Originality in copyright law: An objective test without any artistic merit requirement, recalls Arnold LJ

The GUIs at issue in THJ

What does originality in copyright law mean? This is an evergreen – yet still vexed – question.

Recently, it was tackled once more by the Court of Appeal of England and Wales in a case – THJ v Sheridan [2023] EWCA Civ 1354 – concerning copyright protection of graphic user interfaces (GUIs).

As readers with a penchant for the case law of the Court of Justice of the European Union (CJEU) on originality will promptly recall, the treatment of GUIs under the InfoSoc Directive was at the centre of the second decision after Infopaq [IPKat anniversary post here], that is: BSA.

In THJ, Arnold LJ tackled the perduring relevance of CJEU originality case law to post-Brexit UK copyright law. Let’s see what happened.

Historically, under UK law, the requirement of originality did not represent a particularly meaningful threshold to copyright protection: the traditional understanding was that ‘original’ would be akin to ‘not copied’, ‘what is worth copying is worth protecting’ and, ultimately, that originality would be the result of employing ‘sufficient skill, labour or effort’.

According to some commentators, the reason why originality under UK law was historically read in a limited sense is twofold: first of all, a loose understanding reduces the element of subjective judgment in deciding what qualifies for protection to a minimum; secondly, it allows protection of any investment of labour and capital which in some way produces a literary result. The result was that, to satisfy the traditional originality standard, two sole conditions need(ed) to be met: first, that the work originated from the author, in the sense of not being slavishly copied from another work; second, that the creation of the work required the expenditure of more than negligible or trivial effort or relevant skill.

Things, of course (and despite some still holding views to the contrary), have changed during UK’s tenure as an EU Member State.

The consistent and abundant string of CJEU decisions on originality have clarified that the EU standard of ‘author’s own intellectual creation’ does require more than simple ‘skill, labour of effort’: a work is protectable if it is the result of ‘creative freedom’ and ‘free and creative choices’ and ultimately carries the ‘personal touch’ of the author. Indeed, as Advocate General Mengozzi also explicitly noted in his Opinion in Football Dataco (with regard to the standard of originality for databases), that ‘copyright protection is conditional upon the database being characterised by a ‘creative’ aspect, and it is not sufficient that the creation of the database required labour and skill.’ The CJEU did agree and has agreed ever since.

Yet, the impact of CJEU case law, even after more and consistent CJEU case law tackling the concept of originality, has not always been understood correctly by UK courts, with some judgments suggesting that ‘author’s own intellectual creation’ is an alternative phrase for ‘sufficient skill, labour or effort’ (Temple Island, para 27; Taylor v Maguire, para 8).

More recent judgments support however the correct view that the bar to originality has been also raised under UK law: the string of CJEU decisions on this point has been incorporated into UK law. This is so because, also under UK law, what is required to claim sufficient originality in a work ‘is something on which the author has stamped his “personal touch” through the creative choices he has made’ (SAS, para 41). Hence, ‘[t]he requirement of originality under the [CDPA] is that the work must be an expression of that author’s own intellectual creation’ (Banner, para 26).

The guidance provided by the CJEU to the determine the sort of creative choices with which copyright is concerned has been regarded as ‘helpful’ by the Court of Appeal (Kogan v Martin, para 45). In all this, one thing is (crystal-)clear: ‘[i]f the [InfoSoc] Directive has changed the traditional domestic test, […] it has raised rather than lowered the hurdle to obtaining copyright protection.’ (SAS, para 36).

As I wrote in the second edition of Copyright and the Court of Justice of the European Union (OUP, 2023), the perduring influence of CJEU case law can be well appreciated even after the completion of Brexit. The High Court of England and Wales referred to the CJEU-mandated standard of originality in recent judgments, including Duchess of Sussex and Pasternak.

Following the judgment in Wright v BTC Core earlier this year, the latest addition to this collection is Arnold LJ’s judgment in THJ, in particular paras 14 ff.

Having pointed out that section 1(1)(a) CDPA must be interpreted in accordance with Article 2(a) of the InfoSoc Directive, Arnold LJ offered a concise summary of the law at para 16:

IPKat-approved GUI

What is remarkable in this case is that the judge at first instance had failed to apply the CJEU-mandated test, referring instead to the old skill, labour and effort one (para 23). Arnold LJ however pointed out that “In fairness to the judge, […] he was not referred to any of the relevant case law on this question (although the Defendants cited BSA, they did so in relation to a different issue).”

As a result, the Court of Appeal had to re-assess the originality of the GUIs at issue by applying the correct test. In so doing, and while in the end the result was ultimately the same, i.e. that the GUIs in question would be original, Arnold LJ made some key points (para 24), including that the test of originality is an objective one, and is not one of artistic merit.

Aside from the specific factual circumstances, the judgment in THJ is important for the following reasons.

First, despite Brexit and the power of senior courts to ‘depart’ from CJEU case law, lacking a statutory reform, the effects and relevance of CJEU case law on UK law will remain very visible and clear for a long time.

Second, insofar as UK law is specifically concerned, the reference made by Arnold LJ to the circumstance that the test of originality does not require artistic merit implicitly confirms that a system of closed categories like the UK one is incompatible with EU law (and, I would argue, the Berne Convention too). Indeed, as also noted in Response Clothing [IPKat here], with specific regard to the category ‘works of artistic craftmanship’, ‘[c]omplete conformity with art.2 [of the InfoSoc Directive], in particular as interpreted by the CJEU in Cofemel, C-683/17 would exclude any requirement that the [claimant’s fabric] has aesthetic appeal’.

Third, having regard to the EU Member States, two points are worth raising: (a) those still going around saying that the CJEU has not yet ruled on whether requirements other than originality can be imposed for copyright protection to arise, e.g. artistic value, are either seriously delusional or in bad faith or both; (b) the test of originality is an objective one. The latter is a key point considering the recently made Mio CJEU referral [IPKat here and here]. The referring court is asking the CJEU how the assessment of originality needs to be conducted (incidentally, a similar attempt was made in Brompton, but without much success, since the resulting judgment is quite laconic and not at all innovative). Clearly, of the options on the table, the one considering the need for artistic effect must be ruled out. I would add that the same is true of the relevance of the creative process, especially if this was intended as an intention to create something ‘artistic’: the author’s state of mind, intention, sanity or lack thereof count and should count 0. One could just imagine the effects if the contrary was true: how crazy would it be to say that works created under the effects of substances would be disqualified from copyright protection because the author was not fully in themselves when they created it?!

In sum: while waiting for further developments on the Mio front, the THJ judgment stands as a concise yet important vademecum on originality, both in the UK and the EU.