AUCTION HOUSE CATALOGUES OF PAINTINGS UNDER SINGAPORE COPYRIGHT LAW

• Author: ASSAFA ENDESHAW
• Citation: (1997) 9 SAcLJ 35
• Published date: 01 December 1997
• Date: 01 December 1997

1. Introduction

Recently, there was a report in the local press1 of an interesting dispute between a copyright owner of certain paintings and auction houses that sought to publish a catalogue of those paintings for the purpose of selling them. The copyright owner contended that the auction houses were not legally entitled to issue the catalogue without his permission. By contrast, the auction houses argued that they did not normally request such permission from copyright owners since the sole purpose of publishing catalogues would be to sell paintings.

The paintings originally belonged to a famed artist who passed away apparently leaving behind the copyright in the paintings to his second son, also an artist. The son resisted the reproduction of the paintings for catalogues reportedly because the auction houses failed to show him the captions they might use to accompany the paintings; he also suspected that the captions might damage “the image of his father”. It was staled by one of the auction houses that the father had consented to the inclusion of his works in catalogues for resale and the son’s refusal was not legitimate. Nevertheless, some of the auction houses considered the controversy to be “annoying” and decided to withdraw the paintings from their resale collections “to avoid unnecessary trouble.”2

It should be stated from the outset that the current law in Singapore does not provide a definite solution to this controversy. There is no section in the 1987 Copyright Act3 that covers it squarely. Neither has there been any relevant case authority throughout the common law jurisdictions that can be relied on to clarify the situation. Moreover, both the 1911 and 1956 Copyright Acts of the United Kingdom and Australia (1968), which influenced Singapore copyright law, did not contain a rule directly applicable to such a problem. The 1988 United Kingdom Copyright, Designs and Patents Act (CDPA) has however introduced a change that fills this clear gap. It states in section 63(1) that copying or issuing to the public copies for the purpose of advertising the sale of a work is not an infringement of the work.

This article attempts to examine the validity of the arguments put forward by both sides in the ‘catalogue dispute’ in the light of related common law decisions and the current copyright law in Singapore. It will inquire into

whether the lack of a specific provision in Singapore copyright law (as has been the case in the Australian predecessor) has the effect that, as might have been in the UK prior to 1988, auction houses would have to request for permission on each occasion that they plan to sell a painting no longer belonging to the copyright owner but to a collector. It will conclude by indicating whether the introduction of an express exception in favour of auction houses or sellers of art objects generally would be advisable in Singapore.

2. The Nature of Copyright in a Painting

The Singapore Copyright Act 1987 (hereinafter, “SCA”) was the result of an attempt to revise, rather than codify, the previous law in Singapore (contained, inter alia, in the 1911 UK Copyright Act) and bring about an entirely new copyright law. The new law very closely followed the provisions of the Australian Copyright Act of 1968 (in turn modelled on the UK Copyright Act 1956).

The SCA defines copyright, in section 26, as the exclusive right to do certain acts in relation to creative “works”. The latter are in turn identified in section 7(1) as being literary, dramatic, musical or artistic works. The acts listed in section 26(a) as the exclusive rights of a person who has the copyright in literary, dramatic or musical works are: reproducing the work in any material form; publishing it (if it is unpublished); performing it in public; including it in a television broadcast or a cable programme; and adapting it.

The paintings which became the subjects of the recent controversy are clearly artistic works because the definition of artistic works in section 7(1) expressly includes them. As such, they are protectable works under copyright law. It would appear that there was no disagreement between the auction houses and the son of the deceased artist, the current copyright owner, about the subsistence of copyright in the paintings. The significance of this is that any acts comprised in the copyright in relation to the paintings would be exclusive to the son, the new owner of the copyright in them. Essentially, the owner of the copyright in the paintings, the son of the famous artist, is entitled to exclude other persons from dealing with them in any way unless he consents. Section 26(b) of SCA4 states specifically that copyright in artistic works (and hence in paintings) involves their reproduction in a material form, their publication if unpublished and their inclusion in a television broadcast or a cable programme. In the controversy under discussion, the copyright owner of the painting would appear to have an absolute right whether to give or withhold his permission for reproduction of the paintings in any form.

The tact that the copyright owner has these exclusive rights in relation to the painting means that he can deal with them as he thinks fit and for the ends that he deems to be beneficial to his interests. Selling the painting is one option, indeed this represents the usual means by which artists earn a living. It should be noted that the sale of a painting is completely different from the sale of the copyright in the painting (the incorporeal right or property). The two are separate and distinct in law.5 Hence, a buyer of a painting is entitled to enjoy the painting as any ordinary chattel but, in all cases, without doing any alterations on it, without reproducing it in any way, without exhibiting it in public or including it in a television broadcast or cable programme. These are standard limits that the law imposes on users of copyright materials to protect the rights of those who have created them or who have acquired the copyright in some other way (e.g. through purchase, assignment or inheritance).

On the face of it, therefore, auction houses that print catalogues of paintings sold by copyright owners without permission by the latter to do so appear to be in clear breach of the limit set by copyright law. Indeed, section 31 of the SCA states that a person who does not possess a licence from the copyright owner and yet encroaches on the exclusive rights of the owner infringes the copyright in the work. The crucial issue in the dispute in question accordingly becomes whether or not the auction houses which sought to publish a reproduction (photograph or some other copy) of the paintings would be infringing the copyright in the paintings, since they had neither requested nor obtained permission from the current copyright owner of the paintings to do so.

The form of reproduction of the paintings seems to be irrelevant because the act of reproduction itself is a restricted right of the copyright owner. Section 26(b)(i) of SCA refers to reproduction “in a material form”.6 Consequently, the publication of catalogues by the auction houses will certainly be a reproduction which infringes the exclusive right of the copyright owner. However, a number of serious questions arise in a situation such as this where a painting sold by an artist and belonging to a new owner (including, obviously, collectors) is to be resold through auction houses:

1. (i) whether the issue of the catalogue to the public freely should not be ignored as being “insubstantial copying” or falling within the de minimis rule;

1. (ii) whether the usual practice of auction houses to put items for sale in catalogues and issue them free of charge to interested buyers and the public at large would be protected by the ‘fair dealing’ exceptions from copyright;

2. (iii) whether paintings sold to a third party should or should not be subject to an implied condition that auction houses selling those paintings by themselves or on behalf of a third party must be allowed to do acts in furtherance of the sale although those acts might appear to be infringing.

3. Limits to the Exclusive Right in a Painting

For reasons beyond the scope of this article7, copyright law recognises a number of limits to, and exceptions from, the exclusive (monopoly) rights that it bestows on creators of works, including painters. Although the operations of the exceptions to the exclusive rights depend in the overall on the pertinent facts in each case, it is possible to define such exceptions in broad terms and examine whether or not they can resolve the problems that publication of catalogues entails.

Incidental or Insubstantial copying

According to section 66 of SCA8, publication of a reproduction of a painting does not infringe the copyright in the painting if the making of such a reproduction did not “constitute an infringement of the copyright” by virtue of sections 63, 64 or 65. Section 63 allows the making of a painting, drawing, engraving or photograph as well as inclusion in a film or television broadcast of sculptures and works of artistic craftsmanship that are permanently situated in a public place, or in premises open to the public. Section 64 extends the same to buildings or models of buildings. Again, by virtue of section 65, the inclusion, in a television broadcast or a film, of an artistic work other than those mentioned in Sections 63 and 64 will not constitute an infringement if such an act is incidental to the subject matter of the film or transmission (possibly because this is considered “ephemeral”).9 Instances would include where a painting was being displayed with the consent of the copyright owner in a public place and a film was made of that artistic work together with the setting. The painting in such cases is part of a mere background to the broadcast or the film.

It seems reasonable to extend this to the situation...