Copyright 2023 Comparisons

Parts I and II of the Copyright, Designs and Patents Act 1988 (the “Act”) govern copyright (and related rights) in the UK. The Act can be accessed online at Copyright, Designs and Patents Act 1988 (legislation.gov.uk). CJEU case law also remains in force and biding on the English courts until there is a legislative change or the Court of Appeal or Supreme Court departs from it.

The UK is party to the Berne Convention (the UK ratified the Paris Act (1971) on 29 September 1989). It has also ratified both WIPO copyright treaties (namely, the WIPO Copyright Treaty (WCT) (1996) and the WIPO Performances and Phonograms Treaty (WPPT) (1996)). The UK is, and continues to be, an original member of the WTO. Following Brexit, the UK has confirmed its continuing acceptance and implementation of the TRIPS Agreement. There are no other significant international copyright conventions/treaties to which the UK is a party.

Foreign copyright holders need not follow any special steps to secure protection in the UK. Copyright material created by foreign nationals or residents which fall within the scope of international conventions to which the UK is a signatory (eg, those referred in 1.2 Conventions and Treaties), is automatically protected in the UK.

For copyright to subsist:

• works must comply with the criterion of originality. The standard of originality is low and depends on the author having created the work through his own skill, judgment and individual effort, and not having copied from other works;
• the work must be fixed; ie, recorded in writing or in some other material form;
• the work must meet UK qualification requirements, either through the nationality of its author or through its place of first publication; and
• the relevant term of copyright must not have expired.

Copyright subsists automatically, provided the work is fixed (see 2.1 Essential Elements of Copyright Protection).

The Act sets out a closed list of works that qualify for copyright protection: original literary, dramatic, musical or artistic works; sound recordings, films or broadcasts; and typographical arrangements of published works. However, CJEU case law, in particular in the Cofemel and Brompton Bicycles decisions, suggests that a closed list may be incompatible with the requirements of the InfoSoc Directive (Dir 2001/29). CJEU case law remains in force and binding on the English courts until there is a legislative change or the Court of Appeal or Supreme Court departs from it. The UK courts have endorsed this approach in Shazam Productions Ltd v Only Fools The Dining Experience Ltd.See 2.1 Essential Elements of Copyright Protection, which addresses the prerequisites for copyright protection, including the definition of “fixation”.

Under Section 3(1)(b) of the Act, computer programs (ie, software) are defined as “literary works” and as such, are protectable under copyright law in the UK. The scope of protection is the same as other literary works under the Act.

There are two types of intellectual property protection for databases:

• via a sui generis database right under the Copyright and Rights in Databases Regulations 1997; and
• protection of the structure of the database (ie, the selection or arrangement of the material in the database) as an original literary copyright work under Section 3(1)(d) of the Act. The requirements for copyright protection are as described in 2.1 Essential Elements of Copyright Protection.

To obtain sui generis protection there needs to have been a substantial investment (financial, material and/or human) in either obtaining, the verification or the presentation of the database content. The term of protection for the sui generis right is 15 years, starting either from the creation date or from when the database was first made publicly available.

If a database meets the requirements for both copyright and sui generis right protections, the database can benefit from both forms of protection.

Whilst there is likely no protection for industrial designs under the Act (due to its closed categories of copyright-protectable works, which have been interpreted narrowly, including in Lucasfilm Limited and others (Appellants) v Ainsworth and Another (Respondents) [2011] UKSC 39), under CJEU decisions Cofemel and Brompton Bicycles, industrial designs may benefit from copyright protection provided that they are (i) original and (ii) an expression of the author’s intellectual creation.

Subject to the responses to 3.2 Joint Authorship to 3.5 Corporate Authorship below, the author of a work is the person who creates the work and is usually the first owner of copyright in that work. The presumption is that the author will be:

• the person who creates a work for literary, dramatic, musical or artistic works;
• the producer of a sound recording;
• the producer and the principal director of a film;
• the publisher of a published edition;
• the person making a broadcast or effecting a retransmission of a broadcast;
• the publisher of a typographical arrangement; and
• the person making the arrangements necessary for the creation of the work for computer-generated works (including certain works created by artificial intelligence systems).

However, this may be amended by agreement. For example, it is possible for someone who would ordinarily be deemed to be the copyright owner to assign the benefit of future copyright, even prior to that work having been created.

The UK recognises joint authorship of copyright works. A work will be of joint authorship if it is produced by the collaboration of two or more authors in which the contribution of each author is not distinct from that of the other author or authors. If the contribution is distinct, separate copyrights will subsist in each author’s respective parts of the work.

A joint author will have individual rights that they can assign independently of the other author or authors. However, a joint owner cannot grant a licence which is binding on the other co-owners, nor can a joint owner grant an exclusive licence without the consent of the other co-authors.

Copyright protection is available to anonymous and/or pseudonymous works.

The use of these works by third parties will be non-infringing, provided that:

• it is not possible by reasonable inquiry to ascertain the identity of the author; or
• it is reasonable to assume that copyright has expired, or the author died 70 years before the beginning of the calendar year in which the use is made.

In the UK, the use of orphan works is governed by the Copyright and Rights in Performances (Licensing of Orphan Works) Regulations 2014 and the Copyright and Rights in Performances (Certain Permitted Uses of Orphan Works) Regulations 2014. Under these Regulations, those wishing to use orphan works can apply to the UK Intellectual Property Office (“UKIPO”) for a non-exclusive licence to carry out certain acts.

In the UK, there are no specific provisions governing collective works, other than relating to anthologies under the Act.

The Act permits the inclusion of short passages from published literary or dramatic works in a collection which:

• is intended for use in educational establishments (provided that the works used are themselves not intended for use in such establishments);
• is so described in its title; and
• consists mainly of material in which no copyright subsists.

Due to the wording of the Act, the author of a copyright-protectable work must be a natural person, with very limited and specific exceptions.

Works created by an employee in the course of employment will be first owned by the employer, subject to any agreement to the contrary. Where a work is created by a consultant/freelancer under a contract for services, the creator will retain copyright in the work, subject to contractual agreements to the contrary. An assignment of copyright is not effective unless it is in writing signed by or on behalf of the assignor; there are no other specific formalities – further to the usual requirements to validly conclude a contract under UK law – applicable to such agreements.

Copyright holders have the exclusive (economic) right to do or authorise the following:

• copying the work;
• issuing copies of the work to the public;
• renting or lending the work to the public;
• performing, showing or playing the work in public;
• communicating the work to the public; and
• adapting the work.

The copyright owner can restrict these acts in relation to the whole or any substantial part of the work. 

In general, the terms of protection in the UK differ according to the type of copyright work and are as follows.

• Copyright in a literary, dramatic, musical or artistic work lasts for the life of the author plus 70 years from the end of the calendar year in which the author dies.
• Copyright in computer-generated literary, dramatic, musical or artistic works lasts 50 years from the end of the calendar year in which the work was made.
• Copyright in a film expires 70 years after the end of the calendar year in which the death occurs of the last to survive of the principal director, the author of the screenplay or dialogue and the composer of any music specifically created for the film.
• Copyright in a sound recording expires 50 years from the end of the calendar year in which the recording is made; or if, during that period, the recording is published, 70 years from the end of the calendar year in which it was first published; or if, during that period, the recording is not published but is played or communicated in public, 70 years from the end of the calendar year in which it was first so made available.
• Copyright in a broadcast expires 50 years from the end of the calendar year in which the broadcast was made.
• Copyright in the typographical arrangement of a published edition expires at the end of the period of 25 years from the end of the calendar year in which the edition was first published

There are no circumstances allowing for the non-consensual termination of grants and/or recapture of rights per se. In a dispute, a defendant could argue that copyright does not subsist in the claimant’s work or show that the claimant is not the true owner of copyright.

Economic rights are alienable under UK law. Under section 90 of the Act, copyright is transmissible by assignment, by testamentary disposition or by operation of law, as personal or movable property.

The only formal requirements for an assignment of copyright are that it is in writing and signed by or on behalf of the assignor. 

Unlike an assignment, a licence of copyright need not be in writing nor comply with particular formalities and may, therefore, be oral or implied. However, in order to obtain the statutory rights of an exclusive licensee – eg, the right to sue third party infringers, an exclusive licence must be recorded in writing and signed by or on behalf of the licensor. If an exclusive licence is not in writing, the licensee will only have a contractual right to use the copyright, not to enforce it.

Economic rights are transmissible upon death. See 4.2 Alienable Rights.

In the UK, there is no age restriction to owning copyright, as this is an automatic right. However, to form a legally binding contract in the UK (ie, to either exercise or transfer rights) there must be an offer, acceptance and an intention to create a legal, binding contract. The law presumes that individuals under the age of seven do not have the requisite intention and therefore do not have the power to enter into contracts.

See 4.2 Alienable Rights for formalities relating to transfer of rights.

Before the UK left the EU, the UK was part of the EU’s regional exhaustion of IP rights regime, meaning that copyright in goods would be considered exhausted in the UK when goods were legitimately first placed on the market in the EEA, and vice versa. Upon expiry of the Brexit transition period – ie, 1 January 2021, the UK no longer takes part in a reciprocated regime, but unilaterally participates. This means that copyright (and other intellectual property rights) is considered exhausted in the UK when goods are first placed on the market in the EEA, but goods first placed on the market in the UK are not considered exhausted in the EEA.

The UK government has carried out a consultation on the potential new UK regime for the exhaustion of intellectual property rights, however a decision on this has not yet been made.

The Act provides four moral rights subsisting in favour of the authors of literary, dramatic and artistic works, and of films.

• The right to be identified as the author or film director (the right of paternity) (Section 77).
• The right to object to derogatory treatment of a work (the right of integrity) (Sections 80-83).
• The right against false attribution of a work (Section 84).
• The right to privacy in private photographs and films (Section 85).

The rights of paternity, integrity and privacy last for the same duration as copyright. The right to prevent false attribution lasts for 20 years after the death of the author. Authors can waive contractually, but cannot assign, moral rights. Like copyright, moral rights can be passed down to a beneficiary upon death, or they will pass by default to the person/entity who inherits any copyright in the work.

Sections 296–296ZF of the Act provide statutory protection against the circumvention of copyright protection. These provisions apply to technological measures that have been applied to a copyright work and are primarily designed for the purpose of enabling the circumvention of those technological measures.

Section 296ZG of the Act contains provisions providing statutory protection against the knowing and unauthorised removal or alteration of rights management information. This section creates civil (but not criminal) remedies against those who tamper with electronic rights management information or deal with copies of works from which such information has been removed, or in respect of which it has been altered.

Copyright collecting societies, or collective management organisations (CMOs), are generally formed in the UK on a voluntary basis and are regulated by the UK’s Collective Management of Copyright (EU Directive) Regulations 2016, which implement the European Directive 2014/26/ on collective management of copyright and related rights. There are numerous collecting societies in existence in the UK.

Commercial licensing disputes regarding royalties and remuneration to be paid to copyright owners by collecting societies, as well as collecting society licence terms and schemes, are heard by the Copyright Tribunal. The Copyright Tribunal is an independent tribunal which is given jurisdiction to resolve such disputes under the Act.

In the UK, a rights holder may be a member of more than one collecting society. For instance, a person who owns the copyright in the composition of a song can be a member of PRS (Performing Right Society) in respect of the copyright in the composition, and a member of PPL (Phonographic Performance Limited) in respect of the copyright in the sound recording (which contains the composition).

CMOs negotiate and grant licences on behalf of the rights holders that they represent, collect and distribute royalty income to rights holders and may, if granted an assignment or exclusive licence of copyright, bring enforcement proceedings on behalf of the rights holder.

Under the Regulations mentioned in 6.1 Collective Rights Management System, CMOs must meet various standards including:

• acting in the best interests of their rights holders;
• maintaining fair and transparent policies;
• fairly and accurately distributing to their rights holders; and
• allowing rights holders to participate in their governance.

The music industry within the UK acknowledges a synchronisation right (although this is not a statutory right under the Act, per se).

The fair dealing exception to copyright infringement is governed by Sections 29-30A of the Act, which outlines the following instances where fair dealing is a legitimate defence (to any copyright infringement):

• if the use is for the purposes of research or private study;
• if it is used for the purposes of criticism, review or quotation;
• where it is used for the purpose of reporting current events (note, this does not apply to photographs);
• if the use is for the purposes of text and data mining (ie, computational analysis); and
• if the use is for the purpose of parody, caricature or pastiche.

A statutory definition for fair dealing does not exist; it will always be a matter of fact, degree and interpretation in every fair dealing case in the UK. However, over time case law has established a list of key factors used to determine the validity of whether a particular dealing is fair, such as: whether it is reasonable and necessary to use the amount of work that was taken, whether the use of the work impacted negatively on the market for the original work, or if the creator or owner has lost potential revenue through the re-use of their work.

Under Section 28B of the Act, the copying of a work (other than a computer program) by an individual for private use does not infringe copyright in the work provided the copy is:

• a copy of the individual’s own copy of the work or a personal copy of the work made by the individual;
• is made for the individual’s private use; and
• is made for non-commercial purposes.

There is also an exception where use of a copyright work is for private study, as described in 7.1 Fair Use/Fair Dealing.

Under the Act, copyright in (i) buildings and (ii) sculptures, models for buildings and works of artistic craftsmanship, if permanently situated in a public place or in premises open to the public, is not infringed by:

• making a graphic work representing it;
• making a photograph or film of it; or
• making a broadcast or visual image of it.

Copyright is also not infringed by the issue to the public of copies, or the communication to the public, of anything whose making was, by virtue of above, not an infringement of copyright.

Under Regulations 17-19 of the Electronic Commerce (EC Directive) Regulation 2002, internet service providers (ISPs) are not liable for damages for copyright infringement, carried out by third parties that use their services, if they are doing any of the following:

• acting as a mere conduit of information;
• caching information; or
• providing hosting information at the request of the third party.

To escape liability, ISPs must not actively participate in using the information, and must act expeditiously to remove or disable infringing content once they become aware of it.

Where an ISP has actual knowledge of a person using its services to infringe copyright, the copyright holder can seek an injunction against the ISP (Section 97A of the Act).

Under Section 30A of the Act, fair dealing with a work for the purposes of caricature, parody or pastiche does not infringe copyright in the work.

Recently, the UK High Court provided a long-awaited definition for the terms “parody” and “pastiche” in the case Shazam v Only Fools The Dining Experience and Others [2022] EWHC 1379 (IPEC).The judge confirmed that to qualify as a parody the work must evoke an existing work, be noticeably different from that existing work, and constitute an expression of humour or mockery. The need for an expression of opinion was said to be particularly important for parodies of comedies, which were themselves rare, as the “mere imitation (of a work of comedy) is not enough to constitute a parody”.

The exception of pastiche was defined as a work that either imitates the style of another work or is a medley of a number of pre-existing works.

The Act contains fair dealing provisions (including in relation to criticism, review, quotation, news reporting, research and private study), which, if the facts permit, are often used to address the balance between (i) the property rights of copyright owners and (ii) the fundamental human rights of users, such as freedom of expression.

Further, the Human Rights Act 1988 and the European Convention on Human Rights are in force in the UK. EU case law – which is still applicable in the UK unless there is a legislative change or the Court of Appeal of Supreme Court departs from it – requires the court to balance the rights of copyright owners with fundamental human rights.

This balance was most recently addressed in the UK in HRH Duchess of Sussex v Associated Newspapers [2022] EWCA Civ 1810, [2022] F.S.R. 7., whereby the first instance judge and judge on appeal balanced (i) the copyright existing in a private letter sent by the Duchess of Sussex to her estranged father with (ii) the right to free speech of the father or the newspaper who published. In this instance it was decided that free speech rights did not supersede the copyright subsisting in the published extracts of the letter.

Part II of the Act governs neighbouring rights in the UK, being rights conferred on performers and persons having recording rights.

Sections 182-188 of the Act set out the following rights.

• The rights of performers (for example, actors, singers or musicians) to give or withhold consent to the exploitation of their performances; the reproduction of recordings of their performances; issuing/renting/lending copies of recordings of their performances to the public; making a recording of their performance available to the public.
• The rights of producers of sound recordings and films to give or withhold consent to the reproduction of their recordings or films.
• The rights of broadcasters or cable programme makers to authorise or prohibit the use of their programmes.

Under Section 191B of the Act, a performer’s property rights are transmissible by assignment, by testamentary disposition or by operation of law, as personal or moveable property. As with copyright, any assignment must be in writing and signed by or on behalf of the assignor.

Where a performer has assigned certain rights (reproduction, distribution, making available or property rights) in a sound recording to the producer of the sound recording, under Section 191H of the Act, if at the end of the 50-year period, the producer has failed to meet one or both of the following conditions, the performer may give a notice in writing to the producer of the performer’s intention to terminate the agreement:

• to issue to the public copies of the sound recording in sufficient quantities; and
• to make the sound recording available to the public by electronic transmission in such a way that a member of the public may access the recording from a place and at a time chosen by him or her.

If, at any time after the end of the 50-year period, the producer, having met one or both of the conditions referred to in the second bullet point above, fails to do so, the performer may give a notice in writing to the producer of the performer’s intention to terminate the agreement. If at the end of the period of 12 months beginning with the date of the notice, the producer has not met the conditions referred to in the second bullet point above, the agreement terminates and the copyright in the sound recording expires with immediate effect.

A licence granted by the owner of a performer’s property rights is binding on every successor in title to his interest in the rights, except a purchaser in good faith for valuable consideration and without notice (actual or constructive) of the licence or a person deriving title from such a purchaser.

The neighbouring rights conferred on a person having recording rights are not assignable or transmissible.

Exceptions to copyright are applicable to neighbouring rights, pursuant to Schedule 2 of the Act.

Copyright owners have the exclusive right to do various acts – “restricted acts” – in relation to their work. If a person does a restricted act without the consent of the copyright owner in relation to the whole or a substantial part of a work, they are committing an act of copyright infringement. The restricted acts set out in the Act are the rights to:       

• copy the work;
• issue copies of the work to the public;
• rent or lend the work to the public;
• perform, show, or play the work in public;
• communicate the work to the public; and
• make adaptations.

The Act also sets out various acts of secondary infringement:

• importing an infringing copy;
• possessing or dealing with an infringing copy;
• providing means for making infringing copies;
• permitting use of premises for infringing performance; and
• provision of apparatus for infringing performance.

A number of provisions of the Act permit various activities which would otherwise be infringements of copyright in literary, dramatic or musical works.

The most common exceptions relate to:

• temporary copies technically required to enable a lawful use;
• fair dealing, including the use of copyright works for the purpose of:
1. news reporting;
2. parody, caricature or pastiche; and
3. quotation;
• incidental inclusion;
• educational use;
• use in libraries;
• archives and public administration;
• works permanently situated in public places;
• the making of digital copies by various institutions;
• text and data mining;
• making copies accessible to disabled people;
• further exceptions for the purpose of research or private study;
• public interest; and
• copying for the visually impaired.

The main recourse for a copyright owner is to bring civil infringement proceedings. Pursuant to the Civil Procedure Rules, Practice Direction for Pre-Action Conduct and Protocols, where there is a relevant pre-action protocol, the parties should comply with that protocol before commencing proceedings.

In certain circumstances, criminal proceedings are available for copyright infringement (Sections 107 and 198 of the Act). A copyright owner can also bring a private prosecution directly.

Civil copyright infringement claims mustbe started in either:

• for lower-value claims: the Intellectual Property Enterprise Court (IPEC), which is presided over by IP-specialist judges; and
• for higher-value claims, the Chancery Division of the Business and Property Courts of the High Court of Justice, which has several IP-specialist judges.

Criminal copyright infringement proceedings are brought in a regional Magistrates’ Court before a magistrate (for less severe offences) or the Crown Court before a judge (for more serious offences). Neither magistrates nor judges are likely to be experienced in intellectual property matters.

Claimants

Other than the copyright owner, an exclusive licensee can also bring a claim for infringement after the exclusive licence is granted. This statutory position can be modified by contract.

A non-exclusive licensee can also bring a claim for infringement, although only in limited circumstances; specifically, if the infringement is directly connected to an act which the licensee had been licensed to carry out under the licence, and the licence is in writing, signed by the copyright owner, and expressly grants the non-exclusive licensee a right of action.

Defendants

The other parties will be the alleged infringers.

Only the defendant to infringement proceedings will be sanctioned/ordered to remedy the claimant.

Interim relief – including interim injunctions, search orders (to preserve evidence or property) and freezing orders (to prevent disposal of evidence of property) – is available for copyright infringement.

Interim injunctions:

• are equitable remedies and so are a matter of discretion of the court;
• must be sought by the copyright owner quickly after becoming aware of the infringement; and
• can usually be obtained quickly, within a number of days, or sometimes (exceptionally) hours.

“Site-blocking injunctions” (which are orders against internet service providers to prevent access to websites held to infringe copyright) are also available.

The role and duty of an expert is to assist the court (and not the party from whom they have received instructions) regarding specialist and/or technical elements to a copyright dispute.

Experts provide their evidence in a written report, which serves as their evidence in chief, and may also be required to attend the trial to field questions/be cross-examined on their report.

In certain circumstances, HMRC (and Border Force, the law enforcement command within the Home Office responsible for carrying out the frontier interventions that implement this policy) are empowered to detain goods that may infringe intellectual property rights such as copyright. The UK regime is governed by Section 111 of Act 1988.

Trading Standards officers in the UK are also under a statutory duty to enforce copyright and have the powers, among others, to make test purchases of infringing goods, to enter premises and to inspect and seize goods and documents which infringe.

The City of London Police and the UKIPO have also set up the Police Intellectual Property Crime Unit (PIPCU) to tackle serious and organised intellectual property crime (counterfeit and piracy) affecting physical and digital goods (with the exception of pharmaceutical goods). PIPCU’s focus is on offences committed online.

The civil remedies available to a copyright owner for infringement are:

• preliminary relief (interim injunctions, search orders, freezing orders);
• permanent injunctions;
• monetary remedies (damages or an account of the infringer’s profits);
• forfeiture, destruction or delivery up of infringing goods;
• declaratory judgment that copyright subsists in a specific work, or that copyright has been infringed by a specific act; and
• publicity orders.

It is possible to bring criminal proceedings for copyright infringement in the UK, but this is unusual and UK courts have indicated that they are disapproving of prosecutions involving difficult legal questions involving copyright law.

Decisions of the High Court can be appealed to the Court of Appeal, and decisions of the Court of Appeal can be appealed to the Supreme Court (as well as High Court decisions of public or constitutional importance).

Interim orders of the IPEC can be appealed to the High Court, and final orders of the IPEC can be appealed to the Court of Appeal.

The general position is that the winning party’s costs are recoverable from the losing party. The IPEC caps recoverable costs and damages awards at GBP60,000, whereas there is no cap on costs in the High Court.

The court has wide costs management powers and is involved in costs management throughout proceedings to promote effective case management at a proportionate cost. Most proceedings will be subject to a costs management order which will often limit the winning party’s recoverable costs, although the court has discretion in this respect. In practice, the winning party can expect to recover 60-70% of its costs.

Alternative dispute resolution – including arbitration, mediation and expert determination – is available for copyright disputes and, as is generally the case for UK disputes, is encouraged. Whilst the UK’s Civil Procedure Rules require parties to a dispute to consider alternative dispute resolution, it is not compulsory.

Alternative dispute resolution with respect to copyright disputes has historically been prevalent in cases relating to software licences and artistic production.

Arbitration, mediation and expert determination are usually conducted on a without prejudice basis, using an independent and qualified professional.

The UKIPO offers a mediation service covering trade mark, design and patent disputes, as well as copyright disputes.