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. 

THE ROSATI CHECKLIST

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?

b)      MORAL RIGHTS

·        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?

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[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.