WIPRUlysses

23 April 2002

Jacqueline Irvine

On 22 November 2001 Judgment was handed down in Sean Sweeney and Graham Edward Camps (Suing as Trustees of the Estate of James Joyce) v Macmillan Publishers Limited and Danis Rose. The case concerned "A Readers' Edition" of Ulysses by James Joyce edited by Danis Rose and published by Macmillan ("RE"). The Joyce Estate sued for copyright infringement and passing off.

This article seeks to explore the copyright aspects of the case in greater depth. In keeping with Joyce's masterpiece the copyright issues were complex and intricate. The issues explored relatively uncharted waters in respect of EC legislation harmonising the term of copyright and bedrock principles of UK copyright law.

A. Copyright infringement

The Estate claimed that RE infringed copyright in:

  1. editions of Ulysses published during Joyce's lifetime (chiefly the first edition published in 1922) ("the 1922 Edition"); and
  2. the manuscripts, typescripts and proofs of Ulysses ("the Working Papers") which were published in the 1970s (which remain in copyright for 50 years from publication).
  1. Infringement of copyright in the 1922 Edition

(a) The application of the Duration of Copyrights and Rights in Performances Regulations 1995 SI 1995/3297 ("the Regulations").

Mr Rose admitted that RE copied the 1922 Edition. The 1922 Edition went out of copyright on 1 January 1992, 50 years after Joyce's death (in accordance with the Copyright Designs and Patents Act, 1988). The copyright was "revived" on 1 January 1996 when the UK implemented the EC Directive 93/98/EEC of 29 October 1993 ("the Directive") which harmonised the term of protection of copyright for author's rights (literary, dramatic, musical and artistic works and motion pictures) in the EC at 70 years from the death of an author. The Directive was implemented in the UK by the Regulations.

Although directives are binding as to the result to be achieved, it is up to each Member State to implement them. The Directive gave Member States discretion as to the provisions they adopted to deal with persons who had "acquired rights" by virtue of exploitation of works in which copyright had revived in the period 1992-1995. The rationale for this is to be found in recitals (26) and (27) to the Directive.

The UK dealt with acquired rights in Regulations 23 and 24:

Regulation 23(1) provides that "Nothing done before [1 January 1996] shall be regarded as infringing revived copyright in a work".

Reg 23(2) provides that it is not an infringement of revived copyright in a work:

(a) to do anything after 1 January 1996 in pursuance of arrangements made before 1 January 1995 at a time when copyright did not subsist in the work, or

(b) to issue to the public after 1 January 1996 copies of the work made before 1 July 1995 at a time when copyright did not subsist in the work.

Regulation 23(3) (a) and (b) make broadly the same provision in respect of works containing a copy or adaptation of a revived copyright work, although Regulation 23(3)(a) requires that the arrangements are made before 1 July 1995 and Regulation 23(3)(b) appears to allow exploitation of copies of such works made before 1 July 1995 which is not limited to the issue of such existing copies to the public.

"Arrangements" are defined in Reg 23(5) as meaning "arrangements for the exploitation of the work in question."

Regulation 24 provides for a compulsory licence subject to the payment of a reasonable royalty or other remuneration (to be determined by the Copyright Tribunal if not agreed) in respect of acts which would otherwise infringe revived copyright. However, a person intending to avail himself of this right "must give reasonable notice of his intention to the copyright owner, stating when he intends to begin to do the acts" (Regulation 24(2)) and "shall not be treated as licensed" (Regulation 24(3)) if such notice is not given.

The Defendants sought to rely on the Regulations.

(b) Meaning of "Arrangements" in Regulation 23

Mr Rose claimed that he had carried out the bulk of the work on RE when the 1922 Edition was out of copyright. He had not entered into a contract with Macmillan until August 1996 although he had discussions with various publishers during the period when the 1922 Edition was out of copyright and in May 1995 set up his own publishing imprint through which he claimed that he would have published RE.

Lloyd J made clear that the notion of "arrangements" was not so wide as to render non-infringing anything done after commencement "in consequence of anything at all which has been done, or steps of any kind taken, with a view to exploiting the work in question, before 1 January 1995". Such a wide interpretation would be at odds with the narrow provisions of Regulation 23(2)(b). While he did not attempt a definition, he found that, although "arrangements" were not necessarily limited to a contract, "some degree of solidity or certainty" was required such that later acts could be said to be done in pursuance of them. He said that Mr Rose's discussions with publishers were limited contacts and could not constitute arrangements.

Neither could the work carried out by Mr Rose on RE between 1992 and 1995 be relied on to constitute an arrangement. Lloyd J commented that if work done were sufficient to establish an arrangement it would be difficult to draw a distinction with a case where someone had only done a little work in the window but thereafter continued the work and published it. Further, such an interpretation would "interfere to an excessive extent with the rights conferred by revived copyright". In reaching this conclusion, Lloyd J followed both his own judgment as to the interpretation of the Regulations "even on its own terms" and Butterfly Music srl v Carosellso Edizioni Musicali e Discographie srl Case C-60/98 [1999] ECJ 1-3939, [2000] CMLR 587 in which Advocate-General Cosmas commented that the discretionary power given to Member States in Article 10(3) of the Directive as to transitional provisions "must be as narrow as possible" such that national authorities in construing such transitional provisions should "have in mind that that protection is by way of exception; the scope of protection afforded to copyright and related rights, the safeguarding of which constitutes the Directive's central and principal objective, must be restricted as little as possible".

Lloyd J did leave some latitude for Courts who may have to address questions as to "arrangements" in the future. The Judge thought it likely that an understanding or negotiations between an author and publisher in pursuance of which all or a great deal of the work preparatory to publishing was done in the window could constitute arrangements. Likewise he left open the question whether a person who unilaterally took "the sort of steps which, on the part of different persons collaborating, would amount to relevant arrangements" would qualify as having made arrangements (e.g. an author with his own printing company).

As a result of the Judge's finding, RE could not take advantage of Regulation 23 which would have allowed the 1922 Edition to be published without payment of any royalties to the Estate.

(c) Nature of notice required for the purposes of Regulation 24

The Judge did however, find that the Defendants were entitled to a compulsory licence subject to payment of a reasonable royalty under Regulation 24. Whether the requirements of Regulation 24 were satisfied depended on construction of a letter sent by Macmillan to the Estate's solicitors in March 1997. The letter did not state the date of publication nor did it enclose a copy of RE. The Judge held that the Regulation did not require that a copy of the proposed text be supplied. While he thought that it would be sensible for a Regulation 24 notice to state the intended date it was sufficient that the Estate had found out about the June 1997 publication date through publicity for RE and in oral exchanges.

Given that a compulsory licensor under Regulation 24 could not stop intended acts once notice was given Lloyd J concluded that a short period of notice (in this case about 3 months) was reasonable. The Claimants argued that the notice given in the letter had been on a contingent basis - i.e. if the publication was not covered by Regulation 23 - and contended that such contingent notice was not sufficient. The Judge rejected this argument although he acknowledged that if the contingency led to delay in royalty payments it was possible that the Copyright Tribunal might award interest.

2. Infringement of copyright in the Working Papers

The Defendants argued the Working Papers were published when the 1922 Edition was published.

(a) Subsistence

Although he attributed most importance to the Rosenbach Manuscript (a fair copy of the text of Ulysses which Joyce made in instalments between 1920 and 1922 and sold to John Quinn) which he called "perhaps the most important single item in the preparatory materials" Lloyd J held that each of the Working Papers was the subject of a separate copyright - "In principle& I regard the Rosenbach Manuscript as comprising one copyright work in itself, the successive typescripts and proof stages each as constituting new such works, and, going back before the Rosenbach Manuscript, earlier drafts, including notebooks setting out early versions of particular passages or sections, as also constituting separate copyright works". Even if the final proof were identical with the 1922 Edition that would mean no more than that both those texts set out the same original work in which copyright subsists.

In reaching this decision, Lloyd J referred to a number of cases dealing mainly with artistic copyright in preliminary or final versions of engineering or design drawings (and in particular LA Gear Inc v Hi Tech Sports [1992] FSR 121) as supporting his conclusion. In Interlego AG v Tyco Industries Inc [1988] RPC 343 the court emphasised, in deciding which if any in a chain of drawings based on existing drawings was protected by copyright, that mere copying even if it involved skill and effort would not create copyright - the changes needed to involve "substantial alteration to the drawing as such", a "material alteration or embellishment" which were visually significant.

In LA Gear the court was more adamant on the narrower question of whether the existence of preliminary drawings meant the finished drawing was not original. The Court of Appeal described this as a "novel and disturbing argument" and rejected it, affirming that the fact that an author produces one or more preliminary versions of a drawing was irrelevant to the originality of the final version - "the finished product does not cease to be his original work simply because he adapts it with minor variations, or even if he simply copies it" - and that each drawing was an original work.

In Cala Homes (South) Ltd v Alfred McAlpine Homes East Ltd [1995] FSR 818 Laddie J found that drawings based on preceding designs could be protected by copyright so long as there was "significant effort and skill into producing a new design with a new combination of features" such that the drawing is "not a mere copy" and incorporates "material alterations or embellishments".

Robin Ray v Classic FM Ltd [1998] FSR 622 was a more relevant authority insofar as it related to literary copyright in 5 proposals for categorisation of a database produced by the plaintiff and whether they were subsumed in the final database produced by the defendant. Lightman J called the idea "a lapse into heresy" and "wholly repugnant to the basic principles of the law of copyright". Where a work went through successive stages in writing in the course of its creation or development, copyright in the earlier of the writing subsists whatever the use later made of the material contained in it.

Also cited was Black v Murray & Son (1870) 8 SLR 261which concerned the question of whether copyright subsisted in a second edition of the works of Sir Walter Scott (the copyright in which had expired) by virtue of the notes, alterations and additions to it. The court held that for a new copyright to subsist it would need to be "so largely added to and annotated as to become practically a new work". Lloyd J concluded that this case had no bearing on the question of the progress of a literary work through drafts towards what is finally published.

(b) Publication

Lloyd J found that it followed from this that the Defendants argument that the underlying drafts were published when the final version was published must fail - the test for publication in the legislation was the issue of copies to the public which required publication of the whole copyright work - the notion of substantial part was a test for infringement not publication. The publication of a substantial part of a work only amounts to publication of that part, not of the whole. Lloyd J held that the publication of the 1922 Edition only published the whole text set out in that edition not earlier versions. Hence, the Working Papers remained unpublished even though a lot of the text was the same as that in the 1922 Edition.

(c) Infringement

Although the Judge concluded on the evidence that Mr Rose had not copied the Working Papers wholesale (he found that the bulk of the text copied in RE was the 1922 Edition) he held that what Mr Rose had done with the Working Papers amounted to copyright infringement.

Insofar as the material included in RE was not in the 1922 Edition but was taken from a previous version of the Working Papers the question was whether what Mr Rose did amounted to taking a substantial part of the Working Paper. Lloyd J noted that the test of a substantial part depended "as much on qualitative as quantitative factors". Hence, the Judge said that it was no defence for the Defendants to say that what was taken constituted just a few lines or even less than a line here and there, particularly because the restoration of the unpublished material to the text was of importance in qualitative terms - "their inclusion is one of the things which makes A Reader's Edition special and distinct".

On the basis of the above, Lloyd J ordered an injunction to prohibit copyright infringement in respect of the work entitled 'A Reader's Edition'. He did not accept the Defendants' argument that because the unpublished material copied might be considered to be quantitatively small in terms of the number of words (although the number of changes including punctuation is much higher) it did not amount to infringement.

B Comments

1. The Directive and Regulations

The application of the Directive has not been much explored despite its profound implications for national copyright laws in those countries which did not have a 70 year period of protection. This is also the first case in which the Regulations have come before the UK courts. Hence, the case provides some useful insight as to the precise mechanics of the transitional provisions and their construction.

It would appear that "arrangements" have to be of a fundamentally bilateral nature (save for the possibility that where normally bilateral roles are carried out by one person this might qualify) and need to be sufficiently solid and certain that acts can be said to have been done in pursuance of them. It is unclear how this could be established in the absence of a contract. In the context of publishing where no contract had been signed but there was an understanding or negotiations coupled with all or a great deal of the work preparatory to publication having been carried out before 1 January 1995, Lloyd J speculated that there was likely to be an arrangement, which suggests that the amount of work done may be factor in such circumstances. However, working on an out-of-copyright work in the period 1992-1995 per se is inherently too uncertain and unbounded to constitute an arrangement.

It is now clear that contingent notice is sufficient under Regulation 24, that relatively short notice suffices and that there is no obligation to provide a copy of the proposed text. Practitioners would be well-advised to state in any notice under Regulation 24 the date on which they intend to commence the acts, but the case suggests that it is ultimately sufficient that the copyright owner discovers the date through other channels. Lloyd J left open the possibility that the consequences of contingent notice, insofar as it delayed the copyright owner's receipt of financial recompense, might be counterbalanced by an award of interest by the Copyright Tribunal.

Certainly, a large number of questions about the Regulations remain unanswered. For example, one can posit profound questions as to whether Regulations 23 and 24 have the effect intended by Article 10(3) at all. The effect of Regulation 23(1) is not retrospective as such - it does not convert acts which were lawful when performed into unlawful acts. While it does regulate the future consequences of such acts, the Directive acknowledges the possibility that persons may have "acquired rights" to undertake further acts in respect of revived copyright by virtue of their activity in the period 1992-1995. Certainly, one would expect some kind of legal or objective proof that a right had accrued to the person seeking to rely on it. This case is grappling with exactly these issues. Can one acquire rights by making "arrangements"? Is "arrangements" a sufficiently clear concept to delineate acquired rights or legitimate expectations as envisaged by the Directive? If construed like Lloyd J in a way which suggests that arrangements are closely related although not coterminous with contracts - that they have objective solidity and certainty "such that it can be said that acts done later are done in pursuance of them" (thereby requiring a clear foundation for an acquired right or legitimate expectation) then perhaps the Court has managed to give effect by construction to what the Directive intended. However, the ECJ in Butterfly commenting on Italian legislation implementing the Directive made it clear that the principle of protecting legitimate expectations "cannot be extended to the point of generally preventing the new rules from applying to the future consequences of situations which arose under the earlier rules". Further, the ECJ approved the legislation which limited the right of those with acquired rights to distribute sound recordings (in respect of which copyright revived) to a 3 month period after implementation commenting "a provision of that kind& .must necessarily be transitional in order not to prevent the application of the new terms of protection of copyright& laid down in the Directive, that being the Directive's principle objective". Hence, Regulations 23 is arguably invalid because it prevents the new rules from ever applying to future consequences of exploitation which occurred in the period 1992-1995.

As to Regulation 24, Laddie et al comment that the provisions as to compulsory licences are invalid because they render revived copyright practically worthless - "This is a blanket provision which converts what was supposed to be an exclusive right into a mere right to receive royalties". Certainly, the provision removes the right of the copyright owner to control who can exploit the copyright and under what conditions, a situation which is particularly unfortunate in cases where, as with James Joyce, the author is not able to benefit from the moral rights because the relevant legislation was enacted after his death Moreover, arguably it operates far beyond protecting those who acted on the basis of legitimate expectations as the Directive intended (recitals (26) and (27)), protecting all comers who seek to exploit revived works of copyright even after 1 January 1995 so long as they give appropriate notice.

While it would appear to be difficult for a challenge to these Regulations to succeed given that the Directive gives Member States discretion by virtue of Article 10(3) and does not appear in the recitals to spell out its rationale exhaustively, there does appear to be a strong argument that the unlimited nature of the transitional provisions in Regulations 23 and 24 is contrary to Butterfly. Certainly, the Regulations create a two-tier system of copyright, undermining the efficacy of the 70 year term insofar as it revives copyright. There is a potential disparity between national copyright laws if many Member States have enacted provisions pursuant to Article 10(3) which do not achieve the result intended by the Directive, particularly since in countries where the term of copyright protection was already 70 years copyright owners have much more control of their works. This seems to run counter to the overarching desire of the Directive to harmonise copyright law in the EC which is, as the ECJ in Butterfly observed, the "Directive's principal objective".

2. The Working Papers

The decision that copyright subsists in drafts of a novel such as Ulysses and that they are not published when the final version is published should not be surprising - it is the consequence of applying principles which form the bedrock of copyright law. Originality is not a high-minded or aesthetically loaded concept - as the Court observed in University of London Press v University Tutorial Press [1916] 2 Ch 601 "the word original does not& mean that the work must be the expression of original or inventive thought& The originality which is required relates to the expression of the thought [which]& must be in original or novel form,..that the work must not be copied from another work, that it should originate from the author".

A consequence of the relatively low hurdle as to originality is that between drafts, all that is necessary is some minimal change, alteration or embellishment in order for a new copyright work to be created. The cases cited by Lloyd J on this were not directly on point although they were variations on the same theme - whether modified or updated drawings of Lego designs in respect of which patent and design rights had expired were protected by copyright (Interlego) whether the existence of preliminary drawings robbed the final version of originality (LA Gear and Cala), whether preliminary documents concerning categorisation were subsumed within the final version of a database (Robin Ray), whether an abridged version of a published work which had gone out of copyright benefited from a new copyright (Black v Murray). This case now adds to this case law a clear affirmation that drafts of a novel are free standing works of copyright which are not published when the final version of the work is published. This was a conclusion that had been hinted at in the cases - for example in LA Gear the court noted, in holding that copyright subsisted in the preliminary and final drawings and did not prevent the final drawing from being original that "if the law were otherwise...it might have far-reaching consequences on other literary and artistic works, for example on the manuscripts of books and plays".

While the originality threshold is low, qualitative factors are relevant at the second level question as to whether a substantial part has been taken for the purposes of infringement. The case is a reminder that one cannot be comfortable that a substantial part of a work has not been taken merely by applying a quantitative test - quality in the sense of the significance of what is copied is the overriding criteria in deciding whether the author's skill and labour has been misappropriated. Again, this represents a core principle of copyright law.

First published in the April edition (issue 119) of Copyright World.


Important - The information in this article is provided subject to the disclaimer. The law may have changed since first publication and the reader is cautioned accordingly.