A Few More Thoughts About the @Woolworths_SA #HummingbirdGate Controversy

I thought I’d explore some of the legal themes that have emerged from this #HummingbirdGate story even though the story has since developed further and doesn’t seem to be quite what everyone assumed it was in the first place. Two major legal themes are copyright infringement and unlawful competition.

This last weekend has been an interesting one. The Twitter community seems to be convinced that Euodia Roets was ripped off by an unscrupulous Woolworths despite numerous statements and interviews by Woolworths representatives which have denied this and have pointed to a process which was concluded months before entering into discussions with her and which led to the product range Ms Roets contended was derived from her ideas.

What We Have Learned So Far

More information about this controversy has emerged in the last few days. Here are some of the things we have learned:

  1. Woolworths embarked on a process prior to entering into discussions with Ms Roets and signed off on their designs in November 2012;
  2. Woolworths representatives met with Ms Roets in early 2013 and even though Ms Roets gave Woolworths’ representative a sample with her hummingbird image, it probably would not have influenced Woolworths’ production process;
  3. Ms Roets’ hummingbird is very similar to a work produced by photographer, RW Scott in the late 1990s.

I thought I’d explore some of the legal themes even though the story has since developed further and doesn’t seem to be quite what everyone assumed it was in the first place. The recording below is a summary of the controversy and an outline of what I see as two major legal themes: copyright infringement and unlawful competition.

Before you read further, you should also listen to Jon Robbie’s interview with Woolworths’ CEO this morning:

Copyright Infringement

Many commentators have highlighted the copyright aspect of the controversy. Ms Roets highlights this in her blog post when she compares her drawing and the scatter cushion she came across in Woolworths (I included both images in my previous post). At some point someone pointed out that Ms Roets’ design looks remarkably like a photograph taken by RW Scott in the late 1990s and they are remarkably similar. This is RW Scott’s image titled “Female Ruby Throated Hummingbird”:

It is a beautiful image, as is Ms Roets’ version. If Ms Roets based her image on RW Scott’s image, her image would likely be classified as a derivative work. Assuming Ms Roets’ image is the result of sufficiently creative work on her part, it could also benefit from copyright protection despite the risk of her derivative work also infringing RW Scott’s work. Whether Ms Roets’ hummingbird infringed RW Scott’s copyright would depend on whether she had permission to use it as the basis for her work (assuming she used his work as the inspiration for hers). If she didn’t have permission (bearing in mind she was selling her hummingbird image, she probably can’t take advantage of exemptions to copyright infringement to escape an infringement claim), whoever owns the rights in RW Scott’s work could probably insist that she stop selling hers. Flowing from this, if Ms Roets copied RW Scott’s work without permission and if Woolworths copied her work without ensuring it had permission, then both Ms Roets’ and Woolworths’ works would infringe RW Scott’s. Again, making a number of assumptions here.

Interestingly, Woolworths said, in its statement, that it commissioned its version of the hummingbird from an artist in Durban in 2012. If that artist derived his or her work from RW Scott’s photograph and did so without permission, that would place Woolworths in a difficult position[1].

Unlawful Competition

Much of the commentary conflated copyright infringement with what people seemed most upset with: an unlawful competition angle. If Woolworths stole Ms Roets’ idea, that would probably fall under a class of unlawful competition referred to as a misappropriation of a competitor’s performance. In this case that could be the case if Woolworths used Ms Roets’ idea for a cushion bearing her hummingbird design. Given that she was selling her cushion and Woolworths intended selling its version, she would clearly be a competitor (even if not a particularly threatening one) and if Woolworths hadn’t come up with its own idea independently, using her idea to subsequently produce its own range could be a form of unlawful competition.

For this to apply, Woolworths would essentially have had to have copied the product of Ms Roets’ efforts without much additional effort of its own. For various reasons this doesn’t seem to have occurred but it is certainly an interesting, if hypothetical, aspect of this controversy.

Important Take-away

Something Woolworths’ representatives pointed to which is crucial (and will be increasingly important as more collaborative business models evolve) was how it documented every step of its production process and can point to specific dates and phases of its process of sourcing, developing and ultimately taking the idea to production. This sort of pedantic and legally motivated process isn’t very exciting and can slow a creative process down but it is in times like these that you would be very happy you took your lawyer’s advice to so this. I suspect the member of Woolworths’ legal team who insisted on this documentation process is the object of much gratitude and appreciation right now.


  1. This is why it is essential to include warranties and indemnities about copyright ownership in contracts with external providers. Those sorts of clauses are basically guarantees by the providers that they have sufficient rights to pass along to their client and will take responsibility if the client is later sued for copyright infringement.  ↩

ANN7 sings the Streisand Effect blues

News channel ANN7 has been the object of both considerable ridicule and controversy lately. On the one hand, the 24 hour news channel launched by the similarly controversial Gupta family has been criticised for poor production values and content and, on the other hand, an Indian company known as Aiplex Software has been filing take down notices with YouTube in an effort to remove a growing number of satirical videos targeting the fledgling station.

Update: I was interviewed on Cape Talk 567 about the copyright infringement aspects of this controversy. Here is the audio from the interview:

News channel ANN7 has been the object of both considerable ridicule and controversy lately. On the one hand, the 24 hour news channel launched by the similarly controversial Gupta family has been criticised for poor production values and content and, on the other hand, an Indian company known as Aiplex Software has been filing take down notices with YouTube in an effort to remove a growing number of satirical videos targeting the fledgling station.

In the meantime, ANN7 has become the latest victim of the Streisand Effect and the storm Aiplex Software has kicked up has probably exacerbated the situation for ANN7 considerably instead of what it likely expected, namely, suppressing the criticism.

What Aiplex Software seems to have done is lodge take down notices with YouTube under the US Digital Millennium Copyright Act. YouTube is practically required to remove the offending content if it wishes to benefit from a liability shield extended by the DMCA (unless it takes the view the take down notice has no basis and YouTube resists it). Given the volume of content published to YouTube, the take down process was probably automated although it remains open to the users who published the videos to file counter take down notices calling on YouTube to reinstate the videos. I understand from one report that one user has done just this.

The basis for the take down notices is that the offending videos have infringed ANN7’s copyright in its materials (the videos largely include footage from ANN7). The South African Copyright Act (which likely doesn’t apply directly but may be useful comparatively) recognises copyright in what it defines as cinematographic films but also includes specific exceptions for some content uses. The section of the Act that introduces this idea is section 12 which refers to grounds on which content may be used and where those uses will not infringe copyright. Section 16 of the Copyright Act deals with exceptions to copyright infringement specifically relating to cinematographic films and includes these two exceptions:

  • for the purposes of criticism or review of that work or of another work; and
  • for the purpose of reporting current events―
    • in a newspaper, magazine or similar periodical; or
    • by means of broadcasting or in a cinematograph film

This is subject to the proviso that, in the case of the first exception and the first part of the second exception (dealing with “newspaper, magazine or similar periodical”), “the source shall be mentioned, as well as the name of the author if it appears on the work”. Without going much further in the Act, it allows for critical reproductions of the footage provided there is proper attribution required by the proviso or, where the footage is being reproduced for the purposes of reporting on the story, there must be proper attribution in a “newspaper, magazine or similar periodical”.

Bearing in mind that the proviso requires attribution of the source of the footage and the author’s name “if it appears on the work”, including footage which clearly originates from ANN7 may be sufficient to invoke the exception to copyright infringement on the basis of criticism or a review of the footage where the author’s name doesn’t appear in the footage.

American copyright law has a broad set of copyright infringement exceptions known, collectively, as “fair use” which include exceptions based on criticism. It also includes protections for parody which may also apply to videos targeted for removal by Aiplex Software. The end result is that these videos may well be reinstated once users’ counter take down notices are reviewed.

In the meantime, Aiplex Software’s campaign to remove these videos and target other critical materials is only heightening public interest in ANN7’s content and quality and, quite possibly, attracting even more attention that it would have had otherwise. This is the hallmark of the Streisand Effect and the phenomenon doesn’t draw a distinction between legitimate efforts to protect rights and less legitimate efforts.

Of course there has been considerable attention and debate on Twitter and one question I have been asked is whether Aiplex Software could target Twitter users for criticising ANN7 or the increasing number of parody accounts. Unfortunately, Aiplex Software may not find Twitter to be very accommodating. Twitter’s various policies include a fairly clear Parody, commentary and fan account policy which could well protect parody profiles:

If an account is engaged in parody and follows all of the above recommendations, it will generally be free to continue in its parody so long as it doesn’t mislead or deceive others. These are considered best practices for clearly marking accounts as one that is engaging in non-impersonation parody/commentary.

<

p>Twitter has a pretty robust approach to free expression and Aiplex Software may not be too well received. Any potential prejudice caused by copyright infringement will almost certainly be dwarfed by the reputational harm magnified by the Streisand Effect thanks, to a large degree, to the campaign to suppress criticism and ridicule. It’s not clear that Aiplex Software has a valid basis to require these videos to be taken offline and that doesn’t really matter. What does matter is that members of the public are fascinated with this story and they are sharing their opinions widely and rapidly.

Is Pinterest a den of copyright thieves?

Background

A debate whether Pinterest is flouting copyright laws by allowing its users to post, or “pin”, images and videos to the site is raging online. If you haven’t heard of Pinterest, it is one of the hottest new social networks that encourages users to share stuff they find on the Web. Pinterest’s focus is on images and videos and the service gives users ways to republish images on the site and categorise them in “Boards”. I found a great introduction video which explains the site with a series of demonstrations:

The site is enjoying tremendous uptake and once you start using it you can understand why. It enables people to create collections of ideas for their homes, brides use it to source inspiration for their weddings and share them with friends and so on. It is a truly social service but it relies on its users republishing 3rd party content to the site so questions about the copyright implications are understandable. One group of content owners who are particularly perturbed about Pinterest are photographers whose works are being published and shared on the site. Mike Masnick over at Techdirt believes this is not what photographers should concern themselves with and points to Trey Ratcliffe’s post (read this post for an expanded discussion about this) about the benefits of having his photographs “pirated” as support for his position that Pinterest’s benefits far outweigh any potential harm photographers may suffer by having their works pinned on the site:

Either way, his point is a strong one, and it’s really no different than what many people have made to reactionary folks in other parts of the content industry. You can spend all your time trying to kill innovation or stop people from doing what they want to do… or you can bask in the wonderment that people want to do stuff, encourage them to do so, and make it easier for them to help spread your works… all the while making it easy for them to support you. Ratcliff seems to be a perfect example of our discussion on the benefits of being open, human and awesome.

Exclusive rights

Regardless of the benefits of sharing more openly or even tolerating copyright infringement, content creators are entitled to protect their rights so the question remains what those rights are and whether Pinterest is either directly infringing copyright or is facilitating copyright infringement by its users? I’ll explore these questions in the context of South African copyright law which is largely governed by the Copyright Act, No. 98 of 1978.

Images and videos are categorised as “artistic works” and “cinematograph films”, respectively. Provided this content is original and reduced to a material form, it is generally protected by copyright. This means that the content’s copyright owner has a number of exclusive rights in and to that content –

Nature of copyright in artistic works.

7. Copyright in an artistic work vests the exclusive right to do or to authorize the doing of any of the following acts in the Republic:

(a)   Reproducing the work in any manner or form;
(b)   publishing the work if it was hitherto unpublished;
(c)   including the work in a cinematograph film or a television broadcast;
(d)   causing a television or other programme, which includes the work, to be transmitted in a diffusion service, unless such service transmits a lawful television broadcast, including the work, and is operated by the original broadcaster;
(e)   making an adaptation of the work;
(f)   doing, in relation to an adaptation of the work, any of the acts specified in relation to the work in paragraphs (a) to (d) inclusive.

Nature of copyright in cinematograph films.

8. (1) Copyright in a cinematograph film vests the exclusive right to do or to authorize the doing of any of the following acts in the Republic:

(a)   Reproducing the film in any manner or form, including making a still photograph therefrom;
(b)   causing the film, in so far as it consists of images, to be seen in public, or, in so far as it consists of sounds, to be heard in public;
(c)   broadcasting the film;
(d)   causing the film to be transmitted in a diffusion service, unless such service transmits a lawful television broadcast, including the film, and is operated by the original broadcaster;
(e)   making an adaptation of the film;
(f)   doing, in relation to an adaptation of the film, any of the acts specified in relation to the film in paragraphs (a) to (d) inclusive;
(g)   letting, or offering or exposing for hire by way of trade, directly or indirectly, a copy of the film.

Barring exceptions to copyright infringement (more about that below) and a license from the content owner granting permission to exercise these rights (more on this below, too), any exercise of these rights would likely be copyright infringement. Section 23(1) deals with this specifically and states the following –

Copyright shall be infringed by any person, not being the owner of the copyright, who, without the licence of such owner, does or causes any other person to do, in the Republic, any act which the owner has the exclusive right to do or to authorize.

Copyright infringement exceptions

At this point the law becomes a little tricky. The Copyright Act recognises a series of exceptions to copyright infringement. This means there are uses of copyright protected content which, but for these exceptions, would be infringing uses. I won’t republish the sections of the Act for the sake of some semblance of brevity but below are the principles which come out of the Act (this is not a complete treatment of these exceptions):

  • In respect of photographs –
    • personal or private use does not infringe copyright;
    • using the photographs for the purpose of reviewing or criticising them is similarly not infringing; and
    • “using such work, to the extent justified by the purpose, by way of illustration in any publication, broadcast or sound or visual record for teaching [is similarly not infringing]: Provided that such use shall be compatible with fair practice and that the source shall be mentioned, as well as the name of the author if it appears on the work”.
  • In respect of videos –
    • “using such work, to the extent justified by the purpose, by way of illustration in any publication, broadcast or sound or visual record for teaching [is similarly not infringing]: Provided that such use shall be compatible with fair practice and that the source shall be mentioned, as well as the name of the author if it appears on the work”.

Unlike artistic works, cinematograph films don’t carry the same exceptions that permit use for “personal or private use”. In the United States there is a broad exception called “fair use”. We don’t have fair use in our law but we do have “fair dealing”. That said, “fair dealing” is pretty much limited to literary and musical works (think print publications and sheet music).

Back to Pinterest

So what does this mean so far? Well, before you even look at Pinterest’s terms of use, you know that you can probably copy photos and publish them to Pinterest under the “personal or private use” exception for artistic works but the same doesn’t apply to videos. If you had permissive licenses to republish those photos and videos on Pinterest from the content creators that would resolve your dilemma but that would depend very much on where you get the photos and videos from (there is a wealth of content on the Web released under flexible licenses like Creative Commons but this has to be specified – your default is always that the copyright owner reserves all rights and that means you don’t have any).

Pinterest’s terms of service contain content licensing provisions. These provisions comprise the broad license users grant to Pinterest and licenses Pinterest grants to its users. The purpose of these licenses is to ensure that the site can continue to operate but the challenge is that the licenses are not always in line with the rights users have to use the content on the site. Here are the relevant provisions:

Pinterest Content and Member Content License

Subject to your compliance with the terms and conditions of these Terms, Cold Brew Labs grants you a limited, non-exclusive, non-transferable license, without the right to sublicense, to access, view, download and print any Pinterest Content solely for your personal and non-commercial purposes. Subject to your compliance with the terms and conditions of these Terms, Cold Brew Labs grants you a limited, non-exclusive, non-transferable license, without the right to sublicense, to access and view any Member Content solely for your personal and internal business purposes. You will not use, copy, adapt, modify, prepare derivative works based upon, distribute, license, sell, transfer, publicly display, publicly perform, transmit, stream, broadcast or otherwise exploit the Site, Application, Services, or Site Content except as expressly permitted in these Terms. No licenses or rights are granted to you by implication or otherwise under any intellectual property rights owned or controlled by Cold Brew Labs or its licensors, except for the licenses and rights expressly granted in these Terms.

Member Content

We may, in our sole discretion, permit Members to post, upload, publish, submit or transmit Member Content. By making available any Member Content through the Site, Application or Services, you hereby grant to Cold Brew Labs a worldwide, irrevocable, perpetual, non-exclusive, transferable, royalty-free license, with the right to sublicense, to use, copy, adapt, modify, distribute, license, sell, transfer, publicly display, publicly perform, transmit, stream, broadcast, access, view, and otherwise exploit such Member Content only on, through or by means of the Site, Application or Services. Cold Brew Labs does not claim any ownership rights in any such Member Content and nothing in these Terms will be deemed to restrict any rights that you may have to use and exploit any such Member Content.

You acknowledge and agree that you are solely responsible for all Member Content that you make available through the Site, Application and Services. Accordingly, you represent and warrant that: (i) you either are the sole and exclusive owner of all Member Content that you make available through the Site, Application and Services or you have all rights, licenses, consents and releases that are necessary to grant to Cold Brew Labs the rights in such Member Content, as contemplated under these Terms; and (ii) neither the Member Content nor your posting, uploading, publication, submission or transmittal of the Member Content or Cold Brew Labs’ use of the Member Content (or any portion thereof) on, through or by means of the Site, Application and the Services will infringe, misappropriate or violate a third party’s patent, copyright, trademark, trade secret, moral rights or other proprietary or intellectual property rights, or rights of publicity or privacy, or result in the violation of any applicable law or regulation.

In many instances it may be legally impossible for users to grant the license Pinterest takes from its users and for Pinterest to re-license that content back to users. Even where a photograph or video is made available under a permissive Creative Commons license, Pinterest’s license terms are at odds with those liberal licenses. What this means is that, in the absence of legally competent permissions, using the content on Pinterest could infringe copyright. This would seem to be the case with video content and with Pinterest’s use of photographs published to the site which are not licensed for that purpose. Users republishing photographs may be protected by the copyright exception I mentioned above.

Pinterest is aware of these concerns and published a post recently titled “Growing Up” in which the Pinterest team pointed out its efforts to comply with US copyright legislation and the “take down notice” procedure which gives rights holders the ability to have infringing content taken down –

With all that growth, we’ve gotten more questions from reporters and Pinners. In the past, we’ve been pretty quiet, but we want to get better about answering questions openly with people who are interested in Pinterest. We decided to start today by talking about copyright.

As a company, we care about respecting the rights of copyright holders. We work hard to follow the DMCA procedure for acting quickly when we receive notices of claimed copyright infringement. We have a form for reporting claims of copyright violations on our site here. Every pin has a flag to make reporting easier. We also know that copyright is a complicated and nuanced issue and we have knowledgeable people who are providing lots of guidance.

Pinterest also introduced a mechanism a little like the robots.txt mechanism where copyright owners can incorporate code into their content links to prevent Pinterest from pinning that content. This may or may not be much comfort for copyright owners but I find myself going back to Ratcliffe’s, Masnick’s and numerous others’ points about the benefits of sharing more openly and ignoring many infringing uses (sometimes even encouraging it). It comes down to whether a copyright owner is interested in exploring a more innovative model or prefers more control. Either way, there seems to be grounds for concerns about Pinterest and copyright infringement that don’t seem to have easy answers.