Can band expect payment of its $666,000 invoice for use of its music at Guantanamo Bay?

Posted by Nicole Reid and Paul Kallenbach

Over the last few years, there have been a number of news reports about the use of loud music as an interrogation or torture technique employed against prisoners at the Guantanamo Bay military detention camp.  Recently, Canadian electro-industrial band Skinny Puppy has generated further publicity on the issue with its members' response to the discovery that their music had been used in this way. Upset by this use of their work, they have reportedly sent an invoice to the US government for $666,000 for musical services. (The suggestive amount of the invoice was apparently chosen for its relevance to the 'evilness of the deed'.)

So far, we haven't seen any reports indicating that the invoice has been paid. We can still use this interesting scenario to speculate on the legal basis for any claim that Skinny Puppy could make if these circumstances arose in Australia and payment were not forthcoming, and how likely they would be to succeed.

Copyright infringement

Based on the media reports, the legal basis for Skinny Puppy's claim seems to be that copyright in its music has been infringed on the basis that it has been performed in public without permission.

A lawyer interviewed by Billboard.biz pointed to a number of potential snags that the band may encounter in making such a claim in the US, including that the detention camp may be covered by a blanket licence (perhaps an equivalent to the licensing scheme run in Australia by the Australasian Performing Right Association), limitations on the availability of statutory damages and the fact that Guantanamo Bay is outside of the United States.

Assuming that each of these hurdles could be overcome, would the playing of a musical work to prisoners in a detention camp be a 'performance in public'?

In Australia, the test that is generally applied is whether the work is performed to 'the copyright owner's public' or, in other words, in a commercial context where the copyright owner could be expected to be paid a fee. Clearly, a prisoner would not be expected to pay to have music blasted loudly and repetitively at them. However, the fee need not necessarily be expected from a member of the audience and could be from another person willing to bear the cost of the performance. Further, even if Skinny Puppy's music was played to individual prisoners (rather than throughout the Guantanamo Bay centre), an audience of separate individuals can still make up the public: in previous cases, the playing of films to individual motel rooms and the playing of hold music over the telephone have both been found to be communications to 'the public'.

Skinny Puppy would therefore at least have an argument that it was entitled to expect that the US government would pay a fee to play music to prisoners for the government's purposes, and that accordingly the exclusive right to perform a work in public was infringed. However, the (presumably) small number of listeners and the private and restricted nature of a detention centre would be arguments against their case. It would be fascinating to see what a court would decide given the opportunity.

Moral rights

US law only grants moral rights to the creators of visual works. In Australia, however, moral rights exist in relation to all of the categories of works that are protected by copyright, including musical works. If a similar situation were to occur in Australia, would the members of Skinny Puppy be able to bring a claim for infringement of their moral rights?

In Australia, the right of integrity of authorship gives the author of a work the right not to have anything done in relation to the work that is 'prejudicial to [his or her] honour or reputation'. This expressly includes the doing of anything that results in a material distortion or mutilation of, or a material alteration to, the work. Where an artistic work is concerned, it also includes an exhibition in public of the work that is prejudicial to the author's honour or reputation because of the manner or place in which the exhibition occurs. There doesn't seem to us to be any reason why a similar treatment of a musical work (ie, the performance of the work in public in a manner prejudicial to the author's honour or reputation because of the place in which it is performed or the manner in which it is performed) could not amount to derogatory treatment. Such an infringement would also not necessarily be premised on there having been performance in public of the work (as this is not a pre-requisite for showing that there was derogatory treatment), and would not rely on Skinny Puppy needing to demonstrate infringement of copyright.

Was the playing of Skinny Puppy's work in this context prejudicial to the band members' honour or reputation? Perhaps – the band could argue that it draws a connection between their work and practices of the US government with which they disagree, and the implication that listening to their music could amount to torture is hardly flattering.

Making a claim against the state

The other interesting question raised by this scenario is the effect of the government being the alleged infringer. In the United States, the federal government generally enjoys sovereign immunity from being sued (once exception being where it has consented to waive that immunity).

In Australia, on the other hand, Crown immunity is more limited. Although there is a presumption that legislation does not bind the Crown, this presumption can be displaced if the parliament intended for the Crown to be bound, even if this is not stated expressly.

In the case of copyright, the Copyright Act makes it clear that the Crown is bound by the Act. However, the Crown is afforded special treatment, including ownership of works made under its direction or control, and the right to use copyright material for the services of the Crown. The latter entitles the Crown to obtain a licence to exercise copyright, on terms either agreed with the copyright owner or fixed by the Copyright Tribunal of Australia.

In this case, the Australian government would have a strong argument that it had a right to use music for the purposes of managing prisoners as this would be for the 'services of the Crown', even if this did amount to a public performance of the work. If it considered that it was in the public interest to do so, it could delay informing the copyright owner of this use, and would only have to pay the royalty determined by the Copyright Tribunal (assuming that it could not reach agreement with the copyright owner).

However, as Crown rights under the Copyright Act do not displace moral rights, Skinny Puppy (or its hypothetical Australian equivalent) could still have recourse to those provisions and seek additional damages on that basis.

It seems, therefore, that if your music is to be used by a government to interrogate prisoners, you will have a better chance of enforcing your legal rights if this is done by the Australian rather than the US government.

Corby family in the copyright spotlight

Posted by Cara Friedman, Nicole Reid and Paul Kallenbach

Image courtesy of renjith krishnan

The Federal Court of Australia has found in favour of Schapelle Corby's sister, brother and mother in relation to five photographs published in the book, 'Sins of the Father'.  The book – published by Allen & Unwin Pty Ltd (which was the respondent in the action) and written by journalist Eamonn Duff – attempts to portray Schapelle as a knowing participant involved in her father's drug trafficking.  Neither the publisher nor the writer of the book sought permission from the owners of the photographs to use the photographs in the book.

The law

Generally, the owner of copyright in a photograph is the person who took it (although there are exceptions that may apply where the photograph was commissioned for a private or domestic purpose or created under the terms of an employment agreement with the proprietor of a newspaper or magazine).   As a photograph is an artistic work in which copyright subsists, its owner has the exclusive right (amongst others) to reproduce it, or permit its reproduction, unless the owner grants a licence to another to do so or another person can exercise that right under one of the statutory licences or exceptions set out in the Copyright Act 1968 (Cth) (Copyright Act).

The person who took the photograph also has moral rights in the photograph, including the right to have his or her authorship attributed, unless a defence applies.

The issue

The Court held that the publisher did not have express permission from any of the copyright owners to reproduce the photographs in the book.  The relevant question for the Court was whether Allen & Unwin could reproduce the photographs without this express permission, given that express or implied permission had been given to others to reproduce the photographs for an earlier purpose.

Allen & Unwin withdrew its 'innocent infringement' defence (under section 115(3) of the Copyright Act) during closing submissions.  Nor did it try to argue that it had engaged in fair dealing for the purpose of reporting news.

The photographs

The relevant photographs were of Schapelle Corby and/or her mother, sometimes with others.   Two of them were taken by Rosleigh Rose, Schapelle's mother, who also owned a 25% share in the third photograph, as it had been taken by her late partner, of whose estate she was a 25% beneficiary.   The other two photographs were taken by Michael and Mercedes Corby, Schapelle's brother and sister, respectively.

The evidence was that three of the photographs were initially supplied for use in an article that Mr Duff was writing in 2005 for Fairfax media.  Buchanan J held that no licence existed for reproduction of these three photographs in the book.  Any lawful supply of the photographs (if at all) was limited to the context in which they were initially supplied (ie for use in the article).  His Honour held that the current use had no connection with the previously authorised purpose.

Nor did the Court find that any licence existed in relation to the fourth photograph, which was originally given to Schapelle's friend, who in 2005 had provided it to Mr Holland, a Fairfax photographer, in order to assist Schapelle's case.

In relation to the final photograph, the court found that even if it had been provided as a gift to Mr McHugh or Mr McCauley (the two men in the photo with Rosleigh Rose, who were both later convicted of drug dealing), this would be insufficient, without more, to constitute a licence for its reproduction in the book.

Buchanan J observed that 'the defence mounted was weak to say the least.'  Consent was sought neither by the author of the book, nor the publisher, for copyright clearance.  The Court noted that in these circumstances it was the responsibility of the publisher, not the author, to decide which photographs were reproduced in the book.

Moral rights

The court found that the applicant family members' moral right of attribution had been infringed in relation to four of the photographs, as Allen & Unwin had failed to attribute authorship to them.  There was no evidence to establish the defence (to moral rights infringement) that it was 'reasonable in all the circumstances' not to identify the author on the basis of industry practice (this was especially so given that authorship of some photographs in the book was attributed) or any other of the defences available in the Copyright Act.

Orders

The Court granted an injunction prohibiting Allen & Unwin from further reproduction of any of the five photographs, and ordered destruction of any copies of the book in its possession.

The Court did not assess compensatory damages on the basis of what the copyright owners may have accepted as a licence fee, as the evidence was that they would not have given permission to use the photographs in the book.  Instead, damages of $9,250 were awarded, based on the commercial significance of each photograph and its relevance to the central themes of the book.  For example, damages of $5,000 were awarded for infringement of the copyright in one of the photographs, due to its prominence on the back cover of the book and its focus on the relationship between Schapelle and her father, a central theme of the book.

Acknowledging the need for deterrence (both general and specific) and marking its disapproval of such 'flagrant disregard' for the applicants' rights, the Court awarded the applicants additional damages of $45,000.   It would appear that the Court's perception of the copyright infringement as a 'conscious, calculated business decision' by the publisher provided the necessary impetus for this additional damages award.

In relation to the four relevant photographs, the Court made only a declaration of moral rights infringement.   Neither damages nor an apology was ordered, as no loss – neither commercial nor personal – was considered to have resulted from the lack of attribution.   Schapelle's family members wanted no association with the book at all, including by being attributed as authors of the photographs.   Accordingly, Buchanan J labelled the moral rights infringement as 'more a question of form than substance'.

This case does not establish any new law.  It does, however, remind publishers that it is their responsibility to seek copyright clearance prior to publishing photographs, and not to rely on unwritten permissions granted to others, the scope of which is unclear and may not cover later uses.   It is also a rare case that considers moral rights issues (although the infringement issues were not considered in great detail), though it seems the conclusion here is that a finding of moral rights infringement may not help applicants obtain a larger award of damages.

Rappers, moral rights and infringement

Posted by Nicole Reid ● Partner: Paul Kallenbach

Image courtesy of all that improbable blue

The Federal Magistrates Court of Australia has handed down a rare decision concerning the moral rights provisions in Part IX of the Copyright Act 1968 (Cth).  In Perez v Fernandez [2012] FMCA 2, the Court found that a performing artist's right of integrity of authorship in respect of his musical work had been infringed by the unauthorised mixing of a promotional recording into the song.

Briefly, the facts of the case were:

• Mr Armando Perez, a rapper who performs under the name 'Pitbull', was the author of a song entitled 'Bon Bon';
• Mr Jaime Fernandez, an Australian DJ and promoter, obtained from Mr Perez a promotional recording in connection with an Australian tour that was being promoted by Mr Fernandez in 2008 (which was subsequently cancelled and is the subject of separate litigation regarding alleged breaches of contract), in which Mr Perez referred to himself and Mr Fernandez; and
• Mr Fernandez used some audio editing software to mix that promotional recording into a recording of 'Bon Bon', and uploaded the edited song to his website, where it could be streamed.  He also played it in public during DJ performances.

Mr Perez argued that, by editing the song and making the edited version publicly available, Mr Fernandez had infringed Mr Perez's right under section 195AI of the Copyright Act not to have his work subjected to 'derogatory treatment'.  Derogatory treatment is defined (in section 195AJ) as including 'the doing, in relation to the work, of anything that results in a material distortion of, the mutilation of, or a material alteration to, the work that is prejudicial to the author's honour or reputation'.

Federal Magistrate Driver found that Mr Perez's right of integrity of authorship in respect of 'Bon Bon' had been infringed.  First, His Honour accepted that the editing of the song amounted to a material distortion or alteration of the song (the changed section lasted for approximately 10 seconds).  Second, he found that the alteration was prejudicial to Mr Perez's honour or reputation on the grounds that:

• some listeners would have thought that the alteration formed part of Mr Perez's original work and so inferred a connection between Mr Perez and Mr Fernandez.  His Honour accepted that 'associations between artists and DJs in the hip-hop/rap genre are highly significant' and accordingly such a perceived connection that did not exist could be assumed to be prejudicial.  He also accepted that, even if that were not the case, Mr Perez considered the association to be prejudicial to his reputation; and
• other listeners who were more familiar with the work of Mr Perez and Mr Fernandez would have understood the connection between the two individuals and that Mr Fernandez's alteration was intended to mock Mr Perez.

It was also found that the defence of reasonableness under section 195AS was not available to relieve Mr Fernandez from liability.  In fact, His Honour noted that a number of the factors that a court is obliged to take into account in assessing reasonableness instead pointed towards the harm caused by Mr Fernandez's conduct, including the nature of the work (a rap song), the purpose for which the work was used (promotion of Mr Fernandez and mockery of Mr Perez), and the context in which the work was used (which included the existing acrimonious relationship between the two individuals).

The court awarded $10,000 in damages for the breach of Mr Perez's moral rights (in addition to $2,312 in compensatory damages that was awarded to the owners of the copyright in the recording of 'Bon Bon' for breach of copyright).  The amount was determined taking into account that the infringement had caused Mr Perez distress and prejudiced his reputation, though mitigated by the finding that it had not caused his reputation any lasting damage and that Mr Fernandez had apologised for his conduct and agreed to undertakings to partially settle the matter.

The case is significant because there have been very few cases considering moral rights since Part IX was introduced into the Copyright Act more than a decade ago.  Unfortunately, Driver FM engaged in little explicit consideration of the legal principles relevant to determining whether or not alteration of a work is prejudicial to the author's honour or reputation, most likely because limited relevant evidence appears to have been placed before the court.  Mr Perez did not appear himself, although his attorney and advisor gave evidence about the distress suffered by Mr Perez, the significance of the conduct given the importance of perceived associations in the rap world, and the fact that Mr Perez could no longer offer another artist an exclusive right to remix 'Bon Bon'.  There was no evidence from any of Mr Perez's peers about what type of conduct may have been generally considered to be prejudicial.

Given the factors taken into account by Driver FM, it appears that his approach to assessing prejudice to honour or reputation was both objective and subjective (ie, finding that Mr Perez's moral rights had been infringed both because Mr Perez felt that the conduct damaged his honour and because it was reasonable for him to have felt that way, having regard to the musical genre in which he worked and the characteristics of the rap world).  Driver FM may also have been influenced by his finding that Mr Fernandez's conduct was part of a campaign against Mr Perez arising from the failed tour and had been intended to cause harm to Mr Perez.

We await further cases for guidance as to the interpretation of moral rights protections in Australia.

Moral slights: failure to credit developers shows gaming's dark side

Posted by Frances Stephenson

Image courtesy of wlodi

It could be the plot of a PlayStation game: a group of maverick developers, their talents unrecognised after years of labour, take on the industry and fight for their rights to be credited for their work. But that's the situation some former members of Australian gaming powerhouse Team Bondi have found themselves in since discovering their names were left off the credits of new blockbuster game LA Noire. One aggrieved developer who goes by the alias TK Rose has set up the website lanoirecredits.com, which he says contains the full and accurate credits for the game. There has (as yet) been no response from Team Bondi or from Rockstar Games, the company that produced LA Noire.

There is no indication that the developers intend to take legal action. However, if they did, the most obvious cause of action would be for infringement of their moral rights. The Copyright Act 1968 establishes a regime that gives artists and writers a number of moral rights, including the right of attribution – that is, the right to be identified as the author of their work or film. A person who reproduces, publishes, performs, communicates or exhibits to the public, or makes an adaptation of a work or film without attributing it to the author will infringe that author's moral rights.

If the developers were successful in an action for infringement of their moral rights, they could ask a court for remedies such as an injunction, damages, a declaration that their moral rights have been infringed, or even a public apology.

However, it seems to us that there is probably a reason the developers haven't threatened legal action. Where an author has consented to an act or omission in writing in respect of a particular work, that act or omission won't constitute an infringement of his or her moral rights. And where there's an employment relationship, the Copyright Act specifically says an employee may give a consent to his or her employer in relation to all the works the employee makes in the course of his or her employment. We can assume that the issue of moral rights would not have escaped Rockstar's legal team, and that the developers' contracts likely include a broad consent for their works to be used without attribution.

If this is the case, the moral rights regime won't help these developers. However, Rose has said that his intention was to draw the public's attention to the poor crediting procedures that he claims are rife in the gaming industry – and he has certainly managed that. One hundred bonus points to him, and to the other uncredited developers of LA Noire.

Partner: Paul Kallenbach

Warner Bros, a tattoo artist, a film about hangovers and Australian copyright

Posted by Kate Rintoul and Paul Kallenbach

S. Victor Whitmill - the tattoo artist who designed and applied the tattoo gracing the left side of Mike Tyson's face - caused a stir in Hollywood last week when he launched proceedings against Warner Bros for copyright infringement. The film giving rise to those proceedings, The Hangover: Part Two, was released in the US (and elsewhere) as originally scheduled after Whitmill failed to convince a US District Court judge that its release should be injuncted. Mr Whitmill is, however, proceeding with a damages claim against the studio.

Whitmill applied what he calls the 'Tribal Tattoo' to Tyson's face in 2003. He is suing Warner Bros in relation to scenes in the film in which one of the characters wakes up - badly hungover - with a tattoo etched on the left side of his face. That tattoo, according to Whitmill, infringes his copyright in 'Tribal Tattoo'. Significantly, Judge Catherine Perry appears to have indicated (in the injunction proceedings) that Whitmill's claim has a reasonable prospect of success.

So, if there is a chance that Whitmill might succeed in the United States, how might an equivalent case be decided in Australia?

Are tattoos protected by copyright in Australia?

The Australian Copyright Act 1968 confers a range of exclusive rights on the creators of original literary, dramatic, musical and artistic works (as well as certain other subject matter, such as films and published editions). These exclusive rights are afforded to the copyright owner for the duration of the copyright, which varies according to the item under consideration and its publication status (but is generally 70 years after the death of the author). The exclusive rights include the right to reproduce, publish and adapt the author's work.

Therefore, in order for copyright to subsist in a tattoo under Australian copyright law, the tattoo must (amongst a few other things):

• fall within one of the classes of works or other subject matter that are protected under the Copyright Act; and
• be 'original'.

A tattoo appears to fall within the ambit of 'artistic work' (defined under the Copyright Act to mean 'a painting, sculpture, drawing, engraving or photograph'). 'Painting' is defined in the Macquarie Dictionary to mean 'a picture or design executed in paints' - and this would seem to describe a tattoo quite nicely. However, there is no Australian case law directly on point, so a court would need to finally determine this.

In the UK, the English Court of Appeal rejected the idea that distinctive facial make-up is a painting (within the meaning of the UK copyright legislation); however, this was largely on the basis that the make-up in question (applied to the face of Adam Ant) lacked permanency. By contrast, a tattoo (one could argue) is just as permanent as if the artist had rendered their design on paper or canvas or etched it into wood or stone. (And even if there is some doubt on that point, the artist may have made paper-based drawings or sketches of their tattoo design, each of which would separately be protected by copyright, and therefore form the basis of an infringement claim.)

In relation to originality, there seems little doubt that a tattoo such as 'Tribal Tattoo' would be 'original' in Australia for the purposes of the Copyright Act, as the threshold for originality is not that high. As long as Whitmill applied intellectual effort in coming up with the design, and did not copy it from somewhere else, it will be 'original' under the Copyright Act.

Would Warner Bros infringe copyright in Australia?

The first thing Warner Bros did was to reproduce the tattoo on the face of the actor who appeared in the film. The second thing they did was to film that actor (including the tattoo) and thus reproduce the tattoo on film.

If copyright protects tattoo in Australia (as we suspect it does), then reproducing the tattoo on the face of an actor using make-up would likely constitute copyright infringement.

In contrast, there is some scope to argue that filming the actor wearing the tattoo design on the side of his character's face for some portion of the film does not constitute copyright infringement in Australia.  This is because there is an exception to copyright infringement (under section 67 of the Copyright Act) in relation to the filming of an artistic work that happens to only be incidental to the principal matters is included in the film.

Although the filming of the tattoo was certainly deliberate, it could still be incidental (the Federal Court has previously found that a deliberate filming of a work may still be merely incidental in the context of what was filmed). Although the tattoo is the focus of a particular segment of the film and has been prominently displayed in various advertisements for the movie, it could nevertheless be argued that, in the context of a feature length film, the reproduction of the tattoo is merely an incidental element.

What could Whitmill do about the copyright infringement?

So, at least under Australian law, there may very well only be one act of infringement here: the reproduction of the tattoo on the actor's face. It has already happened, so Whitmill would not be able to seek an injunction. He would be left with a claim for damages or an account of profits. Both would be difficult to quantify.

For a damages claim, Whitmill could seek compensatory damages (for loss or damage caused by the infringement, which might include the licence fee Whitmill would have charged for use of his copyright work) and additional damages (for example, having regard to the flagrancy of the infringement and benefit shown to have accrued to Warner Bros as a result of the infringement). It is, however, open to question whether Whitmill would be able to bring up the subsequent reproduction of the tattoo on the face of the character in film if that conduct did not itself amount to copyright infringement.

For a claim based on an account of profits, Whitmill would have to show a connection with the infringing conduct and the profits made by Warner Bros as a result of it. This would not get him far if he were not able to bring up the reproduction of the tattoo in the film. Even if he could bring it up, it is not certain how a court would apportion the total profit generated by the film compared with the profit generated by the depiction of the tattoo.

Has there been an infringement of Whitmill's moral rights?

If Whitmill is found to be the author of an artistic work, then under the Copyright Act, he has certain 'moral rights' - which include the right to be attributed as author of that work, and the right not to have his work subject to derogatory treatment (that is, treatment prejudicial to his honour or reputation).

We haven't seen the film, so we don't know if the depiction of the tattoo would be prejudicial to Whitmill's honour or reputation. But perhaps, as a result of the right of attribution of authorship, he would at least be able to get his name added to the long list of credits?

As interesting as this scenario is for us copyright lawyers, film producers may wish to consider obtaining the permission of any tattoo copyright owner before including their designs in a multi-million dollar film.

Partner: Paul Kallenbach