Copyright: Supreme Court pronounces on copyright in compilations - Henkel v Holdfast

In the first copyright case to reach the Supreme Court, the court considered when copyright will subsist in a collocation of works and to what extent.  The court’s judgment contains both a lesson in the importance of accurate pleading in copyright cases and very helpful guidance in this difficult area of the law.

The Supreme Court’s judgment makes interesting reading.

The background to the appeal was as follows.  The appellant, Henkel, claimed that the respondent, Holdfast, had infringed its copyright in the design of the packaging for Henkel’s SuperAttak product when it (Holdfast) designed the packaging for its UltraBonder product.  The packaging in both cases comprised a multicoloured card on which the bottle of adhesive was contained in a clear plastic blister pack.  The High Court had upheld Henkel’s claim but Holdfast’s appeal to the Court of Appeal had succeeded.

The first issue that the Supreme Court considered was one related to pleading.

Holdfast argued that Henkel’s claim for indirect copying of the SuperAttak drawing was not open to it because of the way Henkel’s case had been pleaded and advanced in evidence and submissions in the High Court.  Holdfast claimed that, despite its admission of having previously copied SuperAttak, Henkel never relied on the SuperAttak drawing in its pleadings and that, as a result, Henkel was not entitled to advance an argument based on that drawing.

After carefully considering this argument the Supreme Court held that the pleadings and the course of evidence and submissions at trial did not permit reliance by Henkel on the SuperAttak packaging or any drawing which underlay that packaging. 

The court held:

[31] In the present case Henkel’s failure to plead the copyright work on which it is was ultimately seeking to rely, must result in its inability to rely on that work.  Henkel’s pleading fell well short of being sufficient to inform the court and Holdfast that its cause of action relied on the graphic work underlying the SuperAttak packaging.  The submissions and the course of evidence at trial did nothing to signal that Henkel was seeking to expand the scope of its pleading in such a major and material way. [32] Holdfast conducted its case in the High Court on the basis of Henkel’s pleadings and the way it had presented its case and was entitled to do so.  It would be quite unfair to Holdfast to allow Henkel to present a materially different case on appeal.  Henkel’s appeal to this court must therefore be dismissed on the basis that its pleadings and the course of the trial in the High Court do not permit it now to rely on any copyright work associated with the SuperAttak packaging.

What this finding really emphasises is that in copyright infringement cases, it is vital to identify and plead the copyright works upon which you intend to rely.  This of course, sounds obvious but it can often be difficult to identify all relevant works either because relevant underlying works are not brought to your attention, or due to the fact that their existence is not necessarily apparent to someone new to the matter.  These problems can also be exacerbated with the passage of time.

Despite this finding, the court went on to consider the substantive issues raised by the appeal.  Although, strictly unnecessary to do so, the court indicated that it was in the interests of the parties and there was some public interest in clarifying the legal points in question.

The court indicated that the case involved copyright which was said to be derived from a collocation or arrangement of features which were not original in themselves.  Copyright can subsist in such a compilation.  For example, a graphic work may qualify for copyright protection because its originality lies in the way in which a number of features, which have no originality in themselves, have been arranged or co-located. 

The following passage from the judgment in of the Court of Appeal in Bonz Group (Pty) Ltd v Cooke recognised this.  In that case the Court of Appeal stated:

“As Lord Reid emphasised, the correct approach is first to determine whether the plaintiff's work as a whole is original and protected by copyright.  The second step is to see whether such part as may have been taken by the defendant is a substantial part of the plaintiff's work.  It is not correct to subdivide the plaintiff's work into its component parts and ask whether copyright might attach to the individual parts.  Copyright, if it exists at all, exists in relation to the work as a whole.  For example, an author may have taken six different components for his work by copying from six different sources.  The combination of the six components may nevertheless have sufficient originality to attract copyright in the whole.  Where, as in this case, the plaintiff relies for its copyright on a collection of individual features, none of which on their own would attract copyright, this has ramifications when it comes to infringement.  To infringe in such circumstances the defendant must have used the same or a substantially similar arrangement or collocation of the individual features.  If the defendant has copied the individual features but has made its own arrangement of them, this will not represent an infringement.  That is because the plaintiff has no monopoly in the individual features as such but only in their arrangement or collocation.  Because the plaintiff's copyright resides in the arrangement or collocation the defendant, to infringe, must have copied the arrangement or collocation or a substantial part thereof.”

Applying this analysis to the facts before them, the Supreme Court, as a matter of qualitative impression did not consider Holdfast’s UltraBonder packaging to have indirectly copied a substantial part of Henkel’s SuperAttak drawing.  In this regard the court stated:

Holdfast has not appropriated to itself a substantial part of the skill and labour which went into the authorship of Henkel’s drawing.  In a field where the level of originality is low on both sides, we consider Holdfast’s work is sufficiently distinct that it cannot fairly be said to be a copy of a substantial part of Henkel’s work.  The level of similarity between these two works of low originality is such that, despite the opportunity to copy, we are not persuaded that there has actually been a copying by Holdfast of the essence of Henkel’s copyright work.  In short, we do not consider infringement has been established and we would have been of the view that Henkel’s appeal should fail on that basis also.

Thus, in essence, the court would have held (had it been required to in the absence of the court’s finding in relation to the pleading point), that Henkel’s appeal should fail because the amount of skill and labour in effecting the arrangement that was Henkel’s design, was relatively low and in those circumstances, the amount of skill and labour required on Holdfast’s part to effect a non-infringing departure from Henkel’s arrangement was relatively low.

Enquiries and information

For more information on copyright or any other intellectual property issues please email Garry Williams or call Garry on 64 9 916 8661.