Guidelines from overseas case law
By Wim Alberts
An ‘artistic work’ as envisaged in the Copyright Act 98 of 1978 (the Act) can relate to a number of works, such as a painting. One question is whether a soap opera, for example, can show a painting in scenes of its episodes. Is it acceptable if it is only visible momentarily or could it amount to copyright infringement and, if so, in what circumstances? Is it a question of prominence or duration of visibility?
Section 15(1) of the Act states:
‘The copyright in an artistic work shall not be infringed by its inclusion in a cinematograph film or a television broadcast or transmission in a diffusion service, if such inclusion is merely by way of background, or incidental, to the principal matters represented in the film, broadcast or transmission’ (my emphasis).
What is meant by incidental use? A classic example is found in the Italian Book Corporation v American Broadcasting Companies, Inc. 458 F. Supp 65 (DCNY 1978) case. Here, at a religious festival, in the form of an outdoor street fair in Little Italy in New York, a television news crew filmed a band playing music on a float in a parade. Portions were recorded and broadcast on the news and infringement proceedings were instituted against the television station. In rejecting the owner’s claim, and accepting the fair use defence, the court stated:
‘The filming and recording of the song as part of the television news report was wholly fortuitous, entirely uncomplicated by any prior intent … to film that particular song … . Use of the song was incidental to the overall, informative purpose of the newscast.’
This article will consider the notion of incidental use of a copyrighted work. I am not aware of any case law on the point in South Africa and brief consideration will therefore be given to case law in other countries.
Australia
Section 67 of the Copyright Act 1968 determines that:
‘[T]he copyright in an artistic work is not infringed by the inclusion of the work in a cinematograph film or in a television broadcast if its inclusion in the film or broadcast is only incidental to the principal matters represented in the film or broadcast.’
In Thompson v Eagle Boys Dial-A-Pizza Australia Pty Limited [2001] FCA 741 the following was said in a television advertisement for a pizza restaurant:
‘I reckon there’s one really important thing all Aussies should look for in a pizza. Is it from a 100% Australian owned company? Because, if it’s not, your money’s getting delivered overseas. At Eagle Boys we’re Australian through and through.’
These words were spoken while the speaker stood against a background of two pizza boxes used by the well-known Pizza Hut restaurants. The two boxes were then placed on an airport trolley and moved towards a waiting American aeroplane. In dismissing an application for an interlocutory injunction based on copyright infringement, the court stated that the case involved the application of s 67 to an instance of ‘deliberate’ use of an artistic work (being the ‘get-up’ of the delivery box) for purposes of a comparative advertisement. There was, in the view of the applicant, nothing incidental about the use of the boxes. The aim of the advertisement was to contrast the respondent, claiming to be 100% Australian owned, with the applicant, perceived not to be. The court said, at para 20:
‘I think [the applicants’ legal representative] is correct to say the use of the Pizza Hut get-up was deliberate and that it relates to the rationale of the television commercial. On the other hand, [the respondent’s legal representative] says that, although the reference to Pizza Hut is deliberate, the inclusion of the art work is only incidental, simply to get across the major point. He says this is not a case where the published matter focuses on the artwork as such; as would be the case, for example, if there was a programme dealing with a particular artistic work and its merits or lack of merits’ (my emphasis).
The court referred to the implications of the acceptance of the applicants’ view. The result could be that it would amount to an infringement for an advertiser – or even a broadcaster – to use the logo of a third party to illustrate an issue being discussed. It was pointed out by the court that the editor of a television programme dealing with a particular company or product often shows a related logo or advertising material, with the purpose of providing recognisable graphic material against an oral presentation (para 21). This would not be possible if the applicants’ view was accepted.
United Kingdom
The Copyright, Designs and Patents Act 1988 (c48) states the following in s 31(1):
‘Copyright in a work is not infringed by its incidental inclusion in an artistic work, sound recording, film or broadcast.’
The exception’s application is, however, limited in the case of a musical work, words spoken or sung with music, or so much of a sound recording, broadcast or cable programme as includes a musical work or such words. These shall not be regarded as incidentally included in another work if done deliberately (s 31(3)). How are these provisions interpreted? In IPC Magazines v MGN [1998] FSR 431 a television advertisement featured the front cover of a competitor’s magazine (a price comparison was made). It was said that the intention of the advertisement’s producers was irrelevant as far as the issue of incidental use was concerned (441). The court stated the correct inquiry to be whether the inclusion of the works concerned (the competing magazine’s masthead, layout and the relevant photographs) was ‘incidental’; that is, ‘casual’, ‘inessential’, ‘subordinate’ or ‘merely background’? (the submission of H Laddie, P Prescott and M Vitoria The Modern Law of Copyright and Designs 2ed (Butterworths 1995) at 138). It was said that the impact of the advertisement would be entirely lost if the front cover was not used. As the inclusion was an essential and important feature of the advertisement (441), the incidental use defence was rejected. The prominence of the part used was thus important.
In Football Association Premier League Ltd v Panini UK Ltd [2004] FSR 1 the respondent distributed collectible stickers depicting well-known soccer players. The photographs of the players showed, among others, the badges of the soccer clubs. It was stated that ‘incidental’ was not intended to mean ‘unintentional’, and when s 31(1) and (3) are read together, ‘incidental’ in the context of s 31(1) is not confined to unintentional or non-deliberate inclusion (11). If this were the case, s 31(3) would have been unnecessary (11). In turning down the appeal, the court stated that it was impossible to say that the inclusion of the badges was incidental as the inclusion was essential to the object for which the image of the player as it appears on the sticker was created (12).
Also relevant is the Fraser-Woodward Limited v British Broadcasting Corporation Brighter Pictures Limited [2005] EWHC 472 (Ch) case. Here, a television programme dealt with the relationship between the tabloid press and celebrities. The programme showed the front page of a newspaper with a photograph of the head of Victoria Beckham appearing between the wording of a headline. In coming to the conclusion that incidental use was involved, the court articulated its view as follows:
‘The focus of the filmed shot in the programme is on the headline. It zooms in slightly during the four seconds it is shown, but that is obviously to create a little drama or visual interest. In the run up to this shot the story was introduced by Mr Morgan, and there were three separate shots of headlines appearing in the News of the World, followed by a brief clip from a BBC News broadcast of the item. Then the relevant headline and [the photograph in question] appear. I am satisfied that the headline appears as an example of another sensational headline; that is why it is there. In that context the small photograph of Mrs Beckham is incidental – it is there because it happened to be there in the original. While it might have been there to lend interest to the original headline, its appearance in the programme shot was, in everyday terms, incidental’ (my emphasis).
United States
Incidental use may feature in three contexts:
In some instances defendants have raised the defence that the use complained of was de minimis. In other words, the use fell within the scope of infringement, but the infraction was of a minor nature. The following are two cases relevant to de minimis usage.
In Ringgold v Black Entertainment Television, Inc. 126 F. 3d 70 (2nd Cir. 1997) a poster of a work of art conveying aspects of the religious experience of African-Americans was used in an episode of a television series dealing with an African-American family in a church context. At least a portion of the poster was visible nine times. In a given instance 80% of the poster was visible for between four to five seconds. The aggregate duration of sequences was 27 seconds. The court stated (at 77) that, in analysing whether a particular use of copyrighted material should be deemed de minimis, the regulations issued by the Librarian of Congress providing for royalties to be paid by public broadcasting entities for use of pictorial and visual works provided a useful analogy (chapter 37 of the Code of Federal Regulations, which is derived from s 118 of the Copyright Act 1976). In the regulations, a distinction is made between a ‘featured’ display (reg 253.8(b)(1)(i)(A)) and a ‘background and montage’ scene (reg 253.8(b)(1)(i)(B)), with a featured display attracting a higher royalty rate. The highest rate overall is payable where a work is used thematically or for programme identification (reg 253.8(b)(1)(i)(C)).
A ‘featured’ display is described as a ‘full-screen or substantially full-screen display for more than three seconds’, and a ‘background or montage’ display as ‘[a]ny display less than full-screen, or substantially full-screen, or full-screen for three seconds or less’ (reg 253.8(b)(2)). These provisions thus reflect a certain interaction between the duration the work is shown and the visibility of the work. The court commented that the Librarian of Congress ‘obviously’ considered that even the background use of a work warranted payment of a fee (at 77). The court also stated that, in effect, had the regulations applied (they only apply to public broadcasting entities), the plaintiff would have been entitled to payment for background use of the work. It was concluded that, on a quantitive assessment, the four to five second segment, reinforced by the briefer segments, was not de minimis copying (at 77).
The other relevant decision is Gordon v Nextel Communications and Mullen Advertising, Inc. 345 F. 3d 922 (3rd Cir. 2003). Here, a dentist’s chair was used in a television advertisement in which two illustrations by the plaintiff were visible. One was of a dental bridge and the other was of a root canal. The issue raised was whether the use was de minimis. The plaintiff claimed that both illustrations were shown for more than the three seconds threshold mentioned in the above regulations, with the bridge illustration appearing for 10,6 seconds and the root canal one for 7,3 seconds, including twice in close ups. Also, a 2,3 seconds shot of the root canal illustration is viewed full-screen or substantially full-screen. In relation to the bridge illustration, the court confirmed the lower court’s finding that it was de minimis, and stated (at 924):
‘Because observability is determined by the length of time the copyrighted work appears in the allegedly infringing work, as well as its prominence as revealed by the lighting and the positioning of the copyrighted work, it is apparent that the use of the bridge illustration does not rise to the level of actionable copying. The bridge illustration is never in focus and appears only as distant background.’
With regard to the use of the root canal illustration, it was said that the use fell below the quantitative threshold of actionable copying (at 924). Reference was made to the Ringgold case, where the court found that the artwork was clearly visible (at 77 of that decision). In contrast, in the Gordon decision it was held that the ‘primary impact’ of the use of the root canal illustration was linked to the words ‘root canal’; furthermore, the initial focus on the illustration was very brief (at 925). Finally, as the illustrations appeared fleetingly and were primarily out of focus, both instances of use were found to be de minimis (at 925).
The Copyright Act contains a general exclusionary provision in s 107, which reads:
‘In determining whether … use … is … fair … the factors to be considered shall include –
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;
(2) … ;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.’
In relation to the first factor, the decision in Campbell v Acuff Rose Music, Inc. 510 US 569 stressed the importance of the issue of transformative use; in other words, use of an existing work to create a new work (at 579). In Sandoval v New Line Cinema Corp. 973 F. Supp 409 (SDNY 1997) the plaintiff was the owner of the copyright in certain photographs that were included in the film Seven. At one stage the film shows detectives kicking down the door of a killer. Included in the background of the scene is a light box switched on by one of the detectives on which hangs a series of translucent forms, including photographs by the plaintiff. The scene in which the photographs appear is approximately 90 seconds long. The light box that holds the photographs is visible in the background in approximately 11 camera shots. The length of the shots range from one to six seconds, with a maximum of 30 seconds. In most shots the photographs are somewhat obstructed by actors or furniture. The camera does not focus exclusively on the light box or the photographs. Moreover, the light box images are out of focus for most of the time. The court held (at 413) that the use of the photographs was transformative, in that the defendant used the photographs in the creation of a ‘distinct visual aesthetic and overall mood for the moviegoer watching the scene in the killer’s apartment’.
Of relevance to temporary use is the decision in Field v Google Inc. 412 F. Supp 2d 1106 (D. Nev 2006), which dealt with the system of caches operated by Google. Of interest, specifically, were the provisions of the Copyright Act that create ‘safe harbours’ for online service providers. An example is s 512(b), which determines the following:
‘A service provider shall not be liable for monetary relief, or … injunctive or other equitable relief, for infringement of copyright by reason of the intermediate and temporary storage of material on a system or network controlled or operated by or for the service provider …’ (my emphasis).
The court pointed out that the copies of webpages that Google stores in its cache are present for approximately 14 to 20 days, and then found that this period was ‘intermediate and temporary’, as envisaged in s 512(b).
South Africa
As mentioned, s 15(1) of the Copyright Act provides that ‘[T]he copyright in an artistic work shall not be infringed by its inclusion in a cinematograph film or a television broadcast or transmission in a diffusion service, if such inclusion is merely by way of background, or incidental, to the principal matters represented in the film, broadcast or transmission’. As mentioned, there is no case law on this provision, as far as I am aware.
One shortcoming in the wording of s 15 should be mentioned: The use of the category ‘artistic work’ presupposes a ‘visual’ incidental use. However, as appears from the Italian Book case, a musical work could also feature. Even a literary work could come into play. An example given by Laddie et al is a film about Dublin and a famous writer wherein a pub scene features. A patron recites a few lines from a poem of the writer after being prompted by the director. The inclusion is incidental (even though deliberate) (Laddie et al at 139 note 2). It is thus advisable to extend the wording of s 15 when the opportunity arises.
Summary
It appears, firstly, that incidental use is often linked to the temporary use of a work, particularly in relation to computers and the internet. Secondly, the ‘deliberate’ or intentional inclusion of a work is not decisive, rather the reason for the inclusion is; that is, was the inclusion essential to the creation and value of the second work? Subjective intention alone is also not decisive. The Thompson case, in particular, establishes that the inclusion of a work could be ‘deliberate’ yet at the same time incidental. This aspect is of specific importance to South African law in view of the great amount of similarity between s 15 of the South African Act and s 67 of the Australian Act. A third consideration is whether the use is ‘transformative’. Fourthly, regard must be given – as per the Ringgold decision at 75 – to the fact that:
‘In cases involving visual works … the quantitative component of substantial similarity also concerns the observability of the copied work – the length of time the copied work is observable in the allegedly infringing work and such factors as focus, lighting, camera angles and prominence.’
Wim Alberts BIur LLB (UFS) LLM LLD (Unisa) is a professor of mercantile law at the University of Johannesburg.
This article was first published in De Rebus in 2012 (Aug) DR 40.
