IPC Media Ltd v News Group Newspapers Ltd

The claimant is the publisher of a weekly magazine called: “What’s on TV” and is the owner of the copyright which subsists in the logo and cover layout of the magazine. The defendant is the publisher of the daily newspaper, The Sun. On Wednesday, 7^th July 2004 The Sun carried a half page advertisement promoting the relaunch of its own free television listings magazine called TV Mag. The advertisement featured the reproduction of the front cover of the 10^th to 16^th July 2004 edition of What's on TV. Notwithstanding protests by the claimant, the defendant issued with its Saturday, 10^th July edition of The Sun a package containing in edition to TV Mag itself the document in the style of a letter from the editor of The Sun which document also contained a reproduction of the front cover of What's on TV, on this occasion the cover of the 26^th June to 2^nd July 2004 edition.

This was not the first occasion on which this tactic had been used by the defendant in the promotion of TV Mag. The same tactic had been used in October 1998 when TV Mag was first launched. The front cover of What's on TV and another publication of the claimant, TV Times, had been used in a similar way. On that occasion, following the issue of proceedings, matters were resolved between the parties on the basis of the following contractual undertakings.

“1.

That the defendant will not, whether acting by its directors, officers, servants agents or any of them otherwise howsoever, do, nor authorise, procure or assist any person or entity to do the following acts or any of them, that is to say:

1.1

Infringe the copyrights of the plaintiff by making a copy of or by issuing to the public copies of the whole or any substantial part of the front cover of the issue of the plaintiff magazine called TV Times dated 10-16^th October 1998.

1.2

Infringe the copyrights of the plaintiff by making a copy of or by issuing to the public copies of the whole or any substantial part of the front cover of the issue of the plaintiff’s magazine called What's on TV dated 29^th August-4^th September 1998.

1.3

Infringe the copyrights of the plaintiff by making a copy of or by issuing to the public copies of the whole or any substantial part of the logos of the words What's on TV and TV Times by the plaintiff for the titles with said magazines or the layouts of any cover of What's on TV and/or TV Times.

The claimant now seeks summary judgment against the defendant on the basis that the reproduction of its logos and front covers in July 2004 constituted breaches of its literary and artistic copyright in the layout of the front covers of the relevant editions of What's on TV and its artistic copyright in the What's on TV logo, and that the same constituted a breach of the contractual undertakings given on 1^st March 1999, in particular that given by 1.3.

So far as the copyright claim is concerned, the defendant accepts for the purposes of this application that copyright subsists in both logo and covers and is owned by the claimant, but the defendant relies on the statutory defences provided by s.30(1) and s.30(2) of the Copyright Design and Patents Act 1988. Section 30(1) provides:

“Fair dealing with a work for the purpose of criticism for review of that or another work or of a performance of a work does not infringe any copyright in the work provided that it is accompanied by a sufficient acknowledgement.”

No issue arises in this case about the existence of a sufficient acknowledgement. Sub-section (2) provides:

“(2)

Fair dealing with a work (other than a photograph) for the purpose of reporting current events does not infringe any copyright in the work provided that subject to (sub-section (3)) it is accompanied by a sufficient acknowledgement.”

Again, no question of an acknowledgment arises in this case.

The form of the advertisement on 7^th July took the form of headline text reading “New in Saturday’s Sun - Why pay? The biggest and the best is free” under which were reproductions of the covers of three magazines: What's on TV, another competing magazine, TV Choice and TV Mag with accompanying text in a box reading:

“It is bigger than TV Choice, which is just 76 pages and costs 40p. It’s bigger than What's on TV which is 84 pages and costs a whopping 45p. Yes, The Sun’s new TV Mag is a fabulous 88 pages and it is absolutely free with your favourite paper this Saturday and every Saturday. Don’t miss your magnificent copy this weekend. Why pay for less, 88 pages.”

The editor’s letter again contained reproductions of covers of editions of What's on TV, TV Choice and TV Mag and the text of the letter read:

“Dear Reader,

Welcome to our brilliant new 88 page TV Mag. Our Saturday glossy is now bigger, brighter and much, much better. In fact it is the biggest and best television’s listings magazine available. All your favourite features are still there- we just made them a whole lot bigger and better.

We now have six pages of listings every day with pick of the day for all your favourite channels including satellite and cable. Our soaps guide is now eight pages. That is bigger than any TV magazine even the ones you can buy in the shops!

Our movie guide is now a massive seven pages and includes the latest cinema, DVD and video releases. TV secrets is our new gossip and news column which will keep you up to date with all that is hot on TV. There is a new coffee time section full of prize puzzles and competitions plus there are lots more great features about your favourite stars and shows.

Look at the two magazines above next to your bigger and better TV Mag. You have to pay 45p and 40p for them -why bother when you can get your 88 page TV Mag free with The Sun every Saturday?

The claimant submits that neither of the uses constitutes either criticism, review or the reporting of current events, and that even if the contrary is arguable the defendant’s actual use of its copyright work cannot in the circumstances be characterised as fair dealing.

Mr. Platts-Mills, on behalf of the defendant, submits that the use can be justified, or at least arguably can be justified, under one or other or possibly both headings. In a nutshell, if it is fair so to confine him, his argument was that his client had merely been engaged in the process of comparative advertising and that it was not only permissible to refer to the claimant’s title for that purpose, but indeed promoted the public good of ensuring consistently with the objectives of EC Directive 97/55/EC (which I will call the Comparative Advertising Directive) that consumers were sufficiently informed of their opportunities. Its use of the claimant’s copyright was in no sense competing commercially with the claimant’s ability to exploit it. The only use made by it of the copyright material was for the purpose of identifying the product with which it wished its own to be compared.

In submitting that the use was “for the purposes of criticism or review”, Mr. Platts-Mills referred me to the decision of the Court of Appeal in ProSieben Media AG v. Carlton UK Television Ltd. [1999] FSR 610. That case concerned a claimant’s copyright in a recording of an interview with a lady who had become pregnant with eight foetuses. The defendants made and broadcast a television programme which included a substantial extract from the claimant’s recording and sought to justify that by reliance on s.30(1) and (2). In giving his judgment, Robert Walker LJ (as he then was) with whom Henry and Nourse LJJ agreed, made the following observations material to this case:

Accordingly, submitted Mr. Platts-Mills, it was clear that the criticism or review referred to in s.30(1) did not have to be criticism or review of the copyright work itself. It was sufficient that the otherwise infringing use had been made in the context of criticism of the product represented by the copyright work. In the present case the defendant was, in ordinary language, criticising or reviewing the claimant’s product and “as part of that exercise” had identified that product by reproducing the copyright work.

It seems to me that, if it be correct to isolate the phrase “for the purpose of criticism or review” then, although the tongue has to perform an act of no small intimacy with the cheek in making the argument, it is arguable that the offending publications can be characterised as criticism or review. I am less easily persuaded that the kind of criticism in question arguably constitutes criticism “of the [claimant’s] work or of another work” within the meaning of the sub-section. In ProSieben Media the view seems to have been taken that some use of copyright work was appropriate if the criticism there sought to be made of cheque book journalism was to be effectively presented. In the present case that can hardly be said. All that needed to be done to make the desired criticism of the claimant’s product was to identify it. That could readily be done without infringing the defendant’s copyright.

Those reflections lead me to think that the key to the solution of this case, in the sense of deciding whether it is a fit one for summary judgment, lies rather in the question whether the defendant’s use amounted to fair dealing. Indeed, as Robert Walker, LJ pointed out in ProSieben Media, the arguably better approach is to take the first 24 words of s.30(1) and the first 16 words of s.30(2) as a single composite phrase. As he also pointed out on p.621 in relation to the wide meaning to be given to criticism or review and to reporting of current events:

“The nearer that any particular derivative use of copyright material comes to the boundaries, unplotted though they are, the less likely it is to make good the fair dealing defence.”

Fair dealing is an elusive concept. In Ashdown v. Daily Telegraph [2002] RPC 235. The Court of Appeal, Lord Philips, Robert Walker LJ and Keene LJ, treated as accurate and helpful the summary of the position contained in paragraph 2016 of Laddie, Prescott and Vitoria, the Modern Law of Copyright and Designs, which was in the following terms:

“It is impossible to lay down any hard and fast definition of what is fair dealing, for it is a matter of fact, degree and impression. However, by far the most important factor is whether the alleged fair dealing is in fact commercially competing with the ... exploitation of the copyright work, a substitute for the probably purchase of authorised copies, and the like. If it is, the fair dealing defence will almost certainly fail. If it is not and there is a moderate taking and there are no special adverse factors, the defence is likely to succeed, especially if the defendant’s additional purpose is to right a wrong, to ventilate an honest grievance to engage in political controversy and so on.

“The second most important factor is whether the work has already been published or otherwise exposed to the public. If it has not, and especially if the material has been obtained by a breach of confidence or other mean or underhand dealing, the courts would be reluctant to say this is fair. However, this is by no means conclusive for sometimes it is necessary for the purposes of legitimate public controversy to make use of “leaked” information.

“The third most important factor is the amount and importance of the work that has been taken. For, although it permissible to take a substantial part of the work (if not there will be no question of infringement in the first place) in some circumstances the taking of an excessive amount, or the taking of even a small amount, if on a regular basis, would negative their dealing.”

Judged against those three criteria, it seems to me at least arguable that the defendant’s use in the present case passes all of them. As to the first, the use complained of is not itself one which competes with the claimant’s product. As to the second, there is obviously no use of previously unpublished material. As to the third, while it can be said that the whole of the copyright work, as opposed to the product, has been copied, it has not been copied in such a way as to reproduce all its essential features; in particular large parts of the text on the cover are not particularly legible in the reproduction.

The feature relied on by the claimant as rendering it unarguable that this use is a fair dealing is the simple fact that the purpose of the whole exercise was to reduce sales of the claimant’s product and that that purpose could equally well have been pursued without using the copyright material. The claimant, I should say, additionally relies on the fact that the use is, in its submission, in breach of the earlier contractual undertaking.

I do not find this an altogether easy point. Assuming everything else in the defendant’s favour, does the fact that the use occurred in the context of the claimant’s desire to advance the claims of its own product over those of the claimant’s make its use of the claimant’s copyright unfair? Mr. Platts-Mills’ main plank for the assertion that it did not appeared to be his reliance on the value promoted by the Comparative Advertising Directive. This, it seems to me in no way assists his case for at least three reasons. First, the directive itself does not have a direct effect as between the parties of this litigation.

Thirdly, in so far as the directive touches on intellectual property law at all, it does so in the context of trademarks reciting as it does as in recital 14:

“Whereas it may however be indispensable in order to make a comparative advertising effective to identify the goods or services of a competitor making reference to a trade mark or trade name of which the latter is the proprietor.”

I comment that even if the leap is made from trademark law to the law of copyright, there is no requisite indispensability here. The defendant did not need to infringe the claimant’s copyright in order to identify the comparator product.

The reason why I regard the question as a relatively difficult one is that the concept of fairness is highly sensitive both to context and to contemporary mores. Our current political and economic culture, reflected in a variety of legal norms, places a high value on competitiveness in the market place including for that purpose the consumer’s right to information. That notion necessarily involves activities which are aimed at the promotion of one product at the expense of another. It can be argued that the existence of such a motive can hardly by itself convert an activity which might otherwise be a fair dealing into an unfair one. On the other hand, our legal culture also places a high value on copyright, to the extent indeed of criminalizing its infringement.

The fact that I find it a difficult question is not however a reason in itself for refusing to answer it in the context of a summary judgment application. If facts might emerge at trial which would assist the right balance to be struck that might be a reason for deferring decision on the point. Mr. Platts-Mills urged that this might be the case. He suggested that research by or on behalf of his clients might reveal that in contemporary newspaper culture it was widely accepted that the use of copyright material in the context of comparative advertising was entirely acceptable and that such evidence might satisfy the trial judge as to the fairness of his client’s dealings in the present case.

Were that the case, however, I would have expected his client to have been able to produce, given the enormous resources available to it, at least one example of such a usage. However, this it was unable to do. The examples in fact provided consisted either of comparative advertising which markedly did not use copyright material, or review articles which did use copyright material of the kind used here, but which only did so in the context which was not one, ostensibly at least, of comparative advertising. Moreover, the decided cases which had involved similar fact situations as the present, of which Newsgroup Newspapers v. Mirror Group Newspapers (1986) Limited [1989] 1 FSR 126 and IPC Magazines v. MGN Limited [1998] FSR 431, are the most prominent examples, do not indicate, to put it mildly, any readiness on the part of participators in the industry to allege that such usage represents fair dealing for the purposes of criticism or review or the reporting of current events; nor, indeed, does the willingness of the defendants give the undertakings which it did give in 1998.

In my judgment, the solution to the question posed by the present case lies in the very feature which Mr. Platts-Mills claims to be the virtue of his client’s use of the claimant’s copyright work. The virtue is said to be that the defendant is merely using the copyright work for the purpose of identifying the claimant’s product and not because it wishes to make unfair use of the copyright work itself. But this, it seems to me, ignores the fact that the essential, or at least principal, function of the copyright work in the claimant’s trade is to identify the claimant’s product and to do so for the benefit of the claimant. The claimant has devoted its skill and labour in the production of literary and artistic work for the very purpose of identifying its product for its own commercial purposes. In copying the work to advance its own competing commercial purposes at the expense of the claimants, the defendant was taking advantage of the fact that the claimant’s work has created that literary/artistic identity for its product. I do not think that that can be described as a fair dealing “in the context of” or “as part of an exercise in” or “for the purpose of the criticism or review of” the claimant’s work. If it is not fair dealing for that purpose, as I do not think it is, it cannot in my judgment be fair dealing for the purpose of reporting current events. I should add that in so holding I should not be taken to be accepting that the publications complained of can be properly be described as such reporting.

Having reached the conclusion I have, it follows in my judgment that the claimant is also entitled to succeed on its contractual claim. The contrary argument was that undertaking 1.3 related only to logos used by the claimant and front covers in existence as at 1^st March 1999 and there was no evidence that the logo now being used was the same as that referred to in the undertaking. As a matter of construction it seems to me that the point is just arguable in relation to the logos, but it seems to me that that point is unarguable in relation to the copying of covers. The word “any cover” in undertaking 1.3 is plainly apt, in my judgment, to refer to a cover produced after the date of the undertaking. Accordingly, for those reasons, in my judgment the claimant is entitled to the relief it seeks by way of summary judgment.

Enquiry as to damages, what we say is there should simply be an enquiry as to damages or option and counter-profits. Directions in these kinds of cases are usually made for disclosure of materials or that the claimant can decide whether to pursue an enquiry or an account realistically one suspects, but given my Lord’s judgment it is quite likely that matters will be resolved before one gets to that stage. In any event what we would suggest again is that we endeavour to agree some kind of direction in relation to what should happen if my Lord indicates that in principle that would be appropriate. Then an order for payment, that will just be consequential upon an enquiry. Further or other relief, that does not arise.

As regards costs, we respectfully submit that we are entitled to our costs of the action and this application. Since it is less than one day, or anticipated to be a one day application, we have prepared a statement of costs for that hearing which perhaps I could hand up to my Lord. (Handed)

We respectfully submit that it is likely that we will be entitled to considerably more than that for two reasons. First of all, the defendants put us to proof of title and subsistence of copyright. We had to get evidence from people dealing with that and evidence to which you have not been taken. The position was only ultimately conceded in relation to the logo for the purposes of this application.

Your Lordship will recall in our defence we admitted subsistence and ownership of copyright in relation to the layout, not in relation to the logo. The evidence that has been put forward by the claimants, which in our submission has been likely to have been reflected in a large amount of the costs, has been evidenced from Mr. Richardson as to the creation of the layout. There is a great deal of evidence from them about what they did and when they did and how they had meetings here, there and everywhere which is all concerned with the layout which was not in issue. In our submission, rather more than half of the evidence that has been put in has been completely irrelevant and should not have been put in at all. My Lord, those are obviously matters which can be canvassed at a detailed assessment, but in our submission there is nothing about this case that would suggest that it is anything different from the ordinary and that something of the order of 40% would be about right.