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On 22 March 22 2017, in the case of Star Athletica LLC v. Varsity Brands, Inc., et al, No. 15-866, the Supreme Court of the United States ruled, in a 6-2 decision, that design elements of a cheerleading uniform may be protected under copyright law, even though the uniform has a utilitarian function.

It is a well-known tenet under United States copyright law that apparel is outside the scope of the Copyright Act of 1976, which bars protection for works of authorship that possess utilitarian functions.  However, §101 of the Copyright Act carves out a limited exception, namely that “pictorial, graphic or sculptural features” of the design of a useful article are entitled to copyright protection if they “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”

Star Athletica v. Varsity Brands involves copyright infringement of cheerleading uniforms designed by Varsity Brands, considered to be the leader in the market, copied by its rival, Star Athletica.  The majority opinion, written by Justice Thomas, sided with Varsity Brands, and ruled that the two-dimensional pictorial design, consisting of chevron, zigzags, stripes and colorful shapes, applied to Varsity Brands’ uniforms was deserving of copyright protection under §101 of the Copyright Act.

This case has elicited microscopic scrutiny by the fashion industry.

The Ruling

This case was heard by the Supreme Court on writ of certiorari to the United States Court of Appeals for the 6th Circuit.  The District Court had granted summary judgment to Star Athletica, holding that Varsity Brands’ designs were not eligible for copyright protection because they served the function of identifying the garments as cheerleading uniforms.  The 6th Circuit reversed, holding that the graphic designs applied to the uniforms, in accordance with §101 of the Copyright Act, were eligible for copyright protection because the graphics could be “identified separately” and were “capable of existing independently” of the uniforms.  The Supreme Court granted certiorari to resolve the long-standing discord between the lower courts over statutory interpretation, namely: What is the appropriate test to determine when a feature of a useful article is protectable under §101 of the Copyright Act.?

In deciding this case, the Court set forth a simplified two part test, “A feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work – either on its own or fixed in some other tangible medium of expression – if it were imagined separately from the useful article into which it is incorporated.”  Looking to the facts of the case at hand, the Court held that the designs on the surface of the Varsity Brands uniforms satisfy the foregoing requirements.

The Conundrum of the Separability Doctrine

For decades, there has been disagreement between the circuits, which have struggled with articulating a consistent test to determine the extent to which designs applied to useful objects might be protected by copyright. While the statutory language of the separability doctrine is consistently invoked, the determination of when a design element is separable has lead to a plethora of standards and tests. Indeed, the 6th Circuit’s decision used 9 factors to determine that Varsity Brands’ graphic designs as applied to cheerleader uniforms were conceptually separable from the utilitarian aspects of the garment, and judicial analysis of separability have included such things as the design intention of the author and the marketability of the functional object if the applied art were to be removed.

Impact upon the Fashion Industry

The fashion industry anxiously awaited the decision in Star Athletica v. Varsity Brands – design companies expressing concern that the decision might undermine the already extremely limited protection afforded to fashion designs, while retailers were concerned that the decision might enhance copyright protection in a way that would expose them to new liabilities. Although, as noted in the dissenting opinion by Justice Breyer, designers often look to trademark law, and occasionally patent law, as a means of protection, these laws do not readily apply to graphic designs applied to apparel.  Although the Court’s decision provides some clarity and guidance with regard to statutory interpretation, it unequivocally adhered to what has been the status quo for fashion items, characteristically denied protection under the Copyright Act.  As the majority wrote,  “the only feature of [Varsity Brands’] cheerleading uniform eligible for a copyright is the two-dimensional applied art on the surface of the uniforms” and the company “has no right to prevent anyone from manufacturing a cheerleading uniform that is identical in shape, cut or dimensions to the uniforms at issue here”.

The result in Star Athletica v. Varsity Brands will in all likelihood have little impact on the fashion industry, as it breaks no new ground.  What it does is eliminate the myriad of tests and issues that have plagued and distracted lawyers for both plaintiffs and defendants in proving and arguing many factual issues that the opinion now makes clear are irrelevant.

Accordingly, the protection of designs applied to apparel has neither been eroded nor enhanced; they are protected by copyright to the extent they would have been protected had they been fixed in a medium of expression other than a garment.  Similarly, retailers and designers of “knock-offs” do not appear to  face any new risk of liability that wasn’t present prior to the Supreme Court’s opinion.

Looking Forward

We have yet to see how the Supreme Court’s new separability test will be applied, but its application may significantly simplify and harmonize the analysis in the lower courts.  Congress, despite years of lobbying efforts by the fashion industry, has consistently failed to adopt the sort of “design right” that many European countries apply to apparel, and the debate continues as to whether fashion design is under-protected or, as some argue, the current “light” protection of fashion design is actually part of the engine that drives the industry.

There is no doubt that the Varsity Brands opinion vividly confirms that the Copyright Act today affords no protection at all to the overall design (e.g., the combined shape, cut, fit, color, drape, neckline, etc.) of an item of apparel.  On the other hand, it makes equally clear that the copyright protection afforded to any pictorial, graphic or sculptural work is in no way undermined when it is first fixed in, or later applied to, an item of apparel. Varsity achieved what it set out to do, but the ruling in this case has not significantly changed the landscape.

Women's running shoes and dumbbells for trainingThe question of whether a sequence of exercises, such as yoga poses or dance moves, can be copyrighted has occupied the attention of international courts, scholars and copyright offices for some time. In late 2015, the issue received some media attention when yoga guru Bikram Choudhur tried to gain a US copyright in a signature sequence of yoga poses but failed before the Court of Appeals for the Ninth Curcuit. Despite the effort of international copyright conventions, the question of copyrightability essentially remains a matter of national law.

On 2 February 2007, the Higher Regional Court of Cologne (Case 6 U 117/06), Germany, ruled that an acrobatic dance performance could, in principle, be considered a “work of dance art” subject to copyright protection under Sec. 2 para. 1 No. 3 of the German Copyright Act. The required threshold of originality could, however, only be achieved, if the performance went beyond a sequence of physical movements and conveyed a particular artistic message. Whether this ruling can, by analogy, be extended to yoga and exercise routines is not clear. Simple routines are, however, not likely to constitute “personal intellectual creations” within the meaning of Sec. 2 para. 2 of the German Copyright Act.

An Integrated, Coherent, and Expressive Whole

In a further example, in a Statement of Policy from 18 June 2012, the US Copyright Office took the position that “a selection, coordination, or arrangement of functional physical movements such as sports movements, exercises, and other ordinary motor activities” did not represent the type of authorship intended to be protected under the US Copyright Act as choreographic works. However, a “composition and arrangement of a related series of dance movements and patterns organized into an integrated, coherent, and expressive whole” could rise to the level of original choreographic authorship.

A Look Ahead

Even if simple yoga or exercise routines will likely not meet the minimum threshold of originality in most jurisdictions, a film or description of such routine may be copyrightable, as may a compilation of photographs of the routine’s individual movements. Additionally, exercise brands can make a profit from teaching their routines to others („train the trainer“) or from licensing their brand to fitness centers so that people familiar with the brand’s program know what to expect of the centers’ workout sessions.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Romantic DiningAccording to the code of ethics of the International Association of Culinary Professionals, a culinary professional must not knowingly “appropriate […] any recipe or other intellectual property belonging to another without the proper recognition.” And, in addition to the ethical, there are legal issues. While copying culinary creations might not sound like a big deal to millennial food bloggers and vloggers, lawsuits—sometimes with high stakes—have been filed over (mis)appropriated recipes. But whether claims to a signature dish will hold up in court is a different question and will likely depend on the scope of protection of the applicable copyright law(s).

The Literary Work

The written expression of a recipe (explanations and directions) is likely to be protected as a “literary work” in most jurisdictions. For example, the Court of Justice of the European Union (Case No. C‑5/08) held that even an 11-word newspaper article extract may be protected subject matter under the Copyright Directive (2001/29/EC), provided that it is original in the sense that it is the author’s own intellectual creation. One can, therefore, safely assume that quite a few recipes that were published online or in print could be considered literary works subject to copyright protection. However, the copyright in a literary recipe only prevents unlicensed copying of the text, not the functional means for achieving a culinary result. Whether the recipe itself could be eligible for protection is another matter entirely: ideas like the ingredients necessary to the preparation of a particular dish are generally not copyrightable.

The Mere Listings of Ingredients

The US Copyright Office, for example, issued a factsheet that “copyright law does not protect recipes that are mere listings of ingredients.” This view was backed by the US Court of Appeals for the Sixth Circuit in the non-precedential case Tomaydo-Tomahhdo, LLC v. Vozary, 629 F. App’x 658 (6th Cir. 2015). The court held that while there can be a copyright in the arrangement and creative expression contained in a recipe book, protection did not extend to the recipes themselves. A list of ingredients was “merely a factual statement, and […] not copyrightable.” However, a compilation of such facts could be eligible for protection, if it was an original selection. For example, on 28 March 2012, the Regional Court of Frankfurt am Main (Case No. 2-06 O 387/11), Germany, held that a selection of recipes suitable for certain pieces of cooking equipment was a “personal intellectual creation” within the meaning of sec. 2 para. 2 of the German Copyright Act. The US Copyright Office likewise stated that copyright protection could “extend to […] a combination of recipes, as in a cookbook.”

The Visuals and Other Things

Copyright law might also apply to photographs that accompany a recipe in a cookbook or to an elaborate food arrangement if it comprises elements that do not contribute to the utilitarian aspects of how food appears on a plate like coloring, textures and placement. There are, however, other avenues than copyright law that culinary professionals can pursue to protect their creations, such as secrecy or non-disclosure agreements.

Happy Valentine’s Day to all food and IP lovers!

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Tattooist demonstrate the process tattoo on handIt is only one example of many, but it grasps the very essence of the issue: In 2013, a New York City coffee shop owner got a tattoo on his right hand saying “I [coffee cup] NY.” Cool, if you are a tattoo fan who also loves coffee. Then he started using an illustration of his tattooed hand as a logo for his shop. Not cool, if you are the New York State Department of Economic Development, which served him with a cease-and-desist letter. In the eyes of the state agency, the use of the tattoo design on the shop’s window was less a reference or a tribute to the famous “I love NY” slogan but rather a plain case of trademark infringement.

Yes, copyright and trademark issues may even emerge from someplace as personal as your skin and the ink decorating it. But there is more to the story.

Tattoos Are Copyrightable

A tattoo is a work of graphic art and thus is, in principle, copyrightable. The copyrightability in each case will, of course, depend on whether the tattoo artist managed to meet copyright law’s originality threshold, which is arguably a rather low bar to pass. One can, therefore, safely assume that quite a few ink drawings on body parts could be considered works of art subject to copyright protection.

That is why, for example, National Football League Players Association (NFLPA) officials began advising NFL players to get copyright waivers from their tattoo artists. A case that drew some media attention was the suit filed by Stephen Allen. Allen, a Louisiana-based tattoo artist, sued video game publisher Electronic Arts (EA) and former Miami Dolphins running back Ricky Williams over a tattoo that Allen put on Williams’ bicep and which later appeared on the cover of EA’s “NFL Street” video game.

The topic of this blog gets even more complicated when considering that some avowed admirers of certain corporate brands reportedly show their loyalty by getting the trademarks inked on their skin. This phenomenon has even spawned a new word—“skinvertising.”

A Look Ahead

Even though the cases above took place in the United States, sooner or later European Courts will have to deal with similar issues because millennials worldwide love a few dots of ink on their body. Some interesting questions of law arise: For example, what is the extent of requests that a cease-and-desist claim could contain? Could the copyright holder of a work of tattoo art demand someone who has that tattoo cover it in every photo of himself that he posts to Instagram? Courts should be prepared to have answers to those kinds of questions.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Stage costume and Halloween bowl with trick or treat candiesWhen cobwebs and tombstones start to show up in your neighborhood, probably something wicked is coming your way—except that one night of the year, on Halloween. Even though Halloween involves frightening things—haunted houses, the undead, tricks in response to no treats—it is ultimately about carefree fun. And there’s candy! But if you are in a Halloween-related business, there is a genuinely scary side to the holiday—IP issues that, if ignored, could lead to a wicked lawsuit.

For example, in 2005, in the case Chosun International, Inc. v. Chrisha Creations, Ltd., the US Court of Appeals for the Second Circuit declared that elements of a (not very scary) Halloween costume could be copyrightable. Under the US Copyright Act, protection does not, in principle, extend to utilitarian or functional elements of the artist’s original work and, therefore, does not extend to elements that enhance a costume’s functionality qua clothing. However, in the case of Chosun’s plush sculpted animal costumes, the court held that certain elements might be separable from the overall design of the costume, and hence eligible for copyright protection. For example, Chosun might be able to show that the sculpted “heads” and “hands” of its costume design are physically separable from the overall costume in that they could be removed from the costume “without adversely impacting the wearer’s ability to cover his or her body.”

Thinking of creating a costume based on something less cuddly—say a fictional serial killer, such as Michael Myers, Hannibal Lecter or Dexter Morgan? Think again. In principle, fictional characters within an original work of authorship (e.g. a book or a movie) are presumed to be simply ideas not worthy of copyright protection on their own. However, fictional characters may be protected independently of their underlying works, provided that they are sufficiently unique and distinctive. In US law, the consensus seems to be that a well-defined serial killer may be copyrightable. Perhaps the most famous comment on the copyrightability of fictional characters comes from Second Circuit Judge Learned Hand in the 1930 case of Nichols v. Universal Pictures Corp. where he wrote that “the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.”

Happy Halloween!

Finally, you have to be mindful that many trademarks include the term “Halloween” in their mark. And there is a significant number of patent applications relating to Halloween-ish things like coffins, pumpkins or even, in PCs, “zombie process detection.”

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Young woman visits an art galleryOn 31 May 2016, the Regional Court of Berlin (15 O 428/15) ruled that photographs of public domain paintings ‎are, in principle, protected by a copyright-related right in section 72 of the German Copyright Act. The case involved a request to take down several pictures hosted on Wikimedia Commons as public domain images that had been taken by a photographer employed by the Reiss Engelhorn Museum in Mannheim, Germany. Responding to the judgment, the Wikimedia Foundation and Wikimedia Germany wrote that the decision did not pay adequate attention to the long-term damage this judgment represents to accessing public domain works.

The Wikimedia Foundation already announced its plans to appeal the case to the next level of appellate court—the Kammergericht Berlin—and, if necessary, to take it all the way to the Federal Court of Justice.

Facts of the Case

In October 2015, the Reiss Engelhorn Museum filed a lawsuit in the Regional Court of Berlin against the Wikimedia Foundation and Wikimedia Germany. The suit concerned copyright claims related to 17 photographs of works of art on display at the museum. The photographs were commissioned by the museum and were later uploaded to Wikimedia Commons—an online database of works distributed under creative commons licenses—by a third party. The paintings, portraits and other works of art at issue are all in the public domain. For example, a famous portrait of Richard Wagner was painted in 1862. Thus, its copyright term ran out long ago.

Key Legal Considerations

The Regional Court of Berlin found that the photographic reproductions in question do not qualify for copyright protection because the creative leeway of the photographer was restricted by his employer, the museum. The photographer’s task was simply to reproduce the works of art as faithfully as possible. Thus, the photographic process did not allow for creative choices and individual arrangements and was merely guided by technical, not artistic, decisions.

However, in Germany, the protection granted to photographs is not just limited to copyright (“photographic works”, section 2 para. 1 No. 5 of the German Copyright Act). Photographs can also obtain protection under a so-called copyright-related right in section 72 of the German Copyright Act that would require no creativity on the photographer’s part. But the scope of protection conferred by this related right is essentially equivalent to copyright, albeit with a shorter term.

While acknowledging that protection does not apply to mere scans or other photomechanical reproductions, the court found that the photographs in question are protected by that section 72 right. The photographs were the outcomes of difficult technical preconditions such as, inter alia, light, distance, angle and focus and, therefore, worthy of protection.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Concert guitar on stage

On 23 June 2016, a US federal jury concluded that Led Zeppelin’s Jimmy Page and Robert Plant did not copy the opening guitar riff in “Stairway to Heaven” from the song “Taurus,” an earlier tune by US rock band Spirit. The latter song, a 2-minute 27-second instrumental, was recorded nearly four years before “Stairway,” and was released on Spirit’s self-titled debut album in 1968.

The conclusion of the “Stairway” case comes a little more than a year after a federal jury in Los Angeles, California, awarded millions to R&B-soul singer Marvin Gaye’s family. The jury decided that recording stars Robin Thicke and Pharrell Williams had plagiarized Gaye’s “Got to Give It Up” in creating their hit single “Blurred Lines.”

Facts of the Case

The “Stairway” lawsuit had been brought by the estate of Randy Wolfe (aka “Randy California”), composer of “Taurus” and one of Spirit’s founding members. It alleged that the arpeggiated guitar part in the introduction of “Stairway” was substantially similar to the signature guitar element in “Taurus” and that Led Zeppelin became familiar with the song when they opened for Spirit in various US concert dates in 1968. Guitarist Page, who co-wrote “Stairway” with singer Plant and composed the guitar riff in question, testified in court that he did not recall hearing “Taurus” until recently, after his son-in-law told him that comparisons were being made between the two songs.

After a brief debate, the jury found that, while Page and Plant may have indeed heard the song, there was no substantial similarity in the extrinsic elements of “Taurus” and “Stairway.” This was lucky for Page and Plant because otherwise they would have been liable for a whole lotta damages. Estimates suggest that “Stairway” has generated some $500 million in revenue since its release. When the jurors heard “Taurus,” however, it was only from the sheet music of Spirit’s composition as played by musical experts hired by each side. Until 1978, songwriters could submit only sheet music to copyright a song in the United States. Thus, only the composition—and not the sound recording—was at issue in the case.

Copyright and Chord Progressions

The interesting question of law about whether and under what circumstances a four-chord progression itself could be copyrightable and whether similarities in instrumentation and orchestration could play a role in the answer was not addressed in this case.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Watching show, movie on television at home. Popcorn, remote control.A Spanish man using the pseudonym “Frikidoctor” has been posting videos to a major video-sharing web site that detail the events of several upcoming episodes of a popular medieval fantasy TV series, including some key plot twists. Frikidoctor’s video “predictions” (which later turned out to be remarkably accurate) were also translated to English and posted to Reddit. At some point, the videos had been taken down from the web site, marked with “copyright claim by [a major cable TV network].” Reportedly, the network is asserting that these videos are infringing on its copyright even if some of the videos do not contain any actual video footage or stills from their hit series. After the videos were removed, Redditors began fervent discussions about whether or not the network was entitled to remove those videos. Some legal experts claim that by giving detailed plot information, one could possibly be liable for copyright infringement. This is, however, not clear. Interestingly, the web site has since restored the videos.

Copyright Protection Does Not Extend to Ideas

In principle, copyright protection does not extend to information and ideas themselves. The protection only covers the specific form or manner in which information or ideas are expressed (e.g., a book, play or film).

However, the German Federal Supreme Court affirmed in its Laras Tochter decision that, under the German copyright regime, the protection afforded to a work by copyright went beyond the concrete textual representation of a thought. Rather, the copyright protection extended to components of the work that lie in the telling of the story, in the individual traits and roles of the characters involved and in the arrangement of scenes and scenery. Accordingly, the originality test vested in sec. 2 para. 1 No. 1 of the German Copyright Act (UrhG) did not confine itself to the written word, but also to plot, characters and scenes, as long as they are each original enough to be protectable. Basic plotlines (e.g., a love story about two young people from rival families), however, are merely considered ideas and, therefore, not copyrightable.

But Could Plot Elements Be Copyrightable?

Assuming that the TV series’ plotline is in fact copyrightable, the question remains of whether spoiling single elements of the plotline could be infringing under the applicable national copyright regimes. Where literal similarities between storylines are concerned, even small textual elements are considered to be copyrightable on their own. For example, reproducing an 11-word passage of a novel could be considered copyright infringing—provided, of course, that one does not act within the scope of copyright limitations and exceptions (e.g., citation rights).

This assumption does, however, not necessarily apply in the same way to non-textual elements, when literal similarities between the works are not at issue. In the case of so-called “non-literal” similarities between works, it is unclear whether and, if so, under what circumstances, single plot elements could be copyrightable on their own.

Does spoiling plot details amount to copyright infringement? That question cannot yet be answered with precision. Lawmakers and courts have not yet provided us with sufficient guidelines to address the issue. The only reasonable answer for now is that, yes, in some cases single plot elements could be copyrightable on their own, depending on the circumstances.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

iStock_000034615972_XXXLargeSnapchat, the fast-growing social media network/messaging app, has spawned some controversy over how copyright law is interpreted in the United Kingdom. In a recent Q&A session with members of Parliament, the British government was asked whether it will take steps to prevent Snapchat images from being made public without the image owner’s consent. In his written response dated 24 March 2016, the Minister for Culture and the Digital Economy, Ed Vaizey, answered that “[u]nder UK copyright law, it would be unlawful for a Snapchat user to copy an image and make it available to the public without the consent of the image owner. The image owner would be able to sue anyone who does this for copyright infringement.”

This statement could be overly simplistic because it might imply that any sharing of Snapchat images is unlawful. Nonetheless, it highlights the potential copyright implications of screenshotting and other image-sharing activities on Snapchat and other social media Networks.

Snapchat users send their friends images and video clips that disappear after a set amount of time. Once a file has been opened, the recipient has a maximum time limit of ten seconds to view its contents. If Snapchat can detect that a screenshot has illicitly been taken, the company will try to inform the sender. But there are ways to circumvent notification.

Sharing Screenshots of Images Is Not Necessarily Copyright Infringement

A suit for copyright infringement requires that the person suing is the copyright owner. In the case of Snapchat sharing, it is important to consider if the file is eligible for copyright protection, and if so, whether any defenses apply – for example, a recipent may be able to rely on implied consent to copy the image. If, for example, a certain photograph is eligible for copyright protection, the person who took the photograph – who pressed the shutter – is the person who owns the copyright in that photo. However, not every photograph is eligible for copyright protection, at least under UK law. The protection is based on the involvement of some kind of artistic value. So, ‎if a protected photo was shared in public (e.g. on the Internet) without the consent of the copyright holder this would indeed amount to copyright infringement. If a Snapchat user were to send images of a sexual nature (comforted by their temporary nature), the potential legal ramifications of screenshotting could be even more serious and could involve criminal prosecution. 

The question whether the sender gives implied consent to publish a photograph to other platforms just because she or he shared that image on Snapchat will likely be answered in the negative. As opposed to web pages, for example, a publication on Snapchat does not result in a wide accessibility. After all, the image is only on display for a (very) limited amount of time.

And the Concerns Apply to More Than Snapchat

It goes without saying that these copyright law principles do not only apply to Snapchat but also to images that are (re)shared over other social media networks/messaging apps such as Facebook and WhatsApp.

man photograph a painting at an exhibition of the museum.Background photos are my property

In October 2015, the Reiss Engelhorn Museum in Mannheim, Germany, filed a lawsuit in the Regional Court of Berlin against the Wikimedia Foundation and Wikimedia Germany. The suit concerns copyright claims related to 17 photographs of works of art on display at the museum. The photographs were commissioned by the museum and were later uploaded to Wikimedia Commons — an online database of works distributed under creative commons licenses — by a third party.

The paintings, portraits, and other works of art at issue are all in the public domain. For example, one of the works is a portrait of Richard Wagner that was painted in 1862. Thus, its copyright term ran out long ago. However, photographic reproductions of such paintings may be copyrightable. In some cases, copyright may subsist in photographic reproductions of public domain art depending on whether they are the author’s own intellectual creations (section 2 para. 2 of the German Copyright Act). Exact photographic reproductions of the work of art itself, however, lack creativity and, therefore, do not qualify for copyright.

According to a Wikimedia statement, the Reiss Engelhorn Museum claims that copyright applies to the photographs at issue in this case because the museum hired the photographer who took the photos, and it required his time, skill, and effort to take the photos. Wikimedia, on the other hand, believes that the Museum’s attempt to create new copyright on public domain works goes against European principles concerning public domain art. It states that “[c]opyright law should not be misused to attempt to control the dissemination of works of art that have long been in the public domain, such as the paintings” that are housed in the Reiss Engelhorn Museum.

Final Remarks

The question of whether copyright applies to photographic reproductions of public domain art cannot be answered easily because the protection of photographs is subject of varying regimes.

In Germany, the protection granted to photographs is not just limited to copyright (“photographic works”, section 2 para. 1 No. 5 of the German Copyright Act). Photographs can also obtain protection under a so-called neighboring right in section 72 of the German Copyright Act in which case no creativity on the photographer’s part is required. The scope of protection conferred by this neighboring right is, however, essentially equivalent to copyright, albeit with a shorter term.

Protection under section 72 of the German Copyright Act for photographs of works in the public domain is somewhat unclear. While it is widely undisputed that, in principle, these photographs are eligible for protection, a recent decision by the Regional Court of Nürnberg (32 C 4607/15) seems to suggest that the provision’s literal application should be “teleologically reduced” in cases where the boundaries of the public domain would be otherwise circumvented.

Lastly, the copyrightability of reproductions of two-dimensional images might also be judged differently than reproductions of sculptural works or other three-dimensional objects. In the latter case, the photographer is probably more likely to introduce creative choices about angles, lighting and background, which might, in some cases, even lead to copyright protection as a photographic work.

 

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