About the authors:
Robert Cumming: Robert is a partner, dual-qualified trade mark attorney and solicitor, and manages large international portfolios and complex multi-jurisdictional disputes for market-leading businesses.
Robert’s expertise lies in the strategic positioning of a brand. His experience managing international trade mark portfolios and complex cross-border litigation, complements his background working on large corporate transactions.
Chris Hoole: Chris is a partner, dual-qualified solicitor and chartered trade mark attorney, experienced in contentious and non-contentious intellectual property (IP) matters, including trade marks, designs, copyright and patents.
Working closely with a range of businesses, from blue-chip multinationals to SMEs, Chris provides tailored strategic and commercial advice to help IP-conscious businesses better protect and police their IP rights.
Vishal Dattani: Vishal is a trainee trade mark attorney. Vishal’s background in law means that he can decipher the key legal components in potentially complex situations. He is therefore able to raise issues, identify opportunities and offer creative solutions in an objective way.
Vishal works with a variety of clients ranging from SMEs to large corporations across a range of sectors, including food & beverage start-ups to large fashion retailers.
In early 2021, the High Court of England and Wales found that Associated Newspapers Limited, through its publications The Mail on Sunday and MailOnline, had infringed copyright belonging to the Duchess of Sussex and unlawfully invaded her privacy. That has been upheld on appeal[1].
Meghan, Duchess of Sussex’s case was so compelling that summary judgment was granted[2]. The Court ordered that the media business must publish a statement in hard copy “above the fold on page 3” making clear that the Duchess has succeeded in her claim for copyright infringement. The online version of the newspaper was ordered to publish the statement for a week with a hyperlink to the judgment[3].
Background
This copyright action arose from Associated Newspapers publishing extracts from a personal letter from the Duchess of Sussex to her father in 2018. The Defendant obtained access to the letter via Meghan Markle’s father without permission from the Duchess.
The applicable law
Under UK law, copyright arises automatically when an original literary, dramatic, musical or artistic work is recorded[4]. The work must be original in the sense that it is the “author’s own intellectual creation”[5]. The threshold is very low. The author of copyright is also generally the owner, unless they are an employee. The copyright owner has the exclusive right to reproduce a substantial part of the work.
It should be noted that the test for infringement is if a ‘substantial part’ of the work has been copied. By ‘substantial part’, this is a qualitative test which means that if an important aspect or portion of the work has been copied (no matter how small), then there is a case for primary infringement.
The defendant argued its actions were justified as fair dealing, in the public interest and as freedom of expression.
Meghan Markle applied for a summary judgment alleging that the defendant had no realistic prospect of defending the claim at trial. This procedure allows a quicker way to resolve cases which are otherwise hopeless.
Decision
Originality – Was the letter the ‘author’s own intellectual creation’?
The Court held that the letter surpassed the hurdle of originality. This means that copyright in the letter subsists and belongs to the Duchess. In a High Court document, dated 11 February 2021, the Judge stated: “I cannot identify any arguable basis for supposing that a work should be treated as lacking originality because it is created for such a purpose…The document reflects the exercise of expressive choice.” ([2021] EWHC 273 (Ch), paragraph 148).
Infringement – Did the defendant’s publication of the letter infringe on the claimant’s copyright?
The Court ruled that there was an infringement. Quantitively, the judge found that the media companies copied some 585 words out of a total of 1250 from the letter. Irrespective of the quantitative amount, applying the qualitative test, a ‘substantial part’ of the work had been reproduced and copied due to the defendant selecting extracts that reflected the most prominent parts of the letter.
Defences
Fair dealing cannot be specifically defined and the courts must make a fact-specific assessment. Here, it was found the Defendant knew that they had possession of an unpublished literary work and they copied an important portion. The Defendant’s dealings in the works constituted an invasion of the privacy rights of the Claimant and, thus, there was no legitimate reporting purpose. Essentially, the conclusion based on the invasion of privacy claim meant that the fair dealing defence under S.171(3) CDPA could not be relied on by the defendant. Equally, disclosure of the letter was found not to be in the public interest.
Conclusion
This high-profile decision is a straightforward application of UK copyright law. It highlights that any fair dealing defence is likely to fail if it infringes the author’s right to privacy and makes clear that the courts are willing to require the losing party to publish the judgment in their own newspaper and on their website.
If you have any queries relating to this article or your own intellectual property matters, please do get in touch or contact Vishal Dattani.
[1] HRH the Duchess of Sussex v Associated Newspapers Ltd [2021] EWCA Civ 1810 (02 December 2021)
[2] HRH The Duchess of Sussex v Associated Newspapers Ltd [2021] EWHC 273 (Ch) (11 February 2021)
[3] HRH The Duchess of Sussex v Associated Newspapers Ltd [2021] EWHC 510 (Ch) (05 March 2021)
[4] Copyright, Designs and Patents Act 1988 (CDPA)
[5] Infopaq International A/S v Danske Dagblades Forening [2009] ECR I-6569 [37]
