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England and Wales High Court (Chancery Division) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> IPC Media Ltd v News Group Newspapers Ltd  EWHC 317 (Ch) (24 February 2005)
Cite as:  EWHC 317 (Ch),  FSR 35,  EMLR 23,  EMLR 532
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B e f o r e :
|IPC MEDIA LIMITED|
|- and -|
|NEWS GROUP NEWSPAPERS LIMITED|
Official Shorthand Writers and Tape Transcribers
Quality House, Quality Court, Chancery Lane, London WC2A 1HP
Tel: 020 7831 5627 Fax: 020 7831 7737
MR. M. PLATTS-MILLS Q.C. (instructed by Farrer & Co.) appeared on behalf of the Defendant.
Crown Copyright ©
MR. JUSTICE HART:
"1. That the defendant will not, whether acting by its directors, officers, servants agents or any of them otherwise howsoever, do, nor authorise, procure or assist any person or entity to do the following acts or any of them, that is to say:
1.1 Infringe the copyrights of the plaintiff by making a copy of or by issuing to the public copies of the whole or any substantial part of the front cover of the issue of the plaintiff magazine called TV Times dated 10-16th October 1998.
1.2 Infringe the copyrights of the plaintiff by making a copy of or by issuing to the public copies of the whole or any substantial part of the front cover of the issue of the plaintiff's magazine called What's on TV dated 29th August-4th September 1998.
1.3 Infringe the copyrights of the plaintiff by making a copy of or by issuing to the public copies of the whole or any substantial part of the logos of the words What's on TV and TV Times by the plaintiff for the titles with said magazines or the layouts of any cover of What's on TV and/or TV Times.
2. The defendant will pay the plaintiff the sum of £8,000 in satisfaction of the plaintiff's claim for costs and damages/account of profits and interest thereon.
3. The defendant acknowledges that the plaintiff owns the copyright in the layout of the plaintiff's magazines called TV Times dated 10th-16th October 1998 and What's on TV dated 29th August to 4th September 1998 and in the logos the words TV Times and What's on TV used by the plaintiff for the titles of its magazines."
"Fair dealing with a work for the purpose of criticism for review of that or another work or of a performance of a work does not infringe any copyright in the work provided that it is accompanied by a sufficient acknowledgement."
No issue arises in this case about the existence of a sufficient acknowledgement. Sub-section (2) provides:
"(2) Fair dealing with a work (other than a photograph) for the purpose of reporting current events does not infringe any copyright in the work provided that subject to (sub-section (3)) it is accompanied by a sufficient acknowledgement."
Again, no question of an acknowledgment arises in this case.
"It is bigger than TV Choice, which is just 76 pages and costs 40p. It's bigger than What's on TV which is 84 pages and costs a whopping 45p. Yes, The Sun's new TV Mag is a fabulous 88 pages and it is absolutely free with your favourite paper this Saturday and every Saturday. Don't miss your magnificent copy this weekend. Why pay for less, 88 pages."
Welcome to our brilliant new 88 page TV Mag. Our Saturday glossy is now bigger, brighter and much, much better. In fact it is the biggest and best television's listings magazine available. All your favourite features are still there- we just made them a whole lot bigger and better.
We now have six pages of listings every day with pick of the day for all your favourite channels including satellite and cable. Our soaps guide is now eight pages. That is bigger than any TV magazine even the ones you can buy in the shops!
Our movie guide is now a massive seven pages and includes the latest cinema, DVD and video releases. TV secrets is our new gossip and news column which will keep you up to date with all that is hot on TV. There is a new coffee time section full of prize puzzles and competitions plus there are lots more great features about your favourite stars and shows.
Look at the two magazines above next to your bigger and better TV Mag. You have to pay 45p and 40p for them -why bother when you can get your 88 page TV Mag free with The Sun every Saturday?
Yours sincerely, the Editor."
(1) That the words 'for the purpose of' imported no need to consider the mental state of the alleged infringer. They could be treated as the equivalent of "in the context of" or "as part of an exercise in";
(2) That mental state might, however, be important in coming to a decision as to whether or not there had been fair dealing;
(3) The expressions criticism or review and reporting current events are "expressions of wide and indefinite scope. Any attempt to plot their precise boundaries is doomed to failure. They are expressions which should be interpreted liberally."
(4) "That criticism of a work need not be limited to criticism of style. It may also extend to the ideas to be found in a work and its social or moral implications."
The relevant passages in which these observations are to be found are at pp.620 and 621 of that report.
"The nearer that any particular derivative use of copyright material comes to the boundaries, unplotted though they are, the less likely it is to make good the fair dealing defence."
"It is impossible to lay down any hard and fast definition of what is fair dealing, for it is a matter of fact, degree and impression. However, by far the most important factor is whether the alleged fair dealing is in fact commercially competing with the ... exploitation of the copyright work, a substitute for the probably purchase of authorised copies, and the like. If it is, the fair dealing defence will almost certainly fail. If it is not and there is a moderate taking and there are no special adverse factors, the defence is likely to succeed, especially if the defendant's additional purpose is to right a wrong, to ventilate an honest grievance to engage in political controversy and so on.
"The second most important factor is whether the work has already been published or otherwise exposed to the public. If it has not, and especially if the material has been obtained by a breach of confidence or other mean or underhand dealing, the courts would be reluctant to say this is fair. However, this is by no means conclusive for sometimes it is necessary for the purposes of legitimate public controversy to make use of "leaked" information.
"The third most important factor is the amount and importance of the work that has been taken. For, although it permissible to take a substantial part of the work (if not there will be no question of infringement in the first place) in some circumstances the taking of an excessive amount, or the taking of even a small amount, if on a regular basis, would negative their dealing."
Secondly, the regulations which implement it (see the Control of Misleading Advertisements Regulations 1988 as amended) expressly provide by regulation 4(a)(iii):
"The provisions of this regulation shall not be construed as (a) conferring a right of action in any civil proceedings in respect of any contravention of this regulation (save as provided for in these regulations) or
"(b) Derogating from any right of action or other remedy (whether civil or criminal) in proceedings instituted otherwise than by virtue of these regulations."
"Whereas it may however be indispensable in order to make a comparative advertising effective to identify the goods or services of a competitor making reference to a trade mark or trade name of which the latter is the proprietor."
I comment that even if the leap is made from trademark law to the law of copyright, there is no requisite indispensability here. The defendant did not need to infringe the claimant's copyright in order to identify the comparator product.
MR. ALEXANDER: My Lord, two matters consequential upon my Lord's judgment. First of all, the question of costs and, secondly, the question of form of order.
MR. JUSTICE HART: Yes.
MR. ALEXANDER: Perhaps I could deal with the form of order first of all. There is not actually a minute of order for the court, but we would ask for relief in terms of the prayer for relief in the particulars of claim which you will find in tab 2 of the bundle. In paragraph 1, those are the usual injunction, delivery up. My Lord, what I would suggest in relation to delivery up is that my learned friend and I, or our respective solicitors, endeavour to agree a reasonable approach on that. It may be, for example, there are archival copies and so forth that the defendants want to retain and ... difficulty in relation to a minor matter along those lines.
Enquiry as to damages, what we say is there should simply be an enquiry as to damages or option and counter-profits. Directions in these kinds of cases are usually made for disclosure of materials or that the claimant can decide whether to pursue an enquiry or an account realistically one suspects, but given my Lord's judgment it is quite likely that matters will be resolved before one gets to that stage. In any event what we would suggest again is that we endeavour to agree some kind of direction in relation to what should happen if my Lord indicates that in principle that would be appropriate. Then an order for payment, that will just be consequential upon an enquiry. Further or other relief, that does not arise.
As regards costs, we respectfully submit that we are entitled to our costs of the action and this application. Since it is less than one day, or anticipated to be a one day application, we have prepared a statement of costs for that hearing which perhaps I could hand up to my Lord. (Handed)
MR. PLATTS-MILLS: Is it my hearing or...
MR. ALEXANDER: I will find out. I have only just been handed this.
MR. JUSTICE HART: Before we get onto costs can we deal with the form of the order?
MR. ALEXANDER: Yes, of course.
MR. JUSTICE HART: A point that occurs to me on your undertaking 1C is that on the way in fact I have given judgment I think that has to be limited to the copying of covers.
MR. ALEXANDER: Yes, so be it. We will obviously endeavour to agree a minute that reflects what my Lord has said in the judgment rather than trying to do it, as it were, on the hoof now, but that must be right in principle.
MR. JUSTICE HART: Mr. Platts-Mills, do you have any comment generally -- is there any principle you think you need me to rule on before you go away and agree ----
MR. PLATTS-MILLS: I do not think there are. I do not think we can resist the form of injunctions that my learned friend is asking for. I am grateful for my learned friend's indications in relation to delivery up. My understanding is that we do not know what there is, but there may be material in archival form somewhere or other, and what I suspect is that the bigger fear for the claimant is not that we may use old covers that may be an archive but that we may use future covers as to which we have access to them freely because they keep publishing them.
MR. JUSTICE HART: Yes.
MR. PLATTS-MILLS: The injunction really is intended, I anticipate, to have greatest effect on future covers rather than whatever may be in The Sun last year. In any event, perhaps we can talk about that and resolve it that way. Again, I am perfectly happy to consider my learned friend's proposals about an order in relation to enquiry and disclosure and so forth for that, and then there is the issue as to costs. I cannot resist an order for the costs of the action which would include the costs of this application. I would resist summary assessment because we are specifically dealing with the costs of this application which is a one day application.
MR. JUSTICE HART: I do not have the sheet of paper now. Has it reached me yet? (After a short pause) Thank you.
MR. PLATTS-MILLS: Can I hand up a copy of our schedule which only relates to the application? (Handed) My Lord, what I would suggest in relation to costs is that there should be an order that my client should pay any claimant's costs, that there should be a detailed assessment unless otherwise agreed.
MR. JUSTICE HART: Yes.
MR. PLATTS-MILLS: And that that is the appropriate way of dealing with costs.
MR. JUSTICE HART: Then I would also be bound, and if I were not anyway bound by the rules to consider I would no doubt be invited, to consider making an order for payment on account.
MR. PLATTS-MILLS: Yes, certainly, but in my submission that is the more appropriate way of doing it than inviting your Lordship to attempt to assess costs which go back to last July that relate to the entirety of the action rather than just a limited part of it which is today's application which would be covered by the normal rules.
MR. JUSTICE HART: Yes.
MR. PLATTS-MILLS: I could not resist an order for a payment on account obviously, subject to debate about how much.
MR. JUSTICE HART: Yes.
MR. ALEXANDER: My Lord, on the basic terms of order we will endeavour to agree that. In relation to costs, in my respectful submission it would be appropriate to make a summary assessment of the application ----
MR. JUSTICE HART: You do not have a separate statement of costs for the application?
MR. ALEXANDER: My Lord, I will take instructions on that. My Lord, I apologise, this actually is a statement of costs relating to the entire action.
MR. JUSTICE HART: I am somewhat relieved to hear it.
MR. ALEXANDER: So the application is not struck out.
MR. PLATTS-MILLS: ...
MR. ALEXANDER: Yes, of course. In that case in making an order separately in relation to the application may be thought not entirely straightforward to strike all of it out. In any event would respectfully submit that there ought to be an order for interim payment and the ordinary approach is that one follows the Miles v. Technolog approach, which is in the White Book, is that ordinarily about 40% of the proposed bill is payable in a case of this kind.
We respectfully submit that it is likely that we will be entitled to considerably more than that for two reasons. First of all, the defendants put us to proof of title and subsistence of copyright. We had to get evidence from people dealing with that and evidence to which you have not been taken. The position was only ultimately conceded in relation to the logo for the purposes of this application.
MR. JUSTICE HART: I should have made that clear in my judgment.
MR. ALEXANDER: And that was something that had to be done at least in that respect.
MR. JUSTICE HART: Yes.
MR. ALEXANDER: And in my respectful submission you can, as it were, see the tirade of the evidence here, indeed the tirade of submissions and we submit that it is rather likely that a substantial portion of these costs will be awarded to us in due course. We would therefore make a submission that the interim payment should be somewhat more than the ordinary 40% of the proposed bill. I will just take instructions if there is anything else that ought to be said. (After a short pause) My Lord, questions of additional boundaries, flagrancy benefit, and so forth, that will all be canvassed in the enquiry as to damages and will be the subject of the directions for an enquiry in due course. I do not think it is appropriate to ventilate that further before my Lord today.
MR. JUSTICE HART: Yes.
MR. PLATTS-MILLS: My Lord, if your Lordship were minded to order an interim payment of the order of 40% then I would not oppose it. If your Lordship is thinking of something rather more than that then I want to go into a little bit of detail.
Your Lordship will recall in our defence we admitted subsistence and ownership of copyright in relation to the layout, not in relation to the logo. The evidence that has been put forward by the claimants, which in our submission has been likely to have been reflected in a large amount of the costs, has been evidenced from Mr. Richardson as to the creation of the layout. There is a great deal of evidence from them about what they did and when they did and how they had meetings here, there and everywhere which is all concerned with the layout which was not in issue. In our submission, rather more than half of the evidence that has been put in has been completely irrelevant and should not have been put in at all. My Lord, those are obviously matters which can be canvassed at a detailed assessment, but in our submission there is nothing about this case that would suggest that it is anything different from the ordinary and that something of the order of 40% would be about right.
MR. JUSTICE HART: Yes.
MR. ALEXANDER: My Lord, just to come back on that, in fact the evidence deals both with the question of logo and layout. Copyright was not ... in the logo. You will recall from the IPC case that there was very extended argument as to whether or not copyright subsisted in the logo and layout and it was thought ... would cover both of those since the claim is in relation to it. In fact it is not irrelevant because one of the matters that my Lord has taken into account in coming to the conclusion ... is the extent to which this work was, as it were, valuable artistic work ... and to that evidence going to the value of the work in its creation, and so forth, is prima facie relevant. So we respectfully submit that it is relevant on any view and we would be entitled to our costs of that on an assessment.
MR. JUSTICE HART: Yes. This is a case where it is appropriate to order a payment on account. A rule of thumb might be 40%. The sum sought is altogether in relation to costs of the action and the application is £67,000-odd. I think that no injustice will be done if I order a payment on account of £27,000.
MR. ALEXANDER: My Lord, usual terms, 14 days.
MR. JUSTICE HART: Yes.
MR. ALEXANDER: We think that may include VAT but in any event we will sort out what the consequences are between ourselves. I cannot imagine that is going to create any difficulties.
MR. PLATTS MILLS: My Lord, a final matter, permission to appeal. Clearly this is an important area of law so far as my clients and the media generally are concerned. This is an aspect which has not been dealt with by the courts before in the context of comparative advertising. The inter-relationship between the European and general commercial aspects of the case and the copyright provisions is again an important matter, and not an easy matter in my submission, although obviously your Lordship has in your judgment come to a conclusion and may have found it easier than I think, but, nonetheless, in our submission it is not necessarily a straightforward area. In those circumstances I would ask for permission to appeal.
MR. ALEXANDER: We would say that the matter should be taken up with the Court of Appeal. First of all, the ultimate position can turn on a particular interpretation of the law... Secondly, in relation to the European points, my Lord has held, and we say plainly correctly, that the comparative advertising directive points do not assist on any view. This is not a case that the Court of Appeal should be invited to be troubled with. If they wish to consider it they can grant permission themselves.
MR. JUSTICE HART: No, Mr. Platts-Mills, you will have to seek your permission from the Court of Appeal.