| COPYRIGHT — Infringement — Original literary work — Claimant publisher of books about television characters asserting copyright therein— Defendant producing book based on same characters as in original works — Whether defendant “copying” substantial part of original work — Principles applicable
JHP Ltd v BBC Worldwide Ltd and another [2008] EWHC 757 (Ch); [2008] WLR (D) 120
Ch D: Norris J: 18 April 2008
In order to succeed in a claim for copying an original work, the claimant had to establish on the balance of probabilities that the defendant had copied a substantial part of that work.
Norris J so held in the Chancery Division when, inter alia, dismissing the claim of JHP Ltd that the defendant, BBC Worldwide Ltd (“BBCW”), had infringed the claimant’s copyright in certain original literary works contained in a number of books.
After the death of Terry Nation, the creator of the “Daleks”, characters from the BBC television series “Dr Who”, who had written a number of books about the Daleks which had been published by the claimant company, the claimant had approached BBCW with a proposal to republish some of the books. No agreement had been made between the claimant and BBCW concerning the use by it of any rights in the books which the claimant held.
Subsequently, BBCW published a book called “The Dalek Survival Guide” (“the Guide”) produced by a team of its writers. The claimant, which alleged that it was the owner of the copyright in the original books, claimed that BBCW had infringed that copyright by virtue of its unauthorised use of a substantial part of the books in their publication, or alternatively that BBCW had copied substantial parts of the original books.
NORRIS J said that BBCW had exclusive licences to publish the original books and that, in the circumstances, it had a complete defence to the claim for infringement. A number of principles were to be taken into account when considering the alternative claim based on copying part of an original work. First, the legal burden lay on the claimant to establish copying. Second, if there were a sufficient degree of similarity between the text of the original books and the text of the new book, an inference of copying could be drawn. Third, an evidential burden was then thrust upon the defendant to demonstrate independent creation, or deviation from a common source. Fourth, a sufficient degree of similarity could be established not simply by direct copying but also by “altered copying”. Fifth, if copying were established, that copying would only amount to an infringement of copyright in the relevant book if what had been taken comprised a substantial part of that book for the purposes of s 16(3) of the Copyright, Designs and Patents Act 1988 (acts restricted by copyright): see Designers Guild Ltd v Russell Williams (Textiles) Ltd (trading as Washington DC) [2000] 1 WLR 2416, paras 41–43. Sixth, whether it was a substantial part was always a question of fact and degree and involved an assessment of the importance of the copied part to the recognition and appreciation of the copyright work: see Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183, 222. Seventh, the practical test “what was worth copying was prima facie worth protecting”, so that the court should start with a bias toward anything that was “copied” being “substantial”, was not useful since it tended to confuse questions of “copying” with questions of “substantiality” and to proceed upon the premise that if the text was “worth” copying for the new book it was prima facie a substantial part of the original work. Last, part of the relevant original work which by itself had no originality would not normally be a substantial part of the copyright and copying it into the new work would not make it so: see Warwick Film Productions Ltd v Eisinger [1969] 1 Ch 508.
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