Art Case Update
Artist Tal R in his Copenhagen studio. Photo credit: Scott Indrisek.
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 IP Australia's Designs Review Project, developments relating to the Birubi Art misleading and deceptive conduct case, and a successful Danish copyright case brought by an artist to prevent the use of their work as raw material for watch faces.
Australia
IP Australia Designs Review Project
IP Australia, the Australian Government agency that administers intellectual property (IP) rights and legislation, is currently undertaking a thorough review of the registered designs system in Australia. A report entitled “Talking Design: views from Australia’s visual design ecosystem” was released earlier this month following interviews with stakeholders from design-related professions and industries around Australia. Key concerns identified in the report include:
there is limited awareness and knowledge of design rights and how the registration system works;
the design registration process does not adequately support prototyping, testing and refinement of the design of a product;
the cost of taking legal action against copiers of designs is prohibitive and ineffective;
there are varying interpretations and levels of concern about what constitutes copying, the role of copying in visual design and the impacts of being copied;
3D printing and other cutting edge technology are reshaping the way design is done, but there is little consideration of how innovative design can be protected by the design rights system;
there are tensions between design innovation and environmental sustainability, and
there are tensions between the design community and consumers regarding the value of original design, and the distinction between art and design.
Some of the key reforms to the Designs Act that IP Australia have identified as ‘quick wins’ which are likely to be implemented in the short-term in Australia include:
introducing a 12-month grace period for registering design rights – allowing designers to make a public disclosure about their design before later filing application for design protection;
allowing designers to delay the publication of applications for design registration until the design is ready to be released onto the market, so that the design can be kept secret for longer;
allowing for partial design rights;
the protection of virtual, non-physical and active state designs and whether IP protection of new designs (such as screen displays, icons and graphical user interfaces) should be allowed; and
revising the approach of assessing the distinctiveness of a design under section 19 of the Designs Act.
IP Australia is continuing quantitative and desktop research next year and recognises that other longer-term strategies for reform may be needed. Public feedback to the report is encouraged and can be provided in a variety of forms provided here.
Birubi Art Misleading & Deceptive Conduct Update
Our last Art Case Update covered the $2.3 million penalty awarded against Birubi Art Pty Ltd (Birubi) for making false and misleading representations in breach of the Australian Consumer Law about the authenticity of their souvenir products. Birubi had used words such as ‘Aboriginal Art’, ‘genuine’ and ‘Australia’ on their products when the items were in fact manufactured and made in Indonesia.
Shortly after Birubi was found liable the company entered into voluntary liquidation in October 2018. Its business assets were sold to Gifts Mate Pty Ltd, another company established and controlled by Birubi’s former director, Mr Ben Wooster. Given that Birubi was in liquidation at the time the penalty was awarded, the ACCC was forced to drop its pursuit of an injunction, disclosure order and compliance program order.
Mr Wooster also founded WAM Clothing in November 2018, a company which was granted an exclusive worldwide license to reproduce the Aboriginal flag on clothing by the Indigenous artist who owns the flag’s copyright, Mr Harold Thomas. According to a report first published by the Koori Mail, WAM Clothing sent a notice to manufacturers stating it is the authorised agent for Mr Thomas, and that any use of the Aboriginal flag on clothing from 4 May 2019 without their consent or agreement is prohibited. According to a report published by The Guardian, WAM Clothing has also issued several cease and desist notices to companies which currently use the flag on clothing, including the AFL and Aboriginal-owned social enterprise Clothing the Gap. In response, Clothing the Gap are running a petition to change the licensing agreement around the Aboriginal Flag on change.org.
International
Danish Court Stops Painting From Being Cut Up and Featured on Designer Watches
Copenhagen-based Israeli artist Tal R has successfully pursued legal action against co-founders of the brand Kanske, Dann Thorleifsson and Arne Leivsgard. The duo sought to cut up and include fragments of Tal R’s 2017 painting Paris Chic as decorative faces on a line of designer watches.
The designers purchased Paris Chic for £70 000 in August 2019 from London’s Victoria Miro Gallery. Images gathered in November 2019 from the website ‘letho.art’, operated by Kanske, document advertisements of watches featuring 4-centimetre cut-outs of Paris Chic. The website also offered an online auction through which the winner could choose which piece of the painting would be cut first and placed on a watch face. The highest bid at the time was 41,000 Danish Kroner (DKK), with all subsequent watches made priced at 10,000 DKK each. The website featured a disclaimer that the watches were ‘not in collaboration with Tal R’.
On 12 November 2019, Tal R filed a prohibition request to the Maritime & Commercial High Court in Copenhagen to prevent the defendants from cutting or otherwise changing Paris Chic in order to manufacture watches containing parts of the painting.
On 2 December 2019, the Court held that the defendants’ plan would be a breach of copyright law. The watches would have made Tal R’s original artwork available to the public in a changed form without his consent, in contravention of the Danish Copyright Act. Section 2(2) of this Act states that the author has an exclusive right to make the work available to the public in original or modified forms, including reworking in other art forms. Reproducing the painting on Letho’s website also constituted an independent contravention of section 2(2). In addition, the project would have breached Tal R’s respect as an author under section 3(3) of the Danish Copyright Act by infringing the author’s artistic reputation.
The Court rejected the defendant’s argument that their project did not constitute an infringement of copyright law under section 4(4) of the Act. The defendants contended that they would be creating a new and independent work through the free use of Tal R’s work, whereby the original work is destroyed rather than altered, due to the small size of the pieces used. The Court held that the project would make Paris Chic publicly available in a changed form, regardless of whether members of the public could recognise the work through the small fragments or not.
The Court issued a temporary injunction against the defendants and ordered that they pay Tal R’s legal costs of 31,550 DKK. The case must now be followed up with a regular civil trial, unless the parties come to an alternative agreement.
If this case took place in Australia, the artist could seek relief through the moral rights protections set out in Part IX of the Australian Copyright Act. Section 195AQ(2) of this Act provides that a person infringes an author’s right of integrity of authorship if they treat the work in a derogatory manner. Section 195AK provides that “derogatory treatment” in relation to an artistic work includes material distortion, destruction, mutilation or a material alteration to the work that is prejudicial to the author's honour or reputation.
However, there have been very few cases in Australia which have considered the application of the moral right of integrity of authorship. The Federal Magistrates Court of Australia first awarded damages for infringement of this right in relation to a musical work, in the case of Perez v Fernandez. In that case, Perth-based DJ Suave copied a song by Pitbull, deleted a prominent part of it, and replaced it with an earlier sound file of Pitbull referencing DJ Suave. The Court considered this to be derogatory treatment as the distortion or alteration of the song falsely suggested DJ Suave was a subject of the song and was therefore prejudicial to Pitbull’s honour or reputation.