Newspaper Licensing Agency Ltd v. Marks and Spencer Plc

Copyright in the typographical arrangement of a composite publication protects the arrangement of the published product as a whole. It does not create overlapping copyrights in the arrangement of every individual literary work within that product.

Whether a facsimile reproduces a substantial part is a qualitative question. The court must ask whether it appropriates enough of the skill and labour expressed in the publication’s presentation and layout. The proportion copied is not decisive. A copy of an isolated newspaper article will ordinarily lack the wider page layout in which the relevant typographical skill is expressed.

A newspaper licensing body owned the copyright in the typographical arrangement of certain newspapers. A press-cutting agency, acting under licence, supplied photocopied articles to Marks and Spencer. Marks and Spencer made and internally distributed further copies without a licence.

Lightman J held that each article constituted a separate published edition with its own typographical copyright: [1999] RPC 536. The Court of Appeal held that the newspaper as a whole was a published edition. Its majority nevertheless found that the cuttings did not reproduce a substantial part of the newspaper’s typographical arrangement: [2001] Ch 257.

The central questions were whether each article could be a separate published edition and whether the copied cuttings constituted substantial parts of the newspapers’ typographical arrangements.

1. The appeal was dismissed unanimously. Lord Hoffmann delivered the leading speech. Lord Nicholls, Lord Mackay, Lord Hope and Lord Millett agreed with his reasons.

2. Per Lord Hoffmann, a “published edition” under section 8(1) of the Copyright, Designs and Patents Act 1988 is the product which the publisher offers to the public. The words “one or more” literary, dramatic or musical works show that an edition need not correspond to an individual underlying work. A newspaper is therefore ordinarily one published edition. Its individual articles do not each acquire an overlapping typographical copyright merely because they could have been published separately.

3. The contrary construction would give the statutory expression an unnatural meaning and create simultaneous overlapping copyrights which arise at the same time and vest in the same publisher. Borderline questions may arise where a newspaper includes distinct supplements or inserts, but their classification was unlikely to affect the substantiality analysis.

4. Per Lord Hoffmann, the substantial-part inquiry is qualitative rather than simply quantitative. The relevant quality depends upon the reason for protecting the particular work. For typographical copyright, the court asks whether a facsimile has appropriated sufficient of the skill and labour expressed in the edition’s presentation and layout.

5. Section 17(5) confines copying of a typographical arrangement to making a facsimile copy. The question is therefore whether the copy reproduces enough of the edition’s protected arrangement. In a modern newspaper, the relevant skill and labour are principally expressed through the combined page design. Fonts, columns, margins, headlines, photographs and advertisements form the vocabulary from which that overall presentation is made. It is difficult for the protected skill and labour to be expressed in anything less than a full page.

6. The copied cuttings did not sufficiently reproduce the layout of any newspaper page. Many had also been rearranged to fit A4 sheets. None appropriated a substantial part of the typographical arrangement, so no infringement occurred. The House consequently heard no argument on fair dealing and expressed no view upon that defence.

• House of Lords: The licensing agency’s appeal was dismissed unanimously. The Court of Appeal’s conclusion that the cuttings did not reproduce a substantial part was upheld: [2001] UKHL 38.
• Court of Appeal: The court held that copyright could subsist in the arrangement of the newspaper as a whole. By a majority, it held that the cuttings did not reproduce a substantial part: [2001] Ch 257.
• High Court: Lightman J held that each separate newspaper article was a literary work whose typographical arrangement constituted a separate copyright work: [1999] RPC 536.