IPC Media Ltd v News Group Newspapers Ltd

Fair dealing under s.30 of the Copyright, Designs and Patents Act 1988 is assessed by considering the statutory purpose and fairness together. Comparative advertising may involve criticism of a competitor’s product, but reproducing copyright material merely to identify that product can still be unfair where it advances the defendant’s competing commercial interests.

The principal considerations include commercial competition with the copyright owner’s exploitation, whether the work has been published, and the amount and importance of the taking. The absence of a need to copy the work, because the product could be identified otherwise, is significant. Comparative advertising principles do not create a defence to copyright infringement or override independent contractual undertakings.

The claimant published What’s on TV and owned copyright in its logo and cover layouts. The defendant published The Sun and reproduced covers of the claimant’s magazine in comparative advertisements promoting the defendant’s free television listings magazine, TV Mag.

The claimant sought summary judgment for copyright infringement and breach of contractual undertakings given following similar conduct in 1998. The defendant accepted copyright subsistence and ownership for the application but relied on the fair dealing defences for criticism or review and reporting current events under s.30 of the Copyright, Designs and Patents Act 1988. The central issues were whether the uses fell within those statutory purposes, whether they were fair dealings, and whether the undertaking covered later magazine covers.

1. Copyright claim. The defendant’s use was arguably connected with criticism or review in the broad sense described in ProSieben Media AG v Carlton UK Television Ltd [1999] FSR 610. The better approach was to consider the statutory purpose and fair dealing as a composite question. The closer a use came to the uncertain boundaries of criticism, review or reporting current events, the less likely it was to be fair dealing.
2. Fair dealing. Fairness is a matter of fact, degree and impression. The important considerations identified in Ashdown v Daily Telegraph [2002] RPC 235 were commercial competition with exploitation of the copyright work, publication of the work, and the amount and importance taken. Although the covers had been published and the reproductions did not reproduce every legible feature, the defendant copied the copyright works to give its own competing product a commercial advantage.
3. The essential commercial function of the claimant’s logo and cover design was to identify the claimant’s product. By copying that material for its own competing purposes, when the product could have been identified without infringement, the defendant took advantage of the claimant’s creative work. The use was therefore not fair dealing for criticism or review and, for the same reason, could not be fair dealing for reporting current events. The court did not accept that the publications were properly characterised as current-events reporting.
4. The Comparative Advertising Directive did not assist the defendant. It had no direct effect between the parties, the implementing regulations preserved other remedies, and the directive’s reference to intellectual property concerned the possible indispensability of using a trade mark. No such indispensability existed here.
5. Contractual claim and order. The undertaking not to copy “any cover” was apt to include covers produced after the undertaking’s date. The claimant was entitled to summary judgment, with relief to be framed consistently with the judgment and limited to copying of covers in the relevant respect. The defendant was ordered to pay the claimant’s costs and £27,000 on account.