First the tattoo, then the hangover 23/05/2011

S. Victor Whitmill, the tattoo artist who inked Mike Tyson’s famous body art, plans to sue Warner Bros. Entertainment for using a similar design on the face of Ed Helms’ character in the upcoming movie The Hangover: Part 2.


Whitmill filed a Verified Complaint for Injunctive and other Relief in the US District Court on April 28th, seeking to halt the film's release. Whitmill argues that when he created the original tattoo, he retained ownership of the copyright in the image, which Warner Bros. has breached by reproducing the design in the film without obtaining his permission or crediting his creation.


Evidence submitted includes a release form signed by Tyson, which gives the rights in the tattoo to Whitmill.


Mr Whitmill's submission states: “this case is not about Mike Tyson, Mike Tyson’s likeness, or Mike Tyson’s right to use or control his identity. This case is about Warner Bros’ appropriation of Mr. Whitmill’s art and Warner Bros’ unauthorized use of that art, separate and apart from Mr Tyson”[2]. In particular Mr Whitmill highlights both the use of the tattoo throughout the film as well as use in the marketing materials such as posters, merchandise and trailers.


This lawsuit brings up questions on how copyright protects tattoo artists’ designs and what the limits and scopes of the licenses to those designs are given that the artwork is located on a person.


Warner Bros. is yet to comment on their intended response to the lawsuit, but some have speculated that the studio may make an argument based on US fair use provisions such as transformative use (given the context of the tattoo’s use in the movie) or alternatively, that Warner Bros may argue the design is not substantially similar enough to Whitmill’s and constitutes a different artistic work. [2]


In Australia, tattoo designs that are original and substantive enough are likely to be protected by copyright. If this lawsuit was talking place under Australian jurisdiction, it may be an interesting opportunity for consideration of the fair dealing provisions relating to parody and satire.


[1] S. Victor Whitmill, Verified Complaint for Injunctive Relief, filed 28/4/2011 at [1]

[2] Matthew Belloni, Mike Tyson tattoo artist sues to block hangover, Reuters: (13 May 2011)

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Disney grumpy over free Dish broadcasts 23/05/2011

Walt Disney and Starz Entertainment are suing America’s second largest satellite TV provider, Dish Network Corp, for making certain films available to all Dish subscribers, rather than just its premium subscribers.


Starz has long-term licence agreements with film studios including Disney, Sony Pictures and Warner Bros. The studios place conditions on Starz’s exhibition rights under those licences, namely, that broadcasts be limited to pay television, where a fee is paid for access to premium entertainment channels. Starz had licensed Dish to distribute the films to its premium tier customers through its Starz, Encore and Movieplex television channels and subscription-video-on-demand services. But in February 2011, Dish offered all of its subscribers (reportedly 14 million) free access to Starz through to January 2012, in breach of that contract. [1]


The offer was made to Dish subscribers for their customer loyalty and to celebrate Dish’s 30 years in business. [2] When the studios discovered that Dish was making the films (including Toy Story 3, Alice in Wonderland and Up) available to all its customers, they sent notices of breach of contract to Starz, which then attempted, unsuccessfully, to get Dish to cease offering the films to customers who were not part of the contractual agreement. [3]


Disney is arguing that the action by Dish is devaluing its films by undermining its strategy of ‘windowing’ (the process used by Hollywood studios to release films in stages and therefore maximise revenues) and also “[eroding Disney’s] goodwill, reputation and contractual relationships”. [4]


A statement released by Dish says that it “pays hundreds of millions of dollars for the right to distribute Starz content to our customers, which includes the right to a number of Disney movies”. [5]


[1,3, 5] Yinka Agegoke, ‘Disney sues Dish Network over free Starz offer’, Reuters: (18 May 2011).

[2,4] Starz Entertainment, LLC, Complaint and Jury Demand

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Australia’s High Court begins hearing on commercial radio royalty cap 10/05/2011

In the wake of two independent Government reviews and more than a decade of lobbying on the issue, the High Court will today begin its deliberations on the validity of the statutory cap on royalties payable by commercial radio stations for the use of sound recordings.


From 1969, the amount payable by commercial radio stations to record companies and artists for playing their sound recordings has been capped at one per cent of a station’s gross annual revenues. The Phonographic Performance Company of Australia (PPCA), which has brought the appeal to the High Court, argues that there is no economic or social justification for Australian Government protection of the billion-dollar commercial radio industry in negotiating a royalty rate with record companies and artists. [1]


According to the PPCA, the 273 commercial radio stations across Australia pay approximately $4 million per year for the rights to the sounds recordings they play. [1] It considers this amount to be unfairly constrained by the cap, arguing that there is no other copyright in Australia that is the subject of a statutory price cap. [2]


On the opposing side, Commercial Radio Australia argues for the retention of the cap, saying that payments for the use of sound recordings increase as station revenues increase. [3]


In addition to paying for the use of sound recordings, commercial radio stations also pay songwriters and publishers for the use of the music on the sound recordings. However, there is no statutory cap on this payment.


It is likely to be six to 12 months before the High Court hands down its much-anticipated decision on this long-standing conflict. We will keep you posted.


[1] PPCA at:

[2] Ibid

[3] The Music Network:

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Google loses Copiepresse appeal 09/05/2011

In a decision that will be pored over by news aggregators around the globe, the Court of Appeal in Brussels has upheld a 2007 ruling that blocked Google from publishing snippets from Belgian newspapers on its Google News service.


The original suit was filed by the association of Belgian newspaper publishers, Copiepresse, which is also running a second legal action seeking compensation from Google for the period the newspapers’ content was visible on Google News. In essence, the dispute is over whether Google should be able to derive economic benefit from the content without payment.


Copiepresse commenced court proceedings against Google in 2006, asserting that Google News went beyond a simple search engine service and acted as a “portal to the written press”.[1] Copiepresse objected to the display on Google News of the titles and first sentence or two of its members’ newspaper articles, as well as the provision of links to ‘cached’ versions of the articles (HTML text copies of articles stored by Google). Copiepresse did not object to the provision of hyperlinks to its members’ sites.


Original expression: Google argued that the fragments displayed on Google News were not original elements qualifying for copyright protection. The court found that some of the headlines were original enough to warrant copyright protection, while others were not.


News reporting exception: Google argued that in any event it could rely on Belgium’s exceptions to copyright infringement for news reporting. The court found that as Google provided no commentary on the news, the exception did not apply because reproduction could not be the principal object, rather than the secondary, in news reporting. [2]


Implied licence: Google argued that the newspapers had explicitly or implicitly consented to the use of their materials by not using technical means (robots.txt files and metatags) to stop their publications being indexed by search engines. The court rejected this argument on the grounds that copyright is a right to prior authorisation, not a right to opt out of a particular use.


In 2007 the court ruled that Google had violated Belgian copyright laws and ordered the corporation to pay a daily fine until it removed the Belgian news content (which it did). Copiepress also sought damages for the infringements.



To read more about news aggregation and copyright, see our feature story from November 2010 at:


[1-2] Graham Smith, Bird & Bird, Lexology, March 13 2007.

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Kookaburra infringement saga continues 28/04/2011

An attempt by EMI to reverse last year’s Federal Court ruling on the famous flute riff from Men at Work’s Down Under song has created further problems for the company. In March, the Full Federal Court not only rejected EMI’s appeal, it also allowed a cross-appeal by Larrikin Music Publishing on whether EMI had authorised infringements by licensing the Down Under song.


The Full Federal Court concluded that Down Under did in fact reproduce a substantial part of the Marion Sinclair song Kookaburra Sits in the Old Gum Tree, and therefore infringed the copyright in the song. However, Justice Emmett noted that he had “some disquiet” about the decision, given that “the quotation or reproduction of the melody of Kookaburra appears by way of tribute to the iconicity of Kookaburra, and as one of a number of references made in Down Under to Australian icons”. [1]


Emmett noted, further: “One may wonder whether the framers of the Statute of Anne and its descendants would have regarded the taking of the melody of Kookaburra in the Impugned Recordings as infringement, rather than as a fair use that did not in any way detract from the benefit given to Ms Sinclair for her intellectual effort in producing Kookaburra”. [2]


The Full Court also allowed a cross appeal by Larrikin (the current owner of copyright in Kookaburra) on the issue of whether EMI had also authorised infringements by licensing the use of the Down Under song. Justice Jagot said that the trial judge’s reasons did not adequately deal with the parties’ contentions on this issue and therefore ordered that the question of authorisation be remitted back to the trial judge. [3] So we can expect to see another decision on Kookaburra some time in the near future.


To read the full appeal decision see:


[1] EMI Songs Australia Pty Limited v Larrikin Music Publishing Pty Limited [2011] FCAFC 47 (31 March 2011), at 99

[2] EMI v Larrikin, at 101

[3] EMI v Larrikin, at 250

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Italian court rules that Yahoo! Italia contributed to infringement 28/04/2011

The Court of Rome has held that search engine Yahoo! Italia is liable for contributory infringement of copyright in the film About Elly because it linked to websites where unauthorised copies of the film were made available [1].


The Yahoo! Italia search service generates links to content on the internet in response to users entering in search terms. The film’s distributor, PFA Films, argued that despite being notified that its search results were generating links to infringing content, Yahoo! Italia did nothing [2]. It was this failure to take action that provided the basis for the Court’s decision.


The case raises questions about the liability of search engines when it comes to generated results linking to infringing content, and at a broader level, the scope of a service provider’s obligation to act should it be notified of infringements carried out by third parties. It also raises questions about what constitutes sufficient notification by rights-holders.


These questions are being considered in similar disputes currently underway around the globe. Australia’s iiNet case [3] is one; the Viacom v YouTube litigation in the US is another [4]. In Australia, the issue of linking to infringing content was also addressed in the case of Universal Music v Cooper [5], where the respondent was found liable for authorising infringements by operating and owning the website “MP3s4free” which contained links directing users to infringing content.


Yahoo! Italia is said to be appealing the decision [6].


[1] Società Italiana Brevetti. “Yahoo! Italia held liable for copyright infringement by Italian court”,


[2] Portolano Colella Cavallo Studio Legale (Antonella Barbieri and Federica De Santis). “Yahoo! Italia liable for film copyright Infringement”. International Law Office, April 7 2011

[3] Roadshow Films Pty Limited v iiNet Limited [2011] FCAFC 23

[4] Viacom International Inc. v YouTube Inc, U.S District Court, Southern District of New York, No. 07-02103

[5] Universal Music v Cooper [2005] FCA 972

[6] The IPKat. “Search Yahoo! for Elly? Not on Your Nellie”, 28 March 2011.

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