Newspaper Licensing Agency Ltd v Marks & Spencer plc

Copyright in the typographical arrangement of a published edition protects the edition as a whole, rather than the arrangement of each article within it. Whether copying a part is substantial must be assessed against the whole edition. The inquiry is primarily quantitative, but visual impression, layout and prominence may matter. The threshold is more than de minimis and concerns an amount worthy of consideration in context. Separate insubstantial takings from different editions cannot be aggregated. The observations on fair dealing for reporting current events were alternative. On Lord Justice Peter Gibson’s view, internal copying for private commercial purposes fell outside the defence.

A press cuttings agency supplied Marks & Spencer plc with selected newspaper cuttings. Marks & Spencer copied and circulated them internally to executives and directors. The Newspaper Licensing Agency alleged infringement of copyright in the typographical arrangements of published newspaper editions and sought injunctive relief and an inquiry as to damages.

Lightman J held that each article had a protected typographical arrangement, found infringement, and accepted undertakings in lieu of an injunction and damages inquiry. The Court of Appeal considered whether the copyright protected each article or the newspaper as a whole, whether the copying was of a substantial part, and whether fair dealing for reporting current events applied.

By a majority, Peter Gibson LJ and Mance LJ allowed the appeal. Chadwick LJ dissented and would have dismissed it. The order below was set aside, the action was dismissed, and a declaration was made that Marks & Spencer’s press-clipping service did not infringe the copyright in issue.

1. Protected subject matter. The majority construed sections 1(1)(c) and 8(1) of the Copyright, Designs and Patents Act 1988 as protecting the typographical arrangement of the published edition as a whole. The words referring to one or more literary, dramatic or musical works describe the contents of the edition. They do not create overlapping typographical-arrangement copyrights in each constituent article. The contrary decision in Machinery Market Ltd v Sheen Publishing Ltd [1983] F.S.R. 431 was wrongly decided on that point.
2. Substantial part. If the newspaper is the relevant work, substantiality must be assessed by comparing the copied part with the whole published edition. The assessment is primarily quantitative, but the visual impression, layout, appearance and prominence of the copied material may be relevant. The threshold is more than de minimis and concerns an amount worthy of consideration in the statutory context. Repeated copying from different newspapers or editions cannot be aggregated to create a substantial part.
3. Application. Rearranging a cutting does not prevent the copied pasted or cut portions from being facsimile copies. Nevertheless, none of the cuttings shown to the court was a substantial part of the relevant published edition.
4. Fair dealing. The majority did not need to decide section 30(2), because no infringement had been established. Gibson LJ considered, alternatively, that internal copying for Marks & Spencer’s private commercial purposes was not reporting current events in the statutory sense. Mance LJ accepted that some material concerned current events but left the ultimate scope of fair dealing open. Chadwick LJ’s dissenting view was that individual articles could have separate protection, but that the fair-dealing defence still required an overriding element of public advantage.

• Court of Appeal The appeal was allowed by a majority. The order of Lightman J was set aside, the action was dismissed, and a declaration was granted. [2000] EWCA Civ 179
• High Court, Chancery Division Lightman J held that the NLA’s action succeeded and that Marks & Spencer had infringed copyright. He accepted undertakings in lieu of an injunction and an inquiry as to damages. [1999] RPC 536