The ‘mug of tea’ guide to copyright

What is copyright?

Copyright is an intellectual property right which rewards owners of original works. Specifically, certain acts are reserved to the owner of a copyright work which give the owner (and in some cases their licensees) legal recourse if a third party has performed those acts without permission. Copyright is personal rather than real property.

A brief history of UK copyright law

Until the 15th Century, the idea that copying could in some way be unauthorised or legally wrong was counter intuitive, to say the least. After all, the main ‘media outlets’ of the Middle Ages were monastic scriptoria where the primary objective was to ensure accurate copying of the Bible and other religious texts, to preserve the integrity of important works.

With the arrival in Europe of the moveable type printing press, the problem of inaccurate copying was much alleviated. But the invention gave rise to a whole new class of pamphleteers, commentators and authors who could for the first time make their living from selling their opinions and works to the wider public. With the growth of commercial publishing, came the first complaints that the effort and creative work of authors was being misappropriated by copyists.

The first copyright legislation came with the Statute of Queen Anne in 1710. At that stage, copyrights required registration and were protected for a maximum of 28 years. The penalty for infringement was set in statute at a penny per sheet, (with half the amount going to the copyright owner and the other half to the Crown).

At around the same time, other legal systems were creating similar laws to address the same problem – the Napoleonic Code taking a slightly different approach to ‘droit d’auteur’ – but essentially covering the need to protect the creative skill, labour and reputation of writers.

A few decades after these first legislative steps, the Berne Convention of 1886 laid the foundations for international harmonisation of copyright law, setting out a framework that still exists today. It obliged contracting states to give equivalent legal recognition and protection to copyrights made in foreign contracting states as for those given to works of its own nationals. It provided that such protection was to be without any required formality (such as registration). The Convention also set out the activities which were reserved exclusively to the copyright owner and therefore would constitute infringements if performed by a third party.

In the UK, copyright law is enshrined in the Copyright, Designs and Patents Act 1988 (CDPA). That Act is not so far different from the Copyright Acts of 1911 and 1956 which preceded it. And the CDPA has itself been subsequently moulded by EU law (particularly the Infosoc Directive) to accommodate some of the changes made necessary by modern technologies, where copying is an inherent part of transmission of the work.

In what does copyright subsist?

The CDPA provides that copyright can exist in:

1. original literary, dramatic, musical or artistic works,
2. sound recordings, films or broadcasts and
3. typographical arrangements of published editions.

These broad categories are themselves further specified as including computer software, databases, photographs, architectural works, sculpture and graphic works such as maps.

Some other species of creative works (such as utilitarian designs and the contents of databases) are regarded as justifying legal protection, albeit for shorter periods and subject to different rules. Consideration of those is outside the scope of this paper.

It is possible that a work can attract copyright protection in more than one of the classic copyright categories. For example, the recording of a song may encapsulate musical copyright in the tune, literary copyright in the lyrics and sound recording copyright in the recording itself.

How does copyright arise?

Unlike trade marks and patents, copyright cannot be registered but rather arises automatically when a qualifying work is first reduced into permanent form. Practically speaking, that means written down, recorded, printed or saved.

To attract copyright protection at all, the work must be ‘original’. However, the CDPA is silent on the level of originality or creative effort required. English Courts have traditionally only required that there be some creative ‘effort’, that is, some combination of skill, judgements and labour go into formulating a work to make it original rather than imposing a high standard of artistic or literary quality. So, whilst the work must not itself have been copied directly from a previous work, the level of originality and the size of the work is not generally a field of dispute. Subsequent developments in European case law¹, have focussed a spotlight on whether utilitarian works (such as ordinary designs for jeans and T-shirts) have sufficient originality to qualify for full copyright protection. Various UK judgments have since discussed whether the UK and EU jurisprudence are at odds with each other or not, with no clear outcome to date (and none much likely given the blurred status of CJEU jurisprudence post Brexit).

Authors and first owners

In the CDPA, the general rule is that the first owner of copyright is the author. This will mean the writer of a work of literature, the artist for artistic works and the photographer for photographs and so on. For films, the author is the director. For computer generated works authorship is ascribed to the person who put in place the measures necessary for the work’s creation.

However, authors are not always the first owners of copyright in their works: where a work is made by an employee in the course of their employment, copyright is owned by the employer unless there is an agreement to the contrary. Employers often include express provisions in staff contracts and/or handbooks not only restating this position, but also including a specific future assignment of such works to the employer. If a copyright work arises as a result of a commission, the commissioned party is the owner of copyright (again, unless otherwise agreed).

Where a work is made outside the UK by a foreign author, there are a complex series of tests which determine whether the work will attract UK copyright. Generally, protection is widely available, because most countries are party to one or more of the international agreements which provide for reciprocal protection, (such as the Berne Convention mentioned above, the World Intellectual Property Organisation Treaty on Performances and Phonograms, or if the copyright owner comes from a country which is a members of the World Trade Organisation).

The CDPA allows for the possibility for joint ownership of copyright where the contribution of each author is not distinct from that of the other authors. Practitioners tend to dislike joint ownership of copyright, because it can lead to unfortunate stalemates between the owning parties. Whilst either joint owner may sue for infringement, the agreement of all is required for any act of exploitation – such as licensing or charging the asset. Where the parties fall out, the asset becomes effectively un-exploitable.

There will be no joint ownership where individual contributions of each author are distinct, such as the music and lyrics of a song (Gilbert & Sullivan, or Elton John and Bernie Taupin being famous examples).

Duration of protection

Copyright lasts for a set period, which for most works in the UK is the life of the author plus 70 years from the end of the calendar year of the author’s death. There are some exceptions depending on the category of work protected. Broadcasts, for example, are protected for 50 years from the end of the calendar year in which the broadcast was made, while typographical arrangements of published editions are protected for 25 years from the end of the calendar year in which the edition was first published.

What are the protected acts?

Copyright owners are granted certain exclusive rights including the right to copy, issue copies of rent to the public, perform, communicate or adapt the work in question. These are known as restricted acts which, if done without the owner’s permission in relation to the whole or a substantial part of a copyright work, is the starting point of a claim for copyright infringement, being acts of primary infringement. Copying, it ought to be added, includes translation from one language to another and adaptation from one medium to another (making a play based on a previous book, for example).

There are also certain forms of what is called ‘secondary infringement’, for example importing, possessing, dealing and putting infringing goods onto the market, as well as providing the means for making copies and, in relation to performances, extends to the use of premises for an infringing performance or supplying the apparatus for such a performance. Secondary infringement normally requires a degree of ‘mens rea’ in the sense that, to be liable, an infringer must have knowledge that the works being dealt with are themselves infringements (though knowledge can be established on an objective as well as subjective basis).

How much copying is required for infringement?

The test of whether a substantial part of a work has been copied is a qualitative judgment, not a quantitative one. There are a couple of reasons for this. The first is that copyright seeks to protect the skill and labour of the original author, which has been misappropriated through copying, and so it is what has been copied, and the value of that material which is of primary concern. Second, framing claims in terms of quantity gives rise to its own problems. Ten pages of copying may seem a large proportion of a chapter – but does it become any less a wrongful act if it is seen as 10 pages from the whole of a book²?

Allegations and defences

An important issue in some copyright cases is proving that copying has taken place. It might sound like an easy enough thing to show on the balance of probabilities – but there are various difficulties which sometimes arise. First, it is not enough merely to show objective similarity of the two works – because copyright infringement only occurs where there is copying – and two works which are identical or near identical may still arise as a result of independent effort.

Second, some similarities may also be explained as a result of formal function, or limitation in the available vocabulary, or because the two works come from the same author. So it is important to try to identify areas where the author had many choices of language or design, and yet still came up with the same result. Quirky mistakes are particularly telling (and for that reason often inserted as traps by authors who fear infringement). Particular problems arise where the author of the two works is the same – and where even stylistic quirks may arise as a result of the same author applying their mind to the same task twice. Defendants often focus on the extent of differences, though the Court’s focus should be on similarities. Finally, it is important to note that one cannot normally ‘alter one’s way out of infringement’ – the sometimes-spun tale of making ‘seven changes’ to a work in order to render it somehow non-infringing is entirely wrong. Indeed, in one case where architectural plans were taken and then subject to significant amendment, the judge was clear that it was the initial act of copying was an infringement giving rise to liability, and subsequent amendments could not undo that state of affairs³.

On whom does the burden lie?

As a claim for copyright infringement is a civil matter, the legal burden lies with the claimant to prove, on the balance of probabilities, that their work has been infringed. A claim for primary infringement of copyright is one of strict liability; even an unintentional reproduction of a work can be subject to a claim.

Courts have, however, been willing to shift the burden of proof where objective similarity between copyright and infringing works is shown in circumstances where a defendant had access to a claimant’s work⁴. Where this situation arises, there presumption that copying occurred which can be rebutted by the defendant with evidence of independent design.

Moral rights

All copyright systems since the Berne Convention have also recognised that an important aspect of authorship is reputational, rather than driven by commercial considerations. We have said before that some legal systems find their foundation in the rights of authors more than owners. Moral rights are protections for the author’s special status as creator. They are not property rights, but rights which are personal to the author. Under the CDPA the rights apply to authors of literary, dramatic, musical or artistic works and to films. They include:

1. the right to be identified as the author/director of a copyright work;
2. the right to object to derogatory treatment of a copyright work;
3. the right not to suffer false attribution of a copyright work; and
4. the right to privacy in respect of certain photographs and films.

The right to be identified and the right to object to derogatory treatment have also been extended to performers in respect of live performances, live broadcasts and sound recordings.

As personal rights, moral rights can be waived but cannot assigned to anyone else⁵, and last for the length of the copyright in the work, (except in the case of the right not to suffer false attribution which lasts only 20 years after the death of the author).

Rights to ‘fair dealing’ in copyright works

The monopoly right of a copyright owner is subject to some specific exceptions to permit socially useful activities from being stifled by a copyright owner. These are often referred to as ‘fair dealing’ in the work, and act as defences to an allegation of infringement. Fair dealing defences includes copying for the purposes of research for a non-commercial purpose, private study, criticism, review and news reporting, quotation from a publicly available copyright work, and parody, caricature and pastiche. There are further exceptions for the copying of certain public documents considered to be of general interest – such as legislation and the judgements of Courts.

Other permitted acts include making temporary copies, such as caching of internet pages. Detailed consideration of these exemptions falls outside the scope of this paper. In addition, although not considered ‘fair dealing’ exemptions, there are also limited permissions in relation to software to permit the reverse engineering and backing up of computer programs in order to allow bug fixing and copies made to protection against accidental deletion.

Remedies for copyright infringement

The remedies for copyright infringement are common to those available in respect of the infringement of other intellectual property rights. They can be divided between the financial and non-financial.

The financial remedies come down to a choice (left in the hands of the successful claimant after trial) between (i) compensation for the damage he has suffered from the infringement and (ii) restitution of the profits wrongly made by the infringer as a result of his infringement.

In practice, damages are almost always the preferred route. The measure of damages depends upon the surrounding circumstances – a notional royalty, loss of sales and even the loss of market share created by illegal early competition (sometimes called ‘springboard’ damages). Damages are a complicated topic. They are designed, as all tortious damages are, to put the party in the position that they would have been in, had the infringement not occurred. They are sometimes also described as being ‘at large’ which conveys the sense that they tend to be more generously assessed against the defendant as a wrongdoer. Wise judges have expressed the view that they are very difficult to determine with any degree of precision – and a good case to read on the overall assessment principles, and some of the difficulties that arise is Gerber Garment Technology v Lectra Systems Limited⁶.

There is a further permissible category of additional damages for what is called ‘flagrancy’ of infringement, which although not deigned to be punitive or exemplary, tends to become a means by which the Court can show its disapproval of the defendant’s conduct if the infringement has been with a cynical disregard to the rights of the owner, or with particular benefit to the defendant.

The authors of this paper tend to the view that the current system for damages in copyright cases is not particularly satisfactory in the sense that, in the absence of damages for flagrancy, the measure of damages will very often be what a notional or reasonable royalty would have been. So a cynic might think like this – I have a choice: I may take a licence or just copy without permission. If I am caught, the Court will rule that I should pay a reasonable royalty to the copyright owner. If I am not caught, I get away scot-free. So what is my incentive to obey the law?

We add one final point, often misunderstood. There is one case where damages will not be recoverable – that is where the infringement is said to be ‘innocent’. However, this defence is only available is the defendant can show that they did not know and had no reason to believe that there was any copyright in the work – which is not the same thing as a defendant supposing that the copyright owner would not object or would not charge a fee.

Non-financial remedies are usually considered the most important ones. They include an injunction to prevent the infringement from continuing, (sometimes provided on an interim basis prior to trial), as well as delivery up of infringing items (or their destruction on oath), the confiscation of means by which the infringement was achieved and sometimes the publication of the judgement at the defendant’s cost.

Dealing in copyright: assignment, licensing, and the taking of security

Copyright, as with any other property right, can be the subject of transaction. It can be sold, licensed, charged, given away, or pass through testamentary disposition.

The formalities of assignment are relatively simple: a document in writing signed by the assignor. It may be an assignment of part of the copyright work (i.e., one or more of the exclusive acts) or it may be for a particular part of the period of protection.

Just as real property can be charged or secured, so too can copyright. As copyright is unregistrable, ideally some documentary evidence of its existence will be useful in providing comfort to a lender who intends to take such a security over it. Where a legal mortgage is obtained, the copyright will be assigned to the lender. Otherwise, a charge over the copyright will give the holder of the charge the right to take ownership of the copyright if the borrower defaults. It is common for a security agreement to include a provision for re-assignment once the borrower has repaid its debts in full.

Unlike an assignment, the granting a licence over copyright is not subject to requirements in the CDPA, but it will usually be in writing regardless. Exclusive licences must be in writing. Parties to a licence will need to consider the type of licence that is being granted. A license of copyright that has been assigned by way of a legal mortgage and is material to a borrower’s business will ideally be exclusive to them, to prevent the lender/licensor from further exploiting the copyright and to enable the borrower/licensee to bring infringement proceedings. In other circumstances which do not involve security over copyright, a first owner of copyright may grant an exclusive licence in return for royalties.

An exclusive licence will likely include provision for the copyright to revert to the owner when certain conditions are met e.g., if the licensee cease to exploit the works. Exclusive licensees have special status granted under the CDPA to bring proceedings for infringement in their own name.

Where a licence is non-exclusive, the owner of copyright continues to have rights to exploit it further by using it or licensing it to other parties. A sole licence gives both the licensor and licensee the right to use the copyright to the exclusion of all others.

The Copyright Tribunal and collecting societies

Finally, a note on the Copyright Tribunal. The Tribunal has a very specific remit: to hear and determine commercial licensing disputes between copyright owners or their agents and users. These disputes involve the payment of royalties under licences, the terms of licences, and applications relating to licences under licensing schemes. The Tribunal’s jurisdiction covers the UK, not just England and Wales.

Agents in this context are collective management organisations, otherwise known as collecting societies. Collecting societies exist to bear the practical and administrative bear of copyright owners and performers in granting licences by being authorised by the owners to manage such rights as agent. As is suggested by the name, the collecting societies then collect royalties from the licensees and distribute them to the copyright owners. There are numerous collecting societies. Two of the most well-known are in the music industry in the form of PRS for Music and PPL which, through a joint venture (PPL PRS), grant a single licence to business premises of the rights to perform/ play sound recordings and the rights to use the music and lyrics in a song. Collecting societies also exist in the film and publishing sectors.

Thousands of copyright works are created in the UK every second. It may seem the simplest of rights, because it arises without any registration or formality and at the same time protects such a wide variety of different works.

But it is this very simplicity which makes copyright one of the most complicated and nuanced aspects of IP law. Whole papers and judgements could (and have) been written on each of the separate paragraphs above. This summary was created just to remind lawyers and those working with copyright of the main principles of the law (and provide a basis for further research and study or guiding the direction to solve a particular problem).

Authors: Head of Commercial, IP and Technology, Carl Rohsler and Commercial, IP & Technology Solicitor, Reece Lawrence.

References

1. see Cofemel – Sociedade de Vestuário SA v G-Star Raw CV (Case C683/17)
2. One of the authors was involved in a case (Cantor Fitzgerald v Tradition) in which copying of only a small part of some modules of code nonetheless constituted an infringement of the whole underlying program suite, notwithstanding that it was less than 1% of the overall code.
3. See Carla Homes v Alfred McAlpine [1995] FSR 818
4. See e.g. Designers Guild Ltd v Russell Williams (Textiles) [2000] 1 WLR 2416
5. They may be passed by testamentary disposition, however, so that a beneficiary may continue to defend the honour and reputation of the author.
6. [1997] RPC 443

Disclaimer: We at Memery Crystal (and our parent company RBG Holdings plc) support and encourage free/independent thinking in relation to issues which are sometimes considered to be controversial subject matters. However, the views and opinions of the authors do not necessarily reflect the opinions, views, practices and policies of either Memery Crystal or RBG Holdings plc.