– Copyright Infringement

Section 16(2) of the CDPA provides that “Copyright in a work is infringed by a person
who without the licence of the copyright owner does, or authorises another to do, any of
the acts restricted by the copyright.” The “acts restricted by the copyright” are the
exclusive rights of the copyright owner set out in paragraphs (a) to (e) of section 16(1).
Common to each of the restricted acts is the use of the copyright work.

Section 16(2) should be read together with section 16(3)(a), which further provides that
the doing of an act restricted by the copyright refers to the doing of that act “in relation to
the work as a whole or any substantial part of it”, and section 16(3)(b), which provides
that the doing of the act includes doing it “directly or indirectly”.

Accordingly, a claimant will have to prove the following requirements in order to build a
case of copyright infringement –

1.) There should be a work that has copyright

2.) The claimant should be the owner of the copyright (or have the owner’s license)
3.) The defendant should have made use of the copyright work – the defendant’s
work should be derived from the copyright work (causal connection);
4.) The defendant has taken the whole or a substantial part of the copyright work
(substantial taking);
5.) The defendant has committed one of the restricted acts set out in section 16; and
6.) The defendant did not have the licence of the copyright owner.

It should be noted that the following are not relevant for the purpose of copyright
infringement –

 The defendant’s state of knowledge – liability for copyright infringement is strict

 Whether the infringing work is itself entitled to copyright

The defendant’s work should be derived from the claimant’s work (causal
connection)

The claimant in a copyright infringement case will have to prove is that there is a causal
connection between the copyright work and the defendant’s work. The reason is that,

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unlike, for example, patent rights, copyright does not confer an absolute monopoly on the
copyright owner. Anyone else is free to create even an identical work, so long as they do
so without making use of the copyright work.

The necessary causal connection would be present where, for example, the defendant has
directly copied the claimant’s work, for example, by photographing the claimant’s
copyright sculpture. However, section 16(3)(b) provides that the requisite causal
connection may be direct or indirect. Indirect derivation occurs when the defendant’s
work is derived from something, which can be traced back to the copyright work.

For example, in British Leyland v Armstrong the defendant produced replacement

exhaust pipes for the claimant’s cars based on the actual exhaust pipes themselves. This
was held to infringe the copyright in the drawings on which the exhaust pipes were
based, even though the defendant had never seen the drawings.

In Plix Products v Winstone, the claimant had designed a range of containers for carrying
kiwifruit, known as pocket packs. The claimant’s designs were so successful that the
New Zealand Kiwifruit Authority laid down detailed specifications for the entire trade,
framed on and derived from the claimant’s range. The defendant retained an independent
designer, who had never seen the claimant’s packs, to design a range of kiwifruit pocket
packs for it. He was given a copy of the specifications laid down by the Kiwifruit
Authority, and asked to work alone, without reference to any existing pocket packs.

The defendant’s designer designed such a range, which was manufactured by the
defendant. It was however held that the defendant’s designs were indirectly derived from
the drawings on which the claimant’s range was based, since the designs were derived
from the specifications, which were themselves derived from the claimant’s range.

Proof of derivation

If the defendant denies making use of the claimant’s work, and there is no direct
eyewitness evidence of copying, the first step for the claimant will be to establish the
existence of sufficiently close, numerous or extensive similarities between the copyright
work and the defendant’s work.

What kinds of similarities are relevant?

The first point to note is that it is not necessary to show that, for example, the same words
(in the case of a literary work or a dramatic work) or the same notes (in the case of a
musical work) appear in the claimant’s work and the defendant’s work. Thus, in the case
of a novel or a play, derivation may be inferred from similarities in the storyline or
plot, incidents and themes.

The second point is that the differences between the two works are ignored, because the
focus is on the similarities. It follows from this that the fact that the overall appearance
or impression of the two works may be very different (due to the existence of the

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differences) is irrelevant. As Lord Millett held in the leading case Designers’ Guild v
Russell Williams (which concerned an artistic work),

“An action for infringement of artistic copyright … is not concerned with the
appearance of the defendant’s work but with its derivation. … the defendant may
incorporate the copied features into a larger work much and perhaps most of which is
original or derived from other sources. … Thus the overall appearance of the
defendant’s work may be very different from the copyright work, but it does not
follow that the defendant’s work does not infringe the plaintiff’s copyright.

The first step in an action for infringement of artistic copyright is to identify those
features of the defendant’s design which the plaintiff alleges have been copied from
the copyright work. …

… the inquiry is directed to the similarities rather than the differences. This is not to
say that the differences are unimportant. They may indicate an independent source
and so rebut any inference of copying, but differences in the overall appearance of the
two works due to the presence of features of the defendant’s work about which no
complaint is made are not material.”

Thirdly, in deciding whether the particular similarities relied on are sufficiently close,
numerous or extensive so as to give rise to an inference of copying, less importance is
attached to similarities that are commonplace, unoriginal, or consist of general ideas.

For example, in the leading case Francis Day & Hunter v Bron, the question arose
whether the first eight bars of the chorus of the claimant’s musical work “In a Little
Spanish Town” had been copied in the first eight bars of the defendant’s work “Why.”
The trial judge had held that there was a “definite” or “considerable” degree of similarity
between the two passages, but refused to draw an inference of copying.

Upholding the decision of the trial judge, Willmer LJ referred to the fact that the opening
bar of the claimant’s work was a commonplace series found in other previous musical
compositions, which had then been developed over the remainder of the first eight bars
using some of “the commonest tricks of composition,” and which were furthermore
“exactly the sort to be expected from the composer of a popular song.”

In contrast, similarities in inessential or trivial or idiosyncratic details would afford very

strong evidence of copying, since they would be unlikely to be repeated by the defendant,
unless he had copied. For example, if the defendant’s work contains the same mistakes as
the copyright work, a finding of copying would be virtually impossible to resist.

Defendant had access to the claimant’s work

As held in the old case of Corelli v Gray, the similarities between the claimant’s work
and the defendant’s work could be due to one of four reasons –

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 a) the defendant’s work is derived from the claimant’s work;
b) the claimant’s work is derived from the defendant’s work;
c) both works have been derived from a common source; or
d) the defendant has independently created his own work, and the similarities are
due to coincidence (or the nature of the subject matter).

It is only in situation a) that the claimant’s copyright could be infringed.

Therefore, in order to raise a prima facie case that the similarities are due to copying
of the claimant’s work, the claimant has to additionally prove that the defendant had an
opportunity of access to the copyright work.

However, it was recognized in Francis Day & Hunter v Bron that if there is a very high
degree of similarity between the works, that itself will raise a prima facie case of access,
and therefore causation.

When the claimant accordingly proves (1) the existence of sufficiently numerous
similarities and (2) an opportunity of access by the defendant to the copyright work, the
onus then shifts to the defendant to prove that the similarities were due to one of the other
three reasons set out above.

Purefoy v Sykes Boxall is an example of a case where the requisite causal connection was
absent because both works had been derived from a common source. The claimant in this
case was a manufacturer of machinery parts. The claimant produced a catalogue that
consisted of photographs and line drawings of the parts offered, and tables providing
information on the dimensions of the parts. The defendants produced a catalogue which
closely resembled the claimant’s one. Most of the parts appearing in the claimant’s
catalogue appeared in the defendant’s catalogue, and also the illustrations and dimensions
of these parts were substantially identical.

The trial judge held that there would be infringement if such substantial identity was due
to directly copying the claimant’s catalogue, or indirectly copying it by using the
information in the claimant’s catalogue as a guide for the construction of parts, that
were thereafter illustrated and dimensioned for inclusion in the defendant’s
catalogue. However, he found in this case that the defendant’s catalogue was derived not
from the claimant’s catalogue, but from the parts themselves.

Similarly, in Creation Records v News Group (the Oasis album cover case), the claimant
contended that the defendant’s photograph was a copy of the official photograph
in which copyright existed. Lloyd J rejected this argument on the ground that the
similarities were due to both photographs having been created from a common source.
However, he did recognize that, if the official photograph were the only source of the
scene, it would be an infringement to copy that, either by a direct copying process or by
the scene being recreated and a fresh photograph taken of that recreation.

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The defence of independent creation is more likely to succeed where the similarities
between the two works necessarily result from the nature of their subject matter. For
example, if two people compile two telephone directories for a particular area, the
resulting similarities in the two works would be due to the nature of the work itself. To
prove copying in such cases, authors of such works usually insert false data into their
work – for example, dummy names in a telephone directory, or redundant code in a
computer program. If the rival directory or program also contains these false entries, it
would be impossible to argue that the second work was created independently.

If the defendant denies copying and relies on the defence of independent creation, and the
court is inclined to believe that he is a truthful witness, the question has arisen whether
the claimant could allege that nonetheless the defendant must have subconsciously copied
the copyright work. This arose in Francis Day & Hunter v Bron, where the defendant
denied that he ever saw the music of “Spanish Town,” or that he ever consciously heard
it, which was accepted by the trial judge. The claimant argued that the defendant must
have heard “Spanish Town” even though he had no recollection, since it had been
extensively exploited, and that the degree of similarity between “Spanish Town” and
“Why” was such that an inference of, at any rate, subconscious copying should be drawn.

In the Court of Appeal, Willmer LJ found some initial difficulty with the notion of
“subconscious copying” because the word “copying” in its ordinary usage connoted to
him “what is essentially a conscious process.” However, he was willing to concede
subconscious copying as a possibility which may amount to an infringement of
copyright, provided it must be shown that the composer of the offending work
was in fact familiar with the work alleged to have been copied.