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Monday, 24 November 2014

Struggling to understand how to address a copyright infringement issue? Here's my checklist

If you are new to the enchanting world of copyright (say you are a student or a trainee who has just started his/her time in the IP department of a law firm), and you have to deal with issues of alleged infringement (say a problem question in an exam paper or the problem of an actual client), what considerations do you have to undertake?

As some IPKat readers might know, I am now a lecturer in IP law at the University of Southampton. My students and I are just about to conclude the copyright part of the course, ie that moment where all the various copyright issues (should) finally look linked together under the infringement umbrella.

I was looking for some texts/tables that would make clear enough to my students that infringement is not just about derivation and the taking of the whole or a substantial part of a work as per s16 of the Copyright Designs and Patents Act (CDPA). Infringement involves broader considerations, including whether the original work is protected by copyright in the first place, whether there was a licence and what scope this had, whether any defences could apply and, if so, whether the dealing with the original work might be considered fair, etc.

I have been unable to locate any texts/tables that would provide such an overview and bring single topics together in a schematic way [do readers have any suggestions?]

This is why I thought of creating my own personal Copyright Infringement Checklist, ie a list of aspects one should consider when dealing with issues of alleged infringement under UK law. It is by no means authoritative (this is why I named it after myself -- so it was not just out of personal vanity). I thought of sharing it with IP students and trainees who may want to take a look at it. Of course, any suggestions to improve it are more than welcome. 

Aspects to consider when addressing potential copyright infringements under UK law

·        Is the allegedly infringed work protected by copyright in the first place?
·        Does the work belong to one of the categories of works protected under UK copyright?[1] If so, which one?[2]
·        Is the work sufficiently original?[3]
·        Who owns the copyright?[4]

·        What rights have been potentially infringed?
a)      ECONOMIC RIGHTS (test is in s16 CDPA)
·  (What kind of infringement are we talking about here, primary or secondary?)
·  Is/was there a licence – whether express or implied – in place? If so, what is/was its scope?[5]
·  What rights have been potentially infringed?[6]
·  Is there a case of independent creation (no infringement) or rather derivation (this is the causal connection required by s16 CDPA)?
·  Has there been the taking of the work as a whole or a substantial part of it?
·        As to “substantial part”, the question you have to ask yourself is: is this part sufficiently original?

·        Never forget that they can be waived under UK law, and that integrity requires a “treatment” (see s80 CDPA)

·        Do any defences (also known as 'permitted acts' and 'exceptions') apply?
a)      Is there any defence available under UK law?[7]
b)      If so, can the dealing at hand be considered fair (matter of fact)? Factors to consider include:
·  Amount and quality of what has been taken
·  Could have the same purpose been achieved otherwise?
·  Use made of the original work, including whether commercial advantage and motives of the dealing
·  Effects on the market for the original work, eg substitution effect
·  Is the original work unpublished?
·  How was the original work obtained?

[1] If not, eg it is an unconventional work, then you should recall potential implications of CJEU decisions in Infopaq, C-5/08 and its progeny, notably BSA, C-393/09 [see here why].
[2] This is key when the economic right that has been potentially infringed is one of those rights, eg adaptation, that are not available to every protected subject-matter.
[3] This may prove tricky when dealing with works which might qualify for copyright protection under the traditional skill, labour or effort approach, but might be considered sub-original if CJEU understanding of originality as author’s own intellectual creation is to be intended as requiring something more than sufficient skill, labour or effort.
[4] This requires consideration of issues such as authorship, joint authorship, works created in the course of employment, copyright assignment, etc.
[5] For instance, you might have granted a licence to reproduce a work, not also to communicate it to the public. If an act of communication to the public takes place, it may be an issue of infringement.
[6] See fn 2 above.
[7] Do not forget that, except Article 5(1), all the exceptions in Article 5 of the InfoSoc Directive are optional for EU Member States to implement into their own national laws. 


Mark said...

I would expand the question of who owns the copyright (or perhaps even an earlier question) to include:

- is there good evidence of how the work was created and by whom? Is there an audit trail of versions and authors, their employment status and whether the work was created in the course of their employment, etc?
- is there evidence of whether the authors created the work themselves or introduced third party material, eg open source software?
- in the case of people other than employees acting in the course of their employment, are written assignments in place in favour of the employer?
- have there been any transactions (assignments, licences, charges, or agreements to do any of these things) or permissions granted to use the copyright work?

Eleonora Rosati said...

Thanks so much for your advice, Mark!

Andy J said...

You have set yourself one heck of a task! Once you're cracked this, perhaps you and Mr Justice Arnold would like to rewrite the CDPA in line with the learned judge's 2014 Herchel Smith lecture.
More seriously, I think an early consideration should be, having established that the work is eligible for copyright, whether it is still in copyright. For older works, unpublished works, and foreign works, this is an utter muddle (cf the Sherlock Holmes case in the USA) and of course the outcome of this examination may well lead into the thorny area of orphans (although I suspect that is straying beyond the purpose of your project).
And I would endorse Mark's point above, with emphasis on whether the claimant has standing to bring a cause of action. (vide HHJ Birss's (as he then was) findings in the various Media CAT cases).

Andy j said...

Just a quick follow up on my last comment, Tim Padfield's book Copyright for Archivists and Record Managers contains some useful flowcharts for determining copyright duration as well as some helpful summaries of the general law when looked at from a particular perspective, eg (1) who are/were authors of works such as films at various points in the past, and (2) Crown copyright.

Eleonora Rosati said...

Thanks for your valuable suggestions, Andy!

Anonymous said...

May I suggest adding a paragraph entitled "International and Treaty Aspects"...?

Ron said...

Don't take assertions of copyright ownership as gospel. I have lost count of the times I have seen reproductions of Victorian picture postcards on the web which are asserted to be the copyright of the web page owner. Even large institutions seem to be under the misapprehension that copyright exists in items in their collection, however old.

I have a 1980's-published book which, inter alia, contains facsimiles of posters from the early 1830's, and a clipping from a newspaper from 1829, all of which are said in the acknowledgements page to be copyright of the Science Museum. The misapprehension might of course be on the part of the book's author. There appear to be no specific legal provisions in copyright legislation for unjustified assertions of copyright ownership.

AUstralian Copyright Council said...

For Australian reader our publications on Permissions & Clearances & Copyright Compliance provide practical checklists.

Andy J said...

Ron is of course right that anyone can make a false assertion via a copyright notice, and there is no legal impediment to deter them. Often where the work is a book or similar literary publication, the publisher may be legitimately referring to either publication right (as created by SI 1996/2967 r.16) or the copyright in the typographical layout (per s.8 CDPA) but since both these 'copyrights' only last for 25 years from the end of the year the work was first published, that is a very different state of affairs to life +70 years.

ruthsoet said...

I am sure your students will find your different approach useful and interesting, particularly if you emphasise that a checklist is only ever an indicative checklist, rather than the 'dernier mot' in checklists. I can see the 'checklist' as a new assignment/coursework model: give the students a scenario, and instead of inviting them to advise the parties, ask them to provide the checklist of points to be addressed when addressing the issues involved, with authority where appropriate.

Eleonora Rosati said...

Thanks so much you all for your suggestions!

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