This is a landmark case which define the phase “literary work" and the concept of “originality of ideas”
Facts of the Case
The University of London appointed two professors, Professor Lodge and Mr. Jackson to prepare matriculation examination paper of elementary mathematics for the University. They were employed on the condition that any copyright in the examination papers shall be vested to the University. The university entered into an agreement with University of London Press, Limited (Plaintiff) to assign copyright to them to prepare and issue examination papers for the university.
After the examination, University Tutorial press, Limited (defendant) published “London Matriculation Directory” which included sixteen examination papers of the university taken from copies supplied by students. Their publication also includes answers to the questions and some criticisms on the papers. On 24 February 1916, the plaintiff commenced an action against the defendant for infringement of copyright. Objection was raised that the plaintiff was not entitled to sue, thus Professor Lodge and Mr. Jackson was joined as co-plaintiff.
Issue of the Case
Whether examination papers are “literary works”?
Whether the examination papers are original?
Whether the plaintiff holds the ownership of the copyright?
Whether the defendant have infringed the copyright prepared by the examiners?
Judgment of the Case
First issue: Whether examination papers are “literary works”?
Section 1 (1) of the Copyright Act 1911 provides for copyright in "every original literary dramatic musical and artistic work". Section 35 provide the description of “literary work” includes maps, plans, tables and compilations. The Court held that the words “literary work” cover work which is expressed in print or writing, irrespective of the question whether the quality or style is high. The court was of the view that the examination papers are “literary work” within the meaning of the Copyright Act.
Second issue: Whether the examination papers are original?
The defendant argued that copyright does not apply to these examination papers because it only gives small opportunity for originality. They argued that each individual question does not have sufficient substance of literary expression to be protected.
The Court explained that “original” does not mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought. The originality which is required relates to the expression of the thought. It is only required that the work originates from the author and not be copied from another work. The rough practical test is that what is worth copying is prima facie worth protecting.
In the present case it was not suggested that any of the papers were copied. Professor Lodge and Mr. Jackson proved that they had thought out the questions which they set, and that they made notes or memoranda for future questions and drew on those notes for the purposes of the questions which they set. The papers which they prepared originated from themselves, and were, within the meaning of the Act, original. For the questions in the elementary papers, it was said that there are of a common type but this only means that similar questions have been asked by other examiners. It was held that most elementary books on mathematics may be said to be of a common type but it does not mean that they are not protected by copyright.
Third issue: Whether the plaintiff holds the ownership of the copyright?
The defendant objected and argued that the plaintiff does not own the copyright to the papers because the authors of the examination papers were not under a contract of service and thus could not maintain the action.
By virtue of section 5 of the Copyright Act, the author is the first owner of the copyright subject to the exceptions under subsection 1. It is clear that the examiners are employed by the university and the examination papers are prepared by them during their course of employment. For exception under subsection 1 (b) to be applicable, the examiners must have been "under a contract of service or apprenticeship".
The facts show that the examiners were employed to prepare the examination papers on the subject which he was appointed as examiner. The examiners duties were to set the papers for exam in September 1915 and January and June in 1916, perusal of the student’s and the consideration of the marks to be awarded to the answers. The examiners are paid a lump sum for their work and they are free to prepare the questions at their convenience so long as they were ready by the time for the examination. They are also left with to their skill and judgment to decide what questions should be asked, having regard to the syllabus, the book work, and the standard of knowledge to be expected at the matriculation examination. It is true that the university issued instructions to examiners for the conduct of the examination, but these instructions are only regulations framed with a view to securing accuracy in the system of marking. Professor Lodge and Mr. Jackson were regularly employed in other educational establishments and were not part of the staff of the London University, and it was not suggested that the other examiners were on the staff of the University.
The Court held that in such circumstances, they cannot be described as the servant of the University, or that they prepared these papers under a contract of service. Hence, the examiners were the first owner, and they have not assigned the copyright in writing. The copyright therefore remains in the examiners, subject to the obligation under the contract of employment to assign it to the University or as it may direct. The copyright was vested in the examiners, but the university was equitably entitled to it subject to the restrictions contained in the proviso to section 5 (2). The university assigned its rights to the plaintiff company, which is now equitably entitled to the copyright.
In order to sue for infringement of the copyright, the plaintiff must either obtain a proper assignment of the copyright or join the examiners, who are the legal owners of the copyright, as parties. It has not obtained an assignment, but it has in the course of the action joined Professor Lodge and Mr. Jackson as co-plaintiffs. The plaintiffs can therefore sue for infringement of the copyright in the papers prepared by Professor Lodge and Mr. Jackson, but, in the absence of the other examiners, the action fails in respect of the copyright in the papers which were composed by those other examiners.
Fourth issue: Whether the defendant have infringed the copyright prepared by the examiners?
Defendant argued that what they have done has been "fair dealing" "for the purposes of private study" within section 2 (1) (i). The defendants give these papers to enable prospective candidates to prepare for examination, and the fact that they may make a profit out of it is not relevant. They also argued that they had added considerable amount of work to it by working out the answers and in making criticisms. Defendants also uses it for an entirely different purpose. The defendants are not superseding the objects of the examiners, but rather benefiting them. They are not a rival University "cribbing" the papers for examination purposes. They are publishing for the benefit of education and without any animus furandi (intent to steal).
The Court held that the defendant’s short criticism does not carry much importance. It was held that mere republication of a copyright work could not be regarded as "fair dealing" just because it was intended for purposes of private study. The defendants have failed to bring themselves within the protection of section 2 (1)(i) of the Copyright Act. Thus, plaintiff succeed on their action on the questions prepared by Professor Lodge and Mr. Jackson for the examination but failed on the papers set by the other examiners.
Principle of the Case
The word “literary work” cover work which is expressed in print or writing, irrespective of the question whether the quality or style is high.
The word “original” does not mean that the work must be the expression of original or inventive thought. It is only required that the work originates from the author and not be copied from another work. The rough practical test is that what is worth copying is prima facie worth protecting.