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England and Wales Court of Appeal (Civil Division) Decisions

You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Newspaper Licensing Agency Ltd v Marks & Spencer Plc [2000] EWCA Civ 179 (26 May 2000)
URL: http://www.bailii.org/ew/cases/EWCA/Civ/2000/179.html
Cite as: [2000] EMLR 704, [2000] EWCA Civ 179, [2001] Ch 257, [2000] 3 WLR 1256, [2000] 4 All ER 239, [2001] RPC 5, [2000] ECDR 381
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Case No: CHANF/1999/0175/A3

IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT
CHANCERY DIVISION
Lightman J.
Royal Courts of Justice
Strand, London, WC2A 2LL
Friday 26 May 2000

B e f o r e :
LORD JUSTICE PETER GIBSON
LORD JUSTICE CHADWICK
and
LORD JUSTICE MANCE

THE NEWSPAPER LICENSING AGENCY LTD.

Respondent

- and -



MARKS AND SPENCER PLC

Appellant


__________________________________
(Transcript of the Handed Down Judgment of
Smith Bernal Reporting Limited, 180 Fleet Street
London EC4A 2HD
Tel No: 0171 421 4040, Fax No: 0171 831 8838
Official Shorthand Writers to the Court)
__________________________________

Mr. Kevin Garnett Q.C. (instructed by Messrs. Herbert Smith of London for the Respondent)
Mr. Michael Silverleaf Q.C. and Mr. Mark Vanhegan (instructed by Heather Macrae of Marks & Spencer's Legal Department for the Appellant)

__________________________________
Judgment
As Approved by the Court
Crown Copyright ©


Lord Justice Peter Gibson:
1. The Defendant, Marks and Spencer plc ("M & S"), appeals from the judgment (now reported at [1999] R.P.C. 536) and order of Lightman J. on 25 January 1999 in a copyright action. The Plaintiff, The Newspaper Licensing Agency Ltd. ("the NLA"), brought proceedings against M&S, claiming that M&S, by copying articles, which had appeared in newspapers, for internal circulation, had infringed the NLA's copyright in the typographical arrangements of published editions of newspapers and sought an injunction and an inquiry as to damages for copyright infringement. M&S denied any infringement and counterclaimed for a declaration that what it did was not an infringement of the NLA's copyright and constituted fair dealing. The judge held that the NLA's action succeeded and that M&S had infringed the NLA's copyright. But the judge accepted undertakings from M&S in lieu of an injunction and an inquiry as to damages. The judge gave M&S leave to appeal. We are told that this is a test case of some general interest.
The facts
2. M&S has long used the services of a press cuttings agency which scans the national and major local newspapers and other periodical publications and provides its clients with copies of cuttings, the scope of which the clients dictate in their briefs to the agency. The agency is the Broadcast Monitoring Agency (the trading name of a subsidiary of The Financial Times Group Ltd.).
3. The NLA is a company formed to protect the intellectual property rights of publishers of national and provincial newspapers particularly in relation to press cuttings and to operate collective licensing schemes for the making of copies of such cuttings. It commenced operation in January 1996. Assignments of copyright were taken by the NLA from the various publishers, the copyright assigned being both the copyright of the typographical arrangement of the articles published by the newspapers and the copyright of the literary and artistic works published in the newspapers (to the extent that this is owned by the newspapers), in both cases so far as the copyright extends to licensing the making of photocopies and other types of facsimile copies. The NLA licenses both press cuttings agencies and others to make copies from newspapers for a fee. The fee was 2p per copy until the beginning of 1999 when it rose to 2.066p per copy, the fee being agreed between the NLA and the Institute of Public Relations and the Public Relations Consultants Association, one of whose clients was M&S (it reserved its position that it did not require a licence).
4. The agency which supplies M&S with press cuttings is licensed under the NLA scheme and passes on to M&S the charge made by the NLA. What M&S does with the cuttings supplied to it by the agency and why are summarised in the skeleton argument of Mr. Silverleaf Q.C. and Mr. Vanhegan for M&S in this way:
"2.7 M&S is a large and well known retailer. It deals in a wide variety of clothing, food and homewares. The success of its business depends upon predicting and meeting the requirements of the purchasing public for the goods it sells. In two major areas of M&S's business - clothing and food - fashions and public requirements can change rapidly. Public perception of M&S's goods is highly influenced by press comment. M&S needs to keep itself fully informed of all press reports of its and its competitors' activities in order to be able to respond promptly and effectively to the information received by its customers. This is particularly so where the press comment is particularly favourable or adverse. It is essential that M&S respond promptly and appropriately to all such comments: adverse comment in the press may or may not be justified and requires a measured response. Favourable press comment may lead to an increased demand for particular products which has to be met. As a consequence it is an essential part of M&S's business that its senior executives receive copies of press reports relevant to their activities and are thus enabled to deal with what appears in those reports.
2.8 To ensure that this occurs M&S has three internal press offices which as part of their function obtain cuttings from the cuttings agency and copy and distribute them to the appropriate personnel. The cuttings copies of which are distributed are themselves selected by the press offices from those selected by the cuttings agency. Those distributed form a relatively small portion of the cuttings which are initially selected by the agency. Distribution is restricted to those executives and directors who need the information they contain to carry out their functions. Further copies of the distributed cuttings are almost never made. If action on a particular cutting is required, this is almost always brought about by passing the distributed copy to the person who is required to act."

5. We were told by Mr. Garnett Q.C. for the NLA that every working day of the year between 80 and 120 copies are made of individual articles appearing in newspapers and that on a typical day at least 20 separate articles are copied, about 500,000 copies being made per annum.
6. We were shown a number of cuttings which had been copied, and in three cases we were shown copies of the complete pages from which they were taken. It is apparent that in compiling the cutting, the compiler has felt free to rearrange the original format of that cutting and in many cases has cut and pasted parts of what originally appeared so as to present to the reader what was printed but in a different layout.
The 1988 Act
7. At this point it is convenient to refer to the relevant statutory provisions of the governing Act, the Copyright, Designs and Patents Act 1988 ("the 1988 Act").
8. By s. 1:
"(1) Copyright is 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, broadcasts or cable programmes, and
(c) the typographical arrangement of published editions.
(2) In this Part `copyright work' means a work of any of those descriptions in which copyright subsists."
9. S. 8 is in this form:
"(1) In this Part `published edition', in the context of copyright in the typographical arrangement of a published edition, means a published edition of the whole or any part of one or more literary, dramatic or musical works.
(2) Copyright does not subsist in the typographical arrangement of a published edition if, or to the extent that, it reproduces the typographical arrangement of a previous edition."
10. Ss. 9(2)(d) and 11 (1) provide that the publisher is the author of the work and the owner of the copyright in it. S. 15 provides for the expiry of copyright in the typographical arrangement of a published edition at the end of 25 years, from the end of the calendar year in which the edition was first published. Ss. 2(1) and 16(1) provide that the copyright owner has the exclusive right to copy the work.
11. By s. 16(3):
"(3) References in this Part to the doing of an act restricted by the copyright in a work are to the doing of it -
(a) in relation to the work as a whole or any substantial part of it, and
(b) either directly or indirectly."
12. By s. 17, so far as material:
"(1) The copying of the work is an act restricted by the copyright in every description of copyright work; and references in this Part to copying and copies shall be construed as follows.
(5) Copying in relation to the typographical arrangement of a published edition means making a facsimile copy of the arrangement."
By s. 178 "facsimile copy" includes a copy which is reduced or enlarged in scale.
13. In Chapter III, headed "Acts permitted in relation to copyright works", s. 30 provides:
"(1) Fair dealing with a work for the purpose of criticism or review, of that or another work or of a performance of a work, does not infringe any copyright in the work provided that it is accompanied by a sufficient acknowledgement.
(2) Fair dealing with a work (other than a photograph) for the purpose of reporting current events does not infringe any copyright in the work provided that .... it is accompanied by a sufficient acknowledgement."
14. There are various other provisions in Chapter III providing defences to what would otherwise be copyright infringements. For example, copying for educational purposes is allowed in particular circumstances. Thus by s. 33(1) the inclusion of a short passage from a published literary or dramatic work in a collection of a specified description does not infringe the copyright in the work if a specified condition is satisfied. Again by s. 36(1) reprographic copying by educational establishments of passages from published works is permitted without infringing copyright to the extent specified in s. 36.
15. Chapter VII provides for licensing schemes whereby licensing bodies may operate schemes for copyright licences. Such schemes may be referred to the Copyright Tribunal. It was the settlement of such a reference which produced the agreement on fees which I have mentioned in para. 3 above.
16. Three issues were raised in the proceedings before the judge and arise on this appeal:
(1) Does the term "typographical arrangement of published editions" in s. 1(1)(c) of the 1988 Act refer to (a) the typographical arrangement of each article published in the newspapers, or (b) the typographical arrangement of the whole newspaper?
(2) If the answer is in sense (b), does M&S's copying amount to the copying of a substantial part of the copyright work?
(3) If the answer to (1) is in sense (a) or the answer to (2) is in the affirmative, does M&S's copying constitute fair dealing for the purpose of reporting current events within the meaning of s. 30(2) of the 1988 Act?
17. The judge answered issue (1) in sense (a), so that issue (2) did not arise. But he indicated that he would have decided issue (2) by answering it in the affirmative. He answered issue (3) in the negative on the grounds that M&S's dealing was neither for the purpose of reporting current events nor fair.
(1) S. 1(1)(c) of the 1988 Act
18. The judge (at p. 542) referred to s. 1(1)(c) and s. 8 (1) as providing that copyright shall subsist in the typographical arrangements of published editions of a literary work or part of a literary work, and said that accordingly when a literary work or part of it is published, copyright subsists in the typographical arrangements of that edition (i.e. that version) of the work. He expressed the view that in the case of a newspaper made up of a number of different articles, each separate article is a literary work and the typographical arrangement of each separate article is accordingly a copyright work. That, he said, accorded with the decision, which he thought correct, of Walton J. in Machinery Market Ltd. v Sheen Publishing Ltd [1983] F.S.R. 431. He distinguished the contrary view taken by the Federal Court of Australia in Nationwide News Pty. Ltd. v Copyright Agency Ltd. (1996) 136 A.L.R. 273.
19. In the former case the plaintiff brought an action for infringement of copyright under s. 15 Copyright Act 1956 ("the 1956 Act"), which provided that copyright subsisted in every published edition of any one or more literary works and entitled the publisher of an edition to restrain "the making, by any photographic or similar process, of a reproduction of the typographical arrangement of the edition". The defendant had been reproducing photographically in its own magazine in large part advertisements appearing in the plaintiff's rival magazine. The plaintiff brought proceedings against the defendant, claiming an injunction and an account of profits and sought summary judgment. Walton J. said ( [1983] F.S.R. 431 at p. 432) that there could be no question but that the plaintiff was entitled to the benefit of s. 15 subject to a number of points raised for the defendant. The only two points mentioned by the judge were an argument that an advertisement was not a literary work and a point that the printer, and not the defendant, was responsible for the copying, both of which the judge rejected. It is not possible to see from the judgment that any argument was raised that s. 15 related to the published edition (taken as a whole) of a literary work, as distinct from any individual literary works which were part of the published edition. On the language of s. 15 (referring as it does to "every published edition of any one or more literary .... works") that would appear to be its natural meaning, and in my view the Machinery Market case was wrongly decided.
20. The Nationwide case was a decision on the Australian Copyright Act 1968. That Act, by s. 88, provided for copyright to subsist in relation to a published edition of a literary, dramatic, musical or artistic work or of two or more such works, giving the publisher the ownership of the copyright with the exclusive right to make, by a means that included a photographic process, a reproduction of the edition. The question whether a publisher had copyright in a published edition of a work in each item in a newspaper or only in the published edition as a whole was decided by Wilcox J. in the latter sense ((1995) 30 I.P.R. 159). In so deciding, Wilcox J. found support in the United Kingdom's Gregory Committee's report in 1952 (Cmd. 8662) which was implemented by the 1956 Act. That committee had adopted the suggestion of the Publishers' Association that there should be "protection for typographical arrangements so that a particular edition of a literary or musical work printed by or for a publisher could not be directly or exactly copied by an unscrupulous competitor by photo-lithography or similar means" (para. 306). The concept embodied in that report, Wilcox J. said, was the concept intended to be embodied in the Australian legislation, and he said that it was not intended that copyright would extend to part only of a published edition unless that part was substantial. He therefore differed from Walton J., noting that he had given an extempore judgment without reference to the genesis of s. 15 of the 1956 Act.
21. Lightman J. was not referred to the decision of Wilcox J., but only to the judgments in the appellate court. In that court Sackville J. (with whom Jenkinson and Burchett JJ. agreed) did not deal with the question whether separate published edition copyright existed in each article published in a newspaper, as that point was abandoned on appeal. Lightman J. nevertheless distinguished the Nationwide case on the basis that the published edition copyright which subsists under Australian law is quite different from that which subsists under English law. For my part I have considerable doubt whether on this point the Australian legislation is materially different from the 1956 Act although the wording is by no means identical.
22. However we are concerned with the 1988 Act, and although s. 172 (2) provides that a provision of Part I (relating to copyright) which corresponds to a provision of the previous law is not to be construed as departing from the previous law merely because of a change of expression, s. 172 (1) makes clear that the 1988 Act both restated and amended the law of copyright.
23. It is to be noted that Lightman J., in discussing the first issue in terms of s. 8 (1) providing for copyright to subsist in the typographical arrangements of published editions of a literary work or part of a literary work, makes no mention of that part of the definition which refers to "one or more literary .... works". His conclusion followed from that incomplete paraphrase of s. 8(1). His construction places emphasis on the work as a self-contained entity rather than on the typographical arrangement. However, for this "very peculiar form of copyright" (to use Walton J.'s description in Machinery Market [1983] F.S.R. at p. 432) the copyright is in the typographical arrangement, and the work or works of which it is the arrangement is or are of subsidiary importance. As the Gregory Committee made clear, its recommendation was aimed at protecting the publisher of a work, who has incurred the costs of type-setting, from unfair competition through exact copying by photo-lithographic and similar means. Thus even if the work printed was itself out of copyright, the publisher was to be protected for a comparatively short period (25 years) for the work he had done in bringing about an edition of a literary work. The copyright is described in Laddie, Prescott and Vitoria: The Modern Law of Copyright and Designs, 2nd ed. (1995) para. 8.1 in this way: "This is a special and narrow type of copyright; what is protected is the image on the page." The publisher is taken to be the author of this type of copyright work as having created it (s. 9(1) and (2)(d)); he is also its first owner (s. 11 (1)). That is consistent with the view that what is important for this form of copyright is the edition which the publisher has published, that is the entire edition, whether or not it consists of a single literary, dramatic or musical work, or part of such a work or several such works. That is the natural construction to give to s. 8(1) with its references to a published edition and to one or more works. On that basis there was no change of substance on this point in the 1988 Act when compared with the 1956 Act, and the view which I favour accords with that adopted in Australia in Nationwide. I therefore respectfully disagree with the judge on the first issue.
(2) S. 16 (3)(a)
24. The judge in obiter observations indicated briefly why he would have been inclined to decide in the affirmative the question whether M&S had been copying substantial parts of the newspapers. He said that in deciding what amounts to a substantial part, consideration must be given to the nature of the protected work. He referred to Laddie, Prescott and Vitoria at para. 8.18:
"What is meant by a substantial part? Since this type of copyright is not dependent on originality in the special sense in which that expression is used in copyright law, `substantial part' simply means any part of the work so long as it is not so small as to be trivial. This is a question of fact, degree and common sense, and depends on the surrounding circumstances, including the purpose for which the thing is done."
25. The judge said that the cuttings did constitute a substantial part of the newspapers. He continued (at p. 543):
"They were components of significance in the newspapers, most particularly to readers interested in the retail trade and consumers generally. The cuttings were made available substantially contemporaneously with the publication of the newspapers and afforded to M&S a cheaper and more effective substitute for M&S bypassing the copyright in one of the four ways I have referred to." (Those four ways were (a) requiring its personnel to read the newspapers, (b) reprinting or retyping the cuttings, (c) preparing and distributing précis of the articles, and (d) compiling and distributing bundles of original cuttings.)
26. The reasoning of the judge therefore was more directed to a qualitative rather than a quantitative test of what is a substantial part. However the primary submissions of both Mr. Silverleaf and Mr. Garnett were that the test was quantitative, having regard to the fact that the copyright is typographical arrangement copyright which is not dependent on originality. I agree that that is the most important factor, though I would not exclude from relevance an assessment of substantiality based on considerations of other than a mere measurement of column inches, such as the impression which the copied part makes on the eye of the reader. This may in turn depend on matters such as the prominence of the part in the edition (see the observations of Sackville J. in Nationwide 136 A.L.R. at p. 292). I do not think that the matters to which Lightman J. referred justify his conclusion on this point.
27. Mr. Garnett advanced three separate arguments under this head. The first was that even a small part of a typographical arrangement is a substantial part. He relied on the passage from Laddie, Prescott and Vitoria on which the judge had relied that a part which is not trivial is sufficient. I do not think that that is the right approach. It seems to me inevitable when considering whether a part of a published edition is substantial that a comparison has to be made between the part and the whole. The word "substantial" has a wide range of meanings, as Lord Mustill explained (in a different context) in R. v Monopolies and Mergers Commission [1993] 1 W.L.R. 23 at p. 29. In a statute it must take colour from its context and the fact that it provides the threshold in the 1988 Act for protection of a statutory right is a pointer that it has a meaning towards the lower end of the range of possible meanings. But I do not think that one can be more precise than to say, as Nourse L.J. did in the Court of Appeal in R. v Monopolies and Mergers Commission [1992] 1 W.L.R. 291 at p. 300, that in a modern Act of Parliament the word describes something more than de minimis, something considerable in amount, that is of an amount to make it worthy of consideration.
28. A difficulty which is posed by the format of many modern newspapers is that they may come in several parts. Is each part a separate published edition? In Nationwide Sackville J. thought that the better view was that a magazine distributed with a newspaper but printed on different quality paper, in colour and bound was a separate edition (136 A.L.R. at p. 291). I incline to a different view in relation to parts of a United Kingdom newspaper which are published at the same time and presented to the public as a single newspaper, the main part referring to the other parts. Even if the parts are in a different format on different paper or in a different colour, together they appear to me to constitute a single published edition of literary and artistic works. Whether the copied part of that edition is substantial must in my judgment be assessed in relation to the whole published edition.
29. Mr. Garnett's second argument was that even assuming that what is protected is the skill and labour of the typesetter there has been a substantial overborrowing of that skill and labour and substantial parts have been copied. He argued that quantitatively large amounts of text have been copied and qualitatively, each part of the newspaper being equally important, given that it is the typographical arrangement which is protected, what has been taken cannot be described as trivial. I have difficulty in accepting that each part of a published edition is to be treated as equally important. Mr. Garnett himself submitted that the appearance and impact of the articles as seen by the readers and customers are what is significant. He argued that the layout of the newspaper was not intended to be protected by typographical arrangement copyright, layout being protected, he submitted, by literary copyright, and for that he referred to Ladbroke (Football) Ltd. v William Hill (Football) U.K. [1964] 1 W.L.R. 273. But it does not follow from that decision that typographical arrangement copyright excludes the layout when the image on the page is protected. It seems to me inevitable that in considering how an edition is arranged typographically, one must look at the layout. As is said in Copinger and Skone James on Copyright 14th ed. (1999) para. 3-73: "Typographical arrangement implies the layout of words or symbols on the printed page".
30. Mr. Garnett's third argument was that in any event the repeated copying from newspapers amounts to the taking of a substantial part. There is an obvious difficulty with this submission. It requires the aggregation of separate typographical arrangements to arrive at the substantial part of the works which themselves presumably have to be aggregated. I do not understand how in logic what is an insubstantial part of a work can when aggregated to another insubstantial part of another work become a substantial part of the combined work. However Mr. Garnett relied on a number of authorities, to which I now turn.
31. The first was Trade Auxiliary Co. v Middlesborough and District Tradesmen's Protection Association (1889) 40 Ch. D. 425. Three periodicals published lists of registered bills of sale and deeds of arrangement, the copyright being held by the plaintiffs. The defendant association copied and circulated among its own members so much of the lists as related to its own neighbourhood, some four entries a week out of 400. Chitty J. held that as this was not the case of a single taking but a case of taking week by week for the same purpose, an injunction would be granted against the defendant. The Copyright Act 1842 contained no words corresponding to s. 16(3)(a), and the decision turned entirely on whether the breach of copyright was so minimal that no injunction would be granted. The Court of Appeal on the appeal to it said nothing on the point. I do not read this as a decision that there had been copying of a substantial part for there to be an infringement of copyright.
32. In Cate v Devon and Exeter Constitutional Newspaper Company (1889) 40 Ch. D. 500 in effect the same plaintiffs in a similar action against another defendant achieved a similar result before North J. Again the number of entries taken was small. Again however it was the regular and systematic taking and publication which led to the grant of an injunction. I make the same comment.
33. In Football League Ltd. v Littlewoods Pools Ltd. [1959] Ch. 637 a single chronological list of all the Football League fixtures in a season was copied every two weeks by the defendant. The defendant was held by Upjohn J. to have infringed the plaintiff's copyright in the list. Although no express reference was made by the judge to what was then the statutory requirement of a substantial part I take the judge to have held that the requirement was satisfied by the repeated systematic copying from the same work so that the entire list was in the end copied. I respectfully agree. But that throws no light on the question before us where there is repeated copying from different works.
34. In Electronic Techniques (Anglia) Ltd. v Critchley Components Ltd. [1997] F.S.R. 401 Laddie J. at p. 410 made clear his disquiet with cases like Cate, the principles underlying which, he suggested, might be looked at more carefully by a higher court.
35. I summarise the position as I see it on Mr. Garnett's third argument by saying that I do not accept that the fact that the repeated copying from newspapers, when each copying of an article is not of a substantial part of the published edition, amounts to the taking of a substantial part, nor do the authorities support such a conclusion.
36. Before I express my conclusion on the second issue, I should deal with one further argument of Mr. Garnett, that the decision of the trial judge should not be overturned unless he clearly misdirected himself. For this he referred us to the observations in this court in Bauman v Fussell [1978] R.P.C. 485 at pp. 487 per Somervell L.J. and at pp. 489-490 per Birkett L.J. There the question was whether a picture painted by the defendant reproduced a substantial part of the plaintiff's photograph. I accept those observations as applicable to a case where the judge has decided the point in issue. But in the present case, the judge has only expressed an obiter view and perhaps not as fully as he would have done if it had been a matter for his decision. Further, I am not satisfied that he did approach the relevant question correctly for the reasons already given. The matters to which he refers and which I have cited in para. 25 above do not seem to me to be of much relevance to the question whether the parts copied were substantial, given that the copyright in question is typographical arrangement copyright, material though they might be on the issue of fair dealing.
37. I turn then to how I would answer the second issue, bearing in mind that the copyright with which we are concerned is typographical arrangement copyright and that this requires a comparison of the parts copied with the whole published edition and a primarily quantitative assessment coupled with a consideration of the impact on the reader. We have not been taken to more than 3 complete pages, cuttings from which were made, still less to the complete editions in which any pages appeared. But we can apply judicial knowledge of the form of modern newspapers in considering whether substantial parts were copied. In making that assessment, where the compiler of the copy of the cutting has rearranged the format in which the article originally appeared and the compiled copy differs from the image on the page of the original, there will nevertheless have been a facsimile copy of each part which is pasted and cut. Each such part is a separate part of the image on the page and the substantiality of each such part is to be considered. The assessment of what is a substantial part is very much a matter of impression. All that I can say is that we have not been shown any cutting which I would regard as a substantial part of the published edition from which it came. That view is again consistent with the view taken in Nationwide. It follows that I would hold that there has been no infringement of copyright by M&S.
(3) S. 30(2)
38. This issue therefore does not arise on the view which I have taken on the first two issues. But as we are not agreed and as the point has been fully argued, I will express my views on it briefly.
39. There are two sub-issues within this issue. The first is whether what M&S did was dealing with the copyright work "for the purpose of reporting current events". The second is whether the dealing was fair.
40. It is common ground that in the light of the decision of this court in Pro Sieben Media A.G. v Carlton U.K. Television Ltd. [1999] F.S.R. 610:
(1) "for the purpose of reporting current events" in s. 30 (2) should be construed as a composite phrase;
(2) for the phrase could be substituted "in the context of" or "as part of an exercise in" without any significant alteration of meaning, the intentions and motives of the user of another's copyright work being of little importance save for considering whether the dealing was fair;
(3) the words "reporting current events" are of wide and indefinite scope and require a liberal interpretation.
41. It is also not in dispute that the defence of fair dealing is directed, as the judge put it (at p. 545) to achieving a proper balance between protection of the rights of a creative author or the wider public interest, of which free speech is a very important ingredient. The judge said (at p. 546) that the publication of a report or article in the press may itself constitute a current event and a publication may constitute fair dealing for the purpose of reporting current events though it contains no analysis or comment or any matter other than use of the copyright material, but that did not mean that whatever was reported in the press was a current event. He added that the term "current events" was narrower than the term "news", and that reporting of current events does not extend to publishing matters of current interest, whether generally or to particular persons like M&S, but which were not current events.
42. We were shown a number of cuttings. Many were of articles in the press which referred to M&S, whether reporting a news item (e.g. the announced intention to expand the workforce) or commenting on or displaying an M&S product. Others were of articles about matters (e.g. the launch of the euro) which could affect M&S in its business activities or about M&S's competitors. There can be no doubt but that the copying of the articles for the benefit of M&S executives was for a genuine business purpose and put before those recipients matters which they had a good commercial reason to see.
43. The fact that an article appears in the press can be said to be an event. As the cutting is copied promptly the event might be said to be current. The circulating of a copy to an M&S executive can be said to be reporting the current event of the appearance of that article. But is that what was intended by the phrase "for the purpose of reporting current events"? I think not for two reasons. First, the language of the subsection to my mind naturally connotes the public reporting of a recent newsworthy event. It is not natural to read it as meaning that the defence applies where the dealing lies in reporting the mere fact that an article has appeared in the press, however interesting that fact may be to M&S, for example that a fashion editor of a journal has featured an M&S garment, when that event has no other significance. Although the scope of the defence has been widened in successive Acts since it first appeared in s. 2(1)(i) Copyright Act 1911 as "Any fair dealing with any work for the purposes of .... newspaper summary" and willing though I am to give the phrase a liberal interpretation, I cannot see that the language, read naturally, permits a meaning as wide as Mr. Silverleaf would urge on us. Second, to interpret s. 30 (2) as providing a defence to copyright infringement in a case like the present would seem to me to have nothing to do with the public interest and everything to do with serving the private commercial interests of M&S. I can see no public interest reason why the legislature should want to provide a defence to an infringement of copyright for the copying within a commercial organisation for commercial reasons of material subject to copyright, whereas a public interest can be discerned in the public reporting of newsworthy current events. I would therefore hold, in agreement with the judge, that if what M&S did was an infringement of copyright, it would not come within the defence of s. 30(2).
44. If I am wrong on that, then the question would be whether M&S's dealing was fair. Fairness is to be judged by the objective standard of whether a fair minded and honest person would have dealt with the copyright work in the manner in which the defendant did for the purpose in question (Hyde Park Residence Ltd. v Yelland unreported, 10 February 2000, para. 38 per Aldous L.J.). The commercial motives and intentions of M&S cannot be impugned. The degree to which the challenged use competes with exploitation of copyright by the copyright owner was recognised to be a very important consideration in Pro Sieben ([1999] F.S.R. at p. 619). The use by M&S was not in competition with the newspapers or the NLA. M&S was using the copies purely internally, and was not, for example, exploiting the copied material by selling it to others. In all the circumstances I would incline to the view that, if the dealing had been for the purpose of reporting current events, that dealing was fair dealing.
Conclusion
45. For the reasons which I have given, as well as those given by Mance L.J. on the first two issues, I would allow the appeal, set aside the order of the judge, dismiss the action and, on the counterclaim, declare that M&S's press clipping service does not infringe the NLA's copyright the subject of this action.
LORD JUSTICE CHADWICK:
46. The issues for decision on this appeal, and the underlying facts which give rise to those issues, are set out in the judgment of Lord Justice Peter Gibson. It is unnecessary for me to rehearse them. But, in the circumstances that I have reached conclusions on two of those issues which differ from the conclusions reached by the other members of the court, and which would have led me to dismiss this appeal, it is appropriate that I set out the reasons which have required me to dissent.
47. The Copyright, Designs and Patents Act 1988 was enacted, as its long title makes clear, to restate the law of copyright, with amendments. Part I of the Act contains the provisions which relate specifically to copyright. Copyright is defined in section 1(1). It is a property right which subsists, in accordance with Part I, in the following descriptions of work: (a) original literary, dramatic, musical or artistic works, (b) sound recordings, films, broadcasts or cable programmes, and (c) "the typographical arrangement of published editions". In that context "published edition" means "a published edition of the whole or any part of one or more literary, dramatic or musical works" - see section 8(1) of the Act.
48. It is not in dispute on the present appeal that literary copyright - under paragraph (a) of section 1(1) of the Act - subsists, or is capable of subsisting, in the content of the articles and reports of which copies are supplied to the appellant by the press cuttings agency; so that the content of those articles and reports are capable of falling within the description "literary works" in section 8(1) of the Act. Nor is it in dispute that each published edition of a newspaper or magazine which contains an article (or articles) or a report (or reports) of which a copy or copies are supplied to the appellant will contain, also, many other articles or reports the content of which are capable of falling within that description; but which are of no interest to the appellant, which fall outside the brief given to the press cuttings agency and of which no copies are supplied. So each edition of a newspaper or magazine which contains an article or report of which a copy is supplied to the appellant will be a published edition "of . . . literary . . . works" within section 8(1) of the Act, and so will be a published edition in relation to which copyright will subsist in "the typographical arrangement". So much is common ground.
49. There can, I think, be no dispute that each article or report in a newspaper or magazine is "published" when the newspaper or magazine in which it appears is, itself, published. But it is said by the appellant that it does not follow that the publication of the article or report as part of the newspaper or magazine is properly to be regarded as a "published edition" of the article or report. The appellant contends that the only "published edition" for the purposes of section 8(1) of the Act - and so the only published edition in the typographical arrangement of which copyright can subsist- is the newspaper or magazine as a whole. There can be no separate copyright in the typographical arrangement of the article or report itself which is distinct from the copyright in the typographical arrangement of the newspaper or magazine in which it appears. The judge rejected that contention.
The first issue.
50. Whether he was right to do so is the first issue raised by this appeal. The issue turns on the true construction of the expression "a published edition of the whole or any part of one or more literary, dramatic or musical works" which appears in section 8(1) of the Act. The meanings given to the word "edition" in the Shorter Oxford English Dictionary are "a. One of the differing forms in which a literary work is published. b. The whole number of copies printed from the same set of types and issued at one time." It must, I think, be correct to assume that Parliament intended that the words "published edition" should have the first of those meanings in the context of section 8(1). A published edition of a literary work is one of differing forms in which the work is published. That view is consistent with the provisions of section 8(2):
Copyright does not subsist in the typographical arrangement of a published edition if, or to the extent that, it reproduces the typographical arrangement of a previous edition.
51. The composite expression "a published edition of the whole or any part of one or more literary . . . works" suggests that Parliament had in mind at least five distinct cases: (i) a published form of the whole of a single literary work, (ii) a published form of part of a single literary work, (iii) a published form of the whole of two or more literary works, (iv) a published form of parts of two or more literary works and (v) a published form of the whole of one or more literary works and parts of one or more other literary works. The possible categories of case are multiplied when it is appreciated that a literary work and a musical work may be comprised in the same published edition. An obvious example would be a choral score.
52. The appellant's argument requires it to be assumed that Parliament intended that those five categories of case should be mutually exclusive; so that if the whole or parts of two or more literary works are published together - say, in the same newspaper or the same magazine, or between the same covers, as in the case of a collection of essays or an anthology of poetry - the published form will fall within one of the cases which I have described under (iii), (iv) or (v) and it is not permissible to treat the publication as falling also within either of cases (i) or (ii). So, for example, if a collection of six essays by different authors is published between the same covers, there is a single published edition within case (iii). It is not permissible to treat the publication as giving rise, also, to six separate published editions each within case (i).
53. For my part, I find it impossible to see - at least, as a matter of first impression - why that should be so. In the example which I have just given there are, plainly, six distinct literary works. Each of those literary works is published - in a form which differs from any earlier published form - when the collection itself is published. Why should the publication of the collection not give rise to a published edition - different from any earlier published edition - of each of the six essays?
54. It is said that that result must follow from the use of the words "one or more" in the expression "the whole or any part of any one or more literary . . . works". The effect of those words is to make it plain that Parliament intended that copyright should subsist in the typographical arrangement of the collection as a whole. It is inconsistent with that intention that Parliament be taken to have intended, also, that a separate copyright should subsist in the typographical arrangement of each of the constituent literary works. Further, Parliament would have had no need to make provision for the cases which I have described under (iii), (iv) and (v) unless it had intended that each case should be mutually exclusive. Every case within (iii), (iv) or (v) would, if the five cases were not mutually exclusive, necessarily fall also within cases (i) or (ii); because any published edition of the whole or any part of more than one literary work would, necessarily, include a published edition of the whole or a part of each of the constituent works.
55. I am not persuaded by those submissions. It is, indeed, plain that Parliament intended that copyright should subsist in the typographical arrangement of the collection as a whole - whether or not a separate copyright also subsists in the typographical arrangement of each of the essays. The collection will itself be a "published edition" for the purposes of section 8(1) of the Act. But that is not, in my view, inconsistent with an intention that, in a case where the collection is made up of a number of discrete, or severable, parts, copyright should not also subsist in the typographical arrangement of each of those parts. It is necessary to have in mind that Parliament must have recognised that there would be circumstances in which the need to give copyright protection to the typographical arrangement of a composite work could not be achieved by giving copyright protection to the typographical arrangement of each of its constituents. An obvious example is a single, composite, text which comprises more than one literary work.
56. An article or report in a newspaper or magazine will often be - indeed, I suspect, will usually be - the literary creation of a single author, or of joint authors working in collaboration; so that the contribution of each is not distinct from the contribution of the others and literary copyright will subsist in the single copyright work which he or they have created. But it is impossible to hold that that will necessarily or invariably be the case. There will be circumstances in which two or more distinct literary copyrights subsist in the content of a single article or report; where, for example, a text is interspersed with a commentary by a different author, not acting in collaboration with the author of the original text. A more familiar example may be provided by editorial input in the form of headlines, headings and other inserts. In such a case, the content of the article or report will comprise more than one literary work.
57. It is for that reason that I do not, for my part, find the answer to the first issue in the words "one or more" which appear in section 8(1) of the Act. The obvious purpose of those words is to make it plain that Parliament intended that copyright should subsist in the typographical arrangement of a collection of literary works as a whole - whether or not copyright also subsisted in the typographical arrangement of each of the works individually. But, in my view, that does not lead to the conclusion that Parliament intended that copyright should not subsist in the typographical arrangement of each of the works individually. There is a need for those words "one or more" whether or not Parliament intended that copyright should also subsist in the typographical arrangement of each of the works individually.
58. The best aid to the construction of the expression "a published edition of the whole or any part of one or more literary, dramatic or musical works" which appears in section 8(1) of the 1988 Act is to identify the mischief which sections 1(1)(c) and 8(1) - and their statutory predecessors, section 15(1) and (3) of the Copyright Act 1956 - were introduced to meet. It is common ground that that mischief can be found in the Report of the Copyright Committee (Cmd. 8662) ("the Gregory Report") presented to Parliament in 1952, at paragraphs 306-310. Paragraph 306 contains the following passage:
"They [the Publishers' Association] were seeking protection for typographical arrangements so that a particular edition of a literary or musical work printed by or for a publisher could not be directly and exactly copied by an unscrupulous competitor by photo-lithography or similar means. They pointed to the remarkable advances which have been made in the art of photo- lithography and said that once a book or an orchestral score has been printed, it is now possible by photographic processes to produce reprints quickly and, compared with the costs involved in typesetting, relatively cheaply. If literary or musical work printed is in copyright, such copying would, of course, require the consent of the copyright owner, and this would also be the case if the edition includes original artistic works in copyright. But if the work printed is itself out of copyright, there is nothing to prevent the unscrupulous competitor from copying the work photographically and so benefiting unfairly from the work of the original publisher."

59. It was to meet the mischief identified in that passage that, when enacting the Copyright Act 1956, Parliament provided in section 15:
(1) Copyright shall subsist . . . in every published edition of any one or more literary, dramatic or musical works . . .
. . .
(3) The act restricted by the copyright subsisting by virtue of this section in a published edition is the making, by any photographic or similar process, of a reproduction of the typographical arrangement of the edition.
60. Section 49(1) of the 1956 Act provided that the doing of an act in relation to a work should be taken to include a reference to the doing of that act in relation to a substantial part thereof.
61. The arguments in the present appeal have been directed to the typographical arrangement of literary text; but it is important to have in mind that the passage in the Gregory Report to which I have referred places equal emphasis on the typographical arrangement of a musical or orchestral score. A musical score may be published on its own, or as one of a collection of compositions by the same composer, or as one of a collection of compositions on the same theme or for the same instrumentalist. It would, to my mind, be surprising if - in the light of the mischief identified in the Gregory Report - Parliament had intended that the protection that a score would plainly enjoy if published on its own should depend (in a case where it were published as one of a collection of compositions) on the question whether or not it could be regarded as a substantial part of that collection. Further, it would be surprising if Parliament, having determined to provide protection for the typographical arrangement of musical score published on its own and the typographical arrangement of lyrics published on their own, should not also intend to provide individual protection for the typographical arrangements of both score and lyrics in a case where score and lyrics were published together. Did Parliament intend, for example, that the question whether the orchestral part of the complete score for Handel's "Messiah" should enjoy protection was to depend on whether the orchestral score was to be regarded as a substantial part of the whole?
62. In the absence of authority I would have no doubt that what Parliament had in mind, when enacting section 15 of the 1956 Act, was that the composite phrase "every published edition of any one or more literary . . . or musical works" covered, where score and lyrics were published together, (i) the published form of the score, (ii) the published form of the lyrics, and (iii) the published form of score and lyrics as a choral work comprising both words and music. It seems to me artificial to hold that, in such a case, there has been no published edition of the musical work (the score) - or no published edition of the literary work (the lyrics) - for the purposes of section 15(1) of the 1956 Act. Plainly, there would have been a publication of the musical work - and a (separate) publication of the literary work - for the purposes of section 2(5) of that Act (acts restricted by copyright in literary, dramatic and musical works). What has happened, in a case where score and lyrics have been published together, is that the publication includes both a published form of the musical work and a published form of the literary work, as well as a published form of the combined work.
63. The provisions first enacted in section 15 of the 1956 Act have been re-enacted (albeit in different words) in sections 1(1)(c) and 8(1) of the 1988 Act. But section 172(2) of the 1988 Act requires that a provision in Part I of the Act which corresponds to a provision of the previous law shall not be construed as departing from the previous law merely because of a change of expression. In any event, in relation to the question whether the publication of a literary work as part of a collection of copyright works is properly to be regarded as a "published edition" of that work as distinct from part of the published edition of the whole, there is no material difference between the 1956 Act and the 1988 Act.
64. The only decision of the English courts to which we were referred on the question whether the publication of a literary work as part of a collection of copyright works is properly to be regarded as a "published edition" of that work was that of Mr Justice Walton in Machinery Market Limited v Sheen Publishing Limited [1983] FSR 431. It is, I think, implicit in his judgment that Mr Justice Walton assumed that each publication of the advertisement in the plaintiff's magazine was a new "published edition" of the advertisement; but I agree with Lord Justice Peter Gibson that it is impossible to find in that judgment any indication that that issue - with which we are concerned on this appeal - was the subject of argument or analysis. I do not think that the Machinery Market case provides the support which Mr Justice Lightman felt able to place upon it in the present case.
65. We were referred to the decision of Mr Justice Wilcox, in the Federal Court of Australia, in Nationwide News Pty Ltd and others v Copyright Agency Ltd (1995) 55 FCR 159, 128 ALR 285, affirmed on appeal at (1996) 136 ALR 273. The relevant provisions in the Australian legislation were contained in sections 88, 92 and 100 of the Copyright Act 1968. Those provisions were in terms which, as Mr Justice Wilcox held at page 172, were indistinguishable from the corresponding provisions in the United Kingdom Act of 1956. He rejected the contention that what he described as "published edition copyright" could be infringed by the reproduction of a single item in a newspaper or magazine; the question, in such a case, was one of "substantiality" - that is to say, whether the item constituted a substantial part of the whole. At page 173, lines 46-51, he said this:
I do not think that published edition copyright is infringed by the reproduction of a single item in an edition, unless that item is so significant that it constitutes a substantial part of the work. Section 88 defines copyright, in relation to a published edition of a literary work, as "the exclusive right to make a reproduction of the edition"; not of an item that constitutes part of an edition.
66. Mr Justice Wilcox reviewed the circumstances in which the Australian provisions had reached the statute book. He concluded from that review that his approach was in accord with the intention of those promoting the legislation. After referring to the consideration which had been given, in Australia, to the Gregory Report, he said this, at page 175, lines 4-7:
The progenitors of ss 88, 92 and 100 obviously did not intend that published edition copyright would extend to part only of a published edition unless that part was substantial.
67. I agree that published edition copyright - or the equivalent under the current United Kingdom legislation, copyright in the typographical arrangement of a published edition - does not extend to part only of the published edition, unless the test of substantiality is satisfied. But to reason from that premise that there is no distinct copyright in an individual, but self-contained, item in a compilation of separate literary works is, in my view, to beg the question. The relevant question is not whether there is copyright in the typographical arrangement of part only of the published edition of the compilation; but whether the self contained item is, itself, "a published edition of the whole or any part of one or more literary . . . works". I do not, myself, find in the judgment of Mr Justice Wilcox any assistance on that question; in my view, he does not address it.
68. I am left, therefore, in the position that there is no authority which requires, or persuades, me to find that the provisional conclusion which I have already expressed is wrong. For the reasons which I have given, I would decide the first issue in favour of the respondent.
The second issue.
69. Chapter II in Part I of the Act sets out the rights of a copyright owner. In particular, the owner of the copyright in a work has, in accordance with the following provisions in that Chapter, the exclusive right to copy the work - see section 16(1)(a). The copying of a work in which copyright subsists (save in so far as permitted under the provisions contained in Chapter III in Part I of the Act) is an act restricted by the copyright - see section 17(1). Copying without the licence of the copyright owner is an infringement of the copyright; and, as such, is actionable by the copyright owner - see sections 16(2) and 96(1) of the Act. Copying, in relation to the typographical arrangement of a published edition, means making a facsimile copy of the arrangement - see section 17(5) of the Act.


70. In the present case it is not in dispute that the appellant, through its internal press offices, is making facsimile copies of the articles and reports supplied to it by the press cuttings agency. The copying by the appellant of the articles and reports supplied by the press cuttings agency constitutes (at the least) indirect copying of the articles and reports as published in the newspapers and magazines from which they have been taken. The appellant does not suggest otherwise. Nor, if copyright subsists in the typographical arrangement of the individual articles and reports, can the appellant avoid the conclusion that what it is doing is, prima facie, an act restricted by the copyright. That is because, on that hypothesis, the appellant is making facsimile copies of the whole of the copyright work. It follows that, if I were correct in the conclusion which I have reached on the first issue, no issue as to substantiality can arise.
71. The second issue arises if I am wrong in the conclusion that I have reached on the first. The doing of an act restricted by the copyright in a work includes the doing of it in relation to a substantial part of the work - see section 16(3)(a) of the 1988 Act. If the true analysis is that the only relevant "published edition" is the newspaper or magazine from which the article or report has been taken, then the question is whether the copying of the typographical arrangement of the individual article or report is properly to be regarded as the copying of a substantial part of the typographical arrangement of the newspaper or magazine as a whole.
72. For my part, I would regard the test of substantiality in that context as primarily, if not exclusively, quantitative. But whether the quantitative comparison is confined to column inches of space occupied, or includes a word or line count or some other assessment of visual impact, is a question on which I prefer to express no view. The difficulties which, as it seems to me, are inherent in applying the test of substantiality to a work which consists of typographical arrangement contribute to my view that Parliament is unlikely to have intended that to be the applicable test in relation to the infringement of copyright in the typographical arrangement of a compilation of individual literary works. Be that as it may, it is sufficient if I express my agreement with the conclusion reached by Lord Justice Peter Gibson on this issue. If substantiality is the test, then I agree that we have not been shown any cutting which can properly be regarded as a substantial part of the newspaper or magazine from which it was taken.
The third issue.
73. Chapter III in Part I of the 1988 Act sets out the acts which may be done in relation to copyright works notwithstanding the subsistence of copyright. Section 30(2) is in these terms:
30(2) Fair dealing with a work (other than a photograph) for the purposes of reporting current events does not infringe any copyright in the work provided that (subject to subsection (3)) it is accompanied by a sufficient acknowledgement.

74. The third issue is whether, if the making of facsimile copies of the articles and reports supplied to the appellant by the press cuttings agency would otherwise infringe the copyright in the typographical arrangement of those articles and reports as published in the newspapers and magazines from which they were taken (as I think it would), that result is avoided by the "fair dealing" permission contained in section 30(2) of the Act.


75. For my part, I would accept that the purpose for which the copying is done, in the present case, can be brought within a liberal interpretation of the phrase "for the purpose of reporting current events". It seems to me that there are two routes to that conclusion. First, as the examples to which we were taken show, many of the cuttings supplied to the appellant by the press agency are, indeed, reports of current events in, or relevant to, the market in which the appellant trades. An example would be the opening of a new store, or the launch of a new product, by a competitor in that market. Secondly, where an article features comment upon one of the appellant's branded products, or upon the branded product of a competitor, or upon some perceived fashion trend in relation to products sold by the appellant, the fact that the article has appeared can, in my view, properly be described as "an event"; and, if the copying is done within a few days of the article appearing, the appearance of the article can be properly be described as a "current event". It seems to me beyond argument that, in those circumstances, the copying is done for the purposes of reporting that "current event" to those within the appellant's organisation who have a commercial need to be informed of it. I have no difficulty in accepting that the fact that the appearance of an article of the nature which I have described is a matter about which those responsible for purchases or sales or other matters of corporate policy may need to know at the earliest opportunity; so that they can take informed decisions in the appellant's interest.
76. But it does not follow that the reporting of current events for the appellant's internal commercial purposes by the making of facsimile copies of reports and articles in newspapers and magazines falls within the concept of "fair dealing" which section 30(2) of the 1988 Act is intended to permit.
77. "Fair dealing", as a concept, appears not only in section 30(2), but also in section 29 (fair dealing for the purposes of research or private study) and section 30(1) (fair dealing for the purpose of criticism or review). That is the context in which the phrase must be construed. When those provisions are read together, it seems to me that a dealing by a person with copyright work for his own commercial advantage - and to the actual or potential commercial disadvantage of the copyright owner - is not to be regarded as a "fair dealing" unless there is some overriding element of public advantage which justifies the subordination of the rights of the copyright owner. In my view it was the recognition that the property right conferred on the copyright owner by the 1988 Act and its statutory predecessors - and which, subject to the provisions of the Act, the copyright owner is entitled to protect and exploit - should yield, in appropriate circumstances, to an overriding public interest in the promotion of research or private study, in the publication of comment or criticism, or in the reporting of current events which led to Parliament to include the fair dealing provisions in the legislation. I can see no reason why Parliament should have intended, in the absence of some overriding element of public advantage, to permit one person to deal with copyright work to his own commercial advantage and to the actual or potential commercial disadvantage of the copyright owner; and no reason why what would otherwise be an infringement of the rights of the owner of copyright in typographical arrangement should be permitted simply because the particular commercial advantage to be obtained was a more convenient (or less costly) means of disseminating reports of current events within a commercial organisation by the circulation of facsimile copies of press cuttings.
78. There is no suggestion, in the present case, that there is any element of public advantage in the use which the appellant makes of the press cuttings copied and circulated by its internal press offices. I would hold that the provisions of section 30(2) of the 1988 Act have no application in the present case.

79. For those reasons I would have dismissed this appeal.

LORD JUSTICE MANCE:
Introduction
80. I have had the benefit of reading in draft the judgment given by Peter Gibson LJ with which I find myself in substantial agreement. I add however some words of my own, since we are differing from the judge, whose conclusion Chadwick LJ also supports.
81. It is common ground that this case is concerned a very peculiar kind of copyright work, which does not depend on any literary or artistic merit. That is "the typographical arrangement of published editions": s.1(1)(c) of the Copyright, Designs and Patents Act 1988. By s.8(1):
"In this Part "published edition", in the context of copyright in the typographical arrangement of a published edition, means a published edition of the whole or part of one or more literary, dramatic or musical works".
82. The owner of copyright of this nature thus acquires the exclusive right to copy the work: s.16(1)(a). The effect of s.16(4) is that he may not do any act of copying "(a) in relation to the work as a whole or any substantial part of it .... and (b) either directly or indirectly".
The object protected
83. I do not accept Mr Garnett QC's submission for the respondents that the object of protection is to be identified by reference to the individual literary, dramatic or musical works involved. Still less do I accept the further submission in his skeleton that, in view of the words "or part of" in s.8(1), the typesetting of even a single word, such as "Exxon", was protected "if it formed part of a literary work such as a letter or advertisement". In oral argument, he modified his stance to take account of the words "of one or more", which were omitted from the judge's summary of the subsection in paragraph 13 of his judgment. Mr Garnett's final stance was that s.8(1) afforded the publisher protection both by reference to the whole or any part of each individual work published and by reference to the whole publication in which any such works or parts of works appeared.
84. To my mind there is no warrant for that more complex interpretation. It would create multiple over-lapping copyright protection in respect of any publication containing more than one literary, dramatic or musical works. The statutory definition does not either express or to my mind suggest any such intention. It focuses on a (single) published edition, which may, according to the circumstances, consist of either the whole or part of either one or more literary, dramatic or musical works. A single Shakespeare play is a published edition of one literary or dramatic work. A collection of Shakespeare plays is a published edition of several such works. What is protected under s.8(1) is in each case the typographical arrangement of that published edition, whether it happens to contain one or more than one of such works (or parts of such works).
85. What is on this basis protected corresponds with the commercial product which the publisher creates, publishes and sells, that is the whole edition. The reference to literary, dramatic or musical works in s.8(1) defines the nature of the contents of the published edition in respect of which typographical arrangement copyright exists, not the entity or product by reference to which such copyright exists. In view of the reference in s.16(3)(a) to "substantial part", the extent to which typographical arrangement copyright prevents reproduction of a single work, e.g. a poem, may thus in effect depend upon the extent to which the published edition contains other works. But this is because the statutory protection relates, understandably, to the product which the publisher creates and markets. The opposite view, that typographical arrangement protection extends to the whole or any part of each literary, artistic or musical work, which happens to be included in the entire edition created by the publisher, would itself make that protection depend upon how large each work was or upon how large a part of it was included. On this view, it would in many cases, presumably, be impossible to photocopy even one item from a dictionary of quotations or a work of short poems. On the other hand, if the literary author was well-regarded and the dictionary contained multiple quotations from each of his works, then copying one item might well not involve copying of a "substantial part" of any particular work. Typographical arrangement copyright related to individual literary, dramatic or musical works would thus itself involve apparent anomalies.
86. Dictionary definitions can provide only very limited assistance in an exercise of construction of statutory language which must be viewed in its own context. However, Longman's Dictionary of the English Language (1991) defines "edition" as follows:
"1a the form in which a text (e.g. a printed book) is published <paperback edition> <abridged edition>
1b(1) the whole number of copies published at one time <an edition of 50,000>
1b(2) the issue of a newspaper or periodical for a specified day, time of day or month <the late edition>
1b(3) the issue of a newspaper or periodical published or circulated in a specified place <the Manchester edition>
2a the form in which something is presented, especially on a particular occasion <this year's edition of the summer charity ball>
2b the whole number of articles of one style put out at one time <a limited edition of collector's pieces>
3a a copy, version <she's a friendlier edition of her mother>"
87. For what they are worth, these definitions appear to me to lend some support to the view that the words "published edition" in the present statutory context refer naturally to the entire publication containing the whole or part of one or more literary, dramatic or musical works.
88. This interpretation is also consistent with the definition in s.9 of the "author". By s.9(1) "author, in relation to a work, means the person who creates it". By s.9(2) that person is to be taken to be "in the case of the typographical arrangement of a published edition, the publisher." The publisher is, under s.11(1), therefore also the "first owner" of the copyright. To describe a publisher as an author creating a separate typographical arrangement in respect of each literary, dramatic or musical work, the whole or any part of which is contained within the publication he issues, appears to me to strain language.
89. The prior legislative history of s.8(1) is also consistent. The somewhat differently worded s.15 of the Copyright Act 1956 provided that:
"(1) Copyright shall subsist, subject to the provisions of this Act, in every published edition of any one or more literary, dramatic or musical works ....
....
The act restricted by the copyright subsisting by virtue of this section in a published edition is the making, by any photographic or similar process, or a reproduction of the typographical arrangement of the edition."
90. That again focuses on the publication as a whole, with the relevant works being introduced merely to define the character of the required contents. The addition of the words "or part of" in the 1988 Act caters expressly for the possibility that such a published edition might contain only extracts from material of that character. S.172(2) of the 1988 Act provides:
"A provision of this Part which corresponds to a provision of the previous law shall not be construed as departing from the previous law merely because of a change in expression."
91. Although this provision tends, strictly, to beg the question when a change is no more than a change in expression, it at least encourages the reader to identify changes as re-arrangement and re-drafting, rather than major, substantive amendments. That encouragement appears to me particularly relevant when comparing s.15 of the 1956 Act and s.8 of the 1988 Act. I see the two as having, for present purposes, broadly similar effect.
92. The purpose or "mischief", with reference to which s.15 of the Act was first introduced, is identified in the Report of the Copyright Committee ("the Gregory Committee Report) dated October 1952 (Cmnd. 8662). Paragraph 306 described the Publishers Association's suggestion that there should be a copyright in typography in the following terms:
"By this they did not mean that particular type designs or founts should be protected by the Copyright Act; new type designs are registrable under the Registered Designs Act and they were not asking for any change in that respect. They were seeking protections for typographical arrangements so that a particular edition of a literary or musical work printed by or for a publisher could not be directly and exactly copied by an unscrupulous competitor by photo-lithography or similar means. They pointed to the remarkable advances which have been made in the art of photo-lithography and said that, once a book or an orchestral score has been printed, it is now possible by photographic processes to produce reprints quickly and, compared with the costs involved in type-setting, relatively cheaply. If the literary or musical work printed is in copyright, such copying would, of course, require the consent of the copyright owner, and this would also be the case if the edition includes original artistic works in copyright. But if the work printed is itself out of copyright, there is nothing to prevent an unscrupulous competitor from copying the work photographically and so benefiting unfairly from the work of the original publisher. The Association added that in certain foreign countries the law of unfair competition prevented this sort of copying by competitors but no such remedy is available in this country."
93. This passage does not deal with the possibility of publications containing more than one literary or musical work, but does nothing to undermine my view that the legislation protects the typographical arrangement of the entire publication, rather than of any individual literary, dramatic or musical work within it. The passage also indicates that the publishers had in mind, not any situation resembling the present, but the direct and exact copying of entire publications by competitors. That is a form of pirating that visitors to certain countries can see for themselves still occurs, on a commercial basis.
94. Mr Garnett argued that ss.1(1)(c) and 8(1) cannot have been intended to operate, or at least to operate solely, by reference to the published edition as a whole, since the publisher's interest in that was adequately protected by the form of compilation copyright identified in, for example, Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. [1964] 1 WLR 273 (HL). He coupled this with the submission that the protection of typographical arrangement intended by ss.1 and 8 was quite distinct from the protection of layout of a published edition.
95. Compilation copyright is, however, is a form of literary or artistic copyright. Its existence depends upon there being created a distinctive and original compilation, using knowledge, labour, judgment or skill. As the speeches in Ladbroke indicate, whether a particular compilation gives rise to such copyright is a matter of fact and degree. The non-literary and non-artistic copyright recognized under s.15 of the 1956 Act and now ss.1 and 8 of the 1988 Act does not therefore duplicate any protection which the published would anyway necessarily have. Further, Mr Garnett's recognition in oral argument that ss.1 and 8 must at least cover the published edition as a whole itself tends to undermine his argument on this point.
96. One element of the protection of typographical arrangement afforded by ss.1(1)(c) and 8(1) relates without doubt to the costs formerly associated with physical typesetting. But the words are wide enough to embrace the general typographical appearance of the published edition as a whole, including therefore protection in respect of the results of any process of design or selection reflected in that appearance, whether or not this would also give rise to compilation copyright. In that respect I agree with the way in which Copinger and Skone James on Copyright (14th ed.) Vol. 1 put the matter:
".... Typographical arrangement implies the layout of words or symbols on the printed page, in which the publisher makes a contribution.
....
.... The interest intended to be protected by the copyright in this category of work is the investment of skill and labour in the presentation and layout of the edition, and the question of substantial part should be viewed in this light."
97. Copinger and Skone James cite in paragraph 7-103 the Australian Federal Court of Appeal decision in Nationwide News Pty. Ltd. v. Copyright Agency Ltd. (1994) IPR 159; (1995) IPR 53. The court there was concerned with legislation with common roots to the English legislation, but with the difference that the Australian Copyright Act 1968 did "not expressly limit the act restricted by published edition copyright to a reproduction of the typographical arrangement of the edition": see (1995) IPR at p.289. The court said at pp.290-291:
"The general principle of copyright is that copyright does not extend to ideas, but only to the expression of those ideas. But in the case of a published edition copyright, what is protected is not a particular collocation of words or musical notes, or a photographic representation. Published edition copyright protects the presentation embodied in the edition. This form of copyright, as the legislative history shows, protects such matters as typographical layout. However, it also protects other aspects of presentation, such as juxtaposition of text and photographs and use of headlines. In the present case, a considerable volume of evidence was adduced on the importance of layout and presentation to magazines and newspapers. In modern times, the work of typesetters is shared among sub-editors, layout artists or designers and production editors. It is clear that layout is often extremely important in attracting readers to read a particular story or magazine. It is also clear that the choice of layout, type-size, headings and colour is a skilled operation"
98. The different wording of the Australian and English statutes calls for care before wholesale adoption of this passage as representing English law. Further, the passage starts with a phrase not actually used in the English Act - "typographical layout"- and, after initially distinguishing other aspects such as juxtaposition of text, later refers to all of sub-editors, layout artists or designers and production editors as successors of the former typesetters. The starting point in the English context must be the concept of typographical arrangement, but this itself is, I consider, wide enough to embrace all aspects of typographical arrangement, including matters of layout and appearance.
99. In the Nationwide case, the judge at first instance, Wilcox J., had also to consider in the context of s.88 of the Australian Act whether the object of protection was the published edition as a whole or the individual literary, dramatic, musical or artistic work(s) making up its contents. (The word "artistic" appears in the Australian, but not in the English, legislation.) S.88 read:
"For the purposes of this Act, unless the contrary intention appears, copyright, in relation to a published edition of a literary, dramatic, musical or artistic work or of two or more literary, dramatic, musical or artistic works, is the exclusive right to make, by a means that includes a photographic process, a reproduction of the edition."
100. Wilcox J. rejected the applicants' submission that this copyright attached to each item in a newspaper or magazine, holding that the section looked to the "entire published edition" or "entire publication" (p.171), and only extended to part of that, if that part was substantial. He refused in this respect to follow the approach of Walton J. in Machinery Market Ltd. v. Sheen Publishing Ltd.. [1983] FSR] 431. The appeal against Wilcox J's decision on this point was abandoned: see (1996) 136 ALR at p. 293. On this point, I regard the wording of the Australian legislation as materially the same as the English. I agree with Wilcox J's conclusion. As Peter Gibson LJ points out, the present point does not appear to have been raised or argued before Walton J. In so far as his decision in favour of the publishers depended upon the existence of typographical copyright, I agree that the Machinery Market case was wrongly decided. The copying of the advertisements, which, Walton J. pointed out, constituted on authority literary works would, presumably, have been actionable at the suit of the owners of the copyright in the advertisements.
101. I therefore consider that Lightman J. was wrong to follow Walton J's approach and that it is necessary to consider - viewing each published edition of each newspaper as a whole - whether the appellants in copying any individual article or item from it, were doing that act of copying "in relation to the work as a whole or any substantial part of it". Peter Gibson LJ has observed that there is a potential intermediate question, whether a particular newspaper may itself be divisible into separate publications, in the light of the modern practice to produce separate sections, accompanied, in some cases, by quite different looking magazines which may be published and/or even packaged quite separately from the main newspaper. In the Nationwide case, the Federal Court preferred to view the Australian Magazine - distributed with the newspaper Weekend Australian, but "presented as a separate item, complete in itself" and "printed on different quality paper, produced in colour and separately bound" - as a separate publication for the purposes of published edition copyright. Although we have not seen copies of these Australian publications, I would, judging by the Federal Court's description of the facts, be inclined to agree with its conclusions on this point. But the point does not present itself in the present case as critical.
Substantial part.
102. The appellants' statement of facts used before the judge was put before us with numerous sample newscuttings, and limited additional material consisting of some complete newspaper pages to show the relationship of particular cuttings to the pages from which they came. The statement indicates that the appellants circulated cuttings to key staff within the main categories of retail interest, corporate interest and merchandise features, together with articles relating to specific subjects, such as the Euro, and regional areas nationally or internationally. Once circulated such cuttings might be used for personal information, interest and use, feedback, product appraisal or to a limited extent further dissemination to other staff. The primary interest served by circulating the cuttings was the information that they contained, which might, one way or the other, assist to promote the appellants' business. The judge also considered that seeing the typographical arrangement of the cuttings might also enable the appellants better to judge the impact of the articles on the general readers and to "have the benefit of the reader-friendly presentation". To the extent that the copying of the articles shows whether and how prominent a heading or type-face was used and precisely how long an article is, that is not difficult to follow. Matters of colour, which as one witness pointed out would be relevant when viewing photographs, seem irrelevant to the present case, since typographical arrangement copyright under English law does not relate to contents of a publication consisting of artistic work. Otherwise, the material before me leaves me unpersuaded that typographical arrangement can have been of any real relevance to the appellants' staff, especially when it is not just impossible in most cases to know where on the page a cutting even appears, but its whole look has very frequently changed by its being chopped up and rearranged on the page, for photocopying on A4 size paper. However, my doubt in that respect is not critical to any conclusions which I reach.
103. Did the appellants copy "any substantial part of" any published edition of any of the newspapers from which they copied articles? I have found this a difficult question. First, there is the fact that it arises in the context of typographical arrangement, as Copinger and Skone James observe in paragraph 7-103 (quoted above), the question of substantial part should be viewed in this light. Copinger and Skone James discuss in helpful detail the factors, primarily qualitative, which may assist to decide such an issue in the different context of creative works: see paragraphs 7-29 to 7-31. But it is not immediately obvious what should be the relevant criteria in the context of a typographical arrangement. Mr Garnett's first submission was that even a small part of an entire published work constituted a substantial part. He adopted the quotation from Laddie, Prescott and Vitoria which the judge also took as guidance. Peter Gibson LJ has set it out. I agree with him that it understates the significance of the words "substantial part" which appear in s.8(1) of the 1988 Act. The requirement in s.8(1) that there should have been copying of a "substantial" part of the published edition may be contrasted with the simple reference to a published edition of "any part of" one or more literary, dramatic or musical works in s.8(1). Like Peter Gibson LJ, I would conclude that a substantial part is not copied merely because the quantity copied is more than de minimis, and that the test under s.16(3)(a) is probably best paraphrased by asking whether copying took place to an extent "worthy of consideration for the purposes of the Act": R. v. Mergers and Monopolies Commission [1992] 1 WLR 291, 300 per Nourse LJ; [1993] 1 WLR 23, 29 per Lord Mustill. There is an element of circularity about such a definition, though it does re-direct attention to the need to view the test in the context of the issue to which it relates.
104. Mr Garnett's next submission was that the test must in the present context be purely quantitative, since typographical arrangement copyright does not depend on creativity. But lack of creativity does not mean a lack of all characteristics apart from volume. The concept of "arrangement" itself speaks of other characteristics. The typographical arrangement of a published edition looks to the typographical characteristics of the entire edition, including, as stated above, matters of layout and appearance. In this respect, the appellants suggested that guidance was again to be found in the decision in the Nationwide case, where at p.291 the Federal Court said:
"In relation to a published edition, the quality of what is taken must be assessed by reference to the interest protected by the copyright. That interest, as has been seen, is in protecting the presentation and layout of the edition, as distinct from the particular words or images published in the edition. The quantity of the material reproduced, assessed by reference to the whole of the published edition, is relevant in determining whether what has been taken is a substantial part of the edition. But since it is the quality of the material taken that is the key issue, the quantity is not the only, nor necessarily the principal, criterion."
105. I would not myself endorse the reasoning in the Nationwide case if and to the extent that it is to be read as taking as a relevant test of substantiality whether the part copied was "an "essential" or "material" part of the work": see at p.290, citing Mason CJ in Autodesk Inc. v. Dyason (No.2) (1993) 176 CLR 305. At least the first word may, as it seems to me, set the test too high. However, the Federal Court's reasoning appears to me correctly to identify the sense in which the "quality" of the material copied should be considered. It is not the quality of the information, comment or other contents in any article that matters. Typographical arrangement copyright is concerned with presentation or appearance. What matters is the extent to which the typographical arrangement is reproduced, both in terms of volume and in terms of appearance. I agree with Peter Gibson LJ that the judge in the present case misdirected himself, when he gave, as reasons for considering that the cuttings constituted a substantial part of the newspapers, that:
"They were components of significance in the newspapers, most particularly to readers interested in the retail trade and consumers generally. The cuttings were made available substantially contemporaneously with the publication of the newspapers and afforded to M&S a cheaper and more effective substitute for M&S bypassing the copyright in one of the four ways I have mentioned."
106. These were correct as statements of fact, but as reasons for the judge's conclusion they appear to me to have been misplaced.
107. It is, in my view, relevant to go back to the purpose for which, or the mischief in the light of which, this type of copyright was introduced. What was in mind was the copying, or "pirating", of publications by unscrupulous competitors. It is appropriate to have that in mind when considering the extent to which the appellants' activities should be regarded as involving the copying of "any substantial part" of any published newspaper from which they copied articles. In no case, which we were shown, can it be said that the appellants' copying reproduced anything that could be regarded as either resembling the newspaper concerned or having newspaper-like qualities. In some cases, it seems clear that, the copying was, if not trivial, then barely more than trivial. I take as five examples extracts from The Independent (8 lines) and The Times (22 lines) of 3rd November 1997 (bundle p.25), The Sunday Times (10 lines) of 2nd November 1997 (p.32), The Guardian (29 lines) and The Independent (7 lines) of 5th November 1997 (bundle pp.105 and 111), without going further through the bundle for this purpose. As to the reproduction of articles involving larger chunks of text - re-arranged though they commonly were when copied onto an A4 page - the appellants gained thereby commercial advantages for themselves, but they cannot in any realistic sense be said to have done so as competitors of the respondents. They did not create anything which could be regarded as resembling any, or in my view, any significant part of the relevant newspapers viewed as an entire publication. Moreover, any use that the appellants made of such newspapers' typographical arrangement was at best incidental or very subsidiary to the appellants' primary purpose, which was to communicate the information in the articles to their staff. In the circumstances I do not think that it is right to regard the appellants in the present context as having copied a substantial part of any of the newspapers involved. Their activities were, so far as typographical arrangement copyright is concerned, not within the scope of the relevant statutory provisions. They may have infringed some literary copyright, although by no means necessarily in every case, since some of the material copied (e.g. letters written by the appellants' own staff to the newspapers, and possibly also accounting information quoted from the appellants' own accounts) may well have been their own literary copyright.
108. The third point which Mr Garnett argued before us in relation to the issue whether the appellants copied a "substantial part" of any newspaper was whether the respondents could improve their case by looking at the pattern of repeated copying of different newspapers on different dates cumulatively. In my judgment, this is not possible. I agree with the analysis of the position by Peter Gibson LJ and his comments on the relevant authorities, that is Trade Auxiliary Co. v. Middlesborough and District Protection Association (1889) 40 Ch.D.425, Cate v. Devon and Exeter Constitutional Newspaper Company (1889) 40 Ch.D. 500, Football League Ltd. v. Littlewoods Pools Ltd. [1959] Ch 637 and Electronic Techniques (Anglia) Ltd. v. Critchley Components Ltd. [1997] FSR 401.
109. I also agree with Peter Gibson LJ's observations on the extent to which this court should or should not regard itself as bound by the judge's obiter indication of view on the issue whether the appellants copied a substantial part of any newspaper. The reasons which the judge did give in my view demonstrate that he was asking himself the wrong question. Further, I note that in Bauman v. Fussell [1978] RPC 485, the Court of Appeal was concerned with a very different type of situation to the present. The issue there was whether a painting of two fighting cocks copied a substantial part of a prior photograph, which it was accepted had inspired the idea in the artist of making the painting. The County Court judge had heard extensive evidence from both parties and from the Arts Director of the Arts Council, a Professor from the Royal College of Art, a teacher at the Slade and a representative of the art dealers who displayed the picture, all of which was held admissible "to point out similarities, coincidences and the like, in order to support a case of copying", although, it was said, any expert must stop short of giving his opinion whether the painting was a copy, that being the ultimate question for the judge to resolve. It is in no way surprising in this context to find the majority in the Court of Appeal emphasizing that the judge's conclusions of fact after a most detailed hearing should only be disturbed if there was no evidence to support them or the judge misdirected himself about the law. The present case is quite different. It depends, first, upon statutory construction and consideration of the appropriate test and, secondly, upon documentary material which this court is as able effectively to assess as was the judge.
110. The result on the facts of this case is that, although there may well be a difference between the approach to substantiality which the Australian courts have thought appropriate in the present context and that applicable in England, I would come to a similar result on the present facts to that which was reached by the Federal Court of Appeal in the Nationwide case. It also seems to me welcome that this should be so. It is common knowledge that the newspaper and publishing world operates on a global basis, and it must at least be desirable that different Commonwealth countries should arrive at similar results on similar facts under similar copyright legislation.
111. For these reasons I would disagree with the judge's conclusions on the issue whether the appellants copied any substantial part of any of the relevant newspapers and so allow this appeal.
Fair dealing for the purpose of reporting current events
112. It is unnecessary in the circumstances to form any concluded view on this defence under s.30(2) of the 1988 Act. It only arises on a hypothesis, which I have rejected, that typographical arrangement protection operates by reference to each individual literary work or that a substantial part of the whole of any published edition was copied.
113. In Pro Sieben Media AG v. Carlton UK Television Ltd. [1999] FSR 610, 620, this Court suggested that the first 16 words of s.30(2) might be better viewed "as a single composite whole" without "any attempt at further dissection". Adopting this approach, I consider that the appellants would be in difficulty in relying upon s.30(2), in so far as they were, on the hypothesis presently under consideration, copying a significant part of an otherwise protected arrangement for essentially private commercial reasons. I would agree with Peter Gibson LJ that some of the copying which they undertook was of material which it is on any view difficult to bring within the concept of "current events". Information about public attitudes, or about a journalist's reaction, to the appellants' wares hardly seems to me to belong within that concept. For my part, however, I would think that other copying could be said to be by way of reporting a current event - to take a very few examples from only one run of pages in the bundle, the copying of articles recording the then planned minimum wage proposals (bundle p.84), or a campaign about child labour (pp.85-86), or a case about alleged race bias at a rival establishment (p.87) or the British Foreign Secretary's or Bundesbank's announcements about the Euro (pp.88 and 89).
114. The problem remains that the exception of fair dealing for the purpose of reporting current events represents a public interest exception to copyright, which is difficult to extend to the reporting of current events for private commercial purposes. One may contemplate circumstances where the exception would apply to private reporting which was itself in the public interest, for example reporting to the Cabinet or other official bodies. But to extend the exception to all reporting for any purpose seems to me debatable. The rationalization that in a capitalist society all economic activity serves the public good does not avoid the distinction. However, it is, as I have said, unnecessary for me to express a final view on the scope or application of the exception.

Order: Appeal allowed; application to have their costs of the appeal reduced by 20% so as to one them 80% of the costs below; Leave to Appeal to House of Lords given on both the appeal and the cross appeal.
(Order does not from part of the approved judgment)

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