Rethinking Originality in Copyright Law and Exploring the Potential for a Global Threshold

Rethinking Originality in Copyright Law and Exploring the Potential for a Global Threshold

Abstract Intellectual property law can be considered as the most rapidly evolving body of law in existence today and excluding the law of patents, the law of copyrights can be considered the fastest evolving branch of it. While 60 years ago it was advocating towards the protection of literary, dramatic, musical and artistic works (authorial works), today it has expanded its reach towards films, broadcasts, published editions, computer programmes and etc. It will continue to evolve as long as human beings continue to create and should evolve for the sake of creativity itself. However, it can be observed that the most important requirement of copyright protection, the one which many commentators like to refer to as the sine qua non of copyright protection haven’t done so. The requirement of originality is inseparable from copyright protection, which the world agrees but they cannot agree on the threshold on which it should be judged. This essay is an exploration as to why there exists, three dominant standards of originality and why national governments and the judiciary have consistently ignored their international commitments for a harmonised regime of law. The author starts the essay by explaining the role and development of intellectual property and copyrights law in a nutshell and moves on to highlight the purpose which originality serves in modern copyright law and analyses the legislative and judicial precedents of Common law jurisdictions, the European Union and the United States which advocate towards three different thresholds of originality. The author then considers the evolution of the “author’s own intellectual creation” test of Infopaq v Danske from Europe to the UK and whether it can be applied in the United States as well. Then the author discusses the need for harmonisation of originality by highlighting on international conventions that deal with copyright law, considering copyright as a human right and private globalisation. The essay then discusses the possible barriers that a global test may come across in the event it is adopted and concludes that the proper test to be applied should be the “author’s own intellectual creation” test with reasons to justify the adoption.

2

Introduction Intellectual property law can be considered as the most rapidly evolving body of law in existence today and excluding the law of patents, the law of copyrights can be considered the fastest evolving branch of it. The preamble to the WIPO Copyright Treaty states; The Contracting Parties, Desiring to develop and maintain the protection of the rights of authors in their literary and artistic works in a manner as effective and uniform as possible...1 The author believes that the above statement summarises the need for this discussion. Ninety-four parties have signed the WIPO Copyright Treaty at the time of writing this essay and hundred and seventy-one nations are member states of the Berne Convention, both of which advocates towards uniformity with regard to the protection granted under the law of copyright, and on its enforcement between jurisdictions. One of the primary characteristics of copyright law is that they are generally territorial in nature.2 Since the 19th Century, however, an increased number of bilateral and multilateral treaties have been created, to facilitate export and import intellectual property between borders. In a knowledge-based global economy, protection of intellectual creations plays a significant role in the advancement of human society. The law of copyrights is a major component of intellectual property law and deals with assigning protection to “expressions of ideas” (not ideas in expressions), created by authors. It encompasses a vast economic and cultural field extending to arts, education, information, entertainment, broadcasting and the media.3 Unlike with regard to other intellectual property law rights such as patents and trademarks, under copyright law, protection arises automatically upon the creation of the work (in jurisdictions with an unregistered copyright regime). The underlying rationale of obtaining the property right of copyright is to protect the author’s investment in the production of the work against unfair competition and specially against a competitor's free ride and his parasitical undercutting of the author's expenses by unauthorised copying.4 Breyer expands on this notion and gives four justifications defending the monopoly granted through copyright; namely

a. A natural right to property in one’s work, allowing authors to control the use of, and treatment given to their work.

b. To reward for investment in creation and publication. c. To stimulate creativity which is socially, as well as personally beneficial. d. To disseminate ideas in the public interest.5

1WIPOCopyrightTreaty,WIPO(enteredintoforce20December1996).

2Bently,LionelandSherman,BradIntellectualpropertylaw(4thed,OxfordUniversityPress,UnitedKingdom,2014).

3Colston,CatherineandothersModernIntellectualPropertyLaw(3rded,CavendishPub,NewYork,2010).

4Rahmatian,Andreas“OriginalityinUKcopyrightlaw:Theold‘skillandlabour’doctrineunderpressure”[2013]International

ReviewofIntellectualPropertyandCompetitionLaw.

5Breyer,Stephen“Theuneasycaseforcopyright:Astudyofcopyrightinbooks,Photocopies,andcomputerprograms”(1970)84

HarvardLawReview281.

3

While the substantive requirements of copyrights protection can differ between each jurisdiction, one requirement can be seen to be globally accepted. Namely, the requirement of “originality”. Many commentators refer to it as the Sine Qua non of Copyright. However, while originality as a concept is recognised, the threshold of qualification appears to be different. However, it needs to be declared that the requirement applies generally to literary, dramatic, musical and artistic works (works of authorship). While no such requirement exists for entrepreneurial works which merely shouldn’t be copied from another work. Part I of the essay, the author will first identify the requirement of originality statutorily and the role it performs in advocating the objectives of the regime, then it shall discuss the distinction between ideas and expressions and how originality determines what may amount to a protectable work. The author will then analyse the different tests that are in application to determine what actually constitute originality. For the purpose of this essay the author will analyse the “skill, labour and judgement test prevalent in the UK and New Zealand, the “author’s own intellectual creation” test developed in the case of Infopaq v Danske and the “Minimum level of creativity” test adopted by the United States Courts since the case of Feist v Rural Telephone. The author then spends a considerable amount of literature discussing whether the European Union test have replaced the UK test of originality and the repercussions it may bring. In part II of the essay, the author will deal with the question raised in the topic. Whether there is any conceivable possibility for a global threshold on originality. In justifying the global test the essay first points out that copyrights law (intellectual property law in general) needs to be viewed similarly to human rights law. Just as each individual is seen as entitled to the same rights, similar creations of authors should be judged by the same test. The second justification for a global threshold as the author illustrates, emanates from international conventions and treaties where a majority of all nations have undertaken a commitment to harmonise copyrights law. The author believes that proper harmonisation cannot occur until a uniform standard of originality is adopted. The essay discusses the Berne Convention, Rome Convention, TRIPS Agreement and the WIPO Copyright Treaty in relation to originality. The author identifies Europe as the first regional law making body who has enacted laws in furtherance of harmonisation in relation to originality through its directives. However, the paper recognises that the effect of these provisions hasn’t been as successful as expected due to the caveats used in the language of the directives. The paper also identifies and appreciate the attempt made by the Wittam committee to create the rather misleadingly named “European Copyright Code”. The author then discusses the possible bars against the adoption of a global test and believes that the main obstacle will be “traditional cultural expressions” as a global standard developed in a forum may not be able to appreciate the values and variety of many cultures that exist in the world.

4

Part I The role of originality in copyright Originality as a requirement for copyright protection has been statutorily recognised in all of the studied jurisdictions in this essay. Creative works were only awarded protection Section 1(1)(a) of the Copyright, Designs and Patents Act 1988 of the United Kingdom, states that “Copyright is a property right which subsists in, Original literary, dramatic or musical works”6, Section 14 (1) of the Copyright Act 1994 of New Zealand states that Copyright is a property right that exists in Original works of literary, dramatic, musical, or artistic works; sound recordings, films, communication works and typographical arrangements”7, Section 102(a) of the Copyright Act of 1976 of the United States provides that “Copyright protection subsists, in accordance with this title, in original works of authorship”8. Therefore, legislations have statutorily imposed the requirement of originality for a protectable work. The author prefers to define originality as the inclusiveness of an identifiable element of creativity within the work. In the case of University of London v University Tutorial Press (1916) 9 Peterson J stated;

“The word original does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought … But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work – that it should originate from the author.”10

An exploration into the justifications for originality illustrates to the author that the purpose originality serves in copyright depends on the eyes from which the observer wishes to see it. From a natural rights perspective, originality, at least in theory, ought to protect the personality of the authors as expressed in their works.11 As a result works that do not reflect the author’s personality (e.g. Works of labour or investment, objective features of works) will not warrant protection.12 However if seen from a reward perspective, where a certain effort has been made in creating a work, the creator may be said to deserve some protection which seems to be a justification which encompasses individuals who exercise labour to gain protection as well.13 Looking at the purpose of originality from a utilitarian perspective, originality can be excepted to sit at a higher level to protect works for the incentives provided by copyright. 14 This view will protect works of investment but may not protect trivial or insubstantial works. The 6Copyright,DesignsandPatentsAct1988(section1(1)(a))(UK)

7Government,NewZealand“Copyrightact1994no143(Section14)

8CopyrightsAct1976(Section102(a)).

9UniversityofLondonvUniversityTutorialPress,[1916]2Ch601

10Ibid(above)


12Ibid(above)

13Ibid(above)

14Wiley,J“CopyrightattheSchoolofPatent”[1991]58UChiLRev119.

5

common understanding of originality is that the work should originate from the author. In other words, the work need not be original in the sense that it must involve any original or inventive thought. In other words, there is no necessity that the work is “novel” as expected in patents. What copyright protects is the expression of an idea and all that is expected is that expression is not copied from another work.15 The idea-expression dichotomy As mentioned above, the law of copyright protects the expression and not the idea of the author. Lord Hoffman in Designer Guild v Russell Williams held that “plainly there can be no copyright in an idea which is merely in the head, which has not been expressed in copyrightable form, as a literary, dramatic, musical or artistic work, but the distinction between ideas and expression cannot mean anything so trivial as that.”16 This also does not mean that protection only extends to the actual expression of the author. If the line is drawn that narrowly, a potential infringer will be able to escape legal repercussions by copying with deliberate changes (colourable copying).17 Lord Hoffman in Designer Guild identified this distinction and stated that “the original elements in the plot of a play or novel may be a substantial part so that copyright may be infringed by a work which does not reproduce a single sentence of the original.”18 Figure 1.1 The Artistic works in question in Designer Guilds v Russell Williams

A clear explanation of the approach to the so-called idea-expression issue is found in the judgment of Learned Hand J in the American case Nichols v Universal Pictures (1930), which concerned an allegation of infringement of the copyright in the plaintiff’ play Abie’s Irish Rose by the defendant’s film The Cohens and the Kellys. It was held,

15Hariani,KrishnaandHariani,Anirudh“ANALYZING‘ORIGINALITY’INCOPYRIGHTLAW:TRANSCENDINGJURISDICTIONAL

DISPARITY”(2011)51.

16DesignersGuildLtdvRussellWilliams(Textiles)Ltd(t/aWashingtonDC),ECDR10(2001)


18DesignersGuildLtdvRussellWilliams(Textiles)Ltd(t/aWashingtonDC),ECDR10(2001)

6

“It is of course essential to any protection of literary property, whether at common-law or under the statute, that the right cannot be limited literally to the text, else a plagiarist would escape by immaterial variations. That has never been the law, but, as soon as literal appropriation ceases to be the test, the whole matter is necessarily at large …“Upon any work … a great number of patterns of increasing generality will fit equally well, as more and more incident is left out. The last may perhaps be no more than the most general statement of what the [work] is about, and may at times consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the [author] could prevent the use of his ‘ideas’, to which, apart from their expression, his property never extended … Nobody has ever been able to fix that boundary, and nobody ever can.”19 Lord Hoffman expressed similar views in Designer Guilds by stating “The more abstract and simple the copied idea, the less likely it is to constitute a substantial part. Originality, in the sense of the contribution of the author’s skill and labour, tends to lie in the detail with which the basic idea is presented.”20 However, Bently and Sherman states that the rule of non-protection of ideas is based on public policy rather than anything else. The exclusion of ideas from protection is a judicial technique which is used to reconcile the divergent interests of copyright owners with those of users, creators and the public.21 This is to ensure that the public is capable of making new works based on the same topic or subject matter and ensures that copyright protection does not undermine the free use of functional ideas. In Navitaire v Easy Jet the owner of a copyright of a source code brought an action against a person who has tried to emulate the functional behaviour of the program without even seeing the source code. The court did not find any infringement as the functional behaviour itself is an idea and therefore not protected.22 Similarly, In Baigent v Random House Peter Smith J held that Dan Brown’s book did not infringe the copyright of the book “The Holy Blood and the Holy Holy Grail” stating that what was taken was facts and ideas of such a level of abstraction that there was no infringement and in holding so the judges reiterated that the line between idea and expression ‘is to enable a fair balance to be struck between protecting the rights of the author and allowing literary development.23 In the recent case of Allen v Bloomsbury, The estate of the Late Adrian Jacobs, alleged that there were 5 main plot elements in his work “Willy the Wizard” and these plot elements were the theme and important to the plot of “Harry Potter and the Goblet of Fire”24. The five plot elements were as follows.

1. The main characters of WTW and Goblet are wizards who are to compete in a wizard contest that they ultimately win.

2. The main characters are required to deduce the exact nature of the main task. 19NicholsvUniversalPicturesCorporation,45F2d(2ndCr)119;7USPQ84(1930).

20Ibid9

21Bently,LionelandSherman,BradIntellectualpropertylaw(4thed,OxfordUniversityPress,UnitedKingdom,2014)at213

22NavitairevEasyjet,RPC(3)111(2006).

23BaigentandLeighvTheRandomHouseGroupLtd,EWCACiv247(2007).

24“HarryPottervwillythewizard”(2006)<http://www.lexology.com/library/detail.aspx?g=ab5aca5c-1ceb-46a1-a76e-

0c6f40ffc940>.

7

3. The main characters uncover the nature of the main task covertly in a bathroom. 4. The main characters complete the main task using information gained from helpers. 5. The main task for the main characters involves the rescue of human hostages

imprisoned by a community of half-human, half-animal creatures.25 It was also presented to the court that based on the above plots, there are further 27 subplots, elements and incidents in willy the wizard which are present in the goblet of fire as well.

Figure 1.2 Covers of Willy the Wizard and Goblet of Fire

26 While the case did not proceed to trial due to technicalities, the following observations can be made. While Kitchin J refused the defendant’s request to grant summary judgment, Applying the principles in Baigent the judge was of the view that similarities on which Mr Allen relied constituted ideas that were relatively simple and abstract and he strongly inclined to the view that they were at such a high level of generality that they fell towards the ideas rather than the expressions.27 A judge in the District Court for the Southern District of New York had said that ''the contrast between the total concept and feel of the works is so stark that any serious comparison of the two strains credulity''.28 But is it? The author believes that the reason why both justices have come to this conclusion is because they have not read either of the books. As a person who has read Harry Potter and the Goblet of Fire, the author feels that the 5 plot elements advocated by Allen, paints a very detailed picture of the elements contained in Goblet of Fire. While the line between idea and expression to ascertain originality is vague, the author is of the opinion that it needs to be flexible as individual cases need to be decided on its own merits. In the United Kingdom at least, the issue of idea-expression arises more with regard to the element of substantial taking when deciding on infringement under section 16 of the Copyrights Designs and Patents Act, rather than when deciding on originality for the purpose of eligibility for protection. The reason is the low threshold of originality that is expected from

25AllenvBloomsburyandJKRowling,EWHC2560(Ch)(2010).

26http://ipkitten.blogspot.co.nz/search?q=allen+v+bloomsbury

27Ibid15

28“HarryPotterplagiarismcasedismissedagainstJKRowling”TheTelegraph(19July2011)

8

the UK courts. However, the situation has changed somewhat after the decision in infopaq which the essay shall discuss later. As the paper mentioned above, while the requirement of originality is stressed statutorily, the legislatures have left the task of developing the requisite standard to be applied to the courts. This has resulted in a number of different tests which have been developed over the years purely by judicial precedent. The United Kingdom and New Zealand (Skill, labour and judgement test) For the purpose of this essay the author narrows the discussion based on this test to the United Kingdom and New Zealand. Both in the UK and New Zealand, for the protection of literary, dramatic, musical and Artistic works (authorial works) they must satisfy the Originality threshold. Considering United Kingdom, however, originality was not required under the very first Copyrights statute The Statute of Ann 1701 and was first seen in the Sculpture Copyright Act of 1814.29 in the United Kingdom, the threshold of originality for many years was considered as spending a level of skill labour and judgement. In Ladbroke (Football) Ltd. v William Hill (Football) Ltd, where it considered the originality of football betting coupons, Lord Reid stated that the skill, labour and judgement criteria is what is used in the United Kingdom to determine originality.30 The same standard is followed in New Zealand as well. In the case of University of Waikato v benchmarking Services Limited (2004)31 The New Zealand Court of Appeal held that the determining fact of originality is whether sufficient time, skill, labour or judgement have been expended in producing the work.32 In the case the court reiterated its own decision in Wham-OMFG Co. v Linclon Industries Ltd (1984) where they said; “The originality that is required by the Act relates to the manner in which the claimant to the copyright has expressed thought or ideas. The Act does not require that the work be novel in form but that it should originate from the author and not be copied from another work.”33 The test is readily applied in many of the English common law countries. It is important to note that the test has three individual elements within it which have resulted in confusion in its application. In Ladbrook v William Hill, Lord Devlin was of the view that while the test should be the exercise of skill, labour and judgement when creating the work, the amount of “skill, labour and judgement” must be substantial or not trivial.34 However, due to the different elements within the test, it has been applied inconsistently, when the work in question requires skill the judges have been more receptive towards protecting the work even if the contribution was minimal, while where the factor in consideration is purely labour, they have been reluctant, unless there is a high contribution of labour. When observing 29Liu,DrDeming“Oforiginality:originalityinEnglishcopyrightlaw:pastandpresent”[2014]EuropeanIntellectualProperty

Review.

30LadbrokevWilliamHill,AllER465,469(1964).

31UniversityofWaikatovbenchmarkingServicesLimited8NZBLC101,561(CA)(2004)

32Finch,Ian(ed)JamesandwellsintellectualpropertylawinNewZealand(ThomsonReuters,NewZealand,2007).

33Wham-OMFGCovLinclonIndustriesLtd,1NZLR641(CA)(1984).

34LadbrokevWilliamHill,AllER(1964)

9

the existing judicial precedent, the level of skill, labour and judgement expected from the author can be deduced as “a minimum”. This standard in many instances does not satisfy the justification for the grant of copyright protection. For example in the case of British Northrop v Texteam Blackburn35 ; Drawings of things such as rivets, screws, studs, a bolt and a length of wire were held to be original. Similarly in High Tech Auto Parts Ltd v Towergate Two (No 1) (2001)36 a drawing of six circles in a hexagonal configuration was treated as copyright. However, in the case of CCH Canadian Ltd v Law Society of Upper Canada (2004) the Supreme Court of Canada attempted to define the three elements. “For a work to be ‘original’ within the meaning of the Copyrights Act, it must be more than a mere copy of another work. At the same time it need not be creative, in the sense of being novel or unique. What is required to attract copyright protection in the expression of an idea is an exercise of skill and judgement. By skill, I mean the use of one’s knowledge, developed aptitude or practical ability in producing the work. By judgement I mean the use of one’s capacity to discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work. The exercise of skill and judgement required to produce the work must not be so trivial that it could be characterised as a purely mechanical exercise. For example, any skill and judgement that might be involved in simply changing the font of a work to produce ‘another’ work would be too trivial to merit copyright protection as an original work”37 The author believes that If the United Kingdom judges define the elements, it will recognise even lower standard works as original. However, this does not mean that there aren’t any examples of works which have failed to meet the threshold of a minimum level of skill, labour and judgement. In the case of Greyhound Racing Association Ltd v Shallis (1923)38 copyright was denied to a list of greyhounds written down in the order in which they were drawn from a hat. In Francis Day Hunter v Twentieth Century Fox Corp39 the court held that the title “the man who broke the bank at Monte Carlo” does not have sufficient originality to justify protection. However due to the existing ambiguity that exits within the definition, in Newspaper Licensing Agency v Meltwater Holdings (2010)40 the Court of Appeal Held inter alia that copyright is capable of subsisting in newspaper headlines which are of course titles. In Sawkins v Hyperion Records (2005) Mummery LJ held, "Originality does not impose the objective standards of novelty, usefulness, inventiveness, merit, quality or value. A work may be completely rubbish and utterly worthless, but copyright protection may be available for it."41 The author is rather perplexed by this statement but however believes that this is the general stance on which the honourable judges of the United Kingdom approaches the issue on

35BritishNorthropLtdvTexteamBlackburnLtd(1974)RPC57

36HighTechAutoPartsLtdvTowergateTwo(No1)(2002))F.S.R.15

37CCHCanadianLtdvLawSocietyofUpper,60IPR650(SCC)(2005).

38GreyhoundRacingAssociationvShallis(1923-28)M.C.C.370

39Francis,Day&HunterLtdvTwentiethCenturyFoxCorp[1939]UKPC68,[1940]AC112(12October1939)

40TheNewspaperLicensingAgencyandothersvMeltwaterHoldingBVandothers,EWCACiv890(2011).

41SawkinsvHyperionRecords[2005]1W.L.R.3281

10

originality. Dr. Deming Liu states that the reasons the law does not impose the merit of a work to be a precondition for Copyright protection was explained by Copinger42 as; "The sole foundation of copyright is the right which every man has to the exclusive possession and control of the product of his own labour. Why should a writing of inferior composition be precluded from being a subject of property? To establish a rule that the quality of a composition must be weighed previous to investing it with the title of property, would be forming a very dangerous precedent. What reason can be assigned why the illiterate and badly spelt letters of an uneducated person should not be as much the subject of property as the elegant and learned epistle of a well-known author? The essence of the existence of the property is the labour used in the concoction; of the composition, and the reduction of ideas into a tangible and substantial form; and can it be contended that the labour is less in the former than the latter one? Every letter is, in the general and proper acceptation of the term, a literary composition. It is that, and nothing else; and it is so, however defective it may be in sense, grammar, or orthography. Every writing in which words are so arranged as to convey the thoughts of the writer to the mind of the reader is a literary composition; and the definition applies just as certainly to a trivial letter as to an elaborate treatise or a finished poem”43 The author is in absolute disagreement with this statement. Copyright is not merely about the protection of exclusive possession and control of a particular work. Copyright law must also pave the way for increasing productivity and creativity within the individual being and society itself. Determining the boundaries of originality based on the above statement has created a scenario in the world where one can gain protection for drawings on rivets, screws, studs etc (British Northrop v Texteam Blackburn) but cannot enforce his right in a more elaborate written work such as the elements of the book (Baigent v Random House) The United State Supreme Court however provides a better justification for its approach. Namely; “It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits. At the one extreme, some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke. It may be more than doubted, for instance, whether the etchings of Goya or the paintings of Manet would have been sure of protection when seen for the first time. At the other end, copyright would be denied to pictures which appealed to a public less educated than the judge. Yet if they command the interest of any public, they have a commercial value — it would be bold to say that they have not an aesthetic and educational value — and the taste of any public is not to be treated with contempt."44 The author believes that the reason for the low threshold of originality expected by the United Kingdom (and other common law nations) has to do with the judges’ attitude towards protection. Looking at the existing legal precedent a clear pattern emerges where the justices attempt at their very best to apply the law to protect a person’s work even with a very low level of originality. This does not appear to do any harm to anyone who might encroach upon the

42Liu,DrDeming“Oforiginality:originalityinEnglishcopyrightlaw:pastandpresent”[2014]EuropeanIntellectualProperty

Review.

43Copinger,WACopinger’sLawofCopyright(London:Stevens&Haynes,1870).

44BleisteinvDonaldsonLithographingCo,188US239,251–252(1903).

11

work as the requirement of substantial taking (at an action for infringement) will only consider elements of the work, which is at a much higher threshold than that of originality. Lord Pierce in Ladbroke v William Hill stated; “The reproduction of a part which by itself (emphasis added) has no originality will not normally be a substantial party of the copyright and therefore will not be protected. For that which would not attract copyright except by reason of its collocation will, when robbed of that collocation, not be a substantial party of the copytight and therefore the Courts will not hold its reproduction to be an infringement. It is this, I think, which is meant by one or two judicial observations that ‘there is no copyright’ in some unoriginal part of a whole that is copyright”45 Similar opinions can be observed in other common law jurisdictions as well. In Land Transport Safety Authority of NZ v Glogau (1991) McGechan J held, “Where the originality is low, it is to be expected that anything other than almost exact reproduction will not support an inference of copyright amounting to infringement, whereas where there is a higher degree of originality in the work an inference of copying will more readily be drawn even where the degree of similarity is less. In this way the reward in the scope of protection will tend to be related to the degree of originality. Retaining a low threshold for protection therefore presents no harm.”46 The European test (Author’s own intellectual creation) In the case of Infopaq v Danske47 the European Court of Justice recognised that the proper test of determining whether a work is original or not, is to see whether it is a result of the author’s own intellectual creation. However, the English Court of Appeal stated in Newspaper Licensing Agency v Meltwater that "The European Court in Infopaq considered the conditions necessary to attract copyright protection and held that a work had to be original in the sense that it was its author’s own intellectual creation. The reference to ‘intellectual creation’ clearly related to the question of origin and not novelty or merit. Accordingly, the Infopaq decision had not qualified the long-standing test established under English law."48 Dr. Demming Liu, commenting on the judgement states that the court misunderstood the judgement of infopaq and says that it is illogical to say that merely because, intellectual creation is a question of origin rather than of novelty or merit it doesn’t qualify the UK test for originality without at least aligning the requirements of the two tests.49 However, in his judgement of SAS Institute Inc v World Programming Limited Levison LJ admits that in the least in the area of databases, the test has changed to the author’s own

45LadbrokevWilliamHill,aboven34

46LandTransportSafetyAuthorityofNZvGlogau,1NZLR261

47InfopaqInt’lA/SvDanskeDagbladesForening,ECRI-6569(19July2009).

48TheNewspaperLicensingAgencyandothersvMeltwaterHoldingBVandothers,EWCACiv890(2011).


Review.

12

intellectual creation because of the Information Society Directive which has raised the bar in obtaining copyright protection.50 Infopaq has become an important milestone of Copyright jurisprudence because it can be cited as the first realistic attempt to harmonise the law affecting copyright as expected by the Berne Convention. While the Convention does not provide that Literary or Artistic works must be the author’s own intellectual creation, Article 2(5) of the Convention states that, “"Collections of literary or artistic works such as encyclopaedias and anthologies which, by reason of the selection and arrangement of their contents, constitute intellectual creations shall be protected as such, without prejudice to the copyright in each of the works forming part of such collections." Liu states that the judges in infopaq believed that the protection of works such as literary and artistic works, presupposes that they are intellectual creations51 and therefore there was no necessity to mention the standard expressly in the Convention’s provisions. In Infopaq, the court was asked to provide guidance on whether extracting 11 words from newspaper articles through computer software constitutes infringement. In applying Directive 2001/29, the court first held that "copyright within the meaning of art. 2(a) of Directive 2001/29 is liable to apply only in relation to a subject matter which is original in the sense that it is its author’s own intellectual creation". The court then examined whether newspapers can be their authors’ own intellectual creations and hence original. As literary works, newspapers can be their authors’ own intellectual creation, which is "evidenced from the form, the manner in which the subject is presented and the linguistic expression". The court held that words as such were not the intellectual creation of the author using them.52 In the case the court makes it clear that the requirement of one’s own intellectual creation as adopted by the Directives has its basis in the Berne Convention.53 "The need for uniform application of Community law and the principle of equality require that where provisions of Community law make no express reference to the law of the Member States for the purpose of determining their meaning and scope, as is the case with art.2 of Directive 2001/29, they must normally be given an autonomous and uniform interpretation throughout the Community."54 While Infopaq did establish the test of author’s own intellectual creation, the question of the test’s extension beyond Directive 2001/29 was of issue as the directive prima facea prescribes the above principle. However in the combined cases of Football Association Premier League Ltd v QC Leisure and Karen Murphy v Media Protection Services Ltd the court said, in determining originality with regard to various works within a broadcast of an event, the test to

50SASInstituteIncvWorldProgrammingLimited,EWCAciv1482(2013)


Review.

52InfopaqInt’lA/SvDanskeDagbladesForening,ECRI-6569(19July2009).


Review.

54InfopaqInt’lA/SvDanskeDagbladesForening,aboven52

13

be applied is the author’s own intellectual creation test as applied in Infopaq.55 and confirmed that the test extends to literary, dramatic, musical and artistic works. The question of whether the test applied in English Law was then discussed in the case of Football Dataco Ltd v Yahoo! UK Ltd which concerned copyright for databases.56 Here the Advocate General in his arguments expressly stated that; the sole criterion to determine whether a database is protectable is establishing that it is the result of the author’s own intellect and does not involve an additional stage of qualification to see the amount of skill and labour that has been incorporated into it.57 The court accepted the view of the Advocate General and stated "[T]he criterion of originality is satisfied when, through the selection or arrangement of the data which it contains, its author expresses his creative ability in an original manner by making free and creative choices… It is clear then that "the intellectual effort and skill of creating that data are not relevant". Whether that selection or arrangement "adds important significance" to the data is irrelevant. The test of labour and skill is not enough; rather, the sole test is whether the database is the author’s own intellectual creation.”58 Bently, states that the adoption of a generalised standard of originality has a number of advantages.59 Firstly it makes the European copyright regime more coherent and in addition it will remove certain difficulties that may rise from the failure to harmonise the work concept. However, he says that commentators have questioned, the legitimacy of deepened harmonisation from a constitutional perspective and highlighted on the uncertainties brought about by wide judicial activism. Although the European standard appears to be higher than the UK standard for originality, in practice, at most instances it will result in similar results. However, Bently identifies six instances where there will be differences between the tests. Namely, where the work is a result of mere labour, where creativity is involved in the creation of data, where the work is a product of mere skill, where the creative contribution to the work is at the “pre-expressive” stage”(abstract), where the creative contribution is regarded as being of the wrong kind and where the creative contribution is trivial.60 Considering the first scenario, In the UK, the position used to be that the mere exercise of routine labour (or “sweat of the brow”) was sufficient to confer originality on such works. Thus, in Collis v Cater (1898), it was held that copyright subsisted in a dry list of ordinary medicines sold by a chemist, arranged in alphabetical order, which had required labour, or expense and trouble, but no literary skill, in its compilation.61 Similarly in BBC v Wireless League Gazette Publishing Co. (1926) the compilers effort to chronologically arrange a list of television programmes was considered sufficient to satisfy originality even though the author 55FootballAssociationPremierLeagueLtdvQCLeisureandKarenMurphyvMediaProtectionServicesLtd(C-403/08andC-

429/08)[2011]E.C.R.I-9083;[2012]1C.M.L.R.29

56FootballDatacoLtdvYahoo!UKLtd(C-604/10)[2012]ECDR7,

57FootballDatacoLtdvYahoo!UKLtd,aboven56

58FootballDatacoLtdvYahoo!UKLtd,aboven56


60Aboven21

61CollisvCarter[1898]78LT613,

14

might not have exercised skill and judgment.62 Work such as this might not be capable of receiving protection under copyright law. However, it needs to be emphasised that protection has been granted in copyright for labour, only where the contribution of labour has been substantial. In Cramp v Smythson (1944), The selection of seven tables at the front of a diary, consisting of things such as days and dates of the year, tables of weights and measures and postal information was held to be non-original.63 In cases such as this, the court had to determine whether the labour exerted by the purported author was trivial or common place. However, the author agreeing with Bently, states that it is obvious that quantitative labour cannot be a consideration under the EU test. It is difficult to see how an “amount” of physical effort can be seen as an “intellectual creation” which reflects the author’s personality.64 Another area where the difference needs to be explored as identified by Bently is where mere skill has been exercised to create the work. Walter v Lane can be cited as an example, where the House of Lords expressly recognised the copyright in newspaper reports of speeches because the skill involved in reducing to writing the words of a person speaking live, which requires considerable training.65 In SAS Institute v World Programming, it was said that the mere existence of skill is irrelevant in the assessment of whether there is “intellectual creation”.66 The Advocate General stated in SAS Institute; “In order to determine whether a computer program is eligible for legal protection under copyright, account should be taken not of the time and work devoted to devising the program nor of the level of skill of its author but of the degree of originality of its writing.”67 However, the author believes that this this category is an over simplification of the situation by Bently. An artist draws or creates a sculpture using skill which he has honed over years, so does a photographer. Wouldn’t their works be a representation of their skill which will qualify under the new test? It is the author’s belief that the opinion expressed by the Governor General in SAS Institute is specific to the case and should not be taken out of context. However, a case which might fit in this description would be Sawkins v Hyperion Records.68 In the case the claimant, the musicologist Lionel Sawkins made performance editions of musical works composed in the seventeenth and eighteenth centuries. Hyperion argued that reconstructed and edited works are not original as Sawkins have not added any new music over and above the original.69 The Court of Appeal held that Sawkins's editorial interventions were still “original” within the meaning of copyright law despite the fact that his editorial skill and effort did not create “new music” produced playable editions from which the music can be realised in the same way as it once presumably sounded.70 Bently says that under the European

62BBCvWirelessLeagueGazzettePublishingCo,Ch433(1926).

63CrampvSmythson,AC329(1944).


65WaltervLane,AC539,551(1900).

66SASInstitutevWorldProgramming,CaseC-406/10(2012).

67SASInstitutevWorldProgramming,Case,aboven63

68SawkinsvHyperion,1WLR3281(2005).

69SawkinsvHyperionRecords,aboven68

70SawkinsvHyperionRecords,aboven68

15

test Sawkin’s skills that was used to convert the old formats to make them understandable tody may not be regarded as sufficient to constitute “intellectual creation”.71 Considering the category “Creativity of the wrong kind” Bently identifies that while the EU standard may be higher generally than the UK standard, it will not be the case with regard to every category of work.72 For example UK courts have generally been reluctant to accept contributions to derivative works as they were of the “wrong kind”. In the case of Interlego v Tyco the legal issue was whether the drawings of Lego bricks made in 1973 based on earlier drawings, was sufficient to satisfy an original work. The differences between the works are, the sharpening of the outer edges of the tubes of the bricks, changes in tolerances and increasing the radii of the knobs on the bricks from 0.2mm to 0.3mm.73 Out of these changes only the first was shown through pictures while the other changes were made by letters and figures. The Privi Council held that while the changes were technical important, they were not sufficient to render the work original because in the case of artistic work, the changes must be visually significant.74 However, under the new test, there is no requirement for the contribution to be different for different categories of work. The court would consider whether the addition of the text to the traced drawings of the bricks involved creativity. Bently however states that the decision would not have changed under the new test as originality will not be conceived in terms of skill.75 Barring databases, it is still unclear on what the existing test for originality is in UK. The difficulty arises from the fact that the legislature has not expressly stated anything about the fact when implementing the directives.76 Therefore judges have interpreted the Copyrights Designs and Patents Act 1988 to comply with the directives as was seen in the case of Temple Island Collections Ltd v New England Teas Ltd where it was held that the image of a London double decker bus crossing Westminster bridge with the bus was in colour and the background was in black and white, was original in the European sense. Figure 2.1 Temple Island Collection image (left) and the New England Teas image (left)


72Ibid(above)

73InterlegovTycoIndustries,AC217(1989).

74InterlegovTycoIndustriesn7375Bently,LionelandSherman,BradIntellectualpropertylaw(4thed,OxfordUniversityPress,UnitedKingdom,2014).

76Ibid(above)

16

However, if recent jurisprudence is of any reference, it can be argued that the United Kingdom continues to protect works under copyright that are merely original under the old UK skill labour and judgement test. However, the author feels that it is important to note, that unless Britain exists the European Union, the test of “author’s own intellectual creation” will soon replace the old “skill labour and judgement” test of originality which has served the UK for many years. Position in the United States (minimum degree of creativity test) Before the case of Feist v Rural Telephone Service Company, the United States Courts held that Originality had two distinct elements; namely; “independent creation” and “a subjective element”.77 The first element was very straight forward. It meant that for a work to be original, in the sense, an author must create it independently of other pre-existing works. However according to Russ Verstegg, the courts couldn’t determine specifically, what the second element is. In Feist v Rural Telephone Service Company, the United States Supreme Court held that Feist had not infringed Rural’s Copyright because the latter’s alphabetized white page directory lacked originality necessary to be copyrightable.78 for a work to be original under the meaning of the Copyrights Act, it must be (1) Independently created and (2) must exhibit a modicum of creativity.79. In making the judgment, the court in feist rejected the “sweat of the brow” doctrine. In the Feist case, Court defined the subjective element of originality as a modicum of creativity. In the case of Atari Games Corp v Oman Justice Ginsburg construed that after referring to established judicial precedents, the requirement “modicum of creativity” will mean that there must be a more than trivial variation/ a material variation. Verstegg states that from the 77Yu,PeterKIntellectualpropertyandinformationwealth:Issuesandpracticesinthedigitalage(GreenwoodPublishingGroup,

NewDelhi,2006).

78FeistPublications,Inc,vRuralTelephoneServiceCo,499US340(1991)

79Ibid(above)

17

explanation given by Justice O’Connor in the case, works that can be categorised as Mechanical, entirely typical, garden variety, obvious, basic information, mere selection, an age old practice, firmly rooted in tradition, so commonplace that it has come to be expected as a matter of course, practically inevitable or a time honoured tradition; does not meet Feist’s “de Minimis quantum of creativity.80 Verstegg says that making “creativity” a requirement for copyright, creates a trap.81 It will create a scenario where the judges are free to assume that creativity entails something greater than independent creation. Leo Raskind stated that “in the short run, i.e. within the next five or so years, the feist decision shall almost certainly lead some lower court judges to narrow the scope of protection for the factual components of directories, maps, databases, computer software programmes, and kindred fact works.”82 They are free to demand what may amount to novelty, ingenuity, imagination, or a high degree of aesthetic merit all for the purpose of achieving “creativity” and judges are free to manufacture their own definitions.83 In addition this may be used as a weapon by defendents by arguing that the first work is not “creative” and thus cannot be protected by copyright. Authors may simply lose the incentive to create certain types of works such as directories and databases, where “creativity” is questionable. Professor Ginsburg stated “ Although the controversy in Feist concerned only the white pages, the decision’s standard of originality-emphasizing creativity of selection or arrangement of data-threatens to remove other classes of compilations from copyright as well.84 In Southco Inc v Kanebridge Corp., The Third Circuit held that Southco’s parts numbering system for screw fasteners was not copyrightable because it lacked creativity.85 In Johnson v Gordon the Tribuna held that “harmonic progression which is a stereotypical building block of musical composition, lacks Originality.86 Verstegg says that in the latter case, the judges citing Feist says that “virtually by definition, expressions that are common are also unoriginal” which according to him is a gross overstatement.87 “Being merely common does not constitute the lack of originality. It is being very common as to be expected as a matter of course or practically inevitable that does”.88 While Feist can be considered a landmark judgement, it is important to admit that incorporating “creativity” without precise boundaries is not of the best interest to copyrights. However, Justice Ginsburg demonstrated in in Atari Games Corp v Oman that it is preferable to interpret the Feist creativity requirement on whether the work in question contains some material variation.89

80Versteeg,Russ“OriginalityandCreativityinCopyrightLaw”.

81Ibid(above)

82Raskind,LeoJ“AssessingtheImpactofFeist”17UDaytonLRev331(1992).


84Ginsburg,Jane“No‘Sweat’?CopyrightandOtherProtectionofWorksofInformationAfterFeistvRuralTelephone”92,ColumL

Rev338,348.

85Southco,IncvKanebridgeCorp,390F3d276,281(2004).

86JohnsonvGordon,409F3d12(1stCir2005)


88Ibid(above).

89AtariGamesCorpvOman9,979F2d,242,246(DCCir1992)

18

Verstegg believes that this approach suits better for the future of copyright and fits better in justifying the existing Judicial dicta on this matter. Courts have seemingly applied this approach in practice. In Assessment Technologies v Wiredata, Justice Posner cited Feist for the proposition that copyright law unlike the law of patents, does not require substantial originality.90 However, US courts have not consistently appreciated the “material variation” standard. In the case Matthew Bender & Co v West Publishing Co. Justice Jacobs framed the issue in question as “Whether West’s alterations, when considered collectively, demonstrate sufficient originality and creativity to be copyrightable.”91 Quoting Feist the court held that West’s enhancements to the captions, courts and date information were “insubstantial, unoriginal and uncreative” and the names of attorney’s firm’s and cities of practice were entirely typical and garden variety.92 US commentators agree that having a low standard of creativity is best for the development of copyright law and it will be better if US courts omit the word “creativity” completely when deciding on eligibility of protection under copyright.93 Russ states that when the Copyrights office proposed “creativity” to be included as a factor for copyright protection, they did not recommend a definition.94 The Chairman of the American Patent Law Association stated that that it is a retrogressive step to try to introduce the element of creativeness in addition to originality as a test. The term “originality” has a judicial history. By adding the term “creative” [will create confusion] similar to adding the same in patent law.95 However, it is the Author’s belief that the answer to the word “creativity” is to define it as “intellectual creation”. The first step of the Fiest test recognises that the contribution must be the author’s own. The second step requires the element of creativity which can be defined in light of the European Union test. In the author’s opinion, because there is no proper definition for creativity, the US test appears to be of a higher threshold than the EU test. However, a person who is supportive of the feist approach may argue that the higher standard might be required because the regime of copyright enforcement in the United States is a registered one. Therefore, at the point an action arises in court, they have already determined that the work is original. In summary, when looking at the tests on the threshold it requires, the author feels that the lowest expected threshold is the skill, labour and judgement test, the highest is rather ironically the modicum of creativity test and the Author’s own intellectual creation test of the EU fits rather conveniently in the middle.

Part II

90AssessmentTechnologiesvWiredata,350F3d640(7thCir1998).

91MatthewBender&CovWestPublishingCo,158F3d674(2dCir1998).

92Ibid(above).

93Versteeg,Russ“OriginalityandCreativityinCopyrightLaw

94Aboven83

95omnibusCopyrightRevisionLegislativeHistory

19

Should the requirement of Originality be harmonised?

a. Treating Copyright as a human right The main reason that the author believes that the test of determining originality should be harmonised is because copyrights in itself should be considered a human right. Article 27(2) of the Declaration of Human Rights states that; " Everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author."96 This standard has been then further reiterated in Article 15 of the International Covenant on Economic, Social and Cultural Rights (ICESCR). Jens Bammel, states that Copyright protection itself isn’t per say a human right, but it is the tool which protects the human rights of the authors and publishers.97 The reason why the author believes that out of the requirements of copyright, originality is the one what needs to be harmonised is because that is the only requirement of copyright which directly evaluates the human that created the work. In the current scenario, an author in the UK will be judged for his creativeness based on the skill labour and judgement which he used on his work while in the European Union the same author will be judged based on the “intellectual expression that appears in the work” which is a relatively higher standard. The standard is practically even higher in the United States. The author is finding it difficult to come to terms with the fact that individuals have been given equal fundamental rights as of right of being born. But they will be judged differently for the work they create, based on the jurisdiction within which they give birth to their work. In other words, the same intellectual output (the work) will be judged differently depending on where you create it. To be consistent with the ICESCR, a human rights approach to copyrights (and intellectual property law in general) requires the type and level of protection awarded directly facilitate the promotion of the field in question and should do so in a manner that will broadly benefit members of society on an individual, as well as collective level.98 In hindsight these are the same goals of copyright law as well namely, the promotion of creativity and protection of individual authors’ and owners’ rights. When taken prima facea, the most efficient method of achieving these goals is having a harmonised standard of qualification for copyright. Since the requirement of recorded in writing or otherwise is universally accepted and the third requirement of sufficient connection is almost futile after the Berne Convention and WIPO treaties, the burden falls on the law makers to harmonise originality. While in theory, treating copyright law as a human right sounds promising, commercialisation has implemented market considerations which needs to be considered when implementing policy. Therefore the author has to concede that looking at copyright law “purely” in the eyes of a branch of human rights law is not practical. However, as discussed below, a harmonised standard does make better financial sense as well.

b. International Law

96TheUniversalDeclarationofHumanRights1948(Article27(2))

97CopyrightandhumanrightsanIPAspecialreport.

98Chapman,AudreyRAHUMANRIGHTSPERSPECTIVEONINTELLECTUALPROPERTY,SCIENTIFICPROGRESS,ANDACCESSTO

THEBENEFITSOFSCIENCE.

20

Another reason for harmonisation is due to international influences. Over the years’ international conventions have called for increased harmonisation between participating member nations. The first and most significant convention in force is the Berne convention which dealt with copyright on the Protection of Literary and Artistic Works.99 Bently identifies two key provisions of the Convention which deals directly with harmonisation. The first is the adoption of the principle of “National Treatment”.100 Article 5of the Convention provides that a country of the Union should not discriminate between its own nationals and those of other countries of the Union101 and secondly it requires that “enjoyment and exercise” of copyright in the works of the convention must not be subject to any formality.102 (This provision can be seen to be violated by many nations who require registration of the work for protection. Eg – United States, Sri Lanka) However, with regard to harmonisation of originality, the “national treatment” principle needs to be scrutinised. The effect of this provision for example is that “French law was obliged to confer the same rights on a British author as it conferred on French authors”. 103Article 5(3) says that Protection in the country of origin is governed by domestic law. However, when the author is not a national of the country of origin of the work for which he is protected under this Convention, he shall enjoy in that country the same rights as national authors.104 This according to the author is quite baffling. It means that an author who could not gain protection in the United States under the Feist test can be protected in the UK due to the lower standard of originality and of cause the national treatment principle. It is the author’s opinion that the drafters of the convention expected the participating nations to have a uniform standard of originality and other requirements of protection by the time the convention came into force. A significant step in the furtherance of the principles of the Berne Convention can be found in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which stated that members must implement Articles 1-21 of the Berne Convention (Barring article 6bis).105 The most significant feature of TRIPS is that disputes over provisions of the Berne Convention can now be discussed in the World Trade Organisation which has more legal significance and included The National treatment principle is not limited to the Berne Convention. The Rome Convention which extended to the rights of phonogram, producers, performers and broadcasters also advocates towards national treatment.106 It provides that national treatment must be provided to performances that takes place in a contracting state, or which are embodied on protected sound recordings carried by a protected broadcast, sound recordings produced by nationals of a contracting state, fixed in a contracting state, or first published in a contracting state, and

99“WIPO-Administeredtreaties:Berneconventionfortheprotectionofliteraryandartisticworks”

<http://www.wipo.int/treaties/en/text.jsp?file_id=283698>.

100Bently,LionelandSherman,BradIntellectualpropertylaw(4thed,OxfordUniversityPress,UnitedKingdom,2014)

101WIPO-Administeredtreaties:Berneconventionfortheprotectionofliteraryandartisticworks”(Article5)

102Ibid(above)


104104WIPO-Administeredtreaties:Berneconventionfortheprotectionofliteraryandartisticworks”(Article5(3))

105“AgreementonTrade-RelatedAspectsofIntellectualPropertyRights(TRIPS)(Art.2)

106Bently,LionelandSherman,BradIntellectualpropertylaw(4thed,OxfordUniversityPress,UnitedKingdom,2014),Rome

ConventionfortheProtectionofPerformers,ProducersofPhonogramsandBroadcastingOrganizations.Art.7

21

broadcasts where the broadcasting organisation is situated in a contracting state or the broadcast is transmitted from a contracting state.107 However, with regard to enforcement and effect in the present context, the WIPO Copyrights Treaty can be seen as the most effective of all. While it was enacted more in the form of a protocol to the Berne Convention,108The most important change of course is transferring the supervision of many provisions under the TRIPs to WIPO.109 The most important provision in the author’s opinion in the author’s opinion is Art. 22 which states that there are no reservations allowed for members of the treaty.110 However the treaty does allow mutatis mutandis with regard to Article 2 to 6 of the Berne Convention which can be seen in the domestic legislations used to incorporate the Treaty such as the Digital Millennium Copyright Act adopted by the United States. However it is important to note that all member states have agreed that the future of copyright jurisprudence should revolve around harmonisation and as the author has highlight, this can only be achieved where the human element is judged similarly. The best examples of the occurrence of effective harmonisation can be seen within the European Union. The relevant European Union Directives as modelled on the Berne Convention can be cited as follows. The author wishes to highlight that all the mentioned provisions give prominence to the uniform originality threshold that is sought to be achieved. Directive 91/250 on the Legal Protection of Computer Programs inter alia provides that computer programs shall be protected as literary works within the meaning of the Berne Convention and that: "A computer program shall be protected if it is original in the sense that it is the author’s own intellectual creation. No other criteria shall be applied to determine its eligibility for protection."111 . Article3(1) of Directive 96/9 on the Legal Protection of Databases provides that: "[D]atabases which, by reason of the selection or arrangement of their contents, constitute the author’s own intellectual creation shall be protected as such by copyright. No other criteria shall be applied to determine their eligibility for that protection."112 Directive 2006/116 on the Term of Protection of Copyright and certain related rights provides that: "Photographs which are original in the sense that they are the author’s own intellectual creation shall be protected ... No other criteria shall be applied to determine their eligibility for protection. Member States may provide for the protection of other photographs."113 107RomeConventionfortheProtectionofPerformers,ProducersofPhonogramsandBroadcastingOrganizations.(Art.4,Art.5)


109Ibid(above)

110WIPOCopyrightTreaty(1996)(Art.22).

111CouncilDirective91/250/EECof14May1991

112Directive96/9/ECoftheEuropeanParliamentandoftheCouncilof11March1996

113DIRECTIVE2006/116/ECOFTHEEUROPEANPARLIAMENTANDOFTHECOUNCILof12December2006

22

As we can observe, the European Union has taken the standard of originality prescribed in the Berne Convention and applied it in practice as well (Infopaq v Danske) However, while this is a significant step with regard to harmonisation, Bently says that it had very little harmonising effect.114 In almost every directive, there are provisions which tolerate a level of difference between member states. Terms Directive (2006/116) Article 5 and 6 allows member states to protect “non-original” photographs and critical and scientific publications of works that have fallen into the public domain.115 In this provision, the term non-original means, non-original in the European standard. Therefore, in such an instance local jurisdictions which have different originality standards (UK, Germany) can apply their own unique threshold to protect a work. While continental Europe have taken significant steps towards harmonisation, in practice a “directive” does not have the same implications as a statute. However, there have been an attempt at codifying the existing directives of European copyright law. A proposal has been made, to give consideration towards the Creation of a European Copyright Code which gives indivisible copyright throughout Europe while pre-empting national legislation.116 Following this proposal and ideology, the Wittem Project was initiated in 2002. It was a collaboration between copyright scholars across the European Union concerned with the future development of European copyright law. The project has its roots in an International Network Program run by three Dutch universities (Radboud University of Nijmegen, University of Amsterdam and Leiden University), and sponsored by the government-funded Dutch ITeR Program.117 The Preamble to the code identifies that 20 years of harmonisation has only achieved partial harmonisation in certain aspects and states further; “that the establishment of a fully functioning market or copyright protected works in the European Union, as necessitated in particular by the Internet as the primary means of providing information and entertainment services across the Member States, requires common rules on copyright in the EU that reflect and integrate both the civil and common law traditions of copyright and authors’ right respectively;”118 through the above statement the members of the Wittem board admits that for a fully functioning market in a regional economy, there needs to be uniformity with regard to the law. Following this notion Article 1.1 of the Code states that; (1) Copyright subsists in a work, that is to say, any expression within the field of literature, art or science in so far as it constitutes its author’s own intellectual creation.(emphasis added)119 114Bently,LionelandSherman,BradIntellectualpropertylaw(4thed,OxfordUniversityPress,UnitedKingdom,2014)

115DIRECTIVE2006/116/ECOFTHEEUROPEANPARLIAMENTANDOFTHECOUNCILof12December2006(Art.5,Art.6)


117“Europeancopyrightcode-introduction”(2010)<http://www.copyrightcode.eu/>.

118Europeancopyrightcode20101231(2010).

119Bing,JonandothersEuropeancopyrightcode(2010).

23

The Code gives us the first real example of a codified originality threshold which is consistent with international regulations. Since European copyright law must operate within the confines of the international commitments of the European Union and its Member States, the Code has been drafted taking into consideration many provisions of the Berne Convention, TRIPS agreement and the already existing provisions of the European Union directives on this area. Howevef it is important to note that the Code is not European Union “Legislation”. Dr. Mihály Ficsor says that the “European Copyrights Code” (Hereinafter referred to as ECC) does not deal with many of the most important matters that govern the field of copyrights. He points out that the ECC;

• Does not cover related rights, • Does not include provisions on the sui generis rights of database makers, • Does not deal with the questions of contracts, • Does not address the issues of collective management, • Does not contain norms on the protection of technological protection measures and • rights management information, • Does not extend to the obligations concerning enforcement of rights.120

He is of the opinion that the Code is not representative of the principles and values of the EU and highlights this by showing the non-exhaustive list of works prescribed in the Code.121

c. Private Globalisation This is the best example that the general public is ahead of the global legislation with regard to harmonised intellectual property law. With globalisation we have seen the emergence of new communities and organisations which are driving the direction of intellectual property law.122 They have the ability to influence law making bodies directly or force them to react by forcing the public to react accordingly. Kathy Bowrey, Categorises the “new” spaces where copyright law is being discussed in technology and policy direction by Private individuals and bodies.

• Engineering communities like The Internet Engineering Task Force (IETF) responsible for developing technical standards for the internet;

• Open source communities and corporations who establish global licensing conditions; • Proprietary multinational corporations like Microsoft, Time-Warner, Walt Disney,

Sony • Trade negotiators - whose work is largely conducted in secret on behalf of national

Governments, leading to agreements that direct national law reform agendas; • Globalised lawyers and economists representing nation states in global forums like

ICANN and WIPO and involved in negotiating other international agreements;

120Ficsor,MihályAnimaginary“Europeancopyrightcode”andEUcopyrightpolicy(2012).

121Ibid(above)

122Bowrey,Kathy“Canweaffordtothinkaboutcopyrightinaglobalmarketplace?”

24

• activists, users and consumers - who, by their communication practices and technological behaviour indirectly influence legal policy and the legal strategies of others123

The entities mentioned above operate in a global scale and in probably one of the least regulated areas in the world and arguably the most important, for the future of our society and in a vast scale. The unavailability of a harmonised system of laws on one hand creates inefficiencies worth millions of dollars and on the other provides loop holes which can be exploited. Obstacle to a harmonised standard of originality Traditional Cultural Expressions In the author’s opinion, protection of traditional cultural expressions can be an obstacle for the creation of a global test on originality. Intellectual Property Law have consistently failed in providing adequate protection to traditional cultural expressions. In Bulun Bulun v R & T Textiles, an Indigenous elder argued that an artwork created by a member of his community in accordance with customary law was the product of communal authorship and, as such, the court ought to recognise his community’s interest in any copyright subsisting in the artwork. Although the Federal Court of Australia expressed its sympathy for this cause, it admitted that its constrained by the limits of existing legal concepts to be able to offer much effective relief, acknowledging the inadequacies of copyright law’s provisions in this context.124 However in the case of Milpurruru v Indofun the court held that Indigenous artworks which depicted pre-existing clan-owned designs were original works in which copyright subsists because of the skill and judgment exercised by the artist in the interpretation of those works.125 The author observes that in the above case, the test of originality that was applied was a “level of skill, labour and judgement” and believes that if the test “author’s own intellectual creation was applied instead, it was highly likely that the work wouldn’t have been given protection under copyright. The reason for this is that the old English Common Law test gives recognition expressly to skill and mere labour as well, if there is a necessity. Most cultural works as seen from the eyes of the modern human will have to be considered as a work of labour and at times, skill rather than an author’s own intellectual creation. This can be seen in New Zealand as well with regard to Maori cultural expressions. These by nature are derivative works based on accurate “reproduction” of cultural and spiritual material. However, it needs to be emphasised that “originality threshold is only one of the many issues we find with regard to the protection of traditional cultural expressions in terms of what we understand as “Copyrights Law”. Many commentators have pointed out that the best method to protect such works is by having sui generis legislations which deals specifically with traditional expressions.126 The author believes that this is a suitable alternative as it will allow the legislature of the jurisdiction in consideration to assess what constitute cultural expressions according to their subjects. 123Ibid(above)

124BulunBulunvR&TTextiles(1998),86FCR244

125MlpurrurruvIndofun(1994),54FCR240

126Simone,Daniela“Dreamingauthorship:copyrightlawandtheprotectionofindigenousculturalexpressions”[2015]European

IntellectualPropertyReview.

25

Opinion and Conclusion The paper has discussed in depth, the tests for originality that exits in different jurisdictions and explored the callings and need for a globally uniform threshold of originality. However, which test should actually be adopted? Or should a whole new test need to be created? The author believes that there is no practical advantage of trying to develop a whole new test. According to the author, the most appropriate test of the three in consideration, to be applied globally is the “author’s own intellectual creation” test. The reasons for the author’s opinion are as follows; Firstly, it has been recommended by the international conventions which governs international intellectual property law. (Berne Convention, WIPO copyrights treaty, TRIPS). Therefore, for countries which have already ratified these treaties, the incorporation of the standard into the domestic legal system would not entail much cost or time. In addition, if the abruptly made “European Copyrights Code” is of any indication, development of any new concept of copyright needs years of research. The author believes that the copyright law does not have the time to develop such a test from scratch. Secondly, it can be identified as the test which causes the least change in the existing legal regimes. Regardless of whether the nation followed the Skill Labour and Judgement test (English common law jurisdictions) or the minimum degree of creativity test (United States), due to the objective approach adopted by the test which constitutes elements of “skill, labour, judgement and creativity” albeit a few exceptions, existing legal precedent of the domestic court structure will stand. Thirdly, there is actual empirical evidence that the rest works in practice and between jurisdictions. The European Union has expressly followed the test since Infopaq without any major hiccups within countries which follows different legal traditions (Civil Law and Common Law) and significant cultural differences. The only untested element within the test itself is how it may affect economic considerations as Europe in General have similar economies. Fourthly and mainly the author believes that it satisfies and enhances the purpose of having copyright law. It is the author’s personal belief that for the promotion of creativity or novelty, the threshold of creativity expected must be kept at a level where it’s not impossible to meet, but is challenging. Nothing in this world was achieved when it was comfortable. All creations of mankind were made to make life easier for us. Not the other way around. The author is adamant that the adoption of the global threshold needs to materialise as soon as possible. If the Conventions that have been adopted by countries over the past 50 years is of any indication, copyright law is changing and growing more rapidly than ever before. Its time every human being is judged for their intellectual creations on the same level. What actually hinders intellectual progress, is not the mainly the test but the knowledge that you are treated differently.

26

Only one thing is impossible for God: To find any sense in any copyright law on the planet.

-Mark Twain

Bibliography

1. Walter v Lane, AC 539,551 (1900). 2. Bleistein v Donaldson Lithographing Co, 188 239, 251–252 (1903). 3. BBC v Wireless League Gazzette Publishing Co, Ch 433 ( 1926). 4. Nichols v Universal Pictures Corporation, 45 F2d (2nd Cr) 119; 7 USPQ 84 (1930). 5. Cramp v Smythson, AC 329 (1944). 6. Ladbroke v William Hill, All ER 465, 469 (1964). 7. Wham-OMFG Co v Linclon Industries Ltd, 1 NZLR 641 (CA) (1984). 8. Interlego v Tyco Industries, AC 217 (1989). 9. Land Transport Safety Authority of NZ v Glogau, 1 NZLR 261 (1991). 10. Designers Guild Ltd v Russell Williams (Textiles) Ltd (t/a Washington DC), ECDR

10 (2001). 11. Southco, Inc v Kanebridge Corp, 390 F3d 276,281 (2004). 12. Sawkins v Hyperion, 1 WLR 3281 (2005). 13. CCH Canadian Ltd v Law Society of Upper, 60 IPR 650 (SCC) (2005). 14. Navitaire v Easyjet, RPC (3) 111 (2006). 15. Baigent and Leigh v The Random House Group Ltd, EWCA Civ 247 (2007). 16. Infopaq Int’l A/S v Danske Dagblades Forening, ECR I-6569 (19 July 2009). 17. Allen v Bloomsbury and JK Rowling, EWHC 2560 (Ch) (2010). 18. The Newspaper Licensing Agency and others v Meltwater Holding BV and others,

EWCA Civ 890 (2011). 19. SAS Institute v World Programming, Case C-406/10 (2012). 20. SAS Institute Inc v World Programming Limited, EWCA civ 1482 (2013). 21. University of London v University Tutorial Press, [1916] 2 Ch 601

27

22. Football Association Premier League Ltd v QC Leisure and Karen Murphy v Media Protection Services Ltd (C-403/08 and C-429/08) [2011] ECR I-9083; [2012] 1 CMLR 29,

23. Football Dataco Ltd v Yahoo! UK Ltd (C-604/10) [2012] ECDR 7, 24. Collis v Carter [1898] 78 LT 613, 25. Feist Publications, Inc, v Rural Telephone Service Co, 499 US 340 (1991), 26. Johnson v Gordon, 409 F3d 12 (1st Cir 2005) 27. Atari Games Corp v Oman 9, 979 F2d, 242, 246 (DC Cir 1992) 28. Assessment Technologies v Wiredata, 350 F3d 640 (7th Cir 1998) 29. Matthew Bender & Co v West Publishing Co, 158 F 3d 674 (2d Cir 1998) . 30. Bulun Bulun v R & T Textiles (1998), 86 FCR 244 . 31. Mlpurrurru v Indofun (1994), 54 FCR 240 . 32. Copyright, Designs and Patents Act 1988 . 33. The Universal Declaration of Human Rights 1948 (Article 27(2)) . 34. Copyrights Act 1976 (Section 102(a)) . 35. Council Directive 91/250/EEC of 14 May 1991 . 36. Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 . 37. DIRECTIVE 2006/116/EC OF THE EUROPEAN PARLIAMENT AND OF THE

COUNCIL of 12 December 2006 . 38. Bently, Lionel and Sherman, Brad Intellectual property law (4th ed, Oxford

University Press, United Kingdom, 2014). 39. Colston, Catherine and others Modern Intellectual Property Law (3rd ed, Cavendish

Pub, New York, 2010). 40. Copinger, WA Copinger’s Law of Copyright (London: Stevens & Haynes, 1870). 41. Finch, Ian (ed) James and wells intellectual property law in New Zealand (Thomson

Reuters, New Zealand, 2007). 42. Yu, Peter K Intellectual property and information wealth: Issues and practices in the

digital age (Greenwood Publishing Group, New Delhi, 2006). 43. Bowrey, Kathy “Can we afford to think about copyright in a global marketplace?” 44. Breyer, Stephen “The uneasy case for copyright: A study of copyright in books,

Photocopies, and computer programs” (1970) 84 Harvard Law Review 281. 45. Ginsburg, Jane “No ‘Sweat’? Copyright and Other Protection of Works of

Information After Feist v Rural Telephone” 92, Colum L Rev 338, 348. 46. Hariani, Krishna and Hariani, Anirudh “ANALYZING ‘ ORIGINALITY ’ IN

COPYRIGHT LAW: TRANSCENDING JURISDICTIONAL DISPARITY” (2011) 51.

47. Liu, Dr Deming “Of originality: originality in English copyright law: past and present” [2014] European Intellectual Property Review.

48. Rahmatian, Andreas “Originality in UK copyright law: The old ‘skill and labour’ doctrine under pressure” [2013] International Review of Intellectual Property and Competition Law.

49. Raskind, Leo J “Assessing the Impact of Feist” 17 U Dayton L Rev 331 (1992). 50. Simone, Daniela “Dreaming authorship: copyright law and the protection of

indigenous cultural expressions” [2015] European Intellectual Property Review.

28

51. Versteeg, Russ “Originality and Creativity in Copyright Law”. 52. Wiley, J “Copyright at the School of Patent” [1991] 58 U Chi L Rev 119. 53. Rome Convention for the Protection of Performers, Producers of Phonograms and

Broadcasting Organizations. 54. “Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)”. 55. Bing, Jon and others European copyright code (2010). 56. Chapman, Audrey R A HUMAN RIGHTS PERSPECTIVE ON INTELLECTUAL

PROPERTY, SCIENTIFIC PROGRESS, AND ACCESS TO THE BENEFITS OF SCIENCE.

57. Ficsor, Mihály An imaginary “ European copyright code ” and EU copyright policy (2012).

58. European copyright code 2010 123 1 (2010). 59. Copyright and human rights an IPA special report. 60. Government, New Zealand “Copyright act 1994 no 143” (13 April 2016)

<http://www.legislation.govt.nz/act/public/1994/0143/latest/DLM345918.html>. 61. “Harry Potter v willy the wizard” (2006)

<http://www.lexology.com/library/detail.aspx?g=ab5aca5c-1ceb-46a1-a76e-0c6f40ffc940>.

62. “European copyright code - introduction” (2010) <http://www.copyrightcode.eu/>. 63. “WIPO-Administered treaties: WIPO copyright treaty”

<http://www.wipo.int/treaties/en/text.jsp?file_id=295166>. 64. “WIPO-Administered treaties: Berne convention for the protection of literary and

artistic works” <http://www.wipo.int/treaties/en/text.jsp?file_id=283698>. 65. “WIPO-Copyrights Treaty”

<http://www.wipo.int/treaties/en/text.jsp?file_id=295166#P132_19483>. 66. WIPO WIPO Copyright Treaty(1996). 67. “Harry Potter plagiarism case dismissed against JK Rowling” The Telegraph (19 July

2011) <http://www.telegraph.co.uk/culture/harry-potter/8645617/Harry-Potter-plagiarism-case-dismissed-against-JK-Rowling.html>.

Rethinking Originality in Copyright Law and Exploring the Potential for a Global Threshold

Documents

Transcript of Rethinking Originality in Copyright Law and Exploring the Potential for a Global Threshold