Copyright Protection of Unpublished Works in the Common Law World 9781509916962, 9781509916993, 9781509916979

Table of contents :
Acknowledgements
Contents
Table of Cases
Table of Statutes
1. Introduction
The Meaning of 'Publication'
A Working Definition of Publication
Argument and Structure
2. A History of the Jurisdictional Bases for Restraining Unauthorised First Publication
Introduction
The Rights of Authors of Unpublished Manuscripts Prior to the Enactment of the Statute of Anne
The Evolution of 'Property' as a Ground for Restraining Unauthorised First Publication
'Breach of Confidence' and 'Breach of Implied Contract' as Additional Jurisdictional Grounds for Restraining Unauthorised First Publication of Manuscripts
Common Law Rights in Unpublished Manuscripts
The Emergence of Breach of Confidence as an Alternative Basis for Preventing Unauthorised First Publication
The Emergence of Implied Contract as a Further Basis for Protecting Unpublished Works
Prince Albert v Strange and the recognition of the Trio of Jurisdictional Bases for Restraining Unauthorised First Publication
Further Developments
Conclusion
3. The Abrogation of Common Law Protection of Unpublished Works and its Consequences
Introduction
Domestic Pressures for Reform
Further Issues
International Pressures for Reform
Abrogation and its Consequences
4. The Significance of 'Publication' in Contemporary Copyright Law
Introduction
Qualification for Copyright Protection
The Extent of Copyright Protection
The Term of Copyright Protection
The Availability and Strength of Copyright Exceptions
The Remedies for Copyright Infringement
Conclusion
5. Justifications for Protection of Unpublished Works
Introduction
Incentives
Labour
Desert
Personality
Expressive Autonomy
Privacy
Conclusion
6. Persistent Problems
Introduction
Copyright Exceptions
Fair Use
Purposive Interpretation
The Term of Copyright in Old Unpublished Works
7. Taking Stock
Bibliography
Index

Citation preview

COPYRIGHT PROTECTION OF UNPUBLISHED WORKS IN THE COMMON LAW WORLD This book discusses copyright protection of unpublished works including letters, diaries, manuscripts, photographs, memoranda, sketches, private journals, government records and drafts intended for future publication. Under contemporary British copyright law, unpublished works are protected by the Copyright, Designs and Patents Act 1988. In addition, the Berne Convention anticipates that unpublished works shall receive protection. While unpublished works are, in general, assimilated to the treatment of pub­lished ones, notable differences in the strength of protection afforded to published and unpublished works remain. It is the case that contemporary British copyright law confers stronger and longer protection on unpublished works. For instance, the unpublished status of a work assumes pivotal significance in the framework for determining: qualification for copyright protection, the extent of copyright protection, exceptions to copyright infringement and the remedies for copyright infringement. The principal aim of the book is to consider whether copyright in unpublished works is justi­fied; a task which is prosecuted from historical, normative and legal perspectives. Although the book’s primary focus is the treatment of unpub­lished works in Britain, it also relies extensively on materials from other Common Law jurisdictions. The book contributes to the understanding of why cumulative protection of unpublished works emerged, and how exceptions to rights in un­published works evolved. Moreover, the analysis deployed in the book aids the task of applying the law to ‘new circumstances’.

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Copyright Protection of Unpublished Works in the Common Law World Patrick Masiyakurima

HART PUBLISHING Bloomsbury Publishing Plc Kemp House, Chawley Park, Cumnor Hill, Oxford, OX2 9PH, UK 1385 Broadway, New York, NY 10018, USA HART PUBLISHING, the Hart/Stag logo, BLOOMSBURY and the Diana logo are trademarks of Bloomsbury Publishing Plc First published in Great Britain 2020 Copyright © Patrick Masiyakurima, 2020 Patrick Masiyakurima has asserted his right under the Copyright, Designs and Patents Act 1988 to be identified as Author of this work. All rights reserved. No part of this publication may be reproduced or transmitted in any form or by any means, electronic or mechanical, including photocopying, recording, or any information storage or retrieval system, without prior permission in writing from the publishers. While every care has been taken to ensure the accuracy of this work, no responsibility for loss or damage occasioned to any person acting or refraining from action as a result of any statement in it can be accepted by the authors, editors or publishers. All UK Government legislation and other public sector information used in the work is Crown Copyright ©. All House of Lords and House of Commons information used in the work is Parliamentary Copyright ©. This information is reused under the terms of the Open Government Licence v3.0 (http://www.nationalarchives.gov.uk/doc/ open-government-licence/version/3) except where otherwise stated. All Eur-lex material used in the work is © European Union, http://eur-lex.europa.eu/, 1998–2020. A catalogue record for this book is available from the British Library. Library of Congress Cataloging-in-Publication data Names: Masiyakurima, Patrick, author. Title: Copyright protection of unpublished works in the common law world / Patrick Masiyakurima. Description: Oxford ; New York : Hart, 2020.  |  Based on author’s thesis (doctoral : University of Cambridge, 2013) issued under title: Copyright protection of unpublished and undisclosed works : an historical, legal and normative analysis.  |  Includes bibliographical references and index. Identifiers: LCCN 2019048241 (print)  |  LCCN 2019048242 (ebook)  |  ISBN 9781509916962 (hardback)  |  ISBN 9781509916986 (Epub) Subjects: LCSH: Copyright—English-speaking countries.  |  Unpublished works (Copyright law) Classification: LCC K1422 .M37 2020 (print)  |  LCC K1422 (ebook)  |  DDC 346/.15210482—dc23 LC record available at https://lccn.loc.gov/2019048241 LC ebook record available at https://lccn.loc.gov/2019048242 ISBN: HB: 978-1-50991-696-2 ePDF: 978-1-50991-697-9 ePub: 978-1-50991-698-6 Typeset by Compuscript Ltd, Shannon To find out more about our authors and books visit www.hartpublishing.co.uk. Here you will find extracts, author information, details of forthcoming events and the option to sign up for our newsletters.

ACKNOWLEDGEMENTS This book started its life as a PhD thesis at the University of Cambridge. I am extremely grateful to my joint supervisors, Lionel Bently and the late Catherine Seville, for their excellent supervision, encouragement and unparalleled support. I am equally grateful to Jennifer Davis and Alison Firth who, as examiners of my PhD, suggested further lines of inquiry and advised on publication. My research was very generously funded by the Board of Graduate Studies, University of Cambridge through a Domestic Research Scholarship. Further invaluable comments on the structure of the book and the goals it seeks to achieve were received from two anonymous reviewers. I owe them a debt of gratitude. Roberta Bassi, Rosamund Jubber and Linda Staniford of Hart Publishing deserve special thanks for their exemplary efficiency and encouragement. Of course, any errors or infelicities of style in the book are solely mine. I also thank Gertrude, Ngoni and Danai for their patience and unwavering support.

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CONTENTS Acknowledgements��������������������������������������������������������������������������������������������������������v Table of Cases�������������������������������������������������������������������������������������������������������������� ix Table of Statutes������������������������������������������������������������������������������������������������������� xvii 1. Introduction������������������������������������������������������������������������������������������������������������1 The Meaning of ‘Publication’����������������������������������������������������������������������������������9 A Working Definition of Publication������������������������������������������������������������������15 Argument and Structure���������������������������������������������������������������������������������������15 2. A History of the Jurisdictional Bases for Restraining Unauthorised First Publication���������������������������������������������������������������������������������������������������20 Introduction�����������������������������������������������������������������������������������������������������������20 The Rights of Authors of Unpublished Manuscripts Prior to the Enactment of the Statute of Anne��������������������������������������������������������������22 The Evolution of ‘Property’ as a Ground for Restraining Unauthorised First Publication�������������������������������������������������������������������������������������������25 ‘Breach of Confidence’ and ‘Breach of Implied Contract’ as Additional Jurisdictional Grounds for Restraining Unauthorised First Publication of Manuscripts�������������������������������������������������������������������������40 Common Law Rights in Unpublished Manuscripts������������������������������������������41 The Emergence of Breach of Confidence as an Alternative Basis for Preventing Unauthorised First Publication����������������������������������������46 The Emergence of Implied Contract as a Further Basis for Protecting Unpublished Works�������������������������������������������������������������������������������������49 Prince Albert v Strange and the Recognition of the Trio of Jurisdictional Bases for Restraining Unauthorised First Publication����������������������������51 Further Developments������������������������������������������������������������������������������������������54 Conclusion��������������������������������������������������������������������������������������������������������������60 3. The Abrogation of Common Law Protection of Unpublished Works and its Consequences�������������������������������������������������������������������������������������������62 Introduction�����������������������������������������������������������������������������������������������������������62 Domestic Pressures for Reform���������������������������������������������������������������������������64 Further Issues���������������������������������������������������������������������������������������������������������71 International Pressures for Reform���������������������������������������������������������������������76 Abrogation and its Consequences�����������������������������������������������������������������������80

viii  Contents 4. The Significance of ‘Publication’ in Contemporary Copyright Law����������84 Introduction�����������������������������������������������������������������������������������������������������������84 Qualification for Copyright Protection���������������������������������������������������������������85 The Extent of Copyright Protection��������������������������������������������������������������������90 The Term of Copyright Protection����������������������������������������������������������������������95 The Availability and Strength of Copyright Exceptions����������������������������������103 The Remedies for Copyright Infringement������������������������������������������������������117 Conclusion������������������������������������������������������������������������������������������������������������120 5. Justifications for Protection of Unpublished Works���������������������������������� 121 Introduction���������������������������������������������������������������������������������������������������������121 Incentives��������������������������������������������������������������������������������������������������������������123 Labour�������������������������������������������������������������������������������������������������������������������130 Desert��������������������������������������������������������������������������������������������������������������������134 Personality������������������������������������������������������������������������������������������������������������139 Expressive Autonomy������������������������������������������������������������������������������������������145 Privacy�������������������������������������������������������������������������������������������������������������������151 Conclusion������������������������������������������������������������������������������������������������������������157 6. Persistent Problems������������������������������������������������������������������������������������������� 159 Introduction���������������������������������������������������������������������������������������������������������159 Copyright Exceptions������������������������������������������������������������������������������������������161 Fair Use������������������������������������������������������������������������������������������������������������������171 Purposive Interpretation�������������������������������������������������������������������������������������178 The Term of Copyright in Old Unpublished Works����������������������������������������182 7. Taking Stock������������������������������������������������������������������������������������������������������� 190 Bibliography������������������������������������������������������������������������������������������������������������������197 Index��������������������������������������������������������������������������������������������������������������������������205

TABLE OF CASES A v B [2000] EMLR 1007�������������������������������������������������������� 1, 15, 126, 132, 138, 151 ABC Primetime 24 JV 67 F Supp 2d 558 (MDNC, 1999)�������������������������������������������6 Abernethy v Hutchinson, 1 H & Tw 28��������������������22, 45, 48–51, 58, 66, 69, 92, 125 Affaire Lacordaire, T. Corr. Lyon, 10 juin 1845, D.P. 1845. 2. p. 128, C.A. Lyon, 17 juillet 1845, D.P. 1845. 2. p. 129��������������������������������������155 American Cyanamid Co v Ethicon Ltd (1975) AC 396 (HL)����������������������������������118 American Vitagraph Inc v Levy 659 F.2d 1023�����������������������������������������������������������16 Anon v Eaton cited in Perceval v Phipps (1813) 2 V & B 19�������������������������������������42 Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA)��������������������������1, 4–7, 19, 93, 104, 108, 110–11, 116, 120, 124, 147, 159, 173, 175, 179 Associated Newspapers Group plc v News Group Newspapers Ltd [1986] RPC 515������������������������������������������������������������������������������������108, 174, 177 Association of American Medical Colleges v Cuomo 928 F.2d 519 (2d Cir 1991)����������������������������������������������������������������������������������������������������������114 Attorney General v Blake [2000] UKHL 45, [2001] 1 AC 268�������������������������� 1, 110 Attorney General v Guardian Newspapers Ltd (No 2) [1990] 1 AC 109���������������������������������������������������������������������������������������������������� 1, 110, 180 Authors Guild v Google 804 F. 3d 202 (2015)������������������������������������������������������ 3, 100 Baigent and Anor v The Random House Group Ltd [2007] FSR 24 (CA)���������������������������������������������������������������������������������� 93, 95, 147 Baywatch Productions v The Home Video Channel [1997] FSR 22������������������� 6, 118 BBC Petitioners (2012) SLT 476���������������������������������������������������������1, 5, 19, 108, 151, 159, 174, 179 BGH 19 December 1995 BGHZ 131, Caroline von Monaco����������������������������������152 Bell v Combined Registry Company 397 F. Supp 1241 (1975)��������������������������� 16, 63 Beloff v Pressdram [1973] 1 All ER 241�����������������������������106, 109, 174, 178–79, 181 Bodley Head v Flegon [1972] 1 WLR 680�������������������������������������������������������������������10 Bond v Blum 317 F.3d 385 (4th Cir. 2003)����������������������������������������������������������������114 Bowden Brothers v Amalgamated Pictorials Ltd [1911] Ch D 386��������������������������60 British Northrop Ltd v Texteam Blackburn Ltd [1974] RPC 57������������������������� 15, 88 British Oxygen Co Ltd v Liquid Air Ltd [1925] Ch 383������������������� 104–05, 127, 178 Brown v Tabb 714 F. 2d 1088 (11th Cir, 1983)���������������������������������������� 10, 16, 62, 83 Burge v Swarbrick [2007] HCA 17�����������������������������������������������������������������������������160 Burke v National Broadcasting Co., Inc 598 F.2d 688������������������������������������������������12 Cadell & Davies v Stewart (1804) in 19 Mor App 113��������������������������������������� 41, 42

x  Table of Cases Caird v Sime (1887) LR 12 AC 326 (HL)�������������������������������������������������36, 66, 68–69 Camoin v Carco DP 1928.2.89, Gaz. Pal. 1931.1.678���������������������� 133, 142–43, 155 Campbell v Acuff-Rose Music, Inc., 510 U.S. 569 (1994)������������������������115, 145, 173 Campbell v Mirror Group Newspapers Ltd [2004] 2 AC 457������������������� 57, 127, 164 Capitol Records Inc v Naxos of America 830 NE 2d 250 (NY 2005)���������������� 2–3, 6, 8, 74, 83, 86, 191 Case C-5/08, Infopaq Int’l A/S v Danske Dagblades Forening [19 July 2009] ECR I-6569�������������������������������������������������������������������������� 160, 166 Case C-201/13 Johan Deckmyn and Another v Helena Vandersteen and Others��������������������������������������������������������������������������������������������������������������145 CCH Canadian Ltd v Law Society of Upper Canada [2004] 1 SCR 339���������� 4, 171 Christie v Raddock 169 F Supp 48 (1959)�������������������������������������������������������������������12 Clark v Associated Newspapers Ltd [1998] 1 All ER 959����������������������������������������146 Coco v A.N. Clark (Engineers) Limited [1969] RPC 41�������������������������������� 10, 22, 57 Coleman v Wathen (1793) 5 Term Rep 245��������������������������������������������������������� 35, 65 Commonwealth of Australia v John Fairfax & Sons Ltd (1980) 147 CLR 39�������������������������������������������������������������������1, 4, 7, 94, 109–10, 120, 180 Corbello v DeVito No. 2:08-cv-00867-RCJ-PAL (D. Nev. June 14, 2017)�������������114 Cream Holdings Ltd v Banerjee [2004] 3 WLR 918 (HL)���������������������������������������119 Creation Records v News Group Newspapers [1997] EMLR 444����������������������������160 De Silva Construction Corp v Herrald et al 213 F. Supp 184 (1962) ���������� 16, 63, 75 Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416������������������������������������������������������������������������������������������������ 50, 91, 95 Distillers Co (Biochemicals) Ltd v Times Newspapers Ltd [1975] QB 613������������������������������������������������������������������������������������������������� 93, 106 Donaldson v Beckett [1774] 17 Cobbett’s Parl. Hist. 953��������������������������1–2, 25–26, 36–40, 44, 51, 95 Donner [2012] ECR I-0000������������������������������������������������������������������������������������������90 Duke of Argyll v Duchess of Argyll and Anor [1962] SLT 333��������������������� 1, 15, 126 Earl of Granard v Dunkin (1809) 1 Ball & Beatty 207����������������������������������������������42 Earl of Lytton v Devey (1884) 54 LJ Ch 293����������������������������� 11, 21–22, 56–57, 152 Éditions Plon v France (2006) 42 EHRR 36 (ECtHR)���������������������������������������������156 Elanco v Mandops [1979] FSR 46��������������������������������������������������������������������������������94 Eldred v Ashcroft 537 US 186 (2003)�������������������������������������������������������������������� 4, 191 EMI Records Ltd and others v British Sky Broadcasting Ltd and others [2013] EWHC 379 (Ch)�����������������������������������������������������������������������������������������90 Estate of Hemingway v Random House 23 N.Y. 2d 341, 348, 244 N.E. 2d 250 (1968)���������������������������������������������������������������������������������������������������������145 Estate of Martin Luther King, Jr., Inc v. CBS, Inc. 194 F.3d 1211 (11th Cir. 1999)���������������������������������������������������������������������������12, 16, 75, 83, 124, 135, 148, 161 Evans v Attorney General [2015] 2 WLR 813���������������������������������������������������������������7 Exchange Telegraph Co Ltd v Gregory & Co [1896] 1 QB 147 (CA)���������� 58–59, 92

Table of Cases  xi Express Newspapers plc v News (UK) plc [1990] 1 WLR 1320�����������������������������������5 Fashion Originators Guild of America Inc v Federal Trade Commission 114 F. Supp 2d 80 (1940)��������������������������������������������������������������������������������� 16, 63 Feist Publications, Inc., v Rural Telephone Service Co., 499 U.S. 340 (1991)�����������94 Francis Day & Hunter Ltd v Bron & Anor [1963] Ch 587 (CA)������������������������������91 Francis Day & Hunter v Feldman & Co [1914] 2 Ch 728 (CA)������������������������ 10–11 Faulkner Literary Rights LLC v Sony Pictures Inc 953 F.Supp 2d 701 (N.D Miss 2013)������������������������������������������������������������������������������������������������������37 Folsom v Marsh 9 Fed. Cas. 342 (C.C.D. Mass. 1841)���������������������������������������� 11, 45 Football Dataco Ltd v Stan James Plc & Sportradar GmbH & another [2012] ECR I-0000 (ECJ)���������������������������������������������������������������������������������������89 Forrester v Waller (1741) 4 Burr 2331������������������������������������������������������26–28, 30, 37 Fraser-Woodward Ltd v BBC [2005] FSR 36������������������������������������������������������������115 Gardenia Flowers Inc v Joseph Markovits Inc 290 F. Supp 776 (1968)�������� 11, 16, 63 Gee v Pritchard (1818) 2 Swanst 402������������������������������������������ 11, 21, 31, 45–47, 54, 56–57, 125, 137 George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64����������������������������������������������������������������������������������������������������������160 Gilbert v Star Newspaper Co Ltd (1894) 11 TLR 4��������������������������������������� 21, 58, 92 Glyn v Weston Feature Film Co [1916] 1 Ch 261�������������������������������������������������������46 Grandma Moses Properties Inc v This Week Magazine 117 F. Supp 348����� 10–11, 16 Gray v Eskimo Pie Corporation 244 F. Supp 785 (1965)������������������������������������ 16, 63 Graves v Corrie [1903] AC 496 (PC) ��������������������������������������������������������������������������77 Harper & Row v Nation Enterprises, 471 US 539 (1985)�������������������������� 4–5, 19, 85, 91, 104, 111–12, 120, 124, 127, 145, 147, 155, 167, 173, 176, 178, 181 Hearst Corporation v Shopping Center Network Inc 307 F. Supp 551 (1969)�������������������������������������������������������������������������������� 11, 12, 16, 75 Hill & Range Songs Inc v London Records Inc 142 NYS 2D 311 (1955)��������������������������������������������������������������������������������������������� 11, 16, 82 Holmes v Hurst 174 US 82 ������������������������������������������������������������������������������������ 16, 63 Hopkinson v Burghley (1867) LR 2 Ch App 447������������������������������������������������� 21, 56 HRH The Prince of Wales v Associated Newspapers (No.3) [2007] 3 WLR 222 (CA).���������������������������������������������������������������������������1, 4–7, 11, 13, 91, 147–48, 175–76, 179 Hubbard v Vosper [1972] 2 QB 84 (CA)������������������������������������ 12, 105, 110–11, 120, 127, 141, 145, 148, 152, 173, 175–76, 178–79 Hyde Park Residence Ltd v Yelland [2001] Ch 143 (CA)������������� 1, 6–7, 91, 110–11, 164, 175–76, 179, 181 Hyde Park Residence Ltd v Yelland [1999] RPC 655��������������������������������������� 110, 176 Imutran v Uncaged Campaigns Ltd [2001] 2 All ER 385��������������������������������������5, 19

xii  Table of Cases In Re Dickens, Dickens v Hawksley [1934] 1 Ch 267 (CA)���������������������������������������55 J & S Davis (Holdings) v Wright Health Group [1988] RPC 403���������������������������160 Jameel and others v Wall Street Journal Europe [2007] 1 AC 538 (HL)����������������144 Jefferys v Boosey (1854) 4 HLC 815 (HL)������������������������������������������������������������ 54–55 Jenkins v Dell Publishing Co 132 F Supp 556 (WD Pa. 1955)�����������������������������������10 Jewelers’ Mercantile Agency v Jewelers’ Weekly Publishing Co 155 NY 241 (1898)��������������������������������������������������������������������������������������������������10 John G. Danielson Inc v Winchester-Conant Properties Inc 322 F.3d 26 (1st Cir. 2003) 35��������������������������������������������������������������������������������� 10, 75 KG, 27.11.2007 – 5 U 63/07– Günter Grass-Briefe������������������������� 124, 127, 140–41, 143, 146, 156 Kenrick v Danube Collieries and Minerals Co Ltd (1891) 39 WR 473������� 57–58, 92 Komesaroff v Mickle (1988) RPC 204������������������������������������������������������������������������160 Kramer v Newman 749 F. Supp 542 (SDNY 1990)����������������������������������������� 8, 16, 74 Labouchere v Hess (1898) 77 Law Times 559�������������������������������������21, 58–59, 61, 92 Ladbroke (Football) Ltd v William Hill Football Ltd [1964] 1 WLR 273 (HL)������������������������������������������������������������������������������������������������������91 Lady Anne Tennant v Associated Newspaper Group Ltd [1979] FSR 298�������������119 Lee v Lee’s Air Farming Ltd [1960] 3 All ER 420 (PC)��������������������������������������������150 Legnos v Jeppson 171 USPQ 426 (NY Sup Ct 1971)��������������������������������������������������10 Letter Edged in Black Press v Public Building Commission of Chicago 320 F. Supp. 1303 (1970)���������������������������������������������������������������������������� 10, 16, 75 Lion Laboratories v Evans [1984] 2 All ER 417 (CA).���������������������������109, 119, 127, 174, 178–79 Lish v Harper’s Magazine 807 F. Supp. 1090 (S.D.N.Y. 1992)���������������������������������114 L’Oréal SA v eBay International AG [2011] ECR I-0000�������������������������������������������90 Lord and Lady Perceval v Phipps (1813) 2 V & B 19����������������������������31, 42–45, 125 Lucasfilm v Ainsworth & Anor [2011] 3 WLR 487��������������������������������������������������160 Macaura v Northern Assurance Co [1925] AC 619 (HL)����������������������������������������150 Macklin v Richardson (1770) Amb 694���������������������������������������������12, 15, 26, 34–35, 56, 124, 161 Macmillan v Dent [1907] 1 Ch 107 (CA)������������������������������������������������������ 44, 55, 59 Malaussena c Sté Les éditions Gallimard JurisData n 2000-006365; D. 2001, 918���������������������������������������������������������������������������������������������148–49, 156 Mark Twain Case, 14 F 728 (CC N.D. Illinois, 1883)���������������������������������������� 16, 62 Mansell v Valley Printing Co [1908] 1 Ch 567������������������������������������������������������������55 Metro Associated Services Inc v Webster City Graphic Inc 117 F. Supp 224 (N.D. Iowa, 1953)������������������������������������������������������������������������ 16, 63 Miami Herald v Tornillo 418 US 241 (1974)������������������������������������������������������������145 Middleton & Anor v Person(s) Unknown [2016] EWHC 2354 (QB)����������� 126, 153 Millar v Taylor (1769) 4 Burr 2303��������������������������������������������� 26, 31–36, 40, 48, 58, 126–27, 131, 168 Minet c Veuve Silliere-Urbain TGI Reims, 2 January 1969, D 1969, 569��������������149

Table of Cases  xiii Morris v Kelly (1820) 1 Jac & W 481�������������������������������������������������������������������� 35, 65 Murakami-Wolf-Swenson, Inc v Cole 40 F. Supp 3d 1365 (D.Or. 2014)������������������10 Murray v Elliston (1822) 5 B & Ald 657��������������������������������������������������������������� 35, 65 National Comics Publications Inc v Fawcett Publications Inc et al, 191 F.2d. 594 (1951)����������������������������������������������������������������������������������������� 16, 63 NBC v Sonneborn 630 F Supp 524 (D. Conn 1985)��������������������������������������������������10 Newbery v James (1817) 2 Mer 446�����������������������������������������������������������������������������47 New Era Publ’ns Int’l v. Henry Holt & Co., 873 F.2d 576 (2d Cir. 1989)��������������������������������������������������������������������������������112, 127, 148, 178 Newspaper Licensing Agency v Marks and Spencer [2001] 3 All ER 977��������������������������������������������������������������������������������������������160, 174–75 Nicols v Pitman, [1884] N 193; [1884] LR 26 Ch D 374�������������������������������������������68 Nottinghamshire NHS Trust v News Group Newspapers [2002] RPC 49��������� 6, 118 OBG Ltd v Allan [2005] QB 762��������������������������������������������������������������������������������154 OLG Köln Urteil vom 12.06.2015, Az. 6 U 5/15. 1. – Afghanistan papier����������������������������������������������������������������������������������������������������������������������155 OLG Köln Urteil vom 5. Mai 2015 Az. 15 U 193/14 – Helmut Kohl����������� 143, 147 Pacific Gas & Electricity Co v Public Utilities Commission of California 475 US 1 (1986)�����������������������������������������������������������������������������������������������������150 Palin v Gathercole (1844) 1 Collyer 565����������������������������������������������������������������������45 Palmer v De Witt 47 NY 532 (1872)���������������������������������������������������������12–13, 35, 75 Pammer v Reederei Karl Schlüter GmbH & Co. KG and Hotel Alpenhof GesmbH v Heller [2010] ECR I-12527������������������������������������������������������������������90 PCR Ltd v Dow Jones Telerate Ltd [1998] FSR 170������������������������������������������� 91, 171 Perceval v Phipps (1813) 2 V & B 21�������������������������������������������������������������������������152 Philip v Pennell [1907] 2 Ch 577��������������������������������������������������������������������������� 59, 92 Pollard v Photographic Company (1888) 40 Ch D 352����������������������������������������������69 Pope v Curll (1741) 2 Atk 342����������������������������������������������� 11, 21, 26, 28–30, 32, 35, 37, 43, 45, 56, 125, 132, 136, 148, 152–53, 170 Prince Albert v Strange (1849) 2 De G & Sm 293�������������������������������11, 92, 125, 141 Princeton University v Michigan Document Servs., 99 F.3d 1381 (6th Cir. 1996)��������������������������������������������������������������������������������������������������������177 Pro Sieben Media v Carlton Television [1999] 1 WLR 605���������������������������� 115, 176 Public Affairs Association v Rickover 284 F. 2d 262 (DC 1960)������������������������� 16, 62 Religious Technology Center v Netcom On-line com 923 F. Supp 1231 (ND. Cal. 1995)����������������������������������������������������������������������������������������������������8, 82 R (Evans) v A-G [2015] 2 WLR 813������������������������������������������������������������������������������7 R v Lorimer (1984) 77 CPR (2d) 262 (Canada)�������������������������������������������������������180 R v Shayler [2003] 1 AC 247 (HL)������������������������������������������������������������������������ 1, 180 RCA Mfg Co Inc v Whiteman et al 114 F. 2d 86 (1940)������������������������������������� 10, 74 René Char, Civ. 1st June 9, 2011, No. 10-13570, No. 2011-011942.�������������������������������������������������������������������������141, 147, 149, 156

xiv  Table of Cases Rexnord Inc v Modern Handling Systems Inc 379 F. Supp 1190 (1974)������������ 16, 63 Ricordi v Haendler 194 F. 2d 914 (1952)�������������������������������������������������������������� 16, 62 RJR-McDonald v AG of Canada [1995] 3 SCR 199)������������������������������������������������150 Roger Bouvier et autres c. Jean-Pierre Cassigneul (1996) RIDA 169����������������������143 Rotbart v J.R. O’Dwyer Co., Inc No. 94 Civ. 2091 (JSM) (S.D.N.Y. Feb. 7, 1995)������������������������������������������������������������������������������������������117 Rouault c Consorts Vollard [1947] S. Jur. II.3�����������������������������������������������������������143 Roy Export Co. Estab of Vaduz v CBS 672 F.2d 1095 (1982)�����������������16, 63, 82–83 Salinger v Random House, Inc., 811 F.2d 90 (2d Cir. 1987)����������������12, 85, 91, 112, 141, 172, 178 Salomon v Salomon [1897] AC 22 (HL)�������������������������������������������������������������������150 Saltman Engineering Company v Campbell Engineering Company Limited (1948) 65 RPC 203 (CA)��������������������������������������������������������������������������22 Sanga Music Inc v EMI Blackwood Music Inc et al 55 F. 3d 756 (2nd Cir 1955)���������������������������������������������������������������������������������������� 8, 11, 16, 83 Service Corporation International plc & Anor v Channel Four Television & Anor [1999] EMLR 83��������������������������������������������������������������������180 Siegel v Time Warner Inc 496 F Supp 2d 1111, 1150 (2007)�������������������������������������16 Sillitoe v McGraw Hill [1983] FSR 545������������������������������������������������������������� 177, 194 Societe Civile Succession Guino v Renoir 549 F. 3d 1182 (9th Cir 2008) 1185�������������������������������������������������������������������������������������� 6, 83, 98 Société La Règle du Jeu et Lévy c Salzedo 155 RIDA 191 (1993)�������������148–49, 155 Soc’y of the Holy Transfiguration Monestary Inc v Gregory 689 F.3d 29 (1st Cir. 2012)�������������������������������������������������������������������������������������������113 Somerset v Stewart (1772) 98 ER 499��������������������������������������������������������������������������24 Southey v Sherwood, (1817) 2 Mer 435��������������������������������������������������������45–46, 138 Stanley v CBS 221 P.2d 73�������������������������������������������������������������������������������������� 11, 16 Sundeman v The Seajay Soc’y, Inc 142 F.3d 194 (4th Cir. 1998)�����������������������������113 Suntrust Bank v Houghton Mifflin Co., 268 F.3d 1257 (11th Cir. 2001)����������������������������������������������������������������������������� 115, 145, 172–73 Swatch Grp Mgmt Servs Ltd v Bloomberg LP 742 F.3d 17 (2d Cir. 2014)���������������������������������������������������������������������������������������������������������115 Sweeney v Macmillan [2002] RPC 251������������������������������������������������������������������������10 Testa v Janssen 492 F. Supp 198 (1980)���������������������������������������������������������������� 11, 16 Tchenguiz v Imerman [2010] 2 FLR 814 (CA)����������������������������������������126, 153, 155 The Exchange Telegraph Co (Ltd) v Howard and the London and Manchester Press Agency Ltd (1906) 22 TLR������������������������������������������������58 Thompson v Stanhope (1774) Amb 737��������������������������������������2, 11, 26, 38, 45, 125, 132, 136–37, 153, 170 Time Warner Entertainments Co. Ltd. v Channel 4 Television Corp. plc (1994) EMLR 1����������������������������������������������������������������������������� 115, 176 Times Newspapers Limited and Anor v MGN Limited [1993] EMLR 443 (CA)��������������������������������������������������������������������� 127, 147, 149–50, 175

Table of Cases  xv Tuck & Anor v Priester 19 QBD 629 (CA)����������������������������������������������������������� 17, 69 Turner v Robinson [1860] Ir Ch R 121�����������������������������������������������55–56, 59, 70, 92 University of New South Wales v Moorhouse (1975) 133 CLR 1����������������������������177 Walcot v Walker (1802) 7 Ves. Jr 1�������������������������������������������������������������������������������45 Waring v WDAS Broadcasting Station 327 Pa. 433 (1937)�������������������������� 11–12, 75 Warner Brothers Pictures Inc v CBS 102 F. Supp 141 (1951)������������������������������������16 Warner v Wright Books, 953 F.2d 731 (2d Cir 1991)�������������������������������������� 120, 172 Webb v Rose (1732) 96 ER 184 ����������������������������������������������������������������������������� 26–27 Werckmeister v American Lithograph Co. 134 Federal Reporter 321 (1904)���������10 West Virginia State Board of Education v Barnette 319 US 624 (1943)�����������������145 Wheaton v Peters 8 Pet (33 US) 591���������������������������������������������� 1–2, 37, 51, 75, 131 White v Kimmell 193 F.2d 744������������������������������������������������������������������������������� 10, 16 White-Smith Music Pub. Co, v Apollo Co 209 US 1�������������������������������������������� 12, 74 William A. Meier Glass Co Inc v Anchor Hocking Glass Corp 95 F. Supp 264 (1951)�������������������������������������������������������������������������������������������� 10, 16 Williams & Wilkins Company v United States 487 F.2d 1345 (1973)����������������������11 Williams v Williams (1817) 3 Mer 157������������������������������������������������������������������������47 Yovatt v Winyard (1820) 1 Jac & W 394�������������������������������������������������������������� 47, 50

xvi

TABLE OF STATUTES Copyright Act 1710 8 Ann c 21�����������������������������������������������������������������������������������23 Copyright Act 1814�������������������������������������������������������������������������������������������������������65 Copyright Act 1842 5 & 6 Vict, c 45�������������������������������������������������������������������� 71, 77 Copyright Act 1911 (UK)�������������������������������������������������������������� 2, 17, 64, 80–82, 84, 96, 102, 104, 193 Copyright Act 1956������������������������������������������������������������������������������������������������ 17, 96 Copyright, Designs and Patents Act (CDPA) 1988���������������������� 1–2, 4–6, 9–13, 15, 17–19, 35, 84–87, 90, 96–98, 103, 106–08, 118, 136, 144, 146, 162–65, 169, 174, 176–78, 193 Dramatic Literary Property Act, 1833, 3 & 4 Will IV, c 15�������������������22, 37, 65–66 Fine Arts Copyright Act, 1862, 25 & 26 Vict, c 68��������������������������17, 22, 37, 67–70, 72, 76–77 International Copyright Act 1886 49 & 50 Vict, c 33 (UK)�������������������������������������77 Official Secrets Act 1989 (UK)������������������������������������������������������������������������������ 1, 110 Publication of Lectures Act, 1835, 5 & 6 Will IV, c 65�������������������������������� 17, 22, 37, 49–50, 66–69 Public Records Act 1958�������������������������������������������������������������������������������������� 96, 164 The Data Protection Act 2018��������������������������������������������������������������������������� 110, 164 The Foreign Reprints Act 1847 10 & 11 Vict, c 95����������������������������������������������������77 The Public Records Act 1958�������������������������������������������������������������������������������������164 Berne Convention Implementation Act 1988 (USA)�������������������������������������� 84, 190 Copyright Act 1790 (USA)������������������������������������������������������������������������������������ 39–40 Copyright Act 1831 (USA)�������������������������������������������������������������������������������������������40 Copyright Act 1909 (USA)��������������������������������������������������������������������������� 2, 8, 17, 74, 82, 95, 98 Copyright Act 1968 (Australia)����������������������������������������������������������������1–2, 4–5, 194 Copyright Act 1976 (USA)������������������������������������������������������ 1–2, 4–5, 10, 19, 64, 74, 82, 96, 117, 172, 176 Copyright Act 1985 (Canada)����������������������������������������������������������������������������������������1 Copyright Act 1994 (New Zealand)������������������������������������������������������������������������������1 Crimes Act 1914 (Australia)������������������������������������������������������������������������������������������1 Connecticut Copyright Statute (1783)�����������������������������������������������������������������������39 Georgia Copyright Statute (1786)�������������������������������������������������������������������������������39 New York Copyright Statute (1786)����������������������������������������������������������������������������39

xviii  Table of Statutes Security of Information Act (RSC 1985, c O-5) (Canada)�����������������������������������������1 Sound Recordings Act 1971)���������������������������������������������������������������������������������������74 Council Directive 93/98/EEC of 29 October 1993 harmonising the term of protection of copyright and certain related rights L290, 1993-11-24, 9–13����������������������������������������������������������������������17, 96, 102, 191, 193 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society OJ L 167, 22/06/2001 P 0010 – 0019���������������������������������������������������������������������������������������������������� 13, 85 Directive 2012/28/EU of the European Parliament and of the Council of 25 October 2012 on certain permitted uses of orphan works OJ L 299, 27.10.2012; ������������������������������������������������������������������������������ 3, 100, 178 Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market L 130, 17 May 2019 �������������������������������������������������������������������������������5, 84 European Convention on Human Rights �����������������������������������������64, 104, 116, 157 The Berne Convention for the Protection of Literary and Artistic Works (Berne Convention)���������������������������������� 1–2, 4–6, 11, 13–14, 17, 63–64, 72, 76, 78–80, 84–89, 98–99, 107, 159–60, 163, 172–73, 191–93 TRIPs Agreement ������������������������������������������������������������������������������������������������ 93, 172 Universal Copyright Convention������������������������������������������������������������������� 14, 85–86

1 Introduction The topic of this book is copyright in unpublished works including letters, diaries, manuscripts, photographs, memoranda, sketches, private journals, government records, and drafts intended for future publication. British copyright statutes protect such works.1 Moreover, the leading international copyright instrument, namely, the Berne Convention for the Protection of Literary and Artistic Works, anticipates that unpublished works shall receive protection.2 Beyond copyright, owing to excessive cumulation of rights in intellectual productions, concurrent bases for securing the interests that inhere in unpublished works have proliferated. In some common law jurisdictions, for example, vindication of authors’ interests is sometimes conceived in terms of official secrecy,3 breach of confidence4 and the right to privacy.5 However, although these regimes command widespread acceptance as orthodox means by which authors’ rights may be safeguarded, they yield several conceptual muddles relating to the intensity and scope of protection.6 In so far as copyright is concerned, for centuries, the House of Lords’ seminal judgment in Donaldson v Beckett (unauthorised printing of James Thomson’s The Seasons) was interpreted as mandating a differentiated approach to protection of published and unpublished works.7 Published works fell within the purview 1 Copyright, Designs and Patents Act (CDPA) 1988 s 1. See also Copyright Act 1976 (USA) §102; Copyright Act 1994 (New Zealand) s 14; Copyright Act 1985 (Canada) s 3; Copyright Act 1968 (Australia) s 32. 2 Art 1 The Berne Convention for the Protection of Literary and Artistic Works (Berne Convention); full text available at www.wipo.int/wipolex/en/treaties/text.jsp?file_id=283698 (all links were active on 30 June 2019). 3 Official Secrets Act 1989 (UK); Security of Information Act (RSC 1985 c O-5) (Canada); Crimes Act 1914 (Australia); Commonwealth of Australia v John Fairfax & Sons Ltd (1980) 147 CLR 39; AG v Guardian Newspapers Ltd (No 2) [1990] 1 AC 109 (HL); AG v Blake [2001] 1 AC 268 (HL); R v Shayler [2003] 1 AC 247 (HL). 4 Duke of Argyll v Duchess of Argyll and Anor [1962] SLT 333; Hyde Park Residence Ltd v Yelland [2001] Ch 143 (CA); Ashdown v Telegraph Group Ltd [2001] EWCA Civ 1142; [2002] Ch 149 (CA); HRH The Prince of Wales v Associated Newspapers (No 3) [2006] EWCA Civ 1776; [2007] 3 WLR 222 (CA). 5 A v B [2000] EMLR 1007; HRH The Prince of Wales v Associated Newspapers (No 3) [2007] 3 WLR 222 (CA); BBC Petitioners (2012) SLT 476. 6 For example, breach of confidence can protect ideas as such, but copyright does not. Moreover, obligations to maintain confidences may be secured indefinitely but copyright endures for a defined period. 7 Donaldson v Beckett [1774] 17 Cobbett’s Parliamentary History 953; Wheaton v Peters 8 Pet (33 US) 591; R Deazley, On the Origin of the Right to Copy: Charting the Movement of Copyright Law in

2  Introduction of statutory copyright and were the subject of stringent formalities and temporal restrictions.8 In contrast, unpublished works attracted automatic and perpetual common law copyright.9 ‘Publication’ was the principal dividing line between statutory and common law copyright and its employment in individual cases was perfused with numerous technicalities. Eventually, however, owing to various domestic and international exigencies, including the need to implement the Berlin Revision of the Berne Convention, for the greatest part, common law copyright has now been abrogated.10 While unpublished works are now, in general, assimilated to the treatment of published ones, notable differences in the strength of protection afforded to the two regimes subsist. Contemporary copyright law still confers stronger protection on unpublished works; a claim which is readily substantiated by the term of protection. In Britain, for instance, copyright in some ‘old’ unpublished works, including medieval manuscripts, will endure until 203911 – a situation which also prevails in America (certain sound recordings are copyrightable until 2067)12 – and exceeds the standard term of protection.13 Quite apart from this, ‘first publication’ acts as a crucial determinant of the duration of copyright protection. Anonymous and pseudonymous works provide paradigm examples of that proposition – they are usually protected for a defined period from the year of first publication.14 More­ over, the country of origin of a work and, in turn, the term of copyright in works of foreign authorship can be identified by reference to ‘publication’.15 Frequently, however, the complexity of the term of copyright in unpublished works intensifies problems with ‘orphan works’; a concept which denotes failure to identify or trace authors.16 Authorship matters – copyright’s most significant

Eighteenth Century Britain (1695–1775) (Oxford, Hart Publishing, 2004); Capitol Records Inc v Naxos of America 830 NE 2d 250 (NY 2005); R Deazley, ‘Capitol Records v. Naxos of America (2005): Just Another Footnote in the History of Copyright?’ (2005–06) 53 Journal of the Copyright Society of the USA 23. 8 Eg Copyright Act 1909 (USA) § 1. 9 Thompson v Stanhope (1774) Amb 737; Wheaton v Peters n 7 above. The arithmetic of the judges’ advice to the House of Lords in Donaldson v Beckett has spawned serious doubts concerning the historical premise of common law copyright. See R Deazley, ‘The Myth of Copyright at Common Law’ (2003) 62 Cambridge Law Journal 106; H Abrams, ‘The Historic Foundation of American C ­ opyright Law: Exploding the Myth of Common Law Copyright’ (1983) 29 Wayne Law Review 1119. Cf WR Cornish, ‘Copies in UK Copyright’ in HC Jehoram, Copies in Copyright (Alphen aan den Rijn, Sijthoff & ­Noordhoff, 1980) 165 and T Gomez-Arostegui, ‘Copyright at Common Law in 1774’ (2014) 47 Connecticut Law Review 1. In fact, as will be seen below, most treatises written during this period refer to common law rights in unpublished works. 10 Copyright Act 1911 (UK) s 31; Copyright Act 1976 §1.01[B]. 11 CDPA Sch 1, para 12. 12 Copyright Act 1976 §5. 13 Copyright Act 1976 §302; Copyright Act 1968 (Australia) s 33; and CDPA s 12. 14 Eg Copyright Act 1976 §302. 15 Berne Convention Art 7(8). 16 A work is orphaned if its author or owner cannot be identified or traced. HM Treasury, Gowers Review of Intellectual Property, https://assets.publishing.service.gov.uk/government/uploads/system/ uploads/attachment_data/file/228849/0118404830.pdf.

Introduction  3 features, including the term of protection, are anchored in it. In the absence of credible information concerning the identity or location of authors, licensed uses of copyright works might not materialise. Users are confronted by a nearly insuperable dilemma. Exploitation of orphan works might have to be abandoned; an attitude which can be abstracted from the experiences of some cultural heritage institutions. The Imperial War Museum could not situate soldiers’ experiences of the horrors of the First World War in their fullest historical context because the relevant material was orphaned.17 Alternatively, some users take the plunge and rely on orphan works without obtaining any licences. Authors Guild v Google, Inc provides a vivid illustration of the latter tendency.18 Google’s creation of a searchable database of books was confronted by a flurry of litigation. The issue of orphan works is internationally prominent – European and American solutions have emerged.19 However, these reforms in effect share the same basic inadequacy: they are predicated on diligent searches20 – a wholly inefficient and sometimes costly procedure – the Victoria and Albert Museum’s efforts at that task engendered deployment of disproportionate resources in order to clear the rights in a few exhibits.21 Cultural heritage institutions including archives, museums and galleries are confronted with a further, more pressing, dilemma. Preservation of ‘orphan works’ is bound to generate potential claims for copyright infringement. Consider sound recordings that are stored in defunct or increasingly obsolete media, for the moment. Digitally remastering these works in order to improve their accessibility or conservation is tantamount to reproduction of the originals; a possibility which received detailed discussion in Capitol Records Inc v Naxos of America.22 Naxos was prevented from remastering old and out of copyright sound recordings by Yehudi Menuhin, Pablo Casals and others because of the operation of common law copyright in the USA. For its part, the British Library has often alluded to the intricacies of preserving and accessing its orphaned holdings;23 an observation which has also found expression in a report by the Library of Congress.24

17 Intellectual Property Office, ‘Government response to the consultation on reducing the d ­ uration of copyright in certain unpublished works’, https://assets.publishing.service.gov.uk/government/ uploads/system/uploads/attachment_data/file/399171/973_-_Governement_Response_-_copyright_ in_certain_unpublished_works.pdf at 2. 18 Authors Guild v Google, Inc 804 F 3d 202 (2015); P Samuelson, ‘Google Book Search and the Future of Books in Cyberspace’ (2009–10) 94 Minnesota Law Review 1308. 19 Directive 2012/28/EU of the European Parliament and of the Council of 25 October 2012 on certain permitted uses of orphan works OJ L 299, 27.10.2012; US Copyright Office, Orphan Works and Mass Digitisation, www.copyright.gov/orphan/reports/orphan-works2015.pdf. 20 Intellectual Property Office, ‘Government response to the consultation on reducing the duration of copyright in certain unpublished works’ n 17, 2. 21 ibid. 22 Capitol Records Inc v Naxos of America 830 NE 2d 250 (NY 2005). 23 See HM Treasury, Gowers Review of Intellectual Property above at 69. 24 See US Copyright Office, Orphan Works and Mass Digitization above.

4  Introduction These difficulties suggest the absence of any recognisable confluence between the justifications for the term of copyright protection and rights in some unpublished works.25 Take the claim that post-mortem copyright safeguards the interests of authors’ heirs, for example.26 That argument becomes extremely fragile if copyright in medieval manuscripts is considered – the possibility that an author created a work for the benefit of dozens of successive generations of heirs is shorn of any scintilla of legitimacy. Equally, the claim that authors engage in creativity in order to gain the pecuniary advantages of copyright protection is demonstrably fallacious. Authors of Elizabethan manuscripts, for instance, did not write with the hope that their rights would endure for centuries. A similar point attaches to the proposition that the copyright term encourages publishers to subsidise dissemination of risky works.27 The length of that subsidy is an exercise in extravagance if old unpublished works are considered. The unpublished status of a work assumes central importance in the context of the defences to copyright infringement.28 The authorities exhibit numerous currents of which four are clearly relevant. In the first place, some copyright exceptions do not embrace unpublished works at all. The most convenient example of that feature relates to the exclusion of works which have not been made available to the public with their author’s consent from the ambit of some fair dealing defences.29 Secondly, ‘fairness’, the key ingredient of fair use or fair dealing defences, rests heavily on ‘publication’30 – a matter which often provokes serious controversies concerning copyright’s impact on other public interests.31 Harper & Row v Nation Enterprises32 (unauthorised first publication of excerpts from 25 S Ricketson, ‘The Copyright Term’ (1992) 23 International Review of Intellectual Property and Competition Law; 753; Eldred v Ashcroft 537 US 186 (2003). 26 S. Ricketson above. 27 ibid. 28 Eg Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA) (unauthorised first publication of an aide memoire); HRH The Prince of Wales v Associated Newspapers above (wider dissemination of the contents of unpublished travel diaries). See CDPA ss 30(1) (criticism or review), 30 (1ZA) (quotation). Copyright Act (Canada) s 29 is silent on the unpublished status of a work, but the cases suggest otherwise: The Queen v James Lorimer, (1984) 77 CPR (2nd) 262 (FCA); CCH Canadian Ltd v Law Society of Upper Canada [2004] 1 SCR 339 (the significance of the nature of the work to a fairness inquiry might depend on the unpublished status of a work). Australia adopts a similar position – Copyright Act 1968 s 40(2)(b) and Commonwealth of Australia v John Fairfax & Sons Ltd (1980) 147 CLR 39. See also Copyright Act 1976 (USA) §107 (2) and Harper & Row v Nation Enterprises, 471 US 539 (1985); Berne Convention Art 10(1). 29 Eg CDPA ss 30 (1) and 30 (1ZA); HRH The Prince of Wales v Associated Newspapers (No 3) [2006] EWCA Civ 1776; [2007] 3 WLR 222 (CA). 30 Eg Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA); HRH The Prince of Wales v Associated Newspapers (No 3) [2006] EWCA Civ 1776; [2007] 3 WLR 222 (CA); The Queen v James Lorimer, (1984) 77 CPR (2nd) 262 (FCA); CCH Canadian Ltd v Law Society of Upper Canada [2004] 1 SCR 339; Commonwealth of Australia v John Fairfax & Sons Ltd (1980) 147 CLR 39 and Harper & Row v Nation Enterprises, 471 US 539 (1985). 31 PN Leval, ‘Toward A Fair Use Standard’ 1990) 103 Harvard Law Review 1105; NW Netanel, Copyright’s Paradox (Oxford, Oxford University Press, 2010); R Okediji (ed) Copyright Law in an Age of Limitations and Exceptions (Cambridge, Cambridge University Press, 2017). 32 Harper & Row v Nation Enterprises, 471 US 539 (1985).

Introduction  5 Gerald Ford’s memoirs) provides a compelling instance of that tension – freedom of expression was subordinated to an author’s economic interests. In addition, conservative interpretations of the ratio in that case appeared to suggest that ­unpublished works were excused from the fair use defence, an issue which prompted urgent legislative intervention.33 In contrast, another copyright exception, namely the public interest defence can only logically be said to apply to unpublished works.34 Because the act of publication reveals the work to the public, any residual demands for its enhanced circulation might be met by other copyright exceptions. Less controversially, ‘publication’ governs whether libraries or archives can copy a work.35 The same is true for provisions that benefit the blind36 or mandate compulsory performances of non-commercial broadcasts.37 These matters inhabit a rapidly changing universe – initiatives that are geared towards strengthening copyright owners’ rights abound.38 At the same time, given that copyright exists in the human rights era, conflicts between authors and users’ interests often materialise.39 It is thus all the more necessary to insist that exceptions to copyright infringement ought to be effective; an exhortation whose realisation is capable of being fulfilled by interpreting various statutory provisions purposively. ‘Publication’ also provides a geographical criterion by which qualification for copyright protection can be achieved.40 Domestically, copyright attaches to works which are first published in a specific country.41 At the international plane, copyright is fastened to a work whose first publication occurs simultaneously in a Member State of the Berne Convention and in another country which does not subscribe to that treaty.42 It is also the case that works which are first published in one Member State of the Berne Convention receive protection from another country belonging to that international agreement.43 These permutations provide an enabling environment for revival of copyright in ‘public domain’ works.44 ­Essentially, a work might be out of copyright in the country of first publication, 33 ibid; Public Law No: 102–492 clarifying §107 of the Copyright Act 1976 in relation to fair use of unpublished works. 34 Express Newspapers plc v News (UK) plc [1990] 1 WLR 1320, 1328D. 35 Copyright Act 1976 §108(b). 36 ibid § 110 (9). 37 ibid §118(b). 38 Eg Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market L 130, 17 May 2019 (enactment of a new publishers’ right). 39 Eg Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA); Imutran v Uncaged Campaigns Ltd [2001] EWHC 31 (Ch); [2001] 2 All ER 385; HRH The Prince of Wales v Associated Newspapers (No 3) [2006] EWCA Civ 1776; [2007] 3 WLR 222 (CA); BBC Petitioners (2012) SLT 476; Harper & Row v Nation Enterprises 471 US 539 (1985). 40 Berne Convention Arts 3 and 4; CDPA s 155; Copyright Act 1968 (Australia) s 32(2); Copyright Act 1976 (USA) §104, Copyright Act Canada s 5(1)(c); Copyright Act (New Zealand) s 19. 41 Eg Copyright Act 1976 §104. 42 Eg CDPA s 155(1) (3). That rule is now quite residual – most countries belong to the Berne Union. 43 Eg CDPA s 155(a). 44 A work is in the public domain if its term of protection has expired. Users may exploit it freely. See J Litman, ‘The Public Domain’ (1990) 39 Emory Law Journal 965.

6  Introduction but owing to the operation of common law copyright in another Member State of the Berne Convention, it remains protectable: Societe Civile Succession Guino v Renoir (revival of copyright in Pierre-Auguste Renoir’s sculptures)45 and Capitol Records Inc v Naxos of America (common law protection of public domain British sound recordings in the USA).46 In addition, the remedies for copyright infringement sometimes pivot on ‘publication’.47 Interim injunctions, for example, are more likely to be granted if a work is unpublished.48 The axis of that argument is that unauthorised first publication might occasion irreparable harm to authors’ non-pecuniary interests49 including loss of privacy or expressive autonomy. In other cases, the economic significance of first publication might provoke a claim for substantial damages. Separately, a defendant’s egregious conduct when acquiring another’s unpublished works may induce additional damages.50 Besides, in the USA, statutory damages or attorneys’ fees are recoverable by owners of some unpublished works.51 At the tactical level, copyright claims involving unpublished works attract a key procedural advantage. The prospects of successful applications for summary judgment in copyright cases52 are enhanced by the fact that some exceptions exclude unpublished works from their purview.53 Despite its significance, the topic of copyright in unpublished works has rarely received systematic academic analysis. To the extent that academics have paid any noticeable attention to unpublished works, the most dominant concern has been the term of protection.54 There have also been scattered examinations of some of the leading cases in diverse contexts55 including the emergence and development 45 Societe Civile Succession Guino v Renoir 549 F 3d 1182 (9th Cir 2008) 1185. 46 Capitol Records Inc v Naxos of America 830 NE 2d 250 (NY 2005). 47 Eg Copyright Act (New Zealand) s 121(2) (a); Copyright Act (Australia) s 34 (1). 48 See ch 4 below. 49 Baywatch Productions v The Home Video Channel [1997] EWHC Patents 357; [1997] FSR 22. 50 Eg Nottinghamshire NHS Trust v News Group Newspapers [2002] EWHC 409 (Ch); [2002] RPC 49. 51 ABC Prime-time 24 JV 67 F Supp 2d 558, 561 (MDNC, 1999). 52 Eg Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA); HRH The Prince of Wales v Associated Newspapers (No.3) [2006] EWCA Civ 1776; [2007] 3 WLR 222 (CA); Hyde Park Residence Ltd v Yelland [2001] Ch 143 (CA). 53 Ss 30(1) (criticism or review), 30 (1ZA) (quotation) CDPA. 54 Eg R Deazley, On the Origin of the Right to Copy: Charting the Movement of Copyright Law in Eighteenth Century Britain (1695–1775) (Oxford, Hart Publishing, 2004); WR Cornish, ‘Copyright’ in WR Cornish et al, The Oxford History of the Laws of England, 1820–1914, Vol XIII (Oxford, Oxford University Press, 2010) Pt V ch II; B Sherman and L Bently, The Making of Modern Intellectual Property Law (Cambridge, Cambridge University Press, 1999) 9–59; E Townsend Gard, ‘Unpublished Works and the Public Domain: The Opening of a New Frontier’ (2007) 54 Journal of the Copyright Society of the USA 439; E Townsend-Gard, ‘The Birth of the Unpublished Public Domain and its International Implications’ (2006) 24 Cardozo Arts and Entertainment Law Journal 687; AR Reese, ‘Is the Public Domain Permanent?: Congress’s Power to Grant Exclusive Rights in Unpublished Public Domain Works’ (2007) 30 Columbia Journal of Law and The Arts 531; AR Reese, ‘Public but Private: Copyright’s New Unpublished Public Domain’ (2007) 85 Texas Law Review 585; MB Nimmer, ‘Copyright Publication’ (1956) 56 Columbia Law Review 185; B Kaplan, ‘Publication in Copyright Law: The Question of Phonograph Records’ (1955) 103 University of Pennsylvania Law Review 469. 55 Eg D Nimmer, Nimmer on Copyright (New York, Matthew Bender) ch 4.

Introduction  7 of the concept of authorship,56 the origins of the right to privacy,57 the notion of the public interest in British copyright law,58 and the impact of copyright exceptions on countervailing public interests.59 Similarly, apart from William Landes’ economic analysis of fair use of unpublished works,60 the normative bases for protecting unpublished works by copyright law have escaped robust scrutiny. In my view, ‘publication’ should be considered holistically if its full effects are to be appreciated. The fundamental question that is considered in this book is whether, and to what extent, copyright in unpublished works is justified. That question requires a broader understanding of several ancillary issues. Chief among these is the evolution of the concept of ‘publication’, a matter which may illuminate our understanding of modern copyright law. Differences in the scope of protection available to published and unpublished works, the relationship between copyright in unpublished works and protection via adjacent regimes (including breach of confidence and privacy law), and whether aspects of copyright in unpublished works ought to be reformed are all matters which merit the closest analysis. Providing sensible answers to these questions limits the risks arising from deciding cases by reference to their immediate circumstances – sometimes the context from which the meanings of ‘publication’ are derived provides a clearer premise for analysing the law. Why copyright inheres in unpublished works, and what the scope of that protection should be, are immediate questions. On the face of it, there seems to be an absence of any obvious public interest-based justification for protecting unpublished works. Moreover, persistent anxieties concerning excessive cumulation of rights in unpublished material abound.61 In addition, a peculiar propensity on the part of policymakers and judges to offer stronger rights to authors of unpublished works without considering the fullest implications of such protection supplies a

56 Eg M Rose, Authors and Owners: The Invention of Copyright (Cambridge MA, Harvard University Press, 1993) ch 4. 57 SD Warren and LD Brandeis, ‘The Right to Privacy’ (1890–1891) 4 Harvard Law Review 193; JO Newman, ‘Copyright Law and the Protection of Privacy’ (1987) 12 Columbia Journal of Arts and Law 459. 58 I Alexander, Copyright Law and the Public Interest in the Nineteenth Century (Oxford, Hart Publishing, 2010). 59 Eg J Griffiths, ‘Copyright Law after Ashdown: Time to Deal Fairly with the Public’ [2002] 6 Intellectual Property Quarterly 240; R Burrell, ‘Reining in Copyright Law: Is Fair Use the Answer’ [2001] 5 Intellectual Property Quarterly 361; PN Leval, ‘Toward A Fair Use Standard’ 1990) 103 Harvard Law Review 1105; MS Bilder, ‘The Shrinking Back: The Law of Biography (1991) 43 Stanford Law Review 299 and B Marks, ‘Copyright Protection, Privacy Rights, and the Fair Use Doctrine: The Post-Salinger Decade Reconsidered’ (1997) 72 New York University Law Review 1376. 60 WM Landes, ‘Copyright Protection of Letters, Diaries, and Other Unpublished Works: An Economic Approach’ (1992) 21 Journal of Legal Studies 79. 61 Eg Evans v Attorney General [2015] UKSC 21; [2015] 2 WLR 813; Hyde Park Residence Ltd v Yelland [2001] Ch 143 (CA); Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA); HRH The Prince of Wales v Associated Newspapers (No 3) [2007] 3 WLR 222 (CA) and Commonwealth of Australia v John Fairfax & Sons Ltd (1980) 147 CLR 39.

8  Introduction compelling reason for an extensive examination of my subject.62 More fundamentally, trenchant criticisms of copyright exceptions invite a detailed treatment of the interests that inform rights in unpublished works.63 There is a clear need for an overarching analytical framework which can act as a barometer for assessing the legitimacy and intellectual coherence of legislative, academic and judicial interventions in this area. The issues that are addressed here are primarily presented from the perspective of British copyright law. Nevertheless, the shared history of copyright in Common Law jurisdictions64 means that immense reward may be derived from adopting a comparative approach to copyright in unpublished works. Equally, any divergences in relation to the protection that is available to unpublished works provide further tools for assessing the outer limits of the law. For example, the stratification of private law in the USA (federal and state laws jostle for recognition) amplifies the fiendishly complex rules on copyright in unpublished works.65 Sanga v EMI is symptomatic of that state of affairs. Because the contentious song in that case was first published before 1 January 1978, its infringement fell to be decided by reference to the Copyright Act 1909 or state common law.66 Likewise, debates concerning the impact of copyright in unpublished works on other public interests have received the most sophisticated attention in the USA.67 Of course, comparative law has inbuilt limitations especially in relation to transplanting legal rules – a point that is addressed in connection with the desirability of enacting a fair use defence in some countries. The book also relies on the historical method with the aim of identifying the evolution of the interests that underline copyright in unpublished works. In that connection, there is an examination of the jurisdictional bases for suppressing unauthorised first publication; a task which may inform our understanding of the role, and thus the meaning of ‘publication’ in copyright law, the origins of some of the remedies for copyright infringement, the nature of the subject matter that was protected by the law, the explanations for abrogation of common law copyright, and the continued significance of ‘publication’ in modern copyright law. Another advantage of the historical analysis that is pursued here is that it permeates discussions on the justifications for protecting unpublished works and the reforms that may be necessary in this area.

62 I Hargreaves, Digital Opportunity: A Review of Intellectual Property and Growth, above (arguing for an evidence-based regime of intellectual property protection). 63 R Burrell and A Coleman, Copyright Exceptions: The Digital Impact (Cambridge, Cambridge University Press, 2005); PN Leval, ‘Toward A Fair Use Standard’ 1990) 103 Harvard Law Review 1105; LL Weinreb, ‘Fair’s Fair: A Comment on the Fair Use Doctrine’ (1990) 103 Harvard Law Review 1137. 64 Capitol Records Inc v Naxos of America 830 NE 2d 250 (NY 2005); Kramer v Newman 749 F Supp 542 (SDNY 1990). 65 Capitol Records Inc v Naxos of America above at 261. 66 Sanga Music Inc v EMI Blackwood Music Inc et al 55 F. 3d 756 (2nd Cir 1955). 67 Eg Religious Technology Center v Netcom On-line com 923 F Supp 1231 (ND Cal 1995).

The Meaning of ‘Publication’  9 The third choice is doctrinal; a methodology which lends itself to numerous advantages. Firstly, it provides a systematic exposition of the degree of protection arising from the various notions of ‘publication’ in their domestic and international settings. Areas of difficulty in the law are also canvassed. Most importantly, tracing the significance of ‘publication’ in its legislative and judicial contexts provides the backdrop for assessing whether copyright in unpublished works is justified. In addition, any reforms to the scope of and exceptions to copyright in unpublished works ought to be grounded in a solid understanding of the challenges arising from the current regimes. Although aspects of copyright in unpublished works have been criticised in trenchant terms, little attention has been devoted to the normative bases for protecting such material. In my view, the soundness of the criticisms concerning the strength of copyright in unpublished works can only be taken seriously if there is a clear understanding of what copyright in these intellectual productions seeks to achieve. Further, examining the justifications for copyright in unpublished works offers the necessary apparatus for settling the optimum protection which ought to be conferred on such works especially in relation to duration and exceptions to infringement. To that end, the book will devote considerable attention on the justifications for copyright in unpublished works.

The Meaning of ‘Publication’ In common parlance, the terms ‘publish’ and ‘publication’ possess a wide range of meanings, from ‘making known to the public’, communicating to another, to distributing for public sale.68 This is equally true in copyright law and intellectual property more generally.69 Copyright law utilises a number of different notions that might be said to correspond to common usages of ‘publication’. These include ‘publication’ itself,70 as well as references to ‘published’ literary, dramatic or musical works,71 ‘publishing’ in a periodical,72 along with references to ‘unpublished’ works73 and related concepts such as ‘published edition’,74 ‘commercial publication’,75 ‘issue of copies to the public’,76 and ‘making available’ to the public.77

68 The Oxford English Dictionary, www.oed.com/view/Entry/154072?redirectedFrom=publish&. 69 For patents, the act of publication discloses the invention to the public. See L Bently et al, Intellectual Property, 5th edn (Oxford, Oxford University Press, 2018) 447–48. 70 CDPA ss 79(6), 153(1) (b) and 155. 71 CDPA ss 33, 43 and 59. 72 CDPA s 60. 73 CDPA s 61. 74 CDPA ss 1(1)(c), 8, 39 and 42. 75 CDPA ss 77(2), (3), (4), (7), 80(3) and (4). 76 CDPA ss 18, 77(3)(b), (c), 4(b), 4(c), (6) and 7(a). 77 CDPA ss 20 and 30(1A).

10  Introduction Numerous definitions of ‘publication’ subsist78 but – as should be clear – that seemingly simple concept gives way to a highly complex differentiation. Moreover, ‘publication’ in copyright law cannot be equated with the employment of that term in the law of confidential information,79 privacy,80 or defamation.81 Despite possessing eclectic meanings,82 the irreducible core of ‘publication’ can be said to pertain to the act of authorised dissemination of a work to the public83 by various means including sale,84 loan, or gift.85 In essence, the whole work is issued in quantities capable of satisfying public demand for it: Sweeney v Mac­Millan (revival of copyright in a version of James Joyce’s Ulysses).86 Of course, the number of copies required for ‘publication’ are fact-sensitive.87 For example, selling six copies of the sheet music of You Made Me Love You (But I didn’t want to Do It) was ‘publication’ – the publisher intended to satisfy public demand for the song if it became popular.88 In any case, precise numbers are likely to be distinctly capricious and divorced from the practicalities of disseminating certain works. For instance, issuing a single copy of a film to a cinema proprietor who then shows it to the public is ‘publication’. In other instances, the economic value of some intellectual productions including artistic works might revolve around limiting their copies. Whether ‘publication’ should also depend on an author’s intention invites rival solutions. Britain places ‘intention’ at the heart of ‘publication’. Bodley Head v Flegon is emblematic: distribution of August 1914 in Russia did not evince Aleksandr Solzhenitsyn’s intention to publish the work.89 The work was secretly circulated to the Russian intelligentsia – disseminating it widely would have presented grave dangers to the author and his circle. The objective of the approach in Bodley Head v Flegon was to mitigate the risk of ‘colourable publication’. That notion refers to ‘first publication’ in one country in order to qualify for copyright 78 CDPA s 175, Copyright Act 1976 § 101. 79 In the law of confidence, publication denotes disclosing information which is imparted in circumstances imparting an obligation of confidence to a third party: Coco v AN Clark [1969] RPC 41. The information need not be revealed to the public. 80 Jenkins v Dell Publishing Co 132 F Supp 556 (WD Pa 1955). 81 Legnos v Jeppson 171 USPQ 426 (NY Sup Ct 1971). 82 NBC v Sonneborn 630 F Supp 524, 530 (D Conn 1985). 83 Werckmeister v American Lithograph Co. 134 Federal Reporter 321 (1904); William A Meier Glass Co Inc v Anchor Hocking Glass Corp 95 F Supp 264 (1951). 84 Grandma Moses Properties Inc v This Week Magazine 117 F Supp 348; RCA Mfg Co Inc v Whiteman et al 114 F 2d 86 (1940) (sale of records amounted to publication). 85 Letter Edged in Black Press v Public Building Commission of Chicago 320 F. Supp. 1303 (1970). A work might also be made available to the public – Murakami-Wolf-Swenson, Inc v Cole 40 F Supp 3d 1365 (D Or 2014); John G. Danielson Inc v Winchester-Conant Properties Inc 322 F 3d 26 (1st Cir 2003) 35; White v Kimmell 193 F 2d 744. Some literary, dramatic, musical, and artistic works may be published via an electronic retrieval system: s 175(1)(b) CDPA. 86 Eg Sweeney v Macmillan [2001] EWHC Ch 460; [2002] RPC 251 para 42; s 155(1) and (2) CDPA; Jewelers’ Mercantile Agency v Jewelers’ Weekly Publishing Co 155 NY 241 (1898). 87 CDPA s 155(1) and (2). Brown v Tabb 714 F 2d 1088 (1983). 88 Francis Day & Hunter v Feldman & Co [1914] 2 Ch 728 (CA). 89 Bodley Head v Flegon [1972] 1 WLR 680.

The Meaning of ‘Publication’  11 protection elsewhere.90 For its part, the USA offers ambivalent positions on the relevance of an author’s intention to ‘publication’.91 In my view, given that membership of the Berne Convention is nearly universal, ‘colourable publication’ has diminished in importance. Consequently, the author’s intention needs not determine first publication. Instead, whether ‘publication’ has occurred is a matter of impression which ought to be assessed objectively by reference to the factual circumstances. Beyond these preliminaries, ‘publication’ branches into a number of disparate rules. Inevitably, unauthorised acts fall short of ‘publication’; a position of some antiquity92 which finds the most eloquent expression in Article 3(3) of the Berne Convention and received its most recent exposure in HRH Prince of Wales v Associated Newspapers (publication of Prince Charles’ leaked journals).93 Excluding unauthorised acts from the meaning of ‘publication’ invites formidable questions concerning whether other vital public interests including transparent government should be outranked by copyright protection. However, the point is that authors cannot be stuck with the consequences of unauthorised first publication (which are quite significant, for instance, the immediate reduction in term,94 or the availability of some exceptions to copyright infringement)95 unless they have consented to ‘publication’. Most importantly, excluding unauthorised acts from the ambit of ‘publication’ can be justified on normative grounds.96 Disseminating a work conditionally is also excluded from the definition of ‘publication’. That rule absorbs numerous subject matter including personal correspondence,97 manuscripts,98 etchings,99 and journals100 and it remains relevant even if an unpublished work is disseminated extensively: HRH Prince of Wales v Associated Newspapers Ltd (private circulation of unpublished journals to more

90 Francis, Day & Hunter v Feldman & Co. Given that most countries are now signatories of the Berne Convention, the concept of ‘colourable publication’ has lost much of its relevance. Publication anywhere leads to protection. 91 Gardenia Flowers Inc v Joseph Markovits Inc 290 F Supp 776 (1968); Waring v WDAS Broadcasting Station 327 Pa 433 (1937). 92 CDPA s 175(6). Pope v Curll (1741) 2 Atk 342; Gee v Pritchard (1818) 2 Swanst 402; Earl of Lytton v Devey (1884) 54 LJ Ch 293 (unauthorised first publication of a husband’s letters to his estranged wife). 93 See ch 4 below for a further discussion of that point. 94 S Ricketson and JC Ginsburg, International Copyright and Neighbouring Rights: The Berne Convention and Beyond, 2nd edn (Oxford: Oxford University Press, 2006) paras 6.27–6.52; Grandma Moses Properties Inc v This Week Magazine 117 F Supp 348; Hill & Range Songs Inc v London Records Inc 142 NYS 2D 311 (1955); Sanga Music Inc v EMI Blackwood Music Inc et al 55 F 3d 756 (2nd Cir 1955); Testa v Janssen 492 F Supp 198 (1980); Stanley v CBS 221 P 2d 73. 95 CDPA ss 30(1) (criticism or review), 30(1ZA) (quotation); HRH The Prince of Wales v Associated Newspapers (No 3) [2007] 3 WLR 222 (CA). 96 See ch 5 below. 97 Pope v Curll (1741) 2 Atk 342; Gee v Pritchard (1818) 2 Swanst 402; Lytton v Devey (1884) 54 LJ Ch 293; Folsom v Marsh 9 Fed Cas 342 (CCD Mass 1841); Williams & Wilkins Company v United States 487 F 2d 1345 (1973); Hearst Corporation v Shopping Center Network Inc 307 F Supp 551 (1969). 98 Duke of Queensbury v Shebbeare (1758) 2 Eden 329; Thompson v Stanhope (1774) Amb 737. 99 Prince Albert v Strange (1849) 2 De G & Sm 293. 100 HRH The Prince of Wales v Associated Newspapers (No 3) above.

12  Introduction than 70 people).101 Substantial private circulation of a work is not ‘publication’ because the work is issued to specific persons – its author does not intend to meet the reasonable requirements of the public. For that reason, mere deposit of a thesis in a library is not equivalent to its publication.102 Ephemeral dissemination of copyright works falls outside the scope of ‘publication’.103 Its essence is that members of the public do not receive tangible copies of the work into their possession and it can easily be instantiated by public exhibitions of artistic works.104 Equally, copyright law insists that public performances of dramatic works are not ‘publication’.105 In the modern era, ephemeral dissemination extends to temporary electronic storage of random access memory copies of a digital work. The idea that tangible copies of a work have to be disseminated to the public if they are to constitute publication faces considerable pressure from changing technologies – a situation which was foreshadowed in White-Smith, an early case involving perforated piano rolls.106 The digital world contemplates dissemination of copyright works electronically. Sometimes, eliminating ephemeral dissemination of a work from the meaning of ‘publication’ renders the distinctions between published and unpublished works remarkably faint. On occasion, private circulation of a work is wholesale.107 Estate of Martin Luther King Jr v CBS Inc provides an extreme example of that possibility. Public distribution of ‘I Have a Dream’ in various media with its author’s express permission did not result in its ‘publication’.108 Non-lawyers might very well regard a speech as ‘published’ if it is legitimately accessible in different media. There were no appreciable differences between ‘ephemeral dissemination’ and ‘publication’ in Estate of Martin Luther King Jr v CBS Inc – in reality, the author actively sought to reveal the work to the public. However, artists and dramatists might, for example, choose not to publish their works because their greatest financial reward comes from income that is generated from public exhibitions or performances of their works.109 Moreover, as we have already observed, members of the public do not receive tangible copies of works which are distributed ephemerally into their possession. Another fundamental objection to equating ephemeral dissemination of a work with ‘publication’ is that authors may want to test the market for their unpublished works by performing or exhibiting them in public.

101 ibid. 102 Christie v Raddock 169 F Supp 48 (1959). 103 Berne Convention Art 3(3). 104 CDPA s 175(4); Hearst Corporation v Shopping Center Network Inc 307 F Supp 551 (1969). 105 Macklin v Richardson (1770) Amb 694; Waring v WDAS Broadcasting Station; Palmer v De Witt 47 NY 532 (1872); Estate of Martin Luther King Jr v CBS Inc 194 F 3d 1211 (11th Cir 1999). 106 White-Smith Music Pub. Co, v Apollo Co 209 US 1. 107 Eg Salinger v Random House 811 F 2d 90 (2d Cir 1987) (work was deposited in a library) and Hubbard v Vosper (1972) 2QB 84 (CA). 108 Estate of Martin Luther King Jr v CBS Inc 194 F 3d 1211 (11th Cir 1999); Burke v National Broadcasting Co, Inc 598 F 2d 688, 691. 109 Hearst Corporation v Shopping Center Network Inc 307 F Supp 551 (1969).

The Meaning of ‘Publication’  13 Such activities may trigger generous revisions of the original work before its ­eventual publication.110 Another concept, which appears in the statutes, is that of making a work ‘available to the public’.111 That notion revolves around communicating a work with its author’s consent112 and once again, it presupposes that members of the public might not necessarily receive any physical manifestations of authors’ intellectual productions into their possession. For example, public performances of dramatic works might not disseminate the prompter’s script to the public. Similarly, users might encounter unpublished paintings in public galleries but fail to receive tangible copies of these artistic works. For the sake of resolving the threshold question of whether a work has been ‘made available to the public’, the focus is on whether irrespective of its ephemerality, the work is capable of being consumed by the public in some way. The law acknowledges the fact that ‘publication’ and ‘made available to the public’ are virtually identical by insisting that these terms have equal consequences in defined contexts. For the purposes of some exceptions, for example, the meaning of ‘made available to the public’ assumes the same consequences as ‘publication’. In Britain, a work can only be criticised or reviewed or be quoted from if it has been made available to the public with its author’s permission; a provision which resembles the exceptions to infringement of copyright in published matter.113 ‘Commercial publication’ also makes an appearance in the statute book and it anticipates public demand for a work by making its copies available in advance of orders from users.114 An excellent example of that concept can be derived from making copies of a musical work available for downloading by the public in advance of its sale to the public. Whether the public places orders for copies of the work is another matter. The key element of ‘commercial publication’ is that public demand for the work can be met if necessary. It must be noted that ‘commercial publication’ does not include public performances and exhibitions or, in some defined circumstances, ‘the communication to the public of the work otherwise than for the purposes of an electronic retrieval system’.115 For that reason, ‘commercial publication’ is narrower than ‘making a work available’ to the public. These matters are complicated by the fact that initially, ‘publication’ concerned itself with the printed word. Consequently, its meaning faces serious pressure from

110 Palmer v De Witt 47 NY 532 (1872). 111 CDPA s 30(1A) implementing Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society OJ L 167, 22/06/2001 P 0010–0019, Art 5(3)(d) which in turn is based on Berne Convention Art 3(3) requiring a work to be published with its author’s consent. 112 HRH The Prince of Wales v Associated Newspapers (No 3) [2007] 3 WLR 222 (CA). 113 CDPA s 30(1A). 114 CDPA s 175(2). 115 CDPA s 175(2).

14  Introduction rapid technological advances, which have produced new methods of distributing and exploiting intellectual property. Usually, disseminating a work electronically is riven with complications because its physical copies are not issued to the public. Three possible stances to that issue are entirely possible. First, the Berne Convention stipulates that ephemeral acts fall short of ‘publication’;116 an attitude which is echoed in Article VI of the Universal Copyright Convention. Therefore, unless tangible copies of a work are distributed to the public, transmission of a work on the Internet is simply too ephemeral to be equivalent in principle to ‘publication’.117 Second, some forms of disclosure on the Internet are ‘publication’, while others are not. For example, an author might be said to ‘publish’ her work by making it available for download on the Internet. Users can then access the work, download it and make copies for their own purposes. If users can download the work and print or store it on a permanent format, including an electronic device’s hard disk drive,118 then Internet distribution becomes indistinguishable from publication of physical copies of the work. The upshot of that argument is that digital storage of copies of a work, or printing copies of it from a website, are activities which comply with Article 3(3) of the Berne Convention in the sense that such copies can be permanent. Other forms of delivery through the Internet including streaming would not be ‘publication’ because they do not involve the necessary degree of permanence. Third, public demand for a work can be met if it is ‘made available to the public’ via its digital transmission. The nub of that argument is that users need not receive tangible copies of the work. In the digital world, the computer of each member of the public to whom a work is made available for downloading may be the means for making a digital copy of the work, whether or not that copy is printed or stored. Accordingly, ‘publication’ does not turn on who makes copies of an original work. Instead, the focus should be on whether enough copies can be made with the goal of satisfying public demand for the work. As a result, posting a work on a website can fulfil the reasonable requirements of the public in the sense that its copies can be downloaded by users.119 The best view is that publication occurs on the Internet if a work can be downloaded freely or upon payment of a fee by the public. For example, if a literary work is made available for downloading by the public, then it should be deemed ‘published’. However, if a work is made available for streaming only then there is no publication because users are not authorised to download copies of the work. Of course, in common with established meanings of ‘publication’, unauthorised distribution of a work on the Internet is actionable. For instance, a work, which is leaked to the public by hackers, is not published. Apart from this, private digital dissemination

116 Berne Convention Art 3(3). 117 See RE Schechter and JR Thomas, Intellectual Property: The Law of Copyrights, Patents and Trademarks (Eagan MN, Thomson West, 2003) 81. 118 JC Ginsburg, ‘The Cyberian Captivity of Copyright: Territoriality and Authors’ Rights in a Networked World’ (1999) 15 Santa Clara Computer & High Technology Law Journal 347. 119 ibid.

Argument and Structure  15 of a work does not constitute publication – sending an email to a correspondent, for example, does not authorise its recipient to disseminate it to the public.

A Working Definition of Publication Despite the confusion in this area, a working definition of ‘publication’ is possible. In this book, I use the term ‘publication’ to refer to authorised dissemination of copies of a work with the intention of meeting the reasonable requirements of the public.120 For the sake of convenience, I will divide ‘unpublished’ material into two broad categories, namely: ‘disclosed’ and ‘undisclosed’ works. If a work is ‘published’ it is ‘disclosed’, but a work that has been ‘disclosed’ may remain ‘unpublished’. In my view, a work is ‘unpublished’ but ‘privately disclosed’ if it is disseminated conditionally to one person or to a circle of confidants. Personal letters provide the most convenient illustration of ‘privately disclosed works’121 – they are usually addressed to specific confidants. Given that disclosure is a matter of degree, unpublished dramatic and artistic works can also be disseminated to the public by their performance or exhibition;122 a state of affairs which can best be characterised as ‘public disclosure’. In contrast, a work remains ‘undisclosed’ if it is not revealed to anyone. The infamous diary in Argyll v Argyll in which Margaret Campbell, Duchess of Argyll recorded her numerous liaisons with an assortment of paramours during the subsistence of her turbulent marriage is indicative.123 The diary was ‘undisclosed’ in the sense that until it was obtained surreptitiously by the Duke of Argyll, it remained secret. The personal diary of the estranged wife in A v B elicits a similar conclusion. It was for ‘her eyes only’.124 In other circumstances, authors might draft novels or execute artistic works but keep these expressions secret. Relatively recently, Vivian Maier, a French nanny, took invaluable photographs in America, but refrained from publishing them.125 Authors of ‘undisclosed’ works may not have fixed views on future first publication of their expressions. Consequently, the distinction between ‘undisclosed’ and ‘disclosed’ works is quite malleable.

Argument and Structure It is argued that the intricacies of ‘publication’ derive from numerous contingencies. Paramount among these is historical. ‘Publication’ separated common law from 120 Berne Convention Art 3(3); CDPA s 155(1) and (2); British Northrop Ltd v Texteam Blackburn Ltd [1974] RPC 57, 67. 121 HRH Prince of Wales v Associated Newspapers (No 3) above. 122 Macklin v Richardson (1770) Amb 694. 123 Duke of Argyll v Duchess of Argyll and Anor [1962] SLT 333. 124 A v B [2000] EMLR 1007. 125 www.nytimes.com/2014/09/06/arts/design/a-legal-battle-over-vivian-maiers-work.html?_r=0.

16  Introduction statutory copyright.126 A work acquired automatic common law protection from its creation.127 As long as it remained unpublished, the work could be protected perpetually. Matters changed radically if authorised first publication of a work occurred. The act of ‘publication’ extinguished common law copyright: Grandma Moses Properties Inc v This Week Magazine et al (sale of an artistic work).128 At that juncture, the work was invested with statutory copyright provided its publication observed numerous peremptory formalities, including deposit and notice.129 Non-compliance with these formalities deprived a work of statutory and common law copyright.130 The work was thrust into the public domain and could be used freely by anyone.131 To avert that risk, artificial definitions of ‘publication’ were devised by the courts.132 In the USA, for instance, a distinction between general and limited publication has subsisted.133 Limited publication concerns private circulation of a work to a certain audience and for a defined purpose – it does not destroy common law copyright or invite statutory copyright protection.134 Conversely, general publication disseminates a work to the public. The meaning of publication also reflects the difficulties of applying a general concept to fluctuating factual and technological circumstances;135 an issue that is best examined in the context of the development of the jurisdictional bases for restraining unauthorised first publication and the abrogation of common law copyright. Initially, the rights of authors of unpublished works were limited to ownership

126 American Vitagraph Inc v Levy 659 F.2d 1023, 1027; Estate of Martin Luther King Inc v CBS Inc 194 F 3d 1211, 1214(11th CIR, 1998), Palmer v De Witt 47 NY 532, 537 (1972); Warner Brothers Pictures Inc v CBS 102 F Supp 141 (1951). 127 Estate of Martin Luther King Jr Inc v CBS Inc 194 F 3d 1211, 1214 (11th Cir 1999); Hearst Corporation v Shopping Center Network Inc 307 F Supp 551 (1969). 128 Grandma Moses Properties Inc v This Week Magazine 117 F Supp 348; Hill & Range Songs Inc v London Records Inc 142 NYS 2D 311 (1955); Sanga Music Inc v EMI Blackwood Music Inc et al 55 F 3d 756 (2nd Cir 1955); Testa v Janssen 492 F Supp 198 (1980); Stanley v CBS 221 P 2d 73. 129 Hearst Corporation v Shopping Center Network Inc 307 F Supp 551 (1969). 130 Mark Twain Case, 14 F 728 (CC ND Illinois, 1883); Public Affairs Association v Rickover 284 F 2d 262 (DC 1960); Brown v Tabb 714 F 2d 1088 (11th Cir, 1983); Ricordi v Haendler 194 F 2d 914 (1952); Holmes v Hurst 174 US 82; Metro Associated Services Inc v Webster City Graphic Inc 117 F Supp 224 (ND Iowa, 1953); National Comics Publications Inc v Fawcett Publications Inc et al, 191 F 2d 594, 598 (1951); Gardenia Flowers Inc v Joseph Markovits Inc 290 F Supp 776 (1968); Gray v Eskimo Pie Corporation 244 F Supp 785 (1965); Fashion Originators Guild of America Inc v Federal Trade Commission 114 F Supp 2d 80 (1940). 131 De Silva Construction Corp v Herrald et al 213 F Supp 184 (1962); Bell v Combined Registry Company 397 F Supp 1241 (1975); Rexnord Inc v Modern Handling Systems Inc 379 F Supp 1190 (1974); Roy Export Co. Estab of Vaduz v CBS 672 F 2d 1095 (1982). 132 Siegel v Time Warner Inc 496 F Supp 2d 1111, 1150 (2007); Hearst Corporation v Shopping Center Network Inc 307 F Supp 551 (1969); Estate of Martin Luther King Jr v CBS Inc 194 F.3d 1211 (11th Cir 1999), 1214; Brown v Tabb 714 F 2d 1088 (1983) at 1091. 133 Estate of Martin Luther King Jr v CBS Inc 194 F 3d 1211 (11th Cir 1999), 1215. 134 White v Kimmell 193 F 2d 744; William A. Meier Glass Co Inc v Anchor Hocking Glass Corp 95 F Supp 264 (1951); Rexnord Inc v Modern Handling Systems Inc 379 F. Supp 1190 (1974), Kramer v Newman 749 F Supp 542 (SDNY 1990); Letter Edged in Black Press v Public Building Commission of Chicago 320 F Supp 1303 (1970) 1309; Estate of Martin Luther King Jr v CBS Inc 194 F 3d 1211 (11th Cir 1999); Gardenia Flowers Inc v Joseph Markovits Inc 290 F Supp 776 (1968). 135 Roy Export Co. Estab of Vaduz v CBS 672 F 2d 1095 (1982).

Argument and Structure  17 of a chattel (the manuscript itself).136 Gradually, property in unpublished works shifted from ownership of chattels to authorial rights in the expressions embodied in the manuscripts. At that stage, ‘publication’ focused on unauthorised printing of copies of a whole work. Further changes in the law occurred in the nineteenth century when ‘implied contract’ and ‘breach of confidence’ became recognised as additional grounds for curtailing unauthorised first publication. This evolution was shaped by changes in the concept and importance of authorship, the facts of individual cases, improved technology and the need to supplement statutory copyright protection. It is also suggested that the earliest legislative manoeuvres involving protection of unpublished works137 harboured numerous disadvantages, thereby necessitating continued reliance on the common law.138 By 1910, protection of unpublished works in common law jurisdictions was invariably similar. A seismic shift arose from the implementation of the 1908 Berlin Revision of the Berne Convention, which dispensed with copyright’s numerous formalities.139 The need to legislate for automatic copyright protection which was generated by the Berlin Revision of the Berne Convention catalysed the abrogation of common law protection of unpublished works in Britain. The case for abolishing common law protection of unpublished works was supplemented by longstanding dissatisfaction with the fragmentation of statutory copyright law and simmering tensions surrounding imperial copyright. In Britain, the Copyright Act 1911 partially abolished common law copyright, but it preserved indefinite protection for some unpublished works.140 For its part, the USA remained wedded to the formal distinction between the protection that was available to published and unpublished works.141 Significant changes occurred in 1976 largely in consequence of various factors including the courts’ convoluted thinking on ‘publication’. However, because the 1976 Act was not retrospective, state common laws still govern protection of some unpublished works – a potent recipe for confusion and revival of copyright. The historical analysis that is deployed in this book is followed by a detailed consideration of the continued significance of ‘publication’ in copyright law. In my view, ‘publication’ still assumes front-rank importance in various areas of copyright law, including qualification for protection, extent of protection, infringement, the term of protection, remedies and exceptions. These points reside in the shadow of recent developments especially in the areas of defences to infringement of copyright in unpublished works,142 copyright duration,143 the availability of a 136 Webb v Rose [1732] 4 Burr 2330; Forester v Waller (1741) 4 Burr 2331. 137 Dramatic Literary Property Act, 1833, 3 & 4 Will IV, c 15; Publication of Lectures Act, 1835, 5 & 6 Will IV, c 65 and Fine Arts Copyright Act, 1862, 25 & 26 Vict, c 68. 138 Caird v Sime (1885) 13 R 23, Tuck and Sons v Priester (1887) 19 QBD 629. 139 Berlin Revision of the Berne Convention, Art 4. 140 In Britain, the Copyright Act 1956 did not change this aspect of copyright. The perpetual term of protection for old unpublished works was reduced by the CDPA – Sch 1 para 12(4, 5). 141 Copyright Act 1909 (USA). 142 CDPA ss 30(1) (criticism or review), 30(1ZA) (quotation). 143 Related Rights Regulations 1996 para 16 implementing Art. 4 of the Council Directive 93/98EEC OF 29 October 1993 harmonising the term of protection of copyright and certain related rights OJ L 290 pp 0009–13.

18  Introduction distribution right,144 the rules governing exploitation of orphan works, and the enactment of the Human Rights Act, which requires property and privacy rights to be balanced with other public interests.145 An account of the differences in the protection that is afforded to published and unpublished works invites a question as to whether the strong protection conferred on unpublished works is justified. Although other persuasive arguments might be available, I will consider incentive, labour, desert, and personality theories because they are standard justifications for protecting intellectual productions. I will also rely on ‘expressive autonomy’ and ‘privacy’ as additional explanations for protecting unpublished works because they illuminate the issues that are discussed in this book. It is argued that copyright in unpublished works reflects a wide range of interests of which several are key. Broadly, the economic advantages of authorised first publication, securing privacy, promoting creators’ expressive autonomy and respecting authors’ personality as encapsulated in their intellectual productions assume cardinal importance in this area. In other circumstances, authors ought to benefit from the fruits of their labour or deserve to own what they have created. The immediate corollary of the observations that are made in connection with the normative bases for protecting unpublished material is that the present arrangements for protecting ‘disclosed’ and ‘undisclosed’ works are more or less acceptable. Making any changes to that scheme would be too costly if it involved discriminating the protection that ought to be available to published and unpublished works. Although copyright law distinguishes ‘published’ from ‘unpublished’ works, it is in fact difficult to sustain the distinctions between unpublished works that will be published and those that will not, and unpublished works that are ‘disclosed’ and those that remain ‘undisclosed’. Moreover, in some circumstances, drawing a line between ‘published’ and ‘unpublished’ works is increasingly difficult to maintain or apply. At face value, all of this suggests that nothing should change. However, the justifications that are considered in the book suggest differences of detail in the form of protection which ought to be available to unpublished works. These differences imply the existence of opportunities for reforming aspects of copyright in unpublished works. For example, from an efficiency perspective, protection of ‘published’, ‘publicly disclosed’, ‘privately disclosed’ and ‘undisclosed’ works ought to be the same. Otherwise, considerable resources may need to be expended on unravelling the vagaries of ‘publication’; a matter which often produces fine distinctions between various categories of disclosure. It follows that published and unpublished works should attract the same term of protection. That argument carries the most weight in respect of old unpublished works. There is no normative or pragmatic basis for continued protection of such works. Apart from this, the defences to copyright infringement should embrace all copyright works. At the micro level, judges can identify the predominant interests that pervade the facts of individual cases and reconcile these with users’ rights.

144 CDPA 145 CDPA

s 18. s 44B.

Argument and Structure  19 The differences between ‘publicly disclosed’ and ‘published’ works are wholly unsustainable. A work that is disclosed to the public via its performance or exhibition is, for all intents and purposes, published. In common with ‘published’ works, the public interacts with ‘publicly disclosed’ works with their authors’ permission. Two British defences to copyright infringement recognise the parity of ‘publicly disclosed’ and ‘published’ works – these can be criticised or reviewed or be quoted from.146 Although members of the public do not receive tangible copies of publicly disclosed works into their possession, such dissemination ought to be treated as ‘publication’. Courts ought to focus on the act of authorised disclosure of a work to the public. If a work is disclosed to the public with its author’s consent then it is published. According to that analysis, infractions into ‘publicly disclosed’ works ought to be treated as interferences with authors’ exclusive rights. The case for revamping some of the rules concerning copyright in unpublished works is made stronger by the fact that the old historical pressures that necessitated the distorted meanings of ‘publication’ have since subsided. Although formalities are vestigial in some jurisdictions,147 for the most part, copyright protection is now automatic. Given that various historical contingencies are no longer relevant, there ought to be uniform protection for all works. Fundamentally, there are numerous additional bases for protecting unpublished works – a factor which might explain why implied contract and breach of confidence never truly flourished as useful means for protecting copyright works in the USA – a distinct privacy regime took root in that jurisdiction.148 Moreover, the climate within which unpublished works exist is changing. Other fundamental freedoms loom large.149 In terms of the most immediate reforms, I will consider two persistent problems which arise in the context of unpublished works, namely, exceptions to, and duration of protection. The wide range of materials and interests that are implicated by copyright in unpublished works suggests two things. Firstly, there ought to be a general fair-use defence to claims for copyright infringement in those countries which remain wedded to a plethora of copyright exceptions. That change ought to be accompanied by a purposive interpretation of copyright defences. In that connection, judges ought to explore the interests that arise from unauthorised first publication in order to accommodate conflicts between protecting authors and users’ rights. It is also suggested that there is a strong case for truncating the duration of copyright in old unpublished material. In addition, current orphan works initiatives do not go far enough: they are unduly restrictive. These initiatives might require international co-operation – some of the rules on publication are derived from multilateral treaties. Moreover, any reforms ought to be technologically neutral. It is to this discussion that we now turn. 146 Eg CDPA s 30(1A). 147 See, for example, the requirement of ‘notice’ in the Copyright Act 1976 (USA) §104A. 148 See Restatement (Second) of Torts § 652D (1977). 149 Eg Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA); Imutran v Uncaged Campaigns Ltd [2001] 2 All ER 385; HRH The Prince of Wales v Associated Newspapers [2008] Ch 57 (CA); BBC Petitioners (2012) SLT 476; Harper & Row v Nation Enterprises 471 US 539 (1985).

2 A History of the Jurisdictional Bases for Restraining Unauthorised First Publication Introduction A cardinal feature of the rich academic literature on the history of copyright law is that it focuses almost entirely on published works.1 True, famous and notable exceptions to that proposition are in existence, including Samuel Warren and Louis Brandeis’ claim that common law rights in unpublished works were a prominent device for securing authors’ privacy.2 There have also been fleeting excursions into some of the leading cases within the contexts of the educational value of eighteenth-century letters,3 the emergence and development of the concept of authorship,4 the copyright term,5 the nature of early Chancery injunctions6 and the

1 Eg A Birrell, Seven Lectures on the Law and History of Copyright in Books (London, Cassell & Co, 1899); H Ransom, The First Copyright Statute, An essay on An Act for the Encouragement of ­Learning (Austin TX, University of Texas Press, 1956); B Kaplan, An Unhurried View of Copyright (New York, Columbia University Press, 1967); LR Patterson, Copyright in Historical Perspective (Nashville KT, Vanderbilt University Press, 1968); J Feather, A History of British Publishing (London, Routledge, 1988); D ­Saunders, Authorship & Copyright (London, Routledge, 1992); C Seville, Literary Copyright Reform in Early Victorian England: The Framing of the 1842 Copyright Act (Cambridge, Cambridge University Press, 1999); R Deazley, On the Origin of the Right to Copy: Charting the Movement of Copyright Law in Eighteenth Century Britain (1695–1775) (Oxford, Hart Publishing, 2004); I Alexander, Copyright Law and the Public Interest in the Nineteenth Century (Oxford, Hart Publishing, 2010); WR Cornish, ‘Copyright’ in WR Cornish, JS Anderson et al, The Oxford History of the Laws of England, 1820–1914, Vol XIII (Oxford, Oxford University Press, 2010) Pt V ch II. 2 SD Warren and LD Brandeis, ‘The Right to Privacy’ (1890–91) 4 Harvard Law Review 193. 3 H Ransom, ‘The Personal Letter as Literary Property’ (1951) 30 Studies in English 116. 4 M Rose, Authors and Owners: The Invention of Copyright (Cambridge MA, Harvard University Press, 1993) ch 4. 5 Cobbett’s Parl History of England, 1066–1803 (London, 1813), vol 17, cols. 953–1003; R Deazley, On the Origin of the Right to Copy above. 6 Eg J Parker, ‘An Inquiry into The Jurisdiction of the Court of Chancery to Restrain the Publication of Letters’ (1853) 8 The American Law Register 449; GE Brand, ‘Common Law “Property in Notion”’ (1912) 1 Bench & Bar (New Series) 100; T Gomez-Arostegui, ‘What History Teaches Us About Copyright Injunctions and the Inadequate-Remedy-At-Law Requirement’ (2008) 81 Southern California Law Review 1197.

Introduction  21 relevance of Prince Albert v Strange to various branches of the law.7 ­Nevertheless, there is a marked absence of systematic research devoted to the history of copyright in unpublished works. This chapter attempts to fill that gap by providing an account of the grounds for repelling unauthorised first publication; a matter which has hitherto escaped sustained scrutiny. Its principal aim is to afford a framework for understanding the interests that underpin unpublished matter, the continued significance of ‘publication’ in contemporary copyright law, and with this, the distinction between ‘published’ and ‘unpublished’ works. It is argued that the basis for rights in unpublished works metamorphosed from ownership of the manuscript as a chattel, later to an idea of authorial property in the intellectual creation embodied in the manuscript and then, in the nineteenth century, to the trio of theories: common law copyright, implied contract, and breach of confidence. The chapter highlights the fact that historically, protection of unpublished works was not only conceived in terms of ‘copyright’ but also ‘implied contract’ and ‘breach of trust or confidence’. These developments and, in turn, the different meanings of ‘publication’, reflected a plethora of contingencies including changes in the concept and importance of authorship, the facts of individual cases, and the need to supplement statutory copyright protection. Separately, the subject matter of rights in unpublished works also shifted markedly. At first, the law focused on unauthorised printing of letters and other manuscripts. Gradually, technological and economic demands extended protectible subject matter considerably. It is also suggested that rights in unpublished works countenanced very narrow exceptions. Although the social utility of personal correspondence was sometimes bandied about,8 initially, ‘property’ rights in unpublished works were absolute. With time, the law adapted in response to the parties’ conduct and, at face value, recognised several defences to common law rights in unpublished works. The central concern was that unpublished works ought to be produced in judicial proceedings; a point that placed a premium on the ‘best evidence’ rule.9 Various cases also implied that unpublished works could be a useful implement for vindicating one’s reputation.10 However, that defence was never pleaded successfully. Beyond that, protection of unpublished works potentially encompassed ideas: Prince Albert v Strange and Gilbert v Star Newspaper.11

7 Prince Albert v Strange (1849) 2 De G & Sm 652; L Bently, ‘Prince Albert v Strange’, in C Mitchell and P Mitchell (eds), Landmark Cases in Equity (Oxford, Hart Publishing, 2012) 235. 8 Pope v Curll (1741) 2 Atk 342. 9 Hopkinson v Burghley (1867) LR 2 Ch App 447. 10 Perceval v Phipps 2 V & B 26; Gee v Pritchard (1818) 2 Swanst 402, Earl of Lytton v Devey (1884) 54 LJ Ch 293; Labouchere v Hess (1898) 77 Law Times 559. 11 Gilbert v Star Newspaper (1894) 11 TLR 4.

22  The Jurisdictional Bases for Restraining Unauthorised Publication Another argument that is advanced in the chapter is that any references to ‘privacy’ in the earliest cases were apocryphal.12 Common law rights in unpublished works developed in an environment in which contemporary notions of privacy were notable for their absence. In addition, the action for breach of confidence had not assumed its modern form – judges routinely referred to that regime without spelling out its core ingredients.13 In fact, whether the courts were basing their decisions on breach of ‘trust’ or ‘confidence’ remains unclear – these terms were employed interchangeably. A precise articulation of the overarching features of the action for breach of confidence took place much later.14 Quite apart from this, the earliest attempts at codifying protection of aspects of copyright in unpublished works15 possessed numerous drawbacks, which engendered continued reliance on the common law.

The Rights of Authors of Unpublished Manuscripts Prior to the Enactment of the Statute of Anne No single event triggered the evolution of the grounds for restraining unauthorised first publication. The law developed in response to the facts of the cases brought before the courts – a somewhat haphazard driver for change. The shift in emphasis from ‘property’ in the manuscript as a chattel to ‘property’ in the intellectual creation embodied in the manuscript – from physical to intangible ‘property’ – was directed by a desire to protect authors as such, which in turn reflected the changing views of what authorship entailed and how it should be treated by the law.16 However, whether the changing conception of authorship was the dominant factor (as opposed to, say, the growth of a reading public, increased wealth, increased demand for books (and thus manuscripts)), is difficult to say. There is no exact starting point for analysing the rights of authors of ­unpublished works – the law did not develop lineally. Nevertheless, for our purposes, the year 1557 is convenient because it marked the grant of a Royal Charter to the Stationers’ Company – a guild in the City of London which monopolised the book

12 Eg Prince Albert v Strange above. 13 Perceval v Phipps above; Gee v Pritchard above, Earl of Lytton v Devey above and Abernethy v Hutchinson, 1 H & Tw 28. 14 For the elements of the modern form of breach of confidence see Saltman Engineering Company v Campbell Engineering Company Limited (1948) 65 RPC 203 (CA) and Coco v AN Clark (Engineers) Limited [1969] RPC 41. 15 Dramatic works, unpublished lectures, and artistic works received statutory copyright protection via the Dramatic Literary Property Act, 1833, 3 & 4 Will IV, c 15; Publication of Lectures Act, 1835, 5 & 6 Will IV, c 65 and Fine Arts Copyright Act, 1862, 25 & 26 Vict, c 68 respectively. 16 See M Rose, Authors and Owners above, ch 4.

The Rights of Authors Prior to the Statute of Anne  23 trade in England17 and kept vital records18 offering useful insights into authors’ rights before the enactment of the Statute of Anne – the first copyright act.19 Several examples from those records are pertinent. On 4 March 1615, for instance, James Pagett, an author and member of the Middle Temple, sold ‘[a] certaine number of bookes Called A promptuarye or Repertorye of the yeare books of the Comon Lawe of Englande’ for £300.20 Similarly, in 1619, the Court of Assistants ordered Thomas Jones and Lawrence Chapman, to compensate a deceased author’s widow for unauthorised printing of a manuscript.21 In addition, on 10 August 1632, an entrance in the register in favour of John Waterson was ‘crost out by his owne consent and resigned to the Author’.22 Two sanctions were available for unauthorised printing of books, namely, cancellation of an entry in the register book of the Stationers’ Company and payment of compensation to the manuscript owner. For example, on 6 December 1625, an entry in the register was cancelled and the copy was left to the manuscript owner ‘to dispose of to some other of the Company to whom he will’.23 Moreover, on 19 January 1632, a Mr Harrison was forced to pay compensation and relinquish his rights in a work which he had printed without its author’s consent,24 while in 1602, two members of the Stationers’ Company were ordered to pay ‘all charges as well to the author as otherwise to be equally borne betweene them pte and pte like’ for unauthorised printing of the English Schoolmaster.25

17 For a history of the Stationers’ Company see E Arber (ed), A Transcript of the Registers of the Company of Stationers of London, 1554–1640 AD (London, Private Publisher, 1875) Vol 1, xxviii; HG Aldis, The Printed Book (Cambridge, Cambridge University Press, 1916); WW Greg and E Boswell (eds), Records of the Stationers’ Company 1576 to 1602 (London, Bibliographical Society, 1930); HG Pollard, ‘The Company of Stationers before 1557’ (1937–38) 18 Library 1; C Blagden, The Stationers’ Company: A History, (Palo Alto CA, Stanford University Press, 1965); J Feather, A History of British Publishing above. The rules of the Stationers’ Company reserved ownership of copies to members of the Company and ‘copyright’ was obtained by entrance into the register book of the Company. In addition, members of the Company could transfer their rights. See W Jackson (ed), Records of the Court of the Stationers’ Company 1602 to 1640 (London, Bibliographical Society, 1957) Court Book C, 31; LR Patterson, Copyright in Historical Perspective above, 5; J Feather, Publishing, Piracy and Politics: An Historical Study of Copyright in Britain (London, Mansell, 1994) 18. 18 The records of the Stationers’ Company were transcribed by various authors including E Arber above; WW Greg and E Boswell above; and W Jackson above. 19 Copyright Act 1710 8 Ann c 21. 20 W Jackson (ed), Records of the Court of the Stationers’ Company Court Book C above, 82. James Pagett, Thomas Ashe, and Sergeant Jones authored the yearbooks. 21 W Jackson (ed), Records of the Court of the Stationers’ Company Court Book C above, 119. 22 E Arber (ed), A Transcript of the Registers of the Company of Stationers Vol IV above, 282. 23 ibid, 123. 24 W Jackson (ed), Records of the Court of the Stationers’ Company above Court Book C, 191 and 245. In addition, on 10 August 1632, an entrance in the register in favour of John Waterson was ‘crost out by his owne consent and resigned to the Author’. See E Arber (ed), A Transcript of the Registers of the Company of Stationers Vol IV above, 282. 25 WW Greg and E. Boswell (eds), Records of the Stationers’ Company above at 88.

24  The Jurisdictional Bases for Restraining Unauthorised Publication At face value, these records suggest that authors had clearly defined rights in their published or unpublished manuscripts. Nevertheless, a degree of caution must be exercised – the nature of authors’ rights before 1710 is riven with n ­ umerous uncertainties. As Harry Ransom aptly observed several centuries later, ‘[d]uring this period a precise definition of the author’s legal significance was not written into law’.26 Similarly, Alvin Kernan noted that: Once entered and printed … perpetual rights under common law were vested in the bookseller or printer who made the entry, – the majority [of authors] do not seem to have conceived of their work as property of which they were the legal owners.27

In our context, the records are consistent with the view that authorial consent was required before a stationer could print a work. However, these instances are equally in keeping with a requirement that the permission of the owner of a chattel was given before it was printed. Whether authors had intangible rights in their works, as opposed to rights in the manuscripts they wrote as chattels, is inconclusive; a problem that is compounded by the fact that at that stage, the law on chattels was also evolving and sometimes extended to ‘material’ which would offend modern sensibilities – slaves were species of personal property.28 The better view is that any rights authors had in their unpublished works were based on ownership of a chattel and these rights were completely extinguished upon transfer of the manuscript by sale or other means.29 As Mark Rose observed: the bookowner’s property was not a right in the text as such but in the manuscript as a physical object made of ink and parchment. Moreover, the rights of the bookowner had nothing to do with authorship.30

That claim can be supported by the socio-economic position of authors during the sixteenth and seventeenth centuries. Of course, some plays were bought and paid for during this period, and many famous and powerful playwrights wrote independently,31 but the stark reality is that, for centuries, authorship was rooted in patronage.32 Besides, the form of the Stationers’ ‘copyright’ meant that authors did not enjoy any meaningful rights. Copyright was the preserve of the booksellers

26 H Ransom, The First Copyright Statute, An essay on An Act for the Encouragement of Learning (Austin TX, Texas University Press, 1956) 11, 47–48. See also HG Aldis, ‘The Book Trade’ above at 446–47; EH Miller, The Professional Writer in Elizabethan England (Cambridge MA, Harvard U ­ niversity Press, 1959) 137; LR Patterson, Copyright in Historical Perspective above at 5. See also B Kaplan, An Unhurried View of Copyright above at 5 and J Feather, Publishing, Piracy and Politics above at 4. 27 A Kernan, Printing Technology, Letters and Samuel Johnson (Princeton NJ, Princeton University Press, 1987) 98–99. 28 Somerset v Stewart (1772) 98 ER 499. 29 B Kaplan, An Unhurried View of Copyright at 5; J Feather, Publishing, Piracy and Politics above at 4. 30 M Rose, Authors and Owners: The Invention of Copyright above at 9. 31 P Korshin, ‘Types of Eighteenth-Century Literary Patronage’ (1974) 7 Eighteenth Century Studies 453. 32 DH Griffin, Literary Patronage in England, 1650–1800 (Cambridge, Cambridge University Press, 1996); E Andrew, Patrons of Enlightenment (Toronto, University of Toronto Press, 2006) for a general discussion of the system of patronage during this period.

The Evolution of ‘Property’ for Restraining Unauthorised Publication  25 and printers.33 Given that the concept of authorship was still embryonic, the rights attaching to published or unpublished manuscripts might have been confined to ownership of a chattel. The argument that the rights of authors of unpublished manuscripts were uncertain during the subsistence of the Stationers’ copyright may also be inferred from the provisions of the Statute of Anne. Unpublished works were clearly absent from that statute. A possible explanation for that omission might be that unpublished works were too insignificant to warrant statutory intervention – the Statute of Anne dealt with more pressing matters, including regulating the book trade.34 In addition, although the statute mentioned authors’ rights, such references might have been a by-product of various booksellers’ lobbying tactics.35 Placing the mendicant author at the heart of any lobbying campaign was bound to elicit some sympathy from the legislature; an outcome that would be favourable to booksellers who ultimately owned copyright in printed books. There is considerable merit in that argument. At that stage, ‘authorship’ was still evolving – its later consolidation was a result of incremental responses to numerous factors including the growth of a ‘reading public’,36 romanticisation of the creative process,37 the ‘literary property debate’,38 and significant advances in printing technologies.39 Nevertheless, the chief irony of excluding unpublished works from the statutory framework was that until the House of Lords’ judgment in Donaldson v Beckett, the Statute of Anne was a good ground for curbing unauthorised first publication.40

The Evolution of ‘Property’ as a Ground for Restraining Unauthorised First Publication The period after 1710 witnessed the evolution of ‘property’ as the principal basis for restraining unauthorised printing of manuscripts. The early eighteenth-century 33 HG Aldis, ‘The Book Trade, 1557–1625’ above at 446–47; EH Miller, The Professional Writer in Elizabethan England above at 137; H Ransom, The First Copyright Statute above at 11 and 47. 34 See R Deazley, On the Origin of the Right to Copy above; J Feather, Publishing, Piracy and Politics above; LR Patterson, Copyright in Historical Perspective above; M Rose, Authors and Owners above; for an analysis of the history of the Statute of Anne. The objectives of the Statute of Anne are of considerable debate. For example, there is an argument that the Statute was aimed at strengthening the position of the London booksellers (J Feather, Publishing, Piracy and Politics above, 62); that it regulated the book trade (LR Patterson, Copyright in Historical Perspective above, 13 and 51) and that it fostered learning (R Deazley, ‘The Myth of Copyright at Common Law’ (2003) 62 CLJ 106, 108). 35 A Birrell, Seven Lectures on the Law and History of Copyright in Books above, ch 3. 36 AS Collins, ‘The Growth of the Reading Public in the Eighteenth Century’ (1926) 2 The Review of English Studies 284 and 428. 37 J Feather, ‘From Rights in Copies to Copyright: The Recognition of Authors’ Rights in English Law and Practice in the Sixteenth and Seventeenth Centuries’ in M Woodmansee and P Jaszi (eds) The Construction of Authorship: Textual Appropriation in Law and Literature (London, Duke University Press, 1999) 191. 38 R Deazley, On the Origin of the Right to Copy above. 39 DH Griffin, ‘The rise of the professional author’ in MF Suarez and ML Turner (eds), The Cambridge History of the Book 1695–1830, Vol V (Cambridge, Cambridge University Press, 2009) 132. 40 See below.

26  The Jurisdictional Bases for Restraining Unauthorised Publication cases (Webb v Rose,41 Forrester v Waller42 and Pope v Curll)43 are ambiguous – it is not clear whether the court is issuing injunctions based on property in the manuscript as a chattel or on the basis of an author’s right in the intangible work. During the ‘literary property debate’, however, the authorial basis of the argument became clear – in the context of claims to perpetual rights in published (Millar v Taylor)44 as well as unpublished works (Macklin v Richardson).45 The decision in Donaldson v Beckett (indicating that where a work was published, the Statute of Anne was the sole source of any rights) left the status of rights in unpublished works once more unclear. However, after 1774, the courts seem to have understood rights in unpublished works as grounded in authorship, not merely based on ownership of the manuscript as a chattel (Thompson v Stanhope).46 The language that was deployed in the earliest cases on unauthorised printing of manuscripts was one of ‘property’. That rhetoric might have represented the procedural requirements for bringing claims in the Court of Chancery – an injunction was only available if a plaintiff ’s rights were recognised at law.47 Authors might have routinely averred that they had ‘property’ rights in their manuscripts in order to surmount that procedural hurdle. However, the nature of that ‘property’ was obscure – it might have been equivalent to ownership of manuscripts as chattels or intangible authorial rights in a work. The latter suggestion derives some support from authors’ reliance on the Statute of Anne when vindicating their rights. Although that statute said nothing on the subject of unpublished works, it ‘recognised’ authors’ rights. Nevertheless, that claim is too high. As we have already noted, the inclusion of authors in the Statute of Anne might have reflected booksellers’ successful lobbying tactics. References to the plight of authors potentially curbed encroachments into booksellers’ existing privileges.48 An implication of that view is that reliance on authorial rights to prevent unauthorised printing

41 Webb v Rose (1732) 96 ER 184. For a fuller discussion of the case see R Deazley, On the Origin of the Right to Copy above at 69–70. 42 Forrester v Waller (1741) 4 Burr 2331. See also R Deazley above. 43 Pope v Curll (1741) 2 Atk 342. 44 Millar v Taylor (1769) 4 Burr 2303. 45 Macklin v Richardson (1770) Amb 694. 46 Thompson v Stanhope (1774) Amb 737. 47 The Court of Chancery granted an injunction until answer if the plaintiff ’s right appeared to be clear. A defendant could move to have the injunction dissolved by filing an answer to the plaintiff ’s bill of complaint. The Court could then continue the injunction until the hearing or dissolve the injunction and ask the plaintiff to establish his rights at law. See RH Eden, A Treatise on the Law of Injunctions (London, Joseph Butterworth and Son, 1821) 325 and 329. Of course, the Court of Chancery had exclusive jurisdiction in some matters. See G Spence, The Equitable Jurisdiction of the Court of C ­ hancery (London, Steven & Norton, 1846); DM Kerly, An historical sketch of the equitable jurisdiction of the Court of Chancery: being the Yorke prize essay of the University of Cambridge for 1889 (Cambridge, Cambridge University Press, 1890) for a discussion of the general jurisdiction of the Court of Chancery. For a recent commentary on the nature of chancery injunctions see T Gomez-Arostegui, ‘What History Teaches Us About Copyright Injunctions and the Inadequate-Remedy-At-Law Requirement’ (2008) 81 Southern California Law Review 1197. 48 See R Deazley, On the Origin of the Right to Copy above at 69.

The Evolution of ‘Property’ for Restraining Unauthorised Publication  27 of manuscripts was entirely fortuitous. At that stage, authors’ rights were quite rudimentary at best. Webb v Rose49 provides the first instance in which ‘property’ was used to repel unauthorised printing of unpublished manuscripts. In that case, Richard Webb, a barrister, prepared various conveyancing precedents. Upon his death, the precedents came into Robert Southern’s possession, before they were transferred to Edward Rose and John Talbot. Webb’s son, William, sought an injunction preventing Rose from printing the precedents based on his ‘property’ in the manuscripts. Sir Joseph Jekyll MR50 granted an injunction and ordered the separation of Webb and Southern’s precedents. Although Sir Joseph Jekyll MR’s reasons for granting the interlocutory injunction are unknown, Webb v Rose seems to be principally concerned with recovering and distributing the conveyancing precedents as part of a deceased person’s chattels; an argument which is bolstered by physical separation of the precedents.51 Nevertheless, the absence of a detailed report of the Master of the Rolls’ reasoning means that it is impossible to determine whether Webb v Rose involved property rights in the precedents as chattels or intangibles. Forrester v Waller marked a slight but significant departure from Webb v Rose52 in that it records the first occasion on which an author relied on both the common law and the Statute of Anne to prevent unauthorised first publication.53 In that case, Alexander Forrester,54 a prominent barrister, wrote reports on various Chancery cases. The reports were loaned to a fellow barrister, whose clerk, Ridge copied and sold them to Waller, a bookseller. Waller decided to print the reports. Forrester sought to restrain Waller from printing the reports and argued that ‘by means of his being the sole proprietor thereof and by virtue of an Act of Parliament … no person whatsoever ought to print or publish’ the manuscript without his consent.55 Once again, there is no record of the court’s reasoning. Naturally, Forrester might have put everything he could in his bill of complaint, including references to the Statute of Anne, hoping that one cause of action would prevail. ‘Sole proprietorship’ appears to be concerned with rights in chattels. On that basis, Forrester v Waller can be understood as affirming the rights of manuscript owners to prevent unauthorised printing of their chattels. However, Forrester might have claimed that he was exercising his rights as an author of the reports, rather than because he owned the paper and ink constituting the manuscripts. In the end, Lord Chancellor Hardwicke56 granted an interlocutory injunction and the matter

49 Webb v Rose (1732) 96 ER 184. 50 Sir Joseph Jekyll (1663–1738) was a barrister, judge and Whig politician. 51 R Deazley, On the Origin of the Right to Copy above at 70. 52 Forrester v Waller (1741) 4 Burr 2331. 53 Given that the injunction in Forrester v Waller was interlocutory and that the report of Forrester v Waller was cursory, the plaintiff ’s reliance on the Statute of Anne in that case ‘remained unexplored’. See R Deazley, On the Origin of the Right to Copy above at 70. 54 Alexander Forrester (c 1711–2 July 1787) was a Member of Parliament as well as a barrister. 55 Forrester v Waller (1741) 4 Burr 2331. 56 Philip Yorke, 1st Earl of Hardwicke (1690–1764) was a politician and lawyer.

28  The Jurisdictional Bases for Restraining Unauthorised Publication was not argued further. Later, matters took a different turn and the reports were published with Forrester’s consent.57 A notable feature of Forrester v Waller is that it exhibited the ‘public goods’ characteristics of copyright works.58 Exploitation of intellectual productions might not interfere with the author’s physical possession or enjoyment of the original work. In our case, Forrester’s chattel property in the physical manuscripts was intact – the reports remained in his friend’s possession. However, although Forrester’s representative had the original works, copies of these were printed. A seismic moment in the development of the nature of the property rights in unpublished works and the concept of authorship occurred in Pope v Curll.59 In that seminal case, Alexander Pope60 filed a bill of complaint in Chancery seeking to restrain Edmund Curll61 from printing Pope’s letters to and from Dean Swift62 and others. Pope’s motives for suing Curll were complex. A deep-seated vendetta between the two, which included poisoning, simmered.63 Alternatively, Pope tricked Curll into printing the letters because he wanted to profit from publishing an authorised version of his correspondence. During that period, it would have been distasteful and vain for an author to publish his own letters.64 Apart from this, Pope may have believed that Curll’s edition of the letters would possess numerous inaccuracies which would harm his creative reputation65 – a fear which was rooted in the technological limitations of the printing industry as well as deliberate and unauthorised inclusion of additional materials into printed books.66 Pope’s claim was framed ambiguously. As with Forrester v Waller, Pope’s bill of complaint, which was drafted by William Murray, later Lord Mansfield,67 was premised on both the ‘common law’ and the Statute of Anne. Curiously, Pope attempted to restrain unauthorised printing of both sets of letters.68 By maintaining that he had rights over his own letters and the letters that were addressed to him, 57 See WH Bryson (ed) Alexander Forrester’s Reports (1732–1739) (New York, William S Hein & Co, 2006) 11. 58 For the meaning of ‘public goods’ see JR Minasian, ‘Television Pricing and the Theory of Public Goods’ (1964) 7 Journal of Law and Economics 71. 59 Pope v Curll (1741) 2 Atk 342. 60 Alexander Pope (1668–1744) was a poet. 61 Edmund Curll (c 1675–1747) was a notorious bookseller who sometimes printed pornographic and other borderline works. See P Baines and P Rogers, Edmund Curll, Bookseller (Oxford, Oxford University Press, 2007) 246–76 (examining Curll’s life and his numerous skirmishes with Alexander Pope). 62 Jonathan Swift (1667–1745) was an author and later became Dean of St Patrick’s Cathedral, Dublin. 63 P Rogers and P Baines, Edmund Curll, Bookseller above. 64 M Rose, ‘The Author in Court: Pope v. Curll (1741)’ (1992) 21 Cultural Critique 197. 65 A Pope, A Narrative of the Method by which Mr Pope’s Private Letters were procured and published by Edmund Curl, Bookseller; reprinted in R Cowler (ed), The Prose Works of Alexander Pope, Vol II: The Major Works, 1725–1744 (Oxford, Basil Blackwell, 1986) 327. 66 See DJ McKitterick, Print, Manuscript and the Search for Order 1450–1830 (Cambridge, Cambridge University Press, 2003) 187–204. 67 William Murray, 1st Earl of Mansfield (1705–93) was a British barrister, politician and judge. 68 See M Rose, Authors and Owners: The Invention of Copyright above, Appendix A pp 145–52 for Alexander Pope’s bill of complaint, Edmund Curll’s answer, and Lord Chancellor Hardwicke’s judgment.

The Evolution of ‘Property’ for Restraining Unauthorised Publication  29 Pope seemed to be suggesting that he had chattel property over the two ­categories of correspondence. ‘Authorship’ could not support an injunction preventing publication of the letters that were received by Pope – he did not write them. To worsen matters, Pope did not state why he thought the Statute of Anne applied to his case. The bill of complaint merely says that as the ‘sole author of the said letters’, Pope ‘hath the sole and absolute right of printing, reprinting, vending and selling the same as he should think fit’.69 Pope might have relied on the Statute of Anne because he had parted with the letters he wrote to his correspondents – they were no longer his chattels; a point that was canvassed in Curll’s answer.70 Lord ­Hardwicke heard the case and ruled that Pope retained the right to determine printing of his own letters. In Lord Hardwicke’s judgment, the recipient of a personal letter had a ‘special property’ in the letter in that: possibly the property of the paper may belong to him; but this does not give a license to any person whatsoever to publish them to the world, for at most the receiver has only a joint property with the writer.71

That statement yields two interpretations. First, although the bundle of rights was being divided up when Lord Hardwicke recognised the recipient as the owner of the letter but allowed the author to retain some right so that the recipient just has a ‘special property’ in the letter, the Lord Chancellor’s thinking seems to have been built around property in things. Secondly, Pope v Curll extended ‘property’ in unpublished manuscripts beyond ownership of the physical embodiment of the work. As Mark Rose stated: In Hardwicke’s decision, the author’s words have in effect flown free from the page on which they are written. Not ink and paper but pure signs, separated from any material support, have become the protected property.72

The basis for property rights in unpublished works moved from ownership of the physical manifestation of the work to ownership of the expressions in the work; from the tangible to the intangible. One possible explanation for that change is that by the time Pope v Curll was decided, there was a gradual recognition of the position that authors were entitled to determine first publication of their works. The gradual ‘professionalisation’ of authorship might have been prompted by a growing demand for published output which in turn required a greater recognition of authors’ rights. As Mark Rose stated: Before authors could become professionals, however, a certain level of production and consumption of printed materials had to be attained, and this … did not occur until the eighteenth century.73

69 ibid. 70 M

Rose, Authors and Owners above, 150. v Curll (1741) 2 Atk 342. 72 M Rose, Authors and Owners: The Invention of Copyright above at 65. 73 ibid at 5. 71 Pope

30  The Jurisdictional Bases for Restraining Unauthorised Publication However, the metamorphosis of authorship might have been accidental – it depended in large part on the peculiarities of the facts of individual cases and the interaction between the practices of the Stationers’ Company and the Statute of Anne. During that period, the nature of ‘copyright’ in published or unpublished works was quite fluid;74 an argument which is complicated by the possibility that the earliest precedents on common law copyright might not have been concerned with ‘property’ at all. Instead, the Court of Chancery was merely ‘exercising its fundamental jurisdiction to enjoin conduct contrary to conscience’.75 According to that analysis, publishing another’s work without his consent was equivalent in principle to unconscionable behaviour. However, the pleadings referred to ‘property’ thereby suggesting that other, more practical matters were often at stake. Lord Hardwicke’s judgment was also influenced by the instructional nature of eighteenth-century personal letters. In his view: It is certain that no works have done more service to mankind, than those which have appeared in this shape, upon familiar subjects, and which perhaps were never intended to be published; and it is this makes them so valuable; for I must confess for my own part, that letters which are very elaborately written, and originally intended for the press, are generally the most insignificant, and very little worth any person’s reading.76

The nub of that observation is that authors were likely to offer candid advice to their correspondents if their letters remained private.77 The opportunities for disseminating such useful letters were enhanced by the fact that by the time Pope v Curll was decided, postal services had expanded.78 Several points can be drawn from the three preceding cases. First, the meaning of ‘publication’ began to assume its modern form. Authorised publication could only take place with the author’s consent. Separately, although ‘publication’ was initially concerned with printing of the whole original work, following Forrester v Waller, it encompassed printing copies of the original. Significantly, conditional dissemination of a work did not amount to its ‘publication’ (Pope v Curll). Secondly, the remedies for unauthorised first publication included injunctions and accounts for profits. Thirdly, although Lord Hardwicke recognised the significance of personal correspondence to learning, protection of unpublished works was absolute. Exceptions to common law copyright emerged in the early nineteenth century. These developments occurred in an environment in which the subject matter covered by the Statute of Anne was unsettled. In Pope v Curll, 74 M Rose, Authors in Court: Scenes from The Theatre of Copyright (Cambridge MA, Harvard ­University Press, 2016) 11–36. 75 RG Hammond, ‘The Origins of the Equitable Duty of Confidence’ [1979] Anglo-American Law Review 71, 74. 76 ibid. 77 H Ransom, ‘The Personal Letter as Literary Property’ (1951) 30 Studies in English 116, 118–19 (discussing the educational value of eighteenth-century letters); ET Bannet, Empire of Letters: Letter Manuals and Transatlantic Correspondence, 1688–1820 (Cambridge, Cambridge University Press, 2005) 3–8. 78 H Robinson, The British Post Office: A History (Princeton NJ, Princeton University Press, 1948) 64.

The Evolution of ‘Property’ for Restraining Unauthorised Publication  31 for e­ xample, questions on the desirability of protecting personal letters by copyright were raised; a point which resurfaced much later in Lord and Lady Perceval v Phipps79 and Gee v Pritchard.80 ‘Property’ rights in unpublished works evolved incrementally and in response to the unusual features of the cases before the courts. One such case was Duke of Queensberry v Shebbeare,81 which involved Edward, Earl of Clarendon’s the History of the Reign of Charles the Second, from the Restoration to the year 1667. Volume two of that unpublished work was given to Francis Gwynne, a Welsh politician. John Shebbeare, a political satirist obtained the manuscript from Francis Gwynne and decided to print it. After Edward’s death, any rights in the work passed to his son, Henry. The plaintiff, an executor of Henry, Earl of Clarendon’s estate, successfully sought an injunction restraining Shebbeare from printing the manuscript. Lord Keeper Henley stated that: it was not to be presumed that Lord Clarendon, when he gave a copy of his work to Mr Gwynne, intended that he should have the profit of multiplying it in print; that Mr Gwynne might make every use of it, except that.82

The record of the court’s reasoning was very brief. Duke of Queensberry v ­Shebbeare might have simply confirmed the principle that a manuscript was a chattel, which must be printed with its author’s consent. However, that argument is not consistent with the fact that the original manuscript was destroyed in a fire.83 In my view, because the chattel no longer existed, the Earl of Clarendon’s executor was exercising an authorial prerogative, namely the right to publish the work first. That right did not depend on possession of the original physical manuscript.84 Duke of Queensbury v Shebbeare also confirmed the rule that the author’s ‘intention’ is pivotal to authorised first publication – a proposition which underpins contemporary copyright law.85 Moreover, the case supplies the principle that authorial rights in unpublished works can be transferred according to the general laws of succession. Property rights in unpublished works developed in an environment in which the nature and limits of copyright were hotly contested. The intangible nature of ‘property’ in unpublished works was clarified during the ‘literary property debate’, which principally focused on the term of protection for published books.86 In Millar v Taylor,87 for example, one sees an extended analysis of ‘property’ in 79 Lord and Lady Perceval v Phipps (1813) 2 V & B 19. 80 Gee v Pritchard (1818) 2 Swanst 402. 81 Duke of Queensberry v Shebbeare (1758) 2 Eden 329. 82 ibid. 83 As recounted by Lord Mansfield in Millar v Taylor (1769) 4 Burr 2303. 84 Millar v Taylor (1769) 4 Burr 2303. 85 See ch 1 above. 86 A Birrell, Seven Lectures on the Law and History of Copyright in Books above; B Kaplan, An Unhurried View of Copyright above; LR Patterson, Copyright in Historical Perspective above; J Feather, A History of British Publishing above; R Deazley, On the Origin of the Right to Copy above for an analysis of the ‘Literary Property’ debate. 87 Millar v Taylor (1769) 4 Burr 2303.

32  The Jurisdictional Bases for Restraining Unauthorised Publication unpublished manuscripts. In that case, Andrew Millar, a bookseller,88 purchased James ­Thomson’s poem, The Seasons, in 1729. After the term of protection available under the Statute of Anne had expired,89 Robert Taylor published the poem without Millar’s consent. Millar sued Taylor for copyright infringement and followed the practice of pleading the common law and the Statute of Anne to enforce his rights. The King’s Bench heard the case and a majority of that court ruled that common law rights in published works were not extinguished by the Statute of Anne. Instead, publishers had perpetual common law rights to publish a work for which they had acquired the rights.90 Although the case concerned a work that had been published, and an action by a publisher rather than an author, so that it may be argued that Millar v Taylor had nothing to say on the rights of authors of unpublished manuscripts; importantly, all three judges (including Yates J, who dissented) in that case recognised the existence of common law protection of unpublished works. A distinctive feature of Millar v Taylor is that all three judges relied on first principles when explaining the rationales underpinning authors’ rights. For ­ instance, Lord Mansfield opined that: From what source, then is the common law drawn, which is admitted to be so clear, in respect of the copy before publication? From this argument – because it is just, that an author should reap the pecuniary profits of his own ingenuity and labour. It is just, that another should not use his name without his consent. It is fit that he should judge when to publish, or whether he will ever publish. It is fit he should not only choose the time, but the moment of publication; how many; what volume; what print. It is fit, he should choose to whose care he will trust the accuracy and correctness of the impression; in whose honesty he will confide, not to foist additions: with other reasonings of the same effect.91

For Lord Mansfield, the protection of unpublished works was a central component of his vision of the protection offered by the common law to literary property. He had been consummately involved in some of the leading cases on that subject and his principal idea was that rights in unpublished and published works were perpetual.92 Willes J also observed that: It is certainly not agreeable to natural justice, that a stranger should reap the beneficial pecuniary produce of another man’s work.93

Although these statements did not wholly relate to first publication of manuscripts (because The Seasons was published), they demonstrate the prevailing ­rhetoric 88 Andrew Millar (1705–68) was a Scottish publisher. 89 The Statute of Anne protected unprinted books for 14 years. It also had a further 14-year term if an author was still alive at the expiry of the first term. Books in print were protected for 21 years. 90 Aston and Willes JJ concurred with Lord Mansfield’s judgment. Yates J dissented. 91 Millar v Taylor (1769) 4 Burr 2303, 2399 (Lord Mansfield CJ). For problems with accuracy in 18th-century printing, see DJ McKitterick, Print, Manuscript and the Search for Order above at 187–204. 92 That vision was expressed in earlier cases including the oral arguments in Pope v Curll. 93 Millar v Taylor (1769) 4 Burr 2303, 2335 (Willes J).

The Evolution of ‘Property’ for Restraining Unauthorised Publication  33 on the normative bases for common law rights in unpublished works. Millar v Taylor can be understood as representing an attempt to justify copyright on the ground that it protects the fruits of authors’ labour. At that stage, John Locke’s labour theory of private property ownership was very influential, and it might have shaped copyright discourses.94 In addition, ‘copyright’ was regarded as a means for protecting authors’ economic rights95 and for encouraging creativity.96 The economic advantages of printing a work first were also seen as an essential tool for freeing authors from the vice grip of patronage.97 The recognition that the right to prevent unauthorised printing of unpublished manuscripts was based on authors’ rights in their work, rather than mere ­physical property in the manuscript as a chattel, was confirmed by Millar v Taylor. For example, in his dissenting judgment, Yates J supported this alternative justification of the right of first publication when he stated that: Ideas are free. But while the author confines them to his study, they are like birds in a cage, which none but he can let fly: for, till he thinks proper to emancipate them, they are under his own dominion.98

However, Yates J might have been merely referring to property rights in tangible things. For example, he also noted that: It is certain every man has a right to keep his own sentiments, if he pleases: he has certainly a right to judge whether he will make them public, or commit them only to the sight of his friends. In that state, the manuscript is, in every sense, his peculiar property; and no man can take it from him, or make any use of it which he has not authorized, without being guilty of a violation of his property. And as every author or proprietor of a manuscript has a right to determine whether he will publish it or not, he has a right to the first publication: and whoever deprives him of that priority is guilty of a manifest wrong; and the court has a right to stop it.99

94 J Locke, Two Treatises on Government (London, Awnsham Churchill, 1690). 95 According to Willes J, ‘[h]e who engages in a laborious work … which may employ his whole life, will do it with more spirit, if, besides his own glory, he thinks it may be provision for his family’, Millar v Taylor (1769) 4 Burr 2303, 2336. 96 In Willes J’s judgment, ‘[i]t is wise in any state, to encourage letters, and the painful researches of learned men. The easiest and most equal way of doing it is by securing to them the property of their own works. Nobody contributes, who is not willing; and though a good book may be run down, and a bad one cried up, for a time; yet sooner or later, the reward will be in proportion to the merit of the work’, Millar v Taylor (1769) 4 Burr 2303, 2335–36. Aston J supported the idea that the right of first publication encourages creativity by stating that ‘[n]ow, without publication, ‘tis useless to the owner; because without profit: and property, without the power of use and disposal, is an empty sound. In that state, ‘tis lost to the society, in point of improvement; as well as to the author, in point of interest. ---Publication therefore is the necessary act, and only means, to render this confessed property useful to mankind, and profitable to the owner; in this, they are jointly concerned’. Millar v Taylor (1769) 4 Burr 2303, 2341. 97 As Willes J observed, ‘[a] writer’s fame will not be the less, that he has bread, without being under the necessity of prostituting his pen to flattery or party, to get it’. Millar v Taylor (1769) 4 Burr 2303, 2336. 98 Millar v Taylor above, 2379 (Yates J). 99 ibid, 2379 (Yates J).

34  The Jurisdictional Bases for Restraining Unauthorised Publication Nevertheless, in allowing authors to determine whether their manuscripts should be printed, the law moved from controlling a chattel, to providing an authorial right to determine first publication of the expressions in a work. Affording authors the right to publish their works first might have been motivated by the importance of maintaining accuracy in printed books. By modern standards, printing technologies were still elementary100 Moreover, some printers still included unnecessary materials to bulk up books thereby potentially harming authors’ creative ­reputation.101 Apart from this, the evolution of ‘property’ as a basis for enjoining unauthorised first publication of manuscripts might have reflected changing views on authorship. By that time, the Industrial Revolution was in full swing. Increased wealth and the growth of a reading public might have necessitated an increased demand for books (and thus manuscripts). Authors’ property rights might have received greater protection to encourage production of books.102 Initially, ‘publication’ developed in connection with unauthorised printing of manuscripts including books and letters. Such printing embraced the original work or its copies. Later, the notion of an authorial right in the work, recognised in Millar v Taylor, was also applied to unpublished dramatic works in Macklin v Richardson.103 In that case, Charles Macklin104 sought to restrain unauthorised printing of an unpublished dramatic performance namely, ‘Love à la Mode’. The work had been performed in public. Macklin had taken extreme precautions to protect the text of his manuscript, and took the prompter’s copy after every performance of the play. The defendants owned the Court Miscellany, or Gentleman and Lady’s Magazine and paid a third party to attend a performance of the play. The third party transcribed the play and the defendants printed the first act in their magazine. Macklin’s claim was based on his authorial ‘property’ in the dramatic work. That proposition can be supported by the fact that Macklin’s chattels were not interfered with – the third party did not acquire the original manuscript or its physical copy. The defendants argued that since the play had been performed in public, the audience had the right to ‘carry away what they could, and make any use of it’.105 Another argument advanced by the defendants was that ­unauthorised printing of the work did not interfere with the economic ‘advantage arising from the representation upon the stage’.106 Lord Camden107 heard the case but he 100 ibid, 2399 (Lord Mansfield). The argument based on achieving accuracy in printed books became less relevant to both published and unpublished works as the art of printing advanced considerably and ensured accurate reproduction of authors’ manuscripts. In addition, authors had significant opportunities to proofread their works. See DJ McKitterick, Print, Manuscript and the Search for Order above at 187–204. 101 J Raven, Publishing Business in Eighteenth-Century England (Suffolk, Boydell and Brewer, 2014). 102 D Griffin, ‘The rise of the professional author’ in MF Suarez and ML Turner (eds), The Cambridge History of the Book Vol V 1695–1830, 132. 103 Macklin v Richardson (1770) Amb 694. 104 Charles Macklin (1690–1797) was an actor and dramatist. 105 (1770) Amb 694. 106 ibid, 696. 107 Charles Pratt, 1st Earl Camden (1714–94) was an eminent judge and politician.

The Evolution of ‘Property’ for Restraining Unauthorised Publication  35 postponed the hearing until Millar v Taylor had been determined. After Millar v Taylor had been finalised, the Lord Commissioners heard the case. Lord Commissioner Smythe rejected the defendant’s arguments and stated that: It has been argued to be a publication, by being acted; and therefore the printing is no injury to the plaintiff: but that is a mistake; for besides the advantage from the performance, the author has another means of profit, from the printing and publishing; and there is as much reason that he should be protected in that right as any other author.108

Macklin obtained a perpetual injunction restraining Richardson from publishing the play. Although protection of an unpublished play is quite a different thing than that of a letter or a manuscript, the playwright was protected ‘as any other author’ because he had intangible property rights in his text. The argument that Macklin v Richardson represents considerable clarity on the authorial basis of ‘property’ in unpublished works is fortified by the fact that the prompter’s copy was unpublished and remained in Macklin’s possession. However, it was a public good, which could be copied and used by others without interfering with Macklin’s possession and enjoyment of the original. In common with Pope v Curll and Shebbeare v Duke of Queensberry, Macklin v Richardson also developed the principle that conditional dissemination of a work did not amount to publication; a proposition that was applied in later cases109 and which is still relevant in contemporary copyright law.110 Macklin v Richardson records the genesis of the rule that ‘public disclosure’ of a work was not tantamount to its authorised ‘publication’. For all intents and purposes, the work was ‘published’ through its public performance. However, the meaning of ‘publication’ assumed a quality of artificiality for several reasons. Judges had to grapple with novel facts. Nothing was done to the manuscript on which the play was based. It was not printed, and Macklin retained the prompter’s copy. In addition, the court might have been cognisant of the economic value of rights in performances.111 The play could be printed and sold. Alternatively, good money could be generated via its public performance. Apart from this, authors might have used public performances to test the market for their works before ­editing and publishing them.112 Another distinctive feature of Macklin v Richardson is that it represents the first occasion when the concept of ‘publication’ was applied 108 See fn 105 above. 109 See the cases discussed below. In Macklin v Richardson itself, ‘Love à la Mode’ remained unpublished even though it had been performed publicly. See also Morris v Kelly & Arnold (1820) 1 Jac & W 481. However, Coleman v Wathen (1793) 5 TR 245 and Murray v Elliston (1822) 5 B & Ald 659 seem to conflict with the reasoning in Macklin v Richardson. See I Alexander, ‘Neither Bolt nor Chain, Iron Safe nor Private Watchman, Can Prevent the Theft of Words: The Birth of the Performing Right in ­Britain’, in R Deazley, M Kretschmer, and L Bently, Privilege and Property: Essays on the History of Copyright (Cambridge, OpenBook Publishers, 2010) 321, 322–26. 110 See for example sect 155 CDPA. 111 See I Woodfield, Opera and Drama in Eighteenth-Century London: The King’s Theatre, Garrick and the Business of Performance (Cambridge, Cambridge University Press, 2001). 112 Palmer v De Witt 47 NY 532 (1872).

36  The Jurisdictional Bases for Restraining Unauthorised Publication to adaptations of a work. In that case, a dramatic performance was transcribed and adapted into a literary work. Nevertheless, ‘publication’ still focused on ­unauthorised printing of a work. The rule that ‘public disclosure’ of a work is not publication also featured in Cullen v Lowndes.113 In that case, William Cullen, an infamous Professor of Medicine wrote and delivered a number of lectures to students at the University of Edinburgh. Thomas Lowndes, a publisher, obtained notes of the lectures by ‘fraudulent and surreptitious means’ and proposed to publish them in Materia Medica. Cullen sought to prevent Lowndes from publishing the lectures and his bill of complaint stated that he had the lectures in manuscript form and that he hoped to have ‘peaceably and quietly … enjoyed his sole property therein’ and to receive the profits arising from publishing the work should he choose to print the lectures.114 The Lord Chancellor, Lord Apsley,115 granted an injunction until answer. Lowndes capitulated at that point. Although the Lord Chancellor’s reasoning was not recorded, the judgment in Cullen v Lowndes might have been based on protecting the plaintiff ’s authorial property in the unpublished lectures. Such authorial property survived conditional dissemination of the lectures to others. The meaning of ‘publication’ was also constricted in order to protect works which had been disseminated to a section of the public from infringement. Another point which emerges from Cullen v Lowndes is that the subject matter of protection was extended to lectures. The conceptual clarity that the decision in Millar v Taylor116 had brought to the legal basis for protecting unpublished works was thrown into sharp relief by the momentous decision of the House of Lords in Donaldson v Beckett.117 In that case, Thomas Beckett118 sought an injunction preventing Alexander ­Donaldson119 from printing Thomson’s The Seasons, a work which was published. Lord ­Chancellor Apsley relied on Millar v Taylor and granted a perpetual injunction in favour of Beckett. On appeal, a majority of the House of Lords held that there was no perpetual common law copyright in published works.120 However, the House of Lords’ 113 (13 December 1771). Although the case is unreported, it was mentioned in Caird v Sime (1887) LR 12 HL 326 at 332–33, n 2. 114 T Aplin, L Bently, S Malynicz and P Johnson, Gurry on Breach of Confidence: The Protection of Confidential Information, 2nd edn (Oxford, Oxford University Press, 2012) [2.45]. The lectures were later published with Cullen’s consent. 115 Henry Bathurst, 2nd Earl Bathurst (1714–94), was a politician and Lord High Chancellor of Great Britain from 1771 to 1778. 116 Millar v Taylor (1769) 4 Burr 2303. 117 Cobbett’s Parliamentary History of England, 1066–1803 (London, 1813), vol 17, cols 953–1003. 118 Thomas Beckett was Andrew Millar’s apprentice. 119 Alexander Donaldson (1727–94) was a Scottish bookseller. 120 The House of Lords judgment in Donaldson v Beckett has been the subject of detailed but inconsistent academic commentary. See for example, H Abrams, ‘The Historic Foundation of American Copyright Law: Exploding the Myth of Common Law Copyright’ (1983) 29 Wayne Law Review 1119; R Deazley, On the Origin of the Right to Copy above; LR Patterson, Copyright in Historical Perspective above; S Parks, (ed), The Literary Property Debate: Six Tracts, 1764–1774 (New York, Garland Publishing, 1975); M Rose, Authors and Owners above; J Whicher, ‘The Ghost of Donaldson v Beckett:

The Evolution of ‘Property’ for Restraining Unauthorised Publication  37 position on the issue of ‘property’ rights in unpublished works was less clear. A majority of the judges who advised the House of Lords seem to have recognised the existence of a common law right in unpublished works.121 However, the Lords voted in a way which suggested that they supported the minority judges who confined property rights in unpublished works to ownership of a chattel. Consequently, in the absence of common law authorial copyright in all works, subsequent cases on unpublished works proceeded on a wrong footing. The main difficulty with that argument, however, is that the mathematics of Donaldson v Beckett is still conjectural. It is also possible to argue that the case accepted the existence of common law authorial rights in unpublished works.122 Donaldson v Beckett represents an epochal moment in the history of copyright law. The exclusive rights arising from copyright protection were balanced with other interests. One such interest involved facilitating eventual unrestricted access to copyright works by circumscribing the term of protection. For our purposes, another significant feature of Donaldson v Beckett is that it was later interpreted as establishing the rule that protection of published and unpublished works was mutually exclusive.123 Published works received statutory protection for a defined period.124 Conversely, unpublished works attracted perpetual common law copyright. Donaldson v Beckett might have focused attention on the literal terms of the Statute (rather than some broader view that it recognised, and gave additional remedies to, a pre-existing right). This positivist view inevitably led to the conclusion that unpublished works were not protected by the Statute itself, so fell to be protected, if at all, by the common law. This was a departure from Forrester v Waller125 and Pope v Curll126 in which the plaintiffs successfully relied on both the Statute of Anne and the common law to prevent unauthorised printing of their manuscripts. The references to the Statute of Anne in Forrester v Waller and Pope v Curll were odd because of the terms of the Statute itself (which on its face appears only to apply to published books) and the requirements under the Statute (registration, deposit and duration etc). It became clear after Donaldson v Beckett that the

An Inquiry into the Constitutional Distribution of Powers over the Law of Literary Property in the United States – Part 1’ (1961–62) 9 Copyright Society of the USA 102. See also LS O’Mellin, ‘The Recording Industry v James Madison, aka “Publius” The Inversion of Culture and Copyright’ (2011) 35 Seattle University Law Review 75; Capitol Records Inc v Naxos of America Inc 4 NY 3d 540, 549; Faulkner ­Literary Rights LLC v Sony Pictures Inc 953 F Supp 2d 701, 704 (ND Miss 2013). 121 Four of the judges seem to have conceived the common law right as merely one to control the manuscript as a chattel: (1774) 17 Hansard 953, 972 (Eyre J), 982 (Perrot B), 985 (Adams B), 988 (Lord De Grey). 122 T Gomez-Arostegui, ‘Copyright at Common Law in 1774’ (2014) 47 Connecticut Law Review 1. 123 Eg Wheaton v Peters 33 US (8 Pet) 591. 124 Later, of course, statutory copyright applied to unpublished dramatic works, lectures, and fine art. See Dramatic Literary Property Act, 1833, 3 & 4 Will IV, c 15; Publication of Lectures Act, 1835, 5 & 6 Will IV, c 65 and Fine Arts Copyright Act, 1862, 25 & 26 Vict, c 68. 125 Forrester v Waller (1741) 4 Burr 2331. 126 Pope v Curll (1741) 2 Atk 342.

38  The Jurisdictional Bases for Restraining Unauthorised Publication Statute of Anne was not a sensible avenue for protecting unpublished manuscripts. However, as will be observed below, Sir Thomas Plumer V-C’s reasoning in Lord and Lady Perceval v Phipps127 appears to suggest the continued significance of the Statute of Anne (and the notion of ‘learning’) to the protection available to unpublished letters; a position which is explicable on the ground that Lady Perceval’s conduct had been less than honourable. Owing to Donaldson v Beckett, for centuries, unpublished works received stronger and longer protection than ­ published ones. Perpetual protection potentially inhered in such works. Subsequent cases contradicted the claim that Donaldson v Beckett confined rights in unpublished works to ownership of a chattel. In fact, the aftermath of Donaldson v Beckett was punctuated by continued reliance on common law authorial ‘property’ to protect unpublished works. Thompson v Stanhope128 provides a good illustration of that proposition. In that case, the Earl of Chesterfield wrote two types of letters to his son, Phillip; one set which was later seen to form a system of education, and another set describing people. Phillip predeceased his father. Phillip’s widow, Eugenia Stanhope, who as such became owner of the chattel property in the letters, returned the letters describing people but she did not disclose that she had taken copies of those letters. Upon the Earl of Chesterfield’s death, Eugenia Stanhope advertised that Robert Dodsley129 would print the letters. The plaintiffs, executors of the Earl of Chesterfield’s estate, sought to restrain Robert Dodsley and Eugenia Stanhope from printing the letters. The plaintiffs also sought to have the letters delivered up to them. The executors claimed that although the physical manuscripts belonged to Eugenia Stanhope, the right to control their first publication remained with the Earl of Chesterfield. Eugenia Stanhope’s defence was that she complied with her father-in-law’s request that she return the letters describing certain people because he wanted these destroyed and that although she kept copies of the letters, she was not proposing to publish them. Nevertheless, she claimed that the letters she was publishing were the educational ones, and that Lord Chesterfield expressed no reservations about disseminating these. There is no explanation as to why the defendant thought the distinction between the two categories of letters mattered. The Lord Chancellor, Lord Apsley held that Eugenia Stanhope did not have the right to print any of the Earl of Chesterfield’s letters without his executors’ consent. No consideration seems to have been given to whether the Lords’ decision in Donaldson v Beckett was significant. So far, this chapter has concentrated on British developments for one key reason: copyright in the USA and other common law countries was still nascent. Later, in the USA, matters took a similar yet also markedly different turn. After the declaration of independence, several American states enacted local copyright



127 Perceval

v Phipps 2 V & B 26. v Stanhope (1774) Amb 737. 129 Robert Dodsley (1704–64) was an English author and bookseller. 128 Thompson

The Evolution of ‘Property’ for Restraining Unauthorised Publication  39 s­ tatutes which sometimes assimilated the basic features of the Statute of Anne.130 The primary driver for change for these legislative initiatives was the lobbying effort of various authors including Noah Webster, a lexicographer, who sought protection for his work, A Grammatical Institute of the English Language.131 It was also felt that copyright protection had utilitarian value, in that it could induce creation of material which could facilitate learning.132 Moreover, it was argued that the new republic should have a distinct cultural identity, which could be fostered by encouraging creation of locally relevant works.133 These changes were influenced by the ‘literary property debate’, which had authorship at its core. However, unlike the Statute of Anne, American authors were not used as a simple lobbying tool. By the time the various state laws were enacted, it had come to be accepted that authors were pivotal to the production of copyright works. These events occurred when America was still a net consumer of intellectual productions. Consequently, in some instances, copyright protection was limited to citizens of that country, which left works of foreign authorship exposed to piracy.134 For our purposes, Connecticut,135 New York136 and Georgia,137 for example, prohibited unauthorised first publication of manuscripts and also preserved common law protection of unpublished works. Moreover, authors could be compensated for unauthorised first publication of their manuscripts.138 In terms of duration, protection of unpublished works was perpetual.139 The inclusion of unpublished works in various statutes might simply demonstrate the success or otherwise of authors’ lobbying efforts. Besides, by the time these statutes were enacted, the Literary Property Debate and English developments after ­Donaldson v Beckett were widely known and might have shaped policymakers’ attitudes towards unpublished works. The territorial limits of state copyright laws necessitated further lobbying by authors. As Noah Webster’s efforts demonstrate, such lobbying represented a cumbersome and inefficient deployment of resources – he had to influence developments in each state.140 Apart from this, an emergent national reading culture made uniform protection of copyright works quite desirable.141 However, a major 130 Connecticut Copyright Statute, Connecticut (1783), L Bently and M Kretschmer (eds), Primary Sources on Copyright (1450–1900) www.copyrighthistory.org. 131 ‘Letter from Noah Webster to James Madison, Hartford, Connecticut (1784)’ in L Bently and M Kretschmer above. 132 ‘Letter from Smith to Webster, Princeton (1782)’ in L Bently and M Kretschmer above. 133 T Paine, ‘Paine to the Abbé Raynal’, in Political Works of Thomas Paine, vol 1 (London, WT Sherwin, 1817), iv; Letter from Joel Barlow to the Continental Congress (1783). 134 Eg Georgia Copyright Statute, Georgia (1786), in L Bently and M Kretschmer above. 135 Connecticut Copyright Statute, Connecticut (1783) in L Bently and M Kretschmer above. 136 New York Copyright Statute, New York (1786) in L Bently and M Kretschmer above. 137 Georgia Copyright Statute, Georgia (1786) in L Bently and M Kretschmer above. 138 See nn 134–37 above. 139 ibid. 140 O Bracha, ‘Commentary on the U.S. Copyright Act 1790’, in L Bently and M Kretschmer (eds), Primary Sources on Copyright (1450–1900), www.copyrighthistory.org. 141 ibid.

40  The Jurisdictional Bases for Restraining Unauthorised Publication stumbling block for federal protection was that, by that stage, Congress did not possess a clear mandate for enacting copyright laws.142 The task of negotiating and enacting a copyright clause was left to the Constitutional Convention, which authorised Congress to legislate for copyright and patent protection.143 For our purposes, the clause did not differentiate published works from unpublished ones and it was rooted in utilitarianism: copyright protection was justified on the basis that it would foster learning and the useful arts. Immediately after these initiatives, a new federal Copyright Act was proposed and enacted.144 In common with the drafters of state copyright laws, the framers of the new federal copyright statute were familiar with developments in Britain.145 The 1790 Act was largely based on the Statute of Anne and it was the result of serious lobbying efforts by various authors.146 Although there were numerous similarities between the 1790 Act and the Statute of Anne, there were also differences relating especially to the term of protection.147 The other significant difference related to protection of unpublished manuscripts. In Britain, after Donaldson v Beckett such works stood to be protected by the common law. In contrast, the 1790 Act provided statutory protection for some manuscripts.148 The 1790 Act was subsequently amended to cater for different subject matter and to introduce the formality of notice.149 Later, following further lobbying efforts by Noah Webster and others, the term of copyright was extended and copyright in sheet music received statutory protection.150

‘Breach of Confidence’ and ‘Breach of Implied Contract’ as Additional Jurisdictional Grounds for Restraining Unauthorised First Publication of Manuscripts By 1800, ‘property’ had evolved from protecting manuscripts as chattels to securing authorial rights in unpublished works. An intangible property right was assumed to exist in the work distinct from the personal property rights in the paper and ink of the manuscript. Furthermore, there was an attempt (especially in Millar v Taylor) to justify protection of unpublished works on economic and labour grounds.

142 ibid. 143 See O Bracha above. 144 An Act for the Encouragement of Learning, by securing copies of maps, charts, and books, to the authors and proprietors of such copies, during the times therein mentioned 1790, ie US Copyright Act 1790. 145 See O Bracha above. 146 ibid. 147 Copyright Act 1790 s 1. 148 Copyright Act 1790 s 6. 149 US Copyright Act 1802 (Amendment of 1790 Act), 2 Stat 171 (1802). 150 US Copyright Act 1831, 4 Stat 436 (1831).

Common Law Rights in Unpublished Manuscripts  41 The latter justification located its influence in John Locke’s work on private ­property ownership, which, as we have already observed, had significant currency during that period.151 In terms of ‘publication’, several distinct points emerged from the cases. First, a work could only be published with its author’s consent. Secondly, the author must intend to publish the work. Thirdly, private circulation of a work was not tantamount to its authorised first publication. Fourthly, public performances of dramatic works did not amount to their publication. These rules applied to reproduction and adaptations of original works. Several key developments occurred after 1800. The courts reaffirmed the idea that authors had a common law right to restrain unauthorised first publication of their unpublished manuscripts based on property but began to explore the extent of that jurisdiction. In particular, doubts emerged about whether the right applied to letters and lectures and as to whether the rights recognised at common law would enable an author to prevent acts other than print publication (such as performance of unpublished music/plays, or the description of the content of unpublished etchings). Partly as a response to these doubts, the period after 1800 witnessed the emergence of breach of confidence and breach of an implied contract not to publish as additional and alternative means for restraining u ­ nauthorised first publication.

Common Law Rights in Unpublished Manuscripts The authorial nature of property rights in unpublished letters was recognised in Cadell & Davies v Stewart, a Scottish case.152 In that case, Robert Burns, the Ayrshire poet, wrote letters to his mistress, one Clarinda.153 After Burns’ death, Clarinda allowed Thomas Stewart, a bookseller, to publish the letters. The plaintiffs, Cadell & Davies, a publishing company, had the rights to Burns’ literary compositions and successfully prevented Stewart from publishing the letters. Clarinda had tangible property rights in the letters – she owned the paper on which they were written. However, the right to publish the letters vested with Robert Burns’ executors. Although the case was decided on authorial property grounds, its most significant feature lies in the fact that it marks the first occasion on which confidentiality was referred to as a potential basis for repelling unauthorised first publication. The court held that there was an implied confidence requiring letters to be published with their authors’ consent and that Robert Burns’ representatives had the right to vindicate his literary character. However, the nature of that ‘implied’ confidence was not articulated. At that stage confidentiality was emergent. 151 See above. 152 Cadell & Davies v Stewart (1804) in 19 Mor App 113. 153 Agnes MacLehose (1758–1841) aka Agnes Craig, Nancy, Clarinda had an affair with Robert Burns during 1787–88. Owing to serious mobility issues on Burns’ part, the relationship remained unconsummated.

42  The Jurisdictional Bases for Restraining Unauthorised Publication Another interesting feature of Cadell & Davies v Stewart revolves around the plurality of the interests that fell to be protected by the law. At first glance, the case was about enforcing a deceased author’s property rights in the unpublished letters – an economic interest. However, as Hector MacQueen has demonstrated, the real interest that was being protected in that case was Robert Burns’ personal reputation – Clarinda, the object of Burns’ affections had a distinctly sordid past.154 Besides, Burns’ indisposition brought a measure of embarrassment to the scandalous affair – owing to serious physical infirmity, his encounter with Clarinda did not transgress beyond ‘Ae Fonde Kiss’.155 The notion that authorial rights can be an indirect means for curtailing disclosure of embarrassing details about a person’s private life still persists.156 However, a longstanding problem with cumulation of interests in unpublished matter is that the law develops incoherently in order to meet the peculiarities of individual cases. Although the authorial basis of property rights in unpublished works assumed an air of security, in certain, defined instances, tangible property rights retained residual importance. Earl of Granard v Dunkin157 is one such instance. In that case, an executrix sought to restrain the defendant from publishing letters written by and to a correspondent. The right that was asserted by the executrix was based on her ownership of the correspondent’s chattels, ie the physical letters. That claim was designed to address the fact that the executrix could not assert any authorial rights over the letters that were written to the deceased author. As a result, Earl of Granard v Dunkin did not depart significantly from earlier authorities. The plaintiff ’s reliance on ownership of the chattel property in the letters responded to the specific factual circumstances of the case. Apart from property rights, Anon v Eaton, which was heard in camera by Lord Eldon LC,158 suggests that in extreme cases, authors of unpublished works could also rely on contract in order to vindicate their interests. Although the case was not reported, its facts can be gleaned from Sir Thomas Plumer V-C’s judgment in Lord and Lady Perceval v Phipps.159 At their barest minimum, the facts disclosed the fact that an ‘elderly lady’ with considerable financial means foolishly composed romantic correspondence to a much younger man. It appears that the man, dissatisfied with the resources that were propelled in his direction, intended to enhance his financial prospects much further by threatening to print the letters. Initially, his plan was nearly successful. Upon learning that the letters were likely to be published, the lady and the man entered into a contract prohibiting publication

154 HL MacQueen, ‘Ae Fond Kiss: A Private Matter?’ in A Burrows, D Johnston and R Zimmermann (eds), Judge and Jurist: Essays in Memory of Lord Rodger of Earlsferry (Oxford, Oxford University Press, 2013) 473. 155 ibid. 156 Eg HRH The Prince of Wales v Associated Newspapers (No 3) [2008] Ch 57. 157 Earl of Granard v Dunkin (1809) 1 Ball & Beatty 207. 158 John Scott, 1st Earl of Eldon (1751–1838) was a barrister, politician and Lord Chancellor. 159 Anon v Eaton cited in Perceval v Phipps (1813) 2 V & B 19, 23.

Common Law Rights in Unpublished Manuscripts  43 of the letters and requiring them to be delivered up to the lady upon payment of some money. However, the defendant persisted with his threat to publish the letters. The plaintiff successfully restrained the defendant from publishing the letters in England and Ireland. Although the plaintiff had authorial rights in the letters, it appears that the case was decided based on breach of contract. A practical reason for the approach in that case was that merely asserting the plaintiff ’s authorial rights in the letters without insisting on their delivery up might not have prevented unauthorised first publication in a different jurisdiction: as a general rule, the reach of interlocutory and final injunctions is wholly territorial. In spite of these developments, which seem to have clarified copyright in unpublished works, serious doubts regarding the subject matter which ought to attract authorial rights in these works were expressed in Lord and Lady Perceval v Phipps160 in which Bridget, Viscountess Perceval employed her relative, one John Mitford, to transmit letters concerning Princess Caroline of Wales’ personal finances to Thomas Adderley Phipps, a publisher of The News.161 Phipps published the information contained in the letters but the allegations relating to the Princess of Wales’ finances proved to be false. Phipps sought to print Lady Perceval’s letters in order to defend himself and his paper’s reputation. Lord and Lady Perceval successfully obtained a preliminary injunction restraining publication of the private letters. Of course, Lord Perceval’s participation in the proceedings was wholly academic. The real claimant was Lady Perceval but, as a married woman, she lacked the capacity to sue in her own right.162 In his answer to the bill of complaint, Phipps asserted that Lady Perceval consented to publication of the contentious letters. Phipps also averred that publication of the letters was necessary to vindicate his reputation and that of his newspaper. Moreover, in the course of argument, Phipps’ counsel relied on the Statute of Anne and claimed that common law protection of unpublished works ought to be confined to literary compositions.163 Sir Thomas Plumer V-C dissolved the injunction and seemed to accept the defendant’s arguments when he stated that it is only when letters ‘are stamped with the character of literary compositions’ that their publication can be enjoined. In his opinion: in the Letters of Pope and Swift and Lord Chesterfield, the Subject derived its Right to Protection from its Character of a literary Composition; a Character, which did not cease, when it was put in the Shape of Letters.164

160 Lord and Lady Perceval v Phipps (1813) 2 V & B 19. 161 TA Phipps, The important trial of John Mitford, Esq, on the prosecution of Lady Viscountess Perceval, for perjury, at Guildhall, on Thursday, Feb. 24, 1814, before Lord Ellenborough forming a clue to the discussions which took place relative to the affairs of Her Royal Highness the Princess of Wales in the beginning of the year 1813 (London, TA Phipps, 1814). 162 B Hill, Women, Work and Sexual Politics in Eighteenth-century England (London, Blackwell, 1989). 163 See n 160 above. 164 (1813) 2 V & B 19, 24.

44  The Jurisdictional Bases for Restraining Unauthorised Publication Sir Thomas Plumer V-C’s judgment reverted to one of the avowed purposes of copyright protection in the Statute of Anne, namely encouraging learned men to compose and write useful books. Pope’s letters met that purpose because they were instructional. Similarly, the Earl of Chesterfield’s letters forming a system of education might have encouraged learning; a fact which can be observed from subsequent authorised first publication of that correspondence. Had that argument flourished, the range of protectable subject matter would have been circumscribed considerably. The fatal flaw in Sir Thomas Plumer V-C’s reasoning could not be successfully disguised. Judging whether a work encourages learning etc is wholly subjective and it elicits objections based on philistinism. The Vice Chancellor’s observations were also at odds with Donaldson v B ­ eckett, which suggested that the Statute of Anne was reserved for published works: Lady Perceval’s correspondence was unpublished. Besides, by the early nineteenth century, the educational value of personal correspondence had waned. Increased production of books and enhanced educational opportunities provided more solid avenues for personal instruction.165 Sir Thomas Plumer V-C’s position on letters seems to have been founded on a court’s equitable jurisdiction. Because that jurisdiction was, historically, premised on enforcing the King’s conscience, claimants could only obtain relief if they had ‘clean hands’.166 Lady Perceval’s conduct was diametrically opposed to that peremptory requirement – her involvement in the clandestine propagation of the information involving Princess Caroline’s finances had a flavour of scandal attached to it.167 The point which can be taken from this and other cases is that copyright in unpublished works mutated in order to address the unusual features of the facts that arose for adjudication. In Perceval v Phipps, the sole ground upon which the injunction for restraining unauthorised first publication of the letters was founded revolved around authors’ property rights in their unpublished works. Nevertheless, Sir Thomas Plumer V-C’s judgment was later interpreted as introducing breach of trust or confidence as an additional ground for curtailing unauthorised first publication of manuscripts in circumstances where there was a relationship between authors and publishers.168 However, Sir Thomas Plumer V-C only observed that it was not necessary for him to determine how unauthorised first publication of letters injured the feelings of individuals. In his view: Another Class is the Correspondence between Friends, or Relations, upon their private Concerns; and it is not necessary here to determine, how far such Letters, falling into the Hands of Executors, Assignees of Bankrupts, &c., could be made public in a Way,

165 A Weedon, Victorian Publishing: The Economics of Book Production for a Mass Market (1836–1916) (London, Routledge, 2003). 166 RG Hammond, ‘The Origins of the Equitable Duty of Confidence’ [1979] Anglo-American Law Review 71. 167 Lady Perceval had lied about the provenance of the letters. 168 Eg MacMillan & Co v Dent [1907] 1 Ch 107 (CA).

Common Law Rights in Unpublished Manuscripts  45 that must frequently be very injurious to the Feelings of Individuals. I do not mean to say, that would afford a Ground for a Court of Equity to interpose to prevent a Breach of that Sort of Confidence, independent of Contract and Property.169

Perceval v Phipps might have been interpreted as establishing breach of confidence as a basis for restraining unauthorised first publication of copyright works because in later cases, the plaintiffs’ property rights were less secure. Similarly, the reference to contract was important but undeveloped. The use of ‘implied’ contract to prevent unauthorised first publication became relevant a few years later in the context of protection of lectures170 and etchings.171 Perceval v Phipps is also important because it discussed potential exceptions to common law copyright. It was suggested that unpublished works could be produced in evidence; an uncontroversial proposition which seemed to reflect increased judicial reliance on the best evidence rule. In other circumstances, unauthorised first publication might be necessary for vindicating personal reputation. Initially, the latter aspect of Sir Thomas Plumer V-C’s judgment in Perceval v Phillips was shunned by the courts. For example, in Palin v Gathercole,172 the defendant was not allowed to use the plaintiff ’s unpublished letters to justify publication in libel proceedings. Sir Thomas Plumer’s reasoning in Perceval v Phipps was also rejected in Folsom v Marsh,173 an American case in which Justice Story relied on Pope v Curll, Thompson v Stanhope, Duke of Queensberry v Shebbeare, and Gee v Pritchard174 and decided that authors had authorial property rights in their unpublished letters. Therefore, no person had any right to publish letters without their author’s consent. The argument that by 1800, the authorial nature of ‘property’ rights in unpublished works was clear can also be observed in Southey v Sherwood,175 where an injunction was sought to restrain publication of ‘Wat Tyler’, a ‘seditious’ poem written by Robert Southey.176 Initially, Southey wanted to publish the poem and left it with James Ridgeway, a bookseller, for 23 years. However, Southey changed his mind and decided against publishing the poem. Subsequently, the poem was published without Southey’s consent. The defendants argued that the work, due to its libellous tendency, was of such a nature that there could be no copyright in it and that it could be published with impunity. Counsel for Southey had also spoken of ‘Wat Tyler’s ‘wickedness’ and Robert Southey’s ‘shame’ for having written it, but Lord Eldon relied on Walcot v Walker,177 and directed Southey to establish



169 (1813)

2 V & B 19, 28. v Hutchinson, 1 H & Tw 28. 171 Prince Albert v Strange (1849) 2 De G & Sm 652. 172 Palin v Gathercole (1844) 1 Collyer 565. 173 Folsom v Marsh 9 F Cas 342 (CCD Mass 1841). 174 Gee v Pritchard (1818) 2 Swanst 402. 175 Southey v Sherwood (1817) 2 Mer 435. 176 Robert Southey (1774–1843) was a poet. 177 Walcot v Walker (1802) 7 Ves. Jr 1. 170 Abernethy

46  The Jurisdictional Bases for Restraining Unauthorised Publication his rights at law.178 There is little doubt that Southey had authorial property in his unpublished poem. In Lord Eldon’s judgment: If this publication is an innocent one, I apprehend that I am authorised, by decided cases, to say that, whether the author did or did not intend to make a profit by its publication, he has a right to an Injunction to prevent any other person from publishing it.179

The point that can be taken from Southey v Sherwood is that litigants began to explore the effect of other public interests on protection of unpublished works. Later cases have relied on Southey v Sherwood as a precedent for the rule that copyright cannot protect an immoral work;180 a controversial argument whose fortunes have now reduced quite significantly in the modern era – morality is singularly nebulous and context-specific.

The Emergence of Breach of Confidence as an Alternative Basis for Preventing Unauthorised First Publication If in Southey v Sherwood, Lord Eldon recognised (as a matter of principle) a property right inhering in an author’s unpublished literary manuscript, he seems to have shared Sir Thomas Plumer V-C’s doubts about whether an equivalent property existed in favour of an author of letters. These doubts were evident in Gee v Pritchard,181 in which Ann Paxton Gee, a widow, sought an injunction restraining her illegitimate stepson, the Reverend William Pritchard,182 from publishing letters which she had written to him. Pritchard unsuccessfully argued that publishing the letters would vindicate his personal reputation, which had been sullied by the plaintiff in the village in which he was a priest. In the course of argument, Lord Eldon discussed whether the intention of the letter writer was relevant to enforcing property rights in unpublished letters and observed that: I should have found it difficult to satisfy my mind that there is a property in the letter; but it is my duty to submit my judgment to the authority of those who have gone before me; and it will not be easy to remove the weight of the decisions of Lord Hardwicke and Lord Apsley.183

Lord Eldon would have considered overruling earlier Chancery cases on unpublished letters if a suitable opportunity presented itself in the House of Lords. The source of Lord Eldon’s ambivalence on the court’s jurisdiction to restrain 178 Southey v Sherwood, (1817) 2 Mer 435. 179 ibid, 437. 180 Glyn v Weston Feature Film Co [1916] 1 Ch 261. 181 (1818) 2 Swanst 402. 182 William Amon Pritchard Gee (1812–84) was a clergyman. His financial affairs did not improve after the litigation. He was later declared bankrupt and was imprisoned at Southampton jail. See The London Gazette 1835. 183 (1818) 2 Swanst 402, 414.

Breach of Confidence as a Basis for Preventing Unauthorised Publication  47 unauthorised first publication of letters might have been the Statute of Anne, which encouraged ‘learned men’ to make literary compositions. However, relying on the author’s ‘intention’ to determine copyright subject matter would have presented intense problems. Self-preservation would have meant that authors would routinely claim that they intended to create a literary composition. In addition, judges would have found themselves at the forefront of making controversial aesthetic choices. Despite Lord Eldon’s reservations, the recognition of the principle that the property rights attaching to a literary work extended beyond its physical encapsulation were too firmly entrenched to be ignored. In the end, Lord Eldon ruled that Ann Paxton Gee had authorial rights in her unpublished letters. Lord Eldon distinguished Perceval v Phipps from Gee v Pritchard by emphasising that Ann Paxton Gee’s hands were clean. In addition, despite being in holy orders, Pritchard’s life was somewhat debauched and, later, his personal finances were quite precarious – he was imprisoned for debt.184 Ultimately, Gee v Pritchard also highlights the proposition that the common law protected authorial rights in unpublished letters irrespective of the literary merit of the letters and that conditional dissemination of a letter does not amount to first publication. Although the injunction in Gee v Pritchard located its premise on the plaintiff ’s authorial rights in the unpublished letters, Lord Eldon stated that: I do not say that I am to interfere because the letters are written in confidence, or because the publication of them may wound the feelings of the Plaintiff; but if mischievous effects of that kind can be apprehended in cases in which this Court has been accustomed, on the ground of property, to forbid publication, it would not become me to abandon the jurisdiction which my predecessors have exercised, and refuse to forbid it.185

Lord Eldon’s observations hinted (and were later interpreted as supporting the view) that the ‘action for breach of confidence’ might offer an alternative basis for restraining unauthorised first publication.186 However, Lord Eldon’s two reported decisions by that stage suggested no such action existed: Newbery v James187 and Williams v Williams.188 A key shift occurred, but two years later, in Yovatt v Winyard,189 where the first injunction seems to have been granted in a trade secrets case.

184 London Gazette July 3 to December 29, 1835 at 1372. 185 (1818) 2 Swanston 402, 422. 186 Eg Prince Albert v Strange (1849) 2 De G & Sm 652. It is sometimes argued that the action for breach of confidence itself was initially formulated in cases involving intellectual property protection including Gee v Pritchard. See DJ Ibbetson, A Historical Introduction to the Law of Obligations (Oxford, Oxford University Press, 2001) 187. 187 Newbery v James (1817) 2 Mer 446. 188 Williams v Williams (1817) 3 Mer 157. 189 Yovatt v Winyard (1820) 1 Jac & W 394.

48  The Jurisdictional Bases for Restraining Unauthorised Publication The limits of common law protection of unpublished works were tested again in Abernethy v Hutchinson.190 In that case, John Abernethy, an eminent surgeon, delivered 30 oral lectures to fee-paying students at St Bartholomew’s Hospital, London. The lectures were taken down in shorthand by a student, and published in the Lancet, which was edited by Thomas Wakley and published by GL Hutchinson.191 Abernethy sought an injunction restraining unauthorised first publication of the lectures. Lord Eldon ordered Abernethy to produce the manuscripts on which his lectures were based; a request which went unheeded and it prompted Hutchinson to aver, inter alia, that Abernethy could not have property rights in the oral lectures because they had not been reduced into a written form and that they were based on John Hunter’s original surgery lectures.192 The problem with Abernethy’s claim was that there was an author but no ­tangible manifestation of the author’s expressions. Lord Eldon was reported to have stated that: where the lecture was orally delivered, it was difficult to say that an injunction could be granted upon the same principle upon which a literary composition was protected; because the Court must be satisfied that the publication complained of was an invasion of the written work; and this could only be done by comparing the composition with the piracy.193

From this, one can support the conclusion that copyright infringement rests on comparing expressions of ideas in the competing works. In our context, ‘property’ could not support an injunction preventing ­unauthorised first publication of the oral lectures. In Lord Eldon’s view: In Millar v. Taylor (4 Burr. 2303), there is a great deal said with respect to a person having a property in sentiments and language, though not deposited on paper, but there has been no decision upon that point yet. And as it is a pure question of law, I think it would be going further than a Judge in equity should go, to say, upon that, that he can grant an injunction upon it, before the point is tried.194

The Lord Chancellor was confronted by one of the earliest incidents of the idea/ expression dichotomy. His views can be interpreted as suggesting that mere ideas were not appropriate candidates for copyright protection. Because, in their unrecorded form, the works were ‘ideas’, the Lord Chancellor was forced to rely on other grounds to prevent unauthorised first publication of the lectures.

190 Abernethy v Hutchinson (1824) 3 LJ Ch 209; 1 H & Tw 28. 191 Wakley’s unauthorised publication of the lectures was probably motivated by a desire to make medical education accessible. See C Seville, Literary Copyright Reform in Early Victorian England: The Framing of the 1842 Copyright Act (Cambridge, Cambridge University Press, 1999) 42–43. 192 John Hunter FRS was a pre-eminent Scottish surgeon. See ‘Hunter, John (1728–1793)’ Dictionary of National Biography (London, Smith, Elder & Co, 1885–1900). 193 Abernethy v Hutchinson 1 H & Tw 28. 194 ibid, 35. On 17 June 1825, Lord Eldon made his final judgment and confirmed his earlier ruling on the property point.

Implied Contract as a Basis for Protecting Unpublished Works  49

The Emergence of Implied Contract as a Further Basis for Protecting Unpublished Works The genesis of ‘implied contract’ as an auxiliary means for restraining unauthorised first publication can also be traced to the peculiarities of Abernethy v Hutchinson. Lord Eldon stated that: I have not the slightest difficulty in my own mind, that a lecturer may say to those who hear him – ‘You are entitled to take notes for your own use, and to use them perhaps in every way except for the purpose of printing them for profit: you are not to buy my lectures to sell again; you come here to hear them, for your own use, and for your own use you may take notes’.195

There was an implied contract between Abernethy and his pupils. A term of that contract was that although pupils could attend and take notes of the lectures, they could not publish them without Abernethy’s consent. However, a further problem arose. Because there was no evidence suggesting that Hutchinson attended the lectures, the injunction in Abernethy v Hutchinson had to be founded on yet another ground. Although Lord Eldon referred to breach of trust when restraining unauthorised first publication of the lectures, his analysis of the facts was noncommittal – the case might have been disposed of on the ground of breach of contract.196 In the course of his judgment, Lord Eldon stated that: an injunction undoubtedly might be granted; because, if there had been a breach of contract on the part of the pupil who heard these lectures, and if the pupil could not publish for profit, to do so would certainly be what this Court would call a fraud in a third party.

The confusion surrounding the basis of the Lord Chancellor’s judgment in ­Abernethy v Hutchinson prompted some scholars to observe that: [Lord Eldon] was in the twenty-second year of his Chancellorship and the miasma which enveloped his prose thickened as he grew older and his hesitations grew greater.197

In the end, the injunction was dissolved upon the production of further evidence by the defendant.198 Despite the criticisms of Abernethy v Hutchinson, Lord Eldon formulated new grounds for restraining unauthorised first publication to cover gaps in the law.

195 ibid, 36. 196 RG Hammond, ‘The Origins of the Equitable Duty of Confidence’ (1979) 8 Anglo-American LR 71, 82. 197 RP Meagher, WMC Gummow, JRF Lehane, Equity: Doctrines and Remedies, 3rd edn (Sydney, Butterworths, 1992) para 4106. 198 R Deazley, ‘Commentary on Publication of Lectures Act 1835’, in L Bently and M Kretschmer (eds), Primary Sources on Copyright (1450–1900), www.copyrighthistory.org.

50  The Jurisdictional Bases for Restraining Unauthorised Publication Authors’ property rights in their unpublished works had developed in an environment in which printing of manuscripts was prolific. New regimes had to be deployed in order to arrest mere reproduction of the ideas in a work. Breach of confidence or implied contract offered answers to that dilemma. However, although using breach of trust or confidence to restrain unauthorised first publication arose from the idiosyncrasies of Abernethy v Hutchinson, problems with unpublished lectures led to the enactment of the Publication of Lectures Act,199 thereby suggesting that breach of confidence was not such a great solution on these facts. In addition, Yovatt v Winyard200 had also been decided so that breach of confidence was still emerging. Nevertheless, confidence and implied contract became powerful tools for preventing unauthorised first publication especially in cases where a plaintiff could not satisfy the requirements of statutory copyright protection. Apart from this, Abernethy v Hutchinson also foreshadowed cumulation of rights in unpublished works; a development that was confirmed in Prince Albert v Strange and is one of the essential hallmarks of protection of such material in the modern era.201 The artificiality of ‘publication’ was also evident in Abernethy v Hutchinson. The truth is that the ‘work’ had been disseminated to a good section of the public orally. Nevertheless, a narrow meaning of ‘publication’ was adopted in that case in order to preserve Dr Abernethy’s pecuniary interests – the lectures were financially attractive: an auditorium had to be built in order to accommodate the large number of paying attendees.202 In the absence of common law rights in unpublished works, statutory copyright provided the only means for protecting the lectures. However, non-compliance with the formalities of registration and deposit would have dealt a fatal blow to that possibility. In any event, the oral lectures could not be deposited or registered because they were not recorded in a material form. The meaning of ‘publication’ that was adopted in Abernethy v Hutchinson addressed the threat of piracy. Another important characteristic of Abernethy v Hutchinson was that it established the rule that a work can only benefit from copyright protection if it is recorded in a material form. The oral lectures in that case were not recorded in any form. Therefore, they could not be a reliable instrument for founding a claim for copyright infringement. Recording a work in a material form was said to assist the task of determining copyright infringement because a court can determine whether a subsequent work relied on the original author’s expression of ideas by comparing the original and its copies. We also see the operation of the idea/ expression dichotomy in Abernethy v Hutchison. Ideas that were not recorded in any form were incapable of receiving protection; a principle which subsists in modern copyright law.203

199 1835,

5 & 6 Will IV, c 65. v Winyard (1820) 1 Jac & W 394. 201 Eg HRH The Prince of Wales v Associated Newspapers (No 3) above. 202 R Deazley, ‘Commentary on Publication of Lectures Act 1835’ above. 203 Eg Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416. 200 Yovatt

Prince Albert v Strange  51 In America, matters remained relatively subdued. At that juncture, that c­ ountry’s creative output was relatively sparse – it was a net consumer of intellectual productions; a fact which remained constant until technological advances in the areas of films and music catapulted it into a formidable copyright exporter. Nevertheless, a debate resembling Donaldson v Beckett materialised in Wheaton v Peters,204 a case involving unauthorised printing of Supreme Court opinions. The plaintiff, Henry Wheaton compiled the opinions and provided annotations and summaries of the cases. The defendant, Richard Peters, published abridged versions of the reports. Wheaton brought a claim for copyright infringement in Pennsylvania. He argued, unsuccessfully, that apart from his rights under statute, he had perpetual common law rights in his reports. It was held that copyright in published works arose from statute and that there was no federal common law. That argument was sustained on appeal to the Supreme Court, where Justice John McLean stated that state common law protected copyright in unpublished works but not published ones. The Supreme Court’s judgment was essentially the same as the dominant interpretations of Donaldson v Beckett. The Court remanded the case to the Circuit court to determine whether Wheaton had satisfied the requirements for copyright protection. The Circuit court held that he had done so. Eventually the matter was settled. The significance of Wheaton v Peters lies in the fact that it marked the formal separation of the protection available to published and unpublished works in the USA. Published works attracted federal copyright works while unpublished material could be protected by state common law copyright – a potent recipe for inconsistency. Another feature of Wheaton v Peters was that the justifications for affording protection copyright works were also framed in economic and labour terms.205

Prince Albert v Strange and the Recognition of the Trio of Jurisdictional Bases for Restraining Unauthorised First Publication The period after Abernethy v Hutchinson witnessed the recognition of the trio of grounds for preventing unauthorised first publication: namely, authorial property rights, breach of trust or confidence, and breach of an implied contract not to publish. Breach of implied contract and breach of confidence were especially useful in cases where a plaintiff ’s property rights were doubtful or where there had been non-compliance with the formalities required for statutory copyright protection. These grounds were used as alternative causes of action in various cases; a potent recipe for confusion.



204 Wheaton 205 ibid.

v Peters 33 US (8 Pet) 591.

52  The Jurisdictional Bases for Restraining Unauthorised Publication Reliance on breach of confidence and breach of implied contract as bases for preventing unauthorised first publication crystallised in Prince Albert v Strange,206 in which Queen Victoria and Prince Albert created etchings for their personal amusement and employed Brown, ‘a printer in the country’ to take impressions from the plates. Jasper Judge obtained some of the prints from Middleton, Brown’s employee, and proposed to exhibit the prints. He then prepared a catalogue to accompany an exhibition of the prints. William Strange printed the catalogue and forwarded a copy to the Queen and Prince Albert, among others. The Prince Consort’s immediate reaction was to seek an ex parte injunction restraining the defendants from exhibiting the etchings or publishing their description in the catalogue. Of course, the real claimant was the Queen. The rule that a married woman could only sue with her husband’s consent was still in operation. Sir James Knight-Bruce V-C heard the case at first instance and granted the relief sought by Prince Albert. William Strange sought to have the injunction preventing publication of the catalogue dissolved but that attempt was unsuccessful at first instance and on appeal. The reasoning in Prince Albert v Strange was ambiguous. Although some eminent authors207 latched onto Sir James Knight-Bruce V-C’s reference to the Queen’s privacy208 to erect a new legal action based on respecting authors’ privacy, the court based its decision on protecting the plaintiff ’s ‘property’ rights.209 That conclusion is sustained by Lord Cottenham’s observations when he stated that: The property in an author or composer of any work, whether of literature, art or science, such work being unpublished and kept for his private use or pleasure cannot be disputed, after the many decisions in which that proposition has been affirmed or assumed.210

The authorial basis of property rights in unpublished works can be supported by the facts of the case. The Queen and the Prince Consort had property rights in the unpublished etchings because they created them. Exhibiting the etchings or printing a catalogue describing them infringed those rights. However, after discussing the evidence, Lord Cottenham also observed that: And upon the evidence on behalf of the Plaintiff, and the absence of any explanation on the part of the Defendant, I am bound to assume that the possession of the etchings or engravings, on the part of the Defendant or Judge, has its foundation in a breach of trust, confidence or contract, as Lord Eldon did in the case of Mr. Abernethy’s Lectures, as reported in 3 Law Journal, 209; and upon this ground, also, I think the Plaintiff ’s title to the injunction sought to be discharged fully established.211



206 Prince

Albert v Strange (1849) 2 De G & Sm 652. S Warren and L Brandeis, ‘The Right To Privacy’ above. 208 (1849) 2 De G & Sm 652, 689. 209 ibid, 691–94. 210 Prince Albert v Strange 1 H & Tw 1, 21. 211 1 H & Tw 1, 28. 207 See

Prince Albert v Strange  53 There was an actionable breach of confidence because Brown received the etchings on the understanding that they would be printed solely for the benefit of the plaintiff and the Queen. That confidence was fastened on Brown’s employee who sold some of the impressions to a third party212 and it was undermined further by descriptions of the etchings in a catalogue. There was also an implied contract between the plaintiffs and Brown, in the sense that the etchings were not supposed to be printed for a collateral purpose. The defendants’ title to the description of the etchings in the catalogue was vitiated by the breaches of confidence and implied contract. Although the reasoning in Albert v Strange was fluid, the case confirmed the principle that breach of an implied contract not to publish, breach of confidence, and infringement of authorial rights in unpublished works provided the grounds for restraining unauthorised first publication. What remained for discussion in individual cases was an analysis of the parties bound by the obligation of confidence and the precise nature of the implied contract between authors and copyright infringers. Prince Albert v Strange is of considerable significance in three important respects. First, the subject matter protected by common law copyright was extended to artistic works. As Lord Cottenham noted: The property of an author or composer of any work, whether of literature, art, or science, in such work unpublished, and kept for his private use or pleasure, cannot be disputed, after the long line of decisions in which that proposition has been affirmed or assumed.

Letters, dramatic performances, books and lectures were protected by common law copyright but there had been no case dealing with unpublished artistic works. Secondly, by holding that unauthorised publication of a description or catalogue of the etchings was copyright infringement, Prince Albert v Strange widened the breadth of common law protection of unpublished works. Previously, injunctions were obtained in cases where there had been a reproduction of the work itself. However, according to Lord Cottenham: The means are different, but the object and effect are similar: it is to make known to the public, more or less, the unpublished works and compositions of the author, which he is entitled to keep wholly for his private use and pleasure, and to withhold altogether, or as far as he may please, from the knowledge of others.213

As a result, common law rights in unpublished works were not confined to exact reproduction of authors’ expressions and could encompass protection of ideas as such – an outcome which might be explained on the basis of cumulation of rights in the etchings. Although ‘property’ required publication of a work, breach of trust or confidence could encompass publication of ideas.

212 Prince Albert v Strange was decided in an environment in which the action for breach of confidence had not taken its modern form. 213 1 Mac & G 25, 43; 1 H & Tw 1, 22.1310.

54  The Jurisdictional Bases for Restraining Unauthorised Publication Thirdly, Prince Albert v Strange is significant because it cast the exceptions to infringement of unpublished works very narrowly. In the course of his judgment, Lord Cottenham stated that: Cases of abridgments, translations, extracts, and criticisms of published works have no reference whatever to the present question. They all depend on the extent and right under the acts with respect to copyright, and have no analogy to the exclusive right of the author in unpublished works, which depend entirely on the common law right of property.214

Significantly, criticism of an unpublished work was prohibited: a position which persists in contemporary British copyright law.215 Importantly, there was no reference to vindication of personal reputation as a possible exception to common law rights in unpublished works. That defence had been hinted at in Gee v Pritchard and Lord and Lady Perceval v Phipps. A possible explanation for that omission was that the facts of Prince Albert v Strange did not engage that exception – the law evolved in response to the facts of individual cases. Prince Albert v Strange represented a major shift in the meaning of ‘publication’. The concept of ‘publication’ was stretched to cover description of a work. Earlier cases had proceeded on the basis that the work itself should be reproduced exactly or in a different medium. A proper application of those precedents would have meant that merely describing etchings in a catalogue was not equivalent to reproducing the etchings themselves. Once again, an artificial meaning was attached to ‘publication’ in order to sanction a confidant’s egregious conduct. By the end of the nineteenth century, Prince Albert v Strange had assumed totemic significance because it delineated the subject matter, breadth, and exceptions to common law protection of unpublished works.216 In America, a right of privacy was crafted, in part, from the decision in Prince Albert v Strange.217 Of course, as we highlighted above, the judgments in that case were not predicated on protecting the Queen’s privacy. Prince Albert v Strange was later seen as a case which reaffirmed common law protection of unpublished works – a position which was doubted by the House of Lords in Jeffreys v Boosey.218

Further Developments The recognition of property, confidence and implied contract as the means for preventing unauthorised first publication in Prince Albert v Strange was doubted 214 1 Mac & G 25, 43; 1 H & Tw 1, 22.1310. 215 See ch 4 below. 216 CP Phillips, The Law of Copyright in Works of Literature and Art and Its Application to Designs (London, Private Publisher, 1863) 14; TE Scrutton, The Laws of Copyright, 2nd edn (London, John Murray, 1883) 119, 222; WA Copinger, The Law of Copyright in Works of Literature and Art, 2nd edn (London, Stevens, 1881) 11–16. 217 S Warren and LD Brandeis, ‘The Right To Privacy’ above. 218 Jeffreys v Boosey (1854) 4 HLC 815 (HL).

Further Developments  55 by the House of Lords’ decision in Jefferys v Boosey;219 a case which concerned infringement of copyright in Vincenzo Bellini’s ‘La Sonnambula’, an opera which had been published in England. Lords Brougham and St Leonards seemed to have eschewed the existence of any ‘common law copyright’ in published or unpublished works. For example, Lord Brougham confined copyright in unpublished works to ownership of a chattel when he stated that:220 [an author] has the undisputed right to his manuscript; he may withhold, or he may communicate it, and communicating, he may limit the number of persons to whom it is imparted, and impose such restrictions as he pleases upon their use to it. The fulfilment of the annexed conditions he may proceed to enforce, and for their breach he may claim compensation.

In Lord Brougham’s view: as long as [an author] kept his composition to himself, or to a select few placed under conditions, he was like the owner of a private road; none but himself or those he permitted could use it …221

However, Lords Brougham and St Leonards’ views on common law rights in unpublished works were not adopted in later cases222 presumably because they were obiter (the opera was published). One such case was Turner v Robinson223 an Irish case in which the plaintiff was the bailee of a painting. The owner of the painting allowed the plaintiff to engrave and exhibit it. The defendant attended the exhibition, created an identical scene and made photographs which reproduced the colouring and arrangement of the original painting. The plaintiff successfully sought an injunction preventing the defendant from selling the photographs: a decision which appears to fall foul of the idea/expression dichotomy. Sir Thomas Cusack Smith MR recognised the existence of common law rights in unpublished works. By the time Jefferys v Boosey was decided, there were longstanding precedents suggesting that rights in unpublished works were authorial.224 One of the issues before the Master of the Rolls in Turner v Robinson was whether public exhibition of the painting in Manchester and Dublin vitiated the common law right. In Sir Thomas Cusack Smith MR’s view, conditional exhibition of the pictures did not destroy the common law right. On appeal, the Irish Court of Appeal in Chancery affirmed the Master of the Rolls’ judgment based on breach of contract or confidence. The question of publication was

219 ibid. 220 ibid, 962. 221 Lord St Leonards agreed with Lord Brougham’s view that ‘no common-law right exists after ­publication’ (1854) 4 HLC 977 (HL) (Lord St Leonards). 222 See Macmillan v Dent [1907] 1 Ch 107 (CA), 120–21 (Fletcher Moulton LJ); Mansell v Valley ­Printing Co [1908] 1 Ch 567, 573); [1908] 2 Ch 441 (CA), 445 (Cozens Hardy MR), 447 (Farwell LJ); Re Dickens, Dickens v Hawksley [1934] 1 Ch 267 (CA), 288 (Lord Hanworth MR), 292 (Romer LJ), 303–4 (Maugham LJ). 223 Turner v Robinson (1860) 10 Ir Ch R 121 (MR), 510 (CA in Ch) (Ireland). 224 See the cases referred to above.

56  The Jurisdictional Bases for Restraining Unauthorised Publication not considered. There was breach of confidence because the defendant knew that the exhibition was solely meant to market the engravings and that copying the painting was not allowed. The Court of Appeal in Chancery relied on contract or confidence to avoid determining whether public exhibition of an artistic work amounted to ‘publication’. Later, the rule that public exhibition of an ­artistic work is not equivalent to its first publication became established. The reason for that rule lies in the possibility that authors might wish to exploit different markets for their works. Exhibition, reproduction and first publication contribute to those markets; an argument we encountered in connection with Macklin v Richardson. In common with Prince Albert v Strange, another significant feature of Turner v Robinson was that infringement of common law rights in unpublished works was not confined to exact reproductions of the original work: adaptions were also actionable.225 In terms of exceptions, Perceval v Phipps and Gee v Pritchard had suggested that unauthorised first publication might be necessary in order to vindicate one’s reputation. Another exception to common law rights in unpublished works was developed in Hopkinson v Burghley in which the plaintiff sought an order compelling a private club to produce some unpublished letters.226 The letters were marked ‘private’, and ‘private and confidential’. The author of the letters refused to sanction production of the letters in civil proceedings. The Master of the Rolls relied on Pope v Curll and refused to sanction production of the letters. On appeal, Turner and Lord Cairns LJJ decided that an author’s property rights in an unpublished letter were confined to a right to restrain the letters from being published. That ‘property’ did not extend to preventing the letters from being produced in evidence. The interests of justice prevailed in that case – the court placed a premium on the importance of relying on the best evidence to resolve the parties’ dispute. The extent of exceptions to rights in unpublished works was also considered in Earl of Lytton v Devey.227 Edward Bulwer-Lytton, Baron Lytton, a politician and author, wrote romantic correspondence to his then wife, Rosina. Later, Lord and Lady Lytton divorced quite acrimoniously. After their death, the letters that were written to Lady Lytton passed to her executrix, Louisa Devey. Lord Lytton’s son, Robert Bulwer-Lytton, Earl of Lytton, published a hagiography of his father. Louisa Devey sought to set the record straight by publishing Lady Lytton’s unpublished autobiography. She also intended to publish the letters that were written by Lord Lytton to Lady Lytton. The Earl of Lytton obtained an injunction prohibiting unauthorised first publication of the letters. Sir James Bacon V-C accepted that the chattel property (the letters) belonged to Louisa Devey but she could not publish

225 Turner v Robinson [1860] Ir Ch R 121, 144 (infringement by publication of photograph of ­reconstruction of what was depicted in a painting. 226 Hopkinson v Burghley (1867) LR 2 Ch App 447. 227 Earl of Lytton v Devey (1885) 54 LJ Ch 293.

Further Developments  57 them first. Sir James Bacon V-C’s reasoning was based on authorial property and breach of confidence. The Vice-Chancellor stated that: [T]he sender of the letters has still that kind of interest, if not property, in the letters that he has a right to restrain any use being made of the communication which he has made in the letters so sent by him … It would be strange, indeed, if because a man writes to another a confidential communication, that other has a right to publish it to the world. It is a matter between themselves. It would be neither just, nor right, nor lawful, that any publication of these communications should be made.228

Edward Bulwer-Lytton had authorial rights in the letters and that property passed to his heir, the Earl of Lytton. Apart from ‘property’, the letters were written in confidence to Lady Lytton. Therefore, Lady Lytton’s executrix was bound by the duty to maintain confidences. However, the parameters of breach of confidence were left unclear. The person to whom the duty was owed was dead. In addition, Lady Lytton, who owed a duty of confidence to her husband, was also dead. A conclusion which can be extracted from this and earlier cases is that common law rights in unpublished works developed before breach of confidence had assumed its modern form – an event which, subject to further developments,229 occurred in Coco v AN Clark.230 Nevertheless, Earl of Lytton v Devey is of some significance to the analysis in this chapter because it confirmed that the property rights that attached to an unpublished work were transferable. Another important feature of Lytton v Devey was that it confirmed the propositions that unauthorised first publication could be necessary to vindicate the recipient of an unpublished letter’s reputation.231 That exception had been hinted at in Perceval v Phipps and Gee v Pritchard. However, the reputation that was being vindicated after Lady Bulwer-Lytton’s death is also unclear. These ambiguities suggest that Lytton v Devey was decided before the rule that a dead person cannot be defamed had solidified. The rule that limited circulation of a work was not first publication was applied in Kenrick v Danube Collieries and Minerals Co Ltd232 in which a mining engineer compiled a survey of a property and disclosed it to a person who was in a syndicate that was engaged in the process of forming a company. The engineer was to receive payment upon formation of the company and printing of the report. However, the report was supposed to be returned to the engineer if formation of the company was abandoned. The report was printed and distributed to the syndicate and one or two persons who were not connected with the syndicate. Efforts to form the company were fruitless and the defendant issued a prospectus based on the report. The engineer successfully restrained the defendant from relying on the report. 228 ibid, 295–96. 229 See Campbell v MGN Ltd [2004] UKHL 22; [2004] 2 AC 457 in relation to the tort of misuse of private information. 230 Coco v AN Clark [1969] RPC 41. 231 Earl of Lytton v Devey (1884) 54 LJ Ch 293, 296. 232 Kenrick v Danube Collieries and Minerals Co Ltd (1891) 39 WR 473 (Romer J).

58  The Jurisdictional Bases for Restraining Unauthorised Publication It was held that the unpublished report remained the engineer’s property. Kenrick v Danube Collieries and Minerals Co Ltd also reinforced the rule in Prince Albert v Strange, namely that infringement of property rights in an unpublished work extended beyond exact reproduction of an author’s original expressions. Referring to the plaintiff ’s survey document in the defendant’s prospectus infringed the plaintiff ’s rights. Despite the crystallisation of the law on unpublished works in Prince Albert v Strange, novel problems presented themselves for adjudication. One such problem was whether common law rights in unpublished works protected ideas. That problem was hinted at by Yates J in Millar v Taylor when he referred to property rights in ideas. Later, the tortuous approach in Abernethy v Hutchinson seemed to suggest that unrecorded facts might or might not be protected. A similar conclusion can be raised in connection with Prince Albert v Strange, which appeared to protect the idea that the Queen and her husband were in the habit of making certain etchings. Gilbert v Star Newspaper233 went further than these earlier authorities and clearly protected an idea. In that case, the plaintiffs sought an injunction prohibiting the defendants from publishing WS Gilbert’s ‘His Excellency’, a comic opera which was scheduled for public performance. The plaintiff alleged that an employee or actor had disclosed the confidential plot to the Star Newspaper. Chitty J’s reasons for granting the injunction were based on the principles of breach of confidence as established in Prince Albert v Strange. The defendant unsuccessfully argued that since the libretto of the opera had not been disclosed to the newspaper, there was no actionable breach of confidence. It might be argued that the plaintiff relied on breach of confidence because his property rights did not encompass the plot of the opera which had been copied by the defendants. Apart from protecting ideas, the scope and subject matter of common law copyright remained deeply contentious – a matter which had been hinted at in Lord and Lady Perceval v Phipps. Sometimes rights in unpublished works extended to material which had minimal originality. In Exchange Telegraph Company Ltd v Gregory & Co234 for example, the plaintiffs obtained share prices from the London Stock Exchange and distributed that information to subscribers by telegraph and other means. The defendant’s subscription was terminated but he obtained the share prices surreptitiously. The plaintiff successfully sought an injunction restraining the defendant from infringing its copyright. Matthew J held that the plaintiffs had a right of property at common law in the information and were entitled to an injunction to restrain the defendant from infringing that right by continuing to publish it. It might be argued that the share prices were not expressive. In terms of exceptions, the notion that an unpublished work could be used to vindicate personal reputation was clarified in Labouchere v Hess.235 The ­plaintiff, 233 Gilbert v Star Newspaper (1894) 11 TLR 4. 234 Exchange Telegraph Company Ltd v Gregory & Co [1895] 1 QB 147. See also The Exchange Telegraph Co (Ltd) v Howard and the London and Manchester Press Agency Ltd (1906) 22 TLR 375. 235 Labouchere v Hess (1898) 77 Law Times 559.

Further Developments  59 Henry Labouchere MP, was the proprietor and editor of the weekly paper Truth. The first defendant, Hess, an editor and publisher of the African Critic, published a story questioning Labouchere’s financial dealings on the London Stock Exchange. The story was derived from letters written by Labouchere to one GA Sala, which Hess obtained from Sala’s widow. Hess threatened to publish additional details concerning Labouchere’s conduct. Labouchere then published a letter in his newspaper purporting to prove that the defendant could not keep confidences. Subsequently, the plaintiff identified the source of Hess’ letters and sought to restrain Hess and Sala’s widow from publishing the letters or disclosing their contents. The case was heard by North J who held that the legal bases for restraining unauthorised first publication of letters were well established but could be displaced if publication was necessary for the purpose of clearing the defendant’s character. However, the defendant’s conduct did not fall within that exception – he did not keep confidences. Apart from this, the proposition that infringement of common law rights in unpublished works extended beyond exact reproduction of a work was debated in Labouchere v Hess. An injunction restraining Sala’s widow from disclosing the contents of the letters was refused. It might be argued that the court’s refusal to enjoin disclosure of the contents of the letters departed from Prince Albert v Strange, Turner v Robinson and Exchange Telegraph Company Ltd v Gregory & Co which suggested that infringement of common law rights in unpublished works extended to reproduction of ideas. The three bases for preventing unauthorised first publication were also considered in Macmillan v Dent,236 which involved a dispute about ownership of a deceased author’s letters. In that case, Fletcher Moulton LJ recognised that confidentiality might constitute a separate and distinct ground from the property right.237 However, once again, the action for breach of confidence had not taken its modern form. The person to whom the duty was owed was dead. Another important aspect of MacMillan v Dent was that ‘property’ rights in unpublished works were transferrable and could be enforced by licensees – a position which was evident in Turner v Robinson (enforcement of common law rights in an unpublished painting by the bailee for hire of the painting). The principle that infringement of common law rights in unpublished works extended beyond exact reproduction of the original work was also applied in Philip v Pennell238 in which James Whistler, an artist, authorised the defendants to write his biography, but did not permit them to publish any of his letters. Whistler’s daughter sued the defendants for unauthorised first publication of the letters.

236 Macmillan v Dent [1907] 1 Ch 107. 237 ibid, 121 (‘Such grounds as that the letter was confidential, that the matter therein was secret, that it was an abuse of trust to allow it to be published, were grounds on which the writer of the letter might, quite independently of any question of property, interfere with the unlimited use of the letter by the person who received it’.) But cf at 131 (Buckley LJ). 238 Philip v Pennell [1907] 2 Ch 577, 585.

60  The Jurisdictional Bases for Restraining Unauthorised Publication It was held that the defendants were entitled to use the information contained in the letters or documents written by Whistler, which had lawfully come into their possession for compiling the biography, without any express or implied authority given by Whistler for that purpose. Although unauthorised first publication of extracts or paraphrases from Whistler’s letters was prevented, extracting information from the letters was not actionable – an analysis which seems to confirm the operation of the idea/expression dichotomy in that case. In the course of his judgment, Kekewich J also confirmed the by then widely held view that Albert v Strange stood for the rule that authors could prevent unauthorised first publication of their works if such publication amounted to breach of confidence. In addition, Kekewich J confirmed infringement of property rights and breach of implied contract as the other grounds for restraining unauthorised first publication of copyright works: by the time of the judgment in Phillip v Pennell, protection of unpublished works had moved from being concerned with enforcing an author’s property rights to breach of confidence and breach of an implied contract not to publish. Bowden Brothers v Amalgamated Pictorials Ltd239 was the last relevant case that was decided before partial abrogation of common law rights in unpublished works in 1911. In that case, the plaintiffs owned some photographs. The defendants used the photographs in their periodicals in pursuance of a licensing agreement they had with the plaintiffs. Some of the photographs were registered. Subsequently, the plaintiffs terminated their contract with the defendants but the defendants continued to publish the photographs in their periodicals. The plaintiffs sought an injunction preventing the defendants from publishing the photographs. It was held that the defendants could not use the unpublished photographs without the plaintiff ’s consent and that using the plaintiff ’s unpublished photographs would infringe the plaintiff ’s common law rights.

Conclusion By 1911, ‘property’, breach of implied contract and breach of confidence were firmly established as the grounds for preventing unauthorised first publication. The advantage of relying on breach of confidence to protect unpublished works was that a work could be protected even if there was no manuscript which could be used to found a claimant’s property rights. However, the parameters of breach of confidence were insecure. The nature of the relationship which could attract that action was ill-defined. In addition, whether the obligation to maintain confidences could be enforced on a post-mortem basis was left unexplored. In common with authorial property, the law of confidence developed incrementally in order to meet the facts of individual cases.

239 Bowden

Brother v Amalgamated Pictorials Ltd [1911] Ch D 386, 388.

Conclusion  61 Where the relationship between the parties did not give rise to an actionable breach of confidence or where the plaintiff ’s property rights could not be established, breach of an implied contract not to publish was a useful auxiliary basis for protecting unpublished works. The notion of implied contracts imposed unilateral obligations on others. The basis of that imposition was that flagrant conduct had to be remedied. However, implied contract harboured problems of its own. Because it created involuntary obligations, it interfered with freedom of contract. Consequently, its deployment in future cases was curtailed. Exceptions to common law rights in unpublished works developed incrementally. Initially, protection was absolute. Gradually, a few exceptions became relevant. A work could be used in the course of judicial proceedings. In addition, a work could also be used to vindicate personal reputation; a defence which was uncertain for a considerable time before it received approbation in Labouchere v Hess. The law developed at a time before the importance of unauthorised first publication to the furtherance of freedom of expression had become significant. In addition, exceptions to protection of unpublished works reflected the courts’ views on the character of the owners of the contentious works. In terms of its meaning, ‘publication’ expanded considerably. It moved from exact printing of the original work to protection of the ideas that were encapsulated in it. Later, ‘publication’ became embroiled in technicalities. For instance, some public disclosures of a work were excluded from the meaning of publication. These changes were dictated by the increasing economic significance of copyright and the facts of individual cases. In the USA, ‘publication’ increased in complexity and later, it contributed to a partial abrogation of common law copyright; an issue that will be encountered in the next chapter.

3 The Abrogation of Common Law Protection of Unpublished Works and its Consequences Introduction The consolidation of the jurisdictional bases for restraining unauthorised first publication was incremental. The law evolved in response to a plethora of contingencies including the growing importance of authorship, new copyright subject matter, and the idiosyncrasies of individual cases. By the end of the nineteenth century, protection of unpublished works had metastasised from ownership of chattel property in the physical embodiment of authors’ expressions of ideas to intangible authorial rights, securing trust or confidence, and preventing breaches of implied contracts not to publish. Given that the law had crystallised, it is necessary to explore why common law rights in unpublished works were abolished. In Britain, at least, there did not seem to be, on the face of it, urgent and persistent clamours for change. Credible explanations for the approximation of copyright in published and unpublished works can readily be supplied. In the first place, several domestic concerns including dissatisfaction with the formalities governing statutory copyright galvanised the case for reform. In Britain, for instance, registration, which separated common law from statutory copyright, attracted the most criticism. It was often regarded as being cumbersome1 and inconsistent with a growing international trend for automatic copyright protection.2 The domestic picture in Britain and America was complicated much further by publishing a work without observing peremptory formalities: an omission which was often fatal to copyright protection.3 The meaning of ‘publication’ was sometimes stretched

1 1878 Royal Commission on Copyright XXIV, c.2036. See for example: the Separate Report by Sir Louis Mallet (xlvi); Separate Report by Mr Edward Jenkins (lviii); Dissent from the Report … by Mr A Trollope (lix); Note appended to the signature of Mr FR Daldy (lx). 2 S Van Gompel, Formalities in Copyright Law: An Analysis of their History, Rationales and Possible Future (The Hague: Wolters Kluwer, 2011). 3 See Mark Twain Case, 14 F 728 (CC ND Illinois, 1883); Public Affairs Association v Rickover 284 F 2d 262 (DC 1960); Brown v Tabb 714 F 2d 1088 (11th Cir, 1983); Ricordi v Haendler 194 F 2d 914 (1952);

Introduction  63 beyond ­elasticity in order to obviate the risk that a work might be forfeited to the public domain.4 That pressure was most evident in the USA – the absence of strong supplementary bases for protecting unpublished works in that country imposed further burdens on ‘publication’.5 Although ‘privacy’ featured much later and largely in response to Warren and Brandeis’ authoritative intervention,6 its parameters and consolidation in individual states were variable – a restatement of its essential ingredients occurred in due course.7 Quite apart from this, the fragmentation of British statutory copyright provided further lines of attack. Unlike the USA, Britain had an embarrassing panoply of copyright statutes, which often trained their focus on specific subject matter. Gradually, these problems could no longer be ignored, and they contributed to the arguments in favour of abolishing common law copyright. International concerns also figured prominently. Three matters merited the closest attention. The first was imperial – the balance of copyright protection often tilted in favour of the mother country.8 Related to this was the perception that colonial interests were not pursued vigorously in international copyright ­negotiations.9 These issues presaged the desire to implement the 1908 Berlin Revision of the Berne Convention,10 which provided an opportunity for grappling with the deficiencies plaguing imperial and domestic copyright. For its part, America remained wedded to the distinctions between statutory and common law copyright. Its attitudes to international copyright were distinctly parochial – it was for a long time a net consumer of intellectual productions.11 Later, its creative industry burgeoned exponentially and became globally important. Once its copyright industry was secure, inexorably, it gravitated towards internationalism.12 Although

Holmes v Hurst 174 US 82; Metro Associated Services Inc v Webster City Graphic Inc 117 F. Supp 224 (ND Iowa, 1953); National Comics Publications Inc v Fawcett Publications Inc et al, 191 F 2d 594, 598 (1951); Gardenia Flowers Inc v Joseph Markovits Inc 290 F Supp 776 (1968); Gray v Eskimo Pie Corporation 244 F Supp 785 (1965); Fashion Originators Guild of America Inc v Federal Trade Commission 114 F Supp 2d 80 (1940). 4 De Silva Construction Corp v Herrald et al 213 F Supp 184 (1962); Bell v Combined Registry Company 397 F Supp 1241 (1975); Rexnord Inc v Modern Handling Systems Inc 379 F Supp 1190 (1974); Roy Export Co Estab of Vaduz v CBS 672 F 2d 1095 (1982). 5 DJ Solove and NM Richards, ‘Privacy’s Other Path: Recovering the Law of Confidentiality’ (2007) 96 Georgetown Law Journal 123. 6 SD Warren and LD Brandeis, ‘The Right to Privacy’ (1890–91) 4 Harvard Law Review 193. 7 The American Law Institute, Restatement of the Law, Second, Torts, § 652 (1977). 8 C Seville, The Internationalisation of Copyright Law: Books, Buccaneers and the Black Flag in the Nineteenth Century (Cambridge: Cambridge University Press, 2006). 9 ibid. 10 S Ricketson and JC Ginsburg, International Copyright and Neighbouring Rights: The Berne Convention and Beyond, 2nd edn, Vol 1 (Oxford: Oxford University Press, 2005) 92–102 for an analysis of the provisions of the Berlin Revision of the Berne Convention. 11 B Ringer, ‘The Role of the United States in International Copyright – Past, Present, and Future’ (1968) 56 Georgetown Law Journal 1050. 12 JC Ginsburg and JM Kernochan, ‘One Hundred and Two Years Later: The U.S. Joins the Berne Convention’ (1988–89) 13 Columbia Journal of Law and The Arts 1.

64  Approximation of Common Law and Statutory Copyright America joined the Berne Convention in 1989, it had partially abrogated common law protection of unpublished works by then; a development which was fuelled by changing views on formalities, increasing international exploitation of intellectual property rights, and incessant technological innovation.13 Although common law copyright was abolished, vested rights were secured via savings clauses – some unpublished works were protected perpetually, or for periods that exceeded the standard copyright term.14 These savings clauses and the abolition of formalities have intensified problems with orphan works. Separately, cumulation of rights in unpublished works has remained steadfast; a characteristic which was entrenched in Britain by the Copyright Act 1911.15 The American situation is rather complicated, owing to the premium that is often placed on constitutional values, including freedom of expression, there has been less overlapping protection of unpublished works. For example, privacy is usually subordinated to other imperatives.16 The meanings of ‘publication’ have remained constant – numerous statutes adopted common law understandings of that notion. For their part, judges have interpreted the new statutory provisions by reference to the old common law. As a result, concepts which were deployed with the goal of separating statutory from common law copyright have remained consistent – ‘publication’ is still riddled with complexities. As will be seen in chapter four of this book, these artificialities have assumed an altogether new complexion in the face of rapid technological advances.

Domestic Pressures for Reform In Britain, the reasons for abolishing common law copyright can be distilled into three main categories, namely: dissatisfaction with the multiple sources of copyright law, problems with imperial copyright, and the need to implement the 1908 Berlin Revision of the Berne Convention. However, limited statutory interventions in the areas of dramatic works, lectures, and fine art occurred much earlier than the wholesale abrogation of common law copyright in 1911. These early initiatives responded to specific demands, including clarifying authors’ rights. However, placing protection of unpublished works on a statutory footing generated significant gaps which necessitated continued reliance on the common law.

13 TF Cotter, ‘Toward a Functional Definition of Publication in Copyright Law’ (2008) 92 Minnesota Law Review 1724. 14 Eg Copyright Act 1976 §5. 15 Copyright Act 1911 s 31. 16 Eg ECHR Art 8(2).

Domestic Pressures for Reform  65

The Dramatic Literary Property Act 1833 Statutory protection of dramatic works represented the first major encroachment into common law rights in unpublished works. At common law, authors had the right to publish their scripts first.17 Once publication occurred, dramatic works were treated as ‘books’ and attracted statutory copyright.18 However, ­performance rights in published or unpublished dramatic works remained uncertain. According to Coleman v Wathen, unauthorised public performances of published plays was not actionable;19 a position which can also be extracted from Murray v ­Elliston.20 A diametrically different conclusion applied to unpublished dramatic works: Morris v Kelly21 (unauthorised public performance of such works could sustain a claim for copyright infringement). Separately, the market power of some metropolitan theatres, which prevented their smaller provincial rivals from staging some popular works, agitated some reformers.22 These problems prompted Lord Eldon to state that: Disputes respecting theatrical property had lately become so frequent, that it might be adviseable to institute a separate Court for deciding them. The Court had traveled through almost all the theatres in the metropolis. The Circus, the Opera-House, Sadler’s Wells, and Covent-garden, had alternately come under its consideration; and now it had unfortunately got to Drury-lane.23

The enactment of the Dramatic Literary Property Act (DLPA) in 1833 was a possible consequence of these concerns. The legislative history of the DLPA reveals that developments abroad influenced British copyright reforms.24 For example, Edward Bulwer-Lytton25 relied extensively on the protection available to dramatic works in France and Belgium: ‘[t]he state of our laws in this respect is scarcely credited in foreign countries’.26 Similarly, TJ Thackeray (a dramatist) also highlighted the benefits of adopting the

17 (1770) Amb 694. 18 Copyright Act 1814. 19 Coleman v Wathen (1793) 5 Term Rep 245. 20 Murray v Elliston (1822) 5 B & Ald 657. 21 Morris v Kelly (1820) 1 Jac & W 481. 22 R Deazley, ‘Commentary on Dramatic Literary Property Act 1833’, in Primary Sources on Copyright (1450–1900), L Bently and M Kretschmer (eds), www.copyrighthistory.org (2008). 23 Elliston v Jones, The Times, 1 March 1821; also Morris v Kelly (1820) 1 Jac & W 481 in which the plaintiff successfully prevented the performance of The Young Quaker, which was unpublished. 24 For an analysis of the legislative history of the Dramatic Literary Property Act, 1833 see R Deazley, (2008) ‘Commentary on Dramatic Literary Property Act 1833’ above. 25 Bulwer-Lytton was a novelist, poet, and politician. He was also a staunch advocate for dramatic copyright law reform in Britain. 26 Hansard, 3rd Ser 13 (1831) 247.

66  Approximation of Common Law and Statutory Copyright French provisions on dramatic copyright.27 Consequently, the text of the DLPA was derived in large part from French law. The Act provided the author of a dramatic work with two exclusive economic rights, namely the reproduction right and the public performance right. In this author’s view, the DLPA heralded the beginning of the codification of copyright in unpublished works. There are no reported cases which were decided after the enactment of the DLPA. That possibility suggests that the DLPA achieved its goals.

The Publication of Lectures Act 1835 The Publication of Lectures Act (PLA)28 provided the next occasion on which protection of unpublished works was codified. There are three possible explanations for Parliament’s intervention in the field of lectures. Firstly, in his speech in Caird v Sime (a case that was decided more than 50 years after the enactment of the PLA), Lord Fitzgerald stated that it was ‘not improbable that the ­difficulties supposed to exist in consequence of Lord Eldon’s reasons [in Abernethy v ­Hutchinson] led to the passing of the Act.’29 As noted in chapter two of this book, Abernethy v Hutchinson was a masterclass of confusion. Uncertainties surrounding the basis upon which the injunction in Abernethy v Hutchinson was granted left protection of unpublished lectures unclear and might have prompted Parliament to act.30 Secondly, Lord Brougham, the chief proponent of the Act, might have wanted greater dissemination of lectures to the public. That argument has considerable merit. Lord Brougham, a former Lord Chancellor, played a key role in creating the Society for the Diffusion of Useful Knowledge (SDUK), an organisation which was aimed at disseminating knowledge especially to working men who could not access formal teaching. The other constituency of the SDUK was those men who preferred self-education. To advance its goals, the SDUK published cheap texts and distributed them to the reading public; an activity which might have been restricted by copyright in lectures. As Catherine Seville put it, Lord Brougham might have ‘presumably baulked at the thought of [lectures] being published at a profit by a publisher with less laudable aims than those of the SDUK.’31

27 TJ Thackeray, On Theatrical Emancipation and the Rights of Dramatic Authors (London, Chappell, 1832) 28–30. The parliamentary materials do not suggest that French and Belgian laws distinguished published from unpublished dramatic works. 28 1835, 5 & 6 Will. IV, c.65. 29 Caird v Sime [1887] 12 AC 326 (HL) 355. 30 In the end, the injunction in that case was dissolved after the production of additional information by the Lancet: Caird v Sime [1887] 12 AC 326 (HL), 339, where Lord Halsbury LC seemed to suggest that ‘an arrangement between the parties [in Abernethy v Hutchinson], as seems probable, put an end to the litigation.’ 31 C Seville, Literary Copyright Reform in Early Victorian England: The Framing of the 1842 Copyright Act (Cambridge, Cambridge University Press, 1999) 56.

Domestic Pressures for Reform  67 Lord Brougham’s intervention might also have been motivated by a desire to protect himself from frequent and stinging criticism in national newspapers. As Thomas Wakley, the editor of the Lancet observed: a noble and learned lord has resolved on delivering a series of political lectures in the North of England, and fearing that he should not continue to attract audiences, as he himself has stated, he has brought in this bill to protect himself from annoyances in the newspapers.32

Lord Brougham’s Act gave authors of unpublished oral and written lectures the ‘sole right and liberty of printing and publishing’ their works.33 The Act also prohibited newspapers from reproducing lectures without their author’s consent. The right to print and publish lectures endured perpetually. However, a limited term applied if authorised first publication of the lectures occurred. However, the PLA harboured significant shortcomings. Unpublished lectures could only benefit from protection if at least two days’ notice of their delivery was given to two justices living within a five-mile radius of the venue of the lecture.34 Moreover, newspapers could publish extracts from unpublished lectures. Apart from this, lectures delivered at universities and public institutions were excluded from statutory protection;35 a provision which necessitated continued reliance on common law copyright. As Walter Copinger stated: In consequence of these exceptions, few lectures are protected by this Act, for seldom is the requisite notice given. And, under this latter clause [the provision governing lectures delivered in public places], it would appear that sermons delivered by ­clergymen of the Established Church, in endowed places of public worship, are deemed public property.36

The Fine Arts Copyright Act 1862 Parliament continued its piecemeal statutory protection of unpublished works with the enactment of the Fine Arts Copyright Act 1862 (FACA).37 That statute protected paintings, drawings, and photographs for the life of the author plus seven years.38 However, its principal weakness resided in section 4, which provided that an artistic work could only receive protection if it was registered. Lack of registration meant that statutory copyright protection was unavailable. There was also a

32 The Lancet, 29 August 1835, 712. Presumably, Lord Brougham wanted to protect himself from criticism by controlling first publication of his lectures. 33 PLA 1835 s 1. 34 PLA 1835 s 5. 35 PLA 1835 s 5. 36 WA Copinger, The Law of Copyright in Works of Literature and Art (London, Stevens & Haynes, 1870) 35. 37 Fine Arts Copyright Act 1862, 25 & 26 Vict, c 68. 38 1862, 25 & 26 Vict, c 68. The FACA did not protect unpublished works.

68  Approximation of Common Law and Statutory Copyright possibility that unregistered artistic works might not receive common law protection if they were published. To avoid the possibility that neither the common law nor statutory copyright might protect a work, authors relied on breach of confidence and breach of ‘implied contract’ to protect their unregistered artistic works.

The Interaction of Statutory and Common Law Protection of Unpublished Works The second half of the nineteenth century witnessed increased use of breach of confidence and breach of ‘implied contract’ to fill gaps in statutory copyright protection. One such gap arose from the Publication of Lectures Act 1835 (PLA), which left unpublished lectures delivered at public institutions unprotected. The PLA also had complex notification procedures.39 Consequently, authors relied on the common law to protect their unpublished lectures. For example, in Nicols v Pitman,40 AR Nicols, ‘a lecturer upon various scientific subjects’ delivered, from memory, at the Working Men’s College, Great Ormond Street, London, a lecture entitled ‘The Dog as the Friend of Man’. The audience was admitted to the room by free tickets. The defendant, Pitman, attended the lecture, took nearly verbatim shorthand notes, and published the lecture in his monthly periodical, The Phonographic Lecturer. Nicols sought to restrain unauthorised first publication of the lecture. In Kay J’s analysis: The case does not come within the statute of 5 & C Will. 4, c. 65, because notice in writing was not given to two justices under the 5th section, and it does not appear that it is a case in which an effective notice could have been given, because it was a lecture delivered at the Working Men’s College – a public college.41

As a result, Nicols was forced to rely on the common law to protect his interests. Unauthorised first publication of the lecture breached an implied contract not to publish. The understanding between the lecturer and the audience was that the audience could take the fullest notes for their own personal purposes, but could not publish the lecture for profit.42 Authors continued to circumvent the defects of the PLA by relying on the common law. For instance, in Caird v Sime,43 Professor Edward Caird, a moral philosopher, delivered lectures as part of his duties as Principal and Vice-Chancellor of the University of Glasgow. The students were admitted to the lectures upon payment of a fee. A student transcribed the lectures and had them published. Caird relied on the common law to restrain unauthorised first publication of the



39 PLA

s 5. v Pitman [1884] N 193; [1884] LR 26 Ch D 374. 41 ibid, 381. 42 ibid, 381–82. 43 Caird v Sime (1887) LR 12 App Cas 326. 40 Nicols

Domestic Pressures for Reform  69 lectures because the PLA did not protect lectures delivered at universities.44 In the House of Lords, Lord Halsbury LC affirmed the rule that authors had property rights in their unpublished manuscripts even if there had been limited communication of the contents of the manuscripts.45 In addition, delivery of the lectures was not equivalent in principle to communicating them to the public at large. ­Therefore, Caird was entitled to restrain unauthorised first publication of the lectures. Lord Watson relied on Abernethy v Hutchinson and stated that ­unauthorised first publication of Caird’s lectures could be restrained based on breach of confidence or implied contract not to publish.46 In his judgment, if students had the right to publish the lectures and did so, the professor would be barred from publishing the result of his own literary labours.47 Lord Watson also stated that the public would probably prefer the publication ‘issued with the stamp’ of the author’s authority.48 Lord Fitzgerald’s dissenting speech discounted the relevance of Abernethy v Hutchinson to Caird v Sime and argued that since the Abernethy case was decided on motion, its statement of the law was unreliable.49 Another significant feature of Caird v Sime was that fixation of a work was deemed to be irrelevant to common law rights in unpublished works; a proposition which would offend modern understandings of the idea/expression dichotomy, and in turn, the scope of copyright protection.50 Apart from unpublished lectures, judges grappled with the technicalities of section 4 of the Fine Arts Copyright Act (FACA) which provided that artistic copyright was only available for registered works. Failure to register an artistic work extinguished a statutory copyright claim. As a result, authors relied on the common law to protect their unregistered artistic works. For example, in Tuck & Anor v Priester,51 the plaintiffs were the unregistered owners of copyright in a picture and employed the defendant to make copies of that work for them. The defendant obliged but also made a number of copies for himself and offered them for sale at a lower price. The plaintiffs subsequently registered their copyright and then brought an action against the defendant for an injunction, penalties, and damages. The Lord Justices differed on the application of the FACA to the case but held unanimously that, independently of the FACA, the plaintiffs were entitled to an injunction and damages for breach of an implied contract not to publish and for breach of confidence.52 Pollard v Photographic Company53 also highlighted significant problems surrounding noncompliance with section 4 of FACA. There, a photographer, who

44 See

PLA s 5. v Sime, 337 46 Caird v Sime, 348. 47 Caird v Sime, 332. 48 ibid, 354 (Lord FitzGerald). 49 ibid, 357 (Lord FitzGerald). 50 See ch 4 below. 51 Tuck & Anor v Priester (1887) 19 QBD 629 (CA). 52 ibid, 638 (Lord Esher MR). 53 Pollard v Photographic Company (1888) 40 Ch D 352. 45 Caird

70  Approximation of Common Law and Statutory Copyright had taken photographs of a woman, was restrained from selling or exhibiting copies of the photographs both on the ground that there was an implied contract not to use the negatives for such purposes and on the ground that such a sale or exhibition amounted to a breach of confidence. North J stated that: It is true, no doubt that sect. 4 of [FACA] provides that no proprietor of copyright shall be entitled to the benefit of the Act until registration, and no action shall be sustained in respect of anything done before registration; and it was, I presume, because the photograph of the female Plaintiff has not been registered that this Act was not referred to by counsel in the course of the argument.54

Given that authors could only enforce their rights under the 1862 Act if they had registered their artistic works, judges had to rely on the common law to prevent the possibility that defendants could infringe unregistered copyright works with impunity. Another notable feature of that case is that by the time it was decided, the view that unauthorised first publication of a copyright work could be restrained based on enforcing property rights, breach of implied contract, and breach of confidence had settled. The vagaries of FACA also meant that by the beginning of the twentieth century, common law rights in unpublished works were protected strongly. For instance, unpublished works were sometimes protected on a strict liability basis. This seems to have been the case in Mansell v Valley Printing Co in which it was held that the defendant’s innocence was irrelevant to the issue of liability for infringement of common law rights in unpublished works).55 In that case, the plaintiff was the exclusive owner of two pictures, which had been produced by an employee. A different employee made copies of the pictures and sold them as original drawings to the defendant company. The defendant published them without notice of the plaintiff ’s title, and before registration by the plaintiff under section 4 of FACA had occurred. The question that was raised by that case was whether the owner of an unpublished picture could, apart from statutory copyright protection, sue a person who had, innocently and in good faith, published an unauthorised copy of the picture. Lord Cozens-Hardy MR relied on Prince Albert v Strange, restrained the defendants from publishing the photos, and stated that the jurisdiction to prevent ­unauthorised first publication was based on property, breach of an implied contract not to publish, and breach of confidence.56 In his view: It could not be contended since Prince Albert v. Strange that the owner of an unpublished picture stands in any different position from the owner of an unpublished literary work. The case of Turner v. Robinson is, however, a direct authority on the point. The Master of the Rolls there states the law in language which I desire to adopt: ‘There is no statute for the protection of the copyright in a painting. The only remedies, therefore,



54 ibid,

352. v Valley Printing Company [1908] 2 Ch 441 (CA). 56 ibid, 445 (Cozens-Hardy MR). 55 Mansell

Further Issues  71 which a painter has in case of piracy are – first, an action at the common law; secondly, a suit in equity for an injunction, founded on the common law right; thirdly, a suit in equity, where the piracy has been accompanied by circumstances of fraud, or breach of trust, confidence or contract, express or implied.’57

Mansell Valley confirmed the proposition that judges no longer regarded the law relating to unpublished works as being uncertain.58

Further Issues Dissatisfaction with the fragmentation of British copyright law was quite pronounced. Various legislative initiatives addressed different subject matter – a scattergun approach which often saddled customs officials and users with the need to acquaint themselves with a rapidly changing statutory landscape. According to the Royal Commission on Copyright, the law consisted: partly of the provisions of fourteen Acts of Parliament, which relate in whole or in part to different branches of the subject, and partly of common law principles, nowhere stated in any definite or authoritative way, but implied in a considerable number of reported cases scattered over the law reports.

This law, the Royal Commission claimed, was: wholly destitute of any sort of arrangement, incomplete, often obscure, and even when it is intelligible upon long study, it is in many parts so ill expressed that no one who does not give such study to it can expect to understand it.59

However, unpublished works did not feature in the earliest proposals for consolidating British copyright law.60 For instance, a distinctive aspect of the 1878 Royal Commission on Copyright’s report, which reviewed national, colonial, and international copyright was that it had very little to say on unpublished works.61 That state of affairs might have reflected the urgency of arriving at suitable solutions for the fragmentation and formalities of British copyright protection. The argument that British statutory copyright law required significant consolidation gained

57 ibid, 446 (Cozens-Hardy MR). 58 ibid, 444 (Cozens-Hardy MR). 59 1878, xxiv, C 2036, vii. 60 Thomas Noon Talfourd’s attempt to codify British copyright protection did not mention unpublished works. (For an analysis of the Copyright Act 1842’s legislative history, see C Seville, Literary Copyright Reform in Early Victorian England: The Framing of the 1842 Copyright Act (Cambridge, Cambridge University Press, 1999)). Similarly, the Copyright Acts Consolidation Bill 1857 and the 1864 Bills which attempted to consolidate British copyright laws did not refer to unpublished works at all. 61 1878, xxiv, C 2036. For the domestic and international pressures for reform necessitating the formation of the Commission see C Seville, The Internationalisation of Copyright Law: Books, Buccaneers and the Black Flag in the Nineteenth Century (Cambridge, Cambridge University Press, 2006).

72  Approximation of Common Law and Statutory Copyright ground and by 1900, it included common law rights in unpublished works.62 However, unpublished works might have been excluded from the earliest legislative reforms because the rules regarding their protection had crystallised. In any case, unlike published works, common law copyright had negligible effects on international commerce. The push for copyright reform was also influenced by criticism of the deficiencies of ‘registration’. That formality received the most trenchant criticism from the Royal Commission on Copyright.63 In its judgment, registration was wholly deficient.64 Several problems were identified. Firstly, it was expensive to register a work. Sometimes, copyright works were only registered if their financial success was not too speculative. Moreover, the register, which was kept by the Stationers’ Company, was incomplete. In addition, some authors did not register their works at all partly because they were minded to avoid the deposit requirements of various copyright statutes.65 For customs officials and users, incomplete registrations posed a distinct challenge – determining whether a work was in copyright was a difficult exercise. Although the Royal Commission did not recommend abolishing registration, criticism of that formality continued. For instance, the Minutes of Evidence of the Select Committee on the Copyright Amendment and Artistic Copyright Bills suggest that registration was not considered to be useful.66 Had registration been abandoned, one of the key distinctions between common law and statutory copyright would have been removed. Later, the need to implement Article 4 of the 1908 Berlin Revision of the Berne Convention into British copyright law strengthened the domestic case for discarding registration. Article 4 itself reflected an increasing international consensus on the issue of formalities. That consensus proceeded on the basis that there ought to be parity of protection for copyright and other property rights. Such parity could only be achieved if copyright protection was automatic.67

62 See eg Report from the Select Committee of the House of Lords on the Copyright Bill [HL] and the Copyright (Amendment) Bill [HL]; together with the proceedings of the committee, minutes of evidence, and appendix. House of Lords, Session 1898. 63 See for example: the Separate Report by Sir Louis Mallet (xlvi); Separate Report by Mr Edward Jenkins (lviii); Dissent from the Report … by Mr Anthony Trollope (lix); Note appended to the signature of Mr FR Daldy (lx). 64 Royal Commission’s Report, 137. There was some resistance to abolishing registration entirely. One suggestion was simply to move registration from the Stationer’s Company to the British Museum. 65 S Van Gompel, Formalities in Copyright Law: An Analysis of their History, Rationales and Possible Future (The Hague: Wolters Kluwer, 2011). 66 For instance, in the course of his examination of Mr Daldy, Lord Thring stated that registration was a ‘cumbrous and useless’ system. Para 707 Select Committee above. See also para 713 of the Report. However, Viscount Knutsford stated that registration could serve a public benefit in that members of the public could check the register and determine whether a work enjoyed copyright protection or not. Para 708 Select Committee 1898. 67 The legislative history of FACA is comprehensively exposed in E Cooper, Art and Modern Copyright: The Contested Image (Cambridge, Cambridge University Press, 2018).

Further Issues  73 The codification movement also influenced the abolition of common law protection of unpublished works.68 The central theses of that movement were that the law should be complete and exclusive, and these goals could only be achieved legislatively. The perceived advantages of codifying the law included achieving legal certainty and enhancing access to the law. In our context, one of the possible blueprints for copyright reform proposed by the Royal Commission was a digest of the law of copyright prepared by Sir FitzJames Stephen.69 Nonetheless, Sir FitzJames Stephen’s digest excluded unpublished works:70 for some time, the importance of having a clear and succinct copyright code focused on consolidating the various statutes governing British copyright law. However, the Select Committee hearings on the Copyright Amendment and the Artistic Copyright Bills71 appear to suggest that by 1900, an apparent distinction between consolidation and codification had emerged. Although both bills did not have specific provisions on unpublished works,72 ‘codification’ was understood as encompassing all aspects of copyright protection including the common law. On the other hand, ‘consolidation’ excluded common law protection of unpublished works and it referred to the reorganisation of various statutes into one coherent piece of legislation. The distinction between consolidation and codification can be observed from Lord Thring’s73 examination of Mr Fredrick Daldy.74 Lord Thring stated that: Arising from what you said last, if this is a codifying Bill, how do you reserve the common law; it is not a codifying Bill if you reserve the common law, it is a consolidating Bill?

To which Mr Daldy answered in the affirmative. Lord Thring’s own views on ­codifying common law protection of unpublished works were not expressed but there seemed to be an understanding that codification encompassed both statutory and common law copyright protection. In the USA, several domestic matters led to a partial abrogation of common law protection of unpublished works. One such factor was the meaning of ‘­publication’ 68 See GA Weiss, ‘The Enchantment of Codification in the Common-Law World’ (2000) 25 Yale Journal of International Law 435 for a thorough historical and theoretical analysis of the Codification Movement. 69 Sir FitzJames Stephen was a major advocate of codification. See KJ M Smith, ‘Stephen, Sir James Fitzjames, first baronet (1829–1894)’ Oxford Dictionary of National Biography (Oxford, Oxford University Press, 2004). 70 Problems with imperial copyright and lack of parliamentary time scuppered the digest. JM Lely, Copyright Law Reform: An Exposition of Lord Monkswell’s Copyright Bill now before Parliament (London, Eyre and Spottiswoode, 1891) 79. 71 The Bills were aimed at consolidating literary and artistic copyright. See para 412 of the Select Committee Report. 72 See para 395 of the Select Committee Report and cl 47 of the Bill. 73 Lord Thring was the First Parliamentary Counsel. 74 Daldy was a former Secretary of the Copyright Association (a publishers’ body) and a member of the 1878 Royal Commission on Copyright. The Copyright Association was essentially a publishers’ body.

74  Approximation of Common Law and Statutory Copyright which did not keep pace with technological developments. P ­ ublication was conceived in the language of the printed word and it could not be extrapolated easily to dissemination of works via different media. In the context of music, for example, ‘publication’ assumed a fiendishly complex meaning.75 As White-Smith demonstrates, delicate questions concerning whether perforated music rolls were published remained. In that case, manufacturers of music rolls for player pianos were excused from paying royalties to composers because the rolls were not copies of the original works. Instead, they were perceived as parts of the machine that reproduced the sheet music. The decision that piano rolls were mechanical contrivances which were not copies of the underlying work left some musical works vulnerable to piracy: a matter which was remedied by the Copyright Act 1909. Records and piano rolls were treated as copies of the original works. However, the 1909 Act did not abrogate common law copyright.76 For sound recordings, even sale of a work was sometimes not equivalent in principle to publication. That argument can be seen in Jones v Virgin Records.77 Once again, the meaning of publication did not keep pace with technological changes.78 Remedial action was taken in 1971. The Copyright Act 1909 was amended. Sound recordings benefited from federal copyright from 15 February 1972.79 The 1971 amendments were the subject of further revision in 1976. The result of these initiatives has been that with respect to sound recordings, there was partial abrogation of common law rights in such works. Consequently, there is no common law protection for sound recordings which are fixed after the effective date of the 1971 amendments – these stand to be protected by federal law. In addition, there is no longer ­perpetual common law protection for sound recordings. Copyright in those works will expire in 2067.80 The weakest spot of these provisions was that they were not retroactive, thereby leaving the status of the protection that was available to pre-1972 sound recordings unclear.81 La Cienega suggested that sales of pre-1972 sound recordings constituted publication and divested common law protection. However, other authorities suggested that works that were created before the effective date of the 1972 Act still benefit from state common law protection.82 The American provisions on sound recordings sometimes produce startling results. A work which is in the public domain in another country might still attract American copyright protection.83 Copyright in unpublished sound recordings also raised matters of a different order. The constitutional status of penal statutes proscribing unauthorised first

75 White-Smith

Music Pub Co, v Apollo Co 209 US 1. v Newman 749 F Supp 542 (SDNY 1990). 77 Jones v Virgin Records Ltd 643 F Supp 1153 (SDNY 1986). 78 RCA Mfg Co Inc v Whiteman et al 114 F 2d 86 (1940). 79 Sound Recordings Act, Pub L No 92–140, 85 Stat 39 (Oct. 15, 1971). 80 Copyright Act 1976 §5. 81 That point was discussed in Capitol Records Inc v Naxos of America 830 NE 2d 250 (NY 2005) 260. 82 Capitol Records Inc v Naxos of America 830 NE 2d 250 (NY 2005). 83 ibid 76 Kramer

Further Issues  75 publication of sound recordings was doubtful. Later, Goldstein v California addressed that issue: the Supreme Court held that such provisions were c­ onstitutional.84 That case marked a significant departure from Wheaton v Peters: publication is divestive of common law copyright. The Court’s reasons for that departure were that in the absence of specific statutes on the point, state common law would protect certain works beyond the technical meaning of publication. Ambiguities relating to publication of architectural drawings also persisted. Two distinct possibilities manifested themselves. In the first place, there were suggestions to the effect that merely filing architectural drawings with a public body amounted to publication; a rule that seems to have been based on the ability of users to peruse those documents.85 According to this analysis, the focus was not the author’s intention when publishing the drawings. A second line of cases suggested the contrary.86 In Smith v Paul, common law rights in architectural drawings were not lost because the drawings were filed in a public office. The court’s reasoning was premised on the fact that depositing the drawings with a local authority was not equivalent to publication, because it was merely a question of complying with the requirements of a public body.87 In my view, the latter analysis is right. The author is compelled to deposit the drawings because of statutory or other requirements. Other problems arose from public exhibitions of artistic works. In general, public exhibition of a work does not amount to its first publication.88 In addition, merely watching a film does not constitute publication.89 However, there is also authority to the effect that public exhibition of such works without restrictions on copying might result in their publication.90 That thinking departed from the idea that excluding public exhibitions from the meaning of publication rests on the argument that the public did not receive tangible copies of a work.91 Besides, the justification for the public exhibition rule is premised on the argument that the author may want to pursue two different income streams: selling the original and selling copies of the original.92 Such thinking also informs the rule that public performance of a work does not amount to its first publication.93 Nevertheless, as will be seen later, the economic basis of that rule is met by other exclusive rights which preserve the economic benefits of adapting a work from one medium to the other.94 84 Goldstein v California 412 US 546 (1973). 85 De Silva Construction Corp v Herrald et al 213 F Supp 184 (1962). 86 John G. Danielson Inc v Winchester-Conant Properties Inc 322 F 3d 26 (1st Cir. 2003). 87 Smith v Paul 345 P 2d 546 (1959). 88 Hearst Corporation v Shopping Center Network Inc 307 F Supp 551 (1969). 89 Patterson v Century Productions Inc 93 F 2d 489 (1937). 90 Letter Edged in Black Press v Public Building Commission of Chicago 320 F Supp 1303 (1970). 91 ibid. 92 Hearst Corporation v Shopping Center Network Inc 307 F Supp 551 (1969); Waring v WDAS Broadcasting Station; Palmer v De Witt 47 NY 532 (1872); Estate of Martin Luther King Jr v CBS Inc 194 F 3d 1211 (11th Cir 1999), Palmer v De Witt 47 NY 532 (1872). 93 Waring v WDAS Broadcasting Station; Palmer v De Witt 47 NY 532 (1872); Estate of Martin Luther King Jr v CBS Inc 194 F 3d 1211 (11th Cir 1999). 94 See ch 7 below.

76  Approximation of Common Law and Statutory Copyright Other problems were raised by films. New technology and the meaning of publication did not easily coincide.95 In common with dramatic works, exhibition of a film might not amount to publication. Consequently, where a film remained unpublished, it could not benefit from ­statutory copyright.96 Quite apart from this, the copyright renewal provisions of the 1909 Act also generated some difficulties. If a work was not renewed it fell into the public domain. However, if the work was unpublished, no such renewal was necessary: the work was protected by the common law.

International Pressures for Reform The desire for international copyright protection, which led to pressure for bilateral treaties, and thus pressure to align national laws, contributed to the abandonment of formalities and the abolition of common law copyright. Initially, foreign laws influenced specific domestic copyright laws. For instance, the legislative history of the Fine Arts Copyright Act betrays the influence of the French decree of 28 March 1852 on the issue of formalities.97 The 1862 Bill provided that copyright protection of works of fine art should be automatic.98 Had the 1862 Bill been adopted, it would have abolished registration; a key distinction between the protection that was available to published and unpublished works. However, although several objections to abolishing registration prevailed,99 eventually, the argument that copyright protection should arise automatically grew in strength and the 1908 Berlin Revision of the Berne Convention provided an opportunity for discarding the formalities of copyright protection. The codification of British copyright law, which eventually led to the a­ bolition of common law protection of unpublished works, was necessitated by Britain’s international obligations. The desire for international copyright protection culminated in negotiations leading to the adoption of the Berne Convention. Initially, Britain’s membership of that Convention strengthened the case for consolidating British statutory copyright law. In the absence of consolidation: British Copyright Law would still remain to the foreigner a sealed book, and even with the most careful amendment, some portions of it might be found to be in conflict with the International Convention.100 95 Patterson v Century Productions Inc 93 F.2d 489 (1937). 96 Dowdey v Phoenix Films Inc 199 USPQ 579. 97 See French International Copyright Act (1852) in L Bently and M Kretschmer (eds), Primary Sources on Copyright (1450–1900), www.copyrighthistory.org. In 1858, the Copyright Committee of the Society of Arts had suggested that British law ‘should likewise protect all works of Art by alien authors (whether friends or enemies), although executed or first published in any Foreign State.’ 98 Draft Bill, 27 Feb 1862, cl 1. 99 For instance, Roberton Blaine, a publisher, argued that registration was entrenched in domestic and international copyright laws and that it helped in ascertaining authorship of artistic works, prevented misattribution of authorship of artistic works, and prevented artists from ‘making repetitions’ after they had sold their works. See Journal of the Society of Arts (1857–58) Vol 6, 296. 100 Messrs Adams and Bergne to the Marquis of Salisbury, 25 Sept 1885, in Switzerland No 1, 55–56.

International Pressures for Reform   77 However, initial attempts at consolidating British copyright laws did not involve unpublished works or formalities because ‘[t]he substantive provisions of the 1886 Berne Act did not depart significantly from the principles already adopted in the bilateral agreements and the national copyright laws on which they rested’:101 the 1886 Berne Act did the absolute minimum necessary to implement the Convention requirements – much to the frustration of the codifying reformers. However, the development of international norms on formalities became the strongest trigger for dispensing with common law protection of unpublished works. The abandonment of formalities in international copyright protection ‘was the logical conclusion of a long process of development in which the need for compliance with formalities, both at national and international level, had been steadily reduced.’102 Problems with imperial copyright also intensified the clamours for change. At first, the source of the conflict between Britain and her colonies was that apart from the Copyright Act 1842 which applied to ‘every part of the British dominions’,103 there was no imperial copyright protection for sculptures, engravings, paintings or photographs. Even where the law provided for protection in the Empire, there were significant discrepancies between domestic and imperial copyright. An example of the anomalies arising from that state of affairs can be provided: books that were first published in Britain gained protection throughout the Empire104 – a privilege which was not extended easily to colonial authors.105 Although the International Copyright Act 1886 improved the position of colonial authors and publishers considerably,106 there was lingering resentment over the length of time it had taken to address these matters.107 In addition, uncertainties concerning the application of the 1886 Act to other copyright subject matter subsisted.108

101 P Goldstein, International Copyright: Principles, Law, and Practice (Oxford, Oxford University Press, 2001) 20. 102 S Van Gompel, ‘Formalities in the digital era: an obstacle or opportunity?’ in L Bently, U Suthersanen and P Torremans (eds), Global Copyright: Three Hundred Years Since the Statute of Anne, from 1709 to Cyberspace (Cheltenham, Edward Elgar, 2010) 395. 103 5 & 6 Vict, c 45 (UK), s 29. 104 For example, British copyright owners could also rely on the 1842 Act and local laws to protect their copyright in parts of the British Empire. 105 The Foreign Reprints Act 1847 10 & 11 Vict, c 95 allowing the Queen, by order in council, to suspend the operation of the 1842 Act in territories with laws providing protection for British authors was an attempt to resolve problems with imperial copyright. The Act was an almost total failure, in fact – not any kind of workable resolution. In addition, the issue of reciprocity was partly rectified by the International Copyright Act 1886 49 & 50 Vict, c 33 (UK), s 8 which afforded books produced in the colonies protection throughout the empire, if local registration requirements were satisfied or, in the absence of local registration procedures, the work was registered in the United Kingdom. 106 L Bently, ‘Copyright And The Victorian Internet: Telegraphic Property Laws In Colonial Australia’ [2004–05] 38 Loyola Law Review 71. 107 ibid. 108 At face value, the 1886 Act was intended to extend imperial copyright protection to other types of subject matter provided there was compliance with the relevant formalities. However, this interpretation of the 1886 Act was displaced by Graves v Corrie [1903] AC 496 (PC) a Privy Council judgment which held that the 1886 Act had limited application to subject matter protected by the Fine Arts Copyright Act 1862.

78  Approximation of Common Law and Statutory Copyright There was also considerable anxiety among colonial administrators with respect to their representation in international copyright negotiations.109 The 1908 Berlin revision of the Berne Convention provided an opportunity for reforming domestic and imperial copyright laws.

The Berlin Revision of the Berne Convention and the Abolition of Formalities in Britain The Berlin Revision of the Berne Convention provided Parliament with an ­excellent opportunity for abolishing common law copyright.110 This was because some revisions required the abolition of formalities.111 Article 4(2) of the Berne Convention (1908) states that: The enjoyment and the exercise of these rights shall not be subject to any formality … Except for purely national situations, the provision prohibits contracting states from imposing formalities on authors or copyright owners.

The requirement that copyright protection should be automatic rendered redundant one of the major distinctions between the form of protection available to published and unpublished works. Following the Berlin Revision of the Berne Convention, the Board of Trade112 appointed a committee (under the chairmanship of Lord Gorell)113 to consider reform of British copyright law in light of the 1908 Berlin Revisions of the Berne Convention.114 The Gorell Committee’s Report favoured ratification of the 1908 Revisions and it advanced several reasons for abolishing the formalities of copyright protection. First, the Committee opined that: On general principles there seems to be no reason owners of copyright should be required to comply with formalities which are not imposed in most other cases of ownership of personal property.115

109 ibid. 110 A consummate analysis of the purposes and provisions of the 1908 Berlin Revision of the Berne Convention was undertaken by S Ricketson and JC Ginsburg, International Copyright And N ­ eighbouring Rights: The Berne Convention And Beyond, 2nd edn, Vol 1 (Oxford, Oxford University Press, 2005) 92–102. 111 S Ricketson and JC Ginsburg above, 92–102. The impact of the 1908 Berlin Act on British copyright law was analysed by I Alexander, Copyright Law and the Public Interest in the Nineteenth Century (Oxford, Hart Publishing, 2010) 266–90. 112 The Board of Trade was responsible for copyright policy. It successor, the Department for Business, Innovation and Skills is still responsible for intellectual property policy. 113 Gorell was a Law Lord and as Sir Gorell Barnes, he was a former president of the Probate, ­Admiralty and Divorce Division of the High Court. 114 Report of the Committee on the Law of Copyright (Cd 4976, 1910). 115 Above, p 12.

International Pressures for Reform   79 With respect to registration, the Committee observed that: The present requirements of British law as to registration are anomalous, uncertain, and productive of great disadvantage and annoyance to authors with little or no advantage to the public … [t]he Committee fail to see what advantage to the public can be expected from systems of registration, which are particularly onerous in the case of foreign authors, and if abolished for them should equally be abolished for authors of our own country.116

The Gorell Committee’s views on formalities were also shaped by the dictates of international uniformity. The Committee stated that: Having regard to the great importance of international uniformity, and also to the useless nature of the present formalities, we have come to the conclusion that it is desirable that we should recommend the adoption of par.3, with the result that an alteration in the British law will be necessary dealing with the abolition of formalities.117

Although the Gorell Committee had nothing to say about unpublished works, it recommended the abolition of registration; a formality which separated common law from statutory copyright. The Imperial Copyright Conference accepted that recommendation.118 The legislative history of the 1911 Act confirms the three key reasons for the abrogation of common law copyright. First, in his introduction to the Copyright Bill, Sydney Buxton, then President of the Board of Trade observed that: There are three strong reasons for the introduction of the Bill. This country is a party to the Berne Convention of some twenty or thirty years ago which deals with the copyright question … A few years ago there was a further Conference and Convention at Berlin which carried the matter further … The ratification of that Convention ­necessarily involves certain changes in our law in regard to copyright, and therefore it is necessary to introduce a Bill for that purpose in order to bring the existing law into conformity with the Convention of Berlin.119

Therefore, the formalities of statutory copyright protection had to be abolished. The abolition of formalities necessitated automatic protection of published and unpublished works.120

116 ibid. 117 ibid. 118 Cd 5272, 1910. 119 Hansard, Commons Sitting of Friday, 7April, 1911, cols 1945–46. See also col 2591. 120 ‘Without touching further details, I may state that there is one very serious change in the existing state of the law which is really fundamental, and that is the abolition of formalities. – Practically all other nations have abolished all formalities, and the Berlin Convention proposed that they should be abolished altogether in international matters. Unless we abolish them ourselves our authors will be put at considerable disadvantage. This Bill contains provisions for the abolition of all registration. Hansard, Commons Sitting of Friday, 7 April, 1911, col 2595 (second reading of the Bill). See also Sir George Agnew, cols 2625–26.

80  Approximation of Common Law and Statutory Copyright In Buxton’s view, another reason for abolishing common law copyright was based on the fact that: [British] Copyright Law very urgently require[d] amendment, simplification, and ­codification to place it on a better and simpler basis …121

There was a perception that British statutory copyright protection was fragmented and that it needed codification. There had been many proposals for codifying ­British statutory copyright protection, but these had failed for various reasons. The need to implement the Berlin Revision of the Berne Convention into British copyright law gave a fresh impetus for the codification of all aspect of copyright law. Apart from Britain’s international obligations and domestic dissatisfaction with the state of British copyright law, The third reason was the Imperial reason, namely, that any attempt to deal with this Copyright Law necessarily raises somewhat delicate constitutional questions between ourselves and the self-governing Dominions. Indeed, it is not too much to say that the difficulty of the Colonial question has been largely the stumbling-block which has caused the delay in reforming our domestic Copyright Law.122

The Berlin Revision of the Berne Convention provided Parliament with an ­opportunity to grapple with the problems surrounding imperial copyright.

Abrogation and its Consequences The definition of ‘publication’ which was deployed in the 1911 Act was not novel. Section 1(3) of the 1911 Act provided that: for the purposes of this Act, ‘publication’ in relation to any work means the issue of copies of the work to the public, and does not include the performance in public of a dramatic or musical work, the delivery in public of a lecture, the exhibition in public of an artistic work …

The common law rule that public exhibitions were excluded from ‘publication’ was retained. It made sense for these distinctions to be maintained. Judges were used to the technicalities of publication. A fundamental change arising from the Copyright Act 1911 was that it provided a term of protection based on the life of the author plus 50 years. This term implemented the provisions of the Berlin Revision of the Berne Convention and it applied to published and unpublished works subject to important exceptions. For example, literary, dramatic, or musical works or engravings, which remained 121 House of Commons Hansard, Commons Sitting of Tuesday, 26 July, 1910, Fifth Series, Vol 19, cols 1945–46. Commons Sitting of Friday, 7 April, 1911, col 2588. 122 House of Commons Hansard, Commons Sitting of Tuesday, 26 July, 1910, Fifth Series, Vol 19, cols 1945–46. Commons Sitting of Friday, 7 April, 1911, cols 2589–90 (referred to imperial copyright and the need for uniform provisions throughout the empire.

Abrogation and its Consequences   81 unpublished after their author’s death, could receive perpetual ­protection.123 However, copyright protection lasted for 50 years from the date of first publication if an unpublished work was first published after its author’s death.124 With respect to photographs, copyright lasted for 50 years from the date when the original negative was made, irrespective of ‘publication’. There were no specific duration provisions for unpublished drawings and paintings and it therefore meant that protection of such works lasted for the life of the author plus 50 years. The duration provisions of the Copyright Act 1911 meant that for many years, unpublished works attracted a longer term of protection than published ones. The 1911 Act preserved the right of authors to rely on breach of trust or confidence to enforce their rights.125 The preservation of breach of confidence as a jurisdictional basis for restraining unauthorised first publication was inserted following an Amendment to the Copyright Bill by Lord Gorell.126 There was no debate on why that course of action was necessary. There is no explanation for the retention of breach of confidence as a jurisdictional basis for restraining unauthorised first publication of copyright works either but it might be argued that Parliament was anxious to retain the strong protection offered to unpublished works. On the other hand, breach of implied contract was not given any statutory recognition. The legislative history of the 1911 Act does not explain why breach of implied contract was not included in the savings provisions of the 1911 Act. As will be argued below, relying on breach of implied contract became redundant once protection of unpublished work was automatic and copyright owners could enforce their rights against any infringer irrespective of the personal relationship between the parties. In the USA, breach of confidence and implied contract had not been active bases for protecting the interests in unpublished works. The right to privacy had taken root and in appropriate cases, it protected authors’ rights. Apart from the duration provisions of the Copyright Act 1911, another key feature of the Act was that section 2 of the 1911 Act providing for fair dealing defences to copyright infringement was silent on the issue of its application to unpublished works. As will be observed below, although the draughtsman of the 1911 Act left the application of fair dealing defences to published and unpublished works open, the interpretation of this provision and its successors became quite controversial. Exceptions to copyright in unpublished works were very narrow. In Britain, unauthorised first publication of a work could only be excused for the purposes of vindicating personal reputation or production of documents in evidence. Apart from this, Prince Albert v Strange suggested that an unpublished work could not be criticised or reviewed. The 1911 Act did not



123 Copyright

Act 1911 s 17. Act 1911 s 17. 125 Copyright Act 1911 s 31. 126 House of Lords Hansard, Lords Sitting of Monday, 4 December, 1911 Fifth Series, Vol 10, col 486. 124 Copyright

82  Approximation of Common Law and Statutory Copyright exclude ­unpublished works from its fair dealing provisions.127 However, as will be observed later, significant doubts concerning whether fair dealing for criticism or review applied to unpublished works persisted. The American solution to the issue of exceptions took a different turn. Fair use applied to all works. However, the nature of the work; a factor which encompasses unpublished works became one of the key means for assessing the fairness of the defendant’s use of the original work. The differing approaches to exceptions have endured. Nevertheless, Australia is moving towards the American approach. In the USA, the 1909 Act provided that the term of copyright protection commenced from the date of first publication.128 However, protection of works of foreign authorship continued to be controversial. Authorised first publication in the country of origin divested common law copyright in the USA with the result that the work was ejected into the public domain.129 The intricate formalities in USA copyright law meant that works of foreign authorship were sometimes exposed to free exploitation. If such a work was published without notice in the country of origin, it did not benefit from USA copyright protection.130 That proposition can be supported by Twin Books, which suggested that publication without notice in a foreign country without notice did not amount to publication.131 The meaning of limited publication was stretched beyond elasticity with the result that it harboured serious peculiarities. A work that was for all intents and purposes published remained unpublished. Later, although common law copyright was ended with respect to new works with effect from the effective of the 1976 Act, serious problems continue to bedevil the nature of the rights in unpublished works created before that date.132 Potential problems include whether certain works that are protected by statute benefited from common law before 1978, ie whether a work was in the public domain before that date and could not therefore benefit from statutory c­ opyright.133 After the effective date of the 1976 Act, the works were protected by statutory copyright.134 Subtle differences between the abolition of common law copyright in the USA and the UK remain. The Copyright Act 1976 abolished common law copyright by means of federal pre-emption.135 Common law copyright was not abolished completely, and it remains relevant to works that were first published before the effective date of the 1976 Act – namely 1 January 1978. At present, copyright in the USA protects works that were created after the effective date of the 1976 Act. It also protects works that were in copyright on 1 January 1978.

127 Copyright

Act 1911 s 2. Act 1909 § 23. 129 Hill & Range Songs Inc v London Records Inc 142 NYS 2D 311 (1955). 130 Ross Products Inc v New York Merchandise Co Inc 233 F Supp 260 (1964). 131 Twin Books v The Walt Disney Company 83 F 3d at 1167. 132 Roy Export Co Estab of Vaduz v CBS 672 F 2d 1095 (1982). 133 ibid. See also Twin Books v The Walt Disney Company 877 F Supp 496 (ND Cal 1995). 134 Religious Technology Center v Netcom On-line com 923 F Supp 1231 (ND Cal 1995). 135 1976 Act §101[B]. 128 Copyright

Abrogation and its Consequences   83 Another category involves works that were created before the effective date of the 1976 Act but not benefiting from statutory copyright. Such works must not be in the public domain. Foreign works that are not in the public domain are also protected. ‘The determination whether a work entered the public domain prior to the effective date of the 1976 Act must be made according to the copyright law as it existed before that date.’136 For that reason, the 1909 Act remains relevant because it assists the task of determining whether a work entered the public domain before the effective date of the 1976 Act.137 The preservation of common law copyright in old unpublished works has often given rise to complexity and criticism of the term of protection. The unpublished status of a work is still a live issue in the USA, more so than in Britain, especially in terms of the duration of protection.138 Sometimes whether a work attracts copyright at all requires an analysis of the provisions of the 1909 and 1976 Act.139 In other words there is an overlapping statutory framework. Sanga v  EMI demonstrates the complexity of copyright in unpublished works in the USA  – the song was first published before 1978. For that reason, it fell to be decided under the provisions of the 1909 Act or common law copyright.140 Having considered the history of copyright in unpublished works and the abrogation of common law copyright, one of the remaining questions for our consideration is whether the assimilation of published and unpublished works has bridged the differences in the strength of protection available to published and unpublished works. It will be argued that the unpublished status of a work retains considerable significance in several areas of copyright law.

136 Brown v Tabb 714 F 2d 1088, 1091 (11th Cir 1983); Estate of Martin Luther King Jr v CBS Inc 194 F 3d 1211 (11th Cir 1999). 137 Brown v Tabb 714 F 2d 1088 (1983) 1091. 138 Capitol Records Inc v Naxos of America 830 NE 2d 250 (NY 2005) 261. 139 Societe Civile Succession Guino v Renoir 549 F 3d 1182 (9th Cir 2008) 1185. 140 Sanga Music Inc v EMI Blackwood Music Inc et al 55 F 3d 756 (2nd Cir 1955).

4 The Significance of ‘Publication’ in Contemporary Copyright Law Introduction There is no acid test for deciphering the emergence of contemporary copyright law – various statutory initiatives have accreted into an unwieldy body of rules. The law is constantly evolving in order to meet new technological and international imperatives. Nevertheless, the basic architecture of ‘modern’ copyright law can be said to reside in the approximation of the protection available to published and unpublished works.1 Subsequent developments, including the accumulation of European influences on British copyright law,2 America’s accession to the Berne Convention,3 the term of protection for old unpublished works4 and the risks that are attendant on exploiting orphaned intellectual productions are best characterised as enduring relics of the abolition of formalities5 and incomplete harmonisation of all aspects of copyright law. The impact of ‘publication’ on the defences to claims for copyright infringement compels the same reasoning – on the face of it, initially, at the very least, copyright exceptions have universal relevance to all works.6 Although copyright in ‘published’ and ‘unpublished’ works was harmonised, there remain important differences of detail in the treatment of the two regimes and, in addition, between ‘disclosed’ and ‘undisclosed’ works. This chapter explains the ways in which ‘privately disclosed’ and ‘undisclosed’ works receive stronger protection than their ‘publicly disclosed’ and ‘published’ equivalents. More specifically, I will explore the circumstances in which ‘unpublished’ works qualify for copyright protection; an issue which is shrouded in uncertainty – instantaneous dissemination of copyright material on the Internet renders the place of ‘first publication’ speculative. The impact of ‘publication’ on: the term of protection, the 1 Obviously, America’s reluctance to abolish formalities meant that the assimilation of common law and statutory copyright in that country occurred much later. 2 Eg Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market L 130, 17 May 2019 (enactment of a new publishers’ right). 3 Berne Convention Implementation Act of 1988, Pub L 100-568. 4 CDPA sched 1, para 12. 5 See M Borghi and S Karapapa, Copyright and Mass Digitization (Oxford, Oxford University Press, 2013). 6 Copyright Act 1911 s 2(1)(i).

Qualification for Copyright Protection   85 remedies for and defences to copyright infringement, and conventional understandings of the idea/expression dichotomy is also considered here. For the most part, as we shall see, contemporary copyright law affords extensive protection to unpublished works. That is, protection may be more readily available, may last longer, and be stronger. Within the category of ‘unpublished’ works, ‘privately disclosed’ and ‘undisclosed’ works benefit from the strongest protection. These nuances subsist in a rapidly changing technological universe which renders the accepted meanings and consequences of ‘publication’ demonstrably tenuous. Moreover, the emphasis that is sometimes placed on ‘publication’ often conflicts with other public interests. Another dimension of the discussion in this chapter pertains to regionalisation of intellectual property rights. European interventions have layered extra sediments of convolution on copyright protection.7 Another principal argument that is advanced here is that the standardisation of common law and statutory copyright has had negligible effects on judicial and legislative attitudes to the defences to claims for infringement of copyright in unpublished works. Britain’s experience on that front is archetypical – its copyright law admits narrow exceptions to infringement of copyright in ‘undisclosed’ and ‘privately disclosed’ works.8 The American position on that issue is somewhat ambivalent. At face value, the fair use defence is of equal relevance to published and unpublished works.9 However, the interpretation of that exception in the context of unpublished works has often bristled with uncertainties.10

Qualification for Copyright Protection The statutory provisions on qualification for copyright protection in domestic law implement the Berne and Universal Copyright Conventions’ national treatment requirements.11 ‘National treatment’ itself is uncontroversial and it can be distilled into a simple proposition: namely that Member States of the Berne Convention must extend the same protection to works emanating from other signatories of that international agreement.12 The place of ‘first publication’ usually determines 7 Eg Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society OJ L 167, 22/06/2001 pp 0010–0019. 8 CDPA ss 30(1) (criticism or review), 30 (1ZA) (quotation); HRH Prince of Wales v Associated Newspapers Ltd (No 3) [2008] Ch 57. 9 Fair use defence. Salinger v Random House 811 F 2d 90 (2d Cir 1987); Harper & Row v Nation Enterprises, 471 US 539 (1985). 10 See below. 11 See Berne Convention Art 3–5 and Universal Copyright Convention Art 2. 12 U Loewenheim, ‘The Principle of National Treatment in the International Conventions Protecting Intellectual Property’ (2009) 6 Max Planck Institute Studies on Intellectual Property, Competition and Tax Law 593; S Ricketson and J Ginsburg, International Copyright and Neighbouring Rights: The Berne Convention and Beyond, 2nd edn (Oxford: Oxford University Press, 2005); D Vaver, ‘The National Treatment Requirements of the Berne and Universal Copyright Conventions’ (1986) 17 International Review of Intellectual Property and Competition Law 577 and 715.

86  The Significance of ‘Publication’ in Contemporary Copyright Law the country of origin of a work and thus governs the implementation of national treatment in Member States of the Berne and Universal Copyright Conventions. That argument ought to be qualified, however. Granted that membership of the Berne Convention is extensive, the weight attached to ‘first publication’ as a criterion for qualification for copyright protection has waned. Nevertheless, as will be seen below, the place of first publication remains a critical basis for establishing the country of origin of a work and, with that, the term of copyright in a work of foreign authorship. Discrepancies in the term of protection arising from international and domestic statutes13 mean that a work can, concurrently, be in the public domain in one country and in copyright elsewhere: Naxos v Capitol Records.14 That possibility postpones entry of some works into the public domain. Presently, ‘publication’ offers a mechanism by which copyright in a given country may arise.15 For example, a work benefits from copyright protection in a specific jurisdiction if its author is a qualifying person at the ‘material time’.16 In general, the ‘material time’ for establishing an author’s personal status is coterminous with the date of ‘first publication’.17 In the event that authors die before their works are published, the personal status of such authors is decided by reference to the date of their demise18 In addition, if a work remains ‘unpublished’, the personal status of the author is the only factor connecting a work with Britain.19 Owing to the fact that copyright can be protected posthumously, permutations in the personal status of authors contribute to ‘orphaning’ of considerable quantities of intellectual productions. Deciding whether a work is still in copyright in the country of origin might engender an inefficient deployment of resources. Users would need to compare the term of protection in numerous countries. That task is complicated by very old works. Diligent searches ought to cover, the common law, old statutes and current copyright laws. Therefore, important material might not be used or conserved. Qualification in relation to published works may also be resolved by reference to the place of first publication. The dictates of national treatment mean that a work of foreign authorship attracts copyright protection if it is first published in a specific foreign country or in a nation, which on the date of first publication, is a party to the Berne Convention.20 Foreign works qualify for domestic copyright protection if they are first published ‘simultaneously’, within 30 days, in a Member State of the Berne Convention and in another country which does not adhere to

13 Berne Convention Art 7(1) requires certain works to be protected for life plus 50 years. However, internationally, the term of protection has risen to life plus 70 years. 14 Capitol Records Inc v Naxos of America 830 NE 2d 250 (NY 2005). 15 CDPA s 154. 16 CDPA s 155. 17 CDPA s 154. 18 ibid. 19 CDPA s 154(4)(A). 20 Eg CDPA s 155(1) and (2).

Qualification for Copyright Protection   87 that treaty.21 It must be noted that, in the analogue world, ‘simultaneous publication’ has haemorrhaged in importance: the USA now belongs to the Berne Union. Before its accession to the Berne Convention in 1989, American authors exploited simultaneous first publication in Canada and the USA in order to gain protection for their works in additional Member States of the Berne Convention.22 Separately, sound recordings, films, typographical arrangements of published editions, or literary, dramatic, musical, and artistic works created by foreign authors qualify for British copyright protection if they are ‘first published’ in Britain23 or in a country, which, on the date of first publication, is a signatory of the Berne Convention or to which the operation of the CDPA has been extended by an order in council.24 Given these possibilities, it becomes difficult for users to establish whether a work is still in copyright. This is especially so in connection with old works. There might be little evidence suggesting the place of first publication; a matter which is complicated by the abolition of formalities, incompleteness of registers and mergers within the publishing sector. The likelihood of an absence of searchable bibliographic information which facilitate the task of determining whether authorised first publication has occurred makes exploiting orphan works nearly impossible. Although the ambit of ‘first publication’ as a yardstick for qualification for copyright protection is now quite reduced, publication on the Internet raises urgent problems. The spectre of instantaneous first publication of a work in numerous countries is real.25 In addition, copies of a work may be available on demand in different countries. How then should the place of first publication be identified in such circumstances? Arriving at a workable answer to that question matters. Locating a work’s country of origin and, in turn, whether, according to that country’s provisions, the work is still in copyright might lead to several consequences. Once again, it is difficult to establish whether a work is in the public domain or not. In addition, the twin threats of copyright revival and orphan works remain vivid. As a rule, the country of origin pertains to the place where authorised ‘first publication’ of a work occurs.26 That place may not be too difficult to identify if copies of an original work are printed and offered for sale to the public – there is usually significant bibliographic or other information which may be used by the parties.27 With respect to the printed word, for example, ‘publication’ takes 21 Berne Convention Art 3(4); CDPA s 155(3). 22 JC Ginsburg and JM Kernochan, ‘One Hundred and Two Years Later: The US Joins the Berne Convention’ (1988–89) 13 Columbia Journal of Law and Arts 1. 23 CDPA s 155(1) and (2). 24 ibid. 25 AP Reindl, ‘Choosing Law in Cyberspace: Copyright Conflicts on Global Networks’ (1998) 19 Michigan Journal of International Law 799, 800; MJ O’Sullivan, ‘International Copyright: Protection for Copyright Holders in the Internet Age’ (2000) 13 New York International Law Review 1, 8–9. 26 JC Ginsburg and P Sirinelli, ‘Authors and Exploitations in International Private Law: The French Supreme Court and the Huston Film Colorization Controversy’ (1991) 15 Columbia Journal Law and Arts 135. 27 T Solley, ‘The Problem and The Solution: Using The Internet to Resolve Internet Copyright Disputes’ (2007–08) 24 Georgia State University Law Review 813, 815.

88  The Significance of ‘Publication’ in Contemporary Copyright Law place wherever the publisher invites the public to acquire copies of a work and not where the copies are received: British Northrop Ltd v Texteam Blackburn Ltd.28 That simple proposition is confronted by the intricacies of disseminating a work on the Internet, which may result in ‘first publication’ in dozens of countries.29 These countries may be radically removed from the essence of ‘first publication’. Consider the place where a file is uploaded, for instance. That place is p ­ otentially fleeting – owing to international travel, the upload might commence in one jurisdiction and terminate in another. Several solutions to first publication on the Internet have been proposed. Firstly, distribution of a work on the Internet might be equivalent to its ‘simultaneous’ first  publication.30 However, that argument is wholly unattractive  – it sits awkwardly with the Berne Convention’s ‘country of origin’ requirements. According to that treaty, minimum standards of protection should be afforded to foreign works from other Convention countries.31 ‘Simultaneous publication’ on the ­Internet would mean that all digital works are domestic works in each of the Berne Convention countries in which they can be downloaded. Therefore, the Berne Convention’s minimum standards of protection will never be engaged because all Internet publications are domestic works, a problem which is exacerbated by the exorbitant geographical reach of that international instrument.32 Besides, A ­ rticle 5(4)(a) of the Berne Convention postulates the existence of one ‘country of origin’. In the absence of clarity on the country of origin of a digital work, the term of protection cannot be established easily. The second solution is that the country of origin refers to the place where users receive copies of a work. This could be the country in which a work is capable of being downloaded.33 However, a digital work may be downloaded instantaneously in numerous countries thereby making it difficult to determine its country of origin.34 Separately, a download may commence and be completed in different countries. In addition, the country in which copies of a work are received might present an ‘arbitrary’ choice – much depends on broadband speed.35 Most importantly, the country where a work is downloaded may have very little connection with users: owing to increased mobility, a work can be downloaded from an airport or on holiday, for example.36 28 British Northrop Ltd v Texteam Blackburn Ltd [1974] RPC 57. 29 JC Ginsburg, ‘The Cyberian Captivity of Copyright: Territoriality and Authors’ Rights in a Networked World’ (1999) 15 Santa Clara Computer & High Technology Law Journal 347. 30 ibid at 351. 31 Berne Convention Art 5. 32 See JC Ginsburg, ‘Berne Without Borders: Geographic Indiscretion and Digital Communications’, http://ssrn.com/abstract=292010 or http://dx.doi.org/10.2139/ssrn.292010. However, Art 5(4)(a) of the Berne Convention states that the country with the shortest term is the country of origin. Although its selection might be arbitrary, that country can be the country of origin for internet publications. 33 ibid. 34 JC Ginsburg, ‘The Cyberian Captivity of Copyright above at 347, 351. 35 ibid. 36 ibid.

Qualification for Copyright Protection   89 The country of origin could also be the place where a work is uploaded to a website.37 That place may depend, in turn, on the location of the server to which the work is uploaded. Alternatively, it might be the country of the residence or principal place of business of the webpage operator.38 Jane Ginsburg has criticised using the country in which a work was uploaded as the country of origin. In her view: This approach too, however, might be completely arbitrary, because one may upload a work from anywhere, including a country one is just passing through. The work therefore may have no meaningful connection to the country of upload. Additionally, increased international collaborations and author mobility could render the ‘publication’ on the Internet uncertain.39

The country in which a work was uploaded may have no relationship with the work at all. Granted that identifying the country of origin by reference to the place of first upload or download is an arbitrary exercise, ‘publication’ on the Internet might have to focus on the author. According to that view: Given the effects of digital communications, maybe the only fixed point in all of this is the author. For example, we might address the country of origin problem by making that country the country of the author’s residence at the time of the work’s first public disclosure. We might make the law of the author’s residence competent to adjudicate claims of copyright ownership. And we might make that law the one that governs multi-territorial infringements.40

That state of affairs breeds opportunism – authors may simply choose to reside, and thus publish their works, in countries with the most generous copyright laws.41 The answer to an analogous problem is provided by Art 6 of the Berne Convention – copyright may be restricted if significant disparities between the protection available in two countries present themselves. In our context, the country of origin could be the country with the shortest copyright term. Another solution to the problem of identifying the country of origin of a work that is published online can be obtained from the European Court of Justice’s judgments – a targeting theory is employed in a number of contexts. In Football Dataco Ltd v Sportradar GmbH,42 for example, the court held that the Member State in which users received data could assert jurisdiction only if ‘the act [of transmitting the data] discloses an intention on the part of the person performing the act to target members of the public’ in that particular country. The targeting theory was

37 SA Mort, ‘The WTO, WIPO & the Internet: Confounding the Borders of Copyright and ­Neighboring Rights’ (2003) 8 Fordham Intellectual Property Media and Entertainment Law Journal 173. 38 JC Ginsburg, ‘The Cyberian Captivity of Copyright’ above at 352. 39 ibid at 352. 40 ibid. 41 ibid. 42 Football Dataco Ltd v Stan James Plc & Sportradar GmbH & another [2012] ECR I-0000 (ECJ).

90  The Significance of ‘Publication’ in Contemporary Copyright Law also used in other cases, including eBay,43 and it was adopted by Arnold J in EMI Records, a case involving Internet Service Provider liability.44 In our circumstances, the country of origin of a work which is published on the Internet can be identified by considering the intention of the author. If authors intend to ‘target’ particular Member States for digital dissemination of their works then those countries become the place of first publication. However, the primary limitation of that line of reasoning is that ‘intention’ is extremely difficult to prove. Moreover, authors may be long dead by the time any disputes concerning their works are adjudicated. Even if authors are still alive, pure self-interest might persuade them to tailor their intention to suit a desired outcome. Moreover, the risk of multiple countries of origin is not completely eliminated by the targeting theory. Authors may target users in numerous countries. The country of origin of a digital work might also be the place where the most significant publishing decisions are made. That argument is not altogether too controversial if the ‘real seat’ theory in corporate law is considered. According to that concept, the proper law for a company is the law of the country from which it is managed and controlled.45 In our circumstances, the law ought to focus on the publisher’s activities. However, that inquiry might lead to uncertainty if the fact that litigation may commence decades after publishing decisions are made is taken into account. In any case ‘real publishing decisions’ might occur when an author is in transit; a possibility which, once again, makes the place of first publication arbitrary. A potential solution might involve the courts assessing all the available evidence and considering, as a matter of impression, whether a ‘real’ connection between first publication and a certain country exists. In my view, a lasting s­olution to the intractable problems concerning the country of origin of digital works might rest on international harmonisation of the term of copyright protection. The current approach which allows some countries to provide minimum s­ tandards of protection for published and unpublished works creates opportunities for ­publishing some works strategically.

The Extent of Copyright Protection On the face of it, although the scope of copyright in published and unpublished works is nearly identical,46 ‘publication’ influences determination of certain

43 L’Oréal SA v eBay International AG [2011] ECR I-0000 (interpreting Art 5 of the Trade Marks Directive. See also Pammer v Reederei Karl Schlüter GmbH & Co. KG and Hotel Alpenhof GesmbH v Heller [2010] ECR I-12527 (interpreting Art 15 of the Brussels I Regulation on private international law; and Donner [2012] ECDR I8 (interpreting Art 4 of the Information Society Directive). 44 EMI Records Ltd and others v British Sky Broadcasting Ltd and others [2013] EWHC 379 (Ch). 45 WF Ebke, ‘The “Real Seat” Doctrine in the Conflict of Corporate Laws’ (2002) 36 The International Lawyer 1015. 46 As will be observed below, the CDPA does not permit criticism or review of works which have not been made available to the public with their author’s consent.

The Extent of Copyright Protection   91 infringement issues, such as whether the defendant has reproduced a ‘substantial part’ of the original work.47 The test for substantial infringement is qualitative and it applies uniformly to published and unpublished works. Nevertheless, because they often contain secret or private information, using a few snippets from ‘undisclosed’ or privately ‘disclosed’ works is likely to result in substantial infringement. PCR v Dow Jones Telerate48 illustrates that point vividly. Taking cocoa pod count data from a ‘privately disclosed’ financial intelligence report was qualitatively significant because the work had been circulated to a limited audience. Similarly, copying a few frames from an unpublished video recording Diana, Princess of Wales’ visit to the Villa Windsor constituted ‘substantial infringement’ because of the fevered speculation surrounding her death.49 Harper & Row Inc v Nation Enterprises Inc provides further support for that proposition. The ‘heart’ of the claimant’s unpublished work related to the aftermath of the Watergate scandal.50 Coupled with restrictive interpretations of copyright defences, the ease with which claimants can prove substantial infringement in the context of ‘undisclosed’ and ‘privately disclosed’ works might mean that other important values are not given any recognition. The most valuable information is usually secret. Proscribing uses of such information might impede democratic discourse. As a matter of evidence, establishing a causal connection between unpublished works and their infringing copies is also easy. A defendant might, for instance, make explicit references to the source of its infringing work; a proposition which is buttressed by Ashdown v Telegraph Group Ltd – The Sunday Telegraph acknowledged that its story was derived from the claimant’s privately disclosed aide memoire.51 Similarly, the Mail on Sunday made pointed references to the source of its story on the Prince of Wales’ unorthodox political interventions.52 The same analysis embraces Harper & Row Inc v Nation Enterprises Inc53 and Salinger v Random House54 – the link between the original and derivative works was incontrovertible. Conversely, establishing a causal link between published works and their infringing copies might be less obvious. The claimant must prove that the defendant accessed the original work – an issue which is sometimes conjectural: Francis Day & Hunter v Bron55 and Designers Guild v Russell Williams Ltd.56 Because it is easy to prove a causal connection between the contentious works, copyright infringement is not difficult to establish. In the absence of credible defences, the unauthorised use is proscribed.



47 Ladbroke

(Football) Ltd v William Hill Football Ltd [1964] 1 WLR 273 (HL). Ltd v Dow Jones Telerate Ltd [1998] FSR 170. Park Residence Ltd v Yelland [2001] Ch 1 43 (CA). 50 Harper & Row v Nation Enterprises, 471 US 539 (1985). 51 Ashdown v Telegraph Group Ltd [2001] 4 All ER 666 (CA). 52 HRH The Prince of Wales v Associated Newspapers (No 3) [2007] 3 WLR 222 (CA). 53 Harper & Row v Nation Enterprises, 471 US 539 (1985). 54 Salinger v Random House 811 F 2d 90 (2d Cir 1987). 55 Francis Day & Hunter Ltd v Bron & Anor [1963] Ch 587 (CA). 56 Designers Guild Ltd v Russell Williams Textiles Ltd [2000] 1 WLR 2416 (HL). 48 PCR

49 Hyde

92  The Significance of ‘Publication’ in Contemporary Copyright Law The second point is that ‘publication’ may distort the application of the idea/ expression dichotomy to the facts of individual cases. Despite its uncharted parameters, the idea/expression dichotomy is embedded in the common law and it can be boiled down to a simple notion namely, copyright law typically protects only the expression of an author’s ideas.57 Historically, as far as unpublished works were concerned, judges did not seem to discriminate ideas from expressions of ideas. Albert v Strange58 is demonstrative. In a judgment that was upheld on appeal, Sir James Knight-Bruce V-C stated as follows: the common-law rule prohibited not merely the reproduction of the etchings but also the publishing … though not by copy or resemblance, a description of them, whether more or less limited or summary, whether in the form of a catalogue or otherwise.59

Restraining Strange’s description of the etchings protected the idea/fact that the Queen was in the habit of making etchings. In addition, by protecting the claimants’ thoughts and sentiments, independent of their tangible expression in the etchings,60 the court did not separate ideas from expressions of ideas. A similar conclusion is yielded by Turner v Robinson (publishing a photograph of a reconstruction of the scene of a painting),61 Kenrick v Danube Collieries and Minerals Co Ltd (referring to the plaintiff ’s survey document in a prospectus),62 Exchange Telegraph Co Ltd v Gregory & Co (quotation of share prices)63 and Philip v Pennell (paraphrases of James Whistler’s unpublished letters).64 The scene of a painting, the contents of a survey document, and share prices are ideas or facts. However, other early cases suggest the contrary. Although Lord Eldon’s thinking in Abernethy v Hutchinson was manifestly byzantine, Dr Abernethy could not obtain an injunction restraining the defendant from publishing his oral lectures based on ‘property’ because they had not been recorded in a material form.65 A work which is not reduced into some form remains an idea. Otherwise, the scope of copyright in that work is wholly exorbitant. That line of thinking can also be gleaned from Labouchere v Hess – common law copyright did not provide a good ground for prohibiting the recipient of personal letters from describing their contents to others.66 Similarly, in Gilbert v Star Newspapers,67 the claimant relied 57 MB Nimmer, ‘Does Copyright Abridge the First Amendment Guarantees of Free Speech and Press?’ (1970) 17 University of California Los Angeles Law Review 1180; AC Yen, ‘A First Amendment Perspective on the Idea/Expression Dichotomy and Copyright in a Work’s “Total Concept and Feel”’ (1989) 38 Emory Law Journal 393; P Masiyakurima, ‘The Futility of the Idea/Expression Dichotomy in UK Copyright Law’ (2007) 38 International Review of Intellectual Property and Competition Law 548. 58 Prince Albert v Strange (1849) 2 De G & Sm 293. 59 1 Mac & G 25, 43; 1 H & Tw 1, 22.1310. 60 Prince Albert v Strange (1849) 2 De G & Sm 293. 61 Turner v Robinson [1860] Ir Ch R 121, 144. 62 Kenrick v Danube Collieries and Minerals Co Ltd (1891) 39 WR 473. 63 Exchange Telegraph Co Ltd v Gregory & Co [1896] 1 QB 147 (CA). 64 Philip v Pennell [1907] 2 Ch 577, 585. 65 Abernethy v Hutchinson, 1 H & Tw 28. 66 Labouchere v Hess (1898) 77 Law Times 559, 563. 67 Gilbert v Star Newspaper Co Ltd (1894) 11 TLR 4.

The Extent of Copyright Protection   93 on breach of confidence to protect the plot of an opera because, as an idea, it was not copyrightable. Although the idea/expression dichotomy had not assumed its current form when these cases were decided, judges seemed to proceed on the footing that copyright protection did not extend to bare ideas. Whatever the position before the abrogation of common law copyright, protecting ideas in unpublished works is no longer good law. That argument is fortified by the ambiguity of the basis of the injunctions in the leading cases. Albert v Strange is paradigmatic – restraining unauthorised description of the etchings in Strange’s catalogue is explicable on breach of confidence, infringement of the plaintiff ’s property in the etchings, and breach of an implied contract not to publish. At the very least, it is difficult to come to a definitive conclusion as to whether unpublished ideas were protected in that case at all. In any case, because, copyright in published and unpublished works has now been harmonised, the idea/expression dichotomy has equal relevance to all works. Although the idea/expression dichotomy has equal relevance to all works, the very nature of ‘undisclosed’ and ‘privately disclosed’ works often results in protection of ideas. Distillers Co (Biochemicals) Ltd v Times Newspapers Ltd provides a prime example of that risk – unauthorised first publication of scientific information detailing the side-effects of thalidomide was prohibited.68 The documents in that case were not expressive at all – they simply recorded the scientific evidence on the drug’s side-effects. Similarly, the stills in Hyde Park Residences Ltd v Yelland just recorded some of Diana, Princess of Wales’ last movements in Paris, while the cocoa pod count data in PCR v Dow Jones Telerate consisted of financially sensitive data. The same argument can be fastened to Ashdown v Telegraph Group Ltd – the memorandum was a factual summary of a meeting.69 The preceding analysis raises a technical point: are there differences between facts and ideas? Cocoa pod-count data, photographic stills of a video and the side-effects of thalidomide are facts. That argument raises a further question; namely, whether, in principle, there are any appreciable differences between the idea/expression dichotomy and its analogue, the fact/expression dichotomy.70 Indeed, differences between facts and ideas are not too hard to contemplate. At the linguistic level, ideas may be abstract while a fact is a ‘thing that is done or performed’.71 As a matter of copyright law, the idea/expression dichotomy proscribes p ­ rotection of ideas and is to be found in the common law72 and in some international ­instruments.73 On the other hand, the fact/expression dichotomy

68 Distillers Co (Biochemicals) Ltd v Times Newspapers Ltd (1975) QB 613. 69 Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA). 70 E Samuels, ‘The Idea-Expression Dichotomy in Copyright Law’ (1989) 56 Tennessee Law Review 321. 71 See www.oed.com/search?searchType=dictionary&q=fact&_searchBtn=Search. 72 Baigent and Leigh v The Random House Group Ltd [2007] EWCA Civ 247; [2007] FSR 24; Designer Guild Ltd v Russell Williams (Textiles) Ltd [2001] 1 WLR 2416 (HL). 73 Eg TRIPs Agreement Art 9(2).

94  The Significance of ‘Publication’ in Contemporary Copyright Law seems to discriminate facts from an author’s own expressions.74 The Feist case illustrates that point – copyright was not extended to the white pages of a telephone directory.75 Of course, other legal actions including privacy, breach of confidence and data protection can protect bare facts. In my view, distinguishing ideas from facts is an arid exercise. In any case, there are recognisable convergences between ideas and facts. For example, eventually, an idea may become a fact. The plot of a novel, for instance, might start its life as an idea but its factual existence becomes obvious after it has been reduced into a concrete form. Equally, a fact might spawn various ideas. The fact of the meeting in Ashdown v Telegraph Group Ltd recorded the idea of coalition government between two political parties. Given these similarities, little or no profit may be derived from distinguishing facts from ideas. Irrespective of the fine distinctions between unpublished facts and ideas, protecting such material by copyright might hinder derivative uses of invaluable information. That risk was evident in Ashdown v Telegraph Group Ltd. The ‘privately disclosed’ minute in that case was essential for developing a newspaper story criticising the murkiness of British politics – a Prime Minister with a compelling majority in the House of Commons was minded to strengthen his hand even further by the means of partnering with another opposition party; a development which might have influenced future voter preferences. Commonwealth of Australia v Fairfax is another relevant case.76 The Australian Government prevented wider public dissemination of classified information revealing its activities in Indonesia and East Timor. That danger is not altogether historical. A similar attitude is still being adopted by the Australian Government – search warrants have been issued in connection with leaked classified works recording its security forces’ deplorable conduct in Afghanistan.77 In PCR v Dow Jones Telerate, one sees further problems with protecting published or unpublished ideas or facts. The court failed to grasp the basic features of the efficient market hypothesis; a concept which is integral to valuation of shares and other securities.78 According to that hypothesis, the value of shares correlates with the quality of the available information. Protecting the fact that cocoa yields in West Africa were likely to be poor restricted dissemination of information which might have influenced trade in the shares of companies exposed to the cocoa industry. The danger of protecting information or facts is also instantiated by Elanco v Mandops.79 Although the work was published, proscribing 74 RA Gorman, ‘Fact or Fancy? The Implications for Copyright – The Twelfth Annual Donald C. Brace Memorial Lecture’ (1981–82) 29 Journal of the Copyright Society of the USA 560; IS Ayers, ‘The “Facts” of Cultural Reality: Redrawing The Line Between Fact and Expression in Copyright Law’ (1998–99) 67 University of Cincinnati Law Review 563. 75 Feist Publications Inc v Rural Telephone Service Co 499 US 340 (1991). 76 Commonwealth of Australia v John Fairfax & Sons Ltd (1980) 147 CLR 39. 77 www.bbc.co.uk/news/world-australia-48522729. 78 E Fama, ‘Efficient Capital Markets: A Review of Theory and Empirical Work’ (1970) The Journal of Finance 383. 79 Elanco v Mandops [1979] FSR 46.

The Term of Copyright Protection   95 unauthorised uses of information pertaining to correct uses of a herbicide potentially endangered public safety. Apart from this, the idea/expression dichotomy can determine ‘substantial ­infringement’.80 If the act complained of pertains to ideas, then there is no copyright infringement: Baigent v Random House (unauthorised copying of the idea that Jesus Christ was not celibate).81 That case confirms the proposition that a claim for copyright infringement ought to focus on unauthorised uses of an author’s own expression of ideas. Otherwise, the scope of the copyright m ­ onopoly would be greatly enlarged: it would encompass both ideas and expressions of ideas. What was protected in Hyde Park v Yelland was the idea that the Princess of Wales’ visit to the Villa Windsor was extremely brief and inconsistent with the view that she inspected that property’s suitability as her next matrimonial home. The work itself did not express anything else. Because the work was not expressive, it should not have been copyrightable. In my view, the copyright claim ought to have been dismissed on the basis that it offended the idea’/expression dichotomy. Any further references to the fair dealing defences or the public interest defence were misplaced because there was no copyright in the work. Protecting facts or ideas also interferes with users’ freedom of expression. As Professor Nimmer observed, the idea/expression dichotomy is a tool that might resolve conflicts between copyright protection and other public interests.82 That observation has not been heeded in some British cases. For instance, restraining unauthorised use of the minute in Ashdown v Telegraph Group Ltd protected the fact that the leaders of the Labour and Liberal Democrat parties discussed the merits of coalition government. Although the defendant could have reported that fact without reproducing the plaintiff ’s work, the veracity of the newspaper’s story was strengthened by unauthorised first publication of the minute itself. Sometimes extensive verbatim extracts may need to be taken from an unpublished work if a defendant’s claims are to be substantiated.

The Term of Copyright Protection For centuries, following the House of Lords’ landmark judgment in Donaldson v Beckett,83 unpublished works enjoyed perpetual protection. In contrast, published works were the subject of fixed but sometimes renewable terms.84 In the ­contemporary world, uniform protection for all works has not deprived ‘publication’ of its role as a yardstick for computing copyright’s temporal limits. 80 Designers Guild Ltd v Russell William Textiles [2001] 1 WLR 2416. 81 Baigent & Leigh v Random House [2007] FSR 24. 82 MB Nimmer, ‘Does Copyright Abridge the First Amendment Guarantees of Free Speech and Press?’ (1970) 17 University of California Los Angeles Law Review 1180. 83 Donaldson v Beckett [1774] 17 Cobbett’s Parl Hist 953. 84 Copyright Act 1909 (USA) §23.

96  The Significance of ‘Publication’ in Contemporary Copyright Law For instance, immediately after the abrogation of common law copyright, Britain protected old unpublished literary, dramatic, and musical works indefinitely;85 a regime which was circumscribed by Schedule 1(12) to the CDPA (implementing the Term Directive into British copyright law).86 However, to prevent the loss of vested rights, works which were unpublished at the time of their author’s death and remained so on 1 August 1989 invite a fixed term of 50 years from 1 January 1990.87 Consequently, copyright in these ‘old’ works will endure until 31 December 2039. Similarly, the USA protects sound recordings that were fixed or published on or before 15 February 1972 until 2067.88 Granted that numerous state common laws govern protection of pre-1972 sound recordings, identifying the scope of authors’ rights in such works is a Herculean task. Consequently, valuable material is not forfeited to the public domain for a very long time. Further complications arise from supplementary regimes which apply to publication of previously unpublished public domain works. In the end, the haphazard formulation of the copyright term which obtains in numerous countries multiply the incidence of orphan works. In other contexts, copyright duration is sometimes contingent, in part, on the date of first publication. For example, a work benefits from crown copyright for 125 years from the date when it was made89 or 50 years from the date of its ‘commercial’ publication.90 Thus, a work that is subject to crown copyright receives protection for a much longer period if it remains unpublished. In addition, the possibility that a work subject to crown copyright might be published on the cusp of the end of the 125-year term and obtain an even longer period of protection remains open. If that scenario were to materialise, timeous free exploitation and dissemination of expressions subject to crown copyright might be imperilled. Whether there should be lengthy crown copyright is also debatable. Australia has truncated the term of protection for works benefiting from crown copyright.91 It might be argued, however, that Britain has provisions which contemplate that some works can be released into the public domain well before crown copyright has lapsed.92 For some time, the position in Australia was even starker. Until very recently, copyright in some unpublished works was perpetual. That position has now changed. With effect from 1 January 2019, the term of protection for published and unpublished works has been standardised.93 However, the new provisions on copyright duration are not fully retrospective. Because the new statutory provisions apply prospectively, new uncertainties are likely to arise. In the future, courts 85 Copyright Act 1911 s 17. 86 Council Directive 93/98/EEC of 29 October 1993 harmonising the term of protection of copyright and certain related rights L290, 1993-11-24, 9–13. 87 Copyright and Related Rights Regulations 1996, reg 16(2), as amended by the Copyright and Related Rights Regulations 2003 (SI 2003/2498). 88 Copyright Act 1976 §5. 89 CDPA s 163(3). 90 CDPA s 175(2). For a discussion of commercial publication see the introduction above. 91 Copyright Act (Australia) 1968 s 180. 92 Public Records Act 1958. 93 Copyright Act 1956 s 33(2).

The Term of Copyright Protection   97 may have to decide whether an unpublished work was created before or after 1 January 2019 in order to assess its copyright status. Moreover, significant quantities of unpublished works are likely to remain orphaned. Users would need to establish the date on which a work was created; a task that may be elusive especially in connection with some ­artistic works. There might be inadequate information on which such an assessment can be made. Of course, concerns about protection of vested rights arise but the Copyright Review rightly dismissed these. A more elegant solution has been proposed in Singapore. In common with Australia, copyright in unpublished works in that jurisdiction has been p ­ otentially perpetual.94 However, Singapore will harmonise the term of copyright in all works. According to a recent proposal: The duration of protection for all literary, dramatic, musical and artistic works (excluding photographs) will be until 70 years after the death of the creator, regardless of when they are published or whether they remain unpublished.95

At face value, that provision requires uniform protection for all works. It t­ herefore means that ‘old’ unpublished works will be ejected into the public domain, a ­possibility which will reduce the incidence of orphan works considerably. Crucially, there are no savings provisions which mandate expenditure of incredible resources on identifying or locating authors. The quid pro quo for copyright protection is that, eventually, the work will be released into the public domain; an outcome that is impossible to achieve if the copyright term is extended periodically. It is also the case that the term of copyright in works of unknown or pseudonymous authorship can be calculated by reference to the date of first publication. For example, the CDPA protects copyright in a work of unknown authorship for 70 years from the date of its creation96 – a term which is far shorter than the post-mortem protection that is routinely available to literary, musical, ­artistic and dramatic works.97 However, if a work of unknown authorship is ‘made a­ vailable’ to the public, it is protected for 70 years from the date when it was made so ­available.98 It follows that an unpublished work of unknown authorship might attract a longer term of protection if it is made available to the public just before the end of the initial 70-year-period. Once again, great difficulties may arise if users are minded to exploit pseudonymous or anonymous works. Very little information pertaining to when they were created may be available. This is especially so in connection with digital works. Meta data might be lost during the process of digitisation. Consequently, knowing whether a work is in the public domain might 94 Singapore Copyright Review – Enhancing Creators’ Rights and Users’ Access to Copyrighted Works, www.mlaw.gov.sg/content/dam/minlaw/corp/News/Press%20Release/Singapore%20­Copyright%20 Review%20Report%202019/Annex%20A%20-%20Copyright%20Review%20Report%2016% 20Jan%202019.pdf. 95 ibid. 96 CDPA s 12(3)–(5). 97 CDPA s 12. 98 ‘Made available to the public’ is defined in CDPA s 12(5) and it includes public performances of dramatic works and public exhibitions of artistic works: acts that are excluded from the general ­definition of ‘publication’.

98  The Significance of ‘Publication’ in Contemporary Copyright Law be ­impossible. Further problems arise from determining whether an anonymous work was made available to the public. As we have seen above, first publication is an identifier of the country of origin of a particular work, which in turn determines the term of copyright in works of foreign authorship.99 For instance, the place of first publication determines the country of origin of a work which is first published in a Member State of the Berne Convention and has not been simultaneously published elsewhere.100 If the work is first published in a Member State of the Berne Convention and in another country which does not subscribe to that multilateral treaty, the author’s nationality determines the country of origin.101 In other circumstances, the country of origin of a work which is simultaneously first published in two or more Member States of the Berne Convention of which one is an EEA state, is the EEA country. If none of those countries is an EEA state, the country of origin is the Berne Convention Member State which grants the shortest period of copyright protection.102 Where a work remains unpublished, the country of origin depends on the author’s nationality.103 These permutations often mean that the term of protection in various countries is not uniform; a possibility which gives rise to uncertainties. A work might be in copyright in the country of origin but be in the public domain in another Member State of the Berne Convention. Disparities in the duration of copyright in different countries might lead to revival of copyright in public domain works; an argument that is supported by Societe Civile Succession Guino v Renoir.104 Sculptures made by Pierre-Auguste Renoir, created and published between 1913 and 1917, will enjoy copyright in the United States until 2043. The court held that because the works were unpublished in the USA, they were not in the public domain. The crux of that conclusion was that failure to comply with the formalities of the Copyright Act 1909 meant that the work remained unpublished in the USA. That judgment potentially makes ancient works copyrightable105 and worsens the problems with orphan works. 99 CDPA s 15A. 100 Berne Convention Art 3(4). 101 There are two exceptions to this rule. First, if the work is a film and the maker of the film has his or her headquarters in, or is domiciled or resident in a Berne Convention country, the country of origin is that country. Second, if the work is a work of architecture constructed in a Berne Convention country or an artistic work incorporated in a building or other structure situated in a Berne Convention country, that country. 102 Berne Convention Art 5(4). 103 However, if the work is a film and the maker of the film has his or her headquarters in, or is domiciled or resident in a Berne Convention country, the country of origin is that country. If the work is a work of architecture constructed in a Berne Convention country or an artistic work incorporated in a building or other structure situated in a Berne Convention country, that country. CDPA s 15A and Berne Convention Arts 5(4) and 7(8). 104 Societe Civile Succession Guino v Renoir 549 F 3d 1182 (9th Cir 2008) 1185. 105 E Townsend-Gard, ‘The Birth of the Unpublished Public Domain and its International Implications’ (2006) 24 Cardozo Arts and Entertainment Law Journal 687; AR Reese, ‘Is the Public Domain Permanent?: Congress’s Power to Grant Exclusive Rights in Unpublished Public Domain Works’ (2007) 30 Columbia Journal of Law and The Arts 531; AR Reese, ‘Public but Private: Copyright’s New Unpublished Public Domain’ (2007) 85 Texas Law Review 585.

The Term of Copyright Protection   99 Users who wish to exploit public domain foreign works may need to understand not only contemporary domestic and foreign copyright law but also any common law rights which might have been applicable at any given time. In Capitol Records v Naxos of America, for example, Naxos Records remastered a number of sound recordings and issued them for sale.106 The recordings were out of copyright in Britain, their country of origin. Capitol Records held the US licences for the original recordings and it also remastered them and issued these for sale to the public. Capitol Records brought a claim for copyright infringement against Naxos in New York. At first instance, it was held that because the original sound recordings were out of copyright in the country of origin, they were also in the public domain in the USA. Capitol Records appealed to the Second Circuit, which held that the recordings could attract common law copyright if New York’s laws admitted of that possibility. The matter was remitted back to the New York Court of Appeals which held that that since common law copyright for pre-1972 sound recordings was not pre-empted by Congress, Capitol Records’ copyright claim was sound. As far as works of foreign authorship are concerned, users may need to acquaint themselves with the technicalities of common law copyright in different Member States of the Berne Convention. True, global databases of orphan works are now in existence but these are often incomplete.107 All of this flies in the face of the silent bargain which lies at the heart of copyright protection – eventually, users ought to have unimpeded access to all works. The term of copyright in works of foreign authorship is sometimes speculative and it often exacerbates the prevalence of orphan works – a situation which refers to the difficulties of identifying or tracing authors.108 The incidence of orphan works is worsened, in part, by the abolition of formalities – opportunities for acquiring the bibliographic information necessary for establishing copyright ownership are absent.109 In the past, registration and notice provided limited solutions for determining whether a work was in copyright. Further, some works are more amenable to being orphaned than others. For example, deciphering authorship of unsigned artistic works, including photographs, is usually an impenetrable task. In addition, the very nature of some ‘unpublished’ works such as folk music might render identifying authors of such works or the date when they were created uncertain. Even if authors can be identified or traced, locating the copyright owner may be insuperable – mergers and changing patterns in the publishing trade complicate matters considerably.110 Given that exploiting orphan works might invite a claim for copyright infringement, users may be dissuaded from exploiting such material. The ­enormity of 106 Capitol Records v Naxos of America 4 NY 3d 540 (NY April 5, 2005). 107 See eg https://euipo.europa.eu/orphanworks. 108 EU Orphan Works Directive Art 1. 109 O Huang, ‘U.S. Copyright Office Orphan Works Inquiry: Finding Homes for the Orphans’ (2006) 21 Berkeley Technology Law Journal 265. 110 JT Williams, ‘The Pre-Amended Google Books Settlement, International Orphan Works, and German Copyright Law: An Analysis’ (2011) 19 University of Miami Business Law Review 51.

100  The Significance of ‘Publication’ in Contemporary Copyright Law the problem is real. The British Library has highlighted the intricacies of clearing rights in orphaned unpublished works.111 More recently, the Imperial War Museum failed to use old unpublished World War 1 material because the rights could not be cleared efficiently.112 In the United States, the Google Books case demonstrates the magnitude of the problems associated with unauthorised uses of orphan works. Google attempted to digitise published and unpublished books in libraries. However, Google did not obtain permission for that course of action and was sued for copyright infringement. In the end, the case was settled on confidential terms and the remainder of the litigation was resolved by reference to fair use principles.113 In contrast, it might be easier to identify authors of published works. For example, there is extensive information on published books and such resources might indicate whether a work still enjoys copyright protection. Problems with orphan works might also restrict digital preservation of old analogue materials. Cultural heritage institutions might not be able to digitize their collections because that course of action would reproduce the originals thereby constituting copyright infringement.114 That problem was laid bare in British consultations on intellectual property and it is most germane to sound recordings or old films which might be recorded in dated formats.115 Consequently, invaluable material has been allowed to deteriorate. Even if the work is still intact and further risk of its deterioration is absent, users may not access it efficiently. Technological changes often mean that vast quantities of material are stored in obsolete formats.116 It will be argued that there ought to be clearer rules governing preservation of orphan works if their waste is to be minimised.117 A range of orphan works initiatives has been pursued with a moderate degree of success.118 For instance, the EU adopted an Orphan Works Directive119 which has now been implemented in Britain. However, in common with other domestic regimes, the chief complaint against the EU scheme is the requirement for a diligent

111 HM Treasury, Gowers Review of Intellectual Property above at para 4.91. 112 Intellectual Property Office, ‘Government response to the consultation on reducing the duration of copyright in certain unpublished works’, https://assets.publishing.service.gov.uk/government/ uploads/system/uploads/attachment_data/file/399171/973_-_Governement_Response_-_copyright_ in_certain_unpublished_works.pdf at 2. 113 804 F 3d 202 (2015). 114 The problem of orphan works is serious. The British Library estimated that 40% of all printed works are ‘orphans’. See HM Treasury, Gowers Review of Intellectual Property above at para 4.91. The problems of orphan works were also recognised in paras 4.52–4.60 of the Professor Ian Hargreaves’ Independent Review of IP and Growth, www.ipo.gov.uk/ipreview-finalreport.pdf. 115 The Gowers Review of Intellectual Property, www.official-documents.gov.uk/document/ other/0118404830/0118404830.asp at 4.91. 116 Gowers Review of Intellectual Property above at para 3.30. 117 See ch 6 below. 118 Consultation on proposals to change the UK’s copyright system, www.ipo.gov.uk/pro-policy/ consult/consult-live/consult-2011-copyright.htm; Directive 2012/28/EU of the European Parliament and of the Council of 25 October 2012 on certain permitted uses of orphan works, OJ L299/5. 119 Directive 2012/28/EU of the European Parliament and of The Council of 25 October 2012 on certain permitted uses of orphan works OJ L299/5 27.10.2012.

The Term of Copyright Protection   101 search to be conducted before a work can be characterised as an ‘orphan’.120 What makes a search ‘diligent’ is not defined precisely.121 In Britain useful g­ uidance is provided by the ­Intellectual ­Property Office which relies on research in relevant databases, national ­libraries’ indices, advertising in newspapers and the Internet to track authors.122 In addition, the search may need to be verified by a competent ­authority.123 However, the cost and delays associated with performing diligent searches impede utilisation of orphan works; a problem which manifested itself when the Victoria and Albert Museum attempted to clear the rights in various works for the purpose of an exhibition.124 These problems are at their starkest if the position of individual users is considered: they often lack the resources required for making effective searches. In so far as unpublished works are concerned, such material might not appear in databases or other indices. Therefore, a diligent search may not be conducted at all or, if one is attempted, the cost might be significant. The EU’s orphan works regime lacks ambition. Its utility is severely compromised by the fact that it is confined to activities by cultural heritage institutions in connection with digitisation of their material.125 Frequently, however, ordinary users might need to exploit orphan works for various purposes. The EU’s orphan works framework fails to address the needs of such users. The justification for limiting the provisions of the Directive to cultural heritage institutions might have been based on safeguarding the economic benefits of copyright ownership. However, as we will see below, that concern was misplaced. Diligent searches – a central component of licensing orphan works – should be predicated on balancing minimising encroachments into authors’ economic entitlements with reducing wasteful consumption of creative resources. In any case, as will be observed below, a work which is orphaned may generate complex questions concerning the abandonment of intellectual productions. Economics requires valuable resources to be utilised efficiently.126 Crucially, the EU’s orphan works regime excludes standalone artistic works including photographs, maps, plans and drawings from its ambit.127 Yet, these works pose serious challenges for users and copyright owners alike. With respect to digital images, transmissions of such works on the Internet might give rise to loss of metadata which can be useful for identifying their authors or owners. In the absence of such data, a digital search might be impossible or difficult to achieve. It therefore means that users may never be able to exploit some orphan works.

120 Orphan Works Directive Art 3. 121 See M Borghi and S Karapapa, Copyright and Mass Digitization (Oxford, Oxford University Press, 2013). 122 www.gov.uk/government/publications/orphan-works-diligent-search-guidance-for-applicants. 123 ibid. 124 Intellectual Property Office, ‘Government response to the consultation on reducing the duration of copyright in certain unpublished works’ above, p 2. 125 Orphan Works Directive Art 6. 126 LJ Strahilevitz, ‘The Right to Abandon’ (2010) 158 University of Pennsylvania Law Review 355. 127 Orphan Works Directive Art 1.

102  The Significance of ‘Publication’ in Contemporary Copyright Law The fact that cultural heritage institutions may make orphan works accessible to the public after completing a diligent search potentially benefits users.128 In addition, the work may be copied for the purposes of digitisation, preservation, cataloguing or indexing.129 Nevertheless, serious practical problems remain. A diligent search is still necessary. That requirement has meant that museums and archives still grapple with orphan works.130 Faced with conflicting financial priorities, cultural heritage institutions may focus their attention elsewhere. Any workable orphan works proposals ought to have end users of orphan works at their centre. Other attempts at reducing the incidence of orphan works have also been made locally. The British Government consulted on the term of protection which ought to apply to old unpublished works.131 The Government invited comments on whether protection of old unpublished works should endure for the life of the author plus 70 years, or 70 years from the date when the work was created and no more.132 As observed earlier, the Copyright Act 1911 protected old unpublished works indefinitely.133 However, that rule was abolished in 1988 following the implementation of the Term Directive into British copyright law.134 Therefore, copyright in old unpublished works will continue to subsist until 2039.135 However, despite considerable concerns about copyright in old unpublished works, the Government decided to do nothing.136 Had it been implemented, the Government’s proposal might have released some unpublished works into the public domain, thereby facilitating derivative uses and dissemination of old copyright works. However, vested interests prevailed.137 It might be argued that the Government had the opportunity to implement the provisions of the Term Directive fully in 1996 had it chosen to do so. By having a savings clause which protected old unpublished material until 2039, the government created a legitimate expectation in the sense that those who acquired rights to old unpublished works under the 1988 provisions should have the right to exploit them until 2039. Unless, the right holders are compensated, it is difficult to envisage how the Government can curtail the term of protection that is available to old unpublished material. However, as will be seen in chapter six below, there are good reasons for abolishing aspects of copyright in old unpublished works.

128 Orphan Works Directive Art 6. 129 ibid. 130 Intellectual Property Office, ‘Government response to the consultation on reducing the duration of copyright in certain unpublished works’ above, p 2. 131 ibid. 132 HM Government, Consultation on Copyright above, pp 23–24. 133 See ch 2 above. 134 Council Directive 93/98/EEC of 29 October 1993 harmonising the term of protection of copyright and certain related rights OJ L 290 9–13. 135 See ch 3 above. 136 Intellectual Property Office, ‘Government response to the consultation on reducing the duration of copyright in certain unpublished works’ above. 137 ibid.

The Availability and Strength of Copyright Exceptions   103 Quite apart from this, matters are complicated much further by rights akin to copyright,138 including Britain’s ‘publication right’,139 which affords protection for those who publish previously unpublished public domain works.140 Copyright in works which benefit from that right is extinguished at the end of the period of 25 years from the end of the calendar year in which the work was first published.141 It therefore means that a previously unpublished work whose term has lapsed would receive longer protection if it is published for the first time. The additional 25-year term arising from the publication right delays free exploitation of works which are already out of copyright. However, a contrary view can be mounted – the publication right might encourage dissemination of previously unpublished works. There are suggestions to the effect that orphan works, revived rights and copyright in old unpublished works hinder the public interest. Although authors’ rights are preferred, users might want better access to old material, which usually illuminate contemporary research or debates. As will be observed below, an overly long period of protection is not justified on any normative basis including the mandate in some jurisdictions for copyright to be a vehicle for promoting the encouragement of learning.142 In addition, there ought to be reforms that are targeted at reducing the term of copyright in old unpublished works.

The Availability and Strength of Copyright Exceptions In general, copyright protection inhabits the confluence of numerous interests. For authors, self-actualisation and the pecuniary advantages of ownership of intellectual productions might be relevant. As far as users are concerned, access to the 138 The publication right resembles copyright in numerous respects. See reg 17(5). For example, the remedies for copyright and publication right infringement are generally similar Copyright and Related Rights Regulations 1996 (SI 1996/2967) regs 16(1) and 17(1). However, CDPA ss104 to 106, which establish various presumptions, are excluded: Copyright and Related Rights Regulations 1996 reg 17(2)(b). In addition, the criminal sanctions for infringing the publication right are weaker than those applying to copyright protection: Copyright and Related Rights Regulations 1996 reg 17(3)(a). However, an important difference between copyright protection and the publication right is that the first owner of the publication right is the person who first publishes the unpublished material in which copyright protection has lapsed. Copyright and Related Rights Regulations 1996 reg 16(1). Apart from this difference, the publisher does not have moral rights in the work, reg 17(1). 139 In the context of the publication right, ‘publication’ is broader than its employment as an indicator for qualification for copyright protection – it encompasses ‘public disclosure’ and communicating a work to the public by electronic transmission. These differences suggest that a work might be published for publication right purposes, but remain unpublished for the purposes of qualification for copyright protection. There are similarities between ‘publication’ and the ‘publication right’, however. For instance, in common with ‘publication’, ‘unauthorised’ acts do not trigger the ‘publication right’: Copyright and Related Rights Regulations 1996, reg 16(3). See also CDPA s 175(6). 140 The Copyright and Related Rights Regulations (SI 1996/2967) reg 16. The publication right itself is derived from Council Directive 93/98, Art 4 which was implemented by Copyright and Related Rights Regulations (SI 1996/2967) reg 16. 141 Copyright and Related Rights Regulations 1996 reg 16(6). 142 Art I sect 8 cl 8 of the US Constitution.

104  The Significance of ‘Publication’ in Contemporary Copyright Law building blocks of education, freedom of expression and creativity often assumes distinct prominence.143 In some instances, however, these interests collide; an occurrence which is influenced by challenges from human rights norms: Ashdown v Telegraph Group Ltd,144 HRH Prince of Wales v Associated Newspapers Ltd145 and Harper & Row Inc v Nation Enterprises Inc146 – freedom of expression, privacy and property jostled for position. Two solutions to the problem of conflicting fundamental rights are usually proffered. Firstly, the inherent limits in fundamental rights can be emphasised.147 For example, privacy, property and freedom of expression are not framed in absolute terms.148 More frequently, however, references are also made to the internal limits within intellectual property regimes, which may demarcate the boundaries between rival public interests. That approach can be sustained by the defences to copyright infringement – in appropriate circumstances, authors’ rights can be superseded by other factors.149 The question which arises for discussion here is whether copyright exceptions apply uniformly to published and unpublished works. Clear disparities in how defences to copyright infringement apply to ‘undisclosed’, ‘privately disclosed’, ‘publicly disclosed’ and ‘published’ works cannot be easily disguised. That claim has significant historical antecedents. In Britain, an important issue which arose immediately after abrogation of common law copyright was whether criticism or review of unpublished works could ever be fair. That issue presented itself for adjudication in British Oxygen v Liquid Air Ltd, in which the plaintiff sought an injunction restraining unauthorised first publication of a business letter.150 The defendant argued that its use of the letter fell within the ambit of fair dealing for the purpose of criticism, review or newspaper summary.151 Although the Copyright Act 1911 Act provided that ‘fair dealing with any work for the purposes of private study, research, criticism, review, or newspaper summary’152 constituted a good defence to copyright infringement, the court held that the defendant’s use of the letter was unfair. Romer J went on to observe that: …it would be manifestly unfair that an unpublished literary work should, without the consent of the author, be the subject of public criticism, review or newspaper summary.

143 Eg NW Netanel, ‘Copyright and a Democratic Civil Society’ (1996) 106 Yale Law Journal 283. 144 Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA). 145 HRH Prince of Wales v Associated Newspapers Ltd (No 3) [2008] Ch 57. 146 Harper & Row v Nation Enterprises, 471 US 539 (1985). 147 L Zucca, Constitutional Dilemmas: Conflicts of Fundamental Legal Rights in Europe and the USA (Oxford, Oxford University Press, 2007). 148 Eg Arts 8 and 10 ECHR. 149 See PN Leval, ‘Toward A Fair Use Standard’ (1990) 103 Harvard Law Review 1105; NW Netanel, Copyright’s Paradox (Oxford, Oxford University Press, 2010); R. Okediji (ed) Copyright Law in an Age of Limitations and Exceptions (Cambridge, Cambridge University Press, 2017) for a detailed discussion of these issues. 150 British Oxygen Co Ltd v Liquid Air Ltd [1925] Ch 383. 151 Copyright Act 1911 s 2(1). 152 Copyright Act 1911 s 2(1)(i).

The Availability and Strength of Copyright Exceptions   105 Any such dealing with an unpublished literary work would not, therefore, in my opinion, be a ‘fair dealing’ with the work.153

That statement supports the conclusion that initial interpretations of the 1911 Act contradicted the relevant statutory language and protected unpublished works quite strongly. Romer J’s reasoning in the British Oxygen case is similar to common law copyright.154 Before the approximation of copyright in published and unpublished works, exceptions to infringement of copyright in unpublished works were confined to vindication of personal reputation155 and production of documents in evidence.156 The rule that fair dealing for the purpose of criticism or review could not be relied on if a work was unpublished was qualified in Hubbard v Vosper in which Cyril Vosper took substantial extracts from L Ron Hubbard’s157 ‘privately disclosed’ manuals and incorporated them into his book, The Mind Benders.158 Hubbard sought to restrain Vosper from publishing the extracts.159 It was held that the defendant’s use of the extracts amounted to fair dealing for criticism or review. Granted that the work was unpublished, at first glance, Lord Denning MR’s judgment was a major departure from Romer J’s dictum in British Oxygen v Liquid Air Ltd. In Lord Denning MR’s view: Although a literary work may not be published to the world at large, it may, however, be circulated to such a wide circle that it is ‘fair dealing’ to criticise it publicly in a newspaper, or elsewhere.160

However, Romer J seemed to have accepted that criticising a work that had been circulated widely was possible when he stated that: this permission of criticism would seem at first sight to extend to unpublished literary works. The permission was no doubt necessary in the case of unpublished dramatic and musical works, in as much as performance in public of such works is not publication for the purposes of the Act.161

Nevertheless, Romer J was simply distinguishing ‘privately disclosed’ from ‘publicly disclosed’ works. ‘Publicly disclosed’ works could be criticised or reviewed because they were already available to the public. The idea that criticising ‘privately disclosed’ and ‘undisclosed’ works is not usually countenanced derives further support from Ungoed-Thomas J’s obiter dictum in



153 British

Oxygen Co. Ltd. v Liquid Air Ltd. [1925] Ch 383, 393. ch 2 above. 155 ibid. 156 ibid. 157 Ron L Hubbard was the founder of the Church of Scientology. 158 Hubbard v Vosper [1972] 2 QB 84 (CA). 159 ibid, 92E. 160 ibid, 95A. 161 British Oxygen v Liquid Air Ltd [1925] Ch 383, 393. 154 See

106  The Significance of ‘Publication’ in Contemporary Copyright Law Beloff v Pressdram (unauthorised first publication of a ‘privately disclosed’ confidential minute recording a journalist’s conversation with Willie Whitelaw, a cabinet minister, on the potential successor to Edward Heath, then British Prime ­Minister).162 Although the case was decided on different grounds, UngoedThomas J went on to state that: the law by bestowing a right of copyright on an unpublished work bestows a right to prevent its being published at all; and even though an unpublished work is not automatically excluded from the defence of fair dealing, it is yet a much more substantial breach of copyright than publication of a published work.163

Once again, there was a clear reinforcement of the notion that, in general, unpublished works receive strong protection because exceptions to infringement of copyright in such material are interpreted quite narrowly. Why the court felt that interferences with copyright in unpublished works was a ‘much more substantial breach’ is speculative. However, as will be seen below, unpublished works engage authors’ economic, personality, expressive autonomy, and privacy interests.164 The principle that fair dealing for the purpose of criticism or review was only available if a work had been the subject of extensive circulation was confirmed in Distillers Co (Biochemicals) Ltd v Times Newspaper Ltd (unauthorised first publication of confidential documents detailing the side effects of thalidomide).165 In the course of his judgment, Talbot J stated that: For my part, I doubt whether the plaintiff ’s documents could be said to have been circulated so widely that, though not published generally, it was fair dealing to criticise them.166

Although Talbot J reverted to wide circulation of the documents as a basis for distinguishing the case before him from previous authorities, the real point in that case was the need to secure the discovery process in civil litigation; a factor that promotes candour and thus yield the best evidence.167 By insisting that the documents could not be criticised or reviewed, the court was simply superimposing the interests of justice over other considerations. Owing to incessant regionalisation of copyright, ‘undisclosed’ and ‘privately disclosed’ works now receive even stronger protection in Britain. Fair dealing for the purpose of criticism or review does not encompass ‘undisclosed’ and ‘privately disclosed’ works168 – a restriction which manifested itself in HRH Prince of Wales v Associated Newspapers Ltd (unauthorised first publication of ‘privately disclosed’

162 Beloff

v Pressdram [1973] 1 All ER 241, 263. 263. ch 5 below 165 Distillers Co (Biochemicals) Ltd v Times Newspapers Ltd [1975] QB 613. 166 ibid, 625 G–H. 167 I Eagles, ‘Disclosure of Material Obtained on Discovery’ (1984) 47 MLR 284. 168 CDPA ss 30(1) and 30 (1ZA). 163 ibid, 164 See

The Availability and Strength of Copyright Exceptions   107 journals recording the handover of Hong Kong to China).169 At first instance, Blackburne J stated that:170 The defendant’s reliance on this provision is misplaced since it is plain that the Hong Kong journal has not been made available to the public. Circulation of copies of the journal to a number of carefully selected recipients, even if the overall total is as many as Mr Bolland claimed, does not amount to making it available to the public.171

Given that the journals were ‘privately disclosed’ to Prince Charles’ numerous friends, they could not be used to criticise his description of Chinese officials as ‘appalling waxworks’ – an intervention which sat awkwardly with established constitutional conventions – senior royals ought to steer clear of controversial diplomatic or political positions.172 Because the meaning of ‘publication’ does not correspond easily to ordinary usages of that word, ‘made available to the public’ excludes works which might have been the subject of the most extensive private circulation. Although there are no British cases on that point, the quotation exception can benefit from the same analysis173 – it is also predicated on the infringed work being made available to the public with its author’s consent. In the absence of such authorised ‘public disclosure’, an unpublished work cannot be quoted from. The reasoning in HRH Prince of Wales v Associated Newspapers is persuasive – if a defendant’s use of an original work does not clear the ‘made available to the public’ hurdle, then the defence fails. That argument can also be buttressed by the potential overlap between ‘criticism or review’ and ‘quotation’. In some instances, the very task of criticising or reviewing a work often requires quotations to be taken from the original work. Parodies provide a pivotal example of that point. Effective parodies may need to make wholesale takings from original works. Several arguments can be pressed in favour of Britain’s restrictive approach to fair dealing for the purpose of criticism or review of ‘disclosed’ and ‘privately disclosed’ works. Key among these is the fact that the CDPA is simply implementing Article 5(3)(d) of the Information Society Directive;174 which, in turn, derives its source from Article 10(1) of the Berne Convention: It shall be permissible to make quotations from a work which has already been lawfully made available to the public, provided that their making is compatible with fair practice, and their extent does not exceed that justified by the purpose, including quotations from newspaper articles and periodicals in the form of press summaries.

169 HRH Prince of Wales v Associated Newspapers Ltd (No 3) [2008] Ch 57. 170 ibid, 100 D–H. 171 ibid, 100 D–F. Blackburne J’s decision on the fair dealing issue was confirmed on appeal: ibid, 127 G–H (CA). 172 V Bogdanor, The Monarchy and The Constitution (Oxford: Oxford University Press, 1998). 173 CDPA s 30 (1ZA). 174 Copyright and Related Rights Regulations 2003 reg 10.

108  The Significance of ‘Publication’ in Contemporary Copyright Law Excluding ‘privately disclosed’ and ‘undisclosed’ works from the ambit of fair dealing for criticism or review is also justified because, as we will see later, authors’ personality, expressive autonomy, or privacy interests are often at stake.175 In addition, unless a work is disclosed, users cannot criticise or review it, because its existence is unknown. In any case, other copyright exceptions, including reporting current events,176 research or study,177 data mining,178 parody179 and reporting judicial ­proceedings180 apply to ‘undisclosed’ and ‘privately disclosed’ works. In BBC Petitioners,181 for example, personal photographs were published without their author’s permission in order to report the circumstances surrounding the gruesome death of a young child. Nevertheless, as Ashdown v Telegraph Group Ltd demonstrates, further limitations abound.182 An unauthorised use ought to fit a certain ‘purpose’ before it can be exercised. Because the defendant’s unauthorised use of the political memorandum in that case did not implicate the work itself, its underlying philosophy or its author, it did not meet the requirements of fair dealing for the purpose of criticism or review. Despite the availability of additional defences to infringement of copyright in unpublished works, further problems remain. For example, reporting current events does not embrace photographs;183 a peculiarity which might reduce the veracity of news stories. That issue was evident in BBC Petitioners. The Court of Session had to circumvent the limitations of the reporting current events restriction by basing its decision on the importance of using photographs to report judicial proceedings. Why photographs can be used for one purpose and not for another is an oddity. Sometimes, the commercial value of photographs has been highlighted. However, there is lack of clarity as to why criticism or review, research or study or reporting judicial proceedings do not interfere with the value of the photographs. Moreover, an event might not be ‘current’. In Associated Newspapers Group plc v News Group Newspapers Ltd and Ors,184 the Daily Mail obtained exclusive rights in the Duke and Duchess of Windsor’s personal correspondence. The defendant, The Sun, printed one of the letters in its newspaper. The plaintiff sought an injunction restraining The Sun from infringing its exclusive rights in the unpublished letters. The Sun argued that its use of the unpublished letters fell within the ambit of fair dealing for the purpose of reporting news or current events. The court ­disagreed with that assessment. In its view, the abdication crisis was quite distant.

175 See

ch 5 below. s 30(2). 177 CDPA s 29. 178 CDPA s 29(1)(a). 179 CDPA s 30(A). 180 CDPA s 45. 181 BBC Petitioners (2012) SLT 476. 182 Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA). 183 CDPA s 30(2). 184 Associated Newspapers Group plc v News Group Newspapers Ltd and Ors [1986] RPC 515. 176 CDPA

The Availability and Strength of Copyright Exceptions   109 The impression that is left by these restrictions is that authors’ interests are often prioritised at the expense of users’ rights. Moreover, the statutory defences might not anticipate novel situations – they had to be supplemented by the creation of a public interest defence to claims for copyright infringement.185 The public interest defence which emerged from Beloff v Pressdram was confirmed in Lion Laboratories v Evans:186 ‘unauthorised first publication of unpublished documents detailing serious calibration errors in the plaintiff ’s breathalyser equipment’. The public interest defence is most relevant to infringement of copyright in ‘undisclosed’ and ‘privately disclosed’ works because expressions in these works might be unknown or are disseminated to a limited number of people. In contrast, infringement of copyright in published and publicly disclosed works might not raise obvious public interest issues because the expressions in such works are available to the public. Any remaining public interests in published works can be accommodated by the statutory defences. However, the intellectual rigour and precise parameters of that defence have been questioned. It therefore remains an unsatisfactory basis for promoting users’ interests. Instead of devising supplementary defences, there ought to be a comprehensive fair use defence which is capable of subsuming a plethora of interests and is technologically neutral. Confining fair dealing for the purpose of criticism or review or quotation to works which have been made available to the public constitutes a formidable barrier to exploitation of unpublished works and potentially conflicts with freedom of expression or the importance of facilitating derivative uses of authors’ expressions.187 For example, an ‘undisclosed’ diary might reveal explosive and secret political information, dissemination of which facilitates democratic governance. In addition, limiting quotations to works which have been made available to the public might impede dissemination of important historical or biographical information; a point which prompted the US Congress to clarify the application of fair use to unpublished works.188 A per se ban on criticising/reviewing or quoting from ‘undisclosed’ and ‘privately disclosed works’ is also rather strange if regimes that are adjacent to copyright are considered. For example, breach of confidence, which secures various interests in information that is imparted in circumstances importing an obligation of confidence admits of a general public interest defence.189 Similarly, the right to privacy possesses exceptions necessitating unauthorised disclosures of details about a person’s private life.190 Even the protection available to official

185 Beloff v Pressdram above at 259 G–H, 262J. The defence was also recognised in R v James Lorimer & Co [1984] 1 FC 1065 and in Commonwealth of Australia v John Fairfax & Sons Ltd (1980) 147 CLR 39. 186 Lion Laboratories v Evans [1984] 2 All ER 417 (CA). 187 See ch 1 above. 188 MS Bilder, ‘The Shrinking Back: The Law of Biography (1991) 43 Stanford Law Review 299. 189 Lion Laboratories v Evans [1984] 2 All ER 417 (CA). 190 ECHR Art 8(2) imposes inherent limits on the right to privacy.

110  The Significance of ‘Publication’ in Contemporary Copyright Law secrets, which is sometimes premised on securing national security, public health and other overarching interests, can be displaced where appropriate.191 The same argument obtains for data protection laws which usually proscribe unauthorised disclosure of personal information.192 Because ‘undisclosed’ and ‘privately disclosed’ works cannot be the subject of copyright exceptions, it is easy for claimants to seek summary judgment on their claims; a possibility that is discussed below.193 A potential response to the argument that is advanced in this paragraph is that unlike other regimes, copyright is a property right. However, that argument is misplaced. Privacy, confidence, data protection and official secrecy can have economic consequences.194 As far as ‘privately disclosed’ works owned by public bodies including the government are concerned, the position in Australia, Canada and Britain seems to suggest that other fundamental rights are subordinated to copyright protection. AG v Guardian195 is a key example of that approach – a futile attempt to curb further dissemination of official secrets on copyright and confidence grounds was mounted by the government. A similar conclusion emerges from AG v Blake.196 Unauthorised first publication of works containing classified information was punished by depriving the work of any protection in Britain. In Australia, AG v Fairfax197 displayed a propensity for securing national security at the expense of other interests – further disclosure of Australia’s deplorable conduct in East Timor was effectively censored. At the less dramatic level, a report concerning the oil industry in Canada could not be published without the Government’s consent.198 ‘Publication’ is also a prime factor for determining whether a particular use is fair; a matter which reveals the subtle differences in the protection that is available to various categories of unpublished works. British examples of that point can be traced to Lord Denning MR’s characterisation of ‘fairness’ as a matter of impression; an issue which is decided by reference to several factors including the unpublished nature of the infringed work.199 The significance of the unpublished status of a work to determination of ‘fairness’ can be gleaned from Hyde Park Residence Ltd v Yelland in which stills from a security video film owned by the plaintiff were published by The Sun without their owner’s consent. The plaintiff sought to prevent further distribution of the stills based on copyright infringement and breach of ­confidence.200 The defendant maintained that its use of the stills was covered by 191 The disclosure must be damaging. See Official Secrets Act ss 1(3), 2(1), 3(1), 5(3)(a) and 6(2). 192 Eg Data Protection Act 2018 s 8. 193 HRH Prince of Wales v Associated Newspapers Ltd (No 3) [2008] Ch 57; Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA); Hyde Park Residence Ltd v Yelland and Others [2001] Ch 143 (CA). 194 RA Posner, WM Landes and DD Friedman, ‘Some Economics of Trade Secret Law’, (1991) 5 ­Journal of Economic Perspectives 61. 195 Attorney General v Guardian Newspapers Ltd (No 2) [1990] 1 AC 109. 196 Attorney General v Blake [2000] UKHL 45, [2001] 1 AC 268. 197 Commonwealth of Australia v John Fairfax & Sons Ltd (1980) 147 CLR 39. 198 R v James Lorimer & Co [1984] 1 FC 1065. 199 Hubbard v Vosper [1972] 2 QB 84 (CA). 200 Hyde Park Residence Ltd v Yelland [1999] RPC 655.

The Availability and Strength of Copyright Exceptions   111 the fair dealing and public interest defences; an argument which was successful before Jacob J. On appeal, Aldous LJ confined Hubbard v Vosper to its facts and stated that: Lord Denning MR had in mind the facts of that case where the works in which copyright was claimed had been widely circulated among the followers of the Church of Scientology. However, the general thrust of the conclusions of Romer J remained, namely that it was difficult to imagine that it could be fair dealing to use a work that had not been published or circulated to persons for the purposes of criticism, review or newspaper reporting.201

Aldous LJ’s reasoning appears to confirm the position that dealing with an unpublished work can only be fair if a work is ‘publicly’ disclosed. However, the majority judgment might also have been influenced by the frenzied media pursuit of the Princess of Wales in Paris. The court emphasised the point that the work was obtained from a private residence. Apart from being a factor for determining ‘fairness’ in its own right, the unpublished status of a work also influences other ‘fairness’ factors including the manner in which the original work was obtained. That factor assumes pivotal importance to ‘undisclosed’ and ‘privately disclosed’ works – their very nature means that it is easy to prove that they were obtained surreptitiously. For instance, the fact that the contentious stills were taken from video footage of a private residence and leaked by a disgruntled employee seemed to influence Aldous LJ’s reasoning in Hyde Park Residence Ltd v Yelland.202 The same can be said for the ‘privately disclosed’ ­journals in the Prince of Wales case. In Harper & Row, the court also referred to the ‘vice of the leak’.203 In fact, sometimes the defendant might not dispute that it employed various sharp practices in order to access the work.204 The principal objection to basing fair dealing on the manner in which a work was obtained is that journalists may need to use unusual means to obtain information which informs vital public debates. Prioritising the manner in which a work was obtained when determining ‘fairness’ issues might hinder investigative journalism. In America, criticism of potential exclusion of unpublished works from ‘fair use’ inquiries reached fever pitch before Congress intervened.205 The seed of 201 Hyde Park Residence Ltd v Yelland and Others [2001] Ch 143 (CA), 158 C–D. 202 ibid, 159 D-E. 203 Harper & Row v Nation Enterprises, 471 US 539 (1985). 204 Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA). 205 Eg J Re, ‘The Stage of Publication as A Fair Use Factor: Harper & Row, Inc v National Enterprises’ (1984) 58 St John’s Law Review 597; DB Goroff, ‘Fair Use and Unpublished Works: Harper & Row v. Nation Enterprises’ (1984–85) 9 Columbia Journal of Law and the Arts 333; S Daniels, Harper & Row, Publishers, Inc. v. Nation Enterprises: Pirating Unpublished Copyrighted Works: Does the Fair Use Doctrine Vindicate First Amendment Rights (1985–86) 19 John Marshall Law Review 501; M Les Benedict, ‘Historians and the Continuing Controversy over Fair Use of Unpublished Manuscript Materials’ (1986) 4 American Historical Review 859; M Rodriguez, ‘Harper & Row, Publishers v. Nation Enterprises: Copyright Protection of Unpublished Historical Works Written by Public Officials’ (1986) 9 Harv Journal of Law and Public Policy 221; PN Leval, ‘Toward A Fair Use Standard’ (1990) 103 Harvard Law Review 1105; LV Merrill, ‘Should Copyright Law Make Unpublished Works Unfair Game’ (1990) 51

112  The Significance of ‘Publication’ in Contemporary Copyright Law that state of affairs was sown in Harper & Row v Nation Enterprises. In that case, Gerald Ford, a former president, wrote his memoirs and sold the right to publish them to Harper & Row, who entered into a serialisation agreement with Time. The Nation magazine published extracts from the manuscript, and the serialisation contract was cancelled. Harper & Row sued The Nation for copyright infringement. The Nation justified its unauthorised first publication of the excerpts on fair use grounds. The Supreme Court disagreed and held that the unpublished status of a work was pivotal to the second fair use factor, namely ‘the nature and character’ of the infringed work. Subsequent cases suggested that an unpublished work could not be an appropriate candidate for fair use; an attitude that can be detected from Salinger v Random House (unauthorised first publication of JD Salinger’s privately disclosed personal correspondence).206 The unpublished status of the letters rendered unauthorised dealings with them unfair. In addition, the nature of the unpublished letters meant that what was taken from the original works was excessive. Unauthorised first publication of the letters also reduced their market value: the defendants had extracted the most interesting passages from them. Publishers and others feared that Salinger v Random House represented an unwarranted restriction on uses of quotations in biographies.207 However, at no point did the Supreme Court suggest that unpublished works are immune from fair use. Another controversial case was New Era Publications International v Henry Holt & Co (unauthorised first publication of extracts from L Ron Hubbard, the founder of Scientology’s journals and diaries, in a biography entitled Bare-Faced Messiah). In the course of its judgment, the court observed that Where use is made of materials of an ‘unpublished nature’, the second fair use factor has yet to be applied in favour of an infringer, and we do not do so here.

That statement attracted serious opprobrium and it was perceived as supporting the conclusion that fair use could never apply to unpublished works.208 Congress

Ohio State Law Journal 1399; LL Weinreb, ‘Fair’s Fair: A Comment on the Fair Use Doctrine’ (1990) 103 Harvard Law Review 1137; D Conley ‘Author, User, Scholar, Thief: Fair Use and Unpublished Works’ (1990–91) 9 Cardozo Arts & Entertainment Law Journal 15; M Pomputius, ‘Fair and Foul are Near of Kin: A Suggested Approach to the Fair Use of Unpublished Works’ (1990–91) 15 Columbia Journal of Law and the Arts 177; AD Williams, ‘The Fair Use Doctrine and Unpublished Works’ (1991) 34 Howard Law Journal 115; KB LeFevre, ‘The Tell-Tale Heart: Determining Fair Use of Unpublished Texts (1992) 55 Law and Contemporary Problems 153; J Leman, ‘The Future of Unpublished Works in Copyright Law after the Fair Use Amendment’ (1992–93) 18 Journal of Corporation Law 619; J Adkins, ‘Fair Use and Unpublished Works: Public Law 102–492 – An Amendment to the Fair Use Statute’ (1993–94) 38 St Louis University Law Journal 231; B Marks, ‘Copyright Protection, Privacy Rights, and the Fair Use Doctrine: The Post-Salinger Decade Reconsidered’ (1997) 72 New York University Law Review 1376; R Spoo, ‘Fair Use of Unpublished Works: Scholarly Research and Copyright Case Law Since 1992’ (1998–1999) 34 Tulsa Law Journal 183; KD Crews, ‘Fair Use of Unpublished Works: Burdens of Proof and the Integrity of Copyright’ (1999) 31 Arizona State Law Journal 1. 206 Salinger v Random House 811 F 2d 90 (2d Cir 1987). 207 MS Bilder, ‘The Shrinking Back: The Law of Biography’ (1991) 43 Stanford Law Review 299. 208 PN Leval, ‘Toward A Fair Use Standard’ (1990) 103 Harvard Law Review 1105; MS Bilder, ‘The Shrinking Back: The Law of Biography (1991) 43 Stanford Law Review 299; JO Newman, ‘Copyright Law and the Protection of Privacy’ (1987) 12 Columbia Journal of Law and the Arts 459.

The Availability and Strength of Copyright Exceptions   113 was spurred into action and it amended § 107 of the Copyright Act in 1992 in the following terms: The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

The USA’s position on exceptions to infringement of copyright in unpublished works avoids the need to allocate each infraction into tight categories. Instead, ‘fairness’ remains the key battleground between authors and users. After section 107 of the Copyright Act was amended in 1992, various cases have demonstrated that ‘publication’ is but one aspect of the delicate balancing of the interests arising from copyright; a claim which can be supported by Wright v Warner Books.209 The defendant in that case, Margaret Walker, relied on her subject, Richard Wright’s unpublished journals and letters when composing an unauthorised biography. Wright’s widow unsuccessfully sued the publisher, Warner Books Inc for copyright infringement – the defendant’s biography was transformative and, qualitatively, the parts that were taken from the works were not significant. In addition, the biography did not unduly interfere with the potential market for the unpublished works in issue. From that case, one can conclude that the USA adopts a multifactorial approach when reconciling the interests that pervade copyright in unpublished works. The unpublished nature of a work is not decisive and all interests start from an equal premise. Another significant feature of American fair use cases on unpublished works is that courts tend to favour uses that are transformative; a point that can be extracted from Soc’y of the Holy Transfiguration Monestary Inc v Gregory.210 ­Unauthorised first publication of English translations of ancient Greek liturgical texts fell short of fair use because they were not transformative. There was also potential harm to the market for the translations because the defendant’s work was also geared towards religious services. In so far as the unpublished status of the work was concerned, the court highlighted the fact that the defendant had ‘effectively commandeered the monastery’s control over if, when, and how any such release of these works to the public would take place’.211 There was recognition of the authorial interest in deciding first publication of a work; an interest which can be justified normatively.212 The argument that transformative uses of an unpublished works might be favoured can also be seen in Sundeman v The Seajay Soc’y, Inc, for example,213 (unauthorised distribution and criticism/review of an unpublished book, Blood of My Blood ). The court rejected the argument that the unpublished status of the work precluded the availability of the fair use defence. The court found that the defendant’s use of the work did not usurp the plaintiffs’ right of first publication

209 Wright 210 Soc’y 211 ibid. 212 See

v Warner Books 953 F 2d 731 (2d Cir 1991). of the Holy Transfiguration Monestary Inc v Gregory 689 F 3d 29 (1st Cir. 2012).

ch 5 below. v The Seajay Soc’y, Inc 142 F 3d 194 (4th Cir 1998).

213 Sundeman

114  The Significance of ‘Publication’ in Contemporary Copyright Law because neither the purpose nor the effect of the copies amounted to anything resembling first publication. From that case, one can observe a purposive interpretation of the statutory fair use factors. Authors and users’ interests were weighed and a decision on the direction in which the pendulum should swing was made. The open-ended approach to fair use can also be distilled from Association of American Medical Colleges v Cuomo.214 The principal issue in that case was whether a state could rely on fair use in order to oblige owners of standardised tests to make copies of their works available to the public. Although the case was decided on other grounds, the fair use analysis that was deployed by the court hinged on the benefits of making the tests available to the public. Great prominence was attached to the opportunities available for analysing the reliability and robustness of the tests.215 Once again, the court balanced various fair use factors and, for our purposes, the unpublished status of the work was not sacrosanct. Although the analysis above seems to suggest that copyright in ‘privately disclosed’ and ‘undisclosed’ works is sometimes amenable to be displaced by other factors, the truth is that the full picture establishes the contrary. In Lish v Harper’s Magazine,216 for example, a creative writing academic wrote a letter to prospective students on one of his courses. Harper’s Magazine published an edited version of the letter in one of its issues and unsuccessfully defended its conduct based on fair use. The court decided that the defendant’s reproduction of 48 per cent of the unpublished letter weighed against fair use. Therefore, each case depends on its merits, a point which is also evident in Corbello v DeVito (adaptation of an unpublished work).217 The court held that the nature of the copyrighted work weighed in favour of fair use because, while the work was unpublished, it was ‘not unavailable to the public because of a deliberate choice by the copyright owner, but because it [was] not commercially viable’, and as such, the work’s biographical (ie factual) nature overshadowed the fact that it was unpublished. Separately, the fair use defence encompasses deployment of unpublished works in judicial proceedings.218 In Bond v Blum, for example, an author described how he murdered his own father. The unpublished work was later used in child custody proceedings between the author’s partner and her former husband.219 The former husband’s use of the manuscript was characterised as fair use. The court’s reasoning seems to have been based on the manuscript’s evidentiary value – it revealed the suitability of the author as a carer for children. Moreover, the former husband just took facts or information from the work and not its underlying expressions. Unlike Britain, with its compartmentalisation of copyright defences, fair use is sufficiently broad to accommodate a wide range of factors.



214 Association 215 ibid. 216 Lish

of American Medical Colleges v Cuomo 928 F 2d 519 (2d Cir 1991).

v Harper’s Magazine 807 F Supp. 1090 (SDNY 1992). 2:08-cv-00867-RCJ-PAL (D Nev June 14, 2017). 218 See ch 2 above. 219 Bond v Blum 317 F 3d 385 (4th Cir 2003). 217 No

The Availability and Strength of Copyright Exceptions   115 Swatch Grp Mgmt Servs Ltd v Bloomberg LP is another relevant case.220 There, Bloomberg, a financial news channel, obtained and disseminated Swatch’s sound recording of its earnings report. Swatch brought a claim for copyright infringement. Bloomberg successfully argued that the fair use defence was applicable to the facts of the case. The court premised its reasoning on several grounds including the importance of disseminating useful financial information to the public. The court’s reasoning can be contrasted with the position in PCR v Dow Jones Telerate in which basic financial data was protected. The court rightly characterised copyright in the contested work as being ‘thin at best’. The work recorded facts and not expressions of ideas. The cases on ‘undisclosed’ and ‘privately disclosed works’ can be contrasted with those involving published ones. Time Warner v Channel Four PLC221 provides a striking illustration of the different treatment of published and unpublished works in the context of fair dealing for criticism or review. In that case, the defendants used Stanley Kubrick’s A Clockwork Orange for the purpose of criticising the film itself and the decision to withdraw it from British cinemas. The plaintiffs unsuccessfully prevented Channel Four from using the film. The Court of Appeal stated that: There might be cases, particularly in relation to unpublished works, where the method by which the copyright material was obtained would be relevant to the issue of fair dealing. The defence of fair dealing was, however, primarily concerned with the treatment of the copyright material in the publication of which complaint was made. Criticism and review of a work already in the public domain which would otherwise constitute fair dealing would seldom if ever be rendered unfair because of the method by which the copyright material had been obtained.222

Fair dealing for criticism or review was successful in that case partly because A Clockwork Orange was published. Similarly, in Pro Sieben Media AG v Carlton UK TV Ltd,223 the Court of Appeal held that fair dealing for criticism or review embraced a published broadcast. In addition, in Fraser-Woodward Ltd v BBC,224 the BBC successfully argued that its use of David and Victoria Beckham’s photographs for the purpose of criticising the interaction between celebrities and the media was fair. The claimant owned the photographs and they had been published in various tabloid newspapers. It will be suggested that the purposive application of fair dealing defences to published works is justified because they do not engage serious privacy and expressive autonomy concerns.225 The same can be said for various American cases involving fair use of published works.226 220 Swatch Grp Mgmt Servs Ltd v Bloomberg LP 742 F 3d 17 (2d Cir 2014). 221 Time Warner v Channel Four PLC [1994] EMLR 1 (CA). 222 ibid, 2. 223 Pro Sieben Media AG v Carlton UK TV Ltd [1999] 1 WLR 605 (CA). 224 Fraser-Woodward Ltd v BBC [2005] FSR 36. 225 See ch 5 below. 226 Eg Campbell v Acuff-Rose Music, Inc, 510 US 569 (1994); Suntrust Bank v Houghton Mifflin Co, 268 F 3d 1257 (11th Cir 2001).

116  The Significance of ‘Publication’ in Contemporary Copyright Law The overall impression that is created in Britain is that judicial attitudes to copyright in ‘undisclosed’ and ‘privately disclosed’ works do not fully recognise the fact that copyright defences lie in the shadow of important fundamental freedoms. For instance, the enactment of the Human Rights Act 1998 (HRA) in Britain did not dislodge the significance of the unpublished status of a work to exceptions to copyright infringement. That point was addressed in Ashdown v Telegraph Group Ltd,227 in which Lord Ashdown, a former leader of the Liberal Democrats made a confidential aide memoire recording his secret meeting with Tony Blair, then British Prime Minister. The aide memoire was leaked to the Sunday Telegraph which published stories based on it. The claimant sought to curtail further publication of the aide memoire based on copyright infringement and breach of confidence. The defendant relied on the public interest and fair dealing defences and averred that even if the two exceptions did not excuse its conduct, it could rely on the right to freedom of expression that is enshrined in Article 10 of the European Convention on Human Rights as a defence to copyright infringement. At first instance, Sir Andrew Morritt V-C rejected the Sunday Telegraph’s arguments and held that existing copyright exceptions protected the defendant’s freedom of expression adequately.228 Sir Andrew Morritt V-C also stated that because the minute had not been published, dealing with it was unfair;229 a finding which was not reversed on appeal. With respect to freedom of expression, it was held that circumstances might arise in which copyright exceptions might not accommodate a user’s freedom of expression.230 As will be noted below, although numerous interests are usually at play in fair dealing/use cases, restricting dissemination of political information might strike the balance between conflicting fundamental rights in the wrong place. Given that the memorandum did not reveal any personal information, its unauthorised use should not have been curtailed. The weaknesses of the exceptions to infringement of copyright in unpublished works have prompted some commentators to suggest that Britain ought to adopt a fair use defence which applies to published and unpublished works alike.231 Proponents of that argument have highlighted the possibility that a fair use defence might better balance copyright protection with other public interests including freedom of expression. The flexibility arising from having a fair use defence might also mean that judges would not stretch existing concepts to accommodate the wider public interest. That issue will be analysed below. In conclusion on these points, there are important differences of detail in the protection that is available to various categories of unpublished works. 227 Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA). 228 Ashdown v Telegraph Group Ltd [2001] Ch 685, 693 A–C, 693 G, 694 A, 696 E–G. 229 ibid, 699 E. 230 ibid. 231 J Griffiths, ‘Copyright Law after Ashdown: Time to Deal Fairly with the Public’ [2002] 6 Intellectual Property Quarterly 240; J Griffiths, ‘Unsticking the Centre-Piece- The Liberation of European Copyright Law’ (2010) Journal of Intellectual Property, Information Technology and Electronic Commerce Law 87.

The Remedies for Copyright Infringement   117 Although  ‘undisclosed’ and ‘privately disclosed’ works receive the strongest protection because fair dealing for the purpose of criticism or review does not apply to such works; ‘publicly disclosed’ works can be subjected to the full range of copyright exceptions. ‘Making available to the public’ subsumes public exhibition of artistic works and public performances of dramatic works.232 For that reason, ‘publicly disclosed’ works can be criticised or reviewed. In my judgment, there is a good explanation for that state of affairs. An author who exposes a work by disclosing it voluntarily to the public ought to engage with the public’s interaction with her expressions of ideas. Besides, for all intents and purposes, a ‘publicly disclosed’ work is ‘published’ – it is distributed to the public with its author’s permission. Comparatively, American courts also tend to rule in favour of fair use fair if an original work is ‘publicly disclosed’: Rotbart v JR O’Dwyer Co, Inc.233 In that case, the editor and publisher of newsletters on public relations delivered a speech to an audience of more than 200 people in a public forum. He did not insist on the speech’s confidentiality. The defendant copied the speech and published it. The editor unsuccessfully sued the defendant for copyright infringement. The court ruled that the defendant’s use of the speech was fair use under the Copyright Act 1976 because it consisted of ‘criticism, comment, [and] news reporting’. The judge also ruled that the editor’s speech had been ‘de facto published’, because its presentation was not impressed with confidentiality. In the course of its judgment, the court noted that the scope of fair use is narrower if the work is unpublished.234 That approach is entirely consistent with the view that there are no clear practical differences between ‘publicly disclosed’ and ‘published works’.

The Remedies for Copyright Infringement Copyright protection requires effective remedies which may contain the threat of infringement or limit continued violations of authors’ interests. In other situations, authors may claim damages for interferences with their works. Generally, the remedies for infringement of copyright in published or unpublished works are the same. Nevertheless, the unpublished nature of a work does have a bearing on whether a claimant is able to obtain a particular remedy from the court. That possibility is most felt in the areas of additional damages and interim injunctions. Procedurally, the prospects of obtaining summary judgment in a copyright claim are enhanced if the original work is ‘undisclosed’ or ‘privately disclosed’. A court can, in a copyright case, award such additional damages as the justice of the case may require, having regard to all the circumstances and in particular to the flagrancy of the infringement and to any benefit accruing to the d ­ efendant



232 See

ch 1 above. v JR O’Dwyer Co, Inc No 94 Civ 2091 (JSM) (SDNY Feb 7, 1995). 234 ibid. 233 Rotbart

118  The Significance of ‘Publication’ in Contemporary Copyright Law by reason of it.235 ‘Undisclosed’ and ‘privately disclosed’ works provide a stronger case for additional damages – the manner of obtaining such material might involve a flagrant disregard of the claimant’s rights. In Nottinghamshire NHS Trust v News Group Newspapers,236 for instance, The Sun published a photograph from a patient’s medical notes. Nottinghamshire NHS Trust owned the copyright in the photograph and, unhappy at its publication, brought an action for copyright infringement. In addition to its claim for an injunction and ordinary damages, the Trust sought an order for additional damages. It argued that, in view of the venality of the newspaper’s conduct, an award of additional damages with a substantial punitive or exemplary element was required. Pumfrey J agreed with that analysis. In his opinion, an award of additional damages was justified in light of the likely benefit of the infringement to the defendant, the fact that the photograph was obviously stolen, the defendant’s conduct in the case, the fact that no apology had ever been made and the degree of upset caused at the hospital.237 However, exemplary or additional damages ought to be reserved for situations where a defendant’s conduct is clearly egregious. Otherwise, there would be a chilling effect on publication of important stories. Quite apart from this, interim injunctions recognise the possibility that although trials might yield accurate judgments, delays may render a claimant’s victory pyrrhic.238 Therefore, the status quo ante might need to be preserved if courts are to adjudicate the cases before them effectively. Courts generally preserve a claimant’s rights by granting interim injunctions which may be confirmed or discharged at the full trial of a case.239 In Britain, the requirements for an interim injunction were established in Lord Diplock’s speech in American Cyanamid v Ethicon.240 According to that case, a claimant must show that there is a serious question to be tried. The court will then exercise its discretion to grant an ­injunction in favour of the claimant on a balance of convenience. Moreover, there should be an undertaking that if the defendant suffers loss, the plaintiff will compensate her. Interim injunctions might not be granted if damages are an adequate remedy.241 Although authors of published or unpublished works might apply for an interim injunction in order to repel infringement of their works, that relief is likely to be granted if a work is ‘undisclosed’ or ‘privately disclosed’. This is because it is easy for a claimant to argue that the harm incurred from unauthorised first publication of ‘undisclosed’ or ‘privately disclosed’ works cannot be compensated adequately. 235 CDPA s 97(2). 236 Nottinghamshire NHS Trust v News Group Newspapers [2002] RPC 49. 237 ibid (paras 59 and 60). There is an argument that additional damages depart from the general principle that civil damages are compensatory. The merits of additional damages are beyond the scope of this book. 238 AAS Zuckerman, ‘Quality and Economy in Civil Procedure: The Case for Commuting Correct Judgments for Timely Judgments’ (1994) 14 OJLS 353. 239 For a theoretical analysis of interim injunctions see J Leubsdorf, ‘The Standard for Preliminary Injunctions’ (1978) 91 Harvard Law Review 525. 240 American Cyanamid Co v Ethicon Ltd (1975) AC 396 (HL). 241 Eg Baywatch Productions v The Home Video Channel [1997] FSR 22.

The Remedies for Copyright Infringement   119 For example, damages might not be an adequate remedy if authors do not wish to exploit the pecuniary advantages of first publication. Even if first publication of a work is contemplated, authors are deprived of the opportunity to edit their works carefully before first publication. As we will observe in chapter five of this book, copyright works can be experience goods and repeat transactions may be generated if a work is revised and published with its author’s consent. In contrast, where a work is published, the defendant may successfully oppose an interim injunction on the basis that the claimant will be compensated adequately if she is successful at trial. An interim injunction may be refused if to do so would interfere with the defendant’s freedom of expression: a point that is encapsulated in section 12(3) of the HRA – the court must determine whether the claimant is ‘likely to’ succeed at trial.242 Section 12(3) of the HRA will be implicated if a work is ‘undisclosed’ or ‘privately disclosed’ because unauthorised first publication of such works may reveal unknown or restricted information which may promote freedom of expression. In Cream Holdings Ltd v Banerjee,243 the House of Lords held that the higher standard of success required by the HRA might be displaced in some circumstances (eg in the decision to grant emergency, ex parte, relief). In our context, authors might argue that unauthorised first publication of their works is not justified because it is likely that such publication would not be in the public interest. Separately, sometimes authors of unpublished works enforce their rights by relying on copyright infringement and breach of confidence.244 The importance of the unpublished status of a work to the exceptions to copyright infringement and the strength of the public interest defence in breach of confidence cases245 makes it easy for claimants to seek summary judgment on their copyright claims.246 That point is fortified by The Lady Anne Tennant v Associated Newspapers247 (unauthorised first publication of photographs of Princess Margaret and her male companion), Hyde Park v Yelland, Ashdown v Telegraph Group Ltd and Prince of Wales v Associated Newspapers Ltd. In these cases, the claimants averred that the defendants did not have realistic prospects of success at the trial because fair dealing defences were unlikely to apply to infringement of copyright in unpublished works. It is therefore easier to obtain summary judgment on a copyright claim involving unpublished works than on a claim involving published ones. Given that summary judgment is interlocutory in nature and the merits of the parties’ claims are not tested by cross-examination, disposing of copyright cases procedurally might conflict with other public interests.248 242 Cream Holdings Ltd v Banerjee [2004] 3 WLR 918 (HL) para 20. 243 Cream Holdings Ltd v Banerjee [2004] 3 WLR 918 (HL). 244 See ch 2 above. 245 Lion Laboratories v Evans [1984] 2 All ER 417 (CA). 246 Civil Procedure Rules Part 24. 247 Lady Anne Tennant v Associated Newspaper Group Ltd [1979] FSR 298. 248 E Volokh, ‘Freedom of Speech and Appellate and Summary Judgment Review in Copyright Cases’ (1998) 107 Yale Law Journal 2431.

120  The Significance of ‘Publication’ in Contemporary Copyright Law

Conclusion Copyright law confers stronger and longer protection on unpublished works. This difference is most felt in the area of exceptions to actions for copyright infringement. In America, an extreme position briefly subsisted in the aftermath of Harper & Row v Nation Enterprises and before Congress intervened in the 1990s – the impression that unauthorised use of unpublished works could never be fair was not easily dislodged. Currently, the ‘nature’ of the work can still negate the fairness of a defendant’s dealing with the work, but it is not decisive.249 In Britain, a similar but less radical state of affairs has existed. In theory, uses of an unpublished work can be fair and some important cases sustain that proposition.250 However, for the most part, the contrary situation is often true – courts abjure unauthorised uses of unpublished works.251 The question is whether such approaches can be said to be located in a sound understanding of the values that pervade rights in unpublished works; an issue which will be canvassed below. A key argument that will be advanced in chapter six of the book is that exceptions to copyright in unpublished works ought to be interpreted purposively in order to accommodate other interests. The effects of ‘publication’ on the term of copyright protection often leads to inefficient exploitation of intellectual productions. This is especially so with reference to copyright in old unpublished works. The term of protection for these materials often exacerbates problems with orphan works. C ­ hapter six will consider the attractiveness of reducing the duration of copyright in ‘old’ unpublished works. It will be argued that there are very few good reasons for maintaining the current position with reference to such works. Given that contemporary copyright law confers stronger and longer protection on unpublished works, a fundamental question which is explored in the next chapter is whether that protection is justified. It will be suggested that copyright in unpublished works is justified because it would be too difficult to distinguish published from unpublished works. In addition, ascertaining authors’ intention with respect to dissemination or first publication of their works is nearly ­impossible. Consequently, the same protection should be available to published and unpublished works. However, given that unpublished works encompass a wide range of materials and interests, exceptions to infringement of unpublished works might have to be narrow.

249 Eg Warner v Wright Books, 953 F 2d 731 (2d Cir 1991). 250 Hubbard v Vosper [1972] 2 QB 84 (CA). 251 HRH Prince of Wales v Associated Newspapers Ltd (No 3) [2008] Ch 57; Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA); Commonwealth of Australia v John Fairfax & Sons Ltd (1980) 147 CLR 39.

5 Justifications for Protection of Unpublished Works Introduction Copyright theorists have devoted their attention almost exclusively to published works, and particularly emphasise the public advantages arising from granting protection to such material.1 A possible explanation for that state of affairs might be that protection of unpublished works is not about copyright law at all. This would certainly be so if the concept of ‘copyright’ relates to the regulation of reproduction of published works (but not if ‘copyright’ is about the protection of authors’ intellectual creations). ‘Copyright’ is itself a concept which has evolved historically and whose reach is quite contentious.2 However, the current approach to the normative bases for copyright protection seems especially remiss, since in some instances, contemporary copyright law confers stronger and longer protection on unpublished works.3 In addition, there does not appear to be (on the face of it) any obvious public interest-based justifications for protecting unpublished works by copyright law – their dissemination remains private.4 The question which arises for discussion in this chapter is whether there are any good reasons for protecting unpublished works and, moreover, whether there is justification for the strong protection of unpublished works that was identified earlier. Although various claims vie for prominence, this chapter examines the relevance of p ­ ersonality, 1 Eg L Becker, ‘Deserving to Own Intellectual Property’ (1992–93) 68 Chicago-Kent Law Review 609 (justifying protection of intellectual productions on desert grounds); J Hughes, ‘The Philosophy of Intellectual Property’ (1988) 77 Georgetown Law Journal 287 (suggesting that labour and personality might justify intellectual property rights); WM Landes and RA Posner, ‘An Economic Analysis of Copyright Law’ (1989) 18 Journal of Legal Studies 325 (providing economic justifications for copyright protection); M Spence, Intellectual Property (Oxford, Oxford University Press, 2007) 55; LK TreigerBar-Am and M Spence, ‘Private Control/Public Speech’ in KS Ziegler (ed) Human Rights and Privacy Law: Privacy As Autonomy (Oxford, Hart Publishing, 2007) 177 (discussing creators’ expressive autonomy) but cf WM Landes, ‘Copyright Protection of Letters, Diaries, and Other Unpublished Works: An Economic Approach’ (1992) 21 Journal of Legal Studies 79 and JO Newman, ‘Copyright Law and the Protection of Privacy’ (1987) 12 Columbia Journal of Law & the Arts 459. 2 L Bently, ‘Art and the Making of Modern Copyright Law’ in D McClean and K Schubert (eds) Dear Images: Art, Copyright and Culture (London, Ridinghouse, 2002)) 331, 332–35. 3 See ch 4 above for the significance of the unpublished status of a work in British copyright law. 4 However, as will be observed below, various public interests including protecting authors’ privacy and expressive autonomy support protection of unpublished works.

122  Justifications for Protection of Unpublished Works privacy, expressive autonomy, and economic theories of private property ownership to protection of unpublished works because they best capture the issues that are raised here. It is argued that the economic justification for protecting published works, namely, incentivising creation and dissemination of socially useful expressions,5 applies equally to ‘disclosed’ and ‘published’ works. However, protection of ‘undisclosed’ works cannot be justified on conventional economic grounds but, nevertheless, can be defended primarily because of the difficulty of differentiating works that are destined for publication from other unpublished works. Thus, the same level of protection would seem appropriate in relation to all unpublished works as is conferred on published ones. It is also the case that protection of unpublished works might incentivise preservation of ‘disclosed’ or ‘undisclosed’ expressions. Moreover, so-called ‘labour’ or ‘desert’ theories might explain protection of unpublished works but ‘undisclosed’ material might not implicate the ‘enough and as good’ and ‘waste’ provisos, which limit initial acquisition of private property. Apart from this, appealing to ‘desert’ to justify protection of ‘unpublished’ works generates nice questions concerning the ‘public benefit’ or ‘excellence’ of ‘undisclosed’ materials. Fifthly, protection of unpublished works is also justified on personality,6 expressive autonomy, and privacy grounds. However, these theories imply different rules from the economically oriented bases for copyright protection. For instance, the latter theories might suggest that rights in unpublished works ought to be given to authors (not employers, juristic persons, or assignees) and should cover information as such and last longer. The chapter concludes by discussing whether any or some of the justifications are more plausible than the others, and even if they are all defensible, whether, in the event of potential conflict, there are means or reasons to adopt one theory rather than another. It is argued that copyright protection of unpublished works is justified because it simply would be too cumbersome to distinguish published from unpublished works, or in fact, unpublished works that will be published and those that will not. Given the intricacies of Internet publication, that distinction is increasingly difficult to apply in practice. Besides, the range of materials and interests falling within the ambit of ‘disclosed’ and ‘undisclosed’ works necessitates protecting unpublished works by other legal regimes including the action for breach of confidence and the right to privacy. Historically, copyright law has often been justified by reference to utilitarianism. According to that theory, copyright might incentivise creation and publication of new works, an inducement which would not exist if publishers were able to copy one another’s publications. However, in the analysis that follows, the focus will also be on author-centred justifications. This is because such theories 5 Eg WM Landes and RA Posner, ‘An Economic Analysis of Copyright Law’ (1989) 18 Journal of Legal Studies 325. 6 GWF Hegel, Philosophy of Right (Oxford, Oxford University Press, TM Knox (ed), 1967) 235 for one exposition of that theory.

Incentives  123 appear more closely aligned with the variety of interests (such as privacy, dignity and autonomy) at stake in the protection of unpublished works. Nevertheless, and perhaps surprisingly, it will be observed that even economic arguments can offer ­persuasive reasons for protecting unpublished works.

Incentives The most pervasive justification for copyright protection in common law jurisdictions is that it provides the incentives necessary for creation, dissemination, and efficient exploitation of intellectual productions.7 That claim is deeply entrenched in the US, where the constitutional premise for intellectual property rights is generally utilitarian,8 and it hinges on the assumption that while products of the mind might be expensive and difficult to create, they have public goods­ characteristics  – their consumption is, in the main, non-exclusive and nonrivalrous. Goods are non-exclusive if they can be consumed freely. In addition, numerous people can exploit non-rivalrous goods without diminishing their utility to each user.9 The public goods characteristics of intellectual productions and discrepancies between the costs of creativity and unauthorised copying might lead to free-riding behaviour on the part of users. ‘Free riding’ denotes exploiting resources without contributing towards the cost of their production,10 and in our context, it might undermine creation of intellectual productions and restrict the public benefits of exploiting such works. In economic terms, exploiting public goods might lead to ‘market failure.’ For its part, market failure refers to allocative inefficiency which harms the public interest.11 In the context of intellectual property protection, market failure is cured by granting exclusive but limited monopolies to creators. For the most part, the market failure that is associated with free-riding behaviour arises when a work is ‘published’ or if its copies are sold with no contractual or other legal restraint. For example, absent protection, a purchaser of a single copy 7 Eg WM Landes and RA Posner, The Economic Structure of Intellectual Property Law (Cambridge MA, Harvard University Press, 2003) (justifying protection of intellectual productions on economic arguments). 8 US Constitution, Art I, sect 8, cl 8. ‘Utilitarianism’ is the belief that the value of a thing or an action is determined by its utility. It is associated with J Bentham, The Principles of Morals and Legislation (Oxford, Oxford University Press, 1907) ch 1. 9 See JR Minasian, ‘Public Goods in Theory and Practice Revisited’ (1967) 10 Journal of Law and Economics 205. 10 TC Bergstrom and RP Goodman, ‘Private Demands for Public Goods’ (1973) 63 American Economic Review 280. 11 FM Bator, ‘The Anatomy of Market Failure,’ (1958) 72 Quarterly Journal of Economics 351. For a discussion of the concept of ‘market failure’ in the context of the fair use defence in American copyright law see WJ Gordon, ‘Fair Use as Market Failure: A Structural and Economic Analysis of the Betamax Case and its Predecessors’ (1982) 82 Columbia LR 1600; GS Lunney, ‘Fair Use and Market Failure: Sony Revisited’ (2002) 82 Boston University Law Review 975; WJ Gordon, ‘Market Failure and Intellectual Property: A Response to Professor Lunney’ (2002) 82 Boston University Law Review 1031.

124  Justifications for Protection of Unpublished Works of books, musical scores, films, or sound recordings could reproduce the work without payment. The gap between the costs of producing and reproducing a work might lead some users to engage in free-riding behaviour. For instance, it might be expensive to create a work, prepare it for publication, and market it effectively to users, but cheap to copy and disseminate the finished product; a point that is buttressed by digital copying and distribution of music. Consequently, authors might not engage in creativity, and publishers might not be inclined to incur the cost of producing and marketing authors’ expressions if their competitors can avoid these costs by simply reproducing and disseminating the finished work. At first blush, ‘publicly disclosed’ works should be distinguished from published ones. After all, dramatists for example, might not publish their works because they stand to benefit exclusively from rights in performances. In addition, as we observed earlier, some authors may perform their works with the goal of testing the financial attractiveness of their expressions before they are finalised and published.12 However, ‘publicly disclosed’ works may equally be susceptible to copying. A profitable illustration of that point can be gleaned from Macklin v Richardson, in which ‘Love à la Mode’, an unpublished farce, was performed at several theatres with its author’s consent.13 Although Macklin controlled the prompter’s script, the defendant attended a performance, took notes and reproduced the play in print. The same is true for Martin Luther King’s ‘I Have a Dream’. It was disclosed publicly and attracted users who were determined to replicate it.14 In so far as ‘publicly disclosed’ works possess public goods characteristics, they ought to attract the level of protection that is available to ‘published’ works. In addition, exceptions to infringement of copyright in ‘publicly disclosed’ and ‘published’ works ought to be the same. Moreover, because ‘publicly disclosed’ works are distributed to the public with their authors’ consent, the action for breach of confidence, privacy and other regimes which depend on the relative secrecy of information are of limited assistance to protection of such works. These arguments rest on the fact that although users do not receive tangible copies of ‘publicly disclosed’ works into their possession, such material is disseminated to the public. The economic case for protecting privately disclosed works is also clear because they may exhibit important ‘public goods’ characteristics. Take various examples from the civil and common law traditions: Günter Grass-Briefe,15 Harper & Row v Nation Enterprises,16 and Ashdown v Telegraph Group Ltd.17 Copies of the letters, manuscript and aide memoire in the respective cases were reproduced and disseminated extensively. British judges addressed the public goods ­characteristics



12 Estate

of Martin Luther King Jr v CBS Inc 194 F 3d 1211 (11th Cir 1999). v Richardson (1770) Amb 694. 14 Estate of Martin Luther King Jr v CBS Inc 194 F 3d 1211 (11th Cir 1999). 15 KG, 27.11.2007 – 5 U 63/07– Günter Grass-Briefe. 16 Harper & Row v Nation Enterprises, 471 US 539 (1985). 17 Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA). 13 Macklin

Incentives  125 of ‘privately disclosed’ works by creating a ‘special property’ in personal correspondence and its essence was the distinction between ownership of chattels and authorial rights.18 This ‘property’ was extended to a wide variety of subject matter19 and it has remained in force even after 1911 when common law rights in unpublished works were abrogated by statute. Creating a ‘special property’ in letters might have recognised the reality that once a work is disseminated to another, it can be reproduced and distributed much further without interfering with its owner’s chattel property. The public goods characteristics of privately disclosed works are intensified by modern technologies which facilitate wholesale dissemination of illicitly obtained material. Recent examples of that proposition include the Wikileaks saga and the leaking of former British Ambassador to the USA Sir Kim Darroch’s cables to the Foreign Secretary and others.20 Owing to their public goods characteristics, ‘privately disclosed’ works should also attract legal regimes whose primary goal is proscribing unauthorised dissemination of unpublished material including the right to privacy, data protection, and the action for breach of confidence. The essence of that argument is that the social utility of expressions that are disseminated privately might be diminished if users can reproduce them with impunity. Sometimes a stronger regime is needed to induce private disclosure at all; a point which can be detected from Lord C ­ hancellor Hardwicke’s observations on the value of private letters in Pope v Curll.21 A similar example is provided by Thompson v Stanhope in which the Earl of Chesterfield wrote instructional letters to his son.22 In the absence of protection, authors might not express themselves frankly. However, relying on privacy and breach of confidence to protect privately disclosed works might give rise to protection of basic facts and ideas; a result that is entirely inconsistent with copyright protection. Given that they lack immediate public goods characteristics, the economic case for protecting ‘undisclosed’ works is more dubious. Owing to the personal property rights they possess in tangible embodiments of their expressions including manuscripts, private diaries, journals or paintings, authors can exclude all third parties from using their ‘undisclosed’ expressions. In the event that dissemination of undisclosed material is contemplated, the natural exclusivity consequent upon having authored a work might enable authors to bargain with potential ­publishers (who would, presumably, benefit from say copyright in published works).23

18 See Pope v Curll above, Gee v Pritchard (1818) 2 Swans 402 and Perceval v Phipps (1813) 2 V & B 19. 19 Duke of Queensberry v Shebbeare (1758) 2 Eden 329; Thompson v Stanhope (1774) Amb 737; ­Abernethy v Hutchinson (1825) 1 H & TW 28 and Prince Albert v Strange (1849) 2 De G & Sm 293. 20 www.bbc.co.uk/news/uk-48898231. 21 Pope v Curll (1741) 2 Atk 342. 22 Thompson v Stanhope (1774) Amb 737. 23 The proposition that personal property rights might protect ‘undisclosed’ works can be supported by reference to the records of the Stationers’ Company suggesting that a manuscript was a chattel which could only be used with its author’s consent. However, over the course of time, the nature of the

126  Justifications for Protection of Unpublished Works Granted that private property rights do, after all, give authors of ‘undisclosed’ works control over their material, further incentives in the form of copyright protection are unnecessary. Moreover, expressions which remain ‘undisclosed’ might not meet a key requirement of the economic justification for protecting intellectual productions, namely: incentivising creation and dissemination of intangibles that maximise social welfare. However, several variants of the standard economic argument for protecting intellectual productions justify copyright in ‘undisclosed’ works. Firstly, any advantages arising from the natural exclusivity of owning an ‘undisclosed’ work would vanish if unauthorised first publication materialises. The diaries in A v B24 and Argyll v Argyll25 are, once again, pertinent. Once the estranged husbands in the two cases discovered the diaries and copied them, the wives’ physical enjoyment of the paper on which their expressions were written was of little consequence. Moreover, in the digital world, hackers might access ‘undisclosed’ works remotely and disseminate them widely. A graphic example of that danger can be taken from Tchenguiz v Imerman in which the claimant’s sensitive financial data was accessed.26 The same can be said for Middleton & Anor v Person(s) Unknown (hacking of intimate photographs and other materials stored on an iCloud account).27 The possibility that ‘undisclosed’ works may be disseminated without their author’s permission suggests that apart from copyright; breach of confidence, privacy and data protection laws might secure authors’ interests. Nevertheless, exceptions to that protection ought to exist if other values including the importance of freedom of expression and transparent government are to be respected. Moreover, sensible orphan works provisions ought to apply to ‘undisclosed’ works. After all, they may contain insights which are not known at all. Intellectual productions may be experience goods.28 ‘Undisclosed’ or ‘privately disclosed’ works, if adequately revised and published with the stamp of their authors’ approval, may engender further commissions or purchases. Unauthorised first publication of ‘undisclosed’ or ‘privately disclosed’ works before the revision process is concluded may leave significant errors in the final work and harm authors’ creative reputation; a concern that was addressed by Lord Mansfield in Millar v Taylor when he stated that: From what source, then is the common law drawn, which is admitted to be so clear, in respect of the copy before publication? From this argument-because – [it] is fit, he should choose to whose care he will trust the accuracy and correctness of the i­ mpression; ­ roperty rights attaching to an unpublished work shifted from mere ownership of a chattel to an authop rial right in the expressions contained in the unpublished manuscript. See ch 2 above for an extended discussion of that point. 24 A v B [2000] EMLR 1007. 25 Duke of Argyll v Duchess of Argyll and Anor [1962] SLT 333. 26 Tchenguiz v Imerman [2010] 2 FLR 814 (CA). 27 Middleton & Anor v Person(s) Unknown [2016] EWHC 2354 (QB). 28 The characteristics of experience goods can only be ascertained by consumption: P Nelson, ‘Information and Consumer Behavior’ (1970) 78 Journal of Political Economy 311.

Incentives  127 in whose honesty he will confide, not to foist additions: with other ­reasonings of the same effect.29

That disquiet was also evident in Harper & Row v Nation Enterprises.30 Copyright provides a private sphere for formulating and distilling authors’ expressions before they are published, thereby securing authors’ economic interests. Moreover, where appropriate, breach of confidence and the right to privacy may offer indirect assistance to authors who wish to prevent premature dissemination of their expressions. However, breach of confidence possesses a significant weakness: it might not embrace third party disclosure – Times Newspapers v MGN.31 Unless personal information is at stake, the extended form of that legal action might not provide an attractive solution for protecting undisclosed and privately disclosed works.32 Moreover, both privacy and confidence possess a strong public interest defence which may mandate unauthorised first publication in certain circumstances.33 Therefore, copyright with its automatic availability and weak exceptions remains the most attractive instrument for safeguarding authors’ economic interests. A related point is that unauthorised first publication might trigger negative associations between authors and users. The nucleus of that claim revolves around suppressing dissemination of material which harms authors’ personal reputation. Take the example of the letters in Günter Grass-Briefe.34 Although the letters did not reflect badly on his literary genius, some users might have found Grass’s creative output deeply unpalatable, given his earlier collaboration with Nazism. A similar line of reasoning can be applied to Hubbard v Vosper, New Era v Henry Holt,35 British Oxygen v Liquid Air36 and Lion Laboratories v Evans.37 These cases were an exercise in preventing disclosures of material which could harm the claimants’ general reputation and in turn their pecuniary interests. In other instances, authors’ creative reputation might also be implicated. True, defamation is capable of redressing injuries to authors’ reputation. However, the expense and uncertainties surrounding that regime means that it is not a suitable mechanism for vindicating authors’ interests.38 Even more fundamentally, budding authors may not have established any reputation which might attract protection via defamation laws. Separately, protection of ‘undisclosed’ works potentially incentivises their preservation. For example, donations to cultural heritage institutions might be influenced by the availability of laws which can stem unauthorised first p ­ ublication 29 Millar v Taylor (1769) 4 Burr 2303, 2399. For problems with accuracy in 18th-century printing, see DJ McKitterick, Print, Manuscript and The Search for Order at 187–204 (2003). 30 Harper & Row v Nation Enterprises, 471 US 539 (1985) 471. 31 Times Newspapers Ltd v MGN Ltd [1993] EMLR 443. 32 Campbell v MGN Ltd [2004] UKHL 22; [2004] 2 AC 457. 33 Eg Lion Laboratories v Evans [1985] QB 526. 34 KG, 27.11.2007 – 5 U 63/07– Günter Grass-Briefe. 35 New Era Publications Int’l ApS v Henry Holt & Co, 873 F.2d 576 (2d Cir). 36 British Oxygen Co Ltd v Liquid Air Ltd [1925] Ch 383. 37 Lion Laboratories v Evans [1984] 2 All ER 417 (CA). 38 G Dworkin, ‘The Moral Right of the Author: Moral Rights and the Common Law Countries’ (1994–95) 19 Columbia Journal of Law and The Arts 229, 237.

128  Justifications for Protection of Unpublished Works of copyright works.39 However, there is no empirical evidence suggesting that protecting ‘undisclosed’ works is more likely to lead to their preservation. In fact, vast quantities of ‘undisclosed’ material have been allowed to perish.40 In any case, irrespective of the legal arrangements that are available for protecting ‘preserved’ works, some authors actively seek to destroy their ‘undisclosed’ expressions. Franz Kafka’s infamous instructions to his literary executor are symbolic.41 Moreover, the scope of protection justified by the preservation theory is confusing. In some instances, high levels of aesthetic merit might need to be realised before a work is preserved: an argument which, if implemented, would engender serious subjectivity. The preservation theory also justifies perpetual protection of ‘undisclosed’ works; a possibility which subtracts from the importance of imposing temporal restrictions on intellectual property rights. In general, copyright is available for a fixed term in order to accommodate other interests including eventual unfettered access to a work. Even if copyright in ‘undisclosed’ works is coterminous with authors’ natural life, such limited protection might precipitate rash destruction of ‘undisclosed’ expressions immediately before or after authors die.42 The point which can be gathered from the analysis above is that copyright offers limited avenues for protecting culturally significant works. In some instances, cultural heritage laws offer the best means for securing important works for posterity. Protecting ‘undisclosed’ works might also minimise the waste arising from unauthorised attempts at accessing such material.43 Absent protection, valuable resources might be expended in a socially unproductive fashion on protecting the work from being accessed and by third parties on gaining access to it. That proposition can be supported by the audacious bid to pirate William H ­ ogarth’s A Rake’s Progress. Several persons visited Hogarth at his home with the goal of seeing the work and copying it before the enactment of the Engravings 39 Alan Bennett’s gift of his notes, drafts, and unpublished diaries to the Bodleian Library demonstrates the value of preserving ‘undisclosed’ works. See http://news.bbc.co.uk/1/hi/entertainment/7686760. stm. Arguably, students of Bennett’s poems benefited from additional insights gleaned from his ‘undisclosed’ diaries or drafts. 40 See JL Sax, Playing Darts with a Rembrandt: Public and Private Rights in Cultural Treasures (­Michigan, Michigan University Press, 2001) 81–116. 41 See www.guardian.co.uk/books/2010/jul/19/lawyers-open-unpublished-kafka-manuscripts. Similarly, Pope John Paul II instructed his private secretary to destroy his ‘undisclosed’ papers. See www. cnn.com/2005/WORLD/europe/06/04/pope.papers.ap/index.html. The executors in both instances did not adhere to the deceased author’s instructions because they considered the unpublished works in question to be invaluable. One of Kafka’s most important works, The Trial, was part of his output meant for posthumous destruction. The Pope’s unpublished works revealed his doubts about continuing in his role. Of course, this does not mean that some authors are not incentivised to preserve their undisclosed works. 42 In my view, a limited post-mortem term is preferable because it preserves ‘undisclosed’ works for a significant time before a decision on whether to preserve a work permanently is undertaken. 43 See DD Friedman, WM Landes and RA Posner, ‘Some Economics of Trade Secret Law’ (1991) 5 Journal of Economic Perspectives 61; WM Landes and RA Posner, The Economic Structure of Intellectual Property Law (Cambridge MA, Harvard University Press, 2003) 354–71; LS Paine, ‘Trade Secrets and the Justification of Intellectual Property: A Comment on Hettinger’ (1991) 20 Philosophy and Public Affairs 247.

Incentives  129 Copyright Act 1734.44 The threat of legal action potentially deters unauthorised access to ‘undisclosed’ works. The claim that protecting ‘undisclosed’ works is economically efficient because it minimises the danger of unauthorised first publication implies that in some circumstances, information as such ought to be protected. That argument also suggests that breach of confidence and the right to privacy are sensible routes for protecting ‘undisclosed’ material. However, excessive cumulation of rights in unpublished works might give rise to serious problems concerning the scope and intensity of protection. In general, copyright protects expressions of ideas while adjacent regimes including data protection, privacy or confidence are capable of suppressing unauthorised disclosures of facts or ideas. Within some of these regimes, considerable disparities in the term of protection may also arise. For instance, the duty to maintain confidences may last indefinitely while protection of data or privacy might be for specific terms. Most importantly, there is an economic case for protecting ‘disclosed’ and ‘undisclosed’ works uniformly based on the cost of differentiating works that are intended to be disclosed and those that are not. Determining whether authorised first publication is contemplated gives rise to substantial difficulties – authors’ intention might fluctuate. For instance, authors of private diaries or journals may be singularly opposed to disclosure of their expressions, but a subsequent change in personal circumstances might encourage first publication. Apart from deciphering an author’s attitude towards first publication, there are considerable similarities between some ‘disclosed’ works (eg publicly exhibited artistic works) and ‘published’ works.45 There are also similarities between some ‘disclosed’ works (eg personal letters that are not intended for publication) and some ‘undisclosed’ works (eg private journals that are never disseminated).46 Consequently, it seems likely that it is economically efficient to protect all unpublished works uniformly because the need for protecting ‘disclosed’ works is obvious (due to the public goods characteristics of such works) while the cost of differentiating works which the author intends to remain ‘undisclosed’ from those which are to be ‘disclosed’ are probably greater than the cost of protecting all unpublished works uniformly. An implication of that argument is that all copyright works should be protected uniformly. However, owing to the wide range of materials falling within the ambit of unpublished works, exceptions to infringement of copyright in unpublished works ought to be interpreted purposively in order to reflect the nature of the work and the interests it generates. Apart from this, the broad range of materials encompassed by unpublished works engages interests which might receive protection from multiple legal actions. For example, works that are ‘disclosed’ to the public (by public performance or 44 See D Hunter, ‘Copyright Protection for Engravings and Maps in Eighteenth-Century Britain’ (1987) The Library 128. 45 Publicly exhibited or performed works and published works are disseminated to the public. 46 The similarities between some disclosed and undisclosed works lie in the possibility that dissemination of the work should be limited.

130  Justifications for Protection of Unpublished Works exhibition) might be protected by copyright only.47 Conversely, depending on the nature of the expressions in a particular work, and, in some instances, the relationship between the parties, protection of expressions that are ‘disclosed’ privately (eg a personal letter or journal) might take the form of breach of confidence. ­Similarly, the right of privacy might be used to protect works that are ‘disclosed’ to an individual or to a close circle of confidants. The public goods characteristics of ‘disclosed’ works might also mean that copyright ought to protect unpublished works which are disseminated privately.48 It might therefore be argued that owing to the different interests that are implicated by the extent of disclosure of a work, protection of ‘privately disclosed’ works justifies cumulation of rights in intellectual productions. In conclusion on this part, there is a clear economic case for protecting all works irrespective of their status.

Labour The limited relevance of conventional economic arguments for protecting ­intellectual productions to rights in ‘undisclosed’ and ‘privately disclosed’ works requires us to consider other bases for copyright in such material. One such theory is John Locke’s labour justification for private property ownership. That argument can be boiled down to a basic proposition: all people have natural rights to life, liberty and property and the raison d’être for the existence of governments is to protect these entitlements.49 Justifying property ownership based on labour assumes the existence of a state of nature in which resources are unowned and available for appropriation by individuals. For Locke, acquisition of private property rights in things rests on prior ownership of one’s body which in turn entitles individuals to own the fruits of their labour. Put differently, mixing labour with unowned or common objects generates exclusive property rights to the fruits of that exercise. Numerous authors have relied on Locke to defend or criticise protection of intellectual productions;50 a tendency which has considerable historical 47 Dissemination of publicly performed or exhibited works does not raise privacy or confidentiality issues. 48 Copyright remains relevant to works that are disseminated privately because these works might not contain any private or confidential information. 49 J Locke, ‘Second Treatise of Government’ [1690] in P Laslett (ed), Two Treatises on Government, 2nd edn (Cambridge, Cambridge University Press, 1967) §§ 25–51. 50 Eg BG Damstedt, ‘Limiting Locke: A Natural Law Justification for the Fair Use Doctrine’ (2003) 112 Yale Law Journal 1179; A Drassinower, ‘A Rights-Based View of the Idea/Expression Dichotomy in Copyright Law’ (2003) 16 Canadian Journal of Law and Jurisprudence 3; WJ Gordon ‘A Property Right in Self-Expression: Equality and Individualism in the Natural Law of Intellectual Property’ (1993) 102 Yale Law Journal 1533; SJ Horowitz, ‘Competing Lockean Claims to Virtual Property’ (2006–07) 20 Harvard Journal of Law and Technology 443; J Hughes, ‘The Philosophy of Intellectual Property’ (1988–89) 77 Georgetown Law Journal 287; AC Yen, ‘Restoring the Natural Law: Copyright as Labor and Possession’ (1990) 51 Ohio State Law Journal 517; L Zemer, ‘The Making of a New Copyright Lockean’ (2006) 29 Harvard Journal of Law and Public Policy 891.

Labour  131 ­antecedents. In Millar v Taylor, for instance, Lord Mansfield employed notions of allowing authors to enjoy the fruits of their labour to explain the nature of copyright in unpublished works.51 An identical attitude can be extracted from Wheaton v Peters.52 In the contemporary context, ‘labour’ retains its relevance as one of the principal justifications for copyright protection. For our purposes, authors might originate ideas, transform them into dramatic or artistic works, and ‘disclose’ these materials to the public via performance or exhibition only. In addition, persons might compose and distribute romantic correspondence to the objects of their affections. Similarly, a diarist might employ labour, skill, and effort when ventilating her feelings in an ‘undisclosed’ diary. These examples raise a fundamental question namely, whether protection of ‘disclosed’ and ‘undisclosed’ works can be explained on labour grounds. One immediate answer to that question is that protection of ‘undisclosed’ works is justified, but that of rights in ‘published’ and ‘disclosed’ works is not. The fulcrum of that distinction is that the labour argument does not justify protection of copies of a work. As Edwin Hettinger has observed: the natural right of an author to personally use her writings is distinct from the right, protected by the law, to make her work, publish, sell it in a market, and then prevent others from making copies.53

That seems to have been Yates J’s view in Millar v Taylor when he discussed common law rights in unpublished manuscripts.54 In my view, the Lockean labour theory focuses on deployment of labour at the time of acquisition of property rights in an object. Consequently, there are no material differences (in principle) between the nature of the labour expended on creating ‘published’, ‘disclosed’ or ‘undisclosed’ works. The labour that triggers private property rights in a work is not compromised by its subsequent reproduction or dissemination. The issue of ‘copies’ is only relevant in so far as it demonstrates how control over intellectual productions and their duplicates might be necessary if authors are to enjoy the fruits of their labour. It is suggested that the central differences in the protection which ought to be available to ‘published’, ‘disclosed’ and ‘undisclosed’ works arise within the context of the Lockean provisos. Locke imposed two fundamental limits on legitimate appropriation of common resources: the so-called ‘enough and as good’ and ‘waste’ provisos. Firstly, the act of appropriation must leave ‘enough and as good for others’.55 In our context, granted that the ‘enough and as good’ proviso restricts a labourer’s initial entitlement to acquire property rights from common resources;56 the raw materials from which 51 Millar v Taylor (1769) 4 Burr 2303; 2399 (Lord Mansfield CJ). 52 Wheaton v Peters 33 US (8 Pet) 591. 53 EC Hettinger, ‘Justifying Intellectual Property’ (1989) 18 Philosophy and Public Affairs 31, 40. 54 Millar v Taylor (1769) 4 Burr 2303; 2399 (Lord Mansfield CJ). 55 J Locke, ‘Second Treatise of Government’ [1690] in P Laslett (ed), Two Treatises on Government, 2nd edn (Cambridge, Cambridge University Press, 1967) 33. 56 See P Larkin and JL Stocks, Property in the Eighteenth Century with Special Reference to England and Locke (London, Lawrence Verry Inc, 1930) 62; RI Aaron, John Locke (Oxford, Oxford University

132  Justifications for Protection of Unpublished Works authors draw their ‘unpublished’ and ‘published’ works remain intact and available for subsequent authors’ appropriation. Where a ‘disclosed’ or ‘published’ work engages the ‘enough and as good proviso,’ the exclusive rights arising from protection of unpublished works which are disseminated publicly or privately might have to be confined to an author’s own expressions of ideas. In addition, exceptions permitting derivative uses of ‘disclosed’ and ‘undisclosed’ material might leave enough resources for users’ creative endeavours. Crucially, copyright exceptions might liberate the raw materials required for users’ creativity. On the contrary, unless users possess prior knowledge of the existence of an ‘undisclosed’ work, they might not validly rely on the ‘enough and as good’ proviso to rebut the initial entitlement arising from its creation. Knowledge of the existence of ‘undisclosed’ works is essential for an engagement of the ‘enough and as good’ proviso because a person is only prejudiced by rights in an ‘undisclosed’ work if she is aware of its subsistence, and thus that any rights the original author has need to be qualified to remove that prejudice. Of course, the whole complexion of that argument changes in the event that infringers gain access to an ‘undisclosed’ work. Unauthorised use of expressions in an ‘undisclosed’ work might be required in order to vindicate another person’s rights or for the purposes of freedom of expression. For example, the Duke of Argyll might have been disadvantaged by the deployment of the action of breach of confidence to prevent further dissemination of an ‘undisclosed’ diary in judicial proceedings. He could not use it to demonstrate his wife’s marital misconduct. The factual scenario in A v B (use of information in a private diary), is also suggestive.57 The second Lockean proviso prohibits wasteful accumulation of property.58 The meaning of ‘waste’ is uncertain.59 What constitutes use to one person might be wasteful to another. In our context, ‘waste’ encompasses two things. Firstly, it might refer to complete non-use of intellectual productions – creating a work by appropriating or originating expressions of ideas and failing to use the work might be wasteful. For instance, an author might write ground breaking scientific papers but leave them in a filing cabinet. Non-use of the ‘undisclosed’ papers by that particular author might be wasteful – invaluable information which might influence the trajectory of scientific discourse is not exploited. The first definition of ‘waste’ suggests that ‘publicly’ and ‘privately’ disclosed works are not wasted because they are disseminated in some way. Recipients of personal correspondence, for example, might derive intellectual edification from perusing the letters. Pope v Curll and Thompson v Stanhope provide good examples of that point. The educational Press, 1937) 280; CB MacPherson, The Political Theory of Possessive Individualism (Oxford, Oxford University Press, 1962) 211–14; R Nozick, Anarchy, State, and Utopia (Oxford, Oxford University Press, 1974) 175–77. 57 A v B [2000] EMLR 1007. 58 J Locke, Second Treatise of Government [1690] in P Laslett (ed), Two Treatises on Government, 2nd edn (Cambridge, Cambridge University Press, 1967) §§ 25–51. 59 For a discussion of waste see for example EJ McCaffery, ‘Must We Have a Right to Waste’, in SR  Munzer (ed), New Essays in the Legal and Political Theory of Property (Cambridge, Cambridge

Labour  133 value of letters was recognised in these cases. As far as ‘privately disclosed’ and ‘published’ works are concerned, it might be that the objection based on ‘waste’ can be accommodated through imposing limits on the property rights that are conferred on authors. These limits might include exceptions permitting unauthorised uses of authors’ expressions. In other circumstances, ‘data mining’ exceptions may facilitate productive uses of copyright material. Equally, authors of ‘undisclosed’ works might benefit from reading their works. Kate McCann’s experience in which she derived some comfort from diarising events surrounding the disappearance of her daughter on a family holiday is indicative.60 Other authors might engage in self-actualisation by executing artistic works for their personal enjoyment: Prince Albert v Strange. In any event, ‘waste’ can only ever operate as an individualised limitation on private property – that is the property vesting in the first place.61 If so, property rights vest in ‘undisclosed’ works unless and until there is some ‘divesting’ non-use or waste of authors’ expressions. In addition, it is difficult to determine how long an author would have to not use their work for it to be suggested that the work is being wasted. Secondly ‘waste’ might signify suboptimal uses of intellectual property rights. Several scenarios are explanatory. In the first place, a work might be wasted if it is allowed to perish. Complete physical destruction of a work provides the most glaring example of that peril. A less extreme situation involves works which are stored in defunct or increasingly obsolete formats. The threat of copyright infringement often means that these works cannot be preserved in accessible media. Arguably, creating recordings of performances and allowing them to disintegrate might constitute ‘waste’. Lastly, ‘waste’ might arise from failing to obtain licences from copyright owners. These arguments are not altogether controversial. Some calls for freedom to use orphan works are based on ‘waste.’62 An implication of the ‘waste’ proviso to protection of unpublished works is that it points towards ­generous orphan works provisions. In some circumstances unauthorised access to an ‘undisclosed’ work might occur. A fruitful example of that point is provided by Camoin v Carco. The French painter, Charles Camoin, slashed and discarded some of his canvasses.63 Carco found and restored the canvasses and attempted to sell them by public auction.64 University Press, 2001) 76; LJ Strahilevitz, ‘The Right to Destroy’ (2005) 114 Yale Law Journal 781; AJ  Cohen, ‘A Conceptual and (Preliminary) Normative Exploration of Waste’ (2010) 27 Social ­Philosophy and Policy 233. 60 The Leveson Inquiry, Culture, Ethics and Practice of the Press, www.levesoninquiry.org.uk/ wp-content/uploads/2011/11/Transcript-of-Afternoon-Hearing-23-November-2011.pdf. 61 J Locke, ‘Second Treatise of Government’ [1690] in P Laslett (ed) above at §§ 25–51. 62 Eg HM Treasury, Gowers Review of Intellectual Property, www.official-documents.gov.uk/­ document/other/ … /0118404830.pdf, 69. 63 Camoin v Carco DP 1928.2.89, Gaz Pal 1931.1.678. A useful English language summary of the case can be obtained from R Sarraute, ‘Current Theory on the Moral Right of Authors and Artists under French Law’ (1968) 16 American Journal of Comparative Law 465, 468. 64 Camoin had the restored canvasses seized and destroyed as they interfered with his moral right of divulgation. See ch 6 below for a fuller discussion of this case.

134  Justifications for Protection of Unpublished Works A question which arises from this scenario is whether under the Lockean ‘waste’ proviso, Charles Camoin’s natural property rights in the discarded paintings vanished. In my view, the answer to that question hinges on the nature of the labour that is expended when creating intellectual productions. A work might need to be revised and earlier drafts may be discarded. Unauthorised first publication of the discarded material might interfere with how an author revises and prepares her work for first publication.65 Even where revision of a discarded work is never contemplated, affording authors the right to enjoy the fruits of their labour implies that authors must be satisfied with a work before it is disclosed or used in some other way. Granted that the waste proviso raises such difficult questions, it might be thought preferable not to apply it to unpublished works (except perhaps in extreme cases). The limited relevance of the provisos in the context of ‘undisclosed’ works suggests that the Lockean labour theory confers stronger protection on unpublished rather than published works. Given that the nature of the labour expended on creating published and unpublished expressions is similar, and that distinguishing ‘published’ from ‘disclosed’ and ‘undisclosed’ works bristles with serious uncertainties, ‘labour’ suggests that copyright ought to protect published and unpublished works uniformly. Therefore, in general, the legal rules governing infringement, duration, and first ownership of published and unpublished works ought to be the same. However, the Lockean provisos have very limited relevance to protection of ‘undisclosed’ works and, in consequence of this, narrow exceptions including unauthorised use of authors’ expressions in furtherance of freedom of expression or the interests of justice etc ought to apply to infringement of unpublished works. Because the provisos have little bearing on protection of ‘undisclosed’ works, ‘labour’ suggests that ideas as such might require protection. However, the idea/ expression dichotomy presents a formidable barrier to that argument. Copyright protects expressions of ideas only; a rule whose application suggests that protection of ideas in ‘undisclosed’ works ought to be achieved by other means including the action for breach of confidence and the right to privacy. Where publication of an ‘undisclosed’ work is intended, copyright ought to preserve the right of authors to determine whether and when their ‘undisclosed’ works should be published. In conclusion, ‘labour’ offers a limited justification for protection of unpublished works; an outcome which invites an exploration of other normative bases for protecting unpublished works.

Desert Essentially, the desert theory of private property ownership is a natural rights claim which hinges on the idea that a reward in the form of property rights, as opposed 65 Where authors intend to publish their output, unauthorised first publication of discarded material might mean that an infringer enjoys the fruits of an author’s labour first.

Desert  135 to prizes, one-off payments, promotion, or social recognition, is regarded as appropriate insofar as it is thought to be proportional to the effort expended on creating valuable objects.66 In addition to this, property rights must be the only reward a fully informed person would consider for their effort.67 Lawrence Becker, one of the principal architects of that argument, extended the desert theory to protection of intellectual productions.68 In his view and in our context, authors deserve to be rewarded for creating valuable works. Of course, as will be seen below, there is no litmus test for deciphering the effort required to trigger the desert argument. Extensive effort might not yield any meaningful results, while a flash of inspiration can produce a canonical work.69 Becker’s first desert claim hinges on the ‘excellence’ of creativity. Intellectual productions might be ‘excellent’ if they ‘exceed … ordinary human ­achievements’;70 a quality which flows from a work’s beauty, originality, or complexity. The public ought to express its admiration of an ‘excellent’ work through its social institutions. Admittedly, other rewards might be available but ‘property rights are an appropriate … expression of public gratitude’.71 In any case, given that the desert argument is one of property, alternatives to property rights are generally irrelevant. For our purposes, theatre critics and users might, for example, assess the merit of dramatic works that are performed in public. Martin Luther King Jr’s ‘I  Have a Dream’ speech remains a cardinal example of that proposition.72 The public recognised its excellence – it remains a rallying cry for racial equality. The same is true for public exhibitions of artistic works – the ‘excellence’ of such creative output is capable of being assessed by the public or experts. Therefore, authors of ‘publicly disclosed’ works ought to be rewarded with property rights if they create ‘excellent’ expressions. 66 LC Becker, Property Rights: Philosophic Foundations (London, Routledge & Kegan Paul Ltd, 1977) 48–56; SR Munzer, A Theory of Property (Cambridge, Cambridge University Press, 1990) 266–84. The desert theory was derived from Locke’s labour argument. See eg LC Becker, Property Rights: Philosophic Foundations above at 48–56; JW Harris, Property and Justice (Oxford, Oxford University Press, 2002) 204. 67 LC Becker, Property Rights: Philosophic Foundations above. 68 LC Becker, ‘Deserving to Own Intellectual Property’ (1993) 68 Chicago-Kent Law Review 609. 69 There are other general criticisms of the desert justification for private property ownership. For instance, FA Hayek argued that a ‘work is valuable to the extent that people are willing to pay for it’. FA Hayek, Law, Legislation and Liberty: The Mirage of Social Justice (Chicago IL, University of Chicago Press, 1976) 70–73. Consequently, further rewards in the form of property protection are unnecessary. However, Hayek’s argument may be arbitrary because it assumes that everything is for sale. JW Harris, Property and Justice (Oxford, Oxford University Press, 2002) 207. Another criticism of the desert theory is that it does not have a direct correlation with any existing system of intellectual property protection. TG Palmer, ‘Are Patents and Copyrights Morally Justified – the Philosophy of Property Rights and Ideal Objects’ (1990) 13 Harvard Journal of Law and Public Policy 817. An additional criticism of the desert theory is that rewards in the form of private property ownership are unnecessary because ‘everyone ought to be engaged in productive labour’. For a summary of these arguments, see JW Harris, Property and Justice above at 206. Given the scope of this chapter, the general criticisms of the desert theory will not be pursued further. 70 ibid. 71 LC Becker, ‘Deserving to Own Intellectual Property’ above at 622. 72 Estate of Martin Luther King Jr v CBS Inc 194 F 3d 1211 (11th Cir 1999).

136  Justifications for Protection of Unpublished Works However, identifying the ‘excellence’ of ‘undisclosed’ works seems particularly difficult. Two different propositions vie for superiority. First, ‘excellence’ might be an intrinsic quality. To take an example, an accomplished painter might execute a powerful self-portrait but refrain from disclosing it. The self-portrait remains ‘excellent’ irrespective of its dissemination to others. If ‘excellence’ is an intrinsic quality, it follows that an ‘undisclosed’ work might be ‘excellent’ even if it is never disseminated to anyone. Second, the ‘excellence’ required by Becker’s theory is social. According to that analysis, something can only be judged to be ‘excellent’ if it has been disclosed to others. Although a work can be inherently ‘excellent,’ the axis on which Becker’s ‘excellence’ argument rotates is public recognition of the singularity of creativity.73 Therefore, ‘undisclosed’ works do not deserve to be protected based on their ‘excellence.’ A key implication of defending copyright in unpublished works based on their ‘excellence’ is that it might exclude ‘undisclosed’ works from protection. A similar problem arises in connection with ‘privately disclosed’ works. Members of the public do not possess the means by which they can evaluate the ‘excellence’ of works which are disseminated to a select audience. Consequently, at first glance, the ‘reward’ of copyright protection should not be available to such works. The problem with that argument, however, is that the status of unpublished works is quite fluid. A ‘privately disclosed’ work may be published or be disseminated publicly by its exhibition or performance. The letters in Thompson v Stanhope demonstrate that point. Eugenia Stanhope realised the educational value of the letters and decided to publish them.74 Discriminating ‘privately disclosed’ works that will be published from those that will not is bound to create uncertainties and contribute to the incidence of orphan works. Therefore, all unpublished works ought to receive the same protection. According to Becker, authors might create intellectual productions that benefit the public. The quid pro quo for such creativity is a ‘fitting and proportional’ reward which, in our circumstances, takes the form of copyright protection. That claim has considerable relevance to ‘publicly disclosed’ works – self-development and social discourse may be enriched by user access to exhibitions or dramatic performances, for example. Contemporary copyright law recognises the possibility that ‘publicly disclosed’ works might benefit the public even if they remain (in legal terms) unpublished. Identical exceptions to ‘published’ and ‘publicly disclosed’ works are available.75 ‘Privately disclosed’ works might also benefit sections of the public; an argument which can be supported by Pope v Curll.76 Lord Hardwicke emphasised the value of personal correspondence when restraining unauthorised first 73 ibid. 74 The letters in Thompson v Stanhope (1774) Amb 737, constituted a system of instruction for the Earl of Chesterfield’s son. 75 CDPA s 30(2). 76 Eg Pope v Curll (1741) 2 Atk 342.

Desert  137 ­ublication of Alexander Pope’s letters. Similarly, the letters in Thompson v p Stanhope constituted a system of instruction for the Earl of Chesterfield’s son.77 However, other authorities doubt the claim that unpublished letters might be instructive to their recipients: Lord and Lady Perceval v Phipps and Gee v Pritchard. Nevertheless, authors of ‘privately disclosed’ works deserve to be rewarded with property rights if they create works that benefit the public.78 The nature of that reward takes various forms including the right to prevent unauthorised first publication of ‘privately disclosed’ works. It also follows that some ‘privately disclosed’ works may be protected via the right of privacy or the action for breach of confidence. The latter regimes contribute to the creation of an environment in which personal and frank information/advice may be exchanged. Whether an ‘undisclosed’ work benefits the public is a nice question. At first sight, at the barest minimum, the notion of ‘public benefit’ requires some form of third-party access to a work. In the absence of such access, it is not possible to claim that authors of ‘undisclosed’ works deserve to be rewarded for creating ‘publicly beneficial’ expressions. Consequently, the ‘public benefit’ basis of the desert theory might not justify protection of ‘undisclosed’ works. However, in some circumstances, an ‘undisclosed’ work might benefit the public indirectly. Maintaining a private diary, for instance, might allow an author to manage her mental health, thereby potentially reducing public expenditure on her treatment.79 Kate McCann’s ‘undisclosed’ diary from which she drew significant comfort in the aftermath of her daughter’s disappearance in Portugal provides a convincing example of the public benefits that may be associated with ‘undisclosed’ works.80 The author ventilated her innermost thoughts in the diary. Basing desert on the ‘excellence’ or ‘public benefits’ of an intellectual production requires aesthetic judgment and suggests that the subject matter protected by the law ought to be limited to a very narrow category of unpublished material. That argument creates obvious practical problems. Aesthetic judgment is often subjective and might lead to charges of philistinism. Identifying a suitable arbiter of the ‘excellence’ or ‘public benefit’ of intellectual productions generates its own difficulties. Judges might not be trained to make such decisions. The public does not fare much better. Its idiosyncratic decisions are rooted in various personal prejudices – the public might not appreciate new forms of creativity and exclude avant-garde expressions from protection. Moreover, surveying public attitudes on the ‘excellence’ or ‘public benefit’ of unpublished works is likely to be costly and time-consuming. Lastly, expert evidence on a work’s merit can be adduced. 77 (1774) Amb 737. 78 LC Becker, ‘Deserving to Own Intellectual Property’ above at 623. 79 See R Langford and R West, Marginal Voices, Marginal Forms: Diaries in European Literature and History (Amsterdam, Rodopi, 1999); J Hunter, ‘Inscribing the Self in the Heart of the Family: Diaries and Girlhood in Late-Victorian America’ (1992) 44 American Quarterly 51 for the importance of personal diaries. 80 The Leveson Inquiry, Culture, Ethics and Practice of the Press, www.levesoninquiry.org.uk/ wp-content/uploads/2011/11/Transcript-of-Afternoon-Hearing-23-November-2011.pdf.

138  Justifications for Protection of Unpublished Works However, the wells of objectivity are usually poisoned by the adversarial nature of litigation and the parochialism of specialised training. The difficulties associated with determining the aesthetic merit that triggers the ‘excellence’ and ‘public benefits’ limbs of Becker’s desert theory suggest that all works ought to receive protection irrespective of their merit. That argument weakens the value of ‘desert’ as a basis for protecting unpublished works. Apart from this, given that the ‘public benefit’ argument is based on the social utility of intellectual productions, it does not encompass works which disadvantage the public. For example, applying desert theory, some works ought to be excluded from the ambit of copyright protection because they might corrupt public morals. ‘Undisclosed’ and ‘privately disclosed’ photos concerning child pornography fortify that argument. In some cases, certain works might not be protected because they are of an immoral tendency: Southey v Sherwood. However, morality possesses numerous difficulties – it might represent a barely concealed attempt to censor certain works. Moreover, it is context and generation-specific. Alternatively, it might be attractive to apply the ‘desert’ theory to categories of works that are regarded generally as socially valuable (for example ‘literary works’) rather than assess the singularity or public benefits of unpublished works on an individual basis but that approach might exclude other unpublished works from protection. The third aspect of Becker’s desert justification for protecting intellectual productions is based on the existence of a special connection between a work and its creator which generates a personal interest in the welfare of personal objects.81 Becker referred to the social norms which might create a ‘need’ for creators to be identified with their objects in an especially strong way as ‘relation identity dependence’. Creators’ ‘needs’ are met by granting them exclusive property rights over their valuable intangibles. In my view, there are no appreciable differences between ‘need’ and ‘personality’ – a separate justification for protecting intellectual property – because both theories focus on the close bond between creators and their works.82 To the extent that ‘need’ does not differ from ‘personality,’ it does not contribute much to the justifications for protecting unpublished works. Nevertheless, the relevance of ‘need’ to protection of unpublished works will be discussed in this section because it is an integral part of Becker’s ‘desert’ theory.83 In our case, the connection between an ‘undisclosed’ work and its author’s personal identity or psychological integrity might trigger a ‘need’ for protection. For example, authors might have a strong personal connection with their unpublished journals, paintings or diaries and may decide against disclosing such works to anyone. The diaries in A v B and Argyll v Argyll are symptomatic – they were not destined for disclosure. In such circumstances, copyright may present a useful avenue for curtailing unauthorised first publication. Depending on the nature of



81 LC

Becker, ‘Deserving to Own Intellectual Property’ above at 626–28. personality argument for protecting intellectual productions is discussed below. 83 It might also be suggested that the ‘need’ argument rewards the insecure. 82 The

Personality  139 the work, the action for breach of confidence and the right to privacy may provide supplementary mechanisms for protecting authors of ‘undisclosed works’ interests. Even if a work is ‘disclosed,’ authors can maintain a strong personal connection with their creations by demarcating the parameters within which their expressions can be disseminated. That connection may be maintained by granting authors the right to control first publication of their expressions. Moreover, moral rights may secure authors’ needs if a work is alienated. Apart from copyright, the right to privacy and the action for breach of confidence might protect the intimate bond between authors and their ‘privately disclosed’ expressions. In terms of the extent of protection that is justified by the desert theory, there ought to be some exceptions to infringement of ‘privately disclosed’ and ‘undisclosed’ works to enable users to access the material necessary for their own self-actualisation and creativity. However, the ‘need’ basis of the desert theory points towards restrictive exceptions to infringement of ‘undisclosed’ works because of the importance of protecting an author’s attachment to her expressions. With respect to duration, the desert arguments based on ‘excellence’ and the public benefits of intellectual productions might require a limited term of protection if users are to have free access to excellent or socially useful works. Similarly, the need basis of the desert theory favours a limited copyright term because it is not necessary to protect authors’ needs after they die. Moreover, there ought to be practicable orphan works schemes which can foster uses and conservation of excellent or socially useful works. In conclusion, desert might justify protection of some ‘disclosed’ works. However, the fine distinctions between ‘disclosed’ and ‘undisclosed’ works, the difficulties surrounding authors’ attitude towards future disclosure or first publication of a work and the aesthetic judgment required for determining ‘need,’ ‘public benefit’, and ‘excellence’ suggest that it might be more convenient for published and unpublished works to be protected uniformly. Although protecting published and unpublished works uniformly diminishes the persuasiveness of ‘desert’ as an explanatory framework for protecting unpublished works, that approach might avoid the fine distinctions that often accompany determinations of unbounded concepts including ‘excellence’, ‘public benefit’ or ‘need’. These issues invite further analyses of additional justifications for protecting intellectual productions. The remainder of this chapter considers the significance of personality, expressive autonomy and privacy theories of private property ownership to protection of unpublished works.

Personality Copyright protection is sometimes seen as a vehicle for securing authors’ ‘personality’ as enshrined in their works.84 The source of the ‘personality’ justification 84 See A Dietz, Das Droit Moral des Urhebes im Neun Franzoischen und Deutschen Urheberrech 15 (1968); S Strömholm, Le droit moral de l’auteur en droit allemand, français et scandinave avec un aperçu de l’évolution internationale: étude de droit comparé (Stockholm, Norstedts, 1973) 25.

140  Justifications for Protection of Unpublished Works for property rights is catholic: Immanuel Kant,85 GWF Hegel86 and Margaret Jane Radin’s property and ‘personhood’ thesis87 provide contrasting bases for that theory. Irrespective of its source, the irreducible minimum of ‘personality’ is that it locates its basis in German Idealism and its essence is that individuals achieve selfactualisation by embodying themselves in objects in the external environment.88 An object is imbued with its owner’s personality if it is ‘the constant apparatus through which he gives reality to his ideas and wishes.’89 ‘Personality’ has been used to explain protection of intellectual productions.90 For example, the moral right of disclosure, which secures the right of authors to determine whether their works should be published at all; and, if so, further, to determine the manner and terms of publication91 has typically been justified as an instrument for protecting authors’ personality.92 Equally, the moral right of attribution might preserve a link between authors and works embodying their personality.93 Besides, the moral right of integrity might prevent treatment of copyright works if the effect of such interferences is prejudicial to authors’ honour or reputation.94 In addition, some authors might withdraw from circulation expressions which no longer represent their personality.95 Lastly, the exclusive rights arising from copyright protection might secure authors’ personality as represented in their published or unpublished works. The law ought to protect ‘undisclosed’ works including personal diaries and journals if they are repositories of their authors’ personality. Of course, tangible property rights in the physical embodiment of authors’ expressions might suffice, but once unauthorised disclosure materialises, further risk of wider dissemination of a work exists. The diary in Argyll v Argyll is exemplary – it exhibited the ­Duchess of Argyll’s reflections on her personal life. Although the Duchess of

85 I Kant, ‘On the Wrongfulness of Unauthorised Publication of Books’ in I Kant, Practical Philosophy MJ Gregor, (ed and translator), (Cambridge, Cambridge University Press, 1996) 23. 86 GWF Hegel, Philosophy of Right TM Knox (ed), (Oxford, Oxford University Press, 1967) 235. 87 MJ Radin, Reinterpreting Property (Chicago IL, University of Chicago Press, 1993) ch 1. 88 Eg GWF Hegel, Philosophy of Right above at 235. 89 TH Green, ‘Lectures on the Principles of Political Obligation’ in P Harris and J Morrow (eds) Thomas Hill Green, Lectures on The Principles of Political Obligation and Other Writings (London, ­Longman, Green & Co, 1931) 165. 90 Eg J Hughes, ‘The Philosophy of Intellectual Property’ (1988–89) 77 Georgetown Law Journal 290, 330–50; JL Shroeder, ‘Unnatural Rights: Hegel and Intellectual Property’ (2005–06) 60 University of Miami Law Review 453. 91 KG, 27.11.2007 – 5 U 63/07 – Günter Grass-Briefe. 92 Eg A Dietz, ‘The Artist’s Right of Integrity Under Copyright Law’ (1994) 25 International Review of Intellectual Property and Competition Law 177; R Sarraute, ‘Current Theory on the Moral Rights of Authors and Artists Under French Law’ (1968) 16 American Journal of Comparative Law 465; F Pollaud-Dulian, ‘Moral Rights in France Through Recent Case Law’ (1990) 145 Revue Internationale du Droit d’Auteur 126. 93 ibid. 94 A Dietz, ‘The Artist’s Right of Integrity Under Copyright Law’ (1994) 25 International Review of Intellectual Property and Competition Law 177. 95 R Sarraute, ‘Current Theory on the Moral Rights of Authors and Artists Under French Law’ (1968) 16 American Journal of Comparative Law 465.

Personality  141 Argyll had tangible property rights in the diary, those rights were unhelpful after the existence and contents of the diaries were established by her husband. Consequently, copyright, breach of confidence and privacy provide superior avenues for securing authors’ personality. In civilian legal systems, the moral right of disclosure also protects ‘undisclosed’ works – authors decide whether their works should be published at all. In other instances, authors may distribute expressions reflecting their personality selectively; a choice which justifies rights in ‘privately disclosed’ works. Without such rights, authors could be forced to reveal aspects of their personality publicly. Prince Albert v Strange, in which Queen Victoria and the Prince Consort created etchings for their private amusement and disseminated some of the etchings to their close friends,96 illustrates that point. William Strange’s unauthorised publication of descriptions of the etchings in a catalogue could have forced the Queen and the Prince Consort to reveal their private interests to the public. The same can be said for the training manuals in Hubbard v Vosper, which were meant for those who sought a deeper understanding of Scientology, or the private letters in S­ alinger v Random House.97 In the civil law world, Günter-Grass-Briefe (publication of private correspondence)98 and René Char (unauthorised disclosure of intimate exchanges between a French artist and one of his mistresses)99 support that argument. A common feature of the works in these cases is that they were intended for a specific private audience. The personality argument is also relevant to protection of works destined for first publication. But why, it may be asked, should authors be particularly concerned with the process of first publication? The answer to that question is beguilingly simple. Authors ought to determine completeness of their works and the medium of first publication if their personality is to be presented to others faithfully. Absent these rules, incomplete and distorted works that are injurious to authors’ creative reputation could be published in unsuitable media. There are bound to be tensions, however, between exercises of authors’ right to determine completeness of their works and publishers’ economic interests. A publisher’s failure to deliver an advertised work can lead to charges of unreliability.100 Inevitably, therefore, a balance between ‘personality’ and ‘pecuniary’ interests has to be struck. In France, for example, authors indemnify persons who suffer financial losses arising from an exercise of some of the prerogatives that are associated with the disclosure right.101 Other authors might favour limited ‘public disclosure’ of their personality through a chosen medium. Where a work is ‘disclosed’ publicly by its performance or exhibition, it might be a good candidate for copyright protection. Breach of 96 Prince Albert v Strange (1849) 1 H & Tw 1; (1849) 2 De G & Sm 293. 97 Salinger v Random House, Inc, 811 F.2d 90 (2d Cir. 1987). 98 KG, 27.11.2007 – 5 U 63/07– Günter Grass-Briefe. 99 René Char, Civ 1st June 9, 2011, No. 10-13570, No. 2011-011942; I Kant, The Metaphysics of Morals [1797], Mary Gregor (trans) (Cambridge, Cambridge University Press, 1991). 100 See www.bbc.co.uk/news/uk-scotland-scotland-business-19841184. 101 Whistler c. Eden above.

142  Justifications for Protection of Unpublished Works confidence and the right of privacy do not provide a suitable vehicle for ­protecting ‘publicly disclosed’ works – the information in such material is in the public domain. Given the fine distinctions between ‘published’, ‘disclosed’ and ‘undisclosed’ works, copyright might be the most appropriate basis for protecting all unpublished works: it would be too cumbersome to determine whether a work was meant for disclosure/publication or not. Despite its explanatory power, ‘personality’ teems with problems. Clearly, the assumption that authors’ personality is enshrined in their creative output may be at variance with the realities of certain genres, where individual contributions become consumed within a greater totality. A film, for example, may be made through the collaboration of various people including actors and directors, and it might not embody the ‘personality’ of any specific individual. A corollary of that claim is that protection of collaborative works might need to be justified on different grounds – an argument which diminishes the value of ‘personality’ as the linchpin of rights in published or unpublished works. Some works including ‘privately disclosed’ letters or diaries recording the mundane trivialities of daily life stimulate problems of a different order – they might not possess a scintilla of their authors’ personality. Civilian legal systems use the concept of ‘originality’ to demarcate the contours of copyright or moral rights protection. A work can only be protected if it is ‘original’ in the sense that it is its author’s own ‘intellectual creation’ – a test that has now disturbed ­Britain’s approach to originality.102 However, determining creativity remains a wholly subjective task. For that reason, to eliminate the risk of aesthetic discrimination, there ought to be uniform protection of all published and unpublished works irrespective of whether they are capable of being imbued with their authors’ personality; an argument which obviously devalues the force of ‘personality’ as a justification for protecting intellectual productions. In any event, positioned within a larger picture, what appears banal at a particular juncture might assume great significance in due course. For example, ‘undisclosed’ diary entries recording events that appeared pedestrian at the time may take on unexpected historical significance.103 One of the deepest problems with ‘personality’ concerns ‘alienation’ of the physical encapsulation of intellectual productions. Does ‘personality’ continue to subsist in a work that has been sold or gifted to another, for example? A similar question is equally relevant to abandonment of a work. The short answer to both questions is that unlike tangible property, the personality that resides in an author’s creative output is not extinguished by complete abandonment or other alienation of a work – an observation which can be supported by Camoin c Carco104 and 102 E Rosati, Originality in EU Copyright (Cheltenham, Edward Elgar, 2013). 103 See for example Samuel Pepys diaries which recorded his routine experiences in London but have now become a matter of some significance. 104 Camoin c Carco DP 1928.2.89, Gaz. Pal. 1931.1.678. For a general discussion of abandonment see LJ Strahilevitz, ‘The Right to Abandon’ (2010) 158 University of Pennsylvania Law Review 355.

Personality  143 Roger Bouvier et autres c Jean-Pierre Cassigneul (sale of abandoned paintings).105 Copyright provides a mechanism by which respect for authors’ personality interests even after the physical embodiment of the work has been transferred to another can be secured. Otherwise, in the case of abandonment, users might misrepresent the existence of an author’s personality in the discarded work. Personality can also be disadvantageous if it fosters an unhealthy relationship between individuals and their works (object-fetishism).106 For example, an author might draft and redraft an ‘undisclosed’ work but never be satisfied that it is ready for first publication. Such object-fetishism might prevent authors from developing other aspects of their personality. However, there is no overarching test for determining object-fetishism. For instance, redrafting an ‘undisclosed’ work continuously might represent reasonable re-working and improvement. Some artists leave their works for years before going back to them: Rouault c Vollard.107 Other authors abandon works which do not meet their exacting standards: Camoin c Carco.108 In the absence of a decisive test for establishing object-fetishism, the law ought to protect all works uniformly. The legitimacy of ‘personality’ as a justification for rights in unpublished works is also constrained by the exigencies of balancing conflicting interests. Some German examples of that proposition immediately spring to mind. Arguably, unauthorised dissemination of the late Chancellor Helmut Kohl’s audio recordings might well have resulted in a new work shedding vital light on important historical events including the reunification of Germany, but it was subordinated to the author’s moral right of disclosure.109 A similar conclusion arises from Günter Grass-Briefe (the recipient of personal correspondence recording the intricacies of Nazi Germany could not transform and disseminate the letters widely). However, where a work is ‘undisclosed,’ the personality needs of users are obviously limited by the fact that a person cannot be prejudiced by non-use of a work that they do not appreciate exists. In the event of unauthorised or accidental disclosure, the personality theory suggests that limited exceptions ought to apply to infringement of ‘undisclosed’ works including vindicating personal reputation or promoting freedom of expression. In any event, the needs of users ought to yield to the importance of affording authors the opportunity to revise and publish works encapsulating their personality first. Some authors may be indifferent to the consequences of unauthorised dissemination of their published or unpublished works. For example, an author might write the code for a computer program but allow others to modify it without legal restrictions; a feature which is consistent with the Creative Commons ­Movement – it uses the medium of free licences in order to release copyright works

105 Roger

Bouvier et autres c Jean-Pierre Cassigneul (1996) Revue Internationale du Droit d’Auteur 169. Hegel, Philosophy of Right, TM Knox (ed) above at 235. 107 Rouault c Consorts Vollard [1947] S Jur II.3. 108 Camoin c Carco DP 1928.2.89, Gaz Pal 1931.1.678. 109 OLG Köln Urteil vom 5. Mai 2015 Az. 15 U 193/14. 106 GWF

144  Justifications for Protection of Unpublished Works to the public.110 In my view, complete waiver of rights might indicate indifference to interferences with an author’s personality. Conversely, a reservation of authors’ rights suggests that there is no abandonment of authors’ personality as imbued in their works. These fine distinctions suggest that ‘personality’ does not offer a comprehensive basis for explaining copyright in published or unpublished works. The term of protection justified by the personality theory is also controversial. In general, ‘personality’ rights reside in individuals until they die and no longer. For example, although a person’s reputation might outlive them, defamation laws will not protect that reputation. Other rights of personality including freedom of association, freedom of expression, freedom of assembly, and religious freedom also terminate at their holder’s death. It might be argued that in common with other indicia of ‘personality,’ protection of published or unpublished works ought to terminate at an author’s death. However, there might, nevertheless, be a reason to protect the embodiment of authors’ personality where that personality is externalised, and thus survives the death of the author. Consequently, protection of published or unpublished works might need to be on a post-mortem basis. It is also the case that ‘personality’ sits incongruously with unpublished works ‘created’ by juristic persons. Of course, because it is an artificial person, a juristic person cannot ‘create’ a work – it relies on human agency to achieve its aims. However, under UK law, juristic persons could be the statutorily deemed creators of a film or sound recording.111 True, in some cases, juristic persons might attract some of the personality interests that are possessed by natural persons (for example, a company may be defamed if a person publishes a false story concerning its business affairs).112 Nevertheless, the personality interests of legal persons are tenuous at best. Consequently, ‘personality’ as a justification for copyright ­protection works best in the context of material created by natural persons. In terms of the most optimal protection for unpublished works, ‘personality’ suggests that authors ought to have a right to decide whether, when and how their works come to be disclosed. In addition, authors ought to have the right to determine the extent to which the personality that is embodied in their ‘disclosed’ expressions is disseminated to others. Moreover, the personality needs of users are limited where works are ‘undisclosed’: hence, ‘personality’ might justify stronger rights in unpublished works than in published ones. Protection of authors’ right to determine whether their works should be disclosed at all might be achieved via the right of privacy or the action for breach of confidence. However, there are difficulties relating to the possibility that some works do not embody their authors’ personality at all, the personality rights of collaborative authors, the duration of personality rights, and the personality rights of juristic persons. These difficulties necessitate reliance on copyright as the most appropriate mechanism for ­protecting unpublished works.

110 L

Lessig, Free Culture (New York, Penguin Press, 2004) 8. s 9(2)(aa)–(ab). 112 Jameel and others v Wall Street Journal Europe [2007] 1 AC 538 (HL). 111 CDPA

Expressive Autonomy  145 ‘Personality’ has not been the overarching justification for protecting intellectual productions in common law jurisdictions. For example, for the most part, British copyright law has largely been premised on realising the pecuniary advantages of copyright ownership.113 Yet, as will be observed below, protection of unpublished works cannot be viewed exclusively from economic perspectives. Expressive autonomy interests, for instance, attract significant prominence in so far as unauthorised dissemination of unpublished works is concerned. It is necessary, therefore, for us to consider other theories, which may provide alternative bases for protecting ‘disclosed’ and ‘undisclosed’ works.

Expressive Autonomy Copyright in unpublished works might also promote authors’ ‘expressive autonomy.’ Expressive autonomy refers to the right of creators to control whether, when, and how they speak to others and it enables persons to refrain from articulating opinions with which they disagree or to exercise control over the meaning of their speech.114 Two allied propositions flow from ‘expressive autonomy.’115 Firstly, authors should not be compelled to speak – a concern which was evident in ­Deckymn v Vandersteen. The deceased artist in that case was forced to speak when his artistic work was adapted into a parody supporting a right-wing message.116 Similar conclusions can be drawn from Campbell v Acuff-Rose Music117 and Suntrust Bank v Houghton Mifflin Co (critical adaptations of ‘Pretty Woman’ and ‘Gone with the Wind’).118 Secondly, authors must be protected from compelled subsidisation of others’ speech.119 A principal example of that danger can be derived from Hubbard v Vosper – the claimant’s unpublished Scientology training manuals formed the backbone of a book casting fierce doubts on the merits of that religion.120 For our purposes, whether or not the drafters of various statutes had protection of authors’ ‘expressive autonomy’ in mind, numerous aspects of current British

113 WM Landes and RA Posner, ‘An Economic Analysis of Copyright Law’ (1989) 18 Journal of Legal Studies 325. 114 West Virginia State Board of Education v Barnette 319 US 624, 642 (1943); Miami Herald v Tornillo 418 US 241 (1974). 115 LK Treiger-Bar-Am and M Spence, ‘Private Control/Public Speech’ in KS Ziegler (ed) Human Rights and Privacy Law: Privacy as Autonomy (Oxford, Hart Publishing, 2007) 177. 116 Case C-201/13 Johan Deckmyn and Another v Helena Vandersteen and Others. See also Estate of Hemingway v Random House 23 NY 2d 341, 348, 244 NE 2d 250, 255 (1968); Harper & Row Publishers Inc v Nation Enterprises 105 S Ct 2218 (1985) at 2230. 117 510 US 569 (1994). 118 268 F 3d 1257 (11th Cir 2001). 119 Pacific Gas & Electric Co v Public Utilities Commission of California et al 475 US 1 (1986); R Post, ‘Compelled Subsidization of Speech: Johanns v Livestock Marketing Association’ (2005) Supreme Court Review 195. 120 Hubbard v Vosper [1972] 2 QB 84 (CA).

146  Justifications for Protection of Unpublished Works copyright law are entirely consistent with the key features of ‘expressive autonomy’. First, and most obviously, section 84 of the CDPA allows any person to object to false attribution of authorship of a work. If a person were not able to object to such attribution, anyone might compel creators or others to speak.121 An illustration of that argument is provided by Clark v Associated Newspapers – a successful diarist and politician prevented The Evening Standard from attributing authorship of spoof diaries to him.122 Arguably, attributing the diaries to Alan Clark forced him to articulate political opinions with which he disagreed. Secondly, the moral right of integrity protects authors from speaking through their altered expressions123 by prohibiting derogatory treatment of copyright works if the effect of such interference prejudices authors’ honour or reputation.124 Apart from this, vesting reproduction and other exclusive rights in authors minimises the ­likelihood of compelled subsidisation of users’ derivative expressions. A technical challenge, which confronts ‘expressive autonomy’, is whether it justifies protection of ‘undisclosed’ works at all. Generally, ‘expression’ refers to a person’s interaction with others.125 Consequently, to the extent that intellectual productions remain undisclosed, they significantly depart from the literal meaning of ‘expression.’ However, ‘expression’ certainly includes the written word and, in some instances, it may not involve communicating with anyone. For example, authors may keep diaries or journals for their own self-edification without disseminating their expressions at all. In addition, ‘expressive autonomy’ primarily focuses on independent decision-making; a goal that justifies preventing ­unauthorised first publication of ‘undisclosed’ works. The law ought to protect ‘undisclosed’ works if, and when, unauthorised first publication of such material compels authors to comment on particular events. For instance, disclosure of the diary in Argyll v Argyll might have forced the Duchess of Argyll to reveal her extravagant marital misconduct. Apart from this, the overall success of an infringing work might rest on disseminating ‘undisclosed’ expressions. Taking extracts from undisclosed journals, for example, might enhance circulation of an infringing work.126 Therefore, unauthorised first publication of ‘undisclosed’ works should also be prevented if such dissemination subsidises a user’s speech. The claim that protecting ‘undisclosed’ works might secure authors’ expressive autonomy justifies restricting exceptions to rights in unpublished works. The facts of Günter Grass-Briefe suggest that unauthorised first publication of ‘privately disclosed’ works might compel authors to speak to a different audience.127 The late Günter Grass, a pre-eminent German author, intended to share his 121 CDPA s 84. Admittedly, because the right against misattribution of authorship can be deployed by authors and non-authors alike, it might not constitute a creator’s right in some circumstances. 122 Clark v Associated Newspapers Ltd [1998] 1 All ER 959. 123 M Spence, Intellectual Property (Oxford, Oxford University Press, 2007) 133–34. 124 CDPA s 80. 125 JW Harris, Property and Justice (Oxford, Oxford University Press, 2002) 222, 296. 126 www.bbc.co.uk/news/uk-15860071. 127 KG, 27.11.2007 – 5 U 63/07– Günter Grass-Briefe.

Expressive Autonomy  147 involvement in the Waffen-SS with a specific person. Likewise, René Char’s romantic sentiments were addressed to his muse and mistress.128 In Britain, an identical analysis can be extracted from Albert v Strange – Queen Victoria and the Prince Consort made various etchings for their friends’ amusement. The defendant’s unauthorised first publication of a catalogue describing the etchings would (had it been permitted) have forced the plaintiffs to speak to the public. Similarly, Prince Charles was forced to articulate controversial diplomatic positions publicly via unauthorised first publication of his ‘privately disclosed’ journals.129 Unauthorised first publication of ‘privately disclosed’ works may also subsidise users’ speech. That argument assumes great significance if material destined for first publication contains unknown expressions dissemination of which draws prominent attention to the infringing copy. For instance, Helmut Kohl’s audio recordings formed the core of the defendant’s work.130 Common law examples of that proposition can be derived from Times Newspapers v MGN (publication of Lady Thatcher’s candid observations on members of her cabinets might well have increased circulation of the defendant’s newspaper), Harper & Row v Nation Enterprises (key excerpts from President Gerald Ford’s unpublished memoirs detailing, inter alia, his pardoning of Richard Nixon were the heart of the defendant’s ‘scoop’),131 and Ashdown v Telegraph Group Ltd (a story criticising a former prime minister’s conduct emerged from the claimant’s unpublished aide-memoire).132 Protecting ‘privately disclosed’ works minimises the risk that authors intending to publish their works may be compelled to speak prematurely. Timing of one’s speech is integral to expressive autonomy. Sometimes, securing authors’ interests to the fullest extent might interfere with development of users’ expressive autonomy.133 For example, prohibiting unauthorised adaptation of copyright works could well prevent transformative users from expressing themselves. The expressive autonomy of the original author and the author of the derivative work are thus in conflict. However, users’ interests are given preference by curbing protection of creators’ expressive autonomy in two circumstances. First, a use that adapts a creator’s original ideas into new expressions of ideas might be permissible.134 The facts of Baigent and Anor v Random House, in which the Court of Appeal held that a novelist’s use of the claimants’ ‘historical’ ideas did not infringe the claimants’ copyright are suggestive.135 128 René Char, Civ 1st June 9, 2011, No 10-13570, No 2011-011942. 129 HRH The Prince of Wales v Associated Newspapers (No 3) [2007] 3 WLR 222 (CA). 130 OLG Köln Urteil vom 5. Mai 2015 Az. 15 U 193/14. 131 Harper & Row v Nation Enterprises, 471 US 539 (1985). 132 Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA). 133 See M Spence, ‘The Mark as Expression/The Mark as Property’ (2005) 58 Current Legal Problems 491; 506–11; M. Spence, Intellectual Property (Oxford, Oxford University Press, 2007) 57–58; LK Treiger-Bar-Am and M Spence, ‘Private Control/Public Speech’ in KS Ziegler (ed) Human Rights and Privacy Law: Privacy As Autonomy (Oxford, Hart Publishing, 2007) 177, 183–87. 134 In our context, ‘transformative use’ generally means derivative uses of expressions. See PN Leval, ‘Toward a Fair Use Standard’ (1990) 103 Harvard Law Review 1105. 135 Baigent and Anor v The Random House Group Ltd [2007] FSR 24 (CA).

148  Justifications for Protection of Unpublished Works Second, creators’ expressive autonomy might be limited if a work becomes a shorthand for a range of meanings.136 Dr Martin Luther King’s ‘publicly disclosed’ ‘I Have a Dream’ speech is demonstrative137 – it remains an important cipher for the ideal of racial equality; a matter which remains important in an age of intense populism in the political arena. The expressive autonomy of users ought to have been preferred in Estate of Martin Luther King because it was efficient for the public to appropriate expressions symbolising the value of multiracial harmony. Similarly, Lord Denning MR might have authorised uses of the ‘privately disclosed’ training manuals in Hubbard v Vosper because they were symptomatic of what he considered to be the peculiarities of the Church of Scientology.138 For that reason, generous exceptions to infringement of works that are circulated widely ought to be available in order to allow users to communicate effectively. Of course, if a work is disclosed to a limited audience, its author’s expressive autonomy may have to prevail.139 Similarly, because users are usually unaware of the existence of ‘undisclosed’ works, their expressive autonomy can only be implicated if unauthorised access or publication of such material occurs. ‘Expressive autonomy’ has further shortcomings. Conflicts between protecting authors’ expressive autonomy and respecting users’ property rights may arise. Consider the following example. A purchases copyright in an unpublished manuscript by B. Irrespective of B’s wishes, A exercises its exclusive rights and authorises first publication of the work. While that course of action compels B to speak, protecting B’s expressive autonomy may be inconsistent with A’s property rights in the manuscript. Do creators relinquish their expressive autonomy if they alienate their unpublished works? In this author’s opinion, if expressive autonomy protects independent decision-making, alienating an unpublished work, for example, is wholly consistent with that theory – authors decide the fate of their expressions. However, unlike other chattels, unpublished works possess characteristics necessitating residual rights which may safeguard authors’ interests; a position which can be observed in Pope v Curll and subsequent cases. Respect for deceased authors’ expressive autonomy generates additional issues. For example, granted that the decision to publish may rest with authors’ literary executors or heirs, two problems may arise. Firstly, heirs might disregard authors’ intentions and attempt to suppress first publication of a work: a proposition which can be supported by Malaussena c Société Les éditions Gallimard.140 Conversely, an author’s wishes may be ignored, and the work is published. After all, in general, heirs acquire dead authors’ reproduction and distribution rights: Société La

136 M Spence, Intellectual Property (Oxford, Oxford University Press, 2007) 58. The second limitation of creators’ expressive autonomy might explain the treatment of ‘generic’ marks in British trade mark law. 137 Estate of Martin Luther King, Jr, Inc v CBS, Inc (194 F 3d 1211 (11th Cir 1999). 138 See also New Era Publ’ns Int’l v Henry Holt & Co, 873 F.2d 576 (2d Cir 1989). 139 HRH The Prince of Wales v Associated Newspapers (No 3) [2007] 3 WLR 222 (CA). 140 Malaussena c Sté Les éditions Gallimard JurisData n 2000-006365.

Expressive Autonomy  149 Règle du Jeu et Lévy c Salzedo141 and René Char.142 In France, both scenarios are solved by the abus de droit, which prevents heirs from withholding authorised first publication. The moral right of disclosure is also relevant if attempts at unauthorised posthumous first publication are made.143 However, there are no similar ­restrictions in Common Law countries. Another issue relates to reproducing published or unpublished works without transforming them. For example, a researcher might photocopy but not read or transform an unpublished manuscript at all. It might be argued that using a work without transforming it does not compel its author to speak. Equally, there is no compelled subsidisation of another’s speech in such circumstances. However, ‘expressive autonomy’ focuses on creators’ right to control dissemination of their expressions in order to prevent compelled speech and compelled subsidisation of speech. Consequently, even if unauthorised use of published or unpublished works is not expressive, authors ought to be able control uses which might compromise their expressive autonomy. In other circumstances, the expressive autonomy of authors and those who transform unpublished works are at variance. That argument is especially relevant to parodies but it has equal relevance to other ‘privately disclosed’ and ‘undisclosed’ works. In our context, transformative uses of unpublished material facilitate various public interests including freedom of expression.144 For that reason, exceptions permitting productive uses of disclosed and undisclosed works ought to be available. Times Newspapers Ltd & Anor v MGN is instructive.145 Once Lady Thatcher’s ‘privately disclosed’ expressions had been disseminated, users could rely on her work to criticise her successor’s performance. ‘Expressive autonomy’ might not explain first ownership of unpublished works created in pursuance of contracts of employment. At first glance, given that ‘autonomy’ generally attaches to the work’s creator, employees ought to control first publication of their creative output. However, the position that first ownership of an unpublished work should vest in an employer is equally plausible. Employers ought to control first publication of a work created in the course of employment because they set the parameters for employees’ creativity. In addition, assuming that employment represents a legitimate bargain, there is no ‘subsidisation’ of speech in such circumstances. If the employer publishes a work by an employee, the work is likely to be perceived as the speech of the employer. Moreover, it is not a problem for the expressive autonomy theory that it implies that ownership of works created in the course of employment should belong to employees – the

141 (1993) 155 Revue Internationale du Droit d’Auteur 191. 142 René Char, Civ 1st June 9, 2011, No 10-13570, No. 2011-011942. 143 Malaussena c Sté Les éditions Gallimard JurisData n 2000-006365; D 2001, 918; Minet c Veuve Silliere-Urbain TGI Reims, 2 January 1969, D 1969, 569, 575. 144 ‘Transformative use’ generally means derivative uses of expressions. See PN Leval, ‘Toward a Fair Use Standard’ (1990) 103 Harvard Law Review 1105. 145 Times Newspapers Limited and Anor v MGN Limited [1993] EMLR 443 (CA).

150  Justifications for Protection of Unpublished Works expressive autonomy theory merely suggests that current law is wrong or must be justified by a different theory. First ownership of unpublished works by juristic persons is difficult to justify by reference to ‘expressive autonomy’. In general, ‘autonomy’ attaches to ­natural persons.146 However, one way around the difficulty with applying ‘expressive autonomy’ to corporations, for example, is to recognise that such entities represent the aggregate interests of their members;147 an argument which is inconsistent with the nature of large companies with widely dispersed individual and institutional shareholders. In any event, identifying the collective autonomy of institutional and individual shareholders runs counter to established precedents that firmly recognise the separate legal personality of companies.148 A neater argument is that expressive autonomy focuses on preserving independent decision-making, whether by companies or individuals. Companies, just like individuals, need to control reproduction and dissemination of their unpublished works in order to protect those decision-making processes.149 An important question in the context of unpublished works is whether ‘expressive autonomy’ also justifies protection of a work which has been abandoned by its creator. For example, an artist can sell her disclosed work to a gallery or museum. It might be argued that creators can relinquish their expressive autonomy by selling or giving away their unpublished works. However, if expressive autonomy involves independent decision-making, abandoning an unpublished work is wholly consistent with that theory – creators decide the fate of their expressions. In any event, ‘expressive autonomy’ has been used to justify moral rights protection thereby indicating the value of that theory even when authors cease to control the economic rights attaching to a work.150 Apart from the limits identified by the authors of the expressive autonomy theory, unauthorised use of unpublished works ought to be permitted in order to enable users to speak freely. Times Newspapers Ltd & Anor v MGN Ltd provides an example in which an author’s expressive autonomy was rightly displaced by other public interests.151 Once Lady Thatcher’s undisclosed expressions had been disseminated; users could rely on her work to criticise the performance of John

146 E Barendt, Freedom of Speech, 2nd edn (Oxford, Oxford University Press, 2005) 94. 147 See WN Hohfeld, ‘Nature of Individual Liability for Corporation Debts’ (1909) 9 Columbia Law Review 285 and JM Finnis, ‘The Priority of Persons’ in J Horder (ed), Oxford Essays in Jurisprudence (Oxford, Oxford University Press, 2000) 9–11. 148 Salomon v Salomon [1897] AC 22 (HL); Macaura v Northern Assurance Co [1925] AC 619 (HL); Lee v Lee’s Air Farming Ltd [1960] 3 All ER 420 (PC). 149 In any event, the ‘expressive autonomy’ theory has been applied to trade mark protection even though trade marks usually indicate that particular corporate entities are the trade source of goods or services to which the mark is applied. See M Spence, ‘The Mark as Expression/The Mark as Property’ above. A company’s right not to speak was also recognised in Canada (RJR-McDonald v AG of Canada [1995] 3 SCR 199) and in the USA (Pacific Gas & Electricity Co v Public Utilities Commission of ­California 475 US 1 (1986)). 150 M Spence, Intellectual Property (Oxford, Oxford University Press, 2007) 133–34. 151 Times Newspapers Limited and Anor v MGN Limited [1993] EMLR 443 (CA).

Privacy  151 Major’s government. However, in the case of ‘undisclosed’ works, there is no need to limit authors’ expressive autonomy in so far as users are unaware of the existence of such expressions. For example, an author might maintain a secret diary which is not disclosed to anyone: A v B. If users are unaware of the existence of authors’ ‘undisclosed’ expressions, it is not clear how they could claim any need to use such expressions in order to support their own expressive autonomy. Users’ expressive autonomy can only be relevant once a work is disclosed. In addition, protection of authors’ expressive autonomy might need to yield to the importance of facilitating disclosure of unpublished documents in legal proceedings. Lion Laboratories v Evans152 demonstrates that proposition. In that case, the Court of Appeal held that unauthorised first publication of expressions disclosing faulty breathalyser readings was in the public interest. The expressive autonomy of users was preferred in Lion Laboratories v Evans because the plaintiff ’s expressions were central to avoiding the serious miscarriage of justice that was associated with the faulty intoximeters. A similar conclusion can be made in connection with BBC Petitioners: the unpublished photographs in that case were essential for a comprehensive report on the unfortunate demise of a child at the hands of his own mother. In conclusion, the range of materials and interests encompassed by ‘disclosed’ and ‘undisclosed’ works suggests that the ‘expressive autonomy’ of authors of unpublished works might be protected by various means. For example, the right of privacy and the action for breach of confidence might be of considerable assistance to authors who are minded to prevent unauthorised first publication of their ‘undisclosed’ and ‘privately’ disclosed works. In addition, privacy and confidence might be deployed with the goal of preventing unauthorised disclosure of facts as such.153 However, given the difficulties that were identified above, and the fact that in some instances, the distinctions between published and unpublished works are blurred, it might be more convenient for copyright to protect published and unpublished works uniformly.

Privacy Unpublished personal letters, diaries, and journals might possess significant details about their authors’ private life. Writing extra-judicially, Judge JO Newman claimed that copyright in unpublished works is justified because it protects authors’ privacy.154 Newman’s privacy theory has notable historical antecedents. A century 152 Lion Laboratories Ltd v Evans [1984] 3 WLR 539 (CA). 153 However, it might be argued that facts, as such, might not implicate the expressive autonomy theory. 154 JO Newman, ‘Copyright Law and the Protection of Privacy’ (1987) 12 Columbia Journal of Law & the Arts 459. For a similar argument see also T De Turris, ‘Copyright Protection of Privacy Interests in Unpublished Works’ (1994) Annual Survey of American Law 277.

152  Justifications for Protection of Unpublished Works or so earlier, Samuel Warren and Louis Brandeis famously argued that common law protection of unpublished works secured authors’ privacy.155 However, privacy itself is an elusive concept,156 the protection of which may be thought to require justification and it gives rise to numerous claims including safeguarding: individual liberty,157 self-determination,158 intimate information,159 or the development of personal relationships.160 Matters are worsened by considerable divergences in Western notions of privacy.161 Although its meaning is unsettled, I will focus on privacy as a right to be let alone,162 a condition of limited accessibility163 or a ‘claim of individuals, groups, or institutions to determine for themselves when, how, and to what extent information about them is revealed to others’164 in order to justify copyright in unpublished works. For our purposes, unauthorised first publication of privately disclosed works may reveal sensitive or embarrassing details about their authors’ life. That concern received some attention in Perceval v Phipps (Lady Perceval’s unwise reflections on Caroline, Princess of Wales’ personal finances),165 Earl Lytton v Devey166 (revealing a Victorian author’s deplorable conduct towards his estranged wife, Rosina), Hubbard v Vosper (the dangerous ‘quackeries’ of Scientology),167 and HRH Prince of Wales v Associated Newspapers (Prince Charles’ caustic observations on Chinese officials.168 Viewed in that context, copyright provides a key instrument for stemming unauthorised first publication of private information. Because copyright is available posthumously, opportunities for protecting the privacy of authors’ heirs for a limited time also exist. Protecting ‘privately disclosed’ works is also capable of fostering authors’ formational privacy – a concept which emphasises the maintenance of a zone in which personal relationships can be forged and maintained.169 The availability of legal means for redressing unauthorised first publication might encourage candid exchanges between authors and their correspondents; a feature which can be detected in Pope v Curll in which Lord Chancellor Hardwicke alluded to the

155 SD Warren and LD Brandeis, ‘The Right to Privacy’ (1890–1891) 4 Harvard Law Review 193. 156 R Wacks, The Protection of Privacy (London, Sweet and Maxwell Ltd, 1980) 10. 157 L Henkin, ‘Privacy and Autonomy’ (1974) 74 Columbia Law Review 1410. 158 BGH 19 December 1995 BGHZ 131, Caroline von Monaco. 159 C Fried, ‘Privacy’ (1968) 77 Yale Law Journal 475. 160 JJ Thomson, ‘The Right to Privacy’ (1975) 4 Philosophy and Public Affairs 295. 161 JQ Whitman, ‘The Two Western Cultures of Privacy: Dignity Versus Liberty’ (2004) 113 Yale Law Journal 1151. 162 SD Warren and LD Brandeis, ‘The Right to Privacy’ (1890–1891) 4 Harvard Law Review 193. 163 R Gavison, ‘Privacy and the Limits of Law’ (1980) 89 Yale Law Journal 42; S Bok, Secrets: on the Ethics of Concealment and Revelation (Oxford, Oxford University Press, 1989) 10–11. 164 AF Westin, Privacy and Freedom (New York, Athenaeum, 1967) 7. 165 Perceval v Phipps (1813) 2 V & B 21. 166 Earl of Lytton v Devey (1884) 54 LJ Ch 293. 167 Hubbard v Vosper above. 168 HRH Prince of Wales v Associated Newspapers above. 169 S Scoglio, Transforming Privacy: A Transpersonal Philosophy of Rights (Westport CT, Greenwood Publishing, 1988) 42.

Privacy  153 importance of private letters. The same can be said for Thompson v Stanhope170 (instructional value of the Earl of Chesterfield’ letters to his son and heir).171 As far as ‘formational privacy’ is protected via unpublished works, the limited circumstances in which intrusion might be justified suggest that the scope of exceptions to infringement of privately disclosed works ought to be construed somewhat narrowly. In addition, unauthorised first publication of expressions in ‘undisclosed’ journals, memoranda, diaries, and personal letters might reveal sensitive details about an author’s private life. The facts of Tchenguiz v Imerman are again suggestive.172 It might be argued that unauthorised access to a server containing Imerman’s personal finances was intrusive. Therefore, prohibiting unauthorised first publication of ‘undisclosed’ works might secure authors’ informational privacy. However, it is problematic that some ‘undisclosed’ works might not contain any details about their author’s private life. Nevertheless, privacy might be characterised as a means for safeguarding autonomous decision-making. Irrespective of whether an author’s expressions contain details about that author’s private life or not, authors ought to determine first publication of their works.173 Restricting unauthorised first publication of ‘undisclosed’ works has similar consequences for authors’ privacy. Once again, the facts of Argyll v Argyll are suggestive – unauthorised access to the contentious diary revealed the complexity of the Duchess of Argyll’s sexual arrangements. Protecting ‘undisclosed’ material by the means of copyright potentially reduces the attractiveness of obtaining such works clandestinely, thereby minimising intrusions into authors’ physical seclusion or solitude. A similar line of reasoning can be deployed in relation to hacking or spyware – unauthorised access to a person’s computer files as was the case in Tchenguiz v Imerman174 and Middleton v Persons Unknown175 is equally intrusive. Copyright in ‘undisclosed’ works is also justified because it allows authors to control physical intrusions into their physical seclusion or solitude. That concern assumes some importance if unpublished works are obtained clandestinely. For example, irrespective of the nature of the expressions contained in undisclosed letters, memoranda, or journals, obtaining a work surreptitiously might be intrusive. A similar argument can be made in relation to hacking or spyware: such unauthorised access to a person’s computer files is equally intrusive. Proscribing unauthorised first publication of ‘undisclosed’ material reduces the attractiveness of obtaining undisclosed works without their authors’ permission. There are limits to this argument, however. Access to an ‘undisclosed’ work might not be intrusive

170 Thompson v Stanhope (1774) Ambler 737; 27 ER 476. 171 Pope v Curll (1741) 2 Atk 342. 172 Tchenguiz v Imerman [2010] 2 FLR 815 (CA). 173 That argument does not fit into Prosser’s four categories, but it has already been stated that this will rely on other conceptions of privacy. 174 Tchenguiz v Imerman [2010] 2 FLR 814 (CA). 175 Middleton v Persons Unknown [2016] EWHC 2354 (QB).

154  Justifications for Protection of Unpublished Works at all. For example, a personal diary or letter might be left on a train or be disseminated accidentally. Unauthorised access to the diary or letter does not encroach into its author’s physical seclusion in any way. Separately, tangible property rights might secure an author’s physical seclusion. However, copyright anticipates the possibility that there might be widespread dissemination of authors’ expressions if unauthorised disclosure takes place. Separately, ‘disclosed’ or ‘undisclosed’ works also implicate authors’ decisional privacy; a notion which denotes the right of individuals to make independent personal choices.176 For our purposes, preventing unauthorised first publication might afford authors the opportunity to determine uses made of their expressions. Even where publication of a work is contemplated and the expressions in the works are not of a personal or private character, the law ought to protect unpublished works to preserve a sphere in which authors may engage in creativity and decide when a work is ready for first publication.177 For that reason, an author’s privacy may be violated if someone publishes a work of fiction by that author before she is ready to have it published. This idea is intrinsically allied with creative freedom, and it also safeguards authors’ physical privacy. However, ‘publicly disclosed’ works are not ‘private’ because they are disseminated to the public. Even if it were to be argued that privacy entails autonomous decision-making so that authors of disclosed works are entitled to determine first publication of their expressions, works that are exhibited or performed in public are not private. Therefore, ‘privacy’ does not explain in all unpublished works. That argument suggests that the interests that reside in ‘published’ and ‘publicly disclosed’ works are the same. These interests are best resolved by reference to the exclusive rights in various statutes. An implication of the suggestion that there are no appreciable differences between published and ‘publicly disclosed’ works is that copyright should apply to such material uniformly. The value of copyright as an avenue for protecting authors’ privacy is limited. Firstly, for the most part, because privacy is concerned with intrusive conduct, mere access to a work without any further dissemination of the expressions it possesses does not engage that interest. In our context, a personal diary or letter might be accessed without its further dissemination. For that reason, other regimes including tangible property rights and the right of privacy might better curtail intrusions into authors’ life. However, tangible property rights are exceptionally problematical in the sense that they are irrelevant to hacking of digitally stored material. Information as such is not property.178 Copyright anticipates the possibility that widespread dissemination of authors’ expressions might occur, once unauthorised access is gained. Given that the concept of privacy is usually premised on concealment, it is of negligible relevance to works which are destined for first publication. Privacy can



176 RB

Parker, ‘A Definition of Privacy’ (1973-1974) 7 Rutgers Law Review 275. Leval, ‘Toward a Fair Use Standard’ (1990) 103 Harvard Law Review 1105, 1121. 178 OBG Ltd v Allan [2005] QB 762. 177 PN

Privacy  155 only achieve a modicum of relevance to works which are never disseminated or are privately disclosed. Nevertheless, if privacy is regarded as a means for safeguarding autonomous decision-making,179 authors ought to determine first publication of their works irrespective of the destination of their expressions. That argument proceeds from the idea that protecting unpublished works preserves a private sphere in which authors may engage in creativity and decide when a work is ready for first publication.180 Therefore, an author’s privacy might be violated if someone publishes a work of fiction by that author prematurely. To the extent that privacy justifies protection of personal information, it is entirely inconsistent with the argument that authorial interests focus on the realisation of various creative choices. For instance, although the military dispatches in Afghanistan Papier were private, they were not substantially concerned with the creativity that is usually associated with authorship of a work, being basic military dispatches.181 In Britain, an identical argument is applicable to the financial data in Tchenguiz v Imerman. The data was private, but it was devoid of any meaningful authorial interests. Because privacy is mainly concerned with securing personal information from unauthorised intrusion, civilian systems protect authorial prerogatives via copyright and moral rights. Protection of personal information is relegated to specific privacy regimes. That distinction is entirely sensible. Although moral rights and privacy are interests of personality, privacy rights are not ­predicated on the existence of any creative work. Even more fundamentally, some unpublished works might not contain any details about their author’s private life. Several civil law examples make good that point. In Société La Règle du Jeu et Lévy c Salzedo, for instance, there were no conceivable privacy interests attaching to Roland Barthes’ oral lectures – they were delivered in public and they did not concern his personal life or experiences. A similar conclusion can be supported by the sermons in Marle c Lacordaire,182 and the paintings in Camoin c Carco. Abbé Lacordaire’s sermons were delivered publicly, while abandonment of the canvasses in Camoin c Carco deprived them of any iota of privacy. Another useful example of that point is also provided by works of fiction. Unless they are biographical, privacy interests are obviously irrelevant to such works. Because privacy can only encompass a very narrow range of subject matter, it cannot justify protection of some unpublished works by copyright. In general, privacy interests coincide with a person’s natural life. The point is that, naturally, and in common with other attributes of personality, including protection from defamatory statements, dead persons are not capable of

179 RB Parker, ‘A Definition of Privacy’ (1973–74) 7 Rutgers Law Review 275. 180 Harper & Row v Nation Enterprises, 471 US 539 (1985); PN Leval, ‘Toward a Fair Use Standard’ (1990) 103 Harvard Law Review 1105, 1121. 181 OLG Köln Urteil vom 12.06.2015, Az. 6 U 5/15. 1. –Afghanistan papier. 182 Affaire Lacordaire, T. Corr. Lyon, 10 juin 1845, DP 1845. 2. p 128, CA Lyon, 17 juillet 1845, DP 1845. 2. p 129.

156  Justifications for Protection of Unpublished Works r­ esponding to conduct which interferes with their privacy.183 The privacy interests, if any, that stand to be vindicated posthumously are those of authors’ heirs and third parties.184 That state of affairs has one inevitable consequence in our context – protection of unpublished works based on privacy need not exceed an author’s natural life. However, if it is accepted that authorial interests in unpublished works can exceed the lifespan of individual creators, as was the case in René Char and Malaussena c Société Les éditions Gallimard,185 post-mortem protection of unpublished material is justified. An heir’s duty in those circumstances is to fulfil a deceased author’s intention with respect to first publication of her works. Is first ownership of copyright in unpublished works by juristic persons consistent with a justification for copyright in unpublished works based on privacy? Because privacy is usually couched in individualistic terms, it might be suggested that its enjoyment is confined to natural persons.186 However, some scholars do not make distinctions between corporate and individual privacy. For example, Alan Westin defined privacy as the ‘claim of individuals, groups, or institutions to determine dissemination of their information’.187 In addition, RA Posner defended organisational or corporate privacy as more important than personal privacy, because the former is likely to enhance economic efficiency and maximise wealth.188 In addition, if privacy fosters autonomous decision-making, distinctions between the rights of natural and juristic persons are irrelevant. Therefore, juristic persons should determine first publication of their expressions. Moreover, preventing unauthorised first publication of private information might conflict with other interests, including freedom of expression. One might argue that an exercise of the disclosure right in Günter Grass-Briefe prevented pointed criticism of a famous author’s selective portrayal of his Nazi past. Similarly, the audio recordings in Helmut Kohl could have shed immense light on important historical events. In Britain, an identical risk can be extracted from Ashdown v Telegraph Group Ltd. A leading national newspaper was prevented from using excerpts from an unpublished minute in order to support its story on a former Prime Minister’s conduct. A potential solution to that problem might require robust exceptions to copyright infringement. In appropriate circumstances, copyright might need to be displaced by the dictates of freedom of expression. ‘Undisclosed’ works do not generate the same problems because a user will not know of their existence – public interest considerations can only arise if such expressions are divulged. 183 R Pound, ‘Interests of Personality’ (1915) 28 Harvard Law Review 343. 184 Éditions Plon v France (2006) 42 EHRR 36 (ECtHR). 185 Malaussena c Sté Les éditions Gallimard JurisData n 2000-006365; D. 2001, 918. 186 RB Stevenson, Corporations and Information: Secrecy, Access, Disclosure (Baltimore MD, Johns Hopkins University Press, 1980); T Aplin, ‘A right of privacy for corporations?’ in P Torremans (ed), Intellectual Property and Human Rights, 2nd edn (The Hague, Kluwer Law International, 2005) 475. 187 AF Westin, Privacy and Freedom (New York, Athenaeum, 1967) 7; A Miller, Assault on Privacy (Michigan, Michigan University Press, 1971) 40. 188 RA Posner, The Economics of Justice (Cambridge MA, Harvard University Press, 1981) 249.

Conclusion  157 In conclusion, protection of some unpublished works might secure authors’ privacy. It is arguable that effective protection of authors’ privacy might require protection of ideas as such. However, that proposition is wholly inconsistent with the idea/expression dichotomy in copyright law. Therefore, the privacy interests in unpublished works might need to be secured by the action for breach of confidence or the right of privacy in Article 8 of the European Convention on Human Rights. Both regimes can prevent unauthorised disclosure of facts or ideas. In conclusion, the privacy argument only justifies protection of some (but not all) unpublished works.

Conclusion In conclusion, economic arguments offer the most persuasive justification for protecting all unpublished works. For instance, protecting ‘publicly disclosed’ works attracts the same economic arguments for protecting ‘published’ works. Where the conventional economic argument cannot justify protection of ‘undisclosed’ works, protection of ‘undisclosed’ works can be defended primarily on the basis that differentiating ‘undisclosed’ works that are intended to be published from other works that are not might generate high costs for users. Thus, the protection that is conferred on ‘undisclosed’, ‘published’ and ‘unpublished’ works ought to be the same. Nevertheless, the range of interests that are encompassed by unpublished works suggest that the defences to copyright infringement ought to be interpreted purposively and that protection of unpublished works is also justified on natural rights, expressive autonomy, and privacy arguments. These justifications might imply that legal rights in unpublished works ought to be given to authors only. Some of the justifications considered in this chapter (privacy, personality, and expressive autonomy) can explain why, in addition to copyright, unpublished works are protected by privacy and confidence. However, even with these additional actions, there is scope for protecting ‘undisclosed’ and ‘privately disclosed’ works via data protection laws. Moreover, if personality, privacy and expressive autonomy are reflected in the right to privacy, and breach of confidence, it may be that copyright law should be modified to remove those aspects which are stronger than copyright in published works. However, all the rights need to be reconciled with competing interests such as free expression. These issues are discussed in the next chapter. The range of materials and interests that are embraced by copyright in unpublished works is varied. A key issue which has emerged from the chapter is the nature of the exceptions to infringement of copyright in unpublished works. Given that the unpublished status of a work often fluctuates and the similarities between ‘publication’ and ‘public’ disclosure, there ought to be one overarching defence to copyright infringement. That exception ought to be interpreted purposively if authors and users’ interests are to be balanced. Such a purposive approach would

158  Justifications for Protection of Unpublished Works consider the nature of the unpublished work in question and the interests that are implicated by its unauthorised first publication. Another problem, which was encountered in this chapter, was the term of protection which ought to be available to unpublished works. That issue is of cardinal importance, given the concern that protecting copyright works for a long time might exacerbate problems with orphan works. The problem with orphan works will be discussed in chapter six, where it will be argued that the term of protection for old unpublished works ought to be truncated – authors of such works are long dead and so no longer have any interests that might be incompatible with uses and conservation of orphan works. Given the history, significance and justifications for copyright in unpublished works, one can argue that pragmatically protection of unpublished works is nearly as good as it is. The meaning of publication is singularly uncertain. As we have seen in chapter four above, the differences between disclosed and undisclosed works are fine especially in the context of publication on the Internet. Numerous interests are, in fact, implicated by unpublished works: hence the desirability of protecting unpublished works by copyright, the action for breach of confidence, and the right to privacy.

6 Persistent Problems Introduction The preceding discussion has revealed a wide array of issues, of which two deserve further attention. In the first case, the defences to infringement of copyright in unpublished works are not a happy medium for balancing a multiplicity of sometimes diametrically opposed interests. For the most part, the pendulum has swung too far in favour of authors’ rights. That feature emerges with obvious clarity from the special treatment that is often afforded to ‘undisclosed’ and ‘privately disclosed’ works – they are sometimes inoculated from the reach of some copyright defences.1 Where, on the surface, copyright defences subsume unpublished works, courts have routinely prioritised authors’ rights over other interests.2 Yet, as we observed earlier, copyright has always been conceived in terms of balancing various authorial prerogatives with user access to useful intellectual productions. It is argued that for the sake of efficiency, a fair use defence to claims for copyright infringement ought to be enacted in the jurisdictions where that exception has not taken root. That intervention is capable of being explained on the basis that the prevailing defences are quite fragmented – allocating a particular use to a specific statutory exception is productive of difficulties.3 However, great barriers lie in the path of incorporating fair use in the statutes of other common law countries. For instance, the argument that fair use is a charter for uncertainty is difficult to dislodge. Moreover, the three-step test in the Berne Convention is often perceived as being wholly incompatible with open-ended copyright defences.4 The first difficulty is largely chimerical – fair dealing is not any better – it harbours various peculiarities in relation to the purpose of the unauthorised use. Besides, the tide is turning. Australia toyed with fair use, but, in the end, settled on expanded fair dealing defences.5 The second problem is singularly arid and can be dispatched 1 See ch 4 above. 2 See the cases discussed in ch 4 above. 3 Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA); BBC, Petitioners [2012] SLT 476. 4 HC Jehoram, ‘Restrictions on Copyright and Their Abuse’ (2005) 27 European Intellectual Property Review 359, 362; A Lucas, ‘For a Reasonable Interpretation of the Three-Step Test’ (2010) 32 European Intellectual Property Review 277, 278–79; S Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886–1986 (The Hague, Kluwer 1987) 482. 5 www.alrc.gov.au/sites/default/files/pdfs/publications/dp79_whole_pdf_.pdf; P Samuelson and K Hashimoto, ‘Is the U.S. Fair Use Doctrine Compatible with Berne and TRIPS Obligations?’, https://ssrn.com/abstract=3228052; DJ Gervais, (Re)structuring Copyright: A Comprehensive Path to International Copyright Reform (Cheltenham, Edward Elgar, 2018) 66.

160  Persistent Problems easily. WIPO, the custodian of the Berne Convention, dismissed any concerns relating to fair use and the strictures of the three-step test when the USA joined the Berne Union.6 If enacted, the fair use defence ought to apply uniformly to published and unpublished works if authors and users’ interests are to receive equal attention. However, merely enacting a new defence cannot advance matters significantly. The introduction of a fair use defence in some countries ought to be complemented by a purposive interpretation of copyright exceptions. That task should be p ­ remised on identifying the key interests that inform copyright in a particular work; a fact-sensitive matter which relies on the justifications for protecting intellectual property. That argument is not altogether too radical if judicial interventions in other areas of copyright law are considered. For example, the unarticulated premise in some of the leading cases involving copyright in artistic works is that the facts which presented themselves for adjudication were quite removed from what copyright stands for.7 A similar conclusion can be advanced in connection with the European Court of Justice’s ‘intellectual creation’ originality standard.8 The kernel of that test is that judges consider the facts of individual cases in the shadow of the ‘personality’ justification for private property ownership. Less elegantly, British judges have employed contrived interpretations of various fair dealing defences in order to meet the demands of serious public interests.9 The second issue concerns the temporal limits of copyright in ‘old’ unpublished works – an enduring feature of partial abolition of common law copyright – vested rights being superimposed over other interests.10 Although securing vested rights made much sense at various epochs of copyright history, the public domain is seriously impoverished by exorbitant copyright terms – users may not exploit very old works freely for an exceptionally long time.11 Besides, with the effluxion of time, many works risk being orphaned. Clearing the rights in such works is particularly inefficient. Although diligent searches are possible, they are neutered by their cost and complexity. Moreover, the threat of copyright infringement often hinders conservation and dissemination of works that are preserved in inaccessible or obsolete formats. 6 ibid. 7 Eg George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64; J & S Davis (Holdings) v Wright Health Group [1988] RPC 403; Komesaroff v Mickle (1988) RPC 204; Creation Records v News Group Newspapers [1997] EMLR 444; Burge v Swarbrick [2007] HCA 17; Lucasfilm v Ainsworth & Anor [2011] 3 WLR 487. 8 Case C-5/08, Infopaq Int’l A/S v Danske Dagblades Forening [19 July 2009] ECR I-6569. 9 Newspaper Licensing Agency v Marks and Spencer [2001] 3 All ER 977. 10 See ch 1 above. 11 E Townsend-Gard, ‘The Birth of the Unpublished Public Domain and its International ­Implications’ (2006) 24 Cardozo Arts & Entertainment Law Journal 687; AR Reese, ‘Is the Public Domain Permanent?: Congress’s Power to Grant Exclusive Rights in Unpublished Public Domain Works’ (2007) 30 Columbia Journal of Law and The Arts 531; AR Reese, ‘Public but Private: Copyright’s New ­Unpublished Public Domain’ (2007) 85 Texas Law Review 585.

Copyright Exceptions  161 It is suggested that the term of protection for old unpublished works is extremely generous and ought to be curtailed. That course of action might ­ameliorate ­problems with orphan works – historical materials will be released into the public domain. However, a potential impediment to that strategy concerns supplementary rights in old works. Britain’s ‘publication’ right is demonstrative – a right akin to copyright is sometimes granted to publishers of previously unpublished public domain works. Such rights should be maintained if confiscation of another’s property rights is to be avoided. Separately, the orphan works provisions that have been enacted in various countries ought to be strengthened if valuable unpublished material is to be exploited effectively.

Copyright Exceptions The ideal defences to infringement of copyright in unpublished works can be formulated by reference to the justifications for protecting intellectual productions. Consider the nature of the defences which ought to apply to ‘publicly disclosed’ works, which should be relatively uncontroversial. Let us return to Martin Luther King’s ‘I have a Dream’ speech for the last time.12 The work remained unpublished even though it had been widely disseminated to the public. Because the work was known to the public, and Luther King actively promoted its widespread disclosure, there were no privacy interests at stake. In different circumstances, of course, it is possible for some publicly disclosed works to be faintly infused with their authors’ privacy. An example of that remote possibility concerns architectural drawings of a private residence which are submitted for approval to a local authority. Details about the residence may be revealed to the public if the drawings are viewed online or downloaded. However, the absence of significant privacy concerns and the fact that the work is disseminated to the public suggests that exceptions to ‘publicly disclosed’ and ‘published works’ ought to be placed on an even footing. Admittedly, a ‘publicly disclosed’ work may be adapted into different media and deprive authors of further revenues arising from presenting it differently to the public. The courts recognised the potency of that argument in Macklin v Richardson13 and Estate of Martin Luther King.14 Moreover, inaccurate adaptation of a work might interfere with its authors’ moral rights and, in turn, the economic value of good artistic reputation. Nevertheless, there ought to be parity vis-à-vis the exceptions to infringement of copyright in ‘publicly disclosed’ and ‘published’ works. Both categories of work are revealed to the public with their author’s permission – a line of thinking that is reflected in some of the British fair dealing provisions. No special distinction attaches to criticism or review of



12 Estate

of Martin Luther King Jr v CBS Inc 194 F 3d 1211 (11th Cir 1999). v Richardson (1770) Amb 694. 14 Estate of Martin Luther King Jr v CBS Inc 194 F 3d 1211 (11th Cir 1999). 13 Macklin

162  Persistent Problems or quotation from ‘published’ or ‘publicly disclosed’ works.15 Equally, there is no good reason why a ‘publicly disclosed’ work cannot be parodied – its public exhibition or performance creates links between original and derivative expressions. Obviously, quotation, criticism or review or parody might well interfere with authors’ reputation, thereby harming their economic interests. However, authors put aspects of their personality on the line by publicly disclosing their works. Any other residual interests arising from unauthorised first publication are best characterised as interferences with authors’ exclusive rights. A similar outcome arises if exceptions to copyright in ‘publicly disclosed’ works are considered from the vantage point of respecting authors’ ‘personality.’ The very act of disclosing a work to the public might require modifications to authors’ ‘personality’ interests. For example, users may rely on publicly disclosed works in order to develop aspects of their own personality; a possibility that may be enhanced by studying canonical works. Therefore, in common with ‘published’ works, the personality interests that are present in a ‘publicly disclosed’ work mandate the fullest possible exceptions if users are to achieve self-actualisation by relying on publicly accessible expressions of ideas. It follows that a publicly disclosed work may be parodied, criticised, or reviewed or be quoted from – a position which is reflected in some domestic copyright statutes.16 Any further personality interests that are engaged by unauthorised first publication of a ‘publicly disclosed’ work can be addressed by reference to moral rights or other authorial prerogatives that are delineated in various statutes.17 The labour theory also suggests that exceptions to ‘publicly disclosed’ and ‘published’ works ought to be the same. The persuasiveness of that argument rests on the Lockean provisos. Arguably, curtailing uses of ‘publicly disclosed’ works might be equivalent in principle to wasteful exploitation of intellectual productions: widely available material might not be transformed into new works. The ‘enough and as good’ proviso generates the same conclusion. Users ought to have access to publicly available expressions of ideas which can form the basis of new works. Consequently, users should be able to, for instance, quote from a ‘publicly disclosed’ work when engaging in their own creativity. An additional point supplements these arguments: the labour that is expended on creating published and publicly disclosed works is the same. The case for having the same exceptions to copyright in ‘published’ and ‘publicly disclosed’ works is fortified by the desert justification for protecting intellectual productions. The point is that ‘excellent’ or ‘socially useful’ ‘publicly disclosed works’ mandate significant exceptions if users are to benefit from these materials. For example, mere access to and transformative uses of ‘excellent’ material might be necessary. The gravamen of that argument is that ‘excellent’ or ‘socially useful’ works might facilitate the acquisition of knowledge; a claim which justifies uses of some works for the purposes of research or study. Obviously, allowing extensive

15 CDPA

s 30(1). s 30(1). 17 CDPA ss 17–21. 16 CDPA

Copyright Exceptions  163 exceptions to protection of ‘socially useful’ or ‘excellent’ works might discourage their production and harm the public interest. However, whether a particular use has those consequences is a matter of fact which can be addressed by a purposive construction of the relevant statutory provisions. The ‘need’ basis of the desert argument is largely irrelevant to ‘publicly disclosed’ works. Disseminating a work publicly suggests that authors might not be overly concerned with how their expressions are transformed by others. In any event, moral rights might address significant interferences with authors’ ‘needs’. The claim that the same exceptions ought to apply to ‘published’ and ‘publicly disclosed’ works is enhanced further by the Berne Convention which, in essence, provides that such material can be criticised or reviewed. That position is reflected in Article 5(3)(d) of the Information Society Directive and has been enacted in various domestic copyright statutes.18 As we observed earlier, the justification for the rule that ‘publicly disclosed’ works can be criticised or reviewed is that authors who deliberately release their work in the public sphere should be prepared for limited interferences with their expressions of ideas. Separately, America’s broad fair-use defence also approximates the exceptions to all works. The only relevant consideration which then falls to be decided by the courts is an application of the various fair use factors to the facts of individual cases. In my view, although public disclosure and publication are different concepts, the real test is whether the public can access the work with its author’s consent. If so, then the same exceptions ought to apply to both categories of works. At first glance, narrow exceptions ought to apply to infringement of copyright in ‘undisclosed’ works because they often implicate a plethora of authorial interests. For example, refraining from publishing a work might be influenced by privacy considerations. However, even if privacy interests are prominent, and a work contains sensitive details about its author’s life, there ought to be exceptions to copyright in undisclosed works. That argument is not too difficult to sustain – the right to privacy itself is not absolute.19 If privacy itself possesses exceptions, then there is no need for a blanket ban on defences to copyright in ‘undisclosed’ works; a point which seems to be consistent with the research or study,20 reporting news or current events21 and reporting judicial proceedings exceptions.22 ­Similarly, the public interest defence applies to ‘undisclosed’ works.23 However, a line is drawn in the British statute – works which have not been made available to the public with their authors’ consent cannot be criticised or reviewed.24 In my view, there does not seem to be any privacy basis for distinguishing uses of ‘undisclosed’ matter in the contexts of research or study, reporting news or current events, reporting judicial ­proceedings, quotation or criticism or review.

18 CDPA

s 30(1). Art 8(2). 20 CDPA s 29. 21 CDPA s 30(2). 22 CDPA s 45. 23 Lion Laboratories v Evans [1984] WLR 539 (CA). 24 CDPA s 30(1). 19 ECHR

164  Persistent Problems In any case, not all ‘undisclosed’ works are imbued with their authors’ privacy. That point is especially true in relation to works that are created in the course of employment by companies or the government. Usually, various economic interests or the benefits of official secrecy are at the forefront of works that are created in these circumstances. Because the effects of unauthorised first publication of undisclosed works on authors’ privacy are variable, it becomes difficult to prescribe bright line defences to infringement of copyright in such works. Therefore, the same copyright defences ought to apply to all works. However, authors and users’ interests ought to be reconciled by carefully examining the facts of each case. Where significant privacy interests are evident, a copyright claim ought to succeed. The case for having uniform exceptions to copyright in all works is fortified by the availability of auxiliary but effective means for securing authors’ interests in their ‘undisclosed’ works. The British experience on that front is informative. The action for breach of confidence has been extended in order to protect privacy. That outcome was achieved by dispensing with the requirement for a relationship importing an obligation of confidence between the parties in cases concerning misuses of private information.25 Besides, there is now a separate privacy regime which provides the most appropriate environment for curbing intrusive interferences into authors’ private life.26 Other means for securing the interests in undisclosed works include data protection.27 Having uniform copyright exceptions might eliminate the trap of excessive cumulation of rights. At present, some authors use copyright with its narrow exceptions in order to circumvent the strength of the public interest defence to claims for breach of confidence.28 ‘Expressive autonomy’ also suggests that there ought to be exceptions to ­copyright in ‘undisclosed’ works. Of course, an author who does not disclose her work seriously exhibits the premium she places on her expressive autonomy. However, once unauthorised disclosure occurs, the principle of transparent government, for instance, might suggest that undisclosed works ought to yield to other interests. That point is already recognised in other areas of British law. The term of protection for some official secrets is limited.29 Separately, freedom of expression might assume paramount importance. Once it is revealed to the public, an ‘undisclosed’ work might act as a cipher for a range of meanings. In Britain, the current exceptions seem to recognise users’ expressive autonomy in the contexts of research or news.30 There is no reason why the interests of authors of ‘undisclosed’ works cannot be displaced in the context of fair dealing for the purpose of criticism or review. To prevent this haphazard availability of exceptions, there ought to be an overarching defence to infringement of copyright in all works. The courts



25 Campbell

v Mirror Group Newspapers Ltd [2004] 2 AC 457. Art 8. 27 The Data Protection Act 2018. 28 Hyde Park Residence Ltd v Yelland [2001] Ch 143 (CA). 29 The Public Records Act 1958. 30 CDPA s 29. 26 ECHR

Copyright Exceptions  165 can then balance the parties’ interests with the aim of meeting the factual demands of individual cases. In terms of labour, owing to limited knowledge about their existence, ­‘undisclosed’ works can be orphaned easily thereby making it difficult to exploit such material. A glaring example of that risk is provided by the issues surrounding uses of Vivian Maier’s photographs: various claims of an ­international character have been made in connection with the ownership of these invaluable ­undisclosed ­photographs.31 Although it is difficult to determine whether a work is being wasted, significant exceptions which allow productive uses of ‘undisclosed’ works ought to be available. The same can be said for the ‘enough and as good’ proviso. That restriction on acquisition of property rights becomes a live issue once an ‘undisclosed’ work becomes known to others. It is also efficient for there to be orphan works provisions which are capable of reducing the potential waste arising from non-exploitation of intellectual productions. There is also a powerful economic case for having exceptions to copyright in undisclosed works. Important materials which can form the basis of new works may be lost if they are not preserved. For that reason, attempts by cultural heritage institutions to conserve their holdings should not attract claims for copyright infringement. In addition, the data mining provisions in some jurisdictions can be justified on the grounds that they are premised on facilitating research and ­creativity.32 For authors, newly disclosed works might advertise their earlier published works or provide a missing link in their creative output. Besides, the undisclosed work might be economically significant in its own right; a point which can be supported by the internecine battles surrounding Franz Kafka’s secret works.33 The arguments that are presented here suggest that there ought to be an exception to copyright infringement, which extends to all works. Courts will then consider the economic and other interests in a work. All variants of the desert basis for protecting intellectual productions ­necessitate generous exceptions to protection of ‘undisclosed’ works. The social utility of a work, for example, might need to be determined by others. That task might not be completed if users are routinely prevented from exploiting ‘undisclosed’ works. A similar analysis may be advanced in connection with ‘excellence’. If excellence is objective, then users ought to rely on the work in order to assess the merit of authors’ claims. Even if authors ‘need’ to control their works, exceptions to copyright in undisclosed works ought to be available if object fetishism is to be curtailed. These arguments suggest that delineating the most appropriate exceptions for protecting undisclosed works might be arduous – rival considerations scramble for position; a feature which can be mitigated by enacting an overarching 31 https://pdnpulse.pdnonline.com/2018/07/would-be-heirs-petition-again-for-rights-to-vivianmaier-estate.html. 32 CDPA s 29(1)(a). 33 www.telegraph.co.uk/news/2019/04/17/swiss-court-rules-franz-kafkas-papers-must-broughthidden-bank/.

166  Persistent Problems exception to copyright infringement. That exception would meet fluctuations in the unpublished status of a work. The ‘personality’ theory also supports the conclusion that there ought to be standard exceptions to all works. In any case, ‘undisclosed’ official secrets and works that are created within the course of employment ought to attract generous defences partly because they might be devoid of any indicia of individual ‘personality’. According to that analysis, strong personality rights ought to be reserved for authorial works. The focus of that argument is on whether the work is its author’s own intellectual creation; an issue which can be resolved by reference to the European Court of Justice’s judgment in Infopaq.34 Following that approach, exceptions to essentially functional or entrepreneurial works ought to be ­readily available. However, determining whether a work is functional is also difficult. Therefore, a comprehensive defence which caters for different situations might better protect authors and users’ interests. The reality, in some cases, is that the ‘undisclosed’ status of a work fluctuates markedly. The transition from undisclosed, privately disclosed, publicly disclosed and published works is quite malleable. In the end, it is difficult to separate works which will be disclosed in the future and those that will remain undisclosed. Devising specific exceptions for these uses is likely to present unnecessary uncertainties. Significant resources might need to be expended on deciding whether a work is disclosed or not. That inquiry might become more difficult with time – undisclosed works may be orphaned. For that reason, the same exceptions ought to apply to all copyright works. If that course of action is adopted, courts can balance the parties’ interests in individual cases. In some cases, that balancing exercise might necessitate preservation of users’ rights. Such an analysis requires wholesale reforms to copyright exceptions in some common law countries. The closed list of defences which obtains in those jurisdictions is redolent with unnecessary problems. Tinkering at the margins by adding extra layers of permitted categories as was the case in Australia might not achieve meaningful reforms in this area. The next question is what exceptions, if any, ought to apply to works that are intended for publication in the future. In my view, at the cusp of authorised first publication, authors’ economic interests are quite substantial. The commercial value of the published work might be diminished if its most important parts are excised and published elsewhere. This is especially the case in relation to biographies or other factual works – their economic significance may lie in exposing unknown or privately circulated information. A distinction between ‘undisclosed’, ‘privately disclosed’ and ‘publicly disclosed’ works meant for first publication ought to be made, however. Unless they are revised considerably before publication, ‘publicly disclosed’ works are already known to the public. Any additional economic interests generated by such works flow from their ­adaptation into different media. Conversely, because ‘privately disclosed’ works that are

34 Case

C-5/08, Infopaq Int’l A/S v Danske Dagblades Forening [19 July 2009] ECR I-6569.

Copyright Exceptions  167 destined for first publication implicate numerous economic interests including serialisation contracts and other advances, exceptions to protection of such works ought to be limited. In other instances, circulation of error-strewn first drafts might conflict with authors’ reputational interests – readers may well conclude that such copies best represent their authors’ effort. When considered from these angles, defences to copyright infringement may need to be interpreted quite narrowly. Authors’ economic interests may have to be superimposed over any short-term benefits arising from publishing the juiciest snippets from a work. At face value, Ashdown v Telegraph Group Ltd and Harper and Row v Nation Enterprises were correctly decided. The contentious expressions in these cases were destined for authorised first publication. However, the difficulty that arises from the judgments in these cases is that in some cases, authors and publishers might change their mind and refrain from publishing a work. If that were to happen, socially useful expressions may not be disseminated to the public. In addition, for users, the timing of publication is a material consideration. In the absence of unauthorised first publication, the events surrounding the disputed work might be in the distant past. That risk necessitates the availability of uniform exceptions to infringement of copyright in all works. Where a work moves from one status to the next, courts still possess tools that can address the parties’ changed positions. Respect for authors’ expressive autonomy might also be relevant at the prepublication stage. Authors ought to control the form and timing of first publication of their works. Crucially, authors might exercise their expressive autonomy by withdrawing from publishing agreements. These arguments also attach to publicly disclosed works that are intended for future publication – authors ought to choose the medium of first publication. However, because an author would have spoken via authorised performance or exhibition of the work in public, exceptions matching those that are available for published works should apply. In addition, the expressive autonomy of users is not unduly restricted if slight delays in publication occur. However, once again, authors’ and publishers’ intentions might change. Therefore, an overriding exception which embraces changes in a work’s status ought to be available. These points apply with equal relevance to the cipher ­argument: exceptions to ‘publicly disclosed’ works ought to be available to enable the public to exploit familiar works. The argument that identical defences ought to absorb all works can also be supported by a consideration of the personality justification for ­ protecting ­unpublished works. Authors ought to control the timing of first publication of their works. Unless the work is publicly disclosed, users’ personality interests are not engaged at this stage. Otherwise, authors might avoid publishing their works if users can pirate them just before they are published. However, much depends on whether the work is about to be published. If the work is in production, for instance, personality requires authors to control the process of first publication in order to facilitate careful revision of the work. At that point, exceptions to copyright infringement ought to be interpreted narrowly. However, these arguments

168  Persistent Problems are of little relevance to ‘publicly disclosed’ works, which are destined for first publication – they are already known to the public. Little is gained by limiting their dissemination. Apart from this, offers to publish might be withdrawn by a publisher. Alternatively, inaccurate works might be published thereby harming authors’ creative reputation. These arguments support the position that there ought to be exceptions which can sometimes override authors’ personality interests; an argument which assumes vital importance in the context of unpublished works implicating freedom of expression. An unmitigated emphasis on protecting authors’ personality might interfere with dissemination of crucial information. Given these factors, a graduated approach might be used to protect authors and users’ interests at the pre-publication stage. ‘Desert’ is also relevant to the exceptions that ought to be available to infringement of copyright in works intended for first publication. Take first, the desert claims based on a work’s ‘social utility’ or ‘excellence:’ Authors ought to control how these important works are presented to the public. The potential for inaccuracies is also relevant to such works – the ‘excellence’ of an author’s creativity might be jeopardised if a work is published prematurely. In any event, given that the public may eventually profit from authorised first publication of a work, there is no need for premature first publication. Conversely, ‘need’ suggests that few exceptions ought to apply at the pre-publication stage if authors are to control how their works are disseminated to the public. Nevertheless, as suggested earlier, exceptions ought to be available if object-fetishism is to be curbed. These variables require the same exceptions for published and unpublished works. Otherwise, considerable resources may be expended on fine distinctions between various categories of unpublished works. In individual cases, judges can strike a balance between authors and users’ interests by relying on the normative bases for copyright in unpublished works. ‘Labour’ implies that a work that is meant for first publication is not wasted at all – it will be disseminated to the public later. In any case, a ‘publicly disclosed’ work which is intended for first publication is not wasted – the work is already available to the public. In addition, the ‘enough and as good’ proviso is not engaged by works which will be published – users stand to be furnished with the building blocks of their own creativity later. There is therefore a credible case for having narrowly defined exceptions for ‘undisclosed’ and ‘privately disclosed’ works that are meant for first publication. However, the case for uniform exceptions to ­copyright in all works remains persuasive. The provisos may be engaged if circumstances change and a work that is intended for first publication remains unpublished. Moreover, freedom of expression becomes important if the timing of first publication means that the significance of a work to current debates is diminished. What is needed is a fact-sensitive balancing process. For example, taking from a work just before its first publication interferes unduly with an author’s enjoyment of the fruits of her labour. In addition, the issue of accuracy that was identified in Millar v Taylor also becomes relevant. Authors should be able to revise their works in order to establish their creative reputation. The argument that is presented here is that ultimately, copyright exceptions are about

Copyright Exceptions  169 reconciling various interests. For that reason, an overarching exception provides the most comprehensive means for balancing numerous considerations. Depending on the stage of first publication, privacy interests may also be significant at the pre-publication stage. For instance, premature first publication of a work might interfere with others’ privacy. This is especially so if an author is not afforded the opportunity to revise and remove sensitive material from a work before it is published. However, there might be no privacy interests in works of fiction for example. In such cases, privacy might not be an important ­consideration in the balancing process. Because the right to privacy that is available in different countries is not absolute, there is no reason for a blanket ban on infringement of copyright in a work that is destined for first publication. Therefore, in essence, there ought to be identical exceptions to infringement of copyright in published and unpublished works. Once again, a balancing process provides the most ­optimum solution to the conflicting interests in this area. Each case would depend on its merits: authors may change their mind and decide against first publication. Where appropriate, privacy considerations would be relevant to some authorial works including diaries and personal letters. Authors should be given the opportunity for disclosing such details in order to protect their own and others’ privacy. On the face it, exceptions to ‘privately disclosed’ works ought to be narrow if authors’ privacy interests are to be secured. The very fact of private disclosure is important. Had dissemination of a work to a wider audience been intended, it would have been published. Nevertheless, the case for standard exceptions to infringement of copyright in all works remains unassailable. After all, adjacent regimes including breach of confidence, which have the effect of protecting authors’ privacy albeit on an indirect basis, possess exceptions which can be deployed with the goal of balancing various conflicting interests.35 In addition, the right to privacy is not cast in absolute terms.36 In any event, not all works possess significant details about their authors’ private life. Even if autonomous decision-making entitles authors to decide uses of their privately disclosed expressions, exceptions to copyright in such works ought to be available. There is therefore no good privacy reason for the approach that has been adopted by the EU and, in turn, the UK, in connection with restricting fair dealing for the purpose of criticism or review to works which are made available to the public with their authors’ consent.37 It is therefore desirable for there to be an exception which embraces published and unpublished works but is subject to purposive interpretation. Where privacy interests take centre stage, courts ought to consider whether authors are avoiding the most appropriate legal regimes that are applicable to the facts of the cases before them. In terms of desert, preserving authors’ ‘needs’ might require stringent exceptions to infringement of copyright in ‘privately disclosed’ works. Otherwise, authors might relinquish control of their works. Nevertheless, by disseminating a work privately, an author would have demonstrated that she does not wish to

35 Lion

Laboratories v Evans [1984] WLR 539 (CA). Art 8(2). 37 CDPA ss 30 (1). 36 ECHR

170  Persistent Problems exercise the fullest control over her expressions. As for ‘social utility,’ exceptions to infringement of copyright in privately disclosed works ought to be available if authors’ claims are to be assessed. There is a qualification to that argument, however. A work can be socially useful even if it is disseminated to a single person. Personal correspondence supports that proposition – an argument which can be extracted from Pope v Curll38 and Thompson v Stanhope.39 Nevertheless, ­exceptions might be needed if such useful expressions are to reach a wider audience. A ­similar argument might be made in connection with ‘excellence’. If excellence is to be judged at all, the public might need to access the work. Nevertheless, private disclosure of an artistic work to connoisseurs, for example, might be sufficient – such persons might determine the excellence of the work. Given the difficulties of establishing need, excellence and social utility, it is efficient for there to be uniform exceptions to protection of all published or unpublished works. As far as ‘expressive autonomy’ is concerned, private disclosure ought to carry much weight. The risk of compelled subsidisation of speech is strong in the context of privately disclosed works – their existence and contents are not widely known. Equally, the cipher argument has limited value to privately disclosed works. The very notion of a cipher requires widespread public knowledge of the work. Mere disclosure of the work to its recipient might be insufficient. However, these factors should not be absolute. Otherwise, politically sensitive but scandalous documents that are circulated to a limited circle might escape any scrutiny. In addition, the act of unauthorised first publication might well engage users’ interests. The different types of disclosed and undisclosed works suggest that uniform exceptions ought to apply to ‘privately disclosed’ and ‘undisclosed’ works, and, in turn, published works. Courts can then assess the facts of individual cases and decide the interests which ought to prevail. Otherwise, continuing to premise copyright exceptions on the artificialities of ‘publication’ is likely to generate numerous uncertainties. The gaps that sought to be filled by distorting the meaning of ‘publication’ in copyright law have largely been plugged especially in relation to formalities and the absence of a specific privacy right in some common law countries. Economically, narrow exceptions to copyright infringement of privately disclosed works might be attractive to authors. The first consideration is ­reputational – its loss potentially generates serious economic consequences. Other privately disclosed works detailing official or trade secrets might also possess ­significant economic value, unauthorised disclosure of which might harm their owners’ interests: Lion Laboratories v Evans. However, an immediate objection to that proposition is that since reputation can be protected by defamation law, there is no need for copyright to be burdened with securing that interest. Besides, an invaluable lesson can be drawn from defamation itself – various defences contemplate that authors’ reputation can be dislodged.40 In my view, a general ­exception

38 Pope

v Curll (1741) 2 Atk 342. v Stanhope (1774) Amb 737. 40 Defamation Act 2013 ss 2–7. 39 Thompson

Fair Use  171 which applies to published and unpublished works might be interpreted in the light of authors’ economic interests. That position already obtains in most common law jurisdictions. The economic impact of the infringing copy on the market for the original work may determine the availability of the fair use defence to the facts of individual cases.41 Moreover, because some privately disclosed works might not possess any economic value, there is no need for closed lists of exceptions which are designed to capture specific uses. The ‘personality’ theory might warrant restrictive exceptions to protection of privately disclosed works. After all, authors would have selected the recipients of their expressions. However, as we have observed earlier, unauthorised first publication might disseminate authors’ expressions widely thereby implicating the interests of the wider public. In the absence of copyright exceptions, vital material which profoundly shapes public debate might not be used. In any event, distinguishing works which are imbued with their authors’ personality from other works is likely to be an imprecise task. As a consequence, it is more expedient for there to be an exception which is flexible enough to cover all copyright works irrespective of their disclosure. The scope of that exception would then be fact-sensitive. For example, if it is considered that a work is imbued with its author’s personality to a considerable extent then the defendant’s use might not be excused. Even if the work is devoid of any personality traits, it might implicate other interests which necessitate its protection. The labour theory has largely neutral consequences as far as exceptions to copyright in ‘privately disclosed’ works are concerned. A work that is privately disclosed is not wasted. At the very least, its recipient might obtain various benefits from using it. Sometimes, waste might be relevant if expressions in a ‘privately disclosed’ work are kept private. Ground breaking scientific papers which are privately disclosed but unpublished are a paradigm example of that risk. As for the ‘enough and as good’ proviso, writing a letter to a correspondent, for example, might not prevent others from doing the same. The latter point suggests that there ought to be narrow exceptions to privately disclosed works. However, the problem is that ‘privately disclosed’ works include a wide range of material including official secrets. Proscribing uses of some material might lead to charges of censorship. It is therefore necessary for there to be an exception that does not discriminate one type of copyright work from another. Any discrimination can be at the micro level when weighing the parties’ respective interests.

Fair Use The case for enacting a fair use defence in all common law countries is compelling. Compartmentalising copyright exceptions, as is the case in numerous countries, 41 CCH Canadian Ltd v Law Society of Upper Canada [2004] 1 SCR 339, 2004 SCC 13; PCR Ltd v Dow Jones Telerate Ltd [1998] FSR 170.

172  Persistent Problems is deeply unsatisfactory. Users must navigate several hurdles before proving the relevance of a particular defence to their case. However, ‘fair use’ generates the criticism that it is inconsistent with established international copyright norms.42 According to Art 9(2) of the Berne Convention, for example, exceptions to copyright protection should be for certain cases, should not interfere with the normal exploitation of the work or unreasonably prejudice authors’ l­egitimate interests. With respect to the first step, the generality of the fair use defence might be said to offend the requirement that exceptions should be certain. A level of indeterminacy arises from the case-by-case analysis that forms the main feature of the fair use defence. That point has been raised with considerable emphasis in the literature.43 However, several responses can be marshalled against that proposition. Firstly, and most obviously, the legitimacy of the fair use defence was accepted when the USA joined the Berne Convention.44 Of course, it might be the case that in a bid to have the USA on board, concerns relating to fair use and the Berne Convention were conveniently ignored. Nevertheless, any concerns relating to the wide ambit of the fair use defence were not alluded to when the USA became a party to the TRIPs Agreement. In any event, fair use does not provide a wholesale facility for unauthorised uses of copyright works – it is predicated on prescribed criteria.45 In addition, various cases also demonstrate the relevance of several interests which limit the operation of the fair use defence and introduce a measure of certainty into that exception.46 Another criticism of fair use is that it falls foul of the requirement that copyright exceptions should not interfere with the normal exploitation of a work. An answer to that contention is that all copyright defences potentially interfere with the normal exploitation of original works. The reason for that argument is that a proper application of copyright exceptions results in free and unsanctioned uses of a work. Take the example of the fair dealing defences in Britain. It has never been suggested that a successful application of those defences does not interfere with the normal exploitation of the claimant’s work. In any event, there are defined criteria which serve to minimise any interferences with the normal exploitation of the work. In the USA, for example, the impact of the infringement on the market for the original work is usually taken into account.47 Moreover, a consideration of the nature of a work means that, sometimes, normal exploitation of privately disclosed and undisclosed works may be preserved. In Britain, although ‘fairness’

42 S Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886–1986 (The Hague, Kluwer, 1987) 482. 43 HC Jehoram, ‘Restrictions on Copyright and Their Abuse’ (2005) 27 European Intellectual Property Review 359. 44 P Samuelson and K Hashimoto, ‘Is the US Fair Use Doctrine Compatible with Berne and TRIPS Obligations?’, https://ssrn.com/abstract=3228052. 45 Copyright Act 1976 § 107. 46 Suntrust v Houghton Mifflin Co, 268 F 3d 1257 (2001); Warner v Wright Books, 953 F 2d 731 (2d Cir 1991). 47 Eg Salinger v Random House, Inc., 811 F 2d 90 (2d Cir 1987).

Fair Use  173 factors are not written into law, they find expression in a number of cases.48 For all practical purposes, an assessment of ‘fairness’ in the context of fair dealing or fair use does not reveal obvious differences of principle or outcome. It is suggested that the claim that a fair use defence would fail to comply with some common law countries’ international obligations does not arise in a meaningful way if step two of Berne’s three-step test is considered. These arguments are also supported by the fact that Australia has consulted on the need to enact a fair use defence in its copyright law.49 As a member of the Berne Convention and TRIPs, it is well aware of the three-step test and its ramifications. The same can be said for the requirement that defences to copyright infringement must not unreasonably prejudice the legitimate interests of authors.50 In my view, this step does not necessarily mean that fair use is inconsistent with the Berne Convention. The statutory scheme in the USA rests, in part, on an assessment of the potential harm posed by unauthorised use of a work to the copyright owners’ interests. That assessment takes the form of a consideration of the impact of the infringement on the market for the original work;51 a requirement which is geared towards protecting authors’ economic interests. In addition, any potential harm to authors’ non-pecuniary interests including privacy, expressive autonomy and personality are anticipated by statutory provisions which require an assessment of the nature of the work in a fair use inquiry.52 Moreover, the words ‘unreasonably prejudice’ in the Berne Convention suggest a balancing process. Domestically, that balancing process can be detected in various cases which have interpreted the fair use defences including Harper & Row v Nation Enterprises and Campbell v Acuff Rose.53 The approach that was adopted in these cases is not any different from British courts’ analysis of ‘fairness’ in the context of the fair dealing defences. Fair dealing is a matter of impression: Hubbard v Vosper.54 Therefore, the claim that a fair use defence is inconsistent with the three-step test is unsound. Australia, which like Britain has extensive fair dealing defences, tried to change course.55 Another argument which has been pressed against adopting a general fair use defence in some common law jurisdictions is that irrespective of the Berne Convention, it might be a recipe for uncertainty.56 That view is also shared by

48 Hubbard v Vosper [1972] 2 QB 84 (CA); Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA). 49 Australian Law Reform Commission, Copyright and the Digital Economy, www.alrc.gov.au/sites/ default/files/pdfs/publications/whole_ip_42_4.pdf. 50 Berne Convention Art 9(2). 51 Sony Corp of America v Universal City Studios, Inc, 464 US 417 (1984). 52 Eg Suntrust v Houghton Mifflin Co, 268 F 3d 1257(2001). 53 Harper & Row v Nation Enterprises, 471 US 539 (1985); Campbell v Acuff-Rose Music, Inc, 510 US 569 (1994). 54 Hubbard v Vosper [1972] 2 QB 84 (CA). 55 Australian Law Reform Commission, Copyright and the Digital Economy, www.alrc.gov.au/sites/ default/files/pdfs/publications/whole_ip_42_4.pdf. 56 HC Jehoram, ‘Restrictions on Copyright and Their Abuse’ (2005) 27 European Intellectual Property Review 359, 362; A Lucas, ‘For a Reasonable Interpretation of the Three-Step Test’ (2010) 32 European Intellectual Property Review 277.

174  Persistent Problems some civil law jurisdictions which consider fair use as an abomination: it provides significant opportunities for unbridled use of a work.57 The basis of that argument is that fair use is simply too capacious to offer a precise means for gauging the kind of activities which might attract that exception.58 Consequently, authors and users might not have advance notice of their entitlements. By way of contrast, the closed list of categories that obtains in Britain, for instance, yields better outcomes because it signposts the kind of activities that are likely to be excused from the purview of copyright infringement. There is a grain of truth in that bleak assessment. Certainly, ‘fair use’ is much wider than ‘fair dealing.’ Ashdown v Telegraph Group Ltd supports that claim. The defendant newspaper’s reliance on fair dealing for the purpose of criticism or review failed because it criticised the conduct of the then Prime Minister rather than the work, its author or the work’s underlying philosophy. Similarly, unauthorised use of the late Duchess of Windsor’s personal correspondence could not qualify as a ‘current event.’59 By the time the case was decided, the abdication crisis was ‘ancient history’. True, precise categories may better protect authors’ rights. According to that view, copyright is a property right. Therefore, any derogations from that right ought to be narrow. Other interests might be considered but the starting point is that exceptions to copyright infringement ought to be narrowly defined and certain. But is fair dealing always more certain than fair use? The claim that fair dealing defences are likely to offer a more certain basis for balancing authors and users interests has several drawbacks. The British experience offers two distinct problems. Firstly, the restrictive nature of the fair dealing defences means that novel circumstances requiring new exceptions might arise. The public interest defence to claims for copyright infringement illustrates that point.60 Owing to a restrictive interpretation of fair dealing defences especially within the context of unpublished works, judges devised a new public interest defence which on some accounts is now enshrined in statute.61 However, as currently formulated, that defence is only available in the narrowest of circumstances.62 The shortcomings of the fair dealing defences can also be detected in judicial innovations in other areas. A purposive interpretation is usually deployed in order to relax the rigidity of a closed list of defences.63 Banal information, for example, has been regarded as a current event.64 In addition, the inadequacies of the fair dealing defences were partially corrected by recent statutory interventions in the areas of parodies, quotations and data mining.65 These initiatives provide

57 ibid. 58 ibid.

59 Associated

Newspapers Group plc v News Group Newspapers Ltd and Ors [1986] RPC 515. v Pressdram [1973] 1 All ER 241. 61 Lion Laboratories v Evans [1984] 2 All ER 417 (CA). 62 BBC Petitioners [2012] SLT 476. 63 Newspaper Licensing Agency v Marks and Spencer [2001] 3 All ER 977. 64 See ch 4 above. 65 CDPA s 29(1)(a). 60 Beloff

Fair Use  175 examples of a haphazard formulation of copyright exceptions. Instead of tinkering with various statutory provisions, a wide-ranging defence might subsume novel situations. Viewed from that prism, fair use is superior to fair dealing because it is both time and technology neutral. Moreover, a certain level of inefficiency resides in the duality of the interpretation of the fair dealing defences. A defendant needs to jump through two hoops in order to escape a claim for copyright infringement. In the first place, the defendant must establish that the contentious use falls within the defined categories. If not, the defence fails.66 Of course, few cases on that point exist presumably because ­defendants might settle in such circumstances.67 In addition, the lack of numerous cases in this area might reflect a purposive interpretation of the permitted acts. A good example of that argument is to be found in Newspaper Licensing Authority v Marks and Spencer.68 Various trivialities constituted ‘current events’. Similarly, a fleeting video recording Diana, Prince of Wales’ last movements in Paris was said to fall within the current events exception.69 The defendant’s case failed on fairness grounds. Nevertheless, certain cases indicate that some unauthorised uses might not be easily subsumed in the existing exceptions. Some fair dealing cases are disposed of at the first stage. HRH Prince of Wales v Associated Newspapers was one such case. The defendant’s use of the journals was not for the purpose of criticism or review, because it took from a work which had not been made available to the public with its author’s consent. Moreover as we observed above, in Associated Newspapers, unauthorised use of the Duchess of Windsor’s personal correspondence was not a current event: by the time the case was decided, the abdication crisis a matter of relative antiquity.70 That limitation might exclude uses of some works in furtherance of other public interests. In such circumstances, a fair use defence offers a better avenue for reconciling authors’ and users’ interests. Another distinct problem pervades fair dealing for the purpose of criticism or review in Britain, for example. The defendant’s criticism or review of the original work must relate to the author, the work itself or its underlying philosophy: Hubbard v Vosper. In the absence of these factors, a defendant cannot avoid a claim for copyright infringement. Ashdown v Telegraph Group Ltd demonstrates that problem.71 The defendant did not criticise the author (Lord Ashdown), the minute itself or the ideas it espoused. Instead, the defendant criticised the then Prime Minister, Tony Blair’s conduct in negotiating a potential coalition with the 66 Times Newspapers Limited and Anor v MGN Limited [1993] EMLR 443 (CA); Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA); HRH The Prince of Wales v Associated Newspapers (No 3) [2007] 3 WLR 222 (CA). 67 Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA); HRH The Prince of Wales v Associated Newspapers (No 3) [2007] 3 WLR 222 (CA). 68 Newspaper Licensing Agency v Marks and Spencer [2001] 3 All ER 977. 69 Hyde Park Residence Ltd v Yelland [2001] Ch 143 (CA). 70 Times Newspapers Limited and Anor v MGN Limited [1993] EMLR 443 (CA). 71 Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA).

176  Persistent Problems leader of one of the opposition parties when he had a sensible majority in the House of Commons. In contrast, fair use encompasses various uses of a work but relies on ‘fairness’ to limit unjustified encroachments into authors’ interests. Once a defendant has proved that a use is embraced by a relevant category, she has to demonstrate that the use was also fair.72 Because there are two steps to a fair dealing inquiry, it is quite difficult for the relevant exceptions to be available. Even if the use invites a consideration of other exceptions, the wells of fair ­dealing would have been sufficiently poisoned by the failure of one defence; a position which is evident in the context of the public interest defence. That prerogative is not available if the fair dealing defences fail.73 Such a convoluted approach to copyright exceptions is likely to discourage legitimate uses of copyright works. In contrast the fair use defence is a single inquiry whose elasticity covers novel situations.74 Any uncertainties that may emerge from a fair use defence might be ameliorated by the availability of statutory factors which ought to be considered by judges. Those factors bring a measure of certainty for both authors and users in the sense that they provide rough guidance on the fairness of a particular use. In the context of unpublished works, the various interests in such material are important but not immune from a fair use defence – they are considered in the light of other factors including freedom of expression. The case for adopting a fair use defence is made stronger by the fact that the British approach to ‘fairness’ is not too different from its US counterpart. In both systems, ‘fairness’ is a matter of impression which relies on a consideration of defined factors.75 In the event that a fair use defence is adopted in Britain, there is no need for a separate public interest defence. A fair use defence can accommodate that exception. Adopting a fair use defence in some common law jurisdictions provides an opportunity for reforming other features of copyright exceptions. For instance, owing to commercial and privacy reasons, photographs are excluded from fair dealing for the purpose of reporting news or current events.76 Yet, as Professor Nimmer observed, such material may best capture an event.77 That point was also emphasised in the first instance judgment in Hyde Park Residence Ltd v Yelland; a case which involved infringement of copyright in unpublished photographic stills of a video recording.78 In our context, excluding photographs from the reporting news or current events defence might preclude unpublished photographs from 72 Eg Pro Sieben Media v Carlton Television [1999] 1 WLR 605; Time Warner Entertainments Co Ltd. v Channel 4 Television Corp. plc (1994) EMLR 1. 73 HRH The Prince of Wales v Associated Newspapers (No.3) [2007] 3 WLR 222 (CA); Hubbard v Vosper [1972] 2 QB 84 (CA); Hyde Park Residence Ltd v Yelland [2001] Ch 143 (CA). 74 P Samuelson and K Hashimoto, ‘Is the U.S. Fair Use Doctrine Compatible with Berne and TRIPS Obligations?’, https://ssrn.com/abstract=3228052. 75 Hubbard v Vosper [1972] 2 QB 84 (CA); Copyright Act 1976 §107, Harper & Row v Nation Enterprises 471 US 539 (1985). 76 CDPA s 30(2). 77 MB Nimmer, ‘Does Copyright Abridge the First Amendment Guarantees of Free Speech and Press?’ (1970) 17 University of California Los Angeles Law Review 1180. 78 Hyde Park Residence Ltd v Yelland [1999] RPC 655.

Fair Use  177 most copyright defences. The criticism or review limb of the fair dealing defences would not apply to unpublished photographs because they would not have been made available to the public with their author’s consent.79 The risk also exists that unpublished photographs may be orphaned quite easily – identifying the age and authorship of some analogue photographs might be difficult. The concept of current events in some common law jurisdictions is also unsettled. Of course, the word ‘current’ naturally limits the reach of that exception. It follows that an event that occurred in the distant past is not capable of being a current one: Associated Newspapers (unauthorised first publication of the ­Duchess of Windsor’s personal correspondence).80 The defendant’s attempt to draw the court’s attention to the relatively recent death of Wallis Simpson and her role in the abdication crisis failed: the letters pertained to events surrounding her affair with a king. As far as unpublished works are concerned, matters are complicated by the fact that the emergence of such material into the public sphere might shed useful light on very distant events. For example, declassified information might change the complexion of previous understandings of controversial political decisions. Nevertheless, such material might not be accommodated within ‘current events’ – they relate to historical events. However, some comfort might be derived from the ‘reporting news’ aspect of the defence. Arguably, new material which illuminates historical events might be newsworthy. Newly discovered unpublished material might bring a fresh context to a historical event. Fair dealing for the purpose of research or private study possesses drawbacks of its own. One such problem is that that exception can only be engaged if the research is conducted by the infringer: Sillitoe v McGraw Hill (facilitating research by third parties).81 An explanation for that limitation might be that those who are minded to facilitate others’ research ought to obtain the relevant licences from the copyright owner. Nevertheless, that restrictive approach makes it cumbersome for universities to facilitate research by their students: licences must be obtained for course packs. Once again, unlike personal researchers’ universities are in a better position to negotiate the relevant collective licences; a feature which can be observed in the context of licensing of photocopying in tertiary institutions.82 Apart from this, commercial research does not fall within the parameters of ‘research or study.’ However, once again, large organisations might negotiate licensed uses of copyright material. Without that restriction, the economic b ­ enefits of copyright ownership would be seriously imperilled. Nevertheless, as far as unpublished works are concerned, that argument loses most of its attractive features. Negotiating licences becomes quite difficult if a work is unpublished. The work might be orphaned. Although some countries now have detailed orphan 79 CDPA s 30(1). 80 Associated Newspapers Group plc v News Group Newspapers Ltd [1986] RPC 515. 81 Sillitoe v McGraw Hill [1983] FSR 545. 82 University of New South Wales v Moorhouse (1975) 133 CLR 1; Princeton University v Michigan Document Servs, 99 F 3d 1381 (6th Cir 1996).

178  Persistent Problems works schemes,83 such provisions do not prioritise commercial research. In any event, the distinction between personal and commercial research is increasingly unsustainable.84 Apart from the issue of self-actualisation which seems to inform aspects of personal research, in general, both types of research are centred on advancing knowledge. Matters have improved, however, with the advent of a new data mining exception in the CDPA which allows aggregation of data from various sources.85

Purposive Interpretation Even if a fair use defence is adopted in various common law jurisdictions, an important issue remains open. The interpretation of that exception in the USA has been quite controversial, especially in relation to copyright in unpublished works. Harper & Row v Nation Enterprises represents the highest watermark of that point. The Supreme Court’s judgment seemed to prefer authors’ economic interests at the expense of other fundamental freedoms. Subsequent cases including Salinger v Random House and New Era v Henry Holt took matters much further and interpreted Harper & Row v Nation Enterprises as suggesting that fair use might not apply to unpublished works.86 Following significant academic criticism and extensive lobbying by publishers,87 Congress intervened and explicitly stated that unpublished works were appropriate subjects of the fair use defence. For our purposes, the inevitable conclusion which arises from that experience is that merely transplanting a defence from one jurisdiction to another might not improve the situation at all. Real change can only materialise if exceptions to ­copyright infringement are interpreted purposively. In my view, the American cases on the fairness of using unpublished works are not radically dissimilar from experiences elsewhere. On the face of it, as far as ‘fairness’ is concerned, there are no appreciable differences between the ­British and American approaches to copyright exceptions. Courts have tended to find against the fairness of unauthorised uses of unpublished works. Several ­British examples immediately spring to mind. In British Oxygen v Liquid Air Ltd,88 Hubbard v Vosper89 and Beloff v Pressdram,90 it was suggested that dealing with an ­unpublished work can only be fair if the work was circulated widely with its 83 Directive 2012/28/EU of the European Parliament and of the Council of 25 October 2012 on certain permitted uses of orphan works OJ l299/5 27.10.2012. 84 The Royal Society, Keeping Science Open, https://royalsociety.org/-/media/Royal_Society_Content/ policy/publications/2003/9845.pdf. 85 CDPA s 29(1)(a). 86 Harper & Row v Nation Enterprises 471 US 539 (1985). 87 See ch 4 above. 88 Lion Laboratories v Evans [1984] 2 All ER 417 (CA). 89 Hubbard v Vosper [1972] 2 QB 84 (CA). 90 Beloff v Pressdram [1973] 1 All ER 241.

Purposive Interpretation  179 author’s permission – a position which obtained several decades later in Hyde Park Residence Ltd v Yelland.91 A similar line of reasoning was evident in HRH Prince of Wales v Associated Newspapers92 and Ashdown v Telegraph Group Ltd.93 Of course, there have been notable departures from that state of affairs, including BBC ­Petitioners and Lion Laboratories v Evans but, on the whole, exceptions to copyright in unpublished works are construed narrowly. In fact, judges fashioned a public interest defence to claims for copyright infringement because fair dealing defences were interpreted quite restrictively.94 Given these similarities, can anything be done in order to achieve a sensible balance between authors and users’ interests? Although a fair use defence might expand the purposes of dealing with a work, the most obvious answer to that ­question does not lie in simply adopting new exceptions. Real change is only possible if new and existing defences are interpreted purposively. ‘Purposive ­interpretation’ itself takes its universally accepted meaning, namely that courts ought to identify and address the mischief which lies at the heart of statutory provisions.95 The essential features of a purposive interpretation of copyright exceptions can briefly be articulated. In the main, courts ought to identify the interests that are implicated by infringement of copyright in a specific work. Where multiple interests collide, courts ought to weigh various competing considerations and, depending on the factual circumstances, prioritise certain interests over others. An obvious objection to a purposive interpretation of copyright exceptions is that it might be a charter for uncertainty. Various prejudices can be disguised as purposive interpretation. However, as we have already noted, the charge of uncertainty is generally unsound. Courts rely on defined statutory or common law criteria when applying copyright defences to the facts of individual cases. Apart from this, invaluable lessons can be learnt from the evaluation of other copyright concepts including the idea/expression dichotomy, originality and substantial infringement. There is no decisive test for determining the application of these concepts to the facts of specific cases. Whether a particular exception or concept attaches to an unauthorised use is a matter of impression. The essence of that argument is that interpretation of statutes is usually fact sensitive. In any event, the purposive interpretation of copyright exceptions that is advanced here finds expression in the leading British cases. In Hubbard v Vosper, the Court of Appeal reconciled the authorial interests in privately disclosed works with the public interest in disclosing the ‘dangerous quackeries’ of Scientology. In addition, the extrajudicial punishments that were revealed in Hubbard v Vosper, mandated unauthorised disclosure of Ron Hubbard’s works. Another relevant case is BBC Petitioners.96 Any privacy interests in the photographs in that case

91 Hyde

Park Residence Ltd v Yelland [2001] Ch 143 (CA). The Prince of Wales v Associated Newspapers (No 3) [2007] 3 WLR 222 (CA). 93 Ashdown v Telegraph Group Ltd [2002] Ch 149 (CA). 94 Beloff v Pressdram [1973] 1 All ER 241; Lion Laboratories v Evans [1984] 2 All ER 417 (CA). 95 A Barak, Purposive Interpretation in Law (Princeton NJ: Princeton University Press, 2007). 96 BBC Petitioners [2012] SLT 476. 92 HRH

180  Persistent Problems were outweighed by the importance of accurate reporting of judicial proceedings. Lion Laboratories v Evans is another relevant case – the interests of justice prevailed over unauthorised disclosure of confidential information. Service Corporation supplies another instance of that approach. A funeral parlour’s despicable ­treatment of the deceased warranted unauthorised disclosure of a video recording that particular misconduct.97 A purposive interpretation of copyright defences can also be witnessed in Distillers v Times Newspaper. Although unauthorised disclosure of the documents in that case shed light on the side-effects of thalidomide, the court premised its argument on the duty of candour which often pervades disclosure of documents in civil litigation. Relaxing the duty of candour might have impeded full disclosure of documents thereby reducing the quality of the evidence before the court. In any case, the interests of open justice would have warranted eventual disclosure of the contents of the documents. Equally, the courts considered the links between privacy and freedom of expression interests in HRH Prince of Wales v Associated Newspapers. Why should there be any change if judges already interpret copyright exceptions purposively? In my view, although a balancing process is envisaged by the fact that fair dealing is a matter of impression, the relevant cases have not been informed by the clearest articulation of the interests that pervade unpublished works. Take the example of unpublished works that are owned by the government: R v Lorimer,98 AG v Shayler,99 AG v Guardian,100 and Commonwealth of Australia v Fairfax.101 The interests that were being preserved in these cases revolved around official secrecy and preventing disclosures of embarrassing information. Those interests unduly interfered with freedom of expression. In any case, the works at stake invited protection by other means including breach of confidence. Where applicable, a proper assessment of the interests in these cases ought to have resulted in the success of the defendants’ fair dealing defences. Other examples support the claim that purposive interpretation might yield better outcomes. Let us take the instance of ‘undisclosed’ diaries detailing their authors’ private life. A finding that their unauthorised use is unfair is likely to be arrived at if such works were to present themselves before the courts for adjudication. However, if the diary was a political one, then its use might be fair – freedom of expression becomes acutely relevant in such circumstances. The focus of the inquiry is not confined to the nature of the work per se (an undisclosed diary) but the interests that are possessed by the work. Each case ought to depend on the strength of the interests it exposes. Because unpublished works occupy a wide spectrum of interests, each case ought to depend on its merits.

97 Service

Corporation International plc & Anor v Channel Four Television & Anor [1999] EMLR 83. v Lorimer (1984) 77 CPR (2d) 262 (Canada). 99 R v Shayler [2003] 1 AC 247 (HL). 100 A-G v Guardian Newspapers Ltd (No 2) [1990] 1 AC 109 (HL). 101 Commonwealth of Australia v John Fairfax & Sons Ltd (1980) 147 CLR 39. 98 R

Purposive Interpretation  181 Even where a work is privately disclosed and significant privacy interests are at stake, a purposive interpretation of copyright exceptions might sometimes require freedom of expression to prevail. An example in which an appropriate balancing of privacy and freedom of expression might have achieved different results in the context of copyright infringement is Hyde Park Residence Ltd v Yelland.102 The claimant’s privacy interests were tenuous at best. The video recording on which the photographic stills in that case were based pertained to the entrance into the house, instead of significant events in the house itself. Besides, although the company was the vehicle through which an individual owned a private residence, as a company, the claimant’s privacy interests were exceptionally weak. Moreover, freedom of expression ought to have prevailed in that case because the claimant was not truthful. HRH Prince of Wales v Associated Newspapers is another difficult case. The courts appear to have been engaged in a balancing process when arriving at the conclusion that unauthorised first publication of private journals interfered with the Prince of Wales’ privacy and constituted copyright infringement. In my view, a different outcome ought to have been achieved in that case. The work demonstrated the claimant’s political interventions contrary to his role. It was essential for the public to know whether the claimant would be meddlesome if he succeeded to the throne. More fundamentally, the details that were recorded in the work were merely embarrassing to the claimant in so far as they put him in an awkward political or diplomatic position – they did not reveal any significant aspects of his personal life. Other cases might not have achieved any different outcomes. One such case is Beloff v Pressdram. There, users’ right to freedom of expression was largely weak because the work was intended for first publication at a suitable time. The other case is Ashdown v Telegraph Group Ltd – the work was due for first publication; an argument which had greater force in Harper Row v Nation Enterprises. Any restrictions on users’ interests were confined to the timing of authorised first publication. Thus, where first publication is intended, and the work is on the brink of disclosure, authors’ interests seem to be stronger than users’ rights. What the courts are simply doing is balancing the parties’ interests. Because the facts of individual cases often differ materially, drawing a bright line which is universally applicable to all situations poses insuperable difficulties. In conclusion on this part, the time has come for a general fair use defence to be enacted in various common law countries. The international impediments for that course of action are surmountable. As for certainty, that argument can be turned on its head. Exceptions that rely on a rigid insistence that a particular use should be consigned to a particular silo present users with two difficulties. Firstly, the use may not correspond to the silo in which it has been allocated. Secondly, fairness still looms large in a fair dealing inquiry. Besides, fair use is sufficiently wide to accommodate other interests.

102 Hyde

Park Residence Ltd v Yelland [2001] Ch 143 (CA).

182  Persistent Problems

The Term of Copyright in Old Unpublished Works The term of protection for old unpublished works is a particularly controversial feature of copyright law. Normally, copyright in these works should have been extinguished decades if not centuries ago. Two interrelated consequences are generated by copyright in old unpublished works. Firstly, valuable works are not injected into the public domain expeditiously. The other issue pertains to the intensification of the intricacies of identifying and tracing authors or owners of old unpublished works – a task of Sisyphean proportions which curtails exploitation and conservation of intellectual productions. In this part, I will explore the case for reforming copyright in old unpublished works in the light of the justifications we discussed earlier. In terms of ‘labour’, invaluable unpublished works may be wasted by their inefficient exploitation or preservation. The ‘enough and as good’ proviso is also engaged if resources which could form the basis of new works perish or lie unutilised. This is especially so in connection with oral works which are not reduced into a digital form. Left in their original format, such works may be rendered obsolete and inaccessible. The task of conserving such material for future generations is now urgent given the pace of technological innovation. True, copyright in old unpublished works does not always generate ‘waste’. Take the example of Vaughan Williams’ estate, which sometimes benefits from the operation of the 2039 rule.103 The works do not pose any orphan works problems – the author is identifiable, and uses of the music are licensed. However, for the most part, the challenges that are associated with using old unpublished works suggest that their protection ought to be abolished. There are several potential objections to the abolition of copyright in old unpublished works in the context of both the ‘waste’ and the ‘enough and as good’ provisos. Various countries have introduced provisions on orphan works.104 Such provisions make it possible for any work to be utilised. However, the new orphan works provisions are inherently limited by the requirement that a diligent search ought to be performed before a work can be used. The danger therefore exists that considerable resources might be expended on diligent searches. Abolishing ­copyright in old works might minimise the need for such searches. Theoretically, privacy interests might reside in old unpublished works. This is especially so in connection with deposited materials. Letters and diaries might for instance possess details about deceased authors’ private life – a point which was raised in connection with the British Government’s consultation on the

103 Government response to the consultation on reducing the duration of copyright in certain unpublished works, https://assets.publishing.service.gov.uk/government/uploads/system/uploads/ attachment_data/file/399171/973_-_Governement_Response_-_copyright_in_certain_unpublished_ works.pdf at 4. 104 See ch 4 above.

The Term of Copyright in Old Unpublished Works  183 termination of the 2039 rule.105 However, unauthorised first publication of an old unpublished work might not engage authors’ privacy at all. Most certainly, there are no privacy interests in medieval manuscripts or sound recordings that benefit from the term of copyright in old unpublished works. Moreover, owing to the passage of time, the privacy rights of others become less pertinent. The older the work, the more tenuous any privacy interests become. Because of the duration of protection for old unpublished works, the persuasiveness of privacy as a barrier to truncating the term of copyright protection is remarkably faint. A related point involves confidentiality. In various responses to the British Government’s consultation on curtailing the duration of copyright in old unpublished works, it was pointed out that such a course of action might interfere with obligations to maintain confidences.106 Nevertheless, the obligation to maintain confidences ought to terminate at the parties’ death. That argument becomes stark if the fact that some medieval manuscripts are protected is considered. In such circumstances, there is no longer a relationship of confidence which might require indirect protection via a long period of copyright protection. Besides, both the arguments based on privacy and confidence assume that old unpublished works possess confidential information. In any event, by curtailing the duration of perpetual copyright in old unpublished works, various legislatures concluded that the interests that inhere in such materials could be compromised. In some instances, privacy can be abandoned; a proposition which is supported by California v Greenwood.107 In our context, authors may abandon their privacy by depositing their works in publicly accessible archives without significant restrictions on their use. More controversially, it may be suggested that orphan works might be perceived as evidence of an abandonment of one’s privacy. The fact that authors cannot be identified or traced might point to the conclusion that they were not sufficiently interested in securing their privacy. However, much depends on the terms of deposit schemes. If such terms require confidences or privacy to be maintained for a defined period then such restrictions ought to be honoured. Otherwise, valuable material might not be deposited. Nevertheless, in the absence of the terms of a deposit contract, privacy may be abandoned. Such an abandonment might take the form of failure to enforce rights. The conclusion, which can be drawn from the discussion above, is that there are no serious privacy interests which impede the abolition of copyright in old unpublished works. For the most part, any such interests would have faded into obscurity and, in any event, they are most relevant to works which were created relatively recently. Moreover, because such works may be in accessible archives, they no longer possess significant privacy interests. A similar conclusion may be made in connection with old unpublished works which are the subject of 105 Government response to the consultation on reducing the duration of copyright in certain ­unpublished works above, p 7. 106 ibid. 107 California v Greenwood, 486 US 35 (1988).

184  Persistent Problems supplementary regimes including the publication right – they do not raise any privacy issues. The information in such works is disseminated to the public. These ­arguments can be fortified by the fact that various copyright laws already contemplate that subject to the performance of a diligent search, orphan works can be exploited. Such ­provisions override authors’ privacy. Of course, privacy becomes important if authors resurface and enforce their rights. The economic argument for protecting intellectual property supports the ­proposition that the term of protection for old unpublished works should be ­truncated if these works are to be preserved. As we noted in chapter 1 above, digitising works which are contained in obsolete and inaccessible formats without their authors’ consent might constitute copyright infringement. The work is adapted from one medium to another and is also copied. Given the problems with orphan works, obtaining permission for digitisation of old works is likely to be difficult. That point is strengthened by the possibility that apart from making the work available to a wider public, mass digitisation preserves soft copies of a work in the event of a catastrophe. Various archives have perished owing to warfare or poor fire management practices.108 Abandonment also looms large in the context of the economic justifications for abolishing copyright in old unpublished works. As a rule, property ought to be utilised in some way. The law responds to unproductive uses of property by providing rules on adverse possession.109 Equally, where moveable property is not claimed by its owner, it becomes bona vacantia and vests in a designated public authority.110 For our purposes, old unpublished works which lie unexploited or unpreserved because they are orphaned are ‘abandoned’. Such abandonment may be corrected by discharging the works into the public domain – a possibility which is realised in part by the fact that orphan works schemes facilitate exploitation of copyright works.111 Given that copyright law already promotes uses of ‘abandoned’ works, it is possible to deal with the problem of abandonment even more widely by abolishing copyright in old unpublished works. The economic case for abolishing copyright in old unpublished works is strengthened by the challenges of clearing rights in orphan works. It is also cheaper and efficient for cultural bodies to provide accessible digital copies of old ­unpublished works. The cost of copying and posting material for users may be reduced significantly. Other efficiencies may be gained from adopting a uniform term for most works. The current regime which is complemented by particularly complex savings provisions generates serious problems. It is cumbersome to calculate the duration of protection in some works. These complications may 108 See www.museumsassociation.org/museums-journal/news/13092018-picture-emerges-brazilmuseum-fire. 109 TJ Miceli and CF Sirmans, ‘An economic theory of adverse possession’ (1995) 15 International Review of Law and Economics 161. 110 JB Prewitt, ‘Unclaimed Property – A Potential Source of Non-Tax Revenue’ (1980) 45 Missouri Law Review 493. 111 See ch 4 above.

The Term of Copyright in Old Unpublished Works  185 present a formidable barrier to exploitation of unpublished works. Images pose particular problems because they may not be signed – a feature which makes identifying authorship, and in turn, the duration of copyright in a work problematical. The solution in these circumstances is that, barring works that are the subject of supplementary rights, there ought to be uniform provisions for the duration of copyright in most works. Otherwise, considerable resources might be expended on clearing rights. The personality justification for protecting intellectual productions takes a different complexion in the context of the term of protection for old unpublished works. Gradually, ‘personality’ ceases to focus entirely on the author or even copyright. Instead, protection of some works is framed in terms of conserving cultural patrimony. Such conservation might require digitisation of old unpublished works – a process which might exist in the shadow of the risk of copyright infringement. The term of protection for old unpublished works might have to be reduced if works imbued with their authors’ personality are to be preserved – an argument which is especially relevant to old unpublished manuscripts, artistic works and early audio materials which are stored in inaccessible formats. In addition, original works might escape serious damage occasioned by numerous instances of user access to them. Uses that are detrimental to authors’ personality would then be controlled via cultural heritage laws. Works that are deposited in public institutions attract a similar line of reasoning. By depositing such works, authors would have contemplated their eventual dissemination. Abolishing copyright in old unpublished works might further enhance the opportunities for public distribution of such works via reproduction in different or useable media including digitisation. In our context, authors’ personality would be propagated widely through accessible media; a possibility that is currently limited by the problems that are often associated with orphan works. Apart from this, cultural heritage institutions and users might wish to publish old unpublished works if no copyright in them subsists. Another reason why copyright in old unpublished works ought to be abolished is that such works might be useful for developing users’ personality. Take works in publicly accessible archives for example. Respecting long deceased authors’ personality interests in such material might hinder reproduction of such works in order to situate any discussions on the attributes of such works in the most appropriate context. Moreover, works of unknown or pseudonymous authorship pose challenges to the existing orphan works regimes – users may not be able to identify or trace their authors. In these situations, curtailing the term of copyright in old unpublished works potentially ameliorates the difficulties users might have when attempting to advance their own personality by relying on existing material. It is also entirely possible for authors to abandon their personality by failing to exercise their rights. By extension, that argument can also cover authors’ successors in title: failing to police exploitation of copyright works might be said to correspond to abandonment of a work. Moreover, authors might abandon their rights expressly by allowing cultural institutions and others to use their works as they

186  Persistent Problems please after certain conditions have been met. In the event that such conditions are met, the work can be used freely. A problem with that argument, however, is that some old unpublished works might not suitably be characterised as abandoned property. They are licensed by their owners.112 In other instances, authors might leave clear instructions on uses of their works when depositing them in public institutions. Expressive autonomy does not suggest that the term of copyright in old unpublished works should be retained. The first reason why expressive autonomy has to be relaxed within the context of old unpublished works is that such material might be deposited in cultural heritage institutions and be widely circulated. It is therefore possible for the work to be a cipher for a range of meanings. Moreover, the availability of the publication right in Britain, attests to the fact that after a considerable passage of time, an author’s expressive autonomy and other interests might be displaced by supervening factors including the importance of making an important unpublished work widely available. So far, it has been argued that copyright in old unpublished works ought to be abolished if a work is a cipher for a range of meanings and if it interferes with users’ expressive autonomy. Should the term of protection for these works be retained if it does not have these consequences? The answer to that question is that distinguishing works that are ciphers or interfere with their authors’ expressive autonomy from other material is likely to be laborious. That particular problem might worsen problems with orphan works. Users would have to trace authors and determine whether the work has the potential to yield to other factors. It is therefore necessary for there to be a uniform term of protection for all unpublished works. From a desert perspective, copyright in old unpublished works should also be abolished. Let us take the desert claim based on a work’s excellence, for instance. Cultural bodies ought to increase the opportunities for disseminating excellent works by preserving or publishing them: tasks which are rendered difficult by the orphan works problem. With respect to the social utility argument, valuable material might not be used in full because of the complexities of the term of copyright in old unpublished works. Museums for example, might not be able to digitise and distribute their collections to a global audience. Similarly, with time, authors’ needs might dissipate. There is no ‘need’ to control first publication of medieval manuscripts for example. In any case, cultural heritage institutions can always respect authors’ needs by observing the contractual restrictions that are imposed on archival deposits, for example. In other circumstances, the fact that an author cannot be identified or traced with a sufficient degree of particularity might mean that authors’ needs are irrelevant.

112 E Hudson and R Burrell, ‘Abandonment, Copyright and Orphaned Works: What Does it Mean to Take The Proprietary Nature of Intellectual Property Rights Seriously?’ (2011) 35 Melbourne University Law Review 971.

The Term of Copyright in Old Unpublished Works  187 Although there is a compelling case for modifying the term of protection for old unpublished works, the outstanding question is how such changes should be effected. Several possibilities jostle for attention. Firstly, a blanket abolition of copyright in such works could be put in place. However, that course of action might interfere with vested property rights. This is especially so if supplementary rights in old unpublished works have been granted. In Britain, for example, the publication right is being utilised in order to incentivise first publication of previously unpublished works. A consequence of that argument is that copyright in a work that is made available to the public via the publication right might have to be retained. The same cannot be said for old unpublished works which remain unpublished. Abolition of copyright in old unpublished works might also amount to confiscation of authors’ property. The gravamen of that argument is that if publishers invest considerable resources in publishing previously unpublished works, the property rights they acquire from such initiatives ought to be respected. In other words, publishers’ economic interests may be confiscated via a reduction of the term of protection.113 In my view, the risk of confiscation of vested rights can be reduced by having a graduated procedure on abolition of copyright in old unpublished works. Firstly, all works which currently benefit from auxiliary rights should continue to benefit from the current term of protection. It is sometimes claimed that abolishing the term of protection for old unpublished works might discourage their dissemination.114 The gist of that claim is that publishers cannot invest in publishing old unpublished works in the absence of the benefit of a generous copyright term. However, assuming that copyright in old unpublished works is abolished, cultural heritage institutions can digitise their collections thereby enhancing public access to such works. Besides, cultural heritage institutions might publish what they consider the most valuable works. Viewed in that light, the issue of disincentives is likely to be a case of special pleading. The other point is that mere digitisation of a work, for example, might widen its audience, an outcome which is not necessarily achieved by the publication right. In any case, the fact that numerous works remain unexploited testifies to the fact that any incentives arising from the length of protection for some unpublished works are not being used efficiently. It has also been suggested that abolishing the British saving provisions for old unpublished works might encourage publication of substandard works. The basis of that claim is that publishers might rush into publishing old unpublished material in order to benefit from the publication right.115 However, the incentive to publish prematurely can be addressed via an abolition of the publication right for works which do not currently benefit from that provision. Moreover, the risk of 113 Government response to the consultation on reducing the duration of copyright in certain ­unpublished works above at 7. 114 ibid. 115 Copyright and Related Rights Regulations 1996 (SI 1996/2967).

188  Persistent Problems premature and low quality first publication might be minimised if cultural heritage institutions publish high-resolution digital copies of their holdings. Another argument that is marshalled against abolishing copyright in old unpublished works is that it might interfere with the interests of some deceased estates. That point was raised by Vaughan Williams’ representatives in connection with some of his unpublished musical works.116 The suggestion was that an absence of copyright in old unpublished works would prejudice the estate financially. However, a line has to be drawn somewhere, if reforms are to be implemented. Otherwise, the risk that nothing can ever change because of potential harm to others’ interests exists. Unless the publication right has vested, there should be no special rule for old unpublished works that are exploited by their owners without being published. In conclusion on this point, the reduction in term for old unpublished works should be for all works including films and photographs.117 In fact, clearing the rights in the latter works is usually cumbersome and expensive. Yet, unlike the written record, films and copyright might require more conservation.118 It might be suggested that the same reasoning should apply to old works that are being prepared for first publication – in the end, the goal is to promote further dissemination of the work. Nevertheless, protecting such works may require users to distinguish works that are destined for first publication from those that are not. In addition, publishers might ring fence valuable material by simply suggesting that they intend to publish it in the future. That risk is intensified by the fact that in Britain, the term of protection for copyright in old unpublished works is ending. Publishing a work at the cusp of the end of that term would produce a term of protection for another 25 years. Such distortions ought to be eliminated by abolishing the 2039 rule in respect of works which currently do not benefit from the publication right. Apart from works that already benefit from the publication right, all other works exist in the shadow of legislative intervention. Another objection is that given that 2039 and 2067 are not in the too distant future, any legislative initiatives in this area are largely unnecessary. The works will enter the public domain without any further legislative intervention. However, technological advances might mean that in some cases, the works cannot be accessed. Besides, users might require immediate and free access to a work.

116 Intellectual Property Office, ‘Government response to the consultation on reducing the duration of copyright in certain unpublished works’, https://assets.publishing.service.gov.uk/government/ uploads/system/uploads/attachment_data/file/399171/973_-_Governement_Response_-_copyright_ in_certain_unpublished_works.pdf at 4. 117 Intellectual Property Office, ‘Government response to the consultation on reducing the duration of copyright in certain unpublished works’, https://assets.publishing.service.gov.uk/government/ uploads/system/uploads/attachment_data/file/399171/973_-_Governement_Response_-_copyright_ in_certain_unpublished_works.pdf. 118 See HM Treasury, Gowers Review of Intellectual Property above at 69.

The Term of Copyright in Old Unpublished Works  189 In addition, there is a real risk that the 2039 rule might, for instance, be extended by an acquisition of the publication right before 2039. Another criticism is that it might be difficult to distinguish old unpublished works from more recent orphan works. However, users may rely on the ­materials that are used for creating the work in order to date it. In other cases, dating a work can be made easy because of other evidence and the contexts in which a work exists. For example, letters and diaries are usually dated. There is therefore a case for abolishing copyright in old unpublished works on the basis of the waste and enough and as good provisos. If such protection were to be abolished, users cannot be deprived of free access to old unpolished works via supplementary regimes including the publication right. In Britain, that argument is made stronger by the fact that the remainder of copyright in old unpublished works is now shorter than the duration of protection that arises from the publication right. For that reason, it is not advisable for new publication rights to be created after the abolition of copyright in old unpublished works. Otherwise, the effect of the publication right in these circumstances would be equivalent in principle to extending the 2039 rule. The policy reasons for curtailing copyright in old unpublished works would be frustrated.

7 Taking Stock Copyright in unpublished works is a by-product of numerous historical and ­technological contingencies. Foremost among these was the formal distinction in the protection that was available to published and unpublished works. Protection of published works was predicated on the observance of various peremptory statutory formalities including registration, notice and deposit. Non-compliance with these formalities deprived a work of common law and statutory copyright. The work was forfeited to the public domain and it could be used freely. The law responded to that risk in two distinct ways. Firstly, judges devised discrete meanings of ‘publication’ which were radically removed from o ­ rdinary usages of that term. The second approach involved cumulation of rights in unpublished works. Breach of confidence and implied contract became the principal means by which common law or statutory copyright could be supplemented. Although, the various meanings of ‘publication’ served their purposes with ­varying degrees of success, they were not jettisoned when common law and statutory copyright were harmonised. In fact, late abolition of copyright formalities in the US has meant that the concept of ‘publication’ continues to be redolent with uncertainties1 and the common law retains an important residual role when ­determining the existence of copyright in older works. Although the meanings of ‘publication’ have lain undisturbed for centuries, distinguishing ‘published’ from ‘unpublished’ works is now increasingly d ­ ifficult. Modern technologies which anticipate digital dissemination of intellectual productions have taken centre-stage. That state of affairs is not helped by the likelihood that unpublished works may shift from being ‘undisclosed’, to ‘privately disclosed’ or ‘published’ quite readily. In addition, the dividing line between ‘publicly disclosed’ and ‘published’ works remains an insecure basis for allocating rights. Essentially, a ‘publicly disclosed work’ is published. Given the intricacies of publication, creating sensible rules governing copyright in unpublished works often gives rise to serious technicalities. What should be done in order to mitigate the vagaries of ‘publication’? Should the law stay the same? It is argued that various proposals can be substantiated by the discussion in this book. In the first instance, it is perfectly acceptable for ‘publication’ to be left alone. After all, the meanings of that concept have been the subject of careful rumination for many years and in numerous cases. In the event of serious anomalies, the common law remains a flexible tool for tinkering with the outer

1 The

Berne Convention Implementation Act 1988.

Taking Stock  191 reaches of ‘publication’. That flexibility is quite important considering the pace of technological innovation which exerts considerable pressure on the conventional means for creating and disseminating intellectual productions. Another, more potent, argument in favour of retaining the status quo is that copyright owners have settled their affairs in the shadow of the accepted meanings of ‘publication’. Disturbing those meanings might be productive of uncertainty; the very problem any new definitions of ‘publication’ are supposed to solve. That point has considerable merit. ‘Publication’ in its various forms finds expression in international instruments including the Berne Convention. It is one of the organising principles of copyright law, especially in relation to the term of ­protection.2 Therefore, any reforms in this area might require international agreement; a wholly remote possibility, considering the fact that the Berne Convention has not been revised in decades. However, significant changes are also desirable if publication’s impact on the term of copyright protection is considered. Presently, some countries still follow the minimum term that is prescribed by the Berne Convention.3 However, the Berne Convention’s provisions on copyright duration have been overtaken by events. A race to the bottom has occurred. The European Union increased and standardised the posthumous element of copyright protection.4 Inexorably, other jurisdictions followed Europe’s example, with the result that most works are now protected for the life of their author plus 70 years.5 In addition, the clear water between the protection that was available to authorial and neighbouring rights has been muddied. Films and sound recordings have benefited from extended ­copyright terms.6 Consequently, the need for a revised international instrument governing all aspects of copyright protection including the meaning of ‘publication’ remains. In this author’s view, there ought to be further international agreement on the term of copyright protection if the identification of the country of origin of a work is to be an achievable task. That issue is most taxing in the context of publication on the Internet, which renders establishing the country of origin of digital works nearly hopeless. Assuming that the term of copyright is harmonised, the pedantic exercises concerning ascertaining the country of origin of a particular work would lose their lustre. All countries would protect the same subject matter for the same time. Moreover, given that the reach of the Berne Convention is nearly universal, reforming the minimum term of protection would eliminate the probability that a work might be in copyright in one country, but in the public domain in another.7 Unifying the minimum copyright term might also dissipate problems with orphan works. The gist of that proposition is that if the copyright term is 2 See ch 4 above. 3 Berne Convention Art 7(1). 4 Council Directive 93/98/EEC of 29 October 1993 harmonising the term of protection of copyright and certain related rights L290, 1993-11-24, pp 9–13. 5 Eg The Copyright Term Extension Act 1998; Eldred v Ashcroft 537 US 186 (2003). 6 ibid. 7 Capitol Records Inc v Naxos of America 830 NE 2d 250 (NY, 2005).

192  Taking Stock s­ tandardised, in the future, it may be easy to establish whether a work is still in copyright. Undeniably, that argument can only work if savings clauses which secure rights in old unpublished works are also abolished. However, vested interests are likely to raise the objection that abolishing the term of p ­ rotection for old unpublished works might be equivalent in principle to confiscating another’s property.8 Nevertheless, the truth is that orphan works may ­constitute abandoned property.9 As highlighted in Chapter 6 above, a copyright owner who fails to assert her rights might be said to have abandoned her rights. In any case, the special protection that is accorded to unpublished works is a result of historical distinctions, which have now been eclipsed by the gradual internationalisation of copyright protection and the abandonment of formalities. An argument against increasing the Berne Convention’s minimum term is that it may be used as a springboard for extending copyright duration much further. If that possibility were to materialise, the ideal that, eventually, a work should belong to the public domain might never be realised. That risk is not altogether fanciful if previous experiences are considered. After European Union countries harmonised the term of protection upwards, a global response to that event ensued.10 ­Relatively recently, despite the existence of compelling evidence to the contrary,11 the term of copyright in sound recordings was increased;12 a development which was ­implemented elsewhere.13 For users, two evils circle perilously close for comfort. Should standardised terms which lengthen copyright protection but eliminate future orphan works problems be the norm? Or should the present regimes which might give rise to orphan works but eject copyright works into the public domain much earlier be tolerated? There is no clear answer to that dilemma. The other reality is that ‘publication’ is no longer localised. Global dissemination of intellectual productions requires solutions of an international character. These solutions ought to be geared towards efficient uses of copyright works. Of course, whether there is any international appetite for reviewing copyright law is another matter. Developing countries are unlikely to countenance any increases in the minimum copyright term. After all, as net consumers of intellectual productions, they stand to benefit from shorter copyright terms. Copyright works are discharged into the public domain earlier and useful works may be used in such 8 Intellectual Property Office, ‘Government response to the consultation on reducing the duration of copyright in certain unpublished works’, https://assets.publishing.service.gov.uk/government/ uploads/system/uploads/attachment_data/file/399171/973_-_Governement_Response_-_copyright_ in_certain_unpublished_works.pdf at 2. 9 E Hudson and R Burrell, ‘Abandonment, Copyright and Orphaned Works: What Does it Mean to Take The Proprietary Nature of Intellectual Property Rights Seriously?’ (2011) 35 Melbourne University Law Review 971. 10 Eg The Copyright Term Extension Act 1998. 11 See CIPIL, Review of the Economic Evidence Relating to an Extension of Copyright in Sound Recordings, www.cipil.law.cam.ac.uk/sites/www.law.cam.ac.uk/files/images/www.cipil.law.cam.ac.uk/ legacy/File/policy_documents/gowers_cipilreport.pdf. 12 The Copyright Term Extension Act 1998. 13 ibid.

Taking Stock  193 countries freely. Increasing the minimum term in the Berne Convention even slightly is likely to compound the progressive erosion of developing countries’ interests – bilateral treaties which impose additional onerous standards of intellectual property protection on such nations have mushroomed.14 International consensus on the minimum term of copyright protection may, therefore, be unachievable. Domestically, the impact of ‘publication’ on orphan works may be redressed by reforming the term of copyright protection. The British Government recognised that possibility and wisely consulted on the duration of copyright in old unpublished works. The central plank of that initiative was whether old unpublished works should be protected for the life of the author plus 70 years, or for 70 years from the date of their creation.15 The Government’s proposal was fuelled by the orphan works problem and the need to implement the provisions of the Term Directive16 into ­British copyright law comprehensively.17 As observed earlier, the Copyright Act 1911 protected old unpublished works indefinitely18 – a feature which was curtailed by the CDPA following the incorporation of the Term Directive into British copyright law. However, copyright in old unpublished works will continue to subsist until 2039.19 Ultimately, owing to pressure from vested interests, the British Government decided to do nothing.20 That decision represents a missed opportunity. Old unpublished works generate numerous orphan works problems which cannot be fully resolved by reference to diligent searches. Even if diligent searches were productive of useful results, they are costly and may represent an inefficient deployment of time. Had the Government’s proposal been implemented, protection of copyright in old unpublished works would have been terminated, thereby diminishing the contribution of such works to the incidence of orphan works. However, a possible argument in favour of the British Government’s attitude to abolishing copyright in old unpublished works is that there are statutory exceptions which may facilitate unauthorised uses of all copyright works. Users may rely on the fair dealing defences, for example, to exploit orphan works. Nevertheless, a large impediment lies in the path of that argument. Fair dealing defences are only available if unauthorised uses of copyright works are for defined purposes.21 14 See CT Collins-Chase, ‘The Case against TRIPS-Plus Protection in Developing Countries Facing Aids Epidemics’ (2008) University of Pennsylvania Journal of International Law 29, 763. 15 HM Government, Consultation on Copyright, [4.29], above at 23–24. 16 Council Directive 93/98/EEC of 29 October 1993 harmonising the term of protection of copyright and certain related rights OJ L 290/9–13. 17 HM Government, Consultation on Copyright, above at 23–24. 18 See ch 2 above. 19 See ch 3 above. 20 Intellectual Property Office, ‘Government response to the consultation on reducing the duration of copyright in certain unpublished works’, https://assets.publishing.service.gov.uk/government/ uploads/system/uploads/attachment_data/file/399171/973_-_Governement_Response_-_copyright_ in_certain_unpublished_works.pdf at 2. 21 See ch 4 above.

194  Taking Stock The argument that old Elizabethan manuscripts, for example, have been used to report current events, may be staggeringly implausible. The stronger argument is that users may rely on research or study to avoid the requirements of cumbersome diligent searches. However, that avenue only covers personal uses. Commercial research and activities that benefit third parties are actionable.22 For cultural ­heritage i­ nstitutions, the defences are of little assistance to conservation of orphan works. The better approach to the issue of old unpublished works was adopted in Australia23 and Singapore.24 Perpetual copyright in old unpublished works was abolished. Unless they are published just before the effective date of the new ­statutory amendments, the vast majority of old unpublished works in the two countries are likely to be ejected into the public domain. The net effect of these bold legislative manoeuvres is a potential reduction of orphan works. In the event that the status of a work is still unclear, any diligent searches are confined to a manageable body of material. In addressing the term of protection for old unpublished works comprehensively, Australia and Singapore have reverted to one of the original bargains in copyright law – authors’ rights ought to have temporal limits if the public interest in eventual free and unfettered access to the building blocks of culture and creativity is to be safeguarded.25 Apart from the term of protection, the defences to infringement of copyright in unpublished works are often quite inadequate. Authors’ interests are usually superimposed over other countervailing factors. The logic of that approach is easy to establish if the justifications for copyright protection are considered. For centuries, copyright has been justified on the basis that it secures various economic interests. However, the era in which disputes involving copyright in unpublished works were adjudicated on a nearly strict liability basis has passed. Various human rights norms dictate a change of position. Copyright is no longer wholly concerned with authors’ interests. If that argument were to be accepted, effective exceptions which mediate conflicts between authors and users’ interests ought to be available. At present, in common with some common law countries, Britain’s copyright defences are unduly restrictive – they are hamstrung by the need to match a particular use with a specific statutory purpose. What then should be done in these circumstances? One possibility is to widen the fair dealing defences; an approach which has found favour in Australia.26 However, merely expanding the statutory fair dealing purposes might not anticipate future developments. Owing to new methods of exploiting and disseminating 22 Sillitoe v McGraw Hill [1983] FSR 545. 23 Copyright Act 1968 s 33. 24 See www.mlaw.gov.sg/content/minlaw/en/news/press-releases/singapore-copyright-review-report2019.html. 25 Ministry of Law Singapore, Copyright Review Report, www.mlaw.gov.sg/content/dam/minlaw/ corp/News/Press%20Release/Singapore%20Copyright%20Review%20Report%202019/Annex%20 A%20-%20Copyright%20Review%20Report%2016%20Jan%202019.pdf, 15–16. 26 Copyright Act 1968 s 103.

Taking Stock  195 intellectual productions, any new specific defences targeted at certain uses of copyright works are bound to be obsolete. Moreover, a rigid formulation of fair dealing defences is likely to lead to problems at the margins. Whether a specific use meets the dictates of a particular exception is likely to lead to fine distinctions, especially in borderline cases. It has been argued that the same defences ought to be available to infringement of copyright in published and unpublished works. In addition, for the sake of efficiency, a fair use defence ought to be enacted in some countries. However, the latter problem has met with some considerable and longstanding resistance. Australia has consulted on fair use but decided to add to its existing range of fair dealing defences.27 Whether fair use is adopted or not, copyright exceptions ought to be interpreted purposively. Otherwise, cases involving unpublished works will continue to be decided on an unprincipled basis. In the end, a consummate understanding of the justifications for protecting unpublished works by copyright law should inform judicial and policy interventions in this area. Statutes may change and new contingencies may arise, but the rationales that underpin copyright in unpublished works are likely to remain constant. The advantage of purposive interpretation is that it is rooted in addressing specific mischiefs. Articulating the predominant interests that are implicated by the facts of individual cases is likely to generate clearer and more closely reasoned judgments. This book started with a brief exposition of the meanings of ‘publication’ in copyright law. Its central thesis was that ‘publication’ assumes a wide range of meanings because of several historical, factual and technological imperatives. These meanings face relentless pressure from further technological advances which render the fine distinctions between various categories of ‘publication’ increasingly difficult to sustain. Moreover, the core meaning of ‘publication’ itself is susceptible to pressure from digital dissemination of copyright works. The brief question which arises for discussion here is whether the meanings of ‘publication’ should be adjusted with the goal of matching the realities on the ground. In my view, there ought to be a single and overarching meaning of ‘publication’ in copyright law. ‘Publication’ ought to refer to dissemination of a work to the public with its author’s consent. The word ‘dissemination’ is used advisedly. It is technologically neutral in the sense that it anticipates distribution of physical and digital copies of a work. The focus of ‘publication’ ought not be on how a work is disseminated. Instead, the essence of ‘publication’ is whether a work has been distributed to the public in some way with its author or owner’s permission. Consequently, references to making available to the public, commercial publication, colourable publication, public disclosure, communication of a work to the public etc ought to be redundant. These scenarios suggest that the work is published. Therefore, the incidents of first publication should apply in full to works

27 Australian Law Reform Commission, Copyright and the Digital Economy, www.alrc.gov.au/ publications/copyright-report-122.

196  Taking Stock that are disseminated to the public in any form with their authors’ permission. In other circumstances, undisclosed works would remain unpublished. Equally, privately disclosed works would also remain unpublished. The other issue is whether the author’s intention ought to be a determinant of ‘publication’. The short answer to that question is that intention matters but it need not be decisive. When considering whether ‘publication’ has occurred, judges ought to adopt a multifactorial approach which is premised on assessing the totality of the evidence before them. The author’s intention, if capable of being deciphered at all, ought to be a relevant factor. The benefit of a multifactorial approach arises from the length of copyright protection. Given that copyright works can be protected posthumously, establishing a deceased author’s intention might be an exercise in clairvoyance. In the end, a longstanding feature of copyright law is that it must accommodate other interests if it is to be justified. At present, copyright in unpublished works tilts too heavily in favour of securing authors’ interests. Rules which were created for the purpose of addressing incremental problems have crystallised into an unwieldy body of law. However, that body of law now faces serious pressure which can no longer be fully resolved by old ideas. Technology, that capricious friend, which gives with one hand and takes away with the other, requires ­sensible rules which can be deployed easily to novel factual circumstances. Otherwise, some of the troublesome features of copyright in unpublished works might poison the whole.

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INDEX abandonment  184–7 adverse possession  184 bona vacantia  184 orphan works  192 personality theory  142–3, 185–6 term of protection  184, 185–7 abolition of common law protection  8, 60, 62–83 Berne Convention, Berlin Revision of  2, 17, 63–4, 78–80 consequences  80–3 exhibitions  75, 76, 80 fair dealing/fair use defence  81–2, 104–5 first publication  16, 75 formalities  62–4, 69, 72, 76–80 fragmentation of copyright law  71–2, 80 imperial copyright and  17, 63–4, 77–8, 80 international pressures for reform  63–4, 72–3, 76–8 old unpublished works  160, 182, 184–9, 193–4 publication, definition of  61–3, 73–5, 80 statutory and common law protection, interaction between  68–71 term of protection  80–3, 160 adaptations  36, 41, 147, 161 additional bases for protection  1, 7 see breach of confidence; implied contracts not to publish; privacy anonymous and pseudonymous works  2, 97–8, 185 architectural drawings  75, 161 artistic works  53, 67–71 see also Berne Convention for the Protection of Literary and Artistic Works abolition of common law copyright  64, 67–8, 75 Artistic Copyright Bill  73 desert theory  135–6, 170 Engravings Copyright Act 1734  128–9 exhibitions  15, 70, 75 facts  160

Fine Arts Copyright Act 1862  67–8 implied contracts  68–71 orphan works  101–2 publication, definition of  10, 13, 15, 16 registration  67–8, 76 term of protection  81 unauthorised first publication  55–6, 59 attribution  140, 146 Australia crown copyright  96 exceptions/defences  166 fair dealing/fair use defence  82, 159, 173, 194–5 official secrets  110 private disclosure  94 term of protection  96–7, 194 TRIPs  173 authorial property rights  51–8 breach of confidence  57–8 chattels  21, 62 concept  6–7, 20 consent of  24, 41 creativity, encouragement of  33 economic interests  33, 34–5 emergence and development  20 historical background  22–41 human rights  18 implied contracts  49–50 intention  10–11, 31, 46–8, 75, 196 manuscripts  41–6 neighbouring rights  191 patronage  24–5, 33 personality theory  18, 121, 139–45 professionalisation  29–30 publicly disclosed works  135 Statute of Anne  22–30 waste  133 autonomy see expressive autonomy Becker, Lawrence  135–6, 138 Belgium  65–6 Berlin Revision of Berne Convention 1908 abolition of common law copyright  2, 17, 63–4, 78–80

206  Index formalities  17, 76–9 imperial copyright  78, 80 registration  72 term of protection  80–1 Berne Convention for the Protection of Literary and Artistic Works  1 see also Berlin Revision of Berne Convention 1908 colourable publication  10 countries of origin  98 EEA states  98 ephemeral dissemination  14 exceptions/defences  163, 172–4 fair dealing/fair use defence  172–4 first publication  5–6 Internet publication  14, 87–9 national treatment  85–6 public domain  5–6, 192 publication, definition of  10, 14, 85–9, 191–2 term of protection  86–7, 89–90, 98–9, 191–2 three-step test  159–60, 173 best evidence rule  21, 45, 56, 106 bona vacantia  184 Brandeis, Louis  20, 63, 152 breach of confidence  1, 7, 19, 21, 51–5, 62, 69, 190 abolition of common law copyright and  81 artistic works  68, 70 authorial property rights  46–8, 57–8 balancing interests  169 conditional dissemination  47 duration of obligation  183 expressive autonomy  151 first publication  17 historical background  22, 40–1, 46–8, 50, 55–61 idea/expression dichotomy and  48, 93 incentives  125, 127, 129–30 injunctions  48 intention and  46–8 interests of justice  180 manuscripts  41–2, 45 personal correspondence  46–7 personality theory  139, 141 privacy  157, 183 private disclosure  137, 139 public interest  127, 164 publication, definition of  110–11, 116 publicly disclosed works  141–2

remedies  119 unauthorised first publication  22, 40–1, 46–8, 50, 55–61 undisclosed works  132, 134, 139 breach of contract  40–3, 55–6 breach of trust  21, 22, 44–5, 49, 51, 53, 62, 81 Buxton, Sydney  79–80 Canada, official secrets in  110 candour, duty of  106, 180 censorship  171 chattels authorial property rights  21, 26–31, 34, 38, 40–1, 62 historical background  22, 24, 26–31, 34, 38, 40–1, 55 intangible property  22, 24, 26–7, 29, 62 manuscripts  42 personal correspondence  125 civil law jurisdictions  141–2, 155, 174 clearing rights  100, 160, 185 codification  73, 76–7, 80 colonies  17, 63–4, 77–8, 80 colourable publication  10–11 commercial publication  9, 13 comparative law  8 conditional dissemination  11–12, 15, 47 confidentiality see breach of confidence confiscation  161, 187, 192 consolidation  72–3, 76–7 contract see breach of contract; freedom of contract; implied contracts not to publish conveyancing precedents  27 Copinger, Walter  67 Copyright Act 1790  40 Copyright Act 1842  77 Copyright Act 1911  17, 64, 80–2, 104–5, 193 Copyright, Designs and Patents Act 1988  96–7, 107, 146, 178, 193 copyright exceptions/defences  5, 17–19, 159–60, 161–71 see also fair use/fair dealing defence balancing interests  166, 168–9 closed list of categories  166 desert theory  162–3, 165, 168, 169–70 economic interests  165, 166–7, 170–1 expressive autonomy  164–5, 167, 170 fact-sensitive exceptions  171 justification for protection  194

Index  207 overarching exception, need for  157, 164–7, 169–70 personality theory  166, 167–8, 171 privacy  161, 163–4, 169 private disclosure  105–10, 166–71 public interest  4–5, 7, 163 publicly disclosed works  161–2, 166–71 purposive interpretation  5, 19, 169, 178–81, 195 undisclosed works  105–8, 163–7, 171 unpublished works and published works distinguished  21, 104, 168–71 withdrawal from publication  167–8 correspondence see personal correspondence Court of Chancery  26–30 Creative Commons Movement (CCM)  143–4 criticism or review  81–2, 104–10, 115, 117, 161–3, 174–7 crown copyright  96 cultural heritage institutions abandonment  185–6 digitisation  187–8 exceptions/defences  165 fair dealing/fair use defence  193 incentives  127–8 orphan works  3, 101–2, 193 research or private study  193 term of protection  184–8 cumulation of rights  7, 50, 53, 64, 130, 164, 190 current events or news, reporting  108–9, 174–7, 194 current, definition of  177 historical events  108, 174–5, 177 photographs  108, 176–7 privacy  163 damages  6, 69, 117–19 data mining  133, 165, 174, 178 death of authors/owners breach of confidence and  57, 60, 183 defamation  144, 155–6 expressive autonomy  148–9 personality theory  144, 185 privacy  152, 155–6 publication, definition of  86, 196 succession  4, 31, 149, 185–6 term of protection  188 defamation  10, 127, 144, 155–6 defences to infringement see copyright exceptions/defences

definition of publication see publication, definition of delays in publication  167 delivery up  43 derogatory treatment  146 desert theory  18, 122, 134–9 artistic works  135–6, 170 excellence of creativity  135–9, 162–3, 165–6, 168, 170, 186 exceptions/defences  162–3, 165, 168, 169–70 need basis  139 private disclosure  136–7, 139, 163, 169–70 private property ownership  18, 122, 134–9 proportionality  135–6 public benefit  136–7, 139, 163 publicly disclosed works  136, 139, 162–3 social utility  136, 138, 162–3, 168, 170, 186 special connection between works and creators  138–9 term of protection  139, 186 undisclosed works  136, 138–9, 165–6 developing countries  192–3 diaries  1, 140–2 attribution and  146 breach of confidence  132 desert theory  137 economic interests  125–6, 129 exclusive rights  125–6 fair dealing/fair use defence  109, 112–13 labour  131, 133 orphan works  189 personality theory  138, 140–2 privacy  153–4, 169, 182–3 publication, definition of  15 purposive interpretation  180 secrecy  151 digital works abolition of common law copyright and  185 cultural heritage institutions  187–8 digitisation  182, 184, 186–8, 190 making available to the public  14 orphan works  184 sound recordings  3 temporary electronic storage  12 term of protection  182, 184, 186–8 distinction between published and unpublished works see also unpublished works and published works distinguished distribution right  18, 148–9

208  Index dramatic works desert theory  135 Dramatic Literary Property Act 1833  65–6 historical background  34–6 international influences  65–6 public performances  12, 15, 41 publication, definition of  9, 12, 13, 15 duration of protection see term of protection economic interests  21, 33, 34–5, 122–3, 157, 194 abolition of common law copyright  184–5 exceptions/defences  165, 166–7, 170–1 fair dealing/fair use defence  173, 177–8 first publication  6, 18, 166–7 freedom of expression  5 future works  166–7 incentives  126–7, 129 licences  177–8 publication, definition of  61 publicly disclosed works  157, 166–7 purposive interpretation  178 term of protection  184–5, 187 undisclosed works  165 employment contracts  149–50 course of employment  164, 166 undisclosed works  164, 166 engravings  55–6, 128–9 enough and as good proviso  131–2, 162, 165, 168, 171, 182 ephemeral dissemination  12–14 European Union harmonisation  192 Information Society Directive  107, 163 originality  160 orphan works  100–2 personality theory  166 Term Directive  102, 193 evidence best evidence  21, 45, 56, 106 candour, duty of  106, 180 production of documents  105–6, 180 excellence of creativity  135–9, 162–3, 165–6, 168, 170, 186 exceptions see copyright exceptions/defences; fair use/fair dealing defence exclusive rights authorial property rights  37 expressive autonomy  148 historical background  37 personality theory  140

private disclosure  19, 132 public performance right  66 special connection between works and creators  138 unauthorised first publication  162 exhibitions abolition of common law copyright  76, 80 artistic works  70 breach of confidence  55–6 ephemeral dissemination  13 publication, definition of  15, 75, 80 experience goods  119, 126–7 expressive autonomy  6, 17, 18, 122, 145–51, 164–5 abolition of common law copyright and  186 compelled to speak, authors should not be  145–6, 148–9 deceased authors  148–9 definition  145 delays in publication  167 different audience, forced disclosure to a  146–7 fair dealing/fair use defence  108, 115, 173 future works  167 private disclosure  147, 170 property rights of users  148–9 ciphers  148, 164, 167, 170, 186 subsidisation of speech  145, 149, 170 transformative uses  149 unauthorised first publication  145–6, 164–5, 170 undisclosed works  145, 148–51, 164–5 unpublished works and published works distinguished  151, 170 withdrawal from publication  167 fair use/fair dealing defence  4–5, 159–63, 171–8 see also fair-use defence (United States) abolition of common law copyright and  81–2, 104–5 balancing of interests  109, 114, 174, 180 Berne Convention  172–4 certainty  172, 173–4, 176, 181 criticism or review  81–2, 104–10, 115, 117, 161–3, 174–7 cultural heritage institutions  193 current events or news, reporting  108–9, 163, 174–7, 194 expressive autonomy and  108, 115, 173 fair use and fair dealing compared  174–5

Index  209 freedom of expression  109, 176 impression, as matter of  173, 176 international norms, inconsistency with  172–3 judicial proceedings, reporting of  27, 163, 179–80 leaks  111 legitimate interests, prejudicing  172, 173 non-pecuniary interests, prejudicing  173 normal exploitation of a work  172–3 novel situations  174–6 orphan works  193 parodies  107, 162, 174 personality theory  108, 173 privacy  18, 109–10, 115, 173, 176 private disclosure  105–17, 172–3 public interest  160, 175–6, 179 publication, definition of  104–17, 120 purposive interpretation  114–15, 160, 174–5, 178–81 quotations  107, 109–10, 112, 163, 174 reform  176–7 research or private study  163, 117–8, 177–8, 192–4 unauthorised first publication  172, 175 undisclosed works  105–17, 172–3, 174 unpublished works and published works distinguished  160, 195 fair-use defence (United States)  29, 163, 172–3 abolition of common law copyright  82 Berne Convention and  172 economic interests  173, 178 impression, as matter of  176 publication, definition of  85 purposive interpretation  178–9 transplantation of legal rules  8 TRIPs  172 films  76, 142, 188, 191 first publication see also history of jurisdictional bases for restraining unauthorised first publication; unauthorised first publication anonymous and pseudonymous works  2 authorial property rights  31, 33–4 Berne Convention  5–6 common law copyright, extinguishment of  16 confidentiality  17 date of publication  86, 96, 181 economic interests  6, 18, 75, 166–7 employment contracts  149–50

geographical criterion  5 implied contract  17 Internet  84–5, 87–8 juristic persons  150 medieval manuscripts  186 personality theory  141, 167–8 premature first publication  168 privacy  152–6 publication, definition of  85–8, 120, 195–6 succession  150 undisclosed works  145 FitzJames Stephen, James  73 formalities  78–80, 190, 192 abolition of common law copyright  62–4, 78–80 Berne Convention  78–9 Berlin Revision  17, 78, 80 breach of confidence  51 international issues  76, 78–9 public domain  16, 190 publication, definition of  16, 19, 86, 170 registration  62–3, 67–9, 72, 76 unpublished works and published works distinguished  2, 190 France abus de droit  149 artistic works  76 disclosure right  141 dramatic works  65–6 freedom of contract  61 freedom of expression economic interests  5 fair dealing/fair use defence and  109, 176 idea/expression dichotomy and  95 incentives  126 injunctions  119 justification for protection  157 official secrets  164 personality theory  143, 144, 168 privacy  104, 180–1 publication, definition of  116 purposive interpretation  180–1 unauthorised first publication  61 undisclosed works  132, 134 functional or entrepreneurial works  166 future works  166–7 gap-filling  21, 49, 68, 170 German Idealism  140 Google’s database of books  3 Gorell Committee  78–9 government works  1, 110, 164, 180

210  Index Hegel, GWF  140 heritage institutions see cultural heritage institutions Hettinger, Edwin  131 history of jurisdictional bases for restraining unauthorised first publication  16–17, 20–61 abolition of common law copyright  8, 60 authorial property rights  22–30 breach of confidence  22, 40–1, 46–8, 50, 55–61 breach of contract  40–1, 55–6 common law rights in unpublished manuscripts  41–6 further developments  54–60 implied contract  41, 49–51, 60–1 injunctions  26–9, 55–60 personal correspondence  28–31, 38–9, 41, 56–60 property, evolution of  25–41, 44, 56–7, 60 publication, definition of  8, 15–16, 30 reputation, vindication of  56, 58–9, 61 Statute of Anne  22–30 human rights see also freedom of expression; privacy balancing interests  5 Human Rights Act 1998  18, 116, 119 justification for protection  194 publication, definition of  104, 110, 116 idea/expression dichotomy ideas, protection of  58, 61 breach of confidence  48, 93 labour  132, 134 material form, recording in a  50 privacy  157 publication, definition of  82, 92–5, 115, 117 purposive interpretation  179 imperial copyright  17, 63–4, 77–8, 80 implied contracts not to publish  19, 41, 49–55, 190 abolition of common law copyright  81 artistic works  68–71 first publication  17 freedom of contract  61 historical background  41, 49–51, 60–1 injunctions  49, 69 material form, recording in a  50 inaccessible or obsolete media  3, 100, 133, 160, 182, 184 incentives  18, 123–30 Information Society Directive  107, 163

injunctions  6, 52, 55–60 breach of confidence  48 Chancery injunctions  20, 26–9 criteria  118 damages, adequacy of  118–19 fair dealing/fair use defence  108–9 historical background  26–31, 35–7, 55–60 implied contracts  49, 69 interim injunctions  6, 117–19 manuscripts  43–5 trade secrets  47 intangible property breach of confidence  46–7 chattels  22, 24, 26–7, 29, 62 historical background  22, 24, 26–7, 29, 31–2, 35, 40–1 integrity, moral right of  140, 146 international issues developing countries  192–3 fair dealing/fair use defence  172–3 formalities  72, 76 International Copyright Act 1886  77–8 orphan works  19 reform  63–4, 72–3, 76–8, 192–3 unpublished works and published works distinguished  72, 76, 84 Internet countries of origin and  88–90, 191 downloading  13–15, 88–9 ephemeral dissemination  14 first publication  84–8 hackers, leaks by  14–15 justification for protection  122 orphan works  101–2 private disclosure  14–15 publication, definition of  14–15, 84–5, 87–90, 191 publicly disclosed works  158 real seat theory  90 residence of authors  89 targeting theory  89–90 unauthorised acts  14–15 uploading  89 interpretation see purposive interpretation judicial proceedings, reporting of  27, 163, 179–80 jurisdictional bases see history of jurisdictional bases for restraining unauthorised first publication; trio of jurisdictional bases juristic persons  144, 150, 156

Index  211 justifications for protection  121–58 desert theory  18, 122, 134–9 economic interests  40, 122–3, 157, 194 expressive autonomy  17, 18, 122, 145–51, 157 historical background  8, 40–1 human rights  194 incentives  18, 123–30 labour  18, 40–1, 122, 130–4 personality theory  18, 121, 139–45, 157 privacy  17, 18, 122, 151–7 publication, definition of  7, 9, 120 purposive interpretation  195 unpublished works and published works distinguished  18 Kernan, Alvin  24 labour  18, 33, 122, 130–4 common resources  131–2 copies of works  131 enough and as good proviso  131–2, 162, 165, 168, 171, 182 exceptions/defences  168–9, 171 ideas/expression dichotomy  132, 134 legitimate appropriation of common resources, limits on  131–4, 162, 165 enough and as good proviso  131–2, 162, 165, 168, 171, 182 waste proviso  131–4, 162, 165 Lockean labour theory  130–4, 162 oral works  182 privacy  182–3 revision of discarded works  133–4 waste proviso  132–3, 162, 165, 168–9, 171, 182 Landes, William  7 leaks  111 lectures  41, 66–9 abolition of common law copyright  64 breach of confidence  48, 69 breach of trust  49 implied contracts  45, 49–50, 68–9 oral lectures  48, 92, 155 Publication of Lectures Act 1835  50, 66–9 publication, definition of  36, 50, 80 registration  50 unauthorised first publication  41, 69 legitimate expectations  102 legitimate interests, prejudicing  172, 173 letters see personal correspondence

licences  2, 101, 177–8, 186 limited publication  16, 57–8 literary property debate  25–6, 31–2, 39 literary works see Berne Convention for the Protection of Literary and Artistic Works Locke, John  33, 41, 130–4, 162 MacQueen, Hector  42 making available to public  4, 9, 13, 14, 107, 117, 163, 195 making known to the public  9 manuscripts death  4 desert theory  186 historical background  41–6 medieval manuscripts  2, 4, 183, 186 privacy  183 material form, recording in a  50 moral rights adaptations  161 attribution  140, 146 civil law systems  155 derogatory treatment  146 expressive autonomy  146, 149 integrity, right of  140, 146 personality theory  139–43 privacy  155 publicly disclosed works  139, 163 musical works  9, 10, 13, 74–5 national treatment  85–7 natural rights  157 neighbouring rights  191 Newman, JO  151–2 Nimmer, MB  176 normal exploitation of works  172–3 novel situations  174–6, 196 object-fetishism  143, 165, 168 obsolete or inaccessible media  3, 100, 133, 160, 182, 184 official secrets course of employment  164, 166 fair dealing/fair use defence  109–01 freedom of expression  164 private disclosure  171 publication, definition of  110 purposive interpretation  180 scope of protection  1 old unpublished works abandonment  184, 185–7

212  Index abolition of common law copyright  160, 182, 184–9, 193–4 cultural heritage institutions  184–8 digitisation  182, 184, 186–8 economic interests  184–5, 187 identification and tracing authors or owners  182, 184–6 orphan works  102, 120, 160–1, 184–5, 189, 193 public domain  160–1, 182, 184, 188–9, 193 publication, definition of  18, 120 savings provisions  184–5, 187–8 term of protection  2, 19, 96–8, 120, 160–1, 182–9, 192 originality  58, 142, 160, 179 orphan works  18, 101–2 abandonment  192 anonymous or pseudonymous works  185 artistic works  101–2 cultural heritage institutions  3, 101–2, 193 dating works  189 definition  3 digitisation  184 expressive autonomy  186 fair dealing/fair use defence  193 formalities  64 identification or tracing of authors/ owners  2–3 infringement claims  3 international cooperation  19 Internet  101–2 labour  182 licences  3, 101 old unpublished works  102, 120 Orphan Works Directive  100–2 personality theory  185 photographs  165, 177 private disclosure  136 public domain  184, 192 publication, definition of  86 savings clauses  64 searches  3, 100–2, 160, 182, 184, 193–4 sound recordings  3 term of protection  2–3, 96–102, 120, 160–1, 184–5, 189, 192–3 undisclosed works  165, 166 waste  133, 165 ownership of chattels  17 parodies  107, 149, 162, 174 patronage  24–5, 33 persistent problems  159–89

exceptions/defences  159–60, 161–71 fair dealing/fair use defence  159–60, 171–8 purposive interpretation  178–81 term of protection in old unpublished works  160–1, 182–9 personal correspondence 18th century  20 breach of confidence  46–7 chattels  125 conditional dissemination  11–12 current events or news, reporting  108, 174–6 educational value  30, 43–4, 132–3, 136–7, 170 historical background  28–31, 38–9, 41, 56–60 manuscripts  41–5 privacy  152–3, 182–3 private disclosure  136–7, 142 social utility  21, 170 subject matter  21 waste  132–3 personality theory  18, 121, 139–45, 157 abandonment of works  142–3, 185–6 authorial property rights  18, 121, 139–45 course of employment  166 death of authors  144, 185 exceptions/defences  166, 167–8, 171 fair dealing/fair use defence  108, 173 freedom of expression  143, 144, 168 medium of disclosure, choice of  141–2 moral rights  139–43 object-fetishism  143, 165, 168 originality  160 orphan works  185 publicly disclosed works  139, 141–2, 162, 168 reputation  141, 143–4 special connection between works and creators  138–9 succession  185–6 term of protection  144, 185–6 transfer of works  142–3 unauthorised or accidental disclosure  143–4, 171 undisclosed works  139–41, 143–4, 166 waiver of rights  143–4 withdrawal, right of  140 photographs artistic works  69–70 current events or news, reporting  108, 176–7

Index  213 injunctions  60 privacy  181 term of protection  81, 188 Posner, RA  156 positivism  37 posthumous publication see death of authors/ owners premature and low quality first publication  187–8 preservation theory  128 privacy  7, 17, 18, 20, 52, 122, 151–7 breach of confidence  157, 164, 169, 183 corporate and individual privacy, distinctions between  156 criticism or review  163 death  152, 155–6 definition  152, 156 exceptions/defences  161, 163–4, 169 fair dealing/fair use defence  108, 109–10, 112, 169, 173, 176 freedom of expression  104, 180–1 historical background  22 incentives  125, 127, 129–30 judicial proceedings, reporting of  179–80 juristic persons  156 justification for protection  17, 18, 122, 151–7 labour  182–3 origins  7, 151–2 personal correspondence  152–3, 182–3 personality theory  139, 141 photographs  181 physical intrusions into seclusion  153–4 private and family life, right to respect for  157 public interest  127, 156 publication, definition of  10 publicly disclosed works  142, 154, 161 subject matter  155 term of protection  183–4 unauthorised first publication  152–3, 156, 164 undisclosed works  134, 139, 153–4, 163–4 private disclosure breach of confidence and  137, 139, 169 desert theory  136–7, 139, 169–70 economic interests  166–7, 170–1 exceptions/defences  105–10, 166–71 excellence of creativity  136, 170 exclusive rights  132 expressive autonomy  151 fair dealing/fair use defence  105–17, 159, 171

first publication  41, 166–7 historical background  41 incentives  124–7, 130 Internet  14–15 justification for protection  157 labour  168, 171 personality theory  141–2, 171 privacy  137, 139, 152–5, 169 public benefit  136–7, 139, 163, 169 publication, definition of  11–12, 14–16, 19, 84–5, 91–4, 105–11, 119 publicly disclosed works  15, 84–5, 105, 154, 166–7 purposive interpretation  179–80 remedies  117–19 waste  132 property in unpublished works, evolution of  25–41, 60 property rights see authorial property rights public domain abandonment  184 formalities  16, 190 orphan works  184, 192 publication, definition of  16, 63, 86–7 publication right  103 revival of copyright  5–6 term of protection  96–9, 102, 160–1, 182, 184, 188–9, 192–3 public benefit  136–9, 162–3, 169 public bodies see cultural heritage institutions public goods  28, 35, 123–5, 130 public interest  7–8 breach of confidence  127, 164 exceptions/defences  4–5, 7, 163 expressive autonomy  150–1 fair dealing/fair use defence  160, 179 justification for protection  121 manuscripts  46 market failure  123 privacy  127, 156 private disclosure  179–80 publication, definition of  85, 104, 109–11, 116, 119 publicly disclosed works  19 purposive interpretation  179–80 term of protection  194 undisclosed works  109, 163 public performance  12–13, 15, 41, 75 publication, definition of  1, 9–17, 61, 84–120, 190–1 abolition of common law copyright  61–3, 73–5, 80

214  Index artificial definitions  16 artistic works  10, 13, 15, 16 Berne Convention  10, 14, 85–9, 191–2 breach of confidence  110–11, 116 communication to another  9 consent to publication  19, 41 contemporary law, significance in  84–120 death of author and  86, 196 distinction between published and unpublished works  12, 21 dissemination, definition of  195 distribution for public sale  9 ephemeral dissemination  12–14 evolution of concept  7 exceptions/defences  17, 85, 103–18, 170 exhibitions  80 extent of protection  17, 90–5 fair dealing/fair use defence  104–17, 120 first publication  85–8, 120, 195–6 formalities  16, 19, 86, 170 historical background  8, 15–16, 30, 34, 35–6, 195 human rights  104, 110, 116 ideas/expression dichotomy  85, 92–5, 115, 117 implied contracts  50 intention of authors  10–11, 196 Internet  14–15, 84–5, 87–90, 191 justification for protection  7, 9, 120 leaks  111 making available to the public  9, 13, 14, 117, 195 making known to the public  9 multifactorial approach  196 musical works  9, 10, 74–5 national treatment  85–7 number of copies  10 overarching meaning, need for  195–6 private disclosure  11–12, 14–16, 19, 84–5, 91–4, 105–19 public domain  16, 63, 86–7 public interests  85, 104, 109–11, 116, 119 publicly disclosed works  15, 18–19, 61, 84–5, 91, 107, 157–8 qualification for protection  17, 85–90 remedies  17, 84–5, 117–20 revised international instrument, need for  191 technological innovation  14, 74, 85, 190–1, 195 term of protection  17, 84, 86–9, 95–103, 191–2

undisclosed works  15, 84–5, 91, 93, 105–17, 119, 196 unpublished works and published works distinguished  12, 17 working definition  15 publication right  103, 186, 187–8 publicly disclosed works see also unpublished works and published works distinguished authorial property rights  135 breach of confidence  141–2 criticism or review  105, 117, 161–3 definition  190 derivative uses  132 desert theory  136, 139, 162–3 differentiation from publication  15, 35–6, 61, 163, 195 economic interests  157, 166–7 exceptions/defences  161–2, 166–71 exclusive rights  132 expressive autonomy  151 historical background  36 incentives  124, 129–30 Internet  158 justification for protection  122, 157–8 labour  131–2, 162, 168–9 personality theory  138–9, 162, 168 privacy  142, 154, 161 private disclosure  105, 154, 166–7 public interest  109 publication, definition of  15, 18–19, 61, 84–5, 91, 107, 157–8 published works distinguished  124, 163 quotations  162 undisclosed works  15, 18, 84, 158, 166–7 purposive interpretation  178–81 exceptions/defences  5, 169, 178–81, 195 fair dealing/fair use defence  160, 174–5, 178–81 justification for protection  195 quotations  13, 162–3, 174 Radin, Margaret Jane  140 Ransom, Harry  24 reform abolition of common law copyright  62–4 balancing interests  166 efficiency  18 exceptions/defences  19 fair dealing/fair use defence  176–7 formalities  62

Index  215 international pressures  63–4, 72–3, 76–8, 192–3 term of protection  19, 187–8 regionalisation of IPRs  85 registration  62–3, 67–9, 72, 76 remedies for infringement see also injunctions chilling effect  118 damages  6, 69, 117–19 publication, definition of  17, 84–5, 117–20 reputation  21, 54, 58–9, 61 breach of confidence  56–7 defamation  10, 127, 144, 155–6 exceptions/defences  105 expressive autonomy  146 parodies  162 personality theory  141, 143–4 withdrawal from publication  168 research or private study  163, 117–8, 177–8, 192–4 revival of copyright  17 Rose, Mark  24, 29 Royal Commission on Copyright 1878  71–3 sales  9, 10 savings clauses  64, 81, 102, 184–5, 187–8, 192 searches countries of origin  86 diligent searches  3, 86 orphan works  3, 100–2, 160, 182, 184, 193–4 term of protection  160, 182, 184 secrecy  10, 47 see official secrets Seville, Catherine  66 Singapore  97, 194 social utility  21, 136, 138, 162–3, 168–70, 186 Society for the Diffusion of Useful Knowledge (SDUK)  66 sound recordings  3, 6, 74–5, 183, 191–2 social utility  125 Stationers’ Company  22–3, 30, 72 Statute of Anne  22–32, 37–40, 43–4 statutory and common law protection, interaction of  68–71 streaming  14 subject matter  8, 21, 58, 155 subsidisation of speech  145, 149, 170 substantial infringement  91, 95, 179 succession  4, 31, 149, 185–6 supplementary rights  161, 187

tangible property see chattels technological innovation see also Internet abolition of common law copyright  74 Creative Commons Movement  143–4 labour  182 novel situations  196 obsolete or inaccessible media  3, 100, 133, 160, 182, 184 publication, definition of  14, 74, 85, 190–1, 195 sound recordings  74 subject matter  21 term of protection  188–9 technology see digital works; Internet; technological innovation term of protection  17, 20, 37, 160–1, 182–9 abandonment  184, 185–7 abolition of common law copyright  80–3, 160, 182, 184–9, 193–4 anonymous or pseudonymous works  97–8 Berlin Revision  80–1 Berne Convention  80–1, 86–7, 89–90, 98–9, 191–2 countries of origin  2 crown copyright  96 cultural heritage institutions  184–8 date of first publication  96 death  4, 188 deposit schemes  183 desert theory  139, 186 developing countries  192–3 digitisation  182, 184, 186–8 economic interests  184–5, 187 exceptions/defences  193–4 expressive autonomy  186 films  191 foreign authorship  97–9 harmonisation  90, 191–2 historical background  31–2, 37–40 identification and tracing authors or owners  182, 184–6 inaccessible or obsolete formats, works in  160 incentives  129 labour  182 official secrets  164 old unpublished works  2, 19, 96–8, 120, 160–1, 182–9, 192 orphan works  2–3, 96, 98–102, 120, 160–1, 184–5, 189, 192–3 personality theory  144, 185–6 premature and low quality first publication  187–8

216  Index public domain  96–9, 102, 160–1, 182, 184, 188–9, 192–3 publication, definition of  17, 84, 86–9, 95–103 publication right  103, 186, 187–9 reform  19, 187–8 risky works, encouragement of publication of  4 savings clauses  102, 184–5, 187–8, 192 searches  160, 182, 184 simultaneous publication  86–8 sound recordings  191–2 supplementary rights  161, 187 Term Directive  102, 193 unpublished works and published works distinguished  2–4, 38 timing of publication  132, 167, 168–9, 181 trade secrets  47 transparency  11, 126, 164 transformative use  113–14, 149, 162 transplantation of legal rules  8 trio of jurisdictional bases  51–4 TRIPs  172–3 unauthorised first publication  10–11, 51–5 see also history of jurisdictional bases for restraining unauthorised first publication balancing interests  19 breach of confidence  46–8, 50 exceptions/defences  162, 164 exclusive rights  162 expressive autonomy  145–6, 164–5, 170 fair dealing/fair use defence  172, 175 freedom of expression  61 implied contracts  49–51 Internet  14–15 manuscripts  41–6 privacy  152–3, 156, 164 publication, definition of  10–11 purposive interpretation  180 term of protection  183 undisclosed works  163–7, 171 balancing interests  180 breach of confidence  132, 134, 139 change of mind  167 course of employment  164, 166 cultural heritage institutions  165 defences  163 derivative uses  132 desert theory  136, 138–9, 165–6 economic interests  165

excellence of creativity  136 exceptions/defences  105–8, 163–7, 171 expressive autonomy  145, 148–51, 164–5 fair dealing/fair use defence  105–17, 172–3, 174 fluctuations in status  166–7 freedom of expression  132, 134, 180 Human Rights Act 1998  119 justification for protection  122, 157 labour  131–4, 162, 168 official secrets  166 orphan works  165, 166 personality theory  138–9, 140–1, 143–4, 166 privacy  134, 139, 153–4, 163–4, 180–1 private disclosure  84–5 publication, definition of  15, 84, 91, 93, 196 publicly disclosed works  15, 18, 84–5, 139, 158, 166–7 purposive interpretation  179, 180–1 remedies  117–19 waste  132–3, 165 United States see also fair-use defence (United States) abolition of common law copyright  63–4, 73–4, 81 Berne Convention  87 Berne Union  87, 160 breach of confidence  19, 81 Constitutional Convention  40 Copyright Act 1790  40 Copyright Act 1909  8, 82–3 Copyright Act 1976  17, 82–3 copyright clause  40 cultural identity  39 damages  6 digital remastering  3 exceptions  82 federal and state law  8 formalities  190 freedom of expression  64 historical background  38–40 implied contracts  19, 51, 81 incentives  123 international protection  63–4 limited and general publication, difference between  16 lobbying  39–40 old unpublished works  2, 83 orphan works  96, 98 privacy  64, 81 public domain  63, 74, 82–3, 96, 98

Index  217 publication, definition of  61, 63, 85, 87, 120, 190 purposive interpretation  178–9 reading culture  39–40 revival of copyright  17 sound recordings  74, 96, 99 state common law  8, 17, 51 Supreme Court opinions, publication of  51 term of protection  39–40, 82, 96, 98–9 territorial limits of state copyright laws  39–40 Universal Copyright Convention (UCC)  14, 85–6 unpublished works and published works distinguished  1–4, 18–19, 83 additional bases for protection  7 Berlin Revision  78 common law copyright  1–2, 37 exceptions/defences  19, 21, 104, 168–71 expressive autonomy  151, 170 fair dealing/fair use defence  160, 195 formalities  2, 190 harmonisation/approximation  62, 84, 93, 105, 190 idea/expression dichotomy  93 international issues  72, 76, 84 justification for protection  18

minimum standards  90 personality theory  144 publication, definition of  2, 12, 17, 21, 190 scope of protection  7–8 statutory protection  1–2, 37, 190 strength of protection  2, 9, 83 substantial infringement  91 term of protection  2–4, 38 utilitarianism  40 utilitarianism  39, 40, 122–3 waiver of rights  143–4 Wakley, Thomas  48, 67 Warren, Samuel  20, 63, 152 waste proviso  132–3, 162, 168–9 abolition of common law copyright  189 authorial property rights  133 labour  182 orphan works  133, 165 personal correspondence  132–3 physical destruction  133 private disclosure  132, 171 undisclosed works  132–3, 165 Westin, Alan  156 withdrawal from publication  140, 167–8 World Intellectual Property Organization (WIPO)  160

218