Newspaper Licensing Agency Limited v. Marks and Spencer Plc

The House of Lords held that copyright in the typographical arrangement of a published edition is the arrangement of the edition as a product offered by the publisher (section 1(1)(c), section 8(1), section 9(1)(d) Copyright, Designs and Patents Act 1988). The court rejected the submission that typographical copyright necessarily 'maps onto' the copyright in each underlying literary work and emphasised that for typographical copyright the relevant act of copying is making a facsimile copy (section 17(5)).

The test of substantiality for typographical arrangement is qualitative and directed to whether the facsimile appropriates the presentation and layout in which the publisher's skill and labour are expressed; in newspapers that skill and labour are principally expressed in the overall design and page layout, not in isolated fragments. Applied to the press cuttings before the court, the copies did not reproduce the layout of any page or a substantial part of the edition and therefore there was no infringement.

Background and parties: The Newspaper Licensing Agency Limited (NLA) sued Marks and Spencer plc claiming infringement of the copyright in the typographical arrangement of published editions of national newspapers after Marks and Spencer made and distributed copies of press cuttings supplied by a monitoring agency.

Nature of the claim: The NLA sought to restrain and obtain remedies for alleged infringement of typographical arrangement copyright under the Copyright, Designs and Patents Act 1988.

Procedural history: The action was tried by Lightman J (reported at [1999] RPC 536). The Court of Appeal considered the matter ([2001] Ch 257). The appeal to the House of Lords followed.

Issues framed:

• whether a 'published edition' for the purposes of typographical copyright can be an individual article (so that each article carries its own typographical copyright) or whether it is the newspaper (or other composite product) as a whole (see sections 1(1)(c), 8(1), 9(1)(d));
• whether copying press-cuttings supplied on A4 sheets amounted to making a facsimile copy of the typographical arrangement and, if so, whether what was copied was the whole or a substantial part of the published edition (section 17(5));
• the appropriate test of 'substantial part' in the context of typographical arrangement and application to the specimens before the court.

Court’s reasoning and conclusion: The House rejected the analogy with sound recordings and held that the statutory definition of 'published edition' permits a single edition to comprise more than one literary work; the concept should be given its ordinary publishing meaning. The court explained that typographical copyright protects presentation and layout and that the relevant copying is the making of a facsimile: consequently, substantiality is assessed qualitatively by reference to whether the copied part appropriates the edition's presentation and layout. For modern newspapers the relevant skill and labour is chiefly in overall page design and inter-relationship of material; that is unlikely to be captured by isolated cuttings. On examination, the press cuttings did not reproduce newspaper page layouts or a substantial part of the typographical arrangement and therefore did not infringe. The House dismissed the appeal. The court did not address the fair dealing defence in detail because it concluded there was no infringement.

Appeal dismissed. The House of Lords held that (1) a 'published edition' is to be understood in the ordinary publishing sense and need not correspond to individual underlying literary works; (2) typographical copyright is infringed only by making a facsimile copy of the arrangement (section 17(5)); and (3) substantiality is a qualitative inquiry directed to whether the copied part appropriates the presentation and layout in which the publisher's skill and labour is expressed. The press cuttings did not amount to a facsimile of the page or a substantial part of the newspaper's typographical arrangement and so there was no infringement.

Trial before Lightman J (reported at [1999] RPC 536); appeal to the Court of Appeal ([2001] Ch 257); further appeal to the House of Lords ([2001] UKHL 38).