IPC Media Ltd v Highbury-SPL Publishing Ltd

JurisdictionEngland & Wales
JudgeMr Justice Laddie
Judgment Date21 December 2004
Neutral Citation[2005] EWHC 283 (Ch),[2004] EWHC 2985 (Ch)
CourtChancery Division
Docket NumberCase No: HC 02 C03292
Date21 December 2004
Ipc Media Limited
Claimant
and
Highbury—leisure Publishing Limited
Defendant

[2004] EWHC 2985 (Ch)

Before

The Honourable Mr Justice Laddie

Case No: HC 02 C03292

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

Royal Courts of Justice

Strand, London, WC2A 2LL

Mr Martin Howe QC and Mr James Abrahams (instructed by Arnold & Porter for the Claimant)

Mr James Mellor and Miss Jessie Bowhill (instructed by Wedlake Bell for the Defendant)

Hearing dates: 5 – 8, 11 – 15 and 18—22 October, 2004

Approved Judgment

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

Mr Justice Laddie

Mr Justice Laddie

1

The claimant in this action is IPC Media Limited ("IPC"). It is a well known publisher of a large number of magazines. One product within its portfolio of titles is the monthly magazine "IDEAL HOME" which is one of a large number of competing magazines directed at the home design and decorating market. Ideal Home is the market leader by way of sales. One of the competing products is a monthly magazine called "HOME" which is published by the defendant, Highbury – SPL Publishing Limited ("Highbury"). In this action IPC alleges that certain parts of certain issues of HOME infringe the copyright in equivalent parts of certain issues of IDEAL HOME. IPC is represented before me by Mr Martin Howe QC and Mr James Abrahams. Highbury is represented by Mr James Mellor and Ms Jessie Bowhill.

2

Many publishers put a great deal of effort into the design of both the outer cover and the contents of their magazines. Certainly that is the case with IPC and Highbury. Their magazines are the subject of a rolling process of design change and refinement. Thus, for example, not only do the contents of each month's edition differ from those of preceding months but the covers and the layout of the internal pages of each month's issue will differ from those of the preceding months. Some of those design changes will be substantial. For example each cover will be unique in the sense that it will contain at least one photograph which will not have been used on that magazine cover before and it will refer to the contents of that issue. Other design changes will be more subtle. For example there may be changes to the typeface and the size and "weight" of the fonts used for some of the words on the cover. In many cases the untutored and non-expert eye will not appreciate the details of such changes. The changes, both large and small, contribute to the overall visual impact of the cover or internal articles. Some features will hardly change at all from one issue to another. For example the masthead or logo on the cover may stay relatively unchanged, save for differences in colour, for a number of months.

3

IPC's core complaint is that the outer covers and certain parts of the internal sections of the May, June, July and August 2002 issues of HOME are infringements of the copyright in certain earlier issues of IDEAL HOME. Since it takes some two months or more to go from design to publication of this type of magazine, the May 2002 issue of HOME must have been copied, if it was copied at all, from an issue of IDEAL HOME published on or before March 2002. In fact the April issue of IDEAL HOME was published in March, so this is the latest issue from which the May issue of HOME could have been copied. Similar timings apply to the other issues of HOME complained about. In fact the allegations of copyright infringement in this case are much more complicated than that, as I will explain later, but this statement of the core allegation will suffice to indicate the type of dispute with which this action is concerned. Although, at one stage, IPC alleged that all its IDEAL HOME magazines taken together constitute a compilation (rather like an encyclopaedia printed in monthly parts) and, on that basis, a literary work for copyright purposes, Mr Howe accepted that his client could not succeed in an allegation of infringement of this copyright (assuming it exists) if it did not succeed on its claims in relation to the individual covers and internal sections of the magazine. As a result, this case is now only concerned with allegations of infringement of copyright in artistic works.

4

Before considering the claim in detail, it may be useful to set out some basic principles applicable to this type of case. I will concentrate on cases relating to copyright in artistic works although in many respects the same considerations apply to other types of copyright material.

5

The Copyright, Designs and Patents Act 1988 provides at s 1(1) that copyright subsists in, inter alia, original artistic works. They are defined at s 4(1) as including photographs and "graphic works". The latter in turn are defined in s 4(2) as including paintings, drawings, diagrams, maps, charts and plans. The copyright in an artistic work is infringed by copying it (s 16(1)) without a relevant licence, that is to say reproducing it in any material form (s 16(2)). When an author creates a discrete new drawing, painting or other artistic work, it is protected by its own copyright. Even if it is based in part on preceding works, it will obtain copyright if sufficient relevant skill and labour have gone into creating it. This is a common occurrence in the realm of literary works; the second edition of a book will have its own copyright even if it repeats much of what was in the first edition. The same applies to artistic works (see for example Cala Homes (South) Limited and Others v. Alfred McAlpine Homes East Limited [1995] FSR 818). The issue of infringement has to be considered in relation to each separate copyright work relied on by the claimant. He will need to identify which work or works he says has been reproduced by the defendant.

6

Occasionally a claimant may have difficulty in identifying which of his works the defendant has copied. In some cases this is because the defendant has not copied. In others it may be because the author of the copyright work has produced a large number of very similar works. In such a case it may be difficult to identify which of the individual works was copied. The copied material is present in all of them. This was the case in King Features Syndicate Inc. v. O. & M. Kleeman Ltd. [1940] Ch. 523 (High Court). [1940] Ch. 806 (Court of Appeal). As I indicated in Cala at p 872, the fact that there are numerous similar works produced by the author does not mean that he does not have to prove that one or more discrete copyright works have been copied. Rather, the court may be persuaded that the specific copyright works relied upon in the action are either the precise ones copied, directly or indirectly, by the defendant or that they substantially reproduce the earliest copyright work which was copied and therefore amount to evidence of what that earliest copyright work was like.

7

Although in this latter type of case it may be difficult to identify which of the many similar copyright works was copied, this is due to the number and similarity of such works. It is not due to any obscurity as to what works are said to be the subject of copyright. It is basic to this part of the law that copyright exists in discrete works. This was touched upon by the Privy Council in Green v Broadcasting Corporation of New Zealand [1989] RPC 700. There the plaintiff sought to assert that the general structure or format of a television programme called "Opportunity Knocks" was a dramatic work protected by copyright. Lord Bridge said:

"It is stretching the original use of the word "format" a long way to use it metaphorically to describe the features of a television series such as a talent, quiz or game show which is presented in a particular way, with repeated but unconnected use of set phrases and with the aid of particular accessories. Alternative terms suggested in the course of argument were "structure" or "package". This difficulty in finding an appropriate term to describe the nature of the "work" in which the copyright subsists reflects the difficulty of the concept that a number of allegedly distinctive features of a television series can be isolated from the changing material presented in each separate performance (the acts of the performers in the talent show, the question and answers in the quiz show etc.) and identified as an "original dramatic work". No case was cited to their Lordships in which copyright of the kind claimed had been established.

The protection which copyright gives creates a monopoly and 'there must be certainty in the subject matter of such monopoly in order to avoid injustice to the rest of the world:' Tate v Fulbrook [1908] 1 KB 821, per Farwell J at page 832. The subject matter of the copyright claimed for the "dramatic format" of "Opportunity Knocks" is conspicuously lacking in certainty." (p 702)

8

Thus the first step in a copyright action is for the claimant to identify what work or works he relies on.

9

The work must be "original" to be protected by copyright. That does not mean that it cannot utilise well known themes and ingredients. If an author puts sufficient relevant artistic effort into producing a drawing or other artistic work from known ingredients, it will be protected by copyright. Monet was, no doubt, not the first artist to paint water lilies, but his paintings of them were protected by copyright. They would also not have been deprived of copyright because they were very similar to earlier paintings by him dealing with the same subject matter.

10

Once the claimant has identified a copyright work, he must prove that the defendant has copied at least a substantial part of it. In many cases he will not be able to call upon a witness who observed the act of copying. He therefore will have to make out his case in other ways....

To continue reading

Request your trial
17 cases
  • National Westminster bank Plc v Rabobank Nederland
    • United Kingdom
    • Queen's Bench Division (Commercial Court)
    • 11 May 2007
  • T & A Textiles and Hosiery Ltd v Hala Textile UK Ltd and Others
    • United Kingdom
    • Intellectual Property Enterprise Court
    • 23 October 2015
    ...Defendant to satisfy the Court that despite the similarities, they did not result from copying. I was also referred to IPC Media Ltd v Highbury Leisure Publishing Ltd [2005] FSR 20 in support of the proposition that similarities do not necessarily indicate copying, but may arise from both t......
  • Fitzpatrick Contactors Ltd v Tyco Fire & Integrated Solutions (UK) Ltd
    • United Kingdom
    • Queen's Bench Division (Technology and Construction Court)
    • 20 February 2009
    ...extent to which a party has been out of pocket, [from] the dates on which the invoices were actually paid.” And in IPC Media Limited v Highbury Leisure Publishing Limited [2005] EWHC 283 (Ch), Laddie J said that: “The purpose of an order of costs to compensate the winning party and to relie......
  • Baigent and Leigh v Random House Group Ltd
    • United Kingdom
    • Chancery Division
    • 3 May 2006
    ...to take. 23IPC Media 154 It can be drawn (for example) from the judgment of Laddie J in IPC Media Ltd v Highbury-Pleasure Publishing Ltd [2005] FSR 20at page 444 "It is impossible to define the boundary between the mere taking of general concepts and ideas on the one hand and copying in the......
  • Request a trial to view additional results
2 books & journal articles
  • An Intentional View of the Copyright Work
    • United Kingdom
    • The Modern Law Review No. 71-4, July 2008
    • 1 July 2008
    ...unity of adramatic work). See also Norowzi an vArks Lt d (No 2) [2000]FSR 363,367 (‘no copyright subsistsin mere style or technique’).28 [2005] FSR 20 (Ch) (rejecting a claim of copyright infringement involvingthe reproduction of aselection of design elements from di¡erent magazine articles......
  • Case Notes: Media 24 Books (Pty) Ltd v Oxford University Press Southern Africa (Pty) Ltd 2017 (2) SA 1 (SCA)
    • South Africa
    • South Africa Mercantile Law Journal No. , August 2019
    • 20 August 2019
    ...points in thedirection of copying’ (para 40), noting the judgment to this effect in IPCMedia Ltd v Highbury-Leisure Publishing Ltd [2004] EWHC 2985 (Ch),[2005] FSR 20. The investigation into copying must consider therespective works as a whole and not be conf‌ined to the instances ofsimilar......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT