Art Case Update – OCTOBER 2020
Well used Australian Aboriginal Flag carried in an Invasion Day protest march (Redfern, Sydney), 26 January 2018. Photo by Wikiain. Licensed under GNU Free Documentation License.
Guest Work Agency is your go-to source on art-related legal cases and legal reform presently taking place within Australia, as well as select cases internationally.
In this story, our Paralegal Associate, Reetika Khanna, reports on proposed reforms to copyright and designs laws in Australia, ongoing copyright negotiations around the use of the Aboriginal flag design, and an EU decision resulting in the loss of trade mark rights for anonymous graffiti artist, Banksy, plus more.
Australia
Proposed Copyright Act Reforms
The Federal Government announced proposed reforms to the Copyright Act 1968 (Cth) in a press release published in August 2020. The reforms aim to simplify and update copyright laws in light of the increasing demand for online content, which has been highlighted further by the COVID-19 pandemic. There are four main changes included under the proposed reforms:
allowing use of ‘orphan works’ where a reasonably diligent search has been undertaken, but the copyright owner cannot be identified or located. As far as possible, the work will need to be clearly attributed to the author. Relevant industries, such as museums, education and broadcasting, are encouraged to develop guidelines for conducting diligent searches;
introducing a new fair dealing exception where copyright material is quoted for non-commercial purposes. This will be limited to use by cultural and educational institutions, governments, and other persons engaged in public interest or personal research;
amending the library and archives exceptions, and education exceptions, to allow for the digitisation and online access of copyright materials. Reasonable steps will need to be taken to ensure that people accessing materials do not infringe copyright, and material is not available more widely than is reasonably necessary. These proposed amendments are particularly driven by the increase in online education and the decreased access to cultural collections during the COVID-19 pandemic; and
changing the statutory licensing scheme to reflect the increased reliance on digital materials by Federal and State Governments. The updates will extend licensing arrangements to cover the copying, communication, and display of copyright material by Government, and provide a new exception that permits use of correspondence by Government if it is for non-commercial purposes.
Draft legislation will be available later this year, along with an opportunity for stakeholder consultation.
Proposed Design Act Reforms
IP Australia released draft legislation detailing proposed amendments to the Designs Act 2003 (Cth) in July 2020. Public consultation on the changes closed at the end of August 2020. There are four key measures included under the proposed reforms:
introducing a new 12-month grace period to file for design registration after a design has been disclosed to the public. Currently, an application for design registration must be filed before the design is disclosed to the public to ensure that the design meets the ‘new and distinctive’ criteria for valid registration. With the proposed amendment, disclosures of a design by the current or previous owner of the design within 12-months of filing for registration will be disregarded in assessing whether the design is ‘new and distinctive’;
expanding the prior use defence to protect third parties who start using a design that has been disclosed, but not yet registered, during the 12-month grace period. This would protect third parties against infringement proceedings if they used the design prior to someone else attempting to file for registration. However, the defence would not protect third parties if they have derived their design from another registered owner, or if the third-party use begins after the design registration was filed;
streamlining the design registration process by combining the currently distinct registration and publication processes into one. There will also be a new option to delay registration and publication for a prescribed period, which has been proposed to be six months. This will afford increased flexibility to applicants who want to register a design but require additional time to prepare it for commercial application; and
exclusive licensees will be provided with the right to sue third parties for design infringement. Currently, exclusive licensees must rely on the registered design owner to commence infringement proceedings to protect the licensee’s right to exclusive use of the design. This is particularly a problem where the design owner has no financial or commercial interest in commencing proceedings, or where the alleged infringing party is the design owner themselves.
IP Australia is also developing a new online filing system to simplify the application process for design registration.
The draft legislation and public responses can be viewed on the IP Australia website here. A final version of the proposed legislation, Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020, is expected to be introduced into Parliament in late 2020.
Update on Aboriginal Flag Copyright Negotiations
This month, the Federal Government began negotiations with WAM Clothing, the non-Indigenous company that currently holds an exclusive copyright licence to reproduce the design of the Aboriginal flag on clothing.
Luritja artist Harold Thomas created the Aboriginal flag in 1971, and was recognised by the Federal Court as the copyright owner of the design in 1997. He granted WAM Clothing an exclusive license to reproduce the design in 2018. The company is owned by Ben Wooster, the former director of Birubi Art, which was fined $2.3 million last year for misleading and deceptive conduct by selling fake Aboriginal artworks. Since 2018, WAM Clothing has reportedly issued several cease and desist notices to organisations that used the Aboriginal flag design on clothing without permission, including the AFL and Aboriginal-owned social enterprise, Clothing the Gap.
In a report by The Art Newspaper, a spokesperson confirmed that the National Indigenous Australians Agency is engaged in negotiations on behalf of the Federal Government to acquire licensing rights to the flag. A Senate Select Committee on the Aboriginal Flag was also established in September 2020 to inquire into the existing copyright licensing arrangements and consider options for the Government to facilitate free use of the flag, while respecting the rights and interests of Harold Thomas. The committee is due to report on 13 October 2020.
For our previous coverage on the Birubi Art misleading and deceptive conduct case and WAM Clothing’s copyright licence see our art case updates from August and and December 2019.
More Australian Legal Matters of Interest
Federal Court trial for the Howard Arkley forgery case has been adjourned until April 2021, with the judge ordering both parties to prepare written submissions on their key arguments in the meantime. For our previous update, see our July 2019 art case update here.
Federal Court judgment for the ‘Fearless Girl’ copyright infringement case is yet to be released. For our previous update see our July 2019 case update here.
Federal Court judgment for the case by Australian fashion designer, State of Escape, against an alleged imitator of their neoprene tote bag design is yet to be released. For an early report on the case, see here.
Federal Government Minister for First Australians, Ken Wyatt, has announced intention to assess the scope and feasibility of developing stand-alone legislation to protect Indigenous Cultural Intellectual Property. Read more here.
International
Anonymous Graffiti Artist, Banksy, Loses Trade Mark Challenge Against a Greeting Card Company
The European Union Intellectual Property Office (EUIPO) has found that Banksy’s trade mark for his iconic ‘flower bomber’ image of a protestor throwing a bouquet of flowers is invalid. Banksy graffitied the original image onto a wall in Jerusalem in 2005, and his company applied to trade mark the image in 2014. Greeting card company, Full Colour Black, challenged the trade mark in February 2019 on the basis of bad faith, under article 59(1)(b) of the European Trade Mark Regulations. They claimed that Banksy had no intention to use the image commercially at the time of filing it as a trade mark. Banksy started selling products using the image later in 2019, after the date that the trade mark challenge for invalidity was filed.
EUIPO found that the ‘flower bomber’ trade mark was invalid as it was registered in bad faith. The evidence showed that “Banksy had not manufactured, sold or provided any goods or services under the contested sign or sought to create a commercial market for his goods” until after the trade mark was challenged. Any goods featuring the image that he later sold was aimed solely at the purpose of not losing the trade mark. Publications from October 2019 regarding the opening of an online and physical Banksy shop quoted Banksy himself stating that “the motivation behind the venture was possibly the least poetic reason… a trademark dispute”. EUIPO concluded that the use made of the image “was not genuine trade mark use in order to create or maintain a share of the market by commercialising goods, but only to circumvent the law”.
EUIPO also made comments regarding Banksy’s anti-establishment views on intellectual property law, including that such views “do[es] not annul any validly acquired rights to copyright or trade marks”. Banksy famously stated that “copyright is for losers” in his 2006 book Wall and Piece, inviting the public to download high-resolution images from his website for any non-commercial purposes: “it’s yours to take, re-arrange and re-use”.
Further comments were made about the challenges Banksy may face in enforcing rights to the image under copyright law. These included, for example, that Courts are generally reluctant to allow people to profit from wrongdoing; that the UK exception to copyright infringement for taking photographs of permanent public sculptures does not extend to public murals or graffiti and that Banksy’s anonymous persona would make it difficult – if not impossible – to identify himself in order to bring the proceedings. While no conclusions were made on these comments, the EUIPO did conclude that registering a trade mark to gain legal rights over an image because copyright law cannot be relied upon, was not a valid function of a trade mark.
Full Colour Black has challenged another six of Banksy’s trade marks. The EUIPO decision indicates that Banksy is likely to lose his entire trade mark portfolio.
More international cases of interest
Artist Frank Bowling has sued Hales Gallery London for alleged contract breaches, including failure to pay over $2 million from sales of his work, and continuing to sell works against his wishes. Read more here.
Artist Howardena Pindell has sued G.R. N’Namdi Gallery for allegedly providing misleading and inaccurate information about sales of her work, including failure to disclose discounts offered, final sale prices, and buyers’ identities. Read more here.
Personal information of donors to hundreds of cultural institutions in the US and UK was hacked in a ransomware attack, highlighting the importance of data security, and issues with allowing data access to third-party providers. Read more here.
California passes law expanding repatriation rights for Native American tribes to recover artefacts and remains from museums. Read more here.
Tate Modern visitor who punched a Picasso painting several times, stating that the act was performance art, has been sentenced to 18 months in prison for criminal damage. Read more here.
US authorities have returned a collection of looted antiquities to India, which were previously seized from auction house, Christie’s, and two New York galleries. Read more here.
Court rules that Madrid’s Thyssen-Bornemisza Collection can keep a Nazi-looted painting by Pissaro, as the museum lacked knowledge of the previous theft and rightly acquired legal title to the work. Read more here.
The FBI has raided the home of artist Donald Henkel, who is suspected to be behind several alleged forgeries sold as works by George Copeland Ault, Ralston Crawford and Gertrude Abercrombie. Read more here.
Painting by Dutch Old Master, Frans Hals, has been stolen for the third time. Read more here.