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Altered copying: an examination of the Court’s approach

When for example a book, a song or a painting is copied without the consent of the copyright owner, it is clear that his rights have been infringed. But what if only a small part of the book has been copied? In that case it is harder to judge whether a there’s a breach of copyright. It gets even more difficult when no part of the copyright work is copied exactly. For instance, what if someone produces a very similar painting? This is what the House of Lords has referred to as “altered copying”. In this essay the approach of the courts in altered copying cases in determining whether there has been a copyright infringement will be examined.

Copyright Intellectual property law exists to make sure the creator of a work can benefit from its creation. From a moral and ethical point of view, intellectual property is justified to protect the creator to prevent others from “reaping where they have not sown”. 1 From a more economical point of view, the assurance of protection works as an incentive for innovation, research and creativity. As Laddie points out, intellectual property is a purely negative right, meaning that the author of the right can stop others from using his creation.2 Copyright constitutes a big area of intellectual property. It protects the author of original literary, dramatic, musical or artistic works, as well as sound recordings, films or broadcasts and the typographical arrangement of published editions.3 For copyright to subsist in a literary, dramatic, musical or artistic work, there are two requirements. The first requirement is that copyright only subsists when the work is recorded, in writing or any other way.4 The second is that the work should be ‘original’. As Peterson J has stated, it is not required that the work is expressed in an original form,

1 2 3 4

Bently & Sherman, Intellectual Property Law, p.4 Laddie, The Modern Law of Copyright and Designs, p.1 CDPA 1988, s 1 (1) CDPA 1988, s 3

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but that the work is not copied from another work. 5 Originality, as Lord Reid states, is “a matter of degree depending on the amount of skill, judgment or labour that has been involved in making [of the work]”.6

Infringement The infringement of copyright can be divided into primary infringement and secondary infringement. For there to be a primary infringement of copyright, the defendant must have carried out one of the restricted activities that fall under the copyright owner’s control. These restricted activities are named in section 16 (1) CDPA. These include issuing copies of the work to the public, renting or lending the work to the public, performing or showing the work in public or making an adaptation of the work, but the most important restricted activity is to copy the work. Before infringement can be proven, two other criteria have to be met. Firstly, there has to be a causal connection, meaning that the defendant’s work was derived from the copyright work, thus the similarity between the works cannot be an accidental one. Secondly, the restricted act has to have been carried out in relation to at least a substantial part of the work. The issue of substantiality is very important in altered copying cases. The issue of secondary infringement is treated in section 22-27 CDPA. There is a case of secondary infringement when a person imports an infringing copy, possesses an infringing copy in the course of business, sells or lets for hire, offers or exposes for the sake of hire an infringing copy, or in course of business exhibits in public or distributes an infringing copy. Besides stating the restricted acts, the CDPA also provides us with defences. In sections 29-30 the fair-dealing defences are named, which can be for the purpose of research or private study, criticism or review, or for the purpose of reporting current events. So in some cases, copying can be non-infringing, but this will be left out consideration as it is not relevant for the specific examination of altered copying.

5 University of London Press Ltd. v. University Tutorial Press Ltd at 608 6 Ladbroke v William Hill at 278 2


Substantiality As mentioned above and as stated in section 16 (3) CDPA the copying only constitutes to a copyright infringement if the copying is of “the work as a whole or a substantial part of it”. Laddie7 and Lord Scott8 have written about situations when substantiality becomes relevant. Generally there are two different types of cases that have to be distinguished. Firstly, there is what Laddie calls ‘partial copying’. A case of partial copying would be if the two works were different in general, but the defendant had copied a part of the claimant’s work and incorporated it into his own work. Laddie gives the example where some verses of a poem are incorporated in a book without permission of the copyright owner. Secondly, there is the scenario where the defendant has produced an original work, but without literally copying any part of the claimants work, still making excessive use of the work. Whether the defended has done this by accident or on purpose, he has changed the original work and made it into his own. This is what Laddie calls ‘altered copying’. A good description for altered copying is “an expression for cases where a defendant has derived her version from the plaintiff but sought to be sufficiently different”. 9 In the case of partial copying the issue of substantiality can be dealt with relatively easy. The question is whether the part that has been copied from the claimant’s work forms a substantial part of the claimant’s work. So once copying has been proven, it is no longer need to compare the works of the claimant and the defendant. 10 In Ladbroke v. William Hill it was found that the question whether a part is substantial, has to be decided by quality rather than quantity. A guideline that was also set out in this case is that a part that does not meet the originality requirement by itself, will normally not be a substantial part of the copyright work. 11 In Nova Productions v Mazooma it was reiterated that that copied features should not be looked at individually, but collectively as it is the cumulative effect that can mean the features constitute a substantial part.12 7 Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs, p.142 8 Lord Scott in Designers Guild at 2430-2431 9 Paul Sumpter, Intellectual Property Law: Principles in Practice, p.86 10 Lord Hoffmann in Designers Guild at 2420 11 Lord Pearce in Ladbroke v William Hill at 293 12 Nova Productions v Mazooma Games (Chancery Division) at 361 3


Altered copying In the case of altered copying there is no clear part of the work that has been copied, which makes the question of substantiality a rather more difficult one. The original work has been modified, thus making it harder to find which parts have been copied. A typical example of altered copying is a translation. No part of the text is copied literally, but it is clear that a substantial part has been copied, because the story and characters are the same. On the other hand, if a story is altered in such a way that only a few banal ideas remain the same, there will be no infringement. This is where the issue of altered copying touches the issue of the idea/expression dichotomy. This is a settled principle in intellectual property law: no copyright exists in mere ideas. This does not mean though, that when no part from the copyright owner’s work is literally copied, there can be no infringement. Astbury J has stated that “there can be copyright in a combination of ideas, methods and devices, used and expressed in and going to form part of a new and original work based though it may be on old matter.�13 Where to draw the line between abstract ideas that are not protected and expressed ideas that are, remains for the courts to decide in each separate case.

Designers Guild A landmark case on the subject of altered copying is Designers Guild Ltd v Russell Williams (Textiles) Ltd. Designers Guild Ltd has designed a range of fabric designs, one of which was the Ixia design. The design consists of a striped pattern decorated with flowers, all painted in an impressionistic style. A year later a distributor of Russell Williams Ltd displayed the Marguerite design. This design also consisted of a striped pattern with flowers in a very similar style. After seeing the Marguerite design, Designers Guild started proceedings against Russell Williams. The question the judge had to answer was whether there was evidence of copying and, if so, whether the copying had been of a substantial part of the design. The judge decided in favour of Designers Guild, finding 13 Vane v Famous Players Film Co, MCC 394 at 398, found quoted in Laddie p.148 4


that “considering the work as a whole, the essential features and substance of the original painting had been incorporated into the defendant's Marguerite design. Accordingly, a substantial part of the copyright work had been copied.” 14 Russell Williams appealed and the Court of Appeal overturned the decision. Upon examining the concept of substantiality, Morritt L.J. concluded that, although the idea and some techniques had been copied, the copying had not been of a substantial part. Designers Guild then appealed against this decision, with three different arguments. Firstly, they argued that the decision by the Court of Appeal that the designs did not look sufficiently similar, was factually inconsistent. Secondly, that the Court of Appeal was wrong to look at the copied features separately, instead of looking at the design as a whole. Thirdly, Designers Guild argued that the Court had erred in concluding that the copying was the copying of ideas and not of the expression of ideas.15 The House of Lords ruled in favour of Designers Guild, thus overruling the Court of Appeal´s decision. All Lords were in agreement that the defendant had copied a substantial amount and that the Court of Appeal was wrong to overturn the High Court’s decision. The Lords also agreed that the Court of Appeal’s way of looking at the features of the two designs separately wasn’t the right way to decide on substantiality. They didn’t fully agree on what was the right way though. One point they seem to all agree on is that in a case of altered copying when the judge has answered the first question, the finding of copying, affirmatively, it is almost inevitable that the same will go for the second question, thus deciding the copying has been of a substantial part of the work. Lord Scott found that “in an altered copying case, particularly where the finding of copying is dependant, in the absence of direct evidence, upon the inferences to be drawn from the extent and nature of the similarities between the two works, the similarities will usually be determinative not only of the issue of copying but also of the issue of substantiality.”16 Lord Millett agreed when he stated that “where […] it is alleged that some but not all the features of the copyright work have been taken, the answer to the first question will 14 Designers Guild (Chancery Division) at 805 15 Mark Chacksfield, The hedgehog and the fox, a substantial part of the law of copyright?, EIPR at 260 16 Lord Scott in Designers Guild at 2431-2432

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almost inevitably answer both, for if the similarities are sufficiently numerous or extensive to justify an inference of copying they are likely to be sufficiently substantial to satisfy this requirement also.”17 Lord Bingham didn’t go as far as Lord Scott and Lord Millett, but still agreed that it was very likely that the finding of copying would lead to finding of copying of a substantial part. He said that: “the judge had to consider whether the defendant had copied the plaintiff's work as a whole or any substantial part of it. Since the judge had based his finding of copying largely on the similarity between the two designs it would have been very surprising if he had found that the defendant had not copied a substantial part of the plaintiff's Ixia design, but it was necessary for the judge to consider that question, and he did.”18

On the topic of how best to approach the question whether there has been a copyright infringement, the Lords all had different opinions. Lord Scott found that there may not even be an infringement if the alterations are “sufficiently extensive” and cited the test proposed in Laddie19, commenting that he believes this is a useful test, because it is based on the principle of copyright law, namely that “a copier is not at liberty to appropriate the benefit of another’s skill and labour.”20 The test that Laddie proposes is the following: “It is submitted that the test of infringement in the case of altered copying is, in principle, no different from any other kind. Has the infringer incorporated a substantial part of the independent skill, labour etc contributed by the original author in creating the copyright work, being skill or labour of a literary, dramatic or musical character? If so, he has reproduced a substantial part.” 21 This is where Lord Millett takes a different view. Once copying has been established the similarities between the works are no longer relevant. According to Lord Millett the question of substantiality has to be decided only by looking at the importance of the parts that have been copied compared to the original work.22 17 18 19 20 21 22

Lord Millett in Designers Guild at 2426 Lord Bingham in Designers Guild at 2418 Laddie, The Modern Law of Copyright and Designs Lord Scott in Designers Guild at 2431 Laddie, The Modern Law of Copyright and Designs, p.148 Lord Millett in Designers Guild at 2426

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Lord Hoffmann’s opinion differs from both of these. Although he does not set out a clear test, it has now become clear what he proposes. As interpreted by Mark Chacksfield, Lord Hoffmann proposes that copied features form a substantial part if they, in themselves, constitute to an original literary, dramatic or artistic work. To clarify, the test is whether the part that has been taken attracts copyright as an original work itself. 23 A year after the Designers Guild case, Lord Hoffmann again ruled on substantiality and this time his words were clearer. In Newspaper Licensing Agency Ltd v Marks & Spencer plc defendants had copied parts of newspaper articles and the question the House of Lords had to answer was whether the copied articles formed a substantial part of the typographical arrangement of the newspapers. Lord Hoffmann found, with all sitting Lords concurring, that the issue of substantiality was a matter of quality over quantity. In determining what exactly ‘quality’ he was looking for, Lord Hoffmann said that “the quality relevant for the purposes of substantiality is the literary originality of that which has been copied.” In his explanation he referred to the Designers Guild case. He explained although in the case not a single bit of the design had been copied exactly, the defendant had still copied a substantial part of the copyright work. It were the ideas expressed in the design that had been taken and these ideas in themselves had involved original artistic skill and labour.24

A correct approach? Has the Designers Guild case brought us any closer to a ‘correct’ approach to decide on substantiality in altered copying cases? As Ronan Deazley comments, the Lords were clearly not in agreement on the way substantiality should be approached. A second point of criticism that Deazley puts forward is the threshold of originality. 25 (The work has to originate from the author and requires some skill and labour.) This threshold has been set very low in the UK, with railway timetables and exam papers as good examples of works 23 Mark Chacksfield, The hedgehog and the fox, a substantial part of the law of copyright?, EIPR at 261 24 Newspaper Licensing Agency v Marks & Spencer at 560 25 Ronan Deazley, Copyright in the House of Lords: recent cases, judicial reasoning and academic writing, IPQ at 129

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that have been deemed original by the courts. The consequence of this low threshold is that there are very few instances where copyright is denied because the work was found not to be original.26 Using the same requirement to judge whether a substantial part has been copied, could mean a large derogation of the substantiality requirement. This was also Lord Reid’s opinion in Ladbroke v William Hill. “So it may sometimes be a convenient short cut to ask whether the part taken could by itself be the subject of copyright. But, in my view, that is only a short cut, and the more correct approach is first to determine whether the plaintiffs' work as a whole is “original” and protected by copyright, and then to inquire whether the part taken by the defendant is substantial.”27 Chacksfield on the other hand endorses Lord Hoffmann’s proposed test. He believes it makes sense to have the same test for substantiality as for the subsistence of copyright, claiming that if the test for substantiality was higher, some copyright would exist that could never be infringed and if the test was lower, then authors could claim rights over the most trivial aspects of their work.

Now if we look back at what Lord Scott has stated, we can now see that his proposed way of deciding on substantiality has not stood the test of time. He found that in cases of altered copying, once copying has been established due to sufficient similarities, there is no longer a question of substantiality to be answered. In Nova Productions v. Mazooma the judge stated that “Lord Scott's observations must be taken as concerned with the facts of Designers Guild itself, not as laying down any general principle.” 28 And in Baigent v Random House Group his claims have been contradicted. In this case it was held that there was evidence of copying, but the copied features did not form a substantial part of the claimant’s work. The claimants were the writers of the book ‘The Holy Blood and the Holy Grail’ and claimed that Dan Brown had copied the central theme, consisting of ideas in a certain sequence, into his book ‘The Da Vinci Code’. The judge (and Dan Brown) accepted that the ideas had been used, but he found that these ideas did not constitute a 26 Bently & Sherman, Intellectual Property Law, p.97 27 Ladbroke v William Hill at 277 28 Nova Productions v Mazooma Games at 599 8


substantial part of their work. The judge agreed with Lord Millett’s view from Designers Guild in stating that “the differences between the two copyright works are not relevant and while the copied features must be a substantial part of the copyright work relied upon there is no need for them to be a substantial part of the defendant's work.” 29 In denying the claim that the ideas copied by Dan Brown form a substantial part of the claimants’ book, the Court upholds a high threshold.30 The facts and ideas that were copied, were at such a level of abstraction that they were not a substantial part of the work.

In 2004 a case was brought to the Court that is a rare example of altered copying. 31 In the Stones in His Pockets case Pam Brighton claims copyright infringement by a play written by Marie Jones. The two women originally worked together and Brighton was the author of a ‘draft opening script’. This script was used by Jones during the writing of the final play. No part was taken literally, but certain important elements had been copied. The judge had to decide whether a substantial part had been copied and did so, after considering the Designers Guild case, in the following manner: “…the incidents covered by the draft opening script were only a small part of the final complete play. Indeed they were, but the question is not whether the plot in the draft opening script formed a large part of the complete play: the question is whether a large part of the plot in the draft opening script formed part, large or small, of the complete play.” 32 It was decided that Jones had indeed copied a substantial part, but in this case there was no infringement because consent by Brighton was implied in their former collaboration.

Conclusion In cases where there is no exact copying, but the copyright work has been modified and incorporated into a new work, it is hard to judge what parts of the original work have 29 Baigent v Random House Group at 436 30 Peter Nunn, Cracking the code: copyright law and its elusive grail, European Intellectual Property Review, EIPR at 159 31 Les Christy, Stones in His Pockets: how a tragicomedy became a legal farce, Ent.L.R. 228 32 Brighton v Jones at 531-532

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been copied. This makes it hard to determine whether a substantial part has been copied as is needed to claim copyright infringement. Three different approaches can be distinguished. According to Lord Scott the question of substantiality is best approached by comparing the works to see if the defendant has incorporated a substantial part of the independent skill and labour used by the original author. If there is enough similarity between the works, it is almost inevitable that the defendant has copied a substantial part of the claimant’s work. This is also what Laddie has suggested. Lord Millett found that when copying has been established after a visual comparison, the defendant’s work was no longer relevant for the issue of substantiality. The parts that have been copied should be assessed in their importance to the copyright work. Millett repeats that there is no need to look at the infringing work for the purpose of substantiality. The approach favoured by Lord Hoffmann is to take the parts that have been copied and decide whether they would attract copyright by themselves. If this is the case, then a substantial part has been copied. All three approaches have their flaws, but judging from later cases and articles, it seems Lord Millett’s approach is favoured. This approach has been the favoured approach before the Designers Guild case as well, as we have seen Lord Reid state in Ladbroke v William Hill that this approach is the more correct one, where others are no more than a short cut. Both Lord Scott and Lord Hoffmann have tried to change the way the courts decide on substantiality, but their approaches have been rejected in later cases.

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Bibliography Books Bently and Sherman, Intellectual Property Law,

Third edition, Oxford University Press,

2009 Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs, Volume One, Third edition, Butterworths, 2000 Paul Sumpter, Intellectual Property Law: Principles in Practice, CCH New Zealand, 2006

Articles Mark Chacksfield, The hedgehog and the fox, a substantial part of the law of copyright?, European Intellectual Property Review, 2001, 23 (5), 259-262 Les Christy, Stones in His Pockets: how a tragicomedy became a legal farce, Entertainment Law Review, 2004, 15 (7), 228-231 Ronan Deazley, Copyright in the House of Lords: recent cases, judicial reasoning and academic writing, Intellectual Property Quarterly, 2004, 2, 121-137 George Wei, Of copying, reproduction, substantiality and copyright: a view from Singapore, European Intellectual Property Review, 2011, 33 (6), 384-398 Peter Nunn, Cracking the code: copyright law and its elusive grail, European Intellectual Property Review, 2007, 29 (4), 156-159

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Table of cases Baigent v Random House Group Ltd [2006] E.M.L.R. 16 (Ch D)

Brighton v Jones [2004] E.M.L.R. 26

Designers Guild Ltd v Russell Williams (Textiles) Ltd (t/a Washington DC) [1998] F.S.R. 803 (Chancery Division); [2000] 1 W.L.R. 2416 (House of Lords)

Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 W.L.R. 273

Newspaper Licensing Agency Ltd v Marks & Spencer Plc [2003] 1 A.C. 551

Nova Productions Ltd v Mazooma Games Ltd [2006] E.M.L.R. 14 (Chancery Division); [2007] R.P.C. 25 (Civil Division)

University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch. 601

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Altered copying