SUBSISTENCE OF COPYRIGHT

IV. SUBSISTENCE OF COPYRIGHT

Protection requirements
1. Qualification
2. Idea/expression dichotomy
3. Fixation
4. Originality

Cumulative requirements
Difference between LDMA and entrepreneurial works

[1] Qualification requirements

(a) Introduction

CDPA 1988, ss 1(3), 153-156

How do you qualify?

 S 153 ff.
o By author
o By place of first publication or, for a broadcast country from which it was made
o Includes the EEA as well as the EU - in UK, British citizen or habitual resident
 Connection must exist at material time
o If published => first publication (always publication for T.A.P.E.)
o If unpublished => when made (e.g. sound recording, films, broadcast)
 Don't worry too much about qualifications - rare occurrence due to Berne, Rome, WPPT, WTO
o If a country has agreed to one of these conventions, you cannot discriminate
 Meaning of publication S175: issuing copies to the public/making available to the public by
means of an electronic retrieval system

(b) Status of author

CDPA 1988, s 154

(c) Place of first publication

CDPA 1988, ss 155, 175

(d) Place of first transmission

CDPA 1988, s 156

[2] The ‘idea/expression’ dichotomy

The idea-expression dichotomy

o Key point: ideas are not protected, only the particular expression of an idea is protected
 Idea-expression dichotomy is a key element in copyright law
o Lord Hoffman inn Designers Guild v Russell Williams Textiles Ltd: ideas and expressions
support two distinct propositions – firstly a copyright work may express certain ideas
which are not protected because they do not fall under the categories of literary,
 SUBSISTENCE OF COPYRIGHT

dramatic, musical or artistic works (Kleeneze Ltd v DRG (UK) Ltd [1984]); secondly,
certain ideas expressed by a copyright work may not be protected as they are not
original, or that they are so commonplace as not to form a substantial part of the work,
despite falling into one of the required categories (Kenrick & Co v Lawrence & Co (1890))
– the work must have represented sufficient of the author’s skill and labour as to attract
copyright protection
o *the author must invest a minimum amount of skill and labour in his or her work – that
makes it an expression of an idea and can therefore be protected by copyright* - the
works are the author’s own intellectual creation
o Thus originality is linked to the dichotomy – copyright uses concepts of idea-expression
and originality to determine what can be appropriate through the grant of copyright –
anything else will be in the public domain
o There is still no definition of originality – not in the Berne Convention – the concept in
common law was a benchmark of the minimum amounts of skill and labour whereas in
civil law, the imprint of the author’s personality was the norm

TRIPS Agreement, Art 9(2)

WIPO Copyright Treaty, Art 2

Directive 91/250/EEC (Computer Programs Directive), Art 1(2)

Hollinrake v Truswell (1894) 3 Ch 420

o Lindley LJ (at p 427):
 Copyright … does not extend to ideas, or schemes, or systems, or methods (includes
raw facts/data); it is confined to their expression; and if their expression is not
copied the copyright is not infringed.

Plix Products Ltd v Frank M Winstone [1986] FSR 63 (kiwi packaging)

o Pritchard J (at pp 92-94):
 This proposition touches on the question of the idea/expression dichotomy, which is
probably the most difficult concept in the law copyright. It is no longer universally
accepted that there is ‘no copyright in ideas.’
 The learned authors of Copinger and Skone James state unequivocally that the ideas
and original thought of the author are not protected - that copyright is concerned
only with the concrete forms in which ideas are expressed. There is an insistent
line of authority to support this view, ranging from Kenrick & Co v Lawrence & Co
(1890) 25 QBD 99 to L B Plastics Ltd v Swish Products Ltd [1979] RPC 551, 619. In
Wham-O, Mr. Hillyer (as he then was) argued that a preliminary drawing in which
the plaintiff asserted copyright was only a sketch which did no more than illustrate
an idea and could not therefore be copyright material. That argument was
rejected by the Court of Appeal - not on the basis that there is copyright in ideas
but on the facts, because the drawing was no mere sketch but a working drawing.
 The concept that copyright does not protect ideas is found unacceptable by the
authors of several recent textbooks - eg Laddie, Prescott & Vitoria and Lahore on
‘Intellectual Property in Australia’.
 I think the conflict between these two philosophies is more apparent than real, and
that if there is any conflict it can be resolved by an analysis of the concept of
‘ideas’.
 SUBSISTENCE OF COPYRIGHT

 There are in fact two kinds of ‘ideas’ involved in the making of any work which is
susceptible of being the subject of copyright. In the first place, there is the general
idea or basic concept of the work. This idea is formed (or implanted) in the mind
of the author. He sets out to write a poem or a novel about unrequited love or to
draw a dog listening to a gramophone or to make a kiwifruit pocket pack - or
whatever project he has in mind. While this ‘idea’ remains as a thought in the
author's mind it is, of course, not copyright. It is accepted by the proponents of
the ‘copyright in ideas’ theory that the mere act of reducing a general or basic
concept of this sort to a tangible form does not result in a monopoly in the
concept (Laddie, Prescott & Vitoria).
 Then there is a second phase - a second kind of ‘idea.’ The author of the work will
scarcely be able to transform the basic concept into a concrete form - ie ‘express’
the idea - without furnishing it with details of form and shape. The novelist will
think of characters, dialogue, details of plot and so forth. The artist will think of a
certain tilt to the dog's head, to the effect of perspective, colour, light and shade.
The pocket pack maker will likewise design the shapes, forms, patterns whereby
he believes he can most effectively express the basic idea of pocket packs. Each
author will draw on his skill, his knowledge of the subject, the results of his own
researches, his own imagination in forming his idea of how he will express the
basic concept. All these modes of expression have their genesis in the author's
mind - these too are ‘ideas.’ When these ideas (which are essentially constructive
in character) are reduced to concrete form, the forms they take are where the
copyright resides.
 So it is true to say (with Laddie, Prescott & Vitoria et al) that copyright does extend
to the protection of ideas - not to basic concepts, but to the ideas which are
applied in the exercise of giving expression to basic concepts. It is equally true to
say with Copinger & Skone James (and a formidable line of authority) that
copyright subsists only in the form of expression and that infringement occurs only
when such forms are copied.
 The difficulty of course is to determine just where the general concept ends and the
exercise of expressing the concept begins. It is, as Professor Cornish observes in
his recent work, Intellectual Property, an ‘ill-defined boundary.’ There can be no
general formula by which to establish the line between the general idea and the
author's expression of the idea. The basic idea (or concept) is not necessarily
simple - it may be complex. It may be something innovative; or it may be
commonplace, utilitarian or banal. The way the author treats the subject, the
forms he uses to express the basic concept, may range from the crude and
simplistic to the ornate, complicated - and involving the collation and application
of a great number of constructive ideas. It is in this area that the author expends
the skill and industry, which (even though they may be slight) give the work its
originality and entitle him to copyright. Anyone is free to use the basic idea -
unless, of course, it is a novel invention which is protected by the grant of a
patent. But no one can appropriate the forms or shapes evolved by the author in
the process of giving expression to the basic idea. So he who seeks to make a
product of the same description as that in which another owns copyright must
tread with care. If he copies the details which properly belong to the expression
and not to the basic concept, he will infringe the copyright. That is why, when the
basic idea is expressed in a crude, or simplistic form, the potential plagiarist or
business competitor can, without offending, come very close to an exact
reproduction of the copyright work. But where the expression is ornate, complex
 SUBSISTENCE OF COPYRIGHT

or detailed, then he must keep his distance: the only product he can then make
without infringing may bear little resemblance to the copyright work.
 While it is true that copyright law does have the effect of preventing the
appropriation by a copyist of the constructive ideas of the author as to the form in
which an original work is produced, this is so only because the law provides that to
reproduce a substantial part of the material form (ie the shape or pattern) of the
work by process of ‘copying’ is an infringement. To hold otherwise would be to
disregard the explicit terms of the Copyright Act 1962. Section 7(3) defines the
restricted act as ‘reproducing the work in any material form.’ There is no
copyright except by virtue of the Act (s.5(1)): the Act says nothing about taking
ideas. The position is stated in clear and unambiguous terms in the following dicta
from speeches delivered in the House of Lords in L B (Plastics) Ltd v Swish Products
Ltd (supra).
o Lord Wilberforce at p. 619:
 ‘There can be no copyright in a mere idea, so if all that the respondents had done
was to take from the appellants the idea of external latching, or the “unhanding”
of components, or any other idea implicit in their work, the appellants could not
complain. Nor is there infringement if a person arrives by independent work at a
substantially similar result to that sought to be protected. The protection given by
the law of copyright is against copying, the basis of the protection being that one
man must not be permitted to appropriate the result of another’s labour.’
o Lord Hailsham at p. 629:
 ‘Of course, it is trite law that there is no copyright in ideas, and it may be that if all
the respondents were shown to have copied from the appellants was the idea of
some sort of external latching of the moulded corner pieces and clips to the
extrusions this would have been a sound enough conclusion. But, of course, as
the late Professor Joad used to observe, it all depends on what you mean by
“ideas”. What the respondents in fact copied from the appellants was no mere
general idea.’

Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416 - question was
whether Ds work infringed on the C's work -CoFA said it was, CoA said it wasn't, HoL said it was
o Remember the idea expression dichotomy and the originality requirement
o Lord Hoffman:
 “Every element in the expression of an artistic work (…) is the expression of an idea
on the part of the author. It represents her choice to paint stripes rather than
polka dots, flowers rather than tadpoles, use one colour and brush technique
rather than another, and so on.”
 i.e. when you are expressing yourself, you make a choice - e.g. the person
here decided to make a painting with flowers instead of striped to express
themselves - all these choices are necessary to express yourself
 "A copyright work may express certain ideas which are not protected because they
have no connection with the literary, dramatic, musical or artistic nature of the
work.”
 When you write a patent application, is a LW, but that's not going to give
you a copyright n the idea of the patent
 "Certain ideas expressed by a copyright work may not be protected because,
although they are ideas of a literary, dramatic or artistic nature, they are not
original, or so commonplace as not to form a substantial part of the work.”
 Infringement test is 'not to form a substantial part of the work'
 SUBSISTENCE OF COPYRIGHT

 Original ideas are not protected by copyright - they are cumulative

conditions
 “Generally speaking, in cases of artistic copyright, the more abstract and simple the
copied idea, the less likely it is to constitute a substantial part. Originality, in the
sense of the contribution of the author's skill and labour, tends to lie in the detail
with which the basic idea is presented. Copyright law protects foxes (the
expression) better than hedgehogs (the idea).”
 i.e. there is a continuum between the basic idea, the detailed idea
(intellectual expression) and the requirement of originality - thus impossible
in the abstract determine what is protected by copyright and what is not
 The more detailed your idea is the more likely there will be an expression
and the more likely it will be original
o The idea-expression dichotomy ???
o Link with originality

Nova Productions Ltd v Mazooma Games Ltd [2006] EWHC 24 (Ch), [2007] EWCA Civ 219

Baigent v Random House Group [2006] EWHC 719 (Ch), [2007] EWCA Civ 247 (suing because
Dan Brown had copied a previous book, where he took historical facts and added it to his
story)
o Mummery LJ:
 [146] It is not, however, sufficient for the alleged infringing work simply to replicate
or use items of information, facts, ideas, theories, arguments, themes and so on
derived from the original copyright work.
 [147] I agree with Lloyd LJ that no clear principle can be laid down on how or where
to draw the line between the legitimate use of the ideas expressed and the
unlawful copying of their expression.
 [148] A judgment has to be reached by careful attention to the facts of each
particular case. In this instance the amount of word for word similarity between
HBHG and DVC was trifling in amount and importance. Only 9 instances were
cited in the Claimants’ pleadings. The judge was right to hold that they were not
‘a substantial part’ of HBHG.
 …
 [156] The literary copyright exists in HBHG by reason of the skill and labour
expended by
 the Claimants in the original composition and production of it and the original
manner or form of expression of the results of their research. Original expression
includes not only the language in which the work is composed but also the original
selection, arrangement and compilation of the raw research material. It does not,
however, extend to clothing information, facts, ideas, theories and themes with
exclusive property rights, so as to enable the Claimants to monopolise historical
research or knowledge and prevent the legitimate use of historical and
biographical material, theories propounded, general arguments deployed, or
general hypotheses suggested (whether they are sound or not) or general themes
written about.

SAS Institute Inc v World Programming Ltd [2013] EWHC 69 (Ch)

[3] Fixation

CDPA 1988, s 3
 SUBSISTENCE OF COPYRIGHT

(2) Copyright does not subsist in a literary, dramatic or musical work unless and until it
is recorded, in writing or otherwise; and references in this Part to the time at which such
a work is made are to the time at which it is so recorded.
(3) It is immaterial for the purposes of subsection (2) whether the work is recorded by or
with the permission of the author; and where it is not recorded by the author, nothing in
that subsection affects the question whether copyright subsists in the record as distinct
from the work recorded.

Walter v Lane [1900] AC 539

Link with idea/expression dichotomy - permanence =/= fixation

Phillips, ‘Copyright in Spoken Words – Some Potential Problems’ [1989] EIPR 231
Brennan/Christie, ‘Spoken Words and Copyright Subsistence in Anglo-American Copyright Law’
[1999] IPQ 309

C-310/17, Levola Hengelo BV v Smilde Foods BV

[4] Originality

Concept:
 Does not have to be new
 Nothing to do with time, work or merit
 Not copied + creative = 'author's own intellectual creation'
o Author must be able to exercise free and creative choice, stamp of his/her personality in
the work
o The choices you make define your personality - this is the result of you showing your
personality

(a) Literary, dramatic, musical and artistic works

CPDA 1988, s 1(1)(a)

Principles of originality
 Did not originally have this principle - did not include computer programs, databases, photos
 University of London Press v University Tutorial Press [1916] 2 Ch 601 - court said the
copyright had to do with merit, and could not be copied - has not changed w new law
 Peterson J (at p 608):
o The word ‘original’ does not in this connection mean that the work must be the
expression of original or inventive thought. Copyright Acts are not concerned with the
originality of ideas, but with the expression of thought, and, in the case of ‘literary
work,’ with the expression of thought in print or writing. The originality which is
required relates to the expression of the thought. But the Act does not require that the
expression must be in an original or novel form, but that the work must not be copied
from another work - that it should originate from the author.

The meaning of ‘originality’

 Ladbroke v William Hill [1964] 1 All ER 465 - dealt with a betting coupon - in fact a LW, has to
do with 'skill, judgement or labour' - sufficient amount - if time and labour spent on work,
could count for originality (old law) - back then was protecting investment
 SUBSISTENCE OF COPYRIGHT

o Lord Reid (at p 469):

 [O]riginality is a matter of degree depending on the amount of skill, judgment or
labour … involved ….
 Infopaq - now all LDMA works same as computer program, databases, photos - expanded
what was in the directives
 Biotrading and Finance Oy v Biohit Ltd [1998] FSR 109
o Aldous LJ (at p 116):
 It is … necessary to consider … whether the author expended sufficient
independent labour, skill and judgment ….
 Macmillan & Co Ltd v K & J Cooper (1923) 93 LJPC 113
o Lord Atkinson (at p 121):
 What is the precise amount of the knowledge, labour, judgment or literary skill or
taste which the author of any book or other compilation must bestow upon its
composition in order to acquire copyright in it … cannot be defined in precise
terms. In every case it must depend largely on the special facts of that case, and
must in each case be very much a question of degree.
 C-5/08 Infopaq International v Danske Dagblades Forening [2009] ECDR 16
o [33] Article 2(a) of Directive 2001/29 provides that authors have the exclusive right to
authorise or prohibit reproduction, in whole or in part, of their works. It follows that
protection of the author’s right to authorise or prohibit reproduction is intended to
cover ‘work’.
o [34] It is, moreover, apparent from the general scheme of the Berne Convention, in
particular Article 2(5) and (8), that the protection of certain subject-matters as artistic or
literary works presupposes that they are intellectual creations.
o [35] Similarly, under Articles 1(3) of Directive 91/250, 3(1) of Directive 96/9 and 6 of
Directive 2006/116, works such as computer programs, databases or photographs are
protected by copyright only if they are original in the sense that they are their author’s
own intellectual creation.
o [36] In establishing a harmonised legal framework for copyright, Directive 2001/29 is
based on the same principle, as evidenced by recitals 4, 9 to 11 and 20 in the preamble
thereto.
o [37] In those circumstances, copyright within the meaning of Article 2(a) of Directive
2001/29 is liable to apply only in relation to a subject-matter which is original in the
sense that it is its author’s own intellectual creation.
 Newspaper Licensing Agency v Meltwater [2011] EWCA Civ 890 - CoA said there was no
difference between skill judgement and labour - CoJ said needed creativity element
o Morritt C:
 [19] The starting point for considering this submission must be s.1(1)(a) CDPA. To
satisfy that subsection the headline must be ‘a work’ and both ‘original’ and
‘literary’. A headline is plainly literary as it consists of words. The word ‘original’
does not connote novelty but that it originated with the author. This test was
clearly established in the domestic law of England by the decision of Peterson J in
University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601
approved by the House of Lords in Ladbroke (Football) Ltd v William Hill (Football)
Ltd [1964] 1 WLR 273.
 [20] The decision of the European Court of Justice in C-5/08 Infopaq related to
questions of infringement but in paragraphs 33 to 37 the Court considered the
conditions necessary to attract copyright protection ...
 [21] Although the Court refers to an ‘intellectual creation’ it does so in the context
of paragraph 35 which clearly relates such creation to the question of origin not
novelty or merit. Accordingly, I do not understand the decision of the European
 SUBSISTENCE OF COPYRIGHT

Court of Justice in Infopaq to have qualified the long standing test established by
the authorities referred to in paragraph 19 above.
 Future Publishing v The Edge Interactive Media Inc [2011] EWHC 1489 (Ch)
o Proudman J:
 [10] … What is required for artistic originality is the expenditure of more than
negligible or trivial effort or relevant skill in the creation of the work: see Copinger
and Skone James on Copyright 16th Ed at 3-130 and Ladbroke v William Hill [1964]
1 WLR 273 at 287. The claimant’s logo is original within this test.
 Case C-145/10 Eva-Maria Painer v Standard VerlagsGmbH and Others [2012] ECDR 6 -
photographs, quite relevant nowadays - photo in this case was a school photo of an abducted
girl -question was whether these school photos are 'original' - a photo is taking a specific scene
with an endgoal, lighting, etc. - free and creative choices like editing, etc. - photo was
protected by copyright as there are three phases in which free and creative choices can be
made, does it reflect the author's personality, was there free and creative choice - timing and
choice
 C-604/10 Football Dataco Ltd v Yahoo! UK Ltd [2012] ECDR 10 - are the fixtures on football
websites a database - CoJ said no, because there is no free and creative choice as you must
follow certain constraints and rules when updating
o [29] Under Article 3(1) of Directive 96/9, ‘databases’ within the meaning of Article 1(2)
of that directive are protected by copyright if, by reason of the selection or arrangement
of their contents, they constitute the author’s own intellectual creation.
 …
o [37] Secondly, as is apparent from recital 16 of Directive 96/9, the notion of the author’s
own intellectual creation refers to the criterion of originality (see, to that effect, Case C-
5/08 Infopaq International, paragraphs 35, 37 and 38; Case C-393/09 Bezpečnostní
softwarová asociace, paragraph 45; Joined Cases C-403/08 and C-429/08 Football
Association Premier League and Others, paragraph 97; and Case C-145/10 Painer,
paragraph 87).
o [38] As regards the setting up of a database, that criterion of originality is satisfied when,
through the selection or arrangement of the data which it contains, its author expresses
his creative ability in an original manner by making free and creative choices (see, by
analogy, Infopaq International, paragraph 45; Bezpečnostní softwarová asociace,
paragraph 50; and Painer, paragraph 89) and thus stamps his ‘personal touch’ (Painer,
paragraph 92).
o [39] By contrast, that criterion is not satisfied when the setting up of the database is
dictated by technical considerations, rules or constraints which leave no room for
creative freedom (see, by analogy, Bezpečnostní softwarová asociace, paragraphs 48 and
49, and Football Association Premier League and Others, paragraph 98).
o [40] As is apparent from both Article 3(1) and recital 16 of Directive 96/9, no other
criteria than that of originality is to be applied to determine the eligibility of a database
for the copyright protection provided for by that directive.
o [41] Therefore, on the one hand, provided that the selection or arrangement of the data
– namely, in a case such as the one in the main proceedings, data corresponding to the
date, the time and the identity of teams relating to the different fixtures of the league
concerned (see paragraph 26 of the present judgment) – is an original expression of the
creativity of the author of the database, it is irrelevant for the purpose of assessing the
eligibility of the database for the copyright protection provided for by Directive 96/9
whether or not that selection or arrangement includes ‘adding important significance’ to
that data, as mentioned in section (b) of the referring court’s first question.
o [42] On the other hand, the fact that the setting up of the database required,
irrespective of the creation of the data which it contains, significant labour and skill of its
 SUBSISTENCE OF COPYRIGHT

author, as mentioned in section (c) of that same question, cannot as such justify the
protection of it by copyright under Directive 96/9, if that labour and that skill do not
express any originality in the selection or arrangement of that data.
o [43] In the present case, it is for the referring court to assess, in the light of the factors
set out above, whether the football fixture lists in question in the main proceedings are
databases which satisfy the conditions of eligibility for the copyright protection set out
in Article 3(1) of Directive 96/9.
o [44] In that respect, the procedures for creating those lists, as described by the referring
court, if they are not supplemented by elements reflecting originality in the selection or
arrangement of the data contained in those lists, do not suffice for the database in
question to be protected by the copyright provided for in Article 3(1) of Directive 96/9.
o [45] In light of the considerations above, the answer to the first question is that Article
3(1) of Directive 96/9 must be interpreted as meaning that a ‘database’ within the
meaning of Article 1(2) of that directive is protected by the copyright laid down by that
directive provided that the selection or arrangement of the data which it contains
amounts to an original expression of the creative freedom of its author, which is a
matter for the national court to determine.
o [46] As a consequence:
 the intellectual effort and skill of creating that data are not relevant in order to
assess the eligibility of that database for protection by that right;
 it is irrelevant, for that purpose, whether or not the selection or arrangement of
that data includes the addition of important significance to that data, and
 the significant labour and skill required for setting up that database cannot as such
justify such a protection if they do not express any originality in the selection or
arrangement of the data which that database contains.
 Technomed v. Bluecrest Health Screening [2017] EWHC 2141
 C-683/17, Cofemel v. G-Star Raw - deals with jeans and a t shirt designed by g star raw -
cofemel decides to design the same type of jeans and tshirt - works of artistic craftmanship
now includes
 Link with idea/expression and fixation
 Originality requirement not high, minimum only - de minimis, only has to cross the threshold -
choices u make that show your personality

Derclaye, ‘Wonderful or worrisome: The impact of the ECJ ruling in Infopaq on UK copyright law’
[2010] EIPR 247

Application of the principles

 Derivative works (West Side Story is a derivative work from Romeo and Juliet) - also has to
pass originality requirement
o Macmillan & Co Ltd v K & J Cooper (1923) 93 LJPC 113
 Lord Atkinson (at p 118):
 [I]t is the product of labour, skill and capital of one man which must not be
appropriated by another, not the elements, the raw material, if one may use the
expression, upon which the labour and skill and capital of the first have been
expended. To secure copyright for this product it is necessary that the labour, skill
and capital expended should be sufficient to impart to the product some quality or
character which the raw material did not possess, and which differentiates the
product from the raw material.
 Interlego AG v Tyco Industries Inc [1989] 1 AC 217 - lego was trying to extend copyright
protection on their bricks - asked their draftsman to redo their drafts - changes too minor and
not enough skills judgement labour
 SUBSISTENCE OF COPYRIGHT

 ZYX Music GmbH v King [1995] 3 All ER 1

 Sweeney v Macmillan Publishers [2002] RPC 651
 Sawkins v Hyperion Records Ltd [2005] EWCA Civ 565 [2005] 3 All ER 636 - lalande score

Compilations and Databases

 Directive 96/9/EC (Database Directive)
 Copyright and Rights in Databases Regulations 1997 (SI 1997/3032)
 CDPA 1988, s 3A
(2) For the purposes of this Part a literary work consisting of a database is original if, and
only if, by reason of the selection or arrangement of the contents of the database the
database constitutes the author's own intellectual creation.
 C-604/10 Football Dataco Ltd v Yahoo! UK Ltd [2012] ECDR 10
o [29] Under Article 3(1) of Directive 96/9, ‘databases’ within the meaning of Article 1(2)
of that directive are protected by copyright if, by reason of the selection or arrangement
of their contents, they constitute the author’s own intellectual creation.
o [30] Firstly, it is apparent from reading Article 3(2) in conjunction with recital 15 of
Directive 96/9 that the copyright protection provided for by that directive concerns the
‘structure’ of the database, and not its ‘contents’ nor, therefore, the elements
constituting its contents.
o [31] Similarly, as is apparent from Article 10(2) of the Agreement on Trade-Related
Aspects of Intellectual Property Rights and from Article 5 of the WIPO Copyright Treaty,
compilations of data which by reason of the selection or arrangement of their contents
constitute intellectual creations are protected as such by copyright. On the other hand,
that protection does not extend to the data itself and is without prejudice to any
copyright subsisting for that data.
o [32] In that context, the concepts of ‘selection’ and of ‘arrangement’ within the meaning
of Article 3(1) of Directive 96/9 refer respectively to the selection and the arrangement
of data, through which the author of the database gives the database its structure. By
contrast, those concepts do not extend to the creation of the data contained in that
database.
o [33] Consequently, … the materials mentioned in section (a) of the referring court’s first
question that concern the intellectual effort and skill of creating data are not relevant in
order to assess the eligibility of the database that contains them for the copyright
protection provided for by Directive 96/9.
o [34] That analysis is confirmed by the purpose of that directive. As is apparent from
recitals 9, 10 and 12 of that directive, its purpose is to stimulate the creation of data
storage and processing systems in order to contribute to the development of an
information market against a background of exponential growth in the amount of
information generated and processed annually in all sectors of activity (see Case C-46/02
Fixtures Marketing, paragraph 33; Case C-203/02 The British Horseracing Board and
Others, paragraph 30; Case C-338/02 Fixtures Marketing, paragraph 23; and Case C-
444/02 Fixtures Marketing, paragraph 39) and not to protect the creation of materials
capable of being collected in a database.
o [35] In the case in the main proceedings, it must be observed that the resources, in
particular intellectual resources, described by the referring court and referred to in
paragraphs 14 to 18 of this judgment, are deployed for the purpose of determining, in
the course of arranging the leagues concerned, the date, the time and the identity of
teams corresponding to each fixture of those leagues, in accordance with a set of rules,
parameters and organisational constraints as well as the specific requests of the clubs
concerned (see Case C-46/02 Fixtures Marketing, paragraph 41; Case C-338/02 Fixtures
Marketing, paragraph 31; and Case C-444/02 Fixtures Marketing, paragraph 47).
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o [36] [T]hose resources relate to the creation of the same data which is contained in the
database in question …. As a consequence, and having regard to what is stated in
paragraph 32 of the present judgment, they are, in any case, of no relevance in order to
assess the eligibility of the football fixture lists in question in the main proceedings for
the copyright protection provided for by Directive 96/9.
 The act of creating a new piece of data - not protected by copyright

‘Reporter’s copyright’
 Walter v Lane [1900] AC 539 - reporters' report of speech is completely copyrightable - reports
are not verbatim, so not copyrightable, but not a free and creative work as even the
punctuation will be the same
 CDPA 1988, s 3(3)
 Sawkins v Hyperion Records Ltd [2005] EWCA Civ 565 [2005] 3 All ER 636

Gravells, ‘Authorship and Originality: The Persistent Influence of Walter v Lane’ [2007] IPQ 267
Pila, ‘An Intentional View of the Copyright Work’ (2008) 71 MLR 535
Derclaye, ‘Debunking some of UK copyright law's longstanding myths and misunderstandings’ [2013]
IPQ 1
Gravells, ‘Reporter’s Copyright and Sound Recordings: A Reply to Professor Derclaye’ [2013] IPQ 91

Originality of photographs
 Antiquesportfolio.com plc v Rodney Fitch & Co [2001] FSR 345
 Case C-145/10 Eva-Maria Painer v Standard VerlagsGmbH and Others [2012] ECDR 6
 Directive 2006/116/EEC (Term Directive), Art 6

Arnold, ‘Copyright in Photographs: A Case for Reform’ [2005] EIPR 303

Pertusa, ‘Dual Protection for Photographs under Spanish Copyright Law’ [2005] Ent LR 13

TAPE
 NLA v M&S: “It is not the choice of a particular typeface, the precise number or width of the
columns, the breadth of margins and the relationship of headlines and strap lines to the other
text, the number of articles on a page and the distribution of photographs and advertisements
but the combination of all of these into pages which give the newspaper as a whole its
distinctive appearance. In some cases that appearance will depend upon the relationship
between the pages; for example, having headlines rather than small advertisements on the
front page. Usually, however, it will depend upon the appearance of any given page. But I find
it difficult to think of the skill and labour which has gone into the typographical arrangement
of a newspaper being expressed in anything less than a full page” (per Lord Hoffman).

(b) Sound recordings and films

CDPA 1988, s 5A
(2) Copyright does not subsist in a sound recording which is, or to the extent that it is, a copy
taken from a previous sound recording.

CDPA 1988, s 5B
(4) Copyright does not subsist in a film which is, or to the extent that it is, a copy taken from a
previous film.

(c) Broadcasts
 SUBSISTENCE OF COPYRIGHT

CDPA 1988, s 6
(6) Copyright does not subsist in a broadcast which infringes, or to the extent that it infringes,
the copyright in another broadcast.

(d) Typographical arrangements of published editions

CDPA 1988, s 8
(2) Copyright does not subsist in the typographical arrangement of a published edition if, or to
the extent that, it reproduces the typographical arrangement of a previous edition.

V. DURATION (TERM) OF COPYRIGHT PROTECTION

[1] Introduction

 the duration debate

o Is there an ideal duration?
o Berne: life of the author + 70 years
o Rome: 20 years
 TRIPs art. 14(5): “The term of the protection available under this
Agreement to performers and producers of phonograms shall last at least
until the end of a period of 50 years computed from the end of the
calendar year in which the fixation was made or the performance took
place. The term of protection granted pursuant to paragraph 3 shall last
for xat least 20 years from the end of the calendar year in which the
broadcast took place”.
 practical issues
 the current law
o CDPA 1988, ss 12-15A
 Covers both authorial works as well as entrepreneurial works
o Duration of Copyright and Rights in Performances Regulations 1995 (SI
1995/3297)
o Directive 2006/116/EC (Term Directive)
o Directive 2011/77/EU
o Copyright and Duration of Rights in Performances Regulations 2013 (SI
2013/1782) - new provisions for sound recordings and performers, esp. 70
years term
o How to calculate: “end of the year”
 extended and revived copyright - work still protected in one EEA MS on 1/7/1995,
but expired in another MS => revived in MS for the remainder so that in total the
protection would be life +70 years when it expired
o Sweeney v Macmillan Publishers [2002] RPC 651 - James Joyce's Ulysses,
died in 1941 - 50 years added to 1 Jan 1942, in 1992, it would have been
expired - but still alive in Germany, so got extended protection (but in total
not more than life + 70)
 treatment of non-European Economic Area works = apply term of country of origin
but never more than max granted in the EU i.e. life + 70 for LDMA works; same
system for entrepreneurial rights - cannot treat different works from different
countries differently, must treat all equally - e.g. Mexico is 100 years, but the same
copyright from Mexico in UK cannot exceed life + 70

[2] Literary, dramatic, musical or artistic works

CDPA 1988, s 12
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o LDMA
o Joint and co-authorship
o Crown copyright (s 163: 125/75+50) (the queen/government has copyright in
the works that different government bodies create), parliamentary copyright
(50), international organisations (s 168: 50)

Term of moral rights: Same as economic rights except right against false attribution –
20 years after a person’s death

Entrepreneurial rights: sound recordings (50/70), films (50/70), broadcasts (50), TAPE
(25)
 50/70: the first period of 50 years is when it is still kept unpublished - if you never
publish it, it stops there on the last day on the fiftieth year - but likely that the
publishing date will be within the first 50 years - once published, the 70 years
protection starts.
 A bit more complicated with films - problem with implementation of audio visual
works and film - instead of including one, instead the UK transposed some of the
provisions dealing with AV work to the category of film under entrepreneurial work
o AV - life + 70
o Film - 50
o A film with no underlying AV work under it - 50; a film with AV work in it - the
death of the last surviving author triggers the 70 year protection
 Authors: the principal director, author of dialogue, author of the script,
composer (but only if the music has been made especially for the film)

[3] Sound recordings

CDPA 1988, s 13A

[4] Films
CDPA 1988, s 13B
(2) “Copyright expires at the end of the period of 70 years from the end of the
calendar year in which the death occurs of the last to die of the following persons—
(a)the principal director,
(b)the author of the screenplay,
(c)the author of the dialogue, or
(d)the composer of music specially created for and used in the film […]

(9) If in any case there is no person falling within paragraphs (a) to (d) of subsection
(2), the above provisions do not apply and copyright expires at the end of the
period of 50 years from the end of the calendar year in which the film was made.”

[Directive 2006/116/EC, Art 1(1):

The rights of an author of a literary or artistic work within the meaning of Article 2
of the Berne Convention shall run for the life of the author and for 70 years after his
death ….
- Berne Convention, Art 2(1):
The expression ‘literary and artistic works’ shall include … cinematographic works.

Directive 2006/116/EC, Art 3(3):

The rights of producers of the first fixation of a film shall expire 50 years after the
fixation is made. … The term ‘film’ shall designate a cinematographic or audiovisual
work or moving images ….]

[5] Broadcasts
CDPA 1988, s 14
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[6] Typographical arrangements of published editions

CDPA 1988, s 15

VI. AUTHORSHIP

[1] Introduction
 concept of authorship
o The person who gives an original expression when they are creating the work
o 'single authorship'
o S 9(1) “In this Part “author”, in relation to a work, means the person who
creates it.”
o Concept = ‘creatorship’ ≠ ownership
 practical issues
 the current law
CDPA 1988, ss 9, 10, 10A
[2] Literary, dramatic, musical or artistic works
CDPA 1988, s 9(1)
Walter v Lane [1900] AC 539
Donogue v Allied Newspapers [1938] Ch 106
Sawkins v Hyperion Records Ltd [2005] EWCA Civ 565 [2005] 3 All ER 636

o Kenrick v Lawrence - the person who registered the copyright says he was the
author but he did not draw it - the case came to be litigated for that reason,
and the court had to decide who the author was - held that the person who
drew was the one who owned the copyrights, the person who registered it has
no claim

 But if the person who draws actually draws or writes under specific
instruction and had no creative innput, e.g. Walter v Lane -

o Walter v Lane – mere scribe, amanuensis, ‘secretary’ - you are just typing
what you are hearing, not creative

o Donoghue v Allied Newspapers - dealt with a jockey who had agreed to give
an interview - journalist came to see him and hold an interview - the journalist
then goes home and writes an article based on the notes he took in the
interview - question was whether the author of the article was the jockey or
the journalist - court held it was the journalist, created his own original
expression with the facts given to him by the jockey

o Cummins v Bond - there was a woman spiritualist in a trance during a séance

with multiple people in the room, where she was uttering words in Archaic
English - question was who is the author of the work, the woman spiritualist,
the ghosts, or the TP in the audience typing all the words out of the ladies
mouth with punctuation - nont the latter, but the judge held that it was the
woman who was the author

 joint authorship, s 10: “(1) In this Part a “work of joint authorship” means a work
produced by the collaboration of two or more authors in which the contribution of
each author is not distinct from that of the other author or authors.”

o 3 cumulative conditions
 Collaboration/common design
 Creative contribution
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 Not distinct
o Donoghue v Allied Newspapers - jockey gave info but did not create the
article with the journalist, no collaboration between the two
o Cala Homes (South) Ltd v McAlpine Homes Ltd [1995] FSR 818 - concerned
blueprints for houses, Cala homes had a head architect who was giving
detailed instructions to the team of architects under him - in this case the
head architect was found to be the main author because he was giving shape
to the house, the detailed instructions served to show that you can be a joint
author even if you don’t hold a pen, provided you have original expression
within the work
o Ray v Classic FM plc [1998] FSR 622
o Hadley v Kemp [1999] EMLR 589 - point was whether performance of music
was a creative contribution relevant to the musical work such that you
become a joint author - held no as it is only an interpretation of the work, not
something you put entirely new creative content
o Heptulla v Orient Longman - two people, clearly collaborating as they
decided to work on writing a book together - one of the two relied on the other
for corrections on English, and there would be back-and-forth exchanges of
opinions - i.e. one was writing the story and the other was also contributing to
the content while also translating
o Valentino v Hodgens [2003] FSR 238
o Brighton v Jones [2004] EWHC 1157 (Ch) [2005] FSR 288 - a play with two
different women contributing to different aspects of the play
o Fisher v Brooker [2009] UKHL 41
o Kogan v Martin [2019] EWHC 1645 - there were two people, Mrs Kogan and
Mr Martin who worked on a film, and could not work out who did what - K
claims that her and M jointly collaborated on this film - M claims it was a single
authored work, K was only suggesting here and there as well as insight into
the main character of the movie's life, supplied tutorial/correction with
technical singing jargon - came to CoFA, court agreed that yes she was not an
author; CoA upheld this decision

 “Friends of the author who make suggestions otherwise than in the

course of a collaboration will not become joint authors … because [they
are] acting as friend and critic and not a collaborator in a common
design”

 “a collaborative work may thus come into existence if, in the context of a
particular joint project, one person decides on the plot and the other
writes the words to give effect to the plot” // Brighton v Jones - If you
adapt a play for performance…

 “It follows that, in deciding whether there is a collaboration, it can never

be enough simply to ask who did the writing” // Brighton v Jones, Cala
Homes

 Only changed what constitutes…

 “the fact that one contributor has the final say does not prevent the
existence of joint authorship. (defining attribute of joint authorship laws
in the UK) That is not to say that it is irrelevant. As in Bamgboye, it may
mean that one author is doing more of the work than the other, and so
affect the share of the copyright to which each author is entitled.
Likewise, it may have an evidential bearing on whether there is a true
collaboration. We see no reason, however, to say that where a team
collaborates on the production of a work, the fact that the team leader
can exercise ultimate control means that there can be no joint
authorship.”
 SUBSISTENCE OF COPYRIGHT

Arnold, ‘Are Performers Authors?’ [1999] EIPR 464

Lauterbach, ‘Joint Authorship in Copyright Work Revisited’ [2005] EIPR 119

 co-authorship, s 10A
o Only for LW and MW (implemented in the Copyright and Duration of Rights in
Performances Regulations 2013 - s10A)

 “(1) In this Part a “work of co-authorship” means a work produced by the

collaboration of the author of a musical work and the author of a literary
work where the two works are created in order to be used together.

 E.g. a song - term of protection will be different because they will

not die on the same day - will have two different ToP for a work
made up of two works that you are exploiting together

 In this situation, the term of protection will be the same, only

applies for songs and songs that were, at the start, written together

 (2) References in this Part to a work or the author of a work shall, except
as otherwise provided, be construed in relation to a work of co-
authorship as references to each of the separate musical and literary
works comprised in the work of co-authorship and to each of the authors
of such works.”

[3] Sound recordings

CDPA 1988,
o s 9(2)(aa),
o s178 ““producer”, in relation to a sound recording or a film, means the person
by whom the arrangements necessary for the making of the sound recording
or film are undertaken” – organisational control
A & M Records v Video Collection International Ltd [1995] EMLR 25
Bamgboye v Reed [2004] EMLR 61

[4] Films
Directive 2006/115/EC (Rental Directive)
Copyright and Related Rights Regulations 1996 (SI 1996/2967)
CDPA 1988, ss 9(2)(ab), 10(1A), 178
Slater v Wimmer [2012] EWPCC 7
Principal director is not the one who has the organisational control over the film's
production - he is the one who has the creative contribution of making the actual
content
[5] Broadcasts
CDPA 1988, ss 9(2)(b), 6(3)
[6] Typographical arrangements of published editions
CDPA 1988, s 9(2)(d)

VII. OWNERSHIP OF COPYRIGHT

[1] General rule

CDPA 1988, s 11(1)

o S. 11(1) = first ownership and commissioned works

 SUBSISTENCE OF COPYRIGHT

o S. 11(2) = works made by employees

[2] Literary, dramatic, musical or artistic works or films made by employees

CDPA 1988, ss 11(2), 178
Employee - contract of service or for services:
o Stevenson Jordan & Harrison v McDonnell & Evans [1952] 69 RPC 10 -
dealt with a person who was an accountant in an accounting firm but gave a
series of lectures - out of lectures he published a book - q was who was the
author of the book, the accountant, the secretary that took the work down,
etc.? - look at job description: the accountant was not ordered by his employer
to do these lectures - court decided that the important point was whether
what the person was doing was an integral part of the business of the
employer
 “(…) [U]nder a contract of service, a man is employed as part of the
business, and his work is done as an integral part of the business;
whereas, under a contract for services, his work, although done for the
business, is not integrated into it but is only accessory to it.” (per
Denning, L.J.)

Course of employment

o Byrne v Statist (1914) - about an employee of the Financial Times who knew
Portuguese - was asked to translate an article, not part of the employee's job
description/cause of employment
 “He did not make the translation in pursuance of any duty owed by him to
the Financial Times as one of their staff, or in the course of his
employment by them, but his employment to translate was an
independent engagement quite outside his ordinary duties, and was
done entirely in his own time.” (Per Bailhache J. at 623).
o Course of employment conditions
 Control and power on the employee
 Whether it was an integral part of the business
 Specific aspects of what makes somebody an employee - who pays for
pension, taxes, national insurance; who provides equipment, wages

Beloff v Pressdram [1973] 1 All ER 241

Missing Link Software v Magee [1989] FSR 361
Noah v Shuba [1991] FSR 14
Ray v Classic FM plc [1998] FSR 622
Mei Fields Designs v Saffron Cards & Gifts & P.J. Steele [2018] EWHC 1332

o “I accept […] that there is no single test to be applied. Rather, it seems to me

that the question of whether or not given acts were carried out in the course
of employment for the purposes of Section 11 of the CPDA is a multifactorial
assessment, to be based on all the circumstances of the case. In most
situations where an employment relationship has been conceded, there will be
some factors which point to the copyright work being created in the course of
that employment and some factors which point otherwise. The relevant factors
may include:

 (a) The terms of the contract of employment;

 (b) Where the work was created;

 (c) Whether the work was created during normal office hours;

 (d) Who provided the materials for the work to be created;

 SUBSISTENCE OF COPYRIGHT

 (e) The level of direction provided to the author; (nowadays seen as less of
an important criteria, because often the level of direction given by the
employer in high-skill jobs leads this factor to become a bit of a
misnomer)

 (f) Whether the author can refuse to create the work/s; and

 (g) Whether the work is “integral” to the business.

o No single factor is likely to be determinative and this list is not closed . It is a

matter for the tribunal to assess the relevant factors, and determine, having
balanced any competing factors, whether the work was created in the course
of employment. In doing so, the tribunal should be mindful of the purpose of
section 11 of the CPDA – that is, that copyright should vest in the entity for
whom the work was created and who paid for it”

Recap: works made by employees

1. Employee

2. Course of employment

3. Agreement to the contrary – can be oral or implied (Mei Fields); custom (Noah v
Shuba - case dealing with a book 'a guide to hygienic skin piercing' written for the
public health laboratory service - N was employed by them to write the book, but
the custom in that industry was that the employee would keep their copyright)

[3] Commissioned works

 Ray v Classic FM - basically created by Robin Ray, an expert in classical music -

Classic FM hired him to classify a large number of classical music into categories -
extracts of the contract between the two shows it was messy - R decided to sue
Classic FM as they wanted to expand outside of the UK - R claimed that he was the
author of the document with the categories of music, and there was no licence from
Classic FM to use his categorisation - the court had to interpret what kind of
agreement was made - licence or transfer - rule in s11(1), author is first owner
unless there is a contract - held that you can't really disturb the principle that
normally the author is the first owner to that right - so if you can imply a licence
and a transfer, you will choose a licence - court interpreted the contract as R
allowed Classic FM to use the document to broadcast songs in the UK, no specific
period - all that R had to do was not to give a transfer, but to give a licence to use
his document for an unspecified time - the court decided that he was not
'employed' as he was only given a one-off fee - more so a freelance consultant,
therefore the amount he was paid for is interpreted in line with the contract (if they
paid you more, more copyright transferred)

o “It seems quite clear to me upon the true construction of the consultancy
agreement in its matrix of facts that the limits of what was contemplated at
the date of the consultancy agreement were that the plaintiff's work would be
used for the purpose of enabling the defendant to carry on its business as set
out in recital A. namely to broadcast in the United Kingdom. The only
necessary implication to give purpose and effect to the consultancy
agreement is accordingly the grant of a license to the defendant to use the
copyright material for the indefinite future for this purpose and for this
purpose only.”

 BP Refinery (1978):
 SUBSISTENCE OF COPYRIGHT

o “for a term to be implied, the following conditions (which may overlap) must
be satisfied:
 (1) it must be reasonable and equitable;
 (2) it must be necessary to give business efficacy to the contract, so that
no term will be implied if the contract is effective without it;
 (3) it must be so obvious that "it goes without saying";
 (4) it must be capable of clear expression;
 (5) it must not contradict any express term of the contract.”

[4] Dealings with copyright

CDPA 1988, s 90-95

Assignments/transfers, s. 90

o The main provision as regards assignments is s. 90

o Concept: Assignment means transfer: this means the copyright goes, leaves
from A to B. A (the author if he is the first owner for example) is not the
copyright owner anymore.

 Possible to assign copyright in future works

o Form: royalty or a lump sum, can be for some rights only

o Conditions: in writing and signed by or on behalf of the assignor, clearly

identify work(s), consideration (can be £1, a lump sum, does not have to be a
royalty)

 What if orally? The equitable rule applies i.e. so long as there is

consideration, an oral contract purporting to assign will be enforceable

o Exception to these rules: for film production: when there is a contract between
an author and a film producer, the author is presumed to have transferred
his/her rental right to the film producer (s. 93A); springs from Rental right
Directive art. 2(6)

o Moral rights are non assignable between living people, s. 94, but are on death
(s. 95)

 Your heirs will have your moral rights when you die

Licences, s 92
o Permission to do an act that would otherwise be prohibited without the
consent of the copyright owner
o Exclusive and non exclusive: difference
o Exclusive licensee can sue infringers even without the copyright owner; action
can be brought by both the excl. licensee and the copyright owner
o But formality to accomplish: licence must be in writing and signed by or on
behalf of the licensor
o Implied licences: see Ray v Classic FM plc [1998] FSR 622 - court implies
into the contract a term that would show the intentions of the parties
o Non-exclusive licences can be oral, gratuitous - even less formalities