IP EXAM REVISION: CASES
A. Copyright
General
Fisher v Brooker: Band Procol Harum in 1967 recorded the popular song ‘A Whiter Shade of Pale’. F, who played
the organ on the song, claimed that his contributions (solo) were such that he deserved a share of the musical
copyright. - claim against band members succeeds, time passed did not bar action/ fair trial - copyright - strong/ uber
property right? - in English law, there is a limitation period in relation to claims arising out of copyright (6 years)
but not claims to copyright.
Subject matter
1. Literary works:
Literary quality not required: University of London Press v University Tutorial Press [1916] 2 Ch 601.
A literary work affords information, instruction, or pleasure in the form of literary enjoyment: Exxon v Exxon
Insurance [1982] Ch 119.
• The traditional approach is that headlines and titles are not usually protected as original LWs Fairfax Media
Publications v Reed [2010] FCA 984 (“Investors warned on super changes”; “Blackout probe sheds little light”).
• May not even be literary - no information or pleasure conveyed
But • Newspaper Licensing Agency Ltd v Meltwater [2010] EWHC 3099 (Ch); [2011] EWCA Civ 890:
• Proudman J held that some headlines were original LWs. - enticing
2. Dramatic works
Norowzian cases.
• Joy vs Anticipation (short films), Mr. Norowzian alleged that Anticipation, a guinness beer ad, infringes
Joy - short film where man dances in distinct manner
• Norowzian v Arks (No 1) [1998] FSR 394 (Ch): the film right pertains only to acts with the recording (i.e. is
‘thin’). Haven't used his recording, used a reshoot. Film copyright does not help mr N
• Norowzian v Arks (No 2) [2000] FSR 363 (CA)• CA held: dramatic work can include films but here still no
infringement
• Green v Broadcasting Corporation of New Zealand [1989] RPC 900 (PC):
Host had certain catchphrases, but There must be ‘sufficient unity for the work to be capable of being performed’.
This test was not met. Also see Ukulele Orchestra of Great Britain v Clausen
• Banner Universal Motion Pictures v Endemol Shine Group [2017] EWHC 2600 (Ch), [44]:
• A DW would require, at a minimum,
• (i) clearly identified features which distinguish that show from others of a similar type; and
, • (ii) that those features produce a coherent framework ‘which can be repeatedly applied so as to
enable the show to be reproduced in a recognisable form’.
• Shazam v Only Fools (in relation to the character, Del Boy):
• The EU two-stage test is satisified:
1. Del Boy is the expression of free and creative choices.
2. He is clearly and precisely identifiable.
• The CDPA category into which Del Boy fits is literary work.
3. Musical works: Hyperion Records Ltd v Sawkins [2005] EWCA Civ 565, esp. [53]-[56].
• [53] ‘In the absence of a special statutory definition of music, ordinary usage assists … [T]he essence of music is
combining sounds for listening to. Music is not the same as mere noise. The sound of music is intended to produce
effects of some kind on the listener’s emotions and intellect.’
4. Artistic works: Creation Records v News Group Newspapers [1997] EMLR 444:
• Does copyright subsistence for set for an album cover?
• Photographic copyright does not help? - does not infringe photograph by photographing the same scene
The facial makeup of the musician Adam Ant was held not protectable by copyright as it was not fixed in a tangible
medium, and could be washed off (Merchandising Corporation of America Inc v Harpbond Ltd [1983] FSR 32).
But Islestarr Holdings Ltd v Aldi Stores Ltd [2019] EWHC 1473 (Ch). The High Court has held that copyright in
two artistic works, including a design debossed in foundation powder palettes and a design decorating the lid of a
package containing makeup powders, was infringed by substantially similar designs. - fixation satisfied!
Lincoln Industries v Wham-O The wooden models made from preliminary drawings, which was used to produce a
mould from which moulded discs known as Frisbees were made, fell ‘within the definition of sculptures and are thus
properly the subject of copyright protection.’
BUT Lucasfilm Ltd v Ainsworth [2008] EWHC 1878 (Ch) - STORMTROOPER HELMET
• Do not judge artistic worth.
It is essential that the sculpture was intended to have “visual appeal”.
Intention behind work was to contribute to the artistic effect of the work - prop in a film, held not a sculpture.
Hensher v Restawhile Upholstery C developed and sold a prototype suite of furniture with a particular design. D
manufactured a similar suite of furniture, which C alleged infringed copyright in C’s suite as artistic works. C
claimed that their suite of furniture was a ‘work of artistic craftsmanship’. Held:
· C’s suite of furniture was not a work of artistic craftsmanship., held unanimously but for different reasons - the
object must manifest pride in sound workmanship).
· Fact that something looks nice does not make it ‘artistic’
• WaterRower (UK) Limited v Liking Limited (T/A Topiom)[2022] EWHC 2084 (IPEC):
○ Not prepared to find that technical constraints left no room for creative freedom, per Brompton
(C-833/18).
• If output is functional and there are rules, unlikely to be ARTISTIC (no free choice)
Need to assess artistic objective
, Authorship and Originality
Sound recordings: producer is author
• Beggars Banquet v Carlton [1993] EMLR 349 - wanted to record what happened at raves - ecstasy, so
abandoned project. But film company had the footage and sold film to carlton. Beggars banquet wanted to stop them
from taking footage but held - not sufficiently connected to the making of the film. Financing not enough to be
producer
• A&M Records v Video Collection Int [1995] EMLR 25. BBC wanted to make videos of ice skating
performances - argued this infringed copyright in the sound recording. Mr Ross paid for arrangement and recording
studio, paid 51 musicians and engaged technical crew - but held he did not make necessary arrangements. Inside
Edge, another company who employed Mr Ross, was held to have made the necessary arrangements - producer
• Slater v Wimmer [2012] EWPCC 7. ownership copyright of film footage of mount everest - Mr W paid
for Mr S's trip to Himalayas but did not pay for filming no written contract etc. Judge Burst said this was a work of
joint authorship - Mr S wass principal director - person who had creative control of the making of the film -
cameraman? But necessary arrangement test was highly sensitive - who made the necessary arrangements? Mr W
Walter v Lane - What contributions count?
• Being a mere scribe is not enough.The Times newspaper reporters wrote down the notes of speeches given by the
Earl of Rosebery. While doing so, the reports added punctuation, revision and corrections to those speeches. - Court
of Appeal found that the effort, skill and time were sufficient to make the reporters' work original.
• E.g. Lord James, p. 554: “A mere copyist of written matter is not an “author” within the Act, but a translator from
one language to another would be so. A person to whom words are dictated for the purpose of being written down is
not an “author.” He is the mere agent or clerk of the person dictating .”
Does not need to be entirely novel, pre existing contributions possible
Joint authorship:
Donoghue v Allied Newspapers [1938] 1 Ch 106.
Plaintiff was jockey, related stories to journalist who wrote articles, dispute related to publication - who was the
author ? Journalist who wrote article but jockey provided stories. Held journalist was the only author. Relaying
stories not enough for jockey to be joint author
Martin v Kogan
Film: The screenplay was written after the relationship between Mr M and Ms K broke down. Mr Martin said he did
work and Ms K provided support and assistance. Ms K alleged that it was very much joint-authorship.
Held Ms K joint author, contributed
- The joint author must make an authorial contribution
- Subjective intention to create a joint work is not required
- Just because someone makes a contribution does not mean it was in the course of collaboration.
- Decided that penmanship test not ideal
penmanship test: Ray v Classic FM [1998] FSR 622, 636.
○ A joint author “must contribute to the ‘production’ of the work and create something protected by copyright which
finds its way into the finished work.” The contribution must be “something which approximates to penmanship.
What is essential is a direct responsibility for what actually appears on the paper.”
A. Copyright
General
Fisher v Brooker: Band Procol Harum in 1967 recorded the popular song ‘A Whiter Shade of Pale’. F, who played
the organ on the song, claimed that his contributions (solo) were such that he deserved a share of the musical
copyright. - claim against band members succeeds, time passed did not bar action/ fair trial - copyright - strong/ uber
property right? - in English law, there is a limitation period in relation to claims arising out of copyright (6 years)
but not claims to copyright.
Subject matter
1. Literary works:
Literary quality not required: University of London Press v University Tutorial Press [1916] 2 Ch 601.
A literary work affords information, instruction, or pleasure in the form of literary enjoyment: Exxon v Exxon
Insurance [1982] Ch 119.
• The traditional approach is that headlines and titles are not usually protected as original LWs Fairfax Media
Publications v Reed [2010] FCA 984 (“Investors warned on super changes”; “Blackout probe sheds little light”).
• May not even be literary - no information or pleasure conveyed
But • Newspaper Licensing Agency Ltd v Meltwater [2010] EWHC 3099 (Ch); [2011] EWCA Civ 890:
• Proudman J held that some headlines were original LWs. - enticing
2. Dramatic works
Norowzian cases.
• Joy vs Anticipation (short films), Mr. Norowzian alleged that Anticipation, a guinness beer ad, infringes
Joy - short film where man dances in distinct manner
• Norowzian v Arks (No 1) [1998] FSR 394 (Ch): the film right pertains only to acts with the recording (i.e. is
‘thin’). Haven't used his recording, used a reshoot. Film copyright does not help mr N
• Norowzian v Arks (No 2) [2000] FSR 363 (CA)• CA held: dramatic work can include films but here still no
infringement
• Green v Broadcasting Corporation of New Zealand [1989] RPC 900 (PC):
Host had certain catchphrases, but There must be ‘sufficient unity for the work to be capable of being performed’.
This test was not met. Also see Ukulele Orchestra of Great Britain v Clausen
• Banner Universal Motion Pictures v Endemol Shine Group [2017] EWHC 2600 (Ch), [44]:
• A DW would require, at a minimum,
• (i) clearly identified features which distinguish that show from others of a similar type; and
, • (ii) that those features produce a coherent framework ‘which can be repeatedly applied so as to
enable the show to be reproduced in a recognisable form’.
• Shazam v Only Fools (in relation to the character, Del Boy):
• The EU two-stage test is satisified:
1. Del Boy is the expression of free and creative choices.
2. He is clearly and precisely identifiable.
• The CDPA category into which Del Boy fits is literary work.
3. Musical works: Hyperion Records Ltd v Sawkins [2005] EWCA Civ 565, esp. [53]-[56].
• [53] ‘In the absence of a special statutory definition of music, ordinary usage assists … [T]he essence of music is
combining sounds for listening to. Music is not the same as mere noise. The sound of music is intended to produce
effects of some kind on the listener’s emotions and intellect.’
4. Artistic works: Creation Records v News Group Newspapers [1997] EMLR 444:
• Does copyright subsistence for set for an album cover?
• Photographic copyright does not help? - does not infringe photograph by photographing the same scene
The facial makeup of the musician Adam Ant was held not protectable by copyright as it was not fixed in a tangible
medium, and could be washed off (Merchandising Corporation of America Inc v Harpbond Ltd [1983] FSR 32).
But Islestarr Holdings Ltd v Aldi Stores Ltd [2019] EWHC 1473 (Ch). The High Court has held that copyright in
two artistic works, including a design debossed in foundation powder palettes and a design decorating the lid of a
package containing makeup powders, was infringed by substantially similar designs. - fixation satisfied!
Lincoln Industries v Wham-O The wooden models made from preliminary drawings, which was used to produce a
mould from which moulded discs known as Frisbees were made, fell ‘within the definition of sculptures and are thus
properly the subject of copyright protection.’
BUT Lucasfilm Ltd v Ainsworth [2008] EWHC 1878 (Ch) - STORMTROOPER HELMET
• Do not judge artistic worth.
It is essential that the sculpture was intended to have “visual appeal”.
Intention behind work was to contribute to the artistic effect of the work - prop in a film, held not a sculpture.
Hensher v Restawhile Upholstery C developed and sold a prototype suite of furniture with a particular design. D
manufactured a similar suite of furniture, which C alleged infringed copyright in C’s suite as artistic works. C
claimed that their suite of furniture was a ‘work of artistic craftsmanship’. Held:
· C’s suite of furniture was not a work of artistic craftsmanship., held unanimously but for different reasons - the
object must manifest pride in sound workmanship).
· Fact that something looks nice does not make it ‘artistic’
• WaterRower (UK) Limited v Liking Limited (T/A Topiom)[2022] EWHC 2084 (IPEC):
○ Not prepared to find that technical constraints left no room for creative freedom, per Brompton
(C-833/18).
• If output is functional and there are rules, unlikely to be ARTISTIC (no free choice)
Need to assess artistic objective
, Authorship and Originality
Sound recordings: producer is author
• Beggars Banquet v Carlton [1993] EMLR 349 - wanted to record what happened at raves - ecstasy, so
abandoned project. But film company had the footage and sold film to carlton. Beggars banquet wanted to stop them
from taking footage but held - not sufficiently connected to the making of the film. Financing not enough to be
producer
• A&M Records v Video Collection Int [1995] EMLR 25. BBC wanted to make videos of ice skating
performances - argued this infringed copyright in the sound recording. Mr Ross paid for arrangement and recording
studio, paid 51 musicians and engaged technical crew - but held he did not make necessary arrangements. Inside
Edge, another company who employed Mr Ross, was held to have made the necessary arrangements - producer
• Slater v Wimmer [2012] EWPCC 7. ownership copyright of film footage of mount everest - Mr W paid
for Mr S's trip to Himalayas but did not pay for filming no written contract etc. Judge Burst said this was a work of
joint authorship - Mr S wass principal director - person who had creative control of the making of the film -
cameraman? But necessary arrangement test was highly sensitive - who made the necessary arrangements? Mr W
Walter v Lane - What contributions count?
• Being a mere scribe is not enough.The Times newspaper reporters wrote down the notes of speeches given by the
Earl of Rosebery. While doing so, the reports added punctuation, revision and corrections to those speeches. - Court
of Appeal found that the effort, skill and time were sufficient to make the reporters' work original.
• E.g. Lord James, p. 554: “A mere copyist of written matter is not an “author” within the Act, but a translator from
one language to another would be so. A person to whom words are dictated for the purpose of being written down is
not an “author.” He is the mere agent or clerk of the person dictating .”
Does not need to be entirely novel, pre existing contributions possible
Joint authorship:
Donoghue v Allied Newspapers [1938] 1 Ch 106.
Plaintiff was jockey, related stories to journalist who wrote articles, dispute related to publication - who was the
author ? Journalist who wrote article but jockey provided stories. Held journalist was the only author. Relaying
stories not enough for jockey to be joint author
Martin v Kogan
Film: The screenplay was written after the relationship between Mr M and Ms K broke down. Mr Martin said he did
work and Ms K provided support and assistance. Ms K alleged that it was very much joint-authorship.
Held Ms K joint author, contributed
- The joint author must make an authorial contribution
- Subjective intention to create a joint work is not required
- Just because someone makes a contribution does not mean it was in the course of collaboration.
- Decided that penmanship test not ideal
penmanship test: Ray v Classic FM [1998] FSR 622, 636.
○ A joint author “must contribute to the ‘production’ of the work and create something protected by copyright which
finds its way into the finished work.” The contribution must be “something which approximates to penmanship.
What is essential is a direct responsibility for what actually appears on the paper.”
