Wk2&3 Subsistence and Types Flashcards
Copyright Ordinance s.2
- the most important section as it lays the foundation of the Ordinance, how it limits the rights-
- Copyright is a property right which subsists in accordance with this Part in the following descriptions of work—(a)original literary, dramatic, musical or artistic works; (b) sound recordings, films, broadcasts or cable programmes; and (c) the typographical arrangement of published editions.
- In this Part “copyright work” ( 版權作品 ) means a work of any of those descriptions in which copyright subsists.
- Copyright does not subsist in a work unless the requirements of this Part with respect to qualification for copyright protection are met (see section 177 and the provisions referred to there).
What is a copyright work?
A copyright work is a work
- in which copyright subsists (s.2(2) of CO)
- Fixed list - 9 types of copyright works (s.2(1) of CO):
- Original literary, dramatic, musical or artistic works
- sound recordings
- films
- broadcasts
- cable programmes
- typographical arrangements of published editions
- C.f. France (open-ended definition over copyright) –> consequence: many people file litigations to argue that certain categories of items are entitled to copyright protection, e.g. perfumes
in Hong Kong, a film is a film, can’t be music
Note:
- Only category (a)–literary, dramatic, musical or artistic works should be ‘original’
- there’s no ‘original’ requirement for sound recordings, films, broadcasts or cable programmes, and typographical arrangement of published editions.
- 2) and (3) also indicate works that can be copyright protected shall be covered by the listed descriptions, and meet certain criteria.
Conditions for works to be qualified as copyright work (checklist)
- It should be in general ‘original’ (at least in category a)
- It should be an expression rather than merely an idea (idea/expression dichotomy, fixation requirement)
- It must fall within the set descriptions of work otherwise it will not count
- Lawful person (s.177, you need to have legal residency somewhere. Thus, in general this qualification does not affect anyone except one who’s no residency)
* Recorded, in writing or otherwise;
What is copyright?
Copyright is a property right
- Exclusivity
- Transmissible (S101(1)) e.g. you can to license it to someone else
Originality & work
Originality is not concerned with whether the work is inventive, novel, or unique, it only cares about if it has originated from the author and has not been copied from another work [the University of London Press case 1916, and Interlego case 1989]
- i.e. Not necessarily have to be new, but should come from you
By saying a ‘work’ means that the author must have exercised the requisite intellectual qualities, or in other words, ‘labour, skill, or effort’ in producing the work. [Ladbroke 1964]
- i.e. whether you have contributed to the resulting works in terms of labour, skill, effort. e.g. a stone may come from you as you pick it up but you did not put too much effort in it.
3rd Condition: fixation
What are not protected by copyright? (Designers Guild Ltd v Russell Williams (Textile) Ltd):
- Idea (instead of expression of ideas): not protected, because they have no connection with the literary, dramatic, musical or artistic nature of the work. Thus, others are free to express such ideas in their own words, no matter how “original” the idea is (Kleeneze Ltd v DRG (UK) Ltd [1984])
- Expression of ideas that are not original (Kenrick & Co v Lawrence & Co (1890)).
the 3rd condition for a literary, dramatic or musical work to enjoy copyright protection: idea/expression dichotomy
- Copyright does not protect ideas, but the expression of ideas.
Why do we not protect ideas?
- difficult to ascertain what the idea to be protected is. how do you put it to the court? Could floodgate litigation
- Utilitarian perspective: damage the society (if you dominate idea, prohibit others’ thinking)
Author needs to show the expansion of skill and judgment to justify protection.
- “Skill” = the use of one’s own knowledge/ developed attitude/ practiced ability in producing the work
- “Judgment” = the use of one’s capacity for discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work (CCH Canadian Ltd v Law Society of Upper Canada [2004]).
- There is no restriction as to the amount of time required; but it could not be too trivial.
Sawkins v Hyperion Records Ltd [2005]
Fact:
- Musical works of Lalande (copyright expired) to produce modern performing edition
- P had not composed anything new except for one piece.
P’s allegation:
- his edition were original because he originated the performing editions by his own expert and scholarly exertions;
- the editions did not previously exist in that form
- the contents of his editions affected the combination of sounds produced by the performers.
P spent over 300 hours on each edition and made more than 3,000 editorial interventions in the works.
Held:
- The effort, skill and time P spent in making the performing editions were sufficient to satisfy the requirement of originality.
- Whether a work is original or not is a matter of degree, depending on how much skill, labour and judgment in the making of the copy was devoted to. The more that the author merely performs an easy mechanical function, the less was his contribution likely to be taken as “original”.
Tai Shing Diary Ltd v Maersk Hong Kong Ltd [2007]
- Simplicity did not prevent originality; the threshold to satisfy originality is a low one
Fact: D argued that P diaries lacked sufficient originality in that they were common to all diaries and calendar.
Held: P won. “The author might draw on existing material, so long as more than negligible or trivial effort or relevant skill and judgment had been expended in the creation of the work”
e.g. selecting, arranging, and presenting the available info in an intelligible manner.
Name / patent / trademark
The Court found that typically there is no copyright in a name, invented or otherwise, and that a trade mark can only be infringed when the infringing party shares part of the market segment.
- What is the work trying to represent? Compared with ordinary “literary work”, the above mark “Exxon” has insufficient labour, skill and effort being devoted to it. Did have some creativity but may not necessarily merit the protection.
- neither literary nor artistic. If you think that picture is unique enough then it may be copyrighted. But the company purports to prohibit others from using the word itself, not the picture.
With regard to the trade mark, the Court found that the use of this word by D, who work in a field that in no way shares a market segment with the plaintiff, in no way dilutes P’s brand name nor infringes on its trade mark.
Two principles relating to originality
De minimis principle + Sweat of the brow’ principle
De minimis principle
De minimis principle: ’the law cares not for small things’
- Public interest in preventing the control of words or phrases that should be available for all to use without fear of copyright infringement
- What about 3 words [Rose v. Information Services 1987]?
- What about 11 words [infopaq 2009, 2004 CCH Canadian case]?
From utilitarian perspective, the outcome of granting copyright protection to several words (e.g. Exxon) is that other people are NOT allowed to use that word anymore, which harms the benefit of the public
3 words not possible but 11 words of headline over newspaper may be copyrighted → The longer the words the higher possibility that it may be copyrighted.
Sweat of the brow’ principle
The threshold to satisfy originality is a low one, but the effort must not be so trivial as to be characterized as a purely mechanical exercise [Tai Shing Diary Ltd v Maersk Hong Kong Ltd [2007] 2 HKC 23].
If use is made of already existing material, copyright will subsist if there is some element of material alteration or embellishment (Fossil Inc v. Trimset Ltd [2003] HKCFI 16, para 12)
- whether yellow book should be protected? what justify one to protect it?
- UK standard may be enough as there’s efforts but in the other jurisdictions, i.e. US & civil law countries: certain level of personal character is required for copyright protection over work → so, compilation like yellow book is not protected
- Characters’ name may receive weak protection but also depends how you use it/how much you borrowed (e.g. the plots, image/personality of the characters are the same)
- if one is not sure whether there exist copyright issues, just apply for license first.
CO s4(2)
(2) Copyright does not subsist in a literary, dramatic or musical work unless and until it is recorded, in writing or otherwise; and references in this Part to the time at which such a work is made are to the time at which it is so recorded.
What is a literary work ?
- s.4(1) of CO: “Literary work” ( 文學作品 ) means any work, other than a dramatic or musical work, which is written, spoken or sung, and accordingly includes:
- (a) a compilation of data or other material, in any form, which by reason of the selection or arrangement of its contents constitutes an intellectual creation, including but not limiting to a table;
- ‘Intellectual creation’ is a criterion higher than the ‘Sweat of the brow’ principle, it requires the author exercise judgment, taste or discretion in the selection or arrangement. There is no case law in HK for the moment, most likely HK will follow the Football Dataco v. Brittens Pools case in 2010 (“there is undoubted selection and arrangement in the choice of dates and the decisions as to which match is played on which date”).
- (b) a computer program; and
- Computer program: copyright protection will not be conferred on the object codes in HK [HKSAR v Chan Tak Tim].
- (c) preparatory design material for a computer program;
- (a) a compilation of data or other material, in any form, which by reason of the selection or arrangement of its contents constitutes an intellectual creation, including but not limiting to a table;
Case Law:
- “A literary work is intended to afford either information/ instruction/ pleasure in form of literary enjoyment.” (Exxon Corp v Exxon Insurance Consultants Intl. Ltd [1982])
- “Literary work cannot… be confined to a work exhibiting literary art or style. Rather it has the broad sense of any written or printed composition.” (Ratio Telefis Eireann v Magill TV Guide Ltd [1990])
- Peterson J: Work which is expressed in print or writing, irrespective of the question whether the quality or style is high. The word literary seems to be used in a sense somewhat similar to the use of the word ‘literature’ in political or electioneering literature and refers to written or printed matter —University of London Press v University Tutorial Press [1916] 2 Ch. 601 at 608
- covers a work which is expressed in print or writing, irrespective of its quality. No merit is required
idea vs expression #literary, dramatic or musical work
Copyright does not protect ideas, but the expression of ideas
- In order to distinguish between idea and expression, an abstraction process is needed
- Novel as an example: copyright only protects expression but no idea, cannot prevent one writing a bunch of kids to the magical school → but there’s a red line. As the story goes on, there may be more evidence on the similarities.
- e.g. An American soldier fell in love with a German nurse during WWII, in a certain town… → more specific, but still need more details in order to be copyrightable.
- e.g. just changing names of the characters, but others remain the same? → Copyright infringement. Changing the words alone but same scenarios → infringed.
Depends on: how you structure your materials!
Merger doctrine #literary work
Some ideas can be expressed intelligibly only in one or a limited number of ways. In such cases the expression merges with the idea and is therefore not protected
e.g. cook book
scène à faire principle #literary work
- certain elements of a creative work are held to be not protected when they are mandated by or customary to the genre
- e.g. IP textbooks: containing case laws, which are not protected because these are essential materials that cannot be avoided when it comes to explaining IP law. Similarly, citation is not copyrightable.
- only the original idea of the authors can be protected, not case quotes.
- E.g. depicting part of the WWII history, inevitable to illustrates certain event, persons, facts
“Compilation” (彙編):
- It requires originality, which emphasized on the selection or arrangement of content constituting an intellectual creation.
- Note: where the UK has made differentiate copyright and database rights under the Directive on the Legal Protection of Databases, that has not been followed by HK.
Football League Ltd v Littlewoods Pools Ltd [1959]
- Compilation of the complete list of football matches (fixture list)
- It requires a great amount of labour, skill and ingenuity – the arrangement was a matter of painstaking trial and error.
Ladbroke (Football) Ltd v William Hill (Football) Ltd
- Lord Reid: “… cases where copyright has been denied to a compilation are comparatively few.
Dramatic work
- “Dramatic work” (戲劇作品) includes a work of dance or mime (s.4(1) of CO)
- Dramatic works could include many elements
- e.g. dialogue (which may be protected as literary works), dancing
- work of mime without words can be regarded as dramatic work
Ratio of the Norowzian case #Dramatic work
- A dramatic work is capable of being performed [Norowzian v Arks (no. 2) 1999]
- Concerns definition of dramatic works.
- “A dramatic work is a work of action, with or without words or music, which is capable of being performed before an audience. A film will often, though not always, be a work of action and it is capable of being performed before an audience. It can therefore fall within the expression “dramatic work” in s.1(1)(a) and I disagree with the judge’s reasons for excluding it.” - Lord Justice Nourse [[1999] EWCA Civ 3014]
- if the scripts indicates where and when some characters do certain actions, then it may be dramatic works.
- the problem with video games is that the scripts do not instruct how the player play it
Norowzian v Arks (no. 2) 1999
Facts:
- A short film of the plaintiff(P) called Joy depicted a man dancing to music on the flat rooftop of a building. The effect of editing the film by the technique of jump cutting was used to remove certain parts of the sequence of movements and to join together the parts 🡪 physically impossible for the performer to perform the routine displayed on the film.
- P claimed defendant’s (D) advertisement infringed his copyright in Joy as it portrayed a man who having been served a pint of Guinness, danced about a while. Similar jump cutting technique used + D had instructed the director of the ad to produce with an atmosphere similar to that in Joy.
Held:
- CFI: Not a dramatic work. The film could not be ‘dramatic work’ as it was not capable of physical performance. Because of the editing process the film was not a recording of anything that could be performed a danced by anyone.
- CA: Appeal dismissed but CFI’s definition also rejected. The dance itself did not constitute a dramatic work, but the film did constitute a dramatic work as it was capable of being performed before an audience. However, there was not infringement since copyright does not subsist in mere style or technique.
Nova Productions Ltd v Mazooma Games Ltd #dramatic work
Issue: computer game as a dramatic work?
Held: Claim rejected. A dramatic work must not vary from performance to performance.
Green v Broadcasting Corp of New Zealand
- P sued D for both passing off and copyright infringement in his television talent show titled “Opportunity Knocks”. The evidence relayed to the court was particularly diffuse (e.g. gimmicks, a collection of catchphrases, the use of a “clapometer”, etc.)
- Held: a dramatic work must have sufficient unity so as to be capable of performance or reproduction and the unpredictable nature of the show’s participants and their acts made that impossible.
Musical work
- “Musical work” (音樂作品) means a work consisting of music, exclusive of any words or action intended to be sung, spoken or performed with the music. (s.4(1) CO)
- Music and lyrics are separate
- Will a few notes suffice? depends how long -> the longer the easier to be proved
- Other elements such as performing indications, tempo and performance practice indicators, if they are the product of a person’s effort, skill and time, can be covered by copyright (Sawkins v Hyperion Records, page 227 of textbook)
- Held: notes should not be regarded as the only matter covered by musical copyright.
- Spontaneous singing, whistling or humming or of improvisations (free style) of sounds by a group of people with or without musical instruments should be regarded as music for copyright purposes.
- Note: need to be recorded
s4 CO subsection 3
- (3) It is immaterial for the purposes of subsection (2) whether the work is recorded by or with the permission of the author; and where it is not recorded by the author, nothing in that subsection affects the question whether copyright subsists in the record as distinct from the work recorded.
- Permission to record a work, and whether the work is recorded by the author is immaterial in terms of copyright protection.
Artistic works (s5 CO)
In this Part—
“ artistic work ” ( 藝術作品 ) means—
- (a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality;
- (b) a work of architecture being a building or a model for a building; or
- (c) a work of artistic craftsmanship;
“building ” ( 建築物 ) includes any fixed structure, and a part of a building or fixed structure;
“graphic work” ( 平面美術作品 ) includes—(a)any painting, drawing, diagram, map, chart or plan; and(b)any engraving, etching, lithograph, woodcut or similar work;
“ photograph ” ( 照片 ) means a recording of light or other radiation on any medium on which an image is produced or from which an image may by any means be produced, and which is not part of a film;
“ sculpture ” ( 雕塑品 ) includes a cast or model made for purposes of sculpture.
s5 CO artistic works: painting - tatto / calligraphy etc.?
- What about body painting? Tattoo?—Sims, A. (2016). The perils of full copyright protection for tattoos. European Intellectual Property Review, 38(9), 570-576.
- According to Merchandising Corp of America v Harpbond 1983, it was deemed without permanence so no copyright protection. Need to last a long period of time
- but if it’s recorded, may be protected as photograph
- s5 also provides that, ‘irrespective of artistic quality’.
calligraphy?: is it a literary work or just a painting? graphic + literary or literary?
- We all know that it’s often an imitation of the masters’ style. Consist of words - can be a literary work as well
- Graphical work + literal work??
- if one originates the words themselves (rather than simply copying others’ saying) and can show labor, may be literal work
Merchandising Corp of America v Harpbond #graphic works
Held: rejecting the argument that body paining (in the form of make-up) constituted a painting for the purpose of copyright—“a painting is not an idea: it is an object; and paint without a [permanent] surface is not a painting”.
Sculpture (3-dimensional works)
- What about moulds for the Stormtrooper helmet and armour?
- The answer is no according to the Metix 1997 case and the Lucasfilm case. It was decided that the manufacturers of both items lacked inherent artistic purpose.
- ‘Irrespective of artistic quality’: The courts said we need artistic purpose, but the law says we don’t care artistic quality
- Something wrong here?
- No, in order to be considered as a sculpture work, you need to first be considered as a work, that is, if you are producing a functional item or producing something to serve a functional purpose, it will not suffice. It must have an artistic purpose, even the end result is with low artistic quality, it doesn’t matter.
Metix (UK) Ltd v GH Maughan (Plastics) Ltd #sculpture
- F: P sought to protect its products by claiming copyright protection in the moulds made for making industrial products (twin cartridges like a double-barrelled syringe, which held products prior to their being mixed), as works of sculpture.
- Held: Transient existence may be a work of sculpture, but in this case the Court did not see anything artistic in the moulds.
Lucasfilm Ltd v Ainsworth [2012] AC 208 #Star Wars case #sculpture
Moulds for the Stormtrooper helmet and armour also held not to qualify as “sculptures
Set out GR: that, to qualify as a sculpture, the work must be created to have an artistic purpose. Here, the helmet and armour were created to portray something about characters in the film and lacked inherent artistic purpose (utilitarian rather than artistic purpose)
Photograph #artistic works
- “ Photograph ” ( 照片 ) means a recording of light or other radiation on any medium on which an image is produced or from which an image may by any means be produced, and which is not part of a film;
- cannot be screenshot
- What if I took a photo randomly? Again, it depends on whether you could demonstrate that you have put a minimum level of ‘skill, judgment and labour’ in making the photo [antiquesportfolio.com 2001].
- but if it’s like the photo above, then it is not likely to be copyright protected.
- using the same model and same angle? no, the expression is not original.
- This is regarded as a copy instead of a creation
- Question: If I photoshopping the picture, like adding a filter on it, could I claim for copyright? It depends on the degree of changes to the photo — if it’s a mere change of colour, it’s trivial.
- Question: According to the textbook, derivative work could still be protected. For instance, what if the photographer asked the model to pose slightly different or hold a different object, would that be sufficient to be considered as an ‘original’?
- yes
Antiquesportfolio.comPlc v Rodney Fitch & Co Ltd #photographs
Held: in the case of a photograph of a three-dimensional object, the positioning of the object, the angle at which it is taken, the lighting and the focus were all matters which could involve aesthetic or even commercial judgment so as to confer originality on the photograph
Temple Island Collections Ltd v New English Teas Ltd #further discuss photographs
- P claimed copyright in an edited photo that was largely monochrome except for a red bus shown travelling across a Bridge. D produced a photograph also with a red bus on the same bridge.
- Held: infringed key combination of the visual contrast features with the basic composition of the scene itself which made the P’s work interesting. The composition of a photograph was capable of being a source of originality as it could be the product of the skill and labour, or intellectual creation, of a photographer.
- The issue was not whether the artist might have used commonplace techniques to produce his work but whether he had used them under the guidance of his own aesthetic sense to create the visual effect concerned.
Artistic craftsmanship
- To protect work of the type produced by the arts and crafts movement. No Precise definition
- In the George Hensher case, which involves a hand-made mock-up for an item of furniture intended to be mass- produced was asserted to be a work of artistic craftsmanship. But the court held that to be protected, an item must have artistic character. And the conclusion was that the mock-up lacked it.
-
‘irrespective of artistic quality’ was not required, so some artistic quality is obviously required in order to gain copyright protection.
- Two separate requirements should combine in the same work: artistic quality, and craftsmanship (Golden Bright Manufacturer Ltd v Sunlight Electronic Toys Manufacturing Co Ltd [2007] HKCFI 115, para 69).
- It must give pleasure and be valued for its appearance.
- It is up to the court to decide after talking to expert witnesses [George Hensher 1976].
- The author must be consciously trying to create a work of art [Guild v Eskandar 2001]. (Artistic requirement involved)
- There must be genuine craftsmanship involved [Guild v Eskandar 2001, Bonz Group (Pty) v Cooke 1994].
- Two separate requirements should combine in the same work: artistic quality, and craftsmanship (Golden Bright Manufacturer Ltd v Sunlight Electronic Toys Manufacturing Co Ltd [2007] HKCFI 115, para 69).
George Hensher Ltd v Restawile Upholstery (Lancs) Ltd
no clear principle on artistic craftsmanship
Is it artistic craftsmanship?
It seems that the work must be of a high level of artistic quality and the issue of whether the work in question is a work of artistic craftsmanship is to be determined by whether a substantial section of the general public would obtain pleasure and satisfaction from the work. In this respect, the intention of the maker of the work is an important factor to be taken into account, but is not conclusive.
Guild v Eskandar Ltd #craftsmanship
adopted the tests in Merlet v Mothercare Plc: (i) whether the work in question reflected an exercise of craftsmanship (ii) matter of evidence – whether the maker had the conscious purpose of creating a work of art
- facts and judgements: although P’s garments enjoyed considerable popularity at the upper end of the fashion market, received critical acclaim in fashion circles and were featured in a modern fashion exhibition at museums, the court did not find them to be works of artistic craftsmanship. The court found that the garments, being machine-made articles of a very simple kind and being prototypes for mass production, could not reasonably be regarded as works of craftsmanship + not satisfied that there was any evidence that P intended to create works of art or even regarded herself as an artist
The hybrid position of film copyright: film/dramatic works
- the production of a film involves many people
- Berne Convention
- In addition to the right enjoy in pursuant to s.4 of the Copyright Ordinance, a film also enjoys dramatic rights due to its artistic inputs –> without intellectual input, there’ll only be film copyright.
- Dramatic (script, dialogue, dance, stunts/fights)
- Performers rights
- Artistic (sets, costume designs, etc)
- Sound recording/musical
Share / licensing
- Each of the joint authors will have their own copyright in the work, which, if an original work, will last for the life of the longest to live plus 50 years. Although a joint author can leave their share on death, consent of all the co-authors must be obtained in order to license the work.
- i.e. permission/ licence from other co-owners is required
- e.g. Doraemon written by two Japanese artists
- s.197: Any requirements of the licence of the copyright owner requires the licence of all of them.
- the sole right of reproducing must be indivisible as to exercise, though it is divisible as to title (Cescinsky v George Routledge & Sons [1916], per Rowlatt J).
