#15015 - Copyright Infringement Moral Rights Defences - Intellectual Property Law

There are two important differences between primary and secondary infringement.

• The first relates to the scope of protection:

  • primary infringement is concerned with people who are directly involved in the reproduction, performance, etc. of the copyright work;

  • in contrast, secondary infringement is concerned with people in a commercial context who either deal with infringing copies, facilitate such copying, or facilitate public performance.

• The second difference between the two forms of infringement relates to the mental element that the defendant must exhibit in order to infringe.

  • As we explain below, the state of mind of the defendant is not formally taken into account when deciding whether an act of primary infringement has occurred. In the case of secondary infringement, however, liability is dependent on the defendant knowing, or having reason to believe, that the activities in question are wrongful

Where a person does or authorizes another to do one of the exclusive acts (CDPA s16)

• Without (express or implied) licence of the copyright owner

• The infringing act must occur in the UK

  • Although authorisation can occur outside the UK

Where only a part of the work has been copied, it must be shown to amount to a substantial part

• C produced reports about cocoa crops

• Journalist from D obtained information about these reports and published an article based on it, also publishing quotes from the report

• Lloyd J: There had been substantial copying of C’s reports

  • “quality is at least as important, if not more so, as quantity in determining the question of substantiality”

  • Since the “most important and interesting parts were taken” and extensive direct quotes were used, there was substantial copying

• UKHL: Restored the 1^st instance decision that there had been substantial copying

  • Lord Bingham: CA hadn’t paid enough attention to the 1^st instance findings that the similarities were so marked that there must have been copying

    • Although copying “did not in theory conclude the issue of substantiality”, here there was clearly a substantial taking

  • Lord Millett: Substantiality “must be determined by its quality rather than its quantity”

    • Depends on the “importance to the copyright work”, not the defendant’s work

    • “the issues of copying and substantiality are treated as separate”

    • BUT “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”

• Lord Scott: Suggested a different test for cases involving altered copying, which was not adopted by the majority

  • Where “an identifiable part of the whole, but not the whole, has been copied”, the question is about quality of the part taken

  • In a case of “altered copying”, the test should be if “the infringer incorporated a substantial part of the independent skill, labour etc contributed by the original author in creating the copyright work”

    • Even if there is copying, there may be sufficient differences to make it “permissible borrowing of an idea” instead of piracy

• D had made copies of press cuttings for circulation to its employees

• UKHL (Lord Hoffmann): The test is mainly qualitative

  • Substantiality must be determined “by reference to the reason why the work is given copyright protection”

  • There is a quantitative aspect in relation to typographical arrangements which can only be copied via facsimile, so must be determined if enough of the original has been copied

• CJEU: Copying of 11 words from an extract can be substantial enough to infringe

  • Copying of short extracts can be infringement if it “contains an element of the work which, as such, expresses the author’s own intellectual creation; it is for the national court to make this determination”

• IMPLICATION: Originality is used to determine substantiality

• D’s online news monitoring service sent reports of news articles to customers based on search terms

  • Included headline, opening words and short extract

• Proudman J: There was infringement

  • “originality rather than substantiality is the test to be applied to the part extracted. As a matter of principle this is now the only real test.”

  • Although it is a test of quality, a single word “is too short a term to convey sufficient quality of originality”

  • Effect of Infopaq is that “even a very small part of the original may be protected by copyright if it demonstrates the stamp of individuality reflective of the creation of the author”

• CA: Affirmed the 1^st instance decision

  • Infopaq was compatible with English law

• Originality test also applied in SAS Institute v World Programming [2011] RPC 1

  • Determining substantiality is based on whether the reproduced part “expresses the author’s own intellectual creation”

    • Can look at the “cumulative effect of what has been reproduced”

• IMPLICATION: The current substantiality test appears to be based on originality

• C claimed that Dan Brown’s ‘Da Vinci Code’ infringed the copyright in their book

  • Alleged copying of 15 elements of the “central theme” of their book

• Smith J: Cs had worked backwards from D’s book to determine the elements of their “central theme”, the claim failed

• CA (Mummery LJ): Dismissed the appeal

  • The elements “are not of a sufficiently developed character to constitute a substantial part”, they are too generalised

  • Original expression doesn’t include pure “information, facts, ideas, theories and themes”

  • The substantial part must be in relation to the “original composition and expression of the work or as to the particular collection, selection and arrangement of material and its treatment”

• ISSUE: Is this still applicable given the sole focus on individuality in Infopaq?

• C produced a computer video game based on pool

• D’s games allegedly infringed copyright in C’s

• CA (Jacob LJ): No copyright infringement as only mere ideas had been copied

  • There is no protection of mere ideas even in computer software

  • “what was found to have inspired some aspects of the defendants’ game is just too general to amount to a substantial part of the claimants’ game”

  • “If protection for such general ideas … were conferred by the law, copyright would become an instrument of oppression rather than the incentive”

• C was disabled, wrote an autobiography with C2’s help

• D communicated with C intending to make a film about C’s life, was given a copy of the book

  • C later withdrew permission to use an adaptation of the book, by D argued that the script was based on his own creative ideas, not an adaptiation

• Birss QC: A substantial part of C’s book had been copied

  • Rejected D’s claim that he had not read the book

    • He had access to it and the use of a football chant at the start of both the book and script indicated that he used it as a source

    • “the similarities in terms of detail are too close to be explicable in any way”

  • Just because it was copied doesn’t make the script an adaptation: what was copied must have been a “substantial part of the original work”

    • Designers Guild: “the test for substantiality is a matter of quality and not quantity”, based on the importance to the original work

      • Doesn’t matter that there was much more in the book than the script; key incidents and characters were the same

    • Infopaq: “A substantial part must be one in which the elements thus reproduced are the expression of the intellectual creation of their author”

• IMPLICATION: Infopaq can be applied together with the traditional test from Designers Guild

There must have been copying

• Can be direct or indirect

  • King Features v Kleeman [1941] AC 417

    • D made toys and brochures based on Popeye but copied off C’s licensee’s works instead of the original works

    • Court: D had indirectly copied C’s original cartoons themselves

• Usually this requirement is not disputed

  • Most cases turn on the substantiality point or exceptions

• NOTE: This case later went on appeal up to UKHL on the issue of substantiality

• C owned copyright in a fabric design consisting of vertical stripes and flowers

  • D’s design used thicker lines but a similar motif

• Collins QC: The similarities were so marked that D must have copied

  • Causal connection is necessary, “no infringement if a person arrives by independent work at a substantially similar result”

  • Copying usually proved by “establishment of similarity combined with proof of access to the plaintiff’s productions”

    • This shifts the burden of proof to the defendant to show that it was independent creation

  • There were too many obvious similarities, “any one of which could of itself be coincidental, but the combination of which could not”

For Reproduction: ‘a sufficient degree of objective similarity between the two works’:

• C alleged that D’s work ‘Why’ infringed copyright in their song ‘In a Little Spanish Town’, published 33 years earlier

  • Claimed that it reproduced the 1^st 8 bars of C’s work, albeit in different time...