Tuesday, 8 October 2013

IPse Dixit: On the meaning of originality

The best way to learn something, I am sure, is to write a book about it. Perhaps these days people would choose instead to blog about it, or record podcasts, but if so, the idea isn't all that different. And the best way to learn about recent developments in a field is to update a book you've already written, as I am doing at present - or produce regular podcasts, as I have done in the past.

When I wrote my first book, back at the end of the eighties (it came out in 1991, and I was convinced that along with my PhD which I received at about the same time it would secure fame and fortune and a flourishing legal practice), the requirement for originality in a copyright work was dead easy. As the hero of every law student of my generation (and the bane of the lives of more experienced lawyers such as The Master), Lord Denning, said in the debates on the Bill that became the Copyright, Designs and Patents Act 1988, the word "original" is "fairly simple" to understand: it "means that the author has written it himself and not copied it from someone else" (HL Debs vol 491 col 815). A work did not have to be novel or unique: it was only necessary that the author should have created the work independently and in so doing exercised a sufficient degree of skill, knowledge, creative labour, taste or judgement to justify protection. (This summary of the case law at the time was helpfully provided by the government in its Notes on Clauses, an extremely helpful commentary on the Bill to which I had access as part-time research assistant to Rt Hon Sir Geoffrey Pattie MP.)

Perhaps the problem with Lord Denning was that everything was simple to him. That was certainly a major attraction of his judgments. If he took a (refreshingly) simple view of things, so too did Peterson J in the famous University of London v University Tutorial Press case [1916] 2 Ch 601 (I am always intrigued when I cite a case decided during one of the great wars of the 20th century, which give a telling indication of how life went on throughout), when he said "what is worth copying is prima facie worth protecting", a proposition which, even with the important Latin words, is usually discounted by judges as soon as they have quoted it although they often go on to give it a great deal of credence.

Without the Latin, Peterson J's dictum would conveniently answer every question about copyright infringement: the fact that copying had taken place would automatically mean that an infringement had been committed. That is certainly a nice simple approach, so thank goodness the "prima facie" adds some uncertainty, otherwise there would be no point in being a copyright lawyer. Whatever its use as a test for copyright protection or infringement, though, the judge's words from nearly a hundred years ago reveal one important fact - that the subsistence of copyright and what constitutes infringement are in some respects the same question. An infringement requires that the defendant has taken (I deliberately use a word that is neutral as far as concerns the quality of the act) a substantial part of the work, and to be substantial that part must certainly be original.

It doesn't stop there. Not only are originality and substantiality mixed up with each other, but closely associated with those concepts are the infamous idea-expression dichotomy and the whole notion of what is a "work". So there might be some simple propositions to play with, but this is a complicated area where several different concepts meet - a bit like the bottom of the A-pillar of a motor car, the biggest challenge facing the designer because so many lines meet at the one point.

But what the law said in 1988 (and the Act didn't change that) is no longer the end of the story. First of all there came the software directive (Directive 91/250/EEC) which imposed a special originality test: a computer program had to be its author's own intellectual creation. Later the database directive (96/9/EC) said the same thing, and more recently still Article 6 of Directive 93/98/EEC (now 2006/116/EC) on the term of protection of copyright and certain related rights stipulates that an identical test should apply for photographs. However, that is a minimum standard of originality, and Member States may provide for the protection of other photographs. On the face of it, the 1988 Act does just that, allowing less original photographs to be protected. (incidentally, you will search the 1988 Act, as amended, in vain for mention of the special tests for originality of computer programs or photographs, although the wording from the database directive is there.)

At this point, let me pause to observe, perhaps rather unfashionably, that to my mind the low standard of originality required in English (or UK) copyright law leads to the regrettable situation that all sorts of undeserving stuff gets protection. It leads in the field of copyright to the sort of intellectual property hyper-inflation that can be observed elsewhere - huge numbers of over-wide trade marks, patents covering the most exiguous  advance in technology, designs protecting subject-matter with no eye-appeal - and it ought to be curbed before it is too late. Imposing a requirement for something to be the author's own intellectual creation would conveniently put copyright back in the box in which it belongs.

The Court of Justice's judgment in Infopaq put the cat among the pigeons. By the time of the judgment, of course, the legislative framework had been extended by the addition of Directive 2001/29/EC, the so-called information society directive, and although that instrument says nothing about the test for originality the court concluded that to be consistent with the big idea of harmonisation of those bits of copyright law which could cause problems for the single market the same level of originality was required of all manner of literary, dramatic, musical and artistic works, not only those subject to specific rules: and it found justification for this approach in the use of the word "work" in the directive. Copying part of a copyright work would be an infringement if that part contains elements which are the expression of the author's own intellectual creation. As far as the Court is concerned, substantiality has nothing to do with it (quite rightly, I suppose, as that isn't something dealt with in EU law). Questions of infringement fall to be decided by reference to originality: subsistence and infringement are different sides of the same coin, perhaps.

Hooray! I have often thought that the expression "original work" was a tautology. If it's your work, it is original to you. It would be nice if we could drop the unnecessary adjective, because (as the world ought to know, but usually fails to appreciate) lawyers - good ones, anyway - abhor unnecessary words. A harmonised approach requires the stronger test, borrowed from German and Dutch law, a matter that I have repeated so many times that I really ought to go and find authority for it. (Here we are: §2(2) of the Gesetz über Urheberrecht und verwandte Schutzrechte: 'Werke im Sinne dieses Gesetzes sind nur persönliche geistige Schöpfungen', and according to Wikipedia on Dutch copyright law, 'the Dutch Supreme Court has ruled that to be considered a work, it should have its own, original character with the personal imprint of the author (HR 4 januari 1991, NJ 1991, 608 (Van Dale/Romme))', which indicates that the requirement is implied by the use of the word 'work'. And while I am digressing, and to give myself a little language lesson, the Russian Civil Code, Article 1259(7) uses the expression самостоятельным результатом творческого труда автора - 'independent result of the creative work of the author'.)

Even so, there's a considerable distance between the position of the Court of Justice in Infopaq and what the English courts have been saying for years. Both approaches could dispense with the adjective, because the meaning of the word 'work' alone would do the job in both systems. It still depends on the nature and quality of the work. In the English courts, a bead of sweat on the author's brow would do, whereas the continental courts (including the one in Luxembourg) look beyond the sweat, at the inside the author's head. So we still have to go back to the meaning of 'work' and the principle of harmonisation to reach the conclusion that the requirement for intellectual creativity is implied.

In Public Relations Consultants Association Limited v The Newspaper Licensing Agency Limited and others [2013] UKSC 18 the Supremes referred questions about transient and incidental copying (permitted under the Directive) to Luxembourg, but didn't even mention originality, on which the last word remains that of Mrs Justice Proudman in that case at first instance (the Court of Appeal having agreed with her analysis).

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