European jurisprudence and its impact on copyright protection Background (although in practical terms the For nearly a century, intellectual From the turn of the 20th century, respondent's adaptations were property lawyers in England & Wales the test in England & Wales for the relatively minimal). were confident in their purpose of establishing copyright However, the main challenge to understanding of the requirements was the 'sweat of the brow' the traditional 'skill and labour' for the subsistence of copyright doctrine: that the author of a work test has come via a string of gained rights in it by means of the European jurisprudence. In under English law. However the 'skill and labour' expended in contrast to the English common traditional English position has been creating it. There is no requirement law 'skill and labour' test, Directive shaken by a chain of European for artistic merit or value in the 91/250/EEC (the 'Software jurisprudence and tension between work. This was established in the Directive') grants copyright Victorian case of Walter v. Lane protection to computer programs the domestic and European (1900)1, in which the House of and design material to the extent regimes, which has been explored in Lords ruled that reporters who that they are the 'author's own a string of headline-grabbing transcribed a series of political intellectual creation' (Art 1(3)), copyright law cases. Steven James speeches by Lord Rosebery had and Article 6 of Directive and Ruth Arkley, of Latham & copyright in the transcription 2006/116/EC (the 'Term Directive') which was independent of the sets the same standard for Watkins, assess how English courts copyright enjoyed by Lord photographs. The same language - have reacted to European Rosebery. The decision was 'own intellectual creation' - is also developments in the test for controversial because the reporters used in recitals 15 and 16 and Art '' in copyright works; the were acting as Lord Rosebery's 3(1) of Directive 96/9/EC (the 'echo, mocking-bird, slave'2, merely 'Database Directive'). Directive differences between the two recording what had been said by 2001/29/EC ('Infosoc') continues systems, and the steps to be taken Lord Rosebery, suggesting that the in the same vein, with references to to best ensure copyright protection. threshold for copyright protection 'substantial investment in creativity was very low (albeit the court was and innovation'; 'intellectual applying 19th century legislation, creation' and 'cultural creativity vesting literary copyright in and production'. Although the 'books', not 'works' per se). language is superficially similar The first judicial doubts about (and somewhat vague), there is the 'skill and labour' test surfaced clearly the potential for significant in Interlego v. Tyco3 (1988), in variation between the European which the respondents attempted requirement of 'creativity' and the to claim copyright in variations of English common law requirement the appellant's technical drawings. of 'skill and labour', although the The Court noted that the European test, like the English test, Copyright Act 1956 imposed a does not require any value requirement of 'originality', and judgment or artistic merit in the commented that 'skill, labour or work to confer protection. judgment merely in the process of The Database Directive was copying cannot confer originality'. directly implemented into English Nonetheless, the traditional Walter law by the Copyright & Rights in -v- Lane test continued in use, and Databases Regulations 1997, which was upheld in Sawkins v. Hyperion enshrined the European test for Records Limited4 (2005). copyright in databases - the 'Originality' was by then a 'author's own intellectual creation' statutory requirement for - into the CDPA5 (using language copyright under the Copyright, which is not echoed elsewhere in Design and Patents Act 1988 (the the Act). Although the Software 'CDPA'), but the time, effort and and Infosoc Directives are not skill employed by the respondent automatically incorporated into in Hyperion Records was deemed English law, and have not yet been sufficient to satisfy this test implemented by statute, they

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should, according to Mr Justice English the ambit of the Software Directive 'originality' and 'authorship' which Arnold, be applied by the courts to copyright law it could nonetheless be afforded has long been acknowledged by the the fullest extent that they are is in a state copyright protection if it common law. Meltwater has since compatible with English law under of flux and, constituted the 'author's own been referred to the Supreme 6 pending the the Marleasing principle . Supreme intellectual creation' under the Court on appeal and judgment is Court's InfoSoc Directive. This is the awaited at the time of writing12. How do the common law and decision in opposite of the approach taken by European systems interact? Meltwater, it English law, which affords What does the author’s own Since 2009, the distinction - if any would seem protection only to works which: (a) intellectual creation mean? that two tests - between the English law and the for originality fall within the legislative categories A month after Meltwater was EU tests was not obvious. exist side by of the CDPA and (b) meet the heard by the Court of Appeal, the Although the 'author's own side, each originality threshold. The CJEU's CJEU gave judgment in the Painer intellectual creation' standard applicable to analysis therefore had the twofold (2011)13 case. Painer concerned applied to databases under s. 3A(2) different effect of expanding the potential photographic copyright, so fell works. of the CDPA, exactly what this test works to which copyright could within the Art. 6 of the Term required was unclear, and the 'skill apply by removing English law's Directive, which applies the EU and labour' test as it related to 'boxes' of copyright10, whilst also 'author's own intellectual creation' other forms of literary, dramatic, limiting protection by raising the test. In considering the nature of musical and artistic ('LDMA') originality threshold. The CJEU's this standard the CJEU spoke of works seemed to be unchanged. view of 'originality [as] through the photographer's 'formative The turning point was Infopaq intellectual creativity' is clearly freedom' and the artist's ability to (2009)7, in which the Court of more restrictive than the English make 'free and creative choices'. Justice of the law threshold, implying a degree of For example, a portrait ('CJEU') suggested that copyright artistic input greater than the 'skill photographer demonstrates would apply only in relation to and labour' test. formative freedom and reflects his works (regardless of what type of The English Court of Appeal personality in his work by work they were) which were came to consider this question in choosing the angle of the shot, the 'original in the sense that [they are] NLA v Meltwater (2010)11, which lighting, the pose of the subject the author's own intellectual concerned the respondent's online and any props used14. The CJEU creation'. This statement equated re-publication of newspaper also used similar language in the English law 'originality' test headlines and article excerpts. FAPLv. Murphy15, holding that with the EU test and, if this had Using the language of the CJEU, football matches are subject to the been followed by the English the Court held that small extracts rules of the game so the players do courts (which it was not8, as, in or headlines from articles can be not have sufficient 'creative strict terms Infopaq related to subject to copyright protection, as freedom for the purposes of rather than no distinction should be made copyright'. subsistence of copyright), it would between part of an article and the In the context of establishing effectively have established a pan- whole provided that the part copyright under the Database European standard for copyright, contained elements which were the Directive, the CJEU held in removing the distinction between expression of the author's Football Dataco16 that a database different thresholds of protection intellectual creation. The excerpt or will be the 'author's intellectual for different types of work under headline did not need to be creation' and thus protected by English law. 'substantial' in and of itself; the copyright when he is able to 'make The Infopaq approach received significance is whether a free and creative choices' in the further support from the CJEU in substantial part of the author's skill 'selection and arrangement of the Bezpe_nostní (2010)9 (the BSA and labour (in having written the data'. Whilst a database is in most case), in which the CJEU seemed original article) is appropriated. circumstances less open to creative to suggest, using the language of Crucially, the Court also ruled that influences than, for example, a the Software Directive, that all the English common law test for musical composition, they can works which are 'intellectual the subsistence of copyright in have significant commercial value, creations' must be afforded LDMA works remained and the Court emphasised that copyright. In this case the Court unchanged, and that the recent skill and labour is not enough to decided that although a graphic CJEU decisions had simply trigger copyright protection user interface did not fall within underlined the connection between without a work also having some

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degree of creativity. Any element of and should also have indirect effect telephone directories, list, football a work which is dictated by regarding photographs (the Term fixture lists or TV programme automatic means, rules or technical Directive) and computer programs schedules) are unlikely to be able constraints will leave 'no room for (the Software Directive) under the to protect the copyright in their creative freedom'. Marleasing principle. Conversely, works, unless they have something Most recently, the English High as far as other LDMA works are unique and creative about them in Court has considered copyright in concerned, the common law ('skill, the selection or arrangement of software in the case of SAS v WPL labour and judgment') test would the material that constitute the (2013)17. Following Football Dataco still seem to apply. The apparent work. Mere 'skill and labour' in and Navitaire Inc v. easyJet Airline shift from 'sweat of the brow' spending hours to compile a list is Co Ltd18, Arnold J confirmed that towards an emphasis on 'creativity' unlikely to be sufficient - you need copyright protection under the moves English law further towards to be able to demonstrate that Software Directive is not available the US test of a 'modicum of personal choices have been made for the functionality, programming creativity', as per the Feist case19. with a clear methodology; languages, or interfaces of software, Mere independent creation itself G personalise your work as much as these constitute the ideas behind would no longer seem sufficient - as possible, adding some form of a programme rather than the independent creation plus making individual, personal stamp to it, as creative expression of it. Based on clear, creative choices seems the CJEU has made it clear that the evidence before him at trial, necessary as well. personal artistic choices are Arnold J concluded that the SAS indicative of creativity; programming was not a work that Tips for ensuring copyright G when bringing a claim for was the author's own intellectual protection in the future copyright infringement, creation, so it was not capable of But while this is an interesting particularly in relation to computer protection under the Software academic debate, the real question programs, make sure that you Directive. However, this was is, do the differences between the plead copyright subsistence in without prejudice to the fact that tests have any practical/commercial individual elements such as the programming languages could relevance? programming language, generic feasibly be protected as a distinct On the assumption that the EU user interface and format of data copyright work if they constitute standard is higher than the English files under the InfoSoc Directive, as the author's own intellectual law test, but the two are not well as claiming copyright creation under the Infosoc mutually exclusive, it would be protection in the source code as a Directive. prudent to adopt a cautious literary work (if applicable). This latter point was not approach and aim to comply with Following SAS -v- WPL, the 'look thoroughly explored as it had not both the CDPA and the European and feel' and functionality aspects been properly pleaded, but it raises requirements. It is hard to predict of the computer programs are not the salient question of what, how the CJEU will recognise protectable; exactly, must be shown to 'formative freedom' and 'creative G look at the creativity displayed demonstrate the 'formative choices' in a work, and future case in the work, not the length of it. freedom' necessary for an law (particularly English case law) The de minimis rule has been 'intellectual creation'; especially in applying these fairly vague and undermined by Infopaq and terms of computer software which imprecise principles will give us Meltwater, which are steering us is functional by its nature. greater guidance; but in the towards a framework where any meantime the following practical work which is informative or The current situation tips might be worth bearing in conveys pleasure, no matter how English copyright law is in a state mind: short or seemingly trivial, can be of flux and, pending the Supreme G anything inherently functional, capable of protection, including Court's decision in Meltwater, it or relying on automated processes (potentially) short excerpts of an would seem that two tests for and rules will struggle to benefit article, a headline or a single originality exist side by side, each from copyright protection, so post/tweet; and applicable to different works. On alternative protection should be G keep an audit trial and the one hand, the European sought for such works (e.g. patent maintain records of prototypes, standard ('author's own intellectual protection or the EU sui generis drafts and sketches to demonstrate creation') clearly applies to ); how the creative process database copyright (via the CDPA), G those who compile lists (e.g. progressed and the creator

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employed individual methods to Programming Ltd, Case 406/10; [2013] EWHC 69 (Ch). produce the relevant work. 18. Navitaire Inc v. Easy jet Airline Co. & The practical reality is that the Amor [2004] EWHC 1725 (Ch). vast majority of works in which 19. Feist Pubs., Inc. v. Rural Tel. Svc. copyright protection is sought will Co., Inc., 499 U.S. 340 (1991). meet both the traditional English law and 'new' European tests of originality, as the threshold for protection is still relatively low. However, those whose commercial activities may fall within the two (most notably list, telephone directories or databases) should take steps now to ensure they do not get left behind the times and ultimately without a remedy for infringement of their works.

Steven James Associate Ruth Arkley Trainee Solicitor Latham & Watkins [email protected] [email protected]

1. [1900] AC 539. 2. Robertson LJ, dissenting. 3. [1988] 3 All ER 949. 4. [2005] All ER 636. 5. Section 3(A)(2) CDPA. 6. SAS Institute Inc v. World Programming Ltd [2010] EWHC 1829 (Ch), per Arnold J at [163]. 7. Infopaq International A/S v. Danske Dagbaldes Forening, Case C-5/08. 8. See The Newspaper Licensing Agency and others v. Meltwater Holding BV and others [2011] EWCA Civ 890. 9. Bezpe_nostní softwarová asociace - Svaz softwarové ochrany v. Ministerstvo kultury, Case C-393/09. 10. Per Jacob LJ Sawkins v. Hyperion, ibid, at [74]. 11. Newspaper Licensing Agency Ltd and other v. Meltwater Holding BV and other companies, [2010] EWHC 3099 (Ch). 12. Please note that Meltwater was heard by the Supreme Court on 11 February 2013 and was awaiting judgment at the time of writing. 13. Painer v. Standard Verlags GmbH, Case C-145/10. 14. The English courts had applied similar reasoning to still life photograph in Antiquesportfolio.com PLC v. Rodney Fitch & Co. Ltd. [2001] FSR 345. 15. Football Association Premier League Ltd & others v. QC Leisure & Others / Karen Murphy v. Media Protection Services Ltd, Cases C-403/08 and C429/08. 16. Football Dataco & others v. Yahoo UK! & others, Case C-604/10. 17. SAS Institute Inc v. World

E-Commerce Law & Policy - March 2013