Intellectual Property Law

LLB II
Eessential questions for ©

Is the type of work eligible for ©?

Is the work original?
Who owns the ©?
Was a substantial part of the work used?
Was the user permitted to do so by law?
COPYRIGHT
 s 4 defines ©- the sole legal right to print, publish, perform, film or
record a literary or artistic or musical work.

 COSOTA- © a legal term describing rights given to creators for their

literally and artistic works.
 © protects related rights to copyright part IV CAN (ss 31-35)
 Performers rights
 Producers of sound recording
 Broadcasting organisations
 Eligible works cont
 s 4 C N A defines “work ”
 ‘'Work’’ is determined by the amount of effort, skills and
judgment that has been put in the creation’’(Bainbridge p 44)
 Eligible works
 s 5 C N A Literally and Artistic works
 s 5(2) mentions what are literary and artistic works.
 s 6 Derivative works
 Note:
 The © must have Sufficient substance (not too trivial)
 Mainly an objective test but can have regard to effort.
 De minimis non curant lex ; the law does not concern itself with
trifles. Francis Day and Hunter v Twentieth Century Fox (1940) ‘’
the man who broke the bank at Monte Carlo’’
• Sinadine v La Maison Kosmeo (1928) ‘’ Beauty is a social necessity not
a luxury’’

 Public policy considerations and monopolies created

 Not “commonplace” (collection may be eligible)
 S 7 Works that are not eligible for ©
• © does not protect ideas but the expression of ideas
Ibcos computers v Barclays Finance (1994) Jacob J
Eligible Works
Literally works – any works other than dramatic or
musical works which are written, spoken or sung. Eg
the words of a song (as distinct from musical
composition) [Bainbridge p 52-53]
• British Oxygen v Liquid Air (1925) Ch 283
• University of London Press v University Tutorial
Press (1916)
Artistic works- graphic work, photograph, sculpture, a
work of architecture or a work of craftsmanship
(regardless of artistic quality s 5(3) CNA).( Bainbridge
p 58)
• Nova Games Ltd v Mazooma Production Ltd
 Is the work original?
 s5 CNA- © protects Original literally and artistic works
 originality should not be construed in its dictionary meaning
( Bainbridge p 41, Torremans 175)
• The work must originate from the author and is not copied.
Ladbroke(football) Ltd v William Hill (football) Ltd [1964] 1
ALL ER 465
• University of London Press v University Tutorial Press (1916)
2 Ch 601 at 608-609
• The test to determine originality is minimum effort standard.
 i.e skill, labour and judgement.
 Selection, judgement and experience
 Labour, skill and capital
Originality cont
 The test can be summarized into two major
requirements;
 The work must originate from the author
 A minimum investment of skill, judgement and
labour
• Interlego AG v Tyco Industries Inc [1989] AC 217 at
258, copying of someones else worrk does not qualify
protection even if labour, skill and judgement is
employed. See also, Antiquesportfolio.com plc v
Rodney Fitch &co Ltd [2001] FSR 345 (Bainbridge 41)
Originality cont
 Skill, labour and judgment should not be so trivial
that it could be characterized as a purely mechanical
exercise (Torremas, p 175).
 Creativity is not a requirement.
 European Jurisdiction; the threshold is relatively
higher, ‘’ it constitutes the author’s own intellectual
creation’’. [ European Community Copyright
Directives of May 1991 Art 1(3).
consideration for originality
Level of effort
Type of effort
Own labour and effort v. inventiveness, novelty, unique or
creativity
Use of pre-existing material

 Klep Valves v Saunders 1987 (2) SA 1 (A)

 Work must originate with author and not be copied
 May use existing material, BUT more than slavish copy
 Work must to extent be product of author’s own labour
and skill
 Sawkins v Hyperion Records [2005] 1 WLR 3280
 Written performance directions added to musical notation
protected as part of music itself
 Changes what is heard – appreciated by ear
Originality cont
 Interlego v Tyco [1989] AC 217
Distinguishes between
 Effortused in imparting new
characteristic/quality
 Skill and labour to produce technical drawing ≠
originality
Effort required depends on type of work
 Effort to impart new visual quality needed for
artistic work.
QUALIFICATION FOR COPYRIGHT TO VEST
Bainbridge page 68-70
 The principle of national treatment
• Berne Convention Art 3
• Universal Copyright Convention Art 2
• TRIPS Agreement Art 3
 Authors connected with another member State are to be
treated in the same way as member States’ own authors
and should receive same © protection
 This can be in two ways
• The author can have personal relationship with the
member State
• The work can be 1st published in that member state (not
available if the work remains unpublished)
Qualification cont..
 Main problems
• Countries adhere to one or more Conventions at
different times (problematic for works published before
the date which the country adhere to the Convention
• The conventions are not identical in dealing with this
o Eg The Berne Convention works in part retroactively

 Qualification through 1st publication

• In UK- the work that is first published in UK or the
Convention Country qualifies for © protection
What amounts to publication?
• Issuing the copies of the work to the public
 Publication cont...
• In sufficient quantities
• With the intention to satisfy public demand
 Copies are issued for publication if they are put into
circulation by sale, gift or hire.

 Qualification by personal status of the author

• Is the author a qualifying person?
 In UK- British national, domiciled or resident in UK
 A body incorporated under the laws of UK

• A foreign work- citizen, subject, domiciliary or resident of

Convention country.
• A company incorporated in such a country
 Publication cont...
 The connection has to exist at the material time
• Unpublished literally, artistic, musical and dramatical
works; the date on which the work is made
• Published works; the date of 1st publication and author’s
status at that date or on the date on which the author
died if that occurs before the work is published.
Authorship and ownership
 Who is the author of the work?
• Definition-: s 4 CNA natural person creating the work.
• S 15 (5) CNA-: the author of a work is the person under whose
name the work is disclosed
• The author is the 1st owner s 15(1) CNA. Ownership flows from
authorship (Bainbridge p 83) [subject to exemptions we shall
see later]
 Examples
o Work of literature-; a person who writes it
o Piece of music-: the composer
o Photograph-: photographer
o Compilation-: person who gathers, select, orders and arranges
the material: Waterlow Publishers Ltd v Rose [1995] FSR
207

• © seeks to reward the author for his work

Authorship cont...
 The author does not have to be the person who carries out
the physical act. Cala Homes (South ) Ltd v Alfred Mc
Alpine Homes East Ltd [1995] FSR 818 (Bainbridge p 85).
 The author of a sound recording is the producer.
 © only protects the expression of idea therefore in some
circumstances the originator of information may not be
the author (Bainbridge p 86)
• Springfield v Thame (1903) 19 TLR 650 (journalist
supplying information in the form of an article)
• A person making speech in public is not the author of
the report by reporters. Walter v Lane (1900) AC 539
• The person writing down dictation is not the author but
the one dictating.
Joint Authorship
 Collaboration of two or more authors/ joint effort
(Bainbridge p, 86)
Contributions not separable/distinguishable
UK - s10 CDPA similar
 Contribution must be “significant” (non-trivial) and “original
Cala Homes v Alfred McAlpine [1995] FSR 818 (house
designs)
 No collaboration occurs irrespective of derivative works
 Preconceived common purpose/design required

 Not necessary that joint author physically drew the designs

 Work involves more than just the skills to record it on a paper
 Joint authorship cont....
 No requirement for intentio to create joint work
 Beckingham v Hodgens [2003] FSR 238 (Young at Heart song
‘Bobby Valentino’)
 Joint labouring to further common design
 No need for common intention to produce work of joint authorship
 Violin part composed by B – remainder by H
 Violin part significant and original contribution
 Work of joint authorship in equal parts
 Inseparability
 One document v chapters by different authors

 Type of contribution
 Fylde Microsystems v Key Radio Systems [1998] FSR 449
(computer programs) (Bainbridge p 87)
 Not insignificant contributions to final expression
 Providing specifications, testing and reporting bugs not right type of effort ≈
proofreader
 Brighton v Jones [2005] FSR (16) 288 (Stones in his pocket)
 Suggestions by director to playwright concerning scenes and dialogue during
rehearsals not sufficient
Joint authorship cont...
 © does not protect Idea/Concept -: no joint authorship
for ideas/concept contribution
Donaghue v Allied Newspapers [1938] 1 Ch 106 (jockey
article)
Who clothes idea in expressive form?
 A tells B his experiences and B structures the written work » B
author
Ibcos Computers v Barclays [1994] FSR 275 (computer
prog)
© protects detailed concepts – not general ideas
 Differs from USA – no © in ideas
 Ownership (who is the owner?)
 S 15 CNA the author(s) first owner of © (s21(a) & s11(1) CDPA)
 S 15(2) CAN Audio-visual works -: the co-author
• the author of the scenario
• the author of the dialogue
• the composer of the music specifically created for the audio-
visual work,
• and the director

o Must have exercised actual supervision and made an

actual intellectual contribution to the creation of the
work.
 S 15 (4) works created under a contract of service or
employment-: employer is the owner
 Commissioned work (photograph, painting, portrait,
gravure, cinematograph film )-: the commissioner
 Ownership cont...
 Works made by or under the direction or control of the state-:
who is the owner? CAN – silent
• ss163 – 168 CDPA; the state not the author
• s21(2) CA (SA); the state

 Duration of ©
• S 14 (1) CNA-: during the life of the author and for 50 years
after his death
• Joint ownership-: s 14(2) CNA during the life of the last
surviving author and 50 years after his death
• published anonymously or under a pseudonym s 14 (3)CNA-:
50 years from the date on which the work was either made,
first made available to the public or first published, whichever
date is the latest
• If author’s identify is revealed or is no longer in doubt before the
expiration of the said period-: life time and 50yrs after death
Duration cont...
audio-visual work-: 50 years from the date on which the
work was either made, first made available to the
public, or first published, whichever date is the latest. S
14 (4)CNA
work of applied art-: 25years from the making of the
work. S 14 (5)CNA

 RIGHT OF A © OWNER
 S9 CAN- economic right- right which allow the
owner to derive financial rewards from the use of the
work.
Right of © owner cont…
• These give the owner the exclusive rights to do the acts
listed u/s 9 CNA
• Financial interests of owners are protected from misuse
• The right to authorise distribute ceases if the owner sells
the work- s 10 CNA

 S 11 CNA- Moral rights- protect reputation similar to

personality rights and ensures authors’ protection.
• authors’ have right to
• Be attributed as author
• Object to any derogatory treatment of the work s 11(2)CNA

• Independent from economic right- the remain with the

author even after the work is sold.
 Moral right cont...
In principle moral rights are non-transferable (attach to person of
author)
 therefore they will subsist during the lifetime of author
S 15(7) economic rights are inherited according to the general rules
of the law of succession

MORAL RIGHTS IN OTHER JURISDICTION

False attribution
 CDPA s84 (not in CA)
 Close interaction with paternity right but converse – similar to character
merchandising
 Privacy
 CDPA s85 (not in CA)
 Privately commissioned photos & films
 Prevents exploitation through publication
 Problem: No protection against paparazzi
 Dealing with ©
 The owner of © can deal with it like any other property
right
• Transfer
• Grant license
• Assign some rights
 Why the owner may wish to transfer the ownership of
©?
(read Bainbridge p 99)
 2 main ways of transfer
• Assignment
• License
Assignment & Licensing
 S 16 CNA
• The rights in s9 CNA may be assigned in whole or part
• Should be in writing & signed by assignee
• S 16(4) CNA assignment of future rights void
• S 21 CNA contracts of future grant enforceable (not clear)
 S 17 licensing
• Non-exclusive or exclusive licenses
• Exclusive- to the exclusion of all others including the author or
other owner
• Non exclusive – concurrently with the author or other owner
 Read Bainbridge pp 99-103
Was a substantial part of the work used?