Concerning the originality of lampshades: Innermost v Warm

Innermost Ltd v Warm BL O/464/19 is that rare thing, a case about licensing of right under Part III of the Copyright, Designs and Patents Act 1988. I wrote it like that to avoid using the word "right" twice in close proximity, but of course design right is what it invloves.

The Act - the 1988 one, I hope that's obvious - permits a would-be user of the design right to claim a licence during the last five years of the term of protection. Because the term of protection for design right is 15 years from the end of the year in which the design was created, or 10 years from the end of the eyar in which articles made to the design were first made available for sale or hire if that happened within the first five years of the 15 year term (s.216(2)), it is not necessarily a simple matter to identify when a design is in the last five years of its protection, and that was one of the matters at issue in this decision of Mr Phil Thorpe on behalf of the Comptroller.

It's worth mentioning that ten years from first making available is the usual term of protection for designs. It is rare, though certainly not unheard of, for a design to be created and not exploited in this way for five years or more. But in this case we are in the realm not of aircraft, which take a long time to progress from drawing board to "making available", but of lighting, which can make much faster progress towards commercialisation.

Corinna Warm had designed the lights, which were referred to as the Glaze pendant light, the Circus pendant light and the Circus wall light. The Circus wall light used the existing Circus pendant shade. Innermost, the applicant for the licence, manufactured them under licences, which had expired. The parties were unable to agree terms for new licences, so Innermost invoked s.216, under which the Comptroller is empowered to set a royalty in default of agreement.

Mr Thorpe had to set the royalty rate for each of the three, but also had to decide when the Glaze pendant light had first been made available as this would determine the start date for the licence of right period. He also had to decide whether the Circus wall light even enjoyed design right protection, and if so when the licence of right period began. The royalty rates are probably the least interesting part of the case, so rather than leave you in suspense I will tell you now that he set this at 5 per cent for the two pendant lights (Innermost had offered 4 per cent, Ms Warm wanted 5 and 7 respectively, and in fact on the Glaze design Innermost conceded the higher rate during the hearing). As for the wall light, he decided for reasons that will become apparent that he didn't have jurisdiction to set a rate.

Prototypes of the Glaze pendant lights had been shown by Ms Warm before Innermost took a licence from her, and a couple of years before they started selling the lights, so which of those dates was to be used for calculating the beginning of the licence of right period was pretty important: would that period start on 1 January 2017 or 2019? The key to answering this question lies in paragraphs [116] to [119] of Lord Justice Jacob's judgment in Dyson Ltd v Qualtex (UK) Ltd. [2006] RPC 31, [2006] EWCA Civ 166 (the one in which he made some very scathing comments about Part III):

[116] If a man offers and takes orders for sale of articles for sale at the end of December, but does not actually deliver any until January, when does the five-year period of s.216 (1) (b) start to run? When are articles “made available for sale or hire?” In [307] the judge held that it when the public first actually could get the articles. So in the example, it is January. And it would make no difference if there had been prior manufacture of a prototype, shown to the public but no more. The judge held merely taking orders with future delivery (contemplated by the contract or in fact) was not enough. The first actual delivery is when the article is "made available for sale". 

[117] Mr Arnold said that was wrong—the statute was aimed at exploitation of designs. This starts when orders for the article are actually taken. Mr Carr submitted that UDR was for a short period in itself. It was unlikely that in some cases (e.g. the example above) the period of full protection would be cut down to virtually four years only. 

[118] Neither argument is particularly persuasive. Again the provision is not well-thought out—potentially it makes a 20 per cent difference in the period of full protection whichever party is right. In the end I think the judge was right to go by the actual words without any notion of underlying policy to guide him. He reasoned thus: 

"I consider that the natural meaning of the expression ‘made available’ connotes something that is actually in existence. If one imagines a case of an offer of goods which have yet to be made (in the sense that none of them are yet made) then I would not consider that those goods are ‘available’ for sale even if advance orders for them are taken. Taking orders for them is not making them available."

[119] I agree and see no point in trying to say the same in my own words.

(Counsel in that case, incidentally, subsequently became Lord Justice Arnold and Mr Justice Carr, who sadly died last year.)

On this basis, Mr Thorpe decided that it was when Innermost put the lights on the market that mattered, not when Ms Warm exhibited the prototypes. There was no need to argue about the relevant date for the Circus lights, as this was agreed at the case management conference, but it was necessary to decide whether the Circus wall light was protected at all. Ms Warm argued that it was a new design, several years younger than the pendant, whereas Innermost said it was just a variation of the pendant model, in which case it would lack the originality needed to give it protection in its own right so protection would begin and expire at the same time as for the pendant. Innermost also added a rather optimistic claim that the wall light was caught by the must-match exception, which Mr Thorpe struggled with before deciding that the argument had not been made out.

As for originality, the hearing officer found that

Ms Warm has taken the existing Circus lampshade as a starting point and designed a complimentary wall mount and arm arrangement which together support a swivel-mounted LED unit covered by the lampshade – the lampshade being made using existing tooling. It’s [sic - the decision contains a large number of colloquial contractions, almost as if it were a blog post!] a collection of parts that are designed to work in aesthetic harmony with one another. [Para 67]

 He added at paragraph [72] of his decision:

Ms Warm has employed originality in arriving at a new creation, something that is different to the Circus pendant lampshade. Certainly, the Circus lampshade has been used as a basis for the design and, except for some minor modifications to the modesty cap and cosmetic cover there appears to be very little, if any, difference in the shade’s shape or configuration. So does the combination of the shade and everything else result in something that is more than a mere collocation and render it original? I think it does. Whether this is regarded as adding ‘old’ to ‘new’, or ‘new’ to ‘old’, I think the result is a visually very different product, one where the whole is quite different to any one of its component parts. Ultimately the overall design is not a copy. I therefore conclude that design is original and thus design right does subsist.

You can't argue with that, although you can argue with whether the law makes sense. (Mr Thorpe couldn't, of course.) Does it really make sense to restart the term of protection, brief though it be in the first place, when an existing lampshade is fitted with a wall mount? Indeed, does it make sense to protect what to my untutored eye is a pretty ordinary-looking lampshade to start with? Well, yes, probably, because given the amount of freedom a designer has in this field there is no good reason to make a lampshade that comes close to looking like an existing one: in other words, the exclusive rights conferred by Part III will be very narrow. If Innermost didn't like the licence terms, they could probably have commissioned a new design that didn't look hugely different.

Transformative use

In trying to explain when a substantial part of a copyright work has been taken (and therefore an infringement might have taken place), I came up with what I thought was a great illustration. It helped, perhaps, that I was doing the teaching in Moscow, so Rachmaninov came easily to mind. Leaving aside the fact that there is no extant copyright to worry about in practice (in any case, Paganini died in 1840, 94 years before the Rhapsody was written), would it ever be thought that Sergei Vasilievich's Rhapsody on a Theme of Paganini (Opus 43) infringed Paganini's copyright, or that it was anything other than a completely original work?

To start with, listen to the last of Paganini's 24 caprices, which is where Rachmaninov got the Theme from, played here by Hilary Hahn:


Then listen to Rachmaninov. There are 24 variations in his Rhapsody, starting with a fairly literal statement of the theme (you can hear that in the last of these three clips). Maybe he would have had to clear that with the Italian virtuoso, had modern copyright law applied at the relevant time. But the point of variations is that they transform the theme, and by the time you reach the glorious and impossibly romantic variation 18 (played in this clip by Valentina Lisitsa with the London Symphony Orchestra conducted by Michael Francis) it has changed beyond recognition, turned upside-down by Rachmaninov to produce one of his greatest tunes (and I write "his" quite deliberately: it's no longer Paganini's).

The great pianist Stephen Hough explains what is going on in this clip.


Of course there are many other examples of authors (in the broad copyright sense) taking someone else's work and transforming it into something utterly original (in the copyright sense as well as the ordinary one), but I think this is a particularly good one as well as being a beautiful piece of music.

Note: "transformative" is not a word used in the Copyright, Designs and Patents Act 1988. It is mentioned as a description of a type of fair use in the US legislation, and it featured in the Gowers Review a decade or so ago - where it was suggested that there should be an "exception", created by by an amendment to Directive 2001/29/EC, in favour of "creative, transformative or derivative works" which would benefit what the Review called "the Hip Hop industry".

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).

France: Cour de cassation on software copyright

Legalis.net reports today (en français)  that on 17 October 2012 the Cour de cassation annulled a decision of the cour d’appel  of Aix-en-Provence, which appeared to have forgotten the rules of originality for copyright in computer programs. It has to be shown that:

les choix opérés [témoignent] d’un apport intellectuel propre et d’un effort personnalisé de celui qui avait élaboré le logiciel litigieux, seuls de nature à lui conférer le caractère d’une œuvre originale protégée. 

So, software is protected only if it is the author's own intellectual creation - under the software directive, if not expressly in UK copyright law. France seems to have got it more right than us.

The cour d'appel had held that the software was original because it provided a particular solution to the management of bailiffs - a significant problem, I can confirm, having once acted for a large organisation of bailiffs ... The cour de cassation referred back to its 1986 decision in Pachot, where it had held that the creator of a program had to impress his or her own personality on it: it had to be more than the mere implementation of an automatic, logical process. And that, in all areas of copyright law, must be right - although our law might not say so in so many words, and the required standard of originality might be abysmally low (and falling).

You can read the judgment here, si vous voulez.