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Intellectual Property Lecture 1

Intellectual Property Law (King's College London)

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Intellectual Property Lecture 1

Trade Marks:

Statutory protection for signs registered as UK or EU Trade Marks. –Has to be a sign capable
of graphical representation which is able to distinguish the goods/services of one
undertaking from those of other undertakings –Any kind of symbol, words, images, sounds

Passing Off:

A Tort that provides common law protection for... Misrepresenting your goods/services as
those of another in a way that damages the goodwill of the original business. (even if they
don’t have a registered trade mark)

Copyright:

Arises automatically when you create an original work, there is no need to be registered. IT
needs to fall into one of the defined category such as artistic works, musical, literary. The ‘C’
symbol doesn’t have any legal significance like in trade marks, copyright subsists
automatically where the law says it does.

Patents:

Protects inventions, these do have to be registered. They must be novel, non-obvious even
to experts, and capable of industrial application.

What unites these areas of law?

Term of Protection is the life of the author + 70 years or copyright. Patents last 20 years.
Trademarks could last indefinitely, registered ones last 10 years but are renewable. You
have to be using the trademark in order to keep it.

-All the IP rights stop other people from doing things.

-Patents are shorter in length but much broader in the scope of protection

-Trademarks are longer in length but are much narrower in the scope of protection but are
getting wider

History:

First statute that protected authors from others copying their work was in 1710. In 19 th
century there are huge developments in IP. Berne Convention and Paris Convention

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Is IP ‘property’?

-Some scholars argue it is not property at all and this terminology shouldn’t be used

Characteristics of IP:

-Intangible –Non-rivalrous(not limited), replicable –Alinable/transferrable –Limited(in time

especially)

Justifying IP:

-Rewards those who create things for the benefit of society –Natural rights arising because
of the labour expanded in creating the thing ( A person is autonomous, you own yourself
and your own labour) –Natural rights arising from personality(It’s an extension from your
personality so you should have control over it)

-Utilitarian/instrumentalist (Can be no way of recouping expenses after developing a certain

thing as it can just be copied. Also creates incentive to create)

-Social Planning theories

Tensions:

-Free market/competition: Copyrights are in fact monopolies?

-Overprotection can inhibit further innovation

-Impractical -Human rights

Is copying/free riding inherently bad? Jacob in L’Oreal v Bellure [2010]

EU Law and IP:

Harmonization of IPRs

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Intellectual Property Lecture 2

-Copyright, Designs and Patents Act 1988

-Copyright is a property right. Arises automatically in a work which qualifies under the areas
described in the statute

History:

- In 1557, Monarch gave stationers an exclusive right to control all publishing and prevent others
from competing with them provided that they provide a censorship role for the crown.

-In 1644, poet Jon Milton wrote about the situation with the stationers and argued that there
should be separation between rights to copy and pre-publication censorship. In 1695 the Act for the
stationers expired

-First copyright statute in 1710 in UK. Statute of Anne, first one to vest right in authors or purchasers
of such copies. –Copyright lasted 14 years and had to register, could re-register after 14 years.

Miller v Taylor – high court decided there was perpetual copyright even after the statute expires

-A few years later, Donaldson v Beckett HL – Case decided that the statute works to take away any
common law copyright (if there was one) in published works. In unpublished works however, there
is still rights.

-1840 extension to 28 years.

-Attempt to extend copyright after death. To life + 60 years. Argument that it would protect grand
children

-1842 copyright term of life + 7 years. –First bilateral treaty in 1850s

-1886 The Bern convention. The UK signed but the US did not (until 1980s)

-1911 Act extended copyright against and eliminated formalities. Also covered architecture and
sound recordings

-Copyright and Freedom of Expression

-Life +70 is a compromise between perpetuity and nothing

-Problem of orphan works where there is no registration – Not knowing who author is, no way to
trace who owns the copyright.

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IP Lecture 3 8/10/15

Sources: CDPA 1988. EU Directives (Partial harmonization for copyright). –Vertical directives -1
horizontal directive

Structure of Copyright: 1. Categories of protected work (If not in the category then it is in ‘public
domain’). 2. If it is in the category then subsistence must be considered (Questions such as
originality, if these are not met then it is in public domain) 3. Duration (varies between works, if it
has expired it is in public domain). 4. If it subsists then ownership must be looked at 5. There will
then be Exclusive/restricted rights

Infringement of Copyright: 1. Status of plaintiff (owns the copyright or other rights permit action, if
they do not have a right there is no infringement) 2. Have to look at the act of the defendant( causal
connection, if D did not use substantial part of the work then no infringement) 3. If he did then the
question is whether there is any consent by the plaintiff(if so then no infringement) 4. If there is no
consent then infringement established and defences must be considered 5. When infringement is
established and there is no defence then remedies must be considered

Categories:

CDPA s.1(1): (1)Copyright is a property right which subsists in accordance with this Part in the
following descriptions of work—

(a)original literary, dramatic, musical or artistic works, (LDMAs)

(b)sound recordings, films [F1or broadcasts], and

(c)the typographical arrangement of published editions

-Exhaustive list (Hyperion Records v Sawkins [2005] - [74])

-A distinction has been drawn between authorial works and those created by entrepreneurs (idea is
that authors require more protection). –Although no longer a clear division in CDPA

Literary works: s.3(1) – Works (not being dramatic or musical works) that are written, spoken or
sung. –Includes tables, compilations, databases and computer programs.

Literary quality is not required: University of London Press v University tutorial Press [1916]

A literary work affords information, instruction, or pleasure in the form of literary enjoyment:

Exxon v Exxon Insurance [1982] – The word ‘Exxon’ did not meet the test for literary work and
therefore there was no copyright infringement. (Although they were succesfull in passing off)

Headlines and Titles:

Fairfax Media Publications v Reed [2010] FCA – D, Reed, offered service to subscribers where it
provided summaries of newspaper articles some of which were published in newspaper Fairfax. They
copied the headline and by-line and wrote their own abstract for what happened in the newspaper

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article. Fairfax claimed this infringed copyright. They claimed each individual headline was an
original literary work.

Held: rejected argument that copyright protected any of the headlines, it will be rare that copyright
ever does because:

-Copyright protects the expression of ideas rather than the ideas themselves (the headline is no
more than an idea)

-In some cases there is no instructions, information or pleasure and even where there is it is very
trivial

Bennett J: ‘Headlines are, like titles, simply too insubstantial and too short to qualify for copyright
protection as literary works… it is generally, too trivial to be a literary work’

UK cases:

Infopaq (Case c-5/08) [44] – [47]: Certain word sequences might be original protected works

Newspaper Licensing Agency v Meltwater [2010] – Inforpaq relied upon. Proudman J accepted that
some headlines were protected as original literary works.

‘In my opinion headlines are capable of being literary works, whether independently or as part of the
articles to which they relate… I find that some of the headlines are independent literary works; those
that are not form part of the articles to which they relate’

CA: Said this was ‘unassailable’ reasoning

Databases and Compilations:

-A table or compilations other than a database (s.3 CDPA)

-An original database (Defined broadly in s.3A(1) - a collection of independent works, data or other
materials which— (a)are arranged in a systematic or methodical way, and (b)are individually accessible by
electronic or other means.)
-Database within the sui generis right- Database Regulations

Dramatic works & films:

CDPA s.3 (2) – Dramatic work ‘includes a work of dance or mime’
Film means ‘a recording on any medium from which a moving image may by any mean be produced’
(s.5B (1)) –To be protected must not be a copy of a previous film (s.B5(4))
-Can a film be a dramatic work? (Film could be protected as a cinematographic work – subject of
authors rights. Or as a recording – work that is the subject of related right)
Norowzian v Arks (no.1) – submitted video of choreography to various advertising agencies including
the defendant. Advertising agency had been sent this and came up with a video(anticipation)
showing similar choreography.
-The re-shoot doesn’t copy the recording so that it is not an infringement of the right as a film

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Norowzian v Arks (No 2) [200] (CA) – Norowzian wanted to protect as a dramatic work rather than as
a film.
Held that a film can be a dramatic work. Although in this case Norowzian film was a dramatic work
but he lost because the re-shoot video by the advertising agency was not a substantial part copied
A dramatic work “is a work of action, with or without words or music, which is capable of being
performed before an audience. A film will often, though not always, be a work of action and it is
capable of being performed before an audience.”
-Dramatic works have a thicker copyright.
Issues with UK approach:

What the Directives require: What UK law says:

Term Directive, Art.2: Section 9(1): The author of a dramatic work is

the person who creates it.
(1) Author of a cinematographic work is the
principal director(s) (and others as designated Section 12(2): Copyright expires at the end of
by domestic law) the period of 70 years rom the end of the
calendar year in which the author dies.
(2) Term of protection is 70 years after the
death of the last of the following persons to
survive – principal director; author of
screenplay, etc – irrespective of whether they
are authors.

Term Directive, Art. 3(3): Section 9(2)(ab): The author of a film is the
producer and principal director
The rights of producers of the first fixation of
a film shall expire 50 years after the first Section 13B: Term of protection is 70 years
fixation is made or the film is first published. after the death of the last of the following
persons to survive – principal director; author
of screenplay, etc (as per Art. 2)

Dramatic formats:
Green v Broadcasting Corporation of NZ [1989] RPC 900 (PC) – there must be ‘sufficient unity for the
work to be capable of being performed’ – not met in this case
The Ukelele Orchestra of Great Britain v Clausen [2015]
Yet: -subsistence was conceded in Nine Films & Television Pty v Ninox Television Limited [2005]

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Musical works:

CDPA – ‘means a work consisting of music, exclusive of any words or action intended to be sung,
spoken or performed with the music’

Hyperion Record v Sawkins [2005] [53]-[56] –

Artistic works:

• CDPA s. 4(1): Artistic work means:

– a graphic work, photograph, sculpture or collage, irrespective of artistic quality;

– a work of architecture being a building or a model for a building; or

– a work of artistic craftsmanship.

• Key terms defined in s 4(2), eg:

– graphic work includes “any painting, drawing, diagram, map, chart or plan” and “any
engraving, etching, lithograph, woodcut or similar work”.

– sculpture “includes a cast or model made for purposes of sculpture”.

-No Fixation requirement for artistic works? Transient forms

Paintings:

Merchandising v Harpbond [1983] FSR 32 – Question whether distinctive makeup was a painting for
the purposes of copyright. Held not to be, a painting is ‘not an idea; it is an object; and paint without
a surface is not a painting. Make up, as such, however idiosyncratic it may be as an idea, cannot
possibly be a painting for the purposes of the Copyright Act’.

-is make up not a painting? Could be a substantiality finding –Is this case appropriate for this time?

Kelley v Chicago Park – Person who created garden claimed that it was a painting or sculpture.

Sculpture:

‘includes a cast or model made for purposes of sculpture’ – CDPA s.4(2)

Boad definition: Wham-O v Lincoln Industries [1985]

-Lucasfilm Ltd v Ainsworth [2012] – The imperial storm trooper helmets in the film star wars were
held in Supreme Court that it was not a sculpture.

-suggest cases like Wham-O were too broad and departed too much from ordinary meaning of
sculpture

• Mr Justice Mann’s factors: [118]

– Take account of the normal use of the word “sculpture”, bearing in mind it refers
not just to things you see in art galleries.

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– Do not judge artistic worth.

– It is essential that the sculpture was intended to have “visual appeal” (ie, was of an
artist’s hand), although it is not fatal that the object has other purposes too.

• Wham-O and Breville wrongly decided.

• Explains why a pile of bricks can be a “sculpture” when displayed at the Tate
Modern, but not when dumped in my driveway by a builder.

• Not fatal if the artist’s vision is not realised!

• The process of fabrication is not determinative – just because something is

creating by carving does not mean it is a sculpture.

Creaiton Record v NGN – Does copyright subsist in the set for an album cover? Creation records tried
to get injunction to stop copy of album cover. There was no dramtic work (it was static scene), it was
not a sculpture, not a work of artistic craftsmanship (just assemblage), and not a collage (collage
generally require glue). Claimants did however prevail because it was a breach of confidence not on
basis of copyright.

-photograph taken by official photographer is protected. However you cannot infringe by re-
shooting the subject matter only by actually copying original. Is copyright in photographs thick or
thin (suggested here it is thin)?

Work of artistic craftsmanship:

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IP Lecture – Authorship & Originality 15/10/15

Previous lecture:

Works of artistic craftsmanship – The object does not need to be hand-made but does need
to manifest some pride in sound workmanship: Hensher v Restawhile Upholstery

-How is the requirement of artistic quality established? In Hensher, the five judges gave
different opinions.

1. Lord Reid said it is based on public response to the work. Lord Morris thought it was more
based on the view of experts, where there is doubt.

2. Lord Gilhorn? Said fact to be determined by judge in light of the evidence.

4. Lord Gilbrandon focused on the intention of the creator

5. The craftsmanship needs to be artistic, test should be whether the work was produced by
one who is in this respect an artist craftsman

Lucasfilm v Ainsworth – Mann J said ‘A craftsman is a person who makes something in a

skilful way and takes justified pride in their workmanship. An artist is a person with creative
ability who produces something which has aesthetic appeal’

Burge v Swarbrick [2007] HCA 17 – Must be a threshold level of artistic quality but the ‘The
determination turns on assessing the extent ot which the particular works artistic
expression, in its form, is unconstrained by functional considerations’

Impact of harmonisation:

- May not be consistent with EU law to have closed list of subject matter
- Authority from CJEU to suggest that copyright can subsist in any work:
BSA (Case C393/09) – Originality is the test

Authorship & Originality

Originality – did the author use the right type and amount of effort when making the work?

Possibilities: -Labour, skill or judgment is sufficient –The work is an intellectual creation,

possesses a creative spark –The work must be unique or inventive (This third option is not
adopted at all)

Authorship: Important in copyright to determine first ownership.

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CDPA s.9(1) – ‘author, in relation to a work, means the person who creates it’

For SRs and films: s. 9(2) producer is author

Definition of produces s. 178: ‘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’

Beggars Banquest v Carlton – BB organises raves and want to make a film to set the record
straight about what happens at raves. They brought crew in to film a rave but someone died
from drug overdose. Carlton wanted to use some of what was recorded.

BB argued that they were producers of the film, as they found the production company and
arranged everything.

Held: everything they arranged was too early or not relating to the film

-‘prinipal director’ is not defined, although:

Slater v Wimmer [2012] – The cameraman was held to be principal director in a sky dive.
Principal Director is the person who had creative control over the making of the film

What contributions count towards being an author?

-Being a mere scribe is not enough, but note:

Walter v Lane [1900] AC 539 – Reporters wrote down what judge was saying as like a
transcript to put in newspaper. Held that they were the author and not the judge.

-An author may come into existence without producing any original(meaning novel or
unique) matter of his own. Lord James: Reporters are performing an art beyond ‘mere
transcribing or writing from dictation’. They face challenges such as keeping up with a rapid
speaker –There may be other difficulties such as if the speech is delivered in a little known
language –Also unfairness to the newspaper proprietor if the reports can be copied

Cummins v Bond [1927] – Claimant said she was scribe for tribal chief, she had to write and
translate it. She brought an action alleging infringement, defendants argued she was a mere
scribe. However it was held she had made an original contribution because it was said to her
at great speed.

-Contribution of thought and ideas as part of a collaborative venture:

-CDPA s. 10: ‘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’

-In collaborative ventures not everyone has a go holding the pen

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Tate v Thomas [1921] – Plaintiff had idea for a play and suggested the name of some key
characters and came up with at least 1 crucial line, designed scenery and a place for the play
to be staged. Held: none of those things were enough to make them a joint author,

Donoghue v Allied Newspapers[1938] – Detailed stories of his life to a journalist and the
journalist wrote it down using his own expression. Question whether the jockey was a joint
author. Held: he was not joint author even though he provided the stories. It ‘is the
copyright of the person who has clothed the idea in form..’

Joint Authorship:

The penmanship test: Ray v Classic FM [1998] – Ray had been brought in by classic Fm to
produce a database and various materials in relation to the catalogue of music classic FM
was playin and question arose about copyright status of works by Mr Ray and whether
Classic FM was a joint author. A joint author “must contribute to the ‘production’ of the work
and create something protected by copyright which finds its way into the finished work”

-It is necessary that the joint author contribute “something which approximates to
penmanship. What is essential is a direct responsibility for what actually appears on the

paper”

Cala Homes v McAlpine [1995] – Cala homes designs and builds houses. The actual
architecture drawings were done by another firm. Mr Date form Cala was involved in
providing input into the design of building and question was whether he was joint author.

Held: “to have regard merely to who pushed the pen is too narrow a view of authorship” “IT
is wrong to think that only the person who carries out the mechanical act of fixation is an
author”. MR Date was held to be a co-author along with the architects

Brighton v Jones – Ms Jones is the writer of a play and Ms Brighton is the director, Ms
Brighton claiming she is a co-author of this dramatic work. There was feedback given to Ms
Jones from Ms Brighton which led to Ms Jones revising the scipt.

Held Ms Brighton was not a joint author. -You need a significant contribution even if not
the same magnitude as others. –Must be a contribution towards the creation of the work –
A person can become a joint author even if he has not himself put pen to paper, but
someone else has written what the first person had created

Originality
-Only certain works need to be original (Films, sound recording etc.. do not need to be
original, they only need to be not copied) –

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Starting point: Needs to originate from the author; ‘not copied’ - University Lond Press Case

-Traditional approach is that there must be labour, skill or judgment in creating the work

Compilations:

Ladroke (Football) Ltd v Williams Hill (Football) Ltd [1964] - Was a fixed odds football betting
coupan an original literary work? Yes. There was different articulations of the originality
standard .

Cramp & Sons Ltd v Frank Smythson Ltd [1944] – The tables in pocket diaries was the
relevant work. Claimants claimed that the defendants had infringed copyright on their diary.
The work is not original: the selection of the information was ‘commonplace’, ‘obvious’ and
involved ‘the very minimum of labour and judgement’.

Desktop Marketing v Telstra [2002] FCAFC (Australian):

-Question whether a whole-of universe white pages telephone directory, ordered

alphabetically by subscriber, an original literary work? (Note: this would be a database)

-The parameters of this compilation leave no ‘scope for variance’ regarding the information
to be included. –Compilation is an assembly of facts, issue with idea/expression dichotomy

Held: The telephone directory is original

Sackville J: Originality, for a compilation, can be satisfied thorugh: -skill, judgement or

knowledge in the selection or presentation of the information or –substantial labour or
expense in collecting the information

Black CJ: ‘releuctance of Courts to allow unfair advantage to be taken of the outlays of
another in originating a work’

-However there have been more recent cases which say telephone directory are not
original.

Derivative works:

-What standard ought to apply where a work incorporates pre-existing works?

-The relevant skill, labour or judgement must give the new work ‘some quality or character
which the raw materials did not possess, and which differentiates the product from the raw
material’. (Macmillan v Cooper 1924)

Interlego v Tyco Industries [1989] – relevant works were not original artistic works. Need
visisbly significant changes to the existing work. ‘Skill, labour or judgment merely in the
process of copying cannot confer originality... there must in addition be some element of
material alteration or embellishment which suffices to make the totality of the work an

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original’ – Lord Oliver ‘Copying.. however much skill or labour may be dvoted to the process,
cannot make an original work’

European Harmonisation:

Directives say the standard for originality is ‘own intellectual creation’ (for databases,
computer programs, photographs)

-CJEU case law suggests that ‘own intellectual creation; is the standard for all copyright
works: Infopaq International v Danske Dagblades Forening (Case c-5/08) esp. [33]-[37]

British law:

Meltwater [2011] EWCA Civ 890: The word ‘original’ does not connot novelty but that the
works originated with the author. Chancellor said he did not understand Infopaq ‘to have
qualified the long standing test established by [University of London and Ladbroke]’

Sawkins v Hyperion Records [2005]: Sawkins reproduced music by Lalande, took a lot of
work and skill to do.

Relevant test for musical work is ‘whether the new work is sufficiently original in terms of
the skill and labour used to produce it’ Held this was satisfied

-Walter v Lane is still good law.

-The sort of work done by Dr Sawkins should be encouraged... if someone wants to use Dr
Sawkins’ short cut, they need his permission.

Photographs

-involve reproduction of the subject matter in front of the lens –minimal creativity or labour
on part of photographer

Laddie, Prescott & Victoria (4th ed) said could be original because of:

-Rendition –Creating the scene to be photographed –Right place, right time originality

Rendition:

Bridgeman v Corel (US case)– Bridgeman is an art library which markets transparencies and
CD roms which contain high res images of public domain works of art. Old art which wasn’t
protected by copyright. Corel marketed his own CD roms which contained copies of the
Bridgeman images.

Held: They were not original works. ‘slavish copying’ although doubtless requiring technical
skill and effort, does not qualify.

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Mannion v Coors Brewing Company – Expanded on Bridgeman reasoning. -There can be

originality based on rendition but when photographers seek to reproduce exactly, another
work, they became entirely unoriginal in the rendition. –It’s not the making of choices
which is important, but that we can see the choices in the work

-Bridgeman has now been criticized on point of British law, did not cite Walter v Lane

Antiquesportfolio.com v Rodney Fitch [2001] (british case) – photographs of antiques were

original because of their rendition. Although it was 3d works which gives you a choice of
which side you photograph which you do not have for 2d.

Painer (Case C-145/10) – ‘an intellectual creation is an author’s own if it reflects the
author’s personality. That is the case if the author was able to express his creative abilities in
the production of the work by making free and creative choices’

-Term Directive, Article 6: Protection of photographs - “Photographs which are original in

the sense that they are the author's own intellectual creation shall be protected in
accordance with Article 1. No other criteria shall be applied to determine their eligibility
for protection. Member States may provide for the protection of other photographs.”

Temple Island Collections case [2012] EWPCC – Used author’s own intellectual creation and
skill and labour test were used synonymous. The claimant’s work was his own intellectual
creation

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Intellectual Property Lecture – Moral rights

Berne Convention, Article 6: Right to claim authorship and right ot reject distortions and derogatory
treatment (Independent of copyright)

-These stay with the author even if copyright is transferred to another

Granted to: authors of LDMA’s and .....

Rights recognised in CDPA as ‘moral rights’:

 Right to be identified as author or direction (s.77)

 Right to object to derogatory treatment of the work (s.80)
 Right against false attribution (s. 84)
 Limited privacy right (s.85)

-moral right are inalienable (s. 94) –Although on death (s.95)

-Moral rights can be waived in an instrument that uses signed writing (s. 87(2))

-There are limitations on each right although there is no reasonableness or fair use defence

Justifications for moral rights:

-Comes from the notion that the work incorporates the personality of the author.

“Moral rights, by contrast, descend from the civil law tradition. They adopt a more elevated and less
dollars and cents view of the relationship between an artist and his or her work. They treat the
artist’s œuvre as an extension of his or her personality, possessing a dignity which is deserving of
protection. …”

– Economic rationales: Vaver (1988) 14 Monsah University LR 284

– Ginsburg (1990) 1 Ent. L.R. 121, 122:

• Moral rights of attribution and integrity “improve the climate in which

[authors] create works of authorship”.

• Non-pecuniary benefits such as recognition are very important to some

creators.

• Moral rights provisions send a signal about the value society places on
authorship.

• Public benefits: accurate information regarding authorship; confidence

regarding authenticity of works.

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Cultural Heritage rationale: Moral rights help to preserve culture and we as a

society have an interest in that preservation. (Merryman (1976) 27 Hastings LJ
1043)

Critiques:

 Attribution (paternity) rights concern the ability to claim authorship (Existence is not
particularly contentious)
 Integrity rights concern the ability to preserve the work in the form it was created(a form of
cencorship by individual artists, to the disadvantage of downstream authors). (Impact on
consumers, producers etc.. –Loughlan (2000) 5 Media & Arts LR 1
 Has been argued to rest on (discredited) ideas about singular authorship: e.g., Ginsburg at p.
127

Attribution right: CDPA s. 77(1)

-Right to be identified as author or director when certain acts are performed with LDMA or film (s.
77(2) – (6)) –Identification, prominence (s.77(7)) and form (77(8))

-The right must be asserted in order for it to be exercised (s.78)

-Exceptions (s.79)

False attribution: s. 84(1)

• -Right not to have an LDMA falsely attributed to a person as author, or a film falsely
attributed to a person as director, when certain acts are performed with that work or film.

Clark v Associated Newspaper [1998] – Articles in evening standard parodying Mr Clarks diaries, had
photo of Mr Clark. Although also contained name of original author. Was successful in submission
for false attribution

Test: The court must determine what is the single meaning which the literary work conveys to the
notional reasonable reader.

Noah v Shuba [1991] – Involved a publication, a guide to skin piercing. There was a quote taken from
the publication written by Dr Noah, accidently there was another 17 words added to the quote
which he did not say but was attributed to him. This was a false attribution. –You judge by reference
to the whole passage

Harrison v Harrison [2010] – First edition of a book, author did not want to participate so someone
else brought in to write second edition. The author was not stated in second edition but there were
testimonials about the first edition and was held to be a false attribution because the testimonials
suggested that both editions were written by the same person. Single meaning test applied

Integrity right: s.80(1)

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• Authors of LDMAs and directors of copyright films have “the right in the circumstances
mentioned in this section not to have his work subjected to derogatory treatment”.

• “Treatment” and “derogatory” defined in s. 80(2), and the circumstances in ss.

80(3)-(7).

Loughlan (2000):

1. Physical mutilation of an original work, e.g., Buffet v Fersing [1962] Recueil Dalloz [D Jur] 570
(Cour d’appel, Paris).

2. Physical mutilation of a reproduction or copy, e.g., Huston v Turner Entertainment, noted in

Edelman [1992] IIC 629. (involved colourization of black and white films)

3. Changing the context or situation of a work, eg, Shostakovich v Twentieth Century Fox.
(Music by Russian composer used in film with anti soviet sentiments)

4. Performance and interpretation of a work, e.g., not following the stage directions in a play.

5. Creating a new work using the old, e.g., appropriation art, parodies.

“The ideology of moral rights and in particular, its central, controlling idea of the importance
of the author, fixes the primary relation between author and work in such a way as to
legitimate the exclusion of relevant persons from the creative discourses of art.”

The right of integrity gives the author “a right of control over meaning and context and use
which takes legally mandated precedence over both the needs of other artists who may …
wish to change its meaning and context, and over the role of readers and viewers as
meaning-makers of the work.”

Mutilation of the original work:

-No one else is hurt if you take an axe to your computer in rage. If you deface a work of art you
wrong the artist (and arguably, everybody else) (Merryman & Elsen.)

Compare Adler: ‘Against Moral Rights’ (2009) 97 Cal LR 263

Mutilation of a copy:

Theberge (Supreme Court of Canada) - Gallery purchases paper-based products featuring images of
paintings by Claude Théberge. It transfers the ink from the paper and onto canvass. There is no
increase in the number of copies but the type of work has changed from a paper-backed product to
a canvass one. Mr Théberge obtains pre-judgment seizure but the legality of this depends on the
canvasses being “infringing copies” under the Copyright Act.

• Is there an infringement of the artist’s reproduction right? Held: No infringement. There was
no multiplication. The economic interests of the artists were not implicated.

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Treatment:

CDPA: “any addition to, deletion from or alteration to or adaption of the work”

Examples: Confetti Records v Warner Music Ltd [2003] – superimposing a rap line in a musical work

Pasterfieldv Denham [1999]

Treatments which are contextual or which otherwise take place outside the four corners of the
work? – Snow v Eaton Centre Ltd (1982)

Harrison v Harrison [2010] - ‘Treatment’ of a work is, I think, a broad, general concept; de minimis
acts apart, it implies a spectrum of possible acts carried out on a work, from the addition of, say, a
single word to a poem to the destruction of the entire work…The limit to the generality of the word is
surely to be found later: in the possible prejudice to the honour or reputation of the author arising
from the treatment.’

Derogatory:

CDPA: “the treatment of a work is derogatory if it amounts to distortion or mutilation of the work or
is otherwise prejudicial to the honour or reputation of the author or director”.

-Prejudice to honour or reputation is likely required in all cases: Confetti Records v Warner [2003]
EWHC 1274 (Ch), [149]-[150].

-Honour( how you see yourself) and reputation (How others perceive you). Are subjective
considerations relevant?

Snow v Eaton (Canadian case) – Mr Snow created Goose installation. He sold the work to the Eaton
shopping centre. At Christmas time the centre put ribbons on the Geese, and Snow sued in relation
to infringement to integrity right. The words “prejudicial to his honour or reputation” involve a
certain subjective element or judgment on the part of the author so long as it is reasonably arrived
at. Held: Mr Snow was successful

UK case: Tidy v Trustees of the Natural History Museum (1995) 39 IPR 501 – Mr Tidy created
dinosaur cartoons for exhibition. They made a book of the dinosaur exhibition (which was copyright
infringement). Tidy also claimed that his integrity right was infringed because they reduced the size
and added coloring to them. Held: He was unsuccessful

“I personally find it difficult to see how I could possibly reach the conclusion that the reproduction
complained of is prejudicial to the honour or reputation of the plaintiff without having the benefit
of evidence relevant to the effect of the reproduction on [Mr Tidy’s] reputation in the minds of
other people”

Paster field v Denham [1999] – production of leaflet. Leaflet was changed in colour and size and a
new leaflet was made. Treatment must be prejudicial to his honour and reputation as an artist

Confetti Records v Warner Music [2003] – The words of the rap added to the song, included
reference to violence and drugs. Held: no derogatory treatment

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“..have no evidence about Mr Alcee’s honour or reputation. I have no evidence of any prejudice to
either of them. Mr Alcee himself made no complaint about the treatment of “Burnin” in his witness
statement. Mr Shipley invites me to infer prejudice. Where the author himself makes no complaint, I
do not consider that I should infer prejudice on his behalf.”

Perez v Fernandez [2012] FMCA 2 –Mr Perez (Pitbull) entered into an agreement with Mr Fernandez
in relation to a tour. Pitbull had a song called bon Bon, Mr Fernandez makes an audio drop on the
track and released it on his sight with the drop. Held: It was distortion or alteration of the work.
Prejudice in ways such as people thinking that the audio drop was part of the song. Mr Perez was
distressed at the association (Honour point?)

Performance-based works:

How should integrity rights be applied to performance-based works, given these are often enjoyed
through the medium of a performer, rather than perceived directly in the form created by author’s
hand?

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Intellectual Property Lecture – Copyright: Ownership & Economic Rights

Ownership

• The author of a work is the first owner of any copyright in it: CDPA s. 11(1).

– Note authorship provisions: s. 9.

– Note presumptions: ss. 104-105.

But there are different default rules for employees in s. 11(2) and Crown copyright in s. 11(3)

 Copyright is a ‘property right’ (s.1) that can be assigned, licensed, mortgaged and
bequeathed under a will –Should it be possible for authorship to be based on agreement
and private ordering? Case law suggests no (Beggars Banquest v Carlton 1993)

Employee-created works:

-Work made in the course of employment. It is the employer who owns copyright subject to an
agreement to the contrary

• Where an LDMA or a film “is made by an employee in the course of his employment, his
employer is the first owner of any copyright in the work subject to any agreement to the
contrary”: CDPA, s. 11(2).

1. IS the relevant author an employee?

2.Was work made in the course of employment?

3. Was there any agreement to the contrary?

Who is an employee?

Depends on: - degree of control by the employer (skilled workers may have more autonomy and
control though) –The integration of the worker into the business of the employer (Beloff v
Pressdam [1973] - )

-How the parties understand the relationship (Ray v Classic FM 1998)

-Terms of the contract as a whole (pay, hours, place of work etc... Note Ray v Classic again as he
was paid daily rate, lacked supervision and was larglely acting on his own account)

Is it in the course of employment?

– -Look at the scope of the employee’s duties: does the work fall within those duties?
(Noah v Shuba 1991 - It was clear that Dr Shuba was an employee of Public Health
Service Laboratory when he wrote the guide. But was it written in the course of
employment?

-written by Dr Noah’s own initiative at home in evening and at weekend’s, it was

typed up by the secretary. It was then published by PHSL, but he was listed as the

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author. Mr Shuba says it was in course of employment because he has duty to

perform research and he used the library service and got secretary to type it up.
Held: Dr Noah was the owner of copyright, the duties of Dr Noah did not extend to
writing books although they did include writing articles. There were resources of the
employer which were used but these were not determinative. –There would also
have been an implied term that such things written by Dr Noah, he would retain
copyright).

Assignment

Copyright can be assigned: s.90(1). –Can be partial

s.91 – Assignment of future copyright.

– Future copyright defined in s. 91(2) as: “copyright which will or may come into
existence in respect of a future work or class of works or on the occurrence of a
future event”.

– Removes the need for the assignee to join the legal owner or require a legal
assignment from that individual.

Significance of words “entitled as against all other persons” in s. 91(1)? See B4U
Network (Europe) Ltd v Performing Right Society Ltd [2013] EWCA Civ 1236. –
Concerned musical works written by composers for the film Kurbaan. PRS was assigned
certain rights. There were two agreements that might relate to the works.

– 2004: agreement with PRS, which provided that composers transfer to PRS
“absolutely for all parts of the world the rights which belong to you on the date of
this Agreement or which you may acquire or own whilst you remain our member.”

– 2008: commissioning agreement with the film producers, which likewise contained
an assignment of copyright in relation to all works produced pursuant to the
agreement.

Which one was effective? Held: The 2004 agreement was effective because the
language referred to the rights which you ‘may acquire or own’. Music in this case
was something that the composers may own. Because of the words ‘entitled as
against all other persons’

Assignment Formalities:

“An assignment of copyright is not effective unless it is in writing signed by or on

behalf of the assignor”: CDPA, s. 90(3

• It is not essential that particular terminology be used.

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– E.g., IBCOS v Barclays Mercantile [1994] FSR 275 (Ch)(“X recognises that all PK
Software Manuals are the sole property of PK” effected an assignment to the
claimant).

• An assignment does not comply with the signed writing requirement may nevertheless take
effect in equity.

Implied assignment:

-Issue where contract is silent as to copyright

See Ray Classic FM, pp. 640-4: -Starting point is that the author is the copyright owner (which will be
the contractor). –Look to the contract, does it contain an express term? –If no, you then must
determine if you should imply a term –Minimalist approach, no more than is necessary to achieve
business efficacy

R Griggs Group v Evans [2005] – May be implied assignment in certain circumstances

Warner v Gestetner [1988] – MR Warner is commercial illustater and is employed by Gestetner to

make a cat logo. Mr Warner agreed orally to provide silhouettes of cats for £225 each plus VAT.
Gestetner make extensive use of the logos which MR Warner claims are beyond the use of them for
which was agreed. He alleges copyright infringement. Gestetner argued that there was an implied
assignment, however nothing is put in writing (no formalities).

Held: Court implied an assignment in order to give business efficacy to the agreement

• -see summary of cases in Bently & Sherman, p. 137. They state: “the impact of [these]
decisions is to undermine a clear scheme that is designed both to achieve certainty in
transactions and to protect authors.”

Effects Associates v Cohen 9th circuit California 1990 – Effects associate did special effects for
film, agreed orally. Cohen was not happy with the effects of certain scene.Said: -signed writing
was required because:

 Prevents misunderstandings
 Forces parties to clarify their thinking and consider potential problems
 It encourages people to take their assignment seriously
 It helps prevent people from giving away their copyright inadvertently
 It also requires a negotiation
 It shows the passage/transfer of rights
 It’s not that hard to put things in writing

Licenses:

• Copyright owners have great flexibility in the scope of licences they grant to third parties.

• Licences can be:

– express or implied (see Robin Ray and Beck, above);

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– limited in various ways; and

– exclusive or non-exclusive.

• Definition of exclusive licensee: s. 92(1)

• Exclusive licensees have standing to sue per s. 101. Non-exclusive licensees

may have standing to sue, but the requirements in s. 101A(1) must be met,
including that the licence uses signed writing and grants a right of action
under s. 101A.

Harmonisation of ownership?

Martin Luksan v Petrus van der Let (Case C-277/10) - Case concerned a provision of Austrian law that
stated: “The exploitation rights in commercially produced cinematographic works shall vest in the
owner of the undertaking (film producer) …”. CJEU said such a provision was not permissable
because it denies a director of their property right

Rights

• The rights of the copyright owner (“restricted rights”) are listed in s. 16(1). They comprise
the rights:

– to copy the work (s. 17);

– to issue copies of the work to the public (s. 18);

– to rent or lend the work to the public (s. 18A);

– to perform, show or play the work in public (s. 19);

– to communicate the work to the public (s. 20); and

– to make an adaptation of the work or do any of the above in relation to an

adaptation (s. 21).

• The right to copy applies to all categories of copyright work. All the other rights apply only to
some categories of work.

Copying:

• The right to copy is an exclusive right for all categories of copyright work, although for TAPEs
it is confined to the creation of a facsimile copy.

• Indications from s. 17:

– For LDMAs, copying means “reproducing the work in any material form”, including
electronic storage.

– For AWs, it includes making a 3d copy of a 2d work and vice versa.

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– For films and broadcasts, it includes making a photograph of any image forming part
of the film or broadcasts.

– Copying includes transient and incidental copies.

Non-literal copying:

• The degree to which non-literal copies implicate the right to copyright will also depend on
whether the relevant copyright is thin or thick.

– E.g., reshooting a film does not infringe copyright in the film as a recording
(Norowzian No. 1) but may infringe copyright in the film as a dramatic work*
(Norowzian No. 2) (*if the film is also a dramatic work)

• Are photographs protected by thick or thin copyright?

– Some photographs involve minimal creativity. There is authority that simple works
may be protected only against literal copying: e.g., Kenrick v Lawrence (1890) 25
QBD 99 – a simple diagram would be protected only against people who makes
exactly the same drawing. Therefore a competitor could make their own thing with a
similar diagram. (cross-reference infringement).

– Creation v MGN: taking separate photo of the same scene was not copyright
infringement. But there was suggestion that recreating or restaging the scene and
then taking a photograph may be

– Bauman v Fussell [1978] – Plaintiff is photographer and goes to cuba, takes photo of
some cock-fighting. The photo is published in a magazine. First defendant saw it in
magazine and created a magazine which depicts some birds fighting in the same
position as the photo. Plaintiff claims the painting is an infringement of
copyright.Held: CA held it was not an impermissible copy. IF the photographer just
chooses when to take the photo (not creating the scene), then reproducing it was
not an infringement. Lack of causal connection.

• Although Romer LJ dissented saying: There was skill in capturing the birds at a particular
striking moment. “The plaintiff’s photograph appears to me to have captured a very striking
attitude … I cannot bring myself to think that these respective attitudes of the two
antagonists are a relatively unimportant feature of the photograph.”

European Harmonisation:

• InfoSoc, Art. 2: MS’s must grant to authors, photograph producers, film producers and
broadcasters “the exclusive right to authorise or prohibit direct or indirect, temporary or
permanent reproduction by any means and in any form, in whole or in part”.

• FAPL, [159]: “… the reproduction right extends to transient fragments of the works within
the memory of a satellite decoder and on a television screen …”.

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• Infopaq II (Case C-302/10), [44]: drafting a summary of newspaper articles is not an act that
is restricted by European legislation, not a copy.

• But compare SAS (Case C-406/10) [63]-[70]: a computer program might be a reproduction of
a manual for another program if “that reproduction constitutes the expression of the
intellectual creation of the author of the user manual”

Communication to the public

S.20 CDPA - The right to communicate the work to the public applies to all categories of work
except for TAPEs

In the CDPA, “communication to the public” includes:

– broadcasts (defined s. 6(1) and (1A)); and

– making available an on-demand electronic transmission: s. 20(2).

Bentley & Sherman: Warn against seeing it as hierarchy. There are material differences between
what making available, broadcasts and communication is

-Case law suggests that, contrary to the usual position in british law (strict liability), an intentional
act is required (FAPL)

European Harmonisation:

– InfoSoc, Art 3(1): which requires MS’s to provide a communication to the public
right (including a making available right) for authors.

– InfoSoc, Art. 3(2), which requires MS’s to provide a making available right for
phonogram producers, film producers and broadcasters.

-Case law from CJEU has led to communication right overlapping with s. 19(CDPA)

s. 19 – Public performances:

• The performance of the work in public is a restricted act for LDMs: s 19(1).

– The term “performance” includes delivery of lectures, speeches (etc) and any mode
of visual or acoustic presentation, including through a SR, film or broadcast.

• -Examples: Turning on the radio in public, is a public performance. The broadcast by the
radio itself is a communication to the public (broadcast). The unifying theme is that the
public is present at the performance. -Can be through a live performance or artificial
means of delivery (e.g., a radio).

European Developments:

-Difference between communication to the public and public performance has been location of the
audience

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FAPL case: PL matches takes place in England. FAPL films these and transmits sound and images via
satellite to production studio which adds other elements. This content is then sent via satellite to
broadcasters. The broadcaster can then add further content (logos/commentary), they then transmit
it via satellite to their subscribers. The signal is received by each subscriber and is decrypted and
decompressed by a satellite decoder, this requires decoding device. Claim whether there was
communication to public by the people who run the pubs

Held:

First instance – There was no communication to public by the publicans, because they’ve received a
signal and turned on the tv which is a public performance not a communication to the public.

CJEU: Held there was a communication to the public. [193]’ … the concept of communication must
be construed broadly, as referring to any transmission of the protected works, irrespective of the
technical means or process used.’ ‘This includes where a publican transmits broadcast works to
customers via a television screen and speakers: [196].’

-In relation to the requirement that the public not be present at the source of communication, the
CJEU seemed to define the relevant origin as the football match and not the television screen.

– InfoSoc, Recital 23: This right should cover any such transmission or retransmission
of a work to the public by wire or wireless means, including broadcasting.

– This right should not cover any other acts.

-In FABL the CJEU adopts a broad understanding of transmission

Intervention to give access test:

PPL v Ireland (C-162/10) – Related to whether or not an exception in irish law was valid, the CJEU
considered the provision of equipment in hotel bedrooms. One was television and radio which was
held to be a communication to public. CD player and CD was also held to be communication to
public because they intervened to give access. -How does this sit with InfoSoc, Recital 27: “The mere
provision of physical facilities for enabling or making a communication does not in itself amount to
communication …”?

Svenson v Retriever – If someone provides a hyperlink is that a communication to the

public? –It is a communication. [18] … the provision, on a website, of clickable links to
protected works published without any access restrictions on another site, affords users of
the first site direct access to those works. [19] As is apparent from Article 3(1) … for there to
be an ‘act of communication’, it is sufficient, in particular, that a work is made available to a
public in such a way that the persons forming that public may access it, irrespective of
whether they avail themselves of that opportunity … [20] It follows that … the provision of
clickable links to protected works must be considered to be ‘making available’ and,
therefore, an ‘act of communication’, within the meaning of that provision.

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-There was no communication to the public because there was no ‘new public’ (everyone
could access the articles already because they are on the open web)

Who is the public?

• Some indications from OSA (C-351/12):

– [27] … the term “public” … refers to indeterminate number of potential recipients

and implies, moreover, a fairly large number of persons …

– It is legitimate to consider the cumulative effect of simultaneous and successive

uses: [28]-[30].

– [31] … it is also necessary for the work broadcast to be transmitted to a new public,
that is to say, to a public which was not taken into account by the authors of the
protected works when they authorised their use by the communication to the
original public (citing FAPL, [197]).

• Note significance of requirement for a “new public” in Svennson.

ITV Broadcasting v TV Catch Up - The retransmission constitutes a communication.

• The retransmission was to the public.

• But must it be to a new public? Held no need for new public

– The Court of Justice appears to distinguish earlier cases on the basis that they
involved an existing broadcast signal being made to a new public, whilst the
TVCatchup service involves the creation of an entirely new transmission which must
be authorised by the copyright owner: [38]-[39].

Svennson: It follows that … the provision of clickable links to protected works must be considered to
be ‘making available’ and, therefore, an ‘act of communication’, within the meaning of that
provision.

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Intellectual Property Lecture 7 – Copyright Infringement

CDPA, s. 16(2): Copyright in a work is infringed by a person who without the licence of the copyright
owner does, or authorises another to do, any of the acts restricted by the copyright.

Section 16(3): (3) References in this Part to the doing of an act restricted by the copyright in a work
are to the doing of it – (a) in relation to the work as a whole or any substantial part of it, and (b)
either directly or indirectly; and it is immaterial whether any intervening acts themselves infringe
copyright

• : authorisation as a form of direct infringement.

Key theme: is countenancing infringement – in terms of knowing it is likely or certain – enough for a
person to have “authorised” an infringing act by another person?

CBS v Amstrad [1988] 1 AC 1013 – Question of whether these was an implied grant purporting to
come through Armstrad in their tape tapes device.

• Lord Templeman, p. 1054: “In the present case, Amstrad did not sanction, approve or
countenance an infringing use of their model and I respectfully agree … that in the context of
the Copyright Act 1956 an authorisation means a grant or purported grant, which may be
express or implied, of the right to do the act complained of. Amstrad conferred on the
purchaser the power to copy but did not grant or purport to grant the right to copy.”

-Amstrad may facilitate the copyright but it does not authorise the acts, there is nothing to
impliedly suggest that Armstrad was granting a license

UNSW v Moorhouse (1975) 133 CLR 1 (Australia) – Mr Moorhouse arranged for a person to head to
the UNSW library and photocopy ’the american baby’ and then they brought a law suit against
UNSW. On the basis that the provision of a photocopyer used by student authorised copyright
infringement

Held: Hgih Court said there is authorisation here “[A] person who has under his control the means by
which an infringement of copyright may be committed – such as a photocopying machine – and who
makes it available to other persons, knowing, or having reason to suspect, that it is likely to be used
for the purpose of committing an infringement, and omitting to take reasonable steps to limit its use
to legitimate purposes, would authorize any infringement that resulted from its use”:

Jacobs J (with whom McTiernan ACJ agreed):

– “There was no express permission given to [Mr Brennan, the “trap” copier] but the
real question is whether there was in the circumstances an invitation to be implied
that he, in common with other users of the library, might make such use of the
photocopying facilities as he thought fit”: p. 21.

There was such an invitation, and it was unlimited

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CBS Inc v Ames Records & Tapes Ltd [1982] – CBS said it was authorization for Ames Records to lend
tapes because people would take them home and copy them.

Held: there is no authorization. “Any ordinary person would, I think, assume that an authorisation
can only come from somebody having or purporting to have authority and that an act is not
authorised by somebody who merely enables or possibly assists or even encourages another to do
that act, but does not purport to have any authority which he can grant to justify the doing of the
act.”

Twentieth Century Fox v Newzbin –There was indexing website which helps people find content on
newsnet. Host of website was sued because it facilitates in helping users find files and download
them.

Held: -authorisation means a grant or implied grant –mere assistance or encouragement is not
enough. However here It was held to be an authorization

‘reasons I am entirely satisfied that a reasonable member [of Newsbin] would deduce from the
defendant’s activities that it purports to possess the authority to grant any required permission to
copy any film that a member may choose from the Movies category on Newzbin and that the
defendant has sanctioned, approved and countenanced the copying of the claimants’ films, including
each of the films specifically relied upon in these proceedings.’

-If we take implied grant seriously, a website such as that in Newzbin would be outside of it

Roadshow v iiNet [2012] HCA 16 ( Australia) – Held iiNet(internet provides) does not authorize
infringement. ‘Even it if were possible to be satisfied that iiNet’s inactivity after receipt of the AFACT
notices, and its subsequent media releases, “supported” or “encouraged” its customers to continue
to make certain films available online, s. 101(1A) (construed with both s. 22(6) and s. 112E) makes it
plain that that would not be enough to make iiNet a secondary infringer. An alleged authoriser must
have a power to prevent the primary infringements.’

OSP liability –

Causal Connection

• There must be a causal connection between the claimant’s and defendant’s works, in that
the latter must be derived from the former and must be sufficiently similar.

-Independent creation is a defence.

-The derivation can be indirect: e.g., King Features Syndicate v Kleeman [1941] AC
417 (left). – copyright in drawings of popeye, 3d popeye merch were made. The
defendant created its own products, they infringed on the drawings evne though
there was an indirect derivation, there was a causal connection

-What about subconscious copying? Francis Day & Hunter Ltd v Bron [1963] 1 Ch
587. – you don’t have to intend to copy or infringe, strict liability (*except for
communication to the public). Question of fact whether causal connection is made

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out. –Inference drawn based on similarity between the works and whether
defendant had access to the work

Designers Guild case - “The first step in an action for infringement of artistic copyright is to identify
those features of the defendant’s design which the plaintiff alleges have been copied from the
copyright work. The court undertakes a visual comparison of the two designs, noting the similarities
and the differences. The purpose of the examination is not to see whether the overall appearance of
the two designs is similar, but to judge whether the particular similarities relied on are sufficiently
close, numerous or extensive to be more likely to be the result of copying than of coincidence. It is at
this stage that similarities may be disregarded because they are commonplace, unoriginal, or consist
of general ideas. If the plaintiff demonstrates sufficient similarity, not in the works as a whole but in
the features which he alleges have been copied, and establishes that the defendant had prior access
to the copyright work, the burden passes to the defendant to satisfy the judge that, despite the
similarities, they did not result from copying.”

Baigent [2007] – Authors of a book called ‘Holy Blood and the Holy Grail’ which had similar story to
the Da Vinci code. Question was whether the Da Vinci code infringed copyright of Holy Grail, the
author of Da Vinci code used Holy Grail as part of his research.

Held: there was copying but not a substantial part and therefore there was no infringement. You
consider:

-Degree of similarity -Amount of access -Then if there is enough of those two, it is for the defendant
to show that it was an independent creation

– Assess the similarities between the alleged infringing work (W2) and the original
copyright work (W1).

– Assess whether the author of W2 had direct or indirect access to W1.

– Determine whether the author of W2 made use of material derived from W1.

– If the defendant argues that no such use was made, consider his explanation for the
similarities between W2 and W1.

– If there is a causal connection, turn to consider whether a substantial part of W1

was used.

Substantial part:

• CDPA, s. 16(3)(a): “References in this Part to the doing of an act restricted by the copyright
in a work are to the doing of it in relation to the work as a whole or any substantial part of
it.”

• -Judge substantial part by reference to the claimant’s work. Then determine whether a
substantial part of that has been taken

• The focus is on the quality of what is taken.

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• A part will not usually be substantial unless it is also original: e.g., Ladbroke v William
Hill [1964] 1 WLR 273, 293 (Lord Pearce).

• Recognisability has been emphasised in some cases: e.g., Hawkes & Sons v
Paramount Film Service [1934] 1 Ch D 593.

• A substantial part can arise from features abstracted from the work: Designers’ Guild
[2000] UKHL 58; Baigent [2007] EWCA Civ 247.

(A person could copy a substantial part of a novel without copying a single line of
text, )

Idea/Expression dichotomy:

• In Designers’ Guild, Lord Hoffmann argued that the idea/expression dichotomy has two
distinct manifestations:

– Ideas that are not protected “because they have no connection with the literary,
dramatic, musical or artistic nature of the work”.

– Ideas that are of a literary, dramatic, musical or artistic nature, but which are
commonplace or not original, as illustrated by the sketch in Kenrick v Lawrence.
“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.”

European Harmonisation:

• What is the impact of ISD, Art. 2(a): “Member States shall provide for the exclusive right to
authorise or prohibit … reproduction … in whole or in part …”?

• See Bently & Sherman, pp. 195-196, 204-206:

– The EU test as outlined in Infopaq applies to LDMAs for the rights of reproduction,
distribution and communication.

– An EU test (case law to be developed) applies to SRs, films and broadcasts.

– The traditional UK test applies to: (i) LDMA’s for the public performance and
adaptation rights; and (ii) to TAPEs.

• Infopaq: ’part’ has been defined as just original. [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.

[38] As regards the parts of a work, it should be borne in mind that there is nothing in
Directive 2001/29 or any other relevant directive indicating that those parts are to be

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treated any differently from the work as a whole. It follows that they are protected by
copyright since, as such, they share the originality of the whole work.

[39] In the light of the considerations referred to in paragraph 37 of this judgment, the
various parts of a work thus enjoy protection under Article 2(a) of Directive 2001/29,
provided that they contain elements which are the expression of the intellectual creation
of the author of the work.

Mithcell v BBS [2011] – A man came up with characters called ‘bounce bunch’. He sent a
pitch to the BBC saying he wanted a show about them, BBC rejected the project. A number
of years later they broadcasted a program called ‘Ker-Wizz’ which the man claimed were
copies of the bounce bunch. BBC argue that production of it begun prior to Mr Mitchell’s
pitch.

Held: The BBC won as they showed it was independent creation. the essential consideration
is “whether the defendant had taken that which conferred originality on the claimant's
copyright work (or a substantial part of it)”: [28].

Bodo Sperlien Ltd v Sabichi Ltd [2015]

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Intellectual Property Law – Lecture: Copyright Defences

Illustration of exceptions: transient copying

CDPA, s. 28A: Copyright is not infringed “by the making of a temporary copy which is transient or
incidental, which is an integral and essential part of a technological process and the sole purpose of
which is to enable—

(a) a transmission of the work in a network between third parties by an intermediary; or

(b) a lawful use of the work;

and which has no independent economic significance.”

ITV Studios Ltd v TV Catch Up Ltd [2011]

Structure and drafting:

• There is variation between countries in the:

– relative use of free and remunerated exceptions; use of open-ended drafting; and
interpretative practices of judges and users.

CDPA: large number of exceptions in Part I, Chapter III

Laddie article [1996) 18 EIPR 253, 258 - In the US, there is “a statutory defence of fair use. Its limits
are not precisely drawn, but it has given the courts the flexibility to prevent copyright from being
abused. … As the US Supreme Court has said on more than one occasion, this fair use defence
‘permits courts to avoid rigid application of the copyright statute when, on occasion, it would stifle
the very creativity which that law is designed to foster’.”

“Compare that with our legislation. Rigidity is the rule. It is as if every tiny exception to the grasp of
the copyright monopoly has had to be fought hard for, prized out of the unwilling hand of the
legislature and, once conceded, defined precisely and confined within high and immutable walls.
This approach also assumes that Parliament can foresee, and therefore legislate for, all possible
circumstances in which allowing copyright to be enforced would be unjustified. Based on this
approach, we now have an Act in which there are 49 sections of numbingly detailed exceptions to
copyright infringement.”

-Can this criticism still be made given intervening developments? (In particular EU harmonization
and changes to the UK statute)

EU Harmonisation:

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• The scope of exceptions in the CDPA must be analysed in the light of Art. 5 of InfoSoc:

-Closed-ended list of the acts to which an exception may be directed.

-One is compulsory: temporary copying as part of technological processes: Art. 5(1) (see CDPA,
s. 28A).

-The rest are optional.

-How much can you deviate from the language or article 5? Meltwater [2010] – The relevant CDPA
exceptions can be narrower than the equivalent paragraph from art 5. (However, it can be argued
that that kind of narrower is not permissible if we take seriously the idea of European harmonization
)

Deckmyn v Vandersteen case C-201/13 – talks about parody needing to be autonomous European
concept and should be understood in the same way. Varying the meaning of parody in different
member states would be incompatible with the directive. Par [14]-[17]

• Art. 5(5) states that the exceptions permitted under InfoSoc “shall only be applied in certain
special cases which do not conflict with a normal exploitation of the work or other subject-
matter and do not unreasonably prejudice the legitimate interests of the rightholder”.

• Who is the audience of Art 5.(5)? Governments in enacting exceptions and/or judges in
applying them (FAPL at [181], Meltwater at [130])

Indications from the Court of Justice regarding interpretation:

• Infopaq (C-5/08), [56]-[59]: the exceptions in Art. 5 must be “interpreted strictly”:

given that they derogate from the “general principle” of InfoSoc (i.e., reproduction and
other acts require authorisation);

in the light of Art. 5(5); and

to enhance legal certainty: see recitals 4, 6, 21.

Infopaq cited with approval in, e.g., Meltwater [2010] EWHC 3099 (Ch), [119].

-Although, FAPL says whilst exceptions must be interpreted strictly, the interpretation “must
enable the effectiveness of the exception to be safeguarded and permit observance of the
exception’s purpose”:

• Allowing the development and operation of new technologies.

• Providing a fair balance between right holders and those who wish to utilise
new technologies.

2014 Reforms to CDPA:

-Expansion of fair dealing

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– Other reforms to existing exceptions, and the introduction of new ones, e.g.:

• Data mining: s. 29A., Private copying: s. 29B. (This exception was quashed in
July 2015: BASCA v SoSBIS [2015] EWHC 1723 (Admin).)

– Limits on contracting out.

– New Format shifting exception

Fair dealing exception:

The use must be fair and fall within one of the permissible purposes.

The purposes:

 Research and private study (s.29) - (1) Fair dealing with a work for the purposes of research
for a non-commercial purpose does not infringe any copyright in the work provided that it is
accompanied by a sufficient acknowledgement.
(1B) No acknowledgement is required … where this would be impossible for reasons of
practicality or otherwise.
(1C) Fair dealing with a work for the purposes of private study does not infringe any
copyright in the work.

De Garis v Neville Jefress Pidler Pty Ltd (1990) 18 IPR 292 Australian – definitions of
‘research’ and ‘study’

Agency arguments: Stillitoe v McGraw-Hill book Company [1983] – Publisher, author of study
notes could not rely on private study exception (but note s. 29(3) and new s. 32(1))

-Non-commercial research can be done by a commercial entity: Controller of HM Stationery

Office v Green Amps [2008] EWCA Civ 588

 Criticism & Review: s. 30(1)

(1) Fair dealing with a work for the purpose of criticism or review, of that or another work or
of a performance of a work, does not infringe any copyright in the work provided that it is
accompanied by a sufficient acknowledgement (unless this would be impossible for reasons
of practicality or otherwise) and provided that the work has been made available to the
public.

A liberal interpretation was pressed in Pro Sieben Media AG v Carlton UK Television Ltd
[1999] 1 WLR 605.

‘Of that or another work’:

Hubbard v Vosper [1972] – A book was highly critical of the church of scientology, there was
an interlocutory injunction to prevent publication.
Pro Sieben – A broadcast about a woman who was having octuplets, excerpts from this story
were used on another program was used for critique journalism. Held that this was within
the exception was of that or another work
Ashdown v Telegraph Group Ltd [2002] – Ashdown had meeting with Tony blair and there
was recording of minutes in hte meeting. The news article quoted from this confidential
minute. Held the relevant work was the confidential minute and the relevant criticism was

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the behaviour of the two politicians, they were not criticizing the work so was not fair
dealing.
Meltwater – No criticism or review

• CDPA, s. 30(1ZA): Copyright in a work is not infringed by the use of a quotation from
the work (whether for criticism or review or otherwise) provided that—
(a) the work has been made available to the public,
(b) the use of the quotation is fair dealing with the work,
(c) the extent of the quotation is no more than is required by the specific
purpose for which it is used, and
(d) the quotation is accompanied by a sufficient acknowledgement (unless this
would be impossible for reasons of practicality or otherwise).

Sufficient acknowledgement: SAS Institute Inc v World Programming [2010] – A fair dealing
defence failed because of lack of sufficient acknowledgement

Reporting current events: s.30(2)

• (2) Fair dealing with a work (other than a photograph) for the purpose of reporting current
events does not infringe any copyright in the work provided that (subject to subsection (3))
it is accompanied by a sufficient acknowledgement.
• (3) No acknowledgement is required in connection with the reporting of current events by
means of a sound recording, film or broadcast where this would be impossible for reasons of
practicality or otherwise.

Pro Sieben: “reporting current events” is an expression “of wide and indefinite scope”.

What is a “current event”?

– Newspaper Licensing Agency v Marks and Spencer [2001] Ch 257, per Peter Gibson
LJ; compare Chadwick LJ. – a natural reading is ‘a public report of a current
newsworthy event’ . although Chadwick said there would have been a current event

– There can be a current interest in a past event: e.g., Ashdown v Telegraph Group.

– Meltwater [2010] EWHC 3099 (Ch), [129]; note the difference of reasoning in [2011]
EWCA Civ 890.

Fairness:

-Overrall test is one of impression and degree (Hubbard v Vosper)

Considerations in case law: Case

Competing or substituting for the claimant’s Ashdown v Telegraph Group
work
The amount taken Hubbard v Vosper
Whether claimant’s work was published or Hyde Park Residence v Yelland [2001]
unpublished
Any additional purpose of the defendant, such as Laddie, cited with approval in HRH Prince of
to right a wrong or to engage in political Wales

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controversy

Interpretative Practices

• Copyright Act (RSC 1985, c C-42) ss. 29, 29.1, 29.2, 30.2.

• CCH Canadian v Law Society of Upper Canada, 2004 SCC 13: fair dealing defence successful
in relation to Law Library’s custom photocopying service.

– Users’ rights language adopted.

– Broad definition of research:

– Fairness factors identified and applied to a copying policy (rather than individualised
instances). Factors: (1) the purpose of the dealing;

– (2) the character of the dealing;

– (3) the amount of the dealing;

– (4) alternatives to the dealing;

– (5) the nature of the work; and

– (6) the effect of the dealing on the work.

– Fair dealing in addition to sector-specific exceptions for LAMs.

• SOCAN v Bell 2012 SCC 36 (Canadian) - Fair dealing applies to consumers streaming extracts
from musical works in the course of deciding whether to purchase a track from a lawful
online download service.

SOCAN argued that research must be undertaken to “establish facts and reach new
conclusions”, with the goal of making new creative works. This was rejected because, inter
alia:

– Research “can be piecemeal, informal, exploratory, or confirmatory. It can in fact be

undertaken for no purpose except personal interest.”

– The Supreme Court in CCH set a relatively low threshold for “research” in the
understanding that the “analytical heavy-hitting” would be done in assessing
fairness.

– A narrow definition would contradict the Supreme Court’s insistence that research
be given a large and liberal interpretation.

– Idea is that we liberalize the definition of ‘research’ but ‘fairness’ is where most of
the heavy lifting is done

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Parody & Beyond:

– New Parody exception s. 30A(1) Fair dealing with a work for the purposes of
caricature, parody or pastiche does not infringe copyright in the work.

– Parody is an important and socially desirable activity. However, many parodic uses will prima
facie infringe copyright.

– If we leave parody to market-based transactions, this will result in market failure as

copyright owners will not tend to licence parodists.

– We therefore need legislative intervention through a statutory exception.

Caricature “portrays its subject in a simplified or exaggerated way, which may be insulting or
complimentary and may serve a political purpose or be solely for entertainment.”

Parody “imitates a work for humorous or satirical effect. It evokes an existing work while being
noticeably different from it.”

Pastiche “is musical or other composition made up of selections from various sources or one that
imitates the style of another artist or period.”

– Intellectual Property Office guidance notes

Deckmyn v Vandersteen: The “essential characteristics of parody are, first, to evoke an existing work
while being noticeably different from it, and, secondly, to constitute an expression of humour or
mockery”: [20]. However, it is not necessary that the parody:

– “should display an original character of its own, other than that of displaying
noticeable differences with respect to the original parodied work”;

– “could reasonably be attributed to a person other than the author of the original
work itself”;

– “should relate to the original work itself or mention the source of the parodied
work”.

Target v weopon parody:

Target parody: the relevant comment pertains to the work, its underlying thoughts or philosophies,
or works of that type.

Weapon parody: the work is used to illustrate broader ideas or commentary.

Dekcmyn suggests that weapon parody is included in fair dealing exception

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The fair use of a copyrighted work is not an infringement of copyright – US Copyright Act, 107

• Blanch v Koons: It was held that Koons’ work, which was characterised as a satire, was not
infringing by virtue of fair use.

Key ideas:

– In assessing the purpose of the use, it is relevant whether the work is transformative
or merely supersedes the original.

– Koons’ use may be commercial, but this is not determinative, especially given the
transformative nature of his use.

– The amount reproduced reasonable given Koons’ purpose.

– There was no evidence of actual or potential market harm to Blanch.

• Cariou v Prince (2nd Circuit) US case: It was wrong of the District Court to read into the fair
use defence a requirement that the defendant’s use must comment on or critically refer
back to the original works. What is required is that the new work provide “new expression,
meaning or message”.

– Although the intention of the artist is relevant it is not determinative.

If a case with similar facts were heard in the UK, might this work be for the purposes of
pastiche?

Educational establishment (not applies for non commercial purpose): S. 34 - (1)The

performance of a literary, dramatic or musical work before an audience consisting of teachers and pupils at
an educational establishment and other persons directly connected with the activities of the
establishment—

(a)by a teacher or pupil in the course of the activities of the establishment, or

(b)at the establishment by any person for the purposes of instruction,

is not a public performance for the purposes of infringement of copyright.

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Intellectual Property Lecture – Introduction to Trademarks and Passing Off

Trademarks

Statutory protection for signs registered as UK Trade Marks or European Trade Marks

-Trademarks can last indefinitely as long as they are used. –Use is an important concept in trade
mark law

EU law Harmonisation:

Intel (C-252/07) – AG Sharpston: ‘Within the EU, trade mark law comprises two limbs. On the one
hand, there is a system of Community trademarks, valid through ought the Community and governed
by the Community trade mark regulation. ON the other, there are separate systems of national trade
marks, each limited to the Member State concerned and to a large extent harmonized by the
Trademark directives.’

-Note difference between brand and trademark. Brand can encompass many different trademarks.

Context is important:

E.g Polo (VW Polo, Polo sweets, Polo Ralph Lauren)

What can be a trademark?

Trade Marks Act (TMA) 1994 – s.1 – ‘any sign capable of being represented graphically which is
capable of distinguishing goods or services of one undertaking from those of other undertakings.

A trade mark may, in particular, consist of word (including personal names), designs, letters,
numerals or the shape of goods or their packaging.’

What are the functions of a Trade Mark?

1. To indicate the origin of the goods or services

2. Indicates quality based on previous experience/word of mouth
3. To also indicate subjective qualities and desirable associations with the product

How is the Trade Mark being Used?

-Infringement: -Replicas. –Similarity

Mattel v MCA Records (9th Cir 2002 USA) –

How does the use of a Trade Mark affect the function of a trade mark?

Justifying Trade Mark Law:

-To protect consumers from confusion and make things more efficient

-Balancing interests of: Trade Mark Proprietor, other traders, public

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Scope of Protection: Infringement

-Use in course of trade (s.10):

1. Identical mark on identical goods

2. Similar signs on similar goods + likelihood of confusion

3. Similar/Identical sign on goods where mark has reputation and sign causes detriment to
distinctive character/repute or takes unfair advantage

How far should Trade Mark Law Go?

-Should the law extend the scope of protection by following social/marketing trends?

-Are we relying too much on unjust enrichment arguments?

Concerns about Overbroad Trade Mark Protection:

 Gets in the way of free competition

 Encourages companies to invest heavily in branding
 Barriers to free movement of goods
 Can hamper free expression
 Can be used illegitimately in attempts to extend other IP rights

Passing Off

-Common law protection for goodwill in business.

-Passing off is misrepresenting your goods as the goods of someone else in a way that damages the
goodwill of the original business.

-‘Proteate’ tort, it is changeable.

-Deceit element is relevant but is not a requirement

Requirements (Or Characteristics) of Passing off:

-Depends on perception of the public (Bollinger v Costa Brava)

Erven Warnick v Townend (The Advokaat case) [1979] HL – Defendant made a similar product (like
Advokaat), not with the traditional recipe and they called it ‘Old English Advokaat’.

Held: Lord Diplock identified five characteristics needed for Passing Off:

1. A misrepresentation

2. Made by a trader in the course of trade

3. The misrepresentation must be made to the ultimate consumers of the owner of the goodwill

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4. Must be calculated to injure the goodwill of the trader

5. This will cause harm or is likely to cause harm to the goodwill/business of the trader

-Collective goodwill was identified (for Advokaat as a class of goods). Which was shared by those
who manufacture Advokaat.

Reckitt v Borden (Jif Lemon) [1990] –

-Characteristics said by Lord Oliver

-Nexus between goodwill, the misrepresentation, and the harm done to the misrepresentation
(damage).

Goodwill

-The attracting force which brings customers –Force which stems from the business to bring in the
customers (goods and services)

-Timing of the will is important. If it has not been used in a very long time it is a factor(One example
is Harrods v Harrodian School) –Goodwill does not exist in the absence of consumers (it is more than
reputation)

-Location is important (Starbucks (HK) Ltd v British Sky Broadcasting Group 2015 UKSC – Able to
show that there had been substantial access by the Chinese people in the UK. There was also flights
where you could access the programmes. The dispute was over the word ‘Now’ for identical
services. It was held that it was not enough, the needed to show subscribers and consumers in the
UK to have goodwill. Strict application). Do they have goodwill in the particular jurisdiction or area?

Misrepresentation

-Actionable misrepresentation. Standard misrepresentation is where there is a deception, your good

are the goods of someone else.

-Focus is on whether there has been confusion on a substantial number of consumers

Tuneje v Albev – Defendant manufactured what they called ‘elderflower champagne’, it was much
cheaper than champagne although sold in a similar bottle. Court said there was collective goodwill
for champagne but there wasn’t misrepresentation. There would not be confusion over elderflower
champagne being actual champagne because it was much cheaper and had no alcohol in it. –Would
it make the distinctiveness of champagne be lost?

Mirage Studios v Counter Feat Clothing – Owners of copyright (Of Teenage mutant ninja turtles) was
Mirage Studios and they made money by licensing. Counter clothing asked for a license to make T
shirts of the turtles but Mirage Studio said no. Counter Feat got someone to make a T shirt with
alternative turtles with different names. Court granted injunction to stop the making of the t shirts
with alternative turtles.

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-Low watermark for confusion

-Higher watermark: Jif Lemon case

Hodgkinson v Wards Mobility [1995] – The claimant had been producing wheelchair cushion with
distinctive shape. The defendant manufactured very similar looking wheelchair cushions . Mr Justice
Jacob said there was no tort of copying, there was no tort of making use of another’s goodwill as
such, and there is no tort of competition.

Damage

-Common field of activity (previously had to be in direct competition with plaintiff to show they
would harm their goodwill) Wombels case

Harrods v Harrodian School – Harrodian bought an old property once owned by Harrods and they
wanted to call it Harrodian school there, Harrods objected. Harrods argued it was possible that
people would think it was a school by Harrods even though Harrods was not in the business of
educational services. Held there was no damage but – although the field of activity is relevant, it is
not absolutely required.

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Intellectual Property Lecture – Introduction to Trademarks and Passing Off

Trademarks

Statutory protection for signs registered as UK Trade Marks or European Trade Marks

-Trademarks can last indefinitely as long as they are used. –Use is an important concept in trade
mark law

EU law Harmonisation:

Intel (C-252/07) – AG Sharpston: ‘Within the EU, trade mark law comprises two limbs. On the one
hand, there is a system of Community trademarks, valid through ought the Community and governed
by the Community trade mark regulation. ON the other, there are separate systems of national trade
marks, each limited to the Member State concerned and to a large extent harmonized by the
Trademark directives.’

-Note difference between brand and trademark. Brand can encompass many different trademarks.

Context is important:

E.g Polo (VW Polo, Polo sweets, Polo Ralph Lauren)

What can be a trademark?

Trade Marks Act (TMA) 1994 – s.1 – ‘any sign capable of being represented graphically which is
capable of distinguishing goods or services of one undertaking from those of other undertakings.

A trade mark may, in particular, consist of word (including personal names), designs, letters,
numerals or the shape of goods or their packaging.’

What are the functions of a Trade Mark?

1. To indicate the origin of the goods or services

2. Indicates quality based on previous experience/word of mouth
3. To also indicate subjective qualities and desirable associations with the product

How is the Trade Mark being Used?

-Infringement: -Replicas. –Similarity

Mattel v MCA Records (9th Cir 2002 USA) –

How does the use of a Trade Mark affect the function of a trade mark?

Justifying Trade Mark Law:

-To protect consumers from confusion and make things more efficient

-Balancing interests of: Trade Mark Proprietor, other traders, public

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Scope of Protection: Infringement

-Use in course of trade (s.10):

1. Identical mark on identical goods

2. Similar signs on similar goods + likelihood of confusion

3. Similar/Identical sign on goods where mark has reputation and sign causes detriment to
distinctive character/repute or takes unfair advantage

How far should Trade Mark Law Go?

-Should the law extend the scope of protection by following social/marketing trends?

-Are we relying too much on unjust enrichment arguments?

Concerns about Overbroad Trade Mark Protection:

 Gets in the way of free competition

 Encourages companies to invest heavily in branding
 Barriers to free movement of goods
 Can hamper free expression
 Can be used illegitimately in attempts to extend other IP rights

Passing Off

-Common law protection for goodwill in business.

-Passing off is misrepresenting your goods as the goods of someone else in a way that damages the
goodwill of the original business.

-‘Proteate’ tort, it is changeable.

-Deceit element is relevant but is not a requirement

Requirements (Or Characteristics) of Passing off:

-Depends on perception of the public (Bollinger v Costa Brava)

Erven Warnick v Townend (The Advokaat case) [1979] HL – Defendant made a similar product (like
Advokaat), not with the traditional recipe and they called it ‘Old English Advokaat’.

Held: Lord Diplock identified five characteristics needed for Passing Off:

1. A misrepresentation

2. Made by a trader in the course of trade

3. The misrepresentation must be made to the ultimate consumers of the owner of the goodwill

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4. Must be calculated to injure the goodwill of the trader

5. This will cause harm or is likely to cause harm to the goodwill/business of the trader

-Collective goodwill was identified (for Advokaat as a class of goods). Which was shared by those
who manufacture Advokaat.

Reckitt v Borden (Jif Lemon) [1990] –

-Characteristics said by Lord Oliver

-Nexus between goodwill, the misrepresentation, and the harm done to the misrepresentation
(damage).

Goodwill

-The attracting force which brings customers –Force which stems from the business to bring in the
customers (goods and services)

-Timing of the will is important. If it has not been used in a very long time it is a factor(One example
is Harrods v Harrodian School) –Goodwill does not exist in the absence of consumers (it is more than
reputation)

-Location is important (Starbucks (HK) Ltd v British Sky Broadcasting Group 2015 UKSC – Able to
show that there had been substantial access by the Chinese people in the UK. There was also flights
where you could access the programmes. The dispute was over the word ‘Now’ for identical
services. It was held that it was not enough, the needed to show subscribers and consumers in the
UK to have goodwill. Strict application). Do they have goodwill in the particular jurisdiction or area?

Misrepresentation

-Actionable misrepresentation. Standard misrepresentation is where there is a deception, your good

are the goods of someone else.

-Focus is on whether there has been confusion on a substantial number of consumers

Taittinger v Albev – Defendant manufactured what they called ‘elderflower champagne’, it was
much cheaper than champagne although sold in a similar bottle. Court said there was collective
goodwill for champagne but there wasn’t misrepresentation. There would not be confusion over
elderflower champagne being actual champagne because it was much cheaper and had no alcohol in
it. –Would it make the distinctiveness of champagne be lost?

Mirage Studios v Counter Feat Clothing – Owners of copyright (Of Teenage mutant ninja turtles) was
Mirage Studios and they made money by licensing. Counter clothing asked for a license to make T
shirts of the turtles but Mirage Studio said no. Counter Feat got someone to make a T shirt with
alternative turtles with different names. Court granted injunction to stop the making of the t shirts
with alternative turtles.

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-Low watermark for confusion

-Higher watermark: Jif Lemon case

Hodgkinson v Wards Mobility [1995] – The claimant had been producing wheelchair cushion with
distinctive shape. The defendant manufactured very similar looking wheelchair cushions . Mr Justice
Jacob said there was no tort of copying, there was no tort of making use of another’s goodwill as
such, and there is no tort of competition.

Damage

-Common field of activity (previously had to be in direct competition with plaintiff to show they
would harm their goodwill) Wombels case

Harrods v Harrodian School – Harrodian bought an old property once owned by Harrods and they
wanted to call it Harrodian school there, Harrods objected. Harrods argued it was possible that
people would think it was a school by Harrods even though Harrods was not in the business of
educational services. Held there was no damage but – although the field of activity is relevant, it is
not absolutely required.

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Intellectual Property Lecture 11 – Passing Off II

Get Up:

United Biscuits v Asda [1997] – Asda made their own version of ‘penguin’ biscuits. They had ‘puffin’
biscuit. Court said this was misrepresentation, they had to make their packaging significantly
different

-has been criticized because there is no genuine consumer confusion, they can tell the difference
between penguin and puffin biscuits.

Daigeo (Vodkat) – There is a range of vodka, question of how consumers view vodka. Vodka is
considered strong(alcoholic), fairly tasteless so it can easily be mixed with other things. Diageo was
challenging the sale of ‘Vodkat’ which was not as alcoholic; it was cheaper than most (but not all)
vodkas. There was collective goodwill established for vodka. It was held that there was
misrepresentation in selling ‘Vodkat’ because consumers are unlikely to be scrutinizing the alcohol
content.

Own Name:

-If you have licensed your name/sold your business then that will stop you using your own name in
trade

Hotel Cipriani v Cipriani [2010] –

Cybersquatting:

BT v One in a Million [1999] – A company would squat on a bunch of URLs that would be for large
companies and essentially hold them hostage until the company would pay them a fee to get them
back. They were not using it in trade, they were just holding it. Although there was no
misrepresentation to the public, and no confusion because no one has seen it yet, the court fit it
into the category of passing off.

Reverse passing off:

-Passing off someone else’s goods as your goods(rather than passing off your goods as theirs)

-Is there any damage to goodwill? –Does the consumer ever find out where the photographs ever
come from (Bristol Conservatories)?

Bristol Conservatories – Bristol conservatories used photographs to show customers which were not
actually their own conservatories but rather ones which had been built by competitors.

-There is a misrepresentation but there isn’t a connection with the goodwill of the original plaintiff

Celebrity Endorsement/Character merchandising:

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-No inherent personality protection in the UK (for celebrities)

Early cases: McCulloch v Lewis A May [1947] – Uncle Mac was a well known radio personality, his
image was used to sell cereal and he argued it was passing off by implying it was related to him.
However, there was no common field of activity between a radio host and cereal

Lyngstrad v Anabas[1977] – Lyngstrad sold t shirts and items with images of Abba (popstars), they
objected but there was no misrepresentation, damage or common field of activity so no passing off.

Tavener Rutledge v Trexapalm (Kojak Lollies) – Character Kojak well known for having lollies.
Company started selling Kojak lollies. Kojak tried to get registration for Kojak lollies trademark but
the company who started selling kojak lollies argued that they had the goodwill for kojak lollies in
the UK and succeeded.

Mirage Studios v Counter-Feat Clothing [1991] – Cited Australian cases and said consumers in UK
might believe that there would be a licensing arrangement

Indorsement:

Irvine v Talksport [2002] – Irvine’s photo was changed to be put in a brochure and they changed the
picture slights for him to be holding a radio. He produced evidence that he was in fact in the
business of licensing his image and got paid large sums to endorse products. Part of his trade was
licensing his image, he was successful.

-In relation to damages, judge dismissed the evidence of how much he would get for endorsements
and judge awarded a much lower sum. This was appealed and it was raised to reflect more
accurately what he would have been paid for an endorsement of the program

Distinguish from celebrity merchandising where courts less likely to find passing off (Spice girls case)

Robyn Rihanna Fenty v Arcadia (Topshop) [2015] – Topshop sold t shirts with a photograph of
Rihanna. Rihanna objected and said it was passing off as they were misrepresenting the shirts as
being licensed by her. IT was significant that it was a photo used a lot for promotion of one of her
albums, that people look to Rihanna for fashion, and that it was a well known store (Topshop) selling
the t shirts. Because of this it was held in this case that people would think that there would be a
connection between Rihanna and Topshop.

-Distinction between endorsement and merchandising dismissed and it was said one is not more
likely but the courts must look at the facts as a whole.

CA said: Although the endorsement/merchandising distinction was useful at time of Irvine, the court
here was not wrong in saying that they it should be construed on the facts as a whole.

Common Field of activity:

Wobmles Ltd v Wombles Skips Ltd [1975] – No common field of activity, no actionable
misrepresentation

Stringfellow v McCain Foods [1984] – Stringfellow was famous for running a number of nightclubs in
the 70s and 80s. McCain foods came out with a new line of chips called ‘stringfellows’, in the

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advertisement for them they had people dancing to a disco in their kitchen whilst making the chips.
Stringfellow argued this was passing off and he raised the argument of licensing, that consumers
would think there was a licensing arrangement. Held: he had no broad monopoly in the name
‘stringfellow’, he only had goodwill in that name in relation to night clubs. Although it was said –no
specific need for common field of activity

Australian case:

Pacific Dunlop v Hogan (1989) – Created the image of crocodile Dundee. Argued that the
misrepresentation in passing off would be that there was a licensing arrangement between him and
whoever was using the crocodile Dundee character

Unfair Competition:

C Wadlow: Has suggested extension of passing off in some areas. Desire to not let an unmeritorious
defendant escape liability.

-Misappropriation rather than misrepresentation? Elder flower champagne case

Arsenal v Reed [2003] – Dicta suggests that passing off should be called unfair competition

Hodgkinson case – Jacobs says the heart of passing off is deception. Never has the court shown even
a slight tendency to go beyond deception, if it did it would stray into unfair competition.

-Is this so in the light of cases like Mirage Studios?

L’Oreal v Bellure [2008] – It was argued that it was unfair competition and that passing off should
expand to protect them here. Although it was said the tort of passing off cannot and should not be
extended into a tort of unfair competition

Should the tort be changed to a tort of unfair competition:

For:

Move closer to the way unfair competition is protected in other member states and more towards
international treaties/provisions.

-Internal coherence (some cases do not seem to fall into the traditional ambit of the tort, a
reformulation would take these into account and make coherence)

-More honesty/better conduct in the market place –A broader tort allows it to be even more flexible

Against:

-It’s not theoretically justified. The arguments for unfair competition tort tend to fall into the unjust
enrichment category which does not itself justify protection.

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-We do not need to have a general action when in fact we do have covered in all of these specific
areas. Gaps in protection may be deliberate –Passing off and the statutory protection in IP provide
adequate protection

-Could lead to too much interference by the judiciary into the market place -Reduces legal certainty

-Slippery slope argument, it will lead to more protection of unfair competition than we need

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