The Lidl v Tesco Appeal - Lord Justice Arnold on Copyright

 

Jane Lambert

Court of Appeal (Lord Justices Lewison, Arnold and Birss) Lidl Great Britain Ltd and Another v Tesco Stores Ltd and Another (Rev1) [2024] EWCA Civ 262 (19 March 2024)

This is the third of my supplementary articles on Lord Justice  Arnold's judgment in Lidl Great Britain Ltd and Another v Tesco Stores Ltd and Another (Rev1) [2024] EWCA Civ 262 (19 March 2024). I explained the reasons for these supplementary articles in the second paragraph of Lord Justice Arnold's Guidance on Trade Mark Law in the Lidl v Tesco Appeal on 25 March 2024. In this article, I discuss Lord Justice Arnold's guidance on copyright which he set out in paras [38] to [44] of his judgment.

Lord Justice Arnold acknowledged at para [38] that little dispute before the judge as to the applicable principles of copyright law but he chose to comment on them anyway because Mrs Justice Joanna Smith "did not have the benefit of the subsequent decisions of the Court of Appeal] in Wright v BTC Core [2023] EWCA Civ 868, [2023] FSR 21 and THJ Systems Ltd v Sheridan [2023] EWCA Civ 1354, [2024] ECDR 4" in which he delivered the lead judgments.

Wright v BTC Core

This was an appeal from Mr Justice Mellor's refusal to allow the claimants to serve a claim form and particulars of claim in a copyright infringement action outside the jurisdiction. He held that the claimant had no real prospect of proving that copyright subsisted in the Bitcoin file format because it had not been "recorded, in writing or otherwise" in accordance with s.3 (2) of the Copyright, Designs and Patents Act 1988. 

Before addressing this issue, Lord Justice Arnold considered arts 2, 9 and 20 of the Berne Convention, arts 9 and 10 of the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPs"), arts 1, 2, 3 and 4 of the WIPO Copyright Treaty, paras (6) and (11) of the recitals and art 1 of European Parliament and Council Directive 2009/24/EC of 23 April 2009 on the legal protection of computer programs (codified version), paras {15} and (20) of the recitals and arts 1 and 2 of the European Parliament and Council Directive 2001/29/EC of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society and s.1 (1) (a), s.3 (1), (2) and (3), s.16 (1) (a) and s.178 of the Copyright, Designs and Patents Act 1988. He discussed the principles for interpreting that legislation and the effect of British withdrawal from the EU on that legislation.

He explored the meaning of artistic and literary works in art 2 (1) of the Berne Convention and the requirement of fixation in art 2 (2).  Although the Berne Convention did not expressly require originality he noted that it was implied by the need for a copyright work to be an intellectual creation. He then considered copyright in computer programs.  Finally, he analysed SAS Institute Inc v World Programming Ltd [2010] EWHC 1829, [2011] RPC, Case C-5/08 Infopaq International A/S v Danske Dagblades Forening [2009] ECR I-6569 and  Case C-310/17 Levola Hengelo BV v Smilde Foods BV [EU: C:2018:899].

THJ Systems v Sheridan

This was an appeal against the deputy judge's finding that certain software-generated graphic images and graphic user interfaces were artistic works in which copyright subsisted.  As Lord Justice Arnold had discussed the legal framework in some detail in Wright he set out only to recap points of particular relevance to the appeal.  He said that s.1 (1) of the Copyright Designs and Patents Act 1988 must be interpreted as closely as possible to art  2 (a) of Directive 2001/29/EC.

He referred to para [37] of the judgment in Inforpaq where the Court had held that  "copyright within the meaning of Article 2(a) of Directive 2001/29 is liable to apply only in relation to a subject-matter which is original in the sense that it is its author's own intellectual creation."  He added that the Court of Justice of the European Union ("CJEU") had elaborated upon the requirement that the work be its author's own intellectual creation in several subsequent judgments.  Citing paras [89] and [94] of the judgment in Case C-145/10 Painer v Standard Verlags GmbH [2011] ECR I-12533, para [38] of Case C-604/10 Football Dataco Ltd v Yahoo! UK Ltd [EU: C:2012:115, para [19] of Case C-469/17 Funke Medien NRW v Germany EU: C:2019:623, para [30] of Case C-683/17 Cofemel—Sociedade de Vestuário SA v G-Star Raw CV [EU: C:2019:721 and paras [23] and [26] of Case C-833/18 SI v Chedech/Get2Get ("Brompton Bicycle") [EU: C:2020:461], he said that the author should be able to express his or her creative abilities in the production of the work by making free and creative choices to stamp the work created with his or her personal touch.

Referring to paras [48] and [49] of the judgment in Case C-393/09 Bezpecnostní softwarová asociace – Svaz softwarové ochrany v Ministerstvo kultury ("BSA") [2010] ECR I-13971, para [98] of Case C-403/98 Football Association Premier League Ltd v QC Leisure [2011] ECR I-9083, para [39] of Football Dataco, para [24] of Funke Medien, para [31] of Cofemel and paras [24] and [27] of Brompton Bicycle he said that the requirement that a copyright work to be its author's own intellectual creation is not satisfied where the content of the work is dictated by technical considerations, rules or other constraints which leave no room for creative freedom.

Originality

At para [39] pf Lidl, Lord Justice Arnold observed that s.1 (1) (a) of the Copyright, Designs and Patents Act 1988 requires a work to be original if copyright is to subsist in it.  That section has to be construed in accordance with art 2 (1) of Directive 2001/29/EC as interpreted by the CJEU before 31 Dec 2020.  He referred to the same paragraph of the judgment in Infopaq as he had quoted in his judgment in THJ Systems that copyright is only likely to apply in relation to subject matter that is original in the sense of being its author's own intellectual creation. Citing the same cases as he had in THJ Systems he made the same observations on the further decisions of the CJEU on the need for an author to express his or her personal touch and on works dictated by technical considerations not satisfying that requirement.

He noted in para [41] of his judgment that such cases as Football Dataco and Funke Medien make clear that the CJEU's test is not the same as the test of "skill and labour" that had been applied by the English courts up to 2009, and that it was more demanding. On the other hand, the decision in Painer established that even a simple portrait photograph may satisfy the intellectual creation test in an appropriate case.

Four points had to be noted about the application of the test. First, the test is an objective one. Secondly, there is nothing in the CJEU's case law that changes the provision in s.4 (1) (a) of the Copyright, Designs and Patents Act 1988 Act that graphic works qualify as artistic works "irrespective of artistic quality". Thirdly, the burden of proof lies on the claimant. Fourthly, a key item of evidence in a case concerned with graphic works is the work itself.

Infringement

S.16 (3) of the 1988 Act provides that copyright is infringed only if a "substantial part" of the work has been copied.  The CJEU held in Infopaq that such a part must "contain.. an element of the work which, as such, expresses the author's own intellectual creation".  Where there is sufficient creativity involved in the creation of the work for the work to be original but the degree of creativity is low then the scope of protection is narrow so that only a close copy will infringe.

Citation of Cases before Infopaq

Tesco had cited Dicks v Brooks (1880) 15 Ch D 22 in support of the proposition that:

"if A creates a first original work, B copies A's work but adds sufficiently to it to create a second original work, and C copies from B's work only the part created by A, then B has no claim for copyright infringement against C because that which has been copied by C is not original to B."

Although the proposition was not in dispute, Lord Justice Arnold warned that cases that had been decided before the Copyright Act 1911 were not reliable for interpreting the 1988 Act.  That was particularly the case on originality since there was no statutory requirement of originality before the 1911 Act.

Comment

The Court of Appeal applied the first sentence of para [42] and the last sentence of para [43] in deciding the copyright appeal in paras [191] and [192] of Lord Justice Arnold's judgment.  The above photo, incidentally, is Medusa by Caravaggio and the reason why we are not all turned to stone is that the model was the artist.  Tesco's argument was that the insertion of a blue background to the picture was not enough to merit a new copyright.   As I said in Trade Marks - The Appeal in Lidl v Tesco the Court of Appeal held otherwise but the protection against copying was very narrow.

Further Information

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