Claim No: IP-2022-000053 - [2025] EWHC 1827 (IPEC)

Section 18 of the CDPA provides:

“18.

Infringement by issue of copies to the public.

(1)

The issue to the public of copies of the work is an act restricted by the copyright in every description of copyright work.

(2)

References in this Part to the issue to the public of copies of a work are to the act of putting into circulation in the United Kingdom copies not previously put into circulation in [the United Kingdom or] the EEA by or with the consent of the copyright owner.]

(3)

References in this Part to the issue to the public of copies of a work do not include—

(a)

any subsequent distribution, sale, hiring or loan of copies previously put into circulation (but see section 18A: infringement by rental or lending)

(b). . . .

(4)

References in this Part to the issue of copies of a work include the issue of the original.”

Section 22 of the CDPA provides:

“22.

Secondary infringement: importing infringing copy.

The copyright in a work is infringed by a person who, without the licence of the copyright owner, imports into the United Kingdom, otherwise than for his private and domestic use, an article which is, and which he knows or has reason to believe is, an infringing copy of the work.”

Section 23 of the CDPA provides:

“23.

Secondary infringement: possessing or dealing with infringing copy.

The copyright in a work is infringed by a person who, without the licence of the copyright owner—

(a)

possesses in the course of a business,

(b)

sells or lets for hire, or offers or exposes for sale or hire,

…

an article which is, and which he knows or has reason to believe is, an infringing copy of the work.”

The acts of infringement (importing into the United Kingdom, and offering for sale and selling in the United Kingdom) were not contested. Therefore, the primary issue in relation to the First Label (as set out in the List of Issues) was whether the First Label copied a substantial part of the Work.

Counsel for the Claimants referred me to the leading case of the Court of Justice of the European Union on copying of a substantial part: Infopaq International A/S v Danske Dagblades Forening (Case C-5/08) [2010] FSR 20, which was applied in England & Wales in Newspaper Licensing Agency Ltd v Meltwater Holding BV [2010] EWHC 3099 (Ch); [2011] RPC 7 per Proudman J at §83:

“The effect of Infopaq is that even a very small part of the original may be protected by copyright if it demonstrates the stamp of individuality reflective of the creation of the author or authors of the article. Whether it does so remains a question of fact and degree in each case. It is often a matter of impression whether use has been made of those features of the article which, by reason of the skill and labour employed in its production, constitute it an original copyright work. Is there merely a commonplace arrangement of unoriginal words (see Ladbroke at 276) as Mr Silverleaf submitted? Or has substantial use been made of the skill and labour which went into the creation of the original work? I bear in mind Lord Hodson's reference at 288 in Ladbroke to Peterson J's remark in the University of London case (at 610) that "there remains the rough practical test that what is worth copying is prima facie worth protecting." Of course that is not a test in itself or all copying, however insubstantial, would be an infringement. Lord Hodson quoted this sentence in the context of his own observation that, "The defendants are not, in my opinion, able to escape by saying that all that they have done is to give banal commonplace descriptions to matter which is common to all engaged in the business and that, even if they have copied, they have copied nothing of any significance."

Counsel for the Claimants also referred me to Edwin Johnson J’s judgment in Pasternak v Prescott [2022] EWHC 2695 (Ch); [2023] FSR 9:

“94.

Turning to the principles which govern copyright protection, these derive partly from English case law, but also from international treaties which have shaped the UK copyright regime, as well as EU law through Directive 2001/29/EC (“the InfoSoc Directive”). This part of EU law remains a retained part of UK law.

…

103.

The effect of Infopaq and the concept of intellectual creation was considered by Lewison LJ in SAS Institute Inc v World Programming Ltd [2013] EWCA Civ 1482; [2015] ECDR. 17; [2014] RPC 8. At [38] Lewison LJ explained the test for what is a substantial part, post Infopaq, in the following terms (underlining also added):

“Our domestic legislation confines the doing of a restricted act (e.g. copying) to doing that act in relation to the work as a whole or any “substantial part of it”: Copyright Designs and Patents Act 1988 s.16 (1), s.16 (3), Nova Productions Ltd v Mazooma Games Ltd [2007] EWCA Civ 219; [2007] E.C.D.R. 6; [2007] R.P.C. 25 at [29]. It has long been the position in domestic law that what is substantial is a question to be answered qualitatively rather than quantitatively. In Infopaq the court said that parts of a work are entitled to the same protection as the work as a whole. But the parts in question must “contain elements which are the expression of the intellectual creation of the author of the work”: [39]. This is now the test for determining whether a restricted act has been done in relation to a substantial part of a work. …

…

105.

Lewison LJ proceeded to quote from the Infopaq decision. He then identified what was meant by intellectual creation in the following terms, at [31]:

“The court has also considered what amounts to an “intellectual creation” on a number of occasions. The essence of the term is that the person in question has exercised expressive and creative choices in producing the work. The more restricted the choices, the less likely it is that the product will be the intellectual creation (or the expression of the intellectual creation) of the person who produced it…

…

107.

The test of originality is therefore a qualitative, not a quantitative test. It seems to me that the post Infopaq test is usefully and succinctly stated by Zacaroli J in Sheeran v Chokri [2022] FSR 15, at [21] in the following terms:

“To amount to an infringement, however, the copying must be of either the original work or a “substantial part” of it: s. 16(3)(a) of CDPA. This is a qualitative, not quantitative, question. The test is whether the part in question contains elements which are the expression of the intellectual creation of the author of the work: Newspaper Licensing Agency Ltd v Meltwater Holding BV [2011] EWCA Civ 890, at [24]-[28], applying Infopaq International A/S v Danske Dagblades Forening [2009] ECDR 16; [2010] FSR 20. The essential consideration is to ask whether a defendant has taken that which conferred originality on the claimant’s copyright work (or a substantial part of it): Mitchell v BBC [2011] EWPCC 42, per HHJ Birss QC at [28]-[29].””

I respectfully agree with Edwin Johnson J’s summary of the current position. I was also directed to commentary in Laddie, Prescott & Vitoria: The Modern Law of Copyright, 5th Edn (Lexis Nexis, 2018), at §4.50, on three different scenarios of imitation which may constitute copying, namely: exact imitation of the whole of the work, exact imitation of part of the work, and inexact imitation:

“If the claimant's work is copyright (which implies that it is original) and the defendant has imitated it exactly, the latter must have infringed, unless he can establish one of the special defences available, eg fair dealing for purposes of private study, and so on. This case is therefore easy from a legal point of view. Again, if the defendant has not plagiarised the whole of the work but has imitated part of it exactly, say, the top left-hand corner of a painting, it is, in principle, easy to decide if he has infringed, that is, taken a 'substantial part': one inquires whether the part that was taken comprises the claimant's expression of his own intellectual creation. This case, therefore, is also fairly easy from a legal point of view. However, cases often present themselves where it can be seen that the defendant has by no means copied the claimant's work exactly. It is then necessary to decide on which side of the line the case falls. This line separates that degree of resemblance which is too general to count from that which is too close to be allowed. In such cases the defendant may argue that he has not taken the claimant's work, only his idea…”

The authors of Laddie, Prescott & Vitoria address the difficulty of referring to the “idea/expression dichotomy” at §4.51:

“4.51.

Confusion is caused in the law of copyright because of the use of the catchphrase ‘There is no copyright in ideas but only in the form of their expression’. Unless one understands what this means its utility is non-existent, or it is positively misleading. An artistic work of the imagination presupposes two kinds of ingredients: the conception of one or more ideas, and artistic dexterity and skill in their representation in the chosen medium. It is not the law that copyright protects the second kind of ingredient only. If that were so a debased copy which failed to capture the artist’s dexterity and skill would not infringe, which plainly is not the case. Unless an artist is content merely to represent a pre-existent object (eg a building) or scene, it is part of his task as artist to exercise his imagination and in so doing he may create a pattern of ideas for incorporation in his finished work. This idea-pattern may be as much part of his work, and deserving of copyright protection, as the brushstrokes, pencil- lines, etc. The true proposition is that there is no copyright in a general idea, but that an original combination of ideas may constitute a substantial part of a copyright work. In LB (Plastics) Ltd v Swish Products Lord Hailsham of St Marylebone said:

‘Of course, it is trite law that there is no copyright in ideas . . . . But, as the late Professor Joad used to observe, it all depends on what you mean by “ideas”. What the respondents copied from the appellants was no mere general idea. It was, to quote the respondents’ own language, to “follow the pattern” or principle part or in whole . . . .’

In Austin v Columbia Graphophone Co, and again in Vane v Famous Players Film Co Ltd, Astbury J said:

‘Although no copyright exists in ideas there is copyright and can be copyright in a combination of ideas, methods, and devices, used and expressed in and going to form part of a new and original work based though it may be on old matter.’”

Counsel for the Claimants submitted that this is not a case about the idea/expression dichotomy, and I agree. But in any event, I have had the above comments well in mind in drawing my conclusions in relation to copyright infringement.

The Claimants put their case in relation to all three labels not based on copying of the whole Work, but rather the reproduction of elements of it. It was said that any reproduction of even the smallest part of the Work (which it should be remembered is a massive wall-drawing) is a substantial reproduction, if the part taken is the author’s own intellectual creation. I am doubtful that that is what Infopaq decides, and it does not appear to be how Proudman J has expressed it in the excerpt set out above. I do not need to decide the point for the purposes of this case; but I am prepared to accept counsel for the Claimants’ analysis for the purposes of this case on the basis that the point is more appropriately decided by a court which has heard full argument from both parties.