De-FUD: Photographs of Paintings and TWiT:203 July 14, 2009
Only a few short hours ago I polished off the latest episode of This Week in Tech (TWiT). For those unfamiliar, TWiT is a weekly technology news podcast that is hosted by Leo Laporte. Each week Leo invites several technology news panelists onto the show and the group discusses weekly news stories.
For the last few weeks Leo has been out of country on vacation and guest hosts have taken over until his return. Episode 203 sported Tom Merrit, who incidentally has his own daily technology news podcast at CNET. During the show, Tom brought up an interesting legal story about a United States Wikipedian user, Derek Coetzee, who received a legal notice from the National Portrait Gallery concerning the use of photographs picturing some 3,000 portraits of historic people that had been uploaded to Wikipedia. The images, as you can see here, are high pixel reproductions of the portraits in the Gallery. Tom and the panelists (Veronica Belmont, Ryan Block, Patrick Norton, Roger Chang, and Robert Llewellyn) dove head on into what is actually a very nuanced area of copyright law.
First, the TWiT panel glossed over the fact that the National Portraits Gallery is located in London, and the legal notice they issued is based on a reading of English copyright law, not U.S. law. This is significant because U.K. law is not bound by the same copyright principles as we recognize here in the U.S., even though based on similar principles and underpinnings.
Second, the panel seemed to confuse the claims on a tangential discussion of photographing of public domain art and its legal effects in public places. In reality, the legal notice claims that Mr. Coetzee accessed these images from the National Portraits Gallery’s website, downloaded them, and then uploaded them to Wikipedia without authorization. The notice does not mention that Mr. Coetzee actually took any photographs himself.
In 1999, the Southern District of New York (S.D.N.Y.) opined on this exact issue in Bridgeman Art Library v. Corel Corp., 36 F. Supp.2d 191. In Bridgeman, an English company which sells reproductions of public domain art sued a Canadian defendant for copyright infringement based on, inter alia, unauthorized reproduction of their images. After a multitude of complicated procedural maneuverings, the S.D.N.Y. held for the defendant, and declared the images were not protectable under the U.K. copyright law (The Copyright, Designs, and Patents Act 1998).
U.S. laws are limited by the principle of extraterritoriality– meaning, U.S. laws generally have no force outside the boundaries of U.S. soil. The Bridgeman court decided that U.K. law applied to the claims of infringement under the Berne Convention. The reasoning behind this focused on the fact that U.K. law bore the “most significant relationship” to the property and the parties in the dispute. The court noted that the images were first affixed in the U.K. and first published in the U.K. The fact that a U.S. court is deciding a case based on U.K copyright law probably seems confusing. In reality, this is a common, albeit complicated, international intellectual property principle that is regularly applied in these scenarios under international IP treaties the U.S. is a party to (e.g., The Berne Convention, and Universal Copyright Convention). Note though, not every case is treated identically to this one. The method of determining international choice of law issues is fairly complicated and is done on a case-by-case basis.
Under U.K law, subject matter that qualifies as “original literary, dramatic, musical or artistic works” is copyrightable. “Originality” hinges on whether a work “originates with an author” and “is not copied from another work.” Similarly, under U.S. law, copyright attaches to original expression fixed in a tangible medium. A work that is within the public domain is not protectable under copyright law. The argument the defendant, Corel, successfully presented was that since the subject matter of the images is not protectable, any reproduction of the subject matter does not qualify as “original,” and therefore does not merit copyright protection under U.K law.
So, that’s a pretty good answer from a U.S. court on the issue, but it comes with a huge caveat. Since a U.S. court decided the Bridgeman matter, a U.K. court is not actually bound by the decision in terms of precedential value. This brings us back to the concept of legal territoriality: U.S. courts simply have no power over U.K. courts. Although the argument looks fairly persuasive under the U.S. holding, a U.K. court does not have to follow this particular interpretation of U.K. law.
The National Portrait Gallery noted this precise point in the notice to Mr. Coetzee. The solicitors across the pond interpret the U.K. statute to cover certain aspects of the image database on the website as well as the photographs of the portraits themselves. The Copyright, Designs, and Patents Act explicitly mentions “photographs” as protected works, but is silent on any requirements for the subject matter of such a photograph. In any infringement lawsuit in either the U.S. or U.K., a plaintiff needs to establish that a valid copyright exists before the issue of infringement will be heard. Without controlling U.K. precedent on the matter, this leaves a huge question mark in place of a legal outcome prediction. Assuming the matter is heard and decided under U.K. law, the ultimate determination of whether protection applies will likely be dispositive.
If the National Portrait Gallery’s reading is correct, there is a colorable claim for infringement in the U.K. Moreover, the legal notice also indicates that the National Portrait Gallery intends to pursue the matter in the U.K. legal system, not in the U.S. legal system. On his Wikipedia page, Mr. Coetzee indicates he is currently seeking counsel, but no apparent legal response has been publicized.
Three cheers goes out to the TWiT panelists for taking on a very interesting legal story, even if they didn’t get it all correct!
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Actually, what happened in Bridgeman is more complicated than that. After his original judgment, all the parties (and a heavy-hitting amicus) told the judge he’d got it wrong, and not considered key precedents, so he agreed to reconsider.
The revised judgement was that UK law was *not* the applicable law, the applicable law was U.S. law. The judge then held for Corel, both under U.S. law, and (obiter) under UK law.
If this case comes to trial, the key question is going to be jurisdiction. As it involves a corporate entity suing an individual, normally that would mean that venue would be the individual’s — ie somewhere in the United States. A U.S. court is then likely to look very favourably on the argument in Bridgeman, and decide that the applicable law is that of the United States — in which case Mr Coetzee would appear to be in the clear.
If the UK court refuses to cede jurisdiction, and finds against Mr Coetzee on the basis of UK law, it seems far from clear that any such judgment would be enforceable in the United States.
Mr Coetzee’s lawyers could argue:
* That the UK courts had no personal jurisdiction over Mr Coetzee.
* That, under U.S. law, the UK court had no jurisdiction over the subject matter; and
* That the judgment was repugnant to the public policy of the state where enforcement was sought (ie the United States).
A U.S. court might be expected to find those arguments considerably persuasive.
Thanks for the comments, James. Excellent points in there.
The most recent (published) opinion in Bridgeman I found was Bridgeman v. Corel, 25 F.Supp.2d 421 (S.D.N.Y. 1998). If you have a more recent opinion, please share.
According that that opinion, the court used U.K. law to determine the copyrightability of the works, and applied U.S. law to the issue of infringement based on a situs of infringement analysis. See id. at 426-427. The court determined the images to be uncopyrightable under U.K., but continued to conduct an infringement analysis under U.S., assuming arguendo, that the works were in fact copyrightable. Under the second prong of infringement analysis, the court found the allegedly infringing reproductions lacked substantial similarity to the plaintiff’s works. Id. at 428.
The Berne Convention is silent on the applicability of different standards to the elements of copyright ownership. However, the dichotomy of choice of law and infringement analysis, at least in the U.S., is fairly apparent under Itar-tass v. Russian Kurier, 153 F.3d 82 (2d Cir. 1998). This case lays out the separation of copyrightability determination and infringement analysis. Based on my reading of the Bridgeman opinion, the court applied U.S. and U.K. law separately when analyzing the plaintiff’s copyright claims.
I agree that the jurisdictional issues will likely be a hot point of debate. I am not sure how the U.K. court will treat choice of law to the issue of copyrightability; but, if it is similar to the U.S. analysis, it would seem that U.K. law would likely be applied.
Certainly, as you note, if the case gets kicked over the U.S. courts Bridgeman holds much more water on the issue of copyrightability. Choice of forum is a very relevant and significant factor in this case based on the split between the sovereign jurisdictions.
Good points all around.
On a side note, I would be interested to hear what the U.K. courts might have to say on the issue of copyrightability.
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The revised summary judgment is 36 F. Supp. 2d 191 (S.D.N.Y. 1999)
It can be read online at
http://www.law.cornell.edu/copyright/cases/36_FSupp2d_191.htm