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[caption id="attachment_4591" align="alignright" width="183"] ketrin1407: http://www.flickr.com/photos/65986072@N00/[/caption]
Taylor v Maguire  EWHC 3804 (IPEC),  All ER (D) 43 (Dec) is a High Court IPEC case. It shows interesting unsuccessful use of the educational defence.
The claimant was an artist working in the medium of papercutting. She exhibited and sold her works from a Facebook page and had been commissioned to produce marketing works for the US chain Pottery Barn. The defendant also produced various papercutting works that she exhibited and had sold from a Facebook page.
The claimant claimed that the defendant had infringed her copyright in various original artistic works. The defendant denied this, contending that the works complained of were original artistic works independently created by her and her minor daughter. As well as claiming a lack of originality and substantial similarity, the defendant relied on the educational defence contained in the Copyright Designs and Patents Act 1988 (CDPA 1988).
The claimant successfully sought an injunction preventing further infringement and destruction of infringing works, among other remedies.
How did the court deal with subsistence of copyright?
The court continued with the emerging two pronged test (or are they parallel tests?) for copyright subsistence by covering both the ‘skill and labour’ and the ‘author’s own intellectual creation’ tests. In the space of two paragraphs, the court stated: ‘an original artistic work is a work in which the author/artist has made an original contribution in creating it – for example by applying intellectual effort in its creation’ (para 6). And “For an artistic work to be original it must have been produced as the result of independent skill and labour by the artist” (para 7)
We are told that the outcome should be the same using either test, by Mrs Justice Proudman who caused all the commotion in November 2010 in the High Court Newspaper Licensing Agency v Meltwater Holding BV  EWHC 3099 (Ch) case (85 of the judgment) but who had pulled back from this approach by the time she heard Future Publishing Ltd v Edge Interactive Media  EWHC 1489 (Ch) June 2011, in June 2011.
What should lawyers take from this approach to subsistence?
When dealing with substantiality in this case, Designers Guild v Russell Williams (Textiles) Ltd  1 All ER 700, remained the case of choice in relation to originality and deciding infringement. Therefore lawyers do not need to do much more than keep acknowledging the author’s own intellectual creation test (in addition to the skill labour and judgment test) when preparing cases and collating evidence of subsistence. Showing evidence of an individual, personal stamp on a piece of work would be a sensible approach. In this case, the claimant is referred to as having made detailed design choices and the CJEU has demonstrated a preference in its case decisions for evidence of personal artistic choices in indicating creativity.
Lawyers should therefore advise clients to maintain records of drafts and sketches to demonstrate how the creative process progressed and to provide evidence of how the creator came to produce the work.
What was the effect of Maguire raising the educational defence in this case?
The mother of the minor, Maguire, unsuccessfully raised the CDPA 1988, s32 educational defence. This provides that copyright is not infringed by copying in the course of instruction or preparation for instruction provided that the copying is done by a person giving or receiving instruction and is accompanied by a sufficient acknowledgement. 'Instruction' is not confined to instruction in an educational establishment; it embraces any form of instruction and the copying must be done by a person giving or receiving instruction. So far so good for Mrs Maguire, but CDPA 1988, s32 also provides that either the instruction must be for a non-commercial purpose or the copying must be fair dealing with a work that has been made available to the public. Mrs Maguire had both offered some of the designs for sale and published the designs on Facebook.
CDPA 1988, s 32(5) (note there is a typo in the judgment as at (para 14) it cites s32 (6)) provides that where a copy which would otherwise be an infringing copy is made in accordance with CDPA 1988, s 32 but is subsequently ‘dealt with’, it will be treated as an infringing copy for the purpose of that dealing and (if that dealing infringes copyright) for all subsequent purposes. ‘Dealt with’ for these purposes means sold or offered or exposed for sale or communicated to the public.
This defence failed for Maguire because:
In her Defence Maguire had stated that: ‘This papercutting was for educational purposes never intended for sale. It is laminated in my daughter's school portfolio. It was done for educational research and remains in my daughter's school portfolio and will not be destroyed as these will be later assessed for her GCSE in art.’
The judge’s response was this: ‘The Defence states that the Defendant will not destroy any infringing works which her daughter seeks to use in her GCSE portfolio. The order provides for the destruction of all of the infringing works and I must remind the Defendant that court orders must be complied with.’
The final question is not so much: ‘what should lawyers do to advise their clients?’ as we often ask in our analyses, but rather ‘what should mothers do for their daughters?’ The order is for destruction, which would almost certainly result in a fail for her daughter in her GCSE, or will the Maguire breach the order? Both options have serious consequences.
What should lawyers do?
Rather than bearing a legal nugget the case has, perhaps, more a moral twist. However lawyers instructed in the education sector should consider advising their clients of the importance of sufficient acknowledgment and to be wary of ‘dealing’ with a work by communicating it the public via social media if intending to benefit from the protection of CDPA 1988, s32 defences.
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