INTRODUCTION TO INTELLECTUAL PROPERTY I: INTRODUCTION TO COPYRIGHT LAW

(LAW338)

SEMINAR 3

Infringement of Copyright

Reading: Bently and Sherman Intellectual Property Law (6th ed) Chapter 8
Lecture Recordings and Notes for Week 6.

1. What are the main differences between primary infringement of copyright and
secondary infringement of copyright?
 Primary infringement is concerned with people who are directly involved in
the reproduction, performance etc. of the copyright work. Contrastingly,
secondary infringement is concerned with people in a commercial context
either deal with infringing copies, facilitate such copying, or facilitate public
performance.
 In second infringement relates to the mental element that the defendant
must exhibit in order to infringe, liability is dependent on the defendant
knowing or having reasonably to believe that the activities in question are
wrongful. In primary infringement the state of mind of defendant is not
taking into account when deciding whether infringement has occurred.
A. Explain the various types of secondary infringement that are recognized
within the CDPA, 1988.
 i) those who distribute or deal with infringing copies once they have
been made; and those who facilitate copying by providing the
equipment or means that enable the copying to take place.
 The distribution of infringing copies: concerned with people who deal
with infringing copies with work in a commercial context. S. 22 and 23
of CDPA 1988 provide that the copyright in a work is infringed by a
person who, without the license of the copyright owner.
 Providing means for making infringing copies or performances: Those
who facilitate copying by providing equipment or means to enable the
copying to take place (S.24(1), s.24(2), s.26 CDPA 1988)
 Authorizing infringing by others (s.16(2) CDPA 1988)
 Secondary infringement in common law: Joint tort feasance.
 1) Secondary infringement: By those distributing or dealing with
infringing copies: Secondary infringement occurs when person who,
without the license of the copyright owner, imports into the United
Kingdom, otherwise than for his private and domestic use, an article
which is he knows or has reason to believe is, an infringing copy of the
work.
 Secondary infringement occurs when person who, without the license
of the copyright owner-
o Possesses,
o Sells or lets for hire,
o Offers
o Exposes for sale or hire,
o Exhibits in public or distributes, or
o Distributes.
In the course of a business an article which is, and which he
knows or has reason to believe is, an infringing copy of the
work. (s22 and S23 CDPA 1988)
 2) Secondary infringement: By those providing the equipment or
means to enable copying (facilitate copying):
S24(1) Secondary infringement occurs when person who, without
the license of the copyright owner
(a) Makes,
(b) Imports into the United Kingdom,
(c) Possesses in the course of a business, or
(d) Sells or lets for hire, or offers or express for sale or hire,
 An article specifically designed or adopted for making copies of
that work, knowing or having reason to believe that it is to be
used to make infringing copies (e.g. making template or mould
of copyright work/ and not necessarily photocopier or tape
recorder as they are not “specifically” designed)
It is insufficient if the article is a photocopier or a tape
recorder or anything that has the potential to copy.
Specifically designed eg-someone makes a template or a
mould of copyright work that is used to create infringing
copies.
S24(2)- copyright in a work is infringed by a person who
without the license of the copyright owner transmits the work
by means of a telecommunication system (otherwise than by
[communication to the public]), knowing or having reason to
believe that infringing copies of the work will be made by
means of the reception of the transmission in the United
Kingdom or elsewhere.
 Secondary infringement: Authorizing infringing by ithers (s16(2)
CDPA 1988)
S16(2): “copyright in a work is infringed by a person who without
the license of the copyright owner does, or authorities another to
do, any of the acts restricted by the copyright.”
Deals with the doctrine of authorization. Found in both statue and
common law. (Broad and narrow interpretation) (Broad: sanction,
approve and countenance. E.g., authorizing to do it, if understand
my behavior, this is more people will fall under this) (CBS: copy
your own works is not a copy.) (This day is become easier to
automatically infringed copy.) (selling an equipment for copying
allowed to copy it becomes difficult to say selling the equipment
approving the fact copying the others) (Dramatical case: would be
a case once become intermediately responsible for person use for
pirate bay (website) potentially access would that be a person
 responsible for secondary infringement. If intermediately making
easy for you to do a copy. This is likely a support element.)
Falcon v Famous Players Film Co [1926]: - “to authorize means to
grant or purport to grant to a third person the right to do the act
complained of” (narrow interpretation)
- “For the purpose of the Act of 1911 the expression ‘authorize’
meant sanction, approve, and countenance” (broad
interpretation)
 Secondary liability in common law: Joint tortfeasance:
1) There must be some primary wrongdoing, without which it is
self-evident that no liability can be attached to both parties.
+
2) A connecting factor: -procurement of a copyright infringement
and;
- participation in a common design to carry out a copyright
infringement.
The connecting factors identify the situations when a sufficient
nexus between the secondary and primary wrongdoers to justify
extending the liability to the former.
There is a degree of overlap between procurement and
participation in a common design. (Just because I knew you
download something that doesn’t meant is a joint tortfeasor. That
makes an infringement my own must actually be active in the
infringement.)
B. Explain the common law concepts of secondary liability for “procurement”
and “participation in a common design”.
 A person will be liable where they procure an infringement. This
might occur by way of inducement, incitement, or persuasion. A
person procures something when they take the appropriate steps
to see that something happens. It does not require any form of
discussion or agreement between the parties. Therefore, where a
person sells an article in kit form with instructions, and that
 article, when constructed, infringes the claimant’s intellectual
property right, the seller has been held to be a joint tortfeasor
with the person who puts the kit together, because they have
procured that infringement. Contrastingly, while people who sell
an article knowing that it is going to be used by some customers
to infringe an intellectual property right may assist infringement,
they will not be treated as having induced the infringement. CBS
Songs v. Amstrad, the House of Lords was asked to consider
whether, in selling a high-speed tape-to-tape recorder that the
manufacturer and vendor knew was likely to be used to infringe
copyright in sound recordings, the supplier was a joint tortfeasor.
The House of Lords held that, because the supplier neither had
control over how purchasers used the tape recorders nor had it
asked purchasers to use the tape recorder in a particular way, the
supplier did not procure the infringement.
 Where two people combine to do or secure the doing of an act
which constitutes a tort (a common design) they will be joint
tortfeasors. There are two elements. The accessory must have
acted in a way which furthered the commission of the tort by the
principal; and the accessory must have done so in pursuance of a
common design to do so. For parties to operate in a common
design, it is not necessary for the secondary party to have mapped
out a plan with the primary offender; tacit agreement will suffice.
Also, at least where liability is strict, it does not matter whether or
not the parties knew they were infringing. The fact that a parent
company has financial control of a subsidiary is not enough of a
connection to constitute a common design; the parent company
must be shown to have ‘taken part’ in the primary act. Equally,
under this head, directors will be liable for acts of the company
only where they and the company ‘joined together in concerted
action to secure that [the infringing] acts were done’.
2. What are the special rules analogous to provisions on secondary infringement, i.e.
acts that facilitate access or duplication of works protected by technological
measures?

 S. 296ZF -Interpretation of sections 296ZA to [296ZEA]

(1) In sections 296ZA to 296ZE, “technological measures” are
any technology, device or component which is
 designed, in the normal course of its operation, to protect a
copyright work other than a computer program.

 (2) Such measures are “effective” if the use of the work is

controlled by the copyright owner through—

 (a) an access control or protection process such as encryption,

scrambling or other transformation of the work, or

 (b) a copy control mechanism,

 which achieves the intended protection.

 (3) In this section, the reference to—

 (a) protection of a work is to the prevention or restriction of

acts that are not authorised by the copyright owner of that
work and are restricted by copyright; and

 (b) use of a work does not extend to any use of the work that is
outside the scope of the acts restricted by copyright.

(Technology that circumvent the infringement. This technology

comes into existence and easily to create them. Like CD not able to
copy a CD like put in a desktop and basically download it. But it
have set some of the system that prevent you to do it. If create
other technology to circumvent that will be infringement as well.
Create equipment for circumvention, and someone sell it also
amount to infringement. If not primarily circumvent but might be
fall under circumvent that is not infringement. The primarily
circumvent if can do other things it is infringement. Connect
people who can actually help you circumvent that also
infringement (recommend people who can actually do this ability).

3. Colin Dexter is a famous author of Inspector Morse detective novels. Many of the
events in these novels take place in Oxford and the crime is always linked to the
academic community. The protagonist of the Inspector Morse series of novels is a
bright, highly educated Inspector of Police. Inspector Morse likes to drink, has a
penchant for classical music (in particular, Wagner), and is somewhat tragic in his
relationships. Inspector Morse also seems to be somewhat frustrated about the fact
that he has never made it further in the police hierarchy. On the other hand, he
behaves as though he lacks ambition and struggles with diplomatic skills, because of
which, he has very few friends in high places.

Other characteristics of Inspector Morse are that he is rather difficult to work with
and that very often he follows the wrong leads. He has a very erudite knowledge of
poetry and in the novels, he often quotes from poems during a philosophical
reflection upon his own life and/or the crime which needs to be solved. The central
theme is in most cases the rather unpleasant world of Oxford students and
academics, with fierce and often ruthless competition topped with a sauce of envy.
Alternatively, the upper-class problems of boredom and marital unfaithfulness also
form a central theme. Plots are very unpredictable and are filled with false leads and
red herrings.

Brenda North is an up-and-coming author of detective novels. The central figure in

her novels is a somewhat frustrated female inspector, Inspector Gina, who has
problems communicating properly with her colleagues. Her frustration stems
predominantly from the fact that she has not been promoted and is not making it up
in the hierarchy despite her police skills. Her attitude has not made her many friends
within the police force. She is also a somewhat tragic figure as she does not seem to
be able to have long-lasting personal relationships, because of which, she takes
antidepressant pills. Her mental state leads her to read a lot of poetry, from which
she often quotes during her investigations. A central theme in her novels is the
academic world of Cambridge, where all crimes take place. Most of these crime
cases are fed by intolerable competition between academics and/or students, and
love affairs between academics and their respective partners, if not with students.
Colin Dexter and his publishers are not pleased and sue Brenda North and the
publishers on the basis that she has infringed the reproduction rights. They claim
that she uses similar themes and plots, the characteristics of both inspectors show
too many similarities to be a coincidence, and she even uses the same poems in her
novels.

Brenda North defends herself by saying that there are no identical words or
sentences used in her novels, and where she uses the very same poems, she often
quotes other parts of the same poem. She argues that the themes are not identical
as the central location in her novels is Cambridge and not Oxford.
A. Has there been a substantial copying from Colin Dexter’s novels?
 Primary infringement
 First, restricted activity whether the act falling within the
copyright owner’s control). S16 falls within one of the exclusive
rights. OTF: copying of literary work, alleged reproduction right
relating to the exclusive right. Thus satisfied a restricted activity.
 Second, casual connection. (The work of the defendant is derived
from the claimant’s work.) (Have to show infringing copying had
taken place. If there have so many similarities it doesn’t means
that infringing must show evidence the defendant (a burden of
proof) explain why similarities appears in his work to show
independent work.)
 Direct evidence. OTF: we need direct evidence, Colin Dexter has to
burden to prove that there is a direct causal link. However, the
fact that there is no direct evidence that there is copy, thus court
rely on infer derivation (indirect evidence) (No body to see her
access that material)
 Indirect evidence: lack of direct evidence, court will infer
derivation.
 Infer derivation on the basis of so many similarities. Key case:
Designer Guild v Russell Williams: Abstract is not taken into
account here. It is the details that must be taken into account.
How similar are the details of both fabrics. It can also be detected
from mistakes copied which would be identical to the original
copy.
House of Lords approved the inference of derivation:
- Stripes with scattered flowers
- Impressionistic style, showing brushwork (brush strokes)-
corners are not smooth.
- Stripes had rough edges.
- Petal executed like a ‘comma’- by using a brush to get this.
- Stripes showed through some petals.
- Flower heads comprised of ‘strong blobs’ rather than a
realistic form- are scattered all over the fabric.
- Leaves had two distinct shades of green- exactly same shade
of green is being copied.
Must also that there has been an opportunity to copy. Design
was exhibited one year before, and the defendant has visited
the exhibition before.
OTF: find similarities between Inspector Morse and Inspector
Gina. – struggles with communication skills – does not have
long - lasting relationship – often quotes poem – frustrated
with their working position. (Opportunity to copy as the
person is famous that will be sufficient. Have to show the word
is similar) (Regarding to similarities, the law states that
Designers Guild case)
OTF: Brenda North have accessed to Colin Dexter work
(Designer Guild case)
Contrast with Mitchell v BBC: 1) Things can be derived from
common themes but this does not mean that there has been
copying. 2) Facts of the case. 3) The creators of Kerwhizz
explained that they were inspired by shared stories there is
Japanese anime and manga characters. The court also heard
that the design team of Kerwhizz had seen Mitchell’s proposal
 for Bounce Bunch because there was no evidence that the
team had seen Mr. Mitchell’s work. Hence, even though there
were so many similarities between the two works, there was
no infringement. 4) They had a common inspiration and they
did not copy of each other.
Same as for the case of Bodo Sperlein: 1) The shade of the red
is too similar, 2) Overall effect is very similar 3) There was an
opportunity to copy. (Despite so many similarities not
necessary a copying because both might be inspired by same
sources) (If inspired by the same source that is quite possible
not just inspect the Morse and so many others will have the
same as well.) (Show the expand case law to support your
arguments) (Draw a parameter and boundaries whether a
copyright associated with the particular things when it is a
small elements like book, the small elements will be copying?
Taking various factors that is considered to be stand out and
shape of its own, e.g., the fight scene in the train. Give a
specific shape just for fight scene it is own a copyright. It might
be a one minute own a copyright not a whole movie.)
 Issue of subconscious copy? Case: Francis Day. Court took into
account the fact that the song was so popular even though people
heard it 15/20 years ago. It is impossible that one has never heard
if the song because it was so popular. Subconsciously, you
recreate the song by mistake. But there must be a high level of
copying to find someone guilty under this category. Must show a
casual connection here.
 Third, the restricted act was carried out in relation to the whole or
a substantial part thereof. Substantial copying is sufficient.
To determine if there has been copying, it is necessary to ask, 1)
what is the claimant’s work? 2) has the defendant utilized the
whole of the claimant’s work or the substantial part thereof.
 1. Claimant’s work: Determine the parameter of the work. What
is being claimed as copied and you need to remove the things
that are belonging to the public domain.
Eg. Infopaq- 11 words can be copyright infringement if you
show originality.
It is about the quality and not the quantity. A paragraph or a
chapter can be treated as whole. It can be considered as a
copyright infringement as a whole of its not. The whole book
may not infringed but the whole para is infringed wholly.
Copying would then be of the entire work rather than it being
substantial. It is the specific details that have been infringed.
The expression of the idea but not the idea is being protected.
Same idea can be used over and over again, just the
expression differs.
If it is so popular and it is the author’s own intellectual
property creation, then it can be wholly copyright protection.
 Principles for distinguishing protected from non-protected parts of
work.
Copyright does not protect the ‘ideas’ that lie behind or inform a
work, they protect the expression of ideas- see Designers Guild v
Williams [2000]
Non protection of ideas
Baigent v Random House compare with Temple Island case.
Actually, there is no actual copying of the image. Only the objects
were similar but not the expression of the idea. Because it was
such an iconic image of London, it has been protected BUT this is a
protection of idea not the expression of ideas.
OTF: She may argue that she was inspired of a common source
than she derived it from him. But the details of the same poetry
are against this statement. The errors and mistakes can show that
there is too much of a similarity here.
B. Is there copyright infringement of copyrights and give arguments for your
answer. You will also have to describe all the steps in your reasoning as to why
there is (no) infringement and apply the appropriate case law if any.
 Requirements for primary infringement
The onus falls upon the claimant to show that on the balance of
probabilities that:
POINT 1: Act must be done one of the activities falling within the
copyright owner’s control- Restricted activity
POINT 2: The defendant’s work is derived from the copyright
work- Casual connection
POINT 3: The restricted act was carried out in relation to the
whole or a substantial part thereof.
POINT 1: S16(1) CDPA- states that the owner if the copyright has
the exclusive rights to do a set of acts in the UK includes the right
to copy the work or reproduction right (S17), the right to issue
copies of the work to the public (S18), the right to rent or lend the
work to the public (S19A), the right to perform, show or play the
work in public (S19), the right to communicate the work to the
public (S20), the right to make an adaption of the work to do any
acts mentioned in relation to adaption (S21).
POINT 2: There must be a causal link between the work used by
the defendant (i.e., reproduced, issued, rented etc.) and the
copyright work.
Unlike patent law, copyright law does not protect an owner
against independent creation. Even if someone comes up as the
same idea as the owner without knowing it already exist, he can
still claim for copyright on his own. 2 people can own copyright to
work which may look similar. UNLESS you can see there is a causal
link.
Defendant can infringe the work by only basing their work on the
claimant work.
 Eg- a third party copies a painting and the defendant then copies
that. Even though the defendant had not copied the original work,
it would still be an infringement. (direct or indirect)
Does not matter if it is a legitimate or pirated copy.
C. Defendant’s work may be derived directly or indirectly:
British Leyland v Armstrong (1986)- production of replacement
exhaust pipes for claimant’s cars indirectly copied claimant’s
original drawing even if they may not have ever seen the
drawings.
They have only seen how the drawings have been produced in a
form of exhaust pipes and created replacement exhaust pipes.
Indirectly the original drawing has been infringed. Whether the
defendant’s material derived from the claimants copyright work is
a matter of fact. It is for the claimant to persuade the tribunal or
the court this has occurred.
In doing so the claimant may use different type of evidence.
Designers Guild v Russell Williams [2000]- HOL
Facts: Claimant had produced its designer name lxia in 1994.
Fabric was made available in shops in 1995. A year later, the
claimant discovered that the defendant was selling a similar fabric
which was also based on vertical strips in alternating colours with
associated stalks and leaves scattered. However, there was several
differenced. The defendant claimed that the design was
developed by her own cherry blossom design. However, the judge
ruled that Marguerite is in fact derived from lxia. Approved by the
HOL.

House of Lords approved the inference of derivation

• Stripes with scattered flowers

• Impressionistic style, showing brushwork (brush strokes) • Stripes had rough edges
• Petal executed like a ‘comma’
• Stripes showed through some petals
• Flower heads comprised of ‘strong blobs’ rather than a realistic form

• Leaves had two distinct shades of green

“...the elements which the judge found to have been copied went well beyond the banal
and I think that the judge was amply justified in deciding that they formed a
substantial part of the originality of the work.” Plus, there was opportunity to copy
(Ixia was exhibited in a trade fair). Judge rejected the defendant’s own account as to
how she came to produce the design as her story was unconvincing.

Mitchell v BBC (2011): Here, despite the similarities, the

defendant’s work is not taken as an infringement (independent
creation). Judge Biss rejected the claim. The judge did find that
there was sufficient similarities between the characters.
Similar attire- same colour with armour and microphones, Colour
scheme, Ethnic mis, Blonde quiff of the blue character.
BBC produced evidence on Kerwhizz that they had begun to work
on this characters before Mr. Mitchell had contacted BBC and that
the Bounce Bunch characters had made available to them. There
was already a series of characters that were racing with
microphones attached to a helmet and the other features such as
the colour scheme and chunky body armour and geometric shapes
where added after Bounce Bunch was accessible to them.
The creators of Kerwhizz explained that they were inspired by shared stripes
there is Japanese anime and manga characters. The court also heard that the
design team of Kerwhizz had seen Mitchell’s proposal for Bounce Bunch because
there was no evidence that the team had seen Mr. Mitchell’s work. Hence, even
though there were so many similarities between the two works, there was no
infringement.
Bodo Sperlein Ltd v Sabichi Ltd and Another [2015]: The claimant traded in
bespoke contemporary homeware. One of the claimant’s signature collections
was a range of porcelain dinnerware, carrying a red berry design. The defendants
operated at a mass produce market, and they had imported a range of tableware
into the UK carrying a red blossom design sold through the network of shops.
 Red blossom design was very similar to the red berry design which led to an
allegation of copying. Defendants claimed independent design. The defendant’s
account on independent design did not stand up on cross examination and
neither their designer nor their director was able to rebut the infringement of
copying. There is no direct evidence of copying (by the courts).
Court notices the number of differences such as the number of branches and
berries. The court found it inconceivable that they would use the exact same
colour and shade of red as used by the claimant’s design. According to the
defendant the reason why they use that shade of red is because was the
standard colour according to their palette of colours. But the court did not accept
that evidence. The court felt that the defendants had not discharged burden of
explaining away the similarities between the two designs. Scott accepted that it
was possible that the designer here has no recollection being influenced by the
red berry design. The possibility cannot be excluded that she is forgotten such
influence or to successfully put it out of her mind.
The court says that it is likely the red berry design did play a part in the creation
of the defendant design. Hence here the court is discussing about the
unconscious copying.

Francis Day v Bron [1963]

Process of derivation may occur at subconscious level

o “...there was a definite or considerable degree of similarity between the two tunes but
that to succeed the plaintiffs must prove not only objective similarity but that this
similarity was due to an act of copying whether conscious or subconscious. ... the
composer of "Why" did not deliberately or consciously copy "In a Little Spanish Town“...
Unconscious copying is ...reproduction amounting to an infringement. It means
that a person has reproduced a substantial part of a copyright work, not because he
looked at it, or thought of the original, but because it was at the back of his mind, or on
his subconscious mind, from having heard it on the radio or elsewhere.

o “...in order to establish liability on this ground, it must be shown that the composer of
the offending work was in fact familiar with the work alleged to have been copied...”

o Court will also take into account the character of the work and degree of objective
similarity between them. Here evidence of similarity does not shift the
onus of proof on defendant, instead it rests “on the evidence as a whole”