#19696 - 8. Defences - Intellectual Property Law

WEEK 8

DEFENCES

Outline

1. Six concepts in the exceptions set out in the CDPA 1988 –

   1. fair dealing,

   2. non-commercial use and non-for-profit users,

   3. lawful use,

   4. sufficient acknowledgment,

   5. relationship with contract,

   6. dealings with copies made under exceptions

2. Exceptions relating to:

   1. non-commercial research or private study

   2. text and data analysis

   3. criticism or review

   4. quotation and parody

   5. disclosure in the public interest

   6. uses of works for people with disabilities

   7. public administration

   8. databases

   9. computer programs

   10. electronic programs

   11. artistic works

   12. broadcasts

introduction

Exceptions come into play only once a claimant has established that copyright has been infringed – onus of proof falls on D to prove one of the exceptions applies

Attempts to balance the rights of copyright owners with many other rights, freedoms and interests (strange collection of exceptions with precision and rigidity)

Relevant directive – Information Society Directive; provides for numerous exceptions, containing one mandatory exception and a list of optional exceptions or limitations.

• Member states have the choice to implement the optional exceptions and has discretion on how the exception is implemented

• The list is exhaustive – MS cannot develop new ones in response to changes to tech environment and cultural practices.

Prior to Brexit – court interpreted narrowly but in many of the same cases, the court also embraced a purposive interpretation and emphasized the need for ensuring a fair balance between rights and interests of authors and those of users.

The defences listed in the directive are declared subject to the ‘three step test’ – requires that exceptions must be applied only to certain special cases, and must not interfere with the ‘normal exploitation’ of work/subject matter and must not prejudice the legitimate interests of authors/right holders.

Post-brexit – the status of the three step test is complicated because it has not been expressly implemented to UK law. Most, if not all, of the defences in Chapter IV of the CDPA are retained EU law (and the three-step is part of retained case-law). Further, the test is part of international acquis which is explicitly incorporated in free trade agreements (Art. 233 EU-UK Trade and Cooperation Agreement, eg.)

Basic concepts

Fair dealing

• The requirement of fair dealing limits the operation of six defences

Dealing = the defendant has made use of the work; does not imply a transaction between Parties. It is permitted only for the use of the 1988 Act – for the purpose of research or private study, criticism or review, quotation, the reporting of current events, parody or illustration for instruction.

• Contrasted with the US – fair use

If dealing falls within any of the specified purposes, it must be considered ‘fair’, which is a question of degree and impression

• The courts adopted the perspective of whether a ‘fair-minded’ and ‘honest’ person would find the dealing as ‘fair’. But this may not take the analysis very far!

• Lord Phillips MR stated it is essential not to apply inflexible tests based on precedent – must bear in mind that public interests are paramount (Ashdown v Telegraph Group 2002)

• 1) The nature of the work; originality aspect, made public, published/unpublished will weigh in ‘fairness’

Albeit - Fair dealing by way of private study does not apply to musical scores; Fair dealing for the purpose of reporting current events does not apply to photographs

The degree of originality is relevant in other ways – it may be fair to take more from a work that has a low level of originality, such as a work that purports to be largely factual

• Duchess of Sussex v Associated Newspapers 2021– CoA stated ‘the nature and degree of originality involved in a work might affect the availability of defences such as fair dealing, public interest and freedom of expression’.

  • A large and important proportion of Meghan Markle’s letter to her father was not successfully argued to be fair

Fair dealing for criticism or review and fair dealing by quotation – defence is specified to be unavailable if the work is not made available to the public – s.30(1), (1A), Lord Denning in Hubbard v Vosper 1972.

In cases for reporting current events – the fact that a work has not been published will stand against the defendant.

• The weight given by the court will vary to the nature of work in question, giving more weight to private letters than it would for official reports that revealed matters of public importance

• 2) Amount and substantiality of the portion used,

Quantity and quality of what is taken is crucial in deciding ‘fairness’ (Information Society Directive Article 5(5))

Hubbard v Vosper – Denning said the court will consider the number and extent of the extracts and ask whether they are altogether, ‘too many and too long to be fair’. Lengthy and numerous extracts will reduce the expected returns to the copyright owner. The defence will apply only where only a part is taken.

• The court also acknowledged - where the work is short, it may be fair to reproduce the whole work.

• 3) The purpose and character of the use made of the work,

In some instances, it may be fair merely to reproduce someone’s work without comment/analysis for research or instruction eg.

However, in many cases, a use if more likely to be fair if D can show they added to or recontextualised the part taken (dealing was transformative – Newspaper Licensing Agency v Marks and Spencer 1999)

• This is likely the case in parody, review, or quotation

If D derives commercial benefit from the dealing, it weighs against them to show the dealing was fair– Newspaper Licensing Agency v Marks and Spencer 1999

• 4) The effect of the use on the market for the work,

Impact the dealing will have upon the market influences a decision – where the parties are in competition and D’s use of the work substitutes the purchase of an original work (Hubbard v Vosper 1972)

• Eg where if D criticised a film whilst showing all of it in a YouTube video!

• 5) How the work was obtained,

It is less likely for the dealing to be fair if the dealing relates to a stolen or leaked work, or it was obtained by an unauthorised access to a database. The work is more likely to be fairly dealt if it was obtained legitimately (Beloff v Pressdram 1973)

• 6) Motives for the dealing

Where a person acts dishonestly or for a motive that the court finds questionable (financial gain is the primary motivation), it is likely to weigh against them. If the alleged infringer can prove they were acting benevolently, or were motivated by some altruistic or noble cause, this increases their chances of establishing fair dealing (Hyde Park Residence v Yelland 2000)

• 7) Could the purpose been achieved by different means?

In some cases, the courts asked this question – the purpose could be achieved in other ways which are less intrusive to the holder’s rights.

There can be few objections to this test in determining fair dealing – this can be seen in Hyde Park Residence v Yelland 2000

• Application for summary judgement against The Sun Newspaper for publishing stills of Dodi Fayed and Princess Diana (Princess of Wales) taken from security film. The copyright was owned by C

• D argued the stills revealed the times which Fayed and Diana were present, exposing the false statements made by Mohammed Al Fayed.

• CoA held it was not necessary for the Sun to publish the images taken from the video, as the same result would’ve been achieved via written word.

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Non-commercial use and not-for-profit users

“Commercial” = include both direct and indirectly commercial uses

• Commerce is similar to ‘trade’ in trade mark law, which is ‘economic activity’, understood as more than a few one-off sales.

Recital 42 Information Society Directive -- the test of non-commerciality relates to the ‘activity as such’.

• The organisational structure and means of funding are not decisive factors but are still relevant – an activity (eg. In-house education) can be non-commercial even if it takes place in a non-profit private sector organisation or in an environment where students pay fees. Conversely, a not-for-profit organisation might be involved in commercial use (eg. Where the university publisher makes and sells copies of a work

• However –

  • Many activities by the public sector and/or charitable and non-for-profit organisations will be non-commercial and most activities of the private sector, profit-making businesses will be per se commercial.

Indirectly commercial = the use must be integrated with the commercial activity before a use can be categorised as indirectly commercial.

• A public house using copyright films to attract customers to make money off of the sale of food and drinks (The Controller of Her Majesty’s Stationary Office, Ordnance Survey v Green Amps 2007)

• Law student using commercial law book to become a commercial lawyer to make receive substantial loyalties is too remote, even indirectly.

Making and supplying accessible copies to persons with a disability are limited to not-for-profit organisations S.61 (recording of folk songs) CDPA 1988.

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Lawful user

‘lawful acquirer’ ‘having lawful access’ – doubtful distinction

• Acquirer – covers a purchaser of a work, a subsequent recipient (second-hand purchaser/borrower), and a licensee. (Report on the Implementation and Effects of Directive 91/250/EEC (Apr. 2000))

• UsedSoft GmbH v Oracle International Corp 2012 C-128 – a transferee of...