For nearly a century, intellectual property lawyers in England & Wales were confident in their understanding of the requirements for the subsistence of copyright under English law. However the traditional English position has been shaken by a chain of European jurisprudence and tension between the domestic and European regimes, which has been explored in a string of headline-grabbing copyright law cases. Steven James and Ruth Arkley, of Latham & Watkins, assess how English courts have reacted to European developments in the test for 'originality' in copyright works; the differences between the two systems, and the steps to be taken to best ensure copyright protection.

Background

From the turn of the 20th century, the test in England &Wales for the purpose of establishing copyright was the 'sweat of the brow' doctrine: that the author of a work gained rights in it by means of the 'skill and labour' expended in creating it. There is no requirement for artistic merit or value in the work. This was established in the Victorian case ofWalter v. Lane (1900)1, in which the House of Lords ruled that reporters who transcribed a series of political speeches by Lord Rosebery had copyright in the transcription which was independent of the copyright enjoyed by Lord Rosebery. The decision was controversial because the reporters were acting as Lord Rosebery's 'echo,mocking-bird, slave'2,merely recording what had been said by Lord Rosebery, suggesting that the threshold for copyright protection was very low (albeit the court was applying 19th century legislation, vesting literary copyright in 'books', not 'works' per se). The first judicial doubts about the 'skill and labour' test surfaced in Interlego v. Tyco3 (1988), in which the respondents attempted to claim copyright in variations of the appellant's technical drawings. The Court noted that the Copyright Act 1956 imposed a requirement of 'originality', and commented that 'skill, labour or judgment merely in the process of copying cannot confer originality'. Nonetheless, the traditionalWalter -v- Lane test continued in use, and was upheld in Sawkins v. Hyperion Records Limited4 (2005). 'Originality' was by then a statutory requirement for copyright under the Copyright, Design and Patents Act 1988 (the 'CDPA'), but the time, effort and skill employed by the respondent in Hyperion Records was deemed sufficient to satisfy this test (although in practical terms the respondent's adaptations were relatively minimal).

However, the main challenge to the traditional 'skill and labour' test has come via a string of European jurisprudence. In contrast to the English common law 'skill and labour' test, Directive 91/250/EEC (the 'Software Directive') grants copyright protection to computer programs and design material to the extent that they are the 'author's own intellectual creation' (Art 1(3)), and Article 6 of Directive 2006/116/EC (the 'Term Directive') sets the same standard for photographs. The same language - 'own intellectual creation' - is also used in recitals 15 and 16 and Art 3(1) of Directive 96/9/EC (the 'Database Directive'). Directive 2001/29/EC ('Infosoc') continues in the same vein, with references to 'substantial investment in creativity and innovation'; 'intellectual creation' and 'cultural creativity and production'. Although the language is superficially similar (and somewhat vague), there is clearly the potential for significant variation between the European requirement of 'creativity' and the English common law requirement of 'skill and labour', although the European test, like the English test, does not require any value judgment or artistic merit in the work to confer protection.

The Database Directive was directly implemented into English law by the Copyright & Rights in Databases Regulations 1997, which enshrined the European test for copyright in databases - the 'author's own intellectual creation' - into the CDPA5 (using language which is not echoed elsewhere in the Act). Although the Software and Infosoc Directives are not automatically incorporated into English law, and have not yet been implemented by statute, they should, according to Mr Justice Arnold, be applied by the courts to the fullest extent that they are compatible with English law under the Marleasing principle6.

English copyright law is in a state of flux and, pending the Supreme Court's decision in Meltwater, it would seem that two tests for originality exist side by side, each applicable to different works.

How do the common law and European systems interact?

Since 2009, the distinction - if any - between the English law and the EU tests was not obvious. Although the 'author's own intellectual creation' standard applied to databases under s. 3A(2) of the CDPA, exactly what this test required was unclear, and the 'skill and labour' test as it related to other forms of literary, dramatic, musical and artistic ('LDMA') works seemed to be unchanged.

The turning point was Infopaq (2009)7, in which the Court of Justice of the European Union ('CJEU') suggested that copyright would apply only in relation to works (regardless of what type of work they were) which were 'original in the sense that [they are] the author's own intellectual creation'. This statement equated the English law 'originality' test with the EU test and, if this had been followed by the English courts (which it was not8, as, in strict terms Infopaq related to copyright infringement rather than subsistence of copyright), it would effectively have established a pan- European standard for copyright, removing the distinction between different thresholds of protection for different types of work under English law.

The Infopaq approach received further support from the CJEU in Bezpe_nostní (2010)9 (the BSA case), in which the CJEU seemed to suggest, using the language of the Software Directive, that all works which are 'intellectual creations' must be afforded copyright. In this case the Court decided that although a graphic user interface did not fall within the ambit of the Software Directive it could nonetheless be afforded copyright protection if it constituted the 'author's own intellectual creation' under the InfoSoc Directive. This is the opposite of the approach taken by English law, which affords protection only to works which: (a) fall within the legislative categories of the CDPA and (b) meet the originality threshold. The CJEU's analysis therefore had the twofold effect of expanding the potential works to which copyright could apply by removing English law's 'boxes' of copyright10, whilst also limiting protection by raising the originality threshold. The CJEU's view of 'originality [as] through intellectual creativity' is clearly more restrictive than the English law threshold, implying a degree of artistic input greater than the 'skill and labour' test.

The English Court of Appeal came to consider this question in NLA v Meltwater (2010)11, which concerned the respondent's online re-publication of newspaper headlines and article excerpts. Using the language of the CJEU, the Court held that small extracts or headlines from articles can be subject to copyright protection, as no distinction should be made between part of an article and the whole provided that the part contained elements which were the expression of the author's intellectual creation. The excerpt or headline did not need to be 'substantial' in and of itself; the significance is whether a substantial part of the author's skill and labour (in having written the original article) is appropriated. Crucially, the Court also ruled that the English common law test for the subsistence of copyright in LDMA works remained unchanged, and that the recent CJEU decisions had simply underlined the connection between 'originality' and 'authorship' which has long been acknowledged by the common law.Meltwater has since been referred to the Supreme Court on appeal and judgment is awaited at the time of writing12.

What does the author’s own intellectual creation mean?

A month after Meltwater was heard by the Court of Appeal, the CJEU gave judgment in the Painer (2011)13 case. Painer concerned photographic copyright, so fell within the Art. 6 of the Term Directive, which applies the EU 'author's own intellectual creation' test. In considering the nature of this standard the CJEU spoke of the photographer's 'formative freedom' and the artist's ability to make 'free and creative choices'. For example, a portrait photographer demonstrates formative freedom and reflects his personality in his work by choosing the angle of the shot, the lighting, the pose of the subject and any props used14. The CJEU also used similar language in FAPLv.Murphy15, holding that football matches are subject to the rules of the game so the players do not have sufficient 'creative freedom for the purposes of copyright'.

In the context of establishing copyright under the Database Directive, the CJEU held in Football Dataco16 that a database will be the 'author's intellectual creation' and thus protected by copyright when he is able to 'make free and creative choices' in the 'selection and arrangement of the data'.Whilst a database is in most circumstances less open to creative influences than, for example, a musical composition, they can have significant commercial value, and the Court emphasised that skill and labour is not enough to trigger copyright protection without a work also having some degree of creativity. Any element of a work which is dictated by automatic means, rules or technical constraints will leave 'no room for creative freedom'.

Most recently, the English High Court has considered copyright in software in the case of SAS vWPL (2013)17. Following Football Dataco and Navitaire Inc v. easyJet Airline Co Ltd18, Arnold J confirmed that copyright protection under the Software Directive is not available for the functionality, programming languages, or interfaces of software, as these constitute the ideas behind a programme rather than the creative expression of it. Based on the evidence before him at trial, Arnold J concluded that the SAS programming was not a work that was the author's own intellectual creation, so it was not capable of protection under the Software Directive. However, this was without prejudice to the fact that programming languages could feasibly be protected as a distinct copyright work if they constitute the author's own intellectual creation under the Infosoc Directive.

This latter point was not thoroughly explored as it had not been properly pleaded, but it raises the salient question of what, exactly,must be shown to demonstrate the 'formative freedom' necessary for an 'intellectual creation'; especially in terms of computer software which is functional by its nature.

The current situation

English copyright law is in a state of flux and, pending the Supreme Court's decision in Meltwater, it would seem that two tests for originality exist side by side, each applicable to different works. On the one hand, the European standard ('author's own intellectual creation') clearly applies to database copyright (via the CDPA), E-Commerce Law & Policy - March 2013 and should also have indirect effect regarding photographs (the Term Directive) and computer programs (the Software Directive) under the Marleasing principle. Conversely, as far as other LDMA works are concerned, the common law ('skill, labour and judgment') test would still seem to apply. The apparent shift from 'sweat of the brow' towards an emphasis on 'creativity' moves English law further towards the US test of a 'modicum of creativity', as per the Feist case19. Mere independent creation itself would no longer seem sufficient - independent creation plus making clear, creative choices seems necessary as well.

Tips for ensuring copyright protection in the future

But while this is an interesting academic debate, the real question is, do the differences between the tests have any practical/commercial relevance?

On the assumption that the EU standard is higher than the English law test, but the two are not mutually exclusive, it would be prudent to adopt a cautious approach and aim to comply with both the CDPA and the European requirements. It is hard to predict how the CJEU will recognise 'formative freedom' and 'creative choices' in a work, and future case law (particularly English case law) applying these fairly vague and imprecise principles will give us greater guidance; but in the meantime the following practical tips might be worth bearing in mind: 

  • anything inherently functional, or relying on automated processes and rules will struggle to benefit from copyright protection, so alternative protection should be sought for such works (e.g. patent protection or the EU sui generis database right); 
  • those who compile lists (e.g. telephone directories, list, football fixture lists or TV programme schedules) are unlikely to be able to protect the copyright in their works, unless they have something unique and creative about them in the selection or arrangement of the material that constitute the work. Mere 'skill and labour' in spending hours to compile a list is unlikely to be sufficient - you need to be able to demonstrate that personal choices have been made with a clear methodology;
  • personalise your work as much as possible, adding some form of individual, personal stamp to it, as the CJEU has made it clear that personal artistic choices are indicative of creativity;
  • when bringing a claim for copyright infringement, particularly in relation to computer programs,make sure that you plead copyright subsistence in individual elements such as the programming language, generic user interface and format of data files under the InfoSoc Directive, as well as claiming copyright protection in the source code as a literary work (if applicable). Following SAS -v-WPL, the 'look and feel' and functionality aspects of the computer programs are not protectable;
  • look at the creativity displayed in the work, not the length of it. The de minimis rule has been undermined by Infopaq and Meltwater, which are steering us towards a framework where any work which is informative or conveys pleasure, no matter how short or seemingly trivial, can be capable of protection, including (potentially) short excerpts of an article, a headline or a single post/tweet; and
  • keep an audit trial and maintain records of prototypes, drafts and sketches to demonstrate how the creative process progressed and the creator employed individual methods to produce the relevant work.

The practical reality is that the vast majority of works in which copyright protection is sought will meet both the traditional English law and 'new' European tests of originality, as the threshold for protection is still relatively low. However, those whose commercial activities may fall within the two (most notably list, telephone directories or databases) should take steps now to ensure they do not get left behind the times and ultimately without a remedy for infringement of their works.