1

The University of Zambia

In association with
Zambia Centre for Accountancy Studies

INTELLECTUAL PROPERTY L352

MR TAWILA ANAMELA

CL1740
 2

Introduction

Property that results from thought or intellectual activity is as a referred to as intellectual

property1. Therefore, intellectual property protects the results of human creative endeavour and is
generally thought to comprise of four separate fields of law which are trademarks, patents,
copyrights, and trade secrets2. The essay will primarily focus on the field of law that refers to
copyright. Copyright can be understood as a property right 3. It normally vests in the author of the
work at first instance, except where it is created by an employee in the course of employment 4.
The owner of the copyright is normally granted these rights in two forms, namely, economic
rights and moral rights5. These rights can be tampered with, and copyright law protects the owner
of the said rights against those who use the form in as originally expressed by the author or a
substantial part of that form6. However, there are exceptions that the party can satisfy to dispute
that copyright infringement has taken place 7. The purpose of this essay is to discuss whether
Handy- Yabe’s in house counsel- can initiate an action for copyright infringement in the
Agreement and Privacy Policy (herein referred to as ‘Agreement’) that was drafted and
subsequently published.

Discussion

Copyright is property right8 that subsists in literary, dramatic, musical, or artistic work that are
original and in computer programs, audio-visual works, broadcasts, sound recordings, cable
programmes, typographical arrangements of published editions and compilations 9. It follows that
the owner of the copyright that subsists in a work has the exclusive rights to carry out certain act
such as making copies or selling the copies to the public 10. The rights come in two forms,
namely, moral rights and economic rights. Moral rights refer to those rights that allow the author
to preserve the personal link between the work and himself, thus, relate to the protection of the

1
D E Bouchux, Intellectual Property the Law of Trademarks, Copyrights, Patents and Trade Secrets (4th Edition,
Delmar Cengage Learning, 2013), 3.
2
Ibid,1.
3
Section 7 of the Copyright and Performance Rights Act Chapter 406 of the Laws of Zambia
4
G M Kanja, Intellectual Property Law (UNZA Press, 2006) 4
5
Ibid, 5
6
Ibid
7
Ibid
8
Ibid (n 2)
9
Ibid, Section 8
10
G M Kanja, Intellectual… (n 5) 15
 3

personality of the author and the integrity of his work 11. In the case of Tidy v Trustees of
National History Museum12 the plaintiffs integrity was held not have been distorted because the
manner in which the work was reproduced could not have been deemed to be prejudicial to his
honour or reputation13. In comparison, economic rights allow the owner to benefit a financial
reward from the works because they allow the owner to control the reproduction and
representation go the work, as well as industrial or commercial exploitations of the work 14. An
example of the application of this right is in the case of Ladbroke (Football) Ltd v William Hill
(Football) Ltd15 where it was held that the respondent’s coupon was a compilation thus, an
original literary work. They had copyright in the coupon and that conferred on them economic
rights which allowed them to successfully sue the appellants for copying a substantial part of the
coupon.

The author of the work is described as the person who created the work 16 for example the person
that writes a literary work will be recognised as the author of that literary work. In the case of
Donoghue v Allied Newspapers Ltd17 the author was defined as the person who gives the work
the form in which it is expressed and not the person who provides the ideas of the work. This
definition us reflected in the case of Kenrick & Company v Lawrence & Company18 in which
the plaintiffs hired someone to draw an illustration of a hand crossing a box to help illiterates
with voting and the defendants produced something similar. The plaintiffs claimed sole
authorship and their claim was dismissed because the person that brought the idea out in form of
an expression was the party that they hired. In some instances, two or more persons can be the
authors of a work, thus, joint authorship will occur where the respective works of the others
cannot be distinguished19 in a way that it cannot be broken down so that each person’s work is
individually recognised20.

11
G M Kanja, Intellectual… (n 5) 91
12
[1996] 39 IPR 501
13
(1995) 39 IPR 501
14
Ibid (n 12)
15
[1964] 1 WLR 273
16
Section 2 (e) of the Copyright and Performance Rights Act
17
(1938) HC UK
18
(1980) 25 QBD 99
19
Section 3 (2) of the Copyright and Performance Rights
20
Ibid (n 12) 79
 4

The test for authorship was discussed in the case of Ray v Classic FM Plc21 in which a joint
author was defined as a person who collaborates with another person in the creation of a work,
one who provides creative input that is considered significant and whose contribution is not
distinct from the contribution of the other author. In the case of Fylde Microsystems Ltd v Key
Radio Systems22 two additional criteria were discussed, namely, whether the putative author has
contributed the right kind of skill and labour and if the said contribution was big enough23.

Regarding ownership, the Copyright and Performance Rights Act 24 provides that the author of
the work created shall be the first owner of the copyright 25. Therefore, the writer of a literary
work shall be the first own of that work. The Act26 further provides that where a work is made by
the author in the course of their employment then the employer shall be the first owner of the
copyright27 and where a work is created by the author but is commissioned by another person, the
person that commissioned the work shall be the first owner of the copyright28.

The phrase ‘in the course of employment’ is not defined in the Act 29. It has been defined by case
law and the case of Community for Creative Non-Violence v Reid30 states that some of the
issues to take into consideration are the right to control the manner and means by which the
product is fulfilled, the skill required, the party that provided the tools, the location where the
work is done, the duration of the relationship between the parties, whether the employer has the
right to assign additional projects, whether the work in an integral part of the business of the
employer, the provision of employee benefits and others31 . In this case the plaintiff engaged the
defendant to create a sculptor that would depict the plight of the homeless for display at a 1985
Washington D.C pageant on Christmas. On completion of the entire project the plaintiff claimed
copyright saying that it fell under the ambit of ‘work for hire’. Initially it was held he was an
employee but on appeal to the Supreme Court, it was held that Reid was not an employee of the
plaintiffs because he supplied his own tools, worked in his own studio in a different city, he
21
[1998] FSR 622
22
[1998] FSR 449
23
Ibid, at 116-117
24
Chapter 406 of the Laws of Zambia
25
Ibid, Section 10 (2)
26
Ibid
27
Ibid Section 10 (3) (a)
28
Ibid, Section 10 (3) (b)
29
Ibid
30
(1989) 490 US 730
31
Ibid, 11-112
 5

decided when he worked, his salary was dependent on the completion of the sculptor, and he was
at liberty to hire his own assistants. The work in this case was regarded as commissioned work in
comparison to the case of Beloff v Pressdram Ltd32 it was held that the internal memorandum
that was drafted or written by the journalist for her editor belonged to her employer, The
Observer, and not her because she was employed as part of the business and her work was an
integral part of the business.

Situations can occur where two or more joint owners of copyright in a work have joint
authorship. It will operate like tenants in common and not joint tenants 33 and this entails that each
owner ahs individual rights are separate from others and can assign his rights without needing
the permission of the other owners at his death, however, he may not allow infringing acts on the
work without the permission of the other owners34. If they were joint tenants, it would require
them to act together on each occasion and this would strip them of their individual rights 35.

It is stated that copyright does not subsist in ideas but instead subsists in the material form that
the ideas are expressed in36. In the case of RG Anand v Deluxe Films37 the defendant had
expressed his idea to make the plaintiffs play into a movie. The parties had a discussion of the
whole movie but did not conclude on making it into movie. The defendant made a movie called
New Delhi and the plaintiff believed it was based on his play. The plaintiff filled a suit for
damages and an injunction. The Supreme Court held that the movie was not an infringement on
the copyright of the script of the play because the idea behind both was the same but the way
each party expressed them was different and because copyright does not subsist in ideas, there
was no infringement.

Literary work is described to include dramatic work and information that is arranged in a tubular
form38. Literary work is work that is expressed in writing or print regardless of its quality of

32
[1973] RPC 765
33
Lauri v Renad [1892] 3 Ch 402
34
G M Kanja, Intellectual… (n 5) 81
35
Ibid (n 34)
36
S Kumar, ‘India: The Idea-Expression Dichotomy Under Copyright Law’(Mondaq AI, 19 October 2016) <
https://www.mondaq.com/india/copyright/536650/idea-expression-dichotomy-under-copyright-law > Accessed
16th October 2021
37
(1978) 4 SCC 118
38
Section 2 of the Copyright and Performance Rights Act
 6

style39. For copyright to subsist in a literary work it must be original 40, the act does not define
originality, however it has been defined by case law. There is a two-tier test to determine
whether a work is original, namely, the work must not be a mere copy of a previous work and it
must result from the investment of an individual labour, judgement, or skill 41. In the case of
Interlogo A.G v Tyco Industries Inc and Ors42 technical drawings of the original Lego Bricks
were made and later modified, and the defendant copied the designs. It was held that not every
minor alteration will give rise to copyright there had to modification that was an additional
element of material alteration sufficient to create an original work. In this case they were held to
be mere copies thus not copy right subsisted. The second test is that there must be a certain
degree of an investment of labour, judgement, or skill and this is seen in the case of Ladbroke
(Football) Ltd v William Hill (Football) Ltd 43 the defendants coupons were held to have
copyright as when they were compared to 20 other coupons it was clear that they had devoted
degree of judgement, labour and skill and that the plaintiff made copies of substantial parts and
could not have copy right. However, in the case of L.B (Plastics) Ltd v Swish Products Ltd 44 it
was stated that material alteration will qualify a work as original, that is, even a small alteration-
if material- will qualify that which has been substantially copied from an earlier work into an
original work45.

One of the ways in which copyright may be infringed is through copying of work without the
permission of the owner.46 This is seen in the case of Ladbroke (Football) Ltd v William Hill
(Football) Ltd47 (already discussed above) it which it was found that the plaintiffs had copied a
substantial part of the work. However, parties may want to use the defence of fair use or dealing
which would allow the party to infringe copyright under certain circumstances such as personal
use48. The Act49 under Section 21 provides the circumstances under which fair dealing is allowed
and these include private study or research purposes, criticism, or review, reporting current

39
University London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at p 108
40
Section 8 (2) (a) of the Copyright and Performance Rights Act
41
G M Kanja, Intellectual… (n 5) 33
42
[1989] 1 AC 217
43
[1964] 1 WLR 273
44
[1979] RPC 551
45
Ibid, p 568-569
46
Section 17 of the Copyright and Performance Rights Act
47
Ibid (n 42)
48
Ibid, p 179
49
Chapter 406 of the Laws of Zambia
 7

events, judicial proceedings and for purposes of education, among others. In the case of
Independent Television Publications Ltd v Time Out Ltd 50 in which the defendants began to
publish selections from schedules of television and radio programmes created by the plaintiff
without permission. The defendants published them in a magazine. The court held they did not
fall within the exceptions of criticism or review or reporting of current events.

In the present case: the author of the work is described as the person who created the work 51. The
party who gives the work the form in which it is expressed and not the person who provided the
ideas of the work as seen in the case of Donoghue v Allied Newspapers Ltd52. The agreement
contained information from Yabe’s marketing collateral that was drafted by Yabe’s employees,
therefore, Yabe’s employees ate the authors of the marketing collateral, they made an expression
of the work in written form. With regards to other contributions that were drafted from scratch
belong to the lawyer, the source from the statutes 53 and internet are considered public domain
which means that no copyright can be attached to them. In some instances, two or more persons
can be the authors of a work, thus, joint authorship will occur where the respective works of the
others cannot be distinguished54 as in the present case, therefore the Lawyer and Yabe’s
employees may be considered co-authors because it is complex document, this, the contribution
of each author cannot be distinguished. These principles were highlighted above in Ray v Classic
FM Plc55.

Regarding ownership, The Act56 provides that where a work is made by the author in the course
of their employment then the employer shall be the first owner of the copyright 57 and where a
work is created by the author but is commissioned by another person, the person that
commissioned the work shall be the first owner of the copyright 58. The lawyer can be considered
an employee of the law firm because the law firm controls who does his work because it gave
direction for a larger number of revisions and controlled the engagement letters that allowed the
lawyer to engage with the client and these tests were discussed in Community for Creative Non-
50
[1984] FSR 64
51
Section 2 (e) of the Copyright and Performance Rights Act
52
(1938) HC UK
53
Section 8 (2) of the Copyright and Performance Rights Act
54
Ibid, Section 3 (2)
55
[1998] FSR 622
56
Ibid
57
Ibid Section 10 (3) (a)
58
Ibid, Section 10 (3) (b)
 8

Violence v Reid59. Situations can occur where two or more joint owners of copyright in a work
have joint authorship. It will operate like tenants in common and not joint tenants 60 If they were
joint tenants, it would require them to act together on each occasion and this would strip them of
their individual rights61.Therefore the ownership of the work is with Yabe and the Law Firm
which employed the lawyer that dealt with Handy.

For copyright to subsist in a literary work it must be original 62, There is a two-tier test to
determine whether a work is original, namely, the work must not be a mere copy of a previous
work and it must result from the investment of an individual labour, judgement, or skill 63. L.B
(Plastics) Ltd v Swish Products Ltd64 it was stated that material alteration will qualify a work as
original, that is, even a small alteration- if material- will qualify that which has been substantially
copied from an earlier work into an original work 65, thus despite the agreement being drafted
using different sources of material from different places, including the attorneys who drafted the
first agreement, the document was modified significantly to create a state of the art document
which was uniquely applicable to Yabe due to the business and marketing practices that were
described in it.

The facts expressly provide that the competitors ‘copied’ the Agreement with minor alterations
and One of the ways in which copyright may be infringed is through copying of work without
the permission of the owner.66 This is seen in the case of Ladbroke (Football) Ltd v William Hill
(Football) Ltd67 as earlier discussed. The Act68 under Section 21 provides the circumstances
under which fair dealing is allowed and in the case of Television Publications Ltd v Time Out
Ltd69 the defence of fair dealing did not stand because they derived a commercial benefit.

Conclusion

59
(1989) 490 US 730
60
Lauri v Renad [1892] 3 Ch 402
61
Ibid (n 34)
62
Section 8 (2) (a) of the Copyright and Performance Rights Act
63
G M Kanja, Intellectual… (n 5) 33
64
[1979] RPC 551
65
Ibid, p 568-569
66
Section 17 of the Copyright and Performance Rights Act
67
Ibid (n 42)
68
Chapter 406 of the Laws of Zambia
69
[1984] FSR 64
 9

Copyright subsists in the Agreement, and it was infringed. The Authors are Yabe’s employees
and the lawyer, but ownership of the agreements vests jointly in the law firm and Yabe. Thus,
Handy can advise its clients that they can claim for the copyright on the part that they own, or
they can both claim for the parts they own respectively.

REFERENCES

STATUTES

1. Copyright and Performance Right Act Chapter 406 of the Laws of Zambia

CASES

2. Beloff v Pressdram Ltd [1973] RPC 765

3. Community for Creative Non-Violence v Reid (1989) 490 US 730
4. Donoghue v Allied Newspapers Ltd (1938) HC UK
5. Fylde Microsystems Ltd v Key Radio Systems [1998] FSR 449
6. Interlogo A.G v Tyco Industries Inc and Ors [1989] 1 AC 217
7. Kenrick & Company v Lawrence & Company (1980) 25 QBD 99
8. Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273
9. L.B (Plastics) Ltd v Swish Products Ltd [1979] RPC 551
10. Lauri v Renad [1892] 3 Ch 402
11. Ray v Classic FM Plc [1998] FSR 622
12. RG Anand v Deluxe Films (1978) 4 SCC 118
13. Television Publications Ltd v Time Out Ltd [1984] FSR 64
14. Tidy v Trustees of National History Museum [1996] 39 IPR 501
15. University London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601

BOOKS

16. Bouchux D E, Intellectual Property the Law of Trademarks, Copyrights, Patents and
Trade Secrets (4th Edition, Delmar Cengage Learning, 2013)
17. Kanja G M, Intellectual Property Law (UNZA Press, 2006)

WEBSITES
 10

18. S Kumar, ‘India: The Idea-Expression Dichotomy Under Copyright Law’(Mondaq AI,
19 October 2016) < https://www.mondaq.com/india/copyright/536650/idea-expression-
dichotomy-under-copyright-law > Accessed 16th October 2021