4. Infringement
The Economic Rights
Restricted acts - violation of which is a primary infringement of copyright:
These economic rights comprise the copyright owner’s monopoly and allow the owner to
exploit the work in a variety of ways.
‘Infringement’ is defined as:
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-----------------------------
a) Reproduction
= Simply digitizing a work amounts to a copy and includes transient and incidental copying.
So running a computer program or browsing an internet page involves copying because
transient copies are made in the computer’s RAM.
S.17(3): Copying includes changes of dimension from 2D to 3D and so on. This can create
tension between copyright and design laws.
Issue: Is reproduction in a different dimension or material form prohibited for works other
than artistic works? Does a set of instructions (such as a recipe or knitting pattern) and
producing an article according to those instructions amount to infringement of the literary
work represented by the instructions?
- Brigid Foley v. Ellot [1982]; Craft books and knitting patterns not covered.
-----------------------------------------------------------------------------------------------------------------
-----------------------------
b) Distribution
S.18 CDPA: Contains the right to issue copies of a work to the public. S.18 has been amended
twice in order to implement Art.4 of the Software Directive and Art.9 of the Rental Rights
Directive.
Issue: There is uncertainty regarding at what point issuing of copies to the public occurs.
,+ Bently and Phillips: Important to find out because anyone who deals with the copies
subsequent to the first issuing to the public will not liable for infringement due to s.18(3).
‘Destination theory’ (issuing only occurs when distribution reaches its final destination, the
consumer; so retail sale point. Supported by phrase ‘the act of putting into circulation’.
Generates strict liability for the retailer) vs. ‘disposition theory’ (implies every act is
sufficient).
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-----------------------------
c) Performance in Public
S.19 CDPA: Grants the exclusive right to perform a literary, dramatic, or musical work in
public, and the right to play or show a sound recording, film, or broadcast in public.
Issue: Difficult to determine when the performance is in public. Different approaches have
been adopted by the cts –
- Harms Ltd and Chappell v. Martans Club Ltd [1927]; + Hanworth MR: 1. Has
there been admission of any portion of the public – ‘the class of persons who would
be likely to go to a performance if there was a performance at a public theatre for
profit’. 2. Consider the performance is ‘domestic’, ‘a matter of family and household
concern only’. 3. Consider where the performance took place.
- Jenning v. Stephens [1936]; ‘The true criterion seems to be the character of the
audience’.
-----------------------------------------------------------------------------------------------------------------
-----------------------------
d) Communication to the Public
S.20 CDPA: The exclusive right to communicate a work to the public applies to all works,
except for typographical arrangements of published editions.
Key difference between this right and that of performance in public is that, for the latter, the
audience is in the same place at the same time, whereas, with the right of communication to
the public, the audience may be geographically and chronologically dispersed.
S.20(2): Makes clear that communication to the public covers both broadcasting and internet
transmissions, the latter being covered by the language of ‘making available to the public of
the work by electronic transmission in such a way that members of the public may access it
from a place and at a time individually chosen by them’.
Issue: Where exactly does the communication take place?
- *Football Dataco v. Sportradar [2011]; Another case about data of football matches.
Facts: Info on D’s website about who got red cards etc. in matches. D’s website based in
Germany, Austria or Netherlands, but could be accessed from UK. Question arose – were they
making available the data or copyright work in the UK, even though their server was in the
Netherlands? Did they infringe UK copyright or database rights where act physically took
place outside UK? Depended whether you adopt the ‘emission theory’ (work made available
when emitted and sent out – D said done in Germany), C argued that work could be received
in UK, so was made available.
Decision: 1st instance held making available occurred where signals uploaded (emission
theory) – no infringement. CA referred to CJEU in March this year.
,Criticism: Do not know the answer yet. Interesting q. Policy arguments – uploaded v.
received. If uploaded then that is at least within the control of the actor; but from C’s
perspective D could upload from a country with a weak copyright law. Copyright owner want
to be received theory – uploaders do not like as they would have to comply with highest
copyright law in any country that can receive websites. So lot at stake.
- SGAE v. Rafael Hoteles SL [2007]; While the mere provision of physical facilities
did not amount to a communication within the meaning of Directive 2001/29, the
distribution of a signal by means of television sets by a hotel to customers staying in
its rooms, whatever technique was used to transmit the signal, constituted
communication to the public within the meaning of Art.3(1) .
-----------------------------------------------------------------------------------------------------------------
-----------------------------
e) Adaptation
S.21: Right is restricted to literary, dramatic, and musical works and is defined narrowly.
S.21(3)(a): It includes a translation of literary or dramatic work or converting a non-dramatic
form into a dramatic form.
S.21(3)(b): In relation to musical works, adaptation means an arrangement or transcription.
Adaptations may qualify separately for protection assuming that the originality requirement
has been satisfied:
- Redwood Music v Chappell [1982]; musical adaptation held to qualify separately for
copyright protection because it satisfied the requirement of originality. The fact that
the adaptation is carried out without permission will not preclude it from protection.
-----------------------------------------------------------------------------------------------------------------
-----------------------------
Primary Copyright Infringement
‘Primary infringement’: Occurs where a person does, or authorises another to do, without the
licence of the copyright owner, one of the exclusive acts restricted by the copyright (s.16).
There is no requirement of knowledge on the part of the infringer and so innocently doing one
of the acts will not constitute a defence; it may be relevant to an award of damages (s.97(1)).
Structure:
1. Has P carried out one of the exclusive acts or authorised the doing of one of them?
2. Does the alleged infringing activity fall within the scope of an express or implied
licence?
3. Is there a causal connection or copying of the copyright right?
4. Has the act been done in relation to the ‘whole or substantial part’ of the work?
‘Causal connection’ – Essential to show that the allegedly infringing work was copied or
derived from the relevant copyright work. Independently creating the same or similar work
, will not amount to infringement. Sometimes D will argue that the circumstances in which
they created their work had nothing to do with the claimant’s copyright work.
- *Designer Guild v. Russell Williams [1998];
Facts: DG owned copyright in a painting from which it had produced its Ixia fabric design;
vertically stripped pattern scattered with flowers. DG complained RW infringed copyright in
its painting, by copying the Ixia design in its own Marguerite design; i.e. indirect copying.
D’s arguments: Claimed it was unaware of Ixia design at the time of creating its own design.
However, there was evidence the Ixia design had been displayed at a trade show D attended.
Decision: Collins QC held here that copying had occurred because of numerous similarities.
Decided for the claimants because of the, ‘(1) many and obvious similarities; (2) the
opportunity to copy; and the (3) complementary nature of the acetate.’
+ Hoffman: Famous for saying CR protects “foxes better than hedgehogs”.
+ Chacksfield: Believes this comes from a speech of Isaiah Berlin indicating a comparison
between the trivia/minutiae (hedgehogs) against a grander, large idea (foxes).
Principles:
● Causal connection – ‘There must be a causal connection between the copyright work
and any infringing work; infringement may be negatived by acceptable evidence of
independent design and copying may not be an infringement if it fails to create a
sufficient resemblance to amount to a reproduction’.
● Independent work - ‘There is no infringement if a person arrives by independent
work at a substantially similar result to that sought to be protected’.
● Burden of proof – ‘The necessary proof of copying normally lies in the establishment
of similarity combined with proof of access to the plaintiff’s productions (LB
Plastics Ltd v Swish Products).’ ‘If there is proof of access and a sufficient similarity
there will be a shift to the D of the evidential burden’.
= CA wrong as they broke work into its constituent parts. Called it ‘altered copying’. HL said
you must look at the work as a whole.
- Malmstedt v. EMI Records Ltd & Per Gessle [2003]; M argued his song was
infringed. M had sent a copy of the song to EMI, but Gessle gave evidence he never
listened to unsolicited tapes, so D had to identify similarities that were not
coincidental. Concluded there was no copying – it was all coincidental.
Rebut presumption of copying if:
- Work is shown to come from the same source – Harman v. Osborne
- Both works are constrained by their very function – Catnic v. Hill
- Similarities are due to chance – Francis Day
Subconscious copying: There is strict liability for infringing. Where a creator has been
subconsciously influenced by the claimant’s work it is possible that this could amount to a
casual connection:
- Francis Day Hunter v. Bron [1963];
Facts: Involved alleged infringement in a musical work, ‘In a Little Spanish Town’, first
published in 1926 and extensively exploited in the U.S. Claimant’s alleged that D’s song
‘Why’, published in 1959, was an infringement because it reproduced the first 8 bars of the
chorus of the claimant’s work.
D’s argument: Composer denied consciously copying or hearing the song, but if he heard it
then it must have been in his childhood.
Decision: Found for Ds. Wilberforce J found a considerable degree of similarity because the
songs, but accepted the evidence of D, that there had been no conscious copying. He also
found insufficient evidence to prove unconscious copying.
The Economic Rights
Restricted acts - violation of which is a primary infringement of copyright:
These economic rights comprise the copyright owner’s monopoly and allow the owner to
exploit the work in a variety of ways.
‘Infringement’ is defined as:
-----------------------------------------------------------------------------------------------------------------
-----------------------------
a) Reproduction
= Simply digitizing a work amounts to a copy and includes transient and incidental copying.
So running a computer program or browsing an internet page involves copying because
transient copies are made in the computer’s RAM.
S.17(3): Copying includes changes of dimension from 2D to 3D and so on. This can create
tension between copyright and design laws.
Issue: Is reproduction in a different dimension or material form prohibited for works other
than artistic works? Does a set of instructions (such as a recipe or knitting pattern) and
producing an article according to those instructions amount to infringement of the literary
work represented by the instructions?
- Brigid Foley v. Ellot [1982]; Craft books and knitting patterns not covered.
-----------------------------------------------------------------------------------------------------------------
-----------------------------
b) Distribution
S.18 CDPA: Contains the right to issue copies of a work to the public. S.18 has been amended
twice in order to implement Art.4 of the Software Directive and Art.9 of the Rental Rights
Directive.
Issue: There is uncertainty regarding at what point issuing of copies to the public occurs.
,+ Bently and Phillips: Important to find out because anyone who deals with the copies
subsequent to the first issuing to the public will not liable for infringement due to s.18(3).
‘Destination theory’ (issuing only occurs when distribution reaches its final destination, the
consumer; so retail sale point. Supported by phrase ‘the act of putting into circulation’.
Generates strict liability for the retailer) vs. ‘disposition theory’ (implies every act is
sufficient).
-----------------------------------------------------------------------------------------------------------------
-----------------------------
c) Performance in Public
S.19 CDPA: Grants the exclusive right to perform a literary, dramatic, or musical work in
public, and the right to play or show a sound recording, film, or broadcast in public.
Issue: Difficult to determine when the performance is in public. Different approaches have
been adopted by the cts –
- Harms Ltd and Chappell v. Martans Club Ltd [1927]; + Hanworth MR: 1. Has
there been admission of any portion of the public – ‘the class of persons who would
be likely to go to a performance if there was a performance at a public theatre for
profit’. 2. Consider the performance is ‘domestic’, ‘a matter of family and household
concern only’. 3. Consider where the performance took place.
- Jenning v. Stephens [1936]; ‘The true criterion seems to be the character of the
audience’.
-----------------------------------------------------------------------------------------------------------------
-----------------------------
d) Communication to the Public
S.20 CDPA: The exclusive right to communicate a work to the public applies to all works,
except for typographical arrangements of published editions.
Key difference between this right and that of performance in public is that, for the latter, the
audience is in the same place at the same time, whereas, with the right of communication to
the public, the audience may be geographically and chronologically dispersed.
S.20(2): Makes clear that communication to the public covers both broadcasting and internet
transmissions, the latter being covered by the language of ‘making available to the public of
the work by electronic transmission in such a way that members of the public may access it
from a place and at a time individually chosen by them’.
Issue: Where exactly does the communication take place?
- *Football Dataco v. Sportradar [2011]; Another case about data of football matches.
Facts: Info on D’s website about who got red cards etc. in matches. D’s website based in
Germany, Austria or Netherlands, but could be accessed from UK. Question arose – were they
making available the data or copyright work in the UK, even though their server was in the
Netherlands? Did they infringe UK copyright or database rights where act physically took
place outside UK? Depended whether you adopt the ‘emission theory’ (work made available
when emitted and sent out – D said done in Germany), C argued that work could be received
in UK, so was made available.
Decision: 1st instance held making available occurred where signals uploaded (emission
theory) – no infringement. CA referred to CJEU in March this year.
,Criticism: Do not know the answer yet. Interesting q. Policy arguments – uploaded v.
received. If uploaded then that is at least within the control of the actor; but from C’s
perspective D could upload from a country with a weak copyright law. Copyright owner want
to be received theory – uploaders do not like as they would have to comply with highest
copyright law in any country that can receive websites. So lot at stake.
- SGAE v. Rafael Hoteles SL [2007]; While the mere provision of physical facilities
did not amount to a communication within the meaning of Directive 2001/29, the
distribution of a signal by means of television sets by a hotel to customers staying in
its rooms, whatever technique was used to transmit the signal, constituted
communication to the public within the meaning of Art.3(1) .
-----------------------------------------------------------------------------------------------------------------
-----------------------------
e) Adaptation
S.21: Right is restricted to literary, dramatic, and musical works and is defined narrowly.
S.21(3)(a): It includes a translation of literary or dramatic work or converting a non-dramatic
form into a dramatic form.
S.21(3)(b): In relation to musical works, adaptation means an arrangement or transcription.
Adaptations may qualify separately for protection assuming that the originality requirement
has been satisfied:
- Redwood Music v Chappell [1982]; musical adaptation held to qualify separately for
copyright protection because it satisfied the requirement of originality. The fact that
the adaptation is carried out without permission will not preclude it from protection.
-----------------------------------------------------------------------------------------------------------------
-----------------------------
Primary Copyright Infringement
‘Primary infringement’: Occurs where a person does, or authorises another to do, without the
licence of the copyright owner, one of the exclusive acts restricted by the copyright (s.16).
There is no requirement of knowledge on the part of the infringer and so innocently doing one
of the acts will not constitute a defence; it may be relevant to an award of damages (s.97(1)).
Structure:
1. Has P carried out one of the exclusive acts or authorised the doing of one of them?
2. Does the alleged infringing activity fall within the scope of an express or implied
licence?
3. Is there a causal connection or copying of the copyright right?
4. Has the act been done in relation to the ‘whole or substantial part’ of the work?
‘Causal connection’ – Essential to show that the allegedly infringing work was copied or
derived from the relevant copyright work. Independently creating the same or similar work
, will not amount to infringement. Sometimes D will argue that the circumstances in which
they created their work had nothing to do with the claimant’s copyright work.
- *Designer Guild v. Russell Williams [1998];
Facts: DG owned copyright in a painting from which it had produced its Ixia fabric design;
vertically stripped pattern scattered with flowers. DG complained RW infringed copyright in
its painting, by copying the Ixia design in its own Marguerite design; i.e. indirect copying.
D’s arguments: Claimed it was unaware of Ixia design at the time of creating its own design.
However, there was evidence the Ixia design had been displayed at a trade show D attended.
Decision: Collins QC held here that copying had occurred because of numerous similarities.
Decided for the claimants because of the, ‘(1) many and obvious similarities; (2) the
opportunity to copy; and the (3) complementary nature of the acetate.’
+ Hoffman: Famous for saying CR protects “foxes better than hedgehogs”.
+ Chacksfield: Believes this comes from a speech of Isaiah Berlin indicating a comparison
between the trivia/minutiae (hedgehogs) against a grander, large idea (foxes).
Principles:
● Causal connection – ‘There must be a causal connection between the copyright work
and any infringing work; infringement may be negatived by acceptable evidence of
independent design and copying may not be an infringement if it fails to create a
sufficient resemblance to amount to a reproduction’.
● Independent work - ‘There is no infringement if a person arrives by independent
work at a substantially similar result to that sought to be protected’.
● Burden of proof – ‘The necessary proof of copying normally lies in the establishment
of similarity combined with proof of access to the plaintiff’s productions (LB
Plastics Ltd v Swish Products).’ ‘If there is proof of access and a sufficient similarity
there will be a shift to the D of the evidential burden’.
= CA wrong as they broke work into its constituent parts. Called it ‘altered copying’. HL said
you must look at the work as a whole.
- Malmstedt v. EMI Records Ltd & Per Gessle [2003]; M argued his song was
infringed. M had sent a copy of the song to EMI, but Gessle gave evidence he never
listened to unsolicited tapes, so D had to identify similarities that were not
coincidental. Concluded there was no copying – it was all coincidental.
Rebut presumption of copying if:
- Work is shown to come from the same source – Harman v. Osborne
- Both works are constrained by their very function – Catnic v. Hill
- Similarities are due to chance – Francis Day
Subconscious copying: There is strict liability for infringing. Where a creator has been
subconsciously influenced by the claimant’s work it is possible that this could amount to a
casual connection:
- Francis Day Hunter v. Bron [1963];
Facts: Involved alleged infringement in a musical work, ‘In a Little Spanish Town’, first
published in 1926 and extensively exploited in the U.S. Claimant’s alleged that D’s song
‘Why’, published in 1959, was an infringement because it reproduced the first 8 bars of the
chorus of the claimant’s work.
D’s argument: Composer denied consciously copying or hearing the song, but if he heard it
then it must have been in his childhood.
Decision: Found for Ds. Wilberforce J found a considerable degree of similarity because the
songs, but accepted the evidence of D, that there had been no conscious copying. He also
found insufficient evidence to prove unconscious copying.
