O'Donnell

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Law in the Outer Limits?

Thérèse O'Donnell

Copyright © 1997 Thérèse O'Donnell.
First Published in Web Journal of Current Legal Issues in association with Blackstone Press Ltd.

Summary

The case of Shetland Times Ltd v Dr Jonathan Wills and Another, Outer House, Lord Hamilton, 24 October 1996, concerned an application in the Outer House of the Court of Session for an interim interdict in an action of declarator of infringement of copyright and interdict in relation to newspaper web sites.

The Facts

The pursuers owned and published the newspaper The Shetland Times. The first defender was the managing director of a news reporting service which was provided by the second defenders who traded under the name The Shetland News.

The pursuers had established a web site which they used as a medium to make available articles which had appeared in the printed, paper editions of their newspaper. This information service was established with a view to the long term advantages which it might yield by way of selling advertising space. It was envisaged that an advertising space would be made available on the front ("home") page of the Internet edition.

The defenders also operated a web site which had on its front page the heading "The Shetland News". Adverts appeared on that page and additionally, there were several news headlines also appearing. Since approximately 14 October 1996, among the defenders' headlines were some which had appeared in recent issues of The Shetland Times which had been reproduced on the pursuers' web site. These particular headlines were verbatim accounts of the pursuers' headlines. Any visitor to the defenders' site could "click" on one of those particular headlines as it appeared on the defenders' front page and gain access to the text as published and reproduced by the pursuers bypassing the pursuers' home page and any advertising on it.

There were two bases on which the pursuers sought interim relief. The pursuers claimed that the headlines available on their web site were cable programmes within the meaning of the Copyright, Designs and Patents Act 1988 s 7. They also claimed that the facility made available by the defenders on their site was a cable programme service within the meaning of s 7 and consequently the inclusion of those items in that service constituted an infringement under s 20. There was also a subsidiary ground submitted relating to the notion that headlines could themselves be literary works capable of infringement.

Cable programmes and web sites

Section 7(1) defines a "cable programme" as meaning "any item included in a cable programme service". "Cable programme service" is defined in the following terms:-

The defenders argued that the process of Internet communication did not involve the sending of information (as would be commonly understood by the broadcast of e.g. a football match by a television company) because if there was any sending it was carried out not by the pursuer but by the defenders. They also argued that the service was an interactive one and therefore exempted from the definition of "cable programme service" by virtue of s 7(2)(a). This provision excepts:-

The Judgment

On the basis of the limited evidence before him, Lord Hamilton, considered the contention that the service constituted a cable programme service was well founded. The fact that the information on the Internet awaited "clicking", by a caller, did not preclude it from falling within the notion of being sent. On being "clicked", the information would be conveyed to the caller. What it did not mean was that the defenders had sent the information, presumably because the information was, as he put it, "provided entirely passively". This was the case even though the instrument of initial contact was the defenders' web site. If the information was being sent, it was being sent by the pursuers on whose web site it was established and the fact that the information was provided to a caller by his accessing it through the defender's web site did not convert the defenders from being instruments of contact into senders.

His Lordship did pass comment on the fact that no detailed information was put before him regarding the sending of information, but still concluded that there had simply been no "sending" in the conventional sense. It would seem that the defenders had missed their opportunity to blind his Lordship with science, although when reduced to its simple steps, it is difficult to see how a different conclusion could have been arrived at.

Because it was possible for a caller to access the pursuers by the Internet and comments and suggestions from him/her were encouraged by a note below the text to be transmitted by electronic means, then, the defenders argued this rendered the cable programme service interactive and thus, within the exception created by s 7(2)(a). It was also submitted that information by way of comment and suggestion could be sent to the defenders' web site. His Lordship felt that although the existence of such a facility was undeniable, this was not the primary function of the service, which was to provide news and other items, and so this did not deprive it of protection via s 7(2)(a). He also felt that it was arguable that this was a severable part of the pursuers' cable programme service. It can therefore be seen that the key word (in s 7(2)(a)) for his Lordship had been the word "essential". He felt that this aspect of comment was not the primary purpose of the service, it had an ability to be hived off, and consequently, its presence was not fundamental to the functioning of the service and so could not be considered to be "essential".

In essence, what was being implied by His Lordship was that the web site service could be divided into a series of component parts and so the provision of the information in the news articles was not tainted by the minor facility available on the site which was undeniably interactive. Consequently, the severed part would not be the subject of copyright protection, but the news article and headlines would remain eligible. This protection was the main priority of the pursuers and their aim was furthered by Lord Hamilton who was unprepared to extend the taint of ineligibility for protection to the whole web site. Ultimately, then a prima facie case was made out by the pursuers that the incorporation by the defenders in their web site of the headlines provided at the pursuers' web site constituted an infringement of s 20 of the Act by the inclusion in a cable programme service of protected cable programmes.

This area had been addressed in the prelude to the 1988 Act and was reflected in the inclusion of the words "or so far as it is not" which read together with s 7(2)(a) meant that elements in an interactive service would remain within the definition of a cable programme (HL Deb, vol. 501, col. 204). An example given during the debates was that of teleshopping. In this case there would be a service of transmitting a catalogue of goods to a customer, which would fall within the definition of a cable programme service. Obviously, if a customer sought to purchase goods and to choose from the catalogue provided then would this become subject to the s 7(2)(a) exception? It was considered that the placing or orders and the communication of a message confirming receipt of those orders would fall to be considered as exceptions and therefore not protected by the 1988 Act. This interpretation by Lord Hamilton of the severability of services would seem to be very much in line with the reasoning and intention of the 1988 Act.

Headlines as Literary Works

Secondly, the pursuers claimed that the headlines themselves were literary works owned by them and the defenders' activities constituted infringement by copying under s 17, the copying being in the form of storing the work by electronic means. Although the defenders did not seek to contest that copyright existed in the text of the items appearing in the printed edition of the paper and the substance of those same texts appearing on the web site edition, they argued that no copyright subsisted in the headlines.

Counsel for the defenders argued that the headline "Bid to save centre after council funding 'cock up'" was not an original literary work, did not qualify for copyright protection, so could not be infringed. It was argued that there was no expenditure of skill or labour such as to make the headline a literary work, but rather it was "ordinary in the extreme". Counsel stopped short of claiming that a headline could never attract copyright, only that this one did not.

His Lordship was referred to no authority on the subject, perhaps the ploy being that on a robust and common sense interpretation it would seem odd that a "work" consisting of very few words would even make sufficient sense to constitute a literary work within the meaning of the Act. However, it would seem that this implicit faith in such an approach was ill-founded because his Lordship saw fit to comment on the fact that he had received no authority (and analogous examples would have been numerous and obvious) on the matter. He felt that, in this case at least, the headlines were brief indicators of the subject matter of the articles to which they related. They comprised approximately eight words which had been "designedly" put together for the purpose of imparting information and so were literary works capable of infringement within the meaning of s 17 of the Act. His Lordship's use of the word "designedly" is a pointer to his reasoning in that perhaps he thought the headline had a higher purpose than merely being eye-catching. His Lordship concluded that it was arguable that there was an infringement, at least in some instances, of s 17.

Analysis

It is a possible contention that it is somewhat stretching the definition of "cable programme" as intended by the Whitford Committee to the notion of the sending of messages on the Internet (which of course could not have been within the contemplation of the Committee in 1977). The language of the Committee's Report clearly had in mind the conventional notion of television broadcasting, referring as it did to "closed circuit television", "commercial exploitation of works by hotel vision services" "Dial-a-Disc" (the commercial exploitation of commercial sound recordings) services and "similar telephone-based systems" (Whitford Report 1977, para 435). The current case raises the problem of defining when infringement occurs. This is of concern because the defenders did not reproduce the pursuers' web site stories (which would have constituted a straightforward case of infringement) but rather provided a link to the pursuers' page. The question then becomes at which point in space does the infringement occur? This was less of a problem in the instant case given that all parties were competent in the Scottish jurisdiction. The problems arise of course, when a cross-jurisdictional infringement occurs and it may well be that an examination of applicability and extent of international private law (notably the Brussels Convention on the Jurisdiction and Enforcement of Judgments on Civil and Commercial Matters 1968) may come into play in respect of such cases.

The characterisation of a headline as a literary work (defined in Copyright, Designs and Patent Act 1988 s 3(1)) is an interesting matter as it calls into question the definitions given to works which are eligible for copyright protection. In order to qualify for copyright protection it is accepted that the work has to be original, which was arguably not a problem for the pursuers in that it presumably emanated from the imagination of a particular journalist. However, there has to be some skill, effort and judgement involved in the creation of the work. This criteria is somewhat more relaxed in the United Kingdom compared to European neighbours because of the notable absence of an objectively judged "quality" component. A literary work eligible for copyright protection has been judicially pronounced as "work which is expressed in print or writing irrespective of the question whether the quality or style is high" per Peterson J, University of London Press v University Tutorial Press [1916] 2 Ch 601 at 608. Therefore, on a first reading, it would appear that the right of copyright in a headline would appear uncontroversial. However, there is a potential problem in relation to the operation of the de minimis principle which operates as a slight controlling mechanism regarding eligibility for copyright status and is a concept which has been clearly stated in a variety of cases (e.g. Francis Day v Twentieth Century Fox [1940] AC 112).

The reasoning that the headline in this case was specifically chosen to impart some information of itself does seem prima facie to sit happily with existing notions of what should qualify as a literary work. In the case of Exxon Corp v Exxon Insurance Consultants International Ltd [1982] Ch 119 at p 143 Stephenson LJ quoted with approval the dictum of Davey LJ delivered in Holinrake v Truswell (1894) 3 Ch 420 at p 428 that a "literary work is intended to afford wither information or instruction, or pleasure, in the form of literary enjoyment." While the headline in this case certainly acted as a precise informational pointer in respect of the substance of the story, this will not always be the case and it may be that in a borderline scenario more delicate handling will be required by the judiciary.

There is another school of thought which has as a rule of thumb that "what is worth copying is worth protecting" (University of London Press v University Tutorial Press [1916] 2 Ch 601 at p 610). This seems to have been the interpretation Lord Hamilton gave to the case before him. It is submitted that this looks less to whether, in the abstract the work can in the first place be considered to be of sufficient skill and labour to qualify, and more to whether someone else in the field thought it a worthwhile exploitation of judgement. That is, on a retrospective interpretation, if it has been copied, it obviously had some merit therefore the skill and effort may be imputed to it. This relies somewhat on the fact of infringement to provide the qualifying criteria.

The problem is that to allow copyright to subsist in headlines could create problems in the journalistic world for the future. The right to copyright is the exclusive right to reproduce. During the Falklands-Malvinas conflict of 1982, The Sun newspaper ran a headline entitled "Gotcha!" in relation to the sinking of the Argentinean ship the "General Belgrano". Could this headline potentially qualify for copyright protection as a literary work? Possibly as a created word (albeit a recognised slang term) it could be said to have involved some level of skill, effort and judgement. However, arguably, this would not qualify as a literary work as it relied heavily on the context of a photograph of the Argentinean ship sinking in order for the full meaning to be gleaned. Additionally, does it seem sensible that another newspaper using this headline to cover a (completely unrelated) story of e.g. a well-known criminal being apprehended by the police could be subject to infringement proceedings by the proprietors of The Sun newspaper?

This could be taken one step further. What of a headline stating, "Council sacks its chief" and indeed the headline in this case "Bid to save centre after council funding 'cock up'"? Neither relates to an unusual event and use may be sought by another newspaper in the appropriate context. To allow the first newspaper to gain copyright over the headline could allow an overwhelming monopoly which would strangle the dissemination of the news and would therefore be contrary to the public interest. This issue of public access to the news was stated as being a priority by Browne-Wilkinson VC in Express Newspaper v News (UK) [1990] 1 WLR 1320 at p 1325 who even took the step of recognising a certain custom in the journalism profession of "reverse engineering" stories. While evidence of copying would have to be present (which could of course create nightmarish problems of proof) there could of course be issues of subliminal copying, or indeed common use of certain phrases in that particular trade.

A further aspect for consideration in this case is the fact that the parties were all in the same line of business. This was a consideration in the case of Elanco v Mandops [1980] RPC 213 where the issue of "cutting a commercial corner" was aired. The "commercial corner" in the instant case would have been that instead of the defenders investing the time and money in creating their own headlines and articles, they simply acted as a somewhat fraudulent key to the pursuers' stories possibly impliedly representing them as their own. The pursuers had expended the resources in the setting up of their web site and front page. The defenders simply gained all of the advantages of appearing to be running an informative web site which in fact had been due to the considerable labour of the pursuers. Even though the defenders had invested certain resources in the setting up of their own page, they were still obtaining a commercial advantage over the pursuers. This would perhaps be deemed to be an example of "one man benefiting from another man's labour" (to paraphrase Page Wood VC in Scott v Stamford (1866) LR 3 Eq 718 at pp 723 and 724) and accordingly, it was perhaps this manifest unfairness which tipped the scales regarding the interim relief in the pursuers' favour. His Lordship dismissed the notion that the pursuers could actually obtain an advantage by being more readily available through the defenders' web site. However, for the pursuers this area of business was secondary to the newspaper which they ran. Could the unfairness then be said to have had a significantly detrimental effect on the pursuers' business given that they still retained the safety net of the revenue from the newspaper? It did not go to the root source of their revenue, and additionally, there had been no evidence of an actual loss of revenue. In the nature of such an emergency measure as an interim interdict, detailed evidence of loss would not necessarily be required, and the time scale can be illustrated by the fact that the defenders' link had only been established about ten days before the interim hearing. Lord Hamilton was prepared to note that there was a loss of potential advertising revenue in the foreseeable future, although he himself admitted that the extent of any loss would be difficult to quantify.

Another interesting point arises from the suggestion (briefly discussed by Groves 1997, p 42) that the pursuers may have given an implied licence to the accessing of their information in the way that is inevitable on the Internet (i.e. bypassing the front page when accessed from a linking page). The pursuers presumably were familiar with the workings of the Internet and were sufficiently au fait with it to have operated a web site. They could not therefore claim any ignorance of the possibilities of linking pages going straight to the text of their stories and the caller not being forced to proceed through each individual page of the pursuers' site starting with the front page. Even if they were not aware of the existence of other sites which had constructed links to their stories, they should have been aware of the operation of "search engines" (e.g. "Yahoo" and "Alta Vista"). In using a "search engine" a caller would enter a key word in their search and the result of the search would go straight to the relevant page (i.e. not necessarily front page) of a site. Again, it is impossible to gauge the weight which such an argument may have had because it was not even mentioned in passing by the defenders' Counsel. If it were to be held that when a web site owner creates a site and puts information on it then he impliedly consents to its use by others then there may be a return to what was the initial view (and some might say spirit) of the Internet which was as a huge, free, informational resource. This may be a sustainable argument in the context of the Internet but, of course, the ramifications for newspaper proprietors could be quite severe. As already mentioned, there has been an indication of judicial awareness of informal customs in journalistic practice regarding the "reverse engineering" of rival newspapers' stories, the natural conclusion of the argument of implied licence may well seem to some that they have arrived at the bottom of a very slippy and not very lucrative slope.

Conclusion

The interim hearing presided over by Lord Hamilton is one of the first decisions regarding the issue of the regulation of intellectual property law (notably copyright) on the Internet via the World Wide Web. It shows an application of traditional copyright law in the non-traditional arena of cyberspace. Some of the solutions sought by His Lordship may seem to be stretching the existing definitions as found in the Copyright, Designs & Patents Act 1988. Given the urgency of the order sought, it may seem inevitable that there was a paucity of evidence laid before his Lordship, most notably by the defenders. The case also holds interesting ramifications for journalism given the heritage of the great newspaper cases such as Walter v Lane [1900] AC 539 and Express Newspapers v News (UK) and the potential widening of customs in the trade which may be perceived to be customs superimposed by the judiciary rather then emanating from newspaper practices. Perhaps the pressing speed with which the court appearances took place following the commencement of proceedings, together with the fact that this was only an interim hearing, may make it a little unfair or pre-emptive to draw the conclusions drawn so far and it is to be hoped that a more elucidating judgement (perhaps as a result of more evidence being submitted by counsel than so far provided) may emerge when (and indeed if) this matter goes to a full hearing at Proof.

Bibliography

Groves, P (1997) 'Copyright on the Internet (reprise)' Student Law Review (Summer) 41.

Whitford Committee (1977) Report of the Committee to consider the Law on Copyright and Designs ( London: HMSO) Cmnd 6732.

United Kingdom Journals