Several news sites have reported an interesting copyright case involving the Wikimedia Foundation and the National Portrait Gallery (NPG) in Britain. The NPG undertook a £1 million GBP digitisation exercise, and placed high-definition versions of their pictures in a database locked with technological protection measures. Derrick Coetzee, a volunteer for the Wikimedia Foundation, accessed the database, circumvented the protection, and uploaded 3,300 NPG pictures to Wikimedia Commons. The original portraits are in the public domain, so it would be a fair assumption that pictures of the originals would not have copyright either. However, the NPG disagreed, and sent a cease-and-desist letter to Mr Coatzee alleging copyright infringement, database right infringement, circumvention of technological protection measures, and breach of contract. This is an interesting legal issue for many reasons, chiefly because the legal status of pictures of public domain paintings is not clear in UK copyright law.
Each of the claims can be examined separately. The first one is the question of whether or not the pictures of paintings have copyright. There is an American authority on this very same point, Bridgeman Art Library v. Corel Corp, where Bridgeman Art Library had taken several photographs of public domain paintings, which were copied by Corel and sold in a multimedia CD-ROM. The court in second instance ruled that slavish copying of a painting through a photograph does not constitute originality, and therefore does not have copyright. While the ruling does not constitute precedent in UK jurisdictions, it could be taken into consideration by a court in the UK, as has been the case in many other instances where there are no relevant authorities. The heart of the copyright question is one of originality, does the taking of a photograph of a painting amount to an original work, and therefore should it be protected by copyright? The existing case law on originality seems to leave the question open. Francis Davey pointed me to Hyperion Records v Sawkins, where the Court of Appeals discussed the issue of originality, sweat of the brow and skill and labour in the creation of a copy of a work in the public domain. Jacob LJ seems to hint that mere copies of a work may not constitute a new original work when he says that:
It was no different from the case of a person making a copy of another’s work (such as the copy of a painting or the enlargement of a photograph): the process might call for effort, skill and judgement, but it did not transform a copy of a work into an original work attracting a fresh copyright…”
He then goes on to establish a test for originality:
“In the end the question is one of degree – how much skill, labour and judgement in the making of the copy is that of the creator of that copy? Both individual creative input and sweat of brow may be involved and will be factors in the overall evaluation.”
Another relevant authority is Interlego v Tyco Industries. In this case, Lord Oliver discusses precisely the point of originality. He comments:
“Take the simplest case of artistic copyright, a painting or photograph. It takes great skill, judgement and labour to produce a good copy by painting or to produce an enlarged photograph from a positive print, but no one would reasonably contend that the copy painting or enlargement was an ‘original’ artistic work in which the copier is entitled to claim copyright. Skill, labour or judgement merely in the process of copying cannot confer originality.”
This is an entirely open question as far as I am concerned, and I think that there is a strong argument to be made that digitisation of original paintings does not require enough skill and labour to warrant fresh copyright on the images, but I am willing to concede that this could go either way.
The second claim by the NPG is that Mr Coatzee has infringed their exclusive database rights. The NPG is correct to claim that the EU has a sui generis database right, but fails to mention that this right has been seriously eroded by the European Court of Justice (ECJ) in a series of cases (e.g. British Horseracing Board v William Hill). The database right subsists, according to s.13 of the Copyright and Rights in Databases Regulations 1997, “if there has been a substantial investment in obtaining, verifying or presenting the contents of the database“. The NPG has declared that it incurred in a $1 million GBP digitisation process, but interestingly, this sort of investment does not serve to warrant the database right. In British Horseracing, the ECJ commented that:
“The expression ‘investment in the obtaining of the contents of a database’ in Article 7(1) of the directive must be understood to refer to the resources used to seek out existing independent materials and collect them in the database. It does not cover the resources used for the creation of materials which make up the contents of a database”
This is a vital point that has been completely missed by the NPG. It does not matter how much was spent in taking the pictures and digitising the paintings, what matters is the investment in creating the database proper, not its contents. The NPG would have to demonstrate that it has incurred in substantial investment in creating the database in order to claim that it holds a database right over it. Even if it managed to do this, the ECJ has set the bar high as to what can be considered infringement. According to s.16 of the 1997 Database Regulations, “a person infringes database right in a database if, without the consent of the owner of the right, he extracts or re-utilises all or a substantial part of the contents of the database“. The question would be what is to be considered a substantial part of the contents of the database. The ECJ has commented that the term “substantial” has to be analysed both qualitatively and quantitatively, so there will be an analysis of the quantity of content taken in relation to the whole database, but also the relative importance of that content to the overall investment incurred in creating the database.
I would be extremely surprised if the NPG was able to get any results on their database right claim, particularly when one considers that the digitisation investment was financed with public funds.
The third claim is that of circumvention of technological protection measures. This claim is based on ss.296ZF(1) and 296ZA of the 1988 CDPA. These are compelling arguments, as these are restrictions against the breaking of technical measures designed to protect copyright works, and it seems clear that Mr Coatzee broke the protection built into the database in order to access the high resolution version of the images. However, this claim rests entirely on the pictures being subject to copyright protection, and as I have mentioned earlier, this is not straightforward in the slightest.
In my opinion, NPG’s strongest argument may be their breach of contract claim. They say:
“Clearly visible on every page of our client’s website where an image can be seen there is a “Use this Portrait” menu on which two links are clearly visible:
- “License this image” and
- “Use this image on your website”
If you click on either of these links the first thing that you are told is that you need permission to reproduce our client’s images. Your downloading of our client’s images and subsequent uploading of those images to the Wikipedia website has therefore been carried out in direct contravention of the clear rules and this amounts to a breach of contract.”
This is a browse-wrap agreement agreement, as the terms and conditions are located in a link at the bottom of the page, as opposed to a specific acceptance that is presented to the user in the form of a tick-box or “I Agree” button characteristic of click-wrap agreements. Click-wrap agreements have been accepted in the UK, but browse-wraps are still not fully recognised. In an email with Simon Bradshaw talking about this case, he maintained that there is not a contract because there is not acceptance. However, the U.S. and Canadian cases dealing with browse-warp have recognised that the acceptance can be formed if the user undertakes further action other than normal browsing which could be taken as acceptance. In this case, the extraction of images would definitely be a deliberate action other than mere browsing, and in my opinion would be enough to warrant acceptance of the terms and conditions of the case.
I am perfectly aware that this is a contentious issue, but I believe that the enforceability of browse-wrap agreements is of utmost importance for all sort of reasons, but it is particularly vital to people involved in the open and commons movements, such as Wikimedia Foundation. After all, Wikimedia content is released using open licences such as Creative Commons, which are by definition browse-wrap agreements. If one was to argue that the terms and conditions present in the NPG website are not binding, then neither would be the CC licences that protect Wikipedia articles, or the browse-wrap agreements that protect open source software. Furthermore, browse-wrap agreements are an important part of electronic commerce transactions, and they are used and assumed all over the industry. To disallow them would equate chaos.
To conclude, this is an interesting legal case for many reasons. I have not even gone into the many jurisdictional considerations, as Mr Coatzee is an American citizen. I believe that the NPG would have a difficult time in court, with the exception of the contractual case, but as I said, many of the legal issues are completely open in the UK. In a selfish way, I wish the case would be litigated, as it would provide us with some interesting precedent in the case of originality of copies of public domain works, and also on the issue of browse-wrap agreements.