Hubbard v Vosper provides the first category of what could fall within the scope of public policy – ‘reprehensible nature of works’.165 This can be classified into two sub-categories; immoral and deceptive.166 Spycatcher extended the scope to cover ‘reprehensible conduct’,167 and these categories are reflected in the structure of the following case law analysis.
Reprehensible nature of works – works offending public 2.5.1.1
sensibilities: immoral, irreligious and highly indecent
Walcot v Walker,168 Southey v Sherwood,169 Murray v Benbow170 and Lawrence v Smith171
Lord Eldon, who provided judgments in all of these pioneering cases regarding public policy grounds, rendered the works at issue offensive to public sensitivities as the first two were libellous, and the others were irreligious.172 It
164 See the historical background of the defence in Sims (n 7) 335; Robert Burrell and Allison Coleman, Copyright Exceptions: the Digital Impact (CUP 2005) 94.
165 Hubbard v Vosper (n 6).
166 Glyn v Weston (n 50); Slingsby v Bradford Patent Truck and Trolley Co [1906] WN 51.
167 Spycatcher (No 2) (n 45). See also Dworkin (n 46) 138, using the title ‘Reprehensible Copyright Works and/or Reprehensible Authors or Owners’.
168 Walcot v Walker (1802) 7 Ves 1.
169 Southey v Sherwood (n 162).
170 Murray v Benbow (1822) 1 Jac 474.
171 Lawrence v Smith (n 162).
172 Sims (n 41) 190-91; Laddie, Prescott and Vitoria (n 6) para 20.3.
was also of his opinion that the dissemination of those types of works was liable to injure the public, and the works were of such a nature that the authors could maintain no legal action.173 In other words, his proposition implies that the author would have as much chance of success to retain his right to property on such works as ‘the proverbial snowball in hell’ and copyright protection is denied as such.174
Stockdale v Onwhyn175
The work in question – the memoirs of Harriette Wilson – depicted some lustful and immoral episodes from a prostitute’s life. The Court held that neither the printer nor the publisher of such work was entitled to any legal benefits, i.e. printing costs or damages caused by piracy, arising from copyright protection.176 This was because ‘the dissemination of such obscene work violated the law’.177 In this case, the Court seemed to tie copyrightability of creative works with morality, and based this concept on the so-called principle of unclean hands.178
Glyn v Weston179
The work in question was the novel Three Weeks by Eleanor Glyn. It was the story of young Englishman who had a clandestine affair for three weeks with the Ruritanian queen, who bore his child. After the murder of the queen, the king was assassinated, and the child became his successor. The claimant claimed interim injunction and damages on the ground that her literary work was substantially reproduced in a film called Pimple’s Three Weeks. The film was then commercialised by the defendant without authorisation. Younger J.
173 Southey v Sherwood (n 162) 437. See also Jeremy Phillips, ‘Copyright in Obscene Works:
Some British and American Problems’ (1977) 6 Anglo-AM L. Rev 138, 140.
174 Zechariah Chafee, ‘Coming into Equity with Clean Hands’ [II] (1949) 47 MLR 1065-1067.
Southey v Sherwood (n 162) 1008; Walcot v Walker (n 168), the court’s finding that no property right existed for Walcot’s seditious and pernicious work can be said to rely on ‘the property theory’.
175 Stockdale v Onwhyn (1826) 5 B & C [173].
176 Dan W Schneider, ‘Authority of the Register of Copyrights to Deby Registration of a Claim to Copyright on the Ground of Obscenity (1975) 55(3) CHI – KENT L Rev 691, 696.
177 Ibid.
178 Dan Markel, ‘Can Intellectual Property Law Regulate Behaviour? A Modest Proposal for Weakening Unclean Hands’ (2000) 113 HARV L REV 1503, 1504.
179 Glyn v Weston (n 50).
held that the ‘claimant’s novel representing free love and justified infidelity was of grossly immoral tendency and the film contained incidents of an indecently offensive character’.180 Therefore, neither of them was entitled to copyright protection.181 This case evidently endorses the proposition that the work’s reprehensible aspect deprives it from receiving any assistance of the courts.
Fraudulent works – extending public policy to cover 2.5.1.2
misrepresentation Wright v Tallis182
This case concerns the religious book Evening Devotions, written by Christian Sturm, a German national. The argument arose between the claimant who sued for copyright infringement due to unauthorised copies, and the defendant who contended that the claimant deceived the public by fraudulent misrepresentation. In particular, he argued that the claimant intentionally misrepresented the book to be an original version by Sturm. Judgement was made for the defendant and the claimant’s claim of copyright piracy due to misrepresentation was dismissed.183 The case extended the public policy justification to include misrepresenting or fraudulent works.
This proposition was again manifest in Slingsby v Bradford,184 in which the Court rejected the claimant’s petition for equitable remedies conferred by copyright law, as ‘the work made false statements with an intention to deceive the public’.185
Reprehensible conduct – turpitude and iniquity 2.5.1.3
It was not until 1988 that the English courts were faced with the situation where, despite the acceptable nature of works, the author’s conduct was condemnable.
180 Ibid. 269-270.
181 Ibid. 264.
182 Wright v Tallis (1845) 135 ER 794.
183 Ibid. 800.
184 Slingsby v Bradford Patent Truck and Trolley Co [1906] WN 51.
185 Ibid. See also Sims (n 41) 191
Spycatcher186
This case involved a former British secret service officer, Peter Wright, who wrote the book Spycatcher, in which he revealed many events from his service which threatened national security. Although the confidentiality claim was frustrated due to the publication of the book in Scotland, Australia and elsewhere, the Court held that not only current employees, but also former employees of security services had a life-long duty of confidentiality owed to their employer, in this case the British government. This duty obliged them to keep matters regarding intelligence services in confidence.187 Hence, breach of such obligation would reek of turpitude, and thereby be contrary to public policy in preventing national security from harm. In such case, it would, as the court opined, be incomprehensible if the author or subsequent publishers were afforded ‘any protection in relation to any copyright which either of them may possess in the book’.188
Despite an inapplicability of the breach of confidence claim, the Court had recourse to the equitable doctrine of public policy inherent in copyright law to maintain justice and fairness in favour of national interests. It therefore took the position that the author of copyrighted work was not entitled to any benefits under copyright law if their conduct was so reprehensible that it was likely to pose any threat or harm to national security, as to hold otherwise would have violated public policy. Unlike in Glyn v Weston, rather than the reprehensible nature of the work itself, it was the author’s reprehensible conduct regarding the acquisition of the information that precluded him from receiving any court’s assistance. Nevertheless, it was still unclear whether copyright in the work was totally denied or just unenforceable.
A-G v Blake189
Like the author of Spycatcher, Blake was a former British intelligence service
186 Spycatcher (No 2) (n 45). Marta Iljadica, Copyright Beyond Law: Regulating Creativity in the Graffiti Subculture (Hart 2016) 105.
187 Spycatcher (No 2) (n 45) 194.
188 Ibid.
189 Attorney-General v Blake [1996] FSR 727, 738.
officer; he was later found to have been spying for the Soviet Union. After his escape from prison, he wrote a book narrating his treacherous activities against Britain which was published in many countries. The Attorney-General, acting as claimant on behalf of the government, firstly resorted to a claim of breach of the fiduciary duty to prevent him receiving any profits from his previous position. The claim was rejected by the court of first instance on the ground that the fiduciary duty only covered the employment period, not thereafter.
The Court of Appeal had recourse to the public law approach with the aid of criminal law in holding that the author’s activity was contrary to public policy on the grounds that criminals should not benefit from their misconduct, including any form of profit resulting from writing a book.190 Again, this illustrates the situation where the Court sought to uphold justice by relying on the doctrine of public policy.
ZYX Music v Chris King and Others191
This case denotes an interesting exercise of the court’s discretion to dismiss copyright enforcement at the other end of the ‘immorality’ spectrum.
The claimant sued for copyright infringement against the defendant who had copied his arrangement of a musical work. The defendant argued that in light of section 171(3) CDPA the claimant’s copyright should not be enforceable because he had committed a technical copyright infringement against the original song from which his arrangement derived. The defendant also contended that the decision of the House of Lords in Tinsley v Milligan suggested that ‘the court will not enforce transactions tainted by illegality’.192 Lightman J. began his judgment by acknowledging that it is well-established that the Court may decline to grant relief awarded by copyright on public policy grounds when the work was ‘dishonest and misleading’,193 ‘grossly immoral’,194 ‘reeking of turpitude involving public interest in maintaining the
190 Owen Morgan, ‘Copyright, the public interest and content restrictions’ (2003) 8 (3) MALR 213, 217.
191 ZYX Music v Chris King (n 51). Iljadica (n 186) 105.
192 [1994] 1 AC 340.
193 ZYX Music v Chris King (n 51) 577, citing Slingsby v Bradford (n 166).
194 Ibid. 577, citing Glyn v Weston (n 50).
secret of security services’.195 Yet, Lightman J. stated that it was also established in case law that the fact that the claimant’s work infringed copyright in another work may nonetheless not preclude him from enjoying his copyright. 196 In this regard, he viewed that the claimant’s technical infringement of the original author’s copyright was of incidental and innocent nature and there existed no sufficient basis to invoke the public policy grounds into play.197 He thus held that the claimant could not reasonably be debarred from enforcing his copyright i.e. injunction and damages, to restrain the defendant’s piracy.198 In other words, the claimant’s wrongdoing in this case did not reach the level of reprehensibility which would otherwise violate the public policy grounds and render his copyright unenforceable.199
In brief, Lightman J was explicit in confirming the UK courts’ jurisdiction in applying the public policy grounds to copyright owner’s reprehensible conducts. In my view, nevertheless, it can be argued that, although the claimant’s infringing practice was accidental, he should still be condemned and deprived of some legal benefits. Lightman J, seemed to be lenient in having granted both injunctive and monetary reliefs to the claimant. Considering the claimant’s unclean hands, the judge could have applied the public policy grounds in determining what reliefs should or should not be made available to the reprehensible claimant.
195 Ibid. 577, citing Spycatcher (No 2) (n 45) and Sa’id Mosteshar, Copinger and Skone James on Copyright (13th edn, International Bar Association 1992) paras 3.44-3.48.
196 ZYX Music v King (n 51) 576, citing Redwood Music Ltd v Chappell & Co Ltd [1982] RPC 109, 120; British Leyland Motor Crporation v Armstrong Patents Co Ltd [1982] FSR 481, 502.
197 ZYX Music v King (n 51) 577.
198 Ibid.
199 See also the UK Court of Appeal’s judgment in a trademark case - The Football Association Premier League Ltd v Luxton [2016] EWCA Civ 1097, and the Supreme Court’s judgment in a copyright case - Oracle America Inc (formerly Sun Microsystems Inc) v M-Tech Data Ltd [2012] UKSC 27. Despite being misuse/competition cases and both deciding in favour of intellectual property rightsholders, the courts imply that there may exist a UK equivalent of the EU prohibition of abuse of rights and the US copyright misuse vis-à-vis enforcement of intellectual property rights, inter alia, in anti-competitive or abusive ways. Having observed the defendants’ reliance on the EU defences based on the EU anti-competition and free movement rules, judges in both cases had recognised that ‘in some circumstances an
intellectual property right may become unenforceable because what lies behind it is an attempt to divide up the market in the EU contrary to the provisions on free movement’. However, sufficient connections between the exercise of the right and the allegedly unlawful attempt must be duly scrutinised and firmly established; otherwise, there is a risk of ‘litigation devaluing the enforcement of intellectual property rights’.
Hyde Park200
This case concerns an argument between the claimant’s right to copyright protection and the media’s right to be exempted from infringing that copyright by claiming the common law defence of public interest.201 The claimant was the security company which owned the copyright to the videotape on which was recorded the visit of Princess Diana and Dodi Fayed to the Villa Windsor prior to their death. A set of printed photographs from the video was handed over to The Sun newspaper, which published them without authorisation.
Of particular relevance to the public policy grounds was when Jacob J at first instance identified that the public interest defence raised by the defendant could be classified into two types. The first was of those recognising the defence as an exception to copyright infringement, which was applicable to this case. The other was of the so-called ‘public policy, which was a remarkable tool for the courts in appropriate circumstances to usurp statutory right given by the parliament’.202 Although these two equitable doctrines exist to serve disparate purposes with different characters,203 both are seen as judicial tools based on the same objective – safeguarding the interests of the public. As such, both are used to overrule copyright enforcement by ways of equipping the courts with the power to use the relevant remedies – monetary and injunctive relief. While the legislative authority of the former type of defence was denied in the Court of Appeal,204 Aldous LJ supported Jacob J’s proposition regarding the public policy grounds. He confirmed that English courts had ‘equitable inherent jurisdiction’ to refuse copyright enforcement on the grounds of public policy, where the work in question was immoral, scandalous or harmful to the public, security or justice system.205 Therefore, this case confirms the English courts’ discretionary power in having recourse to the content-based approach called public policy to refuse copyright enforcement when it is detrimental to public order and morality.
200 Hyde Park Residence Ltd v Yelland and Others [1999] RPC 655.
201 Ibid. 668.
202 Ibid. 670.
203 Ibid. Morgan (n 190) 221.
204 Gillian Davies, Copyright and Public Interest (2nd edn, Sweet & Maxwell 2002) para 4-034.
205 CDPA, s 171(3). See also Hyde Park v Yelland (CA) (n 20) [66].
2.6 US copyright protection for obscene works
A conflict between copyright protection and public morality in the context of obscenity has been an ongoing issue in many countries.206 Despite no provisions in the US Constitution articulating the relationship between the two, US courts in the early 1960s first appeared to take a position that pornography was subject to censorship; thus, copyright protection would only be conferred to an author whose creative work was clear from obscene and indecent material.207 However, the judgment in Mitchell Brothers stipulated otherwise.
The Court held that obscenity could not be used as a defence to a copyright infringement claim.208 This case was a starting point after which a flood of litigation regarding not only issues about defining obscene works, but also arguments about copyright in such works, have been brought before the US courts.
2.6.1 Copyright protection to obscene works