University of London Press Ltd v University Tutorial Press Ltd

University of London Press v. University Tutorial Press is a classic case; it set the minimal
requirement for originality as something more than a copy, yet not necessarily novel. At issue
was whether a set of mathematics examination papers were original. In the decision
University Tutorial Press were found to have infringed the University of London Press'
copyright. The exam papers just consisted of conventional maths problems in a conventional
manner. The court held that originality does not mean that the work must be an expression of
individual thought. The simple fact that the authors drew on a body of knowledge common to
mathematicians did not compromise originality. The requirement of originality, it was held,
does not require that expression be in an original or novel form. It does, however, require that
the work not be copied from another work. It must originate from the author. As such, even
though these were the same old maths problems every student is familiar with, and even
though there was no creative input, the skill, labour, and judgement of the authors was
sufficient to make the papers original literary works.

FACTS

The case dealt with examination papers which were written for the University of London
back in 1915. Under the University of London's senate's decision all examination papers
created by appointed examiners would belong to the University, aside from drawings, and the
University reserved all rights to reproduce those exams without any extra compensation to
the examiners who had written them. Subsequently examiners were appointed for the exam
period held in September of that year, among which were Mr. Jackson and Professor Lodge
who were in charge of creating the exam papers for mathematics. After the exam papers had
been created, the University entered into a contract with University of London Press,
assigning it the copyrights and rights of publication to any specific exams for a fixed period
of 6 years. University of London Press were then issued the rights to publish the exams
written in the previous year, which were then published by University of London Press in
early 1916. In the same month University Tutorial Press published exam from the previous
year as well, containing 16 out of 42 exams from January 1916, which were attained from
students rather than the published copies made by the University Press. Among the 16 exams
were three which were written by Mr. Jackson and Professor Lodge. Along with the
published exams University Tutorial Press also published the answers to some of the
questions in those exams, including some critique of those particular questions as well.
Subsequently University of London Press sued University Tutorial Press for copyright
infringement over the published exams.

ISSUE

Whether or not certain mathematics exam papers were original literary works.

HELD

On 27 July 1916, Peterson J. gave his judgment and he carefully distinguished those
examination papers in which the ownership had been vested in the University of London
Press from those papers where the action failed for lack of title. In making this distinction, he
highlighted that the action concerning the exam papers written by C.S. Jackson and A. Lodge,
who had joined as co-plaintiffs, had to succeed. Peterson J held that the papers were original
literary works:

In his assessment of what an original literary work would be, Justice Peterson stated that:

Sect. 1, sub-s. 1, of the Copyright Act of 1911 provides for copyright in "every original
literary dramatic musical and artistic work," subject to certain conditions which for this
purpose are immaterial, and the question is, therefore, whether these examination papers are,
within the meaning of this Act, original literary works. Although a literary work is not
defined in the Act, s. 35 states what the phrase includes; the definition is not a completely
comprehensive one, but the section is intended to show what, amongst other things, is
included in the description "literary work," and the words are " Literary work includes
maps, charts, plans, tables, and compilations."

It may be difficult to define "literary work" as used in this Act, but it seems to be plain that it
is not confined to "literary work" in the sense in which that phrase is applied, for instance, to
Meredith’s novels and the writings of Robert Louis Stevenson. In speaking of such writings
as literary works, one thinks of the quality, the style, and the literary finish which they
exhibit. Under the Act of 1842, which protected "books," many things which had no
pretensions to literary style acquired copyright; for example, a list of registered bills of sale, a
list of foxhounds and hunting days, and trade catalogues; and I see no ground for coming to
the conclusion that the present Act was intended to curtail the rights of authors.

In my view the words "literary work" cover work which is expressed in print or writing,
irrespective of the question whether the quality or style is high. The word "literary" seems to
be used in a sense somewhat similar to the use of the word "literature" in political or
electioneering literature and refers to written or printed matter. Papers set by examiners are,
in my opinion, "literary work" within the meaning of the present Act

Assuming that they are literary work, the question then is whether they are original.

In a copyright claim, the test of originality which had to be passed was set out by Peterson J,
saying: ‘The word ‘original’ does not in this connection mean that the work must be the
expression of original or inventive thought. Copyright Acts are NOT concerned with the
originality of ideas, but with the expression of thought, and, in the case of ‘literary work,’
with the expression of thought in print or writing. The originality which is required relates
to the expression of the thought. But the Act DOES NOT require that the expression must
be in an original or novel form, but that the work must not be copied from another work –
that it should originate from the author.

In the present case it was not suggested that any of the papers were copied. Professor
Lodge and Mr Jackson proved that they had thought out the questions which they set, and
that they made notes or memoranda for future questions and drew on those notes for the
purposes of the questions which they set. The papers which they prepared originated from
themselves, and were, within the meaning of the Act, original. It was said, however, that
they drew upon the stock of knowledge common to mathematicians, and that the time spent
in producing the questions was small. These cannot be the tests for determining whether
copyright exists. If an author, for the purposes of copyright, must not draw on the stock of
knowledge which is common to himself and others who are students of the same branch of
learning, only those historians who discovered fresh historical facts could acquire copyright
for their works.’ If time expended is to be the test, the rapidity of an author like Lord Byron
in producing a short poem might be an impediment in the way of acquiring copyright, and,
the completer his mastery of his subject, the smaller would be the prospect of the author's
success in maintaining his claim to copyright. Some of the questions, it was urged, are
questions in book work, that is to say, questions set for the purpose of seeing whether the
student has read and understood the books prescribed by the syllabus. But the questions set
are not copied from the book; they are questions prepared by the examiner for the purpose of
testing the student's acquaintance with the book, and in any case it was admitted that the
papers involved selection, judgment, and experience. This objection has not, in my opinion,
any substance; if it had, it would only apply to some of the questions in the elementary
papers, and would have little, if any, bearing on the paper on advanced mathematics. Then it
was said that the questions in the elementary papers were of common type, but this only
means that somewhat similar questions have been asked by the other examiners. I suppose
that most elementary books on mathematics may be said to be of a common type, but that fact
would not give impunity to a predatory infringer. The book and the papers alike originate
from the author and are not copied by him from another book or other papers. The objections
with which I have dealt do not appear to me to have any substance, and, after all, there
remains the rough practical test that what is worth copying is prima facie worth protecting. In
my judgment, then, the papers set by Professor Lodge and Mr Jackson are "original literary
work" and proper subject for copyright under the Act of 1911.(([1916] 2 Ch 601, 609-10.))

Comment: Originality is separate from the question of uniqueness. Originality is a question of

origin. The expression of thought must be new to the author .As one can see from his Honor's
view, copyright protects expression, not ideas. One can copy ideas, yet how those ideas are
conveyed has to be different ". What 'originality' boils down to is independent creative effort.
If the work which is sought to be protected was the result of independent creation, it most
likely will fall under copyright and be protected. Ideas themselves are not protected, but the
expression of those ideas through individual creative effort would be. For a work to be
considered original it has to originate from the author themselves. What this is is an
assessment on a case-by-case basis as to whether the work which is being contended did in
fact originate from the author. In the case the authors of the exam questions, Mr. Jackson and
Professor Lodge, had thought of the questions themselves, only drawing from the stock of
knowledge in mathematics which existed at the time. It was seen by Justice Peterson that
these works were indeed original.
Interlego AG v Tyco Industries Inc and Others; 5 May 1988

Lego had commenced legal proceedings in Hong Kong for infringement of copyright, and
this appeal arose from these proceedings. Lego based its claim for monopoly on copyright on
its engineering drawings of bricks not on the toy bricks themselves, and sought perpetual
monopoly by attributing new periods of copyright after every minor alteration. Copyright did
not subsist in these design drawings, and Lego's claim failed. The Privy Council considered
the proceedings an example of the undesirable practice of attempting to expand the
boundaries of intellectual property rights beyond the original purpose intended, and an
attempt to establish an unintended and undeserved monopoly.

Interlego claimed copyright in respect of the engineering drawings on which the bricks were
based. They alleged that Tyco had reproduced the bricks by "reverse engineering", that is,
measuring the plaintiff's bricks. The Hong Court of Appeal set aside the injunction granted
against Tyco in respect of the pre-1973 designs, but upheld it in respect of the post-1973
designs.

The points at issue before the Judicial Committee of the Privy Council were:

1) Whether the pre-1973 drawings constituted "designs" under the Design Copyright Act
1949 s.1 (3);

If they were such "designs", whether they were registrable under the Design Copyright Act
1949 .

Held:

1. If Lego's designs were "used or intended to be used for the purpose of industrial
reproduction, they were not to qualify for copyright under the Copyright Act 1956 . It
followed that no copyright now subsisted in Lego's pre-1973 drawings".

2. Whilst it was not disputed that Tyco had, albeit indirectly, copied Lego's drawings, those
drawings had been produced after 1 January 1983. The issue was as to whether the post-1972
drawings were copyright as original artistic works. Engineering drawings fell within the
definition of "artistic works" in the Copyright Act 1956 , but they were basically no more
than manufacturing instructions, and were liable to many modifications and updates. If
copyright were accorded to each one of these updates and amendments, the effect would be to
extend the copyright, on what was basically the same work, ad infinitem. Each alteration
did not make it an original artistic work.

3. Lego's claim for copyright on their post-1972 drawings failed.

FEIST PUBLICATIONS, INC. v. RURAL TELEPHONE SERVICE CO., INC.

Earlier it was sufficient that some body has invested labour, skill and capital in a work to
claim copyright the test was ‘sweat of the brow’. This test of originality developed by the
court in the case of University of London Press was made more stringent by the decision of
the US court in the case of Feist Publication Inc v Rural Telephone Service Co. Inc
FACTS

Rural telephone service co. published certain telephone directory consisting of white pages
and yellow pages. To obtain white pages the Feist publication approached a number of
companies so that it could develop its area wide directory. Of all the operators only Rural
refused. Unable to license Rural's white pages listings, Feist used them without Rural's
consent. The Rural telephone company challenged this as the violation of their copyright
.Rural sued for copyright infringement in the District Court for the District of Kansas taking
the position that Feist, in compiling its own directory, could not use the information
contained in Rural's white pages. Rural asserted that Feist's employees were obliged to travel
door-to-door or conduct a telephone survey to discover the same information for themselves.
Feist responded that such efforts were economically impractical and, in any event,
unnecessary because the information copied was beyond the scope of copyright protection.
The District Court granted summary judgment to Rural, explaining that " courts have
consistently held that telephone directories are copyrightable" and citing a string of lower
court decisions.

On appeal certiorari was granted, 498 U. S. 808 (1990), to determine whether the copyright in
Rural's directory protects the names, towns, and telephone numbers copied by Feist,. Dealing
with the case the court dealt with the issue of originality and said that it is a sine qua non of
copyright protection. The court found that originality as the term used means that the work
was created by the author. Here the court went on to hold that the original objective of the
copyright law is not to reward the labour of the author, rather it is to promote progress of
useful arts and science. The court rejected the ‘Sweat of the Brow’ test. The court was of the
view that the doctrine flouted the basic copyright principle and it creates monopoly in public
domain materials without necessary justifications of protecting and encouraging the creation
of writings.

HELD

There is no doubt that Feist took from the white pages of Rural's directory a substantial
amount of factual information. At a minimum, Feist copied the names, towns, and telephone
numbers of 1,309 of Rural's subscribers. Not all copying, however, is copyright infringement.
To establish infringement, two elements must be proven: (1) ownership of a valid copyright,
and (2) copying of constituent elements of the work that are original. The first element is not
at issue here; Feist appears to concede that Rural's directory, considered as a whole, is subject
to a valid copyright because it contains some foreword text, as well as original material in its
yellow pages advertisements.

The question is whether Rural has proved the second element. In other words, did Feist, by
taking 1,309 names, towns, and telephone numbers from Rural's white pages, copy anything
that was "original" to Rural? Certainly, the raw data does not satisfy the originality
requirement. Rural may have been the first to discover and report the names, towns, and
telephone numbers of its subscribers, but this data does not "owe its origin'" to Rural.
Burrow-Giles, 111 U. S., at 58. Rather, these bits of information are uncopyrightable facts;
they existed before Rural reported them and would have continued to exist if Rural had never
published a telephone directory. The originality requirement "rules out protecting . . . names,
addresses, and telephone numbers of which the plaintiff by no stretch of the imagination
could be called the author."

Rural essentially concedes the point by referring to the names, towns, and telephone numbers
as "preexisting material." Brief for Respondent 17. Section 103(b) states explicitly 362*362
that the copyright in a compilation does not extend to "the preexisting material employed in
the work."

The question that remains is whether Rural selected, coordinated, or arranged these
uncopyrightable facts in an original way. As mentioned, originality is not a stringent
standard; it does not require that facts be presented in an innovative or surprising way. It is
equally true, however, that the selection and arrangement of facts cannot be so mechanical or
routine as to require no creativity whatsoever. The standard of originality is low, but it does
exist. As this Court has explained, the Constitution mandates some minimal degree of
creativity, and an author who claims infringement must prove "the existence of . . .
intellectual production, of thought, and conception."

The selection, coordination, and arrangement of Rural's white pages do not satisfy the
minimum constitutional standards for copyright protection. As mentioned at the outset,
Rural's white pages are entirely typical. Persons desiring' telephone service in Rural's service
area fill out an application and Rural issues them a telephone number. In preparing its white
pages, Rural simply takes the data provided by its subscribers and lists it alphabetically by
surname. The end product is a garden-variety white pages directory, devoid of even the
slightest trace of creativity.

Rural's selection of listings could not be more obvious: It publishes the most basic
information—name, town, and telephone number—about each person who applies to it for
telephone service. This is "selection" of a sort, but it lacks the modicum of creativity
necessary to transform mere selection into copyrightable expression. Rural expended
sufficient effort 363*363 to make the white pages directory useful, but insufficient
creativity to make it original.

We note in passing that the selection featured in Rural's white pages may also fail the
originality requirement for another reason. Feist points out that Rural did not truly
"select" to publish the names and telephone numbers of its subscribers; rather, it was required
to do so by the Kansas Corporation Commission as part of its monopoly franchise. See 737 F.
Supp., at 612. Accordingly, one could plausibly conclude that this selection was dictated by
state law, not by Rural.

Nor can Rural claim originality in its coordination and arrangement of facts. The white
pages do nothing more than list Rural's subscribers in alphabetical order. This arrangement
may, technically speaking, owe its origin to Rural; no one disputes that Rural undertook the
task of alphabetizing the names itself. But there is nothing remotely creative about arranging
names alphabetically in a white pages directory. It is an age-old practice, firmly rooted in
tradition and so commonplace that it has come to be expected as a matter of course. See Brief
for Information Industry Association et al. as Amici Curiae 10 (alphabetical arrangement "is
universally observed in directories published by local exchange telephone companies"). It is
not only unoriginal, it is practically inevitable. This time-honored tradition does not possess
the minimal creative spark required by the Copyright Act and the Constitution.

We conclude that the names, towns, and telephone numbers copied by Feist were not
original to Rural and therefore were not protected by the copyright in Rural's combined
white and yellow pages directory. As a constitutional matter, copyright protects only those
constituent elements of a work that possess more than a de minimis quantum of creativity.
Rural's white pages, limited to basic subscriber information and arranged alphabetically, fall
short of the mark. As a statutory matter, 17 U. S. C. § 101 does not afford protection 364*364
from copying to a collection of facts that are selected, coordinated, and arranged in a way that
utterly lacks originality. Given that some works must fail, we cannot imagine a more likely
candidate. Indeed, were we to hold that Rural's white pages pass muster, it is hard to believe
that any collection of facts could fail.

Because Rural's white pages lack the requisite originality, Feist's use of the listings cannot
constitute infringement. This decision should not be construed as demeaning Rural's efforts in
compiling its directory, but rather as making clear that copyright rewards originality, not
effort. As this Court noted more than a century ago, "`great praise may be due to the plaintiffs
for their industry and enterprise in publishing this paper, yet the law does not contemplate
their being rewarded in this way.'"

Designer Guild Ltd v Russell Williams (Textiles) Ltd

Designer Guild Limited v. Russell Williams (Textiles) Limited, is a leading House of Lords
case on what constitutes copying in copyright infringement cases. The House of Lords
considered whether there was infringement of a fabric design. Although both the copyrighted
work and the infringing design were different in detail, the overall impression of the designs
was the same. This decision is significant because the House of Lords ruled that copyright
infringement is dependent on whether the defendant copied a substantial portion of the
original work, rather than whether the two works look the same. The outcome suggests that in
the United Kingdom the overall impression of a copyrighted work is protected if the copied
features involved the labor, skill and originality of the author's work, even if the copyrighted
work and infringing work are different in detail.

Designer Guild Limited (“DGL”) and Russell Williams (Textiles) Limited (“RWT”) both
design and sell fabrics and wallpapers. DGL held a copyright in its Ixia design. DGL accused
RWT of copyright infringement, alleging that the RWT design, Marguerite, copied Ixia. Both
designs included a combination of flowers and stripes, a similar style of painting, and use of
the resist effect (part of the stripe color shows through the flower petals).

Under section 16(3) of the Copyright, Designs and Patents Act 1988, infringement will be
found if there is copying of the work as a whole or any substantial part of it.[5] There were
two issues at the trial:
Did the designers of Marguerite copy from the Ixia design?

Did what had been copied amount to the whole or substantial part of Ixia?

The deputy judge of the Chancery Division found that RWT’s Marguerite design had been
copied from DGL’s Ixia design and that there had been copying of a substantial part. The
judge identified the copied features as: the combination and relation of flowers and stripes,
the manner in which they were painted, and the “resist effect”. The judge determined that the
combination of these features formed a substantial part of the Ixia design.

On appeal, RWT challenged the judge’s finding that the copied features formed a substantial
part of the Ixia design. The issue of copying was not challenged. The Court of Appeal upheld
RWT’s challenge to the finding of substantiality. DGL appealed.

HELD

The House of Lords allowed DGL's appeal, finding no reason to interfere with the judge’s
decision.

Lord Bingham of Cornhill found that the Court of Appeal erred in dislodging the decision of
the judge because:

The Court of Appeal’s analysis of the dissimilarities between the two designs failed to give
effect to the judge’s finding that there had been copying, which was not an issue on appeal.
This was in error because a finding of copying was crucial to concluding the issue of
substantiality. The Court of Appeal inappropriately addressed the issue of substantiality in the
manner of a first instance court.

Lord Hope of Craighead agreed with these reasons and also allowed the appeal.

Lord Hoffman found that the Court of Appeal erred in dislodging the decision of the judge
because:

The Court of Appeal wrongfully engaged in a visual comparison. The issue was whether the
features which the judge found to be copied from the Ixia designed formed a substantial part
of this work. Once these features had been identified, there was no need to revisit whether or
not the two designs looked alike.

The Court of Appeal erred by dissecting the component parts of the designs, rather than
considering their cumulative effect because it ignored the judge’s findings of fact.

The Court of Appeal erred in its belief that the defendant did not copy a substantial part of the
expression of the Ixia design, but rather the idea. The techniques used in Ixia to form the
expression required sufficient skill and labor from the author for the judge to find that they
formed a substantial part of the originality of Ixia.
The judge was in a better position to assess the substantiality issue because he assessed the
credibility of the expert witnesses with experience identifying which features of the design
produce a specific visual effect.

Lord Hoffman provided guidance on the concept that British copyright law protects the
expression of the idea rather than the idea itself. He noted two propositions about the
distinction between ideas and expression:

"The first is that a copyright work may express certain ideas which are not protected because
they have no connection with the literary, dramatic, musical or artistic nature of the work. . . .
However striking or original [the idea] may be, others are (in the absence of patent
protection) free to express it in works of their own." "The other proposition is that certain
ideas expressed by a copyright work may not be protected because, although they are ideas of
a literary, dramatic or artistic nature, they are not original, or so commonplace as not to form
a substantial part of the work."

Lord Hoffman concluded that the Ixia expression was more than just the idea of a flower-
stripe combination, and therefore original enough to represent the author's skill and labour
and form a substantial part of the originality of the work. A writer for the European
Intellectual Property Review explained that while he did not explicitly state it, Lord Hoffman
provided a new test for whether a substantial part of the original work was copied. The
proposed test is whether the part taken would itself attract copyright protection.

Lord Millett found that the Court of Appeal erred in dislodging the decision of the judge
because: The Court of Appeal did not agree with the judge's finding that the work had been
copied and as a result were too quick to reject the judge’s finding of substantiality, which as a
matter of impression, appellate courts should hesitate to do. The Court of Appeal erred in its
understanding of the visual comparison. The question of substantiality addresses whether the
copied feature is a substantial part of the copyrighted work. It may not be a substantial part of
the defendant's work. Therefore, even if the defendant's design looked different from Ixia, it
does not mean that the copyright was not infringed.

ANTON PILLER KG v. MANUFACTURING PROCESSES LTD. AND OTHERS

Discovery - Motion for - Action for infringement of copyright and using confidential
information - Interim injunction and order for inspection - Application ex parte for order to
enter premises to inspect and remove documents and files - Court's inherent jurisdiction

The defendants, an English company and their two directors, were the United Kingdom
agents of the plaintiffs, (Anton Piller) German manufacturers of frequency converters for
computers. As agents the respondents had received confidential information surrounding the
appellant's business. The appellants found out that the respondents had been in secret
communication with other German companies called Ferrostaal and Lechmotoren with a
view to giving those companies detailed plans and drawings of the appellant's products so
that they could be copied. The appellants were about to launch a new product and feared that
details of it might get into the hands of competitors if the respondents were forewarned that
the appellants were aware of the respondents' breaches of confidence.

The plaintiffs claimed that the defendants were in secret communication with other German
manufacturers and were giving them confidential information about the plaintiffs' power units
and details of a new converter, the disclosure of which could be most damaging to the
plaintiffs.

In order to prevent the disposal by the defendants, before discovery in an action, of

documents in their possession relating to the plaintiffs' machines or designs, the plaintiffs
applied ex parte for an interim injunction to restrain the defendants from infringing their
copyrights and disclosing confidential information and for an order for permission to enter
the defendants' premises to inspect all such documents and to remove them into the plaintiffs'
solicitors' custody. On the plaintiffs undertaking to issue a writ forthwith Brightman J.
granted the interim injunction but refused to order inspection or removal of documents.

On the plaintiffs' ex parte appeal, which was heard in chambers with judgments later in open
court:-

Held, allowing the appeal, that in most exceptional circumstances, where plaintiffs had a very
strong prima facie case actual or potential damage to them was very serious and there was
clear evidence that defendants possessed vital material which they might destroy or dispose
of so as to defeat the ends of justice before any application inter partes could be made, the
court had inherent jurisdiction to order defendants to "permit" plaintiffs' representatives to
enter defendants' premises to inspect and remove such material; and that in the very
exceptional circumstances the court was justified in making the order sought on the plaintiffs'
ex parte application

Anton Piller order

In English and English-derived legal systems, an Anton Piller order is a court order that
provides the right to search premises and seize evidence without prior warning. This prevents
destruction of relevant evidence, particularly in cases of alleged trademark, copyright or
patent infringements.

Because such an order does not give the accused party the ability to defend themselves,
Anton Piller orders are only issued exceptionally and according to the three-step test set out
by Ormrod LJ in Anton Piller:

1. There is an extremely strong prima facie case against the respondent,

2. The damage, potential or actual, must be very serious for the applicant, and
3. There must be clear evidence that the respondents have in their possession relevant
documents or things and that there is a real possibility that they may destroy such
material before an inter partes application can be made.