Related Rights

Jane Lambert 4-5 Gray’s Inn Square, Gray’s Inn, London WC1R 5AH 30 Oct 2013, 16:00 – 18:00

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1. Introduction

1.1. This module discusses the legal protection of the work of artists and designers.

1.2. The expression “the arts” connotes:

Visual arts: architecture, drawing, film, modelling, painting and sculpture;

Literary arts: drama, musical composition, novels, plays and poetry; and

Performing arts: acting, dancing, singing and playing a musical instrument.

1.3. Design means the shape or configuration of the components of an article which

may be decorative in that it appeals to the eye as in “designer jeans” or

“handbag” or functional in that it facilitates or improves the performance of the

article.

1.4. Works of art and literature are protected by copyright.

1.5. Performances are protected by rights in performances.

1.6. Decorative designs are protected in the United Kingdom by registration as

registered or registered Community designs, unregistered Community designs,

unregistered design right and artistic copyright.

1.7. Functional designs are protected in the UK by unregistered design right.

1.8. Rights in performances, unregistered design right and certain other rights such

as database right and publication right are referred to as “rights related to

copyright” or “related rights.”

1.9. Copyright and related rights differ from patents, trade marks and registered

designs in that they do not require registration in this country in order to subsist.

Other countries such as the USA and India do have a system of copyright

registration.

1.10. Rights that have to be registered are often referred to as industrial property

whereas copyrights and related rights are sometimes called soft IP.

1.11. Internationally, the terms upon which patents, trade marks and registered

designs are granted are governed by the Paris Convention for the Protection of

Industrial Property or simply “Paris”1 whereas copyrights are governed by the

Berne Convention for the Protection of Literary and Artistic Works (“Berne”)2

and rights in performances by the Rome Convention for the Protection of

Performers, Producers of Phonograms and Broadcasting Organizations3

(“Rome”).

1.12. The principal British statutes are the Copyright, Designs and Patents Act

19884 (“CDPA”) and the Registered Designs Act 19495 (RDA”).

1.13. The law relating to registered and unregistered Community designs is found

in the Community Design Regulation (Council Regulation (EC) nº 6/2002 of 12

December 2001 on Community Designs).6

1 http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html

2 http://www.wipo.int/treaties/en/text.jsp?file_id=283698

3 http://www.wipo.int/treaties/en/text.jsp?file_id=289757

4 http://www.legislation.gov.uk/ukpga/1988/48/contents. There is also a good unofficial consolidation of Parts

I and II and various other statutory instruments by the IPO at http://www.ipo.gov.uk/cdpact1988.pdf 5 http://www.ipo.gov.uk/regdesignactchanges.pdf

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2. What is Copyright?

2.1. S.1(1) of the CPDA defines copyright as

“…… a property right which subsists in accordance with this Part in the following descriptions of work – (a) original literary, dramatic, musical or artistic works, (b) sound recordings, films or broadcasts [---] and (c) the typographical arrangement of published editions. “

2.2. Copyright is a “property right”: s.90 (1) provides that “copyright is transmissible by

assignment, by testamentary disposition or by operation of law, as personal or

moveable property. “ S.96 (2) provides that

“In an action for infringement of copyright all such relief by way of damages, injunctions, accounts or otherwise is available to the [claimant] as is available in respect of the infringement of any other property right.”

2.3. S.16 (1) confers on the owner of the copyright in such a work:

“the exclusive right to do the following acts in the United Kingdom (a) to copy the work (see section 17); (b) to issue copies of the work to the public (see section 18); (ba) to rent or lend the work to the public (see section 18A); (c) to perform, show or play the work in public (see section 19); (d) to communicate the work to the public (see section 20); (e) to make an adaptation of the work or do any of the above in relation to an adaptation (see section 21).”

2.4. Those acts are referred to in this Part as the "acts restricted by the copyright" and

s.16 (2) provides that copyright in a work in which copyright subsists 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.

3. Subsistence of Copyright

3.1. There are two conditions for subsistence:

(1) the work must fall within one of the categories in s.1 (1) of the CDPA:

(2) the qualification requirements of s.153 of the Act must be met.

6 http://oami.europa.eu/ows/rw/pages/RCD/legalReferences/regulations.en.do

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3.2. S.1 (1) requires literary, dramatic, musical or artistic works to be original but makes

no similar requirement of sound recordings, films or broadcasts and the typographical

arrangement of published editions.

3.3. There is no statutory definition of original except in relation to databases in s.3A

(2)7 but it has been held in a succession of cases that originality requires at least some

modest application of skill and labour. In Warwick Film Productions Ltd v Eisinger8a play

that reproduced large sections of the transcript of a trial was held not to be original.

Originality is also discussed in my article “Copyright: New Copyrights for Old Tunes”

mentioned below.

3.4. S.3 (1) defines a "literary work" as “any work, other than a dramatic or musical

work, which is written, spoken or sung”. It 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.”

Databases are defined by s.3A (1) as

“a collection of independent works, data or other materials which – (a) are arranged in a systematic or methodical way, and (b) are individually accessible by electronic or other means.”

There is separate protection for “the investment in obtaining, verifying or presenting

the contents of the database” known as database right under art 13 (1) of the Copyright

and Rights in Databases Regulations 1997.9

3.5. The definition of a "dramatic work" includes a work of dance or mime (see Massine

v De Basil [1936 - 1945] MCC 233 and Jane Lambert’s article “Cracking Nuts - Copyright

in Choreography” 24 Nov 2011 IP North West.10

3.6. A "musical work" is defined as “a work consisting of music, exclusive of any words

or action intended to be sung, spoken or performed with the music” (see Hyperion

Records Ltd v Sawkins11and Jane Lambert’s “Copyright: New Copyrights for Old Tunes”

16 Sep 2008 NIPC Law)12.

3.7. S.4 (1) defines an artistic work as

7 “For the purposes of this Part a literary work consisting of a database is original if, and only if, by reason of

the selection or arrangement of the contents of the database the database constitutes the author‘s own intellectual creation.” 8 [1969] 1 Ch 508

9 http://www.ipo.gov.uk/cdpact1988.pdf

10 http://ipnorthwest.blogspot.co.uk/2011/11/cracking-nuts-copyright-in-choreography.html

11 [2005] WLR 3281, [2005] 3 All ER 636, [2005] EWCA Civ 565, [2005] 1 WLR 3281,

http://www.bailii.org/ew/cases/EWCA/Civ/2005/565.html 12

http://nipclaw.blogspot.co.uk/2008/09/copyright-new-copyrights-for-old-tunes.html

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“(a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality, (b) a work of architecture being a building or a model for a building, or (c) a work of artistic craftsmanship.”

Included in the definition of "graphic work" is

“(a) any painting, drawing, diagram, map, chart or plan, and (b) any engraving, etching, lithograph, woodcut or similar work.”

In George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd 13the House of Lords held

that a work of artistic craftsmanship such as an item of furniture had to have minimum

artistic quality and also some degree of craftsmanship.

3.8. The other types of work in which copyright can subsist are set out in s.5A to 8 of the

CDPA.

3.9. The second condition for the subsistence of copyright mentioned in paragraph 3.1

above is qualification. S.153 (1) provides

“Copyright does not subsist in a work unless the qualification requirements of this Chapter are satisfied as regards - (a) the author (see section 154), or (b) the country in which the work was first published (see section 155), or (c) in the case of a broadcast, the country from which the broadcast was made (see section 156).”

3.10 Essentially, s.154 (1) provides that a work qualifies for copyright protection if the

author was at the material time a qualifying person. A qualifying person can be a

British national, a person of any nationality residing in the UK or a company

incorporated in any part of the UK. However, s.154 (2) extends qualification to any

citizen or resident of a country included within an Order in Council made under s.159 of

the Act. HM may make an order under that provision to extend copyright protection to

the citizens or residents of any country that provides reciprocal protection for the works

of British nationals and residents under its copyright laws. As most countries are party

to international agreements that require copyright protection to be extended to the

citizens or residents of other contracting parties s.154 effectively extends copyright

protection to the works of virtually everyone on the planet.

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[1976] AC 64

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4. Title

4.1. S.11 of the CDPA provides:

“(1) The author of a work is the first owner of any copyright in it, subject to the following provisions. (2) Where a literary, dramatic, musical or artistic work, or a film, is made by an employee in the course of his employment, his employer is the first owner of any copyright in the work subject to any agreement to the contrary. (3) This section does not apply to Crown copyright or Parliamentary copyright (see section 163 and 165) or to copyright which subsists by virtue of section 168 (copyright of certain international organisations).”

4.2. S.9 (1) defines the author as the person who created the work.

4.3. Special provision is made for identifying the author in the case of sound recordings,

films, broadcasts and typographical arrangements of published work in s.9 (2).

4.4. The author of a computer generated work is the person by whom the arrangements

necessary for the creation of the work were undertaken (see s.9 (3)).

4.5. Any of these provisions can be varied by contract,

4.6. Crown copyright is an important exception. S.163 (1) provides that a work qualifies

for Crown copyright if it is made by HM or an officer or servant of the Crown in the

course of his duties.

5. Term

5.1. S.12 (2) of the CDPA provides that copyright in a literary, dramatic, musical or

artistic work expires at the end of the period of 70 years from the end of the calendar

year in which the author dies, subject as follows.

5.2. s.13A (2) provides that copyright in a sound recording lasts for 50 years from the

end of the year in which the recording was made, published or first made available to

the public.14

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“Subject to subsections (4) and (5), copyright expires - (a) at the end of the period of 50 years from the end of the calendar year in which the recording is made, or (b) if during that period the recording is published, 50 years from the end of the calendar year in which it is first published, or

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5.3. For films s.13B (2) provides that

“Copyright expires at the end of the period of 70 years from the end of the calendar year in which the death occurs of the last to die of the following persons - (a) the principal director, (b) the author of the screenplay, (c) the author of the dialogue, or (d) the composer of music specially created for and used in the film”

5.4. S.14 (2) provides that copyright in a broadcast expires at the end of the period of 50

years from the end of the calendar year in which the broadcast was made.

5.5. S.15 provides that copyright in the typographical arrangement of a published

edition expires at the end of the period of 25 years from the end of the calendar year in

which the edition was first published.

5.6. In the case of Crown copyright, s.163 (3) provides that

“Crown copyright in a literary, dramatic, musical or artistic work continues to subsist (a) until the end of the period of 125 years from the end of the calendar year in which the work was made, or (b) if the work is published commercially before the end of the period of 75 years from the end of the calendar year in which it was made, until the end of the period of 50 years from the end of the calendar year in which it was first so published. “

6. Infringement

6.1. The acts that constitute infringement have already been mentioned in paragraphs

2.3 and 2.4 above.

6.2. It is important to note that s.16 (3) (1) provides that References in this Part to the

doing of an act restricted by the copyright in a work are to the doing of it in relation to

the work as a whole or any substantial part of it.

6.3. The test for substantiality is qualitative not quantitative. In Exxon Corp. v. Exxon

Insurance Consultants International Ltd15Graham J and Stephenson LJ agreed that

(c) if during that period the recording is not published but is made available to the public by being played in public or communicated to the public, 50 years from the end of the calendar year in which it is first so made available, but in determining whether a sound recording has been published, played in public or communicated to the public, no account shall be taken of any unauthorised act.” 15

[1982] Ch. 119, [1981] 3 All E.R. 241, [1982] R.P.C. 69, (1981) 125 S.J. 527 Times, June 13, 1981

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though copyright cannot subsist in the word “Jabberwocky” the word could be a

substantial part of “Alice through the Looking Glass.”

6.4. In Total Information Processing Systems Limited v. Daman Limited16Judge Baker

held that the data division of a COBOL program could not be a substantial part of a

software application though that case was later disapproved by Jacob J in Ibcos

Computers Ltd v Barclays Mercantile Highland Finance Ltd.17

6.5. Substantiality is linked to originality. There can be no infringement of a copyright

work if the part that was reproduced was not original (see Warwick Film Productions Ltd

v Eisinger which is discussed in para 3.3 above).

6.6. Authorization: S.16 (2) 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. In Twentieth Century Fox Film Corporation and

Others v Newzbin Ltd18 Kitchin J observed at paragraph [90]:

“In my judgment it is clear from this passage that "authorise" means the grant or purported grant of the right to do the act complained of. It does not extend to mere enablement, assistance or even encouragement. The grant or purported grant to do the relevant act may be express or implied from all the relevant circumstances. In a case which involves an allegation of authorisation by supply, these circumstances may include the nature of the relationship between the alleged authoriser and the primary infringer, whether the equipment or other material supplied constitutes the means used to infringe, whether it is inevitable it will be used to infringe, the degree of control which the supplier retains and whether he has taken any steps to prevent infringement. These are matters to be taken into account and may or may not be determinative depending upon all the other circumstances.”

6.7 In his judgment Kitchin J had to distinguish C.B.S. Songs Ltd and Others v Amstrad

Consumer Electronics Plc19where the House of Lords had held that the sale of a double

headed cassette recorder that greatly facilitated copying did not amount to

authorization.

6.8. Copyright can also be infringed by importing20, possessing in the course of a

business21, selling or letting for hire, or offering or exposing for sale or hire, 22

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[1992] FSR 171 17

[1994] F.S.R. 265 18

[2010] EWHC 608 (Ch), [2010] FSR 21, [2010] EMLR 17, [2010] ECC 13, [2011] Bus LR D49, [2010] ECDR 8 http://www.bailii.org/ew/cases/EWHC/Ch/2010/608.html 19

[1988] 1 A.C. 1013 20

S.22 21

S.23 (a)

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in the course of a business exhibiting in public or distributing23, or distributes otherwise

than in the course of a business to such an extent as to affect prejudicially the owner of

the copyright24, an article which is, and which he knows or has reason to believe is, an

infringing copy of the work.

6.9. S.27 provides that an article is an infringing copy if its making infringed copyright or

in the case of an imported article its making would have infringed copyright.25

7. Remedies

7.1. An action for any of the remedies mentioned in paragraph 2.2 can be brought in the

Chancery Division or the Birmingham, Bristol, Caernarfon, Cardiff, Leeds, Liverpool,

Manchester, Mold, Newcastle or Preston County Courts (see CPR 63.13).26

7.2 If the claim is for less than £500,000 and can be tried within 2 days it can be brought

in the Intellectual Property Enterprise Court (IPEC) which has replaced the Patents

County Court and is now part of the Chancery Division.

7.4. If the claim is for less than £10,000 it may be brought in the small claims track of

IPEC.

7.5. S.97 (2) provides:

“The court may in an action for infringement of copyright having regard to all the circumstances, and in particular to - (a) the flagrancy of the infringement, and (b) any benefit accruing to the defendant by reason of the infringement, award such additional damages as the justice of the case may require. “

7.6. S.97A (1) provides

“The High Court (in Scotland, the Court of Session) shall have power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright.”

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S.23 (b) 23

S.23 (c) 24

S.23 (d) 25

“ (2) An article is an infringing copy if its making constituted an infringement of the copyright in the work in question. (3) An article is also an infringing copy if - (a) it has been or is proposed to be imported into the United Kingdom, and (b) its making in the United Kingdom would have constituted an infringement of the copyright in the work in question, or a breach of an exclusive licence agreement relating to that work.” 26

http://www.justice.gov.uk/courts/procedure-rules/civil/rules/part63#II

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For the conditions for the use of this power, see Twentieth Century Fox Film Corp and

Others v British Telecommunications Plc27and Jane Lambert” Injunctions against ISPs” 6

Nov 2011 NIPC Law28 and subsequent artic les.

7.7. S.107 and subsequent sections create a number of offences relating to

infringement which are prosecuted by local authority trading standards officers or

interest groups such as the Federation against Copyright Theft29 and the Federation

against Software Theft.30

7.8. The rights conferred upon copyright owners are subject to the exceptions in

Chapter III of the Act and the collective licensing provisions of Chapter IV.

8. Moral Rights

8.1 The rights mentioned in paragraph 2.3 are known as “economic rights”.

8.2. S.2 (2) provides:

“In relation to certain descriptions of copyright work the following rights conferred by Chapter IV (moral rights) subsist in favour of the author, director or commissioner of the work, whether or not he is the owner of the copyright – (a) section 77 (right to be identified as author or director), (b) section 80 (right to object to derogatory treatment of work), and (c) section 85 (right to privacy of certain photographs and films).

8.3. Breach of moral rights is a breach of statutory duty under s.103 and proceedings may be brought for an injunction and damages.

9. Rights in Performances

9.1. Part II of the CDPA confers economic rights upon:

(1) performers by requiring their consent to the exploitation of their performances

(see sections 181 to 184), and

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[2012] 1 All ER 806, [2012] Bus LR 1471, [2011] RPC 28, [2011] EWHC 1981 (Ch) and http://www.bailii.org/ew/cases/EWHC/Ch/2011/1981.html 28

http://nipclaw.blogspot.co.uk/2011/11/injunctions-against-isps.html 29

http://www.fact-uk.org.uk/ 30

http://www.fastiis.org/

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(2) persons having recording rights in relation to a performance, in relation to

recordings made without their consent or that of the performer (see sections 185 to

188).

9.2. The Act also confers the following moral rights upon performers:

(a) a right to be identified under s.205C; and

(b) a right to object to derogatory treatment of performance under s.205F.

9.3. The Act also creates a number of offences in relation to the infringement of

those rights.

9.4. As with copyright, there is a nationality or residence requirement for the

subsistence of those rights.

9.5. The remedies are substantially the same as for copyright infringement.

9.6. Rights in performances subsist for 50 years from the end of the year of the

performance or the year of the release of a recording of the performance.31

10. Design Rights

10.1. Part III of the CDPA created a new IP right known as unregistered design right or

simply design right.

10.2. S.213 (1) of the CDPA provides that design right is a property right which subsists

in an original design.

10.3. A design is defined as the design of any aspect of the shape or configuration

whether internal or external) of the whole or part of an article.

10.4. Originality is not defined but s.213 (4) provides that a design is not “original” for

the purposes of the Act if it is commonplace in the design field in question at the time

of its creation.

10.5. As with copyright and performers’ rights there is a qualification requirement.

10.6. No moral rights are conferred upon designers.

10.7. Design right is infringed by making an article to a design or making a design

document to the design (s.226 (a)).32

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S.191 (2) 32

http://www.legislation.gov.uk/ukpga/1988/48/section/226

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10.8. The term is very short: 15 years from the date upon which the design is created or

10 years from the date upon which articles made to the design are first made available

for sale or hire.

10.9. in the last 5 years of the term anyone in the world including an infringer can apply

for a licence of right to use the designs upon terms to be agreed or decided by the

Comptroller.

10.10. The remedies for design right infringement are substantially the same as for

copyright but there are no criminal sanctions.

Design Registration

11.1. Designs that are new and have individual character may be registered for 5

renewable periods of 5 years each as registered designs for the UK at the Designs

Registry of the Intellectual Property Office under the Registered Designs Act 194933or as

registered Community designs for the whole EU at the OHIM34 under the Community

Design Regulation.35

11.2. Designs that could have been registered under the Act or Regulation are protected

against copying throughout the EU for up to 3 years from the date upon which they are

made available to the public.

11.3. Unlike applications for patents and trade marks there is no substantial

examination of applications for design registration at either the IPO or OHIM.

11.4. Both the court and the IPO or as the case may be OHIM have the power to

invalidate designs that should never have been granted.

11.5. Design registration confers a monopoly of the design upon the proprietor.

12. Further Information

Call Jane Lambert on 020 7404 5252 during normal office hours or email her on jlambert@4-5.co.uk.

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http://www.ipo.gov.uk/regdesignactchanges.pdf 34

http://oami.europa.eu/ 35

http://oami.europa.eu/ows/rw/resource/documents/RCD/regulations/62002_en_cv.pdf