Summary

Companies had infringed newspapers' copyright by using a media monitoring service from a third party which provided them with copies of headlines and extracts from articles on newspaper websites. A web end-user licence was required to lawfully use and receive the third party's service.

Facts

The claimants sought a declaration that the defendants needed a licence to produce and/or use copies of the claimants' newspaper content. The first claimant (C1) was a company which managed the intellectual property rights of member newspapers, including the second to seventh claimant newspaper publishers (C2). The first and second defendants (D) provided a media monitoring service to business customers by monitoring a number of websites. D used the content from C2's websites to create monitoring reports to its customers. The reports included the headline, opening text and an extract from articles which matched search terms selected by the customer. The third defendant (D3) was a professional association representing public relations providers who used D's monitoring service. D3 admitted that when its members received a copy of D's report by email, or accessed it via D's website, a copy was made in the memory of the member's computer. The court was required to determine whether (i) a newspaper headline was capable of being a free-standing original literary work; (ii) the text extract constituted a "substantial part" of the article as a literary work; (iii) D3 and its members required a web end-user licence from C1 or C2 in order to lawfully use and receive D's service.

Held

(1) The relevant test was set out in Infopaq International A/S v Danske Dagblades Forening (C-5/08) (2009) ECR I-6569 ECJ (4th Chamber) where the European Court of Justice said that no distinction was to be made between part of an article and the whole, provided that the part contained elements which were the expression of the intellectual creation of the author. There was no reference to "substantial part" in Directive 2001/29 art.2; the ECJ made it clear that originality rather than substantiality was the test to be applied to the part extracted, Infopaq followed and Fairfax Media Publications Pty Ltd v Reed international Books Australia Pty Ltd Unreported September 7, 2010 Fed Ct (Aus) (Sgl judge) considered. C2's evidence was that the creation of headlines involved considerable skill. Some of the headlines were therefore capable of being independent literary works; those that were not formed part of the articles to which they related (see paras 69-72 of judgment). (2) In considering whether the text extracts constituted a substantial part of the articles, the issue was the quality of the extracted part and the level of the author's skill and labour appropriated by the copier rather than the quantity, Newspaper Licensing Agency Ltd v Marks & Spencer Plc (2001) UKHL 38, (2003) 1 AC 551 applied. Those principles had to be considered in the light of Infopaq, where the ECJ found that copying an extract of 11 consecutive words from an article constituted reproduction in part for the purposes of art.2, provided that those words had the necessary quality of originality. That did not mean that the court had to conduct some sort of assessment of whether the extract was itself novel or artistically worthwhile. That would be tantamount to determining whether the extract was itself a literary work. Many of the text extracts contained elements which were the expression of the intellectual creation of the author of the article as a whole, and the extracts therefore constituted a substantial part of the articles (paras 74-75, 80, 85). (3) It was admitted that D's customers made copies of the headline and text extract when viewing or accessing D's report, and that was prima facie infringement. D's customers could not rely on the exception in the Copyright, Designs and Patents Act 1988 s.28A. Making the copy was not an essential and integral part of a technological process, but was the end which D's process was designed to achieve and was the very product for which the customers paid D. Nor could D's customers rely on the fair dealing defence as that only applied if the other requirements of s.30 were fulfilled, which included dealing with a work for the purpose of criticism or review where the dealing was accompanied by a sufficient acknowledgement. D's customers did not apply critical faculties to the work. The purpose of D's service was merely to enable the customers to decide whether they wanted to see the content of the articles. That did not fall within the expression "criticism or review", Ashdown v Telegraph Group Ltd (2001) EWCA Civ 1142, (2002) Ch 149 applied. Furthermore, s.30(2) did not apply to commercial, non-public users, Marks & Spencer applied. Even if it did, D's use of the work was not fair dealing and no sufficient acknowledgement was made, as D's service did not name the author of the articles. In the circumstances, without a licence from C1 or C2 there was infringement of C2's copyright by D's customers in receiving and using D's monitoring reports (paras 102-104, 109-113, 127, 130-134, 141).

Declaration granted