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Cite as: 2004 SCLR 127, [2003] ScotCS 167

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Scottish and Universal Newspapers Ltd v. Mack [2003] ScotCS 167 (05 June 2003)

OUTER HOUSE, COURT OF SESSION

P592/01

OPINION OF LORD EASSIE

in the Petition of

SCOTTISH AND UNIVERSAL NEWSPAPERS LIMITED

Petitioners and Complainers;

against

PAUL MACK

Respondent:

________________

Petitioners and Complainers: L. C. Kennedy; Haig-Scott & Co., W.S.

(for Bannatyne Kirkwood France & Co., Glasgow)

Respondent: A Smith Q.C.; Drummond Miller

5 June 2003

[1] The petitioners and complainers (to whom I shall refer simply as the petitioners) in this petition and complaint for breach of interdict are the printers and publishers of a newspaper circulating in the Paisley area, titled the "Paisley Daily Express". On 19 March 1999 in petition proceedings in this Court they obtained ex parte an interim interdict against the present respondent, Paul Mack, from inter alia infringing the copyright which they claimed in the masthead of the newspaper. By interlocutor of 3 November 2000 the Lord Ordinary allowed amendment of the petition, recalled the interim interdict granted on 19 March 1999, and of new granted interdict in amended terms. The motion was not opposed and I was given to understand that by reason of want of legal aid the respondent was at that stage unrepresented in the petition process.

[2] The present petition and complaint alleges breach of the interdict pronounced on 3 November 2000. The precise terms of the prohibition imposed on the respondent, Mr Mack, or anyone acting on his behalf or instructions, prevented him from "reproducing in any material form, adapting, printing, publishing or otherwise disseminating, distributing or dealing with the masthead of the Paisley Daily Express in breach of the petitioners' copyright in the said masthead". Counsel for the petitioners accepted that in view of the generality of the terms of the interdict it was necessary for him to demonstrate that the actings of which the petitioners now complain constituted an infringement of the petitioners' copyright.

[3] Counsel appeared to be in broad agreement in understanding the term "masthead" as referring, in the context of publishing, to the general design, layout and wording of the heading or title of the front page of a newspaper. I would also observe that the interlocutor of 3 November 2000 does not identify with precision the particular masthead in question although it appears from the various productions in this petition process that the "masthead" of the petitioners' newspaper has undergone some alterations over time. However neither counsel before me raised any point on that aspect, each regarding, I think, the variations to be immaterial. Subject to that remark, I shall set out the words within what I understand to be the petitioners' "masthead" and endeavour to describe its visual presentation.

[4] The masthead is situated at the top of the front page of the petitioners' newspaper and is contained within a rectangle outlined by a black line, the background colour within the rectangle being the off-white colour of the ordinary paper used by most newspapers. Within that rectangle is to be found in large red forwardly inclined (or italicised) letters the word "Paisley" below which are to be found in black, and similarly forwardly inclined or italicised, but in smaller sized text, the words "Daily Express". The initial "P" of the red-lettered "Paisley" is in larger size than the lettering used in the rest of that word (and hence the lettering used in the words "Daily Express"). The spatial arrangement of "Paisley" and "Daily Express" is such that the latter two words are located horizontally to the lower part of the left vertical stroke or element of the letter "P", with the initial "D" of "Daily" set below the semi-circular element of the letter "P". In some examples or editions of the petitioners' publication one finds in the upper right hand corner of the rectangle the words "Your local news" but neither the presence, nor, if present, the visual presentation of those words is wholly consistent. Counsel for the petitioners submitted that, for the purposes of copyright law, the "masthead" constituted an artistic work. He referred to News Group Newspapers Limited v Mirror Group Newspapers (1986) Limited [1989] F.S.R.126. For his part, Mr Smith, Q.C., who appeared for the respondent, accepted that there was some artistic copyright in the petitioners' masthead.

[5] One of the acts alleged to constitute a breach of the interdict pronounced by the Court on 3 November 2000 is the admitted production and distribution in Paisley of a single folded broadsheet which may come with the description of a newspaper. Its contents are political to the extent that they refer to local affairs and local councillors and possibly satirical, or as the petitioners say, scurrilous, all perhaps depending upon one's point of view. However, it is not necessary to go further into the contents and their categorisation since that of which complaint is made is the masthead. Additionally the petitioners allege breach of interdict in respect of a website created by the respondent which contains a broadly similar depiction of the masthead of the respondent's newspaper. Although there are some differences, no distinction was drawn in the argument before me between the "hard copy" newspaper and the website images.

[6] I shall now endeavour to describe the masthead of the respondent's newspaper, of which the petitioners complain. Although not contained within a rectangle outlined by a black line, the masthead reproduces in red, forwardly inclined or italicised letters the word "Paisley" in a typeface similar in size and appearance to that used by the petitioners. Below the word "Paisley" one finds in black, forwardly inclined or italicised, letters the words "Daily Express", again in such a similar typeface. Immediately above and to the right of the word "Paisley" are to be found the words "Your local news". The particular spatial relationship whereby the initial "D" of "Daily" is located below the semi-circular element of the initial larger sized "P" of "Paisley" and horizontally to the right of the lower part of the vertical element of that capital letter which I have endeavoured to explain in my description of the petitioners' masthead is also to be found in the respondents' publication. To that extent the content of the respondent's publications masthead substantially reproduces not only the text but also the visual appearance or "get up" of the masthead of the petitioners' publication. However, the respondent's masthead contains certain additions. Firstly, the word "Not", in large, black paint-brush strokes, is superimposed on the red-lettered "Paisley". Slightly higher up the masthead, that is to say, above the combination of "Paisley" and the super-imposed "Not", one finds, also in black paint-brush strokes, the word "Absolutely". So the reader of the respondents' production may readily conceive its title to be "Absolutely Not Paisley Daily Express", but the format obviously recalls, by reason of its substantial reproduction within it, the masthead of the petitioners' publication. Additionally, in the hard copy example before me, the respondents' publication contains immediately before the words "Daily Express" but in relatively very small black letters the words - "Don't let anything stand in the way of alliteration - Ed." Below those words is to be seen a horizontal black line below which in turn is to be found, immediately above the large black headline of the topical article, the slogan, in red, -"The Paper for the People of Paisley".

[7] Mr Smith did not seek to suggest that in so far as the respondents' masthead incorporated such artistic elements as were to be found within the petitioners' masthead, those elements had not been copied from the petitioners' publication but had been derived from some independent source. In the pleadings for the respondent it is explained that on the advice of counsel given after the issuing of the interim interdict the respondent had been advised that he would not infringe the petitioners' copyright if he sufficiently differentiated or altered the masthead used by him from that used by the petitioners. The respondent therefore decided, following the example of two television programmes, on the addition principally of "Absolutely" and "Not" as that differentiation. The essential submission advanced by Mr Smith (who indicated that the authorship of the advice was not his) was that by making those alterations, and also the other minor additions, the respondent had himself created an original work attracting copyright. Consequently, it was said, there could be no infringement of the petitioners' copyright.

[8] In support of that proposition counsel for the respondent referred to the discussion of the requirements for originality which is to be found in Copinger & Skone James on Copyright at paragraph 3-85 and following paragraphs. At paragraph 3-93 it was observed that the standard of originality required was a low one and that what was "required is the expenditure of more than trivial effort and the relevant skill in the creation of the work". Counsel made reference to paragraph 3-94, in regard to the use of existing subject matter. It was stated that it had:

"... to be determined whether [the author] has expended sufficient independent skill and labour to justify copyright protection for his result. Where a work goes through successive stages in writing in the course of its creation and development, the issue usually arises as to the originality of later versions, but the copyright continues to subsist in the earlier versions, whatever use is made of the material contained in it."

From this discussion counsel for the respondent took the proposition that if an existing copyright work were adapted sufficiently to constitute an original work it would have its own copyright, albeit that the author of the pre-existing work retained his copyright in that pre-existing work. Counsel further referred to the judgment delivered by the Privy Council in Interlego AG v Tyco Industries Inc &c [1989] AC 217, in particular the passages at pages 260-263 and the statement at 263 in which, in relation to the proposition that the making of an exact and literal reproduction might be original because the process of copying involved application of skill and labour the Privy Council stated that 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 quantitively may, if material, suffice to convert that which is substantially copied from earlier work into an original work".

[9] Counsel for the respondent pointed to various features distinguishing the respondents' masthead from that of the petitioners namely (i) the addition of the words "Absolutely Not" together with their style and position; (ii) the subjacent words "Don't let anything stand ..."; (iii) the addition of the words in red "The Paper for the People of Paisley"; (iv) a difference in the actual size of the text and (v) the fact that the quality of the paper was different, the respondent's paper being a gloss paper as opposed to the customary newsprint paper of the petitioners' paper. Mr Smith accordingly invited the Court to conclude that what the respondent had produced was a new work.

[10] For his part, counsel for the petitioners submitted that a defence to the complaint of breach of interdict was irrelevant. It was plain that the artistic component of the petitioners' masthead had been directly copied, that artistic component being a combination of the text, the layout, the typeface, italicisation and colour. It was accepted by the respondent's counsel that the petitioners had copyright in the masthead. Infringement of that copyright occurred by copying, which was a restricted act, and in terms of Section 17(2) of the Copyright, Designs and Patents Act 1988 copying meant "reproducing the work in any material form". And in Section 16(3) of that statute it was provided that doing a restricted act referred to the doing of it in relation to the work as a whole or any substantial part of it. Mr Kennedy referred in particular to the decision of the House of Lords in the case of Designers Guild Limited v Russell Willliams (Textiles) Limited [2000] 1 WLR 2416 and especially the passages in the speeches of Lord Bingham of Cornhill at 2418A; Lord Millett at 2425B ff; and Lord Scott of Foscote at 2431 ff. As I understood it, the submission for the petitioners was essentially that where a substantial part of a copyright work had been copied it mattered not that some alterations or additions may have been made it which, other things being equal, would entitle the creator of the altered or amended version to copyright himself. It was plain that the respondent had indeed copied the petitioners' masthead in its visual appearance or get-up. Having taken the petitioners' work to at least a substantial and recognisable extent, the breach of copyright was plain and not avoided by the addition of the words "Absolutely Not".

[11] As I understand the argument for the respondent, central to his defence is the proposition that, if an existing artistic material is utilised with some further adaptations or alterations which would justify the categorisation of the adapted or altered work as an original work attracting its own copyright, any charge of infringement is defeated by those alterations or adaptations. However, the passages in Copinger and Skone James to which I was referred by Mr Smith relate to the test for originality of a work for which copyright is claimed. It is no doubt true that in order to create from existing materials a new, original work the amount of adaptation, alteration or development may not necessarily be great. The Interlego case, upon which Mr Smith principally relied, is concerned with whether additions to existing engineering drawings (copyright in which had expired) were sufficient to create originality, and hence a non-expired copyright, in the amended drawings. In my opinion, the case is not authority for the proposition that a complaint of infringement of copyright is elided by the making of alterations or additions to an existing material which is subject to copyright.

[12] As I have already indicated, in his submission for the petitioners Mr Kennedy argued that the issue was whether the copyright work had been substantially reproduced. One was not concerned with whether the allegedly infringing work might itself be capable of attracting copyright in the sense that its outward presentation revealed significant differences but whether the allegedly infringing work had copied the original artistic work (in the respects to which artistic copyright attached). In my view that approach is the proper one. In his submissions Mr Smith focused on the various alterations or differences which the respondent had introduced into his masthead. However, in my view, emphasis on differences and the absence of the likelihood of confusion is not the appropriate approach. In the course of his speech in Designers Guild Lord Millet observed (at 2425):

"It must be borne in mind that this is an action for infringement of copyright. It is not an action for passing off. The gist of an action for passing off is deceptive resemblance. The defendant is charged with deceiving the public into taking his goods as and for the goods of the plaintiff. A visual comparison of the competing articles is often all that is required. If the overall impression is that 'they just do not look sufficiently similar' then the action will fail.

An action for infringement of artistic copyright, however, is very different. It is not concerned with the appearance of the defendant's work but with its derivation. The copyright owner does not complain that the defendant's work resembles his. His complaint is that the defendant has copied all or a substantial part of the copyright work. The reproduction may be exact or it may introduce deliberate variations involving altered copying or colourable imitation as it is sometimes called. Even where the copying is exact the defendant may incorporate the copied features into a larger work much and perhaps most of which is original or derived from other sources. But while the copied features must be a substantial part of the copyright work, they need not form a substantial part of the defendants' work: see Warwick Film Productions Limited v Eisinger [1969] 1 Ch. 508. Thus the overall appearance of the defendants' work may be very different from the copyright work. But it does not follow that the defendants' work does not infringe the plaintiff's copyright."

In his speech Lord Scott of Foscote said, as respects the issue of copying with alterations, at p.2431:

"The question, then, where an altered copy has been produced, is what the test should be in order to determine whether the production constitutes a copyright infringement. If the alterations are sufficiently extensive it may be that the copying does not constitute an infringement at all. The test proposed in Laddie [Laddie Prescott & Vitoria, The Modern Law of Copyright and Designs, 2^nd Ed. 1995], at pp.92-93, para.2-108, to determine whether an altered copy constitutes an infringement is: 'Has the infringer incorporated a substantial part of the independent skill, labour etc. contributed by the original author in creating the copyright work ...?'

My Lords, I think this is a useful test, based as it is on an underlying principal of copyright law, namely, that a copier is not at liberty to appropriate the benefit of another's skill and labour.

My noble and learned friend, Lord Millet, has made the point that once copying has been established, the question of substantiality depends on the relationship between what has been copied on the one hand and the original work on the other, the similarity no longer being relevant. My Lords, I respectfully agree that that would be so in the first type of case, but in an altered copying case, particularly where the finding of copying is dependent, in the absence of direct evidence, upon inferences to be drawn from the extent and nature of the similarity between the two works the similarities will usually be determinative not only of the issue of copying but also the issue of substantiality. And even where there is direct evidence of copying, as, for example, where it is admitted that the copier has produced his 'copy' with the original at his elbow, the differences between the original and the 'copy' may be so extensive as to bar a finding of infringement. It is not a breach of copyright to borrow an idea, whether of an artistic, literary or musical nature, and to translate that idea into a new work. In 'altered copy' cases, the difficulty is the drawing of the line between what is a permissible borrowing of an idea and what is an impermissible piracy of the artistic, literary or musical creation of another. In drawing this line, the extent and nature of the similarities between the altered copy and the original work must, it seems to me, play a critical and often determinative role. In particular this must be so where there is no direct evidence of copying and the finding of copying is dependent on the inferences to be drawn from the similarities."

[13] In the course of his submissions Mr Smith for the respondent sought, as I understood it, both to distinguish the Designers' Guild case but also to rely on passages within the speech of Lord Scott of Foscote as supportive of his essential proposition. The circumstances of Designers' Guild case were that, at first instance, the alleged infringer denied any copying, claiming to have arrived at the similar (but not identical) design in question from independent sources. Having failed before the court of first instance and seeing themselves unable to challenge the finding of that court the defendant infringers changed tack and sought to contend that what had been copied was not a substantial part of the copyright work. The speeches in the House of Lords have, of course, to be read in that context. And in that context I do not consider that the passage which I have quoted from the speech of Lord Scott, from which Mr Smith sought to draw support, in so far as it recognises that an idea may be borrowed without the infringement of copyright, gives authority to the proposition that it is permissible to copy an existing copyright work provided that one makes sufficient perhaps relatively minor alterations as would entitle the other work to have a copyright of its own.

[14] In the present case there is no question but that the respondent deliberately copied the petitioners' masthead. He reproduced, if not the entirety, a very substantial part of it. It is not for a moment suggested that he arrived at the format of his masthead from independent sources. Nor is the present case one of the copying of an idea, or even the repetition of the words "Paisley Daily Express". Instead, it involves the close copying of the visual format or "get up" of the petitioners' masthead, particularly the colouring and style of lettering, typeface and the spatial arranging of the red lettered "Paisley" and the black lettered "Daily Express". Although the black line frame is omitted by the respondent in his masthead I regard that omission as of little consequence. While it may be that in a contest with someone who sought to reproduce the respondent's masthead the respondent might claim that the addition of the words "Absolutely Not" and the addition of the other text underneath the words "Paisley Daily Express" were sufficient to confer originality, the conclusion which I must reach is that the respondent did copy a substantial part of the petitioners' copyright work. That infringement of copyright is not avoided by the superimposing on the copyright work the words "Absolutely Not" and the other elements to which I have referred. In these circumstances I conclude that counsel for the petitioners is correct in his submission that the answers to the petition and complaint are irrelevant.

[15] For completeness I would record that since in substantially reproducing the petitioners' masthead and adding the text to which reference has been made it might be thought that the respondents publication could be seen as a satire or parody on the petitioners' newspaper, and since in the discussion before me I raised that possibility, in response counsel for the respondent referred me to the discussion of parody in Copinger at para.9-19, which he described as "unhelpful". By that, I understood unhelpful to the respondents' case and in so far as the passage to which he referred suggests a defence encompassed under the heading of fair dealing, I have to record that no plea of fair dealing has been tendered in the pleadings before me nor indeed was any argument under that head advanced to me.

[16] In these circumstances I consider that the admitted facts and the irrelevancy of the intended exculpatory averments in the answers for the respondent must lead to the conclusion that the interdict has been breached. As discussed in the hearing before me I shall therefore put the case out "By Order" so that I may be addressed on behalf of the respondent respecting any penalty to be imposed in relation to this breach.