The GULS Law Review

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Property

Family Feudalism

February 17, 2017

In this article, Paul Sanders (4th year LLB ) examines the legal issue in McNaughton's Executor v Major and places its outcome in the wider context of the Scottish Parliament's abolition of feudal land tenure.

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Can the concept of Human Flourishing justify Land Reform in Scotland?

February 16, 2017

In this article, Andrew Mack (Diploma in Professional Legal Practice) examines Alexander's theory of Human Flourishing, and considers whether it can be used as a basis for justifying Land Reform in Scotland.

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Shaky Foundations for Open Ground - Marriott v Greenbelt Group Ltd LTS/TC/2014/27 - Lands Tribunal, 2 December 2015

February 15, 2017

Through an analysis of Marriot v Greenbelt Group Ltd, David Jeffries (4th year LLB) criticises the upholding of the use of real burdens in relation to the "land owning maintenance model", arguing that this contravenes the prohibition on real burdens that have the effect of creating monopolies.

 

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Case Note: Hill of Rubislaw (Q Seven) Ltd v Rubislaw Quarry Aberdeen Ltd

October 16, 2016

Chloe Shields provides a detailed analysis into the judgement of Hill of Rubislaw (Q Seven) Ltd v Rubislaw Quarry Aberdeen Ltd and observes the implications of the decision on future cases...

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The Scottish Law Commission in para. 3.9 of their Report on Land Registration (No. 222 of 2010) noted that with the introduction of ‘Advance Notices’: “As well as appealing to conveyancers, the system should benefit their clients...”

December 21, 2015

The Scottish Law Commission in para 3.9 of their Report on Land Registration (No. 222 of 2010) noted that with the introduction of 'Advance Notices': "As well as appealing to conveyancers, the system should benefit their clients..."

In this article, Evan Crainie critically examines these comments against the former practice of granting letters of obligation, the case law in Burnett's Trustee v Grainger and Sharp v Thomson, and in light of the Land Registration etc. (Scotland) Act 2012.

 

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Moral Rights and the Berne Convention: Has the United Kingdom done enough?

October 26, 2014

 

An examination of the inclusion of moral rights into our domestic intellectual property law and whether this has been enough to meet our Berne Convention obligations.

Written by Hilary Sharkey, 4th Year LLB and sub-editor of the Property portion of the Review.

 

 

 

Intellectual property law in the UK ensures that the economic interests of authors, artists and other creators are protected through the operation of copyright law. However, often for creative individuals, there is something in addition to pecuniary rights which requires protection, that is, the integrity of the work and the right to be named as creator. ‘Moral rights’ refer not to morality in the ordinary sense, but to this non-pecuniary, personal involvement of the creator in his work, beyond the scope of commercial or financial interest. Various countries of continental Europe have recognised these special types of rights since the early 19th century but the United Kingdom has been somewhat slower to accept moral rights into its domestic intellectual property law. This article will briefly examine the importance of moral rights, and then explore the UK’s path to adoption of moral rights into domestic legislation, and consider whether this sufficiently implements Article 6bis of the International Convention for the Protection of Literary and Artistic Works (the ‘Berne Convention’).

 

Moral rights are an important aspect of copyright law because they provide protection over and above economic rights. Whilst economic rights are essential to a creator of a piece of work in the early days of publication, moral rights can allow the creator (and his ancestors) to control his work in the future. Furthermore, moral rights can be seen as intrinsically important to a creator, irrespective of a work’s commercial or financial capacity. This argument was articulated in a novel and eloquent form in the first Indian case to recognise an artist’s moral rights:-

 

“The author has a right to preserve, protect and nurture his creations through his moral rights The creative individual is uniquely invested with the power and mystique of original genius, creating a privileged relationship between a creative author and his work..”[1]

 

From as early as 1813, several European legal systems had begun to accept the concept of a moral right in a piece of work, with France in particular being regarded as the founding nation of moral rights. The concept was, however, rejected in the 18th century English case of Donaldson v Beckett.[2] It has been suggested that this could be attributed to the desire in England to avoid the adoption of foreign concepts, and also to the vastly contrasting cultures in continental Europe and the United Kingdom in relation to authors’ rights.[3] Furthermore, the different legal systems used - civilian and common law respectively - will undoubtedly have had an impact on the different nations’ views. The Berne Convention, an international agreement governing copyright, revised in 1928, sought to address this difference of protection across Europe. It was, in effect, a compromise between the countries which were liberal with their protection of moral rights, like France and Germany, and those which did not presently recognise any sort of moral rights protection. It provides minimum standards of protection to be upheld by signatory nations, and explicitly states two types of moral rights to be protected; the right to attribution and integrity. Article 6bis (1) states:-

 

Independently of the author's economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation.”

The UK appeared reluctant to legislate to expressly include the provisions of Article 6bis in domestic law. It has been suggested that the concept of moral rights in UK law was a very novel one.[4] However, the Gregory Committee of 1952 accepted that there were aspects of this type of protection currently available in the form of contract, defamation and passing off laws, and that these were sufficient and best placed to implement the provisions contained in Berne. However, twenty five years on, the Whitford Committee expressed concern that in fact the UK was not fully implementing or fulfilling its Berne Convention obligations, and therefore supported the introduction of specific moral rights legislation.

Moral rights were explicitly stated in Chapter IV of the Copyright, Design and Patents Act 1988 (CDPA). The two moral rights specified in Art 6bis were included in sections 77 and 80 respectively.  The right of attribution, contained in s77, implements the same wording in Article 6bis, providing that an author should have “the right to claim authorship of the work”. Prima facie, this would suggest a satisfactory level of protection, directly in line with Article 6bis. However, a qualification was added; an author in the UK can only rely on the right of attribution under the CDPA if he or she has asserted that right, and even then, the right is only binding on those who receive actual or constructive notice of the assertion.[5] The Berne Convention does not in any place specify any requirement for such a course of action, and actually states that the enjoyment and exercise of authors’ moral rights “shall not be subject to any formality”.[6] This would suggest that the UK is not complying with the minimum standards of protection contained in Article 6bis, because it has been made significantly more difficult for an author to receive protection. As a result, in view of the creators’ difficulty, this requirement may be actually construed in favour of the economic owner, not the creator. In addition, any delay in the assertion of the right of attribution can be taken into account by the courts in assessing any remedy available to an aggrieved author[7], which, according to Harding & Sweetland, adds insult to injury.[8] It could be argued that the UK is permitted to make this qualification and is still properly implementing Berne, because the right of attribution is one which is available “to claim”. However, it is submitted that that is a contrived interpretation of the phrase and, importantly, no other signatories have interpreted Article 6bis in this way. It is unlikely that the Berne Convention was intended to make things more complex for authors to receive protections and more simple for those who look to exploit authors. Furthermore, there are various exceptions to the right to attribution in the CDPA not set out in the Berne Convention, including the exclusion of work done by or with the authority of owner of copyright, where it originally vested in the author's employer.[9]

The second moral right recognised in the CDPA is the right of ‘integrity.’ This protects an author’s work from being mistreated by others, and is phrased as follows: the right to “object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honour or reputation”. Once more, following analysis, it would appear that the format in which the right has been implemented into our domestic law is inadequate in terms of the Berne Convention. There are exclusions to the right which are not provided for in the Article 6bis. Arrangements and translations are excluded, and this is clearly contrary to the spirit of protection integrity of a piece of work; no author or artist would be satisfied with a bad arrangement or translation of their work, yet they have no moral right to protect them in this situation. Further, section 80 does not cover destruction or re-contextualisation of a work, and therefore does not meet the minimum standard of Berne, that being any form of “modification” of the work.

An additionally questionable area of the CDPA’s implementation of Article 6bis is the opportunity to waive the protection of moral rights, or consent to an act which would otherwise infringe moral rights.[10] This raises a complex issue for authors. Since the option of waiving moral rights is available, publishers - who already hold a great deal of power over minor authors - are put in a position of greater power. They can demand that an author waive his moral rights in order to be published, asserting that they will not work with authors who seek to preserve their moral rights.[11] As a result of this, very few authors may ever know the benefits of their moral rights because, in order to be published and make their work known, they are in no position to do anything other than forfeit their moral rights. Conversely, it has been argued that the availability of waiver and consent gives an author greater freedom to choose and control the fate of their own work, and puts authors and publishers on more equal footing in terms of bargaining power.[12] The issue is unsettled and it is submitted that because the Berne Convention does not provide for any sort of waiver or consent of moral rights, the CDPA is treading dangerous waters by allowing such action to take place.

Thus in conclusion, whilst moral rights are an unusual form of intellectual property, it is evident that they are of great significance in the creative industry and ought to be protected. It was momentous when the CDPA 1988 expressly included moral rights in UK legislation, but it is clear that remnants of prior attitudes - that economic rights are more valuable and worthy of greater protection - remain. The implementation of moral rights in the UK is in various ways inadequate in terms of the Berne Convention. Reform, particularly of the need for asserting the right of attribution and the multiple exceptions found in the CDPA would be a welcome development in this area.



[1] Amar Nath Sehgal v. Union of India, 117 (2005) DLT 717 at 24-26

[2] (1774) 2 Brown's Parl Cases 129, 1 Eng Rep 837

[3] Rajan,  M.T.S. ‘Moral Rights: Principles, Practice and New Technology’ (OUP 2011) at 89

[4] De Freitas, D. ‘The Copyright, Designs and Patents Act 1988 (2)’ (1989) 133 Solicitors Journal 670

[5] CDPA, s78

[6] Berne Convention, Article 5.2

[7] CDPA, s78(5)

[8] Harding 1, & Sweetland E, ‘Moral rights in the modern world: is it time for a change?’ Journal of Intellectual Property Law & Practice (2012) 7 (8): 565-572.

[9] CDPA, s79 (1) - (3)

[10] CDPA, s87

[11] Harding 1, & Sweetland E, ‘Moral rights in the modern world: is it time for a change?’ Journal of Intellectual Property Law & Practice (2012) 7 (8): 565-572.

[12] Newman, S. ‘The development of copyright and moral rights in the European legal systems’, EIPR 688 (2011)

 

Rihanna v Topshop - Case Commentary

September 30, 2013

Written by Joseph Slane (4th Year LLB)

The Dispute

In March of 2012 Topshop sold a t-shirt bearing an image of Rihanna. Topshop had a license to use the image from the photographer, but no permission was given by Rihanna herself.  In July of 2013 Rihanna brought an action against Topshop, contending that the sale of the top without her approval infringed her intellectual property rights, and amounted to passing off. Birss J found for Rihanna, agreeing that the sale of the top did amount to passing off.[1] This case provides an interesting development in the law of passing off, and also raises interesting considerations regarding consumer awareness and celebrity marketing power.

 

Passing Off

Those studying Intellectual Property and also Obligations will be familiar with the basic elements of passing off: goodwill, misrepresentation and damage. In order to establish passing off in this case, Rihanna had to establish that she possessed goodwill or a reputation amongst relevant members of the public. Furthermore, Topshop’s sale of the t-shirt had to amount to a misrepresentation likely to deceive those members of the public that the t-shirt was authorised by her. Finally, she was required to establish that this misrepresentation would damage her goodwill. 

The Differences between Endorsement and Merchandising

Prior to analysing the three elements, Birss J referred to previous passing off case law in the context of merchandising and false endorsement, including Irvine[2] and also Mirage Studios.[3] He highlighted that merchandising concerns the situation where a character or image is exploited to sell a particular product. On the other hand, where a product is endorsed, an individual conveys to the public that they approve of or are associated with the product. Despite these differences, Birss J highlighted that there was in fact no difference in law between an endorsement or merchandising case; the three elements of passing off still required satisfaction and the legal principles were identical in each.

Albeit not a ground-breaking development, this provides a welcome clarification on these particular types of passing off cases, particularly for students, which can at times seem confusing and difficult to distinguish. Regardless of whether the case concerns endorsement or merchandising, so long as the three elements are present, passing off can be established.

Interestingly, while previous merchandising cases have considered character merchandising (for example the Teenage Mutant Ninja Turtles[4]) this appears to be the first successful merchandising case establishing passing off where a celebrity’s image has been used on a product.

Establishing Rihanna’s Goodwill

In analysing the first requirement, Birss J believed that Rihanna’s previous business activities, combined with her status as a ‘style icon’ beyond the world of music contributed to the establishment of goodwill. Her large merchandising business alongside her promotion contract with Gucci, and also her designing contract with River Island, highlighted her public association with fashion. These ventures also highlighted the financial value of her identity within the fashion market.

This provides an interesting development in relation to the goodwill of celebrities and music artists. Birss J’s analysis recognises the ability for artists to possess goodwill that extends to the fashion market. Given Rihanna’s extensive fashion business ventures, alongside her public association with the fashion market and status as a ‘style icon’, Birss J believed that Rihanna possessed protectable goodwill. This may provide an opportunity for artists in a similar position to establish goodwill with ease in the future. Image plays an important role in music today, with many artists engaging with the fashion market by means of designer or endorsement contracts, or even creating clothing lines. Taking artists like Kanye West or Pharrell Williams for example, these are both artists who are known for their public links and business ventures in the fashion market. After this case, it appears more artists in this position will be able to establish protectable goodwill. Furthermore, fashion retailers will now have to pay closer attention to the status and business ventures of an artist or celebrity whose image they wish to use. [5]

Establishing Topshop’s Misrepresentation

Misrepresentation was the primary issue in this case, for it was essential to establish for certain that the relevant members of the public would believe the t-shirt was authorised by Rihanna.

Birss J considered a range of factors in evaluating whether misrepresentation occurred. Firstly, he considered that while customers are well aware of authorised merchandising by music artists, they may not always buy products with an artist’s image because they believe it to be authorised; they may in fact just like the look of it.

This is a particularly important consideration, considering the nature of fashion and the reasons why consumers may buy products bearing a celebrity’s image. Consumers may simply purchase said products to show their admiration for the individual, or simply because they like the look or style of it, rather than on the basis that the product is authorised.

Birss J also acknowledged that many high street retailers sell garments of a similar nature, including images of Rihanna. However the existence of those garments did not necessarily preclude misrepresentation in this case. 

This is clearly an important and current acknowledgment, given the nature of the growing links between particular musicians and the fashion market that are widely publicised today. While many consumers may consider it unlikely that such garments are officially licensed, particularly given the abundance of this type of garment in fashion stores today and the nature of buying official artist merchandise, this may not be the case for everybody. As more artists are building reputations within the fashion market, more consumers may be curious and aware of the potential that an artist could have in fact licensed or authorised the product.

Birss J also considered the status of Topshop as a leading high street retailer, who had collaborated officially with celebrities including Kate Moss in the past. However, he held that customers would have no positive expectation that a garment bearing a celebrity’s image would be authorised or not from the fact it was a high street retailer alone. However, he drew attention to Topshop’s previous attempts to capitalise on Rihanna’s status. He analysed Topshop’s promotion of their relationship and connections with the ‘We Found Love’ singer, for example tweeting when she was in their store or wearing their clothing. Interestingly, Birss J rejected that such tweets and blogs would be seen as mere gossip, and instead emphasised the importance of social networking to both parties’ businesses. The publicity of this relationship would increase the likelihood that purchasers would believe garment was authorised.

This is a particularly interesting consideration, and highlights that attempts by fashion retailers to publicise links with celebrities or artists can in fact contribute to creating the impression that products bearing that artist’s image may be authorised. Not only does this highlight the importance of social networking in regards to consumer awareness, but also that fashion retailers should be very careful about the links they wish to highlight to the public, particularly if they wish to use that artist’s image on their products later on.

Finally, Birss J considered that the t-shirt’s fashionable characteristics did not preclude the finding of misrepresentation, given Rihanna’s status in the fashion world. Furthermore, he noted that the image used on the t-shirt would be noticed by Rihanna fans as similar to the images used on the ‘We Found Love’ video, and as a result be likely considered part of promotional material by them, and therefore authorised.

These two considerations are of particular interest for the future. Firstly, the notion that a particularly fashionable garment will not preclude misrepresentation highlights the crossover between the fashion and music markets. It acknowledges the reality that musicians and artists are extending merchandising beyond the standard lower quality tour shirt, and are branching out into the fashion market through means of more fashionable garments for merchandising purposes.

Furthermore, the analysis acknowledges that using a well-known image of an artist, or an image associated with a particular music video may lead to the confusion that the image is part of official promotional material, particularly to the artist’s fans.

Importantly, the t-shirt had absolutely nothing on it indicating it was an official item of Rihanna merchandise for example a logo or labelling. No comments on the website indicated that the consumers were confused at all. Despite this evidence, Birss J held that this alone was not determinative of a lack of misrepresentation.

This is an interesting point made by Birss J. This acknowledges again that artists’ association with fashion alone can potentially create an impression of authorisation, even without a distinctive logo or label expressing official authorisation.

The Final Decision

Drawing together the above considerations, Birss J concluded that the public would in fact believe the t-shirt to be authorised. Birss J believed that while a number of purchasers would buy the t-shirt without even considering authorisation, a substantial portion of those considering the product would: the Rihanna fans. Given the promotional nature of the image, combined with Topshop’s public relationship with Rihanna, together these enhanced the likelihood that the fans would believe that the t-shirt was authorised. The apparent authorisation would have motivated them to buy the product and be deceived.  

In regards to damage, Birss J held that Topshop’s misrepresentation would damage her goodwill through sales lost to her merchandising business, and also loss of control over her reputation in the fashion sphere.

This very week, the High Court granted an injunction in favour of Rihanna preventing any future use of the image in favour by Topshop, and also ordered Topshop to pay her legal costs.[6]

Conclusion

This case represents an intriguing development in the law of passing off in the context of artist and celebrity merchandising. Notably, the judgement illustrates the ability for music artists to possess goodwill capable of extending into the fashion market. This certainly recognises the growing reality that more artists are attempting to build a reputation in the fashion world. Furthermore, the judgement provides a basis for artists in similar positions to protect their goodwill by means of a passing off action, so long as the remaining elements are present. This could have a dramatic effect on the fashion market, considering the fact that so many high street retailers sell products of this kind.

Furthermore, Birss J’s analysis of consumer misrepresentation also recognises the above reality. The judgement also recognises that consumers are aware of the growing overlap between music and fashion, and as a result are more likely to be open to misrepresentation where an artist’s image is used to sell a product. In this respect, the judgement exemplifies a very current and aware approach to consumer awareness and passing off in today’s fashion market.

While this may be the case, the growing power of artists and celebrities requires thought. The case does confirm that celebrities do not have an overarching right to control reproduction of their image; however, it does recognise that artists who have a reputation in the fashion market by means of their status and business ventures may be able to establish goodwill, and prevent their image being used where misrepresentation and damage is likely to occur. While this represents a current approach to passing off, some may argue that this disproportionally contributes to the already colossal marketing power that celebrities already possess. Others may disagree, and consider that the law has rightfully advanced to protect artists from having their image unfairly exploited for commercial gain. Either way, the law has progressed, and it will be intriguing to see if this case provides a basis for more claims of this kind in the future.



[1] Robyn Rihanna Fenty and others v Arcadia Group Brands Ltd (t/a Topshop) and another [2013] EWHC 2310 (Ch)

[2] Irvine v Talksport [2002] FSR 60

[3] Mirage Studios v Counterfeat Clothing [1991] FSR 145

[4] Ibid

[5] Robert Graham, Out-Law.com, ‘Rihanna and Topshop 'passing off' ruling highlights need for retailers to check celebrity business activities, says expert’, 1 August 2013

[6] Robyn Rihanna Fenty and others v Arcadia Group Brands Ltd (t/a Topshop) and another [2013] All ER (D) 225 (Sep)