9 June 2020CopyrightSarah Morgan

Wales must face Dylan Thomas copyright claim

The Welsh government is not immune from a lawsuit which claims that it infringed on copyright-protected photographs of poet Dylan Thomas in a tourist campaign.

The US Court of Appeals for the Second Circuit yesterday, June 8,  concluded that the Welsh government’s  tourism agency acted as a commercial entity and consequently negated its sovereign immunity from Pablo Star’s claims.

Pablo Star owns the copyright in two photographs of the Welsh poet and his wife Caitlin Macnamara. “Just Married,” pictured the couple after their wedding in 1937 and “Penard” shows them playing croquet.

After its formation in 2006, the tourism agency began using Dylan Thomas’s likeness, including the “Just Married” and “Penard” photographs, to promote tourism to Wales on its wales.com website.

The allegedly infringing materials include a map and brochure entitled “Dylan Thomas Walking Tour of Greenwich Village, New York”, which displayed the “Just Married” photograph with a copyright notice beneath stating “Copyright Jeff Towns/Dylan’s Bookstore.”

In 2012, after Pablo Star had registered its copyrights in the two photographs, the company discovered that the Welsh government was using the “Just Married” photograph of Dylan Thomas without its permission.

Despite an assurance that it would stop using the photograph, the Welsh government reportedly continued to use the photograph and provided copies to US media companies for use in articles about Dylan Thomas that promoted tourism to Wales.

Three years later, in 2015, Pablo Star filed suit against the Welsh government. After “several years of procedural skirmishing”, said the Second Circuit, the government moved to dismiss, asserting sovereign immunity.

However, in March 2019, the district court denied the motion to dismiss. The Welsh government subsequently filed an interlocutory appeal, challenging the district court’s decision to deny its motion.

First, the government argued that its promotion in the US of tourism to Wales was not commercial, but rather governmental, in nature.

“Every aspect of the Welsh government’s conduct that forms the basis of Pablo Star’s claim could have been done by a private party for commercial gain,” said the Second Circuit.

The Welsh government argued that it was acting to promote Welsh culture and tourism pursuant to its statutory mandate.

In response, the court said: “Those, however, are the purposes or reasons for the Welsh government’s actions, and not what it did to accomplish its goals. The means by which it pursued its goals was the publication, on-line and in print, of what are essentially advertising materials.”

Second, the Welsh government claimed that, even if its conduct was commercial, it did not have the requisite substantial contact with the US.

According to the government, all relevant activity took place in Wales or the UK, with its tourism action plan being formulated in Wales and all electronic storage and distribution of the photographs occurring from computers and servers in the UK.

Again, the Second Circuit sided with the lower court, finding that the Welsh government’s conduct in New York reached beyond the confines of its consular office.

Taken together, the government’s activities such as the walking tour, the distribution of photographs to American media companies and a 14-panel exhibition on the history of the Welsh in America for display in American venues, “clearly demonstrates” that the Welsh government had substantial contact, said the court.

The Second Circuit affirmed the district court’s denial of the motion.

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13 February 2020   The Australian province of New South Wales has settled a long-running dispute with the country’s Copyright Agency over the use of copyright-protected works in internal government files.
24 April 2020   UNESCO ambassador Jean-Michel Jarre has suggested a radical reimagination of copyright—what if it could last forever?
25 November 2021   The Welsh government has settled a copyright infringement lawsuit involving its use of images of the poet Dylan Thomas in a tourism campaign and other marketing materials.