INTRODUCTION TO INTELLECTUAL PROPERTY

Intellectual property is a category of property that includes intangible

creations of the human intellect. IP gives rise to a form of property that can
be dealt with in same manner as other property rights; could be assigned,
mortgaged, licenced, etc. When it comes to IP rights vs. purchaser’s rights,
for instance the purchase of a book, mobile phone, handbag, etc. does not
mean purchase of the IP right in the product. Intellectual Property
protection allows a rights holder to exclude others from interfering with or
using the property right in specified ways.

BRANCHES OF INTELLECTUAL PROPERTY LAW

IP rights are broadly classified into two:

1. Copyright and Related Rights on one hand, and

2. Industrial Property Rights on the other hand

Copyright and related rights, through the Copyright law, protect literary,
artistic, musical, choreographic among other works, whiles related rights
(neighbouring rights) protects the rights of the performer, producer of
phonograms and those of the broadcasting organisations.

Industrial property rights protect inventions (through patent law),

distinctive marks (through Trademarks Law), industrial designs,
designations of origin (through the Geographical Indications law) among
others
COPYRIGHT VS. INDUSTRIAL PROPERTY RIGHTS

•Historical sources (Berne Convention for copyright and Paris Convention

for industrial property rights)

• Requirement for protection; purpose, utility and commercial viability key

qualification for protection of industrial property rights, as against
copyright

• Formality for protection: Copyright work has automatic protection (right

is not based on the formality of registration) but industrial property rights
(a patent, a trademark, an industrial design, etc.) do require somewhat
stringent formalities

• Industrial property rights are monopolistic in nature, as against copyright

which only limits and restricts the use to be made of protected work

RELATED AND EMERGING IP FIELDS

Other IP related rights are the law on breach of Confidence (equitable

remedy), passing-off (common law remedy as against the statutory
protection of distinctive marks under Trademarks law), malicious
falsehood or trade libel (now statutorily regulated somewhat by the
Protection Against Unfair Competition Act, 2000 (Act 589). Emerging IP
areas: protection of plant variety rights, traditional knowledge and
traditional cultural expression. Aren't ideas free as air? Shouldn’t anyone
be free to use anyone’s idea? Is knowledge or ideas not merely acquired by
relying and building on already available knowledge? Why should IPRs be
protected? Monopoly of knowledge?
RATIONALE AND JUSTIFICATION FOR IP LAW

Specific IP rights have specific justifications for their protection, but

generally the following are selected for discussion:

1. Natural right theory - recognition of ownership right of creator (if

what a man produces can be taken away from him, he is no better
than a slave)

• Encourages publication and dissemination of knowledge – this helps

improve on the economic, scientific, environmental, political and various
fields for a better and fuller society

• Stimulates innovation and creativity (expired patents, etc.) – as new

knowledge is built on known or disclosed knowledge

2. Reward theory – to recoup investment in time, money and other

resources – cost of inventions and other intellectual creations can be
very high, for instance in pharmaceutical drugs, engineering fields,
etc.

INTERNATIONAL AND REGIONAL FRAMEWORKS

IP laws are generally territorial in effect due to sovereignty of nation

states. Uniform laws and reciprocal protection for IP rights critical in a
global economy. International conventions are concluded by nations to this
end, not to impose laws on member states but to ensure some harmony in
the laws. Effects of international conventions will depend on whether a
member State is monist or dualist. A number of these international
conventions are administered by WIPO, a UN specialized agency (an
intergovernmental organization) for IP. Examples of such international
conventions and treaties are the Paris Convention, Berne Convention,
Madrid Agreement and Protocol, Patent Cooperation Treaty, TRIPS
Agreement, etc

THE WORLD INTELLECTUAL PROPERTY ORGANIZATION

(WIPO)

WIPO is the global forum for IP services, policy, information and

cooperation. As a self-funding agency of the United Nations, its mission is
to lead the development of a balanced and effective international IP system
that enables innovation and creativity for the benefit of all. It develops
activities designed to improve the protection of IP throughout the world,
particularly towards harmonization of national laws, so that one has a fair
idea how the IP laws are when rights cross national borders. It administers
international conventions and treaties on IP. Its mandate, governing bodies
and procedures are set out in the WIPO Convention, which established
WIPO in 1967. Headquartered in Geneva, Switzerland, it currently has
some 193 members.

Article 2(VIII) of the Convention of WIPO says that “intellectual

property” shall include the rights relating to:

- literary, artistic and scientific works,

- performances of performing artists, phonograms, and broadcasts,
- inventions in all fields of human endeavour,
- scientific discoveries,
- industrial designs,
- trademarks, service marks, and commercial names and designations,
 - protection against unfair competition,

and all other rights resulting from intellectual activity in the industrial,
scientific, literary or artistic fields.

REGIONAL IP ORGANIZATIONS

Some regional IP organizations do exist to facilitate the application

process for securing IPRs; some do make grants and others don’t.
Examples are -

•African Intellectual Property Organization (OAPI) for French speaking

countries, and this is a unified system

• African Regional Intellectual Property Organization (ARIPO) mainly for

English speaking African countries, only facilitates a regional application
of right but the grant is made by each country

• Others are Benelux Organization for Intellectual Property (BOIP),

Eurasian Patent Organization (EAPO), European Patent Organization
(EPO), European Union Intellectual Property Office (EUIPO), etc.

COPY RIGHTS

According to Harrods Librarians' Glossary (1984), copyright is a

procedure whereby the originator of a piece of intellectual property
(books, articles, piece of music etc.) receives due recompense for the
inventiveness or the imagination expended. Copy rights is regulated by the
Copyright Act, 2005 (Act 690) in Ghana. A copyright is a collection of
rights that automatically vest to someone who creates an original work of
authorship like a literary work, song, movie or software. These rights
include the right to reproduce the work, to prepare derivative works, to
distribute copies, and to perform and display the work publicly. The
British case of LB (Plastics) Ltd v Swish Products Ltd underscores the
basic principle of copyright in the following words “one man must not
appropriate the result of another’s labour”.

Section 1(1) of Act 690 provides that

An author, co-author or joint author of any of the following works is

entitled to the copyright and protection afforded to that work under this
Act (a) literary work, (b) artistic work, (c) musical work, (d) sound
recording, (e) audio-visual work, (f) choreographic work, (g) derivative
work, and (h) computer software or programmes.

The owner of the work in which copyright subsist has specified exclusive
rights, such as the right to make copies of the work, control the
commercial exploitation of the work, and sue for infringement in cases of
abuse or use without his consent, save excepted by law.

NB: Copyright does not theoretically give rise to a monopoly per se

(possibility for two persons to create or produce identical works such as a
literary work, a photograph, artistic work, etc)
COPYRIGHT LAW: HISTORICAL DEVELOPMENT

Historical development predates the advent of printing technology; urge to

free ride, plagiarism, etc stretch back into antiquity. The evolution of
modern copyright law is conveniently traceable to the evolution of printing
– invention of moveable type by Guttenberg (German) in 1450 (1st used in
1455) and imported into England by Caxton in 1476 who developed the
printing press and published the first ‘bestseller’ in 1478. There was
coincidence with the protestant Reformation Movement in the 16th
Century and the associated religious, political, social, intellectual and
cultural upheaval. Publication and printing of Luther’s 95 thesis was made
in 1517 among others. The incorporation of the Stationers’ Company was
as a guild with monopoly over the business of book printing and import –
basically a censorship move by the State to safeguard its interest and that
of the Church of England. The Stationers comprised an elite group of
printers, publishers and booksellers, but did not include authors. This
system was initially enforced by the Court of Star Chambers; after its
abolishment in 1641, by the Court of Common Plea. The entire system of
control collapsed in 1695, then followed a brief period of piracy of books.
Then there was the passage of the Statute of Anne in 1710 which was
instructive. Its long title was: An Act for the Encouragement of Learning,
by Vesting the Copies of Printed Books in the Authors or Purchasers of
such Copies...

It granted 14 years protection to the author in the first instance and if still
alive an additional 14 years. The already published books as at 1710 – 21
years. There was a fine of a penny for every page of the infringing book;
the fine was shared equally between the author and the Crown. Also,
infringing books were seized and destroyed. To sue for infringement
however, the book had to be registered with the Stationers Company. Over
the years, the scope of copyright was gradually widened to include other
works such as engravings and prints, lithographs, sculptures, dramatic
works and musical works. Copyright assumed international significance
due to movement of copyright works across national borders, leading to
the adoption of the Berne Convention in 1886. The Copyright Act of 1911
(UK) incorporated the changes brought about by the Berne Convention.
Section 25(1) of the 1911 Copyright Act of the UK extended the
provisions of the Act to British colonies. Section 28 gave the Crown
power to extend the provisions of the Act to the protectorates. By an
Order-in-Council dated 24th June 1912 (No. 912) pursuant to section 28 of
the Act, the provisions of the Act was extended to various territories
including the Northern Territories of the then Gold Coast (now Ghana).
The attainment of independence did not automatically abolish application
of the 1911 Copyright Act.

In the case of Butterworth & Co (Publishers) Ltd v. Ng Sui Nam, the

CA of Singapore held that the mere attainment of independence did not
ipso facto change the legislative source of its inherited laws.

Although it is a persuasive authority, the Ghanaian court is likely to hold

as such

Upon attainment of a Republican status, Ghana enacted its own Copyright

Act of 1961 (Act 85), followed by the Copyright Law of 1985 (PNDCL
110), which was also repealed and replaced by the current Copyright Act,
2005 (Act 690)
COPYRIGHT LAW OF GHANA - SOURCES

a. The protection and enforcement of Copyright, like all other

intellectual property rights, are strictly statute based.

A case in turn is the case of Boateng v Oliver [2013-2015] 2 GLE 729,

CA. The plaintiff, Paul Oliver, worked for Ananse Systems, where he
created the first two versions of a Banking software alongside an ex-
Banker, Samuel K. Boateng who was also engaged with Ananse systems.
The plaintiff went to the U.K and released the third version of the Banking
software called The Rural Banker, a comprehensive banking system fully
integrated into an accounting software he had also developed which was
later succeeded by a 4th version called E- finance. The plaintiff met the 1st
defendant again, who at that time had left Ananse systems to try market
the new version of the banking software that he had created. The 1st
defendant registered a business under the name BSL Systems for that exact
purpose. The parties subsequently fell out with each other and a dispute
arose. The major part of departure and which was the fulcrum of the case
was the authorship and ownership of the copyrights in the last two
versions (4th and 3rd versions) of the banking software. The plaintiff
contended that the agreement that existed between them entailed the 1st
defendant would market the software and the 1st defendant will in turn,
license the software to the banks. This was the same arrangement he had
with Ananse Systems. The plaintiff also claimed that he issued invoices to
the defendants which the defendants sent him money as license fee in
return and the defendants transferred the money because they
acknowledged that he was the sole author. The defendants countered by
claiming that the plaintiff had never been the sole author of the rural
banking software in its various versions and that the 1st defendant pleaded
that even when he was engaged in Ananse Systems, he was there, "with a
view of developing the Rural Banking Software" because he was a
professional Banker with vast working experience. Therefore, it was his
ideas which constituted he substructure for the Banking Software created
by the plaintiff and that the plaintiff contributed only to the software by
designing the software at the direction of the 1st defendant and just
provided the source and object codes for this software. The defendants
therefore claimed that both the Rural Banker and E- finance were jointly
authored by the plaintiff and the defendants after the formation of BSL
Systems, only sent the plaintiff money dubbed "licensing fee" because of
Bank of Ghana regulations. They subsequently transferred the money
because the plaintiff retained the activation codes of the software and used
it as a bargaining chip to compel the first defendant to pay him balances
after the deduction of overhead cost. The defendants continued to
distribute the software without his permission after their relationship got
terminated and the plaintiff's first head of claim was a demand for
outstanding license fee for distribution of the software without consent and
for infringement of copyright.

The court ultimately held that the plaintiff was the sole author of the rural
Banker and e-Finance software and that the defendant's use and licensing
of these software without his permission following the termination of their
partnership amounted to an infringement of the plaintiff's copyright. The
Court again cited the copyright Act and emphasized the fact that the author
of a work has exclusive right in respect of the work and that the copy right
in that work should not be contested. The court granted the plaintiff money
for unpaid bills and granted the plaintiffs damages for infringement and
stated that the defendants should reinstate the plaintiff by disgorging all
the income they enjoyed from licensing the plaintiff's software from the
date of infringement.

 The legal framework is via the Copyright Act, 2005 (Act 690) as
amended. In repealing PNDCL 110, Act 690 in the transitional
provisions made certain savings under Section 77 [as amended by
Act 788 by insertion] in respect of accrued rights, appointments
made, the Copyright Office and its assets, etc. Retroactive protection
also offered by Act 690 in Section 78 to works, performances and
sound recordings which were made prior to the date of the coming
into effect of the Act so long as by that time duration in such works
had not expired

HIGHLIGHTS OF SOME INTERNATIONAL COPYRIGHT CON

VENTIONS

• Berne Convention

• Universal Copyright Convention by UNESCO

• Rome Convention

• TRIPS Agreement

• WIPO Copyright Treaty

• WIPO Performers and Producers of Phonogram Treaty

BERNE CONVENTION

The Berne Convention for the Protection of Literary and Artistic Works
was concluded on September 9, 1886 in Berne, Switzerland. It is the oldest
of the international copyright treaties. The object of copyright is to protect
creative individuals such as authors and artists from having their work
copied or reproduced without their consent. The Berne Convention does
not provide automatic global protection of an author's works supposedly
under a supranational copyright law. Irrespective of what international
agreement a country adopts, protection against infringement depends on its
national laws. Although the convention does not establish an international
copyright regime, it provides simplified requirements for obtaining foreign
copyright protection. (Leaffer, 1990). The Berne Convention is based on
the principle of national treatment and compliance with the requirement of
the convention. The Convention protects published or unpublished works
of an author who is a national of a member state. The protection extends to
a work of a non-national of a member state provided the author first
published the work in a member state, or may have done so simultaneously
in a non-member and member states (Leaffer, 1990). The Berne
Convention stipulates that copyright usually lasts for the life of the author,
plus an additional 50 years. After that the work is then in the public
domain. Notably, registration is not necessarily needed as a copyright
exists as soon as a work is fixed. A case in turn is the case of Moberg v
Leygues where it was held that the protection of the Berne Convention is
supposed to be essentially frictionless. It as well introduced moral rights
and lays down substantive rights, which is not exhaustive per Art 19.
UNIVERSAL COPYRIGHT CONVENTION

It was developed by UNESCO as an alternative to the Berne Convention

for States which disagreed with aspects of the Berne Convention but still
wished to participate in some form of multilateral copyright protection.
Principle of national treatment also exists. Important feature is the Notice
clause in Article III – that contracting states which require compliance
with formalities as precondition for the grant of copyright should regard
those conditions satisfied by works of foreigners or works first published
outside that country if, at the time of first publication, all authorised
published copies of the work bear the symbol © accompanied by the name
of the copyright proprietor and the year of first publication

ROME CONVENTION

It aims to protect rights of performers, producers of phonogram and

broadcasting organisations. It also has national treatment principle, as well
as other provisions on the nature of right protected, duration of protection,
etc.

TRIPS AGREEMENT

The Agreement on Trade Related Aspects of Intellectual Property Rights

was concluded within the framework of GATT. It concluded after the
Uruguay round of trade negotiations. It came into effect on 1st January
1995. It required contracting states to either formulate or bring their IP
laws in conformity with the provisions of the TRIPs Agreement. In
addition to national treatment, most-favoured-nation treatment principle
was introduced.

COPYRIGHT PROTECTION

To be protected, a work must:

• be a subject matter for copyright protection

• be original

• be fixed in a tangible medium of expression; copyright not protecting the

idea but the expression of same [idea/expression dichotomy]

• have some national or geographical connection to Ghana; or must be one

in respect of which Ghana has an obligation under an international
convention to protect.

• To qualify for protection, the subject matter must be a work within the
meaning of the act, and must meet the threshold for protection in
accordance with the Act in terms of originality, fixation and national or
geographical connection

• Eligibility of a work for copyright protection does not depend on the

artistic quality of the work, neither does it depend on the purpose for
which the author created it, nor the manner or form of its expression

THE MEANING OF ‘WORK’

There is no definition of the word ‘work’ in Act 690. Judges have

generally considered the amount of skill, labour and judgment that went
into its creation to determine whether copyright subsists in a particular
thing created. The Act is however clear about the heads of works in which
copyright could subsist. Whether a particular work passes for copyright
protection depends on meeting the threshold for protection of the type of
work. The fact that Act 690 mentions a particular work is not automatic of
copyright protection... the test of originality must be passed among others.
Section 1(1) of Act 690 prescribes some of the protectable works to
include; Literary work, Artistic work, Musical work, Sound recording,
Audio-visual work, Choreographic work, Derivative work, and Computer
software or programmes.

LITERARY WORK

Section 76 of Act 690 defines literary work to include

(a) Novels, stories or poetical works;

(b) plays, stage directions, film scenarios or broadcasting scripts;

(c) textbooks, treaties, histories, biographies, essays or articles;

(d) encyclopedias, dictionaries, directories, time tables, anthologies,

databases or compilation of data or other material, whether in machine
readable form, which by reason of the selection or arrangement of contents
constitutes intellectual creations;

(e) letters, reports or memoranda;

(f) lectures, addresses or sermons; and

(g) computer programmes whatever may be the mode or form of

expression
ARE EXAMINATION PAPERS LITERARY WORKS?

University of London Press v. University Tutorial Press

Facts: The examiners (Professor Lodge and Mr. Jackson) were appointed
for a matriculation examination of the University of London, a condition
of appointment being that any copyright in the examination papers should
belong to the University. The University agreed with the plaintiff company
(University of London Press, Limited) to assign the copyright, and by deed
purported to assign it to the plaintiff company. After the examination the
defendant company (University Tutorial Press, Limited) issued a
publication containing a number of examination papers (including three
which had been set by two examiners who were co-plaintiffs), with
criticisms on the papers and answers to questions. The university of
London Press, Limited, commenced this action against the Tutorial Press,
Limited, for infringement of copyright.

ISSUE I: Are examination papers within the meaning of this Act, ‘literary
works’?

HOLDING: The Copyright Act (UK Law) provides for copyright in

“every original literary dramatic musical and artistic work”. The term
“literary work” has not been defined in the Act but according to the Act,
“Literary work’ includes maps, charts, plans, tables and compilations”. It
covers work, which is expressed in print, or writing, irrespective of the
question whether the quality or style is high. The word “literary” refers to
written or printed matter. The papers set by examiners entailed the
exercise of brainwork, memory and trained judgment, and even selection
of passages from other authors’ works involved careful consideration,
discretion and choice and thus “literary works” within the meaning of the
present Act.

ISSUE II: Assuming that the papers are “literary work”, the question is
whether they are original?

HOLDING: “The word “original” does not mean that the work must be
expression of original or inventive thought. Copyright Acts are not
concerned with the originality of ideas, but with the expression of thought,
and in the case of “literary work”, with the expression of thought in print
or writing. The originality, which is required, relates to the expression of
the thought. But the Act does not require that the expression must be in an
original or novel form, but that the work must not be copied from another
work – that it should originate from the author.”

Examiners proved that they had thought out the questions which they set,
and that they made notes or memoranda for future questions and drew on
those notes for the purposes of the questions, which they set. The papers,
which they prepared, originated from themselves, and were, within the
meaning of the Act, original. The papers set by Professor Lodge and Mr.
Jackson are “original literary work” and proper subject for copyright under
the Act.
ISSUE III: In whom did the copyright in the examination papers vest when
they had been prepared?

HOLDING: The examiner was employed to prepare the papers on the

subject in respect of which he was elected or appointed examiner. He had
to set papers for September, 1915, and January and June, 1916, and his
duty also comprised the perusal of the students’ answers, and the
consideration of the marks to be awarded to the answers. For this he was to
be paid a lump sum.

He was free to prepare his questions at his convenience so long as they

were ready by the time appointed for the examination, and it was left to his
skill and

ISSUE IV: Whether the defendants have infringed the copyright in the
papers prepared by Professor Lodge and Mr. Jackson?

HOLDING: Examination papers are useful for educational purposes.

Recognizing this demand, the plaintiff company published the
matriculation papers. With the same object in view, the defendants
published the “London Matriculation Directory,” which included the
papers on arithmetic and algebra, geometry, and more advanced
mathematics, set by Professor Lodge and judgment to decide what
questions should be asked, having regard to the syllabus, the book work,
and the standard of knowledge to be expected at the matriculation
examination. It is true that the University issued instructions to examiners
for the conduct of the examination, but these instructions are only
regulations framed with a view to securing accuracy in the system of
marking. Professor Lodge and Mr. Jackson were regularly employed in
other educational establishments and were not part of the staff of the
London University, and it was not suggested that the other examiners were
on the staff of the University. Therefore, the examiner in such
circumstances can be appropriately described as in contract for service
with the University. The copyright was vested in the examiners, but the
University was equitably entitled to it subject to the assignment agreement
between the examiner and the University. The University assigned its
rights to the plaintiff company, which is now equitably entitled to the
copyright.

Mr. Jackson. The defendants on these facts contend that their publication
of the three papers set by Professor Lodge and Mr. Jackson is a fair
dealing with them for the purposes of private study under the Act, and is
therefore not an infringement of copyright. It could not be contended that
the mere republication of a copyright work was a “fair dealing” because it
was intended for purposes of private study; nor, if an author produced a
book of questions for the use of students, could another person with
impunity republish the book with the answers to the questions. Both
publications are intended for educational purposes and for the use of
students but the defendants have failed to bring themselves within the
protection of the Act. Therefore, the plaintiffs ought to succeed so far as
the questions prepared by Professor Lodge and Mr. Jackson for the
examination in January, 1916, are concerned

ARE FOOTBALL COUPONS LITERARY WORKS?

Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964]

The respondents, William Hill, sent their customers football betting

coupons. In 1959 the appellants, also bookmakers, started to send out
coupons closely resembling the respondents’ coupons. The respondents’
coupon contained 16 lists, each with an appropriate name. The appellants’
coupon, which contained 15 lists, closely resembled the respondents. As a
result, William Hill brought copyright claim against Ladbroke.
Afterwards, Ladbroke bookmaking firm appealed and argued that they
copied the coupon, but the coupon had no protections. The issue that arose
was whether betting coupons produced by the respondents could be
considered as an original work, protected under copyright protection?

The House of Lords held that the football betting coupons created by the
respondents, William Hill, were original. The respondents devoted
considerable money and energy to creating these coupons. And, that made
the coupons original. So, the coupons gained copyright protection. By
copying these coupons, the appellant, Ladbroke infringed copyright
protection.

CAN BUSINESS LETTERS OR LETTERS GENERALLY BE

LITERARY WORKS?

British Oxygen v. Liquid Air

The plaintiff alleged a breach of copyright by the publication of a letter.

The court held that the defence of fair dealing was rejected. Romer J said:
‘But I need not consider this further, and for this reason; the Act no doubt
extends to unpublished as well as published works, and, accordingly, this
permission of criticism would seem at first sight to extend to unpublished
literary works. The permission was no doubt necessary in the case of
unpublished dramatic and musical works, inasmuch as performance in
public of such works is not publication for the purposes of the Act. But it
would be manifestly unfair that an unpublished literary work should,
without the consent of the author, be the subject of public criticism, review
or newspaper summary. Any such dealing with an unpublished literary
work would not, therefore, in my opinion, be a ‘fair dealing’ with the
work. This being so s. 2 sub-s. 1, of the Act does not assist the defendants.
In any case I cannot see that it was necessary for the defendants, for the
purposes of criticism, to have photographic copies of the work prepared,
and to send one of those copies to a broker on the London Stock Exchange
for perusal by him and by the defendants’ jobber friends.’

CAN TELEPHONE DIRECTORY BE LITERARY WORKS?

Fiest Publications v. Rural Telephone services

In the case appealed, Feist had copied information from Rural's telephone
listings to include in its own, after Rural had refused to license the
information. Rural sued for copyright infringement. The Court ruled that
information contained in Rural's phone directory was not copyrightable
and that therefore no infringement existed.

It was held that the white pages of a telephone book did not satisfy the
minimum originality required by the Constitution to be eligible for
copyright protection, and effort and expenditure of resources are not
protected by copyright. Tenth Circuit Court of Appeals reversed.
CAN LEGAL DIRECTORY BE LITERARY WORKS?

Waterlow Directories v. Reed Information Systems

The court in that case held that copying entries in a directory infringed
copyright

HOW ABOUT TITLE OF SONGS OR BOOKS OR COMPANY

NAME? DOES IT QUALIFY AS LITERARY WORK?

Literary Work – Examples

Exxon Corporation v. Exxon Insurance Consultants,

In the present case, the word, “Exxon”, formed part of the corporate names
of the plaintiff companies. The defendants were also using the word,
“Exxon”, as their trading name. The plaintiff company, Exxon Corp,
claimed copyright in that word. As a result, the plaintiff sought an
injunction to stop the defendant company from using the word “Exxon”.
Also, they requested an order to direct the defendant company to change
its corporate name and omit the word “Exxon”. However, the judge
refused to grant an injunction to restrain an infringement of copyright. The
judge noted that that the word “Exxon” did not qualify for copyright
protection as an “original literary work” within the meaning of the
Copyright Act 1956.

The issue was Whether the word “Exxon” enjoyed copyright protection as
a piece of “original literary work” under the provision of the Copyright
Act 1956.
The Court of Appeal dismissed the appeal and held that Copyright Act
1956 afforded protection to “original literary work”. It defined what could
have been a literary work. Namely, a literary work was something that
conveyed information, instruction, or pleasure. The word “Exxon”
afforded none of them. The work was just an artificial combination of four
letters, serving only for identification. In conclusion, in these
circumstances, the word “Exxon” did not fall into the definition of an
“original literary work”. So, the word did not qualify for protection under
Copyright Act 1956. It was held that original literary work must be
intended to offer information, instruction or pleasure in the form of literary
enjoyment.

Also, in the case of Hollinrake v. Truswell, the question arose whether a

device for use in dress cutting was a book within the Copyright Act and
protectable? Lindley LJ held: “Copyright does not extend to ideas or
schemes or systems or methods. It is confined to their expression and if
their expression is not copied the copyright is not infringed.”

Does computer programs elicit literary enjoyment?

Similarly, names and titles have been rejected...

Francis Day & Hunter v. 20th Century Fox Corporation [1940] AC

112

In 1892 Francis, Day and Hunter had released a song titled "The Man who
Broke the Bank at Monte Carlo", which was written and composed by
Fred Gilbert. It acquired copyright under the Copyright Act 1842, but
failed to acquire the parallel performing right under the Copyright
(Musical Compositions) Act 1882 because the published copies lacked a
notice of reservation of such right. Gilbert died intestate in 1903, at which
time British copyright law stated that copyright in his works would lapse
in 1934. However, the Copyright Act 1911 extended it until the end of
1953.
In 1935, 20th Century Fox released the film The Man Who Broke the Bank
at Monte Carlo, which (other than the title) had no other connection to the
song. As it was exhibited in various theatres in Canada, Francis sued in
the Supreme Court of Ontario for infringement of copyright by
performance in public, infringement of the literary copyright, and
for passing off. At the privy council , Lord Wright stated the following:
 The question of performing right failed in law, because of the
lacking reservation notice required under UK copyright law,
which extended to Canada at that time. It also failed in fact,
because neither the song nor the music was performed in the
film.

 The claim of literary infringement failed, because the only

copying was in the use of the title, and that was too
insubstantial in the facts of the case to constitute infringement.
A name alone cannot possess copyright unless it is sufficiently
original and distinctive. "To break the bank" is a hackneyed
expression, and Monte Carlo is or was the most obvious place
at which that achievement or accident might take place."
 Passing off did not take place in this case, as a person seeing
the film was not likely to expect to hear the song. "The thing
said to be passed off must resemble the thing for which it is
passed off. A frying pan cannot be passed off as a kettle."
The court is likely to, by the same logic, refuse copyright in a pen name or
a pseudo name. but in some special circumstances the court may restrain
others from using someone’s pen name where the pen name constitutes the
person’s stock-in-trade, as was held in the case of Landa v. Greenberg
(1908) 24 TLR 441

In this case the plaintiff journalist had contributed a weekly column for
children to The Jewish Chronicle under the name ‘Aunt Naomi’. She had
no contract of employment. The Chronicle sometimes made suggestions
for the column, but generally she was left to her own devices. The
proprietors changed after which, for a while, the plaintiff continued with
the column. When she also contributed a piece to another newspaper under
the ‘Aunt Naomi’ name, she was dismissed. She brought the action
seeking, among other things, a declaration that she was entitled to the
‘Aunt Naomi’ name and also an injunction against the defendant, the new
proprietor of The Jewish Chronicle, to restrain him from using the name.
Held: She was entitled to the declaration, but upon the defendant
disclaiming any intention to use the name in the future, the court did not
grant an injunction.

Hines v Winnick: ChD 1947

The defendant had been taken on by the plaintiff to conduct and play in an
orchestra. The orchestra played in a radio show called Ignorance is Bliss,
broadcast by the BBC. In this show the plaintiff used the name ‘Dr Crock’
as the leader of ‘Dr Crock and his Crackpots’. The defendant sought to
replace the plaintiff with another musician to conduct and play as ‘Dr
Crock’ in the plaintiff’s stead. It was held referring to Landa v Greenberg;
the Judge said that he saw no relevant difference between the two sets of
facts and granted an injunction to restrain the defendant from using the
name ‘Dr Crock’.

How about a newspaper?

Newspaper Licensing Agency v. Marks & Spencer [2003] 1 AC 551 –

The plaintiff company was formed to protect the intellectual property

rights of publishers of national and provincial newspapers relating to press
cuttings. The publishers assigned to the company certain copyrights,
including copyright in the typographical arrangement of published editions
of their newspapers. The company then licensed agencies to take copies
from those newspapers on payment of a fee. The defendant company
obtained cuttings from a licensed agency and then made further copies of
some of the cuttings for daily internal circulation. It is important to note
that the defendant was not entitled to make copies of the concerned
articles. The plaintiff sought an injunction and an inquiry as to damages
for infringement of the copyright subsisting in the typographical
arrangement of its published editions.
It was held that copyright subsists in the newspaper as a whole but none of
the individual cuttings could be regarded as a substantial part of the
newspaper from which it came
ARTISTIC WORK

Section 76 defines artistic work to mean irrespective of artistic quality any

of the following works:

(a) Painting, drawing, etching, lithograph, woodcut, engraving, print,

fashion design and wood design;

(b) Photography not comprised in an audio visual film;

(c) map, plan or diagram;

(d) sculpture;

(e) work of architecture in the form of building or model; or

(f) work of applied art, whether handicraft or produced on an industrial

scale

NB: Both 2D and 3D objects protectable as artistic works

Examples

1. Football club badges

Association Premier League v. Panini UK Ltd [2004] 1 WLR 1147

The respondents published articles including pictures which themselves

included the claimant’s logo. The claimant sought damages for breach of
copyright. The defendant claimed protection under section 31 on the basis
that the inclusion of the marks was incidental.
Held: There was no disjunction in principle between the words ‘incidental’
and ‘integral’ within the section. The emblem and badges could be both
‘an integral part of the artistic work’, and yet be incidental to that work.
Chadwick LJ: The question of whether there was incidental inclusion: ‘is
to be answered by considering the circumstances in which the relevant
artistic work – the image of the player as it appears on the sticker or in the
album – was created’ And whether or not the inclusion is incidental ‘turns
on the question: why – having regard to the circumstances in which the
[allegedly infringing work] was created – has [the original copyright work]
been included in [the former].’ Mummery LJ: ‘incidental is an ordinary
descriptive English word . . The range of circumstances in which the word
‘incidental’ is commonly used to describe a state of affairs is sufficiently
clear to enable the courts to apply it to the ascertainable objective context
of the particular infringing act in question.’

2. Artistic craftsmanship?

In the UK, the law provides for such, and there is the requirement of some
artistic quality as was held in the case of George Hensher v. Restawhile
Upholstery [1976] AC 64; Merlet v. Mothercare [1986] RPC 115; New
Zealand case of Bonz Group v. Cooke [1994] 3 NZLR 216 which was
applied in the English case of Vermaat and Powell v. Boncrest [2001]
FSR 43... in all these, a combination of an artist and a craftsman to
produce such work, which requires some aesthetic appeal. But in Ghana,
no such artistic craftsmanship copyrightable.
MUSICAL WORK

This has a vague definition. Section 76 defines musical work to include

any musical work irrespective of its musical quality and words composed
for musical accompaniment. The Nigerian Copyright Act per section 51
better defines musical work, as follows: “any musical composition,
irrespective of musical quality and it includes works composed for musical
accompaniment”

The keyword is composition, and it is the composition that distinguishes it

from the lyrics (which itself qualifies as literary work). The distinction
between the words of a song and the music came up in the case of
Chappell v. Redwood Music Ltd [1981] RPC 337 where the court held,
inter alia, that the author of a song will be the first owner of the copyright
in the words and the author of the music of the copyright in the music...

NB: Note the difference between authorship of the words and that of the
music

Also, in the Ghanaian case of CFAO v. Archibold, the Supreme Court

held that copyright with respect to musical works implied the subsistence
of a manuscript of written matter setting out the distinctive combination of
melody and harmony or either of them; and that mere words or verses with
no intelligible musical notation indicating the melody did not qualify.
SOUND RECORDING

Section 76 of Act 690 defines sound recording to mean work that results
from the fixation of a series of musical, spoken or other sound, or of a
representation of sounds but does not include sounds accompanying a
motion picture or other audio- visual work regardless of the nature of the
material objects in which those sounds are embodied.

A sound recording is likely to involve more than one author; think about
the performer.

NB: a sound recording is to the ear as audio-visual work is to the eye

AUDIO VISUAL WORK

Section 76 of Act 690 defines audio-visual work to mean a work that

consists of a series of related images which impart the impression of
motion, with or without accompanying sounds, susceptible of being made
visible, and where accompanied by sounds susceptible of being made
audible.

CHOREOGRAPHIC WORK

Section 76 of Act 690 says that choreographic work' includes forms of

dance, whether or not in dramatic form. So long as it has been expressed in
any tangible medium, normally via labanotation (a notation system for
recording and analyzing human movement) or filming.
ORIGINALITY

There is no definition offered by Act 690 on the term originality but work
needs to be shown to have originated or emanated from the author, and
that it was independently created and not copied. In Ghana, there’s no
definition for original works in Act 690, however, section 1(2)(a) of the
Copyright Act, (Act 690) throws more light on original works which
stipulates that a work is not eligible for copyright unless it is original in
character. Also, per Section 1(4) of Act 690 states that for the purposes of
this section a work is original if it is the product of the independent effort
of the author. By originality the work doesn’t have to be necessarily
inventive or ingenious or imaginative. The required originality relates to
the expression of the work not the idea embodied in the work. In the words
of Megary J. in University of London Press v. University Tutorial Press
case, “copyright is concerned not with any originality of ideas but with
their form of expression... and that expression need not be original or
novel in form, but must originate with the author...”

The cases suggest that there should be some amount of skill, labour and
judgment expended on the work to be original, such as was held in the
Ladbroke (Football) Ltd. v. William Hill (Football) Ltd and cases such
as Macmillan & Co. Ltd. v. Cooper, Feist Publications Inc v. Rural
Telephone Services

What then is the threshold of originality? Should every work always

require skill, labour or judgment? Various tests are applied by courts of
different jurisdictions in determining the threshold of originality; there is
the ‘sweat of the brow’ doctrine, ‘modicum of creativity test’ and the ‘skill
and judgment test’
SWEAT OF THE BROW DOCTRINE

Doctrine associated with Genesis 3:19 which provides that “by the sweat
of your brow you will eat your food until you return to the ground...” The
doctrine idiomatically represents effort expended in labour and the output
of such effort, mostly applied to telephone directory, compilation, etc. It is
also known as the industriousness standard of originality on the premise
that an author deserves to have his or her efforts in producing a work
rewarded

In Walter v. Lane, Reporters from The Times newspaper took down

shorthand notes of a series of speeches given by the Earl of Rosebery, a
prominent politician, and later transcribed them, adding punctuation,
corrections and revisions to reproduce verbatim the speeches. These were
then published in The Times.
The respondent in the case published a book including these speeches,
taken substantially from the reports of those speeches in The Times. The
question for the court was whether the reporters of the speech could be
considered "authors" under the terms of the Copyright Act. The court held
that the effort, skill and time spent in transcribing a series of speeches by a
political figure, adding punctuation, corrections and revisions to reproduce
verbatim the speeches was sufficient to make them original

In University of London Press v. University Tutorial Press; where the

court indicated among others that what is worth copying is worth
protecting.

Cummins v. Bond
Geraldine Cummins was a professional medium who used a pen to write
down a message that she claimed to been written by a 1900-year-old spirit,
Cleophas. The message was addressed to an architect, Bligh Bond, who
was present in the session, and after she wrote it, Bond typed the message
himself. Bond claimed copyright on the resulting text because it was
addressed to him and typed by him.
After two days of court hearings, the court decided that it had
no jurisdiction over the afterlife and therefore the copyright holder and
sole author is Cummins because she was the one who held the pen

MODICUM OF CREATIVITY

The sweat of the brow doctrine was rejected by the US Supreme Court in
the case of Feist Publications, Inc. v. Rural telephone Service Co.3
case, the US Supreme Court totally negated this doctrine and held that in
order to be original a work must not only have been the product of
independent creation, but it must also exhibit a “modicum of creativity”.
This doctrine stipulates that originality subsists in a work where a
sufficient amount of intellectual creativity and judgment has gone into the
creation of that work. The standard of creativity need not be high but a
minimum level of creativity should be there for copyright protection. The
major question of law was whether a compilation like that of a telephone
directory is protected under the Copyright law? The court held that the
facts like names, addresses etc are not copyrightable, but compilations of
facts are copyrightable. This is majorly owing to the unique way of
expression by way of arrangement and if it possesses at least some
minimal degree of creativity, it will be copyrightable. The Court held that
Rural’s directory displayed a lack of requisite standards for copyright
protection as it was just a compilation of data without any minimum
creativity, which was a requirement for copyright protection. Hence,
Rural’s case was dismissed.

Cramp v. Frank Smythson Ltd which concerned pocket diary, the trial
judge said that the arrangement of the diary were commonplace selection
without any real exercise of knowledge, judgement or skill

SKILL AND JUDGMENT TEST

This appears to be a compromise or middle ground between the sweat of

the brow and the modicum of creativity tests; it requires not just labour or
effort but some level of creativity

In Law Society of Upper Canada v. CCH Canadian Ltd,

which Is a land mark case that established the threshold of originality in

Canadian Copyright law. In this case LSUC had a research library offering
a custom and self-serve photo copy service. CCH Canadian sued seeking a
declaration of subsistence and ownership of copyright in 11 specific
works, a declaration that LSUC has infringed on their copyright and a
permanent injunction preventing further copying. LSCU denies the
infringement and files a counterclaim for declaration that copyright is not
infringed when a single copy of a reported decision, case summary, statute
regulation or a limited selection of text from a treatise is made by the
Great Library Staff or patron for research purposes. Chief Justice
McLachlin took the middle ground by requiring that an original work be
the product of an exercise of skill and judgment where ‘skill’ is “the use of
one's knowledge, developed aptitude or practiced ability in producing the
work” and ‘judgment’ is “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”
And that the exercise of skill and judgment required to produce the work
must not be so trivial that it could be characterized as a purely mechanical
exercise. Importantly, it is required that the work must be more than a
mere copy of another work. But creativity is not required to make a work
original

Eastern Book Company v. Modak [2008] 1 SCC

Eastern Book Company A (1) and Eastern Publishers Pvt. A (2) are the
Appellant (A) who are into publishing law books. The appellant publishes
law report containing Supreme Court cases by the name of “Supreme
Court Cases (SCC)”. The case is procured from the register of the
Supreme Court. The judgement is copy edited and several inputs such as
font, paragraphing are made so as to make it user friendly. Along with the
changes in the judgement, it also has head notes and foot notes which are
prepared by the A (3) Surendra Malik. The Respondents(R) have created a
software which is published on a CD ROM by the name of Grand Pix and
The Law and the R’s have copied the whole module from the SCC on to
the CD ROM.

Issues:
1) What shall be the standard of originality in a derivative work to get
copyright protection and what requirement need to be there for its
fulfilment?
2) Whether the whole copy-edited version of the judgement will be
entitled for copyright or only entitled to some of the inputs made in the
judgement?
Holding: The court gave the decision in the favour of A’s. The court held
that for a derivative work to have copyright protection it should show that
the derivative work should be more than a just mere copy of the original
work and it should have authors own independent skill, labour and capital.
The court stated that copyright has nothing to do with literary merit of the
work. The court just need to evaluate whether the skill employed is not of
trivial or negligible but substantial. The court also held that the R’s should
not copy the paragraphs made by the A for its internal referencing and nor
should the R’s use the view of the judges regarding their view as to
whether they have a dissenting or concurring in the Case.

FIXATION

Section 76 of Act 690 postulates that fixation" means the embodiment of

sounds, images or images and sounds or of representations made from
them from which the sounds, images or images and sounds can be
perceived, reproduced or communicated through a device;

Section 1(2)(b) of Act 690 requires that the work should have been fixed
in any definite medium of expression now known or later to be developed
with the result that the work can either directly or with the aid of any
machine or device be perceived, reproduced or otherwise communicated.
It serves as evidentiary value, but most importantly the copyright
protection is accorded to the work by virtue of its expression

Also, Section 2 of Act 690 provides that Copyright shall not extend to
ideas, concepts, procedures, methods or other things of a similar nature.
This leads to the concept in copyright law called the idea/expression
dichotomy

FIXATION: IDEA/EXPRESSION DICHOTOMY

The Guidance Notes to the Berne Convention clarifies this concept when it
provides that ideas, as such, are not protected by copyright; and that
subject to patent protection: “A person who has made his idea public has
no means of stopping others using it. But once that idea has been
elaborated and expressed, copyright protection exists for the words, notes,
drawings, etc., in which it is clothed. In other words, it is the form of
expression which is capable of protection and not the idea itself”

[Guide to the Berne Convention for the Protection of Literary and Artistic
Works (Paris Act, 1971) published by WIPO in 1978 per WIPO
Publication No. 615 (E)]

There is no copyright in ideas, schemes, systems or method. Copyright is

confined only to the subject. The critical distinction between ‘idea’ and
‘expression’ is difficult to draw. Hand J in the case of Peter Pan Fabrics
Inc. v Martin Weiner Corporation candidly wrote, “Obviously, no
principle can be stated as to when an imitator has gone beyond copying the
‘idea’ and has borrowed its ‘expression’”.

The US case of Baker v. Selden appears to be the first case in which this
all important distinction was made. In this case, the plaintiff owned
copyright in a series of books that explained a bookkeeping system
annexed with certain forms consisting of ruled lines and headings,
illustrating this system. The defendant was accused of copyright
infringement because it made and used account books arranged on
substantially the same system, employing forms with slightly different
columns and headings. In ruling in favour of the defendant, the US
Supreme Court held that there is a clear distinction between the books, as
such, and the art, which they intended to illustrate. The description of the
art in a book (the expression in the instant case), though entitled to the
benefit of copyright, lays no foundation for an exclusive claim to the art
(the idea) itself. The court was of the view that the book did not give an
author the right to exclude others from practicing what was described in
the book, only right to exclude reproduction of the material in the book.

Hollinrake v. Truswell (1894) 3 Ch. D 420, it dealt with a sleeve chart

designed to be used in dressmaking, a work which enabled the cutting of
the hand of a lady’s dress. Lindley L.J. while finding no infringement in
the copying of the method of measuring, said: the defendant may have got
her own idea from the plaintiff’s chart, but the defendant has not copied
more than the plaintiff’s method of measurement. Copyright, however,
does not extend to ideas, or schemes, or systems, or methods; it is
confined to their expression; and if their expression is not copied the
copyright is not infringed.

Donoghue v. Allied Newspapers

This statement by Farewell J is highly instructive: “A person may have a

brilliant idea for a story, or for a picture, or for a play, and one which
appears to him to be original; but if he communicates that idea to an author
or an artist or a playwright, the production which is the result of the
communication of the idea... is the copyright of the person who clothed the
idea in form, whether by means of a picture, play, or a book, and the
owner of the idea has no right in that product...

Celador Productions Ltd v. Danmarks Radio (Danish HC): P had

conceived the idea of the quiz program “who wants to be a millionaire?” in
which participants were given the option of four multiple choice answers;
three aids known as “Lifelines” and were allowed the assistance of any
one of five friends. The right to reproduce and broadcast local versions of
the program had been licensed in many countries including the US,
Australia, New Zealand and Denmark and the licences identified P as
owner of the copyright in the format. P sought injunctive relief for
copyright infringement against D’s broadcast of a similar program. It was
held that TV formats were not protected subject matter under copyright.
The fact that the program concepts were bought and sold in the industry
was not enough to make the concepts in question protected by copyright
 In the Indian Supreme Court case of R.G. Anand v. Deluxe Films,
discussed at length the question of copyright in ideas. The dispute in the
case centered around the similarity between a play and a film. The basic
similarities were the two aspects of provincialism, viz the role of
provincialism in regard to marriage and in renting out accommodation,
evils of a caste ridden society, and the evils of dowry. The court came to
the conclusion that the number of similarities by themselves are not
sufficient to raise an inference of colourable imitation. The similarities are
trivial and touch insignificant points and do not appear to be of substantial
nature. The central idea of the play, vis provincialism is the subject matter
of the film along with the ideas also. But it was held that a mere idea
cannot be the subject matter of copyright. In short, even though there were
very high level of similarity in the two works the court held that there can
be no copyright in an idea, subject matter, themes, plots or historical or
legendary facts

But see the South African case of Galago Publishers v. Erasmus in

which a book contained an abridged version of another published book,
the court found that there had been considerable amount of colourable
alterations, hence a finding of infringement

The Supreme court of Ghana in the case of Pearson Education Ltd. v.

Morgan Adzei took the opportunity to interpret the implication of section
2 of Act 690 that ideas and concepts are excluded from copyright. The
issue was whether the summary of a novel constitute general idea or plot
so as to fall under section 2 or constitutes such a detailed pattern of idea
that its publication will cause infringement of the novel...The Court held
that Gateway to English for JSS would have infringed Woes of the African
Mother only if ‘Gateway’ contained the substance of a detailed pattern of
the idea in ‘Woes’. In effect, the summary was held not to have infringed
copyright in the novel.

• How about construing the summary as a derivative work? Could the

court have come to a different conclusion? See Dua-Ansah’s article

NATIONAL OR GEOGRAPHICAL CONNECTION

section 1(2)(c) of Act 690 provides that Despite subsection (1), a work is
not eligible for copyright unless

(i) created by a citizen or a person who is ordinarily resident in the

Republic,

(ii) first published in the Republic and in the case of a work first published
outside the Republic is subsequently published in the Republic within
thirty days of its publication outside the Republic, or

(iii) a work in respect of which the Republic has an obligation under an

international treaty to grant protection

AUTHORSHIP
As a property right, authorship and ownership are critical in determining
how copyright could be exploited (nemo dat quod non habet rule). Author
may not necessarily be the owner, but in some cases the first owner is the
author. Authorship/Ownership serves as the basis of legal action.?
Authorship is a question of law and of fact. The fact of authorship can
hardly be altered by parties. An author may not necessarily be the owner
of copyright in the work.

Moral rights generally are not transferable as stated in section 9(1) of Act
690 which states that “the owner of copyright may transfer the economic
rights in section 5 to another person either in whole or in part but the
transfer whether in whole or in part shall not include the moral rights
referred to in section 6”
Per section 76 of Act 690 "author" means a person who creates a work,
and in the case of cinematographic work or sound recording means the
person by whom the arrangements for the making of the work or recording
is undertaken;
An author means a person who creates a copyright protected work, or who
reduces the idea into some form as illustrated in the case of Donoghue v.
Allied Newspapers.

Donoghue v Allied Newspaper

This case involved a series of articles published in a newspaper on a well-
known jockey Donoghue who communicated his experiences to a
journalist Mr. Felstead. Mr. Felstead made notes on the basis of their
conversations and published the articles after some alterations were made
by Donoghue in the final drafts. When a subsequent set of articles were
published in another journal at the instance of Mr. Felstead, Donoghue
filed for infringement of his copyright. Justice Farewell held that although
it was the Plaintiff who supplied the stories for the article, it was Mr.
Felstead who wrote them in his own words. Hence, only Mr. Felstead was
held to be the holder of copyright as the sole author of the articles.
Farwell J said: ‘If the idea, however original, is nothing more than an
idea, and is not put into any form of words, or any form of expression such
as a picture, then there is no such thing as copyright at all.’

For literary work, the author is the writer irrespective of the form of
fixation. The author of an artistic work is the artist, and where it is created
with the aid of a machine, like camera, the author is the one who operated
the machine. For musical work it is the composer. In choreographic work,
the author is the one who creates and expresses the dance in form. With
computer software or program, the author is the software developer or
programmer. In the case of cinematographic work or sound recording or
audio-visual work, the author is the person by whom the arrangements for
the making of the work or recording is undertaken

The reporter who took shorthand of a speech and published a report of

same in a newspaper is the author of the newspaper report. A case in time
is the case of Walter v. Lane.

Walter v Lane
The reporters from “The Times” newspaper took down shorthand notes of
a series of speeches given by a prominent politician and later transcribed
them, adding punctuation, connections and revisions to reproduce
verbatim the speeches. These were then published in The Times. The
respondent in the case published a book including these speeches, taken
substantially from the reports of those speeches in The Times. The
question for the court was whether the reporters of the speech could be
considered "authors" under the terms of the Copyright Act. The House of
Lords, by a 4-1 majority, reversed the decision of the Court of Appeal. The
court held that the reporters were authors under the Copyright Act 1842.
The effort, skill and time that spent was sufficient to make them original.

Where a person engages a ghost writer to write his biography based on

material supplied by the subject, the ghost writer would ordinarily be the
author in whom copyright subsist.
In the case of Evans v. E. Houlton & Co., passing on memories for use in
a ghosted autobiography is not sufficient for a claim of joint authorship.
Tomlin J considered whether a publication had been authorised by the
copyright owner and said: ‘where a man sold the rights in relation to a
manuscript to another with a view to its production, and it was in fact
produced, both the English language and common sense required him to
hold that this man had ‘authorised’ the printing and publication.’

The mere fact that a person is the subject of a production, the story being
an incident of his life for which he provided the material will not suffice
for authorship or joint authorship
In Cummins v. Bond, a spiritualist medium was held to be the author of a
script purportedly dictated to her by a spirit. The facts of the case is that
Geraldine Cummins was a professional medium who used a pen to write
down a message that she claimed to been written by a 1900-year-old spirit,
Cleophas. The message was addressed to an architect, Bligh Bond, who
was present in the session, and after she wrote it, Bond typed the message
himself. Bond claimed copyright on the resulting text because it was
addressed to him and typed by him.
After two days of court hearings, the court decided that it had
no jurisdiction over the afterlife and therefore the copyright holder and
sole author is Cummins because she was the one who held the pen. The
court felt safer confining its findings to the living and not the spirit. Where
an artist, without having seen a deceased or their pictorial likeness but
relying on contacts with relatives of the dead person, makes portraits of
dead, the artist is the author of the portrait

Leah v. Two Worlds Publishing Co. Ltd [1951] 1 Ch. 393,

A father asked an artist to paint a likeness of his dead son -- by means of
extra-sensory perception. In a subsequent law suit brought by the artist
against the publisher of a periodical entitled Two Worlds for the
infringement of his copyright, the judge held as follows:
`` `Engraving, photograph or portrait' is a curious collocation of words:
one would have expected the third word in that grouping to be something
like `painting', because engraving is a method of production, and so is
photography; and it would seem that `portrait' covers all kinds of pictorial
representation, however produced. I am not sure that it is necessary to
express a concluded view about the matter, but I should have thought that
on the whole this was a portrait, a portrait produced by the mental process
of the artist, and intended to represent a deceased person as that person
was when living; and that it is none the less a portrait because the
materials that the artist used were entirely subjective'': [1951] 1 Ch. 393 at
398-399.

There is the presumption of authorship in favour of the individual whose

name is indicated as the author on any work, and this applies even where
the name is a pseudonym or pen name so long as it leaves no doubt as to
the identity of the author
Section 40 of Act 690 provides as follow
1) An individual whose name is indicated as the author on any work shall
be presumed to be the author of the work in the absence of any proof to the
contrary.
(2) This provision shall also apply where the name used is a pseudonym if
the pseudonym does not leave any doubt as to the identity of the author.
(3) The presumption of authorship also applies to works created by more
than one author.

The result of a derivative work or an adaptation qualifies for a separate

copyright if such skill and labour had been invested in it, and the author of
the underlying work cannot be a joint author

JOINT AUTHORSHIP
Difficulty sometimes arises where more than one person has made
contributions to the creation of the work. To resolve this, the question has
to be asked as to who was responsible for providing the necessary skill,
labour and judgment as a result of which the resultant work is protectable?
Notice the difference between a mere transcriber and a person who clothes
an idea in form; generally speaking the former is not the author but the
latter is. There is therefore a difference between the person who verbally
communicates an idea to another and the person who, together with
another, reduce an idea into form
The difference is aptly explained by Farewell J. in Donoghue v. Allied
Newspapers

Donoghue v. Allied Newspapers

“A person may have a brilliant idea for a story, or for a picture, or for a
play, and one which appears to him to be original; but if he communicates
that idea to an author or an oartist or a playwright, the production which is
the result of the communication of the idea... is the copyright of the person
who clothed the idea in form, whether by means of a picture, play, or a
book, and the owner of the idea has no right in that product...
On the other hand... if the author employs a shorthand writer to take down
a story which the author is composing, word for word, in shorthand, and
the shorthand writer then transcribes it, and the author has it published, the
author is the owner of the copyright and not the shorthand writer. A mere
amanuensis does not, by taking down word for word the language of the
author, become in any sense the owner of the copyright.”
In Donoghue, D’s newspaper had published a series of articles written by
its employees, detailing the racing career of P. P gave several interviews
sharing his experience and also supplied materials for the article
The Donoghue case is however distinguishable where the person dictating
the script make extensive corrections and read through the manuscript. In
such a case, the court is likely to hold the two persons as joint authors, as
was held in Najma Heptulla v. Orient Longman Ltd

Najma Heptulla v. Orient Longman Ltd. and Ors.

In this case, the plaintiff is the legal heir of the author of the book India
Wins Freedom. The defendant is the publisher of said book. The defendant
entered into an agreement with one Prof. Humayun Kabir to make contents
of the book known to the public. The plaintiff obtained an injunction
restraining defendants from breaking seals of covers of the complete
book India Wins Freedom and from making its contents known to the
public. According to the preface to the said book written by Kabir,
Maulana Azad used to describe his experiences in Urdu, on the basis of
which a draft in English would be prepared by Kabir. The court held that
active and close intellectual collaboration and cooperation between
Maulana Azad implied that Kabir is a joint author of the book with
Maulana Azad. Hence, the defendants were allowed to break the seals of
the covers of the complete book India Wins Freedom and make its
contents known to the public
Where then do we draw the line? What qualifies a work to be one of a
work of joint authorship?
Section 76 of Act 690 defines “Work of joint authorship” as a work
created by two or more authors in collaboration, in which the individual
contributions are indistinguishable from each other.

NB: copyright is not always a single and indivisible whole but could be a
bundle of separate rights in one work...
The question whether a person is a joint author is a question of degree – as
to the contribution to the creation of the work and not necessarily its
performance.

Work of joint authorship is not accidental, but the result of a “pre-

concerted joint design”
Beckingham v. Hodgens
In the present case, Mr Robert Beckingham (professionally known as
Bobby Valentino) was a professional fiddle (a violin) player. The
band The Bluebells (led by the appellant Mr Robert Hodgens) hired him as
a session musician at a recording session. Beckingham wrote the violin
part that features in the introduction to the song. The new version of this
song later became a hit. Years later, Beckingham claimed joint authorship
on the new version of the song. His copyright claim succeeded before the
high court. The court held that Beckingham jointly authored the new
version of the work. Mr Robert Hodgens appealed.
Issue:
Whether Mr Robert Beckingham was allowed to have joint authorship on
the song on basis of his contribution?

Held:

The Court of Appeal dismissed the appeal and held there is no basis to
challenge the findings of the high court’s judge. Also, Beckingham is not
estopped in his copyright claim, even though he brought the claim years
later. Finally, it is possible to have two or more joint authors of a copyright
work and as long as the authors have collaborated. Herewith, there is no
need for a common intention to produce a work of joint authorship.
Although, there should be a common design to produce the work itself. Mr
Robert Hodgens’s appeal failed.

In this case the court upheld the plaintiff’s claim of joint authorship of a
musical work, having written the violin part of the song entitled “Young at
heart” without any significant input from anyone else
.
A person doesn’t become a joint author by merely making suggestions or
constructive criticisms towards the improvement of a play

Wiseman v. Weindenfeld & Nicholson

A play called The English Way of Doing Things was written by the second
defendant, William Donaldson, who based it on his novel of the same
name. Donaldson was an established novelist but had never written a play.
The idea for transforming the novel into a play came from the plaintiff,
Wiseman, an aspiring stage producer, who provided Donaldson with
advice and criticism during the writing of the play and who claimed to be a
joint author.
Held: Wiseman had written no part of the play. Considering whether the
contribution Wiseman had actually made qualified him as a joint author. It
did not: ‘I have said that Mr. Donaldson quite frankly accepted that he had
not had great experience in the field of the theatre. He made it quite plain
that, in writing this play, he was indebted to Mr. Wiseman not only for
many hints of stagecraft, but also for a great deal of constructive criticism.
Mr. Wiseman, Mr. Donaldson told me, was a useful critic, able to say
pertinent things about how plays should be written; but, says Mr.
Donaldson, he certainly did not write the play.’

Godfrey v. Lees
The claimant (Robert Godfrey) was a pianist and arranger who had been
associated with the group Barclay James Harvest for a period of about 18
months, during which time the group had recorded its first two albums.
The first four defendants (the guitarist John Lees, the bass player Leslie
Holroyd, the drummer Melvin Pritchard and the lead singer and keyboard
player Stuart Wolstenholme) were the members of the group during that
period. Claims against four publishing and record companies had been
compromised. Robert Godfrey claimed joint authorship of, and therefore
joint ownership of the copyright in, six musical works in the versions
recorded on the group’s albums. In four cases he had composed orchestral
passages, or made orchestral arrangements, for the songs. In the other two
cases he had provided piano or organ accompaniments. He also made a
separate claim that there had been an oral agreement, or at any rate a
common understanding, that the income from the group’s activities would
be shared equally between the four members of the group and himself. The
latter claim wholly failed.
In considering the copyright claims, Blackburne J held:
“What the claimant to joint authorship of a work must establish is that he
has made a significant and original contribution to the creation of the work
and that he has done so pursuant to a common design. ... It is not necessary
that his contribution to the work is equal in terms of either quantity,
quality or originality to that of his collaborators. Nor, in the case of a song,
does it matter that his contribution is to the ... arrangement of the song
rather than to the song itself.”

He was held to be a joint author of some six musical works of a pop group
which he worked closely as the group’s orchestral arranger even though he
never joined the group
Brighton v. Jones
In the present case, the defendant, Jones wrote a play called Stones In His
Pocket. The claimant, Brighton, directed the play. Later on, Jones rewrote
the play, and it became a major success. Brighton claimed that because of
her contributions to the play during rehearsals, she should be recognised as
its joint author.

Issue:

Whether the changes and contributions made by Brighton were sufficiently

significant to establish joint authorship on the play?
Held:

The court held that in order to be a joint author of a work, one must make
a significant contribution towards the creation of the work. In the present
case, although Brighton made important changes and valuable
contributions during the rehearsals, they were not sufficient to make her a
joint author.
In Brighton v Jones, the courts coined 3 major principles one should use
when looking towards contribution to copyright, Park J outlined:
1. Contributions do not need to be of equal “magnitude” to the
contributions of other joint authors, but they must be significant. No
judgement on quality, quantity or originality can explicitly include
or exclude a contribution. It must be substantial.
2. Contributions must be contributions to the creation of the work.
Time, effort, skill, expertise and creativity can only gain legal rights
if tied directly to the authoring of the work. Improving a work is not
creating the work. Brighton had only improved a work.
3. A person can become joint author even when they don’t physically
author the work. Park J used the case law example of Cala Homes
(South) Ltd v Alfred McAlpine Homes East Ltd. In this case
drawings of house designs were physically done by Crawley
Hodgson employees. However, Cala Homes were directly
instructing the employees. Thereby leading to Cala Holmes gaining
joint ownership over the designs. One must prove they had direct
responsibility for the copyrighted fixation, and Brighton couldn’t
prove that even with her contributions.
OWNERSHIP OF COPYRIGHT
As a general rule, the author of a copyright protected work is the first
owner of copyright in that work. This is the first ownership principle; that
the author owns copyright in the work he creates. Remember the long title
to the Statute of Anne in 1710; An Act for the Encouragement of
Learning, by Vesting the Copies of Printed Books in the Authors or
Purchasers of such Copies...
Where for the first time ownership of printed books were vested in authors
of those books; recognition as owners of their creations. That has
imbedded the copyright regimes over the years till our current Act. This is
an incidence of the natural right justification for the intellectual property
regime.

EXCEPTION TO FIRST OWNERSHIP PRINCIPLE

 Work of employed authors – in the absence of an agreement to the
contrary, a copyright work is owned by the employer where the
work is created in the course of employment – section 7 of Act 690.
 Commissioned work – in the absence of an agreement to the
contrary, a copyright work is owned by the person who
commissioned a work where the work is created pursuant to a
commission – section 7 of Act 690.
 Public benefit work – with reference to section 8 of Act 690,
ownership of these works are vested in the President of the Republic
of Ghana on behalf of the people of Ghana.
SOME CASES TO ILLUSTRATE
In Musicians Union of Ghana v. Abraham, the plaintiffs were held to be
mere employees who were paid for their roles played in the band, and so
not entitled to copyright in the musical works
A similar conclusion was held in Ellis v. Donkoh where the pianist was
denied any claim to ownership of copyright in the musical work as he had
been paid for the performance of those piano sessions.
And where an author assigns his economic rights in a work to an assignee
for a specified period, the author does not have capacity to institute legal
action for copyright infringement within the period of the licence or
assignment - Ransome-Kuti v. Phonogram Ltd

RIGHTS CONFERRED ON COPYRIGHT HOLDER

Law confers on the author or owner of copyright certain exclusive right to
do or authorize the doing of certain acts in relation to the protected work.
Sections 5 and 6 of the Act 690 categorizes these rights into economic
rights and moral rights respectively. While the economic rights allow the
right holder to derive certain monetary or financial returns on the work
(more to the reward theory), moral rights allow the right holder to take
certain actions to preserve connection to his work (more to the natural
right theory). The acts contained in these provisions of the law are said to
be restricted by copyright. Consequently, the doing of any restricted acts in
relation to the rights conferred constitutes an infringement of copyright -
subject to the permitted uses of copyright as would be discussed later in
the semester.

ECONOMIC RIGHTS
As IPR constitute primarily property rights, the term Economic Rights
refers to the exclusive right of the right holder to authorise or prohibit the
reproduction, distribution, exportation or importation, or other exploitative
activities, such as rental and lending, public performance, communication
to the public and adaptation in cases of copyrighted work or use and
storage in cases of trademarks, of the by IPR protected creation by third
parties, which have not previously obtained a license, within the boarders
of the states in which the intellectual property right has been granted or
obtained.

Section 5 of Act 690 provides for the economic rights which states that
The author of any protected copyright work has the exclusive economic
right in respect of the work to do or authorize the doing of any of the
following:
(a) the reproduction of the work in any manner or form,
(b) the translation, adaptation, arrangement or any other transformation of
the work,
(c) the public performance, broadcasting and communication of the work
to the public,
(d) the distribution to the public of originals or copies of the work by way
of first sales or other first transfer of ownership, and
(e) the commercial rental to the public of originals or copies of the work.
MORAL RIGHTS
The concept of Moral Rights relies on the connection between a person
and their creation, as moral rights constitute the right of the creator to
protect the integrity and ownership of their work to maintain the
“indestructible creational bond” that exists between their personality and
their creation, and as such can only be held by a natural person. The scope
of moral rights varies depending on the state’s cultural conceptions of
authorship and ownership, the ratio for the protection of IPR and the type
of creation for which protection has been grated or obtained. However, it
usually includes the right to paternity for inventors, the right to attribution
and right to object to false attribution for authors, the right to publish or
divulge a work, to object to alterations or destruction of the original work,
the right to object to excessive criticism, the right to withdraw a work from
circulation, and the right to dictate forms and means of performance for
copyrighted work.

Whereas Economic Rights can be freely transferred, this is not the case for
Moral Rights, which can be merely waived in some jurisdictions.

Section 6 of Act 690

(1) In addition to the economic rights referred to in section 5, the author of
protected copyright work has the sole moral right
(a) to claim authorship of the work and in particular to demand that the
name or pseudonym of the author be mentioned when any of the acts
referred to in section 5 are done in relation to the work, and
(b) to object to and seek relief in connection with any distortion, mutilation
or other modification of the work where that act would be or is prejudicial
to the reputation of the author or where the work is discredited by the act.

NB: This is what is sometimes referred to in the literature as the right to

integrity
Snow v. Eaton Centre Ltd (1982), 70 C.P.R. (2d) 105 (Ont. H.C.)
Michael Snow was commissioned to do a sculpture called Flight
Stop consisting of a number of Canada geese in flight in the atrium of the
Toronto Eaton Centre. During the Christmas season of 1981 the Eaton
Centre placed red ribbons around the necks of the geese. Snow brought an
action against the Centre to get an injunction to have the ribbons removed.
He had argued that the ribbons offended the integrity of, and distorted, his
work. The judge agreed with Snow. He held that the sculpture's integrity
was "distorted, mutilated or otherwise modified" which was "to the
prejudice of the honour or reputation of the author" contrary to section
28.2 of the Copyright Act. The opinion was based both on the opinion of
Snow as well as the testimony of experts in the art community

Prise de parole Inc v Guérin, éditeur Ltée

Guérin published a collection of stories for schools including segments of
a copyrighted work by an author Doric Germain who had assigned the
publisher (Prise de Parole Inc.) exclusive rights to negotiate the copyright
as well as exclusive publishing rights. Prise de Parole and Germain
brought action for damages and an injunction for copyright infringement
as well as infringement of moral rights.
The issues that arose were:
 Was there an infringement of copyright?
 Was there an infringement of the author's moral rights?
Decision: Injunction granted and damages of $10,000 awarded to the
author and the publisher.
The reason being that the court found that the infringement of copyright
under s.27 of the Copyright Act was obvious given the facts. The court
applied the following test:
Who holds the copyright: shown here to be Prise de Parole Inc.
Has the copying being done with consent: no
Is there fair dealing: no
The court applied the test for infringement of moral rights used in Snow v
Eaton Centre Ltd.:
Subjective component (creator’s perspective): the author was frustrated by
the changes, arguing that it is such a clumsy reproduction of his work that
he would rather not have his name associated with it
Objective component (perspective must be reasonably arrived at): the
court found there had been no damage to the author's reputation or honour;
there had been no change in the amount of Germain's public appearances,
no ridicule or mocking by associates, no people who had complained of
the editing.
As a result of their being no objective evidence of damage to the author's
reputation, the court found no infringement of moral rights.

Ratio
To bring action for infringement of moral rights the plaintiff must prove in
an objective manner that their reputation or honour has been damaged.

DURATION OF COPYRIGHT

DURATION OF COPYRIGHT IN INDIVIDUALS

Section 12 of Act 690 says that
(1) The rights of the author referred to in section 5 are protected during the
life of the author and seventy years after the death of the author unless the
contrary is stated in this Act.
(2) Where a work is jointly authored, the rights of the author referred to in
section 5 are protected during the life of the last surviving author and
seventy years after the death of that author.

DURATION OF COPYRIGHT IN BODIES CORPORATE

Section 13 of Act 690
Where the copyright in a work is owned by a public corporation or other
body corporate, the term of protection shall be seventy years from the date
on which the work was either made or first published, whichever date is
the later.

DURATION OF COPYRIGHT IN ANONYMOUS WORKS

Section 14 of Act 690
Where a work is published anonymously or under a pseudonym, the rights
of the author referred to in section 5 are protected until the expiration of
seventy years from the date on which the work was either made, first made
available to the public, or first published, whichever date is the later, but if
the identity of the author is known or is no longer in doubt before the
expiration of that period, the rights of the author shall be protected during
the life of the author and seventy years after the death of the author.

DURATION OF COPYRIGHT IN AUDIO-VISUAL WORKS

Section 15 of Act 690
In the case of an audio-visual work, the rights of the author referred to in
section 5 are protected until the expiration of seventy years from the date
of the making of the work, or where the work is made available to the
public during that period with the consent of the author, until the
expiration of seventy years from the date on which the work was either
made, first made available to the public, or first published, whichever date
is the later.

DURATION OF COPYRIGHT IN SOUND RECORDING

Section 16 of Act 690
In the case of a sound recording, the rights of the author referred to in
section 5 are protected from the publication of the sound recording until
the expiration of seventy years after the year of publication or, if the sound
recording has not been published from the fixation of the sound recording,
until the expiration of seventy years after the year of fixation.
DURATION OF PROTECTION FOR EXPRESSIONS OF
FOLKLORE
Section 17 of Act 690
The rights vested in the President on behalf of and in trust for the people of
the Republic in respect of folklore under section 4 exist in perpetuity.

DURATION OF MORAL RIGHTS

Section 18 of Act 690
The moral rights of authors under section 6 exist in perpetuity and these
rights shall be enforceable by the author, during the lifetime of the author,
and after the author's death, by the author's successors whether or not the
economic rights vested in the author under section 5 are still vested in the
author or the successor in title of the author.

COPYRIGHT INFRINGEMENT
The doing of any of the acts contrary to:
• The economic and moral rights of the author under Sections 5 and 6
• The economic and moral rights of the Performer under Sections 28 and
31 (neighbouring rights)
• The rights of the broadcasting organisation under Sections 33 and 34
(neighbouring rights)

 Primary infringement – performing or carrying out any of the acts

restricted by the copyright in the work
  Secondary infringement – dealing with infringing copies or
providing the avenue or apparatus or medium for the purpose of
making infringing copies – here, knowledge of infringement or
having reason to believe that they are infringing copies or facilitate
infringement

HOW MUCH OF THE DOING OF A RESTRICTED ACT

AMOUNT TO INFRINGEMENT?
The question of substantiality has been taken by the courts as referring to
the quality of what has been taken rather than its quantity in proportion to
the whole work

Ladbroke v. William Hill

The plaintiff alleged copying of their football pools coupons and copyright
infringement. The issues were as to the extent of copying required to
establish infringement, and whether it was proper to look at the several
parts of the work separately. Held: The question of substantiality is a
matter of quality rather than quantity. There must be a sufficient
resemblance between the copyright work and the alleged infringement, but
there is no copyright in a mere idea. The subsistence of copyright involves
an assessment of the whole work in which copyright is claimed. It is
wrong to make that assessment by dissecting the whole into separate parts
and then submitting that there is no copyright in the parts. As regards
originality: ‘The word ‘original’ does not in this connection mean that the
work must be the expression of original or inventive thought. Copyright
Acts are not concerned with the originality of ideas, but with the
expression of thought, and in the case of ‘literary work’, with the
expression of thought in print or writing. The originality which is required
relates to the expression of the thought.’ and ‘as regards compilation,
originality is a matter of degree depending on the amount of skill,
judgment or labour that has been involved in making the compilation.’
‘Substantiality depends upon quality rather than quantity.’
Lord Pearce said: ‘The reproduction of a part which by itself has no
originality will not normally be a substantial part of the copyright and
therefore will not be protected. For that which would not attract copyright
except by reason of its collocation will, when robbed of that collocation,
not be a substantial part of the copyright and therefore the courts will not
hold its reproduction to be an infringement. It is this, I think, which is
meant by one or two judicial observations that ‘there is no copyright’ in
some unoriginal part of a whole that is copyright’.

The extent of infringement differs from work to work; nature of work will
determine whether a particular act will constitute infringement

CIVIL REMEDIES FOR INFRINGEMENT

section 47of Act 690 stipulates that
(1) A person whose rights under this Act are imminent danger of being
infringed or are being infringed upon may initiate civil proceedings in the
High Court
(a) for an injunction to prevent the infringement or prohibit the
continuation of the infringement,
(b) in respect of imported goods or goods ready for export, for an order
requiring the Customs, Excise and Preventive Service to detain the goods,
or
(c) for the recovery of damages for the infringement.

(2) On an ex parte application, the Court may make an order in chambers

for the inspection or removal from the defendant's premises of copyright
infringing materials which constitute evidence of infringement by the
defendant.
(3) The grant of an injunction under subsection (1) of this section shall not
affect the claim for damages in respect of loss sustained by the applicant as
a result of the infringement of the applicant's rights under this Act.
(4) A person who sustains damage from an infringement of that person's
rights under this Act may institute civil proceedings against the person
responsible for the infringement whether or not the person has been
successfully prosecuted under this Act.
(5) Where the Customs, Excise and Preventive Service (CEPS) detain
goods under subsection (1)(b)
(a) the right holder or the person upon whose application the order was
made shall provide to the CEPS a sufficiently detailed description of the
goods to make them readily recognisable by the CEPS;
(b) the CEPS shall release the goods to their owner if within ten working
days it is not informed by the person upon whose application the order was
made that
(i) proceedings leading to a decision on the merits of the case have been
initiated by a party other than the owner of the detained goods, or
(ii) an extension of the order for the detention of the goods had been
granted by the appropriate authority.
(6) A right holder may apply directly to the CEPS for the detention of
goods upon the grounds stated in subsection (1)(b); and subsection (5)
shall apply to such an application as appropriate except that before the
application is granted, the applicant shall provide sufficient information to
satisfy the CEPS that there is an infringement or imminent infringement of
the rights holder's copyright or related right.
(7) Upon receipt of an application under subsection (6), the CEPS shall
within fourteen days, inform the applicant of
(a) the decision of the CEPS on the application; and
(b) where the application is granted, the period of the detention of the
goods.

CRIMINAL SANCTIONS FOR COPYRIGHT INFRINGEMENT

Section 42 of Act 690 outlines certain acts which constitute copyright and
related rights offences and it is provided as follows

(1) A person who

(a) reproduces, duplicates, extracts, imitates or imports into the country,
except for that person's private use, any work,
(b) causes to be reproduced, duplicated, extracted, imitated or imported
into the country except for the person's private use any work,
(c) distributes or permits or causes to be distributed in the country by way
of sale or otherwise any work,
(d) exhibits or permits or causes to be exhibited in public any work, (e)
removes or alters any electronic rights management information,

(f) distributes, imports for distribution, broadcasts, communicates or

makes available to the public, works, performances, copies of fixed
performances or sound recordings knowing that electronic right
management information has been removed or altered without authority,
or
(g) manufactures, imports, distributes, exports, sells, rents, possesses for
commercial purposes, offers to the public, advertises, communicates or
otherwise provides any device, product or component that is designed or
adapted to remove, alter or add electronic rights management information,
or
(h) circumvents any technological protection measure applied by the right
holder to the protected work, or
(i) manufactures, imports, distributes, exports, sells, rents, possesses for
commercial purposes, offers to the public, advertises, communicates or
otherwise provides without authority devices, components, services or
other means, designed, adapted, or promoted to circumvent such a
measure, or
(j) rents or lends to the public any work
where the person performing the act knew or had reasonable grounds to
know that the action induces, enables, facilitates or conceals an
infringement of any copyright or related right protected under this Act
without the licence or authorisation of the person whose rights are
protected under this Act or the agent of that person whose rights are
protected, infringes the protected rights and commits an offence
punishable under section 43 of this Act.

PENALTY FOR COPYRIGHT OFFENCE

Section 43 of Act 690 prescribes penalty for copyright as follows
A person who infringes a right protected under this Act commits an
offence and is liable on summary conviction to a fine of not more than one
thousand penalty units and not less than five hundred penalty units or to a
term of imprisonment of not more than three years or to both; and in the
case of a continuing offence to a further fine of not less than twenty-five
penalty units and not more than one hundred penalty units for each day
during which the offence continues.

HIGHLIGHTS OF SOME DEFENCES

• That copyright does not subsist in P’s work
• That the act complained of is not a restricted act
• That the act was done with the consent of the copyright owner
• That the act done was not in relation to a substantial part of the work
• That the act falls within the permitted uses of copyright
• Other defences: acquiescence and estoppel, want of jurisdiction
• Public interest defence - in rare cases –
Attorney-General v Guardian Newspapers Ltd (No 2) (‘Spycatcher’):
HL 13 Oct 1988

A retired secret service employee sought to publish his memoirs from

Australia. The British government sought to restrain publication there, and
the defendants sought to report those proceedings, which would involve
publication of the allegations made. The AG sought to restrain those
publications. It was held that A duty of confidence arises when
confidential information comes to the knowledge of a person (the
confidant) in circumstances where he has notice, or is held to have agreed,
that the information is confidential, with the effect that it would be just in
all the circumstances that he should be precluded from disclosing the
information to others. There would be no point in imposing a duty of
confidence in respect of the secrets of the marital bed if newspapers were
free to publish those secrets when betrayed to them by the unfaithful
partner. When trade secrets are betrayed by a confidant it is usually the
third party who exploits the information and it is the activity of the third
party that must be stopped.
The court could look to the Convention to help decide how common law
should develop. There was in principle no difference between article 10 of
the European Convention of Human Rights and the English law of
confidence. ‘the principle of confidentiality only applies to information to
the extent that it is confidential. In particular, once it has entered what is
usually called the public domain (which means no more than that the
information in question is so generally accessible that, in all the
circumstances, it cannot be regarded as confidential) then, as a general
rule, the principle of confidentiality can have no application to it.’ and ‘ I
conceive it to be my duty, when I am free to do so, to interpret the law in
accordance with the obligations of the Crown under [the Convention]. But
for present purposes the important words are ‘when I am free to do so’.
The sovereign legislator in the United Kingdom is Parliament. If
Parliament has plainly laid down the law, it is the duty of the courts to
apply it, whether that would involve the Crown in breach of an
international treaty or not.’ Lord Griffiths considered the correct approach
to the defence of public interest in a copyright action: ‘If Peter Wright
owns the copyright in Spycatcher, which I doubt, it seems to me extremely
unlikely that any court in this country would uphold his claim to copyright
if any newspaper or any third party chose to publish Spycatcher and keep
such profits as they might make to themselves. I would expect a judge to
say that the disgraceful circumstances in which he wrote and published
Spycatcher disentitled him to seek the assistance of the court to obtain any
redress: see Glyn v Weston Feature Film Co. [1916] 1 Ch. 261.’ A third
limiting principle of the protection afforded by the law of confidence was
‘although the basis of the law’s protection of confidence is that there is a
public interest that confidences should be preserved and protected by the
law, nevertheless that public interest may be outweighed by some other
countervailing public interest which favours disclosure. This limitation
may apply, as the learned judge pointed out, to all types of confidential
information. It is this limiting principle which may require a court to carry
out a balancing operation, weighing the public interest in maintaining
confidence against a countervailing public interest favouring disclosure.’
Lord Jauncey said: ‘The courts of the United Kingdom will not enforce
copyright claims in relation to every original literary work. The
publication of Spycatcher was against the public interest and was in breach
of the duty of confidence which Peter Wright owed to the Crown. His
action reeked of turpitude. It is in these circumstances inconceivable that a
United Kingdom court would afford to him or his publishers any
protection in relation to any copyright which either of them may possess in
the book.’ Lord Goff of Chievely said that an obligation of confidence
could arise even where the information in question had not been confided
by a confider to a confidant: ‘I realise that, in the vast majority of cases, in
particular those concerned with trade secrets, the duty of confidence will
arise from a transaction or relationship between the parties – often a
contract, in which event the duty may arise by reason of either an express
or an implied term of that contract. It is in such cases as these that the
expressions ‘confider’ and ‘confidant’ are perhaps most aptly employed.
But it is well settled that a duty of confidence may arise in equity
independently of such cases; and I have expressed the circumstances in
which the duty arises in broad terms, not merely to embrace those cases
where a third party receives information from a person who is under a duty
of confidence in respect of it, knowing that it has been disclosed by that
person to him in breach of his duty of confidence, but also to include
certain situations, beloved of law teachers – where an obviously
confidential document is wafted by an electric fan out of a window into a
crowded street, or where an obviously confidential document, such as a
private diary, is dropped in a public place, and is then picked up by a
passer-by.’ Lord Goff set out three limiting principles for the rights of
confidentiality: ‘The first limiting principle (which is rather an expression
of the scope of the duty) is highly relevant to this appeal. It is that the
principle of confidentiality only applies to information to the extent that it
is confidential. In particular, once it has entered what is usually called the
public domain (which means no more than that the information in question
is so generally accessible that, in all the circumstances, it cannot be
regarded as confidential) then, as a general rule, the principle of
confidentiality can have no application to it.
The second limiting principle is that the duty of confidence applies neither
to useless information, nor to trivia. There is no need for me to develop
this point.
The third limiting principle is of far greater importance. It is that, although
the basis of the law’s protection of confidence is that there is a public
interest that confidences should be preserved and protected by the law,
nevertheless that public interest may be outweighed by some other
countervailing public interest which favours disclosure. This limitation
may apply, as the learned judge pointed out, to all types of confidential
information. It is this limiting principle which may require a court to carry
out a balancing operation, weighing the public interest in maintaining
confidence against a countervailing public interest favouring disclosure’.

Lion Laboratories v Evans

Lion Laboratories manufactured and marketed the Lion Intoximeter which
was used by the police for measuring blood alcohol levels of motorists.
Two ex-employees approached the Press with four documents taken from
Lion. The documents indicated that the Lion Intoximeter had faults which
could have resulted in a significant number of motorists being wrongly
convicted. Lion started proceedings against their ex-employees and
Express Newspapers Limited to restrain disclosure of the information as to
the faults. They obtained an interlocutory injunction restraining breach of
confidence and infringement of copyright. The defendants appealed.
Held: The Court of Appeal allowed the appeal. The documents contained
confidential information it would have been a breach of confidence to
publish the information in them and an infringement of copyright to
publish the documents themselves unless there were defences which
permitted that in the vital public interest. Stephenson LJ The judge was
‘right to make no difference between confidence and copyright for the
purposes of this case’ and ‘The problem before the judge and before this
court is how best to resolve, before trial, a conflict of two competing
public interests. The first public interest is the preservation of the right of
organisations, as of individuals, to keep secret confidential information.
The courts will restrain breaches of confidence, and breaches of copyright,
unless there is just cause or excuse for breaking confidence or infringing
copyright. The just cause or excuse with which this case is concerned is
the public interest in admittedly confidential information. There is
confidential information which the public may have a right to receive and
others, in particular the press, now extended to the media, may have a
right, and even a duty to publish, even if the information has been
unlawfully obtained in flagrant breach of confidence and irrespective of
the motive of the informer. The duty of confidence, the public interest in
maintaining it, is a restriction on the freedom of the press which is
recognised by our law, as well as by article 10(2) of the Convention for the
Protection of Human Rights and Fundamental Freedoms (1953) (Cmd.
8969); the duty to publish, the countervailing interest of the public in being
kept informed of matters which are of real public concern, is an inroad on
the privacy of confidential matters.’ There were four considerations.
‘. . .The public are interested in many private matters which are no real
concern of theirs and which the public have no pressing need to know.
Secondly, the media have a private interest of their own in publishing what
appeals to the public and may increase their circulation or the numbers of
their viewers or listeners; . . . Thirdly, there are cases in which the public
interest is best served by an informer giving the confidential information,
not to the press but to the police or some other responsible body. . . .
Fourthly . . . ‘there is no confidence as to the disclosure of iniquity’: and in
1984 extends to serious misdeeds or grave misconduct, he submits that
misconduct of that kind is necessary to destroy the duty of confidence or
excuse the breach of it, and nothing of that sort is alleged against the
plaintiffs in the evidence now before the court.’ and ‘What makes this case
so special is that the plaintiffs’ right to keep inviolate the secrecy of the
information which the defendants wish to publish is undisputed, and the
only question for interlocutory decision is whether that right is outweighed
by the public interest, not in exposing persons who may be guilty of
offences for which they have not been punished, but in disclosing the risk
of the plaintiffs being instrumental in punishing other people for offences
which they may not have committed.’ ‘The issue raised by the defendants
is a serious question concerning a matter which affects the life, and even
the liberty of an unascertainable number of Her Majesty’s subjects and
though there is no proof that any of them has been wrongly convicted on
the evidence of the plaintiffs’ Intoximeter, and we certainly cannot decide
that any has, we must not restrain the defendants from putting before the
public this further information as to how the Lion Intoximeter 3000 has
worked, and how the plaintiffs regard and discharge their responsibility for
it, although the information is confidential and was unlawfully taken in
breach of confidence.’
Griffiths LJ: ‘The first question to be determined is whether there exists a
defence of public interest to actions for breach of confidentiality and
copyright, and if so, whether it is limited to situations in which there has
been serious wrongdoing by the plaintiffs – the so-called ‘iniquity’ rule.
I am quite satisfied that the defence of public interest is now well
established in actions for breach of confidence and, although there is less
authority on the point, that it also extends to breach of copyright: see by
way of example Fraser v Evans [1969] 1 QB 349; Hubbard v Vosper
[1972] 2 QB 84; Woodward v Hutchins [1977] 1 WLR 760 and British
Steel Corporation v Granada Television Ltd [1981] AC 1096. I can see
no sensible reason why this defence should be limited to cases in which
there has been wrongdoing on the part of the plaintiffs. I believe that the
so-called iniquity rule evolved because in most cases where the facts
justified a publication in breach of confidence, it was because the plaintiff
had behaved so disgracefully or criminally that it was judged in the public
interest that his behaviour should be exposed. No doubt it is in such
circumstances that the defence will usually arise, but it is not difficult to
think of instances where, although there has been no wrongdoing on the
part of the plaintiff, it may be vital in the public interest to publish a part of
his confidential information. Stephenson LJ has given such an example in
the course of his judgment.
I therefore agree with Leonard J that it is not an essential ingredient of this
defence that the plaintiffs should have been guilty of iniquitous conduct’.

Ashdown v. Telegraph
The Sunday Telegraph had published verbatim extracts from a lengthy
minute of a meeting between Lord Ashdown, the Prime Minister and other
political figures. The extracts contradicted denials emanating from
Downing Street of stories in other newspapers concerning the extent of
planned co-operation between New Labour and the Liberal Democrats.
Lord Ashdown was intending to publish the diaries of which the minute
formed part. Although the newspaper did not pay to publish the extracts,
the editor of the Sunday Telegraph had clearly understood that the minute
was confidential. The Claimant brought proceedings for breach of
copyright and breach of confidence. He applied under Part 24 for summary
judgment on the copyright claim. The Vice-Chancellor granted the
application and ordered disclosure so that the Claimant could elect
between an account of profits or damages. The Defendant appealed.

Issue

(1) Whether there was a fair-dealing defence under s.30; (2) Whether there
could be a public interest defence; (3) Whether summary judgment was
properly granted.

Held

(1) The Defendants could not avail themselves of a s.30 defence because
they could not bring themselves within any of its parameters. (2) The
Court would recognise a separate public interest defence in an appropriate
case, but it was not necessary for the Defendants in this case to have made
such liberal use of the copyright material. (3) The judge had been correct
to grant summary judgment

PUBLIC BENEFIT WORKS – SECTION 8

Section 8 of Act 690 provides as follows
(1) The rights referred to in sections 5 and 6 of this Act shall not vest in
any person in respect of the following works,
(a) an enactment,
(b) a decision made by a court or tribunal established under any enactment
for the administration of justice in the Republic,
(c) a report made by a commission of enquiry appointed by the
Government or any agency of the Government and published by the
Government, and
(d) except where news is disseminated by the private media, news, namely
a report of fresh events or current information made by the media, whether
published in written form, by broadcast, or communicated to the public by
any other means.

(2) The President is the trustee for the public of the works specified in
subsection (1) other than works authored by the private media under
paragraph (d) of that subsection.

NB: an act may not be copyright infringement but is without prejudice to

any claim in law such as breach of confidence or passing off that may be
brought by Plaintiff

PERMITTED USES OF COPYRIGHT - SECTIONS 19 TO 23

Section 19—Permitted use of work protected by copyright

(1) The use of a literary or artistic work either in the original language or
in translation shall not be an infringement of the right of the author in that
work and shall not require the consent of the owner of the copyright where
the use involves
(a) the reproduction, translation, adaptation, arrangement or other
transformation of the work for exclusive personal use of a person, if the
user is an individual and the work has been made public,
(b) subject to subsection (2) of this section, the inclusion with an
indication of the source and the name of the author of quotations from the
work in another work, including

quotations from articles in newspapers or periodicals in the form of press

summaries, if the work from which the quotations are taken has been made
public,
(c) subject to subsection (3)
(i) the utilisation of the work by way of illustration in publications,
broadcasts of sound or visual recordings for teaching, to the extent
justified for the purposes, or
(ii) the communication for teaching purposes of the work, broadcast for
use in educational institutions, or
(iii) the utilisation of the work for professional training or public
education;
if the work has been made public; (d) in the case of
(i) an article published in one or more newspapers or periodicals on
current economic, political or religious topics, or
(ii) a broadcast on current economic, political or religious topics,
the reproduction of the article in a newspaper or periodical or the
broadcast or other communication to the public where a statement of the
source is provided unless the article or broadcast when first published or
made was accompanied by an express condition prohibiting its use without
consent,
(e) the reproduction or making available to the public by means of
photographic works, audio-visual works or other means of communication
of any work that can be seen or heard in the course of the reporting of
fresh events or new information, if
(i) the work is reproduced or made available for the purpose of reporting
by a news medium of fresh events or new information, and
(ii) the use of the work does not extend beyond that justified for the
purpose of keeping the public informed of current events,
(f) the reproduction of works of art or architecture in an audio-visual work
for cinema or television or in a broadcast by television and the
communication to the public of any of those works of art or architecture if
those works are
(i) permanently located in a place where they can be viewed by the
public, or
(ii) included in an audio-visual work for cinema or television only by way
of background or as incidental to essential matters represented,

(g) subject to subsection (4), the reproduction in the media or the

communication to the public of
(i) political speech delivered in public,
(ii) speech delivered in public during legal proceedings, or
(iii) lecture, address, sermon or other work of a similar nature delivered in
public,
where the use by reproduction or communication to the public is
exclusively for the purpose of reporting fresh events or new information.
 (2) The permission under subsection (1)(a) shall not extend to
reproduction
(a) of a work of architecture in the form of building or other construction;
(b) in the form of reprography of a whole or of a substantial part of a book
or of musical work in the form of notation;
(c) of the whole or of a substantial part of a database in digital form; and
(d) of a computer program, except as provided in section 16.
(3) Paragraph (b) of subsection (1) does not apply in respect of any
particular quotations unless the quotations referred to in that paragraph are
compatible with fair practice and the extent of the quotations does not
exceed what is justified for the purpose of the work in which the
quotations are used.
(4) Paragraph (c) of subsection (1) does not apply in respect of any
particular work unless the use referred to in that paragraph is compatible
with fair practice and the source of the work used and the name of the
author are indicated in the relevant publication, broadcast or recording.
(5) Paragraph (g) of subsection (1) does not apply unless the reproduction
referred to in that paragraph and the number of copies made in the
reproduction are limited to what is required in the particular
circumstances.
(6) Despite the provisions of section 5(a) the temporary reproduction of a
work is not an infringement of copyright if the reproduction is made in
order to make a digitally stored work perceptible or in the process of a
digital transmission
(a) by a person who or entity that is authorised for that purpose by
(i) the owner of the copyright; or (ii) operation of law; and
(b) as an accessory that occurs during the normal operation of the
equipment sued and which is
(i) automatically deleted; and
(ii) incapable of being retrieved for any other purpose than those referred
to in this subsection.

Section 20—Reproduction and adaptation of Computer programs

(1) The reproduction, in a single copy, or the adaptation of a computer
program by the lawful owner of a copy of that computer program is not an
infringement of copyright if the reproduction or adaptation is necessary for
(a) the use of the computer program with a computer for the purpose and
extent for which the computer program has been obtained; or
(b) archival purpose and for the replacement of the lawfully owned copy
of the computer program in the event that the said copy of the computer
program is lost, destroyed or rendered unusable.
(2) A reproduction or an adaptation of a computer program shall not be
used for any other purpose than those specified in subsection (1) and a
reproduction or adaptation shall be destroyed when the continued
possession of the reproduction or adaptation becomes unlawful.

Section 21—Permitted use of protected copyright work by library and

archive
(1) A library and archive with activities that are not for gain may, without
the authorisation of the author or other owner of copyright, make a single
copy of the work by reprographic reproduction.
(2) A reprographic reproduction under subsection (1) may be made when
the work reproduced is a published article, other short work or short
extract of a work and where the purpose of the reproduction is to satisfy
the request of an individual.
(3) The library or archive shall under subsection (1) ascertain that the copy
is to be used solely for the purpose of study, scholarship or private
research.
(4) The act of reproduction under subsection (1) shall be an isolated case
which shall occur on separate and unrelated occasions and shall occur
where
(a) there is no collective licence available under which copies can be
made, or
(b) the copy is made in order to preserve or replace a copy which has been
lost, destroyed or rendered unusable in the permanent collection of similar
library or archive if it is impossible to obtain the copy under reasonable
conditions.

(5) Where a library or, archive requires more than a single copy of a work
by reprographic reproduction, the permission for this shall be obtained
from the author, other owner of copyright or from an appropriate
collective administration society authorised by the publisher.
(6) The provisions of this section are subject to the interest of the
publisher, author or the relevant collective administration society.

Section 22—Permitted use of work or publication of portrait in public

interest events
(1) The accidental or incidental inclusion of a work in the reporting of a
news broadcast of fresh events or of new information is not an
infringement of the rights of the author in the work.
(2) The publication of the portrait of a person is not an infringement of the
rights of the author or other person having an interest in the portrait where
the publication is related to scientific, educational or cultural purposes in
general or to facts or events of public interest or events that have occurred
in public.

Section 23—Ephemeral recordings

(1) Where a work is broadcast, the broadcaster may make a recording of
the broadcast with the broadcaster's own facility and may produce copies
of the recording for the broadcasters own use.
(2) Subject to subsection (3) of this section, the copies of the recording
shall be destroyed by the broadcaster within six months after the date on
which the recording was made.
(3) An authorised recording under subsection (1) of this section of
exceptional documentary character may be preserved for presentation to
the National Archives.
(4) The preservation of an authorised recording for presentation to the
National Archives does not affect the rights of the author in the work that
was broadcast.
(5) Whether a recording of a broadcast is of exceptional documentary
character is a question of fact to be determined by the broadcaster after
taking into consideration the circumstances of the case and in particular
the need for the enhancement of the historical and cultural aspects of life
in the country.
Copies of Sound Recordings, Mechanical Reproduction Rights of
Composers
In short
• Exclusive Personal Use of literary or artistic work subject to the ff.
conditions: • User is an individual
• Work has been made public
• But this permission (for exclusive personal use) shall not extend to •
Reproduction of a work of architecture
• Reprography of whole or substantial part of book or musical notation •
Computer programs
The taking, even where permitted or excepted, must be compactible with
fair practice, otherwise referred to as ‘fair dealing’

FAIR DEALING/FAIR USE

Fair dealing provisions allow the copying or other use of the work which
would otherwise be an infringement... the amount taken being relevant in
most cases
• Defence of fair dealing under the Act must relate to the taking of the
work for the purpose of:
• Criticism or review or comment – 19(1)(b), 19(3)
• Education or teaching – 19(1)(c), 19(4)
• Reporting fresh event or new information – 19(1)(g), 19(5)
• How is the defence of fair dealing different from the doctrine of
substantiality???
SCOPE OF FAIR DEALING
Hubbard v Vosper
On 9 September 1971 The Mind Benders, a book critical of Scientology
written by Cyril Vosper, a former scientologist of 14 years, was published
by Neville spearman. The Church of Scientology obtained an
interim injunction on the same day to restrain publication of the book. The
book contained many extracts from the works of L. Ron Hubbard,
including books such as Axioms and Logics and Introduction to
Scientology Ethics. These extracts were often accompanied by criticism
and explanations in Vosper's book. Also included in the book was
information obtained by Vosper through Scientology courses, which the
Church of Scientology claimed was confidential by virtue of a declaration
signed by Vosper not to divulge any of the information to outsiders -
specifically to those who were not clear. The issue was whether the
extracts in The Mind Benders constituted copyright infringement, and
whether the information published in the book amounted to an actionable
breach of confidence.

The lower court granted the injunction to prevent publication of the book,
finding that there was a strong case for infringement. A further attempt by
the Church of Scientology to appeal the case to the House of Lords was
dismissed on 9 February 1972.

The hardcover edition of the book was released after the ruling, while
a paperback edition, titled The Mind Benders: The Book They Tried to
Ban was published in 1973, including a reference to the litigation in the
appendix.
The Church of Scientology also attempted to ban the book
in Canadian libraries by threatening the sue for libel. Several libraries were
subsequently sued when they refused to remove the books.
The defense of fair dealing was successfully raised. This says that: “No
fair dealing with a literary, dramatic or musical work shall constitute an
infringement of the copyright in the work if it is for purposes of criticism
or review, whether of that work or of another work, and is accompanied
by a sufficient acknowledgment.”

Lord Denning in Hubbard v. Vosper gave this description:

It is impossible to define what is fair dealing. It must be a question of
degree. You must first consider the number and extent of the quotation.
Are they altogether too many and too long to be fair? Then you must
consider the use made of them... Next you must consider the proportions.
To take long extracts and attach short comments may be unfair. But short
extracts and long comments may be fair. Other considerations may come
to mind also. But it must be a matter of impression.

Frazer v. BBC
The Claimant company brought copyright infringement proceedings
against the Defendants for the use of 14 photographs of Victoria Beckham
and her family in a television programme. The programme was produced
by the Second Defendant and broadcast by the First Defendant. The
Defendants relied on the defences of (1) fair dealing for the purposes of
criticism and review within s.30(1) of the Copyright Designs and Patents
Act 1988, and (2) in respect of two uses of the photographs, incidental
inclusion pursuant to s.31(1).

The issues were:

(1) whether the use was for the purposes of criticism and review;
(2) whether the dealing was fair;
(3) whether there was sufficient acknowledgement of the author within the
meaning of s.178; and in relation to 2 of the photographs whether the use
amounted to incidental inclusion.

The Court held, dismissing the claim, that in respect of all but one of the
photographs the use was for the purposes of criticism and review of other
works, namely the tabloid press and magazines, applying Pro Sieben AG v
Carlton UK TV Ltd [1999] and that the use was fair. Whilst Ashdown v
Telegraph Group Ltd was authority for the proposition that the criticism
must be of a work or another work and it was not sufficient to criticise
anything to invoke the section, there was no requirement that the criticism
and review contain specific reference to the work in question. The use of
the remaining photograph amounted to incidental inclusion. Sufficient
acknowledgment did not need to be express and it did not need to be a
contemporaneous act of identification.

The Supreme Court of Canada has stated in Law Society of Upper

Canada v. CCH Canadian Ltd that fair dealing should not be given a
restrictive interpretation, and that the manner of dealing might be relevant
and it might be unfair where multiple copies are widely distributed
It can conveniently be said that the circumstance of an act will determine
whether it falls within the meaning of fair dealing...

SOME FACTORS TO BE CONSIDERED

• Purpose – non commercial or private study. Taking large portions of
another’s work for commercial purpose may be unfair –

British Oxygen v. Liquid Air

where the defence of fair dealing was put forward when a letter of
correspondence was coped and distributed to a firm of stockbrokers.

British Oxygen Co Ltd and Liquid Air Ltd were commercial rivals. British
Oxygen Co Ltd offered another company – Tanks and Drums Ltd –
concessions on the oxygen they bought. British Oxygen Co Ltd discovered
Tanks and Drums Ltd were planning to trade with Liquid Air Ltd, and
wrote a letter stating they would cease trading with them on this basis.
Liquid Air Ltd got a copy of the letter and made copies public to expose
the bullying tactics. British Oxygen Co Ltd claimed a breach of copyright
and of confidence. Liquid Air was not putting forward a defence of ‘fair
dealing’ on the basis of criticism or review but was utilising the tactic to
highlight the allegedly suspicious dealings of British Oxygen Co Ltd.
Judge Romer ruled in favour of the plaintiffs favour of the British Oxygen
Co Ltd stating that the defendants would not be allowed to rely on ‘fair
dealing’ in order to attack the commercial character of British Oxygen.
Judge Romer said it was an infringement of copyright to allow a company
to publish a private business correspondence between two other companies
when there was no evidence of restraint of trade

But in Frazer v. BBC, where Brighter Pictures, a TV production

company, used images from newspaper pages on which 14 photographs of
the family of David Beckham (the footballer) and Victoria Beckham (the
pop singer). These images had been published under licence to the
newspaper. Fraser-Woodward Ltd, which owned the rights to those
photographs sued Brighter Pictures and the BBC for copyright
infringement. The principal defences were fair dealing within section
30(1) of the Copyright, Designs and Patents Act 1988, and of incidental
inclusion within the meaning of section 31(1) of the same Act.

Although apparently candid shots, according to the programme makers

they had actually been posed and this was part of the critical review which
was taking place. The defendants argued that the purpose of the
programme was to criticise tabloid journalism and review the methods
which were used by the tabloid press and the celebrities featured in it to
create and exploit a story to their own advantage.

Although the entire photograph was reproduced the judge, Mr Justice

Mann, held that there had not been an excessive use of the works as each
photograph was shown only for a few seconds. The judge pointed out that
any legitimate use of a photograph for the purposes of criticism and review
was likely to entail the reproduction of a large part of the work.

• Proportion – 5% might be ok but 50% might not be fair

• Motive – if motive is to compete with the other work, this might not
be fair
• Status of other work – whether published or confidential. See British
Oxygen v. Liquid Air where materials the subject of criticism was
unpublished
• Extent of use
• Prejudice to the interest of copyright owner

OTHER DEFENCES
• Aside the defence of fair dealing,
• Section 20 provides an exception in respect of reproduction and
adaptation of computer programs, where such act is necessary for
• the use of the computer program with a computer for the purpose and
extent for which the computer program has been obtained; or
• archival purpose and for the replacement of the lawfully owned copy of
the computer program in the event that the said copy of the computer
program is lost, destroyed or rendered unusable.
• The library and archive exception is provided for in section 21, but
applies to not for profit library and archives, must be reproduction of a
single copy of a published article, and the purpose must be solely for
study, scholarship or private research ... this exception is subject to the
interest of the publisher, author or the relevant collective administration
society.
• Incidental inclusion of copyright material in another work in the
reporting of a news broadcast of fresh events or of new information –
section 22(1)
• publication of portrait in public interest events (where the publication is
related to scientific, educational or cultural purposes in general or to facts
or events of public interest or events that have occurred in public) –
section 22(2)
• Exception relating to ephemeral recordings of broadcasts – section 23

Case list

Newspaper Licensing Agency v. Marks & Spencer [2001] RPC 76

Newspaper Licensing Agency v. Marks & Spencer [2003] 1 AC 551 •

Independent Television Publication v. Time Out [1984] FSR 64

Law Society of Upper Canada v. CCH Canadian Ltd [2004] FSR 871 •

COPYRIGHT ADMINISTRATION AND COLLECTIVE

MANAGEMENT ORGANIZATIONS
The law confers rights right holders among others, but there must be a
framework within which the rights and other administrative requirements
are actualized. Moreover, by the nature of a copyright, it can be extremely
difficult to manage, monitor and enforce the right against infringement if it
were to be done solely by the creator. The Act 690 does not only create the
Copyright Office to administer copyright and related rights but also creates
collective administration societies for the promotion and protection of the
interest of authors. The Act further creates the copyright monitoring team
as well as a Tribunal to assist aid aspects of the administration and
exploitation of copyright

THE COPYRIGHT OFFICE

The Copyright Office is created to administer copyright and related rights,
and towards this end, it exists to:
• implement copyright and copyright related laws and regulations and
provide for copyright administration
• investigate and redress cases of infringement of copyright, and settle
disputes of copyright where those disputes have not been reserved for
settlement by the Copyright Tribunal
• be responsible for the administration of external copyright relations
• administer copyrights of which the State is the owner
• carry out other duties in relation to copyright administration
• Its governing body is the Legal Services Board, and it has a few regional
branches currently Headed by the Copyright Administrator, the Office is
manned by other support staff

THE COPYRIGHT ADMINISTRATOR

He is the chief executive of the Copyright Office, and is appointed by the
President in accordance with the advice of the Legal Service Board given
in consultation with the Public Services Commission. The Copyright
Administrator holds office on terms and conditions specified in the letter
of appointment of the Copyright Administrator. He is responsible for the
day-to-day administration of the Copyright Office subject to directives that
the Legal Service Board may give. The Copyright Administrator may
delegate any of the duties of the office

COLLECTIVE ADMINISTRATION SOCIETIES

Imagine the author of a copyright work (an author of a book, a composer
of a musical work, the creator of a movie or any audio-visual work, etc.)
having to deal with the hundreds and thousands and millions of users
either for purpose of licensing or enforcing right against infringement. The
difficulty and complexity envisaged by authors managing, monitoring and
enforcing their rights individually justifies the creation of collective
administration societies under section 49 of Act 690.

Section 49 of Act 690 provides that —Collective administration

societies
(1) Authors, producers, performers and publishers may form collective
administration societies for the promotion and protection of their interest.
(2) A collective administration society may acting on the authority of the
owner of a right collect and distribute royalties and other remuneration
accruing to the owner.
(3) The Minister may by legislative instrument make Regulations for the
formation, operation and administration of societies.
Collective Administration Societies is also referred to as collective
management societies or collective management organizations (CMOs).
These are private organizations created by creators of a class of works for
the promotion and protection of their interest. Owners of copyright work
assign to the collective administration society the right to collect and
distribute royalties and other remuneration accruing to the owner, and also
assist in the monitoring and enforcement of the rights

NB: Ready more on on the operation of collective administration society

from section 20 to 30 of the COPYRIGHT REGULATIONS, 2010 (L.I.
1962)

SOME COLLECTIVE ADMINISTRATION SOCIETIES

• Copy Ghana – literary work
• MUSIGA/Ghana Music Rights Organization (GAMRO) – musical work
• ARSOC – audio visual rights society of Ghana

Opanin Kwame Afreh v. Copyright Society of Ghana [23/12/1999]

Civil Appeal No. 24/99 (unreported) – judgment attached……………

In MUSIGA v. Abraham also, it was the CMO which took action to

enforce right of its members. The facts of the case are that first defendant
was the managing director of an establishment, T. Ltd., which owned the
Sweet Talks band of which he was also the manager. The plaintiffs were
engaged to play for the band though it was not discernible from the
pleadings whether it was T. Ltd. or the first defendant who employed
them. The first defendant, during the existence of the employment
relationship, entered into an agreement with the second defendants, a
recording company, granting them the sole and exclusive right of making
recordings of the performance of the band, otherwise described as the
“artist” in the agreement. In consideration of that right the company
undertook to pay to the first defendant royalties which represented
proprietors’ and artists’ services, payment to the composers and writers of
the musical work contained in the recordings. The plaintiffs received their
normal remunerations as bandsmen and were paid part of royalties
received as incentives. The plaintiffs claiming that the first defendant was
their agent or manager sought an order of interim injunction to restrain the
second defendants from (1) making any further releases of their records
and (2)
making any further royalty payments to the first defendant on their behalf.
They also sought an order that royalties held by the first defendant from
the second defendants be deposited in court pending the determination of
the suit and furthermore an order for interim preservation of a set of
musical instruments.
COPYRIGHT MONITORING TEAM
Section 59 of Act 690 states that
(1) There is by this Act established a copyright monitoring team referred
to as "the monitoring team".
(2) The monitoring team shall comprise a number of police officers, five
representatives of Copyright owners and two officers of the Copyright
Office that the Copyright Office may require.
(3) The monitoring team shall
(a) monitor copyright works,
(b) investigate cases in respect of copyright,
(c) undertake anti-piracy activity, and
(d) perform other functions that are necessary to protect authors.
(4) Members of the monitoring team from the Police Service may be
seconded to the Copyright Office for periods and on terms that the
Minister of Justice and the Minister of Interior may determine on the
advice of the Copyright Administrator and the Inspector General of Police.

FOLKLORE
What is Folklore?
Folklore is protected and administered by the Copyright Act, 2005 (Act
690). Section 76 of Act 690 which is the interpretation section provides
this definition of folklore

"folklore" means the literary, artistic and scientific expressions belonging

to the cultural heritage of Ghana which are created, preserved and
developed by ethnic communities of Ghana or by an unidentified
Ghanaian author, and includes kente and adinkra designs, where the author
of the designs are not known, and any similar work designated under this
Act to be works of folklore

PROTECTION FOR FOLKLORE

Section 4 of Act 690 provides as follows:
(1) An expression of folklore is protected under this Act against
(a) reproduction,
(b) communication to the public by performance, broadcasting,
distribution by cable or other means, and
(c) adaptation, translation and other transformation.
(2) The rights of folklore are vested in the President on behalf of and in
trust for the people of the Republic.

ADMINISTRATION OF FOLKLORE IN GHANA

Folklore is administered by the National Folklore Board
Section 59 of Act 690
(1) There is established by this Act a National Folklore Board referred to
in this Act as "the Board". (2) The Board shall consist of
(a) a chairperson,
(b) the Copyright Administrator,
(c) a person nominated by the National Commission on Culture; and (d)
six other persons
who shall be appointed by the President in consultation with the Council
of State.
FUNCTIONS OF THE BOARD
Section 63 of Act 690 provides that
The Board shall
(a) administer, monitor and register expressions of folklore on behalf of
the Republic,
(b) maintain a register of expressions of folklore at the Copyright Office,
(c) preserve and monitor the use of expressions of folklore in the Republic,
(d) provide members of the public with information and advice on matters
relating to folklore,
(e) promote activities which will increase public awareness on the
activities of the Board, and
(f) promote activities for the dissemination of expressions of folklore
within the Republic and abroad.

USE OF FOLKLORE
Section 64 of Act 690 provides as follows:
(1) A person who intends to use folklore for any purpose other than as
permitted under section 19 of this Act, shall apply to the Board for
permission in the prescribed form and the person shall pay a fee that the
Board may determine.
(2) There shall be established by the Minister with the approval of the
Accountant-General a fund for the deposit of any fees that may be charged
in respect of the use of folklore.
(3) The fund shall be managed by the Board and shall be used
(a) for the preservation and promotion of folklore, and (b) for the
promotion of indigenous arts.
Administration, the Copyright Office and Miscellaneous Matters
LAW OF BREACH OF CONFIDENCE
Introduction
The area of law which deals with industrial, commercial, personal or state
security- sensitive information intended to be kept out of the public space.
State secrets received a great deal of publicity as a result of the publication
of Spycatcher, written by Peter Wright. Whiles copyright protects works
that have been expressed in some tangible medium and so made public, the
law on breach of confidence seeks to protect matters not put in the public
domain or part thereof. The basis is in equity so it is largely regulated by
case law. It is a limited legislative intervention as follows:
LEGISLATIVE INTERVENTION
Article 18 of the 1992 Constitution provides “ No person shall be
subjected to interference with the privacy of his home, property,
correspondence or communication except in accordance with law and as
may be necessary in a free and democratic society for public safety or the
economic well-being of the country, for the protection of health or morals,
for the prevention of disorder or crime or for the protection of the rights or
freedoms of others.”

Also, article 295 of the 1992 Constitution defines public interest as

"public interest" includes any right or advantage which enures or is
intended to enure to the benefit generally of the whole of the people of
Ghana

Section 5 of Protection Against Unfair Competition Act, 2000 (Act 589

(1) Any act or practice in the course of industrial or commercial activities,
that results in the disclosure, acquisition or use by another person of secret
information without the consent of the rightful owner of that information
and in a manner contrary to honest commercial practices constitutes an act
of unfair competition.

(2) Disclosure, acquisition or use of secret information by another person

without the consent of the rightful owner may, in particular, result from—
(a) industrial or commercial espionage;
(b) breach of contract;
(c) breach of confidence;
(d) inducement to commit any of the acts referred to in paragraphs (a) to
(c);
(e) acquisition of secret information by a third party who knew or was
grossly negligent in failing to know, that an act referred to in paragraphs
(a) to (d) was involved in the
acquisition.
(3) For the purposes of this section, information is "secret information" if
—
(a) it is not, as a body or in the precise configuration and assembly of its
components, generally known among or readily accessible to persons
within the circles that normally deal with the kind of information in
question;
(b) it has commercial value because it is secret; and
(c) it has been subject to reasonable steps under the circumstances by the
rightful owner to keep it secret.
(4) Any act or practice, in the course of industrial or commercial
activities, shall be considered an act of unfair competition if it consists or
results in—
(a) an unfair commercial use of secret test or other data, the origin of
which involves considerable effort and which have been submitted to a
competent authority for the purposes of obtaining approval of the
marketing of pharmaceutical or agricultural chemical products which
utilise new chemical entities; or
(b) the disclosure of such data, except where
(i) it is necessary for the protection of the public; and
(ii) steps are taken to ensure that the data are protected against unfair
commercial use.
NATURE OF SUBJECT MATTER
Even though IP concern of the law on breach of confidence, as it stands
now, relate more to commercial or industrial information, it generally
encompasses
• Personal information
• State secrets or security-sensitive information
• Religious information

HISTORICAL DEVELOPMENT
At common law, there was no right to privacy per se, save a right arising
out of contract or a known claim in tort.
In the old case of Morison v. Moat (1851) 9 Hare 241 which related to the
unlawful disclosure of certain magic cure, an injunction was successfully
secured... breach of faith and of contract. Although the term ‘breach of
confidence’ was not used at this stage, it was clear that the breach of faith
was actionable per se and was not dependent upon the existence of a
contract. There was no contractual relationship between the son of the
originator of the recipe and the son of the defendant.

The case of Prince Albert v. Strange (1849) 1 Mac & G 25 also helped
in establishing this area of law. In that case an action to prevent a third
party from making exhibitions of certain etchings (privately made by
Queen Victoria and Prince Albert for their personal amusement) was
successful... here there was no contractual relationship but relief granted
The action based on breach of confidence had not been properly developed
but a combination of some maxims of equity made it possible for the court
to grant reliefs in certain cases. The first major case on the law of breach
of confidence that laid foundations for its modern was Saltman
Engineering v. Campbell Engineering (1963) 3 All ER 413. In that case
the court firmly sought to formulate what was later to be the ingredients
for an action on breach of confidence
In this case, P owned copyright in certain drawings which it had submitted
to D to produce certain tools in accordance with the drawings. D retained
the drawings and later made use of them The court held that there was
breach of confidence; and that aside contract, for the information to be
confidential, it must have the necessary quality of confidence about it
even though this claim was based on contract and there was a finding of
breach of an implied condition that the D should have treated the drawings
as confidential, the court made the point that obligation of confidence is
not limited to cases where there exists a contractual obligation between the
parties, and that the law will prevent an abuse by a recipient of such
information even a contract aside

Megarry J was to properly formulate the guiding principles in finding an

action in breach of confidence in Coco v. Clark (1969) RPC 41, in which
P had designed some engine and entered into informal negotiation with the
D for the D to manufacture the engine. D caused the breakdown of
negotiations and later sought to manufacture its own engines making use
of the P's designs, even though they denied relying on P's idea, the court
set out the following as elements to prove in an action in breach of
confidence:
• that the information has the necessary quality of confidence (confidential
quality)
• that the information was imparted in circumstances that imports an
obligation to keep it in confidence (obligation of confidence)
• and that there is an unauthorised use of the information to the detriment
of the person offering the information (unauthorised disclosure or use)

CONFIDENTIAL QUALITY
Traditionally, trade secrets related to business or commercial or industrial
activity such as prices, customer connections, etc –

Coco v. Clark
A claim was made for breach of confidence in respect of technical
information whose value was commercial. Held: Megarry J set out three
elements which will normally be required if, apart from contract, a case of
breach of confidence is to succeed. In this case the information was found
not to be of a confidential nature as it was already in the public domain.
Megarry went on to say: ‘where information of commercial or industrial
value is given on a business-like basis and with some avowed common
object in mind, such as a joint venture. I would regard the recipient as
carrying a heavy burden if he seeks to repel a contention that he was
bound by an obligation of confidence.’
‘First, the information must be of a confidential nature. As Lord Greene
said in the Saltman case. ‘something which is public property and public
knowledge’ cannot per se provide any foundation for proceedings for
breach of confidence. However confidential the circumstances of
communication, there can be no breach of confidence in revealing to
others something which is already common knowledge. But this must not
be taken too far. Something that has been constructed solely from
materials in the public domain may possess the necessary quality of
confidentiality: for something new and confidential may have been
brought into being by the application of the skill and ingenuity of the
human brain. Novelty depends on the thing itself, and not upon the quality
of its constituent parts. whether it is described as originality or novelty or
ingenuity or otherwise, I think there must be some product of the human
brain which suffices to confer a confidential nature upon the information.
The second requirement is that the information must have been
communicated in circumstances importing an obligation of confidence.
However secret and confidential the information, there can be no binding
obligation of confidence if that information is blurted out in public or is
communicated in other circumstances which negative any duty of holding
it confidential. From the authorities cited to me, I have not been able to
derive any very precise idea of what test is to be applied in determining
whether the circumstances import an obligation of confidence. In the
Argyll case. Ungoed-Thomas, J. concluded his discussion of the
circumstances in which the publication of marital communications should
be restrained as being confidential by saying ‘If this was a well-developed
jurisdiction doubtless there would be guides and tests to aid in exercising
it’. In the absence of such guides or tests he then in effect concluded that
part of the communications there in question would on any reasonable test
emerge as confidential. It may be that that hard-worked creature, the
reasonable man, may be pressed into service once more; for I do not see
why he should not labour in equity as well as at law. It seems to me that if
the circumstances are such that any reasonable man standing in the shoes
of the recipient of the information would have realised that upon
reasonable grounds the information was being given to him in confidence,
then this should suffice to impose upon him the equitable obligation of
confidence. In particular, where information of commercial or industrial
value is given on a business-like basis and with some avowed common
object in mind, such as a joint venture or the manufacture of articles by
one party for the other, I would regard the recipient as carrying a heavy
burden if he seeks to repel a contention that he was bound by an obligation
of confidence: see the Saltman case. On that footing, for reasons that will
appear, I do not think I need explore this head further. I merely add that I
doubt whether equity would intervene unless the circumstances are of
sufficient gravity; equity ought not to be invoked merely to protect trivial
tittle-tattle, however confidential.
Thirdly, there must be an unauthorised use of the information to the
detriment of the person communicating it. Some of the statements of
principle in the cases omit any mention of detriment; others include it. At
first sight, it seems that detriment ought to be present if equity is to be
induced to intervene; but I can conceive of cases where a plaintiff might
have substantial motives for seeking the aid of equity and yet suffer
nothing which could fairly be called detriment to him, as when the
confidential information shows him in a favourable light but gravely
injures some relation or friend of his whom he wishes to protect. The point
does not arise for decision in this case, for detriment to the plaintiff plainly
exists. I need therefore say no more than that although for the purposes of
this case I have stated the proposition in the stricter form, I wish to keep
open the possibility of the true proposition being that in the wider form.’
Megarry J said: ‘if the circumstances are such that any reasonable man
standing in the shoes of the recipient of the information would have
realised that upon reasonable grounds the information was being given to
him in confidence, then this should suffice to impose on him the equitable
obligation of confidence.’

Herbert Morris v. Saxelby

The plaintiff company was a Manufacturer of hoisting machinery in the U.
K and the defendant had seen in the employment as draughtsman from the
time he felt school. After several years .... The defendant was engaged by
the company as engineer for two years and thereafter left the Company
under an agreement which contained a covenant by the defendant that he
would not During a period of seven years from his ceasing to be employed
by the company either in the U. K or in Ireland carry on businesses in sale
or manufacture of housing machinery
Held: The court held that the restraint in this case was wider than was
required for the protections of the proprietary interest of the plaintiff
company and therefore enforceable. Here, there was no evidence that the
defendant ever came into personal relations with any of the company's
Customers or that he had any influence over any of them enable him divert
their customers from the plaintiff company to any other firm. the court
found that all documents containing confidential Information or trade
secrets or formulae were closely monitored and no information was so
detailed and minute it would be impossible for any employee to carry it
away in his hands. It also found that the tabulated information did not
constitute trade secrets as such.

Faccenda Chicken v. Fowler,

The plaintiff Company was engaged in the business of marketing fresh
chicken in 1973 it employed fowler as its sales manager and at his
suggestion adopted a method of selling Fresh chickens from refrigerated
vans which traveled through particular routes within a defined area. Each
van salesman received sales information regarding the customer's names
and addresses the general inmate of the route, the quantity and quantity of
goods sold and the prices charged in November 1980, Fowler left the
plaintiff's employment and subsequently set up his own business of selling
fresh chickens from refrigerated vans. He conducted his business in the
same area as the plaintiff his vans operated on the same routes as the
plaintiff and he served the same type of customers. Five of the plaintiff's
van salesman and three other employees left the plaintiff’s employment
and joined fowler's business. None of the former employees was subject to
an express agreement restricting his or her services after leaving the
plaintiff 's employment. The plaintiff brought an action against fowler and
the other employees claiming damages for breach of the contracts of
employment in using the plaintiff sales information to the detriment of the
plaintiff

Held
(1) The duty of fidelity owed by an employee to a former employer was
not as great as duty implied in the employee's contract of employment and
owed during the subsistence of the employment when use or disclosure of
confidential information even though it did not amount to a trade secrets,
would be a breach of duly of good faith. Accordingly, confidential
information, concerning the employer's business acquired by an employee
in the course of his service could be used by the employee after his
employment had ceased as a trade secrets or was so Confidential but it
required the same protection as a trade secret. Furthermore, an employer
could not restrict the use or disclosure of confidential information a
restrictive in the employee contract of employment unless the information
sought to be protected was a trade secret equivalent to a trade secret
(2) In order to determine whether b information was a trade secret it was
necessary to have regard to
a. The nature of the employment for example, whether the status of the
employee was such that the regularly handled confidential information was
only handled by a restricted number of employees.
b. the nature of the information itself
c. Whether the employer had stressed the confidentiality of the information
to the employee and whether the relevant information could easily be
isolated from other non-confidential information which was part of the
same package of information.
Applying those tests, it was clear that neither the sales information as a
whole nor the information about the prices changed by the plaintiff fell
within the classes of confidential information which an employee was
banned by an implied term of his contract not to use or disclose after his
employment has ceased.
State secrets or security sensitive information - Section 3 of the State
Secrets Act, 1962 (Act 101) which deals with wrongful disclosure or
possession of State secret code passwords and other State security-
sensitive information among others, and criminalises same. see also the
Spycatcher case

PERSONAL CONFIDENCES
Prince Albert v. Strange
Both Queen Victoria and Prince Albert created a number of etchings in the
1840s as a hobby. The copper plates for these were entrusted to a printer in
Windsor called John Brown to create copies that the couple showed to
friends or gave away. The plates and the good copies were returned by
Brown. However, a number of extra copies had been run off by an
employee of Brown's, called Middleton. Middleton sold a set of 63
different prints for the sum of £5 to Jasper Tomsett Judge, a writer who in
1848 had published a book Sketches of Her Majesty's Household,
[2] investigating the Queen's finances, expenditures, and patronage. Judge
proposed to make a public exhibition of the etchings, and drew up a
catalogue for it, 50 copies of which were printed by his publisher, William
Strange; with two copies sent to Windsor Castle, for the sight of the Queen
and the Prince.
Held: Prince Albert succeeded in getting an injunction to prevent both the
exhibition and the publication of the catalogue. Lord Cottenham accepted
that it was justified on the grounds of both the enforcement of the prince’s
property rights and the employee’s breach of confidence (even though he
acknowledged privacy is the right being invaded). Thus, where
information or property came into another’s hands through breach of trust
or confidence, then the owner of the information is entitled to an
injunction to prevent the publication or use of the information.
Duchess of Argyll v. Duke of Argyll
The defendant, the Duke of Argyll divorced on the grounds of his wife's
adultery. The wife did not contest the divorce, on the understanding that
nothing more would be said about the adultery. The Duke subsequently
sold stories to the newspapers giving intimate details of that and other
aspects of his wife's private life.

Held: The Dukes wife was granted injunctions prohibiting publication.

Ungoed-Thomas J said that these types of cases indicate:

 1) A contract or obligation of confidence need not be expressed but

can be implied
 2) A breach of confidence or trust or faith can arise independently
of any right of property or contract
 3) The court in the exercise of its equitable jurisdiction will restrain
a breach of confidence independently of any right at law

Douglas v. Hello Ltd (No. 6)

The Douglases were a celebrity couple who sold exclusive photography
rights of their wedding to OK! Magazine. An unauthorised freelance
photographer gained access to the wedding and sold pictures to Hello!
Magazine, a rival competitor. The Douglases sought an interlocutory
injunction restraining publication which was initially granted, but then
lifted several days later. OK! Magazine brought their publication forward
to compete, incurring expenses. OK! And the Douglases sued for damages.
The issue was whether OK! Magazine and the Douglases had a right to
commercial confidence over the wedding photos that were published in the
public domain.

Decision / Outcome

The appeal was allowed on the basis that the Douglases and OK!
Magazine were entitled to a commercial confidence over the wedding
photos as the photos were not publicly available so were confidential, even
though information about the wedding was generally available for people
to communicate. There was found to be economic loss that arose from
Hello! Magazine’s interference, constituting an intentional act. The
photographs had a commercial value and therefore demonstrated the need
for confidentiality. The Douglases were entitled to protect the
confidentiality that Hello! Magazine and the unauthorised photographer
were intent on destroying. Thus, even though OK! published the
photographs before Hello!, this did not mean the photos were in the public
domain and no longer subject to confidence. Each photograph was
intended to convey the visual information of their wedding and that each
picture would be treated as a separate piece of information that OK! had an
exclusive right to publish. This right was deliberately interfered with.
Thus, the Douglases were entitled to damages for breach of confidence
and interference by Hello! Magazine.

Campbell v. Mirror Group Newspapers

The claimant was supermodel Naomi Campbell (C). She had made public
statements that she did not take drugs. The defendant newspaper published
articles regarding her drug addiction and showed photographs as she was
leaving a group meeting for drug addicts. C sought damages for breach of
confidentiality in relation to the covertly taken pictures although accepted
that the newspaper was entitled to publish the fact of her addiction and
treatment given her previous public statements.

Issue

C was successful at trial where it was held that the information complained
of was confidential and publication was not in the public interest. The
Court of Appeal allowed the defendant’s appeal on the basis that the
additional information of C’s medical treatment was in the public interest
and necessary for the journalistic credibility of the story. C appealed to the
House of Lords.

Decision/Outcome

The House of Lords held that the correct test to determine whether
information was private was to consider whether a reasonable person of
ordinary sensibility placed in the same situation as C would find the
disclosure of the information offensive. C’s therapy related to her physical
and mental health and the assurance of privacy was essential to such
treatment. The details of C’s therapy therefore constituted private
information which gave rise to a duty of confidentiality. Whilst the free
press had a journalistic margin of appreciation in the public interest this
had been exceeded. In relation to the photographs taken outside the group
meeting, the Court recognised that an individual may have a reasonable
expectation of privacy in a public place and that this expectation was
unjustly infringed in this case.
The nature of the confidential information was described by Lord Greene
MR in Saltman Engineering Co. Ltd v Campbell Engineering Co. Ltd
(1963) 3 All ER 413 at 415 as follows:
The information, to be confidential, must, I apprehend, apart from
contract, have the necessary quality of confidence about it, namely, it must
not be something which is public property and public knowledge. On the
other hand it is perfectly possible to have a confidential document, be it
formula, a plan, a sketch, or something of that kind, which is the result of
work done by the maker upon materials which may be available for the use
of anybody; but what makes it confidential is the fact that the maker of the
document has used his brain and thus produced a result which can only be
produced by somebody who goes through the same process.

An objective test is however required to be applied to determine whether

information is truly confidential. Simply marking a document with the
words ‘PRIVATE AND CONFIDENTIAL’ will not suffice if the contents
are commonplace and lie within the public domain. See Dalrymple’s
Application (1957) RPC 449 on this point.

On the other hand, lack of a notice that something is confidential does not
mean that the information will not be protected by the law of confidence.
Thus, in Collag Corp v Merck & Co. Inc (2003) FSR 16, it was held that
operators of manufacturing process often consider their process to be
confidential and take steps to keep it secret, imposing obligations on
suppliers and the like. They would strongly resist any suggestion that their
competitors be allowed to look around their manufacturing plant.
The Law of breach of confidence cannot protect information that is
unmistakably in the public domain. (Per Lord Goff in AG v Guardian
Newspapers (No.2) (1990) 1 AC 109 stated that "the copyright in the
book, including the film rights, are held by him on constructive trust for
the confider".

What if the information concerned is a mixture of confidential information

and a matter already in the public domain?

CMI Centers for Medical Innovation GMBH and Anr. v. Phytopharm

PLC, (1999) Fleet Street Reports 235 where the Court held that for a
plaintiff to succeed in a breach of confidence action he had to address at
least four matters; i.e. (i) he had to identify clearly what was the
information he was relying on; (ii) he had to show that it was handed over
in the circumstance of confidence; (iii) he had to show that it was
information of the type which could be treated as confidential; and (iv) he
had to show that it was used without his licence or there must be threat to
use it. It was added that at interlocutory stage.”

Here the onus will be on the claimant to identify what is confidential and
what is not.
TRADE SECRETS
This term is often used in relation to confidential information associated
with industrial and commercial activity.
In Faccenda Chicken Ltd v Fowler (1985) 1 ALL ER 724 Goulding J
defined three classes of information being:
1. Information which, because of its trivial character or its easy
accessibility from public sources, cannot be regarded as confidential
2. Information which an employee must treat as confidential, but which,
once learned, reasonably remains in the employee’s head and becomes part
of his skill and experience
3. Specific trade secrets so confidential that a continuing duty of
confidence applies even beyond the termination of employment or the
service contract

PUBLICATION
If the information has been published or disclosed to third parties on a
reasonable scale in the absence of an obligation of confidence, it falls into
the public domain and the law of confidence cannot prevent its subsequent
use and further disclosure.
Unless his conscience has been fixed by equity, a person who has received
the information in circumstances such that he was not, or could not
reasonably have been aware of the confidential nature is free to make use
of that information or to pass it on to others. However, even in such a case,
there will be remedies available against the person in breach.
If the information has found its way to the public domain, the person who
owed another an obligation of confidence in respect of that information
may be prevented from making use of that information himself for a
period of time. This is known as the ‘springboard doctrine’.

Terrapin v Builders Supply Co (Hayes) Ltd( 1967) RPC 375

the Defendants manufactured prefabricated portable buildings according to
the design of the plaintiff. In order to manufacture these portable
buildings, the Defendants had received from the Plaintiff manufacturing
details, specifications and technical information and know how. After the
contract ended the Defendant started offering for sale, a prefabricated
building which included many features of the plaintiff’s original design, in
competition with the product offered by the plaintiff. The Plaintiff thus
sued. The Defendants claimed its obligations of confidence was
discharged by the plaintiff having sold buildings and published brochures
which disclosed all features of the building(in other words the confidential
information to which the Defendants had been subject, could easily be
ascertained by reverse engineering and recording the material in the public
domain.
The trial judge, Roxburgh J, considered that it was clear the Defendants
had derived a significant advantage from the confidential information
provided by the plaintiff and had used it as a springboard in order to
compete with the plaintiff. As such, it was appropriate that it now be
placed under special disability in the field of competition, in order to
ensure that it did not get an unfair start. An interlocutory injunction was
thus granted to restrain the Defendants in connection with their activities.
However, the ‘springboard doctrine’ does not last indefinitely. Thus, in
Roger Bullivant Ltd v Ellis (1987) FSR 172, it was said that the
springboard doctrine would not extend beyond the period for which the
unfair advantage gained would reasonably be expected to remain, and that
the purpose for an injunction in such circumstances was not to punish the
defendant but to protect the claimant.
The springboard doctrine is used to deprive the defendant of that unfair
advantage he might have as a result of breach of confidence. Therefore, in
the Roger Bullivant case, the injunction imposed was for a limited
duration of one year.

A springboard injunction is therefore a type of injunction designed to

remove or limit the advantage that a person has gained through unlawful
activities, typically through the misuse of the another person’s confidential
information.
The individual who originally owed an obligation of confidence is thus
placed under a special disability by the injunction in order to ensure that he
does not get an unfair start.

PUBLIC INTEREST
The courts will not respect an obligation of confidence if it is in the
overriding public interest that the information is made available to the
general public at large or to a restricted class in the public interest. Public
interest is relevant where it concerns administration of justice, religion,
price fixing, experiments on animals etc.
Hellewell v Chief Constable of Derbyshire (1995) 1 WLR 804, where
the police gave copies of photograph of the claimant who had been
charged for shoplifting but not yet convicted to local shopkeepers involved
in a shop watch scheme and were concerned at the level of shoplifting.
The court held that the police were not free to use the photograph, which
was a confidential information as they wished. However the judge,
referring to a long list of convictions of the claimant and the fact that
dissemination of the photograph was limited to shop keepers and their staff
held that the police had acted in good faith for prevention or detection of
crime.

R v Ashworth Special Hospital Authority-Where the Authority

monitored telephone calls made by high risks patients having violent or
dangerous predilections. The monitoring was random and involved about
10 percent of calls but excluded privileged calls, such as calls made to
patients’ legal advisers. It was held that that was in the interest of national
security or interest and public safety to do so.

Author of a Blog v Times Newspapers Ltd (2009) EMLR 22

The Claimant is a serving police officer and the author of the “Night Jack”
blog, which deals with his police work and his opinions on a number of
social and political issues relating to the police and the administration of
justice. He sought to conceal his real identity by blogging under a
pseudonym. It was accepted that a journalist for the Times newspaper had
successfully identified the claimant by a process of deduction and
detective work, mainly using information available on the Internet. The
Claimant applied for an injunction to prevent the Times publishing his
identity. He argued that the newspaper was subject to an enforceable duty
of confidence not to reveal his identity and that he had a reasonable
expectation of privacy in respect of the information that he was the blog’s
author, in respect of which there was no countervailing public interest
justification for its disclosure.

The issue w/as whether the Claimant’s identity could be protected by the
law of confidence or privacy; whether nevertheless there was a public
interest justification for publication.

Held: The information that the Claimant was the author of the blog did not
have about it the necessary quality of confidence as contemplated by Coco
v A N Clark (Engineers) Ltd [1969] RPC 41 and nor did it qualify as
information in respect of which the Claimant had a reasonable expectation
of privacy, since blogging is a public activity. Further, even if the
Claimant had had a prima facie right to protect his identity, this would be
likely to be outweighed at trial by a countervailing public interest in this
case, namely the revelation to the public that a particular police officer had
been making these communications. That would assist the public in
assessing the value of the opinions expressed by the blog and in coming to
their own conclusions about whether it is desirable for serving officers to
communicate such matters publicly, whether or not that is an infringement
of relevant police disciplinary regulations. Accordingly, the injunction was
refused.

CONFLICT OF DIFFERING PUBLIC INTERESTS

This refers to situations where the public interest in maintaining
confidence has to be balanced against the wider interest of the general
public

W v Edgell (1990) Ch 359.

In this case, W had killed 5 people and had been diagnosed as suffering
from paranoid schizophrenia. At his trial, his plea of diminished
responsibility was accepted and he was detained to a mental facility. W’s
condition improved and his doctor requested that he should transferred to a
regional secure unit, with the doctor saying that the illness was under
control and that W was no longer a danger provided he stayed on
medication. W’s request for transfer was however refused by the Home
Secretary. W therefore applied to a mental health review tribunal for
discharge or transfer. A neutral doctor (Dr. E) who was asked to examine
W, came out with an unfavourable report, which was sent to W’s solicitor
but the solicitor failed to provide that information to the Home Secretary.
Being concerned, the doctor then sent a copy of the report to the Home
Secretary. W, complained that this was in breach of the confidential
relationship between a patient and doctor.
It was held that although W had a personal interest to see the confidence
he had reposed in Dr. E was not breached, the maintenance of the duty of
confidence by a doctor to his patient was not a matter of private but of
public interest. The public interest in maintaining confidence had to be
balanced against the public interest in protecting others from possible
violence.
Ashworth Security Hospital v MGN Ltd (2001) FSR 559
The Defendant newspaper published an article about the Moors murderer
Ian Brady, reporting the fact that he was on hunger strike in protest at
having been transferred to another ward. The article disclosed details and
extracts of his medical files which were held on the PACIS database of the
Claimant Hospital. The newspaper had received the confidential
documents from an intermediary who had received it from a source who
was likely to be a member of staff of the Claimant. Ian Brady had himself
put much of the information about his medical treatment in the public
domain. An order was made by Rougier J ordering the disclosure of the
identity of the intermediary who leaked the medical information on Ian
Brady. MGN appealed against the order on the grounds that: (1) The
information was not confidential in the sense that it was already in the
public domain; (2) As Brady had caused the information to be in the public
domain, the Defendant was not a tortfeasor in publishing the extracts.

Issue

The Defendant Newspaper appealed the Court of Appeal’s decision to

uphold the judge’s order and challenged it on the basis of the above issues.
In particular, the newspaper criticized the Master of the Rolls’ judgment
on the grounds that it expressed the view that the chilling effect of an order
on journalists was “no bad thing”. The newspaper argued that this
approach was wrong and turned Starsbourg jurisprudence on its head by
detecting a social value in the deterrent effect of an order on other
potential sources in the future.

Held

1) The Norwhich Pharmacal jurisdiction applied where the person against

whom the order was sought could be shown to have participated or
become involved in the wrongful act of another. In this case, the
newspaper clearly was on notice that the information it received from the
source was confidential and had been obtained in breach of a duty of
confidence owed by the leaker of the information to the Claimant. (2)
Whilst Brady could not complain about a breach of confidence after he
had himself placed similar information in the public domain, this did not
negate the Claimant’s independent right to retain the confidentiality of the
medical records contained on its database. (3) The Norwich Pharmacal
jurisdiction was not limited to cases where the injured person had already
began or intended to bring proceedings against the wrongdoer and
extended to cases where he intended to seek some other form of lawful
redress