharmaceutical products. Its result has already been seen in the recent patent controller’s decision in Sovaldi and it is expected to have a similar impact on ongoing drugs battles at the Indian Supreme Court, such as Pfizer’s cancer drug “Sutent” and Roche’s hepatitis C drug “Pegasys”.

Nonetheless, essential questions remain unclear under Indian Law, namely what constitutes a “new form of a known substance” and how to apply the enhanced efficacy test.

Maria Victoria Rivas Llanos
Associate Editor, Queen Mary Journal of Intellectual Property

[1] The Patents Act, 1970 (as amended up to Patents (Amendment) Act, 2005).

[2] India patent application No. 6087/DELNP/2005.

[3] Civil Appeal Nos. 2706-2716 OF 2013.

[4] Ibid.

Taylor Swift’s ‘sick beat’

by aytrapova

Having recently withdrawn her entire music catalogue from Spotify, Taylor Swift makes another move, which gives the IP lawyers something to talk about.

She has applied for trade mark registration in the US for snippets of her lyrics such as ‘This Sick Beat’, ‘Nice To Meet You, Where You Been’ and “Cause We Never Go Out of Style”. This can easily be described as another clever response to the constant threats the digital world poses. In times when everything is digital and piracy levels affect sales and revenue numbers for musicians and record labels, Taylor Swift exploits her intellectual property rights in all ways possible. And she is not the only one – across the ocean in the UK very recently Rihanna won her passing off case against Topshop.

However, after such news the average reasonable person, to which the common law courts often refer to, can get slightly worried. Has this paved the way for all celebrities to trade mark every aspect of their works? Does this mean that no other artist can use these lyrics in other songs?

The answer is – not at all. Under trade mark law one is allowed to apply for protection of a mark with respect to a certain class of goods. As a result, there are two misconceptions that the media gave rise to:

  • Before a mark is registered the application has to be evaluated by the United States Patent and Trademark Office. Marks short of inherent distinctiveness or secondary meaning will be refused registration. Slogans most of the times will have to acquire distinctiveness because phrases such as those in question here will be descriptive.
  • Registration is only possible with respect to a certain class of goods. In Taylor Swift’s case she only seeks to register her marks in the class of particular merchandise which she is already selling.

Mark Jaffe, a US trade mark and copyright lawyer, has summarised the chaos by saying that ‘’People want to talk about overreach of IP law in general – and there is a place for that – but the Taylor Swift story (or arguably non-story) isn’t really the one to make that point.”

Alina Trapova
Assistant Editor

QMJIP – Volume 5 – Issue 1 (February 2015)

by Pedro Malaquias

QMJIP – Volume 5 – Issue 1 (February 2015) has been published. The list of contents reads as follows:

  • Editorial‘, Johanna Gibson and Lord Hoffmann (free content);
  • Confusion in a legal regime built on deception: the case of trade marks ‘, Chris Dent (free content);
  • Time-shifted morality: a critique of the legal discourse on online copyright infringement ‘, Tito Rendas;
  • Interoperability for data portability between social networking sites (SNS): the interplay between EC software copyright and competition law ‘, Sih Yuliana Wahyuningtyas;
  • International exhaustion of trade marks and parallel imports in the US and the EU: how to achieve symmetry?’, Andrea Zappalaglio;
  • Exhaustion without Exasperation: Intellectual Property, Parallel Imports and Border Measures‘ Pedro Malaquias;
  • Book review: Daryl Lim (ed), Patent Misuse and Antitrust Law: Empirical, Doctrinal and Policy Perspectives (Edward Elgar Publishing, 2013) 512 pp’ Steven Anderman;
  • Book Review: William Van Caenegem (ed), Trade Secrets and Intellectual Property: Breach of Confidence, Misappropriation and Unfair Competition (Wolters Kluwer, 2014) 270 pp‘ Tanya Aplin;
  • Book Review: Alastair Mullis and Richard Parkes (eds), Gatley on Libel and Slander, 12th edn (Sweet & Maxwell, 2013) 1620 pp‘ Phillip Johnson;
  • Book Review: Kelvin W Willoughby (ed), What Can Be Patented? Confronting the Confusion in Patent Law About Patent Eligible Subject Matter (Scholars’ Press, 2014) 216 pp‘ Gwilym Roberts.

Further information and access to the free content is available here.

 

@PedroMMalaquias (LL.M. in Intellectual Property Law at Queen Mary, University of London; Portuguese Qualified lawyer; Queen Mary Journal of Intellectual Property, Assistant Editor)

Gucci, Guess and the “G” battle…. the Legal Saga continues…

by eleonoracurreri

As the world is glancing over the Fashion Weeks that are taking by storm all the main social media from Instagram to Twitter…. talking about fashion sounds like a MUST.

In these last days a new chapter of the Gucci-Guess legal battle has been written and not in favour of the Italian brand.

The trade mark infringements claims started back in 2009 when Gucci America sued Guess? America first before the New York Federal Court, then before the Milan, Paris and Nanjing (China) Tribunals.

Gucci claimed that Guess?, in violation of the Lanham Act and New York law, infringed the Green-Red-Green Stripe mark, the Repeating GG Pattern, the Diamond Motif Trade Dress (the Repeating GG), the “Stylized G” Design Mark and the Script Gucci Design mark. Furthermore, Gucci also asked Guess? to abandon the “4G Square Repeating Logo”.

The American judge asked the plaintiff to prove that the Diamond Motif Trade Dress had acquired distinctiveness through secondary meaning; the probability of confusion between the Defendant’s trade dress and Gucci’s; and the non-functionality of the trade dress to evaluate whether or not the plaintiff’s mark was entitled to protection.

Judge Scheindlin, in the final decision, found that the Defendant intentionally infringed the “Quattro G” Pattern in brown colourways, barring Guess? from using the above pattern and the Green-Red-Green Stripe. With regard to the “Square G”, Guess? demonstrated that they ignored the Gucci’s Stylized G trade mark, as the American brand started using it before Gucci obtained a TM registration. Indeed, since Guess? has never registered a trade mark to protect its Square G design, the judge held that the defence of prior use was inapplicable in this case. Further, although a $120 million claim, the judge granted Gucci $ 4.648 million in damages.

If the American Court decided in favour of Gucci, the European Courts, instead, ruled in support of the American brand.

Although Gucci stated that the purposes of these lawsuits were to protect the “Made in Italy” quality, the Milan Law Court did not show much patriotism in its 2013 decision.

The Italian Tribunal pointed out that the “G” logo was completely different since the two brands use a diverse font and a laurel crown characterizes the Guess? design. If it is true that both the fashion houses use capital golden letters in their motifs, indeed it is important to highlight that the Guess? one has been changing throughout the years as the defendant demonstrated. Surely, Gucci could not ask for a monopoly over the use of golden capital letters.

Regarding the “Squared G”, the Italian Court held that the letter G might be protected only if it had a peculiar shape and conformation. These characteristics are absent in this case as a capital squared letter is not unique and other fashion houses use this letter, such as Giorgio Armani and Givenchy. As the American judge stated, it is a weak mark. In addition, while the G used by Guess? has a rectangular shape, the Gucci’s one is squared. For this reason, copying can be excluded. The attention of the judges has also been driven to the serial repetition of the G pattern. The reasoning of the Court is particularly interesting as it asserted that when the shape has a “substantial value” and its symbol links a product to a specific company it can be registered. The judge found that the shape affects the product appreciation among consumers since it has a distinctive function rather than an aesthetic one.

In the final decision, the Italian judge decided to reject all the other claims from the plaintiff, ordering the cancellation of Gucci’s diamond pattern, G logo, and “Flora” pattern trade marks on the grounds that they are common motifs in fashion without any distinctiveness.

On Monday 2nd of February, the Paris Law Court rejected Gucci’s claims, finding that Guess? was not guilty of trade mark infringement, counterfeiting, or unfair competition. The Tribunal de Grande Istance exactly as the Italian Court, invalidated three of Gucci’s “G” community and international trade marks, stressing that Gucci cannot expect exclusive use of those marks any longer. For these reasons, the French Court dismissed Gucci’s request for damages, ordering a payment of 30,000 euros in favour of Guess.

The fourth chapter of the saga – the Chinese one – is ongoing.

The Nanjing Intermediate People’s Court, siding with Gucci in claiming that the behaviour of Guess? represents a trade mark infringement and an unfair competition practice, held that the American brand should no longer sell G monogram products, 8G pattern or the cursive font of Guess.

In rendering its decision, the Chinese Court stated that what is relevant in an infringement case is the subjective similarity of the marks rather than the fact that consumers are likely to be confused. The Chinese judge underlined how Chinese consumers are not as sophisticated as the American and European ones. As a consequence, they focus more on the shape of a word to recognize a trade mark since they experience lots of difficulties in distinguishing foreign languages. As it is easy to imagine, Guess did not appreciate this decision and it has been appealed. The final verdict is what the fashion law community is waiting for.

 In this context, the totally different solutions given by the four jurisdictions are extremely significant and it is interesting to notice that while the two European Courts ruled in favour of Guess, the overseas Tribunals supported Gucci claims.

 In my view, this lawsuit shows how fashion law is extremely underdeveloped, otherwise there would not been such different legal approaches and solutions.

Furthermore, the attitude of the American Judge shows how reluctant some judges and lawyers still are in accepting that a new branch of IP Rights came to existence. Judge Scheindlin, quoting Oscar Wilde, concluded, “it is my hope that this ugliness [fashion] will be limited to the runway and shopping floor, rather than spilling over into the courts”.

Nevertheless, in the last decade many fashion lawsuits have taken place, showing an interesting trend among fashion houses that intend to protect their trade marks and copyright. Without any doubts, Gucci is the brand that most struggles in order to defend its creativity and originality against those who try to imitate its distinctive signs to have commercial benefits.

In conclusion, there are two aspects I would like to point out. The first one is that sometimes such a big and powerful Company decides to start lawsuits as a business strategy. Secondly, considering the massive impact of the social media, fashion bloggers and vloggers, the risk of confusing consumers is really low. Being faithful followers of such influential personalities they are really aware of what is going on in the fashion industry and are more able to recognise fashion marks. It seems clear that the concept of consumers’ confusion, in the Fashion Law field, needs revisiting.

Eleonora Curreri

Assistant Editor