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Cite as: [1998] IESC 44, [1999] 1 ILRM 178, [2000] 1 IR 84

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Gormley v. EMI Records (Ireland) Ltd. [1998] IESC 44; [2000] 1 IR 84; [1999] 1 ILRM 178 (17th November, 1998)

Barrington J.

Murphy J.

Barron J.

356/97

THE SUPREME COURT

PAULINE GORMLEY

Plaintiff

and

EMI RECORDS (IRELAND) LIMITED

Defendant

JUDGMENT delivered on the 17th day of November 1998 by BARRON J. [Nem Diss.]

This is a claim by the plaintiff to copyright in a Bible story “And then there were twelve”. At the time of the recital by her of the story the plaintiff was aged between six and seven years and was a pupil in the First

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1. Holy Communion class in Rutland Street National School. The teacher of that class was a Mrs. Cunningham who taught in that school for forty-four years, commencing in the mid-1940s.

2. Mrs. Cunningham’s method of teaching Bible stories to her pupils was to tell them in words which her pupils would understand and then to require them to retell the stories before the whole class. No doubt not a particularly unusual method of teaching. However, Mrs. Cunningham’s method was unusual in that when her pupils were retelling the stories she used a tape recorder to record what they said. In the course of her period of teaching at the school it appears that she recorded literally hundreds of stories as they were retold by her pupils.

3. The plaintiff told the story “And then there were twelve” in the year 1961. Many years later a well known broadcaster, Fr. D’Arcy, found one He was of the tapes of the recordings made by Mrs. Cunningham.

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interested in broadcasting it and having made enquiries discovered that it was only one of a very large number. He obtained the permission of Mrs. Cunningham to use them as part of a religious radio programme. Subsequently the defendant became aware of this programme and of its source material, and decided to use it to produce commercially a tape of several Bible stories spoken by the children. This they published.

Its title was “Give up yer aul sins” . There were two sides to it one of which included the plaintiff reciting the story entitled “Then there were twelve”. This was the same recording which Mrs. Cunningham had made many years before when the plaintiff was a child of six or seven. Although the defendant had obtained permission from Mrs. Cunningham and had recognised her copyright it had made no effort to obtain the permission of the children whose voices were recorded. This action arises from the claim by the plaintiff that the words which she spoke on the tape

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were a literary work within the meaning of the Copyright Act, 1963 and that accordingly, they could not be reproduced without her permission which was neither sought nor given.

4. The questions which arise for decision in the present case are whether the words of the story as recited by the plaintiff on the tape constitute an original literary work. If they do not, then the plaintiff is

not entitled to protection. Two main issues of law arise:

(1) Whether the work can obtain protection, although it was never written down; and

(2) whether the work was original.

5. In dealing with the first question, it is necessary to refer to some definitions contained in the Act as well as to a dictionary definition.

S. 8(1) of the Copyright Act, 1963 (“the Act”) provides:

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“Copyright shall, subject to the provisions of this Act, subsist in every original literary, dramatic or musical work...”

6. The Act does not contain a definition of “original”.

S.2(1) of the Copyright Act, 1963 provides that except in so far as the context otherwise requires “literary work” includes any written table or compilation.

S. 3(4) provides that:

“References in this Act to the time at which, or the period during which, a literary, dramatic or musical work was made are references to the time or period at or during which it was first reduced to writing or some other material form”

7. Writing is defined by s. 2(1) as including “any form of notation, whether by hand or by printing, typewriting or other process”.

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8. The definition of notation in the Concise Oxford Dictionary is “the representation of numbers, quantities, pitch and duration etc. of musical notes, etc. by symbols; any set of such symbols; a set of symbols used to represent chess moves, dance steps etc.; a record”.

9. From these definitions the plaintiff submits that the trace on the magnetic tape amounts to a notation and also comes within the words “other material form” . The defendants on the other hand maintain that writing must be something which is visible.

10. The use of the word “record” in the dictionary definition of “notation” does not advance the plaintiffs case. It is not referring to a sound recording, but a record in a particular form of what is to be retained, the record being made in one of the ways indicated all of which can be read.

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11. There is no authoritative decision as to what is meant by “other material form” in this regard.

12. The plaintiff relies upon Article 2(2) of the Berne Convention as passed at Paris on the 24th July 1971. It is as follows:

“It shall, however, be a matter for legislation in the countries of the Union to prescribe that works in general or any specified categories of works shall not be protected unless they have been fixed in some material form.”

13. Support is to be found for the plaintiff’s proposition in the textbooks. These were referred to in the judgment of Somers J. in Green v. Broadcasting Corporation of New Zealand [1989] RPC 469 . He said at p.477:

“There is much force in the submission that writing is but one method of giving a work the degree of certainty necessary to justify the monopoly

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conferred by the Act and that the same security can be obtained by fixing it in other tangible forms. The point has not, so far as lam aware, been the subject of any considered decision but has the support of writers of textbooks - see Copinger and Skone James on Copyright (12th Ed. 1980) para. 164: Laddie, Prescott and Vitoria, The Modern Law of Copyright (1980) paras. 2.12 and 2.14 - 2.17; Ricketson, The Law of Intellectual Property (1984) paras. 3.13 and 5.36. Assuming it to be correct, however, I do not think it advances the appellant’s case.”

14. Each of the three textbooks recognises the problem as to whether writing is necessary for a literary work. And each in its own way suggests that it may not be.

15. In the same case Casey J. said at p. 484:

“I incline to the view that s. 3(8) - (the same as

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s. 3(4) of the Act) - evinces a clear indication that copyright can exist in material forms other than writing, and I agree with the view in Ricketson that there is no reason of policy to limit its meaning.

In this case I gather the ‘other material forms’ relied on are the video tapes made of the programmes for television transmission.

Gallen J. who dissented on the issue of whether copyright existed said at p. 494:

“I would be prepared to accept that the outline scripts referred to by the appellant and the video tape (if that is what produced the shows seen by the judge) at least in combination established the physical existence of the material in a form susceptible to protection.”

16. That was a case in which the plaintiff had been the author, producer and compere of a television talent quest produced and broadcast in the United Kingdom under the name “Opportunity Knocks”. Several years

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later the defendant broadcast a similar programme under the same title with many of the features of the plaintiff’s programme. The plaintiff failed in his action which was decided upon the lack of originality. This case was appealed to the Privy Council who upheld the decision of the New Zealand courts and on the same ground. The Court did not call on the parties to deal with the issue of writing or “other material form”, presumably because it was satisfied to dismiss the appeal upon the ground of lack of originality.

17. The plaintiff also relies upon a passage in the judgment of Peterson J. in University of London Press Limited v. University Tutorial Press Limited [1916] 2 Ch. 601 at p. 608 where he says:

“In my view the words ‘literary work’ cover work which is expressed in print or writing.

This passage is clearly in favour of the defendant. Peterson J. is not

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dealing with the definition of writing contained in the Act.

This lack of authority has prompted a change in legislation in the United Kingdom. now settles the argument. Section 3 of the United Kingdom Copyright Act, 1988 S. 3(1) defines “literary work” as meaning “any work, other than a dramatic or musical work, which is written, spoken or sung.”

18. Subs. 2 provides:

“Copyright does not subsist in a literary, dramatic or musical work unless and until it is recorded, in writing or otherwise; and references in this part to the time at which such a work is made are to the time at which it is so recorded.”

Subs. 3:

“It is immaterial for the purposes of subsection (2) whether the work is recorded by or with the permission of the author; and where it is not

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recorded by the author, nothing in that subsection affects the question whether copyright subsists in the record as distinct from the work recorded.”

19. In whatever form the work must be recorded in order to determine the date from which it is made, there appears to be no reason why such recording should not be done by someone other than the author. Walter v. Lane [1900] AC 539 may suggest the contrary, but it does not deal expressly with the issue. In that case a journalist who had recorded a political speech verbatim and then published it claimed infringement of his copyright in that publication against another journalist who also published a verbatim copy but who had not been present when the speech was made. It was held that the first journalist had copyright in the speech and was entitled to succeed in his action. However, it was not then necessary for the work to have been “original” to obtain a copyright nor was the politician claiming any copyright in his own speech.

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20. It is clear from s. 3(4) that a work may be in existence though not reduced to writing or other material form. It can be contended that other material form applies logically only to dramatic or musical works since they may be recorded by means other than writing. See Green v. Broadcasting Corporation of New Zealand [1989] RPC 469. This was a case essentially of a dramatic work.

21. Nevertheless proper construction of the provision must allow other material form to apply also to literary work. Nor is there any distinction in principle between taking down speech in shorthand and recording it on tape. Yet, in my view, the symbol which comprises the notation must be capable without more of being understood. This is not so with a magnetic trace. As a result, it is not entitled to protection as a literary work. Nor does such a conclusion based as it is on the absence of material form breach the provisions of the Berne Convention.

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22. This case highlights the need for greater certainty as to when and in what manner copyright protection can be achieved for works covered by s. 8 of the Act. This is a matter for the Oireachtas which we have been informed will soon be dealing with proposals for such change. There remains the issue as to what is necessary to constitute an original literary work, the emphasis being on the word “original”.

In University of London Press Ltd. v. the University Tutorial Press Limited Peterson J. was dealing with copyright in an exam paper. The defendants had used questions set by the plaintiffs in exams. The issue which arose was whether there could be originality and therefore copyright in an exam paper. Peterson J. held that there could be and that

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the work of the plaintiff had been copied. Having held that the papers were a literary work he then went on:

“... the question then is whether they are original. The word “original” does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought, and, in the case of “literary work”, with the expression of thought in print or writing. The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work - that it should originate from the author.”

23. This passage was cited with approval in MacMillan and Co. Limited v. Cooper 40 TLR 186. In that case the plaintiffs were the owners of copyright in a book for students entitled “Plutarch ‘s Life of Alexander, Sir Thomas North ‘s Translation. Edited for schools by H. W.M. Power M.A.” The plaintiff claimed breach of its copyright in a work published by the

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defendant entitled “Plutarch ‘s Life of Alexander the Great, North's Translation. Edited with introduction, marginal notes and summary by A. Darby M.A.”

24. The issue in that case was whether or not the plaintiff was entitled to a copyright in its book. It was held that it was. Lord Atkinson said at p. 187:

“If the appellants - the plaintiff- were not entitled to a copyright in their book, or any material part of it, then the respondents were entitled to do what they had done. If, on the contrary, the appellants were entitled to a copyright in their book, or any material part of it which the respondents had practically copied, then the respondents were admittedly guilty of infringement. It is obvious, therefore, that the primary question to be determined on the appeal is whether the appellants were entitled to a copyright in the text of their book and in those notes attached

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to it which latter the respondents had in many instances in effect copied.”

25. The issue in effect was whether if you take a text verbatim from another work and then add a commentary you can obtain a copyright in the entire. The answer was that you could.

26. In dealing with the test to be applied Lord Atkinson said at p. 188:

“To secure copyright for this product it is necessary that labour, skill, and capital should be expended sufficiently to impart to the products some quality or character which the raw material did not possess, and which differentiates the product from the raw material.”

27. He then refers to the decision of Mr. Justice Story in Emerson v. Davies 3 Story’s US Rep., 768 in the American Supreme Court in a similar case where there was a dispute between two school textbook writers. Lord Atkinson then continued:

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“Some of the points decided are stated in the headnote to be: first, that any new and original plan, arrangement or combination of material will entitle the author to copyright therein, whether the materials themselves be old or new; second, that whosoever by his own skill, labour and judgment writes a new work may have a copyright therein, unless it be directly copied or evasively imitated from another’s work; third, that to constitute piracy of a copyright it must be shown that the original has been either substantially copied or so imitated as to be a mere evasion of the copyright.”

28. He then later quoted the following passage from the judgment of Story J as follows:

“The book of the plaintiff is, in my judgment, new and original, in the sense in which those words are to be understood in cases of copyright. The question is not whether the materials which are used are entirely new and have never been used before; or

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even that they have never been used before for the same purpose. The true question is whether the same plan, arrangement, and combination of materials have been used before for the same purpose or for any other purpose. If they have not, then the plaintiff is entitled to a copyright, although he may have gathered hints for his plan and arrangement, or parts of his plan and arrangement, from existing and known sources. He may have borrowed much of his materials from others, but if they are combined in a different manner from what was in use before ... he is entitled to a copyright ... It is true that he does not thereby acquire the right to appropriate to himself the materials which were common to all persons before, so as to exclude those persons from a future use of such materials; but then they have no right to use such materials with his improvements super added, whether they consist in plan arrangement or illustrations, or combinations; that these are strictly his own ... in truth in literature, in science and in art there are and

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can be few if any things which in an abstract sense are strictly new and original throughout.”

29. The final passage which I would like to take from this judgment is at p. 190 where the judge says:

“What is the precise amount of the knowledge, labour, judgment or literary skill or taste which the author of any book or other compilation must bestow upon its composition in order to acquire copyright in it within the meaning of the Copyright Act of 1911 cannot be defined in precise terms. In every case it must depend largely on the special facts of that case, and must in each case be very much a question of degree.”

30. Similar opinions were expressed by Lord Evershed at p. 282 and by Lord Pearce at p. 292 in Ladbroke (Football) Ltd. v. William Hill (Football) Ltd . [1964] 1 W.L.R. 273 .

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31. On this same theme Lord Oliver of Aylmerton in Interlego A. G. v. Tyco International Inc. [1988] RPC 343 said at p. 371 :

“It by no means follows, however, that that which is an exact and literal reproduction in two dimensional form of an existing two dimensional work becomes an original work simply because the process of copying it involves the application of skill and labour. There must in addition be some element of material alteration or embellishment which suffices to make the totality of the work an original work. Of course, even a relatively small alteration or addition quantitatively may, if material, suffice or convert that which is substantially copied from an earlier work into an original work Whether it does so or not is a question of degree having regard to the quality rather than the quantity of the addition. But copying, per se, however much skill or labour may be devoted to the process, cannot make an original work.”

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32. These cases and Joy Music Limited v. Sunday Pictorial Newspapers (1920) Limited [1960] 2 Q.B. 60 were relied upon by the plaintiff. In this latter case the Court had to consider whether a parody of a well-known song was in fact a copy or was it an original work. McNair J. held that it was an original work. In dismissing the plaintiff’s claim he said at p. 70:

“If one had to direct a jury on this question....it would be proper to emphasise to them this test which Younger J. suggested as to whether the defendant had bestowed such mental labour on what he had taken and subjected it to such revision and alteration as to produce an original work I cannot help thinking that a jury with that direction would have said that, although it is clear that the article in the ‘Sunday Pictorial’ had its origin in ‘Rock-a-Billy’, it was produced by sufficient independent new work by Paul Boyle to be in itself, not a reproduction of the original ‘Rock-a-Billy’ but a new original work derived from ‘Rock-a-Billy’.

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33. And, that being my conclusion of fact, quite shortly I say that I am not satisfied that the article in the ‘Sunday Pictorial’ does reproduce a substantial part of the words of the ‘Rock-a-Billy’ song of which the plaintiffs have the copyright.”

34. These cases and the passages cited show that originality does not require the work to be unique, merely that there should have been original thought. Where there is treatment of materials already in existence, it is necessary to show some new approach. It cannot be copied directly. The work must truly belong to the person claiming to be the author.

35. In the present case, much of the emphasis placed on the plaintiff’s work is the charm in the way the story is recited. Emphasis was placed on the Dublin pronunciation by the plaintiff of the word “certainly”. But that charm belongs to the sound recording not to the literary work, and the copyright in the sound recording belongs to Mrs. Cunningham.

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36. Again much emphasis was placed on the reference to Judas as that “dirty auld squealer”, but there can be no copyright in the phrase as such.

37. It is not the words used which make the work original nor create the copyright. Where, as here, material was copied, it is necessary to show the necessary skill, labour and judgment to create a truly new work. It is this for which the plaintiff contends. None of this is apparent in what occurred. The plaintiff was not seeking to produce a new work but to show that she knew the story by reproducing what she had been told as faithfully as possible. It is clear also that much skill, judgment and labour had been used by Mrs. Cunningham to reduce these stories to the level where they would be understood by the children.

Her “translations” of “ascension “, “resurrection”, “Holy Ghost” are good examples.

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38. It is submitted that the plaintiff related the story she was told to her own experiences and so produced something different. transcript nor the learned trial judge’s finding support this.

Neither the

39. The plaintiff as a child could relate to the stories she was told because of the skill of the teacher in bringing the stories to the level of her understanding.

40. It seems to me unlikely that a six-year-old would be in a position to exercise any original thought capable of being expressed when her sole purpose was to repeat the story which had been told to her by her teacher. The finding of the learned trial judge is that she was endeavouring to repeat what she had been told. She was reciting the story that she had learned even though she may have used a lot of her own words. I do not suggest that a six-year-old can never have independent thought nor exercise sufficient skill or judgment for the purposes of obtaining a copyright. If the purpose is to copy, then a six-year-old would never have

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had sufficient independent originality to realise or to intend to give a different slant to the particular story which she had been told so as to make it a different thing.

41. Here there was a clear source of material. The plaintiff told not only the story which had been told to her by her teacher but also told it in the manner in which it had been told to her. There can be no copyright in a well known plot or story because there is nothing original about it even though it may be unconsciously narrated in different words. In the same way there could be no copyright in the actual story which the plaintiff recited since that story was not an original one. The difference between a copy and an original lies in the treatment of the source material. For example, a biography is the choosing of elements of the life of the person whose history is being told. Each author would approach the same facts in a different way. If one author approaches those facts in the manner in

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which the previous author has already approached them then this would amount to plagiarism. The ultimate test where a work is copied is whether the author of the source material and the author of the impugned work could have their works published side by side without complaint.

42. It is not the language which creates the copyright, it is the creativity. In general originality would relate to the story rather than to the words in which it is expressed. Yet reducing words to a language which can be understood by the readers can be original: so the manner in which the language of the Bible was explained by Mrs. Cunningham can be original.

43. In the present instance, where does the originality lie? It does not lie in the story. It lies in the way the story has been explained.

44. Assuming that the language of the child is different it is still the telling of the same story in the same way. It does not in so doing change the original nature of the story nor add anything which is original. The child

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has copied what she has been told albeit that she has put some or all of it into her own language.

45. Mrs. Cunningham taught this class in the same school for forty-four years. That in itself is immaterial.

46. However, it is material that she had been telling these same stories in her own words for some fifteen years before she taught the plaintiff. It is reasonable to infer that over that period the stories had changed in two ways. Some expressions which might not have been readily understood were altered to achieve this aim and words used by the children in their retelling would have crept into the version given by Mrs. Cunningham to succeeding classes. It is reasonable to suppose that that version had crystallised and was very largely in the language of the children themselves.

47. In my view the learned trial judge was correct in his decision and

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this appeal should be refused.