4 October 2012 Newsletter − IP & Technology

The use of copyright protected works as set dressing in films under Danish law

On 28 June 2012, the Enforcement Court of Copenhagen ruled in a injunction case regarding the extent of film production companies’ right to use copyright protected works as a part of their set dressing. More specifically, the court was to decide whether an injunction prohibiting the market- ing, distribution and showing of the film “Dark Shadows” could be granted since one or more “Thomas Dam Trolls” (troll dolls) appeared in the film for 7-8 seconds without the prior consent of the copyright holder of the troll dolls. The court eventually decided against such an injunction.

Side 2 This newsletter describes the main legal aspects of this ruling with a focus on the copyright aspects of the case.

Merits of the case The film “Dark Shadows” portrayed a vampire, played by Johnny Depp, returning to life in the 70’ies after he had been buried for almost 200 years. The film contains a scene showing different toys and artefacts that were typical of the 70’ies. This includes a film sequence of 7-8 seconds show- ing one or more Thomas Dam Trolls, with their brightly coloured hair, which were popular during this era.

In the relevant sequence of the film, Johnny Depp’s character points his finger at an orange haired troll doll standing on a table while he carries on a conversation with another character. Having been buried alive for almost 200 years, he is not familiar with the aesthetics of the 1970ies and his face reveals a distinct reaction to the troll doll as it does to the other toys and gadgets in the room. It was argued by the plaintiff that an additional troll doll with purple hair was lying down behind the standing troll doll. The production company had not obtained permission to use any Thomas Dam Trolls in the film.

Because of this film sequence, Dam Things Holding ApS, the company responsible for the admin- istration of the copyright right vested in the Thomas Dam Troll, brought an injunction action against the distributor of the film in Denmark, SF Film A/S. Gorrissen Federspiel represented the producer of the film, Shadowdark Productions Limited, who was allowed to intervene in the injunc- tion case in support of SF Film A/S seeing that the consequences of an injunction would be substan- tial – not only for SF Film A/S and Shadowdark Productions Limited but for the film industry as such.

Legal questions It was undisputed that the Thomas Dam Troll is copyright protected pursuant to the Danish Copy- right Act. According to this act the copyright holder has the exclusive right to control the protected work by reproducing it and by making it available to the public. This includes producing a film por- traying the troll dolls and subsequently making the film available to the public.

The question with regard to the purple haired troll doll lying down was, however, whether or not the use thereof was so fleeting in its visual presence that it did not constitute a reproduction or a show- ing of a work.

Further, with regard to the standing troll doll, it was disputed whether any exceptions to the Danish Copyright Act were applicable. In particular the court examined whether section 23(3) of the Dan- ish Copyright Act could apply. This section stipulates that “Published works of art or copies of works of art that have been transferred to others by the author may be used in newspapers, periodicals, films and television if the use is of subordinate importance in the context in question”. In particular, the court had to decide what is to be understood by “subordinate importance” (in Danish: “under- ordnet betydning”).

This further raised the question of how the wording should be interpreted in the light of the Infosoc Directive (Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related

Side 3 rights in the information society). According to article 5(3)(i) of the Infosoc Directive, the Member States may provide for limitations to copyright in the case of “incidental inclusion of a work or other subject-matter in other material”. The plaintiff alleged that due to the Infosoc Directive, section 23(3) of the Danish copyright act should be interpreted restrictively. The plaintiff therefore argued that the wording of section 23(3) “subordinate importance in the context in question” should be understood as an “incidental inclusion” in the sense “unintentional”.

Practical implications of the legal questions The legal questions of the case were of pivotal importance to the film industry. A restrictive inter- pretation would greatly impact the entire film production industry in Denmark and, further, the way in which films are distributed on the Danish market.

As witness and expert statements confirmed, modern film production is highly institutionalised. El- ements in the set dressings (the physical items placed on a set to make it look realistic and/or in ac- cordance with a specific environment, place or time in history) are carefully chosen by set dressers who frequently use the services of “prop houses” specialising in always having such artefact in stock. In addition hereto, the producer usually has an internal clearing process which entails that the script as well as footages from the film – and subsequently the entire director’s cut – are carefully scrutinised in order to avoid infringements.

If film production companies would have to obtain licenses to every single item used in the back- ground of or in some other subordinate way in a film (which could include cutlery, electrical sockets and all other everyday items), the process would be so cumbersome and expensive that it would be almost impossible to create the realistic environments that modern films depict.

Court findings The court viewed the film in its entirety and later on it reviewed the particular 7-8 second disputed sequence.

With regard to the troll doll lying down, the Court found that it was portrayed in such a manner that it by the second and isolated viewing of the scene could only fleetingly be perceived as a troll doll lying down. Therefore the court concluded that an ordinary spectator would not perceive the identi- ty of the copyright protected work. For this reason, the use did not fall under the Danish Copyright Act – in essence a de minimis approach.

On the other hand, the standing and more visible troll doll fell within the scope of the Danish Copy- right Act. It was undisputed, that the inclusion of the troll doll in the film was an intentional part of the set dressing and the question was rather if the use was acceptable due to the content of section 23(3) of the Copyright Act and its interpretation according to the Infosoc Directive.

It follows from the preparatory works to the Danish Copyright Act in connection with the imple- mentation of the directive that “The applicable Danish Copyright Act is essentially consistent with the Directive” and further that article 5(3)(i) provides a “legal basis for maintaining section 23(4)” (now section 23(3)). Accordingly, the Danish legislator has taken the view that article 23(3) was al- ready consistent with the Infosoc Directive prior to its implementation.

Side 4 From an expert opinion by professor LLD Thomas Riis concerning “Subordinate use of works pro- tected by copyright; in particular in relation to the rule in section 23(3) of the Danish Copyright Act” it follows that there is no case law from the European Court of Justice on the interpretation of article 5(3)(i). Further the opinion stated that there is nothing in the legislative material for the Di- rective suggesting that the provision should be interpreted restrictively to the effect that it only comprises works used unintentionally.

Conclusively, the preparatory works for the Danish Copyright Act still function as a relevant ele- ment in the interpretation of the extent of section 23(3). It follows from the preparatory works that the scope of the exception in 23(3) is exceeded “if, through repeated showings a work ends up play- ing a more prominent role as part of the stylistic effects of a TV production”. In other words; if the troll doll does not play a more prominent role of the stylistic effects in the production, Dam Things Holding ApS cannot prohibit the use through the Danish Copyright Act.

Based on an overall assessment, the Enforcement Court found that the use of the standing troll doll was of subordinate importance in the film: It was only shown briefly and it did not form part of the dialogue or the storyline and it was used in the scene together with other items that were typical of the time period.

For these reasons, the defendant had not infringed the copyright vested in the “Thomas Dam Troll”.

Janne Glæsel IP & Technology Direct + 45 33 41 42 81 Mobile + 45 27 80 40 10 [email protected]

Johan Leonhard Svendsen IP & Technology Direct + 45 33 41 43 72 Mobile + 45 27 80 40 52 [email protected]

Miya Cara Akselgaard IP & Technology Direct + 45 33 41 42 50 Mobile + 45 24 28 68 51 [email protected]

This information does not constitute and cannot replace legal advice. Gorrissen Federspiel does not assume any liability for damage or losses which directly or indirectly are related to the use of the information.