Legal significance

Mackie Designs Inc v Behringer Specialist Studio Equipment (UK) Ltd [1999]

Before
Earlier English cases make it clear that copyright does, in principle, subsist in
circuit diagrams.

During
Action for infringement of the literary or alternatively the artistic copyright
which is alleged to subsist in circuit diagrams of a piece of electrical equipment
called a mixer. The circuit diagrams were drawn by a citizen of the US in 1993.
The 2nd defendant is alleged to have obtained an example of the plaintiff’s mixer,
and to have analysed the circuit contained in it to produce a “net list” of the
components and their interconnections. From the net list, it is alleged that a
computer program was used to produce layouts for circuit boards to be
manufactured by the 3rd defendeant. The alleged infringement are alleged to be
the circuit boards manufactured by the 3rd defendant from the net lists.

2 questions of law to be decided:

1. whether the circuit diagrams relied on by the plaintiff are design
documents within the meaning of section 51 of the Copyright Design and
Patents Act 1998; and (if “yes”, plaintiff’s action is to be dismissed)
2. if so, whether the defendants and each of them have a defence to
copyright infringement by reason of section 51 of the CDPA

Section 51(1) specifies that “It is not an infringement of any copyright in a Design
Document…to make an article to the design or to copy an article made to the
design”. The judge stated that the CDPA had introduced the new concept of
‘Design Right’ into the UK for the purpose of providing relatively short protection
for designs which had been applied industrially.

He decided that a circuit diagram clearly is a Design Document according to the

CDPA definition, and in view of the mutually exclusivity of copyright and Design
Right, copyright protection can no longer be relied upon for circuit diagrams
under UK law.

The judge then proceeded to consider whether there had been any infringement
of the Design Right in the circuit diagrams, for which an infringing act is defined
as ‘making an article according to the design’. He concluded that since the
plaintiff’s circuit board had the circuit designs shown in the circuit diagrams, the
defendants had indeed made an article made according to the design.

*Typically, design Right protection is not available to US citizens unless they are
also citizens of or are habitually resident in one of the EU states or one of a
limited number of other qualifying countries. -> no design right protection in this
case
After
Since the enactment of section 51(1), copyright of circuit diagrams is no longer
enforceable
 Green Lane Products Ltd v PMS International Group plc [2008]

This case concerned infringement of a Community Design registered for

products indicated as “flatirons and washing, cleaning and drying equipment” by
Green Lane.

PMS, the defendant, had since 2002 been buying spiky plastic balls from China
and marketing them in the EU as massage balls. In 2006, they decided to market
the same balls as laundry drier balls and also for several other purposes such as
hand exercisers or dog toys.

For Community Designs, prior art constitutes disclosed matter, except where the
disclosure “could not reasonably have become known in the normal course of
business to the circles specialized in the sector concerned, operating within the
Community”. The question here was, which was the “sector concerned”: the
sector of the prior art (i.e. massage balls) or the sector of the design (i.e. laundry
balls). The judge held that the design would be infringed whatever the product,
so that the registration did not merely cover “flat irons and washing, cleaning
and drying equipment”, but any product whatsoever. PMS, the defendant, would
not in any case be prevented from doing what they did before the design,
because there is a prior use defence under Community Design law. However, if
the design were valid, they would be prevented their massage balls for other
purposes.

The judge concluded that the “sector concerned” was the sector of the prior
art.

It was determined as a preliminary issue that, as concerns the issue of novelty

for the purposes of Community Registered Designs, the ‘sector concerned’ is the
whole of the prior art and is not limited to the sector specified in the application
for registration. One of the compelling reasons for this was that once a design is
registered the monopoly extends across all classes of goods. In the instant case
the design in question was a design for spiky plastic balls and the application
cited use in laundry dryers. The same design had for 2 years prior to the
application been used as massage balls.

After
This case confirms that the rights under a Community Design extend to any
product regardless of the indication of product filed at OHIM and, as a corollary,
that publication of a design in any sector prevents the further monopolization of
that same design in any other sector. It should be noted, however, that the
decision does not deal with the question of “individual character”. In cases where
a design is transposed from one sector to another and changes are made, the
“informed user” responsible for assessing the differences may be located in the
sector of the registered design rather than that of the prior art.
 Sawkins v Hyperion Records Ltd [2005]

Dr Sawkin had researched the works of the late Lalande, the principle composer
at the courts of Louis XIV and Louis XV, and had created new performing editions
of four of his works. In total this work took S 300 hours and involved him making
3000 editorial interventions to the works. In October 2002, Hyperion Records
produced a CD featuring performances of the four performing editions. H
disputed that S was entitled to copyright in these editions, on the basis that
an editor should not obtain copyright in non-copyright works. It did
however pay him for provision of the scores for the recording. S brought an
action for infringement of copyright and of his moral rights.

Issue:
1. whether the performing editions that S had created were “original” and
“musical” within the meaning of an “original musical work” for the
purposes of the CDPA 1988.
2. If they were, whether H had infringed S’s copyright
3. Whether S had copied one of the performing editions from a previous
existing version
4. Whether H had infringed S’s moral rights by failing to identify him as
author

HELD: The effort, skill and time that S spent in making the performing editions
was sufficient to make them “original”, even though they were based on the
scores of musical works composed by Lalande. They were also “musical” within
the meaning of the CDPA 1988. The entirety of a work must be assessed in
determining subsistence of copyright. Copyright subsisted in S’s performing
editions, and H had infringed that copyright.

After
S had made no new music – he had merely worked on the old Lalande pieces in
order to make them playable. This was held to be sufficient to create an original
copyright work as it had required a high degree of skill and labour, it was not
merely servile copying.

Newspaper Licensing Agency Ltd v Marks & Spencer plc (2003)

The House of Lords was confronted with the question of whether there was
copyright infringement in making copies of press cuttings which had been
supplied by a cutting service and circulating the copies within a
corporation. The cutting service was licensed by the Newspaper Licensing
Agency (which was acting on behalf of the newspapers in which the articles
originally appeared) to make the press cuttings in question. The corporation had
no such license.

The licensing agency based its claim to copyright infringement solely on a claim
that the corporation had infringed copyright in “the typographical arrangement
of published editions”, copyright in which was owned by the publisher of the
edition.

It was concluded that the natural meaning of the words “published edition” in
which copyright for the typographical arrangement existed was a newspaper as
a whole. As noted in Designer Guild v Russel Williams, the test of whether a
substantial part of work has been copied is a qualitative rather than a
quantitative one. Thus in considering what was meant by a substantial part, “one
must ask whether there has been copying of sufficient of the relevant skill and
labour to constitute a substantial part of the edition’s typographical
arrangement”.

“In the case of a modern newspaper, I think that the skill and labour devoted to a
typographical arrangement is principally expressed in overall design. It is not the
choice of a particular typeface, the precise number or width of columns, the breath
of margins and the relationships of headlines and strap lines to other text… which
give the newspaper as a whole its distinctive appearance.”

It was therefore concluded that copying of the press cuttings DID NOT involve
copying a substantial part of the typographical arrangement and so there was no
infringement. Whilst copying of a literary, dramatic or musical work meant
“reproducing work in any material form”, in the case of the typographical
arrangement, nothing short of a facsimile copy would suffice. Determination of
what constituted a “substantial part” was a qualitative issue dependent not upon
the proportion which the copied part bored to the whole but rather whether the
copy made had appropriated the presentation and layout of the edition. On the
facts of the instant case none of the cuttings made reproduced the layout of any
page to such an extent as to constitute a substantial part of the published edition.

Hubbard v Vosper [1972]

The Church of Scientology tried in 1971 to ban Cyril Vosper’s book The Mind
Benders on the grounds that it made illegal use of copyrighted material and
represented a breach of confidence. However, their case was rejected, not least
because the Church was held to be “protecting their secrets by deplorable
means”; the public interest of exposing such material outweighed the other
considerations.

Held: The plaintiffs were not entitled to an interlocutory injunction because:

1. V had shown that he might have a good defence of ‘fair dealing’;
whether the use of extensive quotations from H’s works constituted ‘fair
dealing’ was a question to be decided by the tribunal of fact, and there
was material on which the tribunal of fact could find that there was ‘fair
dealing’; further the defence of fair dealing covered criticism not only
of a plaintiff’s literary style but also of the doctrine or philosophy
expounded in his works and extended not only to those of the plaintiff’s
works which had been published to the world at large but also to those
which had been so widely circulated that it would be fair to subject them
to public criticism.
 2. Although V may have made use of information which he knew that the
plaintiff’s claimed to be confidential, there were, nevertheless, grounds
for thinking that the courses of the Church of Scientology contained such
dangerous material that it was in the public interest that it should be
made known; furthermore, there are evidence that the plaintiffs had
been protecting their secrets by deplorable means, such as was
evidence by their code of ethics, and therefore did not come to the court
with clean hands in seeking to protect those secrets by the equitable
remedy of an injunction.

Landor and Hawa International Ltd v Azure Designs Ltd [2006]

Unregistered community design and UK unregistered design infringement case

concerning expandable luggage. Heard in the Patents County court then
appealed. Appeal arises out of a dispute about the design of a type of suitcase
having an “expander” section. Landor designed an expander section in 2002 and
Azure imported, marketed and sold such suitcases in 2003.

Before

Is the exclusion of a design feature “solely dictated by its technical function”

broad or narrow?

Under the old UK law, in Amp v Utilux [1972] RPC 103, the equivalent exclusion
was held to be broad, as it was for trade marks under the new trade mark law:
Philips v Remington [2003] RPC 2.

Held: Philips v. Remington is inapplicable to designs, Amp v Utilux is no longer

applicable; “functional” designs are not excluded if they can be made in multiple
shapes.

During

Azure appealed and argued that Article 8(1) should be construed in a similar
manner to the way in which Article 3(1)(e)(ii) of the Trade Marks Directive had
been construed by the ECJ in Philips v Remington, i.e. precluding the protection
of shapes whose essential characteristics performed a technical function.

The Court of Appeal rejected this argument, and the two provisions in Philips v
Remington were distinguished. The Court held that recital (1) of the Regulation
indicated that Article 8(1) should be narrowly construed. Accordingly, the Court
held that Article 8(1) only applied to a design where it was the only design by
which the product in question could perform its function. The Court also held
that, even if Article 8(1) were to be construed more widely, it would not apply in
the instant case given the judge’s finding that the Landor Expander design
included capricious elements.
The Court of Appeal has agreed with the Patent County Court’s decision that the
design owner enjoyed both UK and Community unregistered design rights
(“UDR”) in its “expander” suitcase design. It decided that the suitcase design was
not “a method or principle of construction”, and therefore not excluded under
section 213(3)(a) of the CDPA (“Design right does not subsist in (a) a method or
principle of construction”).

3 issues
1. whether there was UK UDR in the Expander Design or whether the design
constituted a “method of principle of construction”, falling within the
exclusion under section 213(3)(a) CDPA;
2. whether there existed Community UDR protection in the Expander
Design, or whether the design constituted “features of appearance of a
product which are solely dictated by its technical function”, falling within
the exclusion in Article 8(1) of the CDR; and
3. whether the judge was right to grant a quia timet injunction preventing
the marketing and selling of the products even though the threat to do so
had been withdrawn by the time proceedings were issued.

HELD: Section 213(3)(a) should be narrowly construed, it did not apply simply
because a design served a functional purpose, unless that purpose could not
be achieved by other means. (1) It would also be wrong in principle to
conclude that a design was incapable of protection merely because it served a
functional purpose because that would mean a design which had only aesthetic
features would be favoured over one with aesthetic and function features. (2)
The judge had found that the strips of piping in the design introduced a non-
functional and even “capricious” element to the final appearance of the
ensemble. (3) Whilst Azure had given a contractual undertaking before L
commenced proceedings that it would not import, exhibit or offer to sell the rival
suitcases, after the action had begun it withdrew that undertaking in terms
which made it clear that it was threatening to infringe Landor’s design rights,
therefore the judge was entitled to grant the quia timet junction.

Navitaire Inc v Easyjet Airline Company [2004] EWHC 1725

This is an action for infringement of copyright in computer software. It concerns

the software implementing an airline booking system principally employed by
low-cost airlines who employ ‘ticketless’ booking. Navitaire licensed its ticketless
airline reservation application, OpenRes, to EasyJet. EasyJet also took a licence
for an additional application, TakeFlight, developed by Navitaire to create a user
interface on the internet. In order to increase the capacity of the application,
easyJet engaged BulletProof to develop eRes, which went live in 2001 and had
substantially the same interface as OpenRes, althought with entirely different
source code.

Navitaire alleged infringement of its copyright in the “business logic” of the

OpenRes software, a term coined by Navitaire’s expert to describe the
functionality of the program. As there had been no access to the source code, the
relevant “copying” was alleged to be non-textual. In addition, Navitaire claimed
copyright in the OpenRes command codes, screen displays, database and the
“business logic” of the TakeFlight program.

Referring to Designers Guild Ltd v Russell Williams Ltd (2000), the court
expounded two principles in relation to the “business logic” argument. First, a
computer program may express ideas which have no connection with the
literary, dramatic, artistic or musical nature of the work, and which are therefore
not protected by copyright. Secondly, even where the expression of an idea is, for
example, literary in nature, it was held that a commonplace idea does not form a
qualitatively substantial part of a copyright work unless sufficient skill and
labour has gone into the form in which it is expressed. The court said that the
interface aspects of the Openres program were commonplace in booking systems
of this type and had not required sufficient skill and labour to attract copyright
protection.

The Court rejected Navitaire’s argument that the alleged infringement was akin
to copying the plot of a novel, which can amount to infringement, proposing
instead the more apt analogy of a chef copying a pudding by devising his own
recipe. The “business logic” of OpenRes did not therefore attract copyright
protection. Navitaire also failed in respect of command codes. The Court held
that none of the command codes qualified for protection. The single-letter and
single-word commands were dismissed by the judge as being too short to
constitute copyright works. The complex commands also failed to qualify, the
judge referring to the Software Directive (Directive 91/250/EEC) as excluding
computer languages from the scope of copyright protection.

Further, no copyright subsisted in the basic display templates, as they were

merely ideas which underlay the program’s interfaces. It was held, however, that
the artistic and literary copyright subsisting in the graphic display elements had
been infringed. In addition, while no copyright subsisted in the “business logic”
of TakeFlight, there had been infringement by making altered versions of the
program. Finally, although easyJet was able to rely heavily on the database
copyright legislation that permits it to do necessary acts in migrating data to
eRes, there was infringement of database copyright in certain respects, where
database filed were reproduced unnecessarily.

The court refused to extend copyright protection to include the “business

logic” of a computer program and held that the principle that computer
languages were not protected by copyright extended to ad hoc languages of
the kind used in commands recognized by a computer which did not amount to
a program.

HELD: writing original source code to produce a computer program with

identical functionality as an exiting program does not infringe the copyright in
the earlier program. The case is key in dealing with non-textual copying of
computer software and, crucially, the court rejected the claim that copyright
subsisted in the appearance and functionality of a software program.
After

This case shows that the courts adopt a strict approach to analyzing similarity as
evidence of infringement and is a useful reminder that similarity is not in itself
evidence of copying or infringement.

The decision will benefit companies seeking to upgrade their software whilst
retaining the appearance and functionality of the existing systems.

CIASC Agreement – COMP/38.698 of 16.07.2008

Ashdown v Telegraph Group Ltd. [2002] R.P.C. 235 (CA)

The Sunday Telegraph had published verbatim extracted from a lengthy minute
of a meeting between Lord Ashdown, the Prime Minister and other political
figures. The extracts contradicted denials emanating from Downing Street of
stories in other newspapers concerning the extent of planned operation between
New Labour and the Liberal Democrats. Lord Ashdown was intending to publish
the diaries of which the minute formed part. Although the newspaper did not pay
the publish the extracts, the editor of the Sunday Telegraph had clearly
understood that the minute was confidential. The claimant brought proceedings
for breach of copyright and breach of confidence. The Vice-Chancellor granted
the application and ordered disclosure so that the claimant could elect between
an account of profits or damages. The defendant appealed and contended that
the court was obliged under the Human Rights Act 1998 s.3(1) to take into
consideration the right of freedom of expression in assessing the defences of fair
dealing and public interest under s.30 and s.171(3) of the 1988 Act.

* The right to freedom of expression was qualified in copyright infringement

cases. The copying of a political memoir had not constituted fair dealing and
could not be justified by public interest considerations.

Before: where the right to freedom of expression under Art.10 of the European
Convention on Human Rights comes into potential conflict with the rights of a
copyright owner, the permitted act provisions of the 1988 Act, in particular the
fair dealing provisions, will usually provide a defence.

Fair dealing = limitation and exception to the exclusive right granted by copyright
law to the author of a creative work. Under CDPA, fair dealing is limited to the
following purposes: research and private study (both must be non-commerical),
criticism, review, and news reporting. *Incidental inclusion doesn’t infringe
copyright.

Issue
1. whether there was a fair-dealing defence under s.30
2. whether there could be public interest defence
3. whether summary judgment was properly granted
Held
1. The defendants could not avail themselves of a s.30 defence because they
could not bring themselves within any of its parameters
2. The Court would recognize a separate public interest defence in an
appropriate case, but it was not necessary for the defendants in this case
to have made such liberal use of the copyright material
3. The judge had been correct to grant summary judgment

Although the appeal was ultimately dismissed, the judgment is important for
establishing that Article 10 considerations might, in an appropriate case, require
the Court to grant a public interest defence beyond the protection offered under
s.30 of the Act for fair dealing.

The Court disagreed with Aldous LJ’s decision in Hyde Park Residence v Yelland
represented a comprehensive code which had performed the balancing process
between competing rights of property interests and freedom of expression
leaving no room for a free-standing defence of public interest. There would be
cases – albeit this was not one – where the republication of the form would be as,
if not more, important than the contents. The traditional view of copyright meant
that whilst the latter would be permissible, the former would lead a publisher
into copyright difficulties given the particular limits of the s.30 defence.

Where in the rare circumstances that the right to freedom of expression came
into conflict with the 1988 Act, it was necessary to have close regard to the facts
of the individual case. The Court was required to apply the 1988 Act in a way that
accommodated the right to freedom of expression. However, the freedom of
expression did not normally include a right to make free use of another person’s
work. Where a newspaper felt it necessary to use exact extracts, it was
appropriate for it to indemnify the author of such extracts or provide him with
any profits that stemmed from the use of them. In the instant case, T’s
publication of parts of A’s minute could not be justified by public interest
considerations. It was apparent that T had published for essentially commercial
purposes.
 Infopaq v Danske

Background information (not the actual answer):

 Infopaq: a firm which, by means of a “data capture process”, draws up
summaries of articles from Danish newspapers and sends them by e-mail
to its customers, on the basis of agreed subject criteria
 Danske (DDF): an association of Danish daily newspaper publishers,
whose function is inter alia to assist its members with copyright issues,
became aware of these practices and of the fact that Infopaq was acting
without authorization from the relevant right holders
 DDF required Infopaw to request consent, in accordance with the
copyright rules
 Infopaq disputed DDF’s claim and applied to the competent courts for
acknowledgment that it is entitled to apply the procedure in question
without consent of DDF and its members
 Case brought before Hojesteret which referred question to CoJ concerning
the interpretation of Directive 2001/29/EC on the harmonization of
certain aspects of copyright and related rights in the information society,
and in particular on the concept of reproduction in part and on whether
the procedure in question can be used without the consent of the
rightholders
 The Court first emphasizes that the author’s right to authorize or prohibit
reproduction applies to a “work”, i.e. the author’s own intellectual
creation
 The protection also extends to parts of a work, since, as such, they share
the originality of the whole work and contain elements which are the
expression of the intellectual creation of its author
 The Court specifies that, as regards newspaper articles, their author’s own
intellectual creation is evidence from the manner in which the subject is
presented and the linguistic expression
 Newspaper articles are therefore literary works covered by Direction
2001/29/EC
 The court does not rule out that certain isolated sentences, or even
certain phrases of a newspaper article are suitable for conveying to the
reader the originality of the intellectual creation of its author and are
therefore liable to come within the scope of the protection provided for in
the Directive as constituting reproduction in part of a protected work
 The court analyses whether the procedure implemented by Infopaq
fulfills the conditions to be exempt from the requirement to obtain the
consent of the author, even for the reproduction in part of a protected
work (Art 5, Directive 2001/29/EC) – concludes that this is not the case
here, as the act of reproduction under this procedure is neither transitory
nor incidental

The ECJ also gave some useful guidance about Art5(1) of the Copyright Directive.
In particular, in respect of what amount to a “transient” act for the purpose of
that provision. The ECJ made clear that, amongst other things, in order to fall
under this condition the process had to be automated so that the copy created
was deleted automatically, without human intervention. Again, the ECJ left it for
the national courts to decide whether such acts of reproduction were transient
given this guidance.

ECJ’s reasoning

The ECJ held that the various parts of a work, in this case the 11 word extract,
could enjoy protection under Article 2(a) provided that they “contained elements
which are the expression of the intellectual creation of the author of the work”.
The intellectual creation in a newspaper article was evidenced by the form and
manner in which the subject is presented and the linguistic expression together
with the choice, sequence and combination of words used. However, the words
when considered in isolation were not intellectual creations of the author. The
ECJ did say that in giving Article 2(a) a wide interpretation, isolated sentences or
certain parts of sentences in the text in question could convey originality and
could come under the protection of the Article.

As Infopaq’s word search technique might throw up multiple “hits” within a

document, overlapping 11 word extracts could be produced which then
reproduce in part the document and encapsulate the originality of the work in
question.

Applying this logic, the ECJ held that reproduction of an 11 word extract (or
overlapping extracts) from an article was reproduction under Article 2(a) if
those 11 words (or overlapping extracts) contained an element(s) of the work
which expressed the author’s own intellectual creation. However, it is for the
Danish court to make that determination and Page 3 if it finds that there is
reproduction, Infopaq’s data capture process will require the newspapers’
consent unless that activity is exempted under all 5 of the conditions set out in
Article 5(1).

English law compared

The ECJ did not use the term “substantial part” in its judgment but it is clear that
its reasoning accords with that of the English courts. This is perhaps because the
Directive does not use this term either, rather it prohibits copying of a work “in
whole or in part” which can be contrasted with the UK’s Copyright, Designs and
Patents Act 1988 (“CDPA 1988”) (section 16(3)) which prohibits copying “in
relation to the work as a whole or any substantial part of it”.

What is a “substantial part” is a judicial test. There is little guidance in the CDPA
1988 itself. The test was fully reviewed by the House of Lords in 2000 in
Designers Guild. The test is qualitative rather than quantitative and one must
look to see if a substantial part of the claimant’s work has been reproduced in the
defendant’s work. The test is one of overall impression and “feel” and it is hard to
apply hard and fast rules to such analysis. Indeed, in the recent “Da Vinci Code”
case, two of the Appeal judges felt there was no real point in trying to define
“substantial part” as it should be a crucial question of fact.
Examples of famous cases which turned on “substantial part” include:

(i) a few bars (30 seconds) of the 4 minute long “Colonel Bogey” march was the
recognisable “principal air” of the musical piece which was infringed (Hawkes &
Sons Ltd v Paramount Film Services);

(ii) use of a single page setting out football’s offside rule which was taken from a
long book was an infringement (Trengrouse v “Sol” Syndicate); and

(iii) 4 lines taken from Kipling’s poem, “If”, used in a vitamin advertisement was
infringement (Kipling v Genatosan Ltd); and

(iv) a selection of 13 Hazlitt essays taken from a collection of 127, set as an

examination text where the defendant reproduced all 13 but added others and
the notes and arrangement differed was “very near the line” (Cambridge
University Press v University Tutorial Press).

The ECJ’s reasoning – was the exemption available?

Infopaq argued that the acts considered to be reproduction were transient in

nature as the files were automatically deleted at the end of the electronic search
process. The ECJ felt that a “transient” act under Article 5(1) was one whose: (i)
duration was limited to what is “necessary for the proper completion of the
technological process in question”; (ii) that the process is automated; and (iii)
the reproduction act is automatically deleted without human intervention once
the function of enabling completion of the technical process has ended.

1. manual registration of publications in electronic database by Infopaq

employees;

2. removal of spines to allow loose-leaf scanning of relevant sections of the

publications chosen from the database. This scanning produced a TIFF file for each
page of the publication and this was then transferred to an OCR2 server;

3. the OCR server translated the TIFF file into data which could be digitally
processed and saved as a text file. The TIFF file was then automatically deleted;

4. the text file was processed to locate a predefined search word and, each time
one was found, data was produced specifying the publication, section and page
number where that word appeared. The 5 words before and after the search word
were also captured (“11 word extract”) and then the text file was automatically
deleted; and

5. a hard copy cover sheet was printed out setting out all of the pages where the
search word was to be found.

Analysing steps 1 to 5 of Infopaq’s process, the ECJ held that steps 2 and 3 could
be transient reproductions provided that the TIFF and text files were
automatically deleted from the computer memory. There was insufficient
evidence to rule on step 4 and this is for the Danish national court to decide if the
technological process was automated or if deletion of the 11 word extract file
was dependent on the will of the Infopaq employee. The ECJ pointed out that
there was a danger that the 11 word extract file could remain stored once
completion of the technological process had come to an end.

Helpfully, the parties agreed that step 5, i.e. producing a hard copy results
coversheet, was making a reproduction (outside the field of computer
technology). That reproduction could only be deleted when it was physically
destroyed, something which Infopaq’s data capture process was not likely to do
automatically. Therefore, the final step of the data capture process produces a
hard copy reproduction and is not “transient” in nature. It does not qualify as an
exempted act under Article 5(1) so will require the consent of the newspapers as
rights holders. Unfortunately, the ECJ did not need to consider whether the
earlier steps in the data capture process were exempted.

Conclusion

Provided that the Danish national court finds that the 11 word extracts (or
overlapping extracts) contain an expression of the intellectual creation of the
author (or in effect, a substantial part) from the newspaper in question, the
storing and printing out of those extracts, which does not produce transient
copies in this case, requires the consent of the newspaper in question.

Anyone wishing to, or indeed who currently undertakes such publication

processing activities, would be well advised to automate the process wherever
possible and also to remove the use of hard copy materials. One of Infopaq’s
main stumbling blocks was the involvement of its employees in choosing
whether or not to delete text files and hard copies.

This took Infopaq’s reproductions in the process outside what could be

considered to be “transient”. One should give thought as to whether or not what
is being copied is the essence of the work and, in an English law context, whether
it could be considered to be a substantial part of it.

This case highlights the problems of copyright infringement and new technology
in new business models, especially those involving content aggregation.
Businesses should review their operating systems and methods in an attempt to
reduce the potential for any possible copyright infringement actions arriving on
their doorstep.

Can headlines be copyright works?

Yes: The ECJ in Infopaq held that headline are capable of being literary works,
whether independently or as part of the article to which they relate. It is the
process of creation and the identification of the skill and labour that has gone
into it which falls to be assessed, rather than the completed work itself.

Are text extracts copyright works?

Yes: in Infopaq, an 11-word extract was held to satisfy the requirements for
infringement that elements had been copied “which are the expression of the
intellectual creation of the author”. Actual infringement would need to be
assessed on a case-by-case basis, but short text extracts are capable of infringing
copyright in newspaper articles

In a later Court of Appeal’s decision in Meltwater, Proudman J found that:

 Newspaper headlines can involve considerable skill in their devising
 They were sometimes capable of being independent literary works as
they may be original in the sense of being their author’s own intellectual
creation
 This test relates to the question of origin and is not a requirement of
novelty or merits (and thus does not qualify the longstanding English case
law on the test of originality)
 Test from Infopaq: asking whether the extract contains elements which
are the expression of the intellectual creation of the author of the original
article
 Test from previous English case law: asking whether there was a fair
appropriation of the author’s labour and skill which went into the
creation of the original article