Category: IPR Notes

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Citation – 447 U.S. 303 (1980)

Facts: In 1972, respondent Chakrabarty, a microbiologist, filed a patent application for a genetically engineered bacterium developed by him capable of breaking down multiple components of crude oil. Due to the properties of the invention it is believed to have a significant value in the treatment of oil spills. Chakrabarty’s patent claims were of three types:
1) Process claims for the method of producing the bacteria.
2) Composition of the slurry of bacteria, its carrier liquids and its application.
3) Claims over the bacteria itself.
The patent examiner (Sydney A. Diamond) allowed the claims falling into the first two categories but rejected the third claim for patent over the bacteria. His decision rested on two grounds:
(1) that micro-organisms are “products of nature,” and
(2) that as living things they are not patentable subject matter under 35 U.S.C. 101.

Issues:
1) Whether genetically engineered bacterium being living things are patentable subject matter under the statute?
2) Whether respondent’s micro-organism constitutes a “manufacture” or “composition of matter” within the meaning of the statute (Under Title 35 U.S.C , Section101).

Procedural History:
The patent examiner allowed the claims falling into the first two categories, but rejected the third claim for patent over the bacteria. Chakrabarty appealed the rejection of these claims to the Patent Office Board of Appeals and the Board affirmed the examiner on the second ground. The United States Court of Customs and Patent Appeals overturned the case in Chakrabarty’s favour, writing that “the fact that micro-organisms are alive is without legal significance for purposes of the patent law.” Sidney A. Diamond, Commissioner of Patents and Trademarks, appealed to the Supreme Court.

Law Applicable:  Title 35 U.S.C., Section 101, which provides: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

Judgment /Ratio Decidendi:

• The Supreme Court (affirmed the decision of The United States Court of Customs and Patent Appeals) held that a live, human-made micro-organism is patentable subject matter under Section 101.
  § Respondent’s micro-organism constitutes a “manufacture” or “composition of matter” within that statute.
  § Court has read the term “manufacture” in Section 101 in accordance with its dictionary definition to mean “the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.”
  § Similarly, “composition of matter” has been construed consistent with its common usage to include “all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.”
  § The patentee has produced a new bacterium with markedly different characteristics from any found in nature and one having the potential for significant utility. His invention is not a discovery but a result of human intervention and research.
  § Also, it is a non-naturally occurring manufacture or composition of matter thus making it a patentable subject matter.
  
  Conclusion:The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to “include anything under the sun that is made by man.” This is not to suggest that Section 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable under the U.S.C. Respondent’s micro-organism qualifies as patentable subject matter as it is not an unknown natural phenomenon. It is a non-naturally occurring manufacture or composition of matter marked with different characteristics from any found in nature and one having the potential for significant utility. His invention is not a discovery or nature’s handiwork, but a result of human ingenuity and research.

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Citation – AIR 1982 SC 1444

Facts:
§ Hindustan Metal Industries (Plaintiff) is a registered partnership firm carrying on the business of manufacturing brass and German silver utensils at Mirzapur.
§ Biswanath Prasad Radhey Shyam (Defendant) is a concern carrying on the business of manufacturing dishes and utensils in Mirzapur.
§ The old method of manufacturing utensils, particularly shallow dishes, was to turn scrap and polish them on some sort of headstock without a tailstock, the utensils either being fixed to the headstock by thermoplastic cement or held in the jaws of a chuck fixed to the head-stock. This system was, however, fraught with risk to the workers inasmuch as the utensils used to fly off from the headstock.
§ To introduce improvement, convenience speed, safety and better finish plaintiff invented a device and method for the manufacture of utensils and got the alleged invention patented under the Indian Patent and Designs Act, 1911.
§ The defendant started using plaintiff’s patented method for manufacturing of dishes, against which the plaintiff filed the case of infringement.
§ The defendant filed a counter-claim, praying for revocation of the patent on the grounds that the alleged invention did not involve any inventive step and has no utility.

Procedural History:  High court dismissed the plaintiff’s suit. Plaintiff appeal before the division bench of the High court. Appellate bench concluded that the method patented did involve an inventive step, thus, allowed the appeal. Dissatisfied with the holding defendant appealed to the Supreme Court.

Issue:  Whether Plaintiff’s invention does involve an inventive step, regards to what was known or used prior to the date of the patent and has utility?

Analysis:
§ The fundamental principle of Patent Law is that a patent is granted only for an invention which must be new and useful. It is essential for the validity of a patent that it must be the inventor’s own discovery as opposed to mere verification of what was, already known before the date of the patent.
§ It is important that in order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an ‘inventive step’. The improvement or the combination must produce a new result, or a new article or a better or cheaper article than before.
§ The subject of the invention was known for decades for the traditional purpose of scraping and turning utensils, with a slight change in the mode of application. The patented invention was not a manner of new manufacture or improvement, nor did it involve any inventive step having regard to what was known or used prior to the date of patent. The slight modification in the patented invention would have been obvious to any skilled worker in the field based on knowledge existing at the date of patent.

Conclusion:   The patented machine was neither a manner of new manufacture or novel improvement, nor did it involve any inventive step, having regard to what was publicly known or used at the date of the patent.

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Citation –  508 F.3d 1146

Facts:  The plaintiff in this case markets and sells copyrighted images of models (nude images). The website works on a subscription basis whereby the subscribers pay monthly fee to view these images. To view these images perfect 10 set up a members only area, the members need to use a password to log into this domain to view them. Further it licenses reduced-size copyrighted images for download and use on cell phones.
The Defendant Google operates a search engine that automatically accesses thousands of websites on the Internet and indexes them within a database stored on Google’s computers. When a Google user accesses the Google website and performs a search query, Google’s software searches its database for websites responsive to that search query. Google then sends relevant information from its index of web sites to the user’s computer. Google’s search engine provides results in the form of text, images, or videos. Google Image Search provides search results as a web page of small images called “thumbnails,” which are stored in Google’s servers. These thumbnail images are reduced, lowerresolution versions of full-sized images stored on third-party computers. When a user clicks on a thumbnail image, Google’s software directs the user’s browser to create on the user’s computer screen a small rectangular box that contains the Google thumbnail and a larger box that contains the full-size image, which the user’s computer has been instructed to access from the third-party site that houses that image (Amazon is one of these third party websites in this case).Though both the boxes appear to be coming from the same source they are actually coming from google and a third-party website. This process is called “in-line-linking”. though Google does not store these images on its server, it stores the content of the webpage in its cache, Google’s cache copy can provide a browser with valid directions to the infringing images even if the website does not have those image anymore.
Google also has a business programme called “AdSense” which generates revenue by letting website owners to register with Google and by placing HTML instructions on its web pages that signal Google’s server to place advertising on the web pages that is relevant to the web pages’ content. the participants of “AdSense” share the revenues which flow from such advertisings.
Some of the website publishers pirated perfects 10’s copyrighted images and when someone performs a search query Google automatically directs them to the webpages containing these infringing images and also provides thumbnail versions of these images to the users. Perfect 10 filed a copyright infringement action against Google, and sought a preliminary injunction to prevent Google from infringing Perfect 10’s copyright in its images and linking to websites that provide full-size infringing versions of Perfect 10’s photographs.

Procedural History:  The District Court and the Court of Appeals concluded that Google had infringed Perfect 10’s right of Display. They also held that Google’s in-line linking and framing of Perfect 10’s full-size images infringed neither Perfect 10’s display rights nor its distribution rights.

Issues:Whether Google’s use of the Thumbnail images and their process of “in-line-linking” is infringing Perfect 10’s copyrights on the images and if Google can use the ‘Fair Use’ defence against this claim?

Analysis: The judges were guided by Kelly v. Arriba Soft Corp. In this case, the plaintiff, a photographer brought a copyright infringement case against Arriba, the operator of an internet search engine as the search engine provided thumbnail versions of the photographer’s images in response to search queries. It was held that there was no copyright infringement. Fair Use Analysis:
a) Purpose and Character of the use: the court has to consider the purpose and character of the use and whether such use is of commercial or non-profit educational purposes in order to determine the extent to of the ‘transformative’ nature of the new work. To constitute transformative work, the original copyrighted work should be changed and used in a different context by the defendant. In this case Google’s use of thumbnails is highly transformative as they compile the Thumbnail images with information in a distinctive manner. Further the court found that Google’s search engine provides social benefit by transforming the original work perfect 10 into something new and informative which serves as an electronic reference tool, thereby providing an entirely new use for the original work. In this case though the entire original work is taken, it serves an entirely different function than the original, and therefore the use is transformative. The significantly transformative nature of Google’s search engine, particularly in light of its public benefit, heavily outweighs Google’s superseding and commercial uses of the thumbnails with regards to Google’s AdSense.
b) Nature of the copyrighted work: Perfect 10 had already exploited the right to first publication and had gained commercially; therefore it was not entitled to get protections that are available for unpublished works.
c) The amount and substantiality of the portion used: The Third factor examines the relation between the amount and substantiality of the portion used in relation to the copyrighted work as a whole. The court says Google’s use of the entire photographic image was reasonable in light of the purpose of a search engine and since using less than the entire image would defeat the purpose of the search engine to a computer user.
d) Effects of use on the market: this factor assesses the effects of the use upon the potential market for that things/product or the value of the copyrighted work. Google’s use of thumbnails did not hurt Perfect 10’s market for full-size images. Since Google’s thumbnail images were highly transformative, and there was no evidence of market harm to Perfect 10’s full-size images any potential harm to Perfect 10’s market remains hypothetical.

Conclusion:Google’s use of Perfect 10’s thumbnails constituted fair use. This is because Google had put Perfect 10’s thumbnail images to a use fundamentally different than the use intended by Perfect 10 and therefore provided significant benefit to the public.

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Citation – 2003 (5) BomCR 404

Facts:
The plaintiff No. 1 is a Company engaged in the business of television programming, video programming, multimedia programming and feature films, television serial production etc.
The concepts generated by the Plaintiffs are registered with Film Writers’ Association and the titles for such programs are registered with Indian Motion Pictures Producers’ Association. The concepts generated are expressed through concept notes, character sketches, detailed plots and episodes, main story lines that are put down in writing.
They worked on various concepts and came up with a concept titled ‘Kanhaiyya’ which was registered with the Film Producers’ Association.
The employees of the plaintiff No. 1 presented the concept under the title ‘Kanhaiyya’ to Director – Ideation of defendant No. 1 and other employees of the defendant No. 1.
The pilot of ‘Krish Kanhaiyya alongwith the developed concept was sent to the defendant No. 1 around 10th October 2002 and was also sent to Star TV, Sony TV and Sahara TV since the defendant No. 1 had not yet made up their mind as to whether to air and broadcast the serial ‘Krish Kanhaiyya’.
However, the plaintiffs did not hear from the defendants and they therefore pursued the production of the show with Sony Entertainment Television.
Soon after Sony Entertainment Television expressed its willingness to produce this concept of Kanhaiyya, the plaintiffs learnt that the defendants were doing the show based on the concept of ‘Kanhaiyya’.
As a result, M/s. Sony Entertainment Television has declined to sign the contract after coming to know that M/s. Zee Television of the defendants is going to produce and broadcast serial ‘Kanhaiyya’.

Issues:
1) Was there copying of substantial elements of the Plaintiff’s work by the Defendants?
2) Was there a copyright infringement by the defendants?

Holding:Yes, the Defendant’s work was similar to the Plaintiffs’ in material and substantial aspects. There was a breach of confidentiality as the act of the Defendants affected the goodwill of the Plaintiffs.

Analysis:The court considered the two works involved in this case with the observations and impressions of the average viewer. They found striking similarities in the two works which were not mere chances. Thus, the only inference that can be drawn from the material available on record is unlawful copying of the plaintiffs’ original work. If the concept of Lord Krishna in child form is removed from the serial of the defendants, the programmes would become meaningless. In order to find out similarity in the two concepts, what is to be seen is the substance, the foundation, the kernel and the test as to whether the reproduction is substantial is to see if the rest can stand without it. If it cannot, then even if many dissimilarities exist in the rest, it would nonetheless be a substantial reproduction liable to be restrained.

Plaintiff’s ‘Krish Kanhaiyya’	Defendant’s Kanhaiyya
Family is rich and dysfunctional	Family is rich and dysfunctional
Main woman protagonist-Step mother, most affected by the environment in the house, prays for help to God	Main woman protagonist-Dadi maa, most affected by the environment in the house, prays for help to God (Lord Krishna)
The prayer is answered soon by the arrival of Kanhaiyya	The prayer is answered soon by the arrival of Kanhaiyya
God is in Bal Krishna form	God is in child form
The interaction with Kanhaiyya is heart warming and consoling and gives some support to the main woman protagonist	The interaction with Kanhaiyya is heart warming and consoling and gives some support to the main woman protagonist
Kanhaiyya attaches himself to the seeker of help	Kanhaiyya attaches himself to the seeker of help
Opening background is a flute sound – An instrument normally thought to be played by Lord Krishna	Starts with rendition to Lord Krishna
Opening title has a prominent peacock feather and the character of Lord Krishna on it with the title Krish Kanhaiyya written across it.	The opening title has the peacock feather with the main character’s face and Kanhaiyya written all across it
Their music is flute and other instruments	Background is from Gita; Implying that it is Lord Krishna’s words.

Reasoning:
a) The concept developed by the plaintiffs is indeed novel, in the sense that Bal Krishna starts residing in the family whose life is disturbed and solves their troubles. The idea is developed into an expression, in the sense that concepts are prepared and a pilot was also prepared which was admittedly submitted to the defendant No. 1.
b) Keeping in view numerous striking similarities in two works and in the light of the material produced on record, it is impossible to accept that the similarities in two works were mere coincidence.
c) It is undoubtedly true that the law does not recognize property rights in abstract ideas, nor is an idea protected by a copyright and it becomes copyright work only when the idea is given embodiment in tangible form. When an idea is given embodiment in a tangible form it becomes subject of common law property rights which are protected by the courts at least when it can be said to be novel and new. The present case is not a case of a mere idea.
d) The work of the defendants is similar in material and substantial aspects with hat of the plaintiffs. The common feature is a dysfunctional family and the fact that the Lord Krishna enters the life of the family, which has many problems and troubles, solves them and becomes succor to the family. In the defendants’ programmed, the child is called Kanhaiyya which in India unmistakably points to Lord Krishna. The visual that goes on prior to the commercial break shows the child with peacock feather, which is again something unmistakably, associated with Lord Krishna. Moreover, through the episode, the verses of the Bhagvat Gita are chanted in the background. It is therefore difficult to accept the dissimilarity relied upon by the defendants such as the fact that the child in their episode is not ‘divine and does not perform miracles’ and therefore there is a complete dissimilarity between the main role in the two concepts.
e) Even the character sketches in both works are similar. In both the father is a businessman having three children. In ‘Krish Kanhaiyya’ elder son is a cricketer, the second child is a budding scientist and does not sleep all night whereas in defendants’ serial the second child who is a computer geed but does not sleep all night and spends too much time on computer. In ‘Krish Kanhaiyya’ youngest child is a daughter and talks to people through her doll whereas in defendants’ serial youngest child is also a daughter and talks in third person.
f) Having considered two works involved in this case not hypercritically and with meticulous scrutiny but by the observations and impressions of the average viewer, we find that striking similarities in two works cannot in the light of the material placed on record be said to constitute mere chance. We feel that the only inference that can be drawn from the material available on record is unlawful copying of the plaintiffs’ original work.

Rule:In order to find out similarity in the two concepts, what is to be seen is the substance, the foundation, the kernel and the test as to whether the reproduction is substantial is to see if the rest can stand without it. If it cannot, then even if many dissimilarities exist in the rest, it would nonetheless be a substantial reproduction liable to be restrained.

Conclusion :This case was a follow up to the RG Anand case where both the Substantiality test and the Concept and Feel Test were applied. The only difference between the two cases is that unlike in RG Anand, in the present case, the dissimilarities do not outweigh the similarities between both the works. Therefore, there was an infringement of the Plaintiffs copyright.

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Citation –(AIR 1987 Del 13)

Facts: P (Mannu Bhandari) was the author of novel ‘Aap ka Bunty’. She assigned the filming rights of her movie to the D (Kala Vikas Pictures Pvt. Ltd.). P has filed a case so as to restrain the screening of the film made by D. In P’s opinion while her novel was a literary work, the film has been heavily mutilated and commercialised and if released will lower her reputation of a research scholar in the eyes of public public and her admirers as they are likely to conclude that she has fallen prey to big money in the film world and has consented to such mutilation and distortions.

Procedural History:  The case was first filed in the District court where the learned Additional District Judge, denied P permanent injunction against the screening of the film as in his opinion P suffered no loss of reputation. The case was settled by an out of court settlement between the two parties and the court merely ruled on question of law due to lack of precedent on power of court and rights of author under Section 57 of the copyright act.

Issues:
1) What is the extent of the powers of the court under Section 57?
2) Whether assignee of a copyright can claim any rights or immunities based on the contract which is inconsistent with the provisions of Section 57?
3) Whether the movie can be filmed as it is with the changes?

Holding:  For the purpose of Section 57, the modification allowed should not be so serious that the modified form of the work looks quite different work from the original.
§ The assignee of a copyright cannot claim any rights or immunities based on a contract which is inconsistent with the provisions of Section 57.
§ Section 57 protests social interest in art and culture and not merely the interest of the author.
§ The court directed to remove the scenes which were too crude, brash and nauseating and not part of the original movie.

Rationale:
§ The Court held that when it passes a judgment under Section 57 it does not sit as a sentinel of public morals. Accordingly, the court cannot impose its views on the works of art. The concern of the Court is to merely examine how for the new ‘avatar’ is true and authentic and what changes are necessary due to constraints of a medium.
§ Section 57 confers additional special rights on the author which can be seen by the fact that the right exists even after the assignment of the copyright and accordingly a contract cannot negate the special rights and remedies guaranteed by Section 57.

Rule:In an enquiry under Section 57, the Court does not sit as a super-censor. It’s only function is to see whether there are “mutilations” or “distortions”. A contract cannot negate the special rights conferred upon an author under Section 57 of the Copyright Act.

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(2002) 63 DRJ 558

Facts:  Mr. Amar Nath Sehgal is the world-renowned sculpturist and has been conferred with several awards for his beautiful creations and contribution to the Indian heritage. In the year 1957, the Government of India commissioned Mr. Sehgal for the creating bronze mural for the most prominent International Convention Hall in the Capital of the Country. The Bronze sculpture of about 140ft. span and 40ft. sweep took five years to complete and was placed on the wall of the Lobby in the Convention hall. This embellishment on a national architecture became a part of the Indian art heritage.
In the year 1979 when government pulled down the sculpture from the walls of ‘Vigyan Bhawan’ and dumped it in the storeroom. When Mr. Sehgal came to know of this ill treatment, he made representations to the government authorities for restoration of the mural. Unfortunately, all his pleas fell on deaf ears. Aggrieved by the apathy of the government officials, Mr. Seghal filed a petition in the Delhi High Court for recognition and enforcement of his rights on the mural.

Laws involved:Section 57 of the Copyright Act.

Issues:
1) Whether the plaintiff (Amar nath Sehgal) is entitled to the special rights u/s 57 of the Copyright Act even after the copyrights are vested in the interest of the defendants?
2) Whether there are any damages in respect of any distortion, mutilation, modification or other act in relation to the said work, which is done before the expiration of the term of copyright?

Analysis:  The work of art or any work which have some kind of creativity involved also have some kind of sentiments or the sense of ownership attached to it. These moral values should always be respected. Special rights u/s 57 of the Copyright Act are very important laws, which give the rights to the author or any person who makes anything to claim the damages against any kind of distortion, mutilation or modification without the consent of the author. This is the landmark case in which the moral rights were considered.
The judgment states that these rights are independent of the author’s copyright. They exist even after the assignment of the copyright, either wholly or partially. Secondly, The court stated that the defendants moved the mural without the prior permission of the author and in addition to it the mural was also damaged from the corners. The mural was moved away from the public view, which clearly shows that it was prejudicial to the author’s honor or reputation.

Judgment:  The Court held that the mural whatever be its form today is too precious to be reduced to scrap and languish in the warehouse of the Government of India. It is only Mr. Sehgal who has the right to recreate his work and therefore has the right to receive the broken down mural. He also has the right to be compensated for the loss of reputation, honor and mental injury due to the offending acts of UOI”.
The Court passed mandatory injunction against the UOI directing it to return the mural to Mr. Sehgal within two weeks from the date of judgment. Court passed a declaration transferring all the rights over the mural from UOI to Mr. Sehgal and an absolute right to recreate the mural and sell the same. The Court also granted damages to the tune of Rs.5 lacs and cost of suit to Mr. Sehgal against UOI.

Conclusion:  The Court favored the plaintiff and stated that the defendants are liable to pay the damages and also to return the mural to its author. The Court also stated that prior permission should always be taken before taking any such action.

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Citation –  AIR 1977 SC 1443

Note – Please consult the Copyright (Amendment) Act, 2012 to check the current position of law.

IPRS –>	Producer –>	Composers/Lyricist
Society charging fees for public performances of musical works.	Objected claiming that they are the first authors and they shouldn’t pay any fees	The original composers do not get right to their work.

Facts:

• IPRS was a company incorporated for charging fees for granting licenses for performance in public of all existing and future Indian Musical works.
• The Producers Association objected to this under section 34 of the Copyrights act claiming that the producers being the authors and first owners of the copyright in the cinematographic films.
• The Cinematograph Exhibitors Association of India also objected to this. They averred that Copyright in a cinematographic film which vested in the producers meant copyright in the entirety of the film including the musical work incorporated in the soundtrack of the film and the right to perform the work in the public.

Issue:   Whether the composer of lyric or musical work retains the copyright in the lyrics or the music work after he has allowed the producer to use that lyric or music in the cinematographic film?

Procedural History:   Copyright Board held that the composers of lyrics and music retained the copyright in their musical works incorporated in the soundtrack of cinematographic films provided such lyrical or musical works were printed or written and that they could assign the performing right in public to the IPRS. It also held that IPRS could collect fees and charge royalties in respect of those films. High Court reversed the order. Hence this appeal by IPRS.

Holding:   The Court held in the favour of the producers ordering that they are the first owners of the cinematographic film. And since there is a contract of service and the film is made on the direction of the producers, they will have right over the soundtrack and IPRS can’t charge any fees.

Analysis:

• A composer who composes a lyric or music for the first time for a valuable consideration for a cinematographic film does not acquire any copyright. The owner of the film at whose instance the composition is made becomes the first owner of the copyright in the composition.
• The composer can claim a copyright in his work only if there is an express agreement between him and the owner of the cinematographic film reserving his copyright.
• Though Section 18 of the Act confers power to make a contract of assignment, the power can be exercised only when there is an existing or future right to be assigned and that in the circumstances of the present case, assignment, if any, of the copyright in any future work, is of no effect.

Rule: The rights of the music composer or lyricist can be defeated by the producer of a cinematographic film in the manner laid down in provisos (b) and (c) of Section 17 of the Act.

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Citation – [1900] AC 539

Facts: Earl of Roseberry gave public speeches on five occasions. Reporters from The Times and other newspapers attended them. The reporters from The Times had taken down shorthand notes of the speeches and later the corrected, revised and punctuated their reports for publication in Times. Reporters were employed under the terms that the copyright in all the materials composed by them for The Times belonged to the proprietors. D published a book on Earl’s speeches which substantially included reports published in The Times. Lord Roseberry did not claim any copyright. The proprietors, being the copyright holder brought an action for breach of copyright and also sought for injunction, damages and costs.

Procedural History:
§ The case was reported to the Chancery Division where North J. held that the reporters have copyright in the report and not the speech and entitled them for injunction against D. D appealed.
§ The Court of Appeal (CoA) held that a report is not an actual composition and there is no copyright and allowed D’s appeal.
§ P appealed in House of Lords (HoL), the writing court. The writing court reversed the judgment of CoA and restored North J.’s decision and granted a perpetual injunction.

Issue: Whether the reporters of the speech could be considered “authors” under the terms of the Copyright Act?

Holding:P won. It was held that a person who makes notes of a speech delivered in public, transcribes them, and publishes in a newspaper a verbatim report of the speech, is the “author” of the report within the meaning of the Copyright Act 1842, is entitled to the copyright in the report and can assign the copyright.

Rationale: Copyright existed in reports prepared by shorthand writers’ of public speeches as ‘original literary’ works. The speeches were made by the Earl of Rosebery in public when reporters were present. The reporters made notes in shorthand, transcribed them, corrected, revised and punctuated them and published them in newspapers as verbatim reports of the speeches. A speech and a report of a speech are two different things. Lord Roseberry was the author of his speeches. The shorthand writers were the authors of their reports of his speeches. They spent effort, skill and time in writing up their reports of speeches that they themselves had not written. Even though the reporters had intended only to reproduce the speeches as accurately as they could, the works they prepared remained original works. This is an example of sweat of the Brow Doctrine.

Rule: The creator of a copyrighted work, even if it is completely unoriginal, is entitled to have his effort and expense protected, and no one else may use such a work without permission, but must instead recreate the work by independent research or effort.

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Citation –[1964] 1 W.L.R. 273

Facts: Since 1951 Williams (respondents), who were well-known bookmakers, had sent their customers each week fixed odds football betting coupons arranged in a certain general form. In 1959 Ladbroke (appellants), who were also bookmakers, started to send out coupons closely resembling the respondents. It appeared that the respondents had not altered the general form of their coupon since 1951. A coupon was a sheet of paper on which’ were printed several lists of forthcoming matches. The respondents’ coupon contained 16 lists, each with an appropriate name. The appellants’ coupon contained 15 lists. The lists offered by the appellants were almost identical with those offered by the respondents in their corresponding lists. What the appellants adopted from the respondents were the types of wagers and to a large extent the arrangement and the heading. The only differences were that the appellants devised new headings and they worked out for themselves the different odds offered in respect of the various kinds of bets which, accordingly, they did not copy. And it was impossible to copy the selections of matches: the selections must be from the matches to take place in the following week, so there would not be time for one bookmaker to copy from .the coupon of another matter which alters every week. The coupons of some 20 other firms in the business were produced at the trial, and, while they have a general similarity, they vary very much in the nature of their lists and the variety of bets offered in respect of many of the lists. It is not disputed that a vast amount of skill, judgment, experience and work has gone into building up the respondents’ coupon.

Procedural History: Judgment of Lloyd-Jacob J. given on June 26, 1962, held (inter alia) that the respondents’ claim to copyright in their fixed odds football coupon or coupons failed on a point of law but adjudged that the respondents should recover one half of their agreed or taxed costs. The Court of Appeal held that the respondents were entitled to copyright and granted them an injunction and awarded the respondents the sum of 40s. as damages. This case is an appeal to the order from The Court of Appeals.
Issues:
1) Whether or to what extent copyright attaches to these coupons? In whole or in part?
2) If the coupons are subject to copyright, has enough copying been done to amount to infringement and whether it was proper to look at the several parts of the work separately?

Judgment: Copyright Act is not concerned with the “originality of ideas”, but with the expression of thought, and, in the case of ‘ literary work, with the expression of thought in print or writing. The originality which is required relates to “the expression of the thought”. As regards compilation, originality is a matter of degree depending on the amount of skill, judgment or labour that has been involved in making the compilation. The precise amount of knowledge, labour, judgment or literary skill or taste which the author must bestow in order to acquire copyright must in each case be very much a question of degree. Rough practical test is that “what is worth copying is prima facie worth protecting”. When all the hard work has been done in deciding upon the wagers to be offered, there still remains the further distinct task, requiring considerable skill, labour and judgment (though of a different kind) in the way in which the chosen wagers are expressed and presented to the eye of the customer. The extent to which the appellants copied from the respondents’ coupon appears to amount to be a very substantial part of the coupon both in quantity and quality. Therefore, there has been an infringement in this case.

Conclusion:This case is important for a better understanding of copyright because it establishes that for a work to be protected under copyright its expression must be original. In order to determine originality you must see the facts of the case and determine if any skill, labour and judgment was used to make the work, or any part of the work. If so, the whole work will be copyright protected and it is no defence to claim that you only copied the parts that didn’t require skill or judgement. Here, respondents’ coupon was a compilation and so an original literary work, the subject of copyright and appellants had reproduced a substantial part of it, therefore breached.

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