Copyright and libel

Gillian Haggart Davies answers questions to draw out some of the legal issues and explain the basics of how copyright works, or should work, for the benefit of the writer.

Copyright is a negative right in the sense that it is not a right of possession but is a right of exclusion. However, if you know your rights it can be a strong legal tool because copyright law affords remedies in both the civil and criminal courts. Material will automatically be protected by copyright without registration (in the UK) if it is original, i.e. not copied. The onus is on you, the writer, and your publisher to do the work of protecting, policing and enforcing your valuable intellectual property. Copyright is different in every country – registration is not possible in the UK, Japan or the Netherlands; it is optional in the USA (for some works), China and India; and mandatory for some works in other jurisdictions (e.g. for some works in the Kyrgyz Republic, Mauritius and Nepal). Unfortunately, generally speaking, people do not respect copyright and there are ongoing issues to do with copyright, especially online, with large expanses of ‘grey areas’.

I am a freelance writer and submitted an article to a magazine editor and heard nothing back. Six months later I read a feature in a Sunday newspaper which looks very similar. Can I sue someone?

Pitching ideas can be fraught with difficulty. In legal terms you do not have any protection under copyright law for ‘ideas’, but only for ‘the expression of those ideas’ – for the way in which the ideas have been ‘clothed in words’ to paraphrase a Learned Judge. It could be argued that in many ways this distinction between ideas and their expression does not work for writing and ‘literary works’. But that won’t help you in court or get you legal recompense if you are ripped off.

In the situation described, you would need to prove that your work came first in time; that your work was seen by the second writer or publisher; and that the second person copied unlawfully a ‘substantial part’ of your work (this is qualitative not quantitative), which these days involves a very woolly and subjective judicial comparison of one work weighed against the other. You would also need to be able to counter any claims that the subject matter is not capable of being monopolised by you and show that there is actual language copying. Further, you might then have to fend off counter-arguments from the other party that you did not have copyright in the first place. The other writer can rely on a ‘defence’ that she has ‘incidentally included’ the text; or that her use is ‘fair dealing’ (because she is using it for a permitted purpose, for example of reporting news or current affairs; or that it is for research for non-commercial purposes; is included in educational materials (Indian case); or for private use; or for ‘criticism or review’; or that it is parody, pastiche or satire). These defences are actually referred to in the legislation as ‘exceptions’ and are very strict, i.e. they have always been difficult to make out.

I am writing an (unauthorised) biography of a novelist. Can I quote her novels – since they are published and ‘public domain’?

Using extracts and quotes is a very difficult area and there is no easy answer to this. If the author has definitely been deceased for 70 years or more, you may be fine; the work may have passed into the ‘public domain’. However, unpublished works require caution. In general, unpublished works are protected by copyright as soon as they are ‘expressed’ and copyright belongs to the author until/unless published and rights are transferred to a publisher. Protection for unpublished works lasts for 50 years (usually); Crown copyright lasts for 125 years for unpublished works, etc.

The US Supreme Court ruled in 2015 that Google’s use of scanned text extracts and images, used in its search engine to let users choose whether to go ahead and read/see the full work, was not in breach of copyright. The US Copyright Office said the defence is decided on a case-by-case basis. ‘The distinction between what is fair use and what is infringement in a particular case will not always be clear or easily defined. There is no specific number of words, lines, or notes that may safely be taken without permission. Acknowledging the source of the copyrighted material does not substitute for obtaining permission,’ the US Copyright Office said. There are, however, at least four factors that judges must consider when deciding fair use: the purpose of use, the nature of the copyrighted work, the amount and substantiality of the portion taken, and the effect of the use upon the potential market. Google had urged the justices to side against the writers because, in the end, their works would be more readily discovered: ‘Google Books gives readers a dramatically new way to find books of interest.’ Google has stated that ‘By formulating their own text queries and reviewing search results, users can identify, determine the relevance of, and locate books they might otherwise never have found.’

First steps legal advice may be available from the Society of Authors (see here), the Writers’ Guild of Great Britain (see here), the National Union of Journalists (NUJ), the Society for Editors and Proofreaders (SfEP, here) or your local BusinessLink or an intellectual property specialist adviser like Own-It or Artquest (which deals with the visual arts but carries advice applicable to writers too).

UK copyright law

Jonathan Moss describes the main types of work which may qualify for copyright protection, or related protection as a design, together with some of the problems which may be faced by readers of this Yearbook in terms of protecting their own works or avoiding infringement of existing works in the UK. This is a technical area of the law, and one which is constantly developing; it is not possible to deal fully with all the complexities of the law here. And it must also be emphasised that copyright is national in scope, so whilst works of UK authors will be protected in many other countries of the world, and works of foreign authors will generally be protected in the UK, foreign laws may deal differently with questions of subsistence, ownership and infringement.

Copyright law creates and protects a property right in a number of different kinds of works. UK copyright arises immediately upon creation of a relevant work, and provides its owner with the right to take action to prevent others from doing a number of ‘restricted acts’ without the owner’s consent.

The major UK statute is the Copyright, Designs & Patents Act 1988 (‘the Act’) which came into force on 1 August 1989. It replaced the Copyright Act 1956, which had replaced the first modern Act, the Copyright Act 1911. All three Acts remain relevant because a property right may last for many years (see below) and questions of the subsistence, ownership and protection of works may be tested according to the law in force at the time a work was made or first published.

Useful websites

www.acid.uk.com

Anti Copying in Design (A©ID)

/news-article/items/anti-copying-in-design-acidpolicy-position-repeal-of-section-52-of-thecopyright-designs-patent-act-cdpa-1988.html

www.bailii.org

Free and broadly comprehensive access to UK case law and legislation, with links to equivalent foreign websites. Legislation on the site may not be updated.

www.bfm.org.uk

British Furniture Manufacturers

www.dacs.org.uk

Designers’ and Artists’ Society (DACS)

www.fact-uk.org.uk

Federation Against Copyright Theft (FACT)

www.gov.uk/government/organisations/intellectual-property-office

Useful information, guidance notes and legislation are available on the website of the UK Intellectual Property Office (erstwhile Patent Office).

www.gov.uk/government/publications/copyright-protection-of-industriallymanufactured-artistic-works

Furniture and Craft Latest: Copyright protection of industrially manufactured artistic works

www.gov.uk/topic/intellectual-property/copyright

www.gov.uk/government/news/changes-to-copyright-law

Up-to-date information on the latest changes in legislation and draft Regulations.

www.wipo.int

World Intellectual Property Organisation

Since the 1988 Act came into force it has been amended pretty much continuously, mainly in the light of various EU Directives. An important change occurred on 1 January 1996, when the duration of copyright protection in respect of most works (see below) was extended from ‘life of the author’ plus 50 years to life plus 70 years. Important changes were made by the Broadcasting Acts of 1990 and 1996, and new rights have been created, such as the database right which came into existence on 1 January 1998, and the important Community registered and unregistered design rights which came into effect in 2003. Numerous other changes have been made, some of the most significant arose out of the Information Society Directive (2001/29), implemented by the Copyright and Related Rights Regulations 2003, which sought in particular to meet the challenges posed by the Internet and electronic rights management, and changes to remedies required by the Enforcement Directive (2004/48) and by the Digital Economy Act 2010. Amendments in 2014 affected rights in relation to extracting quotes, parody and satire, and using extracts in excerpts (Copyright and Rights in Performances (Quotation and Parody) Regulations 2014).

If the UK does leave the EU (meaning the Copyright Directive [and the 1988 Act] may be ‘unpicked’ ... we may see UK copyright law move further in the direction of the US and its DMCA (Digital Millennium Copyright Act).

Continuing relevance of old law

If a work was made before 1 August 1989 we need to consider the law in force at the time of its creation (or, possibly, first publication) to assess the existence or scope of any rights. Particular difficulties arise with foreign works, which may qualify for protection in the UK as a matter of international obligation. Each Act has contained transitional provisions and these, as well as the substantive provisions of any relevant earlier Act, need to be considered where, for instance, you wish to use an earlier work and need to decide whether permission is needed and, if so, who may grant it. In addition, publishing or licence agreements designed for use under older Acts and prior to the development of modern technologies may be unsuitable for current use.

Copyright does not subsist in ideas – that is the province of patents and the law of confidence. Copyright protects the expression of ideas, the particular form of the subject matter in which the author’s idea has been expressed, not the idea itself. This distinction was examined in Baigent & Leigh v. The Random House Group [2007] FSR 24: Dan Brown was alleged to have copied the ‘Central Theme’, consisting of a series of historical facts, conjectures or theories, from the Claimants’ book, The Holy Blood and the Holy Grail, in writing his bestselling novel The Da Vinci Code. Whilst the judge found evidence of copying, the Court of Appeal held that what Dan Brown took from HBHG ‘amounted to generalised propositions, at too high a level of abstraction to qualify for copyright protection, because it was not the product of the application of skill and labour by the authors of HBHG in the creation of their literary work. It lay on the wrong side of the line between ideas and their expression.’ (Lloyd LJ at para. 99). Copyright does not ‘extend to clothing information, facts, ideas, theories and themes with exclusive property rights, so as to enable the Claimants to monopolise historical research or knowledge and prevent the legitimate use of historical and biographical material, theories... arguments... general hypotheses... or general themes’ (Mummery LJ at para. 156).

The difficulty in seeking to apply this guidance to other cases is that the Court of Appeal emphasised that case-law cannot lay down any clear principle from which one may tell whether what is sought to be protected in any particular case is on the ‘ideas’ side of the dividing line, or on the ‘expression’ side. What can be said is that in cases of artistic copyright at least, ‘...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.’ (Lord Hoffman in Designers Guild v. Russell Williams (Textiles) Ltd [2000] 1 WLR 2416). These pre-2009 UK decisions may need to be re-evaluated in the light of the breadth of the CJEU’s decision in Infopaq (see below), a case whose relevance is itself currently under review (with Brexit).

One area of particular difficulty for establishing a dividing line between ideas and expression is photography. This problem was an issue in the case of Temple Island Collections v. New English Teas [2012] FSR 9 where a photographer had taken a picture of a red London bus going over Westminster Bridge with the houses of Parliament in the background. The picture had then been manipulated to remove all colour except for that of the red London bus. A similar, but not identical photo was then created by the defendant. The judge held that the later photograph was an infringing copy. Whether this case of similar works infringing will be applied outside of manipulated photographs remains to be seen, but at the time of writing it has not yet been followed in another case.

Of course, if someone has written an outline, script or screenplay for a television show, film, etc and that idea is confidential, then dual protection may arise in the confidential idea embodied in the documents and in the literary (and sometimes artistic) works in which the idea is recorded. If the idea is used, but not the form, this might give rise to an action for breach of confidence, but not for infringement of copyright. Copyright prevents the copying of the material form in which the idea has been presented, or of a substantial part of it, measured in terms of quality, not quantity (see further below). One result is that so-called ‘format right’ cases rarely succeed.

Section 1 of the Act sets out a number of different categories of works which can be the subject of copyright protection. These are:

• original literary, dramatic, musical or artistic works,

• sound recordings, films or broadcasts, and

• typographical arrangements of published editions.

These works are further defined in ss.3–8 (see box for examples).

However, no work of any description enjoys copyright protection until it has been recorded in a tangible form, as s.3(2) provides that no copyright shall subsist in a literary, musical or artistic work until it has been recorded in writing or otherwise.

On the other hand, all that is required to achieve copyright protection is to record the original work in an appropriate medium. Once that has been done, copyright will subsist in the work in the UK (assuming that the qualifying features set out below are present) without any formality of registration or otherwise. There is, for instance, no need to publish a work to protect it. However, where a work is unpublished, it will be more difficult for a party to prove that another party copied that work.

Nonetheless, you can derive practical benefits from keeping a proper record of the development, design and creation of a work. Drafts or preliminary sketches should be kept and dated, as should source or research material, to be able to show the development of your work. It is also a wise precaution (especially where works are to be submitted to potential publishers or purchasers) to take a complete copy of the documents and lodge them with a third party, sealed and dated, as to be able to provide cogent evidence of the form or content of the work at that date. Such evidence may help the author, whether as claimant or defendant, to prove the independence of the creation of his work and its originality in a copyright infringement or breach of confidence action. If, as is often the case, a work is being prepared on a computer, it is advisable to keep separate electronic copies of each stage at which the work is potentially revealed to third parties.

Originality

Under the 1988 Act, literary, dramatic, artistic and musical works must be ‘original’ to qualify for copyright protection. According to the CJEU in Infopaq (above), originality means that a work must be ‘its author’s own intellectual creation’. Subject to that point, UK law does not impose any concept of objective originality. Originality relates to the ‘expression of the thought’, rather than to the thought itself. The policy of copyright protection and its limited scope explain why the threshold requirement of originality does not impose ‘any objective standard of novelty, usefulness, inventiveness, aesthetic merit, quality or value’; so, a work may be ‘complete rubbish’, yet have copyright protection (see again Mummery LJ in Sawkins). A work need only be original in the sense of being the product of skill and labour on the part of the author.

There may be considerable difficulty, at times, in deciding whether a work is of sufficient originality, or has sufficient original features to attract copyright, particularly if there have been a series of similar designs, see e.g. L.A. Gear Inc. [1993] FSR 121, Biotrading [1998] FSR 109. There are similar difficulties where there has been amendment of an existing work. In Sawkins (above), the question was whether or not the editorial work done by Dr Sawkins on works by the baroque composer, Lalande, had created new musical works. The result turned partly on the definition of ‘music’, but the nature of Dr Sawkins’ input was such that he was found to have created an original musical work with its own copyright. So an adaptation of an existing work may have its own copyright protection (see Cala Homes [1995] FSR 818) but making a ‘slavish copy’ of a work will not create an original work: (Interlego AG [1989] AC 217). This is a matter of degree – some copying may take skill (Jacob LJ in Sawkins). If the work gives particular expression to a commonplace idea or an old tale, copyright may subsist in it, for example in Christoffer v. Poseidon Film Distributors Limited (6/10/99) a script for an animated film of a story from Homer’s Odyssey was found to be an original literary work. But, as the Da Vinci case showed, whilst copyright may subsist in the work, the unlicensed use only of facts or ideas contained in it may not infringe that copyright. Copyright protection will be limited to the original features of the work, or those features created or chosen by the author’s input of skill and labour.

Historically, the titles of books and periodicals, headlines, or phrases like advertising slogans, were not generally given copyright protection, however much original thought was involved in their creation, because they were too short to be deemed literary works. Following Infopaq, that may no longer be the case, because the CJEU said that even a short part of a longer work may be entitled to copyright protection if that part also amounts to its author’s ‘own intellectual creation’. In Newspaper Licensing Agency Ltd v. Meltwater Holding BV [2011] RPC 7, it was therefore held that headlines were capable of being literary works, whether independently or as part of the articles to which they related, depending upon the process of creation and the identification of the skill and labour that had gone into them. The Meltwater case was appealed up to the Supreme Court and part of the case has now been referred to the CJEU, however the question on the appeal is whether or not temporary copies of these headlines created by browsing fall within an exception that allows a defence of copyright infringement for temporary copies.

The CJEU has also held, in relation to portrait photographs, that the level of creativity required for a work to be original is minimal (Painer [2012] ECDR 6). Thus for photographs the angle, composition and special techniques used may be enough to give even the most basic photograph copyright protection. Therefore, even very short excerpts of text, from a headline or from a book, or very simple photographs, could theoretically infringe another person’s copyright. However, it is very hard to determine where exactly this line will get drawn.

Sound recordings or films which are copies of pre-existing sound recordings or films, and broadcasts which infringe rights in another broadcast are not protected by copyright.

Computer ‘languages’, and the ideas or logic underlying them, are not protected as copyright works; such protection extends only to the computer programs: see Navitaire v. Easyjet [2004] EWHC 1725. So it is legitimate to emulate a program for a computer game and produce a game with similar characteristics, as long as the program code and the graphics are not copied (Nova Productions Limited v. Mazooma Games Limited [2007] RPC 25). In the case of SAS Institute (2013 EWHC 69) the court held, following a response from the CJEU, that copyright in a computer program does not protect either the programming language in which it is written or its interfaces (specifically, its data file formats) or its functionality from being copied. The SAS case is currently under appeal and the issue of what copyright in software actually protects will not be fully resolved for a number of years.

Qualification

The Act is limited in its effects to the UK (and for example to colonies to which it may be extended by Order). It is aimed primarily at protecting the works of British citizens, or works first published in the UK. However, in line with various international conventions, copyright protection in the UK is also accorded to the works of nationals of many foreign states, as well as to works first published in those states, on a reciprocal basis.

There is a principle of equal treatment for works of nationals of other member states of the European Union, so that protection must be offered to such works here: see Phil Collins [1993] 3 CMLR 773.

The importance of these rules mainly arises when one is trying to find out whether a foreign work is protected by copyright here, for instance, to make a film based upon a foreign novel.

Traditionally, if a work was not protected in the UK then it could be copied in the UK, even if it was in copyright elsewhere, i.e. copyright was a territorial right limited in its scope. This is still the case, but a corollary of this was that a defendant could only be sued in the country where the infringement occurred. However, the recent decision of the Supreme Court in Lucasfilm v. Ainsworth [2012] 1 AC 208 means that an action can now be brought in England for the infringement of US copyright in the USA (e.g. if a party sells into the USA through the internet). This still requires an infringement to occur in the USA but this is relatively easy due to the presence of the internet.

Definitions under the Act

Literary work is defined as: ‘any work, other than a dramatic or musical work, which is written, spoken or sung, and accordingly includes: (a) a table or compilation other than a database, (b) a computer program, (c) preparatory design material for a computer program and (d) a database.’

A musical work means: ‘a work consisting of music, exclusive of any words or action intended to be sung, spoken or performed with the music.’

An artistic work means: ‘(a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality, (b) a work of architecture being a building or model for a building, or (c) a work of artistic craftsmanship.’ What constitutes a sculpture or work of artistic craftsmanship was discussed in relation to Star Wars stormtrooper helmets in Lucasfilm v. Ainsworth. The Supreme Court held that the stormtrooper helmet (and the rest of the armour) was a work of neither sculpture nor artistic craftsmanship, instead it was properly protected by design law.

These categories of work are not mutually exclusive, e.g. a film may be protected both as a film and as a dramatic work. See Norowzian v. Arks [2000] FSR 363. However, the position as to databases is particularly complicated: rights may arise under the Act or under the Database Directive 96/9, the question of how this works has been referred to the CJEU: see Football Dataco Ltd v. Yahoo! UK Ltd [2010] EWCA Civ 1380,9 Dec 2010.

The Lucasfilm scenario has now been applied in the US ‘monkey selfie’/‘non-human animal’ case: a dispute between photographers (human and simian) and Wikipedia, considering ‘originality’ and jurisdiction: is it the place of taking the photo, or the country where it is published that determines the applicable copyright law to determine the picture’s originality?

In terms of the threshold for originality, Brexit comes into play, so we watch developments closely. EU law applies a lower standard of originality than the UK Act.

Ownership

The general rule is that the copyright in a work will first be owned by its author, the creator of the work. The definition of ‘author’ in relation to films and sound recordings has changed over the years; currently, the author of a sound recording is its producer, and the authors of a film are the producer and principal director.

One important exception to the general rule is that the copyright in a work made by an employee in the course of his or her employment will belong to their employer, subject to any agreement to the contrary. However, this rule does not apply to freelance designers, journalists, etc and not even to self-employed company directors. This obviously may lead to problems if the question of copyright ownership is not dealt with when an agreement is made to create, purchase or use a work. In the absence of an appropriate agreement, the legal title may simply not be owned by the apparent owner, who will generally need it if he wishes to sue for infringement, and it is often difficult to formalise the position long after creation of the work. More importantly, perhaps, there have been numerous cases in which the extent of the rights obtained in a ‘commissioned’ work has been disputed, simply because of the lack of any clear agreement at the outset between the author and the ‘commissioner’. See for example Griggs v. Evans (below). It is very important for writers and artists of all kinds to agree about ownership/terms of use at the outset and record them in writing, particularly where you are being paid to create a work – any such arrangement may be a ‘commission’. It is equally important to understand the difference between an assignment and a licence (again, see below).

Where a work is produced by several people who collaborate so that each one’s contribution is not distinct from that of the other(s), then they will be joint authors of the work, for example where two people write a play, each rewriting what the other produces, there will be a joint work. But where two people collaborate to write a song, one producing the lyrics and the other the music, there will be two separate copyright works, the copyright of which will be owned by each of the authors separately. The importance of knowing whether the copyright is joint or not arises:

• in working out the duration of the copyright, and

• from the fact that joint works can only be exploited with the agreement of all the joint authors, so that all of them have to join in any licence, although each of them can sue for infringement without joining the other(s) as a claimant in the proceedings.

Duration of copyright

Since 1 January 1996, copyright in literary, dramatic, musical or artistic works has expired at the end of the period of 70 years from the end of the calendar year in which the author dies (s.12(1)). Where there are joint authors, then the 70 years runs from the death of the last of them to die. If the author is unknown, there will be 70 years protection from the date the work was made or (where applicable) first made available to the public. Previously, the protection was for ‘life plus 50’. (NB See ‘Infringement’ below for important limits on the copyright protection of artistic works.)

The extended 70-year term also applies to films, and runs from the end of the calendar year in which the death occurs of the last to die of the principal director, the author of the screenplay or the dialogue, or the composer of any music created for the film (s.13B). This obviously may be a nightmare to establish, and there are certain presumptions in s.66A which may help someone wishing to use material from an old film.

However, sound recordings are still protected by copyright only for 50 years from the year of making or release (s.13A). This affects many ‘classic’ recordings of pop music, and (after much international negotiation) it is possible, though not certain, that the term may be extended to 70 or even 95 years. Broadcasts and computer-generated works get only 50 years protection.

The new longer term applies without difficulty to works created after 1 January 1996 and to works in copyright on 31 December 1995. The owner of the extended copyright will be the person who owned it on 31 December 1995, unless he had only a limited term of ownership, in which case the extra 20 years will be added on to the reversionary term.

Where copyright had expired here, but the author died between 50 and 70 years ago, the position is more complicated. EC Directive 93/98 provided that if a work was protected by copyright anywhere in the EU on 1 July 1995, copyright would revive for it in the other EU states until the end of the same 70-year period. This may make it necessary to look at the position in the states offering a longer term of protection, namely Germany, France and Spain.

Ownership of the revived term of copyright will belong to the person who was the owner of the copyright when the initial term expired, though if that person died (or a company, etc ceased to exist) before 1 January 1996, then the revived term will vest in his personal representatives.

Any licence affecting a copyright work which was in force on 31 December 1995 and was for the full term of the copyright continues to have effect during any extended term of copyright, subject to any agreement to the contrary.

The increased term offered to works of other EU nationals as a result of the Term Directive is not offered automatically to the nationals of other states, but will only apply where an equally long term is offered in their state of origin.

Where acts are carried out in relation to such revived copyright works as a result of things done whilst they were in the public domain, protection from infringement is available. A licence as of right may also be available, on giving notice to the copyright owner and paying a royalty.

In 2016, the term of protection for unregistered works of artistic craftsmanship (e.g. retro furniture), was hiked from 25 to 70 years, causing alarm among repromanufacturers and retailers.

Dealing with copyright works

Ownership of the copyright in a work gives the exclusive right to deal with the work in a number of ways, and essentially stops all unauthorised exploitation of the work. Ownership of the copyright is capable of being separated from ownership of the material form in which the work is embodied, depending upon the terms of any agreement or the circumstances. So, buying an original piece of artwork will not in general carry with it the legal title to the copyright, as an effective assignment must be in writing signed by the assignor (although beneficial ownership might pass: see below).

• Assignment. In an assignment, rights in the work are sold, with the owner retaining no interest in it (except, possibly, for a claim to royalties). An assignment must be in writing, signed by or on behalf of the assignor, but no other formality is required. One can make an assignment of future copyright under s.91: Where the author of a work not yet made agrees in writing that he will assign the rights in the future work to another, copyright vests in the assignee immediately upon the creation of the work, without further formalities.

• Licensing. A licence arises where permission is granted to another to exploit the right whilst the licensor retains overall ownership. Licences do not need to take any particular form, and may be granted orally. However, an exclusive licence (i.e. one which excludes even the copyright owner himself from exploiting the work) must be in writing if the licensee is to enjoy rights in respect of infringements concurrent with those of the copyright owner. Non-exclusive licensees get more limited rights. See ss.101 and 101A of the Act.

Agreements dealing with copyright should make it clear whether an assignment or a licence is being granted. There may be significant advantages for an author in granting only a licence, for a third party who acquires the assignee’s rights will not necessarily be subject to the assignee’s obligations, for example to pay royalties (see Barker v. Stickney [1919] 1 KB 121). However, an assignment may expressly provide for the rights to revert to the author if the assignee breaches the agreement (see Crosstown Music v. Rive Droite Music [2011] FSR 5). If it is unclear whether a licence or an assignment was intended or agreed, the Court is likely to find that the grantee took the minimum rights necessary for his intended use of the work, quite probably an exclusive licence rather than an assignment (Ray v. Classic FM plc [1998] FSR 622), unless the work was ‘commissioned’ from the author. This case, Griggs (see above), and many other similar disputes, show how very important it is, if you make an agreement to create a work for someone else, or ask someone to make a work for you or your business, to discuss who is to own the copyright, or what is to be the extent of any licence, and to record the agreed position in writing. The question of moral rights (see below) should also be considered by the parties.

Assignments and licences often split up the various rights contained within the copyright. So, for instance, a licence might be granted to one person to publish a novel in book form, another person might be granted the film, television and video rights, and yet another the right to translate the novel into other languages. Obviously, the author should seek to grant the narrowest possible rights on each occasion and retain other rights for future exploitation. All such agreements must be drafted carefully; the author must negotiate as best he can. Failure to make clear what is covered by a licence can lead to problems. It is particularly important to make clear what forms of exploitation are licensed, and whether the licence will extend to new technologies. See for example MGN Ltd v. Grisbrook [2011] ECDR 4: photos held in a picture library were not licensed for use on a website.

Assignments and licences may also confer rights according to territory, dividing the USA from the EU or different EU countries one from the other. Any such agreement should take into account divergences between different national copyright laws. Furthermore, when seeking to divide rights between different territories of the EU there is a danger of infringing the competition rules of the EU. Professional advice should be taken, as breach of these rules may attract a fine and can render the agreement void in whole or in part.

Licences can, of course, be of varying lengths. There is no need for a licence to be granted for the whole term of copyright. Well-drafted licences will provide for termination on breach, including the failure of the licensee to exploit the work, and on the insolvency of the licensee and will specify whether the rights may be assigned or sub-licensed.

Copyright may be assigned by will. A bequest of an original document, etc embodying an unpublished copyright work will carry the copyright.

Infringement

The main type of infringement is what is commonly thought of as plagiarism, that is, copying the work. In fact, copyright confers on the owner the exclusive right to do a number of specified acts, so that anyone doing those acts without his permission will normally infringe. It is not necessary to copy a work exactly or use all of it; it is sufficient if a substantial part is used. That question is to be judged on a qualitative not a quantitative basis, bearing in mind that it is the skill and labour of the author which is to be protected (see Ravenscroft v. Herbert [1980] RPC 193 and Designers Guild). The ECJ has recently held that an extract just 11 words long might be protected, if it reproduced ‘the expression of the intellectual creation of their author’ – see Infopaq (above), as might a newspaper headline: see Meltwater (in ‘Originality’ section above). Primary infringement, such as copying, can be committed innocently of any intention to infringe. In the UK, unauthorised reproduction of TV clips of cricket matches lasting for up to 8 seconds was considered an infringement (England and Wales Cricket Board v. Tixdaq Ltd [2016] EWHC 575 (Ch)

The form of infringement common to all forms of copyright works is that of copying. This means reproducing the work in any material form. Infringement may occur from direct copying or where an existing work provides the inspiration for a later one, for example by including edited extracts from a history book in a novel (Ravenscroft), using a photograph as the inspiration for a painting (Baumann v. Fussell [1978] RPC 485), or words from a verse of one song in another (Ludlow Music v. Williams [2001] FSR 271). Infringement will not necessarily be prevented merely by the application of significant new skill and labour by the infringer, nor by a change of medium.

In the case of a two-dimensional artistic work, reproduction can mean making a copy in three dimensions, and vice versa. However, s.51 of the Act provides that in the case of a ‘design document or model’ (for definition, see ‘Design right’ below) for something which is not itself an artistic work, it is no infringement to make an article to that design. This means that whilst it would be an infringement of copyright to make an article from a design drawing for, say, a sculpture, it will not be an infringement of copyright to make a handbag from a copy of the design drawing for it, or from a handbag which one has purchased.

Copying a film, broadcast or cable programme can include making a copy of the whole or a substantial part of any image from it (see s.17(4)). This means that copying one frame of the film will be an infringement. It is not an infringement of copyright in a film to reshoot the film (Norowzian) (though there would doubtless be an infringement of the copyright in underlying works such as the literary copyright in the screenplay).

Copying is generally proved by showing substantial similarities between the original and the alleged copy, plus an opportunity to copy. Surprisingly often, minor errors in the original are reproduced by an infringer.

Copying need not be direct, so that, for instance, where the copyright is in a fabric design, copying the material without ever having seen the original drawing will still be an infringement, as will ‘reverse engineering’ of industrial designs, for example to make unlicensed spare parts (British Leyland [1986] AC 577; Mars v. Teknowledge [2000] FSR 138).

Issuing copies of a work to the public (e.g. by putting them on sale) when they have not previously been put into circulation in the UK is also a primary infringement of all types of work.

Other acts which may amount to an infringement depend upon the nature of the work. It will be an infringement of the copyright in a literary, dramatic or musical work to perform it in public, whether by live performance or by playing recordings. Similarly, it is an infringement of the copyright in a sound recording, film, broadcast or cable programme to play or show it in public. Many copyright works will also be infringed by the rental or lending of copies of the work.

It is also an infringement to ‘communicate’ a work to the public, especially by making it available electronically, such as on the internet (s.20). See, for example, Twentieth Century Fox v. Newzbin [2010] EWHC 608 (infringement by facilitating illegal downloading). The Digital Economy Act 2010 is designed to control online infringement of copyright (especially in music, films and games) by imposing duties on ISPs, with an industry code to be approved or made by Ofcom.

It is also possible to infringe by making an adaptation of a literary, dramatic or musical work. An adaptation includes, in the case of a literary work, a translation, in the case of a non-dramatic work, making a dramatic work of it, and vice versa. A transcription or arrangement of a musical work is an adaptation of it.

There are also a number of ‘secondary’ (but nonetheless very common and commercially important) infringements – see box.

It is also an infringement to authorise another person to commit any act of primary infringement.

As copyright law is territorial, it is only an infringement of UK copyright to carry out the prescribed acts in the UK, save that it is possible to infringe by authorising an infringement in the UK even where the act of authorisation takes place abroad.

Exceptions to infringement

The Act provides a large number of exceptions to the rules on infringement.

UK design right

Many designs are excluded from copyright protection by s.51 (see above). Section 52 of the Act used to limit the term of copyright protection given to certain types of artistic works, if they were applied industrially, to 25 years from first industrial application. However, at the time of writing s.52 is in the process of being repealed and therefore many newly created designs now will receive protection for the full term of copyright rather than being limited to 25 years. Such artistic works may instead be protected by the UK unregistered ‘design right’ created by ss.213–64 of the Act or by Community design right. Like copyright, design right depends upon the creation of a suitable design by a ‘qualifying person’. The term for protection of 2D works is scheduled to be extended from 25 to 70 years by a low which is due to be brought into force in 2020 by the Enterprise and Regulatory Reform Act 2013 Commencement No. 8 2015 Order.

‘Secondary’ infringements

Secondary infringements consist not of making infringing copies, but of dealing with existing infringing copies in some way. It is an infringement to import an infringing copy into the UK, and to possess in the course of business, or to sell, hire, offer for sale or hire, or distribute in the course of trade an infringing copy. However, none of these acts will be an infringement unless the alleged infringer knew or had reason to believe that the articles were infringing copies. What is sufficient knowledge will depend upon the facts of each case (see LA GearInc [1992] FSR 121, ZYXRecords v. King [1997] 2 All ER 129 and PensherSecurity [2000] RPC 249). Merely putting someone on notice of a disputeas to ownership of copyright may not suffice to give him or her reason to believe in infringement for this purpose. But someone who is informed that he is infringing ‘yet carries out no sensible enquiries, and does nothing in the face of continued assertions of the copyright’ may become someone with ‘reason to believe’ the claim: Nouveau Fabricsv. Voyage Decoration [2004] EWHC 895; Hutchison [1995] FSR 365.

Other secondary infringements consist of permitting a place to be used for a public performance in which copyright is infringed and supplying apparatus to be used for infringing public performance, again, in each case, with safeguards for innocent acts.

To be liable for secondary acts of infringement, the secondary infringer must have some actual or imputed knowledge of primary infringement of the work.

And the provision of a hyperlink could potentially also be a form of secondary infringement (GS Media v. Sanoma Media Netherlands, European Court of Human Rights).

UK unregistered design right is granted to original designs consisting of the shape or configuration (internal or external) of the whole or part of an article, not being merely ‘surface decoration’. Even very simple designs may be protected. However, a design is not original if it was commonplace in the design field in question at the time of its creation, meaning a design of a type which would excite no ‘peculiar attention’ amongst those in the trade, or one which amounts to a run-of-the-mill combination of well-known features (Farmers Build [1999] RPC 461). Designs are not protected if they consist of a method or principle of construction, or are dictated by the shape, etc of an article to which the new article is to be connected or of which it is to form part, the so-called ‘must-fit’ and ‘must-match’ exclusions. In Ocular Sciences [1997] RPC 289, these exclusions had a devastating effect upon design rights claimed for contact lens designs. See also Dyson v. Qualtex [2006] RPC 31 in which these exclusions were applied to spare parts for Dyson vacuum cleaners.

UK design right subsists in designs made by or for qualifying persons (see, broadly, ‘Qualification’, above) or first marketed in the UK or EU or any other country to which the provision may be extended by Order.

UK design right lasts only 15 years from the end of the year in which it was first recorded or an article made to the design, or (if shorter) ten years from the end of the year in which articles made according to the design were first sold or hired out. During the last five years of the term of protection, a licence to use the design can be obtained ‘as of right’ on payment of a proper licence fee. Hence, design right may give only five years ‘absolute’ protection, as opposed to the ‘life plus 70’ of copyright.

The designer will be the owner of the right, unless it was commissioned, in which case the commissioner will be the first owner. An employee’s designs made in the course of employment will belong to the employer. The right given to the owner of a design right is the exclusive right to reproduce the design for commercial purposes. The rules as to assignments, licensing and infringement, both primary and secondary, are substantially similar to those described above in relation to copyright, as are the remedies available.

The law on UK registered designs coexists with the right given by the unregistered UK design right discussed above. The Registered Design Act 1949 has been amended (and expanded) in line with EU legislation, and permits the registration of designs consisting of the appearance of the whole or any part of a product resulting from features of the product itself, such as shape, materials, etc or from the ornamentation of the product. It covers industrial or handicraft items, their packaging or get-up, etc. Designs must be novel and not solely dictated by function. The range of designs which may be registered is wider than under the old law, and designs need not necessarily have ‘eye appeal’. Such designs provide a monopoly right renewable for up to 25 years. For further explanation see the guidance on the Patent Office website.

Community designs

In addition to UK design right and registered designs, EU Regulation 6/2002 created two Community design regimes, one for registered and one for unregistered designs. It is increasingly common for designers to rely on Community design right, especially where there are problems in relying on UK design right, for example where a surface decoration, pattern or colouring is central to the design. Artists and industrial designers may wish to consider registering their designs, whilst infringements should now generally be considered under both the UK and Community design right regimes.

It is not possible in the space available here to describe these new regimes in detail but the Regulation is available online via https://oami.europa.eu/ohimportal/en/community-design-legal-texts.

Moral rights

The Act also provides for the protection of certain ‘moral rights’.

The right of ‘paternity’ is for the author of a copyright literary, dramatic, musical or artistic work, or the director of a copyright film, to be identified as the author/director, largely whenever the work is commercially exploited (s.77). See Sawkins.

However, the right does not arise unless it has been ‘asserted’ by appropriate words in writing (see end), or in the case of an artistic work by ensuring that the artist’s name appears on the frame, etc. There are exceptions to the right, in particular where first ownership of the copyright vested in the author’s or director’s employer.

The right of ‘integrity’ protects work from ‘derogatory treatment’, meaning an addition to, deletion from, alteration or adaptation of a work which amounts to distortion or mutilation of the work or is otherwise prejudicial to the honour or reputation of the author/ director. Again, infringement of the right takes place when the maltreated workis published commercially or performed or exhibited in public. There are various exceptions set out in s.81 of the Act, in particular where the publication is in a newspaper, etc and the work was made for inclusion in it or made available with the author’s consent.

Where the copyright in the work vested first in the author’s or director’s employer, he or she has no right to ‘integrity’ unless identified at the time of the relevant act or on published copies of the work.

These rights subsist for as long as the copyright in the work subsists.

A third moral right conferred by the Act is not to have a literary, dramatic, musical or artistic work falsely attributed to one as author, or to have a film falsely attributed to one as director, again where the work in question is published, etc. This right subsists until 20 years after a person’s death.

None of these rights can be assigned during the person’s lifetime, but all of them either pass on the person’s death as directed by his or her will or fall into his residuary estate.

A fourth but rather different moral right is conferred by s.85. It gives a person who has commissioned the taking of photographs for private purposes a right to prevent copies of the work being issued to the public, etc.

The remedies for breach of these moral rights again include damages and an injunction, although s.103(2) specifically foresees the granting of an injunction qualified by a right to the defendant to do the acts complained of, if subject to a suitable disclaimer.

Moral rights are exercisable in relation to works in which the copyright has revived subject to any waiver or assertion of the right made before 1 January 1996 (see details as to who may exercise rights in paragraph 22 of the Regulations).

NOTICE

JONATHAN MOSS hereby asserts and gives notice of his right under s.77 of the Copyright, Designs & Patents Act 1988 to be identified as the author of the foregoing article.

Jonathan Moss is a barrister in private practice in London, and specialises in patents, copyright, designs, trade marks, and similar intellectual property and ‘media’ work. He is also a qualified US lawyer, being a member of the New York State Bar.

See also…

• Copyright questions, here

Since 1983, the CLA has been the recognised UK collective rights licensing body for text and images from book, journal and magazine content.

CLA provides rights, content and licensing services to customers in the academic, professional and public sectors. It performs collective licensing on behalf of ALCS (the Authors’ Licensing and Collecting Society Ltd) and the PLS (Publishers’ Licensing Society) and other copyright owners. With streamlined workflow systems and over 30 years’ experience it is uniquely positioned to help content users access, copy and share the content they need while making sure copyright owners are paid the royalties they are due.

CLA’s licences permit limited copying from print and digital publications. This copying includes photocopying, scanning and emailing of articles and extracts from books, journals and magazines, as well as digital copying from electronic publications, online titles and websites. CLA issues its licences to schools, further and higher education, businesses and government bodies. The money collected is distributed to the copyright owners to ensure that they are fairly rewarded for the use of their intellectual property.

Why was CLA established?

CLA was set up in 1983 by its founding members, the Authors’ Licensing and Collecting Society (see here) and the Publishers Licensing Society (PLS). CLA represents creators and publishers by licensing the copying of their work and promoting the role and value of copyright. By championing copyright it is helping to sustain creativity and maintain the incentive to produce new work. It also collects money for visual artists and has two other collective management organisation members who represent visual artists; DACS (Design and Artists Copyright Society here) and PICSEL (Picture Industry Collecting Society for Effective Licensing) distribute money from CLA licence fees to visual artists such as illustrators and photographers.

Further information

The Copyright Licensing Agency Ltd

Barnard’s Inn, 86 Fetter Lane, London EC4A 1EN

tel 020-7400 3100

email cla@cla.co.uk

website www.cla.co.uk

How CLA helps creators and users of copyright work

CLA provides content users with access to millions of titles worldwide. In return, CLA ensures that creators, artists, photographers and writers, along with publishers, are paid royalties for the copying, sharing and re-use of limited extracts of their published work.

Through this collective licensing system CLA is able to provide users with the simplest and most cost-effective means of obtaining authorisation for the use of their work.

CLA has licences which enable digitisation of existing print material, enabling users to scan and electronically send extracts from print copyright works as well as copy digital electronic and online publications, including websites.

Who is licensed?

CLA offers licences to three principal sectors:

• education (schools, further and higher education);

• government (central departments, local authorities, public bodies); and

• business (businesses, industry and the professions).

CLA offers licences to meet the specific needs of each sector and user groups within each sector. Depending on the requirement, there are both blanket and transactional licences available. Every licence allows copying from most print and digital books, journals, magazines and periodicals published in the UK.

The international dimension

Many countries have established equivalents to CLA and the number of such agencies is set to grow. Nearly all these agencies, including CLA, are members of the International Federation of Reproduction Rights Organisations (IFRRO).

Through reciprocal arrangements covering 36 overseas territories, including the USA, Canada and most EU countries, CLA’s licences allow copying from an expanding list of international publications. CLA receives monies from these territories for the copying of UK material abroad, passing it on to UK rights holders.

Distribution of licence fees

The fees collected from licensees are forwarded to ALCS, PLS, DACS and PISCEL for distribution to publishers, writers and visual artists. The allocation of fees is based on subscriptions, library holdings and detailed surveys of copying activity (see www.cla.co.uk/ who-receives-royalties and read the ‘Distribution Model Report’). CLA has collected and distributed over £1.4 billion as royalties to copyright owners since 1983. For the year 2015/16, £64.8 million was paid to creators and publishers in the UK and abroad.

CLA exist to simplify copyright for content users and copyright owners. They help their customers to legally access, copy and share published content while making sure copyright owners are paid royalties for the use of their work.

Their rights, licences and innovative digital services make it easy for content users across the academic, professional and public sectors to use and manage content from books, journals, magazines and online publications, including websites. By doing so they simplify access to the work of 87,000 authors, 25,000 visual artists and 3,500 publishers and play an important part in supporting the creative industries.

See also…

• Copyright questions, here

• Authors’ Licensing and Collecting Society, here

• DACS (Design and Artists Copyright Society), here

Authors’ Licensing and Collecting Society

The ALCS is the rights management society for UK writers.

ALCS (The Authors’ Licensing and Collecting Society) is the UK collective rights management society for writers. Established in 1977, it represents the interests of all UK writers and aims to ensure that they are fairly compensated for any works that are copied, broadcast or recorded.

A non-profit company, ALCS was set up in the wake of the campaign to establish a Public Lending Right (see here) to help writers protect and exploit their collective rights. Today, it is the largest writers’ organisation in the UK with a membership of approximately 90,000. In the financial year of 2015/16, over £30 million (net) in royalties were paid out to more than 77,000 writers.

ALCS is committed to ensuring that the rights of writers, both intellectual property and moral, are fully respected and fairly rewarded. It represents all types of writers and includes educational, research and academic authors drawn from the professions: scriptwriters, adaptors, playwrights, poets, editors and freelance journalists, across the print and broadcast media.

Membership

Authors’ Licensing and Collecting Society Ltd

1st Floor, Barnard’s Inn, 86 Fetter Lane,

London EC4A 1EN

tel 020-7264 5700

email alcs@alcs.co.uk

website www.alcs.co.uk

Chief Executive Owen Atkinson

Membership is open to all writers and successors to their estates at a one-off fee of £36 for Ordinary membership. Members of the Society of Authors, the Writers’ Guild of Great Britain, National Union of Journalists, Chartered Institute of Journalists and British Association of Journalists have free Ordinary membership of ALCS. Operations are primarily funded through a commission levied on distributions and membership fees. The commission on funds generated for Ordinary members is currently 9.5%. Most writers will find that this, together with a number of other membership benefits, provides good value.

Internationally recognised as a leading authority on copyright matters and authors’ interests, ALCS is committed to fostering an awareness of intellectual property issues among the writing community. It maintains a close watching brief on all matters affecting copyright, both in the UK and internationally, and makes regular representations to the UK government and the European Union.

ALCS collects fees that are difficult, time-consuming or legally impossible for writers and their representatives to claim on an individual basis, money that is nonetheless due to them. To date, it has distributed over £450 million in secondary royalties to writers. Over the years, ALCS has developed highly specialised knowledge and sophisticated systems that can track writers and their works against any secondary use for which they are due payment. A network of international contacts and reciprocal agreements with foreign collecting societies also ensures that UK writers are compensated for any similar use overseas.

The primary sources of fees due to writers are secondary royalties from the following:

Photocopying and scanning

The single largest source of income, this is administered by the Copyright Licensing Agency (CLA, see here). Created in 1982 by ALCS and the Publishers Licensing Society (PLS), CLA grants licences to users for copying books and serials. This includes schools, colleges, universities, central and local government departments, as well as the British Library, businesses and other institutions. Licence fees are based on the number of people who benefit and the number of copies made. The revenue from this is then split between the rights holders: authors, publishers and artists. Money due to authors is transferred to ALCS for distribution. ALCS also receives photocopying payments from foreign sources.

Foreign Public Lending Right

The Public Lending Right (PLR) system pays authors whose books are borrowed from public libraries. Through reciprocal agreements, ALCS members receive payment whenever their books are borrowed from German, Belgian, Dutch, French, Austrian, Estonian and Irish libraries. Please note that ALCS does not administer the UK Public Lending Right; this is managed directly by the UK PLR Office (see here).

ALCS also receives other payments from Germany. These cover the loan of academic, scientific and technical titles from academic libraries; extracts of authors’ works in textbooks and the press, together with other one-off fees.

Simultaneous cable retransmission

This involves the simultaneous showing of one country’s television signals in another country, via a cable network. Cable companies pay a central collecting organisation a percentage of their subscription fees, which must be collectively administered. This sum is then divided by the rights holders. ALCS receives the writers’ share for British programmes containing literary and dramatic material and distributes it to them.

Educational recording

ALCS, together with the main broadcasters and rights holders, set up the Educational Recording Agency (ERA) in 1989 to offer licences to educational establishments. ERA collects fees from the licensees and pays ALCS the amount due to writers for their literary works.

Other sources of income include a blank tape levy and small, miscellaneous literary rights.

Tracing authors

ALCS is dedicated to protecting and promoting authors’ rights and enabling writers to maximise their income. It is committed to ensuring that royalties due to writers are efficiently collected and speedily distributed to them. One of its greatest challenges is finding some of the writers for whom it holds funds and ensuring that they claim their money.

Any published author or broadcast writer could have some funds held by ALCS for them. It may be a nominal sum or it could run into several thousand pounds. Either call or visit the ALCS website – see box for contact details.

DACS (Design and Artists Copyright Society)

Established by artists for artists, DACS is the UK’s leading visual artists’ rights management organisation.

As a not-for-profit organisation, DACS translates rights into revenues and recognition for a wide spectrum of visual artists. It collects and distributes royalties to visual artists and their estates through its different services, including Payback, Dutch Public Lending Right, Artist’s Resale Right, Copyright Licensing and Artimage – in addition to lobbying, advocacy and legal advice for visual artists.

Contact details

DACS

33 Old Bethnal Green Road, London E2 6AA

tel 020-7336 8811

email info@dacs.org.uk

website www.dacs.org.uk

DACS is part of an international network of rights management organisations. Today DACS acts as a trusted broker for 90,000 artists and in 2015 it distributed £16.7 million in royalties to artists and estates. See website for more information about DACS and its services.

Payback

Each year DACS pays a share of royalties to visual artists whose work has been reproduced in UK magazines and books or broadcast on UK television channels. DACS operates this service for situations where it would be impractical or near impossible for an artist to license their rights on an individual basis, for example when a university student wants to photocopy pages from a book that features their work.

Artist’s Resale Right

The Artist’s Resale Right entitles artists to a royalty each time their work is resold for more than €1,000 by an auction house, gallery or dealer. See website for details of eligibility criteria. DACS ensures artists receive their royalties from qualifying sales not just in the UK but also from other countries in the European Economic Area (EEA). Since 1 January 2012 in the UK, artists’ heirs and beneficiaries can now benefit from these royalties.

This service benefits artists and their estates when their work is reproduced for commercial purposes, for example on t-shirts or greetings cards, in a book or on a website. DACS can take care of everything on behalf of the artist, ensuring terms, fees and contractual arrangements are all in order and in their best interests. Artists who use this service are also represented globally through the DACS international network of rights management organisations.

• Copyright is a right granted to visual artists under law.

• Copyright in all artistic works is established from the moment of creation – the only qualification is that the work must be original.

• There is no registration system in the UK; copyright comes into operation automatically and lasts the lifetime of the visual artist plus a period of 70 years after their death.

• After death, copyright is usually transferred to the visual artist’s heirs or beneficiaries. When the 70-year period has expired, the work then enters the public domain and no longer benefits from copyright protection.

• The copyright owner has the exclusive right to authorise the reproduction (or copy) of a work in any medium by any other party.

• Any reproduction can only take place with the copyright owner’s consent.

• Permission is usually granted in return for a fee, which enables the visual artist to derive some income from other people using his or her work.

• If a visual artist is commissioned to produce a work, he or she will usually retain the copyright unless an agreement is signed which specifically assigns the copyright. When visual creators are employees and create work during the course of their employment, the employer retains the copyright in those works.

See also…

• Freelancing for beginners, here

• How to get ahead in cartooning, here

• Copyright questions, here

• Copyright Licensing Agency, here

Defamation

The law of defamation affects writers in particular, but also artists and others involved in the creative industries. In this article, Alex de Jongh summarises its main principles. However, specific legal advice should be taken when practical problems arise – or better still, prior to publication, if problems are anticipated. The law discussed is that of England and Wales. Scottish law is similar, but there are a number of differences and these are briefly described.

1. Introduction

Defamation is a tort (a civil wrong). Its purpose is to vindicate an injured party’s reputation. Where the claimant is an individual, his or her reputation may be part of their right (under Article 8 of the European Convention on Human Rights, ECHR) to respect for their private and family life. The law seeks to balance that right against the competing right to freedom of expression under Article 10 of the ECHR.

Publication of a defamatory allegation can result in a civil claim for damages and/or an injunction to prevent repetition. Libel is no longer actionable under the criminal law.

There are two categories of defamation: libel and slander. A defamatory statement in permanent form is libel; where the form is transient, it is slander. ‘Permanent form’ includes writing, printing, drawings and photographs, radio and television broadcasts, film and tape recordings, and theatrical performances. Publications on the internet or in other electronic form will generally fall into the category of libel. Slander tends to be spoken, and claims are comparatively rare. Thus libel is more likely than slander to concern writers and artists professionally, and the slightly differing rules applicable to slander are not covered here.

Claims for libel almost invariably relate to the published word, but can be brought in respect of any other matter which conveys meaning, such as paintings or photographs. A colourful and often cited example is an 1894 claim against Madame Tussaud’s, arising out of the positioning of a waxwork of the claimant adjacent to the entrance of the Chamber of Horrors (the claimant successfully argued that this amounted, by innuendo, to an allegation that he was guilty of murder, but recovered damages of only one farthing).

Law reform

Following a long process of parliamentary gestation, the Defamation Act 2013 (‘2013 Act’) came into force on 1 January 2014. The new law applies to all claims brought in respect of material published since that date.

2. The ingredients of a claim: what does the Claimant need to prove?

The claimant must prove that the statement about which s/he complains:

• is defamatory;

• refers to him or her (or is capable of being understood as referring to him or her); and

• has been published by the defendant to a third party.

Each of these requirements is discussed in greater detail below. If the claimant can establish all three elements, s/he has a prima facie case, and the burden shifts to the defendant. The defendant will escape liability if s/he can show that s/he has a good defence.

2.1. What is defamatory?

Before it is possible to decide whether a statement is defamatory, it is necessary to determine what it means. The meaning decided by a court will not necessarily be the same as the meaning intended by the publisher: intention is irrelevant.

The law will treat a given statement as having only one ‘natural and ordinary’ meaning, i.e. the meaning that an ordinary reasonable person would understand from it. This ‘single meaning rule’ is not, of course, reflective of the reality that a statement may be open to more than one equally valid interpretation. The natural and ordinary meaning will not necessarily be the literal meaning: the law recognises that the ordinary reader is not naive and will be able to detect (for example) a degree of sarcasm, irony or insinuation.

A statement may also have an ‘innuendo meaning’ (which can coexist with the natural and ordinary meaning). In the legal sense, this is not a simple insinuation which could be understood by anyone reading between the lines based on matters of general knowledge, but a meaning which will only be apparent to individuals with particular knowledge. The words may appear quite innocent but acquire a defamatory meaning when read by a person in possession of this special knowledge. For example, to state that a person has been seen entering a particular house would be an innocuous statement to some readers, but not to those who knew the address to be a brothel or a crack house.

Meaning is derived from a reading of the publication as a whole, so if a damaging allegation is made in one part but corrected with sufficient prominence in another (so called bane and antidote’) the overall meaning will not be defamatory.

Having established their meaning, the claimant must show that the words complained of are defamatory. Trivial or frivolous claims should fall at the first hurdle: under the 2013 Act, a statement is not defamatory unless its publication has caused or is likely to cause ‘serious harm’ to the reputation of the claimant. If the claimant is a company (or any other body which ‘trades for profit’) and the 2013 Act applies, it must in addition establish that the words have caused or are likely to cause it ‘serious financial loss’. So far there has been only limited guidance from the courts as to when and how the courts will require such loss to be proved, and how they will measure ‘seriousness’.

There is no single definition of ‘defamatory’, but various tests have been established and it is sufficient that any one of these is satisfied. A statement is defamatory if it would tend to:

• lower the subject in the estimation of reasonable or right-thinking members of society; or

• bring the subject into ridicule, hatred or contempt with society; or

• make the subject shunned, avoided or cut off from society.

The first of these definitions is most commonly encountered in practice, but the others cannot be ignored. For example, it may seem surprising that a statement that an individual was ‘hideous-looking’ could be held to be defamatory, but that was the outcome of a 1997 case, on the grounds that the statement exposed the claimant to ridicule (however, mere ‘vulgar abuse’ will not be regarded as defamatory; it can be a fine dividing line). Similarly, an allegation that an individual is seriously ill or mentally unstable may imply no fault on the part of the claimant, but would be likely to cause them to be shunned or avoided.

A statement may be inaccurate (and damaging) but if it does not impact adversely on the claimant’s reputation, it is not defamatory. Such a statement may still give rise to regulatory sanction (e.g. if it breaches the Ofcom or IPSO codes of conduct) or to a claim for malicious falsehood (see below). For example, merely to overstate a person’s income is not defamatory; but it will be if the context implies s/he has not fully declared it to the tax authorities.

Society’ means right-thinking members of society generally. It is by reference to such people that the above tests must be applied. A libel claim will fail if the statement would bring the claimant into disrepute with a section of society, but not ‘right-thinking’ society as a whole. So, an allegation that an individual was a police informer may have brought the claimant into grave disrepute with the underworld, but would not be defamatory.

2.2. Identification – and who can sue

A claimant will usually be named, but an unnamed claimant may still be able to bring a claim: s/he may be identifiable to readers from other published information or pointers, which may range from an address or job description to references to physical characteristics. The intention of the publisher is irrelevant, so a statement intended to refer to one person may give rise to a claim by another person of the same name, if the statement could be understood to refer to him (even if this is based on knowledge derived from other sources rather than the publication itself). For example, in a 1996 case a newspaper article accused an author of plagiarism. It was illustrated with a photograph of an artist of the same name. The artist claimed, successfully, that some readers would understand that he, not the author, was the plagiarist in question.

Generalised references to classes of individuals are, broadly speaking, not successfully actionable, because it is not possible to establish that any individual has been identified. To say that ‘all lawyers are corrupt’ does not give any single lawyer a cause of action, because the statement does not point a finger at any individual. The smaller the class, however, the more likely it becomes that an individual within it will be able to show that they are identified by the libel.

As well as individuals, a company (subject to the requirement that the allegation has caused or is likely to cause it ‘serious financial loss’), officials of unincorporated association or trustees of a charity can all be defamed, and bring libel claims seeking vindication.

Defamation claims cannot be brought by political parties or departments of central or local government (although individuals within them may be able to sue in respect of similar allegations).

Civil claims for defamation cannot be brought on behalf of the dead. Any claim will be extinguished if the claimant dies before the judge or jury deliver their verdict. In those circumstances, the claim abates’, and cannot be carried on by the deceased’s estate.

2.3. Publication – and who can be sued

There will be no civil claim for defamation if the statement has been made to the claimant alone. In order for a cause of action to arise, it must be communicated to a third party.

‘Publication’ in the legal sense is therefore much wider than (but includes) the lay usage applied to books and newspapers: any communications to a person other than the claimant is sufficient. It follows that the content of a book is published in the legal sense when the manuscript is first submitted to the publishing firm just as it is when the book is later placed on sale to the public. The first publication, however, is obviously much narrower in scope, and the extent of the publication will affect the measure of any damages awarded.

All those responsible for a given publication, including the author (or artist or photographer), the editor and the publisher, can be sued. Where publication takes place online, website publishers, internet hosts and service providers will similarly be treated as publishers. However, those whose involvement in the publication is limited may have a defence of innocent dissemination (see below).

3. Defences

If the claimant can show that s/he has a prima facie cause of action, the defendant must establish a defence. There are several, although by far the most common are truth, honest opinion and privilege.

3.1. Truth

The defendant will have a complete defence to a libel claim if s/he can show that the imputation conveyed by the statement is a true or substantially true statement of fact.

The defendant must show that on the balance of probability, i.e. a greater than 50% likelihood, the statement is substantially true. In other words, the law presumes that a defamatory statement is false, and the burden is on the defendant to show otherwise. The defendant does not have to show that the statement is entirely accurate. Minor errors will be disregarded, but s/he must show that the statement is sufficiently true so as to substantiate the ‘sting’ of the libel.

Where a number of distinct charges are made against a claimant, some of which cannot be shown to be substantially true, the defence will not fail if, in the light of what is shown to be substantially true, the unproven allegations do not seriously harm the claimant’s reputation.

One point requires particular attention. It is insufficient for the defendant to prove that s/he has accurately repeated what a third person has written or said or that such statements have gone uncontradicted when made on occasions in the past. If X writes ‘Y told me that Z is a liar’, it is no defence to an action against X merely to prove that Y did indeed say that. His only defence is to prove that Z is a liar by establishing a number of instances of Z’s untruthfulness. Nor does it help a defence of Truth to prove that the defendant genuinely believed what s/he published to be true. This may, however, form part of a qualified privilege defence (see below). Bona fide belief may also be relevant to the assessment of damages. Special care should be taken in relation to references to a person’s convictions, however accurately described. Under the Rehabilitation of Offenders Act 1974, a person’s less serious convictions may become ‘spent’ and reference to them may in certain circumstances incur liability. Reference to the 1974 Act and its subordinate legislation must be made in order to determine the position in any particular case.

3.2. Honest opinion

The 2013 Act abolished the common law defence of honest comment (previously known as ‘fair comment’), and replaced it with a new statutory defence of ‘honest opinion’.

Honest opinion protects the expression of a writer’s genuinely held opinion. It applies to statements of comment, opinion or value judgement, as opposed to statements of fact (although the distinction between comment and fact is not always easy to draw in practice).

In order to establish the defence, the defendant must show: (i) that the statement was a statement of opinion; (ii) that it indicated the basis on which it was made; and (iii) that an honest person could have held the opinion on the basis of any fact which existed when the statement was published, or anything asserted as fact in a privileged statement published before the statement of opinion was published.

The defence will remain available if, for example, only three out of five factual claims can be proved true (or privileged), provided that these three are by themselves sufficient to sustain, and are proportionate to, the fairness of the comment.

However, the defence will fail if the claimant can show that the defendant did not hold the opinion or, where the statement is made by one person but published by another, that the publisher knew or ought to have known that the original maker of the statement did not hold the opinion expressed.

Matters of which criticism has been expressly or impliedly invited, such as publicly performed plays and published books, are a legitimate subject of comment. Criticism need not be confined merely to their artistic merit but equally may deal with the attitudes and opinions they expressed.

3.3. Privilege

The law recognises situations in which it is in the public interest that freedom of expression should trump a claimant’s right to protect their reputation. Statements made on such occasions will be privileged, i.e. the publisher will have a defence, regardless of the truth or accuracy of the statement, and the harm it may do to the claimant’s reputation. There are two broad categories of privilege: absolute privilege, where there will be a complete defence regardless of the truth of the statement and the motivation of the publisher; and qualified privilege, where the publisher’s motives may prevent the defence from succeeding. The 2013 Act has somewhat widened the circumstances in which absolute and qualified privilege may arise.

3.3.1. Absolute privilege

A person defamed by a statement made on an occasion of absolute privilege has no remedy whatsoever, even if the statement is demonstrably false or the maker of the statement has an improper motive (malice) for making it.

Absolute privilege applies to statements in parliamentary proceedings and papers, statements made in the course of proceedings in the courts and certain tribunals, and reports published by certain quasi-judicial bodies.

It also applies to fair, accurate and contemporaneous reports of public judicial proceedings in the UK and abroad, and any international court or tribunal established by the UN Security Council or by an international agreement.

3.3.2. Qualified privilege

Qualified privilege differs from absolute privilege in that the defence will fail if the claimant can prove malice, i.e. an improper motive or carelessness or recklessness as to the truth of the publication. There are three subcategories of qualified privilege.

First, there are various examples of statutory qualified privilege, established under section 15 of the Defamation Act 1996 and widened by the 2013 Act. These are set out in Schedule 1 to the 1996 Act (as amended by the 2013 Act), and include fair and accurate reports of public proceedings before a legislature, a court, a government inquiry and an international organisation or conference anywhere in the world, and of certain documents, or extracts from such documents, issued by those bodies. There is no requirement to correct or publish explanations concerning these reports. Such an obligation does arise in respect of a separate category of potentially privileged reports. These include fair and accurate reports of notices or other matter issued for the information of the public by or on behalf of a legislature or government anywhere in the world, authorities performing governmental functions, and international organisations and conferences.

Second, there are instances of qualified privilege at common law. Here, the law recognises a statement made by a person with a legal, social or moral duty to make it, to someone with a legal, social or moral duty or interest in receiving it. Examples include employment references, credit references and statements made to the police in response to enquiries or in relation to a crime. Normally the scope of publication must be no wider than necessary: if the material is published to those with no interest in receiving it, the defence of qualified privilege will be lost.

Third, a qualified privilege will be available under section 4 of the 2013 Act where the statement was, or formed part of, a statement on a matter of public interest and the defendant reasonably believed (allowing for an appropriate degree of editorial judgement) that publishing it was in the public interest. This abolishes the similar common law defence (under which qualified privilege was extended to publications by the media to the public at large following the 1999 case of Reynolds v. Times Newspapers) and changes the emphasis from ‘responsible journalism’ to ‘reasonable belief’. However, the factors which would be considered in determining whether a Reynolds defence would be available are likely to remain the relevant considerations when applying the new section 4 defence. These include the seriousness of the allegation, the nature of its source, the steps taken to verify it, the urgency of the publication, whether the claimant’s side of the story has been obtained and reported, and the tone of the publication. Like Reynolds, the new defence protects a publisher who cannot show that what it published was true (or honest opinion) but can show that (a) the offending statement was, or formed part of, a statement on a matter of public interest; and (b) it reasonably believed that publishing the statement complained of was in the public interest. It can extend to ‘neutral reportage’ – accurate and impartial coverage of a dispute to which the claimant was a party – under section 4(3) of the 2013 Act.

3.4. Secondary responsibility

This defence may be available where the publisher publishes a defamatory statement inadvertently. ‘Innocent disseminators’, such as printers, distributors, broadcasters, internet service providers (ISPs) and retailers, who can show they took reasonable care and had no reason to believe what they were handling contained a libel, have a defence under section 1 of the Defamation Act 1996 or the Electronic Commerce Regulations 2002.

The defence will only be available if the broadcaster, ISP or other publisher is not the ‘author, editor or publisher’ of the offending words. Typically, this might occur where the offending statement is made by an interviewee in a live broadcast, or where user-generated content is published automatically on a website without prior moderation.

The 2013 Act (and the Defamation (Operators of Websites) Regulations 2013 – the ‘Regulations’) provide further protection for the operators of websites. Where defamatory statements are posted on a website by a third party (such as reader comments on a blog), the operator of the website will have a defence (even if content is moderated by the operator before being posted). If the claimant is capable of identifying the third party (so that s/he can sue him or her directly) the website operator has an absolute defence unless s/he has acted with malice (knowledge that the statement is untrue or recklessness as to its truth). If the claimant cannot identify the defendant, he must serve a notice on the website operator in the form prescribed in the Regulations. The defence will then be defeated if the website operator fails to respond in the manner required under the Regulations. Those steps are complicated and specific advice should be sought if you receive a notice under section 5 of the 2013 Act and the Regulations.

3.5. Offer of amends

Section 2 of the Defamation Act 1996 creates a procedure which aims to nip in the bud disputes in which the claimant has been defamed unintentionally. Under this procedure, the defendant must offer to publish a suitable correction and sufficient apology, and pay damages (if any) and the claimant’s costs, to be assessed by a judge if not agreed. If an offer of amends is not accepted by the claimant, the defendant can rely on it as a defence, unless the claimant can prove malice. While reliance on an offer of amends prevents the defendant from relying on any other defences, it offers a considerable incentive to settle complaints and will save substantially on costs.

3.6. Other defences and restrictions

Peer-reviewed statements in scientific or academic journals. In response to concerns that libel law was having a ‘chilling effect’ on the freedom of speech of writers on academic (particularly medical and scientific matters), the 2013 Act creates a new defence for publishers of statements in scientific or academic journals. Statements in such journals will be privileged if (i) they relate to a scientific or academic matter; and (ii) prior to publication, their merit was reviewed independently by the journal’s editor and one or more other people with appropriate expertise in the relevant field. This is a qualified rather than absolute privilege, so it is lost if the claimant can establish malice on the part of the defendant.

Limitation. A claim for libel can be defeated on the grounds that it has been issued too late: section 4 of the Limitation Act 1990 provides that (with very limited exceptions) any claim for libel must be issued within one year from date of publication. Before the 2013 Act, each new publication (e.g. every hit on a website) was regarded as a separate tort, giving rise to a fresh one-year limitation period. This put online publishers at a disadvantage. The 2013 Act introduced a ‘single publication’ rule, preventing claimants from suing more than a year after the date of the original publication, even if the material remains online. So, for example, an article published (and remaining available) online since 17 May 2016 would become immune from a libel claim after 16 October 2017. Note that this will not protect republication in a materially different manner, or by other publishers.

Strike out. A claim may be struck out on the grounds that it is an abuse of the process of the courts. For example, if the scope of the publication is so small as to be insignificant, the court may prevent the claim from continuing. The Court of Appeal did so in a case involving the Wall Street Journal in 2005, where there was evidence that the article in question had been viewed only five times in this jurisdiction, and that three of those viewings were by individuals closely connected to the claimants or their lawyers.

There are a number of other, rarely used, defences:

• Consent: there will be a defence where the claimant has given their consent to the publication in question. Consent may be express or implied.

• Release (aka accord and satisfaction): where the claimant has agreed that s/he will not sue (or continue to sue) the defendant in respect of a given publication, the terms of settlement have contractual force and may be relied on as a defence.

4. Remedies

A successful claimant will be compensated for the damage done to his or her reputation by an award of damages. He will usually also be awarded an injunction to prevent further publication of the offending words. The losing party will usually be ordered to pay the winner’s costs. However, the costs claimed by the winning party will be assessed by the court, and it is unusual for the winner to recover 100% of his costs.

4.1. Damages

It is not necessary for the claimant to prove that s/he has actually suffered any loss: some damage is presumed. It is generally very difficult to forecast the amounts juries are likely to award; the Court of Appeal has power to reduce excessive awards of damages.

There are four categories of damages:

• ‘Ordinary’ or ‘general’ damages: the law presumes that a successful claimant will suffer some damage to their reputation. This is compensated by an award of general damages. At the top end, these may be in the region of £270,000 for the most serious libels. At the bottom end, the court may award nominal damages of as little as £1 where the libel is trivial (and in such cases the claimant would be unlikely to recover his costs). Awards of general damages are considerably lower now than they have been in the past, notably in the 1980s when a number of seven-figure awards were made. The courts may take into account the damages which would be recoverable in personal injury claims when deciding what an appropriate figure to compensate a claimant is.

• ‘Special’ damages: where the claimant can prove that the publication of the libel has caused him to suffer some specified loss, for example the loss of a sponsorship contract.

• ‘Aggravated’ damages: where the defendant’s conduct after publication has been malevolent or spiteful, and as such has ‘rubbed salt in the wound’, for example by repeating the libel or attacking the claimant in some other way.

• ‘Exemplary’ or ‘punitive’ damages: where there is evidence that the defendant has calculated that any libel damages awarded against it will be outweighed by the boost that the publication will give to its sales revenues.

4.2. Injunctions

A claimant who wins at trial will normally be entitled to an injunction restraining repetition of the libel. A claimant may also seek an injunction before trial, most commonly to prevent the threatened publication of defamatory material. Such interim injunctions are rare. Section 12 of the Human Rights Act 1998 requires the courts to balance the competing rights to private life and freedom of expression under ECHR Article 10 and ECHR Article 8. There is a long-standing common law rule against ‘prior restraint’ and discretion will be exercised in favour of freedom of expression if the publisher (intended defendant) indicates that s/he will defend any claim on the grounds of Truth.

4.3 Publication of summary of court’s judgement

Section 12 of the 2013 Act creates a power for the court to order a defendant to publish a summary of its judgement where the claimant has been successful, although the wording itself and the timing and placement of the summary are for the parties to agree themselves unless they cannot agree, in which case the court will step in.

5. Settlement and summary disposal

Most claims settle before trial. Matters likely to be dealt with in any settlement agreement include the terms of any apology to be published by the defendant, undertakings by the defendant not to repeat the libel, the making of a statement in open court (in which the defendant formally retracts the allegation), whether any damages are to be paid, and who is to bear the legal costs on each side. The Defamation Act 1996 introduced a ‘fast-track’ or ‘summary disposal’ procedure, providing a simplified mechanism for dealing with less serious complaints. This recognised the costly and time-consuming nature of libel litigation. Sections 8, 9 and 10 of the 1996 Act enable a judge alone to dismiss unrealistic claims at the outset; and s/he will also be able to dispose ‘summarily’ of relatively minor, but well-founded, claims, on the basis of an award of up to £10,000, a declaration that the publication was libellous, an order for the publication of an apology and an order forbidding repetition.

6. Malicious falsehood

Where a false statement is published which is not defamatory, a claimant may still be able to bring a claim under the separate (but related) tort of malicious falsehood. Claims for defamation and malicious falsehood are not mutually exclusive and may be brought together in respect of the same statement. In a claim for malicious falsehood, the claimant needs to prove that the statement:

• has been published to a third party;

• is false;

• was published maliciously, i.e. knowing it to be untrue or careless as to whether it is true; and

• is likely to cause (or has caused) the claimant to suffer financial loss (however, there are exceptions so this final requirement will not always be present).

An example is a false statement by the proprietor of a business to a member of the public that a rival proprietor has closed his business, thereby deliberately diverting the person away from his rival. The statement is not defamatory, but it is false and is calculated to cause the rival loss.

7. Scotland and Northern Ireland

The Scottish law of defamation is similar to the law in England and Wales as it stood before the 2013 Act came into force. The majority of the 2013 Act does not apply in Scotland (one notable exception being the new section 6 defence for peer-reviewed journals). In addition, under Scots law, there is no distinction between libel and slander; no requirement that the publication be made to a third party; and no summary disposal procedure. The limitation period is three years, not one. So a claimant who is too late to bring a claim in England and Wales may still be able to do so in Scotland.

In particular, the old common law defences of justification and honest comment continue to be available in Scotland, instead (respectively) of Truth and honest opinion. Justification and Truth are substantially similar, but the statutory requirement to demonstrate serious harm does not apply in Scotland (although earlier case law which would have the effect of screening out some trivial claims would apply). The requirement that companies trading for profit must show that an allegation has caused or is likely to cause serious financial loss also does not apply in Scotland.

There are some differences between honest comment and honest opinion. Most importantly, for honest comment to be available, the statement must be on a matter of public interest. The conduct of national and local government, international affairs, the administration of justice, etc are all matters of public interest, whereas other people’s private affairs may very well not be, although they undoubtedly interest the public, or provoke curiosity. Second, the defence will fail if the claimant can show that the defendant was motivated by malice, the test for which reflects the requirement under the new defence that the maker of the statement genuinely holds the opinion expressed.

The defence under section 5 of the 2013 Act for ‘operators of websites’ does not apply in Scotland. Nor does the section 4 defence (publication on a matter of public interest). But the common law Reynolds defence, now abolished in England & Wales, continues to apply.

The 2013 Act does not apply in Northern Ireland.

8. Insurance

For any author, it is advisable to check (at the earliest possible stage prior to publication) what libel insurance a publisher carries, and whether it also covers the author. The author should always alert the publisher to any potential libel risk s/he is aware of, in order to ensure that they retain the benefit of any cover provided by the publisher. Insurance must be obtained through an insurance broker or company registered with the Financial Conduct Authority. Insurers may require authors to obtain (at their own expense) a legal opinion before they will provide cover.

Alex de Jongh is a commercial litigation solicitor at Bates Wells Braithwaite (www.bwbllp.com). He frequently advises claimants and defendants in defamation and other media-related disputes.

See also…