CASES ON COPYRIGHT

Submitted to:
Ms. Rujitha T.R.

Submitted By:
Sourav Agrawal
2019/LLM/036
 CCH Canadian Limited
Vs.
Law Society Of Upper Canada [2004] 1 S.C.R. 339
Hon’ble Judges:
McLachlin C.J., Iacobucci, Major, Bastarache, Binnie, Arbour, LeBel, Deschamps, Fish JJ.

FACTS

The Law Society of Upper Canada(Respondent) a statutory, non-profit organization, offered

request-based photocopying services to students, members, the judiciary, and authorized
researchers at their Great Library at Osgoode Hall. The Law Society provided single copies of
legal articles, statutes, and decisions to those who requested them. It also allowed visitors to
the Great Library to use photocopiers to make individual copies of works held by the library.
The Law Society also maintains self-service photocopiers in the great library for use by its
customers. CCH Canadian Limited, sued the Law Society for copyright infringement of 11
specific works based on these activities. They requested relief in the form a declaration of
subsistence of copyright in these works and a permanent injunction barring the Great Library
from reproducing these works or any other works published by the plaintiffs. The law society
denied liability and in response, the Law Society argued that the services it offered were
necessary to provide equal access to the library's collection of legal materials. Many of the
materials held at the library are non-circulating, which makes access to the original copies
difficult to those who do not work near-by. The Law Society sought a declaration that its
activities did not infringe on the publishers' copyrights, by either the provision of a single copy
of a work or by allowing patrons to avail themselves of the self-service photocopiers.

ISSUES

1. Are the publishers’ material “original works” protected by copyright?

2. Did the Great Library authorize copyright infringement by maintaining self-service

photocopiers and copies of the publishers’ works for its patron’ use?

3. Were the Law Society's dealings with the publishers' works "fair dealing" under s. 29
of the Copyright Act?
 JUDGEMENTS

1. Are the publishers’ material “original works” protected by copyright?

The Court held that :

a. Headnotes: The Court held that it is an original work. It also held that headnotes
encouraged largely by the judgements, they are not an identical copy of the reasons.
From that judgements part of the judgements can be selected and can be arranged
according to one’s choice or his creativity. Making this decisions requires one’s skill
and judgements and the author need to have deep knowledge about the subject matter
then only he can able to perform the work with clarity and systematically.
b. Case Summary & Topical Index : The court held that both Case Summary & Topical
Index are original work and hence, they are covered under Copyright Act. As Case
Summary is an original work which require one’s skill and judgement to perform the
work with clarity. Topical Index which provides a listing of cases with short heading to
indicate the main topics covered by the decisions. The author has to decide that which
heading and cases to include and which cases should fall under which headings which
require an expert knowledge, skill and judgements about the subject matter.
c. Reported judicial decisions : The court held that they have copyright over the
compilation of work but not on the judicial decisions themselves. The author has
arranged case summary, case information, case title and judicial reasons in a specific
manner. The arrangements of these different work requires the exercise of skill and
judgements.
2. Did the Great Library authorize copyright infringement by maintaining self-service
photocopiers and copies of the publishers’ works for its patron’ use?
The Court held that library did not authorises copyright infringements. For self-
photocopies service photocopies Court said that there was no evidence that the
photocopies had been used in a manner that was not consistent with the copyright law.
Court also noted that a person does not authorises copyright infringement by
authorizing the mere use of equipment (such as photocopies) that could be used to
 infringe copyright. For copies for patrons court held that not all request were honoured,
they also granted copies to patrons for research work, which was exemption of
copyright infringement.

3. Were the Law Society's dealings with the publishers' works "fair dealing" under s. 29
of the Copyright Act?

The court held that fair dealing was regarded as an “integral part” of the Copyright Act
rather than “ simply a defence”. The fair dealing exception were characterized as a user
right, and must be balanced against the right of copyright owner. When the owner claim
“Fair dealing” the defendant must show that the dealing was for the purpose of either
research or private study and that it was fair. Further, in interpreting “research” the
court stated that it must be given a large and liberal interpretation in order to ensure that
user’s right are not unduly constrained. Therefore , the library made the copies for
research purpose.

Conclusion: for a work to be “original work” within , it must be more than a mere copy of
another work. At the same time, it need not be creative, in the sense of being novel or unique.
To get the copyright protection in the expression of an idea is an exercise of skill and
judgements required to produce the work must not be so trivial that it could be characterised
as a purely mechanical process , it should include intellectual effort Of the author.

FEIST PUBLICATION, INC.

Vs.

RURAL TELEPHONE SERVICE COMPANY

499 U.S. 340 SUPREME COURT OF UNITED STATES OF AMERICA

Hon’ble Judges:
O'Connor, J., delivered the opinion of the Court, in which Rehnquist, C. J., and White,
Marshall, Stevens, Scalia, Kennedy, and Souter, JJ., joined. Blackmun, J., concurred in the
judgment.
 FACTS

Rural Telephone Service Company, Inc. (Plaintiff) provides telephone services to several
communities. This company was operating in Kansas. Due to state regulations it is subjected
to print and issue an annual telephone directory which consists of information about individual
subscriber in the white pages and advertisements of subscribers on the yellow pages. The
yellow pages of advertisement generate revenue for the company. Feist Publications
(Defendant) which is a publication company which specializes in area-wide telephone
directories. Feist publishes a directory which covers a much larger geographical area. The Feist
directory that is the subject of this litigation covers 11 different telephone service areas in 15
counties and contains 46,878 white pages listings compared to Rural's approximately 7,700
listings. Feist approached different telephone service providers for the information as it lacks
independent access to any subscriber information. The telephone service provider companies
shred the information but Rural Inc. did not provided information as it was trying to attract the
subscribers in its area for yellow page advertisements. Despite being denied the information of
the subscribers in that particular region of Kansas, Feist Publication went ahead and used the
information of the subscribers given in the white pages of the directories which was printed
and published by Rural Inc. without their consent but added some other information such as
address which was not present in the Rural’s version. Rural Inc. sued Feist Publication for
copyright infringement in the district court of Kansas stating that feist’s employees were
obliged to travel door to door or conduct a telephone survey to discover the information which
they had copied. District Court granted a summary judgement to Rural explaining that “Court
have consistently held that telephone directories are copyrightable”. An appeal was preferred
from the judgement to the court of appeal for the Tenth Circuit which affirmed the decisions
of the District Court. The Supreme Court granted the writ of Certiorari to finally adjudicate
upon the matter.

LAW INVOLVED

Copyright Act, 1976 of the United States of America.

§101 of the act is the definition clause which states that “Copyright” is a work formed by the
collection and assembling of pre-existing materials or of data that are selected, coordinated, or
arrange in such a way that the resulting work as a whole constitutes an original work of
authorship.

§102 of the act talks about the Subject matter of copyright; In General.

(a) Copyright protection subsists, in accordance with this title, in original works of authorship
fixed in any tangible medium of expression, now known or later developed, from which they
can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a
machine or device. Works of authorship include the following categories:

(1) Literary works;

(2) Musical works, including any accompanying words;

(3) Dramatic works, including any accompanying music;

(4) Pantomimes and choreographic works;

(5) Pictorial, graphic, and sculptural works;

(6) Motion pictures and other audio visual works;

(7) Sound recordings; and

(8) Architectural works.

(b) In no case does copyright protection for an original work of authorship extend to any idea,
procedure, process, system, method of operation, concept, principle, or discovery, regardless
of the form in which it is described, explained, illustrated, or embodied in such work.

ISSUES

Whether the names, addresses and phone numbers in a telephone directory able to be
copyrighted?

DECISION

Factual compilations may possess the requisite originality. The author chooses what facts to
include, in what order to place them, and how to arrange the collected date so they may be
effectively used by readers. Thus, even a directory that contains no written expression that
could be protected, only facts, meets the constitutional minimum for copyright protection if it
features an original selection or arrangement. But, even though the format is original, the facts
themselves do not become original through association. The copyright on a factual compilation
is limited to formatting. The copyright does not extend to the facts themselves. The Supreme
Court after interpreting copyright laws identifies three different elements which are required to
qualify as a copyrightable compilation i.e. (a) The collection and assembly of pre-existing
material facts or data, (b) the selection coordination or arrangement of those materials, and (c)
the creation, by virtue of the particular selection, coordination, or arrangement, as an ‘original’
work of authorship. Quoting the case of Mill Music 469 U.S. at 164, the Supreme court states
that, in the field of copyright law, facts are not copyrightable as they are a product of mere
discovery but compilation thereof in different arrangements would be copyrightable as it
satisfies the originality requirement. In determining whether a fact based work is an original
work of authorship, it must be tested on the manner in which the collected facts have been
selected, coordinated and arranged. For every arrangement of facts to pass it must be selected,
coordinated and arranged in such a way as to render the work as a whole original. The raw data
which Rural had certainly did not satisfy the originality requirement. Rural Inc. may have been
the first to discover and report the names, rows and telephone numbers of its subscribers, but
the data was not original rather it existed before Rural Inc. reported them and would have
continued to exist if Rural Inc. had never published a telephonic directory. Also Rural did not
truly select to publish the names and telephone numbers of its subscribers rather it was required
by the Kansas Corporation Commissions as part of its monopoly franchise.

Also Rural claimed a collection copyright in its directory. The court clarified that the intent of
copyright law was not, as claimed by Rural and some lower courts, to reward the efforts of
persons collecting information the so-called "sweat of the brow" or "industrious collection"
doctrine but rather "to promote the Progress of Science and useful Arts" (U.S. Const. Art. I,§8,
cl. 8). That is, to encourage creative expression. The standard for creativity is extremely low.
It need not be novel; rather it only needs to possess a "spark" or "minimal degree" of creativity
to be protected by copyright.

The court ruled that Rural's directory was nothing more than an alphabetic list of all subscribers
to its service, which it was required to compile under law, and that no creative expression was
involved. The fact that Rural spent considerable time and money collecting the data was
irrelevant to copyright law, and Rural's copyright claim was dismissed.
 Eastern Book Company and Ors.
Vs.
D.B. Modak and Ors (2008) 1 SCC 1

Hon’ble Judges: B.N Agrawal & P.P. Naolekar

FACTS

Eastern Book Publishers (herein after referred as Appellants) were involved in the printing and
publishing of various books relating to the field of law. The appellant publish law report
containing Supreme Court Cases by the name “ Supreme Court Cases”. One of the well-known
publications was the law report “Supreme Court Cases”. The original Judgments were copy-
edited by a team of assistant staff of the Appellant and various inputs were put in the judgments
and orders to make them user friendly by making an addition of cross-references,
standardization or formatting of the text, paragraph numbering, verification and by putting
other inputs. The Appellants also prepared the headnotes comprising of two portions, the short
note consisting of catch/lead words written in bold; and the long note, which is comprised of a
brief discussion of the facts and the relevant extracts from the judgments and orders of the
Court. Respondent had launched a software called “Grand Pix ” published on CD-ROMs and
the Respondent No. 2 had brought out a software package called “The Laws” published on CD-
ROMS. As the respondent have copied whole module from SCC on to the CD ROM.

As per the Appellants, all the modules in the Respondents’ software packages have been lifted
verbatim from the Appellants’ work; the Respondents have copied the Appellants’ sequencing,
selection and arrangement of the cases coupled with the entire text of copy-edited judgments
as published in the Appellants’ law report SCC, along with and including the style and
formatting, the copy-editing paragraph numbers, footnote numbers, cross-references, etc.; and
such acts of the Respondents constitute infringement of the Appellants’ exclusive right to the
same.

Law Involved: section 13, 14 and 52(1)(iv)(q) of Copyright Act, 1957.

 ISSUE

1. What shall be the standard of originality in a derivative work to get copyright protection
and what requirement need to be there for its fulfilment?
2. Whether the whole copy-edited versions of the judgement will be entitled for copyright
or only entitled to some of the inputs made in the judgement?

Appellant Contentions:

The Appellants do not claim a monopoly in publishing judgments of the Supreme Court as they
are being published by other publishers also without copying from each other publication. The
Appellants claim that their copyright is in the copy-edited version of the text of judgments as
published in SCC which is a creation of the Appellants’ skill, labour and capital and there are
contributions/inputs/ additions of the Appellants in creating their version of the text of
judgments as published in SCC.

Respondent Contention:

Judgments published in the Supreme Court Cases is nothing but merely a derivative work based
upon the judgments of the court, which lacks originality as it does not depict independent
creation even a modicum of creativity. The inputs put by the Appellants are nothing but
expressing an idea which can be expressed in a limited way and as such there cannot be a
copyright.

For claiming protection of copyright in a derivative work, originality is a pre-condition and

originality means only that the work was independently created by the author as opposed to
copied from other works, and that it possesses at least some minimal degree of creativity.

JUDGEMENTS

The court held that for a derivative work to have copyright protection it should show that the
derivative wok should be more than a just mere copy of the original work and it should have
authors own independent skill, labour and capital. The court stated that copyright has nothing
to do with literary merit of the work. The court just need to evaluate whether the skill employed
is not of trivial or negligible but substantial. The court also held that the respondent should not
copy the paragraph made by the appellant for its internal referencing and nor should the
respondent use the view of the judges regarding their view as to whether they have a dissenting
or concurring in the case. The court came to this conclusion after taking into account whether
the derivative work he has spent independent skill, labour and judgement in preparing it and
that it is just not a mere copy of the original work. Secondly the judges have also taken into
account that the change made by the author in the derivative work are of substantial work and
is not of trivial nature. The judges have applied the principle of “ sweat of the brow” which
means that the author deserves to be rewarded for the skill. The court referred to the principle
of minimal degree of creativity that states that there should be a minimal level of creativity in
the derivative work in deciding the issues whether the copy edited judgement would qualify
as original work or not. The court also held that even if derivative work if the author has applied
his own skill, labour and judgement then it will be entitled to copyright protection. The court
in such cases need not look in the literary merit of the work but just that the some skill is
involved. In case where the copy edited version is created then the changed that require a skill
or judgement should be considered original work and should be entitled to copyright protection.
The court gave in favour of the appellant.

“For the reasons stated in the aforesaid discussion, the appeals are partly allowed. The High
Court has already granted interim relief to the plaintiff-appellants by directing that though the
respondent-defendants shall be entitled to sell their CD-ROMS with the text of the judgments
of the Supreme Court along with their own head notes, editorial notes, if any, they should not
in any way copy the head notes of the plaintiff-appellants; and that the defendant-respondents
shall also not copy the footnotes and editorial notes appearing in the journal of the plaintiff-
appellants. It is further directed by us that the defendant-respondents shall not use the
paragraphs made by the appellants in their copy-edited version for internal references and
their editor’s judgment regarding the opinions expressed by the Judges by using phrases like
concurring’, ‘partly dissenting’, etc. on the basis of reported judgments in SCC. The judgment
of the High Court is modified to the extent that in addition to the interim relief already granted
by the High Court, we have granted the above-mentioned additional relief to the appellants.”1

ANALYSIS OF THE ABOVE CASES

As all the three cases are for the infringement of the copyright work. All the cases are from the
3 different countries i.e. Indian, Canada, U.S.A. and in all the countries have their own laws
to deal with the subject matters. In all the three cases different doctrine are being used by the
court. In the CCH Canadian case “fair dealing” is used which states that it is an limitation and
exception to the exclusive right granted by the law to the author who has done some creative
work. It is an a set of defences against an action for infringement of an exclusive right of
copyright. In the CCH Canadian case the court has clarified the concept of fair dealing it also
gave principles for evaluating fair dealing. Fair dealing is an integral part of the copyright act
rather only an defence. It’s an user right and there must be an balance against the right of
copyright owner. As for a work to be original it must be more than a mere copy of another
work. It is not necessary that the work is a creative work in the sense of being novel or unique.
In the second case i.e. feist publication case “sweat of the brow” doctrine is used which means
that an author gains right through simple diligence during the creation of work, such as
database, or directory. In this substantially creativity or originality is not required. Under this
doctrine the creator of copyright work, even if it’s completely unoriginal, it is entitled to have
his effort and expenses protected, and no other person can use it without his permission, rather
recreate the work by independent research or effort. According to this case “sweat of the brow”
jurisdiction, directory may not be copied , but instead a competitor must independently collect
the information to issue an competitive directory which has been done in this case. In feist case
it was also observed that mere collection of facts are considered unoriginal and thus they are
not protected by the copyright law, there is no consideration that how much work went into
colleting them. The arrangement and presentation of collection may be original, but not if its
“simple and obvious” such as a an alphabetical order. The work need to have some creativity
attached to it in order to be eligible for the copyright protection. Classically the work was only
judged on the basis of labour, skill and investment of capital put in by the creator. As per
modern approach in addition to these elements the work is required to have some creativity

1
Eastern Book Company and Others Vs D.B. Modak and Another, (2008)1 SCC 1, Contempt Petition (C) arose
out of Civil Appeal No.6472of 2004 and Civil Appeal No. 6905 of 2004 and C.A No. 158 of 2006 in CA No. 6472
of2004, decided on December 12,2007
attached to it which in itself differentiates work from any other work. It is also observed that
the work must be independently created and must possess minimum degree of creativity. This
interpretation requires an extremely low level of creativity, “must possess some creative spark
no matter how crude, humble or obvious it might be. In the third case that is Eastern book
company case the supreme court of India has discarded the “ sweat of the brow doctrine” and
it shifted to “Modicum of Creativity & skill and judgement test ” approach which is followed
in the US. The court discussed for the first time “flavour of minimum requirement of
creativity”. As the order and judgement of the court are in the public domain and all the person
has right to access to it and to publish them so if any person copy anything which is in public
domain is not the infringement of copyright. The copyright law provides protection to the
authors for their creative original work. The protection virtually promotes in furthering new
creative works based on the idea and information of the existing original work. A person
acquiring a right in a work as a result of his intellectual labour is called his copyright. The
primary function of copyright law is to protect the labour, skill and judgment. Simply copy
editing would not meet the threshold of originality under copyright law since it would only
prove an "amount of skill, labour and capital put in the inputs of the copy-edited judgments
and the original or innovative thoughts for the creativity would be completely excluded”. Thus,
it introduced the requirement of 'creativity' under originality. With respect to the level of
creativity involved, the court adopted the 'minimal degree of creativity' approach. The 'Skill
and Judgment Test' which is more or less a compromise between the sweat of the brow theory
and the modicum of creativity test. While relying on the CCH Canadian Case, the Court
essentially held that a work would meet the originality standard as long as there is labour or
effort involved but not only labour. It must involve some level of skill and judgment as well.
However, this approach mirrors the Sweat of the Brow theory more closely and is therefore a
difficult theory to defend. As various doctrine are used in the cases it is clear that there is no
single, unified concept of originality. Different countries jurisdiction of different countries
have their own criteria for originality. There is a conflict concerning originality in copyright
law.