French court finds appropriation of photograph not sufficiently 'transformative' and therefore infringing

One of Malka's Flair photographs

A few days ago this blog reported on an interesting decision of the Swedish Supreme Court that held that unauthorized 'appropriation' of a substantial part of a photograph for use in a painting did not amount to copyright infringement, as the meaning of the defendant's work was different from the original work.

A few days ago, also a French court (Versailles Court of Appeal) had the opportunity to decide a case (Malka v Klasen, RG No 15/06029, 16 March 2018) with a similar factual background. 

Unlike the Swedish Supreme Court, the Versailles Court of Appeal held that the defendant had infringed the claimant's copyright. It found that the defendant could neither invoke the parody defence under French copyright law nor freedom of (artistic) expression under the European Convention on Human Rights (ECHR).

Let's see what happened.

Background

Photographer Alix Malka authored three portrait photographs of a model with make-up on that were published in 2005 in the beauty section of Italian women’s magazine (now discontinued) Flair together with an indication of his name.

Malka later discovered that reproductions of these photographs had been incorporated (without his authorization) in a number of paintings by Peter Klasen.

Malka sued for copyright infringement. In 2012 the TGI Paris (Court of First Instance) dismissed his action, but the following year the Paris Court of Appeal reversed the decision and awarded damages for EUR 50,000.

The case eventually reached the French Supreme Court, which in 2015 noted that a fair balance must be struck between copyright protection and the protection of third parties’ freedom of expression, which includes artistic expression. According to France’s highest judicature the Court of Appeal had failed to undertake properly this assessment and explain in what sense freedom of expression could be compressed within Article 10(2) ECHR. This provision sets the conditions on the basis of which freedom of expression may be restricted. Therefore, the court sent the case to the Versailles Court of Appeal for a new assessment.

The Versailles decision

The substantial analysis of the court began with an assessment of whether the claimant’s photographs could be regarded as protectable, ie sufficient original in the sense of being their author’s own intellectual creation.

Originality of the claimant’s works

The standard of originality for photographs has been expressly harmonized at the EU level by Article 6 of the Term Directive. The Court of Justice of the European Union (CJEU) has had the opportunity to clarify the meaning of the phrase ‘author’s own intellectual creation’ on a number of occasions. With particular regard to photographs (and portrait photographs) the most enlightening decision remains the one in Painer, in which the CJEU spoke of the need for: (1) ‘free and creative choices’ that can be done at different stages of the production of a photograph; and (2) a creative result that ultimately displays the ‘personal touch’ of its author.

The Versailles court recalled that it is for the claimant to demonstrate where the originality of his/her work lies [in this respect, readers might recall a fairly odd case concerning an iconic photograph of Jimi Hendix realised by Gered Mankowitz, which initially was denied the status of copyright-protected work]. Malka was considered as having demonstrated the original character of his creations, which were found to carry his own personal touch. The court dismissed the defendant’s argument that the photographs at issue would be devoid of originality, and also noted that it would make no difference if the original works were used for advertising purposes or simply to illustrate an article detailing beauty trends.

One of Klasen's paintings

The parody defence

Having established this, the court turned to consideration of whether the defendant could escape a finding of liability by relying on the parody defence within Article L 122-5 No 4 of the French IP Code. 

Once a work is published, the author cannot in fact prevent “La parodie, le pastiche et la caricature, compte tenu des lois du genre.” [it is arguable that after the CJEU decision in Deckmyn, however, requiring compliance with the laws of the genre may be no longer compatible with EU law, as the CJEU ruled out that a parody would be subject to any conditions other than those it indicated in its judgment; see further here]

Klasen argued in fact that his use of the claimant’s photographs would be protected as a parody, because with his work he had sought to denounce the excesses of consumerism and the ‘advertising subculture’ through the image of women in the media. He also added that no confusion or association could occur between his own work and the works of the claimant.

The Versailles court did not accept the defendant’s argument. It held that no distortion of the original works had taken place. [In Deckmyn the CJEU held that a parody has two essential characteristics: first, to evoke an existing work while being noticeably different from it, and, secondly, to constitute an expression of humour or mockery.]

The additions by Klasen did not really alter the meaning of the original photographs. Even if the photographs had been ‘appropriated’ and incorporated into the new work, no parody or derision could be discerned.

Freedom of expression

Finally, the Versailles court addressed the interplay between copyright protection and freedom of expression under the ECHR [it is worth recalling that the EU Charter of Fundamental Rights, which has rank of primary source of EU law, also mandates protection of both intellectual property as a fundamental right within the right to property (Article 17(2)) and freedom of expression (Article 11)].

To this end, Klasen invoked the decision of the European Court of Human Rights (ECtHR) in Ashby Donald v France [here and here; this is frankly quite an odd move, especially considering that in that case the ECtHR concluded that there had been no undue interference with the applicants' freedom of expression and that French copyright laws and their application had not repressed freedom of expression in a way that would exceed the limits of Article 10(2) ECHR…]

The Versailles court rejected Klasen’s argument, and stated that it was rather up to him to set a fair balance between the protection of his own freedom of expression and the fact that permission is generally required to use someone else’s work, especially if the use is of such works without any substantial alteration.

The court also rejected Klasen’s argument that appropriation art is such that permission cannot be obtained to use third-party objects and images. The analogy with Andy Wharol’s representation of the Campbell Soup cans was not appropriate - said the court - as in the case of Wharol nothing suggested (as was instead the case of Klasen) that he was responsible for the graphics of the Campbell Soup cans. In other words, in the present case appropriation was not apparent.

Ehm ... not such a 'discreet' make-up,
to say the least

Conclusion

The Versailles court concluded that Klasen had infringed Malka’s economic and moral rights, and ordered him to pay damages for EUR 50,000.

Comment

The decision of the Versailles court is not particularly surprising, although it would have been interesting to review the availability of defences other than parody. Overall, it appears that the court's assessment of parody is in line with the CJEU decision in Deckmyn. 

It is quite striking to see how cases with similar backgrounds, ie the Swedish and French ones, ultimately had diverging outcomes. In this sense, what has appeared crucial is the fact that the Versailles court did not find any use of the claimant's works that could be regarded as really transformative. But: transformative in what sense? Since the focus was on parody, the degree of transformation was considered from this perspective. Should the lens have been different (eg quotation, criticism/review), perhaps a different outcome might have been possible.

Finally, reliance on freedom of expression alone appears reserved to quite exceptional cases, and the Versailles court seemed to confirm this point.