This is the conclusion to a series of blog posts looking at the concept of ‘originality’ in copyright law.

Go to: Introduction -> Part II -> Part III -> Part IV -> Conclusion

To conclude this discussion, I shall briefly return to the seminal case of Walter v Lane. The judgements of their Lordships aptly illustrate the three main divergent theoretical underpinnings that any articulation of an originality standard must wrestle with: the value of labour1, the public interest2, and the concept of authorship3. In this series of posts, I have argued that a conception of ‘originality’ based on labour alone, as it currently stands in a number of common law jurisdictions – such as England and Wales – is inadequate due to its impact on the public domain, the fact that it tilts the balance too far in favour of the ‘creator’, and the availability of alternative means of protection. I have also considered the public interest approach, which informs the US & Canadian cases, whereby the label ‘original’ is granted, at least partly, on the basis of the public interest in protecting such works and not solely on the basis of effort or authorial input. Finally, I have considered the civil law and EU approach which seeks genuine authorship, although, as we have seen, this approach has been somewhat tempered.

It has also been observed that there has been a departure from the labour standard in a number of Commonwealth jurisdictions4, and some convergence globally towards a standard based on creative choices, which is perhaps more in line with the spirit of the Berne Convention5.

While I have argued vigorously against a low standard based on labour alone, and would endorse a standard such as the one presented in the CCH case, which espouses both the public interest and the author’s rights, it must be emphasised that originality is only a gateway, and that the infringement stage may also be used as a means to flesh out a thinner level of protection for utilitarian works.

1. See Earl of Halsbury in Walter v Lane (supra) at 547 and Lord Davey at 552 [↩]
2. See Lord Brampton at 559, ibid. [↩]
3. See Lord Robertson at 562 and Lord James at 553, ibid. [↩]
4. Canada: see Part III; 
Australia: IceTV Pty Limited v Nine Network Australia Pty Limited (2009) ALR 386 paras 343-344; 
India: Eastern Book Company v D.B. Modak, (2008) 1 SCC 1 at 59-64 [↩]
5. RICKETSON & GINSBURG (supra); GERVAIS, D (supra) [↩]

This is part IV of a series of blog posts looking at the concept of ‘originality’ in copyright law.

Go to: Introduction -> Part II -> Part III -> Part IV -> Conclusion

A number of jurisdictions have, in order to avoid an overly expansive scope for copyright when the industriousness standard is applied, articulated a standard which requires an extra element beyond mere labour and the absence of copying.

A. “Creativity” or “judgement and skill”

In the United States, a number of federal courts included elements of creativity within the definition of originality1, whereas others applied the English industriousness test2. This uncertainty was resolved when the US Supreme Court held, in its Feist decision, that the former approach was to be followed3. Justice O’Connor stated that in order for a work to be considered ‘original’ it must not only be an independent creation, it must also show a “modicum of creativity”4. Is such a threshold too high?

This issue was looked at by the Canadian Supreme Court in 2004 in CCH5, where it found originality to require independent production involving skill and judgement.

In reaching its decision, the court considered the labour standard and found it to be ‘too low’ and as “[shifting] the balance […] too far in favour of the owner’s right, and [failing] to allow copyright to protect the public’s interest in maximizing the production and dissemination of intellectual works”6. It also considered the Feist test and rejected it as too ‘high’, wrongly assimilating it to a novelty or uniqueness requirement7.

The US approach can thus be seen to subsume the author’s private rights as a means to promote progress for the public benefit8. By contrast, the Canadian approach considers author’s rights to be a means to secure the public benefit, as well as an end in themselves9. It is submitted that the latter approach is preferable, providing a more nuanced framework in which to decide the desired level of protection.

The resulting tests bear close resemblance to the ‘creative choices’ doctrine espoused in several civil law jurisdictions.

B. Personal intellectual creation

1) The Civil Law approach

The traditional originality test in France and Germany fully embraces a subjective approach, based on a Hegelian philosophy, by requiring that the work express or reflect the author’s personality10). Indeed, the French Supreme Court decisively rejected a labour approach11. However, as a result of the difficulty in applying this standard to utilitarian works, the French courts developed a level of abstraction for the authorial test by finding the “choices and intellectual operations required to create [a bilingual dictionary]”12 to allow the resulting compilation to meet the threshold.

This test has been termed the “creative choices” standard by commentators13). At its core it requires that the author make choices that were neither guided by the format or function, nor mechanical. Such an approach has, to a certain extent, been adopted in a number of civil law jurisdictions including Switzerland14, the Netherlands15, and Belgium16.

2. Originality on the European level

The ECJ examined the issue of originality in its Infopaq17 case, where it held that the EU originality test (“author’s own intellectual creation”18 applies beyond the ‘works’ designated in a series of directives – namely computer programs19, photographs20, and databases21 – so as to encompass all categories of works under the Berne Convention into the European sphere.

The likely consequence of this decision is that a number of works under the more permissive English copyright regime, as seen above, will no longer attract protection22. This is to be welcomed and it is hoped that it will bring about a further departure from the minimalist English standard.

1. Burrow-Giles Lithographic Co. v Sarony, 111 U.S. 53, 60 (1884); See also MEADE, T. 1994. Ex-Post Feist: Applications Of A Landmark Copyright Decision. Journal of Intellectual Property Law. 245 (2), at 245 [↩]
2. DOWD, J. 1992. A Selective View Of History: Feist Publications, Inc. v Rural Telephone Service Co. Boston College Law Review. 137, at 138-39 [↩]
3. Feist (supra) at 344-351 [↩]
4. Ibid. at 346; see also Part II [↩]
5. CCH (supra) [↩]
6. Ibid. at 24 [↩]
7. See Justice O’Connor in Feist (supra) at 345, 358 [↩]
8. Ibid. at 349 per Justice O’Connor, quoting the Constitution of the United States of America, Art I, §8, cl 8 [↩]
9. Théberge v Galerie d’Art du Petit Champlain Inc. [2002] 2 S.C.R. 336 paras 30-31 [↩]
10. GERVAIS, D. 2002. Feist Goes Global: A Comparative Analysis of the Notion of Originality in Copyright Law. Journal of Copyright Society of the U.S.A., 49 (summer 2002) at 968; 
CA Paris, 1e ch., May 22, 1990, Légipresse 1990, I, at 67; 
Bundesgerichtshof [BGH] May 9, 1985, Entscheidungen des Bundesgerichtshofes in Zivilsachen [BGHZ] 94 (F.R.G. [↩]
11. Cass. 1e civ., May 2, 1989: JCP G 1990, II, 21392, note A. Lucas; RIDA 1/1990, at 309 [↩]
12. CA Paris, 4e ch., Mar. 21, 1989: 142 RIDA 333, 338-39 cited in GERVAIS at 969 [↩]
13. GERVAIS (supra) at 975; HARIANI & HARIANI (supra [↩]
14. Van Dale v Romme II, HR Apr. 1, 1993, IER 1993 (3) at 82 [↩]
15. GERVAIS (supra) at 969 citing BANNELET & EGLOFF in note 148 [↩]
16. Cass. civ. Apr. 27, 1989: R.W. 1989-90, at 362 [↩]
17. Infopaq International A/S v Danske Dagblades Forening (C-5/08) [2009] ECDR 16 [↩]
18. Directive 2006/116/EC of the European Parliament and of the Council of 12 December 2006 on the term of copyright and certain related rights, article 6) [↩]
19. Directive 2009/24/EC of the European Parliament and of the Council on the legal protection of computer programs [↩]
20. Duration directive [↩]
21. Database directive [↩]
22. Infopaq (supra) paras 33-37 [↩]

This is part III of a series of blog posts looking at the concept of ‘originality’ in copyright law.

Go to: Introduction -> Part II -> Part III -> Part IV -> Conclusion

A. The Lockean inspired test of industriousness 

The amount of work expended in the creation of a work is one of the criteria which some judges have used as a test for originality1. This has been England’s traditional standard, drawing close analogies to Locke’s labour theory of ‘just desserts’, whereby the labourer deserves to be rewarded for his efforts in producing the work2.

Under this standard, if a work is created through the labour of an individual, irrespective of any lack of creative input or of mere statement of facts, the originality threshold will be met3, provided the input is not trivial4. There is perhaps no better case to illustrate this than Walter v Lane5, where copyright was found to have subsisted in the report of public speeches by Lord Rosebery. Shorthand notes had been taken by a reporter; they were then transcribed, revised and corrected before publication. The effort, skill and time expended by the writer was found to be sufficient for the work to be considered ‘original’.

This approach was confirmed as good law in Express Newspapers6. Similarly in Ladbroke7, Lord Pearce found the only requirement of originality to be: “[that] the work should not be copied but should originate from the author”8.This minimalist standard is also to be found in New-Zealand9 and South Africa10.

The two main arguments in favour of this approach, according to Cornish and Llewelyn11, are (i) a maximal reduction in the scope of the subjective element/qualitative requirements in deciding what is to be protected, and (ii) the protection of labour and investment. As outlined in Part II, I believe that the first argument is a valid concern and, I will, therefore, look at its implications when examining higher thresholds in Part IV. I shall now address the second argument.

B. The problem with mere labour

1. The protection of facts and tipping the scales in favour of the ‘creator’

In Feist (See Part III), whilst rejecting this approach, the US Supreme Court exposed the following flaw in the labour standard:

“[this extends] protection in a compilation beyond selection and arrangement — the compiler’s original contributions — to the facts themselves [by adopting the] “sweat of the brow” [test] courts thereby eschewed the most fundamental axiom of copyright law — that no one may copyright facts or ideas”12.

This critique was also cited and approved by Chief Justice McLachlin in the Canadian CCH case13.

BC Jockey Club v Standen14 provides us with a useful illustration of the dangers inherent in the overreach of copyright into facts. In this case, the claimants produced a publication outlining information on horse racing to take place for the day ahead. This work was adopted by the defendants. It was, however, in a different format and included additions and comments. The Court of British Columbia, finding for the claimants, based its decision on the cost and the “painstaking labour” involved15, thereby granting a ‘quasi-monopoly’ over the information at hand.

I use the term ‘quasi-monopoly’ since the information contained in this work is, theoretically at least, capable of being recorded, analysed and published by another, thereby circumventing liability. There are, however, situations where the possibility of independent discoverability is no more than a fiction, thus conferring this quasi-monopoly over facts16.

As noted by Craig17, this indirect grant of power over information runs contrary to fundamental values such as the free flow of knowledge and information into the public domain, thereby hindering social and scientific progress18. In response to this, it has been suggested19 that the doctrines of ‘fair use/dealing’ may be used to temper the effect of a low labour-based threshold. In light of the narrow construction of these doctrines20, I remain unconvinced by this argument.

Secondly, by requiring each author to independently discover the facts, this approach results in a duplication of effort, without providing any benefit to society nor adding any value to the work itself21.

It is conceded that an economic argument may be deployed to the effect that exclusivity should be granted over the collection of some information in order to encourage what may be a desirable activity22.

In any case, if such an argument were to hold sway it may be addressed by considering alternative means of protection.

2. The availability of alternative means of protection

As Hariani & Hariani convincingly argue, “it is not the mandate of copyright to protect all effort”23. As such, one may want to turn to other legal mechanisms for protection such as: (i) contractual confidentiality clauses; (ii) unfair competition rules24; (iii) trade secrets protection;  (iv) the tort of misappropriation; (v) sui generis legislation25.

One of the most effective sui generis protection systems is undoubtedly the European Database Directive26. This directive introduces a dual-layer system, under which any original form of presentation or selection of data is covered by copyright, while the data itself is granted sui generis protection.

This leads us to the conclusion that a low threshold for originality cannot be justified on the basis alone that the creations, that would be excluded from a potentially higher threshold, would be without any protection at all.

3. A departure from the spirit of international law?

Furthermore, it may be argued that granting creations the status of ‘work’ on the basis of labour alone, goes against the spirit, if not the letter, of the Berne Convention27. It is, indeed, hard to reconcile such a standard with the term “intellectual creation”28.

1. See for eg. Jeweler’s Circular Publishing Co., 281 F. at 88 [↩]
2. HUGHES, J. 1988. The Philosophy of Intellectual Property. Georgetown Law Journal. 77 (1988), at 6-28 [↩]
3. See Ladbroke v William Hill [1964] 1 All ER at 465; LADDIE, H, PRESCOTT, P, VICTORIA, M. 1995. The Modern Law of Copyright and Designs. 2nd ed. London: Butterworths. at 46; BAINBRIDGE, D. 2002. Intellectual Property. 5th ed. London: Longman. at 36 [↩]
4. Redwood Music v Chappell [1982] RPC 109 at 115 [↩]
5. Walter v Lane (1903) All ER Rep Ext 1666 [↩]
6. Express Newspapers v News (U.K.) Ltd. [1990] 1 W.L.R. 1320 at 365-366 [↩]
7. Ladbroke v William Hill [1964] 1 All ER [↩]
8. Ibid. at 291; but see Interlego AG v Tyco Industries Inc [1989] AC 217 (mere copying of drawings) [↩]
9. The University of Waikato v Benchmarking Services Ltd. (2004) 8 N.Z.B.L.C. 101. [↩]
10. Econostat (Pty) Ltd v Lambrecht 89 JOC (W); Klep Valves (Pty) Ltd v Saunders Valve Co Ltd 1987 2 SA 1 (AD) [↩]
11. CORNISH & LLEWELYN. 2007. Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights. 6th ed. London: Sweet & Maxwell. at 422-425 [↩]
12. Feist at 353 [↩]
13. CCH (supra) at 23 [↩]
14. British Columbia Jockey Club v Standen (c.o.b. Winbar Publications) [1985], 22 D.L.R. (4th) 467 [↩]
15. Ibid. at 470 [↩]
16. CRAIG, C. 2007. Resisting Sweat and Refusing Feist- Rethinking Originality After CCH. UBC Law Review. 40 (1), at 84 [↩]
17. Ibid. at 85 [↩]
18. See CRAIG, C. 2002. Locke, Labour and Limiting the Author’s Right: A Warning against a Lockean Approach to Copyright Law. Queen’s Law Journal. 28 (1); LITMAN, J. 1990. The Public Domain. Emory Law Journal. 39, at 965-1023 [↩]
19. Per Linden JA in CCH Canadian Ltd. v Law Society of Upper Canada, (Federal Court of Appeal) [2002] 4 F.C. 213 para 59 [↩]
20. SENFTLEBEN, M. 2010. Bridging the Differences between Copyright’s Legal Traditions – The Emerging EC Fair Use Doctrine. Journal of the Copyright Society of the U.S.A. 57 (3), at 521; see also NLA v Meltwater [2011] EWCA Civ 890 [↩]
21. See Rosemont Enterprises, Inc. v Random House, Inc., 366 F.2d 303 at 310 cited in Feist (supra) at 354 [↩]
22. See LANDES, W & POSNER, R. 1989. An Economic Analysis of Copyright Law. Oxford Journal of Legal Studies. 18 (325) [↩]
23. HARIANI, K & HARIANI, A. 2011. Analyzing “Originality” in Copyright Law: Transcending Jurisdictional Disparity. IDEA: The Intellectual Property Law Review. 51 (3) at 510 [↩]
24. Copyright used as a substitute for unfair competition: Exxon v Exxon Insurance, [1982] R.P.C. 69 [↩]
25. See for eg: Collection of Information Anti-piracy bill –  H.R. 2652 (105th US congress) [↩]
26. Directive 96/9/EC of the European Parliament and of the Council on the legal protection of databases [↩]
27. RICKETSON & GINSBURG. 2005. International Copyright and Neighbouring Rights: The Berne Convention and beyond. 2nd ed. Oxford: Oxford University Press. para. 8.03 [↩]
28. See part II.; GERVAIS, D. 2004. The compatibility of the skill and labour originality standard with the Berne Convention and the TRIPs Agreement. European Intellectual Property Review. 26 (2), at 10 [↩]