What constitutes a substantial part?
240 In IceTV, the High Court discussed the meaning of originality in the context of infringement. While recognising that the computer program in issue might raise special considerations, the High Court confirmed that in order to infringe, a substantial part of the expression of the copyright work in a qualitative sense must be taken.
241 While substantiality is qualitative rather than quantitative, the reproduction of a very large part of the copyright work might take on "a qualitative mantle" as recognised in Accounting Systems 2000 (Developments) Pty Ltd v CCH Australia Ltd (1993) 42 FCR 470 at 480 per Northrop J and 507 per Lockhart and Gummow J, quoting from the first instance decision, CCH Australia Ltd v Accounting Systems 2000 (Developments) Pty Ltd (1991) 20 IPR 555.
242 However, even a quantitatively small part may amount to a substantial part of the copyright work if it constitutes a material or vital element, which is of value or importance to the copyright work as a whole. In Milpurrurru, von Doussa J held that a portion of an unusual border constituting no more than 5%-10% of the copyright work was highly distinctive and striking, and thus substantial: at 261-262.
243 The factors relevant to distinguishing a substantial part of the copyright work from a merely insubstantial part or from an idea or concept have been variously stated and the relative emphasis placed on various elements may shift according to the subject-matter in question. Originality is, however, consistently recognised as important to substantiality.
244 In IceTV, French CJ, Crennan and Kieffel JJ made clear that the degree of originality in the context of subsistence (correlative with authorship) might not suffice for originality in the context of infringement: at [33]-[44].
245 In IceTV, Nine Network expended significant skill and labour in preliminary work for its weekly programme schedule, for which it claimed copyright as an original literary work. IceTV built up its own programme guides by a painstaking process of, inter alia, watching and recording programmes, but used the programmes titles and times set out in the applicant's schedule. French CJ, Crennan and Kiefel JJ emphasised the degree of originality in the expression of the part of the work reproduced: at [40]. Their Honours observed that in IceTV, the way in which information as to time and title could be conveyed was very limited and was not a form of expression which required particular mental effort or exertion: at [42]. The authors had little, if any choice, in the particular form of expression adopted, as it was essentially dictated by the nature of the information. The expression accordingly "lacked the requisite originality (in the sense explained) for the part to constitute a substantial part": at [42]. The chronological arrangement of the times was also obvious and prosaic and thus lacked originality: at [43].
246 French CJ and Crennan and Kiefel JJ recognised that although Nine Network expended skill and labour in producing the data and making the programming decisions, partly directed to business considerations, "the critical question is whether skill and labour was directed to the particular form of expression of the time and title information, including its chronological arrangement": at [54] (emphasis added).
247 In IceTV, Gummow, Hayne and Heydon JJ recognised the potential ambiguity and imprecision of the term "substantial": at [154]. They endorsed the rejection in Data Access Corporation v Powerflex Services Pty Ltd (1999) 202 CLR 1 at [77]-[87] per Gleeson CJ, McHugh, Gummow and Hayne JJ of the "but for" analysis of substantiality in relation to computer programs, which overly protected the copyright owner's interests and overlooked the need for qualitative abstraction of the material features of the computer programs: at [159].
248 Their Honours concluded that in Ice TV, the primary judge correctly approached the issue of substantiality by recognising where the expenditure of skill and effort lay: at [124]-[126], [167] (emphasis added). There was, their Honours stated, only extremely modest skill and labour in setting down the selected program time and title information in which matters of fact were inseparable from, and coextensive with, their expression: at [168]-[169]. In contrast, there were detailed and length preparatory steps of making decisions as to the selection and arrangement of programmes for broadcast in particular timeslots, in drafting the synopses and in selecting and arranging the time and title information: at [125]-[126]. Such skill and labour was not directed at the production of the literary work, but at a programme to maximise viewers: at [126].
249 The High Court in IceTV emphasised that if the originality of what was taken did not manifest itself in a form of expression, it would not constitute a substantial part of the work. Where there is virtually no available choice as to how information, data or subject-matters are expressed in a material form, the expression will lack originality in the sense necessary to constitute a substantial part, irrespective of the skill and effort expended to produce what is being expressed.
250 It is also clear that it will not infringe copyright in a work to take aspects that did not originate with the author but only attracted copyright protection when incorporated into a collocation assembled by the exercise of skill and judgment. The author of the collocation would not have copyright in the part or parts of the work which, standing alone, did not originate with him or her: IceTV at [37] per French CJ, Crennan and Kiefel JJ.
251 In Milpurrurru at 260, von Doussa J endorsed Brightman J's statement in Ravenscroft v Herbert & New English Library Ltd [1980] RPC 193 ("Ravenscroft") at 203 that four principal matters were to be taken into account in the context of substantiality:
First, the volume of the material taken, bearing in mind that quality is more important than quantity; secondly, how much of such material is the subject matter of copyright and how much is not; thirdly, whether there has been an animus furandi on the part of the defendant; this was treated by Page-Wood VC in Jarrold v Houlston (1857) 3 K & J 708; 69 ER 1294 as equivalent to an intention on the part of the defendant to take for the purpose of saving himself labour; fourthly, the extent to which the plaintiff's and the defendant's books are competing works.
252 Accordingly, in Milpurrurru, von Doussa J considered animus furandi very relevant to substantiality. In the present case, the respondent, in reliance on IceTV and Baigent, submitted that animus furandi was no longer relevant to copyright infringement.
253 Animus furandi was traditionally recognised as relevant to the infringement and could tip the balance when the objective resemblance was borderline. In Baigent, however, Lloyd LJ (with whom Rix and Mummery LJJ agreed) observed that animus furandi was relevant when the law was in a very different state and the concept was now a mere "red herring in English copyright law, which "should not be invoked in future": at [97]. Modern authorities also adopt a circumspect or frankly disapproving approach to the traditional aphorism that "what is worth copying is prima facie worth protecting" (University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at 610 per Peterson J). Nevertheless, the current state of Australian authority does not, on analysis, clearly exclude the relevance of animus furandi to substantiality.
254 IceTV is, on one view, consistent with the High Court's maintenance of the traditional position. On another view, it may indicate a division of opinion on the relevance of animus furandi. In IceTV, the alleged infringer had performed a great deal of independent work itself. Moreover, the High Court found that the copyright owner had not expended much skill and labour directed to the material form of expression (which presented almost no scope for choice) in contrast to its considerable effort on the programming decisions. While the particular form of expression was taken, it was not a substantial part of the copyright work. French CJ, Crennan and Kiefel stated, in that context, that it was not necessary to consider the relevance of animus furandi. Their Honours referred to Baigent, but prefaced the reference with the word "compare", rather than unambiguous endorsement: at [55]. Given the context, it is possible that French CJ, Crennan and Kiefel JJ agreed with Lloyd LJ's analysis. Alternatively, they thought it unnecessary to consider animus furandi because the part taken was not substantial in any event.
255 Gummow, Hayne and Heydon JJ appeared clearly to maintain that animus furandi remains relevant to substantiality.
256 Their Honours stated at [171]:
[I]t is important also to ask whether IceTV acted as it did in preparing the Ice Guide with animus furandi, to take from the Aggregated Guides the time and title information to save itself from effort on its part.
257 The application of the idea/form of expression dichotomy has posed challenges, including in context of artistic works. Opinions not infrequently differ over whether, in a particular case, the line has been crossed.
258 In Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd (2008) 172 FCR 580; [2008] FCAFC 197, the Full Court applied the relevant principles in the context of alleged infringement of an artistic work applied to clothing. Their Honours held that the appellant's copyright in two designs (which were applied to the front and back of t-shirts and to a swing tag or label) had been infringed by the respondent's designs, which were also applied to t-shirts and swing tags.
259 The designs of both parties consisted of an arrangement of words, numbers and graphics. The respondent conceded that its designers had used the appellant's designs as a reference to create products with "the same look and feel, yet different": at [8]. The respondent's designers conceded that the principal, if not the only, difference between the parties' designs lay in the content of the lettering.
260 The Full Court found that while the primary judge had correctly identified the appellant's designs as artistic works rather than literary works, her approach to infringement was erroneous. The primary judge first identified the idea or concept of the appellant's designs and "deducted" it, identifying that which remained as the protectable expression: at [20]. The primary judge identified the underlying concept as "a central logo surrounded by a V-shaped pattern of arched text, with a distinctive feature of numbers at the shoulder level": at [21]. Her Honour reasoned that although the respondent copied the v-shaped graphic and the placement of the text and symbols within it, or the form, shape and placement of the graphics, it had not copied the text or the symbols and the respondent's prints made a different impression: at [64].
261 The Full Court stated that although the texts and symbols distinguished the respondent's t-shirts, the question was "whether [the respondent] reproduced a substantial part of [the appellant's] original artistic work": at [65].
262 The Full Court reiterated at [65] approvingly, the observation of Lord Hoffmann in Designers Guild Ltd v Russell Williams (Textiles) Limited (t/as Washington DC) [2000] 1 WLR 2416 ("Designers Guild") that it was not necessary in this context that the allegedly infringing work looked like the copyright work, because:
[The question] is whether the features which the judge found to have been copied from Ixia formed a substantial part of Ixia as an artistic work … why, in answering that question, should it be relevant to consider whether Ixia did or did not look like Marguerite?
263 The Full Court noted that the substantial part of a copyright work in the requisite qualitative sense was that which was essential or material, identified by reference to the elements that made the copyright work an original artistic work.
264 The Full Court stated at [66]:
In the present case, what made the Designs original artistic works was the combination of the artistic elements of the Designs that were listed earlier.
265 The Full Court considered the evidence of the creation of the appellant's designs and the greater effort, skill and time devoted to balancing the various elements on the front and back of the t-shirt, compared with the choice of words and numerals: at [73]. The Full Court also noted that the appellant's design had new elements when compared with the previous successful design on which it was based: at [74].
266 The Full Court concluded that by taking features of the relevant design or layout, the respondent reproduced something that was, or included, a substantial part of that design or layout: at [74].
267 The Full Court recapitulated as follows:
[75] At [15], when addressing the artistic v literary work issue, her Honour said that the Designs were calculated to convey "a visual look and feel" rather than to be understood (read) as conveying "semiotic" meaning. In the same vein, at [16] her Honour said that consumers would purchase the NewDeal T-shirts because the selection and arrangement of the various elements (text, colour, font, shape, and so on) had been carefully made to form an aesthetically pleasing visual "look and feel".
[76] In our opinion, the layout and the elements referred to by her Honour that gave rise to the "look and feel" and resulted in the creation of an artistic work were matters of expression, not merely matters of idea or concept. The look and feel arose from the selection, arrangement and style of the elements regarded as a whole.
[77] Having erroneously attributed to the category of idea or concept that which was in our view expression, her Honour was forced, when identifying that which was expression, to descend to "the precise selection and arrangement of the various design elements" (our emphasis) (at [27] - summarised at [24] above). Her Honour was therefore able to find, and did find, that differences in words and numbers, devices and fonts, were sufficient to avoid infringement.
[78] Cotton On took Elwood's layout that gave rise to the "look and feel". We referred to various "candidate concepts" at [36] above. Whatever concept is chosen, the means of its expression was the layout, the selection, arrangement, and style of the various elements, as previously described, with the very objective of creating the particular look and feel. Even though the logo and numbers were different, by taking the layout and other elements of expression that created the desired "look and feel", Cotton On took a substantial part of the copyright work.
[79] Artistic works conveying a "total concept and feel" have been protected in cases in the United States. …
[80] We accept that the notion of "total concept and feel" or "look and feel" has some difficulties. Copyright law does not protect "concepts", and at least a test of "feel" seems to invite the abdication of analysis: see Nimmer, op cit at p 13-46. In the present case, however, both we and the trial judge have analysed the layout and other elements of expression that gave rise to the intended look and feel. In our respectful opinion the primary judge erred by relegating them to the category of unprotectable "ideas", even though she had correctly taken them into account for the purpose of classifying the Designs as artistic works.
268 The Full Court applied a similar analysis to the swing tags: at [81]-[82].
269 In Designers Guild, the House of Lords allowed the appeal of the plaintiff, Designers Guild Ltd, holding that the defendant, Russell Williams (Textiles) Ltd had infringed Designers Guild's copyright in its "Ixia" fabric design of stripes with flowers placed over them at intervals. The Court of Appeal had accepted that the defendant had copied the Ixia design, but held that what was taken did not constitute a substantial part of the copyright work and hence there was no infringement.
270 On appeal, the House of Lords in separate judgments, unanimously held that the Court of Appeal had adopted an erroneous approach to the issue of substantiality, on which the trial judge had not misdirected himself.
271 The primary judge had rejected the defendant's designers' denial that they were aware of Designers Guild's designs. He found, largely based on the similarities of the parties' designs, that copying had occurred, which went "far beyond the similarities which would be expected simply from both being based on an impressionistic style or from both being based on a combination of stripes and scattered flowers and leaves": at 2419 per Lord Hoffmann, quoting the trial judge.
272 The primary judge listed the similarities and relied on inferences from the finding that the defendant's designers gave a false explanation of the provenance of their design: at 2419 per Lord Hoffmann. Lord Hoffmann observed at 2419 that the primary judge rejected the defence based on "the traditional form" of:
(a) dissecting the plaintiff's design into its component elements; and
(b) advancing reasons why each was either nor original or had, in some respects, not been copied; and
(c) ultimately contending that the elements which were copied were not a substantial part of the copyright work.
273 Lord Hoffmann noted at 2420 that the primary judge stated that:
It is the combination of the flowers and the stripes, the way in which they related to each other, the way in which they were painted and the way in which there was a 'resist' [see through] effect which makes the overall combination the copying of a substantial part.
274 Lord Hoffmann stated that the Court of Appeal erred in dissecting the defendant's work to the stripes and flowers, finding them different or "not copied" and concluding that this left only the unprotectable idea of combining stripes and flowers. That approach ignored the cumulative effect of all the elements that had been copied added up to a substantial part of the plaintiff's work: at 2422.
275 Lord Hoffmann, while acknowledging that it was "in a sense" true that "the question of substantiality was one of impression", drew attention to the statutory question itself, which is whether the features the judge found to be copied from the plaintiff's artistic work formed a substantial part of it as an artistic work: at 2420. While answering that question was a matter of judgment or impression, it was not relevant to consider whether the plaintiff's work looked like the defendant's work.
276 In Designers Guild, Lord Hoffmann made clear that it is erroneous to dissect the elements of an abstracted artistic work dealing with the copied features piecemeal instead of considering their cumulative effect. The copying in Designers Guild was at 2421:
… by no means confined to the notion of stripes and flowers. There are many ways of depicting both stripes and flowers … [T]he judge identified the additional visual similarities as arising from such matters, as the brush work, the resist effect and the loose arrangement of freely drawn leaves and flowers. These features, he found, have been copied and cumulatively constituted a substantial part of the work.
277 It was wrong, Lord Hoffman said, to dismiss the significance of the copied elements because they produced visual effects that were different in certain respects. There was a fallacy involved in fixing on differences, because "[w]hen one is considering the question of substantiality, it is no longer relevant to examine in what respects the two designs are different": at 2422.
278 Lord Hoffman recognised at 2423 that certain ideas were unoriginal or too commonplace to form a substantial part of the work. He observed that the mere notion of combining stripes and flowers would not have amounted to a substantial part of the plaintiff's work and, at that level of abstraction, would not have represented enough of the author's skill and labour to attract copyright protection. Lord Hoffman stated at 2423:
Generally speaking, in cases of artistic copyright, the more abstract and simple the copied idea, the less likely it is to constitute a substantial part of the plaintiff's work. Originality, in the sense of the contribution of the author's skill and labour tends to lie in the detail with which the basic idea is presented.
279 Lord Hoffmann stated at 2422 that:
[T]here are numerous authorities which show that the "part" which is regarded as substantial can be a feature or combination of features of the work, abstracted from it rather than forming a discrete part.
280 By way of example, Lord Hoffmann noted that the copyright of a play or novel could be infringed by a work which does not reproduce a single sentence of the original. Lord Hoffmann observed that "[i]f one asks what is being protected in such a case, it is difficult to give any answer except that it is an idea expressed in the original artwork": at 2422.
281 The High Court's observation in IceTV that not all uses of a copyright work fall within the ambit of the owner's exclusive rights, and hence are not precluded, merely restates a well-established recognition to that effect. As Street J stated in Ancher Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 at 284, quoted and endorsed by the Full Federal Court in Cummins v Vella [2002] FCAFC 218 ("Cummins v Vella") at [40]:
An architect may legitimately inspect an original plan or house and then, having absorbed the architectural concept and appreciated the architectural style represented therein, return to his own drawing board and apply that concept and style to an original plan prepared by him and in due course to a house built to such plan. There is a dividing line separating such a legitimate process from an inspection followed by a later copying of a substantial part of the physical object inspected, even though the copying be from memory; the latter exercise does infringe. In many instances it will be difficult to state categorically whether the dividing line has been crossed.
282 In Cummins v Vella, the Full Court considered whether copyright in naÏf style paintings of flowers, yachts and abstracts in bright primary coloured paint applied within an impasto technique directly from the tube was infringed by the paintings of the respondent and his daughter, who, inspired by the copyright owner's works, took up paintings of floral and other subjects in an unsophisticated style. The copyright owner alleged that the subject matter, technique, colours, dimensions and framing of the respondent's paintings were so similar as to appear to be the work of the same artist. The respondent admitted that he was inspired by the copyright owner's works.
283 The Full Court found, inter alia, that the primary judge failed to apply the distinction between, on the one hand, form and expression and, on the other hand, style and technique: at [42]. Their Honours stated that reliance on "subject matter, technique, colours, dimension and framing" suggested, at least potentially, an erroneous approach, because if the similarities in subject matter, composition, primary colours, impasto application and a scraping back technique "did not go beyond style, colours, subject matter and technique, [the copyright owner's] case of infringement would not be made out": at [43].