Sunday 19 July 2009

National Portrait Gallery: photographs of paintings

There's been quite a bit of discussion about a legal threat made against a wikipedia administrator Derrick Coetzee. What he is accused of doing is of having accessed the National Portrait Gallery (NPG)'s website and downloaded some 3,300 high resolution images from its database. Solicitors acting for NPG have alleged 4 different causes of action:
  • breach of contract
  • unlawful circumvention of technical measures
  • infringement of NPG's database right
  • infringement of copyright

I'm not going to discuss the first 3 claims (if anyone is interested please let me know and I can write about them in another post). I will say that the first two claims seem hopeless to me to the point of being misconceived while the database claim depends on some facts about the NPG database and its extraction that I do not know.

There's also a question about jurisdiction. Mr Coetze appears to be based in the United States, the NPG is claiming under English law. Assume for the moment that that is not a problem.

In this post I'll try to explain what I think the legal controversy is all about. Obviously there's a huge debate about policy, both for the general question of whether photographs of paintings should be the subject of copyright in themselves, and also whether the NPG itself should or should not be allowing organisations like wikipedia to use its stock of digitised photographs. I'll leave that debate to another forum.


The problem starts with the requirement of s.1(1)(a) of the Copyright Designs and Patents Act 1988, which states that copyright "subsists" in an original literary, dramatic, musical or artistic works. If the work is not original then it cannot be the subject of copyright.

What does "original" mean? Everyone seems to agree that it doesn't cover the same ground as the terms "novel" or "inventive" do from patent law. Roughly speaking: copyright not about ideas but the expression of those ideas: you can copy the idea but not the expression.

In English law there seems to be two strands of thought on what "original" means:
  • "Original" implies "not copied". An author may adapt something that already exists but they must put enough "independent skill and labour" into that adaptation to result in something that is "original".
  • "Original" means that sufficient" independent skill and labour" has gone into the work. It really doesn't matter if its an identical copy of something that already exists provided that enough originality has gone into the copying.

Strand 1: "original" means "not copied"

An early, and classic attempt to get to grips with originality came in University of London Press Ltd v University Tutorial Press Ltd (1916). The court was considering whether university examination papers were "original". Peterson J said:
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. 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.

No-one had suggested that the examination papers were direct copies of anything, but that the examiners had drawn on the general stock of knowledge in mathematics and so the papers were not "original". That means that the case did not directly concern whether or not there can be "original copying". Strictly speaking that part of the judgment is what lawyers call an obiter dicutum — something that is said in passing but which does not have binding authority on future cases (though it can be pretty persuasive).

In British Northrop Limited v Texteam Blackburn (1973), Megarry J cited University of London and added:
A drawing which is simply traced from another drawing is not an original artistic work: a drawing which is made without any copying from anything originates with the artist.

Again the case was actually about whether drawings were original enough, so again this is strictly an obiter dictum.

The saga continues: Northrop was approved by the Court of Appeal in Merlet v Mothercare (1986) (concerning copies of designs for a baby's rain cape) but again the main question was whether the designs were original enough.

The first strand of thought in English law culminates in the case of Interlego v Tyco Industries(1988) in which Lord Oliver said:

It takes great skill, judgment and labour to produce a good copy by painting or to produce an enlarged photograph from a positive print, but no one would reasonably contend that the copy painting or enlargement was an "original" artistic work in which the copier is entitled to claim copyright. Skill, labour or judgment merely in the process of copying cannot confer originality.

This decision comes with a health warning: it was made by the Judicial Committee of the Privy Council. Its decisions, though strongly persuasive, are not binding on English courts.

Strand 2: "original" means "with independent skill...."

The other strand of thought can be seen in the House of Lords decision in Walter v Lane (1900). The Times employed reporters who took a verbatim note of speeches made by Lord Rosebery, and transcribed the notes into copy that was published in the newspaper. The Times claimed copyright on the reports.

One of the issues before the court was whether the reporters were the "authors" of the reports. The House of Lords decided that they were.

At first sight this is a fairly unpromising authority since, at that time, copyright in works of literature did not have an originality requirement. Indeed Lord Halsbury was quite scathing about the use of the word "original" in the Court of Appeal. For that reason a succession of High Court judges have questioned whether or not Walter v Lane is still good law but the question was not decided until Express Newspapers v News (UK) (1990) when Sir Nicholas Browne-Wilkinson decided that Watler v Lane was good law after all.

In Express Newspapers there had been a relatively long interview (at least 8 hours according to the report) with a member of the Royal Family, excerpts of which had been reproduced by the newspaper. So the situation differed a little from the reporter taking down a speech situation in Walter v Lane.

The Court of Appeal gave its seal of approval to Walter v Lane in Sawkins v Hyperion Records(2005). The court made clear its strong disagreement with the first strand of authorities culminating in Interlego.

Most relevant for the NPG claim is that the court adopted a statement from a text called The Modern Law of Copyright which directly addresses the "picture of a picture" question (apologies for the long quotation but it is worth reading through):

However, whilst the remarks made in Interlego may be valid if confined to the subject matter then before the Privy Council, they are stated too widely. The Privy Council was there considering fairly simple technical drawings. This is a rather special subject-matter. While the drawing of such a work is more laborious than it looks, it is a fact that any competent draftsman (perhaps, any conscientious amateur) who sets out to reproduce it exactly will almost certainly succeed in the end, because of the mathematical precision of the lines and measurements. This should be contrasted with, eg a painting by Vermeer, where it will be obvious that very few persons, if any, are capable of making an exact replica. Now, assume a number of persons do set out to copy such a painting, each according to his own personal skill. Most will only succeed in making something which all too obviously differs from the original – some of them embarrassingly so. They will get a copyright seeing that in each instance the end result does not differ from the original yet it took a measure of skill and labour to produce. If, however, one of these renders the original with all the skill and precision of a Salvador Dali, is he to be denied a copyright where a mere dauber is not? The difference between the two cases (technical drawing and old master painting) is that in the latter there is room for individual interpretation even where faithful replication is sought to be attempted while in the former there is not. Further, a photographer who carefully took a photograph of an original painting might get a copyright and, if this is so, it is rather hard to see why a copy of the same degree of fidelity, if rendered by an artist of the calibre aforementioned, would not be copyright.
This statement (and Sawkins in general) make me somewhat nervous.

The logic seems to go: applying some (but not enough) skill to copying a painting exactly results in a copyright, therefore the application of considerable skill ought to. But exactly the question we are asking is: is skill all by itself the criterion, or does that skill have to produce something new? The statement in Sawkins seems to do nothing but beg that question and thus resolve nothing.

Furthermore, the case concerned a musicologist who produced modern performing versions of the work by the French composer de Lalande. Far from being an exact copy, considerable work was involved, which included writing parts that were missing from the original. To my inexpert eye it seems to me that Mr Sawkins's work was "original" in the sense of not being a copy. A French court considering the same works agrees with my conclusion. Arguably the interesting discussion about paintings and photographs by Lord Justice Jacobs in Sawkins is also obiter dicta.

I also have great difficulty with Walter v Lane for a completely different reason. In English law a work does not become subject to copyright until it is recorded in some permanent form ("fixation"). It is normally accepted that the person recording a work might not be the author. Where an author dictates to a secretary (for example) there is no doubt that the work is the author's not their secretary's. It is very common in the modern music industry for musicians to jam together to produce a work but for the recording to be done by someone else. Again no-one supposes that the musicians are not the authors of the work. That principle does not seem to sit well with Walter v Lane.

Even in Sawkins it is recognised that a slavish copy would not be original. The question would be one of degree.

Is it different for photographs anyway?

I have been deliberately ignoring a direct authority from way back in the nineteenth Century — Graves' Case (1869). The court of the Queen's Bench had to deal with a case involving 3 photographs of engravings. Under the Fine Arts Copyright Act 1862 originality was a criterion for copyright. Blackburn J said:

All photographs are copies of some object such as a painting or statue. And it seems to me that a photograph taken from a picture is an original photograph, in so far that to copy it is an infringement of this statute.


The difficulty with Graves' Case is that it does not explain what "original" does mean for a photograph. It seems reasonable to assume that some photographs must not be original, otherwise there would be no need to restrict copyright to original ones. Nor is it clear from the report what kind of photographs they were and how they were taken.


As far as I can see, the authorities look bad for Mr Coetze but not by any means hopeless. If I had to argue the case for him, I might proceed as follows:
  • Walter v Lane is not good law because it did not consider the question of originality
  • National Express and Sawkins address works which are not exact copies and so any statements within them are obiter.
  • In Walter v Lane and National Express there was no existing "work" to copy (since they both deal with words that had been said but not written down and therefore fixed).
  • London University Press has (via Northrop) been adopted by the Court of Appeal and so is at least as good an authority as Sawkins although strictly speaking they are all obiter
  • Graves' Case is a ruling on the particular facts of the case which cannot be easily determined from the report so we cannot tell what criteria were applied by the court making it a problematic authority
  • Lord Oliver's view in Interlego should be strongly persuasive
  • Other jurisdictions with which we are closely connected (eg much of the EU) and with which there is considerable trade (the United States) do not accept that a photograph of a painting which attempts to be as faithful to the original as possible can command copyright, hence as a matter of comity our law should be developed in that way.
I have not given the subject a great deal of thought, and it may be that there is more to be found by a more thorough search, but it seems to me that Mr Coetze's position is not ideal, but nor is it hopeless.

Wednesday 8 July 2009

Post codes and the database right

At opentech 2009 Harry Metcalfe presented the idea for a site (which I will call Ernest Marples) to convert postcodes into latitude and longitude pairs. Ingeniously, the site does not store any data itself, instead it scrapes a number of other sites for the information and returns the result. Does this get around the Royal Mail's database right in the postcode database? Sadly, I do not think it does.

Let us ignore for the moment whether the site breaches any terms and conditions of the sites that it is scraping for its data. The identity of those sites is a secret so although there amy be a question mark over the legality of the scraping, to say any more would be to theorise without data. Instead I want to focus on the database right.

In the 1990's it became clear that, in a number of EC/EU member states, that collections of information could not necessarily be protected by copyright. For example in the Dutch case of Van Daele v Romme a publisher was unable to prevent the copying of all the words in its dictionary. A similar position was reached in the United States where the Supreme Court decided in Feist that a telephone directory could not be subject to copyright.

The eventual result was Directive 96/9/EC of the European Parliament and of the Council on the legal protection of databases. Chapter III of the directive creates a thing called the "sui generis right". The core of that right can be found in article 7(1):

Member States shall provide for a right for the maker of a database which shows that there has been qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents to prevent extraction and/or re-utilization of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database.
As you can see a lot of alternatives are being packed in. If all that you remember is that the focus is substantial investment you will not go far wrong. Roughly speaking, lots of investment implies protection. To unpack a little: the substantiality of the investment can be qualitative (it took real skill to select just these poems) or quantitative (we spent many person years walking to every grid point and photographing it). That investment can be in verification and presentation as well as collection.

The right allows a rights holder to prevent either:

  • extraction; or
  • reutilisation
Of a substantial part of the database.

Ernest Marples is not extracting a substantial part of the database, but I'm less sure about re-utilisation. The term "re-utilization" is defined in article 7(2)(b) to mean:

any form of making available to the public all or a substantial part of the contents of a database by the distribution of copies, by renting, by on-line or other forms of transmission.
Is that what Ernest Marples site is doing? On the one hand Ernest Marples only hands out single (postcode, co-ordinate) pairs and so it could be argued that it is not making the whole of the database available at any one time. On the other hand a member of the public can query any postcode and Ernest Marples is almost certain to be able to return a result for it.

It may be that the drafters of the directive saw Ernest Marples coming because they added an additional form of infringement in article 7(5):

The repeated and systematic extraction and/or re-utilization of insubstantial parts of the contents of the database implying acts which conflict with a normal exploitation of that database or which unreasonably prejudice the legitimate interests of the maker of the database shall not be permitted.
Roughly speaking: lots of insubstantial extractions etc may add up to a substantial one. When exactly? That was just the question that the Swedish Supreme Court in Fixures Marketing v AB Svenska and the Court of Appeal of England and Wales in British Horseracing Board v William Hill wanted to know. The European Court of Justice explained to them that the purpose of article 7.5 is exactly to prevent someone getting around 7.1. If the effect of the repeated extractions or re-utilzations would have the same negative effect on the maker of the database as a breach of 7.1 (if all the extractions etc had been done all at once), then that is a breach of 7.5.

I think Ernest Marples is probably caught by 7.5 even if he gets away with avoiding 7.1. Article 8 does provide a defence for lawful users of the database but that is even more fraught a line of argument (if you thought 7 was badly drafted, have a read of 8 and try and work out what its meant to do). There is some doubt, but not enough to make Ernest Marples's method your business plan.

As Harry explained at opentech, part of the purpose of the site is political. There is a strong body of opinion that the Royal Mail should not have a monoploy on this extremely important database. If Ernest Marples is sued that will generate terrible publicity for the Royal Mail (as it should).

Tuesday 7 July 2009

Data protection: new tiered notification fees

For most of my clients I expect this is a non-event, but it is interesting nonetheless. Fees for notifying the information commissioner are now tiered. Tier 2 consists of organisations with a turnover of £25.9 million or more; or 250 or more members of staff. Charities and small occupational pension schemes escape tier 2 and come under tier 1, as do the rest of us.

The practical effect is that, as from 6th July 2009, tier 2 processors pay a notification fee of £500+VAT, while tier 1 processors continue to pay £35+VAT.

The thinking appears to be that bigger organisations require more regulatory supervision and so should pay more. I'm not sure that's right - surely it depends on the organisation? The reverse might well be true in some fields. As always the numbers (35, 250, 500, 25.9 million) presumably do have a rationale but its not clear to me. Maybe some manipulation of them gives the fine structure constant.

Law changed courtesy of the Data Protection (Notification and Notification Fees) (Amendment) Regulations 2009.