Connor White Gill Dennis February 13 2023 Action by Pasternak descendant raises novel fair dealing issues in claim for copyright infringement by selection of events in fictional work Pinsent Masons | Intellectual Property - United Kingdom Connor White, Gill Dennis Intellectual Property IntroductionFactsDecisionCommentIntroductionThe recent High Court decision in Pasternak v Prescott(1) is a useful reminder for authors of:the challenges around enforcing copyright in the selection of events in literary works;the nature of copyright protection for translated works; andthe limits of the "quotation" fair dealing defence.FactsAnna Pasternak (Pasternak), the claimant, is the great niece of Boris Pasternak, the author of the world-famous novel Doctor Zhivago. Pasternak authored and published a non-fictional, historical book entitled Lara: The Untold Love Story (Lara), telling the story of the love affair between Boris Pasternak and the women described as his mistress, Olga Ivinskaya.Lara Prescott (Prescott), the defendant, is the author of the book The Secrets We Kept. This is a work of historical fiction concerning the US Central Intelligence Agency operation in the late 1950s to print and smuggle copies of Doctor Zhivago into the Soviet Union as a propaganda tool.Pasternak issued these proceedings alleging that The Secrets We Kept infringed the copyright in Lara.Copyright infringement claimThere were two parts to the claim of copyright infringement. The first alleged that seven chapters of The Secrets We Kept infringed the copyright subsisting in seven of the chapters in Lara on the basis that Prescott had copied a "substantial part of the selection, structure and arrangement of facts and incidents which the claimant is said to have created when she wrote Lara".(2) The judge labelled this the "selection claim".The second part, labelled the "translation claim", alleged that Prescott had copied an extract from a work known as the Legendes Translation. This was a work originally written in Russian by Olga Ivinskaya's daughter and subsequently translated into French. Pasternak commissioned a translation into English and owned the copyright in the English translation by virtue of an assignment from the translator. The allegation was that Prescott had indirectly copied an extract from the Legendes Translation, which was quoted in Lara.Prescott denied having copied style or structure from Lara but admitted to using the quote from the Legendes Translation in her book. Although she acknowledged using the Legendes text, Prescott denied that this amounted to copyright infringement, seeking to rely on the fair dealing quotation defence in section 30(1ZA) of the Copyright Designs and Patents Act 1988.DecisionSelection claimThe judge first addressed the question of whether copyright subsisted in the selection of events in Lara. He was satisfied that the selection constituted an expression of Pasternak's own intellectual creation and that the events were not at too high a level of abstraction to affect this finding.The judge addressed the assessment of infringement in respect of the selection claim using two methodologies. The first was to examine and compare the selected events included in each individual chapter of each of the books and the second was to look at the books as a whole to determine whether there had been any infringement.(3) Following that analysis, and after consideration of the witness evidence, the judge held that there was no copyright infringement. The content, arrangement of the content, context and style of each book were different, resulting in what the judge described as two "fundamentally different works".(4) Although the nature of the two works was different – one being a non-fictional work of history and the other being a fictional retelling of historical events – they were both essentially based on the same historical events. The judge therefore found it "unsurprising" that the sequence of events in each book followed the same basic chronology.(5)Lara and The Secrets We Kept retold similar events, and both Pasternak and Prescott used some of the same sources in crafting their work. However, the judge found that the way in which the events were used by Prescott was significantly different from how Pasternak had used those same events. In The Secrets We Kept, the events of history were moulded to suit a fictional story that was the unique creation of Prescott and distinct from the historical usage of the events by Pasternak in Lara. The judge held that the evidence showed that Prescott had taken no more from Lara than "odd details" and these were not protected by copyright.(6) He stressed that what is protected under copyright is not a basic idea, but instead the expression of that idea.(7) Pasternak in this instance was attempting to claim copyright not just over the expression of the events being described in her book, but over the events themselves, which was beyond the scope of copyright protection.When carrying out his detailed analysis of each book, the judge warned against adopting a "similarity by excision" approach to the assessment of copyright infringement. In so doing, he affirmed earlier judgments which had cautioned against "chipping away at a work and ignoring all the bits which are undoubtedly not copied", resulting in "the creation of an illusion of copying in what is left".(8)Translation claimThe Court was asked to consider whether copyright subsisted in the English translation of Legendes Translation, Prescott's argument being that the straightforward nature of the translation process meant that the translation itself could not be said to be the translator's intellectual creation. The Court held that:translations are governed by the same rules as other forms of authors' works. Copyright will protect a translation, so far as the translation reflects the intellectual creation of the translator.(9)In this case, the judge held that:while the Legendes Translation may be a fairly basic translation, it does not seem to me that this alters the fact that [the translator] will necessarily have had to bring her creative skills to bear in choosing what words to use in English in order best to capture and convey the meaning of the French text.(10)The translation was held to be, therefore, the translator's own intellectual creation in which copyright subsisted.Prescott had admitted indirectly copying an extract of the Legendes Translation that was quoted in Lara. The question then became whether Prescott's use of the quote was permitted use under the section 30(1ZA) fair dealing defence.To succeed in this defence, Prescott needed to show that four conditions were satisfied, the most significant of which in this case were whether Prescott's use of the quotation was "fair dealing" and whether her use of the quote had been accompanied by sufficient acknowledgement of the translator.In assessing fair dealing, the Court applied the guidance in Ashdown.(11) In Ashdown, the Court of Appeal had acknowledged that was impossible to lay down any hard and fast definition of fair dealing, the assessment of fair dealing always being a matter of fact, degree and impression. However, the Court suggested various factors to weigh in the balance in this assessment. In particular, it said:the work claiming protection under fair dealing must not compete commercially with the original work; andthe amount and importance of the work taken is a relevant consideration in the overall fair dealing assessment.In this case, the Court was satisfied that Prescott's use of the quotation was fair dealing. The judge found that the historical novel The Secrets We Kept did not compete with the non-fiction work Lara. The judge said that Prescott was "plainly not seeking to engage in any form of commercial competition". Further, the Court accepted Prescott's evidence that:she made use of the quotation, which she thought she was taking from Lara, because she thought it was an actual historical quote . . . falling into the same category as a quote from an historical figure such as George Washington or Thomas Jefferson. The Defendant did not act in any underhand manner, or obtain the quotation by any disreputable means. It is clear, and I so find, that the Defendant acted in good faith.(12)However, reliance on the quotation fair dealing defence requires the quotation to be accompanied by a sufficient acknowledgement of the original author (unless impossible). Prescott's fair dealing argument failed on this point. The Secrets We Kept provided no acknowledgement of the Legendes Translation, or the translator, as the original source, other than a brief statement at the end of the book that the author had consulted Lara, among other works, when writing her book. The Court found it would have been reasonable for Prescott to make inquiries into the authorship of the translation. Notably, the source of the translation was credited at the end of Lara,(13) but Prescott had made no inquiries beyond that into the source or authorship of the quote. Without that effort having been made, the conditions of section 30(1ZA) were not fulfilled. Use of the quote by Prescott was held to be copyright infringement, albeit that this was a minor part of the overall copyright claim, the majority of which had failed.CommentSeveral aspects of this judgment are of interest to those working in or with the creative sector.First is the confirmation that the law of copyright applies to translations, providing the translation is the translator's intellectual creation. Although this is likely to be a low bar, what remains unclear is the extent of copyright protection for translations. The art and skill involved in translation does not refer to completely original composition, but instead can be as minor as choices in vocabulary, tone and syntax. Can these benefit from copyright protection, and would protection extend to even short and formulaic translations? Following this judgment it seems so, although the subsistence of copyright in a work will always be a matter of fact in each case.Second is the guidance around the scope of the quotation fair dealing defence in section 30(1ZA) – in particular, the duty of an author to make inquiries into the authorship of any quotations that they use. Even if the use of the quote is considered to be fair dealing, it still falls to an author to make a sufficient effort to determine authorship of a quote and credit the original author. A certain amount of investigative work is needed for the quotation defence to be available, and it appears from this judgment that the inquiries need to be reasonably keen and extensive.This is an interesting judgment, made all the more unusual by the fact that Pasternak admitted to not having read Prescott's book before launching these proceedings. It highlights the challenges around copyright infringement by reference to content selection, where it will generally be more difficult to establish substantial copying than where clear textual similarities are evident.For further information on this topic please contact Connor White or Gill Dennis at Pinsent Masons by telephone (+44 20 7418 8250) or email ([email protected] or [email protected]). The Pinsent Masons website can be accessed at www.pinsentmasons.com.Endnotes(1) Pasternak v Prescott  EWHC 2695 (Ch).(2) Id, paragraph 5.(3) Id, paragraphs 406-412(4) Id, paragraph 408.(5) Id, paragraph 411.(6) Ibid.(7) Id, paragraph 95.(8) See, for example, Laddie J in IPC Media v Highbury  EWHC 2985 (Ch).(9) Pasternak v Prescott, paragraph 426(10) Id, paragraph 427.(11) Ashdown v Telegraph Group Ltd  EWCA Civ 1142  Ch 149.(12) Pasternak v Prescott, paragraphs 451-453.(13) Id, paragraph 466.