[1934] EACA 21

## ORIGINAL CIVIL.

## Before GAMBLE, Ag. J.

THE EAST AFRICAN STANDARD, Ltd. (Plaintiffs)

$v$ .

THE COAST GUARDIAN, Ltd. (Defendants).

Civil Case No. 115 of 1934.

Copyright—What may be protected by copyright—Assignment of copyright must be in writing—Costs.

Held (5-10-34).—The Copyright of a Government report lies with the Crown but a précis of such report involving independent labour and literary skill may be protected by copyright.

A successful plaintiff should not be deprived of his costs if he has not acted unreasonably.

Daly for Plaintiffs.

Kaplan for Defendants.

JUDGMENT.-In this suit the plaintiffs are praying for an injunction restraining the defendants, their servants and agents. from infringing the plaintiffs' copyright rights and committing acts of journalistic or literary piracy, damages for alleged infringements and the costs of this suit.

The facts are shortly that Mr. Kinnear, the editor of the East African Standard prepared a précis of the Report of the Kenya Land Commission (for the sake of brevity I shall in future refer to this as the Report); this precis was sent to the editor of the Mombasa Times, one of several newspapers known as The East African Standard Group. The editor of the Mom-. basa Times published the précis of the Report in the issue of the paper for May 15th and subsequent dates. On May 16th and again on May 22nd the defendants in their paper the Coast Guardian published an article purporting to contain extracts from and to be a summary of the Report. It is alleged that these articles were, except for a trivial alteration, verbatim copies of Mr. Kinnear's precis. It is now admitted that the articles published in the Coast Guardian were in essence copies of the articles in the Mombasa Times. Mr. Robertson, who gave his evidence with great frankness, admits that his article for the issue of May 16th was set up in type before he had received a copy of the Report and that the type as set was not altered. In other words the only source of information he had as to the contents of the Report was the article in the Mombasa Times of May 15th.

On May 19th an interlocutory injunction to restrain the defendants was obtained and on May 22nd a further article appeared in the Coast Guardian which it is admitted is substantially a copy of portion of the précis of the Report made by Mr. Kinnear. No question of a breach of the interlocutory injunction arises as the latter was not served on the defendants until May 22nd.

The first question raised by Mr. Kaplan for the defence is whether Mr. Kinnear's precis could be the subject of copyright. And further he contends that the copyright lies in the Crown.

I quite agree that the copyright of the Report itself lies in the Crown. But this precis which is admittedly the result of independent work may be the subject of copyright if it gives an independent result.

The Report consisted of 618 pages; to compile a precis of twenty-six typed pages which presents the salient features of the Report in a coherent manner must surely contain an element of literary value. The case cited by Mr. Kaplan in support of his contention, Dicks v. Yates (18 Ch. D. 76), does not impress me. That case decided *inter alia* that there could be no copyright in two or three common English words. There the plaintiff endeavoured to establish copyright in the words "Splendid Misery". It was held by JESSEL M. R. that no copyright could exist in these words as there was no invention in them any more than in, say, the words "Miserable Sinner". A more instructive case is that of MacMillan and Co., Ltd. v. Cooper, (40 T. L. R. 186). This case is subsequent to the Copyright Act, 1911, which was an act to amend and consolidate the law relating to copyright and is an act of general applica-The head note to MacMillan and Co., Ltd. v. Cooper tion. reads: "A publication of which the text consists of a reprint of passages selected for use in schools from a work which does not enjoy the protection of copyright may be entitled to copyright if the selection of passages would require, for the purpose of effecting the object in view, accurate scientific knowledge, sound judgment and literary skill; but the question what amount of such knowledge, judgment and skill is necessary in order to acquire copyright is a question of degree." And see Leslie v. Young and Sons, (1894, A. C. 335) per LORD HERSCHELL L. C. "The information obtained from these time tables was of course derived from sources as open to the defenders as to the pursuer and he does not and cannot claim any right to the information as such; he can only claim copyright in them if they are the result in some respect or other of independent work on his part and if advantage has been taken by the defenders of that independent labour". A careful perusal of the precis of the Report prepared by Mr. Kinnear together with the evidence regarding the method in which such précis was compiled leaves

no doubt in my mind but that it is independent work of literary value produced by independent labour and literary skill. I hold, therefore, that the precis is entitled to enjoy the protection of copyright.

I am also satisfied that the copyright lies in the East African Standard, Ltd. It is in evidence that Mr. Kinnear compiled this précis as part of his ordinary duty as editor of the East African Standard. The fact that a certain part of the precis was compiled at his private residence is, I consider, entirely immaterial. Accordingly under sec. 5 (1) (b) of the Copyright Act, 1911, the East African Standard, Ltd., are the first owners of. the copyright.

A further contention of the defence is that even if copyright lies in Mr. Kinnear's précis, the articles published in the Mombasa Times under dates May 15th, 16th and 17th, are a reconstruction of Mr. Kinnear's precis and as such themselves original work and enjoy the protection of copyright, i.e. that if there has been a breach of copyright it is a breach of the Mombasa Times copyright in their articles, new and original matter. $\mathbf{I}$ am satisfied that with the exception of the headlines nothing appeared in the Mombasa Times dealing with the Report which was not in Mr. Kinnear's précis. I quote from Mr. Kinnear's evidence: "The precis in the Mombasa Times is a portion of mine, it is not as full as my précis. Mr. Dunkerly made no précis; he took out certain portions of the précis and presented those facts more interesting to his readers." It is fairly obvious that those portions of the précis dealing with coast land problems would be of more immediate interest to readers of the Mombasa Times than the problems of the Highlands.

I consider that the articles in the Mombasa Times dealing with the Report are not new and original work protected by copyright. They are merely verbatim copies of portions of the precis, the copyright in which rests with the East African Standard. In other words if the East African Standard had assigned the copyright in the précis to the Coast Guardian no action for breach of copyright by the *Mombasa Times* would lie.

The next contention of the defence is that even if it is admitted that Mr. Kinnear's précis was protected by copyright the property had passed to the Mombasa Times by assignment and that the proper persons to sue for a breach are the Mombasa Times and not the East African Standard. This contention is entirely covered by section $5$ (2) of the Copyright Act, which reads: "The owner of the copyright in any work may assign the right either wholly or partially ... but no such assignment or grant shall be valid unless it is in writing signed by the owner of the right in respect of which the assignment or grant is made, or by his duly authorized agent."

It has not been sought to prove that the East African Standard assigned their copyright in the precis to the Mombasa: Times and even if they granted a luence, which would not interfere with their claim against the *Coast Guardian* for breach of copyright, such grant would equally have to be in writing signed by the owner of the right. Sec. 5 (2) Copyright Act.

I would refer to the case of Performing Right Society. Ltd v. London Theatre of Varieties, Ltd., (1924 A. C. 1), which deals fully with the question of legal and equitable assignments. The Copyright Act. 1911, is stronger than the Berlin Convention; under the English Act, a newspaper may not reproduce articles published in another newspaper without consent even though such reproduction may not have been expressly forbidden. For the above reasons, I am of the opinion that the precis of the Report prepared by Mr. Kinnear was protected by copyright and that the first owners of that copyright were the plaintiffs.

1 am also satisfied that the publication of copies of portions of the precis in the Coast Guardian for May 16th and 22nd constituted an infringement of the plaintiff's copyright.

I accordingly grant an injunction in terms as praved in paragraph 11, 1 $(a)$ and $(b)$ of the plaint.

I have now to consider the question of damages. The defendant argues that if it should be found that the plaintiffs' copyright has been infringed nevertheless, he was an innocent infringer, in that he was not aware that the copyright lay with the East African Standard and had a friendly agreement with the Mombasa Times by which they reciprocally made use of each other's articles.

Prior to the Copyright Act 1911, an innocent infringer was liable to pay damages. Now ignorance may in certain circumstances under section 8, be a good defence. The onus of proving innocent infringement is invariably on the defendants. $Mr.$ Kaplan has cited no case since the passing of the Act, where the plea of innocent infringement has avoided damages. Mr. Daly states he has only been able to trace one case, and that of the copying of an inscription on a tombstone. It would appear from the lack of authority for a successful plea of innocent infringement that the practice is to require very strict proof from the defendant. In this case the evidence of Mr. Robertson and Mr. Dunkerly is very little at variance. It is admitted that there was an agreement that when news was received at a late hour publication should be held over till the following day to obviate the necessity for the staff working overtime. There was also an agreement that at public functions at which speeches were delivered, Mr. Dunkerly might report one speech and Mr. Robertson another, and that they should pool the results. Mr. Dunkerly does not admit that there was

any agreement that either paper should copy matter in the other after publication and Mr. Robertson, very fairly, does not seek to establish any such agreement. A number of leading. articles has been put in evidence to show that the Mombasa Times obtained their ideas for leading articles from articles which had previously appeared in the Coast Guardian. Mr. Robertson again very fairly does not say that Mr. Dunkerly has copied the leading articles in the Guardian but indicates that in his opinion Mr. Dunkerly got his ideas for articles and his inspiration from the Coast Guardian. Without hazarding an opinion on this point, I am satisfied that there was no -agreement between the two parties entitling either of the editors to copy matter from the rival newspaper after publication. I am further of the opinion that even if Mr. Dunkerly did get inspiration for leading articles from the *Coast Guardian* that is no justification for Mr. Robertson publishing in his paper verbatim extracts from the opposition paper.

I am also of the opinion that Mr. Robertson must have known that someone was the first owner of the copyright in the precis of the Report and I strongly incline to the opinion that he knew the copyright lay in the East African Standard. The article of May 15th is headed: "Mombasa Times Correspondent" (not "Our Nairobi Correspondent" as both the witnesses and the advocates have erroneously observed). Mr. Rob--ertson had for many years been editor of the Mombasa Times. during which period the East African Standard had been the Nairobi Correspondent of the Mombasa Times. He had no reason to believe that the practice had been altered. He was also aware that the Mombasa Times was a member of the group of newspapers known as the East African Standard Group. It would be unlikely therefore that the Mombasa Times would go to an outside source for its Nairobi news and articles. For these reasons I am of the opinion, following the wording of section 8 of the Copyright Act, that defendant had reasonable ground for suspecting that copyright subsisted in the work. The defendant had the means of kncwledge and the onus of proving a negative thrown on him has not been discharged. I am therefore of the opinion that the plaintiffs are entitled to damages. The question of the quantum of damages is one of extreme difficulty; it was intimated to me that if I should find that damages lay, it might be possible to come to an amicable arrangement. I accordingly defer my finding on the question of damages. If the parties are unable to agree the suit will again be mentioned before me for assessment of ·damages.

Finally the question of costs must be considered. $\mathbf{M}\mathbf{r}.$ Kaplan argues that if I find against him there should be no order as to costs. He contends that the infringement was on one occasion only. As a matter of fact there were two infringements

and had it not been for the speedy application for an interlocutory injunction there might have been further infringements. He also states that an apology or an acknowledgement might have met the requirements of the case. Actually there has been no apology, and no acknowledgment of the source from which the articles were derived. I confess to feeling a certain amount of sympathy for the defendants; but sympathy is no ground for depriving a successful plaintiff of his costs. The defendant had notice of the plaintiff's claim and might have submitted to the injunction with costs but by contesting the claim necessitated the cause being brought to a hearing. The Court has a discretion in the matter but must exercise that discretion judicially and should not deprive a plaintiff of his costs unless it can be shown that he acted unreasonably. The principle to be applied is whether the action is one which ought to have been brought. If it should not have been brought even although the plaintiff obtains the verdict the defendant ought to have the costs of the action. Dicks $v$ . Brooks (15 Ch. D. 39.) And again in Cooper v. Whittingham (15 Ch. D. 501) per JESSEL M. R.: "As I understand the law as to costs it is this, that when a plaintiff comes to enforce a legal right, and there has been no misconduct on his part—no omission or neglect which could deprive him of his costs the court has no discretion and cannot take away the plaintiff's right to costs". This is, in view of subsequent cases, perhaps too wide a principle as in later cases it has been held that in all cases the court has a discretion. And at page 507: "I have often remarked that there is an idea prevalent that a defendant can escape paying costs by saying 'I never intended to do wrong'. That is no answer, for, as I have often said, someone must pay the costs and I donot see who else but the defendants who do wrong are to pay them." In this suit there has been a substantial infringement of the plaintiffs' right to copyright and an immediate application to the Court was made. There was reason to apprehend further infringements and in fact there was one further infringement and had it not been for the interim injunction probably further infringements. These infringements did not relate to petty matters of trivial news interest; the defendant himself thought the articles he copied of sufficient interest to feature them on the front page of his newspaper with glaring headlines. Had the defendant admitted he had infringed the plaintiffs' right and offered apology or damages coupled with a promise not to offend again I might have felt disposed to disallow all costs subsequent to the grant of the interlocutory injunction. As events turned out the plaintiffs were compelled to vindicate their statutory right by a full hearing and in such circumstances I would not properly be exercising my discretion by depriving them of costs. The present order will be that the injunction is granted with $costs.$