Fair Dealing Provisions in UK Copyright Law

Question 3

(a) “The defences to the infringement of copyright are too limited.”

Fair dealing provisions in the UK copyright law can be said to be restrictive because these are applicable to specific and for finite purposes. It can be said that the defences to the infringement of copyright are too limited, but that this is justified because the copyright law seeks to encourage the authors to create and distribute new works by granting broad exclusive rights while also balancing these rights with the limited use of copyright material by others without requiring the permission of the copyright holder. It is therefore argued that by allowing others to use copyright material for fair dealing, the copyright law creates a balance between the rights of the copyright holders and others who may use the material for limited purposes. Under the Copyright, Designs and Patents Act 1988, Sections 29 and 30 provide what are called as fair dealing defences for copyright infringement. What is fair is not defined anywhere in the law and there is an objective test for the same. The factors that can be considered by the court would include amount and quality of part taken from the copyright work, motive of dealing or commercial advantage, and effects on market, to name a few. If you are seeking clarification with understanding these provisions, then you should consider reaching out to experts in UK dissertation help for more guidance.

The defences are limited in the sense that these are only allowed for fair dealing with specific purposes permitted for which defence is allowed. With respect to such limited purposes, the defendant may be allowed to use the copyright work. Such fair dealing defences include research and private study and news reporting and criticism or review of the copyright work. Caselaw indicates that with reference to such limited purposes however, the courts usually apply a broad and liberal interpretation. Taking the defence of criticism and review under Section 30(1), courts have allowed defendants to use copyright work so long as it is for criticism and review, given acknowledgement to the original and is available to the public. Courts have interpreted this liberally. For instance, in Hubbard v Vosper [1972], in which substantial parts were copied from the copyright work, the court interpreted the defence liberally on the basis that the criticism was of the philosophy or doctrine in the copyright work and not even of the work in which copyright was infringed. Then again, in Pro Sieben v Carlton [1999], the court held that where use was for criticism and review and not for taking advantage of the right holder’s market, the court would interpret “criticism or review” liberally. Similarly, fair dealing is considered where work is used for research and private study under Section 29(1C). Similar to criticism and review, this defence also allows use if the purpose is non commercial and for research and it gives acknowledgement to the author. It is important to note that this defence is not available to someone who is copying substantial extracts from other works for a commercial purpose as held in Sillitoe v McGraw-Hill [1983].

In all these cases, what can be seen is that courts interpret the defences widely and liberally to allow fair dealing with the copyright material so that while the number of defences remain limited, these in themselves are interpreted widely to allow for a balance between the rights of the copyright holders and the others. It may be noted that the 2005 Gowers Review of Intellectual Property did note that the fair dealing provisions have low flexibility, it did not propose to adopt a wider doctrine as is applied in the United States. One problem which may however come up with regard to restrictive fair dealing is that it may not be able to respond to future technological changes and in that respect it is possible that it may need reconsideration.

Question 4

Compare and contrast the protection afforded by the Unregistered Design right under the Copyright, Design and Patents Act 1988 with the protection provided to designs registered under the Registered Designs Act 1949.

Industrial designs are protected under two different legislations on the basis of registration status of the design; unregistered designs are regulated by the Copyrights, Designs, and Patents Act 1988 while registered designs are regulated by the Registered Designs Act 1949. Although protection to the industrial designs started to appear in the law in the 19th century, legislation for registered industrial designs was first enacted in 1949 and protection for unregistered industrial designs came much later in 1988 under the Copyright, Design and Patents Act 1988. By the 1980s, the courts had also come to speak about the need to provide greater protection to industrial designs for protecting free competition in the market as noted in British Leyland v Armstrong Patents (1986). To that end, unregistered designs also came to be protected.

The first point of significance is that registered designs came to be protected first in statute. The second point of significance is that the unregistered design right protects shape and configuration and not surface decoration and ornamentation. On the other hand, registered designs are protected with respect to shape, configuration, ornamentation, and texture. Third, as compared to unregistered designs, which must be original and not commonplace, registered designs must not be identical to another (Sunstar v Dentaid). The fifth point of significance is that registered design is a monopoly right with exclusive user rights of the owner, whereas the unregistered design is a right to prevent the copying of the design for commercial purpose by third parties.

Section 213 of the Copyright, Design and Patents Act 1988 provides a definition of unregistered design as a right that subsists in an original design and which arises automatically, and is infringed by direct or indirect copying. The protection runs for 15 years from when the design was first made, or for however many years will make it up to 15 after the design was first made available for sale (Section 216). For unregistered designs protection does not arise if it is not original and it is commonplace (Section 213(4)). In Farmers Build v Carrier Bulk Materials Handling [2000], the court held that to be protected, the design must originate by the designer and it must in some respects be different from other designs so as to not be commonplace. Furthermore, full legal monopoly on the design is not created but the owner is protected from infringement by direct or indirect copying. The unregistered design right subsists only if it has been recorded either in a design document or through incorporation into an article or product (Section 213(6)). Protection however extends to any aspect of the design of part of it and not just any aspect of the design of the whole article as per Fulton v Totes Isotoner [2004]. There are exclusions from protection as an unregistered design under Section 213(3) which are method of principle of construction, features of a shape or configuration of an article, and surface decoration. In Ladnor & Hawa International v Azure Designs [2006], it was held that the exclusion of methods and principles of construction is to be interpreted narrowly. Furthermore, in Dyson v Qualtex [2006], it was held that must fit and must match exclusion does not apply and pattern spares manufacturers must design their own spares.

For registered designs, Section 7 of the Registered Designs Act 1949 allows protection to the registered design from being infringed or used without consent where the owner has exclusive right to perform which include making, offering, putting on the market, or importing and exporting. Infringement does not happen where defences are applied under Section 7A(2) which includes acts done privately and non-commercially, or for experimental purposes; or for reproduction for teaching purposes, to name a few. The law requires that registered design have individual character which is assessed on the basis of impression made on the informed user (Woodhouse UK Plc v Architectural Lighting System (2006)). Unlike unregistered designs, for registered designs there are only two exclusions, which are features dictated only by their technical functions (Lander and Hawa International Ltd v Azure Designs Ltd (2006)), and must fit features. Like unregistered designs, these exclusions are also interpreted narrowly. Unlike unregistered design, registered design is only protected for a period between 5 years to 25 years. In terms of remedies, both registered and unregistered designs have the remedies of damages, injunction, and delivery up or destruction of infringing articles.

Question 6

Critically discuss the three classes of information defined by Goulding J in Faccenda Chicken Ltd v Fowler (1985) and how they relate to an employee’s duty of confidence.

In Faccenda Chicken Ltd v Fowler (1985), Goulding J discussed three classes of information that an employee may have at the time of leaving their employment and also explained the duties of the employee with respect to each class of information where such duties were with respect to the former employer. The first kind of information is that which is trivial, or accessible from public sources. With respect to this kind of information, the employee is under no prohibition for use of information by the employee, either during or after employment.

The second is the information that is confidential. Confidentiality arises if the employee was expressly told that the information is confidential, or because the character of the information is such that it is understood to be confidential and where such information once received by the employee necessarily remains with the employee and becomes part of his own skill and knowledge applied in the course of the business of the employer. With regard to the second kind of information, the employee is under a duty not to use or disclose such information without infidelity or breach of contract as long as he is in the employment of the employer. However, once the employee is no longer in the employment of the employer, then he is legally able to use the full skill and knowledge that he has for his own benefit in competition with his former employer.

Thus, with respect to the confidential information, the scheme of duty of confidence is based on the employment status of the employee with the duty not to use or disclose being applicable if the employee is in employment but not after he leaves employment. There is however an exception to this rule, which is that the employer may be able to prevent information of confidential nature to be used or disclosed by an express stipulation restraining the employee from competing with him after the termination of the employment. It must be noted however that such restrictive stipulations are only enforceable if these are made within reasonable limits of space and time. It is also important that the employer has done enough to establish that the information is confidential before asking for an injunction against a former employee who set up a business, using information about the manufacturing procedures and customers obtained whilst employed by them (Poeton Industries Ltd v Michael Ikem Horton (2000). Furthermore, a non-compete clause for an unreasonable period of time is generally unreasonable (Tillman v Egon Zehnder Ltd (2019).

The third class of information is related to specific trade secrets. These are secrets related to employer’s work that may not be used by the employee or anyone else even after the employee is no longer in the employment of the employer. There is no definition of trade secrets and there are a number of cases where the courts have assessed some information to be a trade secret: for example, aerodynamic designs in Formula 1 cars (Force India v Aerolab) and technical information for mobile phone technology (HTC Corp v Gemalto) are some examples of trade secrets which employees have not been allowed to use after leaving the employment of their employer, even if the information and knowledge is absorbed by them and becomes a part of their skill and knowledge.

The three classes of information are not all protected equally in terms of duty of confidentiality, with the trivial information getting no protection as it is publicly available and trade secrets getting protection even after the employment is over.

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