2 Ch 601
26 July 1916
PETERSON J., after stating the facts. The first question that is raised is, Are these examination papers subject of copyright? Sect. 1, sub-s. 1, of the Copyright Act of 1911 provides for copyright in “every original literary dramatic musical and artistic work,” subject to certain conditions which for this purpose are immaterial, and the question is, therefore, whether these examination papers are, within the meaning of this Act, original literary works. Although a literary work is not defined in the Act, s. 35 states what the phrase includes; the definition is not a completely comprehensive one, but the section is intended to show what, amongst other things, is included in the description “literary work,” and the words are “'Literary work' includes maps, charts, plans, tables, and compilations.” It may be difficult to define “literary work” as used in this Act, but it seems to be plain that it is not confined to “literary work” in the sense in which that phrase is applied, for instance, to Meredith's novels and the writings of Robert Louis Stevenson. In speaking of such writings as literary works, one thinks of the quality, the style, and the literary finish which they exhibit. Under the Act of 1842, which protected “books,” many things which had no pretensions to literary style acquired copyright; for example, a list of registered bills of sale, a list of foxhounds and hunting days, and trade catalogues; and I see no ground for coming to the conclusion that the present Act was intended to curtail the rights of authors. In my view the words “literary work” cover work which is expressed in print or writing, irrespective of the question whether the quality or style is high. The word “literary” seems to be used in a sense somewhat similar to the use of the word “literature” in political or electioneering literature and refers to written or printed matter. Papers set by examiners are, in my opinion, “literary work” within the meaning of the present Act.
Assuming that they are “literary work,” the question then is whether they are original. The word “original” does not in this connection 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 [*609] 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. In the present case it was not suggested that any of the papers were copied. Professor Lodge and Mr. Jackson proved that they had thought out the questions which they set, and that they made notes or memoranda for future questions and drew on those notes for the purposes of the questions which they set. The papers which they prepared originated from themselves, and were, within the meaning of the Act, original. It was said, however, that they drew upon the stock of knowledge common to mathematicians, and that the time spent in producing the questions was small. These cannot be tests for determining whether copyright exists. If an author, for purposes of copyright, must not draw on the stock of knowledge which is common to himself and others who are students of the same branch of learning, only those historians who discovered fresh historical facts could acquire copyright for their works. If time expended is to be the test, the rapidity of an author like Lord Byron in producing a short poem might be an impediment in the way of acquiring copyright, and, the completer his mastery of his subject, the smaller would be the prospect of the author's success in maintaining his claim to copyright. Some of the questions, it was urged, are questions in book work, that is to say, questions set for the purpose of seeing whether the student has read and understood the books prescribed by the syllabus. But the questions set are not copied from the book; they are questions prepared by the examiner for the purpose of testing the student's acquaintance with the book, and in any case it was admitted that the papers involved selection, judgment, and experience. This objection has not, in my opinion, any substance; if it had, it would only apply to some of the questions in the elementary papers, and would have little, if any, bearing on the paper on advanced mathematics. Then it was said that the questions in the elementary papers were of common type; but this only means that somewhat similar questions have been asked by other examiners. I suppose that most elementary books on mathematics may be said to be of a common type, but that fact would not give impunity to a predatory infringer. The book and the papers alike originate from the author and are not copied by him from another book or other papers. The objections with which I [*610] have dealt do not appear to me to have any substance, and, after all, there remains the rough practical test that what is worth copying is prima facie worth protecting. In my judgment, then, the papers set by Professor Lodge and Mr. Jackson are “original literary work” and proper subject for copyright under the Act of 1911.
The next question is, In whom did the copyright in the examination papers vest when they had been prepared? This problem must be solved by the determination of the effect of s. 5 of the Act of 1911. The author, by that section, is the first owner of the copyright, subject only to the exceptions contained in the Act. The only relevant exception is to be found in s. 5, sub-s. 1 (b). [His Lordship read the section so far as relevant 1, and continued:] The examiners were no doubt employed by the University of London, and the papers were prepared by them in the course of their employment. But, in order that s. 5, sub-s. 1 (b), should be applicable, the examiners must have been “under a contract of service or apprenticeship”; and accordingly the plaintiffs contend that the papers were prepared by the examiners in the course of their employment under a contract of service, and that, therefore, the copyright in the papers belonged to the University of London. The meaning of the words “contract of service” has been considered on several occasions, and it has been found difficult, if not impossible, to frame a satisfactory definition for them. In Simmons v. Heath Laundry Co. 2, in which the meaning of these words in the Workmen's Compensation Act, 1906, was discussed, Fletcher Moulton L.J. pointed out that a contract of service was not the same thing as a contract for service, and that the existence of direct control by the [*611] employer, the degree of independence on the part of the person who renders services, the place where the service is rendered, are all matters to be considered in determining whether there is a contract of service. As Buckley L.J. indicated in the same case, a contract of service involves the existence of a servant, and imports that there exists in the person serving an obligation to obey the orders of the person served. A servant is a person who is subject to the commands of his master as to the manner in which he shall do his work. A person who is employed by a company at a fixed annual salary to supply weekly articles for a periodical is not a servant within s. 209 of the Companies Consolidation Act, 1908: In re Beeton & Co. 3; nor can a visiting physician of a hospital who, for an annual salary, undertakes to exercise his judgment, skill, and knowledge in determining whether a patient can safely be discharged be properly described as a servant: Evans v. Liverpool Corporation. 4 In Byrne v. Statist Co. 5 the meaning of the words in s. 5 of the Copyright Act, 1911, was considered in the case of a person, permanently employed on the editorial staff of a newspaper, who was specially employed by the proprietors to translate and summarize a speech. He did the work in his own time and independently of his ordinary duties, and it was held that in doing so he did not act under a contract of service. In the present case the examiner was employed to prepare the papers on the subject in respect of which he was elected or appointed examiner. He had to set papers for September, 1915, and January and June, 1916, and his duty also comprised the perusal of the students' answers, and the consideration of the marks to be awarded to the answers. For this he was to be paid a lump sum. He was free to prepare his questions at his convenience so long as they were ready by the time appointed for the examination, and it was left to his skill and judgment to decide what questions should be asked, having regard to the syllabus, the book work, and the standard of knowledge to be expected at the matriculation examination. It is true that the University issued instructions to examiners for the conduct of the examination, but these instructions are only regulations framed with a view to securing accuracy in the system of marking. Professor Lodge and Mr. Jackson were [*612] regularly employed in other educational establishments and were not part of the staff of the London University, and it was not suggested that the other examiners were on the staff of the University. In my judgment it is impossible to say that the examiner in such circumstances can be appropriately described as the servant of the University, or that he prepared these papers under a contract of service.
The plaintiffs' next contention was that the copyright in the papers vested at once in the University by virtue of the fact that the examiners were employed on the terms that the copyright should belong to the University, who thereby became equitable assignees of the copyright; and Grace v. Newman 6 was cited in support of this argument. Grace v. Newman 7 seems to be one of those cases which under the present Act would come within s. 5, sub-s. 1 (b), but, however that may be, the present question must be determined by the provisions of the Act of 1911. Sect. 5 declares that, subject to the provisions of the Act, the author shall be the first owner of the copyright, and that every assignment of a copyright must be in writing, signed by the owner or his agent. The only exceptions from the rule that the author is the first owner are the cases mentioned in s. 5, sub-s. 1 (a) and (b), which do not cover the present case. The examiner was the first owner, and he has not assigned the copyright in writing signed by him or his agent. The copyright therefore remains in the examiners, subject to the obligation under the contract of employment to assign it to the University or as it may direct. The copyright was vested in the examiners, but the University was equitably entitled to it subject to the restrictions contained in the proviso to s. 5, sub-s. 2. The University assigned its rights to the plaintiff company, which is now equitably entitled to the copyright. In order to sue for infringement of the copyright, the plaintiff company must either obtain a proper assignment of the copyright or join the examiners, who are the legal owners of the copyright, as parties. It has not obtained an assignment, but it has in the course of the action joined Professor Lodge and Mr. Jackson as co-plaintiffs. The plaintiffs can therefore sue for infringement of the copyright in the papers prepared by Professor Lodge and Mr. Jackson, but, in the absence of the other examiners, the action fails [*613] in respect of the copyright in the papers which were composed by them.
The last question is whether the defendants have infringed the copyright in the papers prepared by Professor Lodge and Mr. Jackson. Examination papers are useful for educational purposes, and, as Professor Lodge said, teachers are “very glad to get copies of old questions for use in tuition,” and it is important that students should get the questions for purposes of “instruction.” This view was common to the witnesses on both sides. Recognizing this demand, the plaintiff company published the matriculation papers. With the same object in view, the defendants published the “London Matriculation Directory,” which contains sixteen of the matriculation papers for January, 1916, including the papers on arithmetic and algebra, geometry, and more advanced mathematics, set by Professor Lodge and Mr. Jackson. The defendants' publication also includes, amongst others, answers to the questions in the papers on arithmetic and algebra and geometry, but does not provide solutions for the problems in the paper on more advanced mathematics; and it also comprises a short criticism of the construction of the various papers, which appears to be intended for the guidance of future examiners rather than for the edification of possible students. These criticisms, however, appear to me to be of very little moment. The defendants on these facts contend that their publication of the three papers set by Professor Lodge and Mr. Jackson is a fair dealing with them for the purposes of private study within s. 2, sub-s. 1, of the Act of 1911, and is therefore not an infringement of copyright. It could not be contended that the mere republication of a copyright work was a “fair dealing” because it was intended for purposes of private study; nor, if an author produced a book of questions for the use of students, could another person with impunity republish the book with the answers to the questions. Neither case would, in my judgment, come within the description of “fair dealing.” In the present case the paper on more advanced mathematics has been taken without any attempt at providing solutions for the questions, and the only way in which the defendants have dealt with this paper is by appropriating it, except that there are eleven lines of criticism of it, dividing the questions into easy, troublesome, and difficult questions. [*614] To the questions in the other two papers answers are provided. Both publications are intended for educational purposes and for the use of students, and in my judgment the defendants have failed to bring themselves within the protection of s. 2, sub-s. 1 (i.), of the Act.
I am therefore of opinion that the plaintiffs ought to succeed so far as the questions prepared by Professor Lodge and Mr. Jackson for the examination in January, 1916, are concerned, and that the present action, so far as it relates to the papers set by the other examiners, fails.