Introduction
It has been said that “what is worth copying is prima facie worth protecting”.[1] However, it must be remembered that “[the] whole of human development is derivative … borrowing and developing have always been acceptable”.[2] It is argued the bounds of copyright should go no further than to provide the author with sufficient incentive to create and disseminate their work, as well as protect their creative autonomy.[3] Copyright needs to strike a balance between protecting the “skill and labour” of the author, and the social benefit in allowing creators to borrow and develop.[4]
The Copyright Act 1994 recognises this by making clear that copying, which does not amount to a “substantial part” of the original work, is not infringement.[5] In addition, the law encourages societal development by only protecting the authors expression,[6] and ensuring no one can prevent others from stating particular facts,[7] using particular ideas,[8] or working with commonplace items.[9]
The challenge for the courts is in maintaining this balance when determining copyright infringement. In finding infringement the court must establish copyright subsists in a work, that the plaintiff owns the copyright and that it has been infringed.[10] There are three requirements for primary infringement by copying:[11]
- the entire work, or a substantial part, has been copied;[12]
- sufficient objective similarity between the part copied and the allegedly infringing work; and,
- a causal connection between the works.
One of the key tools in maintaining the balance required of copyright is assessing whether what is allegedly taken was a substantial part of a work. This has been recognised as one of the most difficult questions the court faces in copyright cases,[13] and will be the primary focus of this essay.
Proving copying
The first logical step in determining substantial copying is to ascertain if the work has been copied. This occurs when at least a part of the work is reproduced in a material form.[14] Merely redistributing a work, even with alterations, will not amount to a “reproduction”.[15] Digital technologies have begun to push the boundaries of what is considered reproduction. For example, the receipt, encoding and transmission of television signals has been found to amount to a “reproduction”.[16]
However, the difficulty for the courts usually lies in the fact there is seldom direct proof of copying and the court have to rely on inference to establish it.[17] The court will usually draw an inference when there is sufficient similarity between the works and there is proof of access to the original by the defendant.[18] If an inference is established, the burden switches to the defendant to prove it was not copied.[19]
It is important to note that the copy does not need to be an exact reproduction, or copied directly from the original.[20] In cases of non-exact reproduction (altered copying) the question can become whether the defendant has copied the expression of the author, or the unprotected idea behind it.[21] Whether it was an idea will be a matter of fact and degree,[22] the court will need to determine if it is of a high enough level of “abstraction and generality”.[23]
Substantiality
Once copying is established then the question turns to whether a whole or substantial part was taken. This involves looking at the part taken and considering if it formed a substantial part of the original work, [24] there is no need to look at its relevance to the allegedly infringing work.[25]
What will be substantial is a qualitative evaluation,[26] “what must have been copied is the essence of the copyright work”.[27] Even a small quantity of the original can be a substantial part, if it was a critical part of the work.[28] The challenge is to articulate a test for substantiality which can be consistently applied across a diverse range of works and situations, yet still retain the balance required in copyright.
Both the House of Lords and High Court of Australia have stated that what must be taken is a substantial part of the “originality” of the work.[29] Originality is what gives the work its copyright subsistence and a “convenient short cut” can be to look at the part taken, and see if it could attract copyright protection itself.[30] However, it is important to remember a work should not be dissected and what needs to be looked at is the “cumulative effect” of what was taken on the originality of the work.[31]
This approach has been followed in New Zealand.[32] It has been stated that the purpose of copyright is to protect the skill and labour of the author,[33] and what will be required for copyright subsistence is the application of that skill and labour to a work which is not a copy.[34] If a substantial part of that skill and labour is taken, then that will be a substantial part of the work.[35]
Using skill and labour as a synonym for originality in this way, has particular impact on works which are arrangements of commonplace items or facts. These arrangements derive their originality from the skill and labour involved in putting them together.[36] As such, “the plaintiff has no monopoly in the individual features … but only in their arrangement”.[37] Therefore the copying of an individual feature should not represent a substantial part of the originality and not be a substantial part of the work.[38]
A decision of the Australian Federal Court demonstrates the potential danger of focussing on labour alone in arrangements (factual collections). The Court found that when copyright was derived from the effort in collecting facts, then copying those facts was taking “the benefit” of the work and a substantial part.[39] It did not matter that the two works were expressed differently, only that the defendant had copied all the facts.[40]
This arguably extended copyright protection to the underlying facts themselves, bypassing the principle that only the authors expression is protected.[41] At best, it could be said to have turned the substantiality enquiry into a quantitative evaluation, as opposed to qualitative.
In response to concerns this approach could upset the balance of copyright, overseas jurisdictions have sought to raise the bar for copyright subsistence. The High Court of Australia has warned against emphasising effort alone.[42] It stated the author of a literary work must have “expended sufficient effort of a literary nature”[43] and went so far as to state the Federal Court’s decision was “out of line with the understanding of copyright”.[44] Canada has also moved away from a pure “sweat of the brow” approach and stated something more than a “purely mechanical exercise” is needed.[45]
However, it must be remembered that despite this relationship between copyright subsistence and substantial copying, that the question of whether a work is entitled to copyright and whether that copyright is infringed must remain separate enquiries.[46] New Zealand courts appear to recognise this and have so far declined to change the threshold for originality in response to concerns about the scope of copyright.[47]
It has been stated that it remains arguable that effort alone will remain sufficient for copyright subsistence.[48] Instead a “sliding scale” of protection is preferred when inferring whether there has been copying.[49] If the originality is “low”, meaning little skill and labour was applied, then the court will be reluctant to infer copying unless the two works are nearly identical.[50] The greater the originality, the greater the allowable differences.
This approach can also be seen in the arguably extreme view of the House of Lords, where it was suggested that as long as there was sufficient skill and labour applied to a work’s expression, then copyright should extend to protecting its ideas.[51] This appears to stretch the boundaries of copyright and is contrary to the accepted principle that ideas, by themselves, should not be protected.[52]
Another issue with this approach is that it focusses almost entirely on the similarities between the works and ignores the need to assess whether the part taken was substantial to the original work, without reference to the alleged infringing work.[53]
Focussing on similarities also places objective similarity as the primary test and risks ignoring substantiality and causation, which need to be treated as separate elements.[54]
A final issue with this approach is that it risks subsuming the substantiality enquiry into a question of whether the work was copied.[55] It could imply that if a work is copied, it is substantially copied. This conclusion can perhaps be seen in the comments of the House of Lords, where the court stated that once an inference of copying was established, then substantial copying would almost invariably be found.[56]
This conclusion arguably puts too much emphasis on copying and is reminiscent of Ladbroke (Football) Ltd v William Hill (Football) Ltd, where the court appeared to rely heavily on the old adage that what is worth copying is worth protecting.[57]
Justice Laddie has noted that the commandment, “thou shalt not steal”, has often been used by the courts as a reason to extend the boundaries of copyright.[58] This is arguably also reflected in the comments of the New Zealand Court of Appeal, where it stated that the substantiality enquiry is a major tool in giving expression to the courts’ sense of “fair play”.[59]
The effect of this “fair play” approach was perhaps seen in the Australian Federal Court’s decision in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd,[60] where the boundaries of copyright were pushed.[61] The Federal Court was apparently influenced by the fact the defendant admitted copying the underlying facts and obtained an unearned benefit.[62] It has also been suggested that the New Zealand Court of Appeal have been influenced by a finding of intentional copying, of an arguably small quantity of a work, as a shortcut for creating a competing product.[63]
The Canadian courts have also incorporated elements of fair play in establishing substantiality. Whether the copy has any commercial impact, and whether the defendant copied to save time and effort, are relevant matters for the court to consider.[64]
Professor Longdin argues this approach is incorrect and that considerations of “unfair competition and free-riding” should not be taken into account in the substantiality enquiry.[65] These are appropriate to consider when assessing defences of fair dealing, but should not influence a finding of infringement.[66] Assessing whether there is a defence, before infringement is even established, means the courts run the risk of making a premature finding of substantial reproduction.[67]
These concerns have been reinforced by the High Court of Australia, where the court has stated that it is “unhelpful” to refer to “commercial value” in assessing substantiality.[68] The court also stated that caution should be exercised in placing too much emphasis on the defendant’s “misappropriation”.[69]
Longdin notes that just because a second work incorporates features of the original, and competes successfully with it, there is no reason to treat it as infringing.[70] Copyright should not become a tort of misappropriation in order to hamper competition.[71] Copyright must allow a measure of freedom for others to build and develop on others works.[72]
Conclusion
The challenge for the courts is to strike the appropriate balance between the rights of copyright owners and those who wish to use their work. Traditional approaches for establishing substantiality in particular, are being stretched as new situations arise and the courts grapple with how best to maintain the balance.
However, caution must be exercised to not lose sight of the important controls that have developed over time to control copyright. In particular, subsistence, similarity and what amounts to a substantial part, should not be treated as a single test. Each serves a purpose in achieving the appropriate balance in copyright.
Achieving a single test for all types of works may not be possible. Factual compilations may benefit from a higher subsistence threshold and a quantitative test for substantiality, whereas an artistic work may be better suited to a low threshold for originality and a qualitative test for substantiality.
Ultimately, whatever direction the courts take, they must not lose sight of the fact that not only is it critical to give authors an incentive to create, but those creations need to be able to borrow and develop from the works of others who came before them.
[1] University of London Press Limited v University Tutorial Press Ltd (1916) 2 Ch 601 , at 610.
[2] Justice Laddie “Copyright: over-strength, over-regulated, over-rated?” (1996) 18(5) EIPR 253, at 259.
[3] Ibid, at 672
[4] Michael Spencer and Timothy Endicott “Vagueness in the scope of copyright” (2005) 121 LQR 657, at 673.
[5] Section 29(2)(a).
[6] University Of Waikato v Benchmarking Services Ltd (2004) 8 NZBLC 101,561 (CA) , at [44], [56].
[7] Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 (HCA) at 498
[8] Baigent v Random House Group Ltd [2007] EWCA Civ 247, [2007] FSR 24 , at [92].
[9] Bonz Group (Pty) Ltd v Cooke [1994] 3 NZLR 216 (HC) , at 219.
[10] P S Johnson & Associates Ltd v Bucko Enterprises Ltd [1975] 1 NZLR 311 (SC) , at 315.
[11] Wham-O MFG Co v Lincoln Industries [1984] 1 NZLR 641 (CA) , at 666.
[12] Given statutory force by the Copyright Act 1994, s 29(2), 30
[13] Henkel KGaA v Holdfast New Zealand Ltd [2006] NZSC 102, [2007] 1 NZLR 577 (SC) , at [44].
[14] Copyright Act 1994, section 2(1).
[15] Mitre 10 (New Zealand) Ltd v Benchmark Building Supplies Ltd [2004] 1 NZLR 26 (CA) , at [32].
[16] Munhwa Broadcasting Corporation v Young International 2009 Ltd HC Auckland CIV-2010-404-203, 17 December 2010 at [68]
[17] Henkel KGaA v Holdfast New Zealand Ltd, above n 13, at [43].
[18] Ibid, at [44].
[19] Steelbro NZ Ltd v Tidd Ross Todd Ltd [2007] NZCA 486 , at [113].
[20] Henkel KGaA v Holdfast New Zealand Ltd, above n 13, at [44], [52].
[21] UPL Group Ltd v Dux Engineers Ltd [1989] 3 NZLR 135 (CA) , at 144.
[22] LB (Plastics) Limited v Swish Products Limited [1979] FSR 145 (HL) , at 160.
[23] Baigent v Random House Group Ltd, above n 8, at [92]; see also UPL Group Ltd v Dux Engineers Ltd, above n 21, at 144.
[24] Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 (HL) , at 277.
[25] Ibid, at 293; Bleiman v News Media (Auckland) Ltd [1994] 2 NZLR 673 (CA) , at 679.
[26] Ladbroke (Football) Ltd v William Hill (Football) Ltd, above n 24, at 276.
[27] Henkel KGaA v Holdfast New Zealand Ltd, above n 13, at [44].
[28] LB (Plastics) Limited v Swish Products Limited, above n 22, at 152, 159.
[29] Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416 (HL) , at 2418, 2423, 2424, 2431; IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14, (2009) 239 CLR 458 , at [32].
[30] Ladbroke (Football) Ltd v William Hill (Football) Ltd, above n 24, at 277.
[31] Designers Guild Ltd v Russell Williams (Textiles) Ltd, above n 29, at 2421.
[32] Henkel KGaA v Holdfast New Zealand Ltd, above n 13, at [41].
[33] Wham-O MFG Co v Lincoln Industries, above n 11, at 664.
[34] Ibid.
[35] Henkel KGaA v Holdfast New Zealand Ltd, above n 13, at [41].
[36] Ibid, at [40].
[37] Bonz Group (Pty) Ltd v Cooke, above n 9, at 219–220.
[38] Designers Guild Ltd v Russell Williams (Textiles) Ltd, above n 29, at 2423, 2425; see also Ladbroke (Football) Ltd v William Hill (Football) Ltd, above n 24, at 293.
[39] Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491 at [240], [243].
[40] Ibid at [240].
[41] University Of Waikato v Benchmarking Services Ltd, above n 6, at [44], [56].
[42] IceTV Pty Limited v Nine Network Australia Pty Limited, above n 29, at [188].
[43] Ibid, at [99].
[44] Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd, above n 39, at [188].
[45] CCH Canadian Ltd v Law Society of Upper Canada 2004 SCC 13, [2004] 1 SCR 339 , at [16].
[46] Louise Longdin “Copyright Protection for Business Systems and Surveys: Disentangling Fact, Form and Function” (2005) 11 NZBLQ 161, at 168.
[47] Land Transport Safety Authority of New Zealand v Glogau [1999] 1 NZLR 261 (CA) , at 271.
[48] YPG IP Ltd v Yellowbook.com.au Pty Ltd (2008) 8 NZBLC 102,063 (HC) , at [45]. Although the potential impact of the Australian formulation in IceTV is yet to be fully explored.
[49] Land Transport Safety Authority of New Zealand v Glogau, above n 47, at 271.
[50] Ibid; Henkel KGaA v Holdfast New Zealand Ltd, above n 13, at [52].
[51] Newspaper Licensing Agency Ltd v Marks & Spencer plc [2001] UKHL 38, [2003] 1 AC 551 , at [20].
[52] UPL Group Ltd v Dux Engineers Ltd, above n 21, at 144.
[53] Ladbroke (Football) Ltd v William Hill (Football) Ltd, above n 24, at 293; Bleiman v News Media (Auckland) Ltd, above n 25, at 679.
[54] YPG IP Ltd v Yellowbook.com.au Pty Ltd, above n 48, at [91]–[92]; Wham-O MFG Co v Lincoln Industries, above n 11, at 666.
[55] Henkel KGaA v Holdfast New Zealand Ltd, above n 13, at [52].
[56] Designers Guild Ltd v Russell Williams (Textiles) Ltd, above n 29, at 2416, 2426, 2432.
[57] Ladbroke (Football) Ltd v William Hill (Football) Ltd, above n 24, at 279, 288, 294.
[58] Autospin (Oil Seals) Ltd v Beehive Spinning [1995] RPC 683 (HC) , at 700.
[59] Steelbro NZ Ltd v Tidd Ross Todd Ltd, above n 19, at [110].
[60] Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd, above n 39.
[61] IceTV Pty Limited v Nine Network Australia Pty Limited, above n 29, at 188.
[62] Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd, above n 39, at [243].
[63] University Of Waikato v Benchmarking Services Ltd, above n 6; Longdin, above n 46, at 184.
[64] U & R Tax Services Ltd v H & R Block Canada Inc (1995) 62 CPR 257 , at 268.
[65] Longdin, above n 46, at 186.
[66] Ibid.
[67] Ibid.
[68] IceTV Pty Limited v Nine Network Australia Pty Limited, above n 29, at [31].
[69] Ibid, at [188].
[70] Longdin, above n 46, at 186.
[71] Ibid, at 163.
[72] Laddie, above n 2, at 259.
