3PLR – LADBROKE (FOOTBALL) V. WILLIAM HILL (FOOTBALL) LTD

Published by Law Nigeria Admin at January 16, 2019

POLICY, PRACTICE AND PUBLISHING, 3PLR, LAW REPORTS

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LADBROKE (FOOTBALL)

V. WILLIAM HILL (FOOTBALL) LTD

HOUSE OF LORDS

[1964] 1 All E.R 465

18, 20, 21, 26, 27, 28 NOVEMBER 1963,

21 JANUARY 1964

3PLR/1964/47 (HL-E)

BEFORE THEIR LORDSHIPS

LORD REID

LORD EVERSHED

LORD HODSON

LORD DEVLIN AND

LORD PEARCE

MAIN ISSUES

INTELLECTUAL PROPERTY; Copyright

Copyright – Compilation – Originality – Approach to determining whether copyright exists – Compilation regarded as a whole – Skill, labour and judgment involved – Football betting coupon – Wagers listed in coupon selected from a very great variety of possible wagers – Work of selecting wagers to be taken into account when assessing originality – Work of presentation of chosen wagers to the eye of the customer by means of the coupon also involving skill, labour and judgment – Coupon an original literary work within Copyright Act, 1956 (4 & 5 Eliz 2 c 74), s 2(1) and s 48(1).

Copyright – Infringement – Compilation – Approach – Determining first whether work as a whole entitled to copyright and then whether part reproduced was a substantial part – Football betting coupon comprising various parts – Substantial part copied – Copyright Act, 1956 (4 & 5 Eliz 2 c 74), s 2(5)(a) and s 49(1).

The respondents were well-known bookmakers who had done business for many years in fixed odds football betting sending out to their clients each week during the football season a fixed odds football coupon. The coupon was a sheet of paper on which were printed sixteen lists of matches to be played each week; each list was headed with an appropriate name and offered a variety of wagers at stated odds and contained explanatory notes. One of the lists contained the full list of matches to be played at the end of the week this list being determined by the Football League who owned the copyright in it. The other lists were shorter lists of matches selected by the respondents from the full list. Altogether the coupon offered 148 varieties of wager at widely differing odds. A great deal of skill, judgment, experience and work had gone into devising the coupon for the respondents had to select from the very great variety of possible wagers those that would appeal to the punter while being profitable to the respondents, and had then to arrange and describe the selected wagers in an attractive way on the coupon. The respondents had not altered their coupon since 1951, though the selection of matches in the lists was necessarily changed each week. Some of the wagers offered by the respondents were commonly offered by other bookmakers. The appellants, who were also well-known bookmakers, decided to enter the field of fixed odds football betting in 1959, and in devising their coupon for the 1960/1961 season they copied from the respondents’ coupon fifteen out of the sixteen lists arranging them in the same order as they appeared in the respondents’ coupon, in many cases with the same headings and almost identical varieties of wager, and with similar explanatory notes. They did not copy the odds offered by the respondents but worked these out for themselves and since the respondents’ and the appellants’ coupons were published simultaneously each week there was no copying of matches selected by the respondents. The respondents claimed copyright in their coupon and alleged infringement by the appellants. By the Copyright Act, 1956, s 2(1) copyright subsisted in every “original” literary work, a literary work including, by virtue of s 48(1), a compilation. Under s 2(5)(a) and s 49(1) copyright gave the exclusive right to reproduce a substantial part of the work in any form. Though the appellants admitted copyright in the respondents’ selection of matches and statement of odds (neither of which they had copied) they denied copyright in the rest of the coupon. It was not disputed that, as regards a compilation (such as the coupons), the originality requisite to render a work original for the purposes of s 2(1) was a matter of degree depending on the amount of skill, judgment or labour that had been involved in making the compilation.

Held –

(i) for the purpose of determining whether the respondents’ coupon had the originality requisite to render it original work within s 2(1) of the Copyright Act, 1956, it was right to take into account the considerable skill, judgment and labour expended by the respondents in the selection of types of wagers, for the production of the coupons was an object of the work so done and that work was preparatory work which could not properly be excluded moreover (per Lord Evershed) after the work of deciding the wagers had been done, there still remained the further task, requiring considerable skill, labour and judgment, of expressing and presenting the chosen wagers for the eye of the customer accordingly there was copyright in the respondents’ coupon.

(ii) on the facts the copying of the respondents’ coupon by the appellants amounted to reproduction of a substantial part of the compilation, and accordingly there was infringement of the respondents’ copyright by the appellants

Appeal

Sir Frank Soskice QC, P J S Bevan and I T R Davidson for the appellants.

Gerald Gardiner QC and D G A Lowe for the respondents.

21 January. The following opinions were delivered.

21 January 1964. The following opinions were delivered.

LORD REID. My Lords, the respondents are well-known bookmakers. Each week during the football season they have for many years sent out to their clients-referred to as punters-a fixed odds football betting coupon. The appellants are also old established bookmakers. They decided to enter this field of betting in 1959 and began to send out coupons which closely resembled the respondents’ coupons. The respondents claim copyright in their coupons and allege infringement by the appellants. The appellants maintain that only certain parts of the respondents’ coupons are copyright and they deny infringement. The decision of Lloyd-Jacob J in favour of the appellants was reversed by the Court of Appeal (Lord Denning MR and Donovan LJ, Diplock LJ dissenting) and an injunction was granted. The appellants now seek to have the order of Lloyd-Jacob J restored.

A coupon is a sheet of paper on which are printed various lists of forthcoming matches between well-known teams. One called “Nothing Barred” is a full list of some fifty matches. The others are shorter lists of matches selected by the bookmaker from the full list. The bets offered in respect of these lists vary in character. From some the punter must pick a certain number of winners. From others he must pick so many home or away wins or draws or a combination of these. And there are other kinds of bets offered. The variety of bets offered is very great. The respondents’ coupon contained sixteen lists each with an appropriate name, and we were told that no less than 148 different varieties of bet were offered if one adds up all those offered under each list. Naturally the odds offered differ widely-from as low as 5-2 to as high as 20,001-1. And the respondents have one list of peculiar difficulty where they offer £100,000 for two pence. It is not disputed that a vast amount of skill, judgment, experience and work has gone into building up the respondents’ coupon. There is keen competition in this field. If the bookmaker selects matches too easy to forecast, or offers too favourable odds, he may lose very large sums. If his selections of types of bet, matches and odds do not appeal to punters they will go to rival firms. It appears that the respondents have not altered the general form of their coupon since 1951. They only occasionally alter the odds offered for each type of bet. What is new each week is the selection of the matches which are to go into the lists.

When the appellants decided to enter this field they had to devise a suitable form of coupon. Their manager who was given this task was formerly employed by the respondents, but it appears that he tried to devise a form of coupon substantially different from the respondents’ coupon. The coupons of some twenty other firms in the business were produced at the trial, and, while they have a general similarity, they vary very much in the nature of their lists and the variety of bets offered in respect of many of the lists. Most of them were studied by the appellants’ manager, but his proposals were rejected by the appellants’ managing director, who adopted a form closely similar to the respondents’ coupon. The respondents had sixteen lists: the appellants’ coupon contains fifteen of these lists, all of which appear in the same order as in the respondents’ coupon. Moreover, the varieties of bets offered by the appellants in each of these fifteen lists are almost identical with the offers by the respondents in their corresponding list. It is true that, with I think one exception, each of these lists is to be found in one or more of the other bookmakers’ coupons and some are to be found in almost all of them. But the appellants do not suggest that the close resemblance between their coupon and the respondents’ coupon is fortuitous. They admit that a good deal was simply copied from the respondents, and they say that they were entitled to do that. By no means everything was copied. For some of the lists they devised new names or headings, and the learned trial judge has found that they worked out for themselves the hundred or more different odds offered in respect of the various kinds of bets. It was impossible to copy the selections of matches: the selections must be from the matches to take place in the following week, so there would not be time for one bookmaker to copy from the coupon of another matter which alters every week.

The first question to be determined is whether or to what extent copyright attaches to these coupons. The respondents say that a coupon must be regarded as a single work and that as such it is protected by copyright. The appellants seek to dissect the coupon. They would not only dissect it into the sixteen lists, but they would further dissect each list into heading, selection of matches, and statement of odds offered for the various kinds of bets. They admit that there is copyright in the selection and in the statements of odds offered: they can safely do that because there they did not copy. But they deny any copyright as regards the rest of the coupon. The Copyright Act, 1956, provides, by s 2, that copyright shall subsist in every original literary work and, by s 48, that literary work includes any written table or compilation. I have no doubt that the coupon must be treated as a single compilation. The appellants’ dissection theory is derived from some statements in infringement cases and I must, therefore, examine at this point the law regarding infringement. Copyright gives the exclusive right to do certain things including “reproducing the work in any material form”, (s 2(5)(a)), and reproduction includes reproduction of a substantial part of the work (s 49(1)). Broadly, reproduction means copying, and does not include cases where an author or compiler produces a substantially similar result by independent work without copying. If he does copy, the question whether he has copied a substantial part depends much more on the quality than on the quantity of what he has taken. One test may be whether the part which he has taken is novel or striking, or is merely a commonplace arrangement of ordinary words or well-known data. So it may sometimes be a convenient short cut to ask whether the part taken could by itself be the subject of copyright. But, in my view, that is only a short cut, and the more correct approach is first to determine whether the plaintiff’s work as a whole is “original” and protected by copyright, and then to inquire whether the part taken by the defendant is substantial. A wrong result can easily be reached if one begins by dissecting the plaintiff’s work and asking, could section A be the subject of copyright if it stood by itself, could section B be protected if it stood by itself, and so on. To my mind, it does not follow that, because the fragments taken separately would not be copyright, therefore the whole cannot be. Indeed, it has often been recognised that if sufficient skill and judgment have been exercised in devising the arrangements of the whole work, that can be an important or even decisive element in deciding whether the work as a whole is protected by copyright.

The appellants relied on cases where it has been held that in general the title of a work is not copyright. Those cases are dealt with by Lord Wright in the judgment of the Privy Council in Francis Day and Hunter Ltd v Twentieth Century Fox Corpn Ltd, and I think that he rightly expressed the principle when he said ([1939] 4 All ER at p 197; [1940] AC at p 122):

“The copying which is complained of is the use of the title, and that is too unsubstantial on the facts of this case to constitute an infringement.”

None of the decisions cited in argument appears to me to conflict with the view that one must first decide whether the plaintiff’s work as a whole is entitled to copyright and then see whether the part taken is a substantial part. The only apparent exception would seem to be a case such as Leslie v Young & Sons where a compilation was treated as consisting of severable parts, one of which was held to be original work and copyright while the rest was not. The appellants’ main argument was based on quite a different ground. They deny that the respondents’ coupon is an original compilation. There is no dispute about the meaning of the term “original”:

“The word `original’ does not in this connexion mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought, and, in the case of `literary work’, with the expression of thought in print or writing. The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work-that it should originate from the author”

per Peterson J in University of London Press Ltd v University Tutorial Press Ltd ([1916] 2 Ch 601 at p 608). It is not disputed that, as regards compilation, originality is a matter of degree depending on the amount of skill, judgment or labour that has been involved in making the compilation.

In the present case, if it is permissible to take into account all the skill, judgment and labour expended in producing the respondents’ coupon, there can be no doubt that it is “original”. But the appellants say that the coupon must be regarded as having been produced in two stages: first, the respondents had to decide what kind of business they would do-what kinds of bets they would offer to their clients-and then they had to write these out on paper. The appellants say that it is only the skill, judgment and labour involved in the latter stage that can be considered and that that part of their operation involved so little skill, judgment or labour that it cannot qualify as “original”. In fact the respondents did not proceed in that way. Their business was to devise a coupon which would appeal to the betting public, and its form and arrangement were not something dictated by previous decisions about the nature of the bets to be offered. The appellants likened the coupon to a trader’s catalogue of his wares, and argued that in considering whether a catalogue is entitled to copyright one must disregard the trader’s skill and work in deciding what wares he will stock for sale and only consider the skill and labour involved in the actual preparation of the catalogue. I do not think that that is a true analogy. Even in the case of a catalogue there may be a question whether the work in deciding what to sell and the work in deciding how to sell it are not so inter-connected as to be inseparable. Copyright in a catalogue in no way prevents honest competition-any other trader can decide to stock and sell any or all of the catalogued articles, and he can thereafter make a new catalogue of his own wares. What he must not do is simply to copy the other traders’ catalogue.

The appellants rely on Purefoy Engineering Co Ltd v Sykes Boxall & Co Ltd, and, in particular, on some observations therein (6 (1955), 72 RPC at p 99). As two of your lordships were parties to that decision I need not say more than that I am satisfied that those observations do not assist the appellants. It is to be observed that earlier in the judgment ((1955), 72 RPC at p 95) the decision in Collis v Cater, Stoffell and Fortt Ltd, was expressly approved. There North J held that a somewhat lengthy chemist’s catalogue was entitled to copyright, although it contained “nothing whatever but a simple list” ((1898) 78 LT at p 614) of drugs, etc with names and prices which the plaintiff kept in stock or could obtain to order. The cases where copyright has been denied to a compilation are comparatively few, the most important being Cramp & Sons Ltd v Frank Smythson, Ltd. There the work was a pocket diary with a number of pages containing information such as is usually found in diaries. The trial judge, Uthwatt J had said ([1944] 2 All ER at p 93; [1944] AC at p 330) that he could not see that the selection of lists and tables and the arrangement of the diary were anything other than a commonplace selection of gobbets of information and a commonplace arrangement neither of which involved any real exercise of knowledge, labour, judgment or skill. Viscount Simon LC ([1944] 2 All ER at p 94; [1944] AC at p 335), having approved a passage in the judgment of Lord Atkinson in Macmillan & Co v Cooper to the effect that the precise amount of knowledge, labour, judgment or literary skill or taste which the author must bestow in order to acquire copyright must in each case be very much a question of degree, went on to say ([1944] 2 All ER at p 95; [1944] AC at p 336):

“There was no evidence that any of these tables was composed specially for the respondents’ diary; there was no feature of them which could be pointed out as novel or specially meritorious or ingenious from the point of view of the judgment or skill of the compiler; it was not suggested that there was any element of originality or skill in the order in which the tables were arranged.”

I think that the present case differs from that case in every one of these features, and I am satisfied that copyright did attach to the respondents’ coupon.

As regards infringement, I have already indicated the extent to which the appellants copied from the respondents’ coupon. That appears to me to amount to a very substantial part of the coupon both in quantity and quality. In this connexion, I think that there is much wisdom in the reference by Peterson J to the “rough practical test that what is worth copying is prima facie worth protecting”-in University of London Press Ltd v University Tutorial Press Ltd ([1916] 2 Ch at p 610). I would therefore hold that there has been infringement, and that this appeal should be dismissed.

LORD EVERSHED. My Lords, the vital question in the present case is whether the respondents have established that copyright subsisted in the whole of the football betting coupons issued by them for the season 1960-61, that is to say, whether each such coupon is, within the terms of s 2, as expanded by s 48, of the Copyright Act, 1956, an original literary compilation. Lloyd-Jacob J gave a negative answer to this question and the appellants’ argument before your lordships was to the same effect. Alternatively, the appellants contended that if copyright could exist at all in the coupons it must be limited to that part of the document which is called its “headings”. On this difficult matter there has been a difference of judicial opinion, and I have for my part not found the question one easy to answer, since the football coupon as a document has characteristics which distinguish it from other “compilations” which have been considered in the many cases cited to your lordships, and the problem is, therefore, in important respects novel. In argument the analogy was naturally drawn to cases in which anthologies or catalogues had been considered; and, although I think the example of the catalogue is useful for present purposes, it seems to me that, for reasons that later appear, there is perhaps the closest analogy in the decided cases with that of the diary including the tables of dates, weights and measures, etc, commonly found therein which came before this House in the case of Cramp & Sons Ltd v Frank Smythson, Ltd.

No doubt the document (that is, the coupon) is ex facie a compilation in the sense that it is made up by putting together in writing (that is, in print) a number of individual items or components. Nonetheless, the coupon is peculiar in this respect: it is the actual instrument of trade used by those concerned in the business of bookmaking. It is the thing sent out by the trader to his actual or potential customers and it is then returned by the customers with their selections of the wagers offered, that is, their choices of the numerous alternative forecasts which they are invited to make written thereon by them. In this respect the coupon might be comparable to a list or catalogue used by a trader who had in fact no premises available for visiting by customers-the catalogue containing a list of the items offered by the trader for sale with appropriate spaces in which the customer could indicate which of the items he wanted and would then return the list or catalogue with his name and address written thereon and (perhaps) a statement of the total sum involved. In this case what correspond to the articles offered for sale by the trader are the wagers offered by the bookmaker. As my noble friend, Lord Reid, has pointed out, the coupon is concerned with the Association Football matches played during the football season. On every Saturday during the season there are some fifty-four matches played by the professional teams of the English divisions and the Scottish League. It is obvious that the different forecasts which such a list of matches could comprehend is in number very large indeed since not only may the punter be invited to forecast which of two teams in any match (that is the home team or the away team) will win or whether the result will be a draw, but he may be also invited to forecast what the position in any match will be at half time, and also how many goals each team in any match may score both at half time and at the end of the match. It is also abundantly clear on the evidence produced in the case that the appropriate odds which the bookmaker may safely or profitably offer in respect of any forecast or group of forecasts is something which only great skill, industry and experience will discover; and further, that the selection and description of the wagers which will attract custom is no less a matter of skill, judgment and experience. It was further made clear that, since potential customers will inevitably tend to be attracted by the same or similar wagers, certain of them have become very commonly adopted by those concerned in the trade-for example the so-called “Nothing barred list”; so that anyone entering this type of business would almost inevitably have to include such a list and other similar wagers commonly found presented by other bookmakers, and would be no more poaching on the preserves of a competitor by so doing than would a newcomer, for example, in the tobacconist trade by offering (and stating that he offered) certain well-known brands of cigarettes which every tobacconist would be expected by the public to offer for sale. To what has been said one other important consideration must be added, namely, that the list of matches played in each week has at all relevant dates been determined by the Football League, who own the copyright in such list.

So it is said on the part of the appellants that the coupon as a document could have no originality, since it is essentially composed merely of a selection of well-known and well-tried wagers, and is composed each week merely by applying these well-known and well-tried wagers to all, or a limited number, of the League’s list of matches. It was also said on the appellants’ part that the selection involved in making up the coupons was no more than putting in print what were called “ideas” involving, therefore, nothing in the way of original literary work in any sense: and your lordships’ attention was directed to the well-known proposition that there is no copyright in ideas. My lords, I have reached a conclusion adverse to these contentions. When one takes one of these coupons in one’s hand and looks at it, the right conclusion is, to my mind, that it falls sensibly and properly within the definition of an original literary compilation. True it is that no question of literary taste or quality is involved that would give to the coupon the award of literature as normally understood; but, having regard to the introduction of a compilation into the definition, that clearly cannot be a decisive factor, since otherwise such things as lists or catalogues could never have been held to have been properly subject to copyright. The result, in my opinion, is that the respondents’ coupon is in truth a compilation in writing which is distinctive and original. True it is that a great amount of work is devoted to calculating the odds; but this is not a case in which, in my opinion, the resulting document, that is the coupon, has involved no further skill, labour or judgment-any more than was the list of matches themselves treated as involving no distinctive or original work by Upjohn J in the case of Football League Ltd v Littlewoods Pools, Ltd. There can, in my judgment, be no doubt on the evidence in the present case that when all the hard work has been done in deciding on the wagers to be offered there still remains the further distinct task, requiring considerable skill, labour and judgment (though of a different kind) of devising the way in which the chosen wagers are expressed and presented to the eye of the customer. As I have earlier stated, the case on its facts which might be thought nearest to the present is that already mentioned of Cramp & Sons Ltd v Frank Smythson, Ltd: for there the document in which copyright was sought was itself the thing, that is the diary, which was handed out by the trader to the customer. In that case, however, as appears from the statement of facts, there was no evidence whatever bearing on the work which had been incident to the preparation of the plaintiff’s diary and particularly to the tables contained in it. On the other hand, it was clearly proved that the various tables which were inserted in the plaintiff’s diary were tables commonly so inserted in other diaries. Thus, in the course of his speech Viscount Simon LC said ([1944] 2 All ER at p 95; [1944] AC at p 336):

To the same effect Lord Macmillan said ([1944] 2 All ER at p 96; [1944] AC at p 338):

“The inclusion or exclusion of one or more of the tables constituting the ordinary stock material of the diary-compiler seems to me to involve the very minimum of labour and judgment.”

The distinction may be fine between those cases in which a list or table is regarded as properly entitled to copyright and those cases in which a list or table is not so regarded. This, indeed, readily appears from the case of Leslie v Young & Sons where the compilation from the official railway timetables of a local timetable relating to a particular town was not regarded as constituting an original work entitled to copyright though the compilation of certain circular tours in reference to the same town was regarded as so entitled. It must further be taken as well established, as stated by Lord Atkinson in delivering the judgment of the Judicial Committee in Macmillan & Co v Cooper ((1923), 93 LJPC 113 at p 121), that the precise amount of knowledge, labour, judgment or skill which must be bestowed on a compilation in order that it should acquire copyright within the meaning of the Act cannot be defined in precise terms but must in every case depend largely on the special facts of that case and be very much a matter of degree.

On the facts of this case, and in the light of the authorities to which I have alluded, I conclude that there was present here the requisite degree of skill, judgment and labour not only in selecting out of the vast possible total of wagers those which should be offered but also in the way in which the result of the selection was presented to the customer, including particularly the arrangement of the document and of its component headings and the way in which such headings were described and were coloured and also in the way in which, in the appropriate notes underneath the headings, the punter was informed of the possibilities open to him under each heading.

If I am so far right, then the question remains: was there here sufficient copying to amount to infringement of the respondents’ copyright in their relevant coupon? On the premise supposed, my answer to this question is clearly in the affirmative. It is not in doubt that what amounts in any case to substantial reproduction within the meaning of s 2(5)(a) and s 49 of the Copyright Act, 1956, again cannot be defined in precise terms but must be a matter of fact and degree. It will, therefore, depend not merely on the physical amount of the reproduction but on the substantial significance of that which is taken. Counsel for the respondents prepared for your lordships a table showing the striking similarities in fact between the respondents’ relevant coupon and the coupon of the appellants, and I confess that I have found this table not less impressive after having seen counsel for the appellants’ similar table showing (as undoubtedly is the fact) that a high proportion of the wagers in fact offered by the respondents may also be found offered by coupons produced by other rival bookmakers. It seems, however, clear on the evidence that Mr C Steinc on a vital occasion chose to reject the suggested form of coupon which had been prepared for his consideration in favour of adopting a coupon which was a remarkably close parallel to that of the respondents (and thereby of relying on the skill and experience of the respondents in their past trading) not only in that the appellants’ coupon contained fifteen out of sixteen of the headings to be found in the respondents’ coupon, and substantially in the same order, but also in that the lay-out and presentation of these wagers, including the appendant notes, follow substantially the precedent found in the respondents’ coupon. I do not of course forget-and this should be said in fairness to the appellants-that in this case beyond question a great deal of trouble had been taken, a great deal of work had been done by the appellants and their officers in working out the effect of the various wagers which they might offer and in reaching a conclusion on what wagers they could offer having regard particularly to the limits of their subscribed capital. In other words, this not a case in which the appellants have been shown merely to have copied the respondents’ coupon without having done any work or any substantial work whatever in regard to the conduct of the business in which they were about to engage. Nevertheless, for reasons which I have already endeavoured to state, there is in my judgment here a real distinction between the work done in arriving at conclusions on what wagers could properly and safely be offered and the work done in designing the nature and appearance and general lay-out of the coupon as a literary compilation: and in my judgment, for reasons which I have also endeavoured to state, I have felt compelled to the conclusion that there was here a sufficient substantial copying by the appellants to amount to an infringement of the respondents’ copyright. I add only a reference to that part of the judgment of Lloyd-Jacob J in which he himself came to the conclusion that there were “a number of features of correspondence which are to my mind too indicative of copying to be overlooked”. The learned judge gave certain instances; but it was not of course necessary for him, having regard to the view which he had taken on the existence of copyright in the coupon, to arrive at any precise conclusion as to the amount and extent of the copying in fact done by the appellants.

Having stated my conclusion I wish to add only my regret to find myself differing from Diplock LJ in this matter. With all respect, however, I have been unable to agree with him that (to use his words):

“Although the whole document attracts literary copyright, because it is a `compilation’ of matches selected … the part of it which has been copied is not the part which is a compilation but is mere words descriptive of the type of wager offered at the stated odds … “

As it seems to me, and for the reasons which I have already given, the respondents’ coupon is, as a whole, a compilation, an original literary work within the meaning of the Act of 1956 and the reproduction of it by the appellants seems to me to be of sufficient significance to amount to a substantial reproduction. I also venture to think that the learned lord justice was not entitled to conclude, as he did, that the case of Purefoy Engineering Co Ltd v Sykes Boxall & Co Ltd is authority for the view that a tradesman desiring to compete with another tradesman is entitled not only to sell identical kinds of goods but also for the purpose to copy the rival’s list of goods which he had previously published. I confess that I was at an early stage of the argument somewhat troubled by the possible effect of the form of the injunctiond granted by the Court of Appeal. Assuming that the respondents had established their right under the Copyright Act, 1956, and had also proved reproduction by the appellants, then no doubt the form of the injunction is one appropriate and common in the circumstances. Nonetheless, I confess that I was somewhat disturbed less the equitable remedy of the injunction might, having regard to the circumstances of the present case and particularly the correspondence in the types of wagers offered by all bookmakers engaging in this kind of business, work inequitably on the appellants by placing them in such difficulties as almost to prevent their continuing to carry on their business. I am glad, however, to say that on this matter I have been since relieved. Counsel for the respondents was able to show that the appellants have in fact been able to conduct their business during the present football season by the use of coupons to which counsel freely admitted there could be no objection on the part of the respondents. It is also to be borne in mind that if the respondents should attempt to make an unjust and unfair use of the injunction it would be open to the appellants on producing a form of coupon which they could show did not involve any infringement of the respondents’ copyright to apply, on giving appropriate undertakings (e.g., to adhere to the coupon which they so produced) to have the injunction discharged.

For the reasons which I have attempted to state I therefore agree that this appeal should be dismissed.

LORD HODSON. My Lords, the first question is whether copyright subsists in the respondents’ fixed odds football coupons. The second is whether the appellants have, if the answer to the first question is in the affirmative, infringed the respondents’ copyright by appropriating a substantial part of their labours by the publication of similar coupons. The respondents failed in their action at first instance, because Lloyd-Jacob J answered the first question in the negative, holding that they were not entitled to copyright protection in respect of their coupons. On appeal the Master of the Rolls and Donovan LJ held that the respondents were entitled to protection, that their copyright had been infringed and granted an injunction. Diplock LJ dissented and was of the same opinion as Lloyd-Jacob J

The coupons are protected, if at all, as compilations which are by definition treated as literary work, see s 48(1) of the Copyright Act, 1956. The words “literary work” cover work which is expressed in print or writing irrespective of the question whether the quality or style is high, as was pointed out by Peterson J in University of London Press Ltd v University Tutorial Press Ltd ([1916] 2 Ch at p 608). The coupons are compilations, being derived from various sources, unless they are not original, for copyright subsists only in original literary work; see s 2(1) of the Act of 1956. Thus, commonplace matter put together or arranged without the exercise of more than negligible work, labour and skill in making the selection will not be entitled to copyright. “Whether enough work, labour and skill is involved, and what its value is, must always be a question of degree”. Cramp & Sons Ltd v Frank Smythson Ltd ([1944] 2 All ER at p 97; [1944] AC at p 340), per Lord Porter.

The appellants have sought to argue that the coupons can be dissected and that on analysis no copyright attaches to any of their component parts and accordingly no protection is available. In my opinion this approach is wrong and the coupons must be looked at as a whole. Copyright is a statutory right which by the terms of s 2 of the Act of 1956 would appear to subsist, if at all, in the literary or other work as one entity. True it is that the list of matches, fifty-three in number, to be played on a Saturday is not the subject of the respondents’ copyright nor did the appellants copy it. Similarly, the restricted lists of matches which the appellants used was not copied from that of the respondents; the lists came out simultaneously. Again, the odds quoted in the lists, involving mathematical calculation, were worked out independently and not copied, as the learned judge found. A significant feature of the respondents’, or indeed of any other, coupon is the method of arrangement which has been described colloquially as the lay-out. I prefer to use the word arrangement which is relevant in considering labour involved in making a compilation. In Lamb v Evans a trades directory consisted of advertisements classified under headings denoting the different trades, composed by the plaintiff or persons found by him to compose them. The Court of Appeal, affirming Chitty J held that the headings were the subject of copyright. Bowen LJ said ([1893] 1 Ch at p 227):

“They are the result of literary labour, both as regards the composition of the headings themselves and their collocation or concatenation in the book”

I would not therefore accept the submission of the appellants, which appears to have been accepted by the learned Master of the Rolls, that except where artistic merit is concerned no question of “lay-out” or, as I prefer to call it, method of arrangement is relevant. Moreover, in the case of the respondents’ coupon the selection of headings showing the choice of bets offered by the respondents is itself shown to have been the result of skill and labour expended on them.

It was submitted by the appellants that these headings were the equivalent of titles of a book or play and that titles could not be protected. They relied on two cases, Dicks v Yates and Francis Day and Hunter Ltd v Twentieth Century Fox Corpn Ltd neither of which support the proposition that, as a matter of law, copyright cannot subsist in titles. No doubt they will not as a rule be protected, since alone they would not be regarded as a sufficiently substantial part of the book or other copyright document to justify the preventing of copying by others. In any event, there is good authority for the protection of headings in a proper case in Lamb v Evans where the headings in question were elaborate and given in each case in English, French, German and Spanish.

Even if the appellants had been able by their method of approach to destroy piecemeal the respondents’ claim to copyright in the way in which they have sought to do, this would not effect their object, for it is clearly established that a claim to copyright may subsist by virtue of selection alone. In the judgment of the Privy Council delivered by Lord Atkinson in Macmillan & Co v Cooper ((1923), 93 LJPC at p 119) the following extract from the judgment of Sir Arthur Wilson J appears (this relates to Palgrave’s Golden Treasury, the subject of the action Macmillan v Suresh Chunder Deb ((1890), ILR 17 Calc 951) tried by Sir Arthur Wilson in Calcutta):

“In the case of works not original in the proper sense of the term, but composed of, or compiled or prepared from materials which are open to all, the fact that one man has produced such a work does not take away from anyone else the right to produce another work of the same kind, and in doing so to use all the materials open to him. But, as the law is concisely stated by HALL, V.-C., in Hogg v. Scott ((1874), LR 18 Eq. 444 at p 458) `The true principle in all these cases is, that the defendant is not at liberty to use or avail himself of the labour which the plaintiff has been at for the purpose of producing his work-that is, in fact, merely to take away the result of another man’s labour, or, in other words, his property.'”

The decision in Palgrave’s casee depends in no way on the fact that the copyright in the works of the original authors had lapsed, and its correctness cannot I think be doubted. The copyright of the author of the anthology resided in the aggregate of the work.

Macmillan v Suresh Chunder Deb (1890), ILR 17 Calc 951

If the respondents have employed more than negligible skill and labour in their selection of sixteen lists containing varieties of bets which they offer to their customers, they are entitled to be protected in respect of their coupons as being original compilations. The evidence shows that this selection was a highly skilled matter involving, as the learned Master of the Rolls said, selections from an infinity of choice and much expenditure of time, money and effort. I agree, therefore, with the majority of the Court of Appeal that the respondents’ coupons are entitled to protection as compilations, for the amount of skill and labour employed is not to be regarded as negligible.

I have not overlooked the argument which appealed to Diplock LJ based on the undoubted truth that copyright is concerned not with the originality of ideas but with the expression of thought, in the case of literary work, with the expression of thought in print or writing. The argument is supported by reference to the case of Purefoy Engineering Co Ltd v Sykes Boxall & Co Ltd. The actual decision in that case does not assist the argument, but there is there drawn a distinction between skill and labour devoted to the selection of a range of goods in which the plaintiffs were intending to trade and that employed for the purpose of bringing into existence the literary work, namely, a catalogue. It may well be that there are cases in which expenditure of time and money has been laid out which cannot properly be taken into account as skill and labour involved in bringing into existence the literary work, be it catalogue or other compilation. This, however, is not, in my opinion, such a case, and I cannot accept that preparatory work must be excluded in this case so as to draw a line between the effort involved in developing ideas and that minimal effort required in setting those ideas down on paper. The catalogue cases, such as Collis v Cater, Stoffell and Fortt, Ltd show that preparatory work can be relevant matter for consideration. That case concerned a catalogue which was nothing more than a simple list of certain articles described by their common names. Compare also Canterbury Park Race Co Ltd v Hopkins ((1932), 49 NSWWN 27 at p 28) where preparatory work is referred to in connexion with a race card. The respondents’ work is in my opinion such that copyright subsists in it.

There remains the question whether there has been a substantial appropriation by the appellants of the independent labour of the respondents. Substantiality depends on quality not quantity, as is illustrated by the case of Hawkes & Son (London) Ltd v Paramount Film Service Ltd, where the refrain only of “Colonel Bogey” was appropriated. True that the bulk of the coupon documents consists of lists of matches and of odds offered in which (as calculations) no copyright is claimed but the essential feature of the coupons, indeed of all the football coupons in evidence, is the selection of a limited number of matches from the whole number and the selection of a number of bets. These bets require nice calculation and great skill in order to ensure that the bookmaker will win vis-a-vis the punters as a whole, while at the same time the odds offered will not be so unattractive to the individual punter that he will not fill in the coupon in the hope of winning.

An analysis of the bets offered in which the respondents’ and appellants’ lists are checked with those of other bookmakers demonstrates that, as Lloyd-Jacob J put it, there are a number of features of correspondence which are too indicative of copying to be overlooked. The selection of and the arrangements of these lists of bets with their footnotes are, to my mind, the essential feature of the respondents’ coupon and Mr William Hillf scarcely put it too high when he claimed in his evidence that the appellants had in 1960, the first year in which they entered the fixed odds business, taken the respondents’ coupon, put their name on it, and put a point on here and a point on there. The appellants are not, in my opinion, able to escape by saying that all that they have done is to give banal commonplace descriptions to matter which is common to all engaged in the business and that even if they have copied they have copied nothing of any significance. I think that it is not inappropriate in this connexion to quote the words of Peterson J in the case from which I have citedg when he said “there remains the rough practical test that what is worth copying is prima facie worth protecting”. I have no doubt that the appellants have taken a substantial part of the respondents’ copyright.

I would dismiss the appeal.

LORD DEVLIN. My Lords, I think that this appeal can be determined on quite a short point. It is an important point and one that has led to a difference of judicial opinion. The respondents are bookmakers who devoted a great deal of time, skill and experience to the preparation of a fixed odds betting coupon for football matches. There is an infinity of ways of betting on the results of the fifty-four League matches that are played every Saturday during the season. The simplest and obvious way is for the bookmaker to offer odds against the punter picking winners out of the whole list; the more winners that he wagers that he will pick the greater the odds. Then you can have “restricted” lists of selected matches in which there can be all sorts of variations; the punter can be invited to pick home wins, away wins and draws in various combinations. Then you can invite him to forecast scores full-time and half-time. The respondents’ coupon contains sixteen different lists of matches, each list permitting of a number of different wagers which the punter can make against odds fixed according to tables given in the coupon. It is common ground that the preparation of a coupon with bets of this sort requires a great deal of industry and skill. Among other things, skill is required in the selection of types of wagers that will appeal to punters while offering a good profit to the bookmaker, in arranging them on the coupon and giving them attractive headings.

That a document prepared in this way can be the subject of copyright is not disputed. Nor is it disputed that the appellants copied it. They were newcomers in a field in which the respondents had been successful pioneers. They thought rightly that the types of wagers selected by the respondents would be those shown by experience to be both attractive and profitable, and that they would do better to rely on the respondents’ selection than to make their own. They also adopted to a large extent the arrangement and the headings. If the argument did not go beyond this point, it would, I think, be plain that there was a breach of copyright. There is copyright in every original literary work, which by definition includes compilation, so that there can be copyright in such productions as timetables and directories, provided always they are “original”. The requirement of originality means that the product must originate from the author in the sense that it is the result of a substantial degree of skill, industry or experience employed by him. The appellants argue that the skill, industry and experience admittedly employed by the respondents was not employed in the production of the coupon. It was employed, they say, in the selection of types of wager. These wagers were, so to speak, the articles which the respondents offered for sale to the public. Like other salesmen, the respondents had as a matter of business to decide what sort of wares they were going to offer. The making of that choice is a matter of business which, it is argued, is irrelevant for the purposes of copyright. So the skill and labour devoted to the work of selection must be exorcised. What is left, that is, the skill and labour required to express in writing a business decision, is negligible; and so there is no originality. This is the short point taken by the appellants which found favour with Lloyd-Jacob J at the trial and with Diplock LJ dissenting in the Court of Appeal.

My lords, both on principle and on authority, it appears to me to be an unsound point. Any selection, for an example an anthology, requires a process of decision between alternatives, and I cannot see that it matters whether the decision is made on literary or on business grounds. An anthology of saleable poems is as much entitled to protection as an anthology of beautiful poems. It is pointed out, quite rightly, that an anthology is different from a list that is descriptive of articles for sale, since the anthology is itself the thing that is to be offered for sale. But if this distinction was a good one, there could never be a copyright in a catalogue of goods. Such a proposition would be contrary to Collis v Cater, Stoffell and Fortt, Ltd. This case was applied by the Court of Appeal in Purefoy Engineering Co Ltd v Sykes Boxall & Co Ltd ((1955), 72 RPC at p 95), where it was described as a decision that had never been doubted. I do not think that your lordships should now overrule it, or that it can be distinguished on the grounds adopted by Diplock LJ in the Court of Appeal. Masson Seeley & Co Ltd v Embosotype Manufacturing Co is another case in which Tomlin J held that there was copyright in a trade catalogue.

I do not think that it is necessary in this type of case that the work done should have as its sole, or even as its main, object the preparation of a document such as a list or catalogue or race card. It is sufficient that the preparation of the document is an object of the work done. If that be so, the work cannot be split up and parts allotted to the several objects. The value of the work as a whole must be assessed when the claim to originality is being considered. If, when the work of selection is being done, there is no intention of listing results, the matter might well be different. A line could then be drawn between the work of selecting and the work of recording a selection independently made. No such line can be drawn in the present case which is, to my mind, much stronger than the ordinary case in which goods are being catalogued. The whole object of the work done was the production of the coupon. It was argued on behalf of the appellants, still on the analogy of the sale of goods, that a decision against them would amount to grave interference with freedom of trade. There is no copyright in business methods. If a wine merchant, it was argued, selected a dozen different wines as having in combination a special appeal, and arranged the bottles together in a shop window, there was nothing to prevent a rival trader copying the arrangement. Ought it to make any difference if, instead of a shop window arrangement, the merchant makes a list? My lords, I think with respect that this argument is based on a fundamental misapprehension of the law of copyright. The law does not impinge on freedom of trade; it protects property. It is no more an interference with trade than is the law against larceny. Free trade does not require that one man should be allowed to appropriate without payment the fruits of another’s labour, whether they are tangible or intangible. The law has not found it possible to give full protection to the intangible. But it can protect the intangible in certain states, and one of them is when it is expressed in words and print. The fact that that protection is of necessity limited is no argument for diminishing it further; and it is nothing to the point to say that either side of the protective limits a man can obtain gratis whatever his ideas of honesty permit him to pick up.

I would therefore dismiss the appeal.

LORD PEARCE. My Lords, the question whether the plaintiffs are entitled to copyright in their coupon depends on whether it is an original literary work. The words “literary work” include a compilation. They are used to describe work which is expressed in print or writing irrespective of whether it has any excellence of quality or style of writing (per Peterson J in University of London Press Ltd v University Tutorial Press Ltd ([1916] 2 Ch at p 608)). The word “original” does not demand original or inventive thought, but only that the work should not be copied and should originate from the author (ibid). In deciding therefore whether a work in the nature of a compilation is original, it is wrong to start by considering individual parts of it apart from the whole, as the appellants in their argument sought to do. For many compilations have nothing original in their parts, yet the sum total of the compilation may be original. (See, for instance, the case of Palgrave’s Golden Treasuryh referred to by the Privy Council in Macmillan & Co v Cooper). In such cases the courts have looked to see whether the compilation of the unoriginal material called for work or skill or expense. If it did, it is entitled to be considered original and to be protected against those who wish to steal the fruits of the work or skill or expense by copying it without taking the trouble to compile it themselves. So the protection given by such copyright is in no sense a monopoly, for it is open to a rival to produce the same result if he chooses to evolve it by his own labours. (See Kelly v Morris ((1866), LR 1 Eq. 697 at p 701).)

In Lamb v Evans ([1893] 1 Ch at p 224) Lindley LJ said with regard to a trades directory,

“It appears to me that the plaintiff has an exclusive right to the publication of those headings with the translations-not that he can restrain other people from publishing the same sort of thing if they go about it in the right way, but he has a right to restrain other people from copying his book. There is so much common to his book and to other books of the same sort that they very likely will contain the same information. It is just like the case of a man who publishes a map of a particular country; another may publish a map of the same country exactly like it, if he makes his map from original materials; but the first can restrain the other from copying his map, which is a totally different thing.”

Thus, directories, catalogues, and the like have been held to be original and to acquire copyright if the work that goes to their making has been sufficient (Collis v Cater, Stoffell and Fortt Ltd; Blacklock (H) & Co Ltd v Pearson (C Arthur), Ltd. Where, however, the work of compilation was not “substantial” but was “negligible” it was held to have no copyright (Cramp & Sons Ltd v Frank Smythson Ltd). The arrangement of the material is one of the factors to be considered. Viscount Simon LC in that case said ([1944] 2 All ER at p 95; [1944] AC at p 336):

So in each case it is a question of degree whether the labour or skill or ingenuity or expense involved in the compilation is sufficient to warrant a claim to originality in a compilation.

Applying those principles to the present case I feel little doubt that the respondents’ coupon is entitled to copyright. The respondents have been pioneers in this field and have invented various bets and nomenclatures, some of which have been adopted by their rivals. A study of the coupons of twenty-three principal firms engaged in the fixed odds betting business shows that a large proportion of the bets in the respondents’ coupon are also offered by their rivals, and much similarity of language, arrangement and substance will be found in their coupons. It emerges clearly that the arrangement and contents of the coupon are the central point of the business-what one witness called the heart of the business. The coupon must contain an assorted selection of bets that will attract a customer and induce him to fill up the coupon in preference to rival coupons. To this end, the respondents have devoted much work and money and ingenuity. Out of the vast number of bets that can be offered, they select and devise those which, while being profitable to them, will fill the coupon with the greatest allure.

The appellants seek to say that this work is preliminary and has been directed to decisions as to what types of bets the respondents shall pursue in the business; that such decisions are merely ideas and as such not the subject of copyright; and that the work of actually writing down those ideas in the coupon is too easy and negligible to justify any claim to originality. An argument on those lines was unsuccessful in the case of the British Broadcasting Co v Wireless League Gazette Publishing Co, and Football League Ltd v Littlewoods Pools, Ltd. There may be cases where such a dichotomy might be justified between some preliminary work and the actual transcription of a compilation, if the work was done with no ultimate intention of a compilation. But on the facts of the present case such an argument cannot succeed. The whole of the respondents’ efforts from the beginning were devoted to arranging a coupon that would attract punters and be the basis of the respondents’ business. Types of bets were not considered in vacuo but only in relation to the part which they would play in the coupon. In my opinion the majority of the Court of Appeal rightly held that the respondents had established copyright in the coupon.

Did the appellants reproduce a substantial part of it? Whether a part is substantial must be decided by its quality rather its quantity. The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected. For that which would not attract copyright except by reason of its collocation will, when robbed of that collocation, not be a substantial part of the copyright and therefore the courts will not hold its reproduction to be an infringement. It is this, I think, which is meant by one or two judicial observations that “there is no copyright” in some unoriginal part of a whole that is copyright. They afford no justification, in my view, for holding that one starts the inquiry as to whether copyright exists by dissecting the compilation into component parts instead of starting it by regarding the compilation as a whole and seeing whether the whole has copyright. It is when one is debating whether the part reproduced is substantial that one considers the pirated portion on its own.

In the present case the learned judge found that there was deliberate copying, but he did not decide whether the part copied was substantial. The majority of the Court of Appeal thought that it was. I agree with them. There are many things which are common to many coupons. But the respondents’ coupon had an individuality. The appellants clearly modelled their coupon on the respondents’ coupon and copied many of the things that give it this individuality. I cannot regard these things taken together as other than substantial. There is force in the words of Peterson J in the case of the University of London Press Ltd ([1916] 2 Ch at. p 610) that “what is worth copying is … worth protecting”.

I would therefore dismiss the appeal.

Appeal dismissed.

Solicitors: Joynson-Hicks & Co (for the appellants); Hardcastle Sanders & Armitage (for the respondents).

Wendy Shockett Barrister.

Cases referred to in opinions

Blacklock (H) & Co Ltd v Pearson (C Arthur) Ltd [1915] 2 Ch 376, 84 LJCh 785, 113 LT 775, 13 Digest (Repl) 58, 78.

British Broadcasting Co v Wireless League Gazette Publishing Co [1926] Ch 433, 95 LJCh 272, 135 LT 93, 13 Digest (Repl) 61, 96.

Canterbury Park Race Course Co Ltd v Hopkins (1932), 49 NSWWN 27, 13 Digest (Repl) 62, * 43.

Collis v Cater, Stoffell and Fortt Ltd (1898), 78 LT 613, 13 Digest (Repl) 59, 81.

Cramp & Sons Ltd v Frank Smythson Ltd [1944] 2 All ER 92, [1944] AC 329, 113 LJCh 209, 171 LT 102, 13 Digest (Repl) 61, 94.

Dicks v Yates (1881), 18 ChD 76, 50 LJCh 809, 44 LT 660, 13 Digest (Repl) 72, 162.

Football League Ltd v Littlewoods Pools Ltd [1959] 2 All ER 546, [1959] Ch 637, [1959] 3 WLR 42, 3rd Digest Supp.

Francis Day and Hunter Ltd v Twentieth Century Fox Corpn Ltd [1939] 4 All ER 192, [1940] AC 112, 109 LJPC 11, 161 LT 396, 13 Digest (Repl) 114, 562.

Hawkes & Son (London) Ltd v Paramount Film Service Ltd [1934] Ch 593, 103 LJCh 281, 151 LT 294, 13 Digest (Repl) 116, 574.

Hogg v Scott (1874), LR 18 Eq 444, 43 LJCh 705, 31 LT 163, 13 Digest (Repl) 130, 711.

Kelly v Morris (1866), LR 1 Eq 697, 35 LJCh 423, 14 LT 222, 30 JP 628, 13 Digest (Repl) 109, 511.

Lamb v Evans [1893] 1 Ch 218, 62 LJCh 404, 68 LT 131, 13 Digest (Repl) 60, 89.

Leslie v Young & Sons [1894] AC 335, 13 Digest (Repl) 61, 95.

Macmillan v Suresh Chunder Deb (1890), ILR 17 Calc 951, 13 Digest (Repl) 57, * 31.

Macmillan & Co v Cooper (1923), LR 51 Ind App 109, 93 LJPC 113, 13 LT 675, 13 Digest (Repl) 63, 106.

Masson Seeley & Co Ltd v Embosotype Manufacturing Co (1924), 41 RPC 160, 13 Digest (Repl) 59, 86.

Purefoy Engineering Co v Sykes Boxall & Co Ltd (1955), 72 RPC 89, 13 Digest (Repl) 112, 537.

University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601, 86 LJCh 107, 115 LT 301, 13 Digest (Repl) 55, 53.