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Copyright
MWA
Protection and Exploitation of Copyright
Speaker: Frances Murphy
Frances Murphy is a senior assistant solicitor in the Competition and Intellectual
Property Law Department of Watson Farley & Williams. She is the author of
a number of articles and a contributing editor to Butterworth's Competition
Law Encyclopaedia.
- Introduction
- The Need to Protect the Value in a Business
The value in your business is in what you create. What you create is your
currency. If someone takes it away from you, you can be short changed
and as a result you could, in a worst-case situation, go out of business.
If you protect and exploit your creations the more value you add to your
business.
In the market for television and cinema commercials there is no standard
product which advertisers can buy off the shelf or order to a standard
specification. Each commercial is a different product. Its value depends
to a considerable extent on its being different and original. The premium
on creativity and flair is therefore very high.
When you are first approached by the advertising agency perhaps by then
with the client approved script, there may well follow an interactive
process of discussion and exchange of ideas, leading by stages from initial
discussion of the basic needs of the script to preparation of the storyboard.
- What is Copyright?
Copyright subsists in any literary, dramatic, musical, or artistic work,
or film, or sound recording, or broadcast, or cable programme, or typographical
arrangement of a published edition, subject to the author of the work
being a qualifying person (a list of the classes of "qualifying person"
is included at s.154(1) of the CDPA 1988), or the work being first published
in a country to which the CDPA 1988 extends or has been applied. It exists
by virtue of the Copyrights Act, 1956 (the "1956 Act"), as restated
and amended by the Copyright Designs and Patents Act, 1988 (CDPA).
"Copyright" is the exclusive right to do, and to authorise others
to do ... certain acts in relation to literary, dramatic and musical works,
in relation to artistic works and in relation to sound recordings, cinematography
films, sound and television broadcasts and published editions of works.
In general, it can be said that the existence of a copyright protects
the maker of a work or other subject matter from the appropriation of
his labours by another.
- Concepts and Ideas
It is a basic principle of copyright law that protection is granted NOT
to an idea, but to the expression of the idea. In response to the CDPA
19 88, there have been calls for greater copyright protection for ideas.
Particularly in the USA, judges are increasingly being confronted with
reconciling the interest of the public in having access to new ideas with
what at times is felt to be the injustice of permitting some to exploit
commercially the ideas of others.
In the US Copyright Act 1976 is clear that the ideas are not protected:-
"In no case does copyright protection for an original work of authorship
extend to any idea, procedure, process, system, method of operation, concept,
principle or discovery, regardless of the form in which it is described,
explained, illustrated or embodied in such work".
- Fixation
Copyright does not subsist in a work until it is recorded in some written
or other form, e.g. on tape. A person can create a copyright work by committing
it to paper, or recording it in some other way personally or by any other
person who records it.
- Originality
No copyright subsists in a literary, dramatic, musical or artistic work
unless it satisfies the test of "originality" and no copyright
subsists in sound recordings, films, broadcasts, cable programmes or published
editions of works to the extent that they are copied from previous works.
In copyright law, originality means simply that some, albeit limited,
work or effort has gone into the creation of the work. The fact that a
work may have been inspired by a previous work does not prevent it from
being original.
Interlego A.G. v Tvko Industries Inc [1988] 3 WLR 678. The copyright in
some drawings of a Lego brick had expired; the question of whether it
was possible to create new copyright by creating similar drawings was
addressed. The court held that this was not possible, as the skill and
labour involved in copying the original drawings conferred no originality.
There had to be some material alteration or embellishment, which suffices
to make the totality of the work an original work.
- Derivative Works
The fact that a work may have been taken from a previous work does not
prevent it from being original and attracting its own copyright.
Where an author has created a second work using materials from a previous
work, the question where the various copyrights rest arises. It has been
suggested that if the derivative work is a work involving such skill and
labour as to constitute a new original work, the copyright in the first
work and the derivative work respectively are capable of being dealt with
(exploited) separately so that neither of the authors (if different) should
have any right of complaint against the other by reason of any exercise
of their respective rights.
If, however, the derivative works reproduces significant aspects of the
previous work then although the derivative work may attract copyrights
so that the author of it can prevent third parties using it, the author
himself will not be able to use it without the permission of the author
of the previous work without risking infringing the previous author's
copyright.
- Overlapping of Different Copyrights
It is very important to stress that the separate copyrights may co-exist
in relation to what might at first sight seem to be a single subject matter.
For example:-
X writes a script. He acquires copyright in the script as a literary work.
Y then makes a film based on the script and acquires a copyright in the
film.
ITV then broadcasts the film and acquires its own copyright in the broadcast.
(Y and ITV would have required X's permission to use his material or they
would have been infringing his copyright.)
X sketches a few figures. His sketches are protected by copyright as artistic
works.
Y takes X's sketches and turns the figures into characters with their
own personalities. Y's work is protected by copyright as an artistic work.
BBC then produces a film using those characters and the BBC acquires its
own copyright in the broadcast.
(Y and BBC would have required X's permission throughout or they would
have been infringing his copyright.)
- Independent Creations
Copyright is not a monopoly. Therefore it is possible for two identical
works to be produced independently of each other and thus both be copyrighted
without infringing the copyright of the other.
- Duration of Copyright
The general position for new works is that for literary, dramatic, musical
and artistic works coming into existence after 1st August 1988 copyright protection
lasts until 50 years from the end of the calendar year of the author's death.
The position of works under the 1956 Act was similar except for unpublished
works. The new rule is that works unpublished at the time of the authors death
which fall under the provisions of the 1956 Act shall have a new period of
copyright lasting 50 years from 1 January, 1990.
In relation to sound recordings and films, the CDPA 1988 introduced a new
concept of "release", whereby copyright expires at the end of the
period of 50 years from the end of the calendar year in which the sound recording
or film is made, or if released before the end of that period, 50 years from
the end of the calendar year in which it was released. A film or sound recording
is "released" not only when published but also when first shown
in public or when broadcast, or included in a cable programme service.
- Ownership of Copyright
- First Owner Generally
Copyright comes into existence automatically; therefore if a work qualifies
for copyright protection, it will be protected without any registration
requirements. Often, the question of the ownership will not arise at all
unless there is a dispute.
A "work" will automatically be copyright protected if it fulfils
certain criteria. The author of the "work" must be a "qualifying
person" at the material time, which is at the time of publication
for published works, or at the time of creation of the work if it is unpublished.
The categories of "qualifying person" include British Citizens
and bodies incorporated under the laws of the UK.
The author is the person who actually writes, compiles, composes or draws
the work in question (or the person who "arranges" for the work
to be created in the case of a film (see below)), although the idea may
have been suggested by someone else.
- Ownership of Copyright in Phonographic and Cinematographic Recordings
General
The definition of "film" in the CDPA 1988 is very wide, and
is greatly simplified from the definition of "cinematograph film"
which was used in the 1956 Act, and is undoubtedly intended to cover videos
as well. Films are defined to mean "a recording on any medium from
which a moving image may by any means be produced" (Section 5(1)).
The definition is sufficiently wide to cover T.V. advertisements and videos.
In relation to phonographic and cinematographic recordings (films), the
distinction between the "author" and the "contributors"
is often hard to draw. Broadly speaking, two different types of "work"
are found in films:-
- Utilised works; where a pre-existing work is used in the production;
- Constituted Works; where the works are constituted by the production.
Such works can further be sub-divided into "formative works",
which are works resulting from a creative contribution to the form
of the recording components. Formative contributions can only exist
in the recording components. "Prescribed works", bycontrast
are capable of existing separately from the recording, being literary,
dramatic, musical or artistic works specifically composed for the
production.
In the process of making a film, based, for example, on a novel, it
will be necessary to adapt the pre-existing work and compose the relevant
scenario, dialogue and so on, and perhaps to commission music for
the soundtrack. All such material will be "prescribed",
as its composition is related to the production.
The "Authors" of such prescribed works are contributors
to the recorded production. As to authorship of the film, however,
s9(2) of the CDPA 1988 states that the person who makes the arrangements
necessary for the making of the recording or film is the owner of
the copyright in it. The first owner of copyright in the film will
continue to be in most cases the producer, or more likely the production
company rather than the director.
- Commissioned Works
- General
Under the CDPA 1988, the general rule is that the first owner of the
copyright will be the person commissioned to create the work. It is
therefore very important that commissioners of work make sure that
there is a written agreement, signed by the author, expressed as an
assignment of the copyright. The fact that the copyright may not yet
have come into existence does not matter, for copyright law has an
unusual but very important provision permitting the assignment of
future copyrights. The property right is transferred from the author
to the transferee as soon as it comes into existence. Although the
importance of obtaining formal title cannot be underestimated, the
case of Warner v Gestetner (below) shows that failure to do so may
not always be fatal.
In Warner v Gestetner Ltd [1988] EIPR D89, an advertising agency commissioned
Warner to produce drawings of cats that were used by Gestetner in
promoting a new product at a trade fair. The arrangements were made
on the telephone and no formal written contract was entered into.
Gestetner went on to use the drawings in promotional literature and
Warner complained that this went beyond the purpose of the agreement
and infringed his copyright in the drawings. Under the CDPA first
ownership of the copyright was with Warner, since he was the author
of the drawings. However, the judge found that a term could be implied
which vested the equitable or beneficial ownership of the copyright
in the commissioner.
In Kendrick v Lawrence [1890] a person had the idea to use an illustration
of a hand putting an X in a box to aid the illiterate in casting a
vote. He could not draw, so he commissioned someone else to draw his
idea for him, giving instructions as to how it should look. The author
of the copyright in the drawing was held to be the person who did
the drawing, as he was the one giving expression to the idea.
The above cases illustrate that it is always prudent to ensure that
relationships with third parties are governed by a formal written
agreement that deals clearly with the ownership of copyright.
- Commissioned Sound Recordings Under the 1988 Act
The "author" of the work is taken to be the person who "arranges"
for the recording, and is the first owner of the copyright, the one
exception to this is commissioned recordings where the commission
was given before the implementation of the 1988 Act (1 August, 1989),
even where the recording was made after that date. It is only in those
circumstances that the 1956 rule whereby the commissioner will be
the first owner still applies to sound recordings.
- Works of Employees
Where a work is made by an employee in the course of his employment, the
employer is the owner of the copyright.
- Ownership of Copyright in Soundtracks
Under the Copyright Act, 1956, the film and the sound accompanying it
were to be taken together in copyright terms, there was no separate copyright
in the sound element. The definition of "sound recordings" expressly
excluded the soundtracks of films.
s.13(9)stated:
"for the purposes of this Act a cinematograph film shall be taken
to include the sounds embodied in any soundtrack associated with the film,
and references to a copy of a cinematograph film shall be construed accordingly
... Provided that where those sounds are also embodied in a record, other
than such a soundtrack or a record derived (directly or indirectly) from
such a sound-track, the copyright in the film is not infringed by any
use made of that record."
By contrast, in the Copyright, Design and Patents Act, 1988 the definition
of "sound recording" does not refer to films, thus, the film
and soundtrack are separate and distinct and the soundtrack is accorded
copyright protection as a "sound recording". With the much greater
use that is now made of music videos, this separation of copyright in
sound and vision must be seen as favourable to preserving the creator's
rights in their work.
- Computer-Generated Audio and Visual Recordings
It is thought that, under the terms of the CDPA 1988, computer-generated
recordings, both audio and visual may be regarded as "produced works"
and therefore the subject of copyright protection, where they result from
"causative activity" and are not mere copies of pre-existing
recordings.
s.9(3) of the CDPA provides that the author of a computer-generated work
shall be taken to be the person by whom the arrangements necessary for
the creation of the work are undertaken - not the Computer. This provision
does not apply to sound recordings.
- Joint Authorship
In the CDPA 1988 a work of joint authorship is defined as "a work
produced by the collaboration of two or more authors in which the contribution
of each author is not distinct from that of the other author or authors".
- s.10(1). All the collaborators must be "authors", thus a person
who transfers the original work of another onto a different medium, or
who merely suggests the idea without contributing to the literary, dramatic
or other form will not be a "joint author".
- Moral Rights
- General
Prior to the CDPA 1988, UK Copyright law offered no protection for Moral
Rights. Moral rights are geared towards the protection of the integrity
of the individual, his privacy and his work, the most important of these
rights being the rights of paternity and integrity.
The right of paternity is the right of the author of a copyright literary,
dramatic, musical or artistic work, and the director of a copyright film
to be identified as the author or director of the work - s.77(1) CDPA
1988.
The right of integrity is the right of the authors of works and film directors
to object to certain types of "treatment" of their works or
films. "Treatment" means any addition to, deletion from, or
alteration to or adaptation of the relevant work - s.80(1) CDPA 1988.
An important condition precedent to the operation of the right of paternity
is the requirement that it must first be "asserted" by the author
or director as the case may be - s.78 CDPA. Infringements can only arise
after assertion.
It should be noted that there are certain types of work to which the right
does not apply. These include computer-generated works.
Naturally, unless you are careful to ensure that your contracts with others
include a standard assertion of right, the possibility of the assertion
requirement being overlooked is strong.
Accordingly, all authors and directors of works should assert their rights
in contracts with others and also, to ensure that others are bound by
the right, they should have express statements asserting the right on
all copies of the work.
The way in which the right is asserted will affect those who are bound
by it. The provisions are detailed and complex: in most cases third parties
will be bound regardless of whether or not they have notice, but in other
cases they will only be bound provided they have notice that the right
has been asserted.
- Duration
The rights of paternity and integrity last for the same length of time
as the copyright in the relevant work.
- Assignment
Moral rights are, by their very nature, personal to the individual concerned
and, accordingly, cannot be assigned. However, their exercise can be affected
by waiver and consent and they can be transferred on death. For a waiver
to be effective, it has to be in writing and signed by the person giving
up the rights.
- Protection
- Copyright
"What is worth copying is prima facie worth protecting" (Petersen
J in University of London Press v University Tutorial Press (1916)).
Although there are no formalities required to be observed under UK law
(as signatories of the Berne Convention which contains a general proscription
on formalities) in order to acquire copyright, as a matter of good housekeeping
practice, certain procedures should be adopted in order to facilitate
the enforcement of rights in case action needs to be taken against infringers.
Firstly, all drawings and similar material must be carefully identified.
The identity of the artist or author should be noted, and, most importantly,
the rights of the owner. If different artists are to be employed, then
each individual's work must be separately identified. Where necessary,
proper assignments of copyright must be taken. (Assignment of copyright
is dealt with in more detail at IV below). It is particularly important
to note that the purchase of a picture does not of itself effect an assignment
of copyright to the picture. For set photography, such as may be used
in advertising brochures, etc. a written exclusive agreement and an agreed
set of photographs must be established; all others should be destroyed
or retained by the owner. This may appear elementary, but unfortunately
in practice the rules are not always followed.
It is particularly important that one should be able to demonstrate the
chain of title in original copyright from the artist through the various
owners to the present owner of the copyright. Tracing the artist and his
employer at the relevant time will be greatly facilitated if the original
artwork contains the name of the artist, the date and a statement "©
Copyright X Co". Although the importance of this formula from the
point of view of compliance with the requirements of some countries adhering
to the Universal Copyright Convention is much diminished since the USA
adhered to the Berne Convention, it is nevertheless good business practice
to continue to use this formula. The © serves the useful purpose
of warning off third parties.
Where artwork is prepared by agencies or other persons not in the employment
of the proposed copyright owner, it is important that a clear agreement
should be made at the outset that the copyright will vest in the commissioner
of the work. Assignments of copyright must be in writing and comply with
the provisions of section 90(3) (equivalent to s.36(3) 1956 Act). It is
at this point that a waiver of the Moral Rights (if applicable) should
be obtained.
Materials such as transparencies which are too small to carry the full
copyright notice, should be released only in envelopes with the full copyright
notice and on the transparencies should be: "©[owner - date];
released for publicity only; not for commercial use", or some similar
formula appropriate to the particular circumstances.
It is important to ensure that the drawings etc. are preserved in a safe
place: there is no requirement in this country for registration of copyright.
- Ideas and Concepts
As outlined above, ideas and concepts are not protected by copyright.
There are certain steps that can be taken to protect ideas from appropriation
and exploitation by others. The best first step is always to be suspicious
of others. Do not content yourself with platitudes such as "he knows
that I am divulging my ideas in confidence and if he "uses"
them I will try and stop him by relying on an action based on a breach
by him of the equitable obligation of confidence."
If you take such an approach the evidential burden is on you - it will
be up to you to prove that (a) they are your ideas that have been taken
and (b) that they were divulged in circumstances in which the other ought
to have known placed him under an obligation of confidentiality.
Make it easier on yourself - ensure at the outset, before you divulge
your ideas, that you get the other person to enter into a confidentiality
agreement. It need only be a very simple agreement but they are useful
insofar as (a) they tend to have the effect of ',scaring" the other
party off using your ideas and (b) if he does he is patently in breach
of contract.
- Subsequent Dealings with Copyright
- Exploitation.
The ownership of the copyright is distinct from ownership of the physical
material on which the work is reproduced, and the transfer of title to
the physical material does not necessarily involve the transfer of the
copyright.
One important thing to realise is that the copyright in a work can belong
to a number of people at the same time, each having a right to utilise
the work in a certain way. (The various acts can be are protected by copyright
in relation to the different categories of work are listed at s.16 of
the CDPA, and summarised at VII below). By partial assignment, the first
owner of a work can grant assignments to people so as to apply to one
or more of the things the copyright owner has the right to do, but not
all, and also to limit the period during which they can do such acts.
For example, the owner of the copyright in a novel may assign the right
to serialise it in a newspaper to one person, whilst at the same time,
the right to adapt it for television may be assigned to a further person.
The copyright owner may also grant a licence to use the work in a certain
manner.
- By Assigment
Copyright can be assigned, provided the assignment is in writing and signed
by or on behalf of the assignor. The CDPA 1988 contains provisions detailing
how an assignment can be effected in s.90 and s.91.
By assigning the right to copyright, the owner no longer has the right
to use the work in the manner assigned, and he may be restrained from
using the work by the assignee.
- By Licence
A work can also be used by another party in a nature that would be breach
of copyright if a licence has been granted. This does not amount to a
partial assignment, but merely a right to do something that would otherwise
be unlawful. Unlike an assignment, a licence need not be in writing unless
it is an exclusive licence, a licence may be either oral or implied by
conduct. It is, however, prudent to ensure that whatever the nature of
the licence, it is recorded in writing.
- Infringement of Copyright
- General
Copyright is infringed if a person, not being the owner of the copyright
or with a licence from the owner, does, or authorises another person to
do an act which is designated as an "act restricted by copyright"
in a work or subject matter of that description.
s.16 of the CDPA 1988 lists those acts which are designated as restricted
acts:-
- to copy the work
- to issue copies of the work to the public
- to perform, show or play the work in public
- to broadcast the work or include it in a cable programme service
- to make an adaptation of the work or to do any of the above in relation
to an adaptation
- Types of Infringement
There are two types of infringement of copyright,which can be divided into
primary and secondary infringements. Broadly speaking, primary infringement
is the unauthorised exercise by persons (not being the copyright owners) of
the rights outlined above. Secondary infringement is the unauthorised dealing
with articles which were made in breach of copyright. The distinction between
the two can be drawn along lines of knowledge of infringement, for a primary
infringement, knowledge that an infringement is taking place is not a requirement,
whereas for secondary infringement, a degree of knowledge is required.
- Remedies for Breach of Copyright
The 1988 Act provides for two classes of remedy, civil and criminal.
- Civil
An infringement of copyright is actionable by the copyright owner, being
the original owner, or the person deriving title from him by valid assignment
or otherwise. Where different persons are entitled to different aspects
of the copyright in a particular work, the copyright owner who may sue
is the person whose right has been infringed in this particular case.
The person to be sued is firstly the primary infringer, that is the person
who, without the licence of the copyright owner, does, or authorise other
persons to do, in relation to that work in the UK, any one or more of
the separate and distinct acts which are restricted by the copyright in
the work. Persons may also be liable for "secondary infringement"
such as importation and sale, for which liability depends on proof of
knowledge of the infringement.
The court has the power to make an order that an infringing copy or article
be delivered up to the owner of the copyright or such other person as
the court may direct.
The most important remedy for infringement of copyright is an injunction.
This may be either interlocutory or permanent. Most injunctions sought
will be of a negative nature. The purpose of an interim injunction is
to give temporary protection from continuing violation of his rights if
these cannot be adequately compensated for by damages. Such a remedy is
temporary and discretionary, and must be weighed against the corresponding
need of the defendant to be protected against injury resulting from his
being prevented from exercising his legal rights and for which injury
he could not be adequately compensated.
The courts are governed by the principle that they should first assess
whether the parties can be adequately compensated by damages, and if this
is the case, an interim injunction will not normally be awarded.
The court also has the power, at the interim stage to make Anton Pillar
orders, or Mareva injunctions
Final relief can be given in the form of a declaratory judgment, whereupon
the court may make a declaration of infringement (or, of course, non-infringement).
A plaintiff who succeeds at trial in establishing infringement will normally
be entitled to a permanent injunction to restrain other infringements,
although this may be prevented by, for example, delay in bringing the
proceedings. If infringement is proved, there is no need to show actual
damage, probability of damage will suffice.
Where damages are awarded, these are calculated in accordance with the
depreciation of value of the copyright as a result of the infringement.
For example, if the defendant has dealt with the plaintiff's work as though
he had a licence, the amount of damages would be the fair fee for a licence
to do such act.
Another equitable remedy is to an account of profits. This is incidental
to the right to an injunction, and cannot be obtained alongside damages.
A Plaintiff may opt for either. Other remedies include forfeiture and
delivery up of the infringing items.
- Criminal
Under the 1988 Act, a person commits an offence who, without the licence
of the copyright owner, does various acts in relation to an article which
is and which he knows or has reason to believe is an infringing copy of
a copyright work. The prohibited acts include:-
- Making for sale or hire
- Importing into the UK otherwise than for private or domestic use
- Possessing in the course of a business with a view to committing any
act infringing the copyright
- Selling or letting for hire, exposing or offering for sale. exhibiting
in public or distributing in the course of a business
- Distribution otherwise than in the course of a business but to prejudicially
affect the owner of the copyright.
Other offenses include those relating to the public performance of a work.
Berne Convention
The Berne Convention was an attempt to secure uniformity by several of the major
world powers throughout their dominions. It was first entered into in 1887,
and thereby the contracting states were "constituted into a Union for the
protection of the rights of authors over their literary and artistic works".
It has subsequently been revised several times.
Universal Copyright Convention
This was created largely with the intention of creating a bridge between the
Berne Convention on the one hand and the Pan-American convention countries on
the other hand. It was signed in 1952, and subsequently revised in Paris in
1971.
Anton Pillar Injunction
This is an order compelling defendants to "permit" the plaintiff's
agents to enter the defendant's premises, search for and (in most cases) seize
certain documents or property. The order is a special form of mandatory injunction,
it does not amount to a search warrant and therefore no forceable entry can
be made. If a defendant fails to comply with the order he can be committed for
contempt.
Mareva Injunction
A Mareva injunction is an injunction restraining a defendant from improperly
disposing of his assets, or concealing, or moving them abroad for the sole purpose
of stultifying an action brought against him.
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