Newspaper Licensing Agency v Marks & Spencer Plc

JurisdictionEngland & Wales
CourtHouse of Lords
JudgeLORD NICHOLLS OF BIRKENHEAD,LORD MACKAY OF CLASHFERN,LORD HOFFMANN,LORD HOPE OF CRAIGHEAD,LORD MILLETT
Judgment Date12 Jul 2001
Neutral Citation[2001] UKHL 38

[2001] UKHL 38

HOUSE OF LORDS

Lord Nicholls of Birkenhead

Lord Mackay of Clashfern Lord

Hoffmann Lord Hope of Craighead Lord Millett

Newspaper Licensing Agency Limited
(Original Appellants and Cross-Respondents)
and
Marks and Spencer PLC
(Original Respondents and Cross-Appellants)
LORD NICHOLLS OF BIRKENHEAD

My Lords,

1

I have had the opportunity of reading in draft the speech of my noble and learned friend Lord Hoffmann. For the reasons he gives, and with which I agree, I would dismiss this appeal.

LORD MACKAY OF CLASHFERN

My Lords,

2

I have had the opportunity of reading in draft the speech of my noble and learned friend Lord Hoffmann. For the reasons he gives, and with which I agree, I would dismiss this appeal.

LORD HOFFMANN

My Lords,

3

Marks and Spencer subscribes to a press cutting service. It has contracted with an agency called the Broadcast Monitoring Company for the daily supply of photocopies of items of interest appearing in national and daily newspapers. The agency pays a fee for a licence to copy the cuttings to the Newspaper Licensing Agency Limited ("the NLA"), which deals with copyright licensing on behalf of the newspapers. Marks and Spencer makes further copies of some of the cuttings and distributes them to individuals within its organisation. It has no licence to make these further copies. The question in this appeal is whether making such copies infringes the copyright in the typographical arrangement of the published editions of the newspapers which has been assigned by the publishers to NLA.

4

There are several copyrights which may simultaneously subsist in the contents of a newspaper. Each of the articles is a literary work in which, if it is original, copyright may subsist under section 1(1)(a) of the Copyright, Designs and Patents Act 1988. Similarly, the drawings and photographs are artistic works. In addition, the publisher is entitled to a copyright in the typographical arrangement of the published edition: see sections 1(1)(c) and 9(1)(d). In this appeal, we are concerned only with this last form of copyright. The NLA makes no claim based upon literary or artistic copyright in the articles or photographs which have been copied.

5

Copyright in a typographical arrangement is of relatively recent origin, having been created by the Copyright Act 1956. It can be traced to two developments in the publishing industry, one of them artistic and the other technological. The first was the great improvement in typographical design which is associated with the arts and crafts movement in the last two decades of the nineteenth century and the first two of the twentieth. A new font could be registered as a design but the typographic layout of a particular book, which may have taken considerable skill and effort, was not as such protected. The second was the development since the First World War of the technique of photo-lithography, which enabled printing plates to be made by photographic means. Publishers were concerned that the skill and labour which had gone into the typographical design of fine editions of classical works (out of literary or musical copyright) could be appropriated by other publishers who used photo-lithography to make facsimile copies.

6

In 1935 the Publishers' Association made representations to the Departmental Committee on International Copyright, asking them to recommend that a copyright in typography should be created by amendment to the Berne Convention. The Committee recommended accordingly (see its Report of May 1935 (Board of Trade Misc Reports 1919-37) at paragraph 21) but nothing came of it. After the Second World War the Publishers' Association renewed their representations to the Copyright Committee under the chairmanship of Sir Henry Gregory which had been appointed to consider the law of copyright. Again the proposal was accepted. The Committee recommended in the following terms (see their Report of October 1952 (Cmd 8662):

"306. The Publishers' Association have suggested that there should be a copyright in typography. By this they did not mean that particular types designs or founts should be protected by the Copyright Act; new type designs are registrable under the Registered Designs Act and they were not asking for any change in that respect. They were seeking protection for typographical arrangements so that a particular edition of a literary or musical work printed by or for a publisher could not be directly and exactly copied by an unscrupulous competitor by photo-lithography or similar means…[I]n certain foreign countries the law of unfair competition prevented this kind of copying by competitors but no such remedy is available in this country.

"308. Although we have already indicated our view that the Copyright Act could not and should not be extended to cover all unfair competition in the nature of copying of industrial articles, we are impressed by the case made by the Publishers' Association and agree that typographical arrangements might reasonably be protected by the Act. The protection which we recommend should relate only to exact copying by photo-lithographic or similar means.…"

7

These recommendations were carried into effect by section 15 of the Copyright Act 1956, which has been replaced by substantially similar provisions in the 1988 Act:

"1(1) Copyright is a property right which subsists in accordance with this Part in the following descriptions of work-

(c) the typographical arrangement of published editions.

"8(1) In this Part, 'published edition', in the context of copyright in the typographical arrangement of a published edition, means a published edition of the whole or any part of one or more literary, dramatic or musical works.

"9(1) In this Part, 'author', in relation to a work, means the person who creates it.

(2) That person shall be taken to be-

(d) in the case of the typographical arrangement of a published edition, the publisher.

15 Copyright in the typographical arrangement of a published edition expires at the end of the period of 25 years from the end of the calendar year in which the edition was first published.

16(2) Copyright in a work is infringed by a person who without the licence of the copyright owner does, or authorises another to do, any of the acts restricted by the copyright.

(3) References in this Part to the doing of an act restricted by the copyright in a work are to the doing of it-

(a) in relation to the work as a whole or any substantial part of it, and

(b) either directly or indirectly.

"17(1) The copying of the work is an act restricted by the copyright in every description of copyright work; and references in this Part to copying and copies shall be construed as follows.

(5)Copying in relation to the typographical arrangement of a published edition means making a facsimile copy of the arrangement."

8

The cuttings supplied by the agency were facsimile copies of parts of the typographical arrangement of the newspapers. By copying the cuttings, Marks and Spencer indirectly copied the same parts. The question is whether they copied the whole or a substantial part of the typographical arrangement of the published edition. This raises the question of what is meant by the "published". Is it the whole newspaper or does each of the literary works comprised in the newspaper constitute a separate "published edition" of that work? If the latter is the correct analysis, the photocopy is frequently a facsimile copy of the whole typographical arrangement of the work. Not in all cases, because often the agency has to rearrange the text to fit onto the A4 sheets on which the cuttings are supplied. In such cases, the original typographical arrangement is altered. But in many cases there will be an infringement. On the other hand, if the "published edition" is the whole newspaper and the copyright work the typographical arrangement of the whole, there arises the further question of whether the arrangement copied in any particular cutting is a substantial part.

9

Lightman J, who tried the action, said at [1999] RPC 536, 542 that an edition meant a "version" of a literary work and that–

"In the case of a newspaper made up of a number of different articles, each separate article is in my view a literary work and the typographical arrangement of each separate article is accordingly a copyright work."

10

"Accordingly" suggests a necessary congruence between the concept of a literary work and that of a published edition. Mr Hobbs QC, who appeared for NLA, supported this reasoning and said that copyright in typographical arrangement "mapped onto" the copyright in the underlying literary works. He drew an analogy with copyright in a sound recording, defined in section 5(1) as "a recording of the whole or any part of a literary, dramatic or musical work". The sound recording copyright was congruent with, for example, the musical copyright in the work which had been recorded. A CD might comprise recordings of performances of a number of different musical works, in each of which a separate musical copyright and sound recording copyright could subsist. Likewise, said Mr Hobbs, in the case of a newspaper containing the typographical arrangement of a number of literary works.

11

In my opinion the analogy is unsound. There is an important difference between the ways in which the two copyrights are defined. A "sound recording", in which copyright subsists under section 1(1)(b), is defined by section 5(1)(b) as "a recording of the whole or any part of a literary, dramatic or musical work". Thus a sound recording of one musical work is by definition different from the recording of another, even if they are issued on the same CD. But for copyright to subsist in a typographical arrangement, it must be the arrangement of a "published edition". A "published edition", as we have...

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