My last article for this blog focused on the decision of the Designers Guild case and the function of the substantial part test to copyright law in cases which deal with the “altered copying” of an artistic work. My reflections on this case attempted to highlight the need for a de minimis threshold before it is concluded that a substantial part of a work has been infringed. Always in the back of my mind is the advice of Lord Reid in Ladbroke v William Hill:
“[T]he question whether [the defendant] has copied a substantial part depends much more on the quality than on the quantity of what he has taken. One test may be whether the part which he has taken is novel or striking, or is merely a commonplace arrangement of ordinary words or well-known data. So it may sometimes be a convenient short cut to ask whether the part taken could by itself be the subject of copyright. But, in my view, that is only a short cut, and the more correct approach is first to determine whether the plaintiffs’ work as a whole is “original” and protected by copyright, and then to inquire whether the part taken by the defendant is substantial”.
Lord Reid advice warns one against failing to determine the boundaries of a work before proceeding to any consideration of whether a part has been taken. Contrary to this advice, however, it would seem that the “short-cut” is nowadays sneaking into UK copyright law. This seems to stem from the influence that Infopaq has had on UK copyright law and most importantly the substantial part test.
To demonstrate this potential impact, this article will focus on the case of Meltwater. Being heard at first instance the year following Infopaq, a lot of the issues raised by the Infopaq decision and how they applied to UK copyright law needed to be decided. The facts of Meltwater are as follows. The Newspaper Licensing Agency, on behalf of newspapers, collect licensing fees for the use of publisher’s literary works by press cuttings agencies. Difference licensing agreements existed whether the cuttings were offline or accessed online. Meltwater was a press cuttings agencies who accessed the literary works online. Under the terms of their licence, Meltwater was permitted to index and scrape the online news articles so that they could perform keyword searches. Customers of Meltwater would select which keywords they wished to monitor in the newspapers and Meltwater, using their indexing system, would provide snippet views of these results. These snippets would consist of the headline of the article, the opening words of the article and the “hit extract”—the keyword in context, surrounded by several words either side. These results could either be accessed through Meltwater’s website or could be received by the user on an automated basis—daily, weekly etc. The questions before the court were whether these snippets were reproductions of the literary works and, if so, was clicking on the hyperlink embedded in the headline a further reproduction and issuing to the public of the reproduction. Being decided in 2010, the case predates the CJEU’s decision of Svensson and it progeny. As such, no mention is made as to whether the provision of a hyperlink is a communication to the public. In light of this, the court’s findings on the issues of issuing copies to the public should be observed with hesitation and hindsight. Nonetheless, the Court’s observations on what constitutes a substantial part are still highly relevant.
Before proceedings any further, it is worth noting that the first instance judgement of Proudman J. was appealed. The Court of Appeal, however, endorsed the findings and judgement of Proudman J. It is for this reason that the following observation will be made within only the judgement of Proudman J. in mind.
Three instances of copying were put forward by the claimant, namely copying of the headline, copying of the opening words of the article and copying of the hit-extract. In no part of her judgement, however, did Proudman J. need to define what the claimant’s work was. It was taken ab initio that copyright somehow existed with the claimant’s newspaper articles and, due the effect of Infopaq, there was no need to fix what exactly the claimant’s work was. As will be shown, sometimes a newspaper article could be considered as a single work combining the headline and body. Other times, the headline could be an independent literary work of its own. Following the below observation of Arnold J., Proudman J. held that there was a copying of the substantial part of a work without ever needing to identify what the work was:
“[T]he Court of Justice has now adopted the same approach [as Lord Hoffman in Newspaper Licensing Agency v Marks and Spencer  UKHL 38] in Infopaq  F.S.R. 20 in holding at  that an extract of 11 words from a literary work constituted a substantial part of the work if the extract contained an element of the work which expressed the author’s own intellectual creation. It follows from this that, when considering whether a substantial part has been reproduced, it is necessary to focus upon what has been reproduced and to consider whether it expresses the author’s own intellectual creation. To that extent, some dissection is not merely permissible, but required. On the other hand, the Court of Justice also held in Infopaq  F.S.R. 20 at  that it is necessary to consider the cumulative effect of what has been reproduced”.
The passage of Lord Hoffman that Arnold J. referred to stated in obiter:
“The House of Lords decided in Ladbroke … that the question of substantiality is a matter of quality rather than quantity. The relevant passages are too well known to require citation: see Lord Reid, at p. 276, Lord Evershed, at p.283, Lord Hodson, at p.288 and Lord Pearce, at p.293. But what quality is one looking for? That question, as it seems to me, must be answered by reference to why the work is given copyright protection. In literary copyright, for example, copyright is conferred (irrespective of literary merit) upon an original literary work. It follows that the quality relevant for the purposes of substantiality is the literary originality of that which has been copied”.
Proudman J. understood the accumulative effect of these two passages as stating that if the literary originality of a work is copied by a defendant, then there is prima facie infringement. Moreover, considering that “some dissection is not merely permissible, but required”, it is not necessary to consider what the work as a whole necessarily is, only whether the dissected parts have the quality of literary originality. Each alleged instance of copying therefore required its own investigation: the headline, copying of the opening words of the article and copying of the hit-extract.
These elements will now be considered in the following two sections. First the headline, followed by a single section addressing both the opening words and the hit-extract together as the body of the article.
The question before the court was whether a headline was itself an independent literary work or whether the headline formed part of the work—i.e. the news article—together with the body of the article. Evidence before the court showed that it was common practice within the newspaper industry for headlines to have a different author to the body of the article. If the headlines were thus to be considered part of a larger work—the article—then the article would be considered a joint work between the author of the headline and the body. The investigation of whether the newspaper articles are properly considered as joint works, however, was not required. Proudman J. avoided this determination when she held that:
“In my opinion headlines are capable of being literary works, whether independently or as part of the articles to which they relate. Some of the headlines in the Daily Mail with which I have been provided are certainly independent literary works within the Infopaq test. However, I am unable to rule in the abstract, particularly as I do not know the precise process that went into creating any of them. I accept [counsel for the claimant]’s submission that it is not the completed work as published but the process of creation and the identification of the skill and labour that has gone into it which falls to be assessed
To the extent that the headlines are… joint enterprises with the articles and part and parcel of those articles, the distinction is one without a difference since Infopaq . The only circumstances in which the distinction would make a difference are where the headline is totally distinct from the article through being independently and separately produced by a different person. Only then might the headline fall into a third category in which it neither formed part of the article nor (if it were insufficiently original) would it constitute an independent literary work… I find that some of the headlines are independent literary works; those that are not form part of the articles to which they relate”.
Finding that some headlines might be considered original, independent literary works and otherwise might not be, Proudman J. short-cut the need to identify what the work was in question. Moreover, she expressly stated that thanks to the Infopaq test: “it is not the completed work as published… which falls to be assessed”, only the process of creation and its potential for originality. In concluded this, Proudman J. understood the follow section of Infopaq as saying “that no distinction is to be made between the part and the whole, provided that the part contains elements which are the expression of the intellectual creation of the author”:
“… given the requirement of a broad interpretation of the scope of the protection conferred by Article 2 of Directive 2001/29 , the possibility may not be ruled out that certain isolated sentences, or even certain parts of sentences in the text in question, may be suitable for conveying to the reader the originality of a publication such as a newspaper article, by communicating to that reader an element which is, in itself, the expression of the intellectual creation of the author of that article. Such sentences or parts of sentences are, therefore, liable to come within the scope of the protection provided for in Article 2 (a) of that directive”.
Provided that the headline itself evidenced the originality of the author, it would be protected from reproduction as an original literary work. It is, therefore, not necessary to determine any other characteristics about the headline other than is potential for originality. This means that, according to Proudman J., it is not necessary to consider whether a headline is part of the article or not. If there is sufficient originality in any piece of literature, it is a literary work for the purposes of copyright law, regardless of whether the literature is modulated or a unified piece. However, this avoidance of directly asking whether the headline is or is not a work could result in serious issues down the line. It is presumed that any newspaper has completed the requisite formalities to assign the copyright in the headline and/or in the body of an article to itself as copyright owner. But Proudman J.’s decision does require caution on the part of newspapers to ensure assignment of every module of newspaper article—the headline and the body—less these are two separate works. If this had not been completed correctly, it is possible that the claimants did not have proper title to the headlines. With these observations in mind, one can see that Proudman J. has in effect committed the short-cut that Lord Reid warned against.
The body of the article
The phrase “the part contains elements” is crucial to whether a part copied by a defendant is a prima facie infringement. Proudman J was not asking whether the part when isolated evidences enough of the author’s own intellectual creation to be considered a work by itself, merely that part of the author’s own intellectual creation can be found within the part copied. The distinction is subtle but the distinction is there nonetheless. Support of this subtle distinction comes from the judgement of Mummery L.J., which Proudman J. followed:
“… on the issue if infringement, it is wrong to take the parts of the original copyright work that have been copied in the alleged infringing work, to isolate them from the whole original copyright work and then to conclude that a ‘substantial part’ of the original copyright work has not been copied because there was no copyright in the copied parts on their own”.
From this statement of Mummery L.J., Proudman J. understood that one should not be asking if the part itself is an original literary work. The question the court needed to ask was whether the part of the work taken was a “substantial part” within the meaning of section 16(3). But again, Proudman J. does not determine what the work is as a whole:
“I have no doubt that in many (though not all) cases the text extracts, even leaving aside the headline, do contain elements which are the expression of the intellectual creation of the author of the article as a whole. … In most cases the text extracts (and in particular the headline and the opening text) are not merely isolated words or clauses which in themselves convey no meaning. They provide the tone of the article and generally have the special function of drawing the reader in to the work as a whole”. 
For Proudman J., who’s judgment was approved of by the Court of Appeal, the test of whether a substantial part has been taken does not require a determination of what the work is. The Infopaq test, according to Arnold J., required dissection of the work when assessing whether a part has been copied. As a consequence, one only needs to identify parts of a work copied by the defendant. If these parts contain elements of the claimant’s originality, there is prima facie infringement.
The consequence of Proudman J.’s judgment is that the quantity aspect of the substantial part test as understood in Ladbroke has disappeared from UK copyright law. Admittedly Lord Reid held that the substantial part test “depends much more on the quality than on the quantity” of what is copied, but quantity nonetheless did play a role. If Proudman J.’s application of the Infopaq test is understood as per this observation, it would appear that there no longer a possibility of a defence of de minimis use to copyright infringement. Any taking which of the quality of the defendant’s work, which per Lord Hoffman is to be understood as any taking of the claimant’s originality, would thus be a pima facie infringement of copyright despite its insignificance to the claimant’s work.
It could be reasoned that Proudman J.’s judgment should be confined only to cases whereby the defendant is accused of committing some infringing acts amongst committing many non-infringing acts, which requires a broad brush approach. I would support this method of distinguishing the case to ensure a possibility of a de minimis defence in future cases.
 Ladbroke (Football) Ltd v William Hill (Football) Ltd  1 WLR 273 (HL), 276-277
 Case C-5/08 Infopaq International A/S v Danske Dagblades Forening ECLI:EU:C:2009:465
 Newspaper Licensing Agency Ltd v Meltwater Holding BV  EWHC 3099 (Ch),  ECDR 10; Newspaper Licensing Agency Ltd v Meltwater Holding BV  EWCA Civ 890
 Case C‐466/12 Nils Svensson and Others v Retriever Sverige AB ECLI:EU:C:2014:76
 SAS Institute Inc v World Programming Ltd  EWHC 1829 (Ch)  ECDR 15, 
 Newspaper Licensing Agency v Marks and Spencer  UKHL 38, 
 Svensson and Others,  “[Headlines] are not usually written by the journalists who write the underlying articles but by editorial staff whose specific functions include the composition of headlines”.
 Subject to Copyright, Designs and Patents Act 1988, section 10.
 Meltwater, -
 Ibid,  (emphasis submitted)
 Infopaq, 
 Meltwater, 
 Baigent v The Random House Group  EWCA Civ 247  FSR 24, 
 Meltwater, 
 Ladbroke v William Hill, 276-277