In a recent judgment that has implications regarding the use of copyright material in comparative advertising, the High Court has considered the concept of 'fair dealing' in relation to copyright infringement. The judge concluded that the use of copyright material belonging to a competitor in an advertisement, where identification of the competitor's product could have been achieved without the use of such material, was an infringement of copyright. Such use did not amount to fair dealing for the purpose of criticism, review or reporting as permitted by section 30(1) of the Copyright, Designs and Patents Act 1988 if the motive for reproducing the material was to advance a competing interest at the copyright owner's expense.
In the case IPC Media Ltd v News Group Newspapers Ltd, decided on 24 February 2005, the High Court has considered the defence of fair dealing under section 30 of the Copyright, Designs and Patents Act 1988 (the "Act") and decided that the defence is not available to a newspaper publisher who uses another's copyright material to advance its own competing purposes at the other's expense.
IPC published the weekly television listings magazine What's on TV. News Group Newspapers is the publisher of the daily newspaper The Sun. News Group attempted to promote its re-launched television listing supplement available free in The Sun through the publication of an advertisement which featured the front cover and logo of What's on TV and the front cover of another TV listing magazine TV Choice, together with the front cover of its own new supplement. The advertisement invited readers to get "more for less" with the Sun's free supplement.
IPC claimed that the use of the front cover and logo of What's on TV was an infringement of its copyright. In its defence, News Group argued that its use of IPC's copyright material was 'fair dealing' for the purpose of criticism or review of IPC's magazine as permitted by section 30 of the Act and that this was simply a case of comparative advertising.
Section 30 of the Act provides:
(1) Fair dealing with a work for the purpose of criticism or review, of that or another work or of a performance of a work, does not infringe any copyright in the work provided that it is accompanied by a sufficient acknowledgement and provided that the work has been made available to the public.
(2) Fair dealing with a work (other than a photograph) for the purpose of reporting current events does not infringe any copyright in the work provided that it is accompanied by a sufficient acknowledgement.
IPC applied for summary judgment against News Group, contending that the infringement of copyright had not come about for the purpose of criticism or review, nor the reporting of current events and that the fair dealing defence should not apply.
The judge, Mr Justice Hart, considered that the concept of fair dealing should be reviewed in the context of the usage and of customary practices, such as the high value placed on competitiveness in the market and the right of the consumer to information. Existence of such motives could not make fair dealing into unfair dealing.
In this instance, however, use of the cover and logo of the magazine as a 'criticism' of What's on TV did not fall within the fair dealing defence because identification of the magazine could readily have been achieved without the use of its copyright. The principal function of IPC's copyright was to identify its magazine for its own commercial benefit. News Group's motive in reproducing the work was to advance its own competing commercial purpose at IPC's expense which did not amount to fair dealing under section 30 of the Act.
This is not the first time that IPC has brought proceedings for copyright infringement against a newspaper publisher that used IPC's magazine for the purpose of comparative advertising. In IPC Magazines Ltd v MGN Ltd in 1998, the publisher failed to establish a defence of "incidental inclusion" under section 31 of the Act.
Comparative advertising is generally lawful in the UK and it is permissible to make reference to a registered trade mark of a competitor in order to identify the goods and services of that competitor, provided that this is carried out in an honest manner. However, there is no equivalent provision under copyright law and therefore, as highlighted by the current case, where a trade mark or logo is also protected by copyright, such use, while not a trade mark infringement, is likely to constitute a copyright infringement and should be avoided.
