Doctrine of Originality in IPR

University Degree Law

II Year Trimester VI Jurisprudence of Copyright Law – Doctrine of Originality

Jurisprudence I

Jurisprudence of Copyright Law

Doctrine of Originality in Copyright Law

paper submitted by Ankita Godbole

April 2009

Introduction

“Copyright shall subsist in…original literary, dramatic musical and artistic works.”

he fundamental premises on which copyright law is based is originality. The question that a court must thus ask itself when assessing copyright claims is whether the work being examined is ‘original’. However, the exact meaning of the term ‘original’ and what exactly ‘originality’ entails remains a rather nebulous concept. The enquiry into whether or not a work can be called original enough to render it suitable for copyright protection, has devolved into the narrow point of whether it has satisfied the required ‘standard/quantum of originality’. Divergent interpretations placed by various courts on the required quantum have left the jurisprudence on the point in a quagmire. Recent decisions by the Indian courts providing their version of the same have only served in augmenting the confusion.

This research paper endeavours firstly, to locate the Indian judiciary’s formulation of the standard of originality within those giving by other jurisdictions, and secondly to determine whether there is a need for reconsidering the same given its ramifications on copyright jurisprudence in India. Applying a case law analysis method, the paper first traces the various interpretations laid by courts on the quantum of originality and then proceeds to examine the same as laid down by the Indian Courts in Eastern Book Company v. D.B. Modak [hereinafter “EBC”], Mattle Inc. v. Jayant Agarwalla [hereinafter “Mattle”] and The Chancellor, Masters & Scholars of the University of Oxford v. Narendra Publishing House [hereinafter “Oxford”]. Within this framework, the final task has been to carry out a critical analysis of the interpretation of originality in the abovementioned decisions and determine their implications on future copyright jurisprudence in India The paper determines that while the standard as laid down in Mattle can be retained, certain aspects of the same need to be clarified by a superior bench.

Section I

“Sweat of the Brow” to “Modicum of Creativity”

As already stated, there are competing views worldwide on the meaning of originality and the situation is worsened as none of the copyright statutes define the term original. Consequently, there were two parallel views of the originality requirement being applied simultaneously across jurisdictions.

One school of thought holds that ‘industrious collection’ which involves only application of skill and labour without even the least bit of creativity is sufficient to warrant copyright protection. All that is required is that the work originates from the author and is more than a mere copy of an original work. As per this school, copyright has no basis in any creative merit. Rather, it seeks only to reward what is the author’s natural right over what has resulted from his labour, skill and capital. This corresponds with what has been termed as the “sweat of the brow” standard. Contrary to this, the other school of thought holds that what should be rewarded is not merely mechanical effort on the part of the author but also a certain degree of creativity.

It is submitted that the doctrinal dichotomy goes much deeper, basing itself on the function of copyright law, which seeks to establish and maintain a somewhat precarious balance between the author’s monopoly over his work and the audience’s right to avail of ample aesthetic and intellectual works by incurring minimal or no cost. The former is regarded as the ‘misappropriation’ model while the latter the ‘public interest’ model.

This dichotomy was seemingly laid to rest by the landmark decision of the United States Supreme Court in Feist Publications v. Rural Telephone Service Company Inc. [hereinafter “Feist”]. The Court was faced with the respondents alleging copyright infringement in the white pages of their telephone directory, which they claimed was an original work, by the appellants. The Court had to decide whether the directory – essentially a compilation of facts – was indeed original so as to warrant protection by copyright.

Ruling in favor of the appellants, the Court made two crucial assessments. First, it emphatically rejected the “sweat of the brow” approach on the sound reasoning that this test allows copyright protection to extend to facts themselves. Hence it is destructive of the basic premises of copyright law – that copyright exists in the expression, not the idea. Second, it went on to settle the debate on the standard of originality to that of “modicum of creativity”. In respect of the latter the Court said that,

“The originality requirement is not particularly stringent…requires only that the author make the selection ...

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“The originality requirement is not particularly stringent…requires only that the author make the selection or arrangement independently… that it display some minimal level of creativity.”

Hence as a result of Feist, it is submitted that the test of originality now had two requirements, that the work be of independent origin and that it demonstrate some minimal degree of creative input. The Court read the requirement of creativity to be mandated by the Constitution and brought factual compilations at par with other more obviously creative works.

Section II

Feist Publications to CCH Canadian

Before moving on to the next pivot in the jurisprudence on the subject, it would be prudent to make certain observations. Right from the very beginning the term original only imported the idea of independent creation not the idea of novelty. Furthermore the assumption cannot be made that the use of the word ‘creative’ implies ‘novelty’ because a work maybe such as to have no counterpart in that it is made for the first time, but this cannot be extended so far as to assume that the said work is creative. It may lack that required creative spark altogether. Similarly it is submitted that Feist never intended to inject into the originality requirement an element of novelty but only that of minimal creativity.

It is then ironical that the Supreme Court of Canada, came without hesitation, to this very conclusion in CCH Canadian Ltd. v. Law Society of Upper Canada [hereinafter “CCH”]. This case marks a rather interesting development in the “standard of originality” story. If it wasn’t enough that there was already uproar over the ruling by the Feist Court, the bench in CCH considered it appropriate to not only misinterpret Feist, but also add a third standard of originality.

The majority, through MacLachlin, C.J.C. took the view that the correct position of the law on standard of originality, which fell between the two extremes of ‘sweat of the brow’ and ‘creativity’, was an exercise of “skill and judgment”. This standard sought neither an effort that was so trivial as to be purely mechanical in nature nor a degree of creativity as propounded in Feist. The requirement of creativity was too high a burden to establish, implying that the work must be novel or non obvious. Hence by taking the middle path, the Court adopted in their consideration a workable and appropriate standard for determining copyrightability.

It is submitted that this particular formulation made by the Court could be a result of its intention to protect the growing domain of utilitarian works. Such works as per its interpretation of the creativity requirement may not have passed the threshold to attain copyright but will be able to do so under this ostensibly objective standard. This new method of testing originality seems at some level to include a larger range of works. But it is open to doubt whether the same is fool proof, because this formulation seems to have led to an increase in the already unanswered questions on the point. For example, how is one to draw the line between a work resulting from purely mechanical effort and that resulting from a ‘greater level’ of skill and judgment? Further, the creativity standard as applied in United States sufficiently protects utilitarian works as well. Then it stands to reason that creativity was not meant to be ‘novelty’ and the ‘skill and judgment’ test is not really a median path. Hence, it is submitted that the law after CCH is no more settled than it was before.

Section III

Mattle v. Agarwalla – Originality in India

This section proposes to enumerate the position as to standard of originality in India following three recent judgments. When these cases came up for consideration, the Courts had for their guidance and consideration the dictums laid down in Feist as well as CCH. The courts had to thus determine where on the originality spectrum the legal position of India lay.

In Mattle Inc. v. Jayant Agarwalla, the Delhi High Court considered some important issues related to the meaning of originality in copyright. The plaintiff’s (manufactures of the popular game ‘Scrabble’) claimed that the defendants, (who had made the online game ‘Scrabulous’) “by the use of red, pink, blue and light blue tiles, use of identical patterns of arrangement of coloured tiles and the use of a star pattern on the central square…have infringed their copyright in the game board, which is an artistic work.”

Justice Ravindra Bhatt rejected the argument of the plaintiff on the ground that the work was not sufficiently original. However, it is submitted that the above decision is open to considerable debate given the manner in which the Judge very “eloquently” expressed what he believed to be the correct and applicable standard of originality. Acknowledging that a previous Supreme Court judgment given in EBC had correctly adopted and applied the CCH standard, the learned Judge said,

“Our law mandates that not every effort or industry…results in copyrightable work, but only those which create works that…involve some intellectual effort and involves a certain degree of creativity.” (emphasis added)

A similar standard was applied by Justice Bhatt in a subsequent case, The Chancellor, Masters & Scholars of the University of Oxford v. Narendra Publishing House which involved an unsuccessful copyright claim in a set of mathematics textbooks published by the plaintiffs. While it is submitted with some relief that the Delhi High Court did not formulate an entirely independent standard of originality, it still succeeded in intensifying the confusion around the same by combining rather ineptly two previously existing and apparently distinct formulations.

Justice Ravindra Bhatt’s assessment has the potential to become the settled position of law with respect to originality in India. While he has carried out an admirable discussion of the jurisprudence on the point in the case, his interpretation is not without its drawbacks. If at all Mattle is to become precedent, then it is imperative that the possible lacunae in the ratio be plugged. In an attempt to do the same the discussion that now follows seeks firstly to determine what the position in India on standard of originality is and secondly whether such the position is desirable given its possible future implications.

It is submitted that rather than adopt a pure CCH standard, the formulation as given in Mattle seems to be a fusion of Feist and CCH. It certainly incorporates the requirement of creativity which is purely a Feist stipulation. It would be going too far to suggest that India has an entirely independent standard of originality from the ones that have been otherwise doing the rounds. Instead it is submitted that despite approving CCH, a Feist standard has been adopted.

However this only solves half the problem – if the requirement of creativity has indeed been incorporated then the discussion is back to square one. Inevitably now the next question to resolve is – ‘how much creativity?’ It is possible at this point to adopt the ‘minimal degree’ outline of creativity laid down in Feist. However since that decision was by itself not without problems, a wiser step would be to place this question for consideration and conclusive decision by a superior bench.

Hence, the position of law with respect to originality in India, it is submitted is no more settled and therefore this is the first corrective measure that needs to be taken. That being said, it is a sincere belief that any standard that is now clarified by a superior bench necessarily include an element of minimal creativity since it is submitted that Feist, while tottering on its ruling on a superficial glance, actually got it right.

Conclusion

As can be observed from the foregoing discussion, the standard of originality has been defined and redefined on several occasions. This has important ramifications on the copyright system because it is directly determinative of the number and types of works that will be entitled to copyright. At stake also is the philosophy behind copyright that a particular jurisdiction has adopted – whether author protection or audience protection. Mattle by putting its own spin on originality will have significant impact on future copyright law. It is thus important that some of the confusion that is perceived in this case’s holding be resolved so as to ensure a smoother progress of copyright jurisprudence in India.

Bibliography

Books:

D. Nimmer et al., Nimmer on Copyright Vol. 1 (New York: Lexis Publications, 2000).
Laddie et al., The Modern Law of Copyright and Designs 61, Vol 1 (3rd edn., London: Butterworths, 2000).

Articles:

Abraham Drassinower, “Sweat of the Brow, Creativity and Authorship: On Originality in the Canadian Copyright Law”, 1 University of Ottawa Law & Technology Journal 105 (2003 – 2004).
C.J. Craig, “Locke, Labour and Limiting the Author's Right: A Warning against a Lockean Approach to Copyright Law” (2002), 28 Queen’s L.J. 1.
Daniel J. Gervais, “Feist Goes Global: A Comparative Analysis of the Notion of Originality in Copyright Law”, 49 Journal of the Copyright Society of the U.S.A, 949 (2002).
Howard Abrams, “Originality and Creativity in Copyright Law”, 55(2) Law and Contemporary Problems 3 (1992).

Teresa Sccasa, “Recalibrating Copyright Law?: A Comment on the Supreme Court of Canada’s Decision in CCH Canadian Ltd. v. Law Society of Upper Canada”, Canadian Journal of Law & Technology 89 sourced from http://cjlt.dal.ca/vol3_no2/pdfarticles/scassa.pdf (visited on March 17, 2009).

Zechariah Chaffee Jr., “Reflections on the Law of Copyright: I”, 45(4) Columbia Law Review 503 (1945).

Statutes:

The Copyright Act, 1957.

Internet Sources:

http://www.jstore.org
http://international.westlaw.com
http://cjlt.dal.ca/vol3_no2/pdfarticles/scassa.pdf

Section 13(1)(a) of the Copyright Act, 1957 provides that copyright shall subsist throughout India in original literary, dramatic, musical and artistic works. Indian copyright law developed in close association with the Statute of Anne – the first copyright law in England. The current copyright statute in India, i.e. the 1957 Act has adopted the provision present in the U.K. Act of 1956 with modifications.

Laddie et al., The Modern Law of Copyright and Designs 61, Vol 1 (3rd edn., London: Butterworths, 2000).

D. Nimmer et al., Nimmer on Copyright 2 – 12, Vol. 1 (New York: Lexis Publications, 2000).

Eastern Book Company v. D.B. Modak, AIR 2008 SC 809.

Mattle Inc. v. Jayant Agarwalla, IA No. 2352/2008 in CS(OS) 344/2008.

The Chancellor, Masters & Scholars of the University of Oxford v. Narendra Publishing House, I.A. 9823/2005, 51/2006 and 647/2006 in CS(OS) 1656/2005.

The various statutes i.e. the copyright acts of UK, USA, Canada and India to name a few, left the term ‘original’ undefined. Originality for copyright protection is a court inferred requirement. It stands to reason that as the author of a work alone can claim copyright and as he is “the beginner…creator, originator”, it is such work that is original. See D. Nimmer et al., Nimmer on Copyright, Supra note 3, at 2-6 – 2-7.

Abraham Drassinower, “Sweat of the Brow, Creativity and Authorship: On Originality in the Canadian Copyright Law”, 1 University of Ottawa Law & Technology Journal 105, 107 (2003 – 2004).

Supra note 4, at paragraph 30.

The test of “industriousness” adopts a Lockean natural rights approach. It seeks to reward the author for the effort made by him and thus tips the balance in favor of his rights as opposed to public interest. For a discussion on the same see C.J. Craig, “Locke, Labour and Limiting the Author's Right: A Warning against a Lockean Approach to Copyright Law” (2002), 28 .

The “sweat of the brow” standard has been adopted in the following cases; Walter v. Lane, [1900] AC 539 (HL); University of London Press Limited v. University Tutorial Press Limited, [1916] 2 Ch 601; Rai Toys Industries v. Munir Printing Press, 1982 PTC 85; Macmillan v. Suresh Chandra Deb, ILR 17 Cal 952.

This approach has been adopted in the case of Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884), which involved a successful copyright claim in a photograph of Oscar Wilde. In Bleistein v. Donaldson Lithographing Co., 188 US 239 (1903) Justice Holmes gave what is now considered a seminal description of originality. See Daniel J. Gervais, “Feist Goes Global: A Comparative Analysis of the Notion of Originality in Copyright Law”, 49 Journal of the Copyright Society of the U.S.A, 949, 952 (2002).

A third model, the ‘authorship’ model is claimed to establish the much required balance between the two. While an examination of the same is not within the scope of this paper for further discussion on the same, see Zechariah Chaffee Jr., “Reflections on the Law of Copyright: I”, 45(4) Columbia Law Review 503, 510 – 516 (1945).

Feist Publications v. Rural Telephone Service Company Inc., 111 S.Ct. 1282 (1991).

Supra note 14, at 1291.

Supra note 14, at 1294.

Feist led to an uproar when it included the creativity requirement and disowned the ‘sweat of the brow’ doctrine. Majority legal opinion was that any kind of compilation was no longer safe. It is submitted however that Feist didn’t really change the law by rejecting ‘sweat of the brow’ because creativity has also been used simultaneously by other lower courts as an originality standard before. All that Feist then did was to pick one of the two doctrines and settle the law. See Howard Abrams, “Originality and Creativity in Copyright Law”, 55(2) Law and Contemporary Problems 3, 14 (1992).

Supra note 3, at 2 – 7.

It is submitted that the word ‘modicum’ precedes the word ‘creativity’ in the Feist judgment. The Court in Feist makes a distinction between the facts themselves and the manner in which they are marshaled and represented. While it clearly said that facts themselves are obviously not subject to copyright, it further sought to indicate that any equally mundane representation of them which is “so mechanical or routine as to require no creativity whatsoever” does not possess the required minimal degree of creativity. Hence it stands to reason that the word ‘creative’ does not correspond to its dictionary meaning of ‘unique or novel’ but is a much lower standard. See Howard Abrams, “Originality and Creativity in Copyright Law”; Supra note 17, at 16 – 17.

CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13.

Supra note 20, at paragraph 24.

Teresa Sccasa, “Recalibrating Copyright Law?: A Comment on the Supreme Court of Canada’s Decision in CCH Canadian Ltd. v. Law Society of Upper Canada”, Canadian Journal of Law & Technology 89, 90 sourced from http://cjlt.dal.ca/vol3_no2/pdfarticles/scassa.pdf (visited on March 17, 2009).

Supra note 22, at 91.

Supra note 5, at paragraph 9.

Apart from not having met the required standard of originality the Court went on to hold that the copyright claim was defeated by the doctrine of merger. For a discussion See Mattle Inc. v. Jayant Agarwalla, Supra note 5, at paragraph 27.

In a claim for copyright infringement by the appellants of their law report – Supreme Court Cases, the court has to consider whether the said compilation of judgments were original. Answering the question in the affirmative P.P. Naolekar, J. speaking for the bench adopted the test laid down in CCH that the work must be original “in the sense that by virtue of selection, coordination or arrangement of pre-existing data contained in the work, a work somewhat different in character is produced by the author.”

Supra note 5, at paragraph 27.