The work, whether or not in the list mentioned in our previous news in brief, has to be an original work to be protected by copyright. In the English Act of 1988, this requirement is established in Article 1(1) but only regarding the literary, dramatic, musical or artistic works (the “companies’ works” such as the recordings of sounds are not concerned by this condition). In the United States legislation it is the Act of 1976 that mentions the criterion of originality in Article 102 (b) (“original work”). In both cases it is the judge who gave a definition of this notion. Before presenting it and illustrating it concretely, we must make three general observations.
First of all, it is obvious that the concept of originality relies on the philosophy of the law concerned (even if the judge of copyright law, as well as the judge of continental author’s right, does not like being locked inside one system). Within the framework of the natural rights theory (in which copyright is most importantly a property right), the accent will be inevitably put on the personality of the author. In the environment of the theories of reward or incentive, the judges will insist on the necessity of protecting the investment and/or the work attached to the work of art or the utility to defend a creation. Then, the notion of originality is, in copyright law as well as for other laws, a concept with different outcomes.
The concept evolved in time, as we will see, but it notably differs according to the work studied. Originality will not be treated in the same way for D.H Lawrence’s poems and for informative work such as a database. Finally, originality in copyright does not depend of “the cultural state”, as one can speak of “the state of the art” in patent law1. A work which could belong to “the cultural state” (such as Good vibrations by the Beach Boys or The Grand Canal – Venice by William Turner) could beneficiate from protection by copyright. We often quote this formula of judge Learned Hand2 stating that, if “by some magic somebody, who had never heard it, created an ode by Keats” (Keats was an English poet of the beginning of the XIXth century) “the author should receive a protection by copyright”.
This precision made, what definition did the judge give to originality? Without distinguishing the United Kingdom legislation and the United States legislation, we can isolate four steps.
In the first step, which corresponds more or less to the degree zero of originality, the judge will require the author not to have copied the work of an author and to have created his work in a independent way. This clearly results, for example in England, from the decision University of London Press v. University Tutorial Press3.
For the second step, the British magistrates are going to refer themselves to the triptych of “labor”, “skill” and “judgment”. The Ladbroke v. William Hill4 decision rendered about soccer game tables allowing the customers to bet in a certain order is very important here. The American judge will, on its side, apply higher gradations. He will balance between two concepts of originality: the continental concept who puts the accent on the intellectual creation, and the more Anglo-Saxon concept who relies on the investments made (the doctrine of the “sweat of the brow”). The example developed below about a famous photography illustrates the first trend.
In the support of second trend, the decision West Publishing Co. V. Mead Data Central Inc.5 is significant. In this decision, a Court of Appeal considered indeed that compilations such as casebooks of West are protectable as long as they are “the result of a considerable work, talent and judgment (…) To meet the conditions (…) A work of art only has to be the product of a small quantity of intellectual work”.
The third step is certainly the most interesting. It is a revolution, as much for the legislation of the United States, as for the legislation of the United Kingdom (with a certain gap in time).
In the United States, the evolution came from the very important decision Feist ruled by the US Supreme Court on March 27th, 19916. In this case, the question of whether Feist Publication, a company specialized in phone book publishing, was authorized to resume a series of addresses contained in the directory constituted by Rural Téléphone, a company maintaining a local telephone network and having collected, in this context, the data of its subscribers. To fight that use, Rural Téléphone invoked its copyright. According to the Supreme Court the doctrine of the sweat of the brows ignores copyright principles “and contains several flaws” (in particular claiming ownership on the facts themselves, in this particular case the data, in defiance with the principle of fact-expression distinction). Thus this doctrine is not the cornerstone of copyright, originality is. And the most important point is that the level of originality is not reached as soon as the work is “divested of any trace, even the most tenuous, of creativity”. Best here is to quote this short extract of the decision :
“Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity”.
Concretely, the judge considers that there cannot be any creativity in classifying data by alphabetical order, cities, occupation…
In the United Kingdom, as noticed regarding the concept of work of art in our first news in brief, the jurisprudence Infopaq and Eva Painer of the European Union Court of justice has the authority to make this jurisprudence evolve. Number of works implying work, talent and judgment are not developed on the foundation of the principle of freedom of choices.
Who can claim, to resume the example of an English decision that recording the speeches of a Lord proceeds of a choice?
Thus the fourth step consists in knowing whether the British judge follows the jurisprudence of the CJEU and if judges of inferior courts in the United States respect the precedent of the Feist decision. Nobody will be surprised to know that our English neighbors are stubborn. As it has been demonstrated7 the British courses, either ignore totally the condition of freedom of choices, or refer to it, or consider that the triptych seen higher (labour, skill and judgement) represents its equivalent, which, naturally, is totally false.
The American judges, on their side, respect the decision of the Supreme Court and scrutinize the creativity, including in the most basic productions8. With the decisions of the Court of Justice of the European Union and the Supreme Court, and in spite of the British uncertainties, we can consider that the concept of “author’s own intellectual creation” has triumphed9.
On this issue, we shall present an American decision (Mannion v. Coors Brewing Co.10) which is close to the jurisprudential position of the Feist decision and who announces in a way the Eva Painer decision of the Court of justice (of 2011).
In this case Mr. Mannion who is a free-lance photographer took photos of a professional basketball player, Kevin Garnett, to illustrate an article in a Slam magazine. An agency, which worked for a beer brand, received the authorization of the photographer to use the image for the draft of an advertising project. Afterwards, the advertising agency developed its own advertising reproducing elements of the photography of the basketball player: a similar angle (the photography is taken by underneath), a photograph subject who seems to adopt the same posture and which dresses the same type of clothes and ostentatious jewels (“bling bling” to use the expression referring to strongly visible getups).
The court, in a decision carefully motivated characterizes the elements of protection of photographs, underlines the originality of the picture, rejects the argument of the defender according to which the reproduction of elements belonged to the domain of the ideas and characterizes the similarities between the works. The first point is the one who must hold our attention. The originality of a photography can, indeed, according to the judge, be identified at three levels. The rendering, first of all, which relies for photography on the choices of point of view, light, shade, filter effects and technical developments. The moment of the capture of the photography then which can be decisive. The judge will develop here the example of the famous photography of the sailor kissing a nurse on Times Square. Taken one minute before, or after, this picture would not have had the same artistic interest. The direction, finally, because the photographer always operates choices by arranging various components (here the posture of the professional basketball player). An analysis compliant in every respect with the one followed by a rigorous continental judge assessing the originality of either photographs on film sets, product presentations or public figures.
1 Let’s note that this concept implies the application of the set of the knowledge which allows to appreciate the novelty of a claimed invention as well as its creative activity.
2 Sheldon v. Metro-Goldwyn Pictires Corp., 81 F 2d 49, 54, V. O. Bull., 21, 25, 263 (2d Cir. 1936), aff’d 309 U.S. 390 (1940).
3 University of London Press v. University Tutorial Press [1916] 2 Ch 209.
4 Ladbroke v. William Hill [1964] 1 All ER 465, 469
5 West Publishing Co. V. Mead Data Central Inc, 799 F.2d 1219, 1226 (8 th Cir. 1886)
6 Feist Publications, Inc. v. Rural Telephone Service, 499 U.S. 340, 345 (1991)
7 E. Derclaye « The jurisprudence of the Court of justice of the European Union regarding copyright: evaluation of its impact on, and of its reception by the legislation of the United Kingdom. What does the future hold?” RIDA 2014/4 p. 5 et s ("La jurisprudence de la Cour de justice de l'Union européenne en matière de de droit d'auteur: évaluation de son impact sur et de sa réception par le droit du Royaume-Uni. Que réserve l'avenir ?")
8 And so the minimum of creativity was considered reached by 7 notes of a first measure of a song, first characteristics of the face of a doll or a label fixed on a box of medicine …
9 The expression of "author’s own intellectual creation" is a concept of continental right. In the analysis, it seems to us rather close to the criterion adopted in the United States. The intellectual creation corresponds to the requirement of creativity; as for the ownership, it relies on the idea that the author realized his work in an independent manner and that he did not copies it on another work of art.
10 Mannion v. Coors Brewing Co. 377 F. Supp. 2d 444 (SDNY 2005)
