Substantial Taking

Section 16(3)(a) CDPA provides that the exclusive rights conferred by copyright apply in
relation to the entire work, as well as in relation to a substantial part of the work. For
example, it is an act of infringement to copy an entire copyright book, as well as to copy
a substantial part of that book. It follows that it is not infringement to do any of the
restricted acts in relation to an insubstantial part of the copyright work.

Accordingly, once the claimant has established a causal connection between his/her work
and the defendant’s work, the next requirement is to prove that the defendant has taken
the whole or a substantial part of the claimant’s work. In other words, this inquiry can
be broken down into the following two steps –

 firstly, identifying what has been “taken” (e.g., copied) from the claimant’s
work by the defendant
 second, does what has been taken by the defendant amount to the whole or a
substantial part of the claimant’s work?

It should be noted that it is irrelevant whether the part that is taken is or is not a
substantial part of the defendant’s work. For example, it would be infringement to
include a photograph taken by the claimant in the defendant’s magazine, even though the
photograph may not amount to a substantial part of the magazine.

Identifying the parameters of the claimant’s work

In order to decide whether what has been taken by the defendant amounts to the whole or
a substantial part of the claimant’s work, it is first of all necessary to identify the
parameters of the claimant’s work.

For example, in Hyperion Records v Warner Music, the defendant had incorporated eight
notes from the claimant’s sound recording O Euchari in their record Happiness. While it
was clear that O Euchari was a work, the claimant also argued that the eight notes
sampled were a distinct copyright work in their own right. If this was accepted, there
would clearly be infringement since 100 percent of the “work” would have been copied.
However, in this case Judge Laddie refused to hold that the eight notes could be
treated as a “work” in their own right.

In Newspaper Licensing Agency v Marks and Spencer, the House of Lords had to decide
on the parameters of a “published edition” for the purpose of copyright in the

Shihan Ananda LLB (Hons) (London)

typographical arrangement of a newspaper. The defendant, Marks and Spencer,
subscribed to a press-cutting service, where it received copies of newspaper articles from
the claimant’s newspapers. It in turn made copies of some of these articles and distributed
them within the company. The question arose whether this amounted to the taking of a
substantial part of the typographical arrangement of the claimant’s newspapers.

The House held that while each article in the newspaper attracted separate literary
copyright, it followed from the definition of the term “published edition” in section 8(1)
that the “edition” was the “product, generally between covers, which the publisher offers
to the public.” Therefore, the House held that the entire newspaper was the “edition,”
and rejected the claimant’s argument that each individual article was a separate “edition”
for the purpose of copyright in the typographical arrangement.1

Does what has been taken by the defendant amount to the whole or a substantial part
of the claimant’s work?

Having identified the parameters of the claimant’s work, the question is whether the
defendant has taken all or a “substantial” part of that work. If the defendant has taken
the whole work (for example, photocopying the entire copyright book, or photographing
a copyright painting), no special problem arises. The difficulty arises when the
defendant has fallen short of taking the whole of the claimant’s work – in this case, the
question of substantiality comes into play.

The first point to note in relation to substantiality is that whether a part is substantial must
be decided by its quality rather than its quantity (House of Lords in Ladbroke v William
Hill). For example, in Hawkes and Son v Paramount Film Service, it was held that the
reproduction of 20 seconds from the claimant’s march “Colonel Bogey” which was about
four minutes in length was reproduction of a substantial part. The reason was that the part
taken was the part that was remembered by everyone who had heard the march.

Similarly, in the recent case Football Association Premier League v QC Leisure, it was
held that action replays lasting a few seconds each amounted to a substantial part of the
films of the respective football matches, which lasted for at least 90 minutes. The judge
relied on the fact that the action replays reproduced incidents of particular interest to
the viewers, such as goals, near misses, demonstrations of particular skill and the like,
which enabled the viewers to appreciate the incident.

Secondly, even though the claimant may have copyright in his/her work as a whole, there
may be parts or features of the work in which the claimant has no copyright. It is only a
taking from the part that is protected by the claimant’s copyright that is counted for
the purpose of substantial taking. The following parts or features are considered not to
be protected by the claimant’s copyright –

 Non-original elements of the claimant’s work

1
The House of Lords in this case also referred to the definition of “sound recording” in section 5A and held
that it followed from this definition that each track on a music CD was a separate sound recording.

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  Ideas, styles, systems or methods used in creating the work

Non-original elements of the claimant’s work

As discussed in a previous lecture, copyright subsists in new work as well as in work

that is derived from previous work, such as compilations, anthologies and new editions.
In the case of the latter types of work, copyright protects the part that represents the
relevant skill, labour and judgment of the compiler. In other words, copyright protects
the part that represents the original contribution of the compiler, and anyone may
freely copy the non-original parts of the claimant’s work.

Thus, in Warwick Films v Eisinger, one H had edited a book entitled “The Trials of Oscar
Wilde.” The book’s account of the trial proceedings was substantially drawn from a
previous book entitled “Three Times Tried,” but H had added certain new text in square
brackets, and had done a good deal of editing. The 1 st defendant wrote a film script using
parts of the speeches of counsel, words of the judges and questions put to, and answers
given by, Oscar Wilde reproduced in H’s book, excepting the matter in square brackets.
It was held that the 1st defendant’s use of the unedited copying in H’s book did not
constitute reproduction of a substantial part of the book, as the unedited copying had no
originality and attracted copyright only by reason of its collocation.

In contrast, in Express Newspapers v News (UK), the claimant newspaper published a

news story about Marina Ogilvy, a member of the Royal Family, who was expecting a
baby. The news story was the result of an exclusive interview some eight and a half hours
in length. The story itself was made up of two elements – the news story as such, written
in the journalist’s own words, and secondly, a number of quotations of actual words used
by Ms. Ogilvy in the course of the interview. The defendant newspaper copied the
claimant’s story and carried the same news story in their own newspaper. They did not
however copy the words of the original journalist, but did reproduce verbatim the same
quotations of Ms. Ogilvy that had appeared in the claimant’s news story.

Browne-Wilkinson VC held that the copyright in the claimant’s story had been infringed
by the reproduction of Ms. Ogilvy’s quotations by the defendant. Following Walter v
Lane, he held that the whole conduct of the interview and the selection of quotations in
an interview lasting over eight and a half hours involved at least as much (and in his view
greater) skill and judgement than merely taking down the words of a speaker at a public
speech, as was the case in Walter v Lane. As a result, the claimant was held to be entitled
to reporter’s copyright in the words of Miss Ogilvy quoted in their news story.

Separating the original from the non-original parts of the work has been more
problematic in the case of artistic works. In the leading case Bauman v Fussell, the
claimant had photographed two cocks fighting. The defendant used the photograph and
painted a picture of two cocks in the same positions, though the background, style and
overall visual effect was very different to the photograph.

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Somervell LJ held that there were two kinds of case when dealing with photographic
copyright. The first is where the order and arrangement of the subject matter is not the
artist’s work. For example, if someone takes a photograph of a procession or the laying
of a foundation stone, the relative position of those in the procession, or their taking part
in the ceremony, is not his work, or his design. Somervell LJ held that if an artist who
wanted to paint the scene used the photograph to take the relative positions of those in
the procession, such taking would not be substantial.

For example, in Krisarts v Briarfine, the claimant held the copyright in a series of
paintings by M. Legendre of well-known scenes like the Houses of Parliament with
Westminster Bridge in the foreground, the Tower of London, Windsor Castle and so on.
The defendant commissioned an artist to paint the same scenes, and showed her picture
postcards of the scenes, as well as prints from M. Legendre’s paintings. Though there
was no allegation of slavish copying, many of the resultant paintings were taken from the
same view and the same angle as M. Legendre’s paintings.

Whitford J held that when considering a view of a well-known subject like the Houses
of Parliament with Westminster Bridge and part of the Embankment in the foreground,
the features in which copyright is going to subsist are very often the choice of
viewpoint, the exact balance of features in the foreground, middle ground and far
ground, and the figures which are introduced, such as boats on the river. As a result,
the judge held that it was arguable that there was sufficiently substantial taking from the
claimant’s work to amount to infringement.2

The second kind of case referred to by Somervell LJ in Bauman v Fussell was where the
subject matter of the photograph is the original arrangement of the photographer. In this
case the arrangement of the subject matter itself would be protected by the
copyright. For example, in Creation Records v News Group, where certain objects were
“artistically” arranged around a swimming pool for a photograph, it was held that it
would have been an infringement of the copyright in the photograph to re-create the
scene and take a fresh photograph of the recreation.

In Bauman v Fussell, the majority of the Court of Appeal held that the position of the
birds in the case before it did not easily fall into either of the above two categories.
However, the majority was of the view that it was more towards the former category, and
accordingly held that the taking of the relative positions of the birds was not substantial.
Romer LJ dissented, holding that the photographer had exercised skill to capture the two
birds in a particularly striking posture. As a result, he held that the taking of the relative
positions or outlines of the birds was a substantial part of the claimant’s photograph.

However, it should be noted that in Designers’ Guild v Russell Williams, Lord Hoffmann
cautioned that a court should not engage in an exercise of dissecting the claimant’s work
and then asking itself whether each individual feature of the claimant’s work that was

2
In relation to simple photographs of three-dimensional objects, it was held in Antiquesportfolio.com v
Rodney Fitch that the features in which copyright subsisted were the positioning of the object (unless it is a
sphere), the angle at which the photograph is taken, the lighting and the focus.

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found in the defendant’s work was commonplace, unoriginal, etc., if the originality of the
claimant’s work was in the combination of those several features.

In Designers’ Guild, the claimant’s artistic work consisted of flowers haphazardly strewn
across a background of vertical stripes painted in a neo-impressionistic style, and using a
particular technique called a “resist effect.” The defendant’s design had all the same
features, but differed in some details (for example, the layout of the flowers was
different). However, there was nothing original about the claimant’s vertical stripes,
which was based on various pictures by Matisse. Similarly, the idea of stripes and flowers
was also not original, nor was the style used, nor the “resist” technique.

Lord Hoffmann held that the Court of Appeal had fallen into error by considering the
allegedly copied features piecemeal, because it was the combination of the features that
constituted the originality of the claimant’s work.

Ideas, styles, systems or methods used in creating the work

The other aspect of a work that is not protected by the copyright in the work is the ideas,
styles, systems or methods that underlie the work. It is often said that copyright subsists
“not in ideas but in the form in which the ideas are expressed.” However, this statement
has to be treated with caution. For, as Lord Hoffmann stated in Designers’ Guild,
“plainly there can be no copyright in an idea which is merely in the head, which has not
been expressed in copyrightable form, as a literary, dramatic, musical or artistic work, but
the distinction between ideas and expression cannot mean anything so trivial as that.”

On the other hand, it does also not mean that the protection conferred by copyright is
confined to the actual expression used by the author. If this was the law, a copier could
escape copyright infringement by copying with deliberate changes (so-called “colourable
copying”). However, this is not a correct statement of the law, for it is well established
that, for instance, the copyright in a novel or a play may be infringed by copying the plot,
incidents, or storyline, even though not a single sentence from the original is reproduced
(Corelli v Gray). Thus Lord Hoffmann in Designers’ Guild continued,

“… there are numerous authorities which show that the ‘part’ which is regarded as
substantial can be a feature or combination of features of the work, abstracted from it
rather than forming a discrete part … the original elements in the plot of a play or
novel may be a substantial part, so that copyright may be infringed by a work which
does not reproduce a single sentence of the original. If one asks what is being
protected in such a case, it is difficult to give any answer except that it is an idea
expressed in the copyright work.” (Emphasis added)

A clear explanation of the approach to the so-called idea-expression issue is found in the
judgment of Learned Hand J in the American case Nichols v Universal Pictures (1930),
which concerned an allegation of infringement of the copyright in the plaintiff’ play
Abie’s Irish Rose by the defendant’s film The Cohens and the Kellys. It was held,

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 “It is of course essential to any protection of literary property, whether at
common-law or under the statute, that the right cannot be limited literally to
the text, else a plagiarist would escape by immaterial variations. That has never
been the law, but, as soon as literal appropriation ceases to be the test, the whole
matter is necessarily at large …

“Upon any work … a great number of patterns of increasing generality will fit
equally well, as more and more incident is left out. The last may perhaps be no
more than the most general statement of what the [work] is about, and may at times
consist only of its title; but there is a point in this series of abstractions where they
are no longer protected, since otherwise the [author] could prevent the use of his
‘ideas’, to which, apart from their expression, his property never extended … Nobody
has ever been able to fix that boundary, and nobody ever can.”

For example, in the plaintiff’s play in the above case, at its most specific it would consist
of (a) the words of the play. At a more abstract level, it will consist of (b) the plot,
storyline, incidents and characters. At an even more abstract level, it may be described as
(c) a play about a quarrel between a Jewish and an Irish father, the marriage of their
children, the birth of grandchildren and a reconciliation. Learned Hand J held that (c)
would be too generalized to be protected by the plaintiff’s copyright.

As Lord Hoffmann held in Designers’ Guild,

“Generally speaking ... the more abstract and simple the copied idea, the less
likely it is to constitute a substantial part. Originality, in the sense of the
contribution of the author’s skill and labour, tends to lie in the detail with which
the basic idea is presented.”

In Designers’ Guild, the House of Lords held that if the defendant had only taken the
idea of stripes and flowers from the claimant’s design, that would not have amounted to
the taking of a substantial part of the claimant’s work. However, the similarities went far
beyond what could have been expected from the mere copying of the idea of the
claimant’s work, and accordingly constituted the copying of a substantial part.

A subsequent case that explored the idea-expression issue is Nichols v Universal

Pictures. In this case, the authors of the book The Holy Blood and the Holy Grail
(HBHG) sued the publisher of The Da Vinci Code (DVC) for infringing their copyright.
They did not rely on any exact text from HBHG being reproduced in DVC. Instead, they
claimed that HBHG had a “central theme” which could be divided into 15 propositions of
historical fact and conjecture in chronological order, and that DVC had copied this
“central theme”, though using different language, in six chapters.

The trial judge dismissed the claimant’s case, and his decision was upheld by the Court
of Appeal. The main reason was that there was in fact no “central theme” as alleged by
the claimants in the HBHG at all, and that it was in fact an artificial creation for the
sole purpose of suing the defendant in this case.

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It was held further that in any event, those elements of the so-called central theme that
the defendant had allegedly copied – such as the proposition that Jesus’ bloodline was
merged with that of the Merovingians, and that the Holy Grail was not only a thing or
a phenomenon but was also a person and a bloodline, “were of too high a level of
generality and abstraction to qualify for copyright protection: they were ideas, not the
expression of ideas” (Lloyd LJ).

In the recent case Allen v Bloomsbury Publishing (decided on 14th October 2010), the
claimant alleged that Harry Potter and the Goblet of Fire (Goblet) infringed the
copyright in a book titled Willy the Wizard (WTW), which had been published in 1987.
Once again there was no allegation of language copying, the claimant’s case being that
WTW had five main plot elements (see below), and that these same elements are a theme
of, and important to the plot of Goblet. It was also alleged that there were 27 further
similarities at the level of sub-elements of the main plot elements.

1. The main characters of WTW and Goblet are wizards who are to
compete in a wizard contest which they ultimately win (element 1);
2. The main characters are required to deduce the exact nature of the
main task (element 2);
3. The main characters uncover the nature of the main task covertly in
a bathroom (element 3);
4. The main characters complete the main task using information
gained from helpers (element 4);
5. The main task for the main characters involves the rescue of human
hostages imprisoned by a community of half-human, half animal
creatures (element 5).

The defendants applied for summary judgment on the basis that the claimant’s case was
hopeless, and therefore should not go to trial. This was refused by Kitchin J, who held
that on the evidence before him, the allegations merited a trial. Nonetheless, he expressed
the opinion that the similarities on which the claimant relied seemed to him to
constitute ideas which are relatively simple and abstract, and that he “strongly inclined
to the view that they [were] at such a high level of generality that they [fell] on the ideas
rather than the expression side of the line.”